1301    Service Marks

Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "service mark" as follows:

The term "service mark" means any word, name, symbol, or device, or any combination thereof--

  • (1) used by a person, or
  • (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act],

to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.  Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

Therefore, to be registrable as a service mark, the asserted mark must function both to identify the services recited in the application and distinguish them from the services of others, and to indicate the source of the recited services, even if that source is unknown.  The activities recited in the identification must constitute services as contemplated by the Trademark Act.  See TMEP §§1301.01 et seq.

If a proposed mark does not function as a service mark for the services recited, or if the applicant is not rendering a registrable service, the statutory basis for refusal of registration on the Principal Register is §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127.

See TMEP §1303 concerning collective service marks.

1301.01   What Is a Service?

A service mark can only be registered for activities that constitute services as contemplated by the Trademark Act.  15 U.S.C. §§1051, 1052, 1053, and 1127.  The Trademark Act defines the term "service mark," but it does not define what constitutes a service.  Many activities are obviously services (e.g., dry cleaning, banking, shoe repairing, transportation, and house painting).

1301.01(a)   Criteria for Determining What Constitutes a Service

The following criteria have evolved for determining what constitutes a service:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

1301.01(a)(i)   Performance of a Real Activity

A service must be a real activity.  A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service.  Similarly, a system, process, or method is not a service.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); In re Citibank, N.A., 225 USPQ 612 (TTAB 1985); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., Inc., 179 USPQ 317 (TTAB 1973).  See TMEP §1301.02(e) regarding marks that identify a system or process.

The commercial context must be considered in determining whether a real service is being performed.  For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services.  However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.

1301.01(a)(ii)   For the Benefit of Others

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.  In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970).  See TMEP §1301.01(b)(i).  Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Northwest Publishing Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").

Collecting information for the purpose of publishing one’s own periodical is not a service, because it is done primarily for the applicant’s benefit rather than for the benefit of others.  See TMEP §1301.01(b)(iii).

Offering shares of one’s own stock for investment is not a service, because these are routine corporate activities that primarily benefit the applicant.  See TMEP §1301.01(b)(iv).  On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees.  American Int’l Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978).

Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee.  In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).

1301.01(a)(iii)   Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney should first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product).  The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides.  In re Landmark Communications, Inc., 204 USPQ 692, 695 (TTAB 1979).  

For example, operating a grocery store is clearly a service.  Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service.  See TMEP §1301.01(b)(v).

Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity.  See TMEP §1301.01(b)(i).

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods normally does not constitute a separate service, because that activity is ancillary to and normally expected in the trade.  See TMEP §1301.01(b)(ii).

However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service.  The statute makes no distinction between primary, incidental, or ancillary services.  In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Financial Corp., 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Texas, 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co., 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).

The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service.  In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., supra (credit services offered only to customers of applicant’s retail store found to be a service).

The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered.  In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).

Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service.  See In re Mitsubishi Motor Sales of America Inc., 11 USPQ2d 1312 (TTAB 1989); In re Universal Press Syndicate, supra; In re Congoleum Corp., supra; In re C.I.T. Financial Corp., supra.  However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971).  Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service.  Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).

1301.01(b)   Whether Particular Activities Constitute "Services"

1301.01(b)(i)   Contests and Promotional Activities

It is well settled that the promotion of one’s own goods is not a service.  In re Radio Corp. of America, 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp., 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).

However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service.  In re U.S. Tobacco Co., 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).

Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest.  Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc., 179 USPQ 126 (TTAB 1973); In re Johnson Publishing Co., Inc., 130 USPQ 185 (TTAB 1961).  However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field.  In re Congoleum Corp., 222 USPQ 452 (TTAB 1984).

A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service.  In re Miss American Teen-Ager, Inc., 137 USPQ 82 (TTAB 1963).  See TMEP §1402.11.

See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.

1301.01(b)(ii)   Warranty or Guarantee of Repair

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service, because that activity is ancillary to and normally expected in the trade.  In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is not separately offered, promoted, or charged for is not a service); In re Lenox, Inc., 228 USPQ 966 (TTAB 1986) (lifetime warranty that is not separately offered, promoted, or charged for is not a service).

However, a warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.  In re Mitsubishi Motor Sales of America, Inc., 11 USPQ2d 1312 (TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service program held to be a service, where applicant’s package included features that were unique and would not normally be expected in the industry); In re Sun Valley Waterbeds Inc., 7 USPQ2d 1825 (TTAB 1988) (retailer’s extended warranty for goods manufactured by others held to be a service, where the warranty is considerably more extensive than that offered by others); In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (non-mandatory quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment, where the services were separately charged for, the goods were offered for sale without services, and the services were not merely a time limited manufacturer’s guarantee).

Providing warranties to consumers and retailers on power-operated outdoor products was held to be a registrable service where the warranty covered goods manufactured by applicant but sold under the marks of third-party retailers.  Noting that none of applicant’s trademarks appeared on the goods or identified applicant as the source of the goods, the Board found that the third-party retailers rather than applicant would be regarded as the manufacturer of the products.  Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, applicant’s warranty service would not be regarded as merely an inducement to purchase its own goods.  The Board also noted that applicant’s activities constitute a service to the third-party retailers, because applicant’s provision of warranties avoids the need of the retailer itself to provide a warranty.  In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009).

When an applicant offers a warranty on its own goods or services, the identification of services must include the word "extended," or similar wording, to indicate that the warranty is "qualitatively different" from a warranty normally provided ancillary to the sale of the applicant’s goods/services.  When an applicant offers a warranty on third-party goods, the identification of services must so indicate.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming that the USPTO has the discretion to determine whether and how a trademark registration should include a more particularized identification of the goods for which a mark is used).

The identification of services must also specify the item(s) that the extended warranty covers, e.g., "providing extended warranties on television sets." Id.

Extended warranty services are classified in Class 36.

1301.01(b)(iii)   Publishing One’s Own Periodical

The publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others.  In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (activities of collecting, distributing, and soliciting information relating to billfishing tournaments for a periodical publication not a separate service, because these are necessary preliminary activities that a publisher must perform prior to publication and sale of publication); In re Alaska Northwest Publishing Co., 212 USPQ 316 (TTAB 1981) (title of magazine section not registrable for magazine publishing services, because the activities and operations associated with designing, producing, and promoting applicant’s own product are ancillary activities that would be expected by purchasers and readers of any magazine); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979) (title of newspaper section not registrable as service mark for educational or entertainment service, because collected articles, stories, reports, comics, advertising, and illustrations are indispensable components of newspapers without which newspapers would not be sold); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) (calculating advertising rates for a trade publication not a registrable service, because this is an integral part of the production or operation of any publication).

However, providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.  In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) ("providing advertising space in a periodical" held to be a registrable service, where the advertising services were rendered to a different segment of the public under a different mark than the mark used to identify applicant’s magazines); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990) (real estate advertising services rendered by soliciting advertisements and publishing a guide comprising the advertisements of others held to be a registrable service, where advertising was found to be the applicant’s primary activity, and the customers who received the publication were not the same as those to whom the advertising services were rendered).

1301.01(b)(iv)   Soliciting Investors

Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985).  Similarly, soliciting investors in applicant’s own partnership is not a registrable service.  In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization).  On the other hand, investing the funds of others is a registrable service that primarily benefits others.  In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).

In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public.  The court distinguished American Int’l Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978), in which offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.

1301.01(b)(v)   Informational Services Ancillary to the Sale of Goods

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate informational service.  In re Moore Business Forms Inc., 24 USPQ2d 1638 (TTAB 1992) (paper manufacturer who rates the recycled content and recyclability of its own products is merely providing information about its goods, not rendering a service to others); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) ("promoting the sale and use of chemicals" is not a registrable service, where applicant is merely providing "technical bulletins" that contain information about its own products); Ex parte Armco Steel Corp., 102 USPQ 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a consulting service, because it is an ordinary activity that is normally expected of a manufacturer selling goods); Ex parte Elwell-Parker Electric Co., 93 USPQ 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods not a service).  However, an applicant’s free hairstyling instructional "parties" were found to be a service, because conducting parties goes beyond what a seller of wigs would normally do in promoting its goods.  In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971).

1301.02   What Is a Service Mark?

Not every word, combination of words, or other designation used in the performance or advertising of services is registrable as a service mark.  To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application.  Even if it is clear that the applicant is rendering a service (see TMEP §§1301.01 et seq.), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application.  In re Advertising and Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).

The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark.  The record must show that there is a direct association between the mark and the service.  See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identifies only a process does not function as a service mark, even where services are advertised in the same specimen brochure in which the name of the process is used); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services does not function as a mark); Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen does not constitute service mark usage of that term, even if specimen elsewhere shows that applicant provides the recited services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (proposed mark used only to identify a liquefaction process in brochure advertising the services does not function as a mark, because there is no direct association between the mark and the offering of services).  See TMEP §1301.04(b).

The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used.  In re Morganroth, 208 USPQ 284 (TTAB 1980); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977).  It is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so.  In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960).  Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen.

While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier.  In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985).  The proposed mark must not blend so well with other matter on specimen that it is difficult or impossible to discern what the mark is.  In re McDonald's Corp., 229 USPQ 555 (TTAB 1985); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, supra; Ex parte Nat’l Geographic Society, 83 USPQ 260 (Comm’r Pats. 1949).  On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source.  In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984).  The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services.  In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).

The presence of the "SM" symbol is not dispositive of the issue of whether matter sought to be registered is used as a service mark.  In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983).

See TMEP §1301.02(a) for further information about matter that does not function as a service mark, TMEP §§1301.01 et seq. regarding what constitutes a service, and TMEP §§1301.04 et seq. regarding service mark specimens.

1301.02(a)   Matter that Does Not Function as a Service Mark

To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.

Use of a designation or slogan to convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use.  See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960) (GUARANTEED STARTING found to be ordinary words that convey information about the services, not a service mark for the services of "winterizing" motor vehicles); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE so highly descriptive and informational in nature that purchasers would be unlikely to perceive it as an indicator of the source of hotel services); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE found to be a common commercial phrase that does not serve to identify grocery store services); In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983) (IN ONE DAY not used as source identifier but merely as a component of advertising matter that conveyed a characteristic of applicant’s plastic surgery services); In re European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979) (slogan THINK ABOUT IT found to be an informational or instructional phrase that would not be perceived as a mark for banking services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not serve to identify franchising services).  Cf. In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985) (the designation QUALITY SHOWS, set off from text of advertising copy in extremely large typeface and reiterated at the conclusion of the narrative portion of the ad, held to be a registrable service mark for applicant’s real estate management and leasing services, because it was used in a way that made a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier).  See also TMEP §1202.04 regarding informational matter that does not function as a trademark.

A term that is used only to identify a product, device, or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark.  See In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and does not function as a service mark to identify grocery store services); In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983) (term that identifies a seat in the first-class section of an airplane does not function as mark for air transportation services); In re Editel Productions, Inc., 189 USPQ 111 (TTAB 1975) (MINI-MOBILE identifies only a vehicle used in rendering services and does not serve to identify the production of television videotapes for others); In re Oscar Mayer & Co. Inc., 171 USPQ 571 (TTAB 1971) (WIENERMOBILE does not function as mark for advertising and promoting the sale of wieners, where it is used only to identify a vehicle used in rendering claimed services).

Similarly, a term that only identifies a process, style, method, or system used in rendering the services is not registrable as a service mark, unless it is also used to identify and distinguish the service.  See TMEP §1301.02(e) and cases cited therein.

A term that only identifies a menu item does not function as a mark for restaurant services.  In re El Torito Restaurant Inc., 9 USPQ2d 2002 (TTAB 1988).

The name or design of a character or person does not function as a service mark, unless it identifies and distinguishes the services in addition to identifying the character or person.  See TMEP §1301.02(b) and cases cited therein.

A term used only as a trade name is not registrable as a service mark.  See In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where words appeared only in small, subdued typeface underneath the address and telephone number of applicant’s subsidiary).  See TMEP §1202.01 for additional information about matter used solely as a trade name.

Matter that is merely ornamental in nature does not function as a service mark.  See In re Tad’s Wholesale, Inc., 132 USPQ 648 (TTAB 1962) (wallpaper design not registrable as a service mark for restaurant services).  See TMEP §§1202.03 et seq. for additional information about ornamentation.

See TMEP §1202.02(a)(vii) regarding functionality and service marks, and TMEP §1202.02(b)(ii) regarding trade dress.

1301.02(b)   Names of Characters or Personal Names as Service Marks

Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character.  If the name or design is used only to identify the character, it is not registrable as a service mark.  In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053 (TTAB 1991) (design of dog appearing in advertisement does not function as mark for retail hardware and housewares services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE does not function as mark for restaurant services, where the specimen shows use of mark only to identify one character in a procession of characters); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (design of zoo animal character distributed to restaurant customers in the form of an iron-on patch not used in a manner that would be perceived as an indicator of source); In re Burger King Corp., 183 USPQ 698 (TTAB 1974) (fanciful design of king does not serve to identify and distinguish restaurant services).  See TMEP §1202.10 regarding the registrability of the names and designs of characters in creative works.

Similarly, personal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).

The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person.  In re Florida Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children’s stories by radio broadcasting and personal appearances).

See TMEP §§1202.09(a) et seq. regarding the registrability of the names and pseudonyms of authors and performing artists, and TMEP §1202.09(b) regarding the registrability of the names of artists used on original works of art.  

1301.02(c)   Three-Dimensional Service Marks

The three-dimensional configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark.  Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark.  See In re Lean-To Barbecue, Inc., 172 USPQ 151 (TTAB 1971); In re Master Kleens of America, Inc., 171 USPQ 438 (TTAB 1971); In re Griffs of America, Inc., 157 USPQ 592 (TTAB 1968).  Cf. Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 USPQ 128 (D. Kan. 1977); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 USPQ 342 (D.N.J. 1977).

A three-dimensional costume design may function as a mark for entertainment services.  See In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).

Generally, a photograph is a proper specimen of use for a three-dimensional mark.  However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed.  The specimen must show that the proposed mark is used in a way that would be perceived as a mark.

See 37 C.F.R. §2.52(b)(2) and TMEP §807.10 regarding drawings of three-dimensional marks.

When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive.  See TMEP §1202.02(b)(ii).

1301.02(d)   Titles of Radio and Television Programs

The title of a continuing series of presentations (e.g., a television or movie "series," a series of live performances, or a continuing radio program), may constitute a mark for either entertainment services or educational services.  However, the title of a single creative work, that is, the title of one episode or event presented as one program, does not function as a service mark. In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (term that identifies title of a play not registrable as service mark for entertainment services).  The record must show that the matter sought to be registered is more than the title of one presentation, performance, or recording.  See TMEP §§1202.08 et seq. and cases cited therein for further information regarding the registrability of the title of a single creative work.

Specimens that show use of a service mark in relation to television programs or a movie series may be in the nature of a photograph of the video or film frame when the mark is used in the program.

Service marks in the nature of titles of entertainment programs may be owned by the producer of the show, by the broadcasting system or station, or by the author or creator of the show, depending upon the circumstances.  Normally, an applicant’s statement that the applicant owns the mark is sufficient; the examining attorney should not inquire about ownership, unless information in the record clearly contradicts the applicant’s verified statement that it is the owner of the mark.

1301.02(e)   Process, System, or Method

A term that only identifies a process, style, method, system, or the like is not registrable as a service mark.  A system or process is only a way of doing something, not a service.  The name of a system or process does not become a service mark, unless it is also used to identify and distinguish the service.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used); In re HSB Solomon Assoc. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (finding that the specimens show CEI identifying only a process and do not show a direct association between CEI and the applied-for services); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) (term does not function as service mark where it only identifies a photochemical process used in rendering service); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno-Metallurgichesky Institut Tsvetnykh Mettalov "Vnitsvetmet", 219 USPQ 69 (TTAB 1983) (KIVCET identifies only a process and plant configuration, not engineering services); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979) (term that merely identifies educational technique does not function as mark to identify educational services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (term used only to identify liquefaction process does not function as mark to identify design and engineering services); In re Produits Chimiques Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976) (term that merely identifies a process used in rendering the service does not function as service mark); In re Lurgi Gesellschaft Fur Mineraloltechnik m.b.H., 175 USPQ 736 (TTAB 1972) (term that merely identifies process for recovery of high-purity aromatics from hydrocarbon mixtures does not function as service mark for consulting, designing, and construction services); Ex parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r Pats. 1953) (although used in advertising of applicant’s engineering services, CYCLOVERSION was only used in the advertisements to identify a catalytic treating and conversion process).

If the term is used to identify both the system or process and the services rendered by means of the system or process, the designation may be registrable as a service mark.  See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979), in which the Board found that the mark LIQWACON identified both a waste treatment and disposal service and a chemical solidification process.

The name of a system or process is registrable only if:  (1) the applicant is performing a service (see TMEP §§1301.01 et seq.); and (2) the designation identifies and indicates the source of the service.  In determining eligibility for registration, the examining attorney must carefully review the specimen, together with any other information in the record, to see how the applicant uses the proposed mark.  The mere advertising of the recited services in a brochure that refers to the process does not establish that a designation functions as a service mark; there must be some association between the offer of services and the matter sought to be registered.  In re Universal Oil Products Co., supra; In re J.F. Pritchard & Co., supra.

1301.02(f)   Computer Software

A term that only identifies a computer program does not become a service mark, unless it is also used to identify and distinguish the service.  In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identifies computer program used in rendering services does not function as a mark to identify market analysis services); In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) (term identifies only a computer program, not the service of installing and providing access to a computer program); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals).  However, it is important to review the record carefully to determine the manner of use of the mark and the impression it is likely to make on purchasers.  The Trademark Trial and Appeal Board has noted that:

[I]n today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software.  Because of the ... blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers.

In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006) (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services).

1301.03   Use of Service Mark in Commerce

1301.03(a)   Use of Service Mark in Advertising to Identify Services

In examining an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney ordinarily should refuse registration if the record shows that the services advertised have not been rendered.  For example, the use of a mark in the announcement of a future service does not constitute use as a service mark.  Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301 (Fed. Cir. 2009) (holding that actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce); In re Port Auth. of N. Y., 3 USPQ2d 1453 (TTAB 1987) (finding advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (holding that advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration); In re Nationwide Mutual Ins. Co., 124 USPQ 465 (TTAB 1960) (holding that stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use).

Sometimes a service-mark specimen may show the wording "beta" being used in connection with the relevant services. This term is commonly used to describe a preliminary version of a product or service. Although some beta services may not be made available to consumers, others are. For example, a beta version of non-downloadable or downloadable software may be made available to the public for use even though the final version has not been released. Thus, the appearance of this term on a service-mark specimen does not, by itself, necessarily mean that the relevant services are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration because applicant has not provided evidence of use of the applied-for mark in commerce. The statutory basis for refusal is 15 U.S.C. §§1051 and 1127. See TMEP §§904.03(e) and 904.03(i) regarding trademark specimens containing the term "beta."

See TMEP §806.03(c) regarding amendment of the basis to intent-to-use under 15 U.S.C. §1051(b) when a §1(a) basis fails; TMEP §1104.10 regarding withdrawal of an amendment to allege use, and TMEP §§1109.16-1109.16(e) regarding the time limits for correcting deficiencies in a statement of use.

1301.03(b)   Rendering of Service in Commerce Regulable by Congress

In an application under §1(a) or §1(b) of the Trademark Act, 15 U.S.C. §1051(a) or §1051(b), the applicant must use the mark in commerce before a registration may be granted.  Section 45 of the Act, 15 U.S.C. §1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress."  See TMEP §§901.01 and 901.03.

The following are three examples of how a service may be rendered in commerce:  (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees who use the mark are located in more than one state.  See TMEP §901.03 and cases cited therein.

1301.04   Specimens of Use for Service Marks

A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application.  37 C.F.R. §2.56(b)(2).  Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like.  However, printer’s proofs for advertisements, press releases to news media, or printed articles resulting from such releases are not accepted because they do not show use of the mark by the applicant in the rendering or advertising of the services.  See TMEP §1301.04(b).  Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services.  See TMEP §1301.04(c).

See 37 C.F.R. §2.59 and TMEP §§904.05 and 904.07 et seq. regarding substitute specimens.

1301.04(a)   Specimens Must Show Use as a Service Mark

To show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified only a process held not registrable as service mark, even though applicant was rendering services and the name of the process appeared in the same brochure in which the services were advertised); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART perceived as informational matter rather than as service mark for art dealership services, where the term was displayed inconspicuously in the specimen brochure, in the same size and font as other informational matter); In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE did not function as mark for restaurant services, where the specimen showed use of mark only to identify one character in a procession of characters, and the proposed mark was no more prominent than anything else on specimen); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where the words appeared only in small, subdued typeface underneath the address and telephone number of applicant's subsidiary); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977) (use of mark as one of many pictures in applicant’s brochure would not be perceived as an indication of the source of the services); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors do not show service mark use for medical services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not identify franchising services); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals do not show use as a service mark for consulting services).  Cf. In re ICE Futures U.S., Inc., 85 USPQ2d 1664,1670 (TTAB 2008) (SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2 functioned as service marks for futures exchange and related commodity trading services, where the specimens showed the marks directly with the wording "futures contract"; Board found that "the connection between the marks and services is evident and need not be stated explicitly....").

See TMEP §1301.02(a) regarding matter that does not function as a service mark.

1301.04(b)   Association Between Mark and Services

Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought.  A specimen that shows only the mark, with no reference to the services, does not show service mark usage.  In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (specimen comprising a packaging label affixed to boxes being mailed to customers, on which the proposed mark was used as part of a return address, held unacceptable because it did not show a connection between the mark and the services); In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas tree that bear the mark "TREE ARTS CO. and design" and the applicant’s location, but make no reference to services, fail to show use for "design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees"); In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994) (labels affixed to packaging of valves do not show use of mark for custom manufacture of valves); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark do not show use to identify "association services, namely promoting the interests of individuals who censor the practice of drinking and driving"); In re Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with no reference to the services held unacceptable for automotive service center); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (iron-on transfer clothing patches in the form and shape of a cartoon animal mark, distributed as free promotional items to restaurant customers at counters, held insufficient to identify restaurant services).  See also TMEP §1301.04(c) and cases cited therein.

A specimen that shows the mark as used in the course of rendering or performing the services is generally acceptable.  Where the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary.  In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer printouts showing mark GLOBAL GATEWAY found acceptable to show use of mark to identify data transmission services accessed via computer, because they show use of mark as it appears on computer terminal in the course of rendering the services); In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (photograph of rented fence held acceptable for rental of chain link fences, since it shows use of distinctive color scheme in the rendering services); In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen).  In Johnson Controls, 33 USPQ2d at 1320, the Board distinguished Metriplex and Eagle Fence, noting that the labels were not used in the rendering of the services, as the custom manufacturing services were complete before purchasers ever see the mark.

In determining whether a specimen is acceptable evidence of service mark use, the examining attorney may consider applicant’s explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used.  See In re International Environmental Corp., 230 USPQ 688 (TTAB 1986), in which a survey distributed to potential customers of applicant’s heating and air conditioning distributorship services was held to be an acceptable specimen even though it did not specifically refer to the services, where the applicant stated that the sale of its services involved ascertaining the needs of customers serviced, and the record showed that the surveys were directed to potential customers and were the means by which applicant offered its distributorship services to the public.

1301.04(c)   Letterhead

Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services.  To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services.  A general reference to the industry may be acceptable.  In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word "Design" are acceptable evidence of use of mark for commercial art design services); In re Southwest Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for "consulting and advisory services relating to the making and using of lubricating oils and greases," when used for letters in correspondence with customers).

Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimen showing the mark MONOGRAMS AMERICA and the wording "A Nationwide Network of Embroidery Stores" held insufficient to support registration for consulting services for embroidery stores).

If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used.  In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services.  51 USPQ2d at 1319.

1301.04(d)   Specimens for Entertainment Services

For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band.  For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer.  See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent).

A designation that identifies only the performer is not registrable as a service mark.  See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks, and TMEP §§1202.09(a) et seq. regarding the registrability of names and pseudonyms of performing artists.

1301.05   Identification and Classification of Services

See TMEP §§1402.11 et seq. regarding identification of services, and TMEP §§1401 et seq. regarding classification.