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.