1301.02    What Is a Service Mark?

Not every word, combination of words, or other designation used in the performance or advertising of services performs a service mark function.  See In re The Ride, LLC, 2020 USPQ2d 39644, at *6 (TTAB 2020) (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)) (citing Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 828, 166 USPQ 34, 39 (C.C.P.A. 1970)). 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 §§1301.01–1301.01(b)(vi)), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application.  In re Adver. & Mktg. Dev. Inc., 821 F.2d 614, 621, 2 USPQ2d 2010, 2015 (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 specimen must show a direct association between the mark and the services identified in the application.  See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) (term that identifies only a process did not show direct association with services, even where services were advertised in the same specimen brochure in which the name of the process was used; "[t]he minimum requirement [was] some direct association between the offer of services and the mark sought to be registered"); In re Graystone Consulting Assocs., 115 USPQ2d 2035 (TTAB 2015) (specimen did not show a direct association between the mark WALK-IN SHOPPER and the identified business training consultancy services, but instead showed the mark being used to identify a particular type of customer that was the focus of the consulting services); In re Duratech Indus. Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services did not function as a mark); Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen did not constitute service mark usage of that term, even if specimen elsewhere showed that applicant provided the recited services); In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) (proposed mark was used only to identify a liquefaction process in brochure advertising the services and did not function as a mark because there was no direct association between the mark and the offering of services); 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 Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2-3 (Fed. Cir. 2022) ("The [Trademark Trial and Appeal] Board looks to ‘the [Applicant's] specimens and other evidence of record showing how the designation is actually used in the marketplace’" (quoting In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010));   In re Morganroth, 208 USPQ 284 (TTAB 1980) ; In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977) ; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017). It is the perception of the relevant public that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so. See In re Vox Populi Registry, 25 F.4th at 1351, 2022 USPQ2d 115, at *2 ("In analyzing whether a proposed mark functions as a source identifier, the Board focuses on consumer perception.") (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020)); In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960); In re The Ride, LLC, 2020 USPQ2d 39644, at *6 ("The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.") (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229). 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 such wording is displayed in capital letters or enclosed in quotation marks, and the manner in which such wording 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 Props., Inc., 227 USPQ 334 (TTAB 1985) .  The proposed mark must not blend so well with other matter on the 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, 197 USPQ at 494; Ex parte Nat’l Geographic Soc'y, 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 "TM" or "SM" on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); In re Brit. Caledonian Airways Ltd., 218 USPQ 737, 739 (TTAB 1983); TMEP §1202.

See TMEP §1301.02(a) for further information about matter that does not function as a service mark, §§1301.01–1301.01(b)(vi) regarding what constitutes a service, and §§1301.04–1301.04(j) 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. See In re Keep A Breast Found., 123 USPQ2d 1869, 1882 (TTAB 2017) (finding that three-dimensional cast of female breast and torso would be perceived as something that applicant assists in making as part of applicant’s associational and educational services, rather than as a mark designating the source of the services).

Use of a designation or slogan to merely convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use.   See, e.g., In re Standard Oil Co., 275 F.2d 945, 946-47, 125 USPQ 227, 228-29 (C.C.P.A. 1960) (GUARANTEED STARTING found to merely convey information about applicant’s services of "winterizing" motor vehicles); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *3 (TTAB 2019) (UNLIMITED CARRYOVER held to be merely informational and not source identifying for telecommunication services because it merely informs consumers that they can carry over unlimited data from one billing cycle to the next); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB 2019) (INVESTING IN AMERICAN JOBS held to be merely informational and not source identifying for various retail, convenience, and grocery store services because it merely informs consumers that applicant promotes American-made goods by investing in American jobs); 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 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).  See TMEP §1202.04 regarding informational matter that does not function as a mark.

A term 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 Serv. 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 Servs., 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 Brit.ish 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 Prods., 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., 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). Cf. In re Griffin Pollution Control Corp., 517 F.2d 1356 (C.C.P.A. 1975) (OXINITE does not serve as a trademark for mixture of gasses produced by waste treatment process because applicant did not sell the gasses separately but only the waste treatment process).

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) regarding terms used only to refer to a process, style, method, or system.

A term that only identifies a menu item does not function as a mark for restaurant services.   In re El Torito Rest. 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) regarding names of characters or personal names as service marks.

A term used only as a trade name is not registrable as a service mark.   See In re Signal Cos., 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 regarding matter used solely as a trade name.

If a service mark would be perceived only as decoration or ornamentation when used in connection with the identified services, it must be refused as nondistinctive trade dress under. 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 §§1202.02(b)–1202.02(b)(ii) regarding product design and product packaging trade dress and §1301.02(c) regarding three-dimensional service marks.

See TMEP §1202.02(a)(vii) regarding trade dress functionality and service marks, §1215.02(d) regarding refusing marks comprised solely of gTLDs for a domain registry operator and domain name registrar services for a failure to function, and §1301.04(g)(ii) regarding refusing marks that do not function as service marks.

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 Inv. Co. of Del., 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 Sys., 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 Enters., 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 Prods., 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 Fla. 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)–1202.09(a)(iii) regarding names and pseudonyms of authors and performing artists, §1202.09(b) regarding names of artists used on original works of art, and §1202.10 regarding names and designs of characters.  

1301.02(c)    Three-Dimensional Trade Dress Service Marks

The three-dimensional trade dress 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. See In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *7-8 (TTAB 2023); In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *7-8 (TTAB 2023); In re Frankish Enters., 113 USPQ2d 1964, 1973 (TTAB 2015).  Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark.  See, e.g., In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *1-2; In re Frankish Enters., 113 USPQ2d at 1966-67; In re Lean-To Barbecue, Inc., 172 USPQ 151, 153 (TTAB 1971); In re Griffs of Am., Inc., 157 USPQ 592, 592-93 (TTAB 1968).

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

However, the Board has held that a mark consisting of a three-dimensional cylindrical cast of female breasts and torso did not function as a mark for applicant’s association, charitable fundraising, and educational services in the field of breast cancer. In re Keep A Breast Found., 123 USPQ2d 1869, 1880 (TTAB 2017). The evidence indicated that the mark was being used as part of applicant’s services to assist women to make such casts. Thus, the cast would be perceived as part of the services, rather than as a mark designating the source of the services. Id. Further, the Board has held that a motion mark consisting of the live visual and motion elements of a guided bus tour in which an entertainer stops in view of the bus to perform a tap dance routine at a predetermined location did not function as a mark, because the evidence showed that the tap dance would be perceived as part of the bus tour services rather than a mark designating the source of the services. In re The Ride, LLC, 2020 USPQ2d 39644, at *10 (TTAB 2020).

Generally, a photograph is a proper specimen of use for a three-dimensional trade dress 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. E.g., In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *5-8 (specimen comprised an advertisement with a photograph showing the guitar-shaped building trade dress mark with text identifying the building as "the first-ever Guitar Hotel" and referencing the various services applicant provided); In re Frankish Enters. Ltd., 113 USPQ2d at 1966-67, 1973 (specimens comprised an advertisement of an exhibition poster with a photograph showing applicant’s monster truck design, as well as photographs of the monster truck while performing in exhibitions).

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). Trade dress for services, which is analogous to product packaging, can be inherently distinctive. See In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5 ("[T]he [marks comprising] hotel building designs are akin to the packaging of what is being rendered and sold inside, namely, hotel services; thus constituting trade dress for the services."); In re Frankish Enters. Ltd., 113 USPQ2d at 1970 (citing In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010)) (applicant’s mark comprising a "‘fanciful, prehistoric animal’ design [on its monster truck] is akin to the packaging of what is being sold, in this case [a]pplicant’s monster truck services"); see also In re Chippendales USA, Inc., 622 F.2d at 1351, 96 USPQ2d at 1684 (applicant’s mark comprising a "Cuffs & Collars [costume] worn by Chippendales dancers constitutes ‘trade dress’ because it is part of the ‘packaging’ of the product, which is ‘[a]dult entertainment services, namely exotic dancing for women’). A mark is inherently distinctive if "[its] intrinsic nature serves to identify a particular source." Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)).

"In determining whether service mark trade dress is inherently distinctive, the ultimate focus is on whether a consumer will immediately rely on it as an indicator of source of origin, even if that source (provider) is unknown, and to differentiate the services from those of competing providers." In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5 (citing In re Chippendales USA, Inc., 622 F.3d at 1352, 96 USPQ2d at 1685). The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) is applied to trade dress for services. See TMEP §1202.02(b)(ii). The examining attorney should consider the following Seabrook factors – whether the proposed mark is:

  • (1) a "common" basic shape or design;
  • (2) unique or unusual in a particular field;
  • (3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of services viewed by the public as a dress or ornamentation for the services; or
  • (4) capable of creating a commercial impression distinct from the accompanying words.

TMEP §1202.02(b)(ii); see, e.g., In re Chippendales USA, Inc., 622 F.3d at 1351, 96 USPQ2d at 1684; In re Seminole Tribe of Fla., 2023 USPQ2d 631, at *7; In re Palacio Del Rio, Inc., 2023 USPQ2d 630, at *5; In re Frankish Enters. Ltd., 113 USPQ2d at 1970; In re Chevron Intell. Prop. Grp. LLC, 96 USPQ2d 2026, 2027 (TTAB 2010); In re Brouwerij Bosteels, 96 USPQ2d 1414, 1421 (TTAB 2010); In re File, 48 USPQ2d 1363, 1365 (TTAB 1998); In re Hudson News Co., 39 USPQ2d 1915, 1922 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997).

For §1(a), §44, and §66(a) applications for trade dress marks for services that are not inherently distinctive, based on the analysis of the Seabrook factors and supporting evidence, and for which acquired distinctiveness has not been established, registration must be refused according to the procedures in TMEP §1202.02(b)(ii). For a §1(b) application for such trade dress, unless the drawing, the description of the mark, and the examining attorney’s search results are dispositive of the lack of distinctiveness without the need to consider a specimen, these applications generally will not be refused registration until the applicant has filed an allegation of use in accordance with the procedures in TMEP §1202.02(b)(ii).

In certain cases, trade dress for services may be generic and incapable of functioning as an indicator of source. See TMEP §1202.02(b)(ii). In such case, the examining attorney must follow the procedures in TMEP §1202.02(b)(ii) for generic product packaging.

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 §§1202.08–1202.08(f) 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 Prods. 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., 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., 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 Indus., 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 §§1301.01–1301.01(b)(vi)); 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 Prods. 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 for a separate service activity, 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 Info. 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 Pharms., 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).  If the applicant’s services are provided through software, it is possible for a mark to serve as a source indicator for the services provided and not just for the software itself. See In re JobDiva Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) ("Even though a service may be performed by a company’s software, the company may well be rendering a service."). Therefore the examining attorney must review all the information of record to determine how the mark is used and how it is likely to be perceived by potential consumers. See In re JobDiva, 843 F.3d at 941, 121 USPQ2d at 1126 ("To determine whether a mark is used in connection with the services . . . a key consideration is the perception of the user."); In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006).

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 at 1221 (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services); see also In re JobDiva,121 USPQ2d at 1126 843 F.3d at 941, (noting that the question of whether consumers would associate registrant’s mark with the identified services, when each step of the services is performed by software, is a factual determination involving case-specific factors).