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.