Buck House, Inc.

Trademark Trial and Appeal Board

Jul 30, 2002

No. 76130954 (T.T.A.B. Jul. 30, 2002)

Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Buck House, L.L.C.
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Serial No. 76/130,954
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Myron Amer, Esq. for Buck House, L.L.C.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
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Before Cissel, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 20, 2000, applicant filed the above-
referenced application to register the mark “BUCK HOUSE” on
the Principal Register for “buying and selling of
antiques,” in Class 35. The basis for filing the
application was applicant’s claim of first use of the mark
in commerce on August 9, 2000.
Upon examination of this application, the Examining
Attorney made two requirements of applicant. The first was
to amend the recitation of services in order to make the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/130,954
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recitation more definite. She suggested that applicant
adopt the following: “retail stores featuring antiques;
retail consignment stores featuring antiques; import and
export agency services featuring antiques.”
The second requirement was for acceptable specimens of
use. Although the application had characterized the
specimens submitted with it as “advertising and promotional
materials,” the actual specimens appear to be receipts for
furniture and chandeliers purchased by applicant. The
first is from Kate Bannister in London. It shows that a
pair of leather tables and a pair of glass chandeliers were
sold to “Buck House” on August 23, 2000. The second
specimen submitted with the application appears to be a
certification issued by Focus Packing Services Limited,
also in London, on the next day, August 24, 2000. It is
addressed to Deborah Buck, applicant’s president. It
certifies that the tables and chandelier purchased from
Kate Bannister, as well as a mirror purchased from the
Charlton House Antiques in London, “were produced more than
100 years ago and are therefore antique.” The mark
applicant seeks to register does not appear on this
specimen. The third specimen appears to be an invoice for
a mahogany and marble console that applicant purchased from
Fred Silberman in New York. This invoice is addressed to
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“Buck House, Deborah Buck, 150 East 77 Street 14A, New
York, N.Y. 10021.”
The Examining Attorney held that the specimens
submitted with the application are not evidence of actual
service mark use because they do not show the use of the
mark by applicant in connection with services performed by
applicant. She characterized the specimens as “invoices
and receipts show[ing] the purchase of antiques by ‘Buck
House,’” and noted that applicant’s purchase of antiques
does not necessarily constitute a service within the
meaning of the Lanham Act.
Applicant responded to the first Office Action with
argument as to both requirements. Applicant declined to
adopt the suggested recitation of services “because it is
inaccurate.” Applicant included a dictionary definition of
the word “antique” as “a piece of furniture, decorative
object, or work of art produced in a former period, or,
according to U.S. Customs laws, 100 years before the date
of purchase; to shop for or collect antiques.” Applicant
argued that based on this definition, the recitation of
services meets the standard for definiteness set forth in
TMEP Section 1301.05, and that the specimens submitted with
the application “show the practice of applicant’s service
to be the purchase and sale of antiques.”
Ser No. 76/130,954
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In her second Office Action, the Examining Attorney
made final the requirements for a more definite recitation
of services and for specimens which show applicant’s use of
the mark it seeks to register in connection with services
rendered to others.
Applicant responded by timely filing a Notice of
Appeal on November 5, 2001. Both applicant and the
Examining Attorney filed briefs, but applicant did not
request an oral hearing before the Board. As noted in the
Board’s ruling on May 15, 2002, the late-filed reply brief
filed by applicant has not been considered, except to the
extent that it confirms that applicant seeks to amend the
recitation of services to adopt the language that the
Examining Attorney indicated in her brief would be
acceptable: “antique brokerage services, namely, buying and
selling antiques for and to collectors.”
In that applicant has not filed any objection to this
conclusion, we consider the requirement for an acceptable
recitation of services to have been met. Accordingly, the
only issue before us in this appeal is the propriety of the
requirement for new specimens of use.
On this issue, it is not at all clear that counsel for
applicant understands the basis for the Examining
Attorney’s finding that the invoices submitted as specimens
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do not constitute acceptable specimens of use, which
Section 1(a)(1) of the Lanham Act requires. Applicant’s
appeal brief focuses on whether the amended recitation sets
forth a service within the meaning of the Act, concluding
that “‘experts’ like applicant, in recognizing and
verifying the authenticity of ‘antiques,’ provide a
valuable service in the antique trade.” (Brief, p.3)
Applicant goes on to state that the specimens show the
practice of applicant’s service by evidencing the purchase
of antiques.
This point has never been disputed. The Examining
Attorney does not question the fact that applicant brokers
antiques. As she points out, however, this is not the
issue. The issue is whether the specimens of record show
applicant’s use of the mark it seeks to register as a
service mark, i.e., used by applicant to identify applicant
as the source of “antique brokerage services, namely,
buying and selling antiques for and to collectors.”
Trademark Rule 2.56(b)(2) states that “a service mark
specimen must show the mark as actually used in the sale or
advertising of the services.” As noted above, although the
application, as filed, claimed that the mark “is used in
advertising and promotional materials, and one specimen
showing the mark as actually used is presented herewith,”
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three specimens were actually attached, but only two of the
three specimens submitted with the application even show
the mark applicant seeks to register, and neither of these
specimens shows applicant’s use of the mark in the sale or
advertising of its services. These specimens do not meet
the requirement of the rule for specimens to show use of
the mark in the sale or advertising of the services. They
do not show use of the mark by applicant, and they do not
show use of the mark in the sale or advertising of
applicant’s services. They do show that applicant
purchases antiques, but that, in and of itself, is not a
service within the meaning of the Lanham Act because it is
not an activity necessarily performed for the benefit of
others.
In summary, because the specimens of record do not
show applicant’s use of the mark it seeks to register in
the sale or advertising of the service of brokering the
purchase and sale of antiques for others, they do not meet
the requirements of Trademark Rule 2.56(b)(2).
DECISION: The requirement for acceptable specimens of
use is affirmed.