LaBellarte

Trademark Trial and Appeal Board

May 29, 2009

No. 76526520 (T.T.A.B. May. 29, 2009)

Mailed: May 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re LaBellarte
________

Serial No. 76526520
_______

Thomas G. Gardiner and Ryan McPhail of Gardiner Koch &
Weisberg for Michael LaBellarte.

Kevin S. Corwin, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).1
_______

Before Quinn, Hairston and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
On June 27, 2003, Michael LaBellarte (“applicant”)
filed an application for registration of the mark THE SOFT
ROOM (in standard character form) on the Principal Register
under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), for “artistic/creative editing and design
services, editorial consultation, post production solutions
to advertising agencies, software to design rooms.” In the

1 The application has been re-assigned to the present examining
attorney.
THIS OPINION IS
NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76526520
2
course of prosecuting his application, applicant amended
his mark to SOFT ROOM (deleting the word THE) and amended
his identification of services to the following, which is
the operative identification of services in this
application:
“Preparing audio-visual presentations of creative
images, sound and text, and any combination
thereof, in electronic, photographic, print-
based, film-based and artistic mediums for use in
advertising, solicitation and persuasive
communication” in International Class 35;

“Editing services, namely, written text editing,
video editing, film editing, and audio editing,
of creative images, sound and text, and any
combination thereof, in electronic, photographic,
print-based, film-based and artistic mediums for
use in advertising and persuasive communication;
Post-production services, namely, videotape
production, multimedia entertainment software
production services, and television production
services of creative images, sound and text, and
any combination thereof, in electronic,
photographic, print-based, film-based and
artistic mediums for use in advertising,
solicitation and persuasive communication” in
International Class 41; and

“Graphic art design services of creative images,
sound and text, and any combination thereof, in
electronic, photographic, print-based, film-based
and artistic mediums for use in advertising and
persuasive communication; Consulting services in
the field of design, selection, implementation
and use of computer hardware and software systems
for others in the areas of advertising,
solicitation and persuasive communication” in
International Class 42.

On February 19, 2004, applicant filed an amendment to
allege use, alleging that the mark was first used anywhere
Serial No. 76526520
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and first used in commerce at least as early as October 18,
2000 for the services in each International Class. The
examining attorney rejected the specimen for each
International Class. The examining attorney also rejected
each of the additional specimens filed on July 6, 2004,
December 26, 2006, October 1, 2007 and May 24, 2008. In
his final action dated November 26, 2007, the examining
attorney refused registration of the application under
Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051-1053 and 1127,
because applicant's mark, as used on the submitted
specimens of use, does not function as a service mark to
identify and distinguish applicant's services from those of
others and to indicate the source of applicant's services.
After applicant appealed the examining attorney’s
refusal of registration, both applicant and the examining
attorney filed briefs. We affirm the refusal.
Section 1 of the Trademark Act and Trademark Rule
2.76(b)(2) provide that an amendment to allege use must be
accompanied by a specimen of the mark as actually used in
commerce. Trademark Rule 2.76(b)(2) refers to Trademark
Rule 2.56 for the requirements for specimens, which in turn
requires a specimen showing the mark as actually used in
the sale or advertising of the identified services. See
Trademark Rule 2.56(b)(2).
Serial No. 76526520
4
The question of whether a designation functions as a
mark for the identified services is determined based on the
specimens and other information of record. In order to
show service mark use, the specimen must show use of the
mark in a manner that would be perceived by the relevant
public as identifying applicant's services and indicating
their source. See In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456 (CCPA 1973).
The original specimen submitted with the amendment to
allege use for each International Class, consists of two
pages from an advertising brochure, which states in
relevant part:
Because of the unique module design of Outsider
editing and design environments, Outsider is able
to offer clients an opportunity to have Outsider
inside their own work place. Outsider
environments are based on our proprietary soft
room principle that allows effortless rotation of
award winning creative editors and designers
directly into the privacy of your own office.

***
Outsider has developed its editing and design
environments around its proprietary soft room
principle. This principle dispenses with
equipment in the actual creative room thus
allowing creatives and Outsiders to concentrate
on the project at hand and not be distracted by
the clanking and humming of machinery. This also
maximizes the available work space for all
involved to stretch out and be comfortable. Each
room is decorated with seating and artifacts that
Serial No. 76526520
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stimulate the creative mood and are pleasing to
the eye, body and mind.

Applicant does not use SOFT ROOM as a source identifier in
the original specimen for any of the services recited in
applicant's identification of services. “Soft room” is
identified as a proprietary principle, described as
“dispensing with equipment in the actual creative room thus
allowing creatives and Outsiders to concentrate on the
project at hand and not be distracted by the clanking and
humming of machinery.” As used in this specimen, embedded
in text and identifying a principle used in “editing and
design environments,”2 “soft room” does not distinguish
applicant's recited services from others or indicate the
source of applicant's services. Compare, In re Universal
Oil Products, supra (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 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

2 The specimen shows certain wording such as “soft room” in the
color red rather than the color black, in which the remaining
text appears. Purchasers would not attribute any trademark
Serial No. 76526520
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mark and the offering of services). Thus, we agree with
the examining attorney that the original specimen does not
exhibit use of SOFT ROOM as a mark for applicant's
services.
The substitute specimen filed on July 6, 2004
contains, in relevant part, essentially the same text
quoted above, and the specimen filed on December 26, 2006
appears to be identical to one of the pages applicant filed
with its original amendment to allege use. The examining
attorney properly rejected these two substitute specimens
for the same reasons mentioned in the preceding paragraph.
On October 1, 2007, applicant filed two additional
specimens which it characterized as “advertisements.”
“Soft room” appears alone on the top left portion of the
first advertisement, depicted below:

significance to “soft room” due to this difference in color
because other wording is also in red.
Serial No. 76526520
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A definition of “soft” and a definition of “room” are
located under “soft room.” Because “soft room” is in the
same font and size as other wording arranged randomly on
the specimen, namely, “noise”, “brand, “production” and
“enhancement,” and definitions of these words are also
Serial No. 76526520
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provided on the specimen, “soft room” on the specimen would
not even be perceived as a service mark.
The second advertisement submitted on October 1, 2007
is reproduced below:

By referring to a media room with certain capabilities, and
by labeling the “Soft Room system” proprietary, from this
specimen, purchasers would not perceive “Soft Room” as the
source identifier of any of applicant's services.
We now turn to the remaining specimen, namely, the
specimen submitted on May 24, 2008, which comprises what
applicant has labeled as “a corporate advertisement
brochure Outsider has used in the marketing of its design
and editing services.” The entire specimen, submitted for
each International Class, is reproduced below:3

3 In case the text is not clear from the reproduction of the
specimen, we set forth the text below:
Serial No. 76526520
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Outsider, Inc. has developed its editing and design
environments around its proprietary soft room
principle. This principle maximizes the available
work space for all involved to be comfortable and be
able to concentrate on the project at hand while not
being distracted by the clanking and humming of
machinery. Each room is decorated with seating and
artifacts that stimulate the creative mood and are
pleasing to the eye, body and mind.

Focusing on artistic creation, Outsider, Inc. uses the
soft room principle for our Editing and Design
services. As an overall creative resource Outsider,
Inc. provides consultation and post production
solution using its software for design rooms.

Serial No. 76526520
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“Soft room” again is identified as a proprietary principle.
In the paragraph on the right, the specimen states that
“Outsider, Inc. uses the soft room principle for our
Editing and Design services.” The specimen states that
“soft room” is a principle; and that principle is used in
rendering editing and design services. There is no direct
association of “soft room” with the services listed in the
application. Further, “soft room” at the top of the
specimen similarly would not be perceived as a service mark
for the editing and design services mentioned in the
specimen; the identification of “soft room” as a principle
in the text of the specimen precludes a direct association
with the stated services and there is nothing else in the
specimen to make the necessary direct association.4
In view of the above, we find that the specimens
submitted by applicant do not satisfy the requirements of
the Trademark Act or the Trademark Rules in that they fail
to show the matter sought to be registered functioning as a
service mark.
Decision: The examining attorney's requirement for
specimens which demonstrate the mark sought to be

4 In his brief, the examining attorney maintains that applicant
did not provide the proper declaration in support of this
specimen. We need not address the sufficiency of the declaration
because we affirm the examining attorney’s rejection of this
specimen.
Serial No. 76526520
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registered used in connection with the services set forth
in the application is affirmed for each International
Class.