Lee Fashion Fabrics, Inc.

Trademark Trial and Appeal Board

Jul 31, 2002

No. 75566627 (T.T.A.B. Jul. 31, 2002)

7/31/02
Hearing: Paper No. 13
June 25, 2002 DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lee Fashion Fabrics, Inc.
________

Serial No. 75/566,627
_______

Irwin C. Alter of Alter and Weiss for Lee Fashion Fabrics,
Inc.

Jane C. Kang, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Seeherman, Hanak and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Lee Fashion Fabrics, Inc. sought to register the term
STARSUEDE on the Principal Register in conjunction with
services recited, as amended, as “wholesale distributorship
for suede-like synthetic fabric in the piece used for apparel,
upholstery and seating material on office and residential
furniture; inserts and covers on wood furniture; coverings for
walls, ceilings and panels; and footwear, bags, portfolios and
other personal accessories and other special end users,” in
International Class 35.1

1 Application Serial No. 75/566,627 was filed on October 7, 1998
based upon applicant’s allegation of use in commerce since at least
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/566,627
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The Trademark Examining Attorney has finally refused
registration on the ground that none of the various specimens
submitted by applicant show use of the mark in connection with
these services.
Applicant has appealed the final refusal to register.
Applicant and the Trademark Examining Attorney have fully
briefed the case. At applicant’s request, a hearing was heard
before the Board on June 25, 2002.
We affirm the refusal to register.
The original specimens received with the application were
copies of sample swatches of fabric, color cards and
performance test results, as well as two pages of promotional
materials, including a photocopy of the front cover of a
brochure entitled “The Starsuede Star Guide 1990.” In its
response of February 15, 2001, applicant submitted the
aforementioned Starsuede brochure of 1990 in its entirety.
While the Trademark Examining Attorney, in her final Office
action, provided applicant the opportunity to submit yet

as early as 1977. Applicant's recitation of services was amended
voluntarily by applicant in its June 12, 2001 response to an earlier
Office Action.
Additionally, during the prosecution of this application,
applicant claimed ownership, by assignment, of Reg. No. 1,839,463,
also for the mark STARSUEDE, for “suede-like synthetic fabric in the
piece used for upholstery and seating material on office and
residential furniture, inserts and covers on wood furniture;
coverings for walls, ceilings and panels; and footwear, bags,
portfolios and other personal accessories,” in International Class
24.
Serial No. 75/566,627
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further sets of substitute specimens supporting usage in
connection with the identified services, applicant chose to
rely upon those previously submitted. In denying applicant’s
request for reconsideration, the Trademark Examining Attorney
continued to charge that none of the specimens of record shows
use of the mark in connection with applicant’s offering the
claimed distributorship services to potential customers.
Section 1(a)(1) of the Trademark Act, 15 U.S.C.
§1051(a)(1), requires that applicant furnish specimens of the
mark as used. The function of a service mark is “to identify
and distinguish the services of one person … from the services
of others and to indicate the source of the services … .” A
mark is deemed to be in use on services “… when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce… .” See Section 45 of the
Trademark Act, 15 U.S.C. §1127.
Because service marks can be used in a great number of
ways, the types of specimens that demonstrate the use of
service mark are numerous. However, there must be some direct
association or nexus between the offer of services and the
mark sought to be registered. Hence, applicant must furnish
specimens or facsimiles showing use of the mark in connection

Serial No. 75/566,627
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with the offering of the recited services. See also Trademark
Rule 2.58, 37 C.F.R. §2.58.
As correctly argued by the Trademark Examining Attorney:
Whether a mark has been used for a particular
service is a question of fact to be determined
primarily on the basis of the specimens. In re
Advertising and Marketing Development Inc., 821
F.2d 614,2 USPQ2d 2010 (Fed. Cir. 1987) (sets out
“direct association test” between the mark sought
to be registered and the services specified in the
application; cases involving advertising services
may present factual considerations including
whether the services are “sufficiently separate”
from the subject of the advertising, and whether
the mark has been used to identify the advertising
services themselves); In re Duratech Industries
Inc., 13 USPQ2d 2052 (TTAB 1989) (the mere fact
that the bumper stickers are distributed by
organizations which perform the services did not
persuade the Board that members of the general
public who encounter the services would perceive
the design on the bumper stickers as a mark
identifying the services ); In re Moody's Investors
Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa” as
used on the specimens, found to identify the
applicant's ratings instead of its rating
services); In re El Torito Restaurant Inc., 9
USPQ2d 2002 (TTAB 1988) (no evidence of use of
MACHO COMBOS for restaurant services where
specimens showed use only to identify food items);2
Peopleware Systems, Inc. v. Peopleware, Inc., 226

2 Although the instant applicant argues that El Torito supports
its position, we disagree. The specimens of use in El Torito were
table tents in the restaurant depicting plates of food with the
wording “INTRODUCING OUR FIVE MACHO COMBOS.” That applicant sought
to register the mark MACHO COMBOS for “multiple combinations of
plates of food items as part of restaurant services.” However, we
held that the term was being used only in reference to the food
items – not as a service mark for the restaurant services. See also
In re Brown & Portillo, Inc., 5 USPQ2d 1391 (TTAB 1987) {“it does
not logically follow that any arbitrary designation used in a menu
to identify a particular food or beverage available in that
restaurant also necessarily performs a service mark function to
identify the restaurant services.”].
Serial No. 75/566,627
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USPQ 320, 323 (TTAB 1985) (it is insufficient that
a term alleged to constitute the mark be used in
advertising, there must also be a direct
association between the term and the services with
respect to the advertising; use of the term
PEOPLEWARE merely within a byline on calling card
specimen did not constitute service mark usage of
term, even though specimens elsewhere evidenced
that applicant provides the recited services ); In
re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984)
(specimens and other material offered by the
applicant showed mark used only in connection with
a photochemical process or method, with no
association between the applicant's offer of
services and the mark); see also Ready
Communications v. Environmental Action Foundation,
477 F. Supp. 936, 203 USPQ 144 (D.D.C. 1979) (the
mere advertising of one’s goods does not constitute
service mark; use of the mark in technical
bulletins and data sheets merely identified and
advertised chemicals and not services).

(Trademark Examining Attorney’s appeal brief, pp. 4-5).

Accordingly, to determine whether applicant’s alleged
service mark has been used in connection with the recited
services, we take a closer look at the specimens of record.
The manner of use on the specimens must be such that potential
purchasers would readily perceive the subject matter as
identifying and distinguishing the applicant's services and
indicating their source, even if that source is unknown.
Section 45 of the Trademark Act, 15 U.S.C. §1127, TMEP
§ 1301.04.
In analyzing factually the acceptability of specimens of
use, we have held that “while the nature of the services does
not need to be specified in the specimens, there must be
Serial No. 75/566,627
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something which creates in the mind of the purchaser an
association between the mark and the service activity.” See
In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994),
citing to Intermed Communications Inc. v. Chaney, 191 USPQ 501
(TTAB 1977) and In re Metriplex, Inc. 23 USPQ2d 1315 (TTAB
1992). It is the absence of any association or nexus between
the mark and the services that supports the position taken by
the Trademark Examining Attorney herein.
The photocopied pages submitted with the original
application merely provide information about the STARSUEDE
line of synthetic fabrics and its uses. These include product
specifications, descriptions of the goods, as well as features
of the quality and nature of the goods. It is abundantly
clear that Lee Fashion Fabrics (applicant) offers for sale a
line of synthetic, suede-like fabrics which it calls
STARSUEDE, and that it markets these fabrics directly to its
customers at prices characterized as “factory direct.”
Consistent with the extant federal trademark registration
owned by applicant, it appears from these pages that STARSUEDE
serves as a source indicator for applicant’s fabrics, but the
specimen does not show use of the mark for distribution
services.
We turn next to the advertising brochure submitted as a
substitute specimen (“The Starsuede Star Guide 1990”). The
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star motif is dominant throughout the brochure: the cover
having the twelve signs of the Zodiac, each individual page
having a different sign of the Zodiac and a corresponding
star-shaped swatch of fabric, and frequent examples of text
playing on this motif.

Upon close examination of the text of this replacement
specimen of use, we see wording that identifies the goods as
§ “the polyester with real star quality”
§ “today's most seductive sensation in fashion is
available in a stellar array of colors, as you’ll
Serial No. 75/566,627
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see from our color book forecast. We offer plain,
printed and embossed designs”
§ “This year, all signs point to STARSUEDETM of Golden
Touch polyester, from Lee”
§ “STARSUEDETM -- the preferred suede”
§ “STARSUEDETM [is] from Lee Fashion Fabrics”

Applicant contends that “Lee Fashions offers wholesale
consumers fabric products and services to distribute such
products, the same mark is used to identify both the fabric
product and the related distribution service.” Certainly,
applicant is correct in arguing that a manufacturer or
merchant may use a single source indicator as both a service
mark and a trademark. Furthermore, it is quite logical that
applicant’s ultimate objective is to distribute the goods that
it manufactures.
Applicant argues strenuously that its targeted customers
would perceive the term STARSUEDE, as shown in the pages of
this brochure, to be a source indicator for the recited
services. We disagree. Nowhere do the specimens of use show
STARSUEDE being used as a service mark. There is no language
at all in the specimens that makes either a direct or an
indirect association between the mark, STARSUEDE, and
applicant’s distributorship services.
Serial No. 75/566,627
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Accordingly, in the absence of a nexus between STARSUEDE
and the recited services, we affirm the refusal of the
Trademark Examining Attorney as to registration of this mark
for distributorship services.
Decision: The refusal to register is affirmed on the
ground that the specimens of record are not acceptable
evidence of actual service mark usage of the mark STARSUEDE.