Sayah

Trademark Trial and Appeal Board

Jun 18, 2009

No. 76486273 (T.T.A.B. Jun. 18, 2009)

Hearing: Mailed:
May 5, 2009 June 18, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sayah
________

Serial No. 76486273
_______

Ali Kamarei, Esq. and Alexander Chen, Esq. of InHouse IP
Counsel for Kathy Sayah.

Linda Mickleburgh, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Hairston and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On January 30, 2003, Kathy Sayah (Applicant) applied
to register the subject matter shown below on the Principal
Register for services now identified as “advertising agency
namely, promoting the services of the travel,
entertainment, and restaurant industry through the
distribution of printed promotional materials, rendering
sales promotion advice, and dissemination of advertising
matter” in International Class 35 and “printing services”
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76486273
2
in International Class 40. Applicant asserts that she
first used the mark anywhere and first used the mark in
commerce in September 1994 as to both classes.

Applicant also made the following statements in the
application:
Color is not claimed as a feature of the mark.

and

The design consists of the size and shape of
folded printed materials finished to a size of
approximately 2 inches by 4 inches; the location
of a business name or picture on the front cover;
the location of a map and a border of
approximately one sixteenth of an inch on the
back cover; the location of a product or a price
list between the front and back cover. The name
of the business and the map are not party (sic)
of the design.

On the basis of this description, for convenience, we will
refer to Applicant’s mark as “the Folded Printed Material
Design.” The application also includes a claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§ 1052(f).
Serial No. 76486273
3
The Examining Attorney has issued a final refusal on
the grounds that the Folded Printed Material Design
Applicant seeks to register does not function as a service
mark under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C.
§§ 1051, 1052, 1053 and 1127. The Examining Attorney
explains, “In this case the consumer will not perceive the
design in the drawing as a service mark designation for
applicant’s services.” Examining Attorney Final Action of
September 26, 2007, at 2.
Applicant has appealed. Both Applicant and the
Examining Attorney have filed briefs, and both also took
part in an oral hearing on May 5, 2009. We affirm.
At the time of appeal the Examining Attorney had also
refused registration on the grounds that the mark as used
in the specimens did not conform to the mark as shown in
the drawing. In the course of the oral argument the
Examining Attorney withdrew that ground for refusal. At
the hearing Applicant explained that the specimens
Applicant submitted electronically were examples of the
folded printed material depicted in the drawing in a
flattened, opened-out form.
The prosecution history for this application is
lengthy and far from a model of effective communication.
The Examining Attorney issued eight Office actions over the
Serial No. 76486273
4
course of nearly six years and Applicant responded to each.
From the outset Applicant had difficulty identifying both
her mark and her services. For example, Applicant offered
the following explanation of her application early in the
prosecution, “The drawings and specimens submitted are not
what Applicant seeks to trademark, they were submitted
purely in order to proffer evidence of the trade dress
sought. Applicant seeks to trademark, in the form of a
trade dress, the services they offer.” Applicant’s
Response of January 30, 2004, at page 7. Late in the
prosecution Applicant states, “Here, as indicated by the
specimens that were submitted on 12/27/2004, the design was
used to represent services. Specially, (sic) the specimens
clearly indicate that the service, as offered and
associated with the design, include (sic) menu editing,
menu printing and menu updating.” Applicant’s Response of
May 30, 2007, at 2.
The eight Office actions, though adequate for the
purpose of stating the ultimate ground for refusal, failed
to alleviate Applicant’s confusion. Perhaps one or more
phone calls to Applicant would have been more effective in
this regard.
In our consideration of the refusal, of course, we are
bound by the mark and the services as identified in the
Serial No. 76486273
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application recited above. The identification of the mark
and the identification of the services are broad to say the
least.
Though it is not immediately apparent from the wording
in the application, the record indicates that Applicant is
in the business of producing pocket-sized printed
restaurant menus. See Specimens Submitted with the
Application at Filing. The menus consist of four, two-
sided panels which fold to pocket size. The front panel of
the menu features the name of the restaurant and/or logos
and/or photos related to the particular restaurant. The
“inside” panels include a list of the menu items offered by
the restaurant, and the back panel features a small map
showing the location of the restaurant. Along with the
pocket-sized menus, applicant provides small display boxes
which the restaurant may use to make the menus available to
customers when they enter or leave the restaurant. The
obvious purpose of the pocket-sized menu is to promote the
restaurant and to facilitate future visits or orders.
During the oral hearing, Applicant confirmed that she was
not attempting to register the Folded Printed Material
Design for the menus, as such, but for the identified
advertising agency and printing services.
Serial No. 76486273
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To clarify the issue before us, while the development
and printing of the menus certainly falls within the broad
identification of services in both classes covered by the
application, the identified services are far broader.
Applicant’s services include “advertising agency namely,
promoting the services of the travel, entertainment, and
restaurant industry through the distribution of printed
promotional materials, rendering sales promotion advice,
and dissemination of advertising matter” and “printing
services.” Obviously, these services extend well beyond
the narrow field of producing pocket-sized, promotional
restaurant menus.
Turning to the arguments, Applicant first argues:

Despite an explicit finding in the Examiner’s
March 15, 2006, office action, based upon those
same specimens, that the mark had acquired
secondary meaning, the Examiner claims that the
mark neither distinguishes the services of the
application (sic) from those of others nor
indicates the source. No where (sic) in the
Examiner’s response to Applicant’s request for
reconsideration is there an explanation of what
led the trademark office to a finding of
“secondary meaning” or an explanation of what
caused the Examiner to change her mind.

Applicant’s Brief at 8.

Through this argument, Applicant appears to assert (1)
that the Examining Attorney made an explicit finding that
the Folded Printed Material Design had acquired
Serial No. 76486273
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distinctiveness and was entitled to registration on the
Principal Register, and (2) that the Examining Attorney was
bound to adhere to that finding thereafter. We find no
support in the record or the law for either proposition.
First, in the March 15, 2006 Office action the
Examining Attorney stated, “The applicant has shown
evidence that the product configuration has acquired
secondary meaning, therefore, the Examining Attorney sets
out the following section 2(f) information.” Next, the
Office action provides what appears to be a boiler-plate
explanation of the law governing product configurations and
showings of acquired distinctiveness in such cases. The
letter then states, “If the applicant wishes to register
its (sic) mark on the Principal Register under Section
2(f), it (sic) should make such a statement in its (sic)
response.”
We find the Office action both curious and confusing
in view of the fact that Applicant had filed the
application with a claim of acquired distinctiveness.
However, we find no basis in the letter to conclude that
the Examining Attorney had determined either that the
Applicant had made a sufficient showing that the Folded
Printed Material Design had acquired distinctiveness or
that the Folded Printed Material Design was entitled to
Serial No. 76486273
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registration as a mark on the Principal Register.
Furthermore, even if we were to construe the Office
action as Applicant urges, that is, as a finding that the
Folded Printed Material Design was distinctive and
registrable on the Principal Register, all subsequent
actions by the Examining Attorney make it abundantly clear
that the Examining Attorney had determined that the Folded
Printed Material Design did not function as a mark and that
it was not registrable on the Principal Register. That
determination necessarily includes a determination that the
Folded Printed Material Design had not acquired
distinctiveness as a mark.
The Examining Attorney had initially refused
registration based on a determination that the Folded
Printed Material Design was functional. Based on
Applicant’s submissions, and after further consideration,
the Examining Attorney determined that the Folded Printed
Material Design did not function as a mark and issued the
refusal on that basis. The Examining Attorney acted
properly in refining the basis for refusal. It is that
basis for refusal which is properly before us in this
appeal, and which we will now proceed to consider.
In sum, we reject all of Applicant’s arguments based
on the proposition that the Examining Attorney had accepted
Serial No. 76486273
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Applicant’s showing of acquired distinctiveness and that
any such action would be irrevocable in the prosecution
process. Although Applicant has not explicitly argued so,
we will consider whether the Folded Printed Material Design
is either inherently distinctive or has acquired
distinctiveness, and whether the Examining Attorney’s
determination that Folded Printed Material Design does not
function as a mark is in error.
The Examining Attorney argues that the Folded Printed
Material Design does not function as a mark, stating: “The
differing forms [specimens] show no consistent service mark
usage. Their placement in the brochures in various forms
and in informational sections does not rise to service mark
usage. Their use, in other words, would not be viewed by a
potential customer as indicating a source of the folded
menus.” Examining Attorney’s Brief at unnumbered page 2.
Later the Examining Attorney argues further:
The applied-for mark, as shown on the specimen
and representing the ultimate goods purchased
through applicant’s services, does not function
as a service mark because it is not used in a
consistent manner in the form that appears on the
drawing page of record such that a purchaser,
viewing the various forms of the goods, drawn or
photographed, would perceive them as a single
source indicator for the applicant’s “advertising
agency namely, promoting the services of the
travel, entertainment, and restaurant industry
through the distribution of printed promotional
materials, rendering sales promotion advice, and
Serial No. 76486273
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dissemination of advertising matter” in
International Class 35 and “printing services” in
International Class 40.

Id. at unnumbered page 7.
Before addressing the refusal, as such, we wish to
address applicant’s specimens to confirm that they are the
appropriate type of specimens to show service mark use for
the identified services. Trademark Act Section 1(a)
requires that an applicant submit “specimens or facsimiles
of the mark as used” as part of the application. 15 U.S.C.
§ 1051(a)(1). Trademark Act Section 45 provides further
that a mark is “in use in commerce . . . on services when
it is used or displayed in the sale or advertising of the
services.” 15 U.S.C. § 1127. The Trademark Rules likewise
specify, “A service mark specimen must show the mark as
actually used in the sale or advertising of the services.”
37 C.F.R. § 2.56(b)(2).
A specimen used in the rendering of the services may
suffice to show service mark use. In re Eagle Fence
Rentals, Inc., 231 USPQ 228, 231 (TTAB 1986). In this
case, the folded menus qualify as specimens showing use of
the Folded Printed Material Design in the rendering of both
Serial No. 76486273
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the advertising agency services and the printing services.1
Of course, whether the Folded Printed Material Design
functions as a mark is an entirely different question.
Turning to the question as to whether the Folded
Printed Material Design functions as a mark, we conclude
that Applicant has failed to show that the Folded Printed
Material Design is either an inherently distinctive mark or
a mark which has acquired distinctiveness.
In Two Pesos, an infringement case arising under
Trademark Act Section 43(a), 15 U.S.C. § 1125(a), the
Supreme Court held that trade dress employed in the
rendering of restaurant services could be, and in that case
was, inherently distinctive. Two Pesos Inc. v. Taco Cabana
Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992). While trade
dress used with services may be inherently distinctive, not
all such trade dress is inherently distinctive. The facts
of each case dictate that determination. In re File, 48
USPQ2d 1363 (TTAB 1998) (trade dress for bowling alley
services consisting of “tubular lights running lengthwise
down bowling lanes projecting over the gutters” held not
inherently distinctive because “… customers for bowling

1 For the record, Applicant has also provided specimens consisting of
its own advertising brochures promoting its menu program which employs
the general format of the Folded Printed Material Design, but without a
map, as well as advertising where the menus in the Folded Printed
Material Design are depicted.
Serial No. 76486273
12
alley entertainment services would regard applicant's trade
dress simply as an element of interior decoration and would
not, therefore, immediately perceive such trade dress as a
source indicator”), See also In re Hudson News Co., 39
USPQ2d 1915 (TTAB 1996), aff'd per curiam, 114 F.3d 1207
(Fed. Cir. 1997).
In another trade dress case, the Supreme Court
recognized that there are cases where it is not reasonable
to assume that relevant consumers are predisposed to view
certain types of trade dress as source indicators.
Wal Mart Stores v. Samara Bros., 529 U.S. 205, 54 USPQ2d
1065, 1068 (2000). This “predisposition” is key in
determining whether or not particular trade dress is
inherently distinctive.
In this case we conclude, without hesitation, that
Applicant’s Folded Printed Material Design is not the type
of trade dress which relevant consumers are predisposed to
view as a source indicator. See, e.g., In re Hudson News
Co., 39 USPQ2d at 1923. We likewise conclude, without
hesitation, that the Folded Printed Material Design is not
inherently distinctive.
The elements Applicant identifies as her mark are
extremely common elements in use in the advertising or
rendering of both advertising agency and printing services.
Serial No. 76486273
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This is true whether we view the elements alone or in
combination. Applicant describes her mark as follows:
The design consists of the size and shape of
folded printed materials finished to a size of
approximately 2 inches by 4 inches; the location
of a business name or picture on the front cover;
the location of a map and a border of
approximately one sixteenth of an inch on the
back cover; the location of a product or a price
list between the front and back cover. The name
of the business and the map are not party (sic)
of the design.

First, applicant identifies the size as an element of
her mark, a common size for printed material suitable for
carrying in a pocket. At the same time Applicant specifies
that the printed material can be folded. These mundane
characteristics fail to define anything which is remotely
distinctive.
Next, Applicant specifies that there is a business
name or picture on the cover – again, a common feature of
printed material used in advertising or printing. This
element is so open-ended as to be meaningless for the
purpose of defining anything distinctive. Cf. In re
International Flavors & Fragrances Inc., 183 F.3d 1361, 51
USPQ2d 1513 (Fed. Cir. 1999).
Next, Applicant specifies that the mark includes a map
with a border which appears on the back cover of the folded
printed material. This element is also a common
Serial No. 76486273
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characteristic of printed material used in advertising or
printing. We also note here that Applicant’s menu
specimens are not consistent in the display of a border
with the maps.
Lastly, applicant identifies a product or price list
in the inside of the printed material as an element of her
mark. This would describe virtually any piece of printed
advertising material. Here again, this element is so open-
ended as to be meaningless for the purpose of defining a
mark. Id.
These elements, whether viewed individually or
together, are characteristics of many, if not most,
advertisements or other printed material used by businesses
in the travel, entertainment, and restaurant industry, or
elsewhere. To be charitable, the proposition that
potential purchasers of Applicant’s advertising agency or
printing services will view the Folded Printed Material
Design as an inherently distinctive source indicator is not
credible.
In arguing that the Folded Printed Material Design is
inherently distinctive, Applicant places great reliance on
the opinion in Computer Care v. Service Systems Enterprises
Inc., 982 F.2d 1063, 25 USPQ2d 1020 (7th Cir. 1992). In
that trade dress infringement case, the plaintiff claimed
Serial No. 76486273
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trade dress rights in the design of its reminder letters,
brochures and monthly reports which it provided as part of
a program for auto dealerships and repair shops to generate
auto-servicing business. In analyzing the potential
distinctiveness of the trade dress the Court states:
Computer Care's trade dress, as embodied in its
sales brochure, reminder letters and monthly
reports, is neither generic nor descriptive. Of
course, some of its elements, such as the use of
a window envelope to send out reminder letters,
are arguably generic, see Roulo, 886 F.2d at 936;
others, for example the illustrations in its
sales brochure and the titles of its monthly
reports, are arguably descriptive. But Computer
Care's trade dress also contains elements that
are at least suggestive, such as the blue right-
angled design on the reminder letters and
envelopes… And it has many features that appear
to be arbitrary, including the three “Win or
Lose” pairs on the first page of the brochure;
the layout of the brochure; the division of the
monthly dealer information into three reports,
with particular columns of information in a
particular order; and the use of a certain shade
of blue for the right-angled design and the
manufacturer's logo on the reminder letters.
…

Where the plaintiff's overall trade dress is
distinctive, the fact that it uses descriptive
(or generic) elements does not render it
nonprotectable. Taco Cabana, 932 F.2d at 1120;
Roulo, 886 F.2d at 936.

Id. at 1024. The Court ultimately concluded that the
overall trade dress is inherently distinctive.
In contrast, the elements Applicant here describes as
comprising her mark are all highly descriptive or generic.
Serial No. 76486273
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Unlike the trade dress in the Computer Care case, there are
no suggestive or arbitrary elements which render the Folded
Printed Material Design inherently distinctive overall. In
fact, the elements of the Folded Printed Material Design
are so common that Applicant faces a substantial, if not
insurmountable burden, in establishing that the Folded
Printed Material Design has acquired distinctiveness, a
question we will now address.
The Application asserts use of the Folded Printed
Material Design in commerce since September 1994. Also,
Applicant has provided an affidavit in support of her claim
that the Folded Printed Material Design has acquired
distinctiveness. The affidavit states that over 58,000,000
menus and brochures employing the Folded Printed Material
Design have been distributed in the United States, and that
over 170,000 sales brochures and leaflets bearing the
Folded Printed Material Design have been distributed.
Applicant also states that the Folded Printed Material
Design has been displayed in the lobbies of over 500 hotels
and motels throughout the United States, that the relevant
market and consumers, including 4,300 restaurants, have
been exposed to the mark. Applicant also estimates that
over 27,000 hotel staff and over 50 million tourists and
visitors are exposed to the Folded Printed Material Design
Serial No. 76486273
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annually. Finally, Applicant states that she has spent
$540,000 on advertising activities, such as, brochures,
direct mailings, gift packs, sales calls, website
development and other activities to promote the Folded
Printed Material Design. Applicant’s Affidavit, dated
December 14, 2004.
Absent from the record is any evidence which would
show what impact that these various activities have had on
relevant consumers. That is, we have no evidence, and
certainly no direct evidence, that anyone perceives the
Folded Printed Material Design as a source indicator for
Applicant’s services. This is especially important in a
case, such as this one, where the alleged mark is so
broadly and even vaguely defined. Accordingly, we find
Applicant’s evidence of acquired distinctiveness wholly
insufficient under the circumstances of this case.
The reference to the large number of menus distributed
appears to relate to sales volume. However, high sales are
of little probative value in a case such as this; high
sales do not necessarily translate into recognition of
trade dress as a mark. Braun Inc. v. Dynamics Corp. of
America, 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed. Cir.
1992); Pingel Enterprise Inc., 46 USPQ2d 1811, 1822 (TTAB
1998).
Serial No. 76486273
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With regard to Applicant’s claim of use since 1994, a
mere statement of at least five years use is not generally
accepted in applications to register trade dress;
applicants face a heavy burden in such cases. See In re
Ennco Display Systems Inc., 56 USPQ2d 1279, 1284 (TTAB
2000) and cases cited therein. Under the circumstances of
this case, where applicant asserts use for about fifteen
years, the claim of long use has little probative value.
Stuart Spector Designs Ltd. et al. v. Fender Musical
instruments Corp., __ USPQ2d __, Opposition No. 91161403 et
al., Slip Opinion at 60 (TTAB, March 25, 2009) (fifty years
use held insufficient to show guitar design mark had
acquired distinctiveness). As we noted, the burden for the
purpose of showing acquired distinctiveness is especially
high in this case due to the broad description of
Applicant’s Folded Printed Material Design. Applicant’s
evidence falls far short of meeting that burden.
Accordingly, we conclude that Applicant has failed to
show that the Folded Printed Material Design is either
inherently distinctive or that it has achieved acquired
distinctiveness.
Decision: As to both classes, we affirm the refusal
to register the asserted mark under Trademark Act Sections
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1, 2, 3 and 45, on the grounds that the Folded Printed
Material Design does not function as a mark.