Webb & Associates, Inc.

Trademark Trial and Appeal Board

Jan 26, 2005

No. 75868810 (T.T.A.B. Jan. 26, 2005)

Hearing: Mailed:
07 December 2004 26 January 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Webb & Associates, Inc.
________
Serial No. 75868810
_______
Andrew W. Ransom of Malloy & Malloy, P.A. for Webb &
Associates, Inc.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Holtzman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 13, 1999, Webb & Associates, Inc.
(applicant) applied to register the term NEED SPACE (typed)
on the Principal Register for services ultimately
identified as:
Referrals for general building contractors in Class
35.
Real estate agency services, namely, real estate
brokerage, leasing, and agency representation for
commercial renters obtaining utility hook-up services
in Class 36.
Real estate site selection; real estate development;
general contracting services in the nature of
electrical and plumbing contracting in Class 37.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75868810
2
Architectural design services in Class 42.
The application (Serial No. 75868810) was based on
applicant’s assertion of a bona fide intention to use the
mark in commerce. Applicant’s mark was published for
opposition on August 14, 2001. A Notice of Allowance was
issued on November 6, 2001. On May 6, 2002, applicant
filed a Statement of Use alleging that it had used the mark
on the goods anywhere and in commerce at least as early as
July 1998. Some of the specimens submitted with the
Statement of Use are set out below.
Ser No. 75868810
3
The examining attorney1 then refused to register
applicant’s term on the basis that it fails to function as
a mark under the provisions of Sections 1, 2, 3, and 45 of
the Trademark Act. 15 U.S.C. §§ 1051, 1052, 1053, and
1127. Applicant responded to the refusal by, inter alia,
submitting another example of applicant’s use of its mark,
a portion of which is displayed below.
1 The present examining attorney was not the original examining
attorney in this case.
Ser No. 75868810
4

After the examining attorney made the refusal final,
applicant submitted a request for reconsideration. The
request contained additional examples of use, one of which
is set out below.
The examining attorney denied the request for
reconsideration and he provided examples of other parties’
use of the term “need space” in association with real
estate-related services. Two examples are set out below.
Ser No. 75868810
5
After the request for reconsideration was denied,
applicant filed a notice of appeal.2
We begin our discussion by first addressing some
procedural issues. Applicant’s request for reconsideration
(pp. 1-2, n.1) contained the following statement, which is
repeated in its appeal brief (p. 12, n.2).
The Examiner's argument and objection has not been
raised pursuant to Section 2(e) on the separate
grounds that the mark is merely descriptive. However,
to the extent it may be determined or later found that
such an objection was intended to be or was lodged
under section 2(e), then leave is requested to so
respond. Moreover, in the event that such an argument
is asserted, while Applicant believes the mark is not
descriptive and would so argue, in the alternative, it
is respectively suggested that Registration is proper
pursuant to Section 2(f), on the ground that the mark
has acquired distinctiveness through its use, as
supported by the attached Declaration. Accordingly,
pursuant to TMEP § 1212.02(c), Applicant hereby claims
and seeks registration, in the alternative, on the
basis of acquired distinctiveness pursuant to § 2(f).
Finally, again, in the alternative, pursuant to TMEP
§ 1212.02(c), should registration on the Principal
Register be refused, Applicant requests registration
on the Supplemental Register.
2 An oral hearing was held on December 7, 2004.
Ser No. 75868810
6
At oral argument, it was clear that there was no
refusal based on the ground that the mark was merely
descriptive and applicant clarified that it was not
interested in seeking registration on the Supplemental
Register. We add that, to the extent that applicant is
attempting to overcome the examining attorney’s refusal by
seeking registration under the provision of Section 2(f),
such an action is unnecessary because the question here is
not descriptiveness but whether applicant’s term functions
as a mark. However, applicant’s evidence will be
considered in determining whether applicant’s term does
function as a mark. Id.
Now we address the central issue of this appeal, which
is whether applicant’s term NEED SPACE functions as a mark
for applicant’s identified services. “The question whether
the subject matter of an application for registration
functions as a mark is determined by examining the
specimens along with any other relevant material submitted
by applicant during prosecution of the application.” In re
The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986).3
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
3 In view of the criticality of the specimens and the fact that
applicant filed an intent-to-use application, a refusal on the
ground that applicant’s term does not function as a mark would
ordinarily not have been appropriate until the specimens were
submitted.
Ser No. 75868810
7
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216
(CCPA 1976) (emphasis in original, footnote omitted).
“The Trademark Act is not an act to register words but
to register trademarks. Before there can be
registrability, there must be a trademark (or a service
mark) and, unless words have been so used, they cannot
qualify for registration. Words are not registrable merely
because they do not happen to be descriptive of the goods
or services with which they are associated.” In re
Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA
1960) (emphasis in original). “[N]ot every word or
combination of words which appears on an entity's goods
functions as a trademark.” In re Volvo Cars of North
America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
Viewing applicant’s mark as used on the specimens and
other evidence of record, we cannot conclude that
applicant’s term functions as a mark. First, the term as
used on the specimens set out earlier appears merely
informational. The first specimen is a sign with the term
NEED SPACE followed by a list of available space (3,600,
Ser No. 75868810
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7,200, 10,000, etc. sq. ft. of office/warehouse space) and
a telephone number and the phrase “for sales or leasing
information” with applicant’s corporate name. This sign
merely informs people who need office or warehouse space
that space is available in the specified square footage
from applicant.
Applicant’s second specimen contains the words “Need
Space” followed by a telephone number on the same line.
The next lines contain the term “commercial real estate
services” and applicant’s corporate name. Again, this
specimen merely informs people who need commercial real
estate space that applicant can assist customers in meeting
their space needs. These specimens as well as the other
literature display the mark in simple style that would not
provide any basis for prospective purchasers to conclude
that the term is a trademark. Nor is there any evidence
that applicant’s term is in fact recognized by others as a
trademark.
Second, the examining attorney has included evidence
that others in the area of real estate-related services use
the term “Need Space.” These uses include the following:
Need Space?
Hot New Properties
Are you looking for office space?
Ser No. 75868810
9
Do you need to buy or lease office, retail, or
industrial space?
Starboard Commercial, www.starboardnet.com.4
Need Space Immediately? Check our In-House Listings.
We may be able to locate vacant space which may be
furnished…
CommercialBrokers.com.
Welcome to the Caldwell Banker Tsunis Rosner Website…
Short on time. Click here to tell us what you are
looking for: Need Space? Or call.
www.cbcli.com.
Brockton – 6 Bedroom – 2 Bath – Need Space? We got
space.
www.bostonapartments.com.
Need space? Located in Carlisle township on nearly ½
acre lot.
www.realtyone.com.
Need Space? This old house is full of character and
many rooms.
www.youronlineagents.com.
What a magnificent view – one of the highest points on
lower Michigan. You need space? This 5 bd 2.5 bath
has SPACE!
ERA.com.
The evidence indicates that the phrase “Need Space” is
used with real estate-related services to indicate that the
business can assist prospective customers fulfill their
need for space by helping them build, find, select, or
design the needed space.5
4 We note that the web addresses are often found in small print
on the otherwise blank page preceding or following the web page.
5 The examining attorney also made of record definitions of
“need” (“something required or wanted”) and “space” (“a blank or
empty area” and “an area provided for a particular purpose”).
Denial of Request for Reconsideration at 2.
Ser No. 75868810
10
A term must do more than appear on a specimen in order
to function as a trademark. See, e.g., Volvo Cars, 46
USPQ2d at 1460 (Primary significance of DRIVE SAFELY
“likely to be perceived by purchasers and prospective
purchasers is merely that of an everyday, commonplace
safety admonition”); Wakefern Food, 222 USPQ at 78 (WHY PAY
MORE is a “relatively common merchandising slogan [that]
does not act or function as a mark”); and In re Manco Inc.,
24 USPQ2d 1062, 1066 (TTAB 1992) (“‘THINK GREEN,’
irrespective of whether it appears along with a background
design, would be perceived by applicant's customers and
potential purchasers as merely an informational slogan
devoid of trademark significance”).
Applicant argues (Brief at 6) that “the phrase ‘NEED
SPACE’ reflects a double entendre, functioning both as
statement, and also having a whimsical meaning, namely
identifying an imaginative actual location, as might be
used in the phrase ‘come to the ‘NEED SPACE.’” Applicant
has offered no evidence to support this argument and we are
skeptical that any significant number of prospective
customers upon seeing the words “NEED SPACE” on a sign
followed by a listing of square footage, e.g., “3,600 sq.
ft. +/- Office/Warehouse,” would also understand the words
to be a reference to a whimsical place.
Ser No. 75868810
11
Applicant [Brief at 16] maintains that “not a single
one of [the examining attorney’s attachments] uses
Applicant’s applied for mark, ‘NEED SPACE.’” Applicant is
apparently basing this argument on the fact that the
examining attorney’s evidence shows use of the words with a
question mark. We do not see the absence of a question
mark as particularly significant. Applicant itself
sometimes uses the term with a question mark (See third and
fourth examples of applicant’s use set out previously) and
sometimes without one (first and second examples).
Applicant’s “Need Space” signs and advertising with or
without a punctuation mark convey the same message, i.e.,
that applicant is available to fulfill an entity’s real
estate needs.
We also add that the fact that the State of Florida
has issued a registration to applicant for the subject term
does not mean that applicant’s term meets the Lanham Act’s
requirements for registration under Federal law.
Furthermore, we note that while in some of applicant’s
literature it uses the term NEED SPACE with a TM symbol,
this does not make unregistrable matter into a trademark.
In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB
1987). See also Volvo Cars, 46 USPQ2d at 1461. Finally,
applicant alleges that it has used the mark for a long
Ser No. 75868810
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time. However, even if five years use and serving “over 71
residential and commercial customers”6 were to be considered
long and extensive use, “long use of a slogan which is not
a trademark and would not be so perceived does not, of
course, transform the slogan into a trademark.” In re
Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984).
Decision: The refusal to register the applied-for
term on the ground that it does not function as a mark is
affirmed.
6 Webb declaration, ¶ 10.