840, Inc.

Trademark Trial and Appeal Board

Feb 16, 2021

87326511 (T.T.A.B. Feb. 16, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: February 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 840, Inc.
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Serial No. 87326511
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Kevin Merillat, President of 840, Inc.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Zervas, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
840, Inc. (“Applicant”) seeks registration on the Principal Register of the mark 840
(in standard characters) for:
Advertising, marketing and promotion services; event
planning and management for marketing, branding,
promoting or advertising the goods and services of others;
retail store services featuring a wide variety of consumer
goods of others; on-line retail store services featuring a
wide variety of consumer goods of others; on-line retail
store services featuring clothing, footwear, hats, keychains,
jewelry, pre-packaged foods, beverages, consumer
electronics, posters, and general consumer merchandise;
organisation of exhibitions and events for commercial or
advertising purposes; organizing exhibitions for
commercial or advertising purposes; organizing, promoting
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and conducting exhibitions, tradeshows and events for
business purposes; promoting the parties and special
events of others; special event planning for business
purposes, in International Class 35.1
After issuance of a Notice of Allowance, Applicant timely filed a Statement of Use
with specimens, which were initially refused. In response to the Office Action refusing
the specimens, Applicant submitted substitute specimens. After considering the
substitute specimens, the Trademark Examining Attorney issued a Final Office
Action refusing registration of Applicant’s mark under Sections 1 and 45 of the
Trademark Act on two grounds: 1) the specimens do not show the mark for the
services identified in the Statement of Use; and 2) the mark shown on the specimens
does not match the mark shown in the drawing.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed and Applicant and the Examining Attorney filed
briefs. We affirm the refusals to register.
I. Do the Specimens Show the Mark for the Services
Identified in the Statement of Use?
A statement of use filed in support of an application based on § 1(b) of the
Trademark Act must include a specimen showing the applied-for mark as actually
used in commerce for each International Class of goods and/or services identified in
the statement of use. 15 U.S.C. §§ 1051(b) and 1127; Trademark Rule 2.56(a); 37

1 Application Serial No. 87326511 was filed on February 7, 2017, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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C.F.R. 2.56(a); see also In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247
(TTAB 2013). If a specimen does not show the mark used for the identified goods
and/or services as identified in the statement of use, registration must be refused for
failing to show the goods and/or services actually used in commerce. Trademark Act
Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R. § 2.56(a).
Section 45 of the Trademark Act, 15 U.S.C. § 1127, specifies that “a mark shall be
deemed to be in use in commerce — . . . (2) on services when it is used or displayed in
the sale or advertising of services and the services are rendered in commerce . . . .” In
order to show service mark use, the specimen must show a direct association between
the services identified in the application and the mark sought to be registered. See In
re Advert. & Mktg. Dev. Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987); In
re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); see also
In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); In re DSM
Pharms. Inc., 87 USPQ2d 1623, 1626 (TTAB 2008). To create the required “direct
association,” the specimen must contain a reference to the service, and the mark must
be used on the specimen to identify the service and its source. In re Osmotica
Holdings, 95 USPQ2d at 1668; see also In re Aerospace Optics Inc., 78 USPQ2d 1861,
1862 (TTAB 2006).
Applicant’s Statement of Use2 identifies its International Class 35 services as:
Advertising, marketing and promotion services;
Event planning and management for marketing, branding,
promoting or advertising the goods and services of others;

2 February 20, 2019 Statement of Use.
Serial No. 87326511
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Retail store services featuring a wide variety of consumer
goods of others;
On-line retail store services featuring a wide variety of
consumer goods of others;
On-line retail store services featuring clothing, footwear,
hats, keychains, jewelry, pre-packaged foods, beverages,
consumer electronics, posters, and general consumer
merchandise;
Organisation of exhibitions and events for commercial or
advertising purposes;
Organizing exhibitions for commercial or advertising
purposes;
Organizing, promoting and conducting exhibitions,
tradeshows and events for business purposes;
Promoting the parties and special events of others; and
Special event planning for business purposes.
Applicant submitted six different specimens with its Statement of Use:
1) an image of a package of goods3:

3 February 20, 2019 Specimen at TSDR 1.
Page references to the application record refer to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal refer to the Board’s TTABVUE docket system.
Serial No. 87326511
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2) and 3) images of outdoor signs4:

4) an image of the inside of a café5:

4 Id. at TSDR 2-3.
5 Id. at TSDR 4.
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5) and 6) images of disposable cups6:

6 Id. at TSDR 5-6.
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Inasmuch as the application covers only services, the first, fifth and sixth
specimens set forth above are not pertinent because they feature images of goods, not
services. The fourth image shows a café, which is not a service identified in the
Statement of Use.
The second and third images show outdoor signage with no reference to the
business or type of service provided. As such, the signage fails to identify the services
in any meaningful way that would allow consumers to understand the nature of the
services. “For specimens showing the mark in advertising the services, ‘[i]n order to
create the required ‘direct association,’ the specimen must not only contain a
reference to the service, but also the mark must be used on the specimen to identify
the service and its source.’” In re Way Media, Inc., 118 USPQ2d 1697, 1698 (TTAB
2016) (quoting In re Osmotica Holdings, 95 USPQ2d at 1668). An acceptable specimen
must show “some direct association between the offer of services and the mark sought
to be registered therefor.” In re Universal Oil Prods., 177 USPQ at 457; see also In re
Advert. & Mktg. Dev., 2 USPQ2d at 2014. Thus, specimens like Applicant’s signage
that show the mark without reference to, or association with, the services does not
show service mark usage. In re Way Media, 118 USPQ2d at 1698; In re Adair, 45
USPQ2d 1211, 1214-15 (TTAB 1997); In re Duratech Indus. Inc., 13 USPQ2d 2052,
2054 (TTAB 1989).
The March 20, 2019 Office Action thus properly refused registration because the
foregoing specimens did not show: 1) the mark in the drawing in use in commerce;
and 2) the applied-for mark in use in commerce in connection with any of the services
Serial No. 87326511
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identified in the Statement of Use. Six months later, Applicant submitted three
substitute specimens with its September 20, 2019 Response to Office Action:
1) Image of farmer’s market stand7:

2) Image of bag of Virgin Islands Coffee Roasters coffee with two
disposable coffee cups8:

7 September 20, 2019 Specimen at TSDR 1.
8 Id. at TSDR 2.
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3) Image of inside of retail store9:

None of the substitute specimens submitted by Applicant show use of Applicant’s
mark in connection with the services identified in the Statement of Use. The first
image is a photo of a farmer’s market stand showing Applicant’s promotion and
offering for sale of its own goods (which the background sign identifies as “tinctures,
salve and roll on”). Those goods are not identified in the Statement of Use. Moreover,
even if the farmer’s market stand supports retail store services, it does not refer to or
identify “retail store services featuring a wide variety of consumer goods of others,”
or any of the other services identified in the Statement of Use.
The second and third specimens are images of what Applicant describes as
“showing that its retail establishment not only provides café services, but also retail

9 Id. at TSDR 3.
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goods.”10 The second specimen does not show or display a retail store or retail store
services; rather, it displays a bag of coffee with disposable coffee cups. The third
specimen is an image of a room having a counter with shelves underneath that are
stocked with products in boxes and bottles. Inasmuch as there are no visible signs
bearing Applicant’s mark on display, this specimen does not advertise or show any
services being offered in connection with the subject mark. Thus, neither the second
or third specimens show use of Applicant’s mark in connection with the retail store
services, or any of the other services, set forth in the Statement of Use.
None of the uses shown in any of the submitted specimens meets the required
“direct association” between Applicant’s mark and the services identified in its
application. Without a direct association between the identified services and the
proposed mark, we cannot conclude that the service mark is in use to identify and
distinguish the services themselves. See In re DSM Pharms., 87 USPQ2d at 1624
(finding the submitted specimen unacceptable evidence of use of the mark in
connection with custom manufacturing services because it did not show an
association between the mark and the services, but instead the mark was used only
to refer to computer software); In re Adair, 45 USPQ2d at 1214 (there must be a direct
association between the mark and the services, i.e., that the mark be used in such a
manner that it would readily be perceived as identifying the source of the services);
In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994) (there must be

10 September 20, 2019 Response to Office Action at TSDR 5.
Serial No. 87326511
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something which creates in the mind of the purchaser an association between the
mark and the service activity).
II. Do the Specimens Show the Proposed Mark Shown in the
Drawing?
Turning to the second issue involved in this appeal, a mark shown in a drawing
“must be a substantially exact representation of the mark” on the specimen.
Trademark Rule 2.51(a)-(b), 37 C.F.R. § 2.51(a)-(b); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 807.12(a) (Oct. 2018). In an application filed under
§1(b) of the Trademark Act, such as Applicant’s application, the drawing of the mark
must be a substantially exact representation of the mark as intended to be used on
or in connection with the goods/services specified in the application, and once a
statement of use has been filed, the drawing of the mark must be a substantially
exact representation of the mark as used on or in connection with the goods and/or
services. 37 C.F.R. § 2.51(b).
Applicant’s drawing shows its mark to be 840 (a standard character mark). Only
one of the specimens shows use of 840 “where the number 840 appears on signage
behind the counter, which is located directly across from the retail counter only 10
feet away.”11 The specimen is reproduced below:

11 May 29, 2020 Request for Reconsideration at TSDR 1, 7. This “substitute specimen”
submitted with Applicant’s Request for Reconsideration was not supported by the required
verified statement of use. An applicant who files a substitute specimen after a statement of
use under §1(d) of the Act must verify that the substitute or additional specimen was in use
in commerce before the expiration of the deadline for filing the statement of use (i.e., within
six months of the issuance date of the notice of allowance or before the expiration of an
extension of time for filing a statement of use). 37 C.F.R. § 2.59(b)(2); see also TMEP § 904.05.
Serial No. 87326511
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This substitute specimen displays the mark 840 shown on two wall signs listing coffee
and other posted menus items. Inasmuch as Applicant’s application does not include
goods such as coffee or other menu items, this specimen does not show use of
Applicant’s mark 840 in connection with any of the identified services.
Serial No. 87326511
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None of the remaining specimens show use of Applicant’s applied-for mark 840.
Rather, what is shown in the remaining specimens is: , i.e., an infinity
symbol with the letters STX superimposed in the middle of the two lobes of the
infinity symbol, and the number 40 superimposed in the lower right corner.12
Applicant argues that “consumers would perceive applicant’s use of the infinity as
a number 8 laying on its side.”13 In support, Applicant submits evidence consisting of
several definitions and descriptions of the infinity symbol, noting that each
description identifies the infinity symbol as the number 8 on its side or a “lazy eight,”
“lazy eight curve;” “figure 8 on its side;” “horizontal version of the number 8;”
“sideways figure eight.”14 Applicant also submits a definition of the number 8, which
includes a reference to the infinity symbol, indicating that while the infinity symbol
is described as a “sideways figure eight,” they are unrelated in origin. Based on this
evidence, Applicant “believes that no other conclusion can be made other than the
fact that consumers would recognize applicant’s mark as used in the specimens, as

12 Additionally, in each of the specimens submitted by Applicant showing the design, there is
also a small design depicted on the left loop of the infinity symbol, i.e., .
13 Applicant’s Appeal Brief (6 TTABVUE 2).
14 See evidence attached to September 20, 2019 Response to Office Action at TSDR 9 (Infinity
and the Mind, The Science and Philosophy of the Infinity, https://math.dartmouth.edu
/~matc/Readers/HowManyAngels/InfinityMind/IM.html), 43 (https://www/dictionary.com/e/
pop-culture/infinity-symbol); 49 (https://www.infinitysymbol.net/); 53 (https://en.wikipedia
.org/wiki/8); 59 (https://en.wikipedia.org/wiki/Infinity_symbol).
Serial No. 87326511
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both the number 8 as well as an infinity symbol, rendering the mark and the specimen
substantially exact.”15
Although the appearance of the infinity symbol, i.e., ∞, resembles a figure 8 lying
on its side, the definition or meaning of the symbol ∞ is that it “is a mathematical
symbol representing the concept of infinity.”16 Thus, the infinity symbol is an
established design having its own meaning. Applicant has not submitted any
evidence to support its argument that “consumers would recognize applicant’s mark
as used in the specimens, as both the number 8 as well as an infinity symbol,
rendering the mark and the specimen substantially exact.” Applicant’s conclusion
that “there is really no other way to describe an infinity symbol, other than through
the use of the number 8 description” misses the point.17 The description of the infinity
symbol as a “sideways figure 8” recognizes that the symbol is not a figure 8. The
inclusion of the infinity symbol would change the meaning of the number 840 in the
applied-for mark. Therefore, the presence of the infinity symbol in the
mark shown in the specimens renders it different from the applied-for 840 mark.
Accordingly, the specimens do not show “a substantially exact representation” of the
applied-for mark 840.

15 Applicant’s Appeal Brief (6 TTABVUE 3).
16 See https://en.wikipedia.org/wiki/Infinity_symbol attached to September 20, 2019
Response to Office Action at TSDR 59.
17 Applicant’s Appeal Brief (6 TTABVUE 3).
Serial No. 87326511
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Last, Applicant submits evidence that the zip code for its place of business located
in Frederiksted, VI is 00840.18 Applicant argues that consumers, particularly those
that live locally, could easily make a correlation between Applicant’s town’s zip code
ending in “840,” and its stylized version of the number 840 when seeing Applicant’s
mark on its storefront or its advertising materials.19 However, as noted by the
Examining Attorney, the meaning and commercial impression of Applicant’s mark
840 are completely altered in the “infinity symbol” used by Applicant, i.e.,
, such that they are not the same mark. The digits 8, 4 and 0 have a
distinct numeric meaning and recognition when presented as they are in Applicant’s
drawing as 840. The “infinity symbol” that Applicant uses replaces the digit “8” with
an infinity symbol which represents the concept of infinity. Additionally, the
appearance of the “infinity symbol” is different from the 840 mark as the infinity
symbol is larger than the other elements, and is not in the same location as the digit
“8” is in the 840 mark shown in Applicant’s drawing, with “40” presented in the lower
right-hand corner and the letters “STX” appearing in the middle of the infinity
symbol. Thus, the “infinity symbol” mark is different in appearance and does not
convey the same meaning as Applicant’s mark 840 because it is a different mark.

18 May 29, 2020 Request for Reconsideration at TSDR 5-6.
19 Applicant’s Appeal Brief (6 TTABVUE 4).
Serial No. 87326511
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III. Conclusion
A specimen must show the applied-for mark 840 serving as a source indicator for
the services set forth in the Statement of Use. As set forth above, none of the
specimens show use of 840 as a service mark in connection with the identified
services. Additionally, the specimens must show Applicant’s 840 mark as it is shown
in the drawing. The mark shown in the drawing must be a substantially exact
representation of the mark as used on or in connection with Applicant’s services.
Although one specimen showed use of Applicant’s mark 840, it was not shown in use
for any of the services identified in the application. Moreover, none of the other
specimens show use of Applicant’s mark 840 as it is shown in the drawing.
Thus, registration must be refused.
Decision: The refusals to register Applicant’s applied-for mark 840 under §§ 1
and 45 of the Trademark Act on the grounds that the specimens do not show the
services identified in the Statement of Use, and that the mark shown on the
specimens does not match the mark shown in the drawing, are affirmed.