Astilean

Trademark Trial and Appeal Board

Oct 7, 2008

No. 76674369 (T.T.A.B. Oct. 7, 2008)

Mailed: October 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Astilean
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Serial No. 76674369
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Myron Amer of Myron Amer, P.C. for Aurel A. Astilean.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Drost, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Aurel A. Astilean (applicant) applied to register the
designation SPEEDFEET as a mark on the Principal Register
for the following services: “unit of measuring distance in
the field of health, fitness and exercise” in International
Class 41. Applicant claimed first use and first use in
commerce of the proposed mark as of September 1, 2006.
However, the applicant did not submit a specimen of use
with his application.
On July 20, 2007, the trademark examining attorney
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
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issued his first Office action, refusing registration under
Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052
and 1127, on the ground that the “proposed mark merely
identifies a process or system based upon the
identification; it does not function as a trademark to
identify and distinguish applicant’s goods from those of
others and to indicate their source” (July 20, 2007 Office
action, p. 1). In addition, the examining attorney
required applicant to submit an acceptable declaration
under Trademark Rule 2.20, and to either submit a specimen
of use or amend the application to seek registration under
Section 1(b) of the Trademark Act.
In his August 27, 2007 response, applicant submitted a
substitute declaration under Trademark Rule 2.20, and in
addition submitted the following “evidentiary declaration”
in support of registration of his proposed mark:
AUREL A. ASTILEAN declares:
1. he is the applicant of the above-captioned
trademark application;
2. he is a well-known athlete and has
participated in an Olympics;
3. he has filed patent applications for “Self-
propelled Treadmill Leg Exerciser” assigned
Serial Number 60/678,700 and “Bungee Cord
Exercising Device” assigned Serial Number
60/749,300;
4. based on my reputation of involvement in
physical fitness through exercising and my
previous participation in sports, it has been
my experience that what I provide to my
clients that use the words SPEEDFEET they
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associate with me and I know of no occasion
that these words were thought to be a mere
unit of measurement in general use in the
field of healthy fitness and exercise; and
5. all statements made herein of his own
knowledge are true and that all statements
made on information and belief are believed
to be true; and further, that these
statements were made with the knowledge that
willful false statements and the like so made
are punishable by fine or imprisonment, or
both, under Section 1001 of Title 18 of the
United States Code and that such willful
false statements may jeopardize the validity
of the application or document or any
registration resulting therefrom.

On October 26, 2007, the examining attorney issued a
“final” Office action accepting applicant’s declaration
under Trademark Rule 2.20; continuing the refusal to
register under Sections 1, 2, 3 and 45 of the Trademark
Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127, on the ground
that the proposed mark, as used in the identification,
merely describes a process or system, and fails to function
as a trademark or service mark and distinguish applicant’s
services from those of others or indicate their source; and
continuing the requirement that applicant either submit an
acceptable specimen of use or amend the application to seek
registration under Section 1(b) of the Trademark Act.
In his November 9, 2007 response, applicant submitted
a specimen of use displaying the mark SPEEDFEET, identified
in the accompanying declaration as a “stamping applied by a
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rubber stamp on the packaging for the goods” (applicant’s
November 7, 2007 declaration). In addition, applicant
requested that his application be amended to seek
registration on the Supplemental Register.
Subsequently, in a December 5, 2007 Office action, the
examining attorney rejected applicant’s specimen on the
ground that it is unacceptable to support use of the
designation SPEEDFEET as a service mark; and further noted
that because amendment of the application to seek
registration on the Supplemental Register does not obviate
the outstanding refusal to register, such amendment does
not raise a new issue for examination. Thus, the examining
attorney maintained the refusal to register under Trademark
Act Sections 1, 2, 3 and 45 as well as the requirement that
applicant either submit an acceptable specimen of service
mark use or amend the application to seek registration
under Section 1(b) of the Trademark Act.
In his March 10, 2008 request for reconsideration,
applicant submitted an additional, unidentified and
unverified, substitute specimen, reproduced below; and
argued that amendment of the application to the
Supplemental Register creates a new issue for examination.

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On April 14, 2008, the examining attorney issued a
denial of applicant’s request for reconsideration, again
noting that applicant’s proposed amendment to the
Supplemental Register fails to overcome the refusal to
register; and continuing both the refusal to register and
the requirement that applicant submit an acceptable
specimen of use.
This appeal followed. Applicant and the examining
attorney have filed briefs on the issues under appeal.
Prior to our determination of the issues under appeal,
we note that applicant claims use of the designation
SPEEDFEET in connection with “unit of measuring distance in
the field of health, fitness and exercise.” We further
note that in his original application; his August 17, 2007,
November 8, 2007 and March 10, 2008 responses to the
examining attorney’s Office actions; and his appeal brief,
applicant indicates that the above recitation identifies
services in Class 41. We note in addition that the
examining attorney did not require applicant to submit an
amended identification; nonetheless, the above recitation
does not appear to identify either goods or services as
contemplated by the Trademark Act. See Trademark Act
Sections 1, 2, 3 and 45, supra. While the Board possesses
the authority to suspend action on an appeal and remand an
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application to the examining attorney for consideration of
an issue not previously raised, we see no reason to do so
in this case. Cf. Trademark Rule 2.142(f) and TBMP
§1209.01 and authorities cited therein. Rather, we find
that the sufficiency of the recitation of applicant’s
services is subsumed within the refusal to register that is
a subject of this appeal. Accordingly, we decline to
remand the instant application, and will consider the
issues on appeal based upon the services as identified.
In his brief on appeal, applicant asserts that “the
main issue on appeal is whether the accompanying specimen
[the March 10, 2008 specimen displayed immediately above]
is acceptable for the mark SPEEDFEET” (brief, p. 1).
Applicant further asserts that “a subissue is whether
applicant’s request to convert this application to one
seeking registration on the Supplemental Register, which
was refused by the Trademark Attorney as not raising a new
issue was proper” (Id.). Applicant does not address the
underlying refusal to register under Trademark Act Sections
1, 2, 3 and 45, but merely “requests that the refusal to
register on the Supplemental Register should be overruled”
(Id. at 2).
The examining attorney, in his brief on appeal,
presents arguments in favor of the refusal to register
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under Trademark Act Sections 1, 2, 3 and 45 on the basis
that the proposed mark merely identifies a process or
system, and thus fails to function as a service mark, and
also on the basis that applicant has failed to submit an
acceptable specimen showing use of the designation
SPEEDFEET as a service mark.
In reply, applicant quotes from applicant’s
“evidentiary declaration,” reproduced above, in support of
his contention that SPEEDFEET does not merely identify a
process or system of measurement.
Failure to Function as a Mark
The Trademark Act provides for registration of a
service mark which has been used in commerce. See
Trademark Act Sections 1(a)(1) and 3, 15 U.S.C. §§ 1051 and
1053. The Act defines a “service mark” as a mark which is
used “to identify and distinguish the services of one
person, including a unique service, from the services of
others and to indicate the source of the services, even if
that source is unknown,” and further provides that a
service mark is “use[d] in commerce” “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce….” Trademark Act Section
45, 15 U.S.C. §1127.
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It is settled that a designation which is used merely
to identify a process, method or system does not function
as a service mark. As the predecessor to our primary
reviewing court has stated:
The requirement that a mark must be “used in the
sale or advertising of services” to be registered
as a service mark is clear and specific. We
think it is not met by evidence which only shows
use of the mark as the name of a process and that
the company is in the business of rendering
services generally, even though the advertising
of the services appears in the same brochure in
which the name of the process is used. The
minimum requirement is some direct association
between the offer of services and the mark sought
to be registered therefor. [Emphasis in
original.]

In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ
456, 457 (CCPA 1973). See also, for example, In re Hughes
Aircraft Co., 222 USPQ 263 (TTAB 1984). However, “while a
term used merely to identify a process does not perform the
function of a service mark, a term used to identify both a
process and the services rendered in connection therewith
constitutes a service mark within the meaning of the
Trademark Act.” In re Hughes Aircraft Co., supra, 222 USPQ
at 264. Moreover,
[t]he question of whether or not a term used as
the name of a process also functions as a service
mark must be determined by examining the
specimens of record along with any other material
made of record by applicant during the
prosecution of [the application]. This will
allow a determination of the commercial
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impression created by the term as used by
applicant.

Id. See also Liqwacon Corp. v. Browning-Ferris Industries,
203 USPQ 305 (TTAB 1979).
In the present case, the first specimen submitted by
applicant consists of a stamping which applicant explains
is applied by a rubber stamp to goods. While such a
specimen may be acceptable to show use of a designation as
a trademark applied to goods, the specimen fails to
identify or distinguish applicant’s services or to indicate
their source. See Trademark Act Sections 1(a) and 45, 15
U.S.C. §§1051(a) and 1127. See also Trademark Rules
2.34(a)(1)(iv) and 2.56(b)(2). As such, the stamping
submitted by applicant as his first specimen fails to
support use of the designation SPEEDFEET in connection
either with the services recited in his application or any
other services.
Applicant does not explain the nature of his second
specimen. Nonetheless, this specimen appears to display
the designation SPEEDFEET as shown below
DISTANCE
SpeedFeet(Sf)

on a chart containing information relating to exercise in
the field of walking and running. We have carefully
reviewed this specimen, and we conclude that the
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designation applicant seeks to register, SPEEDFEET, clearly
is used by applicant and would be understood by purchasers
as the name of a method or system that applicant uses to
calculate a unit of measuring distance in connection with
walking or running. However, applicant’s second specimen
fails either to identify applicant’s health, fitness and
exercise services and distinguish such services from those
of others, or to indicate their source. See Id. Rather,
SPEEDFEET merely is used to identify applicant’s method of
calculating a unit of measuring distance in the fields of
such services.
In short, applicant has not pointed to a single
instance in which SPEEDFEET is used in its specimens as a
mark identifying applicant’s services, per se, and
distinguishing them from the services of others, and we can
find no such usage ourselves. Nor has applicant submitted
any additional evidence pointing to use of SPEEDFEET as a
service mark. We therefore conclude that the commercial
impression created by SPEEDFEET, as that designation is
used in applicant’s specimens, is solely that of the name
of the apparently proprietary method or process that
applicant uses in rendering the recited services. The
specimens fail to show the requisite “direct association
between the offer of services and the mark sought to be
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registered therefor.” In re Universal Oil Products Co.,
supra, 177 USPQ at 457. Accordingly, the designation fails
to function as a service mark for the recited services.
Applicant’s conclusory argument to the contrary is not
persuasive.
Specimens Unacceptable
Based upon the discussion above, we find that the
specimens submitted by applicant fail to support use of the
designation SPEEDFEET as a service mark. The first
specimen, a stamping applied to goods, fails to demonstrate
use of SPEEDFEET as a service mark in connection with any
services. Similarly, the second, unidentified specimen
fails to demonstrate use of SPEEDFEET in connection with
any services and, in addition, is not verified by an
affidavit or declaration in accordance with Trademark Rules
2.20 and 2.59(a).
Accordingly, we find that applicant has failed to
submit an acceptable specimen showing use of SPEEDFEET as a
service mark.
Amendment to Supplemental Register
Finally, we address applicant’s argument that his
amendment to seek registration on the Supplemental Register
creates a “new issue” or otherwise obviates the above
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refusal to register. Section 23(c) of the Trademark Act,
15 U.S.C. §1091, provides as follows:
For purposes of registration on the supplemental
register, a mark may consist of any trademark,
symbol, label, package, configuration of goods,
name, word, slogan, phrase, surname, geographical
name, numeral, device, any matter that as a whole
is not functional, or any combination of the
foregoing, but such mark must be capable of
distinguishing the applicant’s goods or services.

Thus, amendment to the Supplemental Register of an
application for a mark that is otherwise capable of
registration may overcome a refusal to register on the
grounds that such mark is merely descriptive or deceptively
misdescriptive, primarily geographically descriptive or
primarily merely a surname, or on other grounds that such
mark consists of matter that is not inherently distinctive,
such as a configuration, color mark, or mark comprising
matter that is purely ornamental. See Trademark Act
Sections 2(e)(1), 2(e)(2) and 2(e)(4). See also TMEP
§714.05(a)(i) and authorities cited therein.
However, in this case we have determined that the
designation SPEEDFEET fails to function as a service mark.
As such, we have determined that SPEEDFEET is incapable of
distinguishing applicant’s services from those of others.
As a result, SPEEDFEET is not capable of functioning as a
mark, and thus not registrable on either the Principal or
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Supplemental Register. We note in that regard that the
predecessor to our primary reviewing court has held that
cases involving whether marks would be perceived as
functioning as trademarks on the Principal Register “are
pertinent here [to cases involving the Supplemental
Register] so far as they relate to whether the appearance
of an article may constitute a trademark, and whether it
indicates origin.” In re Bourns, 252 F.2d 582, 117 USPQ
38, 39-40 (CCPA 1958). In other words, our determination
herein would be the same regardless of whether applicant
applied for the designation SPEEDFEET on the Principal or
Supplemental Register. As such, applicant’s proposed
amendment to the Supplemental Register is irrelevant to the
refusal to register in this case. See TMEP §714.05(a)(i),
supra. We further note that applicant points to no
authority for his contention that the instant refusal to
register may be overcome by an amendment to the
Supplemental Register.
Decision: The refusal of registration under Trademark
Act Sections 1, 2, 3 and 45 is affirmed. The requirement
that applicant submit an acceptable specimen of service
mark use is also affirmed.