Bay Gulf Credit Union

Trademark Trial and Appeal Board

Jun 22, 2004

No. 76386638 (T.T.A.B. Jun. 22, 2004)

Mailed: June 22, 2004
Hearing:
April 8, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bay Gulf Credit Union
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Serial No. 76386638
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Theodore A. Breiner of Breiner & Breiner, L.L.C. for Bay
Gulf Credit Union.
Ingrid C. Eulin, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
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Before Hohein, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant, Bay Gulf Credit Union (a Florida state-
chartered credit union), seeks to register on the Principal
Register the mark BAYLOC for services identified, as
amended, as “financial services, namely loan financing.”
The application, filed on March 22, 2002, was based on
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), with
a claimed date of first use and first use in commerce of
March 11, 2002.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76386638
2
The Examining Attorney refused registration under
Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052, 1053 and 1127, on the basis that the proposed
mark does not function as a service mark as evidenced by
the specimen of record. In response thereto, applicant
argued that its use of the mark as shown on the specimen
was proper service mark use, and applicant also submitted
an additional specimen showing use of the mark BAYLOC.
The Examining Attorney made final the refusal to
register that the proposed mark, as used on the specimens
of record, does not function as a service mark.
Applicant appealed to the Board. Briefs have been
filed, and an oral hearing was held on April 8, 2004.
The Examining Attorney’s position is essentially that
the proposed mark is buried in the text of applicant’s
advertisement specimens; that the term functions only as
advertising copy or text; that it does not appear alone in
the advertisements (i.e., it is always part of a longer
sentence or phrase); and that therefore it does not
function as a service mark to identify and distinguish
applicant’s identified services from those of others.
Applicant essentially contends that the mark is
prominently displayed (several times) in both of the
advertisement specimens; that it is used in a manner that
Ser. No. 76386638
3
makes a commercial impression separate from the other
elements of the advertisements; and that prospective
purchasers will recognize BAYLOC as a source identifier for
applicant’s loan financing services.
The question of whether the proposed mark in an
application for registration functions as a service mark is
determined by examining the specimens of record. (The
Board also considers any other relevant material submitted
during the prosecution of the application, but no other
material was submitted in this case.)
The front sides of each of applicant’s two specimens
of record are reproduced below:
Ser. No. 76386638
4
Use of a designation to convey advertising
information, rather than to identify and indicate the
source of the services, is not service mark use. See TMEP
§1301.02(a) (3d ed. 2002), and cases cited therein. The
determination of whether an asserted mark functions as a
service mark depends upon how it is used and how potential
purchasers will perceive it. See In re Information
Builders Inc., 213 USPQ 593 (TTAB 1982).
Ser. No. 76386638
5
Upon careful consideration of this record and the
arguments of the attorneys, we are persuaded that the
proposed mark BAYLOC functions as a service mark and would
be so perceived by purchasers. The word “BAYLOC” appears
in mostly capital letters. The text portion of both
specimens discusses that applicant’s BAYLOC loan or account
is its home equity line of credit, and both advertisements
also discuss the merits of applicant’s particular BAYLOC
home equity loans. While it is true that the word does not
appear by itself on a separate line in the advertisement,
nonetheless, we find that applicant’s use of the term
BAYLOC creates a separate commercial impression from the
advertising copy and would be so perceived by purchasers.
That is, applicant’s use of “BAYLOC” in the specimens is
use in the manner of a service mark, and is not merely
advertising text.
Further, although other marks appear on the full-page
advertisement (e.g., BAY GULF, CHECKMATE, and MANIFEST), we
do not agree with the Examining Attorney that the term
BAYLOC “blends so well with other matter that it is
difficult or impossible to discern which element is
supposed be the service mark.” (Brief, pp. 5-6.) In any
event, the smaller advertisement includes only the mark
BAYLOC and applicant’s BAY GULF and logo mark.
Ser. No. 76386638
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We find, therefore, that the specimens of record
support use of the mark BAYLOC as a service mark for loan
financing services. See In re Safariland Hunting Corp., 24
USPQ2d 1380 (TTAB 1992); In re Post Properties, Inc., 227
USPQ 334 (TTAB 1985); and In re First Union National Bank,
223 USPQ 278 (TTAB 1984). Cf. In re C.R. Anthony Co., 3
USPQ2d 1894 (TTAB 1987); In re The Signal Companies, Inc.,
228 USPQ 956 (TTAB 1986); and In re McDonald’s Corp., 229
USPQ 555 (TTAB 1985).
Decision: The refusal to register under Sections 1,
2, 3 and 45 of the Trademark Act on the basis that the
mark does not function as a service mark is reversed.