Bayer Schering Pharma AG

Trademark Trial and Appeal Board

Mar 4, 2008

No. 76321460 (T.T.A.B. Mar. 4, 2008)

Mailed:
March 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bayer Schering Pharma AG
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Serial No. 76321460
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Marilyn Matthes Brogan of Frommer Lawrence & Haug LLP for
Bayer Schering Pharma AG.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Bayer Schering Pharma AG, applicant herein, seeks
registration on the Principal Register of the mark VIP BETA
CLUB (in standard character form; CLUB disclaimed) for
services recited in the application as “educational
services, namely, conducting workshops, conferences,
classes, seminars and the like in the field of multiple
sclerosis,” in Class 41, and “support group services for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76321460
2
persons with multiple sclerosis,” in Class 42.1 The
application was filed as an intent-to-use application under
Trademark Act Section 1(b), 15 U.S.C. §1051(b). Applicant
subsequently filed a Statement of Use on April 15, 2005,
together with specimens of use for each class.
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark in each class, on the
ground that applicant has failed to comply with the
Trademark Examining Attorney’s requirement for submission
of an acceptable specimen of use of the mark in connection
with the recited services in each class.
Applicant has appealed the final refusals. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusals as to each
class.
Trademark Act Section 1(d)(1) and Trademark Rule
2.88(b)(2) provide that a Statement of Use must be
accompanied by a specimen of the mark as actually used in
commerce. Trademark Rule 2.88(b)(2) further provides that
the requirements for specimens are as set forth in
Trademark Rule 2.56. Trademark Rule 2.56(b)(2) provides
that a service mark specimen must show the mark as actually

1 Serial No. 76321460, filed on October 3, 2001.

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3
used in the sale or advertising of the services. To show
service mark usage, the specimen must show use of the mark
in a manner that would be perceived by potential purchasers
as both identifying the applicant’s services and indicating
their source. See in re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456 (CCPA 1973); In re A La Vieille
Russie, Inc., 60 USPQ2d 1895 (TTAB 2001). A specimen that
shows only the mark, with no reference to the services,
does not show service mark usage. In re Adair, 45 USPQ2d
1211 (TTAB 1997); In re Duratech Industries Inc., 13 USPQ2d
1318 (TTAB 1989).
Applicant’s Class 41 specimen is a printout of a page
from applicant’s website, depicted below:
Ser No. 76321460
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The matter applicant seeks to register, VIP BETA CLUB,
appears on the left as part of a menu of options which
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5
apparently lead to various sources of information available
on the website.2 “VIP Beta Club” is one of the menu
options, appearing directly above the options named
“Educational Materials” and “E-mail Connections.” “VIP
Beta Club” appears in the same font size and style as
“Educational Materials” and “E-mail Connections.”
We find that the designation “VIP Beta Club,” as it
appears on the specimen, would not be perceived by
purchasers as a service mark identifying applicant’s Class
41 “educational services, namely, conducting workshops,
conferences, classes, seminars and the like in the field of
multiple sclerosis.” Appearing as it does in the same
position, font style and size as the generic wording
“Educational Materials” and “E-mail Connections,”
purchasers are likely to view “VIP Beta Club” merely as
another generic or informational designation and menu
option, rather than as a service mark for educational
services. See In re A La Vieille Russie, Inc., supra
(RUSSIANART perceived as informational matter rather than
as service mark for art dealership services, where the term
was displayed in the same size and font as other
informational matter).

2 The “Class 41” notation on the specimen is a marking on the
original specimen submitted by applicant.
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At page 3 of its brief, applicant contends that

…the web page specimen which supports the
“educational materials” provides a direct link to
informational educational materials for the
consumer; it is urged that the availability and
promotion of such educational materials on the
Applicant’s internet site is more than sufficient
to demonstrate use of the mark in connection with
educational services.

We disagree. First, as the Trademark Examining Attorney
notes, “educational materials” are not the same thing as
“educational services, namely, conducting workshops,
conferences, classes, seminars and the like in the field of
multiple sclerosis.” Second, and more fundamentally, even
if purchasers would glean from the presence of the
“educational materials” menu option that applicant provides
the recited educational services, the designation “VIP Beta
Club” is a separate and distinct menu option which fails to
refer to, much less act as a source indicator for,
applicant’s educational services. We note that the issue
before us is not whether purchasers would be able to
determine from the webpage (especially from the
“educational materials” menu option) that applicant in fact
provides the recited educational services. We presume that
applicant in fact provides such services. Rather, the
Ser No. 76321460
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issue is whether purchasers viewing this particular webpage3
would perceive the “VIP Beta Club” menu option as a service
mark for such educational services. We find that they
would not.
For these reasons, we find that applicant’s proffered
Class 41 specimen fails to demonstrate use of VIP BETA CLUB
as a service mark for the educational services recited in
the application. We therefore affirm the Trademark
Examining Attorney’s specimen refusal as to Class 41.
We turn next to the issue of whether applicant’s Class
42 specimen is acceptable, that is, whether it shows use of
the mark in a manner that would be perceived by potential
purchasers as identifying the applicant’s “support group
services for persons with multiple sclerosis” and
indicating their source. Applicant’s Class 42 specimen is
the front page of a promotional brochure, depicted below:

3 The record does not tell us what would be displayed on the
screen if the “VIP Beta Club” menu option were to be selected.
Ser No. 76321460
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We find that this brochure cover is insufficient as a
service mark specimen for applicant’s Class 42 services.4
Although it displays the mark in a service mark fashion
(unlike the Class 41 specimen discussed above), the
specimen fails to identify the recited “support group”
services. The word “Club” in the mark and the wording
“Membership Benefits” below the mark, as well as the
wording “Multiple Sclerosis” which appears in small
lettering at the bottom, might enable purchasers to infer
that the services pertained to some sort of club involving
multiple sclerosis. However, nothing on the face of the
specimen5 informs purchasers with any degree of
particularity that the services offered in connection with
the mark are “support group” services. A service mark
specimen must not only indicate source; it also must
identify the services offered in connection with the mark.
See in re Universal Oil Products Co., supra; In re Duratech
Industries Inc., supra.
For these reasons, we find that applicant’s proffered
Class 42 specimen fails to demonstrate use of VIP BETA CLUB
as a service mark for the “support group” services recited

4 The “Class 42” notation on the specimen is a marking on the
original specimen submitted by applicant.

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in the application. We therefore affirm the Trademark
Examining Attorney’s specimen refusal as to Class 42.
Finally, applicant contends that the Office has issued
to applicant a registration covering a design version of
applicant’s VIP BETA CLUB mark, and that the specimens
accepted by the Office in that application are
“substantially identical” to the specimens applicant has
submitted in this case. We are not persuaded. First, the
specimens from the other application are not of record in
this case, and we therefore cannot determine whether they
are in fact “substantially identical” to the specimens
submitted in this application. Second, even if the
specimens which were accepted in the other application are
substantially identical to the specimens submitted in this
application, it is settled that we are not bound by the
prior decisions of Trademark Examining Attorneys, and that
we must decide the case actually before us and reach our
own conclusion on the record that is before us. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001).

5 The record fails to show what the inside of the brochure says,
or what reference it might make to the recited support group
services.
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Decision: The refusals to register in Class 41 and
Class 42 are affirmed.