HII, Inc.

Trademark Trial and Appeal Board

Oct 10, 2001

No. 75657065 (T.T.A.B. Oct. 10, 2001)

10/10/01 Paper No. 11
BAC/kmp

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re HII, Inc., dba Horizon Investments
________

Serial No. 75/657,065
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Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for HII,
Inc., dba Horizon Investments.

Amy Lohr, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______

Before Chapman, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

On March 10, 1999, HII, Inc., dba Horizon Investments
filed an application to register the mark BEASTMASTER on
the Principal Register, for services identified, as
amended, as “production of motion pictures, pre-recorded
videotapes, and television programs, and distribution of
motion pictures and television programs” in Class 41.
Application Serial No. 75/657,065 is based on Section 1(a)
of the Trademark Act, with applicant claiming a date of
first use and first use in commerce of August 20, 1982.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/657065
2
The Examining Attorney required that applicant submit
substitute specimens, supported by an affidavit or
declaration, showing use of the mark for the identified
services. Applicant submitted three additional specimens,
all of which were properly supported by declarations.
The original specimens submitted by applicant consist
of a copy of a September 15, 1982 advertisement from a
trade publication promoting a movie entitled THE
BEASTMASTER. Applicant later submitted substitute
specimens consisting of (1) a photocopy of a movie
videotape and its packaging, both bearing the word
BEASTMASTER (with a copyright notice naming “MCA
Television Limited”); (2) a photograph displaying two
movie videotapes featuring the wording BEASTMASTER in the
title; and (3) a 1982 publicity photograph featuring
actors from the movie THE BEASTMASTER.
Registration has been finally refused on the ground
that the specimens submitted by applicant do not show use
of the mark for the services identified in the
application.
Applicant has appealed, and briefs have been filed.
An oral hearing was not requested by applicant.
The Examining Attorney’s position is essentially that
the specimens show use of the mark as the title of a
Ser. No. 75/657065
3
series of movies, but fail to demonstrate use of the mark
in association with the identified services, “production
of motion pictures, pre-recorded videotapes, and
television programs, and distribution of motion pictures
and television programs,” as required by Section 45 of the
Trademark Act and Trademark Rule 2.56.1
Applicant essentially contends that there is a less
stringent requirement for specimens for services than for
goods; that the original specimens support use of the mark
in association with the services because the trade
publication advertisement, featuring the caption
“$11,751,126...in 3 weeks,” promotes applicant’s “high
quality” and “financially successful” services to the
relevant purchasing public; that the photocopy of the
videotape and its packaging prominently display the mark
and identify applicant as the source of the production
services; that the photograph of two videotapes
demonstrates that applicant’s mark is not the title of a
single work but rather evidences applicant’s ongoing
motion picture distribution and production services; and
that the publicity photograph also supports use of the

1 The Board has not considered the untimely evidence attached to
the Examining Attorney’s appeal brief. See Trademark Rule
2.142(d).

Ser. No. 75/657065
4
applied-for mark with the identified services, through the
display of the name of applicant’s predecessor-in-
interest, Beastmaster N.V., in the copyright notice.
The requirements for specimens of use of a mark in
connection with services differ from the requirements for
specimens of use of a mark in connection with goods.
Although trademarks appear directly on the goods or on the
containers or labels for the goods, service marks are used
in connection with the services. Implicit in the
statutory definitions of a "service mark" is the
requirement that there be some 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 such services. See In re
Advertising & Marketing Development, Inc., 821 F.2d 614, 2
USPQ2d 2010 (Fed. Cir. 1987); and In re Adair, 45 USPQ2d
1211 (TTAB 1997).
In this situation, we agree with the Examining
Attorney that the specimens submitted by applicant do not
show use of the applied-for mark in connection with the
services identified in the application. Rather, in
general, all of the specimens of record evidence use of
the mark as the title of applicant’s movies or, at best,
Ser. No. 75/657065
5
as a trademark for videotapes, but not as a service mark
for applicant’s identified services.
Specifically, the original specimen, an advertisement
appearing in a trade publication, fails to establish that
consumers, including industry professionals, would
perceive applicant’s mark as anything other than the title
of a movie. This specimen includes the following wording:
“‘Beastmaster’ Roaring Good Entertainment” and “THE
BEASTMASTER.” In addition, appearing beneath the title of
the movie are the words “LEISURE INVESTMENT COMPANY
PRESENTS A DON CONSCARELLI FILM THE BEASTMASTER,” and
beneath that are the words “DOMESTIC DISTRIBUTION: MGM/UA
ENTERTAINMENT CO.” Consumers would likely believe that
Leisure Investment Company, Don Conscarelli or MGM/UA
Entertainment Co. produced and/or distributed the movie.
Further, there is no evidence that the specimen was used
in the actual rendering or sale of applicant’s services.
See e.g., In re Metriplex Inc., 23 USPQ2d 1315 (TTAB
1992).
In the first substitute specimen offered by applicant,
the mark appears as the title of the videotapes and would
not readily be perceived as identifying the source of the
identified services. Again, other names appear thereon,
Ser. No. 75/657065
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specifically, “Stu Segall Productions” and “MCA UNIVERSAL
HOME VIDEO.”
With respect to the final two substitute specimens,
the wording BEASTMASTER, as it is used in the copyright
notice of the publicity photograph, functions solely as a
trade name not as a service mark. See generally, In re
Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994). Even if
consumers were able to draw an association between the
publicity photograph and production or distribution
services, they would likely conclude that other names
appearing on the photograph, i.e., “Thorn EMI Films
Limited” or “Columbia-EMI-Warner Distributors Limited”
were the sources of the production and distribution
services rather than applicant.
The photograph of the packaging on two videotapes,
again shows the title “BEASTMASTER 2 THROUGH THE PORTAL OF
TIME” and “BEASTMASTER III THE EYES OF BRAXUS.” The
latter videotape package includes “MCA Universal Home
Video” thereon. Even though there has been more than one
“BEASTMASTER” movie, there is no evidence that the term
BEASTMASTER has been used either to identify the services
of “production of motion pictures, pre-recorded
videotapes, and television programs, and distribution of
Ser. No. 75/657065
7
motion pictures and television programs” or specifically
to identify applicant as the source of the same.
Applicant relies on several cases in support of its
contention that varied specimens are acceptable to show
use in association with service marks. Some of the
specimens which the Board has found acceptable include
computer printouts which show the mark used on a computer
screen accompanied by applicant’s declaration explaining
that the specimen was used in the sale of the services, In
re Metriplex Inc., supra; a photograph of chain-link
fences demonstrating use of the mark in the rendering of
the services, where the mark sought to be registered
consisted of alternately colored strands of wire, In re
Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986); and a
photograph of a person wearing a bird costume, along with
evidence of prior registration for collateral use, where
the asserted mark was a design of that bird costume and
was used in the rendering of the services, In re Red Robin
Enterprises, Inc., 222 USPQ 911 (TTAB 1984). However,
unlike the specimens found herein, the specimens at issue
in the cases cited by applicant did not contain
contradictory or conflicting information regarding the
source of the services. Therefore, the cases are
distinguishable.
Ser. No. 75/657065
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Thus, the specimens of record do not support use of
the mark in connection with the identified services
because they do not show applicant's use of the mark in
association with the sale or advertising of the services
specified in the application.
Decision: The refusal to register on the basis that
none of the specimens show use of the mark in connection
with the identified services is affirmed.