John Mansell

Trademark Trial and Appeal Board

Mar 18, 2021

87220151 (T.T.A.B. Mar. 18, 2021)

This Opinion Is Not a
Precedent of the TTAB

Mailed: March 18, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re John Mansell
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Serial No. 87220151
_____

Jerry C. Harris, Jr. of Wick Phillips Gould & Martin, LLP
for John Mansell.

Esther A. Belenker, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____
Before Taylor, Lynch, and English
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
John Mansell (“Applicant”) seeks registration on the Principal Register of the
mark 20/20 IN 2020 in standard characters1 for “Advertising, marketing and

1 Application Serial No. 87220151 was filed October 29, 2016, based on Applicant’s assertion
of a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
Serial No. 87220151
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promotion services in the field of ophthalmology; Advertising, marketing and
promotion services in the field of optometry” in International Class 35.
Applicant initially based the application on his allegation of a bona fide intent to
use the mark in commerce. After the notice of allowance issued, Applicant filed a
statement of use with the following specimen described as “Digital photographs of the
mark being used to advertise ophthalmology and optometry related services in a
physician’s waiting room.”2

2 July 24, 2017 Statement of Use at 2-3.
Serial No. 87220151
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The Examining Attorney refused registration under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant’s specimen
appeared to be an advertisement for his own goods or services, and therefore is not a
registrable service for the benefit of others, and on the ground that the specimen
“appears to consist of a digitally altered image or a mock-up … for future use in
commerce.”3 The Examining Attorney also required information about the specimen
and Applicant’s services, and requested documentation of sales of the services.
The response submitted and signed by Applicant’s attorney stated that Applicant
is a pain management specialist, not an ophthalmologist or optometrist, and is
compensated by providers of such services for patient referrals. According to
Applicant, the signage bearing the mark prompts Applicant’s patients to inquire,
“provid[ing] Applicant with an opportunity to advertise the ophthalmological or

3 August 18, 2017 Office Action at 1.
Serial No. 87220151
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optometric services of physicians for whom he has agreed to provide such services.”4
Applicant denied that the specimen was a mock-up, noting that the sign was on public
display in Applicant’s clinic. Applicant responded to the information requirements,
except for the documents, which Applicant contended were confidential.
In the next Office Action, the Examining Attorney maintained the refusal under
Sections 1 and 45 on the ground that the specimen does not show Applicant’s mark
in use in connection with the recited services because it contains “nothing to indicate
that the applicant advertises or promotes the ophthalmology or optometry services of
others.”5
Applicant appealed, but also requested reconsideration, so the case was
remanded.6 In the request for reconsideration,7 Applicant questioned the propriety of
a final action, given the underlying shift in rationale for the refusal. Applicant further
contended that although the specimen includes no explicit reference to the services,
consumers nonetheless could infer the nature of the services from the context (use
with an eyeglasses design) and significance of the mark (20/20 in relation to vision),
and would make an association.
The Examining Attorney maintained the refusal that the specimen does not show
use of the mark in connection with the services. According to the Examining Attorney:
The specimen shows the mark, and lists the applicant’s
name, the name of the applicant’s practice, which is a pain

4 February 16, 2018 Response to Office Action at 3.
5 March 5, 2018 Office Action at 1.
6 2 TTABVUE.
7 4 TTABVUE.
Serial No. 87220151
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clinic, and the applicant’s address. The specimen does not
create a direct association between the mark, and the
services of advertising, marketing or promotion of
ophthalmology and optometry services of others. Since the
context or environment in which the specimen appears is a
pain clinic, there is no logical reason a patient of the
applicant’s pain clinic would surmise that the applicant is
advertising the services of ophthalmologists and
optometrists. Especially since the applicant’s name,
address, and the name of the clinic also appear on the
specimen, there is nothing to tell the public that this
specimen somehow is promoting the services of an
ophthalmologist or optometrist. Having the applicant’s
name and reference to his pain clinic on a sign purporting
to advertising ophthalmological and optometric services is
incongruous and does not make sense. While the picture of
the eyeglasses and the reference to “20/20? suggest vision,
there is nothing to suggest that the applicant is engaged in
advertising and promoting other doctors’ services. If the
specimen said something like “Ask me to recommend a
good ophthalmologist or optometrist,” or “Looking for a
good ophthalmologist or optometrist?” or “Ask us how,”
then it would show some association between the mark and
the claimed services. The specimen of record does not show
this.8
Applicant responded that a direct association between the mark and the
advertising services would be made because “a patient would know that it is in a pain
clinic; the patient would know that it was not in an optometrist’s or ophthalmologist’s
office and, being aware of its environment, the patient would necessarily and logically
know that the provided specimen was Applicant’s advertising of the optometry and
ophthalmology services of others.”9 However, the Examining Attorney remained
unpersuaded, and maintained the refusal, based on her earlier reasoning.10

8 December 14, 2018 Office Action at 1.
9 June 12, 2019 Response to Office Action at 1.
10 6 TTABVUE.
Serial No. 87220151
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Applicant filed another request for reconsideration, pointing to TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1301.04(f) (Oct. 2018) to argue that the
reference to “20/20” with an eyeglasses design sufficiently refers to the field of use
and the signage is unmistakably advertising.11
The Examining Attorney again denied the request for reconsideration based on
her earlier reasoning, and pointed to two registrations owned by Applicant for the
marks, 2020 IS THE YEAR TO SEE CLEAR and 2020, THE YEAR TO SEE CLEAR
for similar services to those at issue in this case. She alleged that, in contrast to the
specimen in this case, the supporting specimens for those registered marks included
wording that “show[ed] a logical connection between the mark shown on the specimen
and the services, such as “Ask us how,” or “We can refer you to the proper eye care
professional. Dr. Mansell is compensated by an eye care professional for this
advertisement.”12
The appeal resumed, and has been briefed.13
As explained below, we affirm the refusal to register because we find the specimen
does not show use of the mark in connection with the recited advertising services.

11 10 TTABVUE.
12 12 TTABVUE 6. While in TSDR the Office Action denying reconsideration includes as
attachments copies of Applicant’s registrations, it does not include copies of the specimens on
which the Examining Attorney relies.
13 Applicant already had submitted his Brief (5 TTABVUE) before the case was remanded for
consideration of the request for reconsideration, resulting in further prosecution. Once the
appeal was resumed almost two years later, the Board afforded Applicant the opportunity to
file a supplemental brief, 13 TTABVUE, but he did not do so.
Serial No. 87220151
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II. Use of the Mark for the Services
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used
in commerce “when it is used or displayed in the sale or advertising of services.” See
also Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2) (“A service mark specimen
must show the mark as used in the sale or advertising of the services”). Such use may
be established by: (1) showing the mark used or displayed as a service mark in the
sale of the services, which includes use in the course of rendering or performing the
services, or (2) showing the mark used or displayed as a service mark in advertising
the services, which encompasses marketing and promotional materials. In re WAY
Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (citing In re Metriplex, Inc., 23
USPQ2d 1315, 1316-17 (TTAB 1992) (an acceptable specimen need not explicitly refer
to the services if it “show[s] use of the mark in the rendering, i.e., sale, of the
services”)); In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that
“rendition” of services is properly viewed as an element of the “sale” of services).
Applicant has clarified in his Brief that his specimen is the first type – showing
the mark in the course of rendering the services.14 While a rendering-type specimen
need not explicitly refer to the services, it still must show “some direct association
between the offer of services and the mark sought to be registered therefor.” In re
Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). A specimen
is deficient if it shows only the mark with no reference to, or association with, the
services. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re Duratech Indus.

14 5 TTABVUE at 10-11.
Serial No. 87220151
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Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). In order for the rendering-type specimen
to establish the requisite direct link between the mark and the services, “there must
be something which creates in the mind of the purchaser an association between the
mark and the service activity.” In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320
(TTAB 1994). We make this inquiry from the perception of the user or consumer of
the services. See In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir.
2016). We must decide whether use of the mark “‘sufficiently creates in the minds of
purchasers an association between the mark’” and the applied-for services. Id.
(quoting In re Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)).
We find that consumers would not associate 20/20 IN 2020 with advertising
services for others in the field of ophthalmology or optometry based on Applicant’s
use of the mark in his specimen, . It fails as
a rendering-type specimen, because it does not convey that any service is being
advertised for others.
Applicant argues that because he does not provide ophthalmology and optometry
services, consumers “would recognize that the Applicant is advertising
Serial No. 87220151
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ophthalmology and optometry services that must be provided by another.”15 He
contends in his Brief:
The ordinary observer would recognize that “20/20” has
commonly-recognized significance in the fields of
ophthalmology and optometry, particularly, in reference to
visual acuity (i.e., clarity of vision). Likewise, the ordinary
observer would recognize that “2020” is suggestive of
“20/20” and, thus, is suggestive of the fields of
ophthalmology and optometry. Taken in concert with the
representation of eyeglasses appearing in the specimen,
the observer would easily infer a reference to
ophthalmology and optometry and, thus, that the services
being advertised are ophthalmology and optometry
services.16
However, the inferences Applicant seeks to impute to consumers are too much of
a reach. See WAY Media, 118 USPQ2d at 1701 (photo of “radio broadcast booth
environment” does not suffice to show use in rendering radio broadcasting services).
Even in the context of the display of the sign in Applicant’s pain clinic office, the sign
simply does not associate 20/20 IN 2020 with advertising services provided for the
benefit of others. While the eyeglasses design and reference to 20/20 certainly suggest
something associated with vision, exactly what the sign promotes remains a mystery.
Given the accompanying name and contact information, we find that consumers
probably would view it as an advertisement for Dr. Mansell and his practice.
Consumers could derive the impression that Dr. Mansell offers some type of vision-
related goods, such as eyeglasses, or vision-related services, such as treatments that
improve sight. Alternatively, consumers could perceive the mark as a general slogan

15 5 TTABVUE 12.
16 5 TTABVUE 11-12.
Serial No. 87220151
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for Dr. Mansell’s office or his pain management services. In this regard, we take
judicial notice of the second definition of “20/20” in the Merriam-Webster Dictionary,
“marked by facilely accurate discernment, judgment, or assessment// hindsight is
twenty-twenty,”17 such that consumers could perceive the mark as an indication that
in 2020, they would consider treatment by Dr. Mansell to reflect good judgment.
Ultimately, even consumers who are Dr. Mansell’s patients visiting his office would
not associate this mark with advertising services for others. The specimen, even as
displayed in the setting shown in the photograph, gives no indication that the mark
appears in the course of advertising for others. See Johnson Controls, 33 USPQ2d at
1320 (“There would be no reason for any reasonable person to suspect that a custom
manufacturing service is being identified by the mark as it is used on these labels.”).

Decision: We affirm the refusal to register.

17 Merriam-webster.com entry for “twenty-twenty” or “20/20,” accessed March 18, 2021. The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).