Keith Shelton

Trademark Trial and Appeal Board

Feb 16, 2021

88231075 (T.T.A.B. Feb. 16, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Keith Shelton
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Serial No. 88231075
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Lisa L. Michels, Esq., for Keith Shelton.

Laura Golden, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
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Before Wolfson, Shaw, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Keith Shelton (Applicant) seeks registration on the Principal Register of the mark
shown below for “on-line retail store services featuring clothing, apparel, and
accessories” in International Class 35.1

1 Application Serial No. 88231075 was filed on December 16, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) of the Trademark Act.
Application Serial No. 88231075
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The application includes the statements:
The mark consists of the stylized wording “STR8NGE AND ING IT”. The words
“STR8NGE” and “ING IT” are red, while the word “AND” is white and appears
within a red heart design. A red lip design appears below the wording. All of
the red wording and design elements are surrounded by white bordering,
accented by gray shading. The entirety of the wording appears on a white
background.

The color(s) red, white, and gray is/are claimed as a feature of the mark.

The Trademark Examining Attorney refused registration of Applicant’s mark
under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the
ground that Applicant failed to provide a specimen which shows the mark in use in
commerce in connection with “on-line retail store services featuring clothing, apparel,
and accessories.”
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.

References to the application are to the downloadable .pdf version of documents available
from the TSDR (Trademark Status and Document Retrieval) database. The TTABVUE
citations refer to the Board’s electronic docket, with the first number referring to the docket
entry and the second number, if applicable, referring to the page within the entry.
Application Serial No. 88231075
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I. Applicant’s Specimens
Following issuance of the notice of allowance for his application, Applicant filed a
statement of use which described the attached specimen of use as:2
The specimen of the mark consists of stylized word “Str8nge” over the word
“and” enclosed in a heart with the letters “inG” to the right, with the word “IT”
underneath and a picture of lips at the bottom, meant to represent the phrase,
“Strange and Loving It”.
Below is a copy of the specimen of use:

Applicant’s Original Specimen3
The Examining Attorney issued an Office Action refusing registration because the
specimen of use failed to show the mark in commerce with the services, and was
merely a copy of the drawing of the mark. Applicant responded with a substitute
specimen described as “a marketing brochure that shows the applied for mark
‘Str8nge and IT’ being used in commerce” in association with online retail store

2 August 14, 2019 Statement of Use.
3 August 14, 2019 Specimen.
Application Serial No. 88231075
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services featuring clothing, apparel, and accessories.4 Below is a copy of the two-page
substitute specimen of use:

Applicant’s Substitute Specimen, page 15

4 December 30, 2019 Response TSDR 2.
5 December 30, 2019 Substitute Specimen.
Application Serial No. 88231075
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Applicant’s Substitute Specimen, page 2
The Examining Attorney issued a final refusal based on the failure to show use of
the mark in commerce with the services through an acceptable specimen.
II. Requirements for Specimen of Use
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 and
the services are rendered in commerce.” The specimen must show the mark used in
a manner that creates in the minds of potential consumers a direct association
between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655,
177 USPQ 456, 457 (CCPA 1973) (“The minimum requirement is some direct
Application Serial No. 88231075
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association between the offer of services and the mark sought to be registered
therefor.”); see also In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d
2010, 2014 (Fed. Cir. 1987) (“The ‘direct association’ test does not create an additional
or more stringent requirement for registration; it is implicit in the statutory
definition of ‘a mark used . . . to identify and distinguish the services of one person
. . . from the services of others and to indicate the source of the services.’”). “The
ultimate question here is this: whether purchasers would perceive [Applicant’s]
mark[] to identify [the services listed in the application].” In re JobDiva, Inc., 843
F.3d 836, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016).
For specimens showing the mark used in advertising the services, “[i]n order to
create the required ‘direct association,’ the specimen must not only contain a
reference to the service, but also the mark must be used on the specimen to identify
the service and its source.” In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016)
(quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)).
Displaying only the mark with no reference to, or association with, the services does
not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997);
In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989).
Here, the “marketing brochure” includes the mark, photographs of t-shirts
described as “colorful and eye-popping designs on t-shirts,” and exhorts readers to
“wear your strange!” However, there is no indication that Applicant provides online
retail store services at which it sells t-shirts or that wearing Applicant’s t-shirts
would be the result of an online retail transaction. The brochure invites readers to
Application Serial No. 88231075
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“Be Strange!,” to “Show Your Friends How Strange YOU Are!,” and asserts that
“Strange and Loving It benefits all races, age groups, and lifestyles,” and that
“Strange and Loving Its mission is to encourage people to BE STRANGE, FLAUNT
STRANGE, and ‘WEAR YOUR STRANGE,’ BE YOURSELF.” The brochure invites
readers to “visit the strangest site on the web,” to “check out the blogs to view the
Strange and Loving It commercial,” and “join my mailing list.” The brochure indicates
that payment may be accepted through PayPal and credit cards, and, based on
proximity of the exhortations to the payment statement, this apparently refers to
payment to visit the website or join the mailing list. The brochure does not refer to
any activity that may be considered an online retail store service.
Because industry use may vary or evolve, an applicant may supplement its
specimen with an explanation or evidence of industry custom which makes clear that
purchasers would perceive the mark on the specimen as identifying the service. See
In re JobDiva, Inc., 121 USPQ2d at 1125 (“JobDiva’s CEO had testified that JobDiva’s
software actually performs personnel placement and recruitment services.”); In re
Pitney Bowes, Inc., 125 USPQ2d 1417, 1419 (TTAB 2018) (“While the Examining
Attorney reasonably found the specimen unclear as to whether Applicant, rather than
a third party, provides the services, Applicant’s explanation of the specimen and how
Applicant provides the outsourced mailing services referenced on the specimen
resolved the ambiguity”). Of course, an explanation cannot excuse failure to use the
Application Serial No. 88231075
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mark in connection with the identified services, and must be consistent with what
the specimen itself shows. Id.
Here, Applicant argues that his mark is “clearly and directly associated with the
Strange and Loving it online retail store services, as evidenced by consumers and
purchasers who have bought the STR8NGE AND IT branded apparel directly from
the Applicant’s Strange and Loving It online retail store.”6 The explanation that
Applicant has sold apparel through his online retail store suggests that Applicant
may operate an online retail apparel store, but Applicant’s specimen does not
demonstrate that fact or that Applicant uses the applied-for mark to advertise its
online retail apparel store. There is simply no association made in the marketing
brochure between Applicant’s mark and Applicant’s purported online retail store
services, and so the specimen and explanation fall short of demonstrating the
required “direct association” between the mark and the services. See In re The Cardio
Group, LLC, 2019 USPQ2d 227232, *3 (TTAB 2019) (“Applicant’s explanation fails to
clarify that the specimens show Applicant rendering a retail store service of any type

6 5 TTABVUE 14.
Application Serial No. 88231075
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or persuade us that there is an association between THE CARDIO GROUP and
design and retail store services.”).
Decision: The refusal to register Applicant’s mark for “on-line retail
store services featuring clothing, apparel, and accessories” under Sections 1 and 45
of the Trademark Act for failure to submit an acceptable specimen of use, is affirmed.