On the Way LLC

Trademark Trial and Appeal Board

Jun 10, 2020

87037256 (T.T.A.B. Jun. 10, 2020)

This Opinion Is Not
a Precedent of
the TTAB
Mailed: June 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re On the way LLC
_____

Serial No. 87037256
_____

Lisa R. Hemphill of Foley & Lardner LLP,
for On the way LLC.

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

Before Zervas, Wellington and Heasley, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On the way LLC (“Applicant”) seeks registration on the Principal Register of the
mark for “advertising, marketing and promotional services” in International
Class 35.1 The mark is described as consisting of the letter “S” formed by two
incomplete rectangles.

1 Application Serial No. 87037256 was filed on May 14, 2016 based on 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); subsequently Applicant filed a Statement of Use along with two
specimens of use, alleging March 21, 2017 as the date of first use and first use in commerce
of the mark.
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The Examining Attorney issued a final Office Action finding Applicant’s
specimens of use unacceptable under Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051
and 1127, and Trademark Rules 2.34(a)(1)(iv) and 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv)
and 2.56(a), because they do not show the applied-for mark in use in commerce in
connection with the services specified in the application. Applicant filed a notice of
appeal with the Board and a request for reconsideration. The Examining Attorney
was not persuaded by Applicant’s arguments and continued the refusal. When the
appeal resumed, Applicant and the Examining Attorney filed briefs. We affirm the
refusal to register.
The sole issue in this appeal is whether the specimens submitted by Applicant
with its Specimen of Use are acceptable specimens to show use of the mark in
connection with the identified services.
I. Applicable Law
Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires, inter alia,
that an applicant, filing a trademark application under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), file specimens of a mark as used in commerce. Registration
of the mark is subject to examination and acceptance of the specimens. Id. According
to 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.” See also Trademark Rule 2.56(b)(2), 37 C.F.R.
§ 2.56(b)(2). “To determine whether a mark is used in connection with the services
described in the [application], a key consideration is the perception of the user.” In re
JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016).
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An acceptable specimen 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). “Specimens showing the mark
used in rendering the identified services need not explicitly refer to those services in
order to establish the requisite direct association between the mark and the services,
but ‘there must be something which creates in the mind of the purchaser an
association between the mark and the service activity.’” In re Way Media, 118
USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d
1318, 1320 (TTAB 1994)); accord JobDiva, 121 USPQ2d at 1126 (“the question is
whether the evidence of JobDiva’s use of its marks sufficiently creates in the minds
of purchasers an association between the marks and JobDiva’s … services”) (internal
quotation marks, brackets, and citation omitted). Showing 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). Thus, a specimen is unacceptable if it fails to
convey a proper nexus between the mark and the services, or if the services are too
attenuated from the proposed mark, either in terms of proximity or logical connection.
See, e.g., In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992); In re Monograms
Am., Inc., 51 USPQ2d 1317, 1319 (TTAB 1999).
An applicant may explain the nature of the mark’s use or the way the services are
advertised or rendered. See In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the
submitted specimens acceptable based, in part, on applicant’s explanation that the
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specimens showed the mark as it appeared on a computer terminal in the course of
rendering the services). The TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1301.04(f)(ii) (Oct. 2018) allows that “[d]irect association may be indicated by the
context or environment in which the services are rendered, or may be inferred based
on the consumer’s general knowledge of how certain services are provided or from the
consumer’s prior experience in receiving the services” (citing In re Metriplex, Inc., 23
USPQ2d at 1316; In re WAY Media, Inc., 118 USPQ2d at 1698)). TMEP
§ 1301.04(f)(ii) mentions that “it may … be helpful for the applicant to provide an
explanation regarding industry practice concerning the use of the mark during the
rendering of such services and how the applicant’s use comports with such practice.”
II. Analysis
Applicant’s specimens filed with its Statement of Use, which Applicant identified
as “screenshots of app advertising/marketing third party business,” are duplicated
below:
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and
The mark appears on the specimen on the left (“first screen”) but does not appear
in the specimen on the right (“second screen”). Additionally, the services are not
mentioned or referred to in either of the screenshots, and Applicant does not contend
that they are. Rather, Applicant explains that the advertising appears as the user
uses the app:
Applicant is providing a platform to promote the
goods and services of others via computer and
communications networks. In other words,
Applicant is providing a means for advertising other
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companies or organizations via Applicant’s app for
navigational services. Specifically, when users view
Applicant’s app and enter a destination address,
Applicant’s app has the ability to display the
locations of the goods and services of others along
the way, thereby promoting the goods and services
of other companies to the users. For example, once a
destination address is entered into the app, the user
can request the app show the locations of grocery
stores on the way to their destination, thereby
actually promoting and advertising the grocery
store.2
Applicant clarifies, “once a destination address is entered into the program, the
user can say, for example, find a florist, or a grocery store, and the app will pull up
the appropriate goods or services, thereby actually promoting and advertising the
goods and services of other companies.”3 We note too that icons appear on the first
screen presumably representing links to coffee shops, gas stations, grocery stores,
restaurants and banks on the way. Ostensibly, users may tap the icons on the first
screen to learn where relevant goods and services can be found along the way, after
entering a destination address. However, there is no indication from the first screen
whether coffee shops, gas stations, grocery stores, restaurants and banks located by
the app are actually advertised on the app or whether they appear simply as
informational as determined by Applicant’s algorithms as part of its navigational
service. Although the mark is displayed at the top of the first screen, Applicant’s
services are not identified or referred to on that screen. The first screen by itself does

2 Applicant’s brief at pp. 4-5, 13 TTABVUE 7-8.
3 June 4, 2018 Resp. to Office Action, TSDR 1.
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not create a direct association of Applicant’s mark with Applicant’s identified
services.
We consider then the second screen in conjunction with the first screen. A route is
displayed on the second screen, as well as red dots, which presumably identify the
goods or services of interest to the user along his or her chosen route. It is not clear
whether the red dots represent customers of Applicant who have chosen to take
advantage of Applicant’s alleged advertising and promotional services, or appear
there informationally for the user.
The second screen also contains a box with the term “Albertsons” next to an arrow,
without any indication what Albertsons is or how Albertsons was placed in the box or
what the arrow signifies. Because Applicant characterizes Albertsons as a grocery
store – which is not apparent from the provided screenshots alone - it appears that
the bubble with “Albertsons” along with its street address is the advertising Applicant
alleges it provides.4 Applicant has not indicated when the Albertsons bubble appears
on the screen, e.g., directly after the user has indicated that he or she would like to
see grocery stores along the route, or as a pop-up when the user drives near
Albertsons.
Applicant argues that the user would recognize its alleged service from the second
screen:
This form of advertising [is] common in today’s
world. For example, while consumers commonly use
internet search engines to find websites containing

4 The bubble includes a marker in the same coloring and shape as the marker displayed next
to “Current Location” and “Where ya headed?” on the first screen, suggesting that it is
intended to signal a specific location.
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specific words, the search engine will also return
advertisements selected by an algorithm based on
the search terms. Users recognize these forms of
advertisement and promotion and know that
companies generally pay for this kind of
advertisement. The same is true in navigation
service apps. Users of navigation apps may search
for generic terms, such as “restaurants,” and the app
will return location-based results that may include
businesses that are paying to be promoted.
Therefore, when a user sees an ad or location called
out in a navigation app, they understand that the
app is providing a promotional or marketing service
and advertising for another company. Certainly,
potential purchasers interested in procuring these
kinds of advertising services for themselves will
understand that at least some of the information
displayed on the app is paid promotion or
advertising. With online sales and business
extensively being conducted through mobile apps
today, promotion and advertising on an app is a form
of promotion for another party, which is at the core
of advertising, i.e., the activity of producing
advertisements for products or services. The
specimen submitted shows this advertising service
being rendered with Applicant’s mark used in
connection with rendering that service. The Mark is
associated with the advertising service both directly
(showing the mark on the first screen of the app) and
contextually (showing the advertisements on the
app’s subsequent screens).5
Applicant adds that “it's no different than a ‘pop[-]up’ ad or a banner running
across a website.”6
We are not persuaded by Applicant’s arguments that its specimens demonstrate
use of its mark in commerce. First, Applicant’s display only shows a name and an

5 Applicant’s brief at p. 5, 13 TTABVUE 8.
6 June 4, 2018 Resp. to Office Action, TSDR 1.
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address, which appears in the context of a navigational app. If a consumer requests
information about grocery stores, and only the name of the grocery store and its
address appears, it follows that the name and address appeared because of the
request and not because the merchant had advertised through the app. On
Applicant’s app, the alleged Albertsons advertisement appears after the user has
instructed the app to produce information – probably a name and an address - about
a particular category of goods or services.
Second, Applicant’s claim that “when a user sees an ad or location called out in a
navigation app, they understand that the app is providing a promotional or
marketing service and advertising for another company,” is speculative and without
evidentiary support.7 In addition, Applicant does not maintain that online
advertisements only include the business name and address, and it appears unlikely
that online advertisements contain such limited information, with no indication of
the services or goods offered by the business.
Third, Applicant states, “potential purchasers interested in procuring these kinds
of advertising services for themselves will understand that at least some of the

7 There is no sworn testimony in the record. See In re U.S. Tsubaki, Inc., 109 USPQ2d 2002
(TTAB 2013) (disregarding outside counsel’s conclusory unverified statements made without
proper foundation regarding marketing of goods stating, “[p]utting aside whether a
declaration from outside counsel could ever qualify as acceptable proof of these sort of facts,
we have here no foundational information about counsel's investigation of, or understanding
of, applicant's business, that would put him in a position to make statements regarding the
marketing of the products at issue, which in this case is essential to our analysis of the
registrability of the mark.”).
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information displayed on the app is paid promotion or advertising.”8 Applicant has
not explained how businesses, as potential consumers of Applicant’s services, would
view Applicant’s mark, as it is shown in the first screen, and associate this mark with
Applicant’s identified services. Applicant largely discusses the perceptions of users
of the app rather than the potential consumers of Applicant’s services.
In view of the foregoing, we agree with the Examining Attorney that the reference
to Albertsons in the specimen appears to be informational, rather than an
advertisement. Nothing “creates in the mind of the purchaser a direct association
between the mark and the service activity.” In re WAY Media, 118 USPQ2d at 1698
(quoting In re Johnson Controls, 33 USPQ2d at 1320). The specimens do not
demonstrate use of the applied-for mark for the identified services.
Decision: The refusal to register Applicant’s mark is affirmed.

8 By referring to some, but not all, of the information displayed on the app as paid promotion
or advertising, Applicant allows that certain information is not paid promotion or advertising,
but does not explain how a consumer would distinguish the two.