Perdue Holdings, Inc.

Trademark Trial and Appeal Board

Apr 26, 2001

No. 75547196 (T.T.A.B. Apr. 26, 2001)

4/26/01
Paper No.10
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Perdue Holdings, Inc.
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Serial No. 75/547,196
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Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P. for Perdue Holdings, Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Dan Vavonese, Acting Managing Attorney).
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Before Cissel, Wendel and Holtzman, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Perdue Holdings, Inc, has filed an application to
register the mark PERDUE.COM for “providing information
regarding food products, food preparation, food storage,
recipes, and applicant via a global computer network; and
providing recipe exchange services via a global computer
network.”1

1 Serial No. 75/547,196, filed September 3, 1998, based on an
allegation of bona fide intention to use the mark in commerce.
An amendment to allege use was filed on February 18, 1999,
setting forth a first use date and first use in commerce date of
December 21, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/547,196
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Registration has been finally refused under Sections
1, 2, 3 and 45 of the Trademark Act on the ground that the
specimens of record fail to show use of the proposed mark
in a fashion that functions as a service mark. The
refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
The specimen of use which has been submitted consists
of the following promotional or advertising brochure:
Ser No. 75/547,196
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The Examining Attorney argues that the proposed mark
does not function as a service mark for two reasons:
(1) the designation “perdue.com” is buried in the text of
the brochure and is not used in any manner which would make
it readily apparent that it is a source indicator for the
recited services; and (2) the designation simply provides
information about the location of applicant’s website. She
cites the Board’s decision in In re Eilberg, 49 USPQ2d 1955
(TTAB 1998), wherein the asserted mark WWW.EILBERG.COM was
found to serve such an informational purpose.
Applicant contends that its specimen meets the
requirements for a proper specimen in that it “is an
advertising brochure that shows the mark PERDUE.COM, with
the service mark designation “SM” accompanied by the
following explanation of Applicant’s online services with
the Internet address where consumers can receive those
services: ‘... visit our web site at www.perdue.com.’”
(Brief p.4). Applicant argues that Eilberg is not
applicable here, in that applicant is not using its mark
merely to provide the location of its web site. Applicant
insists that by the use of the designation “SM” to indicate
that PERDUE.COM is a “source-identifying service mark,” by
the inclusion of the full Internet address after the mark,
and by the absence of any “www” indicator in the mark,
Ser No. 75/547,196
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applicant is clearly not using its mark simply as a web
site address. Applicant argues that the mere inclusion of
the term .COM should not be considered to transform an
otherwise valid service mark into an informational address.
Service mark use is defined under Section 45 of the
Trademark Act as occurring when a mark “is used or
displayed in the sale or advertising of services.” In view
of the intangible nature of services, specimens are often
advertising materials. There must be, however, a direct
association between the mark sought to be registered and
the services recited in the application, and this
association must be created by a sufficient reference in
the specimens to the services. See In re Advertising and
Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed.
Cir. 1987); In re Monograms America Inc., 51 USPQ2d 1317;
In re Johnson Controls Inc., 33 USPQ2d 1318 (TTAB 1994); In
re Metrotech, 33 USPQ2d 1049 (Com’r Pats. 1993). In
certain instances, although the specimens may not
explicitly refer to the services identified in the
application, the specimens may be fully adequate because
they show use of the mark in the actual rendering or sale
of the services. See In re Metriplex, Inc., 23 USPQ2d 1315
(TTAB 1992); In re Eagle Fence Rentals, Inc., 231 USPQ 228
(TTAB 1986).
Ser No. 75/547,196
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We agree with the Examining Attorney that the initial
problem with applicant’s use of the designation PERDUE.COM
is that it is buried in the text of the advertising
brochure. Although preceded by a bullet, most of the other
items are similarly presented. There is no distinguishing
feature between this designation and the other facts
outlined in the brochure. There is nothing to set this
particular entry apart as a source identifier for
particular services offered by applicant.
But even more significant is the absence of any
association between the designation “perdue.com” as
encountered in this brochure and the specific services
identified in the application. While applicant speaks of
an “explanation of Applicant’s online services,” we fail to
find any such explanation. At best, the words “perdue.com”
appear to be used as a domain name, from which persons
reading this brochure might infer that applicant has a web
site. The address directly thereafter simply confirms this
inference. Nowhere, however, is there any indication of
the nature of this web site or the particular type of
information which applicant provides by this means. In
fact, we are faced with the inconsistency that, although
this brochure is obviously directed to retailers and not
the ultimate consumers of applicant’s products, the
Ser No. 75/547,196
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services recited in the application appear to be directed
to the ultimate consumers, i.e., a web site offering recipe
exchanges, food preparation information and the like.
Thus, there is nothing in the specimens which would
create an association between the designation “perdue.com”
and the particular services identified in the application.
The presence of the “SM” symbol does not in itself impart
service mark significance to the designation, in the
absence of the association of this domain name with the
offering by applicant of any particular services. The mere
listing of a domain name only provides the information that
a web site exists.
Furthermore, this clearly is not a situation in which
the mark is being used in connection with the actual
rendering of the services. Applicant is simply stating in
its promotional literature that such a site exists; no
actual use of the designation in connection with the web
site has been relied upon by applicant.
The fact that the mark which applicant seeks to
register may be described as a domain name makes no
difference in the application of the basic principles of
service mark usage. The Examining Attorney has in fact
stipulated that the mark is capable of functioning as a
service mark if used in a manner which demonstrates actual
Ser No. 75/547,196
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service mark usage. It is not the nature of the mark which
is at issue; it is the manner in which it has been
presented to the public and the resultant association, or
lack of association, with the recited services which is the
issue.
We agree with applicant that the circumstances here do
not parallel the Eilberg case. There, the asserted mark
was found to merely indicate the location of the
applicant’s web site. Here applicant has explicitly set
forth the web site address following its presentation of
the designation PERDUE.COM. We do not view the designation
sought to be registered as simply another reference to a
means of contacting applicant. Instead, the deficiency
lies in applicant’s failure to create an association of any
particular services with the designation PERDUE.COM.
Applicant uses the term solely as a domain name, without
any supporting information as to any particular services
offered under this domain name.
Accordingly, we find that the specimens of record fail
to show use of the designation PERDUE.COM as a service
mark.
Decision: The refusal to register under Section 1, 2,
3 and 45 of the Trademark Act is affirmed.
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