Perfect Flow Assets Limited

Trademark Trial and Appeal Board

Aug 8, 2011

No. 78741311 (T.T.A.B. Aug. 8, 2011)

Mailed: August 8, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Perfect Flow Assets Limited
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Serial No. 78741311
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Sergei Orel, LLC for Perfect Flow Assets Limited

John M. Gartner, Trademark Examining Attorney, Law Office 102
(Karen Strzyz, Managing Attorney).
_______

Before Quinn, Holtzman and Ritchie, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Perfect Flow Assets Limited, seeks to register
the mark shown below,1

1 The mark consists in part of the word "EASTWEEK." The application
states that "the non-Latin characters in the mark transliterate into
DONG ZHOU KAN, and this means EAST WEEKLY PUBLICATION in English." The
examining attorney made no requirement for a disclaimer.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78741311
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for magazines and other printed publications in Class 16; and for
services in Class 41 identified, as amended, as follows:
On-line publication of books and journals; arranging
and conducting conferences and congresses;
educational services, namely, conducting distance
learning instruction at secondary, college and
graduate levels; educational services, namely,
arranging and conducting seminars, classes, training
workshops, symposiums, exhibition and conferences,
all in the fields of computers, computer programs and
computer software, news, music, education, research,
current events, property, heritage, history,
geography, politics, social functions, finance,
insurance, commerce, business and trade, economy and
world economy, marketing, agriculture, industry,
religion, law, family, childcare, crafts, recreation,
travel, science, medicine, pharmaceutics, electronic
technology, communications, the media, games, sports,
arts, weather, entertainment, infotainment, health,
fashion and leisure; educational services, namely,
arranging and conducting symposiums; entertainment
services, namely, arranging and conducting
exhibitions in the field of computers, computer
programs and computer software; providing information
about education; entertainment services, namely,
conducting balls, receptions, dinners parties and
parties for guests and locals; entertainment
services, namely, live, televised and movie
appearances by professional entertainer; providing
entertainment information in the fields of news,
music, current events, gossip, crafts, recreation,
the media, people, games, sports, arts, infotainment,
lifestyle, leisure and romance; entertainment,
namely, production of motion picture films, radio
programs and television programs, theatrical
performances, live music shows and live sound-and-
light shows; entertainment services, namely,
providing on-line computer games; impresario services
relating to organization of shows and films, namely,
production of sound recordings, motion picture
photography services, audio recording services,
composition of musical scores and sound effects for
others, and preparation of trick effects and special
effects; news reporting services and photographic
reporting; organization of athletics and intellectual
Ser No. 78741311
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prowess competitions relating to education or
entertainment, namely, table tennis, tennis, squash,
badminton, baseball, polo, cricket, golf, soccer,
football, basketball, handball, hockey, rugby,
fencing, dancing, cycling, fishing, swimming, wind-
surfing, water ball, bocce, volleyball, ice skating,
roller skating, ice hockey, gymnastics, mental
sports, namely, chess, poker; arranging and
conducting athletic competitions; party planning;
presentation of live show performances; production
and distribution for others of radio and television
programs in the fields of news reporting and
analysis, weather information, sports events, sports
information reports, pre-recorded music programs,
feature coverage programs of special events and
activities for entertainment purpose; providing
information about education, entertainment,
infotainment and recreation activities provided on-
line from computer databases, computer networks, the
Internet or by electronic means; providing
information about education, entertainment,
infotainment and recreation activities, accessible
via communication and computer networks; providing
interactive information about education,
entertainment, infotainment and recreation activities
provided on-line from computer databases, computer
networks, the Internet or by electronic means;
publication of books, journals, magazines, newspapers
and periodicals; providing recreation activities
information; training and instruction services and
demonstrations in the field of the use of computers.

The application was filed on October 26, 2005 based on
applicant's assertion of a bona fide intention to use the mark in
commerce. Following publication of the mark for opposition and
issuance of a notice of allowance, applicant filed a statement of
use together with specimens of use, alleging dates of first use
of the mark and first use in commerce on January 31, 2004.
The trademark examining attorney refused registration of the
mark under Sections 1, 3 and 45 of the Trademark Act as to Class
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41 on the ground the specimens submitted with the statement of
use, while acceptable to show use of the mark for goods in Class
16, fail to show use of the mark for any of the identified
services in Class 41 as required by Trademark Rules 2.56 and
2.88(b)(2). Applicant subsequently provided three additional
specimens, none of which, according to the examining attorney,
shows use of the mark in connection with the services.
When the refusal was made final, applicant appealed. Briefs
have been filed.
The original specimens submitted with the statement of use
consist of the front cover of a magazine showing the mark at the
top of the cover, along with the table of contents and a page
from the body of the magazine. The magazine cover and a
translated portion of the table of contents page are reproduced
below.

Ser No. 78741311
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Applicant's three additional specimens consist of 1) a
subscription form for the magazine described by applicant as "an
advertisement of Eastweek magazine showing the mark, where the
advertisement describes the fact that Eastweek magazine provides
'extensive coverage of entertainment news'"; 2) an "advertising
rate card for Eastweek magazine listing the advertisement rates
in the magazine and showing the mark and describing that the
magazine's 'coverage focuses on current affairs and entertainment
Ser No. 78741311
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news'"; and 3) a photograph showing the mark displayed on a sign
on top of a float in a Lunar New Year Parade in New York City.
Applicant acknowledges that the mark is used as the name of
its magazine. Applicant contends, however, that the specimens
also show that the mark as used in connection with "at least one
service as listed in Class 41 in this application, namely,
'providing entertainment information in the field of news, music,
current events, gossip...', and 'news reporting services and
photographic reporting.'" The examining attorney maintains that
the specimens show use of the mark solely to identify the name of
applicant's printed magazine which is a Class 16 good and that
the information imparted by the magazine is not a separate
service.
Section 3 of the Trademark Act provides for the registration
of service marks. Section 45 of the Act defines "service mark,"
in relevant part, as "any word, name, symbol, or device, or any
combination thereof used by a person...to identify and
distinguish the services of one person...from the services of
others and to indicate the source of the services, even if that
source is unknown."
The identified services, which include providing
entertainment information and news reporting services, clearly
are "services" under this definition. However, the issue in this
case is whether the specimens of record demonstrate use of the
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mark as a service mark for those services. See Trademark Rules
2.56 and 2.88(b)(2).
The Court of Appeals for the Federal Circuit has stated that
some business activities which may be described in terms of a
"service" to the public do not constitute a service within the
meaning of the Act.
Through a series of decisions it has become a settled
principle that the rendering of a service which is
normally "expected or routine" in connection with the
sale of one's own goods is not a registrable
service.... This interpretation is a refinement of
the basic principle that the service for which
registration is sought must be rendered to others....
[Footnote omitted, emphasis in original.]

In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1208 (1987).
Likewise, in In re Canadian Pacific Limited, 754 F.2d 992, 224
USPQ 971, 973 (Fed. Cir. 1985), the Court adopted the definition
that a "service" is the performance of labor for the benefit of
another. As a related principle, the Board in In re Landmark
Communications, Inc., 204 USPQ 692 (TTAB 1979) stated that an
"activity must be qualitatively different from anything
necessarily done in connection with the sale of goods." Id., at
695.
In order to determine whether an activity is a registrable
service, "we must first ascertain what is an applicant's
principal activity under the mark, i.e., the sale of a service or
the sale of a tangible product," and then determine whether the
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activity "is in any material way a different kind of economic
activity than what any purveyor of the...tangible product
necessarily provides." Id.
The specimens show that applicant is publishing
(manufacturing) a magazine and applicant does not dispute that
the mark identifies the name of the magazine. Indeed,
applicant's initial specimen was acceptable to show use of the
mark in Class 16 for magazines. Moreover, applicant's additional
specimens (advertising rate card, subscription form and signage
on the parade float), notwithstanding that they may reference the
type of information provided in the magazine, all demonstrate use
of the mark merely to promote and sell the magazine. It is well
settled that the mere sale and advertising of one's own goods do
not constitute separate services. See In re Dr. Pepper Co., 5
USPQ2d at 1210 ("[E]ven though a given term may function as both
a trademark and a service mark, the service must constitute more
than mere promotion and advertising of one's own goods.").
Furthermore, the news and entertainment information supplied
by applicant are not separate from the sale of the magazine, but
rather are inherent in the nature of a magazine. The
informational content sells the magazine, and the activities
performed in collecting, printing and reporting the news and
information to the public are ordinary and routine activities
that are "necessarily done" to sell the magazine. See Landmark
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Communications. In other words, such activities are clearly
performed for applicant's own benefit, that is, to sell its
goods, and not for the benefit of others.
Applicant's argument in this case is very similar to the
argument addressed and rejected by the Board in Landmark
Communications, 204 USPQ 692, 696. In that case, the applicant
sought to register the mark THE DAILY BREAK as a service mark for
"educational and entertainment services comprising the
collection, printing, presentation and distribution of a
newspaper section of cultural and leisure information" on various
topics. The specimen of record was a section of applicant's
newspaper and the mark appeared as the title of the section. The
Board rejected applicant's contention that, in publishing the
newspaper section, it was performing or rendering the recited
services, or any service.
Every one of the "services" described in the
application is a kind of feature commonly published
in...newspapers.... Indeed, these feature articles,
stories and columns may be considered to be
indispensable components of newspapers which readers
expect and without which newspapers would not be
sold. To break down a newspaper, or any publication,
into the manifold and variegated kinds of articles,
stories, reports, columns, comics, advertising, and
illustrations it contains and to claim that each is a
separate "service" for which a mark...may be
registered is to ignore the commercial reality that a
newspaper is a tangible commodity purchased because
of the variety or reading material to be found and
that a newspaper is considered by its readers to be a
single publication and not a collection of services.

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The Board concluded that "Applicant sells goods, not
services for every individual reader" and that there was no
significant economic difference between the applicant as a
publisher of a periodical and the applicant as a provider of its
alleged services.
Similarly in this case, in publishing its magazine,
applicant is producing and selling a finished product, not
performing or rendering a service for the benefit of individual
readers. The public is not purchasing entertainment information
from applicant or a news reporting service from applicant, but
rather is purchasing a magazine with news and other informational
content, i.e., a product.
To support its contention that its mark identifies services,
applicant points to the files for five third-party applications
arguing that that the specimen web pages in those applications
were found acceptable to show use of the marks for news reporting
and/or entertainment information in Class 41,2 and essentially
that its magazine pages are analogous to web pages and therefore

2 There is no evidence that these are "existing registrations" as
applicant claims; nor is there evidence that the specimens were
considered acceptable to show use for the goods and/or services
identified therein. Furthermore, in two of the applications the Class
41 services are not identified as the statements of use refers to the
notice of allowance for the identification of services and the notices
of allowance were not submitted. Nevertheless, for purposes of
considering applicant's argument we will assume that its assertions
regarding the applications are true.
Ser No. 78741311
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should likewise be acceptable. Applicant contends that the fact
that applicant provides such information through a magazine
instead of a website "should not be discriminated against the
subject application" when "the only difference is the means
of providing such information."
This argument is not persuasive. Contrary to applicant's
contention, the means by which an activity is performed is not an
insignificant factor when determining whether an activity
constitutes a service. The question, as we noted earlier, is
whether applicant's principal activity under the mark is the sale
of a service, which is intangible in nature, or the sale of a
tangible product. Unlike a web page which is not necessarily of
a tangible nature, applicant's principal activity is clearly the
sale of a tangible product. Based on the specimens in this case
and under the well settled principles of law, applicant is not
providing a service as contemplated by the Statute.
In view of the foregoing, we find that the specimens do not
show the applied-for mark in use in commerce as a service mark
for any of the identified services.
Decision: The refusal to register is affirmed.