PrintCo.,Inc.

Trademark Trial and Appeal Board

Jul 14, 2006

No. 78155673 (T.T.A.B. Jul. 14, 2006)

Mailed: July 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PrintCo., Inc.
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Serial No. 78155673
_______

Miriam D. Trudell of Sheridan Ross P.C. for PrintCo., Inc.

Paul Fahrenkopf, Trademark Examining Attorney,
Law Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by PrintCo., Inc. to register
the mark ENKLAVVOICE in standard character form on the
Principal Register for the following services, as amended:
advertising and marketing services for others,
namely providing a website which permits users to
create, populate, authorize and manage databases
of sales data and information, marketing data and
information, product specifications; product
pricing, catalog data, and related sales and
marketing content; providing a website that
allows users to organize, aggregate and summarize
databases of sales and marketing data,
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78155673
2
advertising text and advertising images and
graphics and administer content approval.”1

The trademark examining attorney initially rejected
the specimen submitted with applicant’s statement of use on
the ground that it fails to indicate use of the mark as a
service mark in connection with the recited services.
When the examining attorney made final the requirement
that applicant submit an acceptable specimen of use,
applicant appealed. Applicant and the examining attorney
filed main briefs and applicant filed a reply brief.2 An
oral hearing was not requested.
Applicant asserts that its specimen of use “consists
of two pages from Applicant’s website, which advertises and
describes Applicant’s services;” (Applicant’s brief, p. 1)
that, specifically, applicant’s specimen displays its
ENKLAVVOICE mark and indicates that the services may be
used to “[c]reate, populate, approve and manage a digital
warehouse of sales and marketing information. ENCLAVVOICE
aggregates all forms of text, data, and images and
administers content approvals.” (Applicant’s brief, p. 2,

1 Application Serial No. 78155673, filed August 19, 2002, based
on applicant’s allegation of a bona fide intent to use the mark
in commerce under Section 1(b) of the Trademark Act.

2 The instant application was reassigned to the above noted
examining attorney subsequent to the briefing of the matter
currently under consideration on appeal.

Ser No. 78155673
3
quoting from specimen) Applicant explains that it provides
access to its Internet website to allow customers to
subscribe to the ENKLAVVOICE service to create their own
advertisements; but that applicant does not provide its
customers with software in any form. Applicant argues that
its specimen provides information about its recited
services; that it is not necessary for its specimens to
specifically indicate that its services are web based;
that, nonetheless its specimen informs potential customers
that its services are provided via an Internet website; and
that, as a result of the foregoing, its specimen is
sufficient to indicate use of its ENKLAVVOICE mark as a
service mark in connection with its recited services.
Applicant argues in addition that the same advertisement
submitted with its statement of use previously has been
accepted as a specimen of use for applicant’s other marks
appearing thereupon.
The examining attorney maintains that applicant’s
specimen displays its proposed mark “in a list of features
of an ‘enterprise content management and cross-media
publishing system’ dubbed ‘enklavTDW;’” (Examining
attorney’s brief, p. 3) that each of the “enklav” prefixed
terms listed in applicant’s specimen, including
“enklavVOICE,” merely identifies a feature of the
Ser No. 78155673
4
“enklavTDW” system; that “use of the mark to distinguish
this feature of the applicant’s overall system from other
features does not serve to identify and distinguish the
provision of a website…;” (Examining attorney’s brief, p.
4) and that, as a result, applicant’s mark appears to
identify a featured element of a publishing system. The
examining attorney argues that it is unclear from its
specimen whether applicant is offering a product or a
service; that it is further unclear how a consumer would
engage applicant in the provision of any service; that in
addition, there appears to be no explanation of applicant’s
services beyond the information featured on its Internet
website; and that potential customers would need to
undertake additional actions, such as contacting applicant
or downloading a brochure, in order to understand the
services offered by applicant. The examining attorney
argues that, as a result, even though the submitted
specimen displays applicant’s proposed mark, it fails to
demonstrate use of ENKLAVVOICE as a service mark in
connection with the recited services.
Applicant contends in reply that its specimens clearly
indicate that a potential customer can contact applicant
for a demonstration of the services; that its specimen is
an Internet advertisement, visible to anyone with Internet
Ser No. 78155673
5
access; and that the specimen indicates that applicant’s
services are available through a hosted, secure Internet
portal. Finally, applicant argues that its specimens offer
a description of the services immediately following its
mark; and that, as a result, its specimens offer a direct
association between its ENKLAVVOICE mark and the services
identified thereby.
Trademark Rule 2.88 provides, in part, that a
statement of use must include one specimen showing the mark
as used on or in connection with the sale or advertising of
the goods or services in commerce. See 37 C.F.R.
§2.88(b)(2). Trademark Rule 2.56(b)(2) specifies that a
"service mark specimen must show the mark as actually used
in the sale or advertising of the services." See 37 C.F.R.
§2.56(b)(2). Section 45 of the Trademark Act provides, in
part, that 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 15
U.S.C. §1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services specified in the application,
and there must be sufficient reference to the services in
Ser No. 78155673
6
the specimens to create this association. See In re
Monograms America Inc., 51 USPQ 1317 (TTAB 1999). It is
not enough that the term alleged to constitute the mark be
used in the sale or advertising; there must also be a
direct association between the term and the services. See
In re Compagnie Nationale Air France, 265 F.2d 938, 121
USPQ 460 (CCPA 1959); In re Johnson Controls Inc., 33
USPQ2d 1318 (TTAB 1994); and Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320 (TTAB 1985). See also In re
Adair, 45 USPQ2d 1211 (TTAB 1997). The mark must be used
in such a manner that it would be readily perceived as
identifying the source of such services. In re Advertising
& Marketing Development, Inc., 821 F.2d 614 2 USPQ2d 2010
(Fed. Cir. 1987); and In re Metrotech, 33 USPQ2d 1049
(Com’r Pats. 1993). See also TMEP §1301.04 (4th ed. Rev.
2005).
Thus, the issue before us is whether the specimen of
record creates a direct association between applicant’s
ENKLAVVOICE mark and the services specified in the
application. The determination of whether applicant's
specimen shows the ENKLAVVOICE mark in connection with the
sale or advertising of these services necessarily requires
a consideration of the specimen.
The original specimen submitted for applicant's
Ser No. 78155673
7
services, reproduced below, is a web page from applicant's
website on the Internet.

Ser No. 78155673
8
Our primary reviewing court has held that a "service"
is "the performance of labor for the benefit of another."
See In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971
(Fed. Cir. 1985). The recited services involved herein
clearly are a "service" under this definition, and we will
presume that applicant in fact renders such services.
However, the issue in this case is not whether applicant’s
activities constitute "services," or whether applicant in
fact provides those services. Rather, the issue is whether
the specimens of record demonstrate use of the mark as a
service mark for those services.
As noted above, Trademark Rule 2.56(b)(2) provides
that "[a] service mark specimen must show the mark as
actually used in the sale or advertising of the services."
When appropriate, the Board has been fairly flexible in
accepting service mark specimens. See In re Ralph Mantia
Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc.,
23 USPQ2d 1315 (TTAB 1992).
In this case, we first find that the specimen
submitted by applicant with its statement of use displays
its ENKLAVVOICE mark. Inasmuch as applicant applied for
its mark in standard character form, the mark as it appears
in stylized form in its specimen of use is considered to
Ser No. 78155673
9
agree with the mark as it appears in its drawing.3 See 37
C.F.R. §252(a). See TBMP also TBMP §807.03(e). We further
find that applicant's specimens are advertisements because
they show the requisite direct association between the mark
and the activities described thereafter. Cf. In re Adair,
supra; and In re Johnson Controls, Inc., supra.
Specifically, the specimen indicates in a paragraph
immediately following the mark that a customer may utilize
ENKLAVVOICE to “[c]reate, populate, approve and manage a
digital warehouse of sales and marketing information,” and,
further, that ENKLAVVOICE “aggregates all forms of text,
data, and images and administers content approvals.” As
noted above, applicant’s recited services include
advertising and marketing services for others, namely,
providing a website that permits or allows users to perform
many of the activities described in its specimen. A
customer or potential customer viewing applicant’s specimen
would readily perceive the ENKLAVVOICE mark as identifying
the source of applicant’s website that allows users to
engage the advertising and marketing services described
therein. As a result, applicant’s specimen creates a

3 Effective November 2, 2003, subsequent to the filing date of
the involved application, Trademark Rule 2.52, 37 C.F.R. §2.52,
was amended to replace the term "typed" drawing with "standard
character" drawing.

Ser No. 78155673
10
direct association between the ENKLAVVOICE mark and
applicant’s recited services. Contrary to the examining
attorney's contentions, we find that the website does not
merely describe features of a larger system, but rather
describes, inter alia, the recited services available by
means of its website under the applied-for mark. Thus, we
conclude that the specimen of record is adequate to support
the use of the mark in connection with the identified
services.
Decision: The refusal to register on the ground that
the specimen is unacceptable evidence of service mark use
in connection with the identified services is reversed.