River Oaks Furniture, Inc.

Trademark Trial and Appeal Board

Jun 10, 1997

EX (T.T.A.B. Jun. 10, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB June 10, 1997
Paper No. 15
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re River Oaks Furniture, Inc.
________
Serial No. 74/334,620
_______
Charles C. Garvey, Jr. of Pravel, Gambrell, Hewitt, Kimball
& Krieger for River Oaks Furniture, Inc.
Thomas V. Shaw, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney)
_______
Before Rice, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
River Oaks Furniture, Inc. has applied to register
SOFAS & MORE, as shown below, for "retail store services in
the field of sofas, loveseats, lamps, tables and rugs sold
as a package."1 Applicant has disclaimed the exclusive
right to use SOFAS apart from the mark as shown.

1 Application Serial No. 74/334,620, filed November 25, 1992,
and asserting first use and first use in commerce as of April 9,
1992.
Ser No. 74/334,620
2

Registration was finally refused pursuant to Sections
1, 2 and 45 of the Trademark Act, 15 U.S.C. 1051, 1052 and
1123, on the ground that the applied-for term is not used as
a service mark. The Examining Attorney asserts that the
specimens of record do not evidence use of the mark in the
sale or advertising of the identified services. It is the
Examining Attorney's position that in the promotional flyers
submitted by applicant the mark is used solely to identify
furniture combinations, rather than to identify retail store
services. The Examining Attorney also objected that the
specimens of record are unacceptable because they are
temporary printer's proofs.
Applicant has appealed. Applicant and the Examining
Attorney filed briefs,2 but an oral hearing was not
requested.

2 In its brief applicant requested that the Board review the
file of Registration No. 1,531,265. This file was never made of
record. The Board does not take judicial notice of
registrations that reside in the Patent and Trademark Office.
See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Ser No. 74/334,620
3
The question of whether a term functions as a mark for
the identified goods or services must be determined on the
basis of the specimens, as well as any other materials
evidencing use which are of record. In this case, the only
such submissions are the specimens, which consist of a four-
sided color "flyer" featuring packages of various living
room furniture groupings. Reduced size copies of these
pages are reproduced in the appendix to this opinion.
As used in the specimens, the commercial impression of
SOFAS & MORE is that of a trademark for the furniture
packages, rather than as a service mark for retail store
services in the field of the various items of furniture.
For example, on the cover page is the legend, "FREE! When
you purchase the STORE NAME, SOFAS & MORE 7 pc. LIVING ROOM
PACKAGE GROUP." Consumers would view SOFAS & MORE in this
legend as identifying the furniture, namely, the 7-piece
living room package group, while the "STORE NAME" would be
perceived as a service mark for the retail store services.
Page 2 of the flyer contains the sentence "Buy a 'Sofas
and More' Package Group and SAVE!" Again, as used in this
phrase, SOFAS AND MORE would clearly be seen as a trademark
for the furniture group. Page 2 also includes the text
"STORE NAME Wraps It All Together" followed by the marks
SOFAS & MORE and RIVER OAKS and design. Here, too, the
"STORE NAME" is the service mark for the retail store
services, with the SOFAS & MORE and RIVER OAKS marks acting
as trademarks for the goods. This impression is reinforced
Ser No. 74/334,620
4
by the pictures of boxed furniture with the mark RIVER OAKS
and design on the packaging. On page 3, there is a listing
of the prices of the individual pieces in the package group,
with the total price for the 7 piece package. The mark
SOFAS & MORE appears as part of the picture showing the
furniture package, giving the impression that it is the
trademark for the furniture.
Thus, after carefully reviewing the specimens of
record, we find that they do not show use of SOFAS & MORE as
a service mark for the identified "retail store services in
the flied of sofas, loveseats, lamps, tables and rugs sold
as a package."
Although we affirm the refusal of registration on the
ground that the applied-for term does not function as a
service mark for the identified services, in order to render
a complete opinion we turn to the second refusal by the
Examining Attorney, namely, the specimens are unacceptable
because they are temporary printer's proofs and are not, in
fact, in actual use. In considering the refusal we will
assume, arguendo, that the specimens show use of the mark in
connection with retail store services, as opposed to goods,
Applicant claims that its mark is used by furniture
stores which are licensees of applicant's. However, it
appears that if and when these flyers are used by
applicant's licensees in connection with advertising their
retail store services, the name of the store is substituted
for the phrase "STORE NAME" where it appears on the flyers.
Ser No. 74/334,620
5
Otherwise, consumers would have no way of knowing who was
rendering the retail store services, or where the store
services are being rendered.
The fact that an "insert store name" legend, rather
than an actual store name, appears on the specimens shows
that these particular flyers are not used to advertise any
retail store services. We agree with the Examining Attorney
that they are in the nature of printer's proofs, or mock-ups
which are used to solicit retailers to carry applicant's
product line. They do not meet the requirement of Trademark
Rule 2.58 for the submission of specimens of the mark as
used in the sale or advertising of the retail store services
since, by their very nature, these flyers, with STORE NAME
on them, would not and could not be used as actual
advertisements. We note applicant's attorney statement
"that it is the understanding of the undersigned that the
flyers are used as inserts in newspapers or direct-mail
advertising, not simply given to existing customers in the
stores." Brief, p. 4. However, applicant has not submitted
any flyers bearing the name of a licensee store.
Applicant has also argued that its specimens are
facsimiles and therefore acceptable. Trademark Rule 2.58(a)
provides that specimens or facsimiles, as specified in Rules
2.56 and 2.57, of the mark used in the sale or advertising
of the services shall be furnished. Rule 2.57 makes it
clear that facsimiles may be furnished when it would
otherwise be too difficult, because of the mode of applying
Ser No. 74/334,620
6
the trademark to the goods, to furnish actual labels,
containers, and the like. In such a case, the facsimile is
to be a "suitable photograph or other acceptable
reproduction." Section (b) of that rule goes on to state
that "a purported facsimile which is merely a reproduction
of the drawing ... will not be considered to be a facsimile
depicting the mark as used on or in connection with the
goods or in connection with the services." It is clear from
a reading of these rules that the specimens to be furnished
must be the actual item, or a photograph or reproduction
thereof, which is used on the goods or in the advertising of
the services. Because applicant's flyers, by their very
nature, cannot be in actual use in connection with the
advertising of retail store services, they cannot be
considered facsimiles within the meaning of Trademark Rule
2.57.
Decision: The refusal to register on the grounds that
the applied-for term does not function as a service mark for
the identified services, and that the specimens are not
acceptable because they do not show actual use of the mark,
is affirmed.
J. E. Rice
E. J. Seeherman
Ser No. 74/334,620
7
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board