Seaman Furniture Company, Inc.

Trademark Trial and Appeal Board

Jul 11, 2003

No. 75698113 (T.T.A.B. Jul. 11, 2003)

Mailed: July 11, 2003
Paper No. 26
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Seaman Furniture Company, Inc.
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Serial No. 75/698,113
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Stephanie Furgang Adwar of Furgang & Adwar, L.L. P. for
Seaman Furniture Company, Inc.
Linda A. Powell, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
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Before Seeherman, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Seaman Furniture Company, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register ASHLEY STUART as a mark for “retail store services
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/698,113
2
in the field of furniture and the like.”1 Although various
issues and grounds for refusal were raised during the
examination of this application, the refusal from which
this appeal was taken is that the specimen of record fails
to show use of the mark in connection with the identified
services.
The appeal has been fully briefed. Although applicant
had initially requested an oral hearing, this request was
subsequently withdrawn.
Trademark Rule 2.56(a) provides, in part, that an
application under section 1(a) of the Act, i.e., an
application based on use in commerce, such as the
application at issue herein, must include one specimen
showing the mark as used on or in connection with the sale
or advertising of the services in commerce. Rule
2.56(b)(2) further specifies that a “service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” 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
1 Application Serial No. 75/698,113, filed May 5, 1999, based on
asserted dates of first use and first use in commerce as of
April 17, 1998.
Ser No. 75/698,113
3
advertising of services and the services are rendered in
commerce….”
It is the Examining Attorney's position that
applicant's specimen does not show use of the mark ASHLEY
STUART in connection with the identified "retail store
services in the field of furniture and the like," but,
rather, it shows the term used as a trademark for the
furniture itself. In further support of the Examining
Attorney's position that ASHLEY STUART is a trademark for
the goods, rather than a service mark for the retail store
services, she has submitted a page taken from applicant's
website, www.seamans.com, which states, under the heading
"the Ashley Stuart COLLECTION":
Relax and enjoy the beauty of your
surroundings and the comfort of this
91" plaid sofa from Seaman's own
"Ashley Stuart Collection". A
collection of furniture designed for
today's casual lifestyle. By
incorporating the use of soft fabrics,
pattern combinations and extra soft
seating, the result is a beautiful look
that's easy to maintain and comfortable
enough to relax in everyday. Navy,
beige, and green patterns are available
as special order colors.
Below this text is a listing of different furniture items,
with their dimensions, and the price for a five-piece
package.
Ser No. 75/698,113
4
Despite the language in the website, applicant asserts
that it does not sell any furniture under the mark ASHLEY
STUART. Applicant explains that ASHLEY STUART is used to
identify its service of grouping furniture into "rooms," so
that consumers may purchase the entire group as a decorated
room, rather than having to choose individual pieces and do
the decorating themselves.2
To be an acceptable specimen of use of the mark in the
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 the
specimens to create this association. In re Monograms
America Inc., 51 USPQ2d 1317 (TTAB 1999). It is not enough
that the term alleged to constitute the mark be used in
advertising; there must also be a direct association
2 In her brief, the Examining Attorney comments that the
grouping of the furniture is "ancillary to the performance of the
applicant's retail store services," brief, p. 4, and suggests
that this would not be a service that is separate from retail
store services. It is not clear what point the Examining
Attorney is attempting to make. The issue herein is not whether
applicant would be entitled to register its mark for grouping of
furniture as a separate service. Applicant has applied to
register its mark for retail furniture store services, and the
Examining Attorney has acknowledged that the service of grouping
furniture would be encompassed within retail store services.
Therefore, if the specimens were to show that applicant uses its
mark for grouping of furniture, this would constitute use of the
mark for retail store services.
Ser No. 75/698,113
5
between the term and the services. Peopleware Systems,
Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985). The
mark must be used in such a manner that it would be readily
perceived as identifying the source of such services. In
re Metrotech, 33 USPQ2d 1049 (Com'r Pats. 1993).
The question, thus, is not whether applicant renders
retail furniture store services, or, more particularly, the
service of grouping furniture to form a decorated "room."
The issue is whether applicant is using ASHLEY STUART as a
mark to identify the source of these services.
The determination of whether applicant’s specimen
shows the mark ASHLEY STUART in connection with the sale or
advertising of retail store services in the field of
furniture and the like necessarily requires a consideration
of the specimens. Applicant’s specimen consists of an
eight-page advertising brochure, which consists of two long
sheets which have been folded in half, with one folded
inside the other. The cover page, as shown below, bears
the heading “Seaman’s Furniture Comfortable Lifestyles."
Ser No. 75/698,113
6
The inside pages feature various items or rooms of
furniture, and have headings on the pages of “Comfortably,”
“Comfortable Dining,” “Casual,” “Cushioned Comfort” and
“Comfortable Choices.”
The term ASHLEY STUART appears only on the last page,
which is reproduced below. Specifically, it appears as
part of the phrase “From Our ASHLEY STUART Collection”
above a photograph of a bedroom suite, and it also appears
in text next to that photograph, under the title
“Lifestyles,” as part of the phrase “‘ASHLEY STUART’
Ser No. 75/698,113
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LIFESTYLE BEDROOM, below which is the phrase "Natural
finish on solid maple and maple veneers.”
The text beside the photograph lists the prices of
this bedroom, with the three-piece set, consisting of a
headboard, footboard and rail set, selling for $399.99; the
five-piece set, which also includes a dresser and mirror,
selling for $799.99; and the six-piece set, which includes
a drawer chest as well, selling for $999.99.
Ser No. 75/698,113
8
As used in the specimen, ASHLEY STUART clearly gives
the impression that it is a trademark for furniture, not
for retail furniture store services. For example, the use
of the phrase "Natural finish on solid maple and maple
veneers" below the phrase "'ASHLEY STUART' LIFESTYLE
BEDROOM" indicates that the ASHLEY STUART bedroom furniture
is made of solid maple and maple veneers. The phrase "From
Our ASHLEY STUART Collection" above the photograph of the
bedroom indicates that this is ASHLEY STUART brand bedroom
furniture, and this impression is supported by the pricing
information appearing immediately next to the photograph.
It does not matter that applicant may not, in fact,
sell furniture bearing the trademark ASHLEY STUART. The
determination of whether there is a direct connection
between the mark and the services for which registration is
sought is not made by default, i.e., if ASHLEY STUART is
not a trademark for furniture, then it must be a service
mark for retail furniture store services. Consumers
viewing the mark as used in the specimen of record would
clearly perceive ASHLEY STUART (or ASHLEY STUART
COLLECTION) as identifying the source of the furniture,
rather than of the retail furniture store services. This
perception is reinforced by applicant's website material,
Ser No. 75/698,113
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which is the only other advertising material of applicant's
which is of record.
Accordingly, we find that applicant has failed to
submit specimens showing use of ASHLEY STUART as a mark for
the identified "retail store services in the field of
furniture and the like.
Decision: The refusal of registration is affirmed.