Singapore Airlines Limited

Trademark Trial and Appeal Board

Aug 24, 2005

No. 76295663 (T.T.A.B. Aug. 24, 2005)

Hearing: Mailed:
June 21, 2005 August 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Singapore Airlines Limited
________

Serial No. 76295663
_______

Roy Goldberg of Sheppard Mullin Richter & Hampton LLP for
Singapore Airlines Limited

Jeffery C. Coward, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Bucher and Grendel, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Singapore Airlines Limited has applied to register
SPACEBED as a mark for “transportation of passengers by air
featuring a business class combination airline seat and
bed.”1 The application was based on an asserted bona fide

1 Application Serial No. 76295663, filed August 3, 2001. The
services were originally identified as “transportation of
passengers by air.” In the recitation of facts in its brief,
applicant indicated that the services had been amended to the
identification listed above. However, at page 9 of its brief, it
states that the identification was amended to “transportation of
passengers by air by way of renting or otherwise providing a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76295663
2
intention to use the mark in commerce. After the mark was
published for opposition, and a Notice of Allowance issued,
applicant filed a Statement of Use alleging first use and
first use in commerce as of May 2002. The Examining
Attorney, in examining the Statement of Use, found that the
specimen submitted therewith did not show use of the mark
for the services identified in the application, and
required an acceptable specimen. Applicant thereupon
submitted substitute specimens. After reviewing these
specimens, the Examining Attorney issued a new refusal,
pursuant to Sections 1, 3 and 45 of the Trademark Act, on
the ground that the proposed mark, as used on the
specimens, does not function as a service mark to identify
and distinguish the services of applicant from those of
others. Applicant submitted yet another substitute
specimen in response to this refusal, and when the refusal
was made final, applicant filed the subject appeal.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.

business class combination airline seat and bed.” This proposed
identification was suggested by applicant in its response to the
final Office action, but the identification was in fact amended
as indicated above by the Examiner’s Amendment dated July 13,
2004.
Ser No. 76295663
3
Initially, we address a procedural point. At page 8
of applicant’s reply brief, it makes the statement that “if
necessary, this case should be remanded to the PTO so that
the record can be supplemented to show that consumers
equate SPACEBED with the services provided by Singapore
Airlines.” We do not consider this an appropriate manner
for requesting remand of an application. Such a request
should have been made by a separately captioned paper,
rather than being buried within a paragraph within a reply
brief. In any event, applicant’s request for remand, to
the extent this conditional language can be considered a
request for remand, has not been accompanied by a showing
of good cause. See TBMP §§1207.02 and 1209.04 (2d ed. rev.
2004). It should be noted that the later in the proceeding
that a request for remand is made, the stronger the reason
that must be given for good cause to be found. Here, where
applicant did not request (or conditionally request) remand
until the filing of the reply brief, virtually the last
stage of the appeal process, the reason for remand would
have had to be strong indeed. However, applicant has not
provided any reason whatsoever to explain its delay in
attempting to submit such evidence.
The basis for the Examining Attorney’s refusal is that
the applied-for term, SPACEBED, simply refers to a
Ser No. 76295663
4
combination seat/bed in business class, rather than as a
mark for air transportation services. The question of
whether a designation functions as a mark that identifies
and distinguishes the recited services is determined by
examining the specimens and any other evidence in the
record that shows how the designation is used. Because the
only evidence in the record as to how the proposed mark is
used are the various specimens submitted by applicant, we
turn to a consideration of these specimens.
The original specimen consists of a brochure.2 Across
the middle of the cover appears the wording “introducing
the Raffles Class Space Bed,” with the words “Raffles
Class” and designs appearing in the bottom corners. On
various pages in the brochure are the following sentences
and phrases:
In keeping with the tradition of
providing you with the finest in luxury
and comfort, Singapore Airlines is
pleased to introduce the Raffles Class
SpaceBed. Measuring, with armrests
lowered, an impressive 69 cm (27
inches) wide and 198 cm (6 feet, 6
inches) long, this extra space allows
you more freedom to work, relax or
sleep.
***

2 Only the cover of this specimen was originally scanned into
the electronic record of this file. Applicant subsequently
supplied a copy of the entire brochure, and the electronic record
will be corrected to include all of the pages.
Ser No. 76295663
5
The first aircraft retrofitted with
SpaceBeds will be flying between
Singapore and London….
***
the biggest bed in Business Class
***
The Italian-Swiss designed SpaceBed
offers you unparalleled comfort, from
the multiple seating positions, to the
lie-flat sleeping mode at a comfortable
angle of 8 degrees inflight. Inspired
by space-age technology, our unique
cushioning conforms to your individual
body shape. And because all SpaceBeds
are forward facing and fitted with
adjustable screen dividers, you will
welcome the improved privacy and
personal space when working, relaxing
or sleeping.
***
Exclusive to the SpaceBed are the
lowered armrests, which provide extra
width, allowing you more room to sleep
on your side or back. In addition,
specially designed retractable screens
provide unprecedented shoulder space,
giving you a greater sense of freedom.
Another nice touch is the extra storage
space for shoes and other personal
belongings. And if you wish to work
onboard, every seat has its own 110-
volt AC laptop power supply, removing
the need for any cumbersome cords and
adapters.

The second set of specimens consists of two two-page
advertisements placed in different issues of “The
Economist.” The ads differ slightly in terms of the colors
and the background, but the text and impression is the
same. As seen below, on the left page appear the words
“Singapore Airlines presents S P A C E B E D The biggest
Ser No. 76295663
6
bed in Business Class” while the facing page has a picture
of a woman sleeping on a giant feather:
The text in the lower right hand corner is enlarged below:
Experience the comfort of the
most spacious business class bed
in the sky. Raffles Class SpaceBed
offers you a new level of luxury
with more space to work, relax
or sleep. All, of course, while
enjoying the inflight service even
other airlines talk about.
A great way to fly
SINGAPORE AIRLINES
A Star Alliance Member

The third specimen (the second substitute specimen) is
an advertisement in a Las Vegas newspaper. The page is
Ser No. 76295663
7
headed “Now The Far East Isn’t Quite So Far Anymore,”
followed by a picture of a city skyline, and below that is
the phrase “Introducing Singapore Airlines’ Direct Service
from Las Vegas to Singapore via Hong Kong.” Below this are
smaller pictures, and below that is the following text,
which appears in relatively small print:
We are proud to introduce our new
service from Las Vegas to Singapore via
Hong Kong. On board our new 777LR
aircraft, you’ll be among the first to
experience the comfort of the most
spacious business class bed in the sky.
Raffles Class SpaceBed offers a new
level of luxury with more space to
work, relax or sleep. Every passenger
in every class also enjoys World
Gourmet Cuisine, created by our panel
of world-renowned chefs and Krisworld,
the world’s most advanced inflight
entertainment system with over 150 “on
demand” entertainment options placing
you in complete control. Fly award
winning Singapore Airlines and discover
service even other airlines talk about.

At the bottom right-hand corner of the page is the same
logo seen above having the words SINGAPORE AIRLINES, a
bird-like design, and the phrase “A great way to fly,”
followed by “A Star Alliance Member.”
The Examining Attorney points out, and we agree, that
this situation is very similar to that presented in In re
British Caledonian Airways Limited, 218 USPQ 737 (TTAB
1983), in which the applicant had applied to register
Ser No. 76295663
8
SKYLOUNGER as a mark for the "air transportation of
passengers." The Examining Attorney refused registration
on the ground that, according to the specimens of record,
the term sought to be registered was not used as a service
mark to identify and distinguish applicant's services but
instead identified a type of seat used in the rendering of
applicant's services. The specimens contained the
following text:
Introducing the world’s most comfortable
business flight to London.

Our new SKYLOUNGERSM

Lets you sleep lying down.
British Caledonian Airways is committed
to a demanding yet highly rewarding
concept. To provide you, the long-
distance business traveler, with more
comfort than any other international
airliner.
Through the years, we believe our
luxurious First Class service has done
just that. But even the best can get
better.
That’s why our First Class service now
includes the SkyloungerSM seat. Made to
British Caledonian’s specifications, it
can recline to a horizontal position.
So you can actually sleep lying down.
Fully reclined, it still leaves you
plenty of room between rows. And
upright, there’s even more room. It
lets the window passenger move easily to
the aisle. Even when trays are in use.
So next time business takes you to
London, ask for our SkyloungerSM Service.
We’re sure you’ll agree our First Class
is the most comfortable way to go.

Ser No. 76295663
9
The Board affirmed the refusal, holding that, because
applicant used the word SKYLOUNGER primarily in association
with seats in the first class section of its planes, the
specimens of record did not evidence use of this term as a
service mark. Rather, the Board found that the public was
likely to associate the term with the seats that were
located in the first-class section of applicant’s planes,
rather than with applicant’s air transportation services.
Just as in British Caledonian, where SKYLOUNGER was
found to refer to a seat, and not to air transportation
services, in the present case SPACEBED is used in the
specimens to refer to a combination seat/bed. In “The
“Economist” advertisement, SPACEBED is identified as “The
biggest bed in Business Class” with the accompanying text
“Experience the comfort of the most spacious business class
bed in the sky. Raffles Class SpaceBed offers you a new
level of luxury with more space to work, relax or sleep.”
The Las Vegas advertisement has similar language: “you’ll
be among the first to experience the comfort of the most
spacious business class bed in the sky. Raffles Class
SpaceBed offers a new level of luxury with more space to
work, relax or sleep.” And the brochure is replete with
references to SPACEBED as being a combination seat/bed,
providing the measurements of the seat, describing the
Ser No. 76295663
10
number of seating positions, the sleeping mode, the
armrests, etc.
Applicant has attempted to distinguish British
Caledonian by arguing that the specimens in that case
referred only to the provision of a seat, but that
applicant’s own specimens show that SPACEBED is used to
describe the service of luxury transportation. Applicant
points to the language in the two advertisements that state
“SpaceBed offers a new level of luxury” to argue that
SPACEBED “is being used to describe the service of ‘luxury’
transportation by air which includes rental of a seat but
is not limited to that service,” and that “The service that
is being offered in connection with the Mark is ‘a new
level of luxury with more space to work, relax or sleep.’”
Brief, p. 9.
We are not persuaded by this argument. We do not
believe that consumers viewing the advertisements, or
indeed any of the specimens, would single out the sentence
“Raffles Class SpaceBed offers a new level of luxury with
more space to work, relax or sleep” from the balance of the
advertisements, and particularly from the preceding
sentence which, in the Las Vegas advertisement, states
“you’ll be among the first to experience the comfort of the
most spacious business class bed in the sky” and in “The
Ser No. 76295663
11
Economist” reads, “Experience the comfort of the most
spacious business class bed in the sky.”. Rather than
undertaking the tortured analysis that would be required by
applicant’s argument, consumers are likely to view
SPACEBED, as used in these advertisements and brochure, as
referring simply to the combination seat/bed itself, and
are not as a mark for applicant’s airline services.
Simply put, anyone viewing applicant’s specimens would
understand the term SPACEBED to refer to the seat/bed used
in business class, rather than to identify applicant’s air
transportation services. Although applicant has specified
in its identification of services that its air
transportation services feature a business class
combination airline seat and bed, the specimens identify
only the seat/bed, and not the transportation services
themselves.
Applicant also argues that British Caledonian has been
overruled, or at least superseded, by In re Advertising &
Marketing Development, Inc., 821 F.2d 614, 618, 2 USPQ2d
2010 (Fed. Cir. 1987). That case involved an application
to register THE NOW GENERATION for promotional services.3

3 The actual identification was “promoting the sale of goods
and/or services of automobile dealers, financial institutions and
retailers through the distribution of printed promotional
materials and by rendering merchandising and sales promotion
advice.”
Ser No. 76295663
12
Although one of the issues in that case was whether the
specimens showed use of the mark for the identified
promotional services (rather than merely the goods and
services which were being promoted), much of the opinion
dealt with concerns specific to advertising services. For
example, the Court pointed out that the distinguishing
characteristic of advertising services is that they are
associated with the subject of the advertising, but that
service mark registration for advertising services must be
based on the use of the mark to identify the advertising
services themselves. The holding of the Court was
specifically about advertising services, namely, that the
standard for service mark registration for advertising
services is the same as that for other types of services.
2 USPQ2d at 2014. The Court also said that registration
may be refused where the mark has not been used to identify
the named services for which registration is sought. Id.
We see nothing in Advertising & Marketing that would
overrule British Caledonian or require us to reach a
different result herein. The principle still stands that
the determination of whether a term functions as a mark for
the services identified in an application is based on the
specimens and other evidence of record in that application,
and that such a determination is fact-specific, as it is
Ser No. 76295663
13
based on the particular specimens. In fact, the Court in
Advertising and Marketing declined to overrule two cases
involving marks for advertising services because the
records in those cases were not before the Court, and the
Court therefore could not determine whether in those cases
the marks had been used to identify advertising services,
rather than the subject of the advertising.
Moreover, the Court in Advertising & Marketing
certainly did not overrule another case by its predecessor
court which involved an issue and specimens very similar to
those presented here and in British Caledonian. In In re
Campagnie Nationale Air France, 265 F.2d 938, 121 USPQ 460
(CCPA 1959), the applicant applied to register SKY-ROOM as
a mark for air transportation of passengers, and the
application was refused under Section 3 and 45 of the
Trademark Act because the record failed to show that SKY-
ROOM was used to identify and distinguish applicant’s air
transportation services. The specimens advertise “The
World’s Most Luxurious Flight The Golden Parisian To Paris
with immediate connections to all Europe” and, after the
heading “Your Private ‘Sky-Room’” include the text:
Your private salon by day, double
bedroom at night…Super Constellation
non-stop overnight to Paris, Friday
evening from New York. “Sky-Lounge”
chairs and spacious cocktail lounge
Ser No. 76295663
14
too. A new magnificence in famed Air
France service and cuisine.

“The accompanying pictures which portray the ‘SKY-ROOMS’
show a man, woman and child in the day time surroundings of
the room and two adults and a child in the room as, we
presume, it appears when converted into a bedroom at
night.” 121 USPQ at 461. Below this a caption states,
“Golden Parisian surcharge $25 per person. “Sky-Room”
charge $125 for 1 or 2.” The words “AIR FRANCE The World’s
Largest Airline” appear at the base of the ad, along with
“See your travel agent or Air France” with an address.
The court found that:
Nothing in the advertisement pertaining
to the “SKY-ROOM” identifies the air
transportation service of appellant and
there is no other evidence which
reveals that the public considers
“SKY-ROOM” as an identifying mark of
this airline. In our opinion, the
advertisement, taken as a whole,
indicates that “SKY-ROOM” is used to
connote a particular type of
accommodation, regardless of who
provides it, rather than to distinguish
any service provided by appellant from
similar services provided by others.
Id.

Given the clear precedential authority of Air France
and British Caledonia to the present situation, we must
affirm the refusal of registration. It is clear to us,
from a review of all the specimens in the record, that the
Ser No. 76295663
15
term SPACEBED is not being used to identify the services
recited in the application, namely, “transportation of
passengers by air featuring a business class combination
airline seat and bed.”
Both applicant and the Examining Attorney have cited
various cases in support of their particular positions.
Because cases dealing with the question of whether
specimens show use of a mark for the identified services
are so fact specific, and because the British Caledonian
case is, in our view, so directly on point, we see no need
to engage in a discussion of these other cases.
Finally, with its reply brief applicant has submitted
a copy of its Registration No. 2478950 for SKYSUITE for
“transportation of passengers by air by way of providing a
first class seat-bed.” The submission of such an exhibit
with an appeal brief is manifestly untimely. See Trademark
Rule 2.142(d)(“The record in the application should be
complete prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant
or by the examiner after the appeal is filed.”) Applicant
had previously referred to this registration in its request
for reconsideration and in its appeal brief, but as the
Examining Attorney pointed out, in order to make a
Ser No. 76295663
16
registration of record, the applicant must submit a copy of
the registration. Thus, the registration has not been
considered.4 Moreover, even if the registration had been
properly made of record, it would not affect our decision
herein. Each case must be decided on its own facts, and we
must therefore determine whether SPACEBED functions as a
trademark for transportation of passengers by air based on
the specimens before us, not on what another Examining
Attorney might have deemed acceptable usage for a different
mark used on different specimens.
Because the three sets of specimens submitted by
applicant fail to show SPACEBED as a mark for
“transportation of passengers by air featuring a business
class combination airline seat and bed,” we find that
SPACEBED does not function as a service mark under Sections
1, 3 and 45 of the Trademark Act.

4 With its reply brief applicant also submitted a copy of a
third-party registration for PRICO. The mark PRICO had been the
subject of a case cited by the Examining Attorney, In re J.F.
Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979),
in which the Board affirmed a refusal of registration. The
submission of this third-party registration is clearly untimely.
Moreover, although applicant submitted the registration to show
that the mark involved in that decision was ultimately
registered, we point out that the mark that registered issued
from an application that was different from the applications
involved in the published decision. Because the refusal of
registration was based on the insufficiency of the specimens, the
fact that a registration later issued from a different
application which presumably contained different specimens has no
probative value in the present situation.
Ser No. 76295663
17
Decision: The refusal of registration is affirmed.