Specimen Showing Display of a Trademark on a Door Insufficient to Show Use of a Service Mark

On February 23, 2017, in a non-precedential opinion, the TTAB affirmed a PTO refusal of Republic National LLC’s service mark based upon the failure of its specimen to demonstrate use in connection with the covered services.

Republic sought to register the REPUBLIC NATIONAL mark for a variety of real estate investment services.  As specimens, Republic National submitted two digital photographs of the front door of the facility where it provides its services.

Republic argued that its specimens did not need to include an explicit reference to its services because they demonstrate how its mark is used in connection with its provision of services.  Both the PTO and ultimately the Board disagreed.

According to the Board, the fact that services are rendered within Republic’s office is not a sufficient association or “proximity” to consider the mark as being displayed in the sale or rendering of services.  “Upon seeing this mark . . . a potential consumer could not immediately identify the services being provided beyond the entryway of Applicant’s offices.”  Republic’s mark could refer to any number of undisclosed services.  For comparison, the Board distinguished In re Metriplex, 23 USPQ2d 1315 (TTAB 1992), wherein the applicant submitted a specimen showing a display that appeared on a computer terminal in the course of rendering its services.  Unlike in Metriplex, Republic’s photograph showed a picture of a door that merely directs an existing client to Republic’s location, which the Board analogized to mere advertising.  Because Republic’s specimen did not reference Republic’s real estate investment services, the Examiner’s refusal was affirmed.

The case is In re Republic National LLC, Ser. No. 86513101 (Feb. 23, 2017).