TMEP 1301.04(e): Whether the Mark Functions as a Service Mark

October 2017 Edition of the TMEP

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1301.04(e)    Whether the Mark Functions as a Service Mark

The mark must actually function as a source-indicating service mark. Thus, registration must be refused if, for example, the specimen shows the mark serves solely as a trade name, only as the name of a computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The requirement that a mark must be ‘used in the sale or advertising of services’ to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (finding that, although the submitted specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public as identifying only applicant’s drug technology and thus the specimens failed to establish the required association between the mark and the identified services); In re DSM Pharm., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008) (finding the submitted specimen unacceptable evidence of use of the mark in connection with custom manufacturing services because it did not show an association between the mark and the services, but instead the mark was used only to refer to computer software); TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), 1301.02(e)–1301.02-(f).

That the software or process may actually be used in connection with the identified services does not necessarily transform that software or process into the identified services or associate the name of the software or process with the identified services. See In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012) (finding no direct association between the mark, CEI, and the identified technical consultation services because the submitted specimens showed the mark being used only to identify a metric, index, equivalency factor, standard, or performance measure and never to identify the identified services; noting that, even if the CEI metric, index, equivalency factor, standard, or performance measure is used by applicant in performing the identified services, that "does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process"); In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) (finding the submitted specimen unacceptable since SEGMENTOR referred only to the computer software used in performing the services and not to identify and distinguish the services themselves; noting that "[t]he fact that applicant does not sell the ‘SegMentor’ software and may not use ‘SegMentor’ in a technical trademark case in connection with the software does not... warrant a finding that ‘SegMentor’ must therefore function as a service mark"); TMEP §1301.02(f).

However, when services are provided through software, it is possible for a mark to serve as a source indicator for the services provided and not just for the software itself. See In re JobDiva, Inc.,843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) ("Even though a service may be performed by a company’s software, the company may well be rendering a service."). Therefore, the examining attorney must review all the information in the record to determine how the mark is used and how it will be perceived by potential customers. See In reAncor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006). Registration should not be refused when the specimen shows that the mark used in connection with the software (or process) also serves as a service mark for the identified services. See TMEP §§1301.02(e)1301.02(f).

The use of the "SM" symbol with the mark does not, by itself, transform a designation into a service mark if other indicia suggest that it does not function as a service mark. Likewise, the "TM" symbol, which is occasionally used in connection with service marks, is not, by itself, an indication that the designation functions as a service mark. See TMEP §1301.02.

See 37 C.F.R. §2.59 and TMEP §§904.05 and 904.07 et seq. regarding substitute specimens.