Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MOORE BUSINESS FORMS, INC.
Serial No. 74/143,656
September 11, 1992
Robert A. Vanderhye of Nixon & Vanderhye P.C. for Moore Business Forms, Inc.
Alan C. Atchison
Trademark Examining Attorney
Law Office 4
(Sharon R. Marsh, Managing Attorney)
Before Sams, Rooney and Simms
Members
Opinion by Simms
Moore Business Forms, Inc. (applicant) has appealed from the final refusal of the Trademark Examining Attorney to register the mark MOORE EQ for rating services, namely for rating the recycled content and recyclability of paper products. [FN1] The specimens (a magazine advertisement) filed with the application indicate that applicant's activity consists of imprinting a code on its paper products, which code provides three pieces of information: the percentage of the product made up of recycled material; the percentage of that recycled material that is "post-consumer waste"; and whether the product is readily recyclable after use. The Examining Attorney has refused registration on the ground that applicant's asserted mark is not being used in connection with a service but rather is being used in connection with activities which are ancillary, promotional activities incidental to the sale of applicant's paper products. [FN2] The Examining Attorney argues that applicant is not offering a service performed for the benefit of another or a service that is qualitatively different from anything necessarily done in connection with the sale of applicant's goods. Rather, according to the Examining Attorney, applicant is providing information concerning its products, which is not an uncommon practice in the industry. The Examining Attorney compares applicant's activity to that of a clothing manufacturer providing certain information about the composition of its items of apparel. The Examining Attorney has made of record copies of catalogue pages and packaging labels of competitive paper products showing that competitors supply information concerning the recycled or reclaimed content of their paper products.
Applicant, on the other hand, argues that its rating service is materially different from its main sales activities and that the information provided from its rating service is more precise, detailed and complete than that provided by competitors. Applicant's rating service is, therefore, according to applicant, distinctly different from the activities customarily or necessarily engaged in by applicant or its competitors. In support of applicant's argument that it is offering a service qualitatively different from what is customarily done in the paper industry, applicant indicates that it and its predecessors have been selling paper products for over one hundred years and that applicant has never offered this "service" until recently.
The provision of Section 45 of the Act relating to service marks states:
The term "service mark" means any word, name, symbol, or device, or any combination thereof--
*2 (1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown ...
The Court of Appeals for the Federal Circuit has stated that some business activities which may be described in terms of a "service" to the public do not constitute a service within the meaning of the Act.
Through a series of decisions it has become a settled principle that the rendering of a service which is normally "expected or routine" in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product. This interpretation is a refinement of the basic principle that the service for which registration is sought must be rendered to others ... [Footnote omitted, emphasis in original.]
In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1208 (1987) (refusal of registration to applicant of term used in promotional contests for soft drink products affirmed because those contests are part of the selling of applicant's goods). See also In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979) (holding that a publisher of a newspaper was not entitled to register the name of a section of its newspaper for educational and entertainment services because it was not qualitatively different from anything necessarily done in connection with the sale of the goods).
Likewise, in In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971, 973 (Fed.Cir.1985), the Court adopted the definition that a "service" is the performance of labor for the benefit of another.
On the basis of these and other decisions, we agree with the Examining Attorney that applicant's activity in this case does not fall within the definition of a service. Rather, the activity being performed by applicant is simply the providing of information about the product to the potential purchaser. This information, apparently provided on packaging for the goods, is not a separate service rendered to the public but is simply an inherent part of the selling of applicant's goods. The provision of information about one's product, however detailed, is, we believe, an ordinary or routine activity in connection with the sale of one's goods.
Decision: The refusal of registration is affirmed.
J.D. Sams
L.E. Rooney
R.L. Simms
Members, Trademark Trial and Appeal Board
FN1. Application S. No. 74/143,656, filed March 1, 1991, claiming use since December 28, 1990.
FN2. In his brief, the Examining Attorney appears to raise an additional ground for refusal--that applicant's mark does not identify a rating service but merely identifies a code indicating, among other things, the recycled content of a particular paper product. Applicant has objected to the raising of this new ground in the Examining Attorney's brief. Applicant's objection is well taken and this case has been decided on the basis of the original ground of refusal.