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Services Need to be Made More For Others

Posted by Thomas P. Howard | Nov 12, 2021 | 0 Comments

By James Juo.

For a business engaged in rendering services, a service mark is “registrable, in the same manner and with the same effect as are trademarks.” 15 U.S.C. § 1053. “The term ‘service mark' means any word, name, symbol, or device, or any combination thereof … to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of services, even if that source is unknown.” 15 U.S.C. § 1127.

Services under the Trademark Act are not defined, but traditionally have been construed broadly “because of the plethora of services that the human mind is capable of conceiving.” In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985) (quoting Am. Int'l Reinsurance Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69, 71 (CCPA 1978)). But, the ordinary promotional activities of one's own goods or services typically do not constitute a registrable service. In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987); Canadian Pac., 224 USPQ at 973 (“[A] service must be performed for the benefit of others than the applicant.” (citation omitted); In re Advertising & Mktg. Dev., Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (a service should be viewed as “the performance of labor for the benefit of another.”).

For determining what constitutes a registrable service, the USPTO uses the following criteria: (1) A service must be a real activity; (2) A service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) The activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service. Dr Pepper, 5 USPQ2d at 1209; In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984) (listing the three criteria).

This issue arose recently in the case of In re California Highway Patrol, Serial No. 88796327 (TTAB Nov. 4, 2021), where the California Highway Patrol (“CHP”) sought to register its MADE FOR MORE mark for its own officer recruitment activities. The applied-for services were for “Advertisement and publicity services by websites, online digital banner display, social media, print, online search engine, electronic mail, digital video, and digital radio; Digital advertising services; Employment recruiting services; Magazine advertising; On-line advertising on computer networks; Personnel recruitment, in International Class 35.”

The Examining Attorney issued a refusal to register the applied-for mark under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053 and 1127, on the ground that the MADE FOR MORE mark was being used for recruiting CHP's own personnel, “and recruiting your own personnel is not a registrable service.”

The CHP argued that the public was the beneficiary of the activities where “[t]he entire purpose of the Mark is to enable Applicant to provide for the betterment of the people of California, not Applicant itself.”

The controlling question is who primarily benefits from the activity for which Applicant is seeking registration. If Applicant performs the activity primarily for the benefit of others, the fact that Applicant derives an incidental benefit is not fatal. In re Venture Lending Assocs., 226 USPQ 285, 286 (TTAB 1985). On the other hand, if the activity primarily benefits Applicant, it is not a registrable service even if others derive an incidental benefit. Dr Pepper, 5 USPQ2d at 1210 (contest promoting applicant's goods not a service, even though benefits accrue to winners of contest); City Nat'l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding intranet website that was used solely for internal purposes for respondent's benefit does not constitute a registrable service because the primary beneficiary of any services provided under the mark should be individuals or entities other than the party rendering the services); In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (“[t]hat the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark.”). In other words, when Applicant performs an activity or service for itself, we do not consider that activity or service to be a registrable service.

It also is “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.” Dr Pepper, 5 USPQ2d at 1208; Landmark Commc'ns, 204 USPQ at 695 (“[T]o be separately recognizable, as services, an applicant's activity must be qualitatively different from anything necessarily done in connection with the sale of goods.”).

Because the description of services was essentially employee recruiting services for Applicant itself, the TTAB found that “Applicant performs the activities in the description of services primarily for its own benefit [that is, to fill out its ranks], rather than the benefit of others”; and this was “a normally expected, routine or required activity in connection with Applicant's primary business.”

Recruiting and hiring one's own employees is not in any material way a different kind of economic activity done in connection with that which any business or organization normally performs.

The TTAB concluded that the activities in Applicant's description of services is not a registrable service, and affirmed the refusal.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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