Acceptance of Building Signage as Specimens Evidencing Use of a Trademark Remains Industry Specific by William Brees, Esq.

The Trademark Trial and Appeal Board (“TTAB”) refused to accept the following photographs of a trademark displayed on the front door of a building as acceptable specimens for real estate investment and acquisition services:bill 1

In re Republic National LLC, Serial No. 86513101 (February 23, 2017) [not precedential].

The board held that the signage on the front door was not actually used in providing the real estate investment and acquisition services and therefore must be considered advertisement. While it may seem strange that the door through which customers must enter to receive the cited services would not be considered as being used in connection with the services, the outcome of this case is consistent with earlier rulings by the board. For example, in In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential] the TTAB refused to accept the following specimen for various financial advisory services based on the same reasoning:bill2

Because the two cases above did not involve use of the mark in actually providing the services, they were treated as advertisements for which there must be some link to the services shown in the specimen itself. Neither of the specimens show any description of the services provided. It would appear the non-descript nature of the building is the important factor in these decisions, because there is a long history of allowing photographs of building signage as specimens of use for service marks that appear to be buildings where the type of service applied for would be expected from that type of building. One example, randomly chosen from marks registered in 2016, is the specimen below, which was accepted as a specimen of use for restaurant services. bill3

United States Trademark Registration No. 5,109,887.

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