This Opinion is not a
Precedent of the TTAB

Mailed: September 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fabri Trak Systems, Inc.
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Serial No. 87231753
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Edward F. Behm Jr. of Dilworth Paxson LLP
for Fabri Trak Systems, Inc.

Asmat Khan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.

_____

Before Ritchie, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:

Fabri Trak Systems, Inc. (“Applicant”) seeks registration on the Principal Register

of the mark FABRITRAK (in standard characters) for “Marketing services; Business

consulting services, namely, business consulting in the field of interior wall

coverings” in International Class 35.1

1 ApplicationSerial No. 87231753. Page references to the application record refer to the online
database of the USPTO’s Trademark Status & Document Retrieval (TSDR) system.
References to the briefs on appeal refer to the Board’s TTABVUE docket system.
Serial No. 87231753

I. Background

As further discussed below, both refusals involve the specimens of use and the

services recited in the application. In the way of background, the application, Serial

No. 87231753, was filed on November 9, 2016, based on Applicant’s assertion of a

bona fide intention to use the mark in commerce under Section 1(b) of the Trademark

Act, 15 U.S.C. § 1051(b), with the services identified as “marketing services;

consulting services, namely consulting in the area of interior wall coverings.”2

Although the basis for the Examining Attorney’s requirement that Applicant amend

the originally recited services is unclear, Applicant agreed to amend the identification

by examiner’s amendment on February 16, 2017, amending the original “consulting

services” to “Business consulting services, namely, business consulting in the field of

interior wall coverings.”3

Following publication of the mark for opposition on April 4, 2017 and issuance of

a notice of allowance on May 30, 2017, Applicant filed, on November 30, 2017, a

statement of use together with four distinct specimens of use4, alleging April 23, 2017

as the dates of first use and first use of the mark in commerce.5 The statement of use

further indicated that the mark FABRITRAK was used on “marketing material

2 November 9, 2016 TEAS RF New Application, at TSDR 1.
3 February 16, 2017 Examiner’s Amendment at TSDR 1. Applicant’s counsel was not
obligated to accept the Examining Attorney’s suggested recitation of services. Counsel would
be in the best position to know what Applicant’s services are.

4 November 30, 2017 Statement of Use at TSDR 1.

5Also on November 30, 2017, Applicant filed a six-month “insurance” extension of time to file
a statement of use that was approved on December 9, 2017.

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Serial No. 87231753

showing the mark as actually used in the sale or advertising of the services.”6 In a

subsequent filing, Applicant submitted three other distinct specimens that it

describes as point of sale materials (“[A] print-out of Applicant’s website showing the

mark used in connection with a description of the goods and services as advertised on

the website. Hard copy images of Applicant’s brochures used at the point of sale in a

distributor setting.”).7

The Trademark Examining Attorney refused registration under Trademark Act

Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv),

2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a) on the ground that the specimens and

substitute specimens do not show the applied-for mark in use in commerce in

connection with any of the services specified in the statement of use. The Examining

Attorney also refused registration of Applicant’s mark under Trademark Act Sections

1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127, on the ground that the activities recited

in the identification of services, when viewed in conjunction with the specimens and

substitute specimens, are not registrable services as contemplated by the Trademark

Act.

In particular, the original specimens were deemed unacceptable by the Examining

Attorney because they did not show the mark in actual use in commerce (“Specifically,

the specimen shows use of the mark on advertising for goods and on an installation

guide for goods but fails to show use of the mark in direct association with the

6 November 30, 2017 Statement of Use at TSDR 1.
7 July 11, 2018 Response to Office Action at TSDR 1.

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Serial No. 87231753

identified [services].”).8 The substitute specimens were deemed unacceptable by the

Examining Attorney for the same reasons. (“Specifically, the specimen shows use of

the mark on advertising for an acoustical wall system but fails to show use of the

mark in direct association with the identified [services].”).9

Applicant responded that the substitute specimens (website print-outs and

brochures) show use of the mark in connection with the identified services. Applicant

stated that the specimens “demonstrate the goods are custom and necessitate

consulting with the purchasers on the business case for using such materials in a

particular setting” and that the “point of service materials help promote and market

the goods with the end client of the purchaser.”10

When both refusals were made final, Applicant appealed. Both Applicant and the

Examining Attorney have filed briefs. For the reasons discussed below, we affirm

both refusals.

II. Specimens

Relevant excerpts from the submitted original and substitute specimens are

shown below.11

8 January 11, 2018 Office Action at TSDR 1.
9 July 28, 2018 Office Action at TSDR 1.
10 July 11, 2018 Response to Office Action at TSDR 1.
11 November 30, 2017 Specimen at TSDR 1-10; July 11, 2018 Specimen at TSDR 1-19.

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Serial No. 87231753

A. Original specimens

Contact webpage

The contact webpage includes the following header and links to additional

information:

The contact page also includes a Google map and Applicant’s name, business address,

and phone number.

Sell Sheet

Excerpts from the sell sheet include the following:

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Serial No. 87231753

Products Webpage

An excerpt from the products webpage:

Brochure

The brochure includes information about the components of the system (wall

substrate, profiles, acoustical infill, fabric, moldings, and trim), installation

(preparatory and site conditions, installation methods), technical data (application

standards, fire performance, sound performance), cleaning and protection,

availability (local distributor) and cost (pricing information). The brochure also

includes basic information about the product and services offered:

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Serial No. 87231753

B. Substitute Specimens

Custom is Standard brochure:

Following are excerpts from the brochure:

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Serial No. 87231753

FabriArt brochure

Following are excerpts from the brochure:

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Serial No. 87231753

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Serial No. 87231753

Webpage

III. Whether the original or substitute specimens show direct association to
the services.

To be an acceptable specimen of use of the mark in the sale or advertising of the

identified services, there must be a direct association between the mark sought to be

registered and the services identified in the application, and there must be sufficient

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Serial No. 87231753

reference to the services to create this association. In re Universal Oil Prods. Co., 476

F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (term that identified only a process held

not registrable as service mark, even though applicant was rendering services and

the proposed mark appeared in the same brochure in which the services were

advertised); In re Monograms Am. Inc., 51 USPQ2d 1317, 1319 (TTAB 1999)

(letterhead specimen failed to create an association between the mark

MONOGRAMS AMERICA and the consultation services set forth in the application);

In re Restonic Corp., 189 USPQ 248, 249 (TTAB 1975) (phrase used merely to

advertise goods manufactured and sold by applicant’s franchisees did not serve as

mark to identify franchising services); In re Reichhold Chems., Inc., 167 USPQ 376,

377 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely

to advertise chemicals did not show use as service mark for consulting services).

A specimen that shows only the mark with no reference to, or association with,

the services does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536,

1541-42 (TTAB 2008) (specimen comprising a packaging label affixed to boxes being

mailed to customers, on which the proposed mark was used as part of a return

address, held unacceptable because it did not show a connection between the mark

and the services); In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997) (tags affixed

to decorated Christmas tree that bear the mark TREE ARTS CO. (with design) and

the applicant’s location, but make no reference to services, failed to show use for

“design services in the nature of designing handcrafted, permanently decorated

Christmas and designer trees”); In re Riddle, 225 USPQ 630, 631 (TTAB 1985)

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Serial No. 87231753

(cutouts showing mark with no reference to the services held unacceptable for

automotive service center).

Applicant argues that it “submitted numerous examples of its promotional

material that show a direct association between the service and the mark.”12 The

Examining Attorney, on the other hand, submits that none of the specimens show

direct association with the identified services and that “all that the applicant’s

specimens … show, however, is that applicant uses the applied-for mark in connection

with its own acoustical wall panels and systems and promotes them using a wide-

variety of marketing materials.”13

As to the identified marketing services, the original and substitute specimens

contain no reference to those marketing services. The specimens, for the most part,

appear to be advertising the goods themselves (acoustical wall systems) in connection

with the FABRITRAK mark. Applicant even stated this when filing its substitute

specimens, describing the brochures as “point of sale materials in a distributor

setting.”14 But the mere advertising of the goods does not constitute service mark use.

In re Restonic Corp., 189 USPQ at 249 and cases cited therein.

None of the specimens Applicant submitted show a direct association between

marketing services and the FABRITRAK mark. In fact, none of the specimens

mention marketing services at all. Accordingly, we find the original and substitute

12 4 TTABVUE 15.
13 6 TTABVUE 14.
14 July 11, 2018 Response to Office Action at TSDR 1.

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Serial No. 87231753

specimens of use lack an association between FABRITRAK and any marketing

service purportedly offered by Applicant.

As to the business consulting services, we take judicial notice of dictionary

definitions that define the services.15 Business is defined as “a commercial or

industrial establishment; store, factory, etc.”16 Consulting (n.) is defined as “the

activity or business of giving expert advice about a particular subject.”17 Consulting

(adj.) also is defined as “consulted for professional or technical advice; advisory.”18

Thus, business consultation is a type of service that provides advice about business

practices of a commercial enterprise and makes recommendations. As the Examining

Attorney points out “applicant does not provide business consultation in the true

nature of those services, normally related to business management, administration,

human resource services and the like. In fact, the specimens do not evidence any

business consultation services at all.”19

We agree that none of the submitted specimens make a direct association to

business consulting services. Although the original specimen includes a reference to

15The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
16WEBSTERS NEW WORLD COLLEGE DICTIONARY (Fifth Ed. 2014) https://www.yourdictionary.com/
business#websters, accessed September 4, 2019).
17CAMBRIDGE ACADEMIC CONTENT DICTIONARY (English) (https: //dictionary.cambridge.org/us/
dictionary/english/ consulting, accessed September 4, 2019).
18WEBSTER’SNEWWORLD COLLEGE DICTIONARY, (Fifth Ed. 2014) (https: //www.yourdictionary.com/
consulting#websters, accessed September 4, 2019).
19 6 TTABVUE 8.

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Serial No. 87231753

“technical services” that “insure your project utilizes the correct components and

meets the intent of the project designer,” it is not clearly characterized as business

consultation services, as identified by Applicant. A specimen that shows only the

mark, with no reference to the services, does not show service mark usage. In re wTe

Corp., 87 USPQ2d at 1541-42. Thus, we conclude that the Applicant’s specimens do

not support the use of the mark in connection with the identified business consulting

services.20

The refusal under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and

Trademark Rules 2.34(a)(1)(iv), 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a) is affirmed.

IV. Whether Applicant is offering services in connection with the mark.

To qualify as a “service,” a service must be (1) a real activity; (2) 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. In re Can. Pac. Ltd., 754 F.2d 992, 224 USPQ 971, 973-74 (Fed. Cir. 1985); In

re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1437 & n.3 (TTAB 2009); TMEP §§

1301.01(a) and 1301.01(a)(i)-(iii) (October 2018). There is no dispute between the

Examining Attorney and Applicant that the recited services are real activities. But

they disagree as to whether the identified services are being performed for Applicant’s

20We acknowledge the original identification of consulting services did not mention “business
consulting services,” but Applicant’s later amendment to include “business consulting
services” establishes the parameters of Applicant’s services. Applicant is now bound by the
plain language of the identification as limited by the amendment.

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Serial No. 87231753

benefit, and whether the services are qualitatively different from Applicant’s sale of

goods.

In assessing this refusal, “[w]e must look closely at what is being offered here and

to whom it is being offered.” In re Can. Pac. Ltd., 224 USPQ at 973; see also In re

Landmark Commc’ns., Inc., 204 USPQ 692, 695 (TTAB 1979) (“we should first

ascertain what is an applicant’s principal activity under the mark in question … and

then determine whether the activity embraced by the description of services or goods

in the application is in any material way a different kind of economic activity than

what any purveyor of the principal service or tangible product necessarily provides”).

Applicant describes its services as marketing and consulting “in the installation

and creation of an interior space with acoustic wall treatments.”21 Applicant states

that its “goods are custom and necessitate consulting with the purchasers on the

business case for using such materials in a particular setting.”22 Applicant explains

that its marketing and consulting services include “consulting as to the type of fabric,

the style of fabric, the combinations of fabric as well as installation of such fabric, or

any other application of such fabric for the purposes of meeting the customer’s

needs.”23 Applicant submits that the “primary beneficiary” of its services “is the

customer who would otherwise not have exposure to the skill and expertise of

Applicant’s staff who are highly knowledgeable as to the details of acoustic-proofing

21 4 TTABVUE 13.
22 Id. at 5.
23 Id. at 9-10.

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Serial No. 87231753

fabric.”24 Applicant argues that while it “may derive an incidental benefit of customer

satisfaction or additional revenue from installation … the primary beneficiary” is the

customer “who benefits from the expertise of the Applicant’s staff, the knowledge of

Applicant’s experts who know the details of the manufacturing and production of the

fabric and know the intricacies of the designs, and the skill of Applicant’s employees

who are comfortable handling and applying such fabric to interior spaces.”25

The Examining Attorney argues that “applicant does not provide marketing

services or promote the goods and services of others for the benefit of someone other

than the applicant” and that Applicant’s “marketing materials inform consumers

about [applicant’s] own product lines and systems.”26 The Examining Attorney argues

that Applicant’s consulting “services are primarily for the direct benefit of the

applicant and not a third-party” because “the expertise provided by the applicant to

its customers is provided in the normal course of the applicant’s business, namely,

the manufacturing of acoustical wall fabrics, and is provided for the express purpose

of enticing customers to purchase applicant’s own customizable product.”27

The Federal Circuit stated in In re Can. Pac. Ltd., 224 USPQ at 973, that a service

is “the performance of labor for the benefit of another.” The primary activity of

Applicant is the sale of acoustic wall treatments. Applicant’s goods are custom, and

24 Id. at 11.
25 Id. at 10, 11.
26 6 TTABVUE 8.
27 Id. at 9.

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Serial No. 87231753

Applicant consults with purchasers regarding type, style, and combinations of fabric

as well as fabric applications.28 As indicated above, one of Applicant’s specimens

mentions that Applicant offers technical services that “insure your project utilizes the

correct components.”29

To the extent these activities could be considered a type of business consultation

service, these activities are not a materially different kind of economic activity that

any purveyor of custom acoustic wall materials necessarily provides. The services

rendered as to selection of fabric and its application are rendered merely as an

accessory to and solely in furtherance of the sale of its custom acoustic wall

treatments. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987)

(“activities which are ‘necessarily done’ in connection with the sale of one’s goods are

the quintessential ‘routine or ordinary’ activities associated with the sale of one’s

goods”); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413, 415 (Com’r., 1953) (stainless

steel product supplier that offers to “analyze your requirements” or “to have a mill or

research representative study the needs of customers and prospective customers of

applicant’s stainless steel products” is conducting an activity that “might be expected

of it and which are rendered merely as an accessory to and solely in furtherance of

the sale and offering for sale of its stainless steel products.”). Accordingly, we find

that Applicant’s “business consulting” is an expected activity in connection with the

284 TTABVUE 5, 9-10. As noted previously, the Examining Attorney pointed out that
“applicant does not provide business consultation in the true nature of those services.” 6
TTABVUE 8.
29 Specimen at TSDR 10.

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Serial No. 87231753

sale of its custom goods, and not a sufficiently separate activity to constitute a service

rendered for the benefit of others.

As to the identified marketing services, there is nothing in the record that

indicates that Applicant performs marketing services as such for others. The

specimens do not show Applicant markets the products of others, but identifies the

acoustic wall products as Applicant’s own. On the substitute specimen webpage under

the heading “The FabriTRAK Acoustical Wall System,” Applicant includes the

following text:

“Our acoustical wall system is a sound controlling
absorptive fabric panel system that is mounted to a rigid
wall surface. The FabriTrak Wall System is a compilation
of unique patented products that provide method, utilizing
fabric as an architectural finish.”

This same text is used on one of the pages of the brochure from the original specimens

under “Product Description” and “Basic Uses.” Thus, Applicant’s advertising is for its

own benefit, not for others, to increase the sales of the acoustic wall system products

it offers.

We find that Applicant’s marketing 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. The

provision of information about one’s product, however detailed, is an ordinary or

routine activity in connection with the sale of one’s goods. Even if Applicant is

creating this marketing material as point of sale materials for its distributors, this is

the kind of activity that is normally expected. Cf. In re Congoleum Corp., 222 USPQ

452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from

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Serial No. 87231753

distributors held to be sufficiently separate from the sale of goods to constitute a

service rendered to distributors, because it confers a benefit on distributors that is

not normally expected by distributors in the relevant industry). Therefore, we find

that Applicant is not entitled to a registration for marketing services because

Applicant does not provide marketing services for others.

The refusal to register under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§

1051-1053, 1127 is affirmed.

Decision: The refusals to register Applicant’s mark FABRITRAK under

Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules

2.34(a)(1)(iv), 2.56(a), 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); and under Trademark Act

Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127 are affirmed.

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