Outdoorlink, Inc.

This Opinion Is Not a
Precedent of the TTAB

Mailed: July 8, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Outdoorlink, Inc.

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Serial Nos. 85935503 & 859355081

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Jon E. Holland of Maynard Cooper & Gale, PC
for Outdoorlink, Inc.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.

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Before Taylor, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, the appeals are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua
sponte consolidated two appeals). Citations to the TSDR and TTABVUE record are the same
in each application, except where indicated as identified by the respective serial numbers of
the applications.
Serial Nos. 85935503 & 85935508

I. Background

Outdoorlink, Inc. (“Applicant”) seeks registration on the Principal Register of

SMARTLINK in standard characters2 for “Monitoring indoor and outdoor

advertisements for business purposes” in International Class 35, and

3 for:

Monitoring roadside billboards for business purposes,
namely, using images of roadside billboards for assisting
advertisers in confirming compliance with contractual
terms related to advertising dates for roadside billboards
in International Class 35.

Applicant initially based the applications on its allegation of a bona fide intent to

use the mark in commerce. After the notices of allowance issued, Applicant filed

statements of use with the identical specimen in each case,4 described as “a print-out

2 Application Serial No. 85935503 was filed May 17, 2013, based on Applicant’s assertion of
a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
3 Application Serial No. 85935508 was filed May 17, 2013, based on Applicant’s assertion of
a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The application includes a disclaimer of SMART and SYSTEMS. The mark is
described as “the wording ‘smartlink systems’ where the word ‘link’ is offset vertically from
the word ‘smart’ and where the word ‘systems’ appears in a smaller-size font below the word
‘link.’ The letters ‘n’ and ‘k’ in the word ‘link’ are joined at the base of such letters, and the
letters ‘l,’ ‘i,’ and ‘n’ in the word ‘link’ are joined at the base of such letters. An arrow extends
horizontally above the word ‘link’ from the letter ‘t,’ and the end of such arrow points
downward toward the end of the letter ‘k.’ Another arrow extends horizontally below the word
‘smart’ from the base of the word ‘link’ and points to the left side of the letter ‘s’ in the word
‘smart.’” Color is not claimed as a feature of the mark.
4 April 4, 2017 Statement of Use at 5.

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Serial Nos. 85935503 & 85935508

of a website showing the mark in use.”5 The specimen displayed below refers to the

“new SmartLink View application” which “allows scheduled photo capturing of your

advertisements. Use it to verify content, show proof of performance, and allow

customers to see their ads remotely”:

In each case, the Examining Attorney refused registration under Sections 1 and

45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the

specimen does not show Applicant’s marks in use in connection with the recited

services.6 The Office Actions explained that “the specimen shows the mark in

5 April 4, 2017 Statement of Use at 2.
6 April 23, 2017 Office Action at 1.

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Serial Nos. 85935503 & 85935508

connection with an application that ‘allows scheduled photo capturing of your

advertisements.’ The specimen thus shows use in connection with a software

application and now [sic] with a billboard monitoring service.”7 In the responses

submitted and signed by Applicant’s in-house counsel, Applicant submitted the same

substitute specimen identified as “copy of an electronic brochure for advertising a

billboard monitoring service showing the mark in use.”8 The substitute specimen9 is

reproduced below:

7 Id.
8October 24, 2017 Response to Office Action at 1 (Serial No. 85935503); October 23, 2017
Response to Office Action at 1 (Serial No. 85935508).
9 Id. at 2-3.

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Serial Nos. 85935503 & 85935508

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Serial Nos. 85935503 & 85935508

The Examining Attorney rejected the substitute specimen and maintained the

refusals that the specimens do not show use of the marks in connection with the

services. According to the Examining Attorney, “the [substitute] specimen shows use

in connection with a system and software that allows customers themselves to

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Serial Nos. 85935503 & 85935508

monitor billboards, but it does not show that applicant actually provides monitoring

services.”10

Applicant requested reconsideration, arguing that its software captures and sends

images of billboards, which “is part of a ‘monitoring’ service that is provided to the

user.”11 Applicant also stated that the reference in the substitute specimen to “stored

images” in the system refers to Applicant storing images on its server, arguing that

“the act of capturing and storing images over time is an act of ‘monitoring.’”12

Applicant specifically relied on a definition of “monitor” as “to watch, keep track of,

or check usu. for a special purpose.”13

The Examining Attorney denied the requests for reconsideration, finding that the

substitute specimen “shows use in connection with a digital camera system and

software that allows customers themselves to monitor billboards, but it does not show

that applicant actually provides monitoring services to and for the benefit of others.”14

Applicant appealed, and the appeals are fully briefed.

As explained below, we reverse the refusals to register because we find the

substitute specimen acceptable.15

10 November 15, 2017 Office Action at 1.
11May 16, 2018 Request for Reconsideration at 1 (Serial No. 85935503); May 15, 2018
Request for Reconsideration at 1 (Serial No. 85935508).
12 Id. at 1.
13 Id. at 4 (Merriam-Webster’s Collegiate Dictionary).
14August 13, 2018 Denial of Request for Reconsideration at 1 (Serial No. 85935503); May 30,
2018 Denial of Request for Reconsideration at 1 (Serial No. 85935508).
15The briefing focused on the substitute specimen and because we find it acceptable, there is
no need to address the original specimen.

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Serial Nos. 85935503 & 85935508

II. Use of the Mark for the Services

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used

in commerce “when it is used or displayed in the sale or advertising of services.” See

also Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2) (“A service mark specimen

must show the mark as used in the sale or advertising of the services”). “Relevant to

Applicant’s specimens in this case, the webpage [or e-brochure] must show the mark

used or displayed as a service mark in advertising the services. Showing only the

mark with no reference to, or association with, the services does not show service

mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d 1417 (TTAB 2018) (citations

omitted). “For specimens showing the mark in advertising the services, ‘[i]n order to

create the required ‘direct association,’ the specimen must not only contain a

reference to the service, but also the mark must be used on the specimen to identify

the service and its source.’” In re WAY Media, Inc., 118 USPQ2d 1687 (TTAB 2016)

(quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)). “To

determine whether a mark is used in connection with the services described in the

[application], a key consideration is the perception of the user.” In re JobDiva, Inc.,

843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). The evidence is reviewed to

determine whether use of the marks “‘sufficiently creates in the minds of purchasers

an association between the mark[s]’” and the applied-for services. Id. (quoting In re

Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)).

Applicant’s services give customers the ability to remotely view the billboards they

have contracted to use for their advertisements, to ensure that the billboards display

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Serial Nos. 85935503 & 85935508

the appropriate content at the agreed-upon times. The Examining Attorney contends

the specimen shows use in connection with a digital camera system and software for

customers to monitor billboards, but it does “not support monitoring activities which

involve the applicant actively watching, keeping track of, or checking billboards for

the benefit of third parties.”16 Essentially, she maintains that Applicant provides a

product or system by which customers do their own monitoring. In response to

Applicant’s argument that capturing and sending images of billboards is part of a

monitoring service, the Examining Attorney concedes that the substitute specimen

“does support the sending of images and image storage.”17 However, she contends

that the transmission of images and image storage that Applicant provides are

distinct services in other international classes and do not constitute monitoring, and,

further, that the sending and storing of images “appear to be ancillary and merely

part of the system sold by the applicant.”18 She points to references on the substitute

specimen to a “proven product from OutdoorLink, Inc.” and “the SmartLink

applications” as implying that Applicant provides “cameras, hardware products, and

software applications and not an actual service.”19

Applicant asserts that it performs the recited services of “monitoring roadside

billboards” by facilitating the capture and transmission of billboard images.

16 13 TTABVUE 4 (Examining Attorney’s Brief).
17 Id.
18Id. at 5; see August 13, 2018 Denial of Request for Reconsideration at 1 (Serial No.
85935503); May 30, 2018 Denial of Request for Reconsideration at 1 (Serial No. 85935508).
19 13 TTABVUE 5 (Examining Attorney’s Brief).

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Serial Nos. 85935503 & 85935508

Applicant points to references on the substitute specimen such as “Stored images in

the SmartLinkTM System” and “send images of the billboard” as a form of watching or

keeping track, in accordance with the definition of monitoring. Applicant emphasizes

that these activities in particular show that “it is clearly Applicant, not Applicant’s

customers, that is providing this service.”20 In its Reply Briefs, Applicant focuses on

image storage, insisting that “Applicant fails to see how creating and maintaining

such a history of stored images is not at least ‘keeping track of’ the billboard

advertisements for the benefit of its customers.”21 Addressing the Examining

Attorney’s assertion that Applicant provides a product rather than a service,

Applicant counters that its use of “products or applications in the course of providing

its service does not change the fact that it is providing a ‘service’ for which it is

entitled to registration.”22 Applicant criticizes the Examining Attorney’s lack of legal

authority supporting the theory that any services are ancillary to the product, and

argues that customers pay a monthly subscription fee for its services.23

Although neither Applicant nor the Examining Attorney cited or discussed the

United States Court of Appeals for the Federal Circuit’s decision in In re JobDiva,

Inc., 843 F.3d 936, 121 USPQ2d 1122 (Fed. Cir. 2016), it provides important guidance

here. In JobDiva, the Court vacated a Board decision holding that JobDiva’s mark

20 11 TTABVUE 5 (Applicant’s Brief).
2114 TTABVUE 3 (Serial No. 85935503, Applicant’s Reply Brief); 15 TTABVUE 3 (Serial No.
85935508, Applicant’s Reply Brief).
22 11 TTABVUE 6 (Applicant’s Brief).
14 TTABVUE 4-5 (Serial No. 85935503, Applicant’s Reply Brief); 15 TTABVUE 3 (Serial
23

No. 85935508, Applicant’s Reply Brief).

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Serial Nos. 85935503 & 85935508

was not in use for personnel placement and recruitment services. JobDiva, 121

USPQ2d at 1122-23. JobDiva provided software that automatically performed

recruitment and hiring functions such as finding, analyzing, and communicating with

job candidates. Id. at 1124-25. The Board reviewed website screenshots and

concluded that they contained no reference to the services “other than supplying

[JobDiva’s] software.” Id. at 1124. The Board considered this an insufficient showing

of use of the service mark “because JobDiva’s software sales alone could not, in the

Board’s view, constitute personnel and recruitment services.” Id. at 1123.

The Federal Circuit disagreed, holding that:

The proper question is whether JobDiva, through its
software, performed personnel placement and recruitment
services and whether consumers would associate JobDiva’s
registered marks with personnel placement and
recruitment services, regardless of whether the steps of the
service were performed by software.

Id. The Federal Circuit further held that the fact-specific inquiry should include

consideration of the “nature of the user’s interaction with JobDiva when using

JobDiva’s software, as well as the location of the software host,” noting that if a user

perceives interaction with JobDiva during the operation of the software, a user would

be more likely to associate the mark with personnel placement and recruitment

services. Id. at 1126.

Ultimately, the crux of the dispute in the cases at hand centers on whether the

substitute specimen sufficiently refers to the recited services of monitoring roadside

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Serial Nos. 85935503 & 85935508

billboards for business purposes and associates the mark with such services.24 We

find that consumers would associate Applicant’s marks with the recited services. The

substitute specimen displays the marks in connection with wording that in its

entirety indicates that Applicant’s services send images of static billboards to

customers who have wireless access to view them, facilitating “transparency.”

Applicant’s customers may customize the intervals during which images are captured

and sent, and “Notifications will be sent in Real Time.” The graphic on the second

page of the substitute specimen shows that images captured from the billboards are

delivered to users through the “SmartlinkTM Servers” and made available “via app or

web portal.” The references to “Stored images in the SmartLinkTM System,” and

“send[ing] images of the billboard” further amplify the consumer perception of the

marks associated with monitoring services. Applicant’s customers interact with

Applicant on an ongoing basis while using the software to view the images, and would

be aware that billboard images, sent at designated intervals to the customer, are

stored on Applicant’s server and are made available either through Applicant’s app

or Applicant’s website.

In addition, the Examining Attorney has not established that Applicant’s

activities are merely ancillary to hardware or software purchased by customers.

While Applicant’s specimen shows the involvement of some equipment such as

24Given the guidance in JobDiva, the Examining Attorney could have inquired about the
functioning of Applicant’s system and the nature of customers’ interaction with Applicant
while using the system. See Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b) (“The Office may
require the applicant to furnish such information, exhibits, affidavits or declarations, and
such additional specimens as may be reasonably necessary to the proper examination of the
application.”).

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Serial Nos. 85935503 & 85935508

cameras, and refers at one point to a “proven product,” the specimen does not give the

impression that the marks only – or even primarily – apply to cameras, hardware,

software or other goods. Rather, the crucial inquiry is not whether hardware or

software is used in connection with the services; it is how consumers perceive the

goods or services with which the marks are associated. JobDiva, 121 USPQ2d at

1123.

In view of the above, we find that consumers would perceive Applicant as

providing the recited monitoring services under the marks. See JobDiva, 121 USPQ2d

at 1123.

Decision: Applicant’s substitute specimen demonstrates use of the marks in a

manner that creates in the minds of potential customers a direct association between

the marks and the recited services. We therefore reverse the refusals to register.

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