Taylor
Adlin
Lynch*
This Opinion Is Not a
Precedent of the TTAB
Mailed: July 8, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Outdoorlink, Inc.
_____
Serial Nos. 85935503 & 859355081
_____
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.
_____
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 Applicants 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 Applicants 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.
-2-
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 Applicants 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 Applicants 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.
-4-
Serial Nos. 85935503 & 85935508
-5-
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-Websters 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.
-7-
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
Applicants 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)).
Applicants services give customers the ability to remotely view the billboards they
have contracted to use for their advertisements, to ensure that the billboards display
-8-
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
Applicants 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 Attorneys 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 Attorneys 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 Applicants
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
Attorneys 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 Attorneys 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 Circuits 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 JobDivas mark
20 11 TTABVUE 5 (Applicants Brief).
2114 TTABVUE 3 (Serial No. 85935503, Applicants Reply Brief); 15 TTABVUE 3 (Serial No.
85935508, Applicants Reply Brief).
22 11 TTABVUE 6 (Applicants Brief).
14 TTABVUE 4-5 (Serial No. 85935503, Applicants Reply Brief); 15 TTABVUE 3 (Serial
23
No. 85935508, Applicants Reply Brief).
– 10 –
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
[JobDivas] software. Id. at 1124. The Board considered this an insufficient showing
of use of the service mark because JobDivas software sales alone could not, in the
Boards 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 JobDivas
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 users interaction with JobDiva when using
JobDivas 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
– 11 –
Serial Nos. 85935503 & 85935508
billboards for business purposes and associates the mark with such services.24 We
find that consumers would associate Applicants marks with the recited services. The
substitute specimen displays the marks in connection with wording that in its
entirety indicates that Applicants services send images of static billboards to
customers who have wireless access to view them, facilitating transparency.
Applicants 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. Applicants 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 Applicants server and are made available either through Applicants app
or Applicants website.
In addition, the Examining Attorney has not established that Applicants
activities are merely ancillary to hardware or software purchased by customers.
While Applicants specimen shows the involvement of some equipment such as
24Given the guidance in JobDiva, the Examining Attorney could have inquired about the
functioning of Applicants 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.).
– 12 –
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: Applicants 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.
– 13 –
This Opinion Is Not a
Precedent of the TTAB
Mailed: July 8, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Outdoorlink, Inc.
_____
Serial Nos. 85935503 & 859355081
_____
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.
_____
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 Applicants 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 Applicants 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 Applicants 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 Applicants 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.
-4-
Serial Nos. 85935503 & 85935508
-5-
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
-6-
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-Websters 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.
-7-
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
Applicants 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)).
Applicants services give customers the ability to remotely view the billboards they
have contracted to use for their advertisements, to ensure that the billboards display
-8-
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
Applicants 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 Attorneys 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 Attorneys 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 Applicants
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
Attorneys 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 Attorneys 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 Circuits 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 JobDivas mark
20 11 TTABVUE 5 (Applicants Brief).
2114 TTABVUE 3 (Serial No. 85935503, Applicants Reply Brief); 15 TTABVUE 3 (Serial No.
85935508, Applicants Reply Brief).
22 11 TTABVUE 6 (Applicants Brief).
14 TTABVUE 4-5 (Serial No. 85935503, Applicants Reply Brief); 15 TTABVUE 3 (Serial
23
No. 85935508, Applicants Reply Brief).
– 10 –
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
[JobDivas] software. Id. at 1124. The Board considered this an insufficient showing
of use of the service mark because JobDivas software sales alone could not, in the
Boards 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 JobDivas
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 users interaction with JobDiva when using
JobDivas 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
– 11 –
Serial Nos. 85935503 & 85935508
billboards for business purposes and associates the mark with such services.24 We
find that consumers would associate Applicants marks with the recited services. The
substitute specimen displays the marks in connection with wording that in its
entirety indicates that Applicants services send images of static billboards to
customers who have wireless access to view them, facilitating transparency.
Applicants 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. Applicants 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 Applicants server and are made available either through Applicants app
or Applicants website.
In addition, the Examining Attorney has not established that Applicants
activities are merely ancillary to hardware or software purchased by customers.
While Applicants specimen shows the involvement of some equipment such as
24Given the guidance in JobDiva, the Examining Attorney could have inquired about the
functioning of Applicants 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.).
– 12 –
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: Applicants 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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