The Cardio Group, LLC

This Opinion Is a
Precedent of the TTAB

Mailed: June 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re The Cardio Group, LLC

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Serial No. 86840860

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Jerry C. Harris, Jr. of Wick Phillips Gould & Martin LLP,
for The Cardio Group LLC.

Laura Golden, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.

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Before Kuhlke, Bergsman, and Hightower,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The Cardio Group, LLC (“Applicant”) seeks registration on the Principal Register

of the mark THE CARDIO GROUP and design, shown below, for “retail store services

featuring medical devices,” in Class 35. 1

1 Application Serial No. 86840860 was filed December 7, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and
first use in commerce as of November 2, 2015.
Serial No. 86840860

Applicant describes the mark as follows:

The mark consists of a depiction of a sinus rhythm
waveform comprising THE CARDIO presented above the
horizontal portion of the waveform and to the left of the R
wave portion and GROUP presented below the horizontal
portion of the waveform and to the right of the S wave
portion.

Color is not claimed as a feature of the mark.

Applicant disclaimed the exclusive right to use the term “The Cardio Group.”

Applicant’s original specimen consists of two items, “web page captures of device,

functions and services” and a “confidential sales agreement.” An excerpt from the

“web page captures of device, functions and services” is displayed below:

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Serial No. 86840860

The “confidential sales agreement” is displayed below:

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Serial No. 86840860

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 specimens do not

show Applicant’s mark in use in connection with retail store services.2 She explained

that neither of the original specimens refers to retail store services.3 In the September

29, 2016 response, Applicant submitted an additional specimen, the sales invoice

shown below.

2 April 1, 2016 Office Action.
3 Id. at TSDR 2. All citations contained in the Trademark Status & Document Retrieval
(TSDR) database are to the downloadable .pdf format of the documents.

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Serial No. 86840860

The Examining Attorney issued a final refusal explaining that “applicant has

submitted business documents showing that applicant is engaged in selling products.

However, these documents do not indicate that such sales are made at retail stores.”4

According to 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

and the services are rendered in commerce.” See also 37 C.F.R. § 2.56(b)(2). “To

4 October 3, 2016 Office Action (TSDR 2).

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Serial No. 86840860

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) (citation omitted). The

question is whether the evidence of Applicant’s use of its mark creates an association

between the mark and Applicant’s retail store services. Id.

“Specimens showing the mark used in rendering the identified services need not

explicitly refer to those services in order to establish the requisite direct association

between the mark and the services, but ‘there must be something which creates in

the mind of the purchaser an association between the mark and the service activity.’”

In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson

Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)); accord JobDiva, 121 USPQ2d

at 1126 (“the question is whether the evidence of JobDiva’s use of its marks

sufficiently creates in the minds of purchasers an association between the marks and

JobDiva’s personnel placement and recruitment services”) (internal quotation marks,

brackets, and citation 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.” Way Media, 118 USPQ2d at 1698 (quoting In re Osmotica Holdings

Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)).

Showing only the mark with no reference to, or association with, the services does

not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997);

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Serial No. 86840860

In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). Thus, an acceptable

specimen must show “some direct association between the offer of services and the

mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653,

177 USPQ 456, 457 (CCPA 1973).

The webpage specimen appears to be a “pulse wave” analysis report for a fictitious

patient. This specimen presents the results of an analysis from a medical device. The

specimen does not refer to any activity that may be considered a retail store service.5

The “confidential sales addendum,” identified by Applicant as a “confidential sales

agreement,” and which was part of the original specimen, is an addition or appendix

to a sales contract. While it evidences a hypothetical sale, it does not indicate how

that sale was made (i.e., it does not show that the sale was made through a retail

store as distinguished from (e.g., a sale made through a personal sales call or visit)).

Likewise, the substitute specimen identified as an invoice but labeled “confidential

sales agreement” is a sales contract and does not refer to any activity that may be

considered a retail store service. While the two documents may evidence a November

2, 2015, transaction involving the sale of a medical device, they do not reveal, for

example, how the goods were, if at all, advertised, brought to the attention of, or sold

to a customer.6 Thus they do not evidence advertising that the goods were available

5 “Retail store services are considered a service under the Nice Agreement because the
activities of a retail establishment that surround the sale of goods do provide a benefit to
others, e.g., the bringing together, for the benefit of others, a variety of goods (excluding the
transport thereof), enabling customers to conveniently view and purchase those goods.”
Retail Store Services Note 035-1089 in the ACCEPTABLE IDENTIFICATION OF GOODS AND
SERVICES MANUAL.
6 The documents do not reference an actual customer, even in redacted form.

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Serial No. 86840860

via retail store services. More generally, these documents reflect product sales. They

do not indicate that any service, in any form, was provided.

Both precedent and examination guidance make clear that in assessing the

specimens, consideration must be given not only to the information provided by the

specimen itself, but also to any explanations offered by Applicant clarifying the

nature, content, or context of use of the specimen that are consistent with what the

specimen itself shows. See In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1420 (TTAB

2018); In re DSM Pharms., Inc., 87 USPQ2d 1623, 1626 (TTAB 2008) (“In determining

whether a specimen is acceptable evidence of service mark use, we may consider

applicant’s explanations as to how the specimen is used, along with any other

available evidence in the record that shows how the mark is actually used.”); see also

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1301.04 (October 2018)

(“[A] specimen description submitted by the applicant typically helps clarify the

manner in which the mark is used in commerce, and the more explanation the

applicant provides initially, the more helpful it is to the examining attorney’s

analysis. Thus, applicants are encouraged to provide a specimen description and

explain how the applicant renders or provides the services …?.”). Here, Applicant

explains that the services it renders are in the nature of activities provided by a retail

store: that is, Applicant is selling products. In other words, “‘retail store services’

includes those types of services that a consumer might expect from a retail store” and

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Serial No. 86840860

those activities do not have to take place in an actual retail store.7 Applicant’s

explanation fails to clarify that the specimens show Applicant rendering a retail store

service of any type or persuade us that there is an association between THE CARDIO

GROUP and design and retail store services.8

In response to the refusal, Applicant additionally attempted to amend the

description of services from “retail store services featuring medical devices” to “retail

sales services featuring medical devices.”9 Applicant concludes that the sales

addendum and invoice show use of THE CARDIO GROUP and design in connection

with retail sales services.

Accordingly, since more than “sales services” can occur in
retail stores (e.g., returns, advice, repairs, etc.), limiting
the description to only “sales services” narrows the scope of
the description from the former all “store services.”
Applicant respectfully notes that “retail” is defined as “to
sell in small quantities directly to the ultimate consumer,”
see https://www.merriam-webster.com/dictionary/retail.
Accordingly, the instant specimens indicate that a single
medical device (with its ancillary accessories) are [sic] sold
to an ultimate consumer (i.e., the purchasing clinician).
Based on the foregoing, Applicant respectfully submits that
the instantly provided specimens indicate that the claimed
mark is used in “retail sales services featuring medical
devices.”10

7Applicant’s Brief, pp. 9-11 (4 TTABVUE 10-12); Applicant’s Reply Brief, pp. 6-7 (7
TTABVUE 7-8).
8 Retail store services may be offered in various ways, such as through physical locations
(“brick and mortar”), catalogs or online. Applicant’s specimens do not suggest any of these.
9 March 8, 2017 Request for Reconsideration (TSDR 2).
10 Id. In her April 18, 2017 Office Action, the Examining Attorney refused to accept the
proposed description of services because “retail sales services” exceeds the scope of “retail
store services. The Examining Attorney correctly noted that
Applicant has argued that this is a narrowing of the
identification of services, but it is exactly the opposite. Indeed,

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As best we understand the argument, Applicant is simply restating that its specimens

reflect a product sale. But as mentioned above, evidence of a product sale is not

evidence that retail store services are or were provided.

Applicant further explained to the Examining Attorney that “the sales addendum

indicates that a ‘Max Pulse Device’ … is being sold by applicant as a service under

the relevant mark.”11 According to Applicant, the confidential sales agreement

“indicates that a ‘Max Pulse Device’ … is being sold by applicant as a service under

the relevant mark for $10,500.”12 Applicant concludes

Both specimens reveal that the applicant, at the time of the
filing of the application, was providing retail store services
featuring medical devices under the claimed mark for, at
least the reason, that Merriam-Webster indicates that a
retail store is “a place of business . . . in which merchandise
is sold primarily to ultimate consumers.” As is evident from
the specimens, the claimed mark indicates the place of
business (The Cardio Group) which is providing the
medical device sales services (e.g., selling medical devices)
to the ultimate consumers (e.g., the purchasing clinician).13

Applicant’s argument is based on the false premise that because a retail store is a

place of business and Applicant both has a place of business and is selling medical

devices, ipso facto, Applicant is selling medical devices from a retail store. There

this change was specifically made to broaden the identification
of goods, so that the previously unacceptable specimen of use
would show use of the mark with services distinct from those
initially identified in the application.

Id. at TSDR 2.

11 October 17, 2017 Response to Office Action (TSDR 2).
12 Id.
13 Id.

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Serial No. 86840860

simply is nothing in the documents submitted by Applicant that refer to a retail store

(of either the on-line or brick-and-mortar variety) or create an association of any kind

between THE CARDIO GROUP and design and a retail store service.

Considering all the specimens in their totality and the explanations regarding how

Applicant renders its services and uses its THE CARDIO GROUP and design mark,

we find no direct association in any of the specimens between THE CARDIO GROUP

and design and any type of retail store service. Nothing in these documents

demonstrates that consumers would perceive THE CARDIO GROUP and design as a

source indicator for retail store services. Ultimate consumers who choose to purchase

Applicant’s products very well may understand they are engaging in a retail sales

transaction with Applicant, but even if this is assumed, it would not establish that

such consumers, prior to making their decision to make such a purchase, were

exposed to any advertising or promotion of Applicant as the operator of a retail store

selling medical devices.14

Decision: The refusal to register Applicant’s mark THE CARDIO GROUP and

design is affirmed.

14The ultimate consumer, a clinician in Applicant’s characterization, may have been referred
to Applicant by a third party or in some other way have engaged with Applicant, as through
a direct sales agent, in discussion of its medical devices.

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