Although the Trademark Act defines “service mark,” it does not define the term “services.” However, applicant and the Examining Attorney agreed that “for an activity to be a ‘service’ within the contemplation of the Act, it (1) must be a real activity, (2) must be performed to the order of, or for the benefit of, someone other than the applicant, and (3) must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.”
Here, the only issue involved the third element of the test: whether the identified service is “qualitatively different from anything necessarily done in connection with the performance of Applicant’s other services.”
Applicant’s webpage urged visitors to “Contact Us” and to provide personal information relevant to a possible purchase of property at the development. (Okemo” is a mountain in Vermont that is the home of a ski resort.) The Examining Attorney submitted third-party webpages showing that real property developers provide similar online access to information about their developments in the course of selling their properties.
Applicant could not sell the new homes and condos that it develops at SouthFace Village without “offering information . . . concerning the purchase and sale of” those new homes and condos, and its original specimen shows that its Internet portal is simply a means for providing such information. Applicant’s purported service of “providing an Internet portal offering information in the fields of real estate concerning the purchase and sale of new homes and condos” is thus not a service that is separate and distinct from Applicant’s other services because it is not qualitatively different from anything necessarily done in connection with the performance of those services. Cf. Landmark Commc’ns, 204 USPQ at 695 (the mere advertising of one’s own product is not a separate service); 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”).
Applicant acknowledged that “[t]he potential consumer or the actual purchaser of Applicant’s homes and condos uses [Applicant’s] internet portal to gain additional information regarding the services performed” by applicant in the course of developing properties at SouthFace Village.
Applicant’s substitute specimens included a live webcam for viewing the properties under development, but the Board again found that “providing such information through the webcam in Applicant’s substitute specimen ‘is merely ancillary to applicant’s primary business,’ and ‘part and parcel of developing and offering [Applicant’s] homes for sale.'”
And so the Board affirmed both refusals to register.
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TTABlog comment: Last year the Board affirmed refusals to register the same two marks for building construction and maintenance services because applicant’s specimens of use failed to show use of the mark with any of the identified services. (TTABlogged here).
Text Copyright John L. Welch 2019.