For the Benefit of Others

To be a service, an activity must be primarily for

the benefit of someone other than the applicant. While an advertising agency

provides a service when it promotes the goods or services of its clients, a

company that promotes the sale of its own goods or services is doing so for its

own benefit rather than rendering a service for others.

In re Reichhold Chems.,

Inc.

, 167 USPQ 376

(TTAB 1970) ;

see

TMEP

§1301.01(b)(i)

. Similarly, a company that sets up a

personnel department to employ workers for itself is merely facilitating the

conduct of its own business, while a company whose business is to recruit and

place workers for other companies is performing employment agency services.

The controlling question is who

primarily

benefits from the activity for which registration

is sought. "If the activity is done primarily for the benefit of others, the fact

that applicant derives an incidental benefit is not fatal."

Blizzard Ent.

Inc. v. Ava Labs, Inc.

, Ser. No. 91285851, 2024 TTAB LEXIS 259, at

*10, *15-16 (2024) (online retail store and mail order activities featuring

applicant’s own goods a service that primarily benefitted consumers by providing a

central location for finding, examining, and purchasing various goods, even though

applicant derived some benefit of selling its own goods);

In re Venture

Lending Assocs.

, Ser. No. 73402929, 1985 TTAB LEXIS 89, at *4-6

(1985) (funds investment and providing capital for management a service that

primarily benefitted institutional investors, even though applicant derived some

benefit from performance of the recited services). On the other hand, if the

activity primarily benefits applicant, it is not a registrable service even if

others derive an incidental benefit.

In re Dr. Pepper Co.

, 836

F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not

a service, even though benefits accrue to winners of contest);

City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI

Inc

mance of the recited services). On the other hand, if the

activity primarily benefits applicant, it is not a registrable service even if

others derive an incidental benefit.

In re Dr. Pepper Co.

, 836

F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not

a service, even though benefits accrue to winners of contest);

City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI

Inc.

, 106 USPQ2d 1668, 1676

(TTAB 2013) (intranet website used solely for internal purposes not a service,

as respondent was primary beneficiary);

In re Alaska Nw. Publ'g

Co.

, 212 USPQ 316, 317

(TTAB 1981) (stating that “[t]he fact that the activities and operations

associated with the production, advertising or sale of the product may be

indirectly beneficial to purchasers of the product is immaterial to the question

of registrability of the mark as a service mark”).

Performing research and development, or other

routine or expected activities, in the production or sale of one’s own goods, and

not for the benefit of others, are not services for purposes of service-mark

registration.

See

In re Dr. Pepper Co.

, 836 F.2d at 509, 5 USPQ2d at 1208 (“[I]t

has become a settled principle that the rendering of a service which is normally

‘expected or routine' in connection with the sale of one's own goods is not a

registrable service whether denominated by the same or a different name from the

trademark for its product. This interpretation is a refinement of the basic

principle that the service for which registration is sought must be rendered to

others.”);

In re Florists’ Transworld

Delivery, Inc.

, 119 USPQ2d 1056,

1063 (TTAB2016) (finding applicant’s provision of information regarding flowers and

conducting promotional events to promote the sale of its flowers did not

constitute a separately registrable service, but were merely incidental to the

production or sale of the goods)

ervice for which registration is sought must be rendered to

others.”);

In re Florists’ Transworld

Delivery, Inc.

, 119 USPQ2d 1056,

1063 (TTAB2016) (finding applicant’s provision of information regarding flowers and

conducting promotional events to promote the sale of its flowers did not

constitute a separately registrable service, but were merely incidental to the

production or sale of the goods).

Collecting information for the purpose of publishing

one’s own periodical is not a service because it is done primarily for the

applicant’s benefit rather than for the benefit of others.

See

TMEP

§1301.01(b)(iii)

.

Offering shares of one’s own stock for investment is

not a service because these are routine corporate activities that primarily

benefit the applicant.

See

TMEP

§1301.01(b)(iv)

. On the other hand, offering a

retirement income plan to applicant’s employees was found to be a service, because

it primarily benefits the employees.

Am. Int’l Reinsurance Co. v. Airco,

Inc.

, 570 F.2d 941, 197 USPQ 69

(C.C.P.A. 1978) .

Licensing intangible property has been recognized as

a separate service, analogous to leasing or renting tangible property, that

primarily benefits the licensee.

In re Universal Press

Syndicate

, 229 USPQ 638 (TTAB 1986).

See

TMEP

§1301.01(b)(vi)

regarding conducting clinical

trials.