Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

In determining whether an activity is sufficiently

separate from an applicant’s principal activity to constitute a service, the

examining attorney must first ascertain the nature of the applicant’s principal

activity under the mark in question (i.e., the performance of a service or the

provision of a tangible product). The examining attorney must then determine

whether the activity identified in the application is in any material way a

different kind of economic activity than what any provider of that particular

product or service normally provides.

In

re Landmark Commc'ns, Inc.

, 204 USPQ 692, 695 (TTAB 1979). The

identification of goods/services, specimen of use, or other information in the

application record may indicate whether the activity identified in the application

is a separately registrable service. If necessary, the examining attorney should

request additional information, pursuant to

37 C.F.R.

§2.61(b)

, to determine if the activity constitutes a service

as contemplated by the Trademark Act.

See

TMEP §814

.

For example, operating a grocery store is clearly a

service. Bagging groceries for customers is not considered a separately

registrable service, because this activity is normally provided to and expected by

grocery store customers, and is, therefore, merely ancillary to the primary

service.

Providing general information or instructions as to

the purpose and uses of applicant’s goods is merely incidental to the sale of

goods, not a separate consulting service.

See

TMEP

§1301.01(b)(v)

.

Conducting clinical trials for one’s own

pharmaceuticals is generally considered to be a normally expected and routine

activity that is not separately registrable from the principal activity of

providing the goods themselves because the U.S. Food and Drug Administration

legally requires clinical trials as a prerequisite of pharmaceutical approval.

See

TMEP

§1301.01(b)(vi)

ee

TMEP

§1301.01(b)(v)

.

Conducting clinical trials for one’s own

pharmaceuticals is generally considered to be a normally expected and routine

activity that is not separately registrable from the principal activity of

providing the goods themselves because the U.S. Food and Drug Administration

legally requires clinical trials as a prerequisite of pharmaceutical approval.

See

TMEP

§1301.01(b)(vi)

.

Conducting a contest to promote the sale of one’s

own goods or services is usually not considered a service, because it is an

ordinary and routine promotional activity.

See

TMEP

§1301.01(b)(i)

.

While the repair of the goods of others is a

recognized service, an applicant’s guarantee of repair of its own goods generally

does not constitute a separate service, because that activity is ancillary to the

principal activity of providing the goods and normally expected in the

trade.

See

TMEP

§1301.01(b)(ii)

.

However, the fact that an activity is ancillary to a

principal service or to the sale of goods does not in itself mean that it is not a

separately registrable service. The statute makes no distinction between primary,

incidental, or ancillary services.

In re Universal Press

Syndicate

, 229 USPQ 638

(TTAB 1986) (licensing cartoon character found to be a separate service that

was not merely incidental or necessary to larger business of magazine and

newspaper cartoon strip);

In re Betz Paperchem,

Inc.

, 222 USPQ 89

(TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid

chemical products held to constitute separate service, because applicant’s

activities extend beyond routine sale of chemicals);

In re Congoleum

Corp.

, 222 USPQ 452

(TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from

distributors held to be sufficiently separate from the sale of goods to constitute

a service rendered to distributors, because it confers a benefit on distributors

that is not normally expected by distributors in the relevant industry);

In re C.I.T. Fin.

Corp

ine sale of chemicals);

In re Congoleum

Corp.

, 222 USPQ 452

(TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from

distributors held to be sufficiently separate from the sale of goods to constitute

a service rendered to distributors, because it confers a benefit on distributors

that is not normally expected by distributors in the relevant industry);

In re C.I.T. Fin.

Corp.

, 201 USPQ 124

(TTAB 1978) (computerized financial data-processing services rendered to

applicant’s loan customers held to be a registrable service, since it provides

benefits that were not previously available, and is separate and distinct from the

primary service of making consumer loans);

In re U.S. Home Corp. of

Tex.

, 199 USPQ 698

(TTAB 1978) (planning and laying out residential communities for others was

found to be a service, because it goes above and beyond what the average

individual would do in constructing and selling a home on a piece of land that the

individual has purchased);

In re John Breuner

Co.

, 136 USPQ 94

(TTAB 1963) (credit services provided by a retail store constitute a separate

service, since extension of credit is neither mandatory nor required in the

operation of a retail establishment).

The fact that the activities are offered only to

purchasers of the applicant’s primary product or service does not necessarily mean

that the activity is not a service.

In re Otis Eng’g Corp.

, 217

USPQ 278 (TTAB 1982) (quality control and quality assurance services held to

constitute a registrable service even though the services were limited to

applicant’s own equipment);

In re John Breuner Co.

, 136 USPQ at

95 (credit services offered only to customers of applicant’s retail store found to

be a service).

The fact that the services for which registration

is sought are offered to a different class of purchasers than the purchasers of

applicant’s primary product or service is also a factor to be considered.

In re Forbes

Inc

were limited to

applicant’s own equipment);

In re John Breuner Co.

, 136 USPQ at

95 (credit services offered only to customers of applicant’s retail store found to

be a service).

The fact that the services for which registration

is sought are offered to a different class of purchasers than the purchasers of

applicant’s primary product or service is also a factor to be considered.

In re Forbes

Inc.

, 31 USPQ2d 1315

(TTAB 1994) ;

In re Home Builders Ass’n of Greenville

, 18

USPQ2d 1313 (TTAB 1990).

Another factor to be considered in determining

whether an activity is a registrable service is the use of a mark different from

the mark used on or in connection with the applicant’s principal product or

service.

See

In re Mitsubishi Motor Sales of

Am. Inc.

, 11 USPQ2d 1312, 1314-15

(TTAB 1989) ;

In re Universal Press Syndicate

, 229 USPQ at

640;

In re Congoleum Corp

., 222 USPQ at 453-54;

In re

C.I.T. Fin. Corp

., 201 USPQ at 126.  However, an activity that is

normally expected or routinely done in connection with sale of a product or

another service is not a registrable service even if it is identified by a

different mark.

In re Dr. Pepper Co.

, 836 F.2d 508, 5 USPQ2d

1207 (Fed. Cir. 1987);

In re Television Digest,

Inc.

, 169 USPQ 505

(TTAB 1971) .  Moreover, the mark identifying the ancillary service does not

have to be different from the mark identifying the applicant’s goods or primary

service.

Ex parte Handmacher-Vogel, Inc.

, 98 USPQ 413 (Comm’r

Pats. 1953).