If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).
In CHiP, the TTAB dealt with an appeal from a refusal to register “MADE FOR MORE” for services “including employment-recruiting services, personnel recruitment, employment recruiting and staffing services, and recruitment and placement of personnel in the field of law enforcement.” Id. at p. 8. The U.S. Patent and Trademark Office (USPTO) examining attorney refused registration, contending the mark was not used to render a service within the meaning of the Trademark Act, and asserted the mark was used by the California Highway Patrol (Applicant) to recruit its own personnel and thus was not registrable. Id. at p. 2. The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.
Of record was the Applicant’s specimen of use.
In analyzing the issue, the TTAB first quoted Section 3 of the Trademark Act, 15 U.S.C. Section 1053 (which, generally, provides that service marks used in commerce are registrable like trademarks) and Section 45, 15 U.S.C. Section 1127 (which provides the definition of “service mark”). However, no definition of “service” is set forth in the Trademark Act, nor is there any legislative history about what precisely is a service, with “refinement” of the term being left to the USPTO and the courts. Id. at p. 8.
The TTAB then set forth three factors it uses for determining what is a service:
- A service must be a real activity.
- A service must be performed to the order of, or for the benefit of, someone other than the applicant.
- The activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.
Id. at p. 9.
As there was no issue between the California Highway Patrol and the examining attorney about the first factor, the TTAB analyzed the second and third factors.
In its analysis of the second factor, the TTAB stated “[t]he controlling question is who primarily benefits from the activity for which applicant is seeking registration” and noted that if the services are primarily for the benefit of others, the Applicant’s deriving an “incidental benefit is not fatal.” Id. at p. 11. Conversely, if the Applicant primarily benefited from its services and others derived an incidental benefit, the mark would not be registrable. Id. at p. 12.
The TTAB viewed Applicant’s description of services in its application as “essentially recruiting services for itself” and as “clearly an activity that Applicant is rendering for itself to fill positions in its ranks.” Id. It also pointed to Section 1301.01(a)(ii) of the Trademark Manual of Examining Procedure as being analogous, which provides:
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.
Consequently, it found that the Applicant’s services were performed primarily for its own benefit instead of for others. Id. at p. 13.
Turning to the third factor, the TTAB found that the Applicant’s recruitment and hiring of its own employees was not materially different from the activities that comprised the Applicant’s description of services. Rather, the services were “routine activities performed by any law enforcement agency or other business.” Id. at p. 14.
The takeaway from CHiP? Be sure that the service mark your company seeks to register is or will be primarily to benefit others, not your company.