The Board affirmed refusals of the mark SOUTHFACE VILLAGE, in standard character and design form, for "building construction; residential and commercial building construction; and construction maintenance of property," finding that Applicant Timber Creeks's multiple specimens failed to show use of the mark by applicant with any of the identified services. In re Timber Creek at Okemo Number II, LLC, Serial Nos. 86981587 and 86981588 (August 2, 2018) [not precedential] (Opinion by Judge Christopher Larkin).
An acceptable specimen of use for a services mark must show "some direct association between the offer of services and the mark sought to be registered therefor." When the specimens show the mark purportedly used in advertising for the services, the specimen must contain "not only a reference to the service, but also the mark must be used on the specimen to identify the service and its source."
The Board reviewed the various specimens of use submitted by applicant, and concluded that they do not show use of the applied-for marks with the recited services. The constructions services are those of a builder called "Bensonwood," not applicant. For example:
The fact that "Applicant controls the construction aspects of the services" provided by Bensonwood ... might be relevant if Bensonwood used the applied-for marks in connection with the referenced building construction services, and Applicant' claimed that Bensonwood's use of the marks inured to the Applicant's benefit because Bensonwood was a "related company" within the meaning of Section 45 of the Trademark Act, 15 USC Section 1127, but there is no indication on the specimens that Bensonwood used any marks other than its own.
In short, the specimens do not advertise building construction service provided by applicant under the applied-for marks and so the Board affirmed the refusals.
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