The applied-for mark, as shown on the specimen, does not function as a service mark because the mark refers specifically to sandwiches, which are Class 030 goods. A term that serves only to identify a menuitem does not function as a service mark for restaurant services.
In re El Torito Rest. Inc.
, 9 USPQ2d2002 (TTAB 1988); TMEP §1301.02(a). Attached are additional case laws supporting the determinationthat a mark for a menu item does not function as a service mark for restaurant services. See attached.Applicant has submitted numerous specimens and exhibits showing use of the mark in commerce. All of the evidence shows the mark being used to refer to a type of sandwich, not restaurant services. Forexample, the specimen of record shows the mark under “Your Menu Choices” along with other menuitems, such as 6” (referring to a 6” sub as opposed to a footlong sub), salad, and flatbread. Another exhibitsubmitted on October 16, 2009 is of a banner stating “ALL FOOTLONG SUBS” are $5. And a similarexhibit shows $5 FOOTLONGS with the phrase A VARIETY OF GREAT SUBS. In the latter cases, themark specifically refers to a menu item costing $5.The specimen of record, along with any other relevant evidence of record, is reviewed to determinewhether an applied-for mark is being used as a service mark.
In re Volvo Cars of N. Am., Inc.
, 46USPQ2d 1455, 1458 (TTAB 1998). Not every word, design, symbol or slogan used in the advertising orperformance of services functions as a mark, even though it may have been adopted with the intent to doso.
TMEP §1301.02. A designation cannot be registered unless purchasers would be likely to regardit as a source-indicator for the services.
seeIn re Moody’s Investors Serv. Inc.
, 13 USPQ2d 2043,2047-49 (TTAB 1989).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) bysubmitting evidence and arguments in support of registration.Applicant may also respond to this refusal by submitting the following:(1) A substitute specimen showing the mark in use in commerce for the services specified inthe application; and(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.§2.20:
“The substitute specimen was in use in commerce at least as early as the filing dateof the application.”
37 C.F.R. §2.59(a); TMEP §904.05;
37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant mustalso verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.Examples of specimens for services are signs, photographs, brochures, website printouts or advertisementsthat show the mark used in the sale or advertising of the services.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use incommerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and therefusal will be withdrawn.
TMEP §806.03(c). However, if applicant amends the basis to Section1(b), registration will not be granted until applicant later amends the application back to use in commerce