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A & M is in the business of providing sales promotion services by creating and licensing sales promotion campaigns. Sales promotion campaigns are used by various types of merchants, such as grocery stores, gas stations, banks, and automobile dealers, for the purpose of increasing customer traffic and sales.

A & M created the campaign known as THE NOW GENERATION or NOW GENERATION and licensed the campaign to banks for the purpose of advertising the banks’ financial services, including NOW accounts, and to automobile dealers for the purpose of advertising automobiles. (A NOW account is a checking account that earns interest.) The license entitles the banks or automobile dealers to use THE NOW GENERATION as a mark for financial services or automobiles.

The NOW GENERATION licenses are individually tailored to include the right to use selected physical components from a total of 5 television commercials, 51 radio commercials, 30 newspaper advertisements, a musical theme, direct mail advertising materials, point of sale materials, and other materials. A & M provides services to its licensees including advice as to which components to select, how to use and benefit from the advertising, and how the campaign could assist in the merchandising of banking services or automobiles to the public.

A & M sought to register THE NOW GENERATION as a service mark for “PROMOTING THE SALE OF GOODS AND/OR SERVICES OF AUTOMOBILE DEALERS, FINANCIAL INSTITUTIONS AND RETAILERS THROUGH THE DISTRIBUTION OF PRINTED PROMOTIONAL MATERIALS AND BY RENDERING MERCHA-NDISING AND SALES PROMOTION ADVICE” (hereinafter referred to as advertising or promotional services). The board affirmed the examiner’s refusal to register the mark, finding that the mark had not been used for A & M’s promotional services, but only for the banks’ financial services. (In the board decision presently on appeal, the board focused on the bank licensees and not on the automobile dealer licensees.)

The board does not question that A & M provides promotional“services” as opposed to “goods.” The board also does not suggest that there is any possibility of confusion or any difficulty in distinguishing between A & M’s use of THE NOW GENERATION as a mark for promotional services to banks, on one hand, and the banks’ use of the same mark for financial services to individuals, on the other. The question is whether, in fact, A & M has used THE NOW GENERATION as a mark for its promotional services.

SERVICE MARK REGISTRATION FOR ADVERTISING OR PROMOTIONAL SERVICES

Section 3 of the Lanham Act provides for the registration of service marks. Section 45 of the Lanham Act defines “service mark” as “a mark used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.”

The Lanham Act, as amended, does not define “services,” nor does the legislative history provide such a definition. However, our predecessor court stated that the term “services” was intended to have broad scope, reasoning that “no attempt was made to define ‘services’ simply because of the plethora of services that the human mind is capable of conceiving.”

The board has held that there is “no reason why a particular class of service” should be excluded from service mark registration, as long as the statutory requirements for registration are met. Each application for registration of a mark must be separately evaluated with reference to the manner in which the mark has been used in the specimens of record.

In In re Goodwill Advertising Co. and in In re Universal Press Syndicate, the board has allowed registration of service marks for advertising or promotional services. In each case, the board found that the advertising services were sufficiently separate from the subject of the advertising, and that the mark had been used to identify the advertising services themselves.

However, in Admark and in In re Local Trademarks, Inc., the board refused registration of service marks for advertising or promotional services. In each of the latter two cases, the board found that the marks had not been used to identify advertising services, but only to identify the subject of the advertising. In Admark and Local Trademarks, the board went beyond the issues presented in those cases to make statements which would appear to severely curtail the availability of service mark registration for advertising services.

At this point, it will be useful to discuss certain aspects of service marks as they relate to advertising services. The distinguishing characteristic of advertising services is that they are associated with the subject of the advertising, whether that subject is goods or services. However, service mark registration for advertising services must be based on use of the mark to identify the advertising services themselves.

A. Advertising Services Must Be Sufficiently Separate from the Subject of the Advertising.

In certain cases, the board has refused service mark registration when the advertising services are not “sufficiently separate” from the subject of the advertising. Thus, in In re Radio Corp. of America, the CCPA affirmed the board’s decision refusing service mark registration of the slogan “The Music You Want When You Want It,” where the slogan was used only to advertise the applicant’s own goods, i.e., records.

On the other hand, as the board stated in In re Heavenly Creations, Inc.,“the statute makes no distinction between services on the basis of primary, incidental or ancillary.” In Heavenly Creations, the board allowed registration of a service mark for the promotion of wigs and hair pieces, where the promotion included demonstrations of hair pieces generally, such that the information and techniques conveyed would be usable with any type or brand of hair piece. The same mark had also been registered as a trademark for hair pieces. The board was “persuaded that applicant is rendering a service over and above that normally involved in promoting the sale of its goods.”

It may be helpful to think of a “service,” defined in In re Canadian Pacific, Ltd., as “the performance of labor for the benefit of another.” In the present case, A & M is in the business of providing advertising services for the benefit of another, i.e., for the benefit of banks and automobile dealers. A & M’s sale of advertising services to banks and automobile dealers is a wholly separate transaction from the banks’ and automobile dealers’ sale of financial services or automobiles to individuals. Here, the board correctly found that A& M’s advertising services are sufficiently separate from the subject of the advertising, i.e., financial services and automobiles.

B. Mark Must Be Used To Identify Advertising Services, Not Merely To Identify Subject of the Advertising.

It is not enough for the applicant to be a provider of services; the applicant also must have used the mark to identify the named services for which registration is sought. In In re Universal Oil Products Co., the CCPA affirmed the board’s refusal to register PACOL and PENEX as marks for engineering services, even though the applicant was a provider of such services, because the marks had been used only to identify certain processes and not to identify the engineering services for which registration was sought. The CCPA stated that the applicant had failed to show a “direct association”between the mark and the services named in the application. The “direct association” test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of “a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.”

In Admark, the board refused registration of “THE ROAD AUTHORITY”as a mark for advertising services, because the mark had been used only to identify retail tire store services. The board went on to make the following sweeping statement:

The mark or slogan that is the focus of an advertising campaign for a client’s goods or services cannot be said to function as a service mark for the licensor’s-applicant’s-advertising agency services.

In the present case, the examiner should not have relied on the statement made in Admark to refuse registration. However, on appeal to the board, the board correctly stated that A & M would be entitled to registration of THE NOW GENERATION as a mark for advertising services if A & M had actually used that mark to identify its advertising services. The board refused service mark registration based on its finding that A & M had not used THE NOW GENERATION as a mark for its advertising services.

WHETHER THE BOARD CLEARLY ERRED IN FINDING A & M DID NOT USE THE MARK FOR ADVERTISING SERVICES

Whether a mark has been used to identify a particular type of service is a question of fact reviewable under the clearly erroneous standard. This court reviews the board’s findings for clear error based on the evidence of record, including the specimens of use of the mark and the affidavits of A & M’s president and of the purchasers of A & M’s services.

On this record, the board clearly erred in finding that A & M had not used THE NOW GENERATION as a mark for its promotional services. A & M(here, its predecessor in interest) submitted a letterhead specimen naming itself as the “creators, producers and suppliers of THE NOW GENERATION sales promotion services and specialized advertising campaigns for automobile dealers, financial institutions and retailers.” (Emphasis supplied.) This letterhead was actually used in correspondence with financial institutions and automobile dealers regarding A & M’s promotional services. It is difficult to imagine how A & M could have made a clearer use of the mark to identify its promotional services. However, if any doubt remained, on remand A & M submitted postcard and magazine advertising specimens to the same effect, as well as affidavits from purchasers of A & M’s services stating that they considered THE NOW GENERATION to identify A & M’s promotional services.

The board has equated the messenger with the message, as a result of which the messenger has been unjustly shot down. The board majority selectively focused only on those aspects of the evidence which showed the banks’ use of THE NOW GENERATION to identify the banks’financial services. This analysis was unavailing, since the board conceded that there was no difficulty in distinguishing between the two different uses of the same mark, and that the mark would be registrable for promotional services if A & M showed that it had used the mark to identify such services.

Service mark registration is available for advertising or promotional services under the same standard as for other services, i.e., the mark must have been “used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.”Cases involving advertising services may present factual considerations including whether the services are “sufficiently separate” from the subject of the advertising, and whether the mark has been used to identify the advertising services themselves.

Here, the board clearly erred in finding that A & M had not used THE NOW GENERATION to identify its promotional services; hence, the board’s decision refusing registration is reversed.