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美国商标基本包括四种类型：商品商标、服务商标、集体商标、证明商标。服务商标是把某人的服务与他人服务区分开来的标记。服务商标和商品商标的注册条件和方式相同，所获保护也和商品商标相似。集体商标既可以是服务商标，也可以是商品商标。集体商标是公司、协会或者其他组织的成员所使用的商标。证明商标则是证明其他人所提供的商品或者服务具有某种特性的标记，例如地理来源，商品质量等等。

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.

1. 何谓服务标记？

2. 商标法对服务标记的注册有何特殊要求？

MICHEL, Circuit Judge

Midwest Plastic Fabricators, Inc. (Midwest) appeals the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board (Board), denying Midwest’s petition to cancel two certification mark registrations issued to Underwriters Laboratories Inc. (UL). Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989). Because the Board’s findings that UL did not misuse and did control use of its certification marks are not clearly erroneous, we affirm.

UL, a corporation that promulgates and certifies compliance with safety standards for thousands of consumer and other products, is the owner and federal registrant of the two certification marks at issue in this appeal. See Joint Appendix at 13-15, Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories Inc., No. 90-1043 (Fed.Cir. filed Mar. 9, 1990) Each registration states, in part, that the certification is used by persons authorized by UL to certify that representative samplings of the goods conform to the safety standards or requirements established by UL. A manufacturer that wishes to use the UL marks on its products to indicate compliance with UL safety standards must first submit samples to UL for testing and evaluation. Once those samples are determined to comply with UL standards, the products become eligible for listing with UL. Usually the manufacturer will enter into a listing and follow-up service agreement with UL.

This agreement provides, inter alia, that the manufacturer order UL marks through [UL] from an authorized printer; that no UL mark shall be used on products not in compliance with [UL’s] requirements; that the manufacturer agrees that it will ensure that the products bearing the UL mark are in compliance with [UL’s] requirements; that a testing and inspection program will be maintained by the manufacturer to assure continued compliance...; that access to [UL’s] inspectors shall be allowed together with providing adequate facilities for the conducting of product testing and that any tests which indicate noncompliance with [UL’s] requirements shall result in the manufacturer’s being required to either correct the problem or remove the UL mark from the noncomplying products.

Midwest is a manufacturer and seller of polyvinyl chloride (PVC) fittings and elbows for use with PVC conduit which encases electrical wiring. The company entered into a listing and follow-up service agreement with UL which provides, in part, that Midwest “agrees that his use of the Listing Mark constitutes his declaration that the products are Listed by [UL] and have been made in compliance with the requirements of [UL].” Joint App. at 1378(emphasis added).

Midwest now seeks reversal of the Board’s denial of its petition to cancel UL’s registrations on the same two bases it presented to the Board. First, Midwest alleged that UL permits use of the certification marks for purposes other than certification, in violation of 15 U.S.C. § 1064(e)(3) (1982). According to Midwest, UL’s president testified that application of UL’s mark represents not UL’s, but merely the manufacturer’s declaration that the products meet UL standards. Midwest argued that the failure of UL itself to certify that the products carrying the UL mark meet UL standards demonstrates that UL permits use of the marks for purposes other than certification.

As the second basis for cancellation, Midwest charged UL fails to control the use of its marks. Specifically, Midwest alleged: (1) certain PVC elbows carrying the UL marks failed impact tests performed by its expert, Professor Charles E. Rogers, of Case Western Reserve University; and (2) certain conduit pipe manufactured by a competitor of Midwest, National Pipe Company (National), carried counterfeit UL marks. If UL fails to control its marks, the registrations are subject to cancellation under 15 U.S.C. § 1064(e)(1) (1982). Alternatively, Midwest argued to the Board that as UL fails to control use of the marks on PVC conduit, the registrations should be cancelled at least as to such conduit. UL controverted these allegations and asserted that Midwest’s cancellation petition was barred by the doctrine of licensee estoppel.

Whether either the Board’s fact finding that UL does not use the marks other than for certification or that UL does control use of its marks is clearly erroneous.

I. Use of the Marks for Purposes other than to Certify

We have jurisdiction over this appeal under 28 U.S.C. § 1295(a)(4)(B)(1988).

Although our court has not previously addressed either the burden or the standard of proof in cancellation proceedings for certification mark registrations, we discern no reason to make them different than for trademark registration cancellations.

A certification mark registration may be cancelled if the mark is not used exclusively as a certification mark. 15 U.S.C. § 1064(e)(3). For example, if a certification mark’s owner also allowed the mark to be used as a trademark, there would be a basis for cancellation of the registration.

Midwest argues that UL’s registrations must be cancelled because the UL certification marks are not UL’s own declarations to consumers that the marked products comply with UL standards, but instead are the manufacturer’s declarations. Midwest asserts the failure of UL itself to make that declaration is evidence that UL “permits the use of the certification mark for purposes other than to certify” and therefore the registrations must be cancelled.

There is an important difference, however, between the mark’s use and the user. That others test products and apply UL’s certification marks simply is not probative that the marks are used for other than certification. Certainly, on this record, there is no evidence that these certification marks are used, by anyone, as trademarks or service marks. Instead, Midwest merely complains about who applies the mark to the product. Midwest in effect argues that third party application of a certification mark constitutes per se misuse-use for a purpose other than certification. But Midwest offers no authority to support such a proposition.

The statute, however, plainly does not require that, as the registrant, UL itself must test the products and declare to the public that items carrying UL marks meet UL standards. It merely authorizes cancellation of a registration if the registrant allows use of the mark for purposes other than certification. In addition, the general practice, in accord with the statute, allows for a third party to apply the certification mark.

Thus, both registrations at issue here include a provision that the certification marks may be used by “persons authorized by [UL]” to indicate that “representative samplings” of the products conform to safety standards established by UL. See Joint App. at 13, 15 (registrations). The registrations clearly state what the marks do and do not represent to the public. The registrations certainly do not require UL to represent that UL itself tests the items.

UL agrees that UL marks, when applied by Midwest to Midwest’s products, are Midwest’s declaration of compliance with UL standards. The Board concluded that UL’s use of the UL mark as a manufacturer’s declaration that the marked product complies with UL standards is “a reasonable one designed to reflect the realities of the limitations involved in inspecting and certifying a large number of different products. We do not find that such a statement in any way constitutes a ground for cancelling the certification marks...”We cannot disagree.

We review findings of fact made by the Board to determine whether they are clearly erroneous. Midwest presented no evidence to the Board that UL allowed use of its marks for purposes other than to certify that representative samplings of a product comply with UL standards. The Board’s finding that UL does not use the mark for purposes other than certification thus cannot be clearly erroneous. The Board therefore correctly decided that section 1064(e)(3)’s basis for cancelling UL’s registrations has not been established.

II. Failure to Control Use of the Marks

Midwest also asserts UL does not control the use of the UL marks as required under 15 U.S.C. § 1064(e)(1), and cancell-ation is thus necessary. Section 1064(e)(1) provides for cancellation if the certification mark registrant“does not control, or is not able legitimately to exercise control over, the use of such mark.”

The purpose of requiring a certification mark registrant to control use of its mark is the same as for a trademark registrant: to protect the public from being misled. In the case of a certification mark registrant, the risk of misleading the public may be even greater because a certification mark registration sets forth specific representations about the manufacture and characteristics of the goods to which the mark is applied.

As the purpose of the control requirement is to protect the public, the requirement places an affirmative obligation on the certification mark owner to monitor the activities of those who use the mark.

To obtain cancellation of the UL certification mark registrations, Midwest has the burden to demonstrate by a preponderance of the evidence that UL failed to exercise control over use of its marks. The statute, however, does not define “control” or otherwise indicate the degree of control that it requires. Clearly, the statutory requirement cannot mean absolute control, because it would be impracticable, if not impossible, to satisfy. The Board stated:“The specific degree of control necessary in determining whether or not a certification mark should be cancelled depends, of course, on the particular facts presented in each case.” While interpretation of the statutory term“control” is a question of law which we review de novo, the Board explicated a rule of reasonableness which, because reasonableness cannot be gauged by some abstract standard, will vary depending on the particular facts. The“control” requirement of the statute means the mark owner must take reasonable steps, under all the circumstances of the case, to prevent the public from being misled.

This standard for demonstrating that a registrant has exercised control over the use of its marks is entirely consistent with the precedent of this court, which speaks in terms of “adequate control.”

The Board found that UL has “a vast network of inspectors making hundreds of thousands of inspections of thousands of different products across the country” and that UL conducts comprehensive follow-up programs to ensure compliance with UL standards. The Board also stated that UL demonstrated “considerable diligence in controlling the use of its marks; that while the inspection and follow-up procedures are not 100% accurate or foolproof, we know of no such requirement...”

Midwest relies upon two types of evidence to challenge the Board finding on control. First, it relies on the results of impact tests performed on certain conduit and elbows carrying the UL mark. The Board found the tests were not “shown to be reliable and are entitled to very little, if any, probative value.” We cannot overturn that finding as clearly erroneous because Midwest’s testing of PVC conduit and elbows did not account for the age of the elbows tested or their exposure to sunlight, although it is undisputed that age and sunlight make PVC conduit brittle. Also, impact tests were performed on PVC elbows and Midwest concedes “that the [UL] standards for elbows do not require impact tests.” The Board, therefore, appropriately discounted the impact tests.

The second type of evidence Midwest employs to demonstrate UL’s failure to control use of its marks is the proven use of counterfeit UL marks on certain conduit manufactured by National, a competitor. The Board concluded that this limited counterfeiting problem was not sufficient to cancel UL’s registrations and that UL exercised control over subsequent use of its marks by this company, based on findings about UL’s responsiveness and the stringency of its corrective action. It included inspections being done solely by UL personnel and inspection of not just a “representative sampling,” all that is required by the registrations, but of 100% of the conduit. These findings have not been shown to be clearly erroneous.

Because Midwest has not shown that the findings supporting the reasonableness of UL’s control are clearly erroneous, we must sustain the Board’s determination that UL’s control avoids cancellation of its registrations in these proceedings.

We hold Midwest has failed to prove either asserted basis for cancelling UL’s registrations. We therefore need not, and do not, reach the remaining issues: Whether a certification mark registration may be partially cancelled for failure to control use of the mark on a single class of goods; and whether the doctrine of licensee estoppel bars Midwest’s petition for cancellation. Finally, UL’s request for sanctions under Rule 38 of the Federal Rules of Appellate Procedure on the ground of a frivolous appeal is denied. The decision of the Board denying cancellation is

1. 本案要解决的主要争议是什么？

2. 本案中塑料厂的主要主张是什么？商标复审委员会对此的意见是什么？