TMEP 1301.01(a)(ii): For the Benefit of Others

October 2017 Edition of the TMEP

Previous: §1301.01(a)(i) | Next: §1301.01(a)(iii)

1301.01(a)(ii)    For the Benefit of Others

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970);  see TMEP §1301.01(b)(i).  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.

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").

Performing research and development, or other routine or expected activities, in the production or sale of one’s own goods, and not for the benefit of others, are not services for purposes of service-mark registration. See In re Dr. Pepper Co., 836 F.2d at 509, 5 USPQ2d at 1208 ("[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine' in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product. This interpretation is a refinement of the basic principle that the service for which registration is sought must be rendered to others."); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1063 (TTAB 2016) (finding applicant’s provision of information regarding flowers and conducting promotional events to promote the sale of its flowers did not constitute a separately registrable service, but were merely incidental to the production or sale of the goods).

Collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others. See TMEP §1301.01(b)(iii).

Offering shares of one’s own stock for investment is not a service because these are routine corporate activities that primarily benefit the applicant. See TMEP §1301.01(b)(iv).  On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees. Am. Int’l Reins. Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978).

Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).

See TMEP §1301.01(b)(vi) regarding conducting clinical trials.