TMEP 1301.01(b)(i): Contests and Promotional Activities

October 2017 Edition of the TMEP

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1301.01(b)(i)    Contests and Promotional Activities

It is well settled that the promotion of one’s own goods is not a service. In re Radio Corp. of Am., 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp., 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).

However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service. In re U.S. Tobacco Co., 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).

Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest.  Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc., 179 USPQ 126 (TTAB 1973); In re Johnson Publ'g Co., 130 USPQ 185 (TTAB 1961).  However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field. In re Congoleum Corp., 222 USPQ 452 (TTAB 1984).

A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service. In re Miss Am. Teen-Ager, Inc., 137 USPQ 82 (TTAB 1963). See TMEP §1402.11.

See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.