In Re Dr Pepper Company
1987 U.S. App. LEXIS 17105, 836 F.2d 508, 5 U.S.P.Q. 2d (BNA) 1207 (1987)
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Rule of Law:
An activity conducted to promote the sale of one's own goods does not constitute a registrable "service" under the Trademark Act unless it is qualitatively different from, or over and above, any activity normally or routinely involved in promoting such goods.
Facts:
- Dr Pepper Company produces and sells DR PEPPER soft drinks.
- To promote sales, Dr Pepper created a promotional contest featuring a character called the PEPPER MAN.
- In the contest, cash prizes were awarded to households found to have certain quantities of unopened DR PEPPER products.
- Households could also win by possessing 'I’M A PEPPER' coupons, which were obtainable free of charge.
- Dr Pepper used the name PEPPER MAN on promotional materials related to the contest.
Procedural Posture:
- Dr Pepper Company filed an application with the U.S. Patent and Trademark Office (PTO) to register PEPPER MAN as a service mark.
- The PTO's examining attorney refused registration.
- Dr Pepper Company appealed the refusal to the PTO's Trademark Trial and Appeal Board (TTAB).
- The TTAB affirmed the examining attorney’s refusal to register the mark.
- Dr Pepper Company, as appellant, appealed the TTAB's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does conducting a contest to promote the sale of one's own goods constitute a registrable 'service' within the meaning of the Trademark Act of 1946?
Opinions:
Majority - Nies, Circuit Judge
No. Conducting a contest to promote the sale of one's own goods is not a registrable 'service' under the Trademark Act. The court reasoned that for an activity to be a registrable service, it must be something more than a routine or ordinary promotional activity incidental to the sale of one's own goods. Citing precedent like In re Radio Corp. of Am. and In re Orion Research Inc., the court affirmed the principle that services that are normally 'expected or routine' in connection with selling goods are not registrable. The public perceives such activities not as a service rendered to them, but as a sales activity for the benefit of the seller. The court gave deference to the Trademark Trial and Appeal Board's consistent interpretation that promotional contests are not services 'over and above' what is normally expected from a seller of goods. This interpretation prevents a 'proliferation of registrations' for every marketing activity a company undertakes.
Dissenting - Newman, Circuit Judge
Yes. The dissent argued that federal registration for the PEPPER MAN mark should be granted because the Lanham Act's definition of 'services' should be liberally construed to align with modern business practices. The dissent contended that the PEPPER MAN contest is a distinct promotional service, separate from the ordinary advertising of DR PEPPER soft drinks, and that it confers a benefit on the public. Citing precedent such as In re Congoleum Corporation, the dissent noted that using a mark for a promotional activity that is different from the product's trademark supports the conclusion that it is a separate service. The majority's decision, in the dissent's view, needlessly restricts access to the benefits of federal registration and is hostile to the public purposes of the Lanham Act.
Analysis:
This decision solidifies the distinction between a registrable service and a non-registrable promotional activity under the Lanham Act. It establishes that activities which are ordinary, routine, or merely incidental to the sale of one's own goods do not qualify as services rendered 'to others' for the purpose of service mark registration. The ruling creates a significant hurdle for companies seeking to register marks for their marketing campaigns, requiring them to demonstrate that the activity is qualitatively different from standard promotion. This prevents the 'proliferation' of service mark registrations for every marketing gimmick and reinforces the core purpose of service marks as identifiers of distinct services, not just adjuncts to the sale of goods.
