## Facts

- A Canadian corporation, through its subsidiary Canadian Pacific Enterprises Limited, sought to register three service marks on the Principal Register: two word marks (English and French) and a nine-geese design.
- The asserted services (as amended) involved offering shares to the public tied to participation in a portfolio of companies, providing a shareholder dividend reinvestment and share purchase plan, and issuing reports on portfolio progress.
- The marks were used in connection with a Shareholder Dividend Reinvestment and Share Purchase Plan allowing registered shareholders to reinvest dividends and make optional cash payments to acquire additional shares.
- Participation was limited to registered holders of the company’s common shares; non-shareholders could not join the plan.
- The examining attorney refused registration, concluding the applicant was not rendering a “service” within the meaning of Lanham Act § 45.
- The Trademark Trial and Appeal Board affirmed the refusal, and the applicant appealed to the Federal Circuit.

## Issues

1. Whether a dividend reinvestment and share purchase plan offered only to a company’s own shareholders constitutes “services” rendered “to others” under Lanham Act § 45, permitting registration as a service mark.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register the marks.
- The court held the plan did not constitute a registrable “service” rendered “to others” under Lanham Act § 45.
- The court reasoned that shareholders, in this context, were not a “public” purchasing a separate commercial service; the plan was incidental to stock ownership and the issuer–shareholder relationship.
- The court distinguished precedent recognizing limited-audience services (e.g., employee benefit plans) as potentially registrable, concluding the activity here was too closely tied to the company’s inherent functions of issuing shares, paying dividends, and communicating with investors.

## Legal Principles

- A registrable service mark requires an underlying “service” rendered “to others,” meaning a segment of the public that purchases and benefits from the service as a service.
- The fact that an offering is limited to a discrete group does not automatically defeat service-mark status; the dispositive question is whether the activity is a separable, market-facing service rather than an internal or inherent incident of the provider’s primary business relationship.
- Corporate arrangements that facilitate management of dividends and acquisition of the corporation’s own shares for existing shareholders generally are not “services” under § 45 merely because they provide convenience or financial benefit.

## Conclusion

Because the dividend reinvestment and share purchase plan functioned as an incident of share ownership and the issuer’s ordinary investor-relations and capital-raising activities, it was not a “service” rendered “to others” under Lanham Act § 45, and the proposed marks were not registrable as service marks.


In re Canadian Pac. Ltd., 754 F.2d 992 (Fed. Cir. 1985)