Friday, August 04, 2006

TTAB Finds Website Specimen Acceptable for "ENKLAVVOICE" Service Mark

In a dubious decision, the Board reversed the PTO's refusal to register the mark ENKLAVVOICE for the service of "providing a website which permits users to create, populate, authorize and manage databases of sales data and information," finding Applicant's specimen of use (a page from its website) to be acceptable. In re PrintCo., Inc., Serial No. 78155673 (July 14, 2006) [not citable]. [Website page here; excerpt set out immediately below].

The Examining Attorney maintained that the specimen displays the mark "in a list of features of 'an enterprise content management and cross-media publishing system' dubbed 'enklavTDW;'" that each of the "enklav"-prefixed terms merely identifies a feature of the system; that it is unclear whether Applicant is offering a product or a service; and that potential customers would have to contact Applicant or download a brochure in order to understand the service being offered.

Applicant, on the other hand, contended that the specimens "clearly indicate that a potential customer can contact applicant for a demonstration of the services;" that the specimen is an Internet advertisement; and that the specimen indicates that the services are available through a hosted, secure Internet portal. [Note: the decision sometimes refers to specimens (plural) and sometimes to specimen (singular), though there seems to be only one].

The Board stated the issue to be "whether the specimen of record creates a direct association between Applicant's ENKLAVVOICE mark and the services specified in the application."

"... Trademark Rule 2.56(b)(2) provides that '[a] service mark specimen must show the mark as actually used in the sale or advertising of the services.' When appropriate, the Board has been fairly flexible in accepting service mark specimens. See In re Ralph Mantia, Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992)."

The Board found that Applicant's specimens "are 'advertisements' because they show the requisite direct association between the mark and the activities described thereafter."

"A customer or potential customer viewing applicant's specimen would readily perceive the ENKLAVVOICE mark as identifying the source of applicant's website that allows users to engage the advertising and marketing services described therein. As a result, applicant's specimen creates a direct association between the ENKLAVVOICE mark and applicant's recited services."

Contrary to the PTO's contention, the Board concluded that the website "does not merely describe features of a larger system, but rather describes, inter alia, the recited services available by means of its website under the applied for mark."

TTABlog comment: I find this particular decision as unsatisfactory as In re Dell, and for the same reason: I am a believer in requiring trademarks and service marks to STAND OUT. [See the TTABlog discussion here.] This mark does not.

Text Copyright John L. Welch 2006.


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