Wednesday, August 13, 2008

TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?

Two genericness cases illustrate the proposition that a term may be generic for services if it names the "key aspect" or "central focus" of the services. In In re West Corp., Serial No. 78739755 (July 31, 2008) [not precedential], the Board found CONFERENCECALL.COM to be generic for "telecommunications services, namely audio and video teleconferencing." And in In re Pro Bono Institute, Serial No. 78762830 (July 22, 2008) [not precedential], it deemed CORPORATE PRO BONO generic for support services for entities providing charitable legal services.

In the first case, Examining Attorney Michael G. Lewis submitted dictionary definitions and encyclopedia entries for "conference call," as well as Internet website evidence indicating that the term "is used to refer to audio or video teleconferencing." The evidence, including West's own website, "established that conducting a 'conference call' is the focus, or a key focus, of applicant's audio or video teleconferencing services."

"Because the term 'conference call' names a key aspect of applicant's teleconferencing services, the term is generic for such services."

The addition of the TLD ".com" adds nothing of source-identifying significance. See In re, 87 USPQ2d 1100 (TTAB 2008). Therefore, the Board affirmed the refusal.

West also argued that the term was at most descriptive and had acquired distinctiveness. The Board, for completeness, considered that argument, but found West's proofs inadequate, particularly given the highly descriptive nature of the term. West had enjoyed "a degree of business success," but the record was "completely devoid of evidence that the relevant classes of purchasers of applicant's services recognize CONFERENCECALL.COM as a distinctive source for such services."

In the second case, Examining Attorney Linda Lavache relied on definitions of "corporate" and "pro bono," as well as numerous Lexis/Nexis articles containing references to "corporate pro bono."

Applicant argued that it is not a law firm and it does not render pro bono legal services. The Board, however, found that the evidence "clearly demonstrates that CORPORATE PRO BONO is generic for applicant's services."

"Although applicant itself is not providing the legal services, the term 'corporate pro bono' identifies the central focus or subject matter of its services, that is, establishing or helping corporate counsel or corporate legal departments establish and manage programs to provide corporate pro bono. A term that names the central focus or subject matter of the services is generic for the services themselves."

The Board relied on In re Reed Elsevier Properties Inc., 82 USPQ2d 1378 (Fed. Cir. 2007), in which the applicant argued that LAWYERS.COM was not generic because Applicant was not offering legal services. The CAFC agreed with the Board that "a central and inextricably intertwined element of [the claimed] genus is information about lawyers and information from lawyers."

Moreover, the evidence showed that CORPORATE PRO BONO is used by third parties not only to refer to the provision of legal services, but to refer generically "to the same type of services that applicant provides." Therefore the Board affirmed the genericness refusal.

Again, the Board considered Applicant's acquired distinctiveness claim, but found that Applicant had not met its burden of proof. There was "at least a question" as to whether Applicant was the "substantially exclusive" user of ther term, and no evidence that participants in Applicant's program recognize CORPORATE PRO BONO "as a mark uniquely associated with applicant." Applicant feebly pointed to its ownership of registrations for PRO BONO INSTITUTE, PRO BONO CHALLENGE, and LAW FIRM PRO BONO CHALLENGE, but of course these marks are not the legal equivalents of CORPORATE PRO BONO and are irrelevant to the issue of whether the latter term has acquired distinctiveness.

Text Copyright John L. Welch 2008.


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