Test Your TTAB Judge-Ability on this Specimen of Use for Health-Care Administration Services
Gateway Health Plan sought to register the mark BEEMSS for "administration of Medicaid managed health care plans," but Examining Attorney Steven Jackson maintained that Applicant's specimen "fails to show proper use of the applied for mark in the sale or advertising of the recited services." Applicant's specimen of use, in its entirely, may be viewed by clicking on the link below. What do you think? In re Gateway Health Plan, L.P., Serial No. 77063878 (October 26, 2010) [not precedential].
To satisfy the Section 45 definition of "service mark," a term must be used in such a manner that it would be readily perceived as identifying the services and distinguishing their source. "The mere fact that a designation appears on a specimen does not make it a service mark."
The critical question is "whether the asserted mark would be perceived as a source indicator for the identified services." The specimen must show a direct association between the mark and the services.
Here, the applied-for mark appears in the text of a fact sheet or brochure. The Examining Attorney argued that the alleged mark "appears to be only a feature in its 'PCM' program." It is buried in the text and would not be perceived as indicating the source of Applicant's services.
Gateway contended that the brochure describes "at least (5) times Applicant's services of 'Administration of Medicaid managed health care plans.'" Moreover, the SM symbol appears adjacent the mark.
The Board agreed with the Examining Attorney. First, the use of the SM symbol does not change the commercial impression of the applied-for mark, "which as used in the specimen only informs the consumer of a feature of a personalized health care treatment plan." The SM symbol merely indicates that Applicant intends to claim that the designation is a service mark, not that the public perceives the term as a source indicator.
The letters BEEMSS are not associated with the recited services; they are simply an abbreviation of a group of attributes that Gateway measures in evaluation a member's access to health care.
And so the Board affirmed the refusal to register.
TTABlog comment: I think this case falls in the WYHA? category, don't you?
Text Copyright John L. Welch 2010.
posted by John L. Welch @ 11/08/2010
3 comments
3 Comments:
I suppose that based upon TTAB precedent and the TMEP, this was the right decision, but I dispute both TTAB precedent and the TMEP to the extent that they stipulate that a servicemark specimen must enunciate the service.
That enunciation is not required by the statute and it is not required for trademarks. If you are registering Chevrolet for automobiles, you can submit a specimen showing the word Chevrolet as you glue it to the car and simply tell the PTO you use it on the car.
But when it comes to service marks, nope. They say the specimen must not only show the mark, but also it must state the services for which you are seeking registration. They refuse to take the applicant's word for the fact that the applicant uses the mark in connection with the services.
Why do they assume that service mark applicants are not trustwothy but accept he word of trademark applicants?
If you look at the early cases in the TMEP section, the issue was whether the applicant was offering the named services at all, and the CCPA added as a makeweight argument the point that the specimen did not mention the service. The TMEP scriveners morphed that into a rule that says that specimens must mention the service.
I call it the bureaucratic runaround.
I always tell people make your mark stand out like a "bug." If it looks like a mark to the examiner, it makes it easy to approve.
If it is hidden in the text somewhere on a page it does not act like a mark.
The client probably got ripped thousands of dollars here. These type of cases are just a waste of client's money and the Board's time. We had one of these that was fixed for $200 after the prior firm spent $15K trying to fight through the TTAB. They never asked the client for an alternate specimen or told them they could create a new one. Here the attorney should never have submitted this specimen. An extension to file SOU would have been the better way to go here.
This would have been so easy to fix. Just make the client create a new specimen that shows the mark the way a mark should be shown.
If the attorney already blew it and cannot convert back to 2(b) then just refile the application with a newer specimen. It will probably be approved before the TTAB appeal even starts.
I have to wonder though, if this is the only use they have for the mark, why do they need to register it anyway?
I agree this shouldn't have gone to the TTAB. TTAB was sooo right, nobody should have appealed the examiner's refusal. That said, client's want to to do this stuff all the time and it's hard to tell them they're wrong. But it's our job to....
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