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 In re Gateway Health Plan, L.P., Serial No. 77063878 (October 26, 2010) [not precedential].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.