Tuesday, June 14, 2011

TTAB Affirms Refusal of FNBSECURE for Financial Services Due to Inadequate Specimens of Use

When this Applicant filed its Statement of Use, Examining Attorney W. Wendy Jun rejected the specimen (an email) and refused registration under Sections 1 and 45 of the Trademark Act, on the ground that the specimen did not show use of the applied-for mark FNBSECURE in connection with Applicant's banking and financial services. Applicant then filed substitute specimens (three emails, two account reports or statements, and a letter of correspondence) but those too were rejected, and so Applicant appealed. The Board affirmed the refusal. In re F.N.B. Corporation, Serial No. 77059129 (May 31, 2011) [not precedential].

Applicant argued that, taken together, the specimens are "part of a single and unitary experience, show[ing] both (1) the electronic delivery of the branded services and (2) the applied for mark on the services." According to Applicant, the customer sees the word FNBESECURE (TM) and is presented with a link to the recited services and information.

The Examining Attorney contended that the specimens do not identify the services, even when taken together.

The Board noted that, for services, the specimen must create a "direct association between the mark ... and the services, and there must be sufficient reference to the services to create this association." In other words, the mark must be used in a manner that would readily be perceived as identifying the source of the services. A specimen that shows only the mark, without referring to the services, is a dud.

Applicant's original email made no reference to its banking and financial services. Neither did the substitute specimens. Only the emails referenced the mark at all, but it is embedded in an email address: FNBsecure@fnb-corp.com. Customers are likely to view the FNBsecure portion as merely part of the website address rather than as a source identifier. Moreover, there is no indication of Applicant's services.

As to the argument that the specimens should be taken together, as "part of a single and unitary user experience," the Board acknowledged that it sometimes will consider separate specimens when it appears they are related or connected (e.g., screenshots of a single website or pages of a brochure), but here it found nothing to link or tie these specimens together.

In sum, the various documents "do not present applicant's proposed mark in a manner that would be perceived by potential customers as identifying applicant's banking and financial services and indicating their source."

And so the Board affirmed the refusal.

TTABlog comment: You'll have to look at the opinion to see the specimens in question. I think this case could have been awarded the WYHA? demerit badge. Do you?

Text Copyright John L. Welch 2011.


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