TTAB Affirms Refusal to Register Rectangular Background Design Due to Failure to Function as a Trademark

Trademark Examining Attorney Hanno Rittner issued refusals in two applications to register the mark shown below, comprising a background design of adjacent white and blue rectangles outlined in blue, for various communications and computer-related consultation services, on the ground that the applied-for mark fails to function as a service mark. The Board affirmed. In re Ingram Micro Inc., Serial Nos. 78321253 and 78321254 (November 15, 2011) [not precedential].

Applicant argued that the refusals, issued after Applicant submitted its Statements of Use in the two cases, was "untimely" because the Examining Attorney should have been raised earlier in the prosecution because the PTO was on "clear notice" of the nature of the mark.

The Board pointed out that, when the refusals to register were first made in 2004, the 3rd edition of the TMEP was in place, and the Examining Attorney followed the procedure set forth therein by deferring issuance of a failure-to-function refusal until specimens were submitted. Although subsequent revisions of the TMEP made some changes, "[t]he fact that procedure altered somewhat by the time applicant filed its Statements of Use doe not provide applicant with a windfall."

Moreover, "questions of procedural missteps are not matters for Board consideration, but rather should be taken up by way of petition to the Director." In short, the Board will not consider whether the refusals were procedurally improper.

Applicant's specimens of use
Turning to the substantive refusals, the Board found that the proposed mark "is a background design and ... does not create a separate commercial impression sufficient to permit registration absent a showing of acquired distinctiveness. It is a simple geometric design." Use of two colors does not make this design inherently distinctive.

The Board found it "clear from applicant's specimens of use that applicant's mark does not make a separate commercial impression." Moreover, the specimens also include a red rectangle behind the word MICRO. "It seems unreasonable to expect consumers to recognize and pull out the white-and-blue rectangle as a service mark, yet be unaffected by the red rectangle featured in the overall design.

Text Copyright John L. Welch 2011