Monday, March 26, 2012

Precedential No. 16: "CEI" Identifies a Process, Not a Service, So TTAB Affirms Refusal to Register

The Board affirmed a refusal to register the proposed mark CEI for "technical consultation in the field of hydrocarbon and chemical processing, pipeline, and power industries," on the ground that the specimens failed to show use of the mark for the identified services. The Board agreed with Examining Attorney Jason Paul Blair that CEI (an initialism for "carbon emissions index") is used only to identify a process by which Applicant derives a particular measurement, and not as a source identifier. In re HSB Solomon Associates, LLC, 102 USPQ2d 1269 (TTAB 2012) [precedential].

"A term that identifies only a process, style, method, system or the like is not registrable as a service mark." TMEP Section 1301.02(e). The Examining Attorney maintained that CEI is not used in the context of providing consultation services.

Applicant argued that if it "uses CEI in connection with benchmarking that it provides as part of the consulting services, then the mark is being provided in connection with the services." [Shouldn't that be "used" rather than "provided"? - ed.]. Applicant also asserted that its customers are sophisticated and know that Applicant's only business is to provide technical consultation services.

The Board, however, observed that customer sophistication is "largely inapposite" to the issue at hand. And as to use of the CEI metric by Applicant in providing its services, the Board was similarly unimpressed:

The fact that the CEI process, measurement, metric, benchmark or standard may be used by applicant in the performance of its technical consulting service does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process.

And so the Board affirmed the refusal to register.

TTABlog note: The decision includes a rather confusing discussion of the Examining Attorney's objection to evidence attached to Applicant's brief, and whether the Examining Attorney had waived that objection. He hadn't, but it didn't matter anyway.

Text Copyright John L. Welch 2012.


At 11:41 AM, Blogger Chris Palermo said...

This is a common issue for high technology applicants, who want to contends that the name of (or acronym or initialism for) a particular feature or technology, provided as part of a product or service, is a mark. The situation calls for active dialog between trademark counsel and company to prepare proper specimens showing genuine service mark usage before submission to the USPTO. My personal experience is that the type of result in this case is often avoidable, although it may be inevitable if counsel does not engage the company or if the company insists on submitting the kind of specimen that was used here.


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