Tuesday, April 28, 2015

Name of Dolphin Fails to Function as Service Mark for Aquarium, Says TTAB

Clearwater Marine Aquarium hoped to register the mark HOPE for marine aquarium exhibitions, but the Board affirmed the PTO's refusal to register the mark on the ground that, based on applicant's specimens of use, the term failed to function as a service mark for the recited services. Applicant pointed to the PTO's issuance of registrations for the marks SHAMU and WINTER for similar services, but the Board pointed out that each dolphin mark must sink or swim in its own evidentiary waters. In re Clearwater Marine Aquarium, Serial No. 85865851 (April 24, 2015) [not precedential).

After rescuing a baby bottle-nosed dolphin, applicant named the creature "Hope" and it featured the dolphin on its website. Applicant's specimens of use consisted of three webpages, each including a prominent display of the words CLEARWATER MARINE AQUARIUM, and referring to Hope the dolphin.

A service mark must be displayed "in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a 'direct association.'" Examining Attorney Katherine S. Chang maintained that the applied-for mark "is used simply as the name of the dolphin; it is not used in connection with the identified services and therefore does not serve as a source indicator."

The Board observed that the name of a dolphin could function as a service mark for exhibition services. Applicant argued that a direct connection is made to its services by the fact that applicant's specimens invite viewers to buy tickets and "visit" and "meet HOPE."

The Board, however, found that the term HOPE is used, in the submitted specimens, only as the name of the baby dolphin. "Promoting the exhibition of an animal named Hope as a feature of applicant's services does not automatically cause the name of the exhibited animal to function as an indicator of the source of Applicant's services."

Applicant suggested that the examining attorney had a "bias against an animal's name as serving as a trademark," but the Board pointed out that the attorney had indicated that her refusal might be overcome by the submission of other specimens of use.

Finally, applicant pointed to the SHAMU and WINTER registrations, but the Board refused to jump through those hoops, preferring to swim only with the dolphin at hand.

And so the Board affirmed the refusal to register.

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TTABlog note: Perhaps applicant should have called the dolphin "Mark."

Text Copyright John L. Welch 2015.


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