Thursday, May 14, 2015

PRECEDENTIAL: Test Your TTAB Judge-Ability On This Service Mark Specimen of Use

The USPTO refused registration of the mark WALK-IN SHOPPER for "business training consultancy services" on the ground that the specimen of use failed to show use of the mark in connection with the identified services. Applicant argued that the text states that it offers communications training targeting the walk-in shopper. How do you think this came out? In re Graystone Consulting Associates, Inc., 115 USPQ2d 2035 (TTAB 2015) [re-designated as precedential on July 30, 2015].

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Examining Attorney W. Wendy Jun maintained that the applied-for phrase "is the subject of applicant's consulting and training services" and is not being used as a source indicator for applicant's services. Consumers, she asserted, "would only likely view the mark as referring to the topic or category of applicant’s consulting services, not as the source of the consulting services."

The Board agreed with the examining attorney that the specimen does not show the the required connection between the mark and the services.

Applicant is using “Walk-In-Shopper” to identity a particular customer, i.e., one who “visit[s] a funeral home in advance to determine which firm they will choose.” This is evident from the use of the term in lower cases letters (“targeting the walk-in-shopper”) and from the content of the paragraph which is referring to an individual identified as a walk-in shopper.

Even though the "TM" symbol appears adjacent the term, the mere reference to "training and consulting" is not enough to make the association between mark and services. The text that follows regarding the target customer makes clear that the phrase is used to refer to the customer, not to the services.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Is this a WYHA? Was the appeal dead on arrival?

Text Copyright John L. Welch 2015.


At 9:20 AM, Anonymous Anonymous said...

So what if the phrase is being used to refer to the consumer? The phrase is being used in the course of advertising the services, which qualifies as trademark use. I would reverse this, and I think generally that the USPTO is too strict when it comes to specimens.

At 10:14 AM, Anonymous Anonymous said...

I wonder why this wasn't a 2e1 refusal instead? Maybe for procedural reasons - the examiner didn't identify the descriptiveness until examining the SOU and it was then easier to issue a use-Based refusal?


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