Wednesday, August 12, 2015

TTAB Precedential No. 25: "WALK-IN-SHOPPER" Not Used As Source Indicator for Applicant's Services

On July 30, the Board re-designated as precedential (here) its decision in In re Graystone Consulting Associates, Inc., 115 USPQ2d 2035 (TTAB 2015) [precedential], affirming a refusal to register the mark WALK-IN SHOPPER for "business training consultancy services" on the ground that the specimen of use (shown below) failed to show use of the mark in connection with the identified services.

click on image for larger picture

The Board observed that "[a] service mark must be "used in such a manner that it would be readily perceived as identifying" the services, which is "determined by examining the specimens of record in the application." "A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage."

Applicant Graystone argued that its specimen was acceptable because it "show[s] the business training consultancy services identified in the ... sentence[] of the body of the flyer 'Graystone offers communication training regarding the Walk-In Shopper.'"

Examining Attorney W. Wendy Jun maintained that the applied-for phrase WALK-IN SHOPPER "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 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?Is this decision worthy of the "precedential" designation? Answers: yes, yes, and no.

Text Copyright John L. Welch 2015.


At 9:27 AM, Anonymous Anonymous said...

I disagreed with this decision to begin with. I don't think it matters if the phrase refers to the customer, the services, or Santa Claus, as long as it is used in the course of advertising or rendering the services.

At 10:13 AM, Anonymous Anonymous said...

I don't like this decision. The mark is clearly being used as a trademark. The issues is whether it's descriptive or not. It's prominently displayed. They used the TM symbol (which ought to tell people is a mark). I think the specimen is fine and I bet there are tons of similar specimens that have drawn no objection. This issues is 2(e)(1).


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