Precedential No. 6: Applicant Complied With Rule 2.61(b) Request for Information, Says TTAB

The Board affirmed a refusal to register the term LOCKDOWN ALARM on the Supplemental Register, finding it to be generic for "Training services in the field of school safety, school security and crisis preparedness; training services in the field of security and crisis preparedness for schools, hospitals, college campuses, malls, public buildings, office buildings, and other commercial buildings." However, the Board reversed a refusal based on applicant's supposed failure to adequately respond to a Rule 2.61(b) request for information. In re Emergency Alert Solutions Group, LLC, 122 USPQ2d 1088 (TTAB 2017) [precedential]. (Opinion by Judge Masiello).

Genericness: The examining attorney relied on dictionary definitions of "lockdown" and "alarm," and on Internet web pages referring to warning devices called "lockdown alarms."

Applicant's specimen of use described its training program as covering "proper use of the Lockdown Alarm (such as circumstances warranting Lockdown alarm actuation) as well as procedures for effectively responding to the Lockdown Alarm evacuation." Thus it was clear that applicant's services includes training directly related to lockdown alarms.

The Board observed that a term that is the generic name of a particular category of goods is likewise generic for services directed to or focused on that class of goods. Furthermore, the CAFC has repeatedly treated the generic name of a "key aspect" of a service as generic for the service itself. See, e.g., In re Cordua Rests. Inc. 118 USPQ2d 1632 (Fed. Cir. 2016).

Applicant argued that "lockdown alarm" describes only an insignificant element of its complex training services. But the Board pointed out that many of the services that applicant offers are merely different aspects of the proper way to respond to a lockdown alarm. "It is clear from the record that the proper response to the sounding of an alarm is considered an essential skill and is the subject of many other training programs."

The subject matter of any training is not an insignificant “facet” of the training. Rather, it is quite literally the focus of the training. In this case, relevant customers would readily understand LOCKDOWN ALARM to refer to the type of training identified in the application.

And so the Board affirmed this refusal to register.

Rule 2.61 Request: The examining attorney asserted that applicant failed to respond suitably to three questions contained in the Rule 2.61 request for information. The Board disagreed. Applicant provided various documents in response to the request, and, in responding to the questions, "[a]pplicant was entitled to describe its services in its own words."

For example, one of the questions was "Do the applicant’s services involve or pertain to a LOCKDOWN ALARM?" Applicant, in its response, explained how its services might "involve or pertain to" an “emergency alarm.” The Board deemed the response to be adequate: "We find the Examining Attorney's question far too freighted with legal implications to require a 'yes or no' answer. The question comes close to subsuming the ultimate question of whether the proposed mark is generic."

We recognize that applicants normally are expected to answer “yes” or “no” to a question calling for such a response and that examining attorneys are not obligated to infer direct answers from narrative responses to such questions. However, examining attorneys should not elevate the form of an applicant’s response to an information requirement over its substance. We find that Applicant was reasonably forthcoming in its responses, and did not withhold the required information. It merely insisted on giving the information in its own words, coupled with submission of a sample of its advertising.

And so the Board reversed the refusal under Rule 2.61(b)

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TTABlog comment: It's not often that the Board sides with the applicant on a Rule 2.61 issue.

Text Copyright John L. Welch 2017.