Thursday, January 18, 2018

Precedential No. 1: TTAB Okays Service Mark Specimen of Use Thanks to Applicant's Clarifying Information

In the first precedential decision of the new year, the Board reversed the USPTO's refusal to register the mark shown below, for various mailing services, overturning the Examining Attorney's rejection of applicant's specimen of use. The Examining Attorney maintained that applicant's webpage specimen described a self-service kiosk that consumers use to mail and ship items, but did not clearly indicate that applicant itself provides the subject services. The Board, however, ruled that "Applicant's explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417 (TTAB 2018) [precedential] (Opinion by Judge Cynthia C. Lynch).

Applicant's specimen of use displayed the applied-for mark next to the wording “pitney bowes” in the upper left corner of a webpage, directly above the wording “Outsourced Mailing Services.” The webpage text states that the postal kiosk pictured and described on the webpage “allows users to mail bills [and] ship packages.”

(click on photo for larger image)

According to the Examining Attorney, the specimen does not show that applicant actually provides the mailing and shipping services. It shows only that applicant provides a kiosk where a purchaser may purchase postage, weigh letters and packages and compare rates. "The Examining Attorney infers from the webpage reference to third-party services, such as those of USPS (the U.S. Postal Service), that the only services provided through the kiosk are not Applicant’s."

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See also Trademark Rule 2.56(b)(2). “To determine whether a mark is used in connection with the services described in the [application], a key consideration is the perception of the user.” Relevant to Applicant’s specimens in this case, the webpage must show the mark used or displayed as a service mark in advertising the services.

For advertisement specimens such as Applicant’s webpage, “[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.” Thus, an acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.”

Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.

In the response submitted and signed by Applicant’s in-house counsel, Applicant stated that “[t]hese kiosks are furnished by Applicant and are placed in different locations for use by consumers. Consumers use the kiosk to place postage on a letter or package, and then place that [letter or package] in the receptacle that is part of the kiosk system for Applicant to pick up the letter or package and place it in the mail stream for delivery.”

The response signed by Applicant’s in-house counsel clarified the specimen’s direct reference to “Mailing Services.” Cf. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014) (disregarding outside counsel’s conclusory unverified statements made without proper foundation regarding marketing of goods).

The Board found that applicant's webpage specimen "supports Applicant’s identified 'postal delivery services for letters and packages,' given the proximity of Applicant's mark to the reference to 'Outsourced Mailing Services,' along with the other explanatory text on the webpage (e.g., 'Kiosk allows users to mail bills [and] ship packages').

While the Examining Attorney reasonably found the specimen unclear as to whether Applicant, rather than a third party, provides the services, Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained.

The Board concluded that the webpage specimen "demonstrates use of the mark in a manner that creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class, and the explanation corroborates this in a manner that removes any doubt."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Rather fact-specific for a precedential decision, I think. Breaks no new ground as far as I can see. Apparently an in-house counsel's explanation is more probative than an outside counsel's representations (Tsubaki).

Text Copyright John L. Welch 2018.


At 1:44 PM, Anonymous Anonymous said...

Hopefully if it's not precedential bc of "new ground," it's designated precedential to send a signal to the EAs to scale back on issuing and digging heels on absurd objections.

As noted by TTAB, issuance of the objection was not absurd -- the specimen services were referenced (outsourced mail services), but "outsourced" did not necessarily mean Applicant was doing the mailing.

Fine. But then the attorney provided evidence that Applicant performs the mailing services.

That should have ended the matter without the need to waste money on attorneys' fees and spending tax dollars to pay for bureaucrats to mine the TMEP for technical minutiae. The specimen need only reference the services in conjunction w/ the mark. There is no statutory or regulatory requirement that specimen expressly say that Applicant performs the services. Of course, normally, that's implicit or explicit on the specimen. But here it wasn't on its face. The clarification by Applicant is all that was needed.

This was a sophisticated, well heeled applicant. Many typical applicants would have lost this battle due to attrition and inability to afford appeal.

At 12:47 PM, Blogger KGBESQ said...

The review of specimens at the USPTO needs to be updated to reflect the manner in which Applicants use their trademarks in the 21st century.

Many Examiners still use an outdated view to examine the sufficiency of the specimen. I was Applicant's former in-house counsel and felt it was an inappropriate refusal and, no matter how often we attempted to clarify the manner of furnishing the services, the rejection was maintained. The Board clearly understood and reversed the refusal.

I believe the cost of an Appeal (nominal fee) plus attorneys' fees is outweighed by the benefit of getting your trademark registered.

At 6:35 PM, Anonymous John Farmer said...

I believe the TTAB and USPTO meter out precedential opinions over time. That results in opinions that don’t break new ground being designated precedential, while opinions that break new ground are not made precedential because another new-ground decision “beat it out” for that time period. It’s unfortunate that whether an opinion is precedential is based upon bureaucratic load balancing rather than the value of the opinion to the trademark community.


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