Wednesday, June 12, 2019

Precedential No. 13: TTAB Affirms Failure-to-Function Refusal of UNLIMITED CARRYOVER for Telecommunication Services

The Board affirmed the USPTO's refusal to register the term UNLIMITED CARRYOVER for telecommunication services, finding that the phrase, as used on applicant's specimen of use (shown right), failed to function as source indicator for the recited services. In re TracFone Wireless, Inc., 2019 U.S.P.Q.2d 222983 (TTAB 2019) [precedential] (Opinion by Judge Susan J. Hightower).

The Board observed that the critical question in determining whether a purported mark serves as a source indicator is whether the term would be perceived as a mark by relevant consumers. To make that determination, one must look to how the term is actually used in the marketplace.

Examining Attorney Allison Holtz contended that, as displayed on the specimen of use, UNLIMITED CARRYOVER does not identify the source of the services and distinguish them from others, due to the placement of the phrase on the specimen and because the phrase is informational and common. The Board agreed.

[T]he wording UNLIMITED CARRYOVER is last in a list of apparent features of Applicant’s “No-Contract Plans with Talk, Text, Data and Unlimited Carryover® starting at $15.” The phrase is set in the midst of other clearly informational matter, far from the TRACFONE logo. This suggests that UNLIMITED CARRYOVER too is informational matter.

The Board saw nothing in the specimen to suggest that "Unlimited Carryover" identifies the source of telecommunications services, "any more than the other listed components of Applicant's plans: 'Talk,' 'Text,' and 'Data.'" Instead, the phrase "will be perceived as part of the services rather than as a mark designating the source of the services."

The Board observed that the inherent nature of the phrase is merely informational. Several examples of  use of the term "carryover" by Applicant TracFone and by a third party supported a finding that UNLIMITED CARRYOVER "will be perceived as informational slogan which conveys information about carrying over unlimited data from on telecommunications billing cycle to the next rather than as a service mark."

While the record may not support a finding that UNLIMITED CARRYOVER is a widely used phrase, it does support a finding that the meaning of the phrase simply provides information about the services, and Applicant’s manner of use underscores and illustrates that meaning, and how it would be perceived by consumers as such.

TracFone pointed to its ownership of a registration on the Supplemental Register for the same mark for essentially the same services. The specimen for that registration is identical to the specimen here. [Thus the use of the registration symbol on the specimen - ed.]. The Board was not impressed.

The specimens for the registration on the Supplemental Register are not of record, and Applicant’s argument is circular. The registration also is more than eight years old; consumer perception of UNLIMITED CARRYOVER may have changed with the passage of time.

The Board further observed that each case must be decided on its own merits. "The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney in another application. [citations omitted]. This is particularly the case when the prior registration is nearly a decade old and involves the rapidly evolving field of telecommunications."

Further, an applicant may not resort to Section 2(f) to register a term that does not identify source and is merely informational because such a term does not meet the statutory definition of a mark [Section 45 of the Lanham Act] and is therefore unregistrable. [Contrast this with merely ornamental matter - ed.].

Conclusion: Considering the entire record, the Board found that TracFone's specimen of use was insufficient to show use of UNLIMITED CARRYOVER as a service mark for the identified services.

Read comments and post your comment here.

TTABlog comment: Suppose TracFone had provided survey evidence that the phrase serves as a source indicator? Would that be considered de facto secondary meaning, as in the case of a generic term, and thus non-probative?

Text Copyright John L. Welch 2019.


At 11:27 AM, Blogger Bob Klein said...

I was going to suggest a survey, but then got to your comment. Are you saying that a survey would not be helpful?

At 9:21 AM, Blogger Pamela Chestek said...

If it was unregistrable per se because it was merely informational, how did it get on the Supplemental Register?

At 1:47 PM, Blogger John L. Welch said...

"Generic terms 'cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.'" Royal Crown Co. v. Coca-Cola Co., 127 U.S.P.Q.2d 1041 (Fed. Cir. 2018). Is the Board saying that the applied-for phrase falls in the same boat?

At 10:38 AM, Anonymous Anonymous said...

If a term is merely informational, there is no "mark" that can acquire distinctiveness and therefore evidence of acquired distinctiveness would be treated the same way as trying to show a generic term has acquired distinctiveness, i.e., it would not be probative, even if there is evidence of "de facto" acquired distinctiveness. See TMEP §1202.04(d).

At 6:03 AM, Blogger John L. Welch said...

Wouldn't evidence of acquired distinctiveness help in the determination of whether the phrase is "merely informational" in the first place? To say that it's informational and therefore can't be a trademark begs the question, doesn't it?

At 9:23 AM, Anonymous Anonymous said...

I see your point but I think it puts the cart before the horse. If I'm understanding your point correctly, you are saying that, if an applicant submits evidence that the phrase has acquired distinctiveness, then that would demonstrate that the phrase is not merely informational. However, the determination of whether the phrase is informational is simply a "yes" or "no" question. Thus, if the initial analysis shows that the phrase is informational, then that closes the door to a discussion of acquired distinctiveness because a merely informational phrase that is commonly used by a wide variety of parties to convey that informational message cannot be exclusively claimed by one party as a source identifier. However, if the phrase is not widely used, then it would not be informational and thus no need to show that it has acquired distinctiveness.

In this sense, it is no different than the analysis of a generic mark. Using your argument, if an applicant provides evidence of acquired distinctiveness of a generic term, then wouldn't that show that the term is not, in fact, generic and thus registrable? I'm sure that it is possible that some entity, through enough advertising and promotion, could show that a generic term has acquired distinctiveness such that it points only to that one entity, but it can still never be registered as a mark.

So, no, I don't think evidence of acquired distinctiveness helps determine whether a phrase is "merely informational"; that determination would need to be made using objective evidence of wide use of the phrase by others to convey a purely informational message.


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