Thursday, May 04, 2006

Citable No. 26: TTAB Reverses Failure-to-Function Refusal of "INFOMINDER" Service Mark

In its 26th citable decision of 2006, the TTAB reversed the PTO's refusal to register (under Sections 1, 2, and 45 of the Trademark Act) the mark INFOMINDER for "reminder services in the area of upcoming important dates and events; personal scheduling services provided via the Internet." The Board reviewed Applicant's specimen, website, and brochure, concluding that the PTO was wrong in contending that the mark "does not function as a service mark to indicate the source of the services." In re Ancor Holdings, LLC, 79 USPQ2d 1218 (TTAB 2006).

Applicant's specimen of use

(click on illustration for larger view)

The Examining Attorney maintained that the "specimen of use shows use of the mark for goods, not services." He focused on the words "tool" in Applicant's specimen and the words "product" and "suite" in the website and brochure, in contending that "the perception of the mark on the specimen is for software that is used in the performance of the services, but not as a source indicator for the services themselves."

Applicant Ancor asserted that it provides an on-line, web-based service, and "does not provide, download, or sell any type of software."

The Board noted that it must base its "determination of public perception of applicant's mark on the manner of use of INFOMINDER in the advertising which has been submitted as a specimen."

"Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record 'bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.'"

As to the word "tool," the Board asserted that the Examining Attorney was reading that term too narrowly. "A more appropriate definition of 'tool' used in the context of applicant's services is, 'Something regarded as necessary to the carrying out of one's occupation or profession.'" Thus, applicant's customers "presumably would be seeking a business tool for scheduling purposes."

In view of the "ambiguity" of the word "tool" and the "blurring between services and products that has occurred with the development and growth of web-based products and services," the Board deemed it "important" to review all of the information in the record in order to understand how the mark will be perceived by customers.

In that light, the Board concluded that INFOMINDER does indeed function as a service mark. Applicant's specimen "in today's commercial context, sufficiently creates in the minds of purchasers an association between the mark and applicant's identified reminder and scheduling services."

The Board therefore tossed out the refusal to register.

Text Copyright John L. Welch 2006.


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