Tuesday, January 29, 2008

Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

In its first precedential decision of 2008, and an unusually dull ruling at that, the Board reversed the PTO's Section 2(e)(1) refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2 [SUGAR and COTTON disclaimed], finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services." In addition, the Board reversed the PTO's refusal of registration based on the ground that Applicant's specimens fail to show use of each mark in connection with the identified services. In re ICE Futures U.S., Inc., 85 USPQ2d 1664 (TTAB 2008) [precedential].

Mere Descriptiveness: The PTO argued that the words SUGAR and COTTON identify the type of commodity being traded, and the wording NO. 2, NO. 11, and NO. 14 identify the contract numbers that the applicant provides for its future exchanges. Applicant pointed out that investors trade, buy, or sell contracts from each other, according to the established rules set forth by the SUGAR NO. 11, SUGAR NO. 14, and COTTON NO. 2 contract terms.

Applicant ICE asserted that none of the more than 100 commodity exchanges worldwide offer services concerning the SUGAR NO. 11, SUGAR NO. 14, or COTTON NO. 2 contracts. Those services are exclusively associated with Applicant. And the numbers 2, 11, and 14 are arbitrary.

The Board noted that "While the full marks identify contracts with detailed, uniform terms, the record established that applicant created those terms for its exclusive use in the rendering of its services." Third-party references to those terms "shows a consistent, explicit association with applicant."

The Board found that the marks "do not identify a commodity applicant sells, as the Examining Attorney argues." Furthermore, there is no evidence that others need to use these terms to compete. Accordingly, the marks are not merely descriptive of the services.

Specimens of Use: Applicant's specimens of use comprised printouts from its website discussing the trading specifics (hours, ticket symbol, etc.). "At the top of the page appears a link to the contract specifications for futures trading associated with the Subject Marks." Below the link is a header that states, e.g., FUTURES CONTRACT ON SUGAR NO. 14 (DOMESTIC)." [See below].

Click on photo for larger picture

The Examining Attorney argued that the term SUGAR NO. 14, for example, appearing on the specimen merely identified the name of the contract and did not function as a source indicator for the services.

The Board ruled that these specimens were sufficient, "based on the context of use and the history of applicant's exclusive use in the industry."

"In the cases we consider here, when we view the full context of the use of the marks, including the "futures contract" wording, we conclude that the inclusion of this wording would not interfere with the perception of the marks as service marks for futures exchange services by relevant consumers. While the marks may also identify the futures contracts, again contracts which, on this record, are unique to applicant, the contracts are an integral and essential component of the identified services, that is, the operation of a futures exchange."

According to the Board, "the connection between the marks and services is evident and need not be stated explicitly as the Examining Attorney implies." The prominent use of the marks in the corresponding regulations further confirms their service mark status. [Huh? - ed.] Again acknowledging long and exclusive use of the marks, the Board concluded that the specimens show use of the marks as source indicators.

TTABlog comment: Wow, was the Board determined to rule in favor of Applicant, or what? Apparently if one uses a term long enough, and exclusively, the requirements for proper specimens of use go out the window. How in the heck are Applicant's specimens of use proper for its services? The specimens refer to the contracts and the terms. Is a contract a service? I just don't see it.

Text Copyright John L. Welch 2008.


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