Tuesday, November 20, 2012

TTAB Affirms Genericness Refusal of PARTNER SERVICES for Business Consulting

The Board affirmed a refusal to register PARTNER SERVICES on the Supplemental Register, finding the phrase to be generic for "business development consulting services." Examining Attorney Barney L. Charlon provided the "clear evidence" of genericness required to establish a prima facie case, which Applicant failed to overcome. In re ScanSource, Inc., Serial No. 77731385 (October 19, 2012) [not precedential]

The Board first found that the genus of services is adequately defined by Appliant's recitation of services. This genus encompasses "the provision of services to partner companies," as suggested by the Examining Attorney.

The Board observed that Applicant is a "value-added distributor of specialized technologies providing, inter alia, voice, data and telephony products." Applicant stated that it offers “valuable partner services to its resellers, including system integration, marketing support professional services, education and training, and e-commerce solutions."

The question, then, was whether "Partner Services" is understood by the relevant consuming public to refer primarily to the genus of services. The relevant public consists of "entrepreneurs requiring assistance in business development, including those businessmen and businesswomen who are value-added resellers of specialized technologies, including voice, data and telephony products."

Third-party webpages and Internet articles convinced the Board that "in the business context, 'partner services' is a term broadly used to identify those services offered to another with whom the offering party has a business relationship." Several webpages used "partner services" as a topic heading. Some webpages used the term "partner services" in the reseller context. This evidence established a prima facie case of genericness.

Applicant submitted three third-party registrations in support of its case, but only one was a Principal Registration. One of the three registrations was cancelled, while the one on the Principal Register, for the mark PARTNERS INVESTMENT SERVICES, is of limited probative value. The third is for SERVICE PARTNER PLATFORM, but it was unpersuasive since the word order is different from the subject mark, and the listed services are also different from those of the subject application. In any event, the Board must decide each case on the record before it.

And so the Board concluded that the PTO established a prima facie case by clear evidence that the designation “PARTNER SERVICES” is generic for "those business development consulting services to business involving the use of partners in rendering those services, which fall within applicant’s recitation of services."

TTABlog comment: Perhaps there should be a new ground of refusal: Section 2(j), primarily merely business jargon.

Text Copyright John L. Welch 2012.


Post a Comment

<< Home