Examining Attorney W. Wendy Jun maintained that the applied-for phrase "is the subject of applicant's consulting and training services" and is not being used as a source indicator for applicant's services. Consumers, she asserted, "would only likely view the mark as referring to the topic or category of applicant’s consulting services, not as the source of the consulting services."
The Board agreed with the examining attorney that the specimen does not show the the required connection between the mark and the services.
Applicant is using “Walk-In-Shopper” to identity a particular customer, i.e., one who “visit[s] a funeral home in advance to determine which firm they will choose.” This is evident from the use of the term in lower cases letters (“targeting the walk-in-shopper”) and from the content of the paragraph which is referring to an individual identified as a walk-in shopper.
Even though the "TM" symbol appears adjacent the term, the mere reference to "training and consulting" is not enough to make the association between mark and services. The text that follows regarding the target customer makes clear that the phrase is used to refer to the customer, not to the services.
And so the Board affirmed the refusal.
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TTABlog note: Is this a WYHA? Was the appeal dead on arrival?
Text Copyright John L. Welch 2015.
So what if the phrase is being used to refer to the consumer? The phrase is being used in the course of advertising the services, which qualifies as trademark use. I would reverse this, and I think generally that the USPTO is too strict when it comes to specimens.
ReplyDeleteI wonder why this wasn't a 2e1 refusal instead? Maybe for procedural reasons - the examiner didn't identify the descriptiveness until examining the SOU and it was then easier to issue a use-Based refusal?
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