Tuesday, July 16, 2019

TTABlog Test: Is This Electronic Brochure an Acceptable Specimen for Billboard Monitoring Services?

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The USPTO refused registration of the marks SMARTLINK (in standard characters) and SMARTLINK SYSTEMS (in the design form shown immediately below), for billboard monitoring services, deeming Applicant Outdoorlink’s specimens of use unacceptable. Outdoorlink provides consumers with scheduled photo capturing of roadside billboard advertisements. As specimens, it submitted a webpage printout and subsequently an electronic brochure as a substitute specimen. The Examining Attorney rejected both. She argued that “the [substitute] specimen shows use in connection with a system and software that allows customers themselves to monitor billboards, but it does not show that applicant actually provides monitoring services.” Applicant asserted that “its software captures and sends images of billboards, which ‘is part of a “monitoring” service that is provided to the user.’” How do you think this came out? In re Outdoorlink, Inc., Serial Nos. 85935503 and 85935508 (July 8, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under Section 45 of the Trademark Act, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services . . . .” “Relevant to Applicant’s specimens in this case, the webpage [or e-brochure] must show the mark used or displayed as a service mark in advertising services. Showing only the mark with no reference to, or association with, the services does not show service mark usage.” The service mark must therefore “sufficiently create[] in the minds of purchasers an association between the mark[s]” and the applied-for services.

In this case, the Examining Attorney maintained that Applicant’s specimens show use in relation to a camera system and software, but not monitoring services. Specifically, she referenced language in the e-brochure specimen (shown immediately below) that implies that Applicant provides “cameras, hardware products, and software applications and not an actual service.” Outdoorlink, contrarily, pointed to references in the e-brochure that emphasized that it, not its customers, provides images of billboards in accordance with the definition of monitoring (defined as “to watch, keep track of, or check usu. [sic] for a special purpose”). Furthermore, Applicant claimed that its customers pay a monthly subscription, making it clear that it is indeed providing a service, not merely a product.

(click on picture for larger view)

The Board compared the current issue to In re JobDiva, Inc. [TTABlogged here]. In that case, the CAFC vacated the Board’s decision which held that JobDiva’s mark was not in use for personnel placement and recruitment services. JobDiva supplied software that performed these services. Although the Board found that the website screenshots provided by JobDiva contained no reference to the services “other than supplying [Applicant’s] software,” the Federal Circuit disagreed, finding that “[t]he proper question is whether [Applicant] . . . performed personnel placement and recruitment services and whether consumers would associate [Applicant’s] registered marks with personnel placement and recruitment services . . . .”

In light of that decision, the Board considered whether Outdoorlink’s e-brochure specimen “sufficiently refers to the recited services of monitoring roadside billboards for business purposes and associates the mark with such services.” The Board found that consumers would associate Outdoorlink’s marks with the respective services: (1) The e-brochure features the marks with wording that specifies how Applicant’s services work; (2) Consumers have the ability to customize when pictures of their advertisements will be taken and sent; (3) The specimen references that the images will be delivered through “Smartlink Servers” “further amplify[ing] the consumer perception of the marks associated with monitoring services;” and (4) Customers frequently interact with Applicant and would be aware that the images are stored on Applicant’s server and made available through its app or website. Finally, the Board noted that the Examining Attorney did not demonstrate that Outdoorlink’s services merely accompanied the camera system and software. “While Applicant’s specimen shows the involvement of some equipment such as cameras, and refers at one point to a ‘proven product,’ the specimen does not give the impression that the marks only – or even primarily – apply to cameras, hardware, software or other goods.” And so, the refusal to register was reversed.

Read comments and post your comment here.

TTABlog comment: Is this a WYHRR? (Would You Have Refused Registration?).

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.


At 6:41 AM, Blogger Gene Bolmarcich, Esq. said...

Tthis should never have gone to an appeal. The EA was at fault for not being aware of In re Jobdiva and shame on the applicant for not citing it! That case was the end of the argument in this case.

At 8:01 AM, Anonymous Anonymous said...

It took the USPTO too long to realize that it was being flooded with fraudulent offshore applications. Now they are fianally doing something about it with requiring a US attorney and scrutinizing specimens more carefully.

But I hope cases like this are not a sign of things to come. Please please please just scrutinize specimens appropriately and don't go overboard like this one clearly did.

At 6:26 PM, Anonymous Anonymous said...

I'm seeing more and more WYHRR OAs the more I file applications and SOUs. Let's see the Board call these cases out some more.


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