WYHA? TTAB Affirms Refusal of PREVENTION CHAIN for Swine Disease Prevention Services: Specimens Failed to Show Use as a Mark
The Board affirmed a refusal to register the purported mark PREVENTION CHAIN for educational and informational services concerning "the treatment and management of infections in swine and other animals," finding that Applicant Boehringer's specimens failed to show use of the term as a source indicator for the services. "At best, the mark identifies a process or concept of swine disease prevention." Would You Have Appealed? In re Boehringer Ingelheim Vetmedica, Inc., Serial No. 87072333 (November 6, 2019) [not precedential] (Opinion by Judge David Mermelstein).
During examination, the USPTO must analyze the specimens of use to determine whether the purported mark would be perceived as a source indicator. A term that is used only to designate a process or method is not a trademark for services.
Applicant Boehringer's two specimens were website pages. The first consisted of the beginning of an article entitled, "Prevention Chain™ Approach for Systematic Disease Control in Large Farms," which discussed the "Infection/Prevention Chain Concept" and "Infection and Prevention Chain™ thinking." The second specimen was a chart showing steps in the "Production Chain," the "Infection Chain," and the "Prevention Chain." [excerpt below].
The Board agreed with Examining Attorney Tejbir Singh that "the proposed mark PREVENTION CHAIN identifies only a concept of disease prevention among swine."
The first specimen variously identifies PREVENTION CHAIN as an “approach,” a “concept,” and a manner of “thinking” about disease prevention. Nowhere, however, is PREVENTION CHAIN used to identify either educational services or providing veterinary information. Likewise, the second specimen uses PREVENTION CHAIN as the title of a process of swine disease prevention, but not in connection with any of the identified services. While Applicant’s specimens might themselves be characterized as educational or informational materials, they do not evidence use of PREVENTION CHAIN to advertise or sell the educational or informational services identified in the application. It is not enough that the proposed mark merely appear on educational or informational materials. The mark must identify those services and indicate their source.
And so the Board affirmed the refusal.
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TTABlog comment: Trademarks 101: just because you coin a term and put it on your website or in an article doesn't mean it's a source indicator. If it were your money, would you have appealed this one?
Text Copyright John L. Welch 2019.
posted by John L. Welch @ 11/11/2019
3 comments
3 Comments:
WYHA? No, not this application......but, a different angle would be to consider what would have happened if the application was an ITU? "During examination of an application under Section 1, the Examining Attorney must examine the specimens to determine whether an applicant is using the applied-for matter as a trademark." If an NOA issued for PREVENTION CHAIN for swine disease prevention services, the difference in specimen review process provides more latitude for ultimate acceptance.
Instead of spending the money on an appeal, why not take use that money to explain to the client how to use a mark as a mark, and make sure they have proper specimens of use?
Regarding the first comment, there is no "difference in [the] specimen review process [that] provides more latitude for ultimate acceptance" if the specimen is submitted at the NOA stage. Specimens are reviewed under the same standard, regardless of whether the applicant submitted the specimen at the time the application was filed under a Section 1(a) basis or later as part of an amendment to allege use or a statement of use. If the same specimen was submitted as part of a statement of use, the same refusal would have been issued. The only difference would have been, had the application been filed as an ITU, the application would have been approved for publication. But the mark would not have registered until an acceptable specimen was submitted. Thus, trying to game the system by filing as an ITU would not result in a different outcome.
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