TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal
The Board dismissed this appeal from a refusal to register the mark FINLISTICS CLIENTIQ for “Business development consulting services, namely, providing temporary use of non-downloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance,” because applicant failed to address the ground for refusal: an inadequate specimen of use. For the sake of completeness, the Board considered and agreed with Examining Attorney Crystal Yi's specimen refusal. In re Finlistics Solutions Corp., Serial No. 87722652 (January 7, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).
The Board cited its recent ruling in In re Rainier Ent., 2019 USPQ2d 463361, *3 (TTAB 2019): "because Applicant failed to address the [specimen refusal] both before the Examining Attorney and in its appeal brief, dismissal of the appeal is appropriate."
As to the specimen refusal, applicant submitted the specimen shown above, which displays the FINLISTICS CLIENTIQ mark. However, "it is not clear what services are being promoted. There is a reference to delivery of 'facts, figures and forecasts to make a strong business case and show value throughout the buyer’s journey,' but that statement is too ambiguous to support the recitation ...."
[W]e read the application as referring to software used via the Internet to provide business consultation services that include the specific types of actions listed above. The specimen makes no direct mention of software for taking any of these actions, though it does suggest that at least some type of analysis will be performed. The specimen refers in only the most general way to the services identified in the application. That is not sufficient.
The Board deemed the specimen "too vague to constitute a valid service mark use in the advertising or promotion of the services." It further found that the specimen fails to show that the services were actually being rendered when the application was filed. "Advertising of services constitutes trademark use only if the services are being rendered at the time. Couture, 113 USPQ2d at 2044. The specimen fails to show whether any services were actually rendered on or before the filing date of the application, and therefore, it is insufficient to support this use-based application."
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TTABlog comment: I think one would have to say that the discussion of the specimen issue was mere dictum. So of what value is nonprecedential dictum?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 1/15/2020
2 comments
2 Comments:
Re: non-precedential dictum, Judge Wolfson may have been frustrated after having just addressed a failure to comply with requirements in the precedential In re Rainier Enterprises, LLC case a month ago, or otherwise sending a message that the Board will be more strict in exercising their discretion to affirm refusals to register based on unfulfilled requirements going forward (in In re Ranier Enterprises, LLC, the Board states: "In some prior decisions, we have affirmed refusals based on unfulfilled requirements where the applicant did not brief that issue, but we need not do so in every case. [emphasis added]).
The Board may also be sending some message to the attorney representing applicant, as a review of the application file reveals that the appeal brief is an exact copy of the Response to the initial Office Action (with a table of contents/brief intro added) and that the appeal was filed on the last day remaining in the 6-month period to respond to the Final OA.
As to the specimen -- while perhaps not laser-precise, clearly they provide some form of business development consulting services -- it is not immediately obvious what is materially different from e.g., the homepages of PwC, Deloitte, McKinsey, etc. where you land on a high-level service offering and drill down from there on a subsequent webpage.
What *is* the bar an applicant has to pass in terms of spelling out their services without being overly verbose and overtaking the representation of their mark?
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