Tuesday, March 30, 2021

TTAB Sees Problems with Applicant's Specimen, Affirms Refusal to Register "20/20 IN 2020" for Optometry Advertising Services

The Board affirmed a refusal to register the mark 20/20 IN 2020 for "advertising, marketing and promotion services" in the fields of opthalmology and optometry, because the applicant's specimen of use did not show use of the mark in connection with the recited advertising services. The applicant, a doctor specializing in pain management, displayed the mark in his office, as shown below. In re John Mansell, Serial No. 87220151 (March 18, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The applicant stated that he is not an ophthalmologist or optometrist; he is compensated by providers of those services for patient referrals. He contended that, although the specimen includes no explicit reference to the services, consumers could infer the nature of the services from the context (use with an eyeglasses design) andthe significance of the mark (20/20 in relation to vision), and would make an association. 

During prosecution of the application, the applicant asserted that:

a patient would know that it is in a pain clinic; the patient would know that it was not in an optometrist’s or ophthalmologist’s office and, being aware of its environment, the patient would necessarily and logically know that the provided specimen was Applicant’s advertising of the optometry and ophthalmology services of others.

On appeal, the applicant contended that his specimen showed us of the mark in the rendering of his services. The Board pointed out, however, that '"[w]hile a rendering-type specimen need not explicitly refer to the services, it still must show 'some direct association between the offer of services and the mark sought to be registered therefor.'" In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973).

The Board did not see eye-to-eye with that the applicant, finding that "consumers would not associate 20/20 IN 2020 with advertising services for others in the field of ophthalmology or optometry based on Applicant’s use of the mark in his specimen. *** It fails as a rendering-type specimen, because it does not convey that any service is being advertised for others."

As to applicant's assertion that consumers would infer from the specimen that ophthalmology and optometry services were being advertised, the Board found that inference "too much of a reach."

While the eyeglasses design and reference to 20/20 certainly suggest something associated with vision, exactly what the sign promotes remains a mystery. Given the accompanying name and contact information, we find that consumers probably would view it as an advertisement for Dr. Mansell and his practice. Consumers could derive the impression that Dr. Mansell offers some type of vision-related goods, such as eyeglasses, or vision-related services, such as treatments that improve sight. Alternatively, consumers could perceive the mark as a general slogan for Dr. Mansell’s office or his pain management services. In this regard, we take judicial notice of the second definition of “20/20” in the Merriam-Webster Dictionary, “marked by facilely accurate discernment, judgment, or assessment// hindsight is twenty-twenty,” such that consumers could perceive the mark as an indication that in 2020, they would consider treatment by Dr. Mansell to reflect good judgment. Ultimately, even consumers who are Dr. Mansell’s patients visiting his office would not associate this mark with advertising services for others.

Again pointing out that the specimen "gives no indication that the mark appears in the course of advertising for others," the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: As I see it, it looks like the mark is out-of-date anyway, so who cares?

Text Copyright John L. Welch 2021.


At 8:19 AM, Anonymous Anonymous said...

Yes, but hindsight is always . . .

At 1:18 PM, Anonymous Anonymous said...

I have so many questions. This was started in 2016. He has 5 other filings - four of which are for "2020 THE YEAR TO SEE CLEAR". I am not sure he got that one right.

And why is a pain management doctor performing advertising services for opthomologists?

It seems like an incredible waste of money that could have been spent on a proper specimen or a proper ID?

At 1:54 PM, Anonymous Anonymous said...

OFFICIAL SPONSOR OF 2020 (Ser No 88635544) is a distinction claimed by another. And as of Jan 2021 the owner expressed an intent to use. That's some confidence.


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