TTAB Affirms Trifusal of POSITIVE ONLINE PRESENCE for Marketing Consulting Services

The TTAB upheld three refusal to register the proposed mark POSITIVE ONLINE PRESENCE for "Providing marketing consulting in the field of social media." Affirming the first two refusals, genericness and failure-to-function, was a snap, because the applicant presented no argument regarding them on appeal. As to the third ground, the Board agreed with Examining Attorney Darryl M. Spruill's rejection of a proposed amendment to the recitation of services as exceeding the scope of the original identification. In re Media Minefield, Inc., Serial No. 88395484 (December 14, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. However, if an applicant does not make an argument made during prosecution, it may be deemed waived by the Board. In other word, "[a]n applicant’s failure to address the refusals or requirements in its appeal brief is a basis for affirming an examining attorney’s refusal of registration on those grounds." And so, the Board affirmed these two refusals.

Although the refusal based on the recitation of services was rendered moot, the Board, for the purpose of completeness, exercised its discretion to determine the merits of the proposed amendment to the recitation of services.

Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), provides that: “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . . .” Applicant sought to amend its recitation of services to "providing marketing consulting in the field of social media, namely, providing and managing social media content for business executives." The Examining Attorney issued a final Office action refusing the amended identification of services as being beyond the scope as originally filed.

The Board took judicial notice of definitions of the words "marketing," "consulting," and "managing." It pointed out that the the added term "managing" encompasses administrative control or authority that exceed the scope of "marketing consulting," which consists of providing professional advice in the field of advertising, shipping, storing and selling goods by producers or sellers to consumers.

We agree with Applicant that specifying its services are rendered to “business executives” limits the scope of the original identification. However, the addition of “managing” social media content expands the original inasmuch as having administrative control or authority – or managing – falls outside the scope of “marketing consulting.” Therefore, the proposed amendment is broadening, and the refusal is affirmed.

And so, all three refusals were affirmed.

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Text Copyright John L. Welch 2022.