TTAB Affirms Failure-to-Function Refusal of Certification Badges for Completion of Skills Evaluation Courses
The Board affirmed refusals to register four proposed marks shown below, for "Evaluation of specific fields of employment for others to identify specific skills and specific content and level of knowledge required for probable success in such specific fields of employment, vocational assessments services in the field of job placement and job-related skills, namely, testing, analysis, and evaluation of the knowledge, skills, and abilities of others for career placement purposes," on the ground that the symbols fail to function as source indicators. Examining Attorney Robert Struck maintained that these badges operate as a credential or certification that indicates completion of Applicant’s courses, not as service marks. The Board agreed. In re ACT Education Corp., Serial Nos. 98020747, 98020760, 98020772, and 98020795 (June 3, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).
The marks consist of a circular badges of various colors, and include a ribbon across the middle, the word "CERTIFIED" above the ribbon, the words "WORKKEYS NCRC" on the ribbon, and the word ACT appearing below the ribbon.
The Board looked to applicant's specimens of use to determine consumer perception of the badges: applicant's promotional brochures, webpages and advertising material. Example:
Applicant argued that the presence of four of its registered marks - ACT, ACT WORKKEYS NCRC and design, NCRC, and WORKKEYS - within the badges provide source-indicating significance to the badges. The Board disagreed: "the question before us is not whether the individual previously registered marks incorporated into the designations function as service marks."
Applicant also contended that that the specimens show dual use - use in connection with the services and use as a credential – analogizing this case to Board cases in which a term is used as the name of a process and also functions as a service mark. The Board didn't buy it.
Even though the specimens reference Applicant’s skill assessment (and evaluation) services, the explanations that follow make clear that the applied-for marks are not in reference to the assessment services but rather are the credential that is earned and can be displayed or shown after taking the skill assessments. Therefore, the initial or substitute specimens do not show dual use of the designations as a reference to both Applicant’s evaluation and vocational assessments services as well as the credential or certification earned.
And so, the Board affirmed the refusal.
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TTABlogger comment: WYHA?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 6/05/2025
6 comments
6 Comments:
Why is this failure to function instead of a specimen refusal for not showing the claimed services? Failure to function is out of control.
I can't say I am a fan of all of the rejection trends at the USPTO and TTAB (2d and the paper thin evidentiary requirement for establishing similarity of G/S), but they have done a very nice job of utilizing failure to function rejections against "marks" like these.
The Examining Attorney made the "bad specimen" argument in his appeal brief, but not during examination. So, the Board ignored that issue.
I would have recommended that they apply for them as certification marks in the first place! Isn't this a duh moment? or am I missing something?
Do you think they should have tried to register these as certification marks? Would that have made a difference?
"We don’t need no stinkin’ source indicators."
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