KGB's trademark '542 542' initially refused by USPTO

On January 13, 2009, the examining attorney at the United States Patent and Trademark Office (USPTO) sent a non-final notice to KGB initially refusing their application for the service mark of '542 542.' The text of the notice mailed to KGB in mid-January is below, copied in part.

What does this all mean? Well, it appears that KGB hasn't adequately established in the marketplace the association of '542 542' with its text-answer service (kgb_text) nor have they adequately established the association of the mark (542 542) with KGB. Uh oh! The USPTO charges that 542 542 has been marketed (and viewed as purchasers) as a telephone number (i.e., SMS code) and 'not used as a source-indicator for services as identified in the application.'

A quick look at ChaCha's 'prosecution history' with the USPTO shows that their mark application was never subjected to initial refusal; four days after ChaCha's mark was assigned to an examiner, the mark was approved for publication and well along the way in the process towards successful registration. However, the day after KGB's mark was assigned to an examiner, the non-final action was written and mailed. Uh oh!

What did ChaCha do right that KGB did wrong? For starters, ChaCha decided to create a mark of a continuous string of numbers ('242242') whereas KBG created a mark consisting of two '542's ('542 542') broken apart by a space. KGB's mark may appear to some as an incompletely written U.S. telephone number. ChaCha, obviously, avoided that confusion. Two, it appears that ChaCha did a better job leading up to its application for its '242242' mark by plastering '242242' everywhere ChaCha President Brad Bostic blogged and spoke, and of course in ChaCha's advertising. In contrast, KGB jumped the gun by filing its mark application well before they established '542 542' as an 'identifier' for its 'kgbkgb' text-services AND as a mark associated with KGB.

What's next? KGB will have to submit proof (specimens) to convince the examining attorney in their 'case' to reconsider. But at least KGB cleared the first hurdle of the 'similarly confusing' mark test. The examining USPTO attorney conducted a number of mark searches to determine if there are 'similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02' to '542 542' and he/she found no such marks. It's not clear if USPTO examining attorneys look for confusingly similar registered marks (that correspond to SMS codes) using a phone keypad as a frame of reference; it appears they don't by the looks of the 'XSearch Search Summary' e-file for KGB's 'case'. This is something that ChaCha can bring up when they oppose KGB's mark for '542 542' after, if, it becomes published.

[Emphases ours]

FAILURE TO FUNCTION AS A SERVICE MARK

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The Signal Cos., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§904.07(b), 1301.02 et seq.

The applied-for mark, as shown on the specimen, does not function as a service mark because it shows the mark used as a telephone number and not used as a source-indicator for services as identified in the application.

The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a service mark. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1458 (TTAB 1998). Not every word, design, symbol or slogan used in the sale or advertising of goods and/or services functions as a mark, even though it may have been adopted with the intent to do so. A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for the services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05,. If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

View ChaCha's specimen (and the Firefox browser 'bookmarks toolbar' links and Windows system tray icons used by one of ChaCha's legal executives!) used in their mark application here