USPTO doles out rejection to KGB's 542 542 servicemark application

What a HUGE HUGE embarrassment for a company that processes something on the order of one billion search inquiries per year and prides itself on having the ability to turn just about any simple question into a simple answer. Yet, KGB hasn't the foggiest idea of what a trademark is. For had they any idea of what a trademark is, they wouldn't have failed two times at trying to prove to the U.S. Patent and Trade Office that their '542 542' 'brand' functioned as a service mark (a service mark falls under the category of trademark.) In late August, the USPTO maintained and finalized its rejection, initially made by a USPTO examining attorney in January 2009, of KGB's applied servicemark '542 542,' which is the SMS number for the kgbkgb service. The rejection notice was stamped, sealed and delivered with the explanation that KGB's application 'shows the mark used as a text number and informational in the nature of an instruction.' The USPTO was referring to a 'specimen' submitted as proof months after the initial rejection; the specimen was a photo of the back windshield and side panel of one their Smart Cars that bore the following phrase in large lettering: 'got questions? text 542 542 now.' The USPTO rejection notice states that this 'specimen' was simply an instruction to dial a phone number and bore no qualities of a mark; it failed to act as a distinctive indicator to identify that kgbkgb's services originates from a unique source. The USPTO went the step further of clarifying that '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.' KGB didn't understand this simple nuance the first or second time.

First, KGB established the kgbkgb service, which coincidentally (or more likely not) spells a confusingly similar SMS code (542 542) to ChaCha's (242242). (ChaCha lodged a letter of protest with the USPTO over this bizzare-ity.) Then, the USPTO's 'FINAL...refusal to register the mark.'

Perhaps KGB ought to rethink their tagline: 'got questions? text your friends, not us.'


Here's the text of the August 24, 2009 decision:


THIS IS A FINAL ACTION.

The office received the applicant’s response on July 16, 2009. The examining attorney has carefully read and considered the applicant’s response. The identification of services is accepted. However, the refusal to register the applicant’s mark under Trademark Act Sections 1, 2, 3 and 45 is maintained, and now made FINAL.

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 text number and informational in the nature of an instruction .

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).