ChaCha lodges formal protest over KGB's mark '542 542'

Ok, I'm far from a legal expert, and please chime in if I'm wrong, but from what I gather, information on the USPTO database indicates that last week the Office received a 'letter of protest' from ChaCha's lawyers regarding KGB's application for the servicemark '542 542,' which incidentally was initially refused by the Office in February. ChaCha brought attention to its own mark and objected to KGB's mark (application) apparently because of infringement (it is confusingly similar to ChaCha's mark of '242242'). The USPTO notices indicate that ChaCha's letter was 'accepted' - because ChaCha's evidence 'established a reasonable case for refusal, requirement or suspension' - and the Examining Attorney is going to mull it over. Since the 'letter of protest' was received prior to the timeframe for 'publication' (for objection by protestors) the decision lies within the EA's jurisdiction.

Does this mean that ChaCha didn't want to wait until the 'publication' timeframe, if kgb's application went that far, and sent its objection early on to accelerate the 'refusal, requirement or suspension' of kbg's application?

The images of the USPTO public notices and internal correspondence are below:

Domains get snagged up in 'text-answer service wars'

Last month we blogged about two available (at the time) domains, 542242.com and 242542.com, both hybrids and mistypes of the dotcom wordnumbers for both ChaCha and kgbkgb. On February 18, they both got snagged up by the same person; the time stamps for both domain registrations are identical.

So by whom? They're hiding behind an anonymous whois (Moniker Privacy) and the owner's apparently not going to tell us anything at all: the domains don't resolve anywhere, not to kgbkgb nor ChaCha, and not even a parking page. So, who do you think bought them? Could it be a domainer? But would an observant domain investor buy these domains and not park them? Unlikely. So what do you think: is it Kgb or ChaCha?

What's the carbon footprint of the kgbkgb tour?

What's the carbon footprint of kgb's Burning [feeling when you find out you just spent $0.50 on a text that could have been free had you used ChaCha] Questions Tour? Surely there's a huge poof of Co2 tonnage that'll result from driving a 'squard' of Smart Cars through a dozen cities from Dallas to Boston. Instead of issuing a press release on the eve of every single holiday and big sports event to give us yet another reason to use kgb_text for $0.50 more than ChaCha would charge, kgb should announce they're going carbon neutral. How about it?

Update1: the commenter is right - kgbkgb can cost up to $0.99. That's what kgb_text costs an ALLTEL customer!

kgbkgb's Smart Car or ChaCha's unpaid Voice-Over Gig = tough choice

I don't know about you, but I think ChaCha is going to lose this one. Both ChaCha and its new competitor, kgbkgb, have recently launched sweepstakes promotions that will grant a single grand prize to the lucky winner.

What are the prizes? Well, kgbkgb is offering a Smart Car. Not too shabby.

And ChaCha? The winner will have their voice recorded to be 'part' of the 'welcome message for users on the 1.800.2CHACHA voice service.' How long will your sweet voice be on the outgoing voice message? Oh, about one week. After that, the voice of the 'lady... on vacation' will replace yours. It gets better. ChaCha won't pay for a thing: you have to haul your butt to a recording studio at an undisclosed location (in Indiana? or the nearest one to the winner?) at your own expense - and pay for a rent-a-car, taxi, or your own gas, and maybe even hotel - and still not get any compensation for your voice-over work. Maybe you can put on your resume that you were the voice of ChaCha's voice service for just one-week, but how much in hotel and transportation costs are you willing to pay for that accolade if you win?

No thanks. I'll take the Smart Car.

kgbkgb launches tour at Mardi Gras drunken-fest

Yesterday, the briefly anticipated 'kgbkgb tour' - officially dubbed the "Burning Questions Tour" - quietly launched on the eve of Mardi Gras and on location in New Orleans! We kind of thought that a 'kgbkgb tour' would be of the 'Prilosec OTC' bus tour variety in which they'd give away something of value. But what would they give away? Free kbg_text credits? Naaaa.

It turns out the 'kgbkgb tour,' as described in the freshly minted dedicated tour blog, is a 'traveling the county' tour aimed at 'encouraging people to try [kgb's] 542542 text answer service.'

With a bus? No, but they're still carbon footprint stomping across the nation with their 'squard [sic] cars' (remember the commercial when they drove the Smart Car through an alley way of trash?). Of course, the 'squard' cars are advertisements, packed with Special Agents presumably wearing logo-ed t-shirts wandering city streets. Unlike Prilosec OTC's tour entourage, kgb's Special Agents won't be able to alleviate the heartburn that may develop when folks learn how much their product costs (kgb_text costs $0.50 per question). No wonder kgb calls it the 'Burning Questions Tour'!!!!

You have to wonder why the kgbkgb tour started at Mardi Gras, where people are drunk and in various altered mind-states. But that's Mardi Gras in New Orleans and kgb's ready for whatever comes their way. As the tour blog states:

....we’re expecting some REALLY interesting questions from the Big Easy. tAlready [sic] we’ve been asked to explain the meaning of life, how to satisfy one’s wife, and more.

They'll be leaving New Orleans in a few days to travel to other places to find out ' What Does America Really Want to Know,' which is the blog tour's title's tag line. What other places? Since you asked:

2/22/2009 - 2/24/2009 New Orleans, 2/27/2009-3/1/09 Dallas TX, 3/3/2009-3/4/09 Austin TX, 3/5/2009-3/7/09 Houston TX, 3/10/2009 Nashville TN, 3/12/2009-3/14/09 Panama City Beach FL, 3/17/2009 Tampa FL, 3/18/2009 South Beach Miami FL, 3/19/2009 Miami FL, 3/20/2009 Daytona Beach FL, 3/23/2009 Atlanta GA, 3/25/2009 Raleigh & Durham NC, 3/26/2009-3/27/09 Washington DC, 3/27/2009 Washington DC, 3/28/2009 Philadelphia PA, 3/29/2009-3/31/09 Boston MA, 4/1/2009 Hartford Ct, 4/2/2009-4/4/09 New York NY, and 4/5/2009-4/6/09 Baltimore.

map

Wow. Sounds exciting. Kgb's excited too:

Our team of kgb Special Agents are [sic] really excited about being here.

Jamptap are really excited too!

Oh. And it turns out they're giving away something: a Smart Car. The sweepstakes began at 2/24/09 at 12:00:01 AM, E.T, but at press time the tour blog wasn't yet configured to accept entries (where's the box to enter your phone number?). Is the sweepstakes now invalidated?

To kgbkgb's Survey Compilers, With Love

Kgb just put up a survey on their site, which appears in a pop-up window titled 'KGB Survey.' The introduction reads 'Answering questions is very rewarding. We should know. Please take this quick survey to help us better help you.'

We've decided to publish the answers to their survey; the numeric/alpha ordering is of our own creation. Have fun:

---

1. kgbkgb: Have you ever texted a question to kgb, or not?

Jamptap: Have you not ever taken an English class?

---

2. kgbkgb: What is the main reason you haven’t texted a question to kgb?

Jamptap: Because ChaCha is free. And why would I rely on kgbkgb for good information when they can't do something as simple as uneventfully registering a trademark?

---

3. kgbkgb: About how many text messages did you send/receive last month?

None
1 to 9 messages
10 to 19 messages
20 to 49 messages
50 to 99 messages
100 to 199 messages
200 to 299 messages
300 to 499 messages
500 to 999 messages
1000 or more messages

Jamptap: 50 to 99 messages. And, although you haven't asked, kgbkgb was even the subject of a few of them!

---

4. kgbkgb: Can your mobile phone access the Internet, or not?

Jamptap: Can you, or not, stop asking questions like that, or not?

---

5. kgbkgb: Where do you live? [list of states]

Jamptap: Why? Is the 'kgbkgb tour' coming to my state?

---

6. kgbkgb: Are you...?

a. Male
b. Female

Jamptap: Are you...?

a. a 12 year-old programmer
b. All of the above

---

7. kgbkgb:What is your age?

Under 18
18-24
25-29
30-34
35-39
40-44
45-49
50+

Jamptap:Ok. So by now kgbkgb would know what kind of cellular subscription I have, what state I live in, my gender, and now a close approximation of my age. I'm starting to get worried.

7b. kgbkgb: What is your annual household income?

Under $25,000
$25,000 to under $50,000
$50,000 to under $75,000
$75,000 to under $100,000
$100,000 to under $150,000
$150,000 to under $250,000
$250,000 and up

Jamptap: Oh I give up. Will my personal information become associated, or not, with my IP address? Hmmmm.

---

kgbkgb: Finished? Submit Your Survey.

We appreciate your time. Love, KGB

Jamptap: We love you too kgb.

kgbkgb tour

Something called the kgbkgb tour is brewing at the Knowledge Generation Bureau. That's all we know....

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

Confusion and anger befall KGB target audience

I'm not making this up. Here's a selection of keyword activity over the past 24 hours for Jamptap visitors:

'What are those commercials about that say text 542 or kgb?'

'Why is KGB trying to rip off ChaCha?'

Maybe it is best that ChaCha's executive board just sit back and watch KGB confuse and anger their own demographic. Then wait some more, at least until KGB's customers open their March 2009 cell phone bill...

I don't know about all you KGB fans, but doesn't it seem that you'd be EARNING 50 cents each time you use ChaCha over KGB? Try that for a search term (on a free search engine).

'It only takes one 542 to see that 242242 is best. And free.'

If I were the CEO of ChaCha and saw that my only competitor, KGB, just 'happened' to have chosen a SMS code that is 80-90% similar to mine, I'd be miffed.

It's obvious that KGB acted opportunistically when its top-brass realized the wordnumber for 'kgb kgb' was strikingly close to that of 'ChaCha.'

The rest is history: apply for the trademark, get the shortcode, buy the dotcom domain, ad spots with TV actors, press releases (and the NY Times blogs about you), and voila, everything's starting to look great.

'Ladies and gentlemen, on this side of the ring, our lightweight challenger, ChaCha aka '242242!' And, on this side, our heavy-weight, 'KGB,' is [laughter] wearing...is wearing what seems to be ChaCha's outfit! It looks like KGB is mocking ChaCha's wardrobe, down to the robe, boxers and all. Our challengers, gents and germs, look nearly the same! And ChaCha's, eeeeeeeeeeeeeeeew, is not happy, and....'

If ChaCha wants to win the first round against their better trained opponent, they should give their opponent a dose of their own medicine. And so, why not do what KGB is doing to you: reverse the tide by eating at KGB's traffic! Why not register common shortcodes and domains that both you and KGB's customers might type by accident!

Here's a few shortcodes* that are available at the time of press that no one can argue against you registering for preservation of your brand:
242542 AVAILABLE
542242 AVAILABLE
54224 AVAILABLE
24254 AVAILABLE

* I'm not sure if the CSCA will approve shortcodes for this purpose, but it doesn't hurt to find out.

And here's a few domains:
542242.com AVAILABLE
242542.com AVAILABLE

Heck, why not go the extra mile. Call up the Giorgio Armani company and forge some marketing alliance with them for their GA 542 designer glasses. They're a less bulky version than the one 'Hunter' uses for KGB's spots. Why not get a few actors to do a series of ads all wearing these 'stunner' '542' glasses.

Your ad's tagline can be:

'It only takes one 542 to see that 242242 is best. And free.'

Is KGB infringing on ChaCha's trademark?

In July 2008, ChaCha, the first human-powered search engine, began attaching a trademark designation in its web communications to the numeric string '242242,' which spells ChaCha and is the company's official SMS code. The Indiana-based company filed for a trademark for 242 242 in February 2008 that was successfully registered in September 2008.

It seemed that by late 2008 ChaCha was fully protected from infringements from other mobile services, cybersquatters, and others attempting to mooch off its brands. ChaCha's fortress of protection included its trademark and dozens of defensively registered typo-variants of 242242.com and registrations of 242242 in various tlds and ccTLDs.

Then came the Knowledge Generation Bureau, better known as 'KGB.'

Neither ChaCha nor we at Jamptap anticipated that 542542.com was a typo-variant worthy of registering. Had we, ChaCha's current troubles might have been lessened.

But KGB did go ahead and pick a strikingly similar SMS code to ChaCha's and register its corresponding domain. And, so, we have to first ask: why did KGB elect to choose a SMS code so similar to ChaCha's 242242 when it could have come up with a bunch of SMS codes that spell commonsense phrases like KGB-HQ, KGB-SPY, KGB-411, KGB-IQ, KGB-247, etc...? Is it because KGB wanted to mimic ChaCha's business model down to the 'T'' and didn't want to take any chances with a SMS code of different length and appearance from ChaCha's? (U.S. common shortcodes come in 5 or 6 digits.)

What can ChaCha do now? The first step is defining the issue at hand, which is that its new competitor, KGB, may be confusing ChaCha's existing and prospective customers with the SMS code of 542542 and the corresponding domain of 542542.com. (To make matters worse for ChaCha, KGB has deeper pockets, much more advertising, and the advantage of being a 'new' service.)

The second step is defining its options and the best option is defending itself via its trademark of 242 242. What ChaCha can do is OPPOSE the registration for the service mark of '542 542' filed by Grape Technology Group, Inc. (aka KGB) on October 10, 2008. That mark was for 'Telecommunication services namely two way sms messaging for search inquiries.' (KGB's filing, by the way, occurred four days before KGB registered the domain 542542.com.) ChaCha can oppose KGB's mark when it becomes 'published' [in the Official Gazette, a weekly publication of the US Patent and Trademark Office] and that may occur sometime in this spring (2009). source

If that fails, ChaCha certainly can file a suit in the federal courts and do the job there. The argument would simply be that another company picked a strikingly similar service mark for a very similar service. If ICANN's rulings provide any guidance here, if (usually) a typosquatter's domain is one character off from a domain protected by a trademark, then the complainant (trademark holder) prevails. One can argue that KGB's mark is one-character off from ChaCha's mark. That's the first part. The second part is proving that KGB provides the same or similar 'goods and services' as ChaCha. That is quite clear, even from their respective trademark filings: both marks pertain to providing 'search engine services' (ChaCha)/'search services' (KGB) via 'text messaging' (ChaCha)/'SMS messaging' (KGB).

ChaCha's survival is threatened and that wouldn't be anything unusual in the realm of business if everyone was playing fair. But KGB isn't playing fair.