Omega Financial, Inc.

Trademark Trial and Appeal Board

Mar 10, 2010

No. 77197184 (T.T.A.B. Mar. 10, 2010)

Mailed:
March 10, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Omega Financial, Inc.
________

Serial No. 77197184
_______

Jerry L. Watts of Page Scrantom Sprouse Tucker & Ford PC for
Omega Financial, Inc.

April K. Roach, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Walsh and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Omega Financial, Inc. seeks registration on the
Principal Register of the mark MEMBER ACCESS PLUS (in
standard character format) for services recited in the
application, as amended, as “billing and accounting
services” in International Class 35.1
The Trademark Examining Attorney refused registration
on the ground that applicant’s specimens of record do not

1 Application Serial No. 77197184 was filed on June 4, 2007
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as January 31, 2002. Applicant
makes no claim to the exclusive right to use the words “Member
Access” apart from the mark as shown.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77197184
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show the applied-for mark used in direct connection with the
sale or advertising of the recited services. 15 U.S.C.
§§ 1051, 1052, 1053 and 1127 and 37 CFR §§ 2.56 and
2.76(b)(2).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
Applicant submitted new evidence for the first time
with its brief. The Trademark Examining Attorney’s
objection to consideration of that exhibit because it is
untimely is well taken and the evidence has not been
considered. 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc.,
64 USPQ2d 1058, 1059 n2 (TTAB 2002). Similarly, given the
timing of applicant’s offering of evidence from the
Wikipedia website, the Trademark Examining Attorney did not
have sufficient opportunity to rebut this new evidence of
limited probative value. In re IP Carrier Consulting
Group, 84 USPQ2d 1028 (TTAB 2007). We hasten to add that
even if we had considered these submissions, they would not
have changed the outcome of our decision herein.
Applicant argues that inasmuch as the Trademark
Examining Attorney inadvertently failed to refuse
registration or to make the requirement for a new specimen
in the initial Office action, it was inappropriate for her
Serial No. 77197184
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to raise the requirement for an acceptable specimen in the
second Office action because “reasonable minds could easily
differ” about this issue, and hence, no “clear error” had
been committed with the initial failure to raise this issue.
TMEP §§ 706 and 706.01 (6th ed. 2009).
While we must make a determination on the correctness
of the underlying substantive refusal of registration,
timely allegations of clear procedural errors or a Trademark
Examining Attorney’s alleged abuse of discretion are
reviewed on petition under 37 C.F.R. § 2.146. Accordingly,
we do not entertain questions about whether the issuance of
the April 28, 2008 Office action was in accordance with the
United States Patent and Trademark Office’s internal “clear
error” standard. See In re Jump Designs, LLC, 80 USPQ2d
1370 (TTAB 2006).
In its application papers, applicant’s recitation of
services involves billing and accounting services. We learn
from the entirety of the record that under applicant’s
business model, its clients are Greek communities in the
university setting. The treasurer or other society officer
at the local undergraduate fraternity or sorority chapter
is the target audience for applicant’s services.
Applicant’s compensation is derived from providing billing
Serial No. 77197184
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and accounting services to the governance structure of the
local Greek society chapter.
Specifically, applicant offers its clients “billing
services” – sending billing statements to individual chapter
members (or their parents) to collect monies for rent, food,
dues and other expenses. Applicant also renders
“accounting” services such as maintaining accounts payable
and accounts receivable, initiating IRS Form 990’s, etc.
These services for the benefit of the official
representatives of the local Greek chapter are premised on
accountants and other professionals creating commercial-like
financial transaction data.
In a service mark application filed to cover services
of this nature, the recitation of “billing and accounting
services” is appropriately-worded and hence, deemed to be
definite and acceptable under trademark examination
practice. These services, as recited, were placed correctly
in International Class 35.
The Trademark Examining Attorney takes the position
that wording such as “billing and accounting services” in
International Class 35 should have real meaning when used in
a recitation of services in a service mark application. For
example, applicant’s “billings services” are offered to the
society chapter, and result in billing statements being
Serial No. 77197184
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mailed to individual members. Similarly, the Trademark
Examining Attorney takes the position that if the wording
“accounting services” (for others) is to retain any meaning
in this context, it must include the recording and reporting
of financial transactions and then summarizing them in
financial statements. Financial statements such as balance
sheets and income statements will likely be of interest to
representatives of the national societies as well as alumni
advisors and financial contributors to the local chapter.
A service mark is used in commerce “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are
rendered in more than one State or in the United States and
a foreign country and the person rendering the services is
engaged in commerce in connection with the services.”
Trademark Act Section 45, 15 U.S.C. § 1127. “[B]ecause by
its very nature a service mark can be used in a wide variety
of ways, the types of specimens which may be submitted as
evidence of use are varied.” In re Metriplex Inc.,
23 USPQ2d 1315, 1316 (TTAB 1992).
When used in advertising of services, the service mark
must not merely appear in the advertising material that also
discusses or offers the services, but must be associated
with the services in such a manner as would be sufficient to
Serial No. 77197184
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indicate to potential purchasers or users of the services
that the mark identifies the services and their source. See
In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ
456, 457 (CCPA 1973) [“The minimum requirement is some
direct association between the offer of services and the mark
sought to be registered therefor.”] (italics in original),
and In re Moody's Investors Service Inc., 13 USPQ2d 2043,
2047 (TTAB 1989) [requirement is for “a direct association
between the mark sought to be registered and the services
specified in the application, i.e., that [the mark] be used
in such a manner that it would be readily perceived as
identifying such services”].
In this case, the Trademark Examining Attorney takes
the position that while applicant may indeed be rendering
billing and accounting services for others under applicant’s
house mark, the specimens do not show that these services
are being offered under the mark MEMBER ACCESS PLUS.
Applicant, on the other hand, contends that the same
mark can be used in connection with a variety of different
services, and that without the billing and accounting
services performed by applicant, none of the valuable member
features highlighted on the specimens of record would exist.
The Trademark Examining Attorney contends that the
feature of applicant’s services shown in the specimens of
Serial No. 77197184
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record in this application is a secure Internet interface to
the individual fraternity or sorority member (or
parent/guardian) for easy online access to one’s account
information, along with the ability to pay one’s bill.
However, it is the position of the Trademark Examining
Attorney that as one views the four corners of the two
specimens of record, there is no association between the
proposed mark, MEMBER ACCESS PLUS and applicant’s recited
billing or accounting services.
When filing this Section 1(a) application, applicant
submitted as its initial specimen of use a copy of the
promotional material shown below. The specimen contained
the following bulleted listing of what fraternity and
sorority members are able to do with this online access:
Access your account at any time of the day.
View an up-to-date, detailed history of your account.
View a copy of every statement you have ever received.
Connect directly with Omega’s customer services for any questions.
Pay your account on-line.

The specimen also states, “To log on, go to
www.omegafi.com and click on the Member Access Plus link,”
above a screenshot of a computer window that includes a
mockup of the online portal for the local “Alpha Beta Gamma”
chapter located at “State University.” The web page, as
depicted, also includes the chapter’s officers and other
Serial No. 77197184
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contact information, the chapter’s chosen hot links on the
web, a graph depicting the chapter’s financial health,
with additional tabs for “My Account,” “Roster,” etc.:

Serial No. 77197184
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With the second Office action, the Trademark Examining
Attorney issued a refusal to register the mark alleging
that applicant’s initial specimen of record was unacceptable
because it did not show the mark used in connection with
the recited services. Applicant responded with a
substitute specimen, while
also arguing why the original
specimen should be deemed to
be acceptable. This newly-
updated screen-print confirms
that Member Access Plus is “the
interface designed with the
needs of the individual
member in mind.” In
addition to the
informational, updating and
payment services listed in
the first specimen, this web page describes additional
features such as an interactive calendar, a detailed
member’s payment trend graph, an online contract signature
system, and another mockup image of one member’s personal
statement.
This web page ends with the following notation:
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Member Access Plus is a value-added feature of Omega’s Chapter Services, free of additional charge.2

This last sentence seems to summarize the position of
the Trademark Examining Attorney. By applicant’s own
admission, “Member Access Plus is a value-added feature of
Omega’s Chapter [billing and accounting] Services…” That
is, these specimens describe a free financial service
focusing on electronic payments and other banking-like
services offered via the Internet – an International Class
36 service.3
The Trademark Examining Attorney argues that as the
name of the computer interface suggests, MEMBER ACCESS
PLUS allows the member to access, view and pay accounts.
Upon receiving a monthly “billing” (and this is a result of
applicant’s billing service provided for the benefit of the
chapter), it is only in connection with the online
electronic payment feature that the member will encounter
this mark. Whether one refers to it as a “value-added,”
“collateral” or even “related” feature or activity, this
feature or activity is nominally-related to the rendering
of “billing and accounting services” provided for the

2 https://www.omegafi.com/apps/homesite/member_access_plus.php

3 Similarly, the United States Acceptable Identification of
Goods and Services Manual has a long listing of “bill payment”
types of services in International Class 36 not unlike the
service described in the dissenting opinion, infra at 15.
Serial No. 77197184
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benefit of the chapters. We find that the fact a chapter
member may be able to access a billing in no way means
that applicant has shown use of the applied-for mark in
connection with billing or accounting services. We agree
with the Trademark Examining Attorney that these specimens
cannot possibly create in the mind of such a user an
association between the adopted mark and the recited service
activity.
Applicant argues that even if one acknowledges that the
term MEMBER ACCESS PLUS is used in connection with a
computer interface, it could also be associated with billing
and accounting services. In the abstract, it is true that
the same mark can be used in connection with a variety of
different goods and/or services. However, we agree with the
Trademark Examining Attorney that when one views the matter
within the four corners of these specimens, this particular
mark is not associated with the sale or advertising of the
recited services.
Applicant also argues that none of the valuable member
features highlighted above would exist without the billing
and accounting services performed by applicant. While this
is also true, it seems to us a classic non-sequitur that does
not meet the concerns of the Trademark Examining Attorney.
Serial No. 77197184
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One could analogize these facts to Internet access
provided by any variety of vendors, financial institutions or
service providers. Increasingly, as consumers, we expect
online access to personal accounts maintained on the
computerized databases of an individual vendor. The mere
existence of the records suggests that a person or entity
somewhere is performing accounting functions. The
computerized data may even be formatted for the consumer
much like that portrayed on applicant’s most recent specimen
of record. However, in offering an enumeration of account
activity and a current balance, the run-of-the-mill vendor
or service provider is not providing “billing and accounting
services” for the individual consumer (unless, of course, it
is an accounting firm hired specifically to do accounting
services). Otherwise, if one waters down the concept of
“accounting” to the basest of dictionary meanings (e.g.,
providing a simple enumeration of recent activity and an
updated balance of one’s account), then the word retains no
meaning whatsoever when used in a recitation of services.
Hence, we find ourselves in agreement with the final
refusal of the Trademark Examining Attorney that these
specimens do not show that applicant provides the recited
“billing and accounting services” in connection with the
applied-for mark, MEMBER ACCESS PLUS. Nowhere does the
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mark MEMBER ACCESS PLUS as shown in these specimens
identify those billing and accounting services and
distinguish them from the service of others. See In re
Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986)
[affirming refusal to register where mark used on
specimens identifies a software program used in the
performance of the services but not the services
themselves]. Rather, the term MEMBER ACCESS PLUS refers
to a nominal feature of applicant’s main services. The
clear import of the mark as used in the specimens is to
identify an online computer interface directed to chapter
members that comprises, even by applicant’s own admission, a
collateral feature of its billing and accounting services.
Decision: The refusal to register under Sections 1,
2, 3 and 45 of the Lanham Act is hereby affirmed.
- o O o -
Opinion by Walsh, Administrative Trademark Judge, dissenting:

I respectfully dissent. I find both specimens
applicant submitted adequate to show use of the MEMBER
ACCESS PLUS mark in connection with “billing and accounting
services.” I do not dispute the majority’s statement of the
law, but only the application of the law here.
Serial No. 77197184
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Both specimens display the MEMBER ACCESS PLUS mark
prominently. “Plus,” the only distinctive element in the
mark, suggests that the mark identifies something more than
a simple “Member-Access” function.
The specimens demonstrate that applicant renders the
“accounting and billing services” not just for the benefit
of the organizations’ treasurers and other officers, but for
the benefit of members and their parents as well. The first
specimen states that, among other things, members may view
various types of financial information related to their
accounts and “pay your account on-line.” The second
specimen includes similar references. The specimens also
refer to “chapter members” and otherwise demonstrate the
relationship between applicant and the chapter/organization
to which the member belongs.
Thus, the specimens show that applicant is performing
services for others, the chapters and their members, and not
merely recording, reporting, or collecting accounts owed to
applicant. Contrary to the majority’s assertion, this is
unlike a situation where “Internet access [is] provided by
any variety of vendors, financial institutions or service
providers … [where] we expect online access to personal
accounts maintained on the computerized databases of an
individual vendor.” Here applicant is billing and
Serial No. 77197184
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collecting payments on behalf of the organizations it
services and their members. In like manner, a financial
institution may offer a bill-paying service for its clients
whereby the financial institution pays the client’s utility,
phone or other recurring bills. This is a service distinct
from other services a financial institution may offer.
I part ways with the majority most conspicuously in
their construction of what “billing and accounting services”
may include. The majority states, “Otherwise, if one waters
down the concept of ‘accounting’ to the basest of dictionary
meanings (e.g., providing a simple enumeration of recent
activity and an updated balance of one’s account), then the
word retains no meaning whatsoever when used in a recitation
of services.” For the record, Merriam-Webster’s Collegiate
Dictionary (11th ed. 2003) defines “accounting” as: “the
system of recording and summarizing business and financial
transactions and analyzing, verifying, and reporting the
results” and “bill” (as in “billing”) as: “1 a: to enter in
an accounting system: prepare a bill (charges) b: to submit
a bill of charges to ….”4

4 The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 77197184
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I reject the notion that the simple dictionary
definition is somehow inadequate to define what either
“accounting” or “billing” mean in an identification of
services. Thus, I conclude that the specimens show use of
MEMBER ACCESS PLUS in connection with “accounting and
billing services” which applicant renders for the benefit of
the relevant chapters and their members. The recording and
reporting activities referred to in the specimens are part
and parcel of basic accounting services and the reference to
paying an account is a direct reference to billing services.
A reference to either in the specimen would be sufficient
for purposes of the specimen requirement in this single-
class application. The specimens refer to both.
The majority may also be suggesting that a more
specific reference to the identified service is needed. I
disagree. In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286
(TTAB 2000) [“Here, the word “design” alone is sufficient to
create in the minds of purchasers an association between the
mark and applicant’s commercial art services.”]. Therefore,
I would find the specimens acceptable and would reverse the
refusal.