ScanSource, Inc.

Trademark Trial and Appeal Board

Oct 19, 2012

No. 77731385 (T.T.A.B. Oct. 19, 2012)

Mailed:
October 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ScanSource, Inc.
________

Serial No. 77731385
_______

Neil M. Batavia of Dority & Manning, P.A. for ScanSource,
Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Bucher, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

ScanSource, Inc. is the owner of an application1 to
register on the Supplemental Register the term PARTNER
SERVICES (in standard character form) for “business
development consulting services” in International Class 35.2
The examining attorney issued a final refusal to
register applicant’s proposed mark for the International

1 Application Serial No. 77731385, reciting first use and first
use in commerce on February 28, 2000.
2 The application also includes International Class 41 services
which have not been refused registration.
THIS DISPOSITION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 77731385
2
Class 35 services under Section 23(c) of the Trademark Act,
15 U.S.C. § 1091(c), on the ground that the proposed mark
is generic and thus incapable of registration on the
Supplemental Register. Both applicant and the examining
attorney have filed briefs.
The examining attorney maintains that the proposed
mark “refer[s] to business development consulting services
involving the provision of services by partner companies”
and is therefore generic.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by “clear evidence” thereof. See In re
Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009);
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987); and In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
The critical issue is to determine whether the record
shows that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of services in question. H. Marvin Ginn
Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). This determination
“involves a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term sought to
Ser. No. 77731385
3
be registered ... understood by the relevant public
primarily to refer to that genus of goods or services?”
Ginn, 228 USPQ at 530. Evidence of the public's
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers and other publications. See Merrill
Lynch, 4 USPQ2d at 1143, and In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir.
1985).
The type of evidence that may satisfy the examining
attorney’s burden may vary depending on the circumstances
presented. Gould, 5 USPQ2d at 1111-12 (SCREENWIPE held
generic as applied to premoistened antistatic cloths for
cleaning computer and television screens based on
dictionary definitions of the constituent parts and
corroborated by applicant's specimens of use). See also
Trademark Manual of Examining Procedure (TMEP)
§ 1209.01(c)(i) (8th ed. 2011). Where marks are more in
the nature of a phrase, the examining attorney must provide
evidence of the meaning of the composite mark as a whole.
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE
not generic for association services in the field of
reproductive medicine based on lack of evidence showing
Ser. No. 77731385
4
phrase used as a whole). We have considered all of the
evidence in the application, including the evidence
submitted in connection with the initial mere
descriptiveness refusal of the proposed mark, which the
examining attorney later withdrew.
As background (based on the Internet articles or press
releases submitted with the May 4, 2011 Office action), the
record reflects that applicant is a value-added distributor
of specialized technologies providing, inter alia, voice,
data and telephony products. “Founded in 1992, [applicant]
markets products from more than 60 technology manufacturers
to over 15,000 value-added technology resellers and is
committed to empowering them with tools and services
designed to help them grow.” “ScanSource to Distribute
Rugged, Reliable O’Neil Printers,” accessed at
http://www.oneilprinters.com/. Applicant offers “valuable
partner services to its resellers, including system
integration, marketing support professional services,
education and training, and e-commerce solutions.”
“Microsoft Business Solutions Expands Distribution Options
for Key Resellers in Retail Sector,” accessed at
www.microsoft.com/presspass/press/2004. Thus, as a
distributor, applicant sells technical products to value-
added resellers (who, for example, incorporate products
Ser. No. 77731385
5
acquired from applicant into other products). In addition
to selling goods to resellers, applicant offers marketing
support, training and the like to resellers. Applicant
describes its services in its International Class 35
specimen of use, which is reproduced below:

The text states in relevant part:
Ser. No. 77731385
6
Your job is to grow a successful business. Our
job is to help you make it happen. When you
place an order with ScanSource, Inc., you’re not
only working with a dedicated sales rep, you are
working with an entire crew of professionals who
are specifically trained to provide you with
expert support and customized service. So
whether you’re looking for ideas for a marketing
campaign, ways to expand your e-commere offering,
or strategies for managing large rollouts and
custom configurations, we can help.

We now turn to the question of defining the genus of
services at issue in this case, and find that the genus of
services is adequately defined by the International Class
35 recitation of services, namely, “business development
consulting services.” See Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of
services set forth in the [application or] certificate of
registration.”). This genus would also encompass business
development consulting services involving the provision of
services to partner companies,3 which was suggested by the
examining attorney.
Next, we must determine whether the designation
“Partner Services” is understood by the relevant purchasing
public primarily to refer to that genus of services. See
Ginn, 228 USPQ at 530. In this case, the relevant public
Ser. No. 77731385
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consists of entrepreneurs requiring assistance in business
development, including those businessmen and businesswomen
who are value-added resellers of specialized technologies
including voice, data and telephony products.
The evidence introduced by the examining attorney
includes the following:
PARTNER SERVICES in connection with third-party reselling
● from www.nuance.com
“Nuance, Dragon NaturallySpeaking Connections
Partner Program,” - the program consists of
“organizations that provide expert services, such
as sales support, customization, training,
consulting and technical support, to help
customers leverage their Dragon solution for
special results”; “Partner services empower
customers to realize the full potential of Dragon
– often in conjunction with other software and/or
hardware products – for meeting business goals
and maximizing return on investment.”

● from www.edgetechcorp.com
Discussing, under the heading “Partner Services,”
“EDGE’s sales programs deliver win-win results to
its reseller and distribution partners. These
programs are designed to grow business with our
partners through unique reward and recognition
programs for sales representatives and customers
for their support of EDGE[] products.”

● from www.linkedin.com
“Services Marketing Manager – Channel Partners at
EMC,” Job Description: “Leads the marketing
effort to develop and promote EMC Global Service
offerings for resale by EMC channel partners” and

3 A “partner company” is considered a company with which an
entity has a business relationship. A formal legal arrangement
is not necessary.

Ser. No. 77731385
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“Leads the development of demand generation
activities and programs to support partner
services sales.” Also requires an
“[u]nderstanding of channel structure and go-to-
market processes for distributor and value-added-
reseller partners.”

● from www.ontility.com
Stating in relevant part: “Through our Powered
by ONTILITY[] Platform, both commercial and
utility scale partners and dealer/installer
partners have access to a comprehensive portfolio
comprised of eco products, solutions, services,
training, support and technologies”; and “Click
one of the three circles below for more detailed
information on Commercial & Utility Scale and
Dealer/Installer partner services and solutions.”

PARTNER SERVICES in connection with other businesses

● from www.faqs.com
“USPS adds partner services to direct mail Web
site” states that “The US Postal Service (USPS)
has chosen several new vendors that will offer
services on its direct mail Web site. The
vendors selected are DirectMailQuotes.com, which
will provide free competitive quotes on direct-
mail services; ListBazaar.com and
ThinkDirectMarketing.com, for mailing list
services; and Zairmail and ZIPM, for creative,
print and production services.”

● from www.sap.com
SAP Software Solution Partners, Rewards and
Benefits, in the Technical Enablement section
states that “In order to help you address the
Ser. No. 77731385
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challenges of technical ramp-up in software
development, SAP PartnerEdge offers a variety of
benefits, services, and resources to help you to
develop solutions that seamlessly integrate with
SAP solutions. These benefits include: SAP
partner services benefits package.”

● from http://press.nokia.com
“The Nokia Local Marketing Solution delivers
localized and timed services to consumers’
smartphones,” indicates that “With the Nokia
Local Marketing Solution, operators and service
providers can easily advertise their own and
partner services in relevant places, at relevant
times, thereby providing added-value service to
their customers.”

● from www.ogmentum.com
OgMentum, High-Tech Sales and Marketing, states
that “OgMentum is the source for fiber optic
products, sales, and partner services.”

● from www.wisegeek.com
“The success of multichannel marketing often
relies heavily on partner services. For example,
a manufacturer of pharmaceuticals may have a
repackaging and rebranding specialist to take
their products from old or bulk packaging and
repackage and relabel them.”

● from www.productrealizationgroup.com
Product Realization Group, Partner Services,
indicates that “By leveraging our outsourced
resources, you can increase flexibility, lower
costs, and gain higher return on investment,
while avoiding the typical pitfalls associated
with managing outside services. By delivering
the highest level of expertise and services in a
straightforward approachable style, we strive to
build long term trusted relationships.”

Ser. No. 77731385
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● from www.hoovers.com
“4imprint Group can design it, print it, pack it
and ship it. The company sources and sells
promotional merchandise through four distribution
channels; direct marketing, corporate programs,
premium promotions, and partner services.”

PARTNER SERVICES as webpage heading

● from http://usa.autodesk.com

Ser. No. 77731385
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from www.centerforclimateaction.org:

from www.leica-geosystems.com:

Ser. No. 77731385
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Internet articles referring to applicant
● from findarticles.com

BNET, “ScanSource Rolls out New Service Through
Its Partner Services Group,” indicates that “The
mission of the Partner Services Group is to act
as an extension of its partners’ businesses by
providing innovative programs and support
services that allow solution providers to spend
less time on behind-the-scenes activities and
more time identifying and closing sales
opportunities. [Applicant] offers system
integration, marketing support, professional
services, education and training, and E-commerce
solutions.” It also “provides both value-added
distribution sales and partner services to
technology resellers.”

● from www.microsoft.com

Microsoft News Center, “Microsoft Business
Solutions Expands Distribution Options For Key
Resellers in Retail Sector” indicates that
“ScanSource has been serving North America as a
value-added distributor of specialized
technologies for more than 10 years. The company
provides POS products and voice, data and
telephony products through its Catalyst Telecom
and Paracon sales units. ScanSource offers
valuable partner services to its resellers,
including system integration, marketing support,
professional services, education and training,
and ecommerce solutions.”

● from www.bsminfo.com

BusinessSolutions, “ScanSource Partner Services
Adds Human Resources Offering” quotes and
identifies Peter O’Brien as “vice president of
partner services for ScanSource, Inc.”

Ser. No. 77731385
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● from http://www.oneilprinters.com/

“ScanSource to Distribute Rugged, Reliable
O’Neill Printers,” indicates that ScanSource
provides both value-added distribution sales and
partner services to technology resellers.”

The evidence in the record demonstrates that in the
business context, “partner services” is a term broadly used
to identify those services offered to another with whom the
offering party has a business relationship. Several of the
webpages identify “partner services” as a topic heading,
indicating “partner services” refers to a general category
of services that businesses provide to their customer-
partners to promote and facilitate the business
relationship. In the context of applicant’s business,
where applicant is a distributor and sells to value-added
resellers, applicant provides support or consulting
services to the reseller, i.e., its partner, on aspects
such as system integration, marketing support, professional
services, education and training, and E-commerce solutions,
all of which broadly relate to “business development.” See
particularly the evidence from nuance.com and linkedin.com
referring to “partner services” in the reseller context.
In addition, applicant’s specimen demonstrates that
applicant, as part of its consulting services, actively
promotes “partner services,” that is, applicant offers
Ser. No. 77731385
14
consulting services to those firms which add value to the
products opposer sells to them. The articles specifically
discussing applicant refer to applicant’s services as
“partner services.” Thus, we find that the examining
attorney has established prima facie that the relevant
public would understand that the designation refers to the
genus of services, namely, business development consulting
services offered to applicant’s customers or partners, in
the context of reselling goods.
In seeking to rebut the examining attorney’s
prima facie case, applicant argues that “the so-called
evidence cited by the Examining Attorney merely
demonstrates that services offered under Appellant’s
PARTNER SERVICES trademark can be of great benefit to
Appellant’s third party reseller customers.” Brief at 7.
We disagree. The evidence demonstrates that the term
“partner services” identifies particular services provided
to customers who have a relationship with the seller,
including those who are resellers. This includes the
material from the website concerning a business manager job
position (linkedin.com), which applicant challenges in its
brief as referring to third-party partners. The position
requires an “[u]nderstandng of channel structure and go-to-
market processes for distributor and value-added-reseller
Ser. No. 77731385
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partners”; this is directly related to applicant’s
business.
In addition, applicant submitted what applicant
identified as “numerous” (there are only three) third-party
registrations with its April 13, 2011 response, and
represents that they all are registered on the Principal
Register (only one is). One registration indicates it is
cancelled. Another registration, which is on the Principal
Register, contains the terms PARTNERS and SERVICES, but
they are separated by the term INVESTMENT. Because the
terms PARTNERS and SERVICES are not together as one term,
as they are in applicant’s designation, this registration
has limited probative value. That leaves the remaining
registration for the mark SERVICE PARTNER PLATFORM, which
registered on the Supplemental Register. This single
registration is not persuasive; it is only one in number,
PARTNER and SERVICE(S) are in a different word order, the
term PLATFORM is also in the designation, and the listed
services are different from applicant’s services. Further,
it is well-settled that neither the Board nor our primary
reviewing court is bound by prior determinations by the
USPTO and each case must be decided on its own merits. See
In Re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed Cir. 2011).
Ser. No. 77731385
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In sum, we find that applicant has not refuted the
prima facie case of genericness of the proposed mark
established by the examining attorney. We therefore find
that the examining attorney has established prima facie by
clear evidence that the designation “PARTNER SERVICES” is
generic for those business development consulting services
to business involving the use of partners in rendering
those services, which falls within applicant’s recitation
of services. See In re Central Sprinkler Co., 49 USPQ2d
1194 (TTAB 1998) (ATTIC generic for sprinklers used in
attics; “The broad general category of goods involved here
is sprinklers for fire protection. However, a product may
be in more than one category, and here applicant's goods
also fall within the narrower category of sprinklers for
fire protection of attics.”); In re Reed Elsevier Prop.
Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007)
(LAWYERS.COM generic for online information exchange in the
fields of law, legal news, and legal services; “a central
and inextricably intertwined element of [the claimed] genus
is information about lawyers and information from
lawyers.”).
DECISION: The refusal to register the proposed mark
on the Supplemental Register for the International Class 35
services is affirmed and registration of applicant’s
Ser. No. 77731385
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proposed mark for such International Class 35 services is
refused.
The proposed mark will be registered on the
Supplemental Register in due course, but only for the
International Class 41 services.