Jade Corp.

Trademark Trial and Appeal Board

May 24, 2001

No. 75378612 (T.T.A.B. May. 24, 2001)

5/24/01
Paper No. 13
DEB
UNITED STA
Trade
Benjamin H. Kaminash a
Jade Corporation.
Virginia T. Isaacson,
110 (Chris A.F. Peders
Before Simms, Walters
Judges.
Opinion by Bucher, Adm
Jade Corporation
register the mark LOCA
services in the nature
telecommunications con
by use of global commu
protocols,” in Interna
1 Application Serial
based upon an allegation
commerce. On January 14
use claiming dates of fiTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTABTES PATENT AND TRADEMARK OFFICE
________
mark Trial and Appeal Board
________
In re Jade Corporation
________
Serial No. 75/378,612
_______
nd Daniel P. Larsen of Atet Wynne LLP for
Trademark Examining Attorney, Law Office
en, Managing Attorney).
_______
and Bucher, Administrative Trademark
inistrative Trademark Judge:
has filed a trademark application to
LDIAL for “telecommunications gateway
of providing intrastate and interstate
nections by bypassing long distance tolls
nication network technology and
tional Class 38.1
Number 75/378,612, filed on October 24, 1997,
of a bona fide intention to use the mark in
, 1999, applicant filed an amendment to allege
rst use of December 20, 1997.
Serial No. 75/378,612
- 2 -
While applicant originally sought registration on the
Principal Register, after receiving the initial refusal under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1), applicant
submitted its amendment to allege use and simultaneously amended
this application to seek registration on the Supplemental
Register. The Trademark Examining Attorney then refused
registration on the ground that the asserted mark is generic as
applied to applicant’s services and therefore it is incapable of
identifying these services and distinguishing them from similar
services of others.
Applicant has appealed. Both applicant and the Examining
Attorney have filed briefs, but an oral hearing was not held.
We reverse the refusal to register.
The specimens indicate that for a flat, monthly fee,
applicant provides its customers with a less expensive
alternative to traditional long-distance telephone services, at
least within designated calling areas. Although applicant
relies upon “global communication network technology and
protocols” as the backbone for this calling service, the only
appliance the customer needs is a tone-generating telephone
handset, not a computer. Prior to dialing one’s destination
telephone number, the subscriber must first dial up a local
access telephone number – presumably connecting to applicant’s
server, which in turn is connected to the Internet.
Serial No. 75/378,612
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Turning then to the issue of genericness, it is the
Trademark Examining Attorney’s position that applicant’s “mark
LOCALDIAL describes the central characteristic of the services –
consumers use a local dial access phone number to avoid local
toll calling.” (Trademark Examining Attorney’s appeal brief, p.
4). Therefore, the Trademark Examining Attorney asserts that
LOCALDIAL is a generic name for applicant's services.
In support of her position, the Trademark Examining
Attorney has made of record excerpts of articles taken from the
NEXIS® database using the combined words “local dial” in
conjunction with telecommunications, telephones and the
Internet.
The Examining Attorney has the burden of proving
genericness by “clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered … understood by the
relevant public primarily to refer to that genus
of goods or services?
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d. 987, 228 USPQ 528 (Fed. Cir. 1986). Of course,
in a proceeding such as this, the genus of services at issue are
drawn from the recital of services in the application itself.
Serial No. 75/378,612
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Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552
(Fed. Cir. 1991) [“Thus, a proper genericness inquiry focuses on
the description of services set forth in [the application or]
certificate of registration.”].
The evidence of record shows that the genus of the service
at issue herein is long distance telephone service. After
carefully reviewing all of the evidence submitted by applicant
and the Trademark Examining Attorney, we find that the Office
has not met its burden of proving that the consuming public
would refer to that genus of goods as LOCALDIAL.
According to the Trademark Examining Attorney, “A search of
the LEXIS/NEXIS@ database and the Internet shows widespread use
of the words ‘local dial’ for a variety of telecommunications
services. These articles use the words in a generic manner as
noted in the excerpted articles below.” In her brief, the
Trademark Examining Attorney has highlighted the following
NEXIS® articles:
“Sprynet, an America Online subsidiary, is now
offering customers local dial access to the
Internet through a partnership with Gric
Communications." Network World, September 14,
1998.
“Companies will still want modems for local dial
access and for mission-critical applications…
TechWeb News, April 3, 1998.
“…the service offers local dial access numbers in
more than 500 cities." National Underwriter,
December 8, 1997.
Serial No. 75/378,612
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“Companies such as the … which provide
authentication, verification and settlement
services similar to those in the cellular
telephone industry, can give any ISP’s users
local-dial access to networks all over the
world.” InternetWeek, October 6, 1997.
“Santel Internet - provides local dial access to
the communities of Artesian, Alpena, Carthage,
Dimock, Ethan, Fedora, Mitchell, & surrounding
South Dakota communities.”
With respect to the Internet and LEXIS/NEXIS® evidence,
none of these articles makes reference to “local dial” as a type
of long distance telephone service. Rather, in reviewing all of
the evidence in the instant record, we note that the two words
“local dial” indeed occur together in that order, and are used
in a number of descriptive ways for certain types of activities
and products. But substantially all of the relevant excerpts
use two specific three-word expressions: “local dial access”
and “local dial tone.” Variations on “local dial access”
include “direct local dial access,” or “local dial Internet
access,” as contrasted with “long distance access” or “800-
service access.” The term “local dial tone” is used within
larger phrases like “local dial tone market,” “local dial tone
lines,” etc. In each of these latter uses, it is clear that
“dial tone” would be perceived as the composite phrase in these
contexts when considering the connotation of the larger phrase.
Serial No. 75/378,612
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Hence, we see that these entire three-word phrases (“local
dial access” and “local dial tone”) are used in a descriptive
manner in the general context of telecommunications, and
specifically describe the connection of personal computers to
the Internet via one’s local telephone hookup. This distinction
is of importance because this usage is quite different from
applicant’s LOCALDIAL long-distance telephone services using
Internet technology to bypass the tolls of the local toll and
long distance carriers.
Given that a Trademark Examining Attorney who has submitted
evidence from the NEXIS database and the web is presumed to have
submitted the best evidence available to her from the searches
of those media, In re Federated Dept. Stores, 3 USPQ2d 1541
(TTAB 1987), we must assume that such searches did not reveal
any other references to the term “local dial” per se.
Of course, the issue in this appeal is not whether “local
dial” might describe a primary characteristic of applicant’s
services, namely, that one can get around toll call charges by
dialing a non-toll, local telephone number. Since the time of
its response to the initial Office action and amendment to the
Supplemental Register, applicant has conceded as much throughout
most of the prosecution of this application.
Serial No. 75/378,612
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As for the dictionary evidence, the Trademark Examining
Attorney points to separate definitions of the word “local”2 and
the word “dial.”3 If anything, this somewhat-dated, pre-Internet
source placed in the record by the initial Trademark Examining
Attorney demonstrates that the word “local” has a number of very
different meanings in the field of telecommunications, all of
which would seem to be at the opposite end of the spectrum from
long distance telephone calling.
The Trademark Examining Attorney also includes examples of
applicant’s use of the terminology in the advertising copy
comprising the specimens of record:
“Thank you for using the first calling service to
provide all the calling you want in the LocalDial
area for one low, flat monthly rate. We hope the
information contained here is helpful for your
use of LocalDial.”
“What is LocalDial? Loca1Dial is an easy to use,
supplemental phone service for flat, monthly rate
calling within its designated calling area.”
2 Local. (1) Pertaining to that which is defined and used onlyu
in one subdivision of a computer program. Contrast with global. (2)
Synonym for channel atached. (See local central office, local
channel, local code, local lock, local loop, local processor, local
service, local service area, local system qaueue area. (4) Contrast
with remote. Vocabulary for Data Processing, Telecommunications and
Office Systems (Seventh Edition, July 1981).
3 Dial. To use a dial or pushbutton telephone to initiate a
telephone call. In telecommunications, this action is taken to
attempt to establish a connection between a terminal and a
telecommunications device over a switched line. Vocabulary for Data
Processing, Telecommunications and Office Systems (Seventh Edition,
July 1981).
Serial No. 75/378,612
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“My LocalDia1 Access Phone Number is: (Use this
space to keep your Loca1Dial Phone Number
handy.)"
“LocalDia1 calling requires 2 separate dialing
steps – after dialing the Access Pone Number you
must wait until the ‘Welcome Message’ starts
before speed dialing the Area Code with the
Destination Phone Number.”
According to the Trademark Examining Attorney, “A review of
the advertising materials submitted by the applicant shows that
the proposed mark is of such a nature that it would not be
perceived as indicating source, but is rather a description of
the services provided by the applicant.”
By contrast, applicant argues that its “advertisement does
not use LOCALDIAL merely as a description of the service, but
rather to identify its long distance services… [T]hese excerpts
from Applicant’s brochure illustrate that Applicant uses the
mark LOCALDIAL to identify the unique brand of service provided
by Applicant.” (applicant’s reply brief p. 9). We agree with
applicant on this point as well.
The fact that the term LOCALDIAL may be generic for goods
or services which are similar to or even related to the goods or
services as described in the application does not establish that
LOCALDIAL is also generic for the latter goods or services. By
way of example, the fact that the term TOUCHLESS was generic for
automobile washing equipment did not establish that said term
was likewise generic for automobile washing services. Magic
Serial No. 75/378,612
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Wand, 19 USPQ2d at 1553. See also In re The Stroh Brewery Co.,
34 USPQ2d 1796, 1797 (TTAB 1995) [“In addition, the fact that a
term may be descriptive of certain types of goods does not
establish that it is likewise descriptive of other types of
goods, even if the goods are closely related.”].
Thus, the burden rests with the Examining Attorney to
establish that the mark sought to be registered is generic for
the goods or services as described in the application. In re
Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1997). Moreover, it is incumbent upon the Examining Attorney to
make a “substantial showing … that the matter is in fact
generic.” Merrill Lynch, 4 USPQ2d at 1143. Indeed, as noted
before, this substantial showing “must be based on clear
evidence of generic use.” Merrill Lynch, 4 USPQ2d at 1143.
Thus, it is beyond dispute that “a strong showing is required
when the Office seeks to establish that a term is generic.” In
re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788
(Fed. Cir. 1994). Moreover, any doubt whatsoever on the issue
of genericness must be resolved in favor of the applicant. In
re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
Decision: The refusal to register is reversed.
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Simms, Administrative Trademark Judge, concurring:
Serial No. 75/378,612
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The issue of registrability of the asserted mark LOCALDIAL for
applicant’s long-distance telecommunications services is a close one.
We must reverse if we find the term to be capable of distinguishing
applicant’s services, even though it may be very descriptive. See
Section 23 of the Lanham Act.
Applicant is not seeking to register “LOCAL DIAL ACCESS” for
these services, a term which I believe this record demonstrates is
generic for long-distance telecommunications services as well as
Internet access services. (“IPass, which offers users local dial-
access phone numbers world-wide…”; “Uunet is just beginning to deploy
100 fax servers around the world, which the company said will provide
local-dial access to fax services from almost 1,000 global Uunet
points of presence…”; “NetWalk—provides flat rate local dial access
to the greater Columbus metropolitan area”; “This expansion will
allow customers that currently call long-distance…This expansion when
completed will increase the regional population base to which NOL can
offer local dial access by 3 million people”; “AT&T today released
details of its international local-dial access service for AT&T
Network Notes that will enable users in 32 countries to dial into the
U.S….”; “Next quarter, MCI will offer local dial access from the
country’s top 12 metropolitan areas. Next year, it will extend local
dial access, which is less expensive that 800 access, to the top 125
cities, MCI said.”) While most of the references may be said to
Serial No. 75/378,612
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pertain to Internet services, it is not clear to me that all of them
are. Certainly, the general public, aware of local dial Internet
access services would not believe that Local Dial Access for long-
distance telecommunications services is anything but a generic term
for a type of those services. It would not be capable of identifying
and distinguishing applicant’s services. Applicant’s use does not
help matters any. (“My LocalDial Access Phone Number is…”)
But applicant is not seeking to register LOCAL DIAL ACCESS as a
service mark; rather, it is seeking to register LOCALDIAL for its
long-distance telecommunications services. It is certainly
problematic that such a mark should be held generic on the basis of
evidence that “local dial access” is a generic phrase for a type of
telecommunications or Internet services. Compare, for example, In re
Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)(involving the mark
ATTIC for automatic sprinklers installed primarily in the attic).
Resolving doubt in favor of applicant, as we must, I would also
reverse the refusal on this record.
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