JSB Enterprises, Inc.

Trademark Trial and Appeal Board

May 12, 2008

No. 78578985 (T.T.A.B. May. 12, 2008)

Mailed:
May 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re JSB Enterprises, Inc.
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Serial No. 78578985
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Thomas E. Anderson of Gifford, Krass, Groh, Sprinkle,
Anderson & Citowski, P.C. for JSB Enterprises, Inc.

Stephanie M. Ali, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
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Before Walters, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

JSB Enterprises, Inc. filed a use based application to
register the term NO MORE ACTIVATION FEES, in standard
character format, for services ultimately identified as
“retail store services, online store services and wholesale
distributorship services featuring telephone communications
equipment,” in Class 35. Applicant submitted the newspaper
advertisement, shown below, as its specimen of use.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78578985
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Serial No. 78578985
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According to a newspaper story in the March 25, 2005
issue of the Detroit Free Press, applicant, “a cell-phone
superstore chain,” will pay the activation fee for
customers who sign up for phone service at one of
applicant’s stores. The newspaper story reported that
applicant “has trademarked the ‘no more activation fees’
phrase and patented the program.” 1
The Examining Attorney refused registration on the
ground that the term sought to be registered does not
function as a service mark. Sections 1, 2, 3, and 45 of
the Trademark Act of 1946, 15 U.S.C. §§1051, 1052, 1053,
and 1127. The Examining Attorney argued that, as used by
applicant, NO MORE ACTIVATION FEES is merely an advertising
or informational slogan describing a feature of applicant’s
services. To support her contention that NO MORE
ACTIVATION FEES is merely an advertising or informational
slogan, the Examining Attorney submitted copies of
advertisements featuring variants of the term NO MORE
ACTIVATION FEES used by others to demonstrate that the
purported mark is a common advertising phrase:2

1 March 8, 2007 Office Action.
2 We did not consider the excerpt from the Sears website at
www.searsconnect.ca because it is a Canadian website, and we have
no basis to conclude that consumers in the United States would
encounter this web site.
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1. An excerpt from the 1-800-RECONEX website
(www.reconex.com), a telephone service provider,
displaying the following claim for each state:
PAY NO ACTIVATION FEES;
2. An excerpt from the Telestial Wireless Solutions
for Travelers website (www.telestial.com), a
phone service provider, promoting the following
features for its calling card services:
No activation fees
No monthly fees
No first minute connection charges
3. An excerpt from the ATech Group website
(wwwatech.com) providing rate information for its
ISP dial up services, including
$20.00 per month (no activation fees)
$108.00 biannual prepaid (no activation
fees)

$204.00 annual prepaid (no activation
fees)
4. Excerpts from the Vonage VoIP Forum (www.vonage-
forum.com) regarding “No Activation fee on Retail
bought adapters?”;
5. An excerpt from a posting from the Craigslist
website (http://honolulu.craigslist.org)
regarding a private transfer of a Sprint PCS
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contract entitled “Free Bluetooth Phone, Free
Incoming Minutes, NO Activation Fees”;
6. An excerpt from the Global Satellite website
(www.globalsatellite.us) promoting its prepaid
Africa accounts without activation fees: NO MORE
ACTIVATION FEES FOR THE PREPAID AFRICA ACCOUNTS”;
and,
7. An advertisement for Verizon Wireless one year
plans with no activation fees posted on the DIGG
website (http://digg.com).
Applicant argued that, “[t]he specimen of record
adequately demonstrated that the mark is an easily
recognized source identifier. The mark is substantially
larger that the surrounding text and is further highlighted
by the use of a contrasting background color.”3 Applicant
also asserted that the Examining Attorney’s evidence does
not show that competitors need to use the term NO MORE
ACTIVATION FEES.4 Finally, applicant listed four third-
party registrations for the marks with the preface NO MORE,
and argued that, “[e]ach of the above registrations plainly
referred to a commercial promise and/or sales inducement
for services, yet all were registered on the principal

3 Applicant’s Brief, p. 4.
4 Applicant’s Brief, p. 6.
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register. Applicant’s mark is no different, and it too
merits registration on the principal register.”5
The issue before us is whether the term NO MORE
ACTIVIATION FEES is used as a service mark. A service mark
is any word, name, symbol, design, or device, or any
combination thereof, used to identify and to distinguish
the services of one person from the services of others.
Section 45 of the Trademark Act of 1946, 15 U.S.C. §1127.
If NO MORE ACTIVATION FEES is used as a service mark, it
may be registered. If it is not used as a service mark,
then it cannot be registered.
We start with the proposition that not every word or
combination of words used in the sale or advertising of
services is registrable. In re Wakefern Food Corp., 222
USPQ 76, 77 (TTAB 1984); In re Dun-Donnelly Publishing
Corp., 205 USPQ 575, 578 (TTAB 1979), recon. denied, 208

5 Applicant’s Brief, p. 7. Applicant identified the following
third-party registrations: Registration No. 2888761 for the mark
NO MORE MOSQUITOS. PERIOD; Registration No. 2647813 for the mark
NO MORE COLD CALLING; Registration No. 2367614 for the mark NO
MORE THAN 3 STOPS; and Registration No. 2786188 for the mark NO
MORE PAPER PUSHING. Applicant did not submit copies of the
registrations. A list of registrations is insufficient to make
them of record. If the applicant wants the Board to consider
registrations, copies of the registrations must be submitted. In
re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). However, the
Examining Attorney did not object to applicant’s list of
registrations, and, in fact, she referred to them in her brief.
Accordingly, we will consider the registrations for whatever
probative value they may have.
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USPQ 946 (TTAB 1980). The fact that words are prominently
displayed does not in and of itself make them registrable.
To be registrable on the Principal Register, a slogan must
be a service mark. In re Wakefern Food Corp., 205 USPQ at
77; In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229
(CCPA 1960); In re Morganroth, 208 USPQ 284, 287 (TTAB
1980); In re European-American Bank & Trust Co., 201 USPQ
788, 789 (TTAB 1979). If the slogan is used as a mark, the
registration is mandatory unless it is prohibited by one of
the provisions of Section 2 of the Trademark Act of 1946,
15 U.S.C. §1052. In re Wakefern Food Corp., 205 USPQ at
77.
To ascertain the manner or use and the commercial
impression engendered by the term sought to be registered,
we must look at the specimen of record. In re Wakefern
Food Corp., 205 USPQ at 77; In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 216 (CCPA 1976); In re Restonic Corp., 189
USPQ 248, 249 (TTAB 1975). The term sought to be
registered must indicate the origin of the services and be
of such a nature that ordinary consumers would consider the
term to be a trademark. In re Brock Residence Inns, Inc.,
222 USPQ 920, 921-922 (TTAB 1984).
The term NO MORE ACTIVATION FEES is a readily
understood term that has been used by applicant to convey
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the fact that if you purchased a cell phone and signed-up
for telephone service at applicant’s retail store, there
will not be an activation fee in connection with the
telephone service. The Examining Attorney has submitted
sufficient evidence to show that other cell phone service
providers use a variation of the term “no activation fees”
to convey the same message. Accordingly, consumers viewing
the term NO ACTIVATION FEES as used by applicant will
interpret the phrase in its ordinary meaning. It is
intended to attract consumers to a valuable feature of
applicant’s services - - the waiving of activation fees.
There is no basis for believing that consumers will view
the term NO MORE ACTIVATION FEES as a service mark
identifying the source of the services (i.e., consumers
will not interpret the term as NO MORE ACTIVATION FEES
brand retail store services).
This case is distinguishable from In re Post
Properties, Inc., 227 USPQ 334 (TTAB 1985) relied on by
applicant. In Post, the Board found that the term QUALITY
SHOWS was not an ordinary informational statement because
it was set off from the surrounding advertising copy in a
distinctive and extremely large typeface, and its source
indicating quality was reinforced by its repetition
throughout the advertisement. Moreover, there was no
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evidence that any other competitor used a similar term in
connection with their services. In this case, the use of
the term NO MORE ACTIVATION FEES by applicant conveys a
very specific and easily understood message, whereas
“Quality Shows” does not. Moreover, the term NO ACTIVATION
FEES is simply informational, and not distinctive. It is
simply one of many messages on a very busy advertisement,
and as indicated above, variations of that term have been
used by others to convey the same message.
Accordingly, we are in full agreement with the
Examining Attorney that the term NO MORE ACTIVATION FEES,
as used by applicant, does not function as a service mark.
Decision: The refusal to register the term NO MORE
ACTIVATION FEES is affirmed.