Mountain Marketing Group, LLC

Trademark Trial and Appeal Board

Mar 26, 2003

EX (T.T.A.B. Mar. 26, 2003)

Paper No. 11
TJQ
Mailed: March 27, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mountain Marketing Group, LLC
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Serial Nos. 76/054,955 and 76/098,055
_______
Scott W. Petersen of Holland & Knight for applicant.
Robert L. Lorenzo, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Quinn, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Mountain Marketing
Group, LLC to register the mark 1-800-PET DOCS for
“veterinary services”1 and the mark 1-800-SKIN DOC for
“medical services.”2
The Trademark Examining Attorney has refused
1 Application Serial No. 76/054,955, filed May 23, 2000, alleging
first use anywhere on April 3, 2000, and first use in commerce on
April 10, 2000.
2 Application Serial No. 76/098,055, filed July 27, 2000,
alleging first use anywhere on May 29, 2000, and first use in
commerce on June 5, 2000.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser Nos. 76/054,955 and 76/098,055
2
registration in each application on two bases, namely (i)
that applicant’s mark, as used in connection with
applicant’s services, is merely descriptive thereof under
Section 2(e)(1), and (ii) that the specimens of record fail
to show use of the mark in connection with the identified
services.3
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.4 An
oral hearing was not requested. Because of the similarity
of the issues involved in these appeals, the Board shall
decide them in one opinion.
3 Although, in each application, registration was also refused
under Section 2(d), such refusals have been withdrawn.
4 In the penultimate paragraph of its briefs, applicant
essentially offers, for the first time, alternative positions
relative to the two refusals. First, applicant states that if
the specimen refusal is affirmed, “applicant would agree in the
alternative to convert this application to an intent-to-use
application.” See: TMEP §806.03(c). Second, applicant states
that if the mere descriptiveness refusal is affirmed, applicant
“would agree to registration of this mark on the Supplemental
Register.” See: TMEP §1212.02(c) and TBMP §1215. As the
Examining Attorney points out in his brief, however, no formal
amendments were ever filed and, thus, we will not consider, at
this late juncture, the alternative positions proposed by
applicant. Once an application has been considered and decided
by the Board on appeal, an application may not be “reopened,”
that is, an applicant may not amend its application at this stage
except in two very limited situations, neither of which pertains
herein. TBMP §1218. In any event, applicant here could not
amend its application to an intent-to-use basis while, at the
same time, seek registration on the Supplemental Register. TMEP
§1102.03.
Ser Nos. 76/054,955 and 76/098,055
3
Mere Descriptiveness
The thrust of applicant’s arguments is that there are
numerous third-party registrations of marks which include
the terms “pet,” “skin” and “doctor.”5 Applicant also
relies upon its ownership of four Federal trademark
registrations and four Illinois state trademark
registrations of vanity phone numbers involving the term
“injured” (e.g., 1-800-INJURED). Applicant asserts that
telephone numbers can be owned by only one entity, and that
its present applications are being singled out for unfair
treatment.
The Examining Attorney maintains that the marks sought
to be registered immediately convey the impression that
services relating to veternarians and dermatologists,
respectively, are available by calling the relevant phone
number. The Examining Attorney has submitted dictionary
listings for “pet,” “skin” and “doc,” as well as “800.”6 In
5 The Examining Attorney, in his brief, objected to the listing
of the “doctor” third-party registrations in applicant’s brief.
The objection is sustained inasmuch as copies of the
registrations were never properly made of record. In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). The Examining Attorney went on
to address the minimal probative value of this evidence as if it
were properly of record, and we share his view that the third-
party registrations relied upon by applicant do not compel a
different result in this case (see discussion, infra).
6 The last listing accompanied the Examining Attorney’s brief.
Inasmuch as dictionary evidence is proper subject matter for
judicial notice, we have considered this listing.
Ser Nos. 76/054,955 and 76/098,055
4
addition, the Examining Attorney has relied upon excerpts
retrieved from the NEXIS database showing uses of “pet doc”
to identify a veterinarian and uses of “skin doc” to
identify a dermatologist. Also of record are third-party
registrations of vanity phone numbers that have issued
either on the Principal Register under Section 2(f) or on
the Supplemental Register.
It is well settled that a term is considered to be
merely descriptive of services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes a quality, characteristic or feature thereof or
if it directly conveys information regarding the nature,
function, purpose or use of the services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the services in order for it to
be considered to be merely descriptive thereof; rather, it
is sufficient if the term describes a significant attribute
or feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the services for which registration is sought.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The dictionary evidence shows that “800” is a prefix
indicating a toll-free telephone number for long distance
Ser Nos. 76/054,955 and 76/098,055
5
calls. The other dictionary listings for the words “pet,”
“skin” and “doc,” coupled with the NEXIS evidence showing
widespread use of the terms “pet doc” and “skin doc” in
connection with veterinarians and dermatologists,
respectively, leave no doubt that “pet doc” is merely
descriptive for veterinary services and that “skin doc” is
merely descriptive for medical services.
It is curious to us that applicant and the Examining
Attorney have argued back and forth over the applicability
of the case of In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001). It is clear
that the Federal Circuit’s opinion is apposite to the facts
herein:
We next examine whether the proposed
mark [1-888-M-A-T-R-E-S-S] is “merely
descriptive” of the recited services
and registrable upon a showing of
acquired distinctiveness. A trademark
is descriptive if it immediately
conveys knowledge of the ingredients,
qualities or characteristics of the
product. [citation omitted] Dial-A-
Mattress argues that its mark is not
descriptive because, although it
suggests the nature of its services, it
does not describe their full scope and
extent. This argument is unavailing
because the mark need not recite each
feature of the relevant goods or
services in detail to be descriptive.
[citation omitted] Although “1-888-M-
A-T-R-E-S-S” is not generic for a
service offering mattresses by
telephone, it immediately conveys the
Ser Nos. 76/054,955 and 76/098,055
6
impression that a service relating to
mattresses is available by calling the
telephone number.
Id. at 1812. See also: In re Page, 51 USPQ2d 1660 (TTAB
1999). Likewise, we find that the mark 1-800-PET DOCS is
merely descriptive of veterinary services because it
immediately conveys the impression that a service relating
to veterinary care is available by calling the telephone
number; and that the mark 1-800-SKIN DOC is merely
descriptive of medical services because it immediately
conveys the impression that a service relating to
dermatology care is available by calling the telephone
number.
The third-party registrations do not compel a
different result herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”]. We recognize that the competing registration
evidence submitted by applicant and the Examining Attorney
show the Office’s somewhat inconsistent treatment of vanity
Ser Nos. 76/054,955 and 76/098,055
7
telephone number marks.7 However, while uniform treatment
under the Trademark Act is an administrative goal, our task
in this appeal is to determine, based on the record before
us, whether applicant’s particular mark sought to be
registered here is merely descriptive. As is often stated,
each case must be decided on its own merits. See, e.g.:
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001).
In view of the above, we find that the respective
marks are merely descriptive of the identified services
under Section 2(e)(1).
Specimens
The Examining Attorney maintains that the original
specimens and the substitute specimens show use of the
respective marks in connection with licensing services, and
not with either veterinary services or medical services.
In its briefs, applicant makes its defense to the
refusal in one sentence: “The Applicant submits that the
specimens are acceptable to describe the services.”
As our primary reviewing court has indicated, “it is
not enough for the applicant to be a provider of services;
the applicant also must have used the mark to identify the
7 In this connection, we also note that two of applicant’s
previously issued registrations of vanity telephone numbers
issued under Section 2(f).
Ser Nos. 76/054,955 and 76/098,055
8
named services for which registration is sought.” In re
Advertising & Marketing, 821 F.2d 614, 2 USPQ2d 2010, 2014
(Fed. Cir. 1987), citing In re Universal Oil Products Co.,
476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). See also: In
re Adair, 45 USPQ2d 1211 (TTAB 1997).
In the past, when appropriate, the Board has been
fairly flexible in accepting service mark specimens. See,
e.g.: In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000);
and In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992).
In the present case, however, it is clear that although the
specimens feature the marks applicant seeks to register,
the specimens do not in any way show use of the marks in
connection with the services identified in the involved
applications, namely veterinary services and medical
services.
The specimens show use of the marks only in connection
with licensing services. The specimens indicate that
applicant “is now offering the exclusive use of [the vanity
telephone numbers] in your market area. This unique
marketing tool provides unparalleled response and instant
name recognition in your market.” The specimens tell the
reader to call the vanity telephone number “for information
on how to take advantage of this incredible licensing tool”
and that “licensing is on a first come, first served
Ser Nos. 76/054,955 and 76/098,055
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basis.” Simply put, the specimens do not show use of the
marks in connection with the actual rendering or sale of
the identified veterinary and medical services.
Decision: The refusals to register in each of the
applications are affirmed.