Omega Financial, Inc.

Trademark Trial and Appeal Board

Apr 13, 2010

No. 77197184re (T.T.A.B. Apr. 13, 2010)

Mailed:
April 13, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Omega Financial, Inc.
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Serial No. 77197184
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Request for Reconsideration
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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).
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Before Bucher, Walsh and Wellington, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Omega Financial, Inc. filed a use-based application for
the mark MEMBER ACCESS PLUS (in standard character format) for
“billing and accounting services” in International Class 35.1
In a decision issued on March 10, 2010, a majority of
this panel of the Board affirmed the refusal to register the
application on the ground that applicant’s specimens of record
did not show the applied-for mark used in direct connection
with the sale or advertising of the recited services.

1 Application Serial No. 77197184 was filed on June 4, 2007.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77197184
- 2 -
On April 1, 2010, applicant filed a request for
reconsideration of our decision of March 10, 2010. As grounds
for reconsideration, applicant argues that it clearly provides
the services recited; that the Office approved a similar
application for another mark, e.g., CHAPTER DESKTOP; and that
the majority opinion inappropriately limited the definition of
“billing and accounting services.”
As noted in our initial decision, whether applicant
actually rendered billing and accounting services to the
governance structure of the local Greek society chapter is
irrelevant. This appeal presented a very fact-specific
question as to whether the specimens submitted by applicant in
connection with the prosecution of Application Serial No.
77197184 demonstrated use of the applied-for mark, MEMBER
ACCESS PLUS, in connection with “billing and accounting
services.” We found the specimens were insufficient in this
regard. While applicant may well have good specimens showing
acceptable service mark usage of other marks, e.g., OMEGA
FINANCIAL or CHAPTER DESKTOP, for “billing and accounting”
services, that is not the issue before us.
In fact, following up on applicant’s latest argument, the
specimens of record in the CHAPTER DESKTOP application (that
matured into Registration No. 3578477) demonstrated use of
that mark in connection with the chapter’s “billing and
Serial No. 77197184
- 3 -
accounting services.” That application’s substitute specimen
described the billing process, showed copies of accounts
receivable reports, and referenced a myriad of tools applicant
provides to help the officers manage the chapter’s finances:

Serial No. 77197184
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In short, this specimen demonstrated the use of the mark,
CHAPTER DESKTOP, in connection with all the functionalities of
billing and accounting services that we explicitly found
deficient in the instant specimens.
Furthermore, it is possible that applicant had even used
MEMBER ACCESS PLUS as a service mark for the recited
services. However, the majority of the Board’s panel agreed
with the Trademark Examining Attorney that the applied-for
mark, as used within the four corners of the two specimens of
record in this case, did not create an association between the
proposed mark, MEMBER ACCESS PLUS, and applicant’s recited
billing or accounting services.
Applicant’s earlier briefing clearly set out its position
that any service provider or vendor merely offering an
enumeration of a customer’s account balance and recent
activity should qualify as providing “billing and accounting
services.” Although the dissenting Judge agreed with
applicant on this bare, minimalist nature of such a recitation
of services, that is not the rule of this case.
Accordingly, we find that the Board did not err in
reaching the earlier decision. Rather, we conclude that in
this request for reconsideration, applicant has simply re-
argued points presented in its earlier briefing of the case.
Serial No. 77197184
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Decision: The final decision dated March 10, 2010, in
which a majority of this panel of the Board affirmed the
refusal to register the application on the ground that
applicant’s specimens of record did not show the applied-for
mark used in direct connection with the sale or advertising of
the recited services, stands. Applicant’s request for
reconsideration is hereby denied.
- o O o -
Opinion by Walsh, Administrative Trademark Judge, dissenting:
I maintain my earlier position on this appeal and
respectfully dissent. I would reverse the refusal for the
reasons stated in my opinion of March 10, 2010.