Teletellme LLC

Trademark Trial and Appeal Board

Mar 9, 2005

No. 76506911 (T.T.A.B. Mar. 9, 2005)

Mailed: March 9, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Teletellme LLC
________

Serial No. 76506911
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Myron Amer, P.C. for Teletellme LLC.

Michael Kazazian, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Walters and Drost, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application was filed by Teletellme LLC to register
the mark ANSWER5 for services ultimately identified as
“providing multiple user dial-up and dedicated access to
the Internet in response to telephone requests from
individuals requesting this access.”1
The examining attorney refused registration on the
ground that applicant failed to submit acceptable specimens

1 Application Serial No. 76506911, filed March 31, 2003, alleging
dates of first use of December 28, 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76506911
2
showing actual use of the mark with the services recited in
the application.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs, but an
oral hearing was not requested.
Applicant has submitted as a specimen an informational
brochure which its uses to promote its services. The
examining attorney contends that the brochure does not show
use of the mark ANSWER5 in connection with the multiple
user dial-up and dedicated Internet access services
identified in the application. According to the examining
attorney, multiple user dial-up and dedicated Internet
access services are in the nature of telecommunications
services that are provided by Internet service providers.
The examining attorney maintains that as used on the
specimen, ANSWER5 identifies “an information provider
service,” rather than the type of Internet access services
provided by an Internet service provider.
Applicant, in urging reversal of the refusal, requests
that the Board take a flexible approach, as it did in In re
Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992), and accept
applicant’s specimens.
Trademark Rule 2.56(a) provides, in part, that an
application alleging use must include one specimen showing
Ser No. 76506911
3
the mark as used on or in connection with the sale or
advertising of the services in commerce. Trademark Rule
2.56(b) further specifies that a “service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” Section 45 of the Trademark
Act provides, in part, that a service mark is used in
commerce “when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce . . ..”
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services specified in the application
and there must be sufficient reference to the services in
the specimens to create this association. In re Monograms
America Inc., 51 USPQ2d 1317 (TTAB 1999). It is not enough
that the term alleged to constitute the mark merely be used
in sales or advertising material, there must also be a
direct association between the term and the services
resulting from the particular use or display of the mark.
In re Johnson Controls Inc., 33 USPQ2 1318 (TTAB 1994); and
Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320
(TTAB 1985). The mark must be used in such a manner that
it would be readily perceived as identifying the source of
Ser No. 76506911
4
such services. In re Advertising & Marketing Development,
Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987); In re
Adair, 45 USPQ2d 1211 (TTAB 1997); and In re Metrotech, 33
USPQ2d 1049 (Com’r Pats. 1993). See TMEP §1301.04 (3d ed.
rev. 2003).
The determination of whether applicant’s specimen
shows the mark ANSWER5 in connection with the sale or
advertising of the recited services necessarily requires a
consideration of the specimen. As previously noted,
applicant has submitted an informational brochure as its
specimen. ANSWER5 is used in the following manner in
applicant’s brochure:
Call TOLL-FREE 888—ANSWER5 that’s TOLL-FREE 888-
ANSWER5

Have you had your ANSWER5 moment today?

How Does It Work?

Our more than formally trained Personal Internet
Agents are standing by at PC terminals waiting
for a member to call. Each PIA has a college
degree and most have graduate degrees or advanced
credits in such areas as healthcare, finance,
engineering, and technology. They have been
individually trained on in-depth delivery of the
services ANSWER5 currently offers: email
dictation, transcription and delivery; lightning
quick info searches providing basic need-to-know
information such as flight arrivals, stock
quotes, addresses, phone numbers, directions, and
recipes as well as impulse information such as
horoscopes, the front page of foreign or local
newspapers, lyrics to a song, or a final answer
Ser No. 76506911
5
to a raging debate; and in-depth research on
topics ranging from the Crimean War to cloning.

ANSWER5 has appeal to anyone who wants to use the
Internet and doesn’t have traditional access.

Member rates

The fee for membership is $19.99 per month. That
rate will be frozen for the first year. As a
member, each call will cost $.99 for the first
five minutes of research and reporting of the
results.

We find that the brochure does not show use of
the mark ANSWER5 for the multiple user dial-up and
dedicated Internet access services recited in the
application. Rather, ANSWER5 is used in such a manner
on the specimen that it would be perceived as
identifying an email and search service for persons
without access to the Internet. In this regard,
applicant states in its brochure that ANSWER5 “has
appeal to anyone who wants to use the Internet and
doesn’t have traditional access.” As the examining
attorney has pointed out, “providing multiple user
dial-up and dedicated access to the Internet” is a
term of art for an Internet service provider. See
TMEP Section 1402.11(a). This term is not appropriate
for what is essentially a research service.
The Board has taken a flexible approach to
accepting service mark specimens. The Board accepted
Ser No. 76506911
6
a computer screen display which featured applicant’s
mark but did not make any reference whatsoever to the
services for which applicant sought to register the
mark. However, in that case, “applicant explained in
its declaration [that] the specimens show the mark as
it appears on a computer terminal in the course of
applicant’s rendering of” its services, namely the
transmission of data to subscribers. Metriplex, 23
USPQ2d at 1316. However, in the present case, there
is nothing in the record to indicate that applicant
renders the services recited in the application.
Rather, after reviewing applicant’s specimen, it
appears that applicant is not actually rendering
multiple user dial-up and dedicated Internet access
services. Instead, applicant appears to be conducting
Internet searches and sending emails for others, in
response to their requests made via telephone. As
indicated in the brochure, applicant’s “Personal
Internet Agents” conduct searches of a proprietary
electronic database that “allow most member requests
with ANSWER5 to be answered live, dynamically, and
within 5 minutes.” Thus, this appears to be a case
where applicant initially (and subsequently) failed to
accurately describe its services. Moreover, further
Ser No. 76506911
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amendment to the recitation of services to accurately
describe the services would not have been allowed
because it would have substituted a different type of
service.
In sum, we find that the specimen of record does
not show use of the mark ANSWER5 for “providing
multiple user dial-up and dedicated access to the
Internet in response to telephone requests from
individuals requesting this access.”
Decision: The refusal to register is affirmed.