Failure-to-Function: Sections 1, 2, 3, and 45 of the Trademark Act provide the statutory basis for refusing to register a proposed mark that fails to function as a service mark. The USPTO is constrained to register matter that “identify and distinguish the services of one person … from the services of others and … indicate the source of the services.” The key question, then, is whether the matters sought to be registered “would be perceived as a mark identifying the source of the services.”
In attempting to show that the proposed mark is perceived as a source indicator, applicant submitted the results of two surveys, but the Board found the survey expert’s methodology flawed and his conclusions regarding inherent or acquired distinctiveness unsupported. The Board noted that the expert did not conduct a “mini-course” to test the understanding of the survey participants as to whether something functions as a mark, and so the Board could not “determine whether the survey respondents understand or can identify a mark.” The Board therefore discounted the value of the survey results due to “the lack of proper foundation for their introduction.”
Moreover, the survey was based on a biased and underinclusive universe, since it included only consumers who had already utilized applicant’s services rather than customers for any tour bus company. The questions were leading and failed to capture “the actual and exact motion mark or trade dress that applicant seeks to register.” None of the survey questions asked whether the respondents associated the proposed mark with applicant as a source indicator.
In sum, the Board found no basis for the expert’s conclusion that the results supported a finding of distinctiveness, either inherent or acquired.
The evidence showed that applicant’s promotional material “displays various images of a tap dancer along with other identifiers, principally, The Ride and The RideNYC.com. The Board concluded that it “cannot infer … that consumers will perceive the proposed mark, amid these other more traditional designations, as a source indicator.”
If anything, the applied-for mark appears to be part of one of several street performances offered during sightseeing bus tours under Applicant’s trade name, “The Ride.” The Kaiser surveys similarly suggest that consumers of Applicant’s services and travel professionals associate Applicant’s services with “The Ride,” and fail to provide support for Applicant’s argument that the proposed mark functions as an indicator of source. Rather, the Kaiser surveys and other evidence appear to establish that consumers view THE RIDE as Applicant’s mark.
Therefore, the Board agreed with Examining Attorney Barney L. Charlon that applicant’s proposed mark fails to function as a service mark for applicant’s services. Consequently, applicant’s claim of acquired distinctiveness was given no consideration.
Insufficient Specimens of Use: A specimen of use must display the proposed mark and show a direct association between the mark and the services. TMEP Section 1301.04(f). Applicant submitted screenshots, photographs, and a .wmv video file, none of which displayed the motion mark as depicted in the drawing, and therefore the specimens were “insufficient to support use of the proposed mark to identify the source of Applicant’s services.”
Incomplete Description of the Mark: Rule 2.37 requires that a description of the mark must be included if the mark is not in standard characters. Rule 2.52(b)(3) states that this requirement applies to motion marks. All significant aspects of the mark should be described. TMEP Section 808.02.
Applicant described its mark as “the live visual elements and motion elements of the trade dress of a guided bus tour in which as the bus approaches at least one predetermined location on that tour an entertainer who is dressed as a banker walks normally along the street and then performs a tap dance routine dancing act when the bus stops at the predetermined location as viewed from the inside of the bus.”
The Board found that applicant’s description does not clearly indicate what elements displayed in its drawing (above) are claimed, beyond the suited individual and his briefcase. Applicant also failed to indicate “that the trade dress is three-dimensional or whether, in the alternative, the trade dress is a two-dimensional mark that could be interpreted as three-dimensional.”
The Board therefore found that the description “fails to comply with the requirements of TMEP Section 1202.03(c)(ii) for a proposed mark consisting of trade dress.” [The TMEP is not the law, it is merely a guide. So how can a refusal be based on the TMEP? – ed.]
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Text Copyright John L. Welch 2020.