The Board affirmed the USPTO’s refusal to register the term UNLIMITED CARRYOVERfor telecommunication services, finding that the phrase, as used on applicant’s specimen of use (shown right), failed to function as source indicator for the recited services. In re TracFone Wireless, Inc., Serial No. 87221529 (June 10, 2019) [precedential] (Opinion by Judge Susan J. Hightower).

The Board observed that the critical question in determining whether a purported mark serves as a source indicator is whether the term would be perceived as a mark by relevant consumers. To make that determination, one must look to how the term is actually used in the marketplace.

Examining Attorney Allison Holtz contended that, as displayed on the specimen of use, UNLIMITED CARRYOVER does not identify the source of the services and distinguish them from others, due to the placement of the phrase on the specimen and because the phrase is informational and common. The Board agreed.

[T]he wording UNLIMITED CARRYOVER is last in a list of apparent features of Applicant’s “No-Contract Plans with Talk, Text, Data and Unlimited Carryover® starting at $15.” The phrase is set in the midst of other clearly informational matter, far from the TRACFONE logo. This suggests that UNLIMITED CARRYOVER too is informational matter.

The Board saw nothing in the specimen to suggest that “Unlimited Carryover” identifies the source of telecommunications services, “any more than the other listed components of Applicant’s plans: ‘Talk,’ ‘Text,’ and ‘Data.'” Instead, the phrase “will be perceived as part of the services rather than as a mark designating the source of the services.”

The Board observed that the inherent nature of the phrase is merely informational. Several examples of  use of the term “carryover” by Applicant TracFone and by a third party supported a finding that UNLIMITED CARRYOVER “will be perceived as informational slogan which conveys information about carrying over unlimited data from on telecommunications billing cycle to the next rather than as a service mark.”

While the record may not support a finding that UNLIMITED CARRYOVER is a widely used phrase, it does support a finding that the meaning of the phrase simply provides information about the services, and Applicant’s manner of use underscores and illustrates that meaning, and how it would be perceived by consumers as such.

TracFone pointed to its ownership of a registration on the Supplemental Register for the same mark for essentially the same services. The specimen for that registration is identical to the specimen here. [Thus the use of the registration symbol on the specimen – ed.]. The Board was not impressed.

The specimens for the registration on the Supplemental Register are not of record, and Applicant’s argument is circular. The registration also is more than eight years old; consumer perception of UNLIMITED CARRYOVER may have changed with the passage of time.

The Board further observed that each case must be decided on its own merits. “The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney in another application. [citations omitted]. This is particularly the case when the prior registration is nearly a decade old and involves the rapidly evolving field of telecommunications.”

Further, an applicant may not resort to Section 2(f) to register a term that does not identify source and is merely informational because such a term does not meet the statutory definition of a mark [Section 45 of the Lanham Act] and is therefore unregistrable. [Contrast this with merely ornamental matter – ed.].

Conclusion: Considering the entire record, the Board found that TracFone’s specimen of use was insufficient to show use of UNLIMITED CARRYOVER as a service mark for the identified services.

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TTABlog comment: Suppose TracFone had provided survey evidence that the phrase serves as a source indicator? Would that be considered de facto secondary meaning, as in the case of a generic term, and thus non-probative?

Text Copyright John L. Welch 2019.