On-Line Careline, Inc.v.America Online, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 92025193 (T.T.A.B. Mar. 30, 1999)

Hearing: Paper No. 20
June 25, 1998 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
On-Line Careline, Inc.
v.
America Online, Inc., substituted for CompuServe
Incorporated
_____
Cancellation No. 25,193
_____
Kristin K. Jordan of Locke Purnell Rain Harrell for On-Line
Careline, Inc.
Gail L. Morrissey of Standley & Gilcrest for America Online,
Inc.
_____
Before Cissel, Seeherman and Walters,1 Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 28, 1995, Registration No. 1,938,569 issued
to CompuServe Incorporated, an Ohio corporation, for the
mark “ONLINE TODAY.” The services are identified therein as
“providing access to online computer services offering
computer-industry news, commentary and product reviews,” in
Class 42. Use in commerce since September 1, 1984 was

1 Administrative Trademark Judge Walters has been substituted
for Administrative Trademark Judge Simms, who, subsequent to the
Cancellation No. 25,193
2
claimed, and the term “ONLINE” was disclaimed apart from the
mark as shown.
A petition to cancel was filed on January 4, 1996 by
On-Line Careline, Inc., a Texas corporation. As grounds for
cancellation, petitioner asserted that it is using the mark
“ON-LINE TODAY” in connection with “services in the nature
of interactive electronic communication of information,
namely providing information in the fields of financial,
news, sports, weather and general information and in
providing round table discussions whereby users communicate
their opinions on topics and in providing internet access”;
that petitioner has applied to register its mark for these
services2; and that respondent is not using the registered
mark for the services set forth in the registration.
Implicit in petitioner’s pleading is the fact that
under Section 14 of the Lanham Act, paragraph 3, a
registration can be canceled if the mark has been abandoned,
and that failure to use a mark with the goods or services
set forth in the registration constitutes abandonment of the
registered mark, even if the same mark is being used as a
mark for different goods or services.
Respondent’s answer denied the essential allegations
set forth in the petition for cancellation, and asserted as

oral hearing in this case, recused himself from participation in
the decision of this case because of a conflict of interest.
Cancellation No. 25,193
3
an “affirmative defense” that respondent commenced use of
its registered mark long before petitioner’s first use of
its mark and long before the filing date of petitioner’s
application to register its mark. It was not explained how
proving these assertions could overcome proof that the
registered mark is not in use as a service mark for the
services recited in the registration.
A trial was conducted in accordance with the Trademark
Rules of Practice, briefs were filed by both parties, and an
oral hearing before the Board was conducted on June 25,
1998.
The record in this proceeding includes testimony and
discovery from Opposition No. 98,117, made of record in this
proceeding by stipulation of the parties. In that
opposition, the respondent in the instant proceeding is
opposing the registration of the mark of the petitioner in
this proceeding. In the case at hand, we have therefore
considered the following: the registration which is the
subject of this cancellation proceeding; the above-
referenced application filed by petitioner to register “ON-
LINE TODAY” for petitioner’s services; respondent’s
responses to petitioner’s interrogatories and discovery
requests; the trial testimony (with exhibits) of Douglas
Branstetter, respondent’s Manager of Multimedia Products,

2 Application S.N. 74/466, 629, filed Dec.3, 1993, as amended,
recites applicant’s services as “providing telecommunications
Cancellation No. 25,193
4
and of Courtney Wang, petitioner’s President; the discovery
deposition of Mr. Branstetter, made of record by
petitioner’s notice of reliance; and petitioner’s answers to
respondent’s interrogatories.
The sole issue before the Board in this proceeding is
whether respondent is using the registered mark in
connection with the services specified in the registration.
Petitioner contends that respondent uses the mark in
connection with an electronic magazine which is the
electronic counterpart to a printed publication, also known
as “ONLINE TODAY,” but that respondent is not using the
mark for the service of providing access to online computer
services offering computer industry news, commentary and
product reviews. Petitioner takes the position that
respondent does provide access to online computer services,
but that it does so under the mark “CompuServe Information
Service,” not the registered mark “ONLINE TODAY.”
Respondent argues that its use of the mark does
constitute use of the mark as a service mark for the
services set forth in the registration.
Based on careful consideration of the record and the
applicable legal principles and authorities, we conclude
that petitioner has not established that respondent is not
using the registered mark in connection with the services
recited in the registration, “providing access to online

connections to a global computer network.”
Cancellation No. 25,193
5
computer services offering computer industry news,
commentary and product reviews.”
The record clearly shows that in 1983, respondent began
using “Online Today” as the name of a printed magazine which
provided news, software and hardware reviews, computer
industry news, new product announcements and other
information and advertising related to computers. In 1984,
respondent began producing an electronic version of the
magazine. The printed version and the electronic version
coexisted until 1990. From then on, the mark “CompuServe”
was used on the printed version, but the mark “Online Today”
has remained in use in connection with the electronic
version.
Mr. Branstetter characterized “Online Today” as “an
online counterpart to CompuServe Magazine, an electronic
news service that was a companion to CompuServe Magazine.”
(p.9 of his June 19, 1996 testimony). Later in the same
deposition, he called “Online Today” “an information feature
–news feature” of the information service respondent
provides.
The record shows that a subscriber to respondent’s
“CompuServe Information Service” can, among a number of
other choices, access the “Online Today” electronic
magazine, and thereby gain access to respondent’s online
service providing computer-related news, by using the
Cancellation No. 25,193
6
command “GO ONLINE TODAY” or “FIND ONLINE TODAY.” These so-
called “menu items” are shown on a screen provided by
respondent as part of its information services. In a
similar sense, petitioner’s Internet access services are
accessed by clicking on the icon labeled “ONLINE TODAY.”
Both petitioner and respondent use menu items as service
marks for their respective services.
We agree with respondent that petitioner is incorrect
in asserting that just because “ONLINE TODAY” is shown as a
menu item, it is not used to access respondent’s computer
information services. Menu items are the very mechanisms by
which users of both petitioner’s services and users of
respondent’s services access the respective services. As
respondent points out, “access” means “to gain entry to” or
“to get at,” and, when used as a noun, the word means “a
means of access” or “permission or ability to enter or
communicate with.” Webster’s Collegiate Dictionary, at page
6,(10th ed. 1993). The mark is the means by which users of
respondent’s information services gain access to the
computer-related information services provided under that
menu item or heading.
Because the menu item bearing the mark is used by
respondent to enable its customers to get to that section of
respondent’s online information services, the description of
respondent’s services in the registration regarding
Cancellation No. 25,193
7
providing access is accurate. In a very literal sense, the
mark is the designation by which respondent provides access
to the online computer services offering computer industry
news, commentary and product reviews.
Petitioner has not established that the registered mark
has been abandoned, in that petitioner has not shown that
the registered mark is not used to identify the services set
forth in the registration, so the petition to cancel cannot
be granted.3

3 At the oral hearing on this matter, the advisability of an
amendment to the recitation of services in respondent’s
registration was discussed. One option put forth was to
strike the words “providing access to” from the beginning of
the clause. Although, as indicated above, we find that the
existing recitation of services is broad enough to encompass
the services respondent is rendering under its mark, we
state for the record that we agree that such an amendment
would be an acceptable clarification. [As the testimony
demonstrates, the “providing access” language may
unnecessarily lead to the misconception that the service
respondent provides under the mark involves providing access
to the Internet. As we noted above, respondent does provide
Internet access, but it does so under the mark
“CompuServe.”] By striking the words “providing access,”
respondent would avoid the possibility of creating a
misunderstanding and emphasize the central focus of the
services that it uses “ONLINE TODAY” to identify, online
computer services offering computer industry news,
commentary and product reviews. If respondent made such an
amendment, it might satisfy the concerns of petitioner. No
formal amendment was proffered after the hearing, however,
and such an amendment is not necessary to our decision.
Cancellation No. 25,193
8
Decision: the petition to cancel is denied.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board