Solutions NOW

Trademark Trial and Appeal Board

Aug 27, 1999

No. 74645035 (T.T.A.B. Aug. 27, 1999)

Paper No. 16
EWH/cj
THIS DISPOSTION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Solutions NOW
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Serial No. 74/645,035
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Donald R. Piper, Jr. of Dann, Dorfman, Herrell and
Skillman, P.C. for Solutions NOW.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
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Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Solutions NOW (applicant) seeks to register UNBUNDLING
for “technical consultation and research in the fields of
engineering and product development.” The intent-to-use
application was filed on March 7, 1995. Subsequently,
applicant filed a statement of use alleging a first use
date of January 28, 1996 and submitting three specimens of
use.
Ser No. 74/645,035
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The Examining Attorney refused registration pursuant
to Sections 1, 2, 3 and 45 of the Trademark Act “on the
basis that the proposed mark merely identifies a process.”
(Examining Attorney’s brief page 1). When the refusal to
register was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request a hearing.
As the Examining Attorney acknowledges, if “the name
of the process is used to identify both the process and the
services rendered by means of the process by the proprietor
thereof, the designation may be registrable as a service
mark.” (Examining Attorney’s brief page 3). This legal
proposition was fully explained in In re Universal Oil
Products, 476 F.2d 653, 177 USPQ 456 (CCPA 1973).
The key to understanding whether the term UNBUNDLING
identifies (1) only a process and is thus not registrable,
or (2) identifies a service or a service and a process and
is thus registrable must be determined by reviewing
applicant's specimens of use. In pertinent part,
applicant's specimens read as follows:
Solutions NOW ... has designed and developed a
new process to help military scientists use their
knowledge and experience to create new strength
in the commercial economy. ... The first of
these heretofore missing links is a way to
identify the know-how of the individual military
Ser No. 74/645,035
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technologist ... The interview uncovers the
individual subject’s way of knowing ... rather
than the components of an invention or the
military task on which the person worked. In
this way the process of UNBUNDLING (SM) focuses
on the individual technologist.
Applicant has made of record evidence showing that it
has marketed its services to private corporations as well
as to various components of the United States military,
such as the Office of Naval Research.
We find that the specimens of use demonstrate that
applicant is rendering a specific service under the mark
UNBUNDLING. Put quite simply, applicant’s services consist
of assisting military personnel in transferring their
technical knowledge to the civilian field.
We recognize that in its specimens of use, applicant
itself has used the word “process.” However, applicant
could have just as easily used the word “service” in lieu
of the word “process.” Thus, applicant could have stated
in its specimen of use that it “has designed and developed
a new service to help military scientists use their
knowledge and experience to create new strength in the
commercial economy.” Likewise, applicant could have said
that “in this way the service of UNBUNDLING (SM) focuses on
the individual technologist.” To focus on applicant’s use
of the word “process” in lieu of the word “service”
Ser No. 74/645,035
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incorrectly places form over substance. In any event, we
believe that, at a minimum, applicant’s mark UNBUNDLING
identifies both a process and a service, and thus pursuant
to Universal Oil Products is registrable as a service mark.
Decision: The refusal to register is reversed.
E. W. Hanak
G. D. Hohein
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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