Teligence (Canada), Inc.

Trademark Trial and Appeal Board

Oct 22, 2009

No. 78670554 (T.T.A.B. Oct. 22, 2009)

Mailed: October 22, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Teligence (Canada), Inc.
________

Serial No. 78670554
_______

Dana B. Robinson of TechLaw LLP for Teligence (Canada),
Inc.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Grendel, Zervas, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Teligence (Canada), Inc., a Canadian corporation, has
filed an application to register the term CHATLINE (in
standard character format) as a trademark for “telephone
dating services” in International Class 45.1 The
application is based on use in commerce under Section 1(a)
and ownership of a foreign registration under Section
44(e).2

1 Application Serial No. 785670554, filed July 14, 2005.
2 Applicant claims a date of first use in commerce on November
14, 2002.
THIS OPINION IS NOT
PRECEDENT OF THE TTAB
Serial No. 78670554
2
Registration was initially refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that the proposed mark is merely descriptive of
applicant’s services. Applicant then sought to register
the mark under Section 2(f) based on a claim that the
proposed mark has acquired distinctiveness. In response,
the examining attorney maintained the descriptiveness
refusal and denied applicant’s Section 2(f) claim and, in
the same Office action, advised applicant that the mark is
“likely generic for the services.” Applicant then
conditionally amended the application to seek registration
on the Supplemental Register.3 The examining attorney
refused the amendment to the Supplemental Register of the
mark under Section 23 of the Trademark Act, 15 U.S.C. §
1091, on the ground that it is incapable of identifying
applicant’s services because it is generic.4

3 In its response (dated March 25, 2007), applicant states, “Even
if the Examining Attorney holds that the mark is descriptive,
Applicant contends that it is not generic and thus respectfully
requests registration on the supplemental register. Applicant
again urges that its 2f was proper, that the mark is entitled to
registration as a Principal Registration, but that it will accept
an amendment to the Supplemental Register if the Examiner
continues to disagree.”
4 In its appeal brief, applicant argues that the examining
attorney “has repeatedly vacillates (sic) between genericness and
descriptiveness as the grounds on (sic) she denies Applicant’s
registration.” Brief, p. 9. However, it appears that the
examining attorney followed the proper procedure regarding the
refusals set forth in the Office actions. Applicant is referred
to Section 1209, including all subsections to section 1209, of
the Trademark Manual of Examining Procedure (TMEP) (5th Ed. rev.
Serial No. 78670554
3
When the genericness refusal was made “final,”
applicant concurrently filed an appeal and a request for
reconsideration. The examining attorney denied the request
for reconsideration and the appeal has been fully briefed.
For the reasons discussed below, we affirm the refusal.
To be registrable on the Supplemental Register, the
matter sought to be registered “must be capable of
distinguishing applicant’s goods or services.” Trademark
Act Section 23(a), 23(c). “Generic terms are common names
that the relevant purchasing public understands primarily
as describing the genus of goods or services being sold.
They are by definition incapable of indicating a particular
source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2001)(citations omitted). Because they are incapable
of identifying source, generic terms are not registrable on
the Supplemental Register.

September, 2007). In particular, Section 1209.02(a)(i) provides
that “[i]f the applicant responds to a §2(e)(1) descriptiveness
refusal by amending its application to the Supplemental Register,
this amendment presents a new issue requiring consideration by
the examining attorney...[and] [i]f the examining attorney
determines that the designation is a generic name for the
applicant’s goods or services, the examining attorney should then
issue a nonfinal action refusing registration on the Supplemental
Register. The statutory basis for such a refusal is § 23 of the
Trademark Act.”

Serial No. 78670554
4
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, supra, 228 USPQ at
530.
In this case, the genus of services is adequately
defined by applicant’s recitation of services, namely,
“telephone dating services.” Applicant agrees that this is
the genus of services for us to consider.
Serial No. 78670554
5
The next question we must address is whether the
purchasers or consumers of telephone dating services would
understand CHATLINE to primarily refer to these services.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We find that the examining attorney has submitted
ample and clear evidence that the relevant purchasing
public would understand the proposed mark CHATLINE
primarily to refer a type of service that could include the
genus of services, namely, telephone dating services.
Specifically, the examining attorney submitted the
following dictionary definition:5
chat line: a telephone service where several
users conduct group discussions; by extension, an
internet site where users conduct group
discussions, also called chatroom, chatline.

[from Webster’s New Millennium Dictionary of
English (Preview Edition)]

The printouts for the above definition, obtained from
the website www.dictionary.com, also show advertisements
for “Free Chat-Line...Chat & Dating with 1000s of Singles

5 Attached to Office action dated September 27, 2007.
Serial No. 78670554
6
100% Complimentary [website link provided]” and “Chat
Line...Email Local Singles For Free No Credit Cards
Necessary [website link provided].” In addition to these
advertisements, the examining attorney attached printout
copies from numerous third-party websites and from the
LexisNexis database showing usage of the term “chat line”
in articles and advertisements in connection with the
telephone dating services.6 These article excerpts and
advertisements include (emphasis added):
Welcome to “Club Paradise” Nationally Advertised
Dating Service and Chatline Free Membership
Meet Someone TODAY!!! Call (900) ###-3222 ext
#### Call NOW!!!
[from www.bionet.com]

Chatline Phone Numbers – Meeting Singles Through
Chatline Phone Numbers
Chatline phone numbers have become tremendously
popular now-a-days, as being a great way to meet
dating partners through phone. Irrespective of
where are the individuals, these chatline numbers
allow them access to hundreds of profiles of men
and women available for chatting and dating.
[from www.isnare.com, advertised below heading,
“More Free Articles by Michael Francis”];

***Free Dating Phone Chat Line Affiliate
Program***
...Our dating voice chat line is the easy way to
meet sexy people in your local area just by
grabbing the phone and calling right now!
Hundreds of sexy singles are waiting on our chat
lines for you call, so get in on the fun. It’s
free to try our phone sex adult chat dating
service, so call!...0Dollars offers the first

6 Attached to Office actions dated September 13, 2006; September
27, 2007; and April 15, 2008.
Serial No. 78670554
7
affiliate program in the lucrative phone dating
chat line industry.
[from www.5staraffilateprograms.com];

YAHOO! Answers
How do I start my own phone chat line dating
service? what equipment do I need where do they
sell it...Best Answer...I started my own chat
line in Texas, it takes a lot of money just to
get started...my chat line number is listed on
the website...
[from www.answers.yahoo.com];

Phone Dating Lines – Using The Phone to Date
...Now you must be thinking of where to find a
suitable sugar daddy then phone dating lines are
the perfect options available to you. ...Chat
lines, telephone dating, friendship lines as well
as phone dating lines are becoming tremendously
popular approach of meeting people either for
romance or friendship.
[from www.articlesgarage.com]; and

Two men robbed in Minneapolis dating chatline
scam (Associated Press, January 26, 2000)...
Two lonely guys in their 40s saw late-night TV
commercials for chatlines and gave them a call.
But instead of getting hot dates, they got
robbed.
[from www.KXMO.com].

In response to the aforementioned evidence and the
examining attorney’s position, applicant cites to the
Board’s decision in In re America Online, 77 USPQ2d 1618
(TTAB 2006) and argues that its “advertising and licensing
activities refute a finding of genericness.” Brief, pp. 1-
2. “Like AOL, applicant has also advertised through
various media, including the internet, magazines,
newspapers and television. The result of this extensive
Serial No. 78670554
8
advertising is that relevant consumers recognize ‘CHATLINE’
to be indicative of source.” Brief, p. 4. Applicant
argues that its mark is, at worst, suggestive. In this
regard, applicant relies almost exclusively on the
declaration of its Corporate Secretary, Garth Goddard. In
this declaration, initially submitted by applicant to
support its claim that the mark has acquired
distinctiveness, Mr. Goddard states, inter alia, that
applicant made first use of the proposed mark in August of
1990 in connection with “telephone introduction services”;
that “[applicant’s] predecessors, affiliates and licensees
have made consistent efforts to market and promote its
telephone introduction service”; that, since 1990,
“millions of customers throughout the country, and around
the world, have seen the marketing efforts...in relation to
the [proposed mark]”; that applicant’s “predecessors and
licensees have spent millions of dollars on advertising the
CHATLINE mark”; and that the “services are advertised and
promoted to the general public through internet web sites,
magazines, newspapers and television.”
Applicant’s reliance on the America Online decision in
support of its position is misplaced. As we have often
stated, each case must be determined based on its own facts
and evidentiary record. Here, the circumstances are
Serial No. 78670554
9
significantly different from those that were present in
America Online. Applicant herein submitted a single
declaration of its corporate secretary who gives general
figures regarding the advertisement expenses, numbers of
consumers and exposure of applicant’s mark, without any
further substantiating evidence. Other than stating his
corporate title and that he has been employed by applicant
“for over 9 years holding numerous executive positions,”
Mr. Goddard does not explain the basis for his averments
regarding such figures. This is in contrast to the
situation in America Online, which not only involved a
different industry but also the record established that
applicant had over eighty million users that send
approximately one billion messages each day using the
applicant's services. The record also showed that many
corporations were licensed to use the involved mark and
affidavits from customers attesting to the mark's source-
identifying significance. In re America Online, 77 USPQ2d
1625.
Applicant further makes a point that its proposed mark
consists of “a single word, ‘CHATLINE’, rather than ‘Chat
line’...” Brief, p. 10. Applicant apparently believes
this is relevant because the words “‘chat’ and ‘line’ have
many distinct meanings, and the combination of the two does
Serial No. 78670554
10
not produce a term that inherently has a clear or common
meaning in ordinary language.” Id. at 7. As to the
dictionary definition of the word “chatline” (provided
above), applicant believes it is not applicable because it
references “several users” and thus involves “an entirely
different set of services altogether.” Id. According to
applicant, the defined service is not “in the same category
as applicant’s goods (sic). Applicant’s product (sic) is
specifically for the purposes of dating, and involves only
two callers, not multiple.” Id. at p. 10-11.
Applicant’s arguments are without merit. First,
applicant’s proposed mark CHATLINE is the legal equivalent
of the term “chat line.” The elimination of the space
between the words does not change the fact that consumers
will clearly perceive the proposed mark CHATLINE as the
equivalent of “chat line.” Cf., In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987)(SCREENWIPE
legally equivalent to SCREEN WIPE); In re A La Vieille
Russie Inc., 60 USPQ2d 1895 (TTAB 2001)(RUSSIANART legal
equivalent of RUSSIAN ART). Moreover, several of the
article excerpts and advertisements show the term
“chatline” spelled as one word. The evidence of record
clearly shows, the term “chat line” or “chatline” is used
to identify a telephone service that allows callers to talk
Serial No. 78670554
11
to each other for purposes of dating or meeting up.
Whether the chat line service gives access to more than two
callers is irrelevant; the identification of services does
not specify that the telephone dating service may only be
used by two persons, and the record does not contain any
evidence that such services may only be used by two persons
at one time. Indeed, the evidence indicates that telephone
chat lines will involve multiple callers seeking dates (see
advertisement excerpts above, e.g., “these chatline numbers
allow them access to hundreds of profiles of men and women
available for chatting and dating” and “Hundreds of sexy
singles are waiting on our chat lines for your call”).
As noted above, the evidentiary burden of establishing
whether a term is generic rests with the Office and the
showing must be based on clear evidence. Here, the
evidence of record establishes that telephone dating
services are often called “chat lines.” The examining
attorney has therefore established a prima facie showing
that applicant’s proposed mark CHATLINE is generic for a
telephone dating service. Applicant has not rebutted this
showing.
Although the examining attorney’s final refusal of
registration of applicant’s proposed mark was limited
solely to the genericness issue (and whether applicant
Serial No. 78670554
12
could register the mark on the Supplemental Register), both
applicant and the examining attorney addressed in their
briefs the separate issue of whether the proposed mark has
acquired distinctiveness. In addition, applicant argued
that it is entitled to registration of its mark on the
Principal Register under Section 2(f) when it conditionally
amended the application to seek registration on the
Supplemental Register (see footnote 3). Accordingly, we
now consider applicant’s alternative argument that it is
entitled to register its mark on the Principal Register
based on the mark having acquired distinctiveness.
We begin by noting that applicant has conceded the
descriptive nature of its proposed mark insofar as it seeks
registration of the entire mark under Section 2(f). Yamaha
International Corp. v. Hoshino Gakki, 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988)(a claim that the
applicant’s mark has acquired distinctiveness under Section
2(f) is a concession that the mark is merely descriptive).
Moreover, because we find that the proposed mark is highly
descriptive, the standard for establishing acquired
distinctiveness becomes more difficult for applicant. Id.
at 1008 (The kind and amount of evidence of acquired
distinctiveness required to secure a registration will
necessarily vary with the subject matter for which
Serial No. 78670554
13
registration sought.) Here, applicant’s evidence does come
close to rising to the level to support registration on the
Principal Register based on acquired distinctiveness under
Section 2(f). Again, Mr. Goddard’s declaration is lacking
in this regard. His statements concerning the general
dollar figures regarding advertising and sales of
applicant’s services not only lack specificity (e.g., the
years for such figures), but also lack any corroborating
evidence. More importantly, Mr. Goddard does not describe
the manner in which CHATLINE has been advertised in
connection with its services to show that customers
perceive this term as identifying the source of the
services rather than just being a merely descriptive term.
Noticeably absent from the record is any direct evidence
that consumers perceive CHATLINE as a source indicator for
applicant’s services. Accordingly, even if applicant
should ultimately prevail in any appeal of our
determination that its proposed mark is generic, we further
find based on the record before us that the proposed mark
is descriptive and has not acquired distinctiveness.
Decision: The refusal to register CHATLINE in
application Serial No. 78670554 on the Supplemental
Register based on genericness under Section 23 is affirmed.
In the event that applicant’s proposed mark is ultimately
Serial No. 78670554
14
found not generic and the application is considered as
seeking registration on the Principal Register, the refusal
to register based on the examining attorney’s finding that
the Section 2(f)showing is insufficient is affirmed.