Teligence (Canada), Inc.Download PDFTrademark Trial and Appeal BoardOct 22, 2009No. 78670554 (T.T.A.B. Oct. 22, 2009) Copy Citation 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. Copy with citationCopy as parenthetical citation