Virtuoso, Ltd.

Trademark Trial and Appeal BoardMay 21, 2020

87331400 (T.T.A.B. May. 21, 2020)

This Opinion is not a Precedent of the TTAB Mailed: May 21, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Virtuoso, Ltd. _____ Serial No. 87331400 _____ Shannon W. Bates of Harper Bates & Champion LLP, for Virtuoso, Ltd. Eric Sable, Trademark Examining Attorney, Law Office 117, Hellen Bryan-Johnson, Managing Attorney. _____ Before Ritchie, Larkin, and Johnson, Administrative Trademark Judges. Opinion by Johnson, Administrative Trademark Judge: Virtuoso, Ltd. (“Applicant”) filed an application on the Principal Register to register the mark VIRTUOSO SPECIALISTS IN THE ART OF TRAVEL (standard characters) for “Providing multiple-user access to a global computer information Serial No. 87331400 - 2 - network,” in International Class 38.1 As discussed below, the Examining Attorney has finally refused registration. I. Prosecution History Upon initial examination, the Examining Attorney issued an office action refusing registration of Applicant’s mark under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1 and 45, on the ground that the specimen submitted with the application failed to show use of Applicant’s mark in connection with the original applied-for services in Class 38.2 Applicant responded to this initial office action by submitting arguments against the specimen refusal.3 Unpersuaded by Applicant’s arguments, the Examining Attorney continued the specimen refusal and made it final.4 Applicant subsequently filed a Request for Reconsideration arguing against the final refusal by proposing an amendment of the identification of services to “Providing subscriber-based access to travel-related content on a global computer information network,” in International Class 39.5 Shortly after Applicant filed the Request for Reconsideration, a second non-final office action issued, continuing and maintaining the Class 38 specimen refusal and 1 Serial No. 87331400 was filed on February 10, 2017 pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Applicant’s proposed amendment to the identification of services is discussed herein. 2 May 8, 2017 Office Action, Trademark Status & Document Retrieval (TSDR) database. Citations to the examination record refer to the TSDR by page number where page numbers are cited. 3 Nov. 8, 2017 Response to Office Action. 4 Nov. 30, 2017 Office Action. 5 April 30, 2018 Request for Reconsideration. Serial No. 87331400 - 3 - also raising a new issue that Applicant’s proposed amendment of the identification of the services exceeded the scope of the original identification of services claimed in the application.6 Applicant submitted arguments against the Class 38 specimen refusal and again requested to amend the identification and classification of services to “Providing subscriber-based access to travel-related content on a global computer information network,” in Class 39.7 A subsequent final refusal issued maintaining the original Class 38 specimen refusal and refusing Applicant’s request to amend its identification of services.8 After these final refusals issued, Applicant filed a Petition to the Director requesting amendment of the identification of goods to “Providing subscriber-based access to travel-related content on a global computer information network.”9 Then Applicant submitted a second Request for Reconsideration10 and contemporaneously filed a Notice of Appeal.11 When the second Request for Reconsideration was denied,12 the appeal resumed.13 The appeal is fully briefed. For the reasons detailed below, we affirm both refusals. 6 May 22, 2018 Office Action. 7 Nov. 21, 2018 Response to Office Action, TSDR p. 6. 8 Dec.13, 2018 Office Action. 9 Feb. 13, 2019 Petition to Director. 10 June 13, 2019 Request for Reconsideration. 11 1 TTABVUE. 12 Sept. 30, 2019 Request for Reconsideration After Final Action Denied. 13 6 TTABVUE. Serial No. 87331400 - 4 - II. The Identification of Services Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), provides, in relevant part, that “[t]he applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” The original identification of services in the application, “Providing multiple-user access to a global computer information network,” is quoted directly from the U.S. PATENT AND TRADEMARK OFFICE ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL (ID Manual).14 “With few exceptions, an identification of goods and services will be considered acceptable if it … [m]eets the standards (not necessarily the language) set forth in the ID Manual.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §1402.01(a). “An applicant may amend an unambiguous identification of services that indicates a specific type of service to specify definite and acceptable identifications of services within the scope of the existing terminology.” TMEP § 1402.07(c) (emphasis added). To determine the scope of an identification, the “ordinary meaning” of the wording in the identification is considered. TMEP §1402.07(a). Applicant’s initial identification of services, in Class 38, is of an acceptable scope. However, the specimen submitted to show use of the mark in conjunction with those services fails to do so. Instead of submitting another specimen, Applicant now seeks to amend the identification of services to “Providing subscriber-based access to travel- 14 9 TTABVUE 5; see ID Manual (https://idm-tmng.uspto.gov/id-master-list-public.html), accessed May 11, 2020. Serial No. 87331400 - 5 - related content on a global computer information network,” in Class 39. According to Applicant: At the time of filing, Applicant chose an acceptable ID from the USPTO Trademark ID Manual which it believed most accurately described the services being offered under its mark. Applicant was not aware at the time, as has now been explained by the Examining Attorney, that the description it chose, “providing multiple-user access to a global computer information network” is classified in Class 38 as a telecommunication service and is reserved for those services provided by Internet Service Providers (“ISPs”), such as AOL®, Mindspring®, Verizon®, and Comcast®. See TMEP § 1402.11(a)(iii). … Applicant concedes, as set forth by the Examining Attorney in the Second Office Action, that the USPTO’s ID Manual provides an explanatory note for the particular Class 38 ID entry corresponding to Applicant’s original identification of services, stating that the description should be used by those providing telecommunication access and not content, and that there is a TMEP section dedicated to this particular entry (TMEP § 1402.11(a)(iii)).15 So, Applicant concedes that the original identification of services claimed in the application was incorrect because Applicant now admits that it is a content provider, not an Internet access provider,16 and because the identification of services could not 15 7 TTABVUE 13-14. 16 TMEP §1402.11(a)(iii) provides the following: “Providing multiple-user access to the Internet,” is classified in Class 38. Note: This identification covers those services provided by Internet Service Providers (“ISPs”), such as Cox®, AOL®, Comcast®, Verizon®, and AT&T®. ISPs provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and websites of others via the Internet. These entities are considered “access providers” in that they provide the computer connection needed for a computer user to access a content provider. The word “access” should be limited to these Serial No. 87331400 - 6 - be supported by the specimen offered to show use of the mark in connection with those services. Applicant then argues, however, that it relied on the Office’s past actions in cases involving Applicant’s other related marks for the past 19 years, so Applicant believed that no new identification of services was needed in this case: Applicant also admits that the Application was filed by an attorney, who could have consulted various available resources if she was confused or unsure as to the meaning of this particular ID entry. However, Applicant’s attorney did not see the need to do so since the identical language in its original ID has been relied upon by Applicant to register other marks in Class 38 for the identical content provider services since 2000 – for over 19 years. Applicant’s attorney understandably expected the present application to be examined consistently with its other registrations.17 It is well established that each case must be assessed and decided on its own facts and record; the U.S. Patent and Trademark Office’s allowance of prior registrations is not binding on the Board, regardless of what past actions may have been taken by the Office. In re Ala. Tourism Dep’t, 2020 USPQ2d 10485, at *11 (“‘[w]hile we recognize that ‘consistency is highly desirable,’ . . . consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.’”) (citation omitted); see also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits. . . . Even if some prior registrations had some characteristics services and should not be used in describing the services of a content provider … . 9 TTABVUE 6. 17 7 TTABVUE 14. Serial No. 87331400 - 7 - similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court. . . . [T]he Board (and this court in its limited review) must assess each mark on the record of public perception submitted with the application.”). Consequently, Applicant cannot amend its services to “[p]roviding subscriber-based access to travel-related content on a global computer information network” because it does not provide “access to . . . a global computer information network” within the contemplation of that identification. III. The Specimen Requirement An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of services identified in the application or amendment to allege use. 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a); TMEP §§ 904, 904.07(a). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” 15 U.S.C. § 1127; see 37 C.F.R. § 2.56(b)(2). “To determine whether a mark is used in connection with the services in the application, a key consideration is the perception of the user” of the services. In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). A specimen must show use of a mark in a way that would create a direct association between the mark and the services offered in the minds of potential consumers. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); TMEP § 1301.04(f)(ii); see also JobDiva, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). To show a direct association, specimens consisting of advertising or promotional materials must Serial No. 87331400 - 8 - (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (citing In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP § 1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the applied-for services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). Applicant’s specimen is shown below.18 18 Feb. 10, 2017 Specimen. Serial No. 87331400 - 9 - Serial No. 87331400 - 10 - The submitted specimen fails to show the mark used in a way that would create, in the minds of potential users, a sufficient nexus or direct association between the mark and the originally identified services.19 The application identifies the services as “[p]roviding multiple-user access to a global computer information network.” However, the specimen advertises “Virtuoso hosted websites, webservices content & customized virtuoso.com websites.” The specimen details applicant’s webhosting services as follows: “[a] Virtuoso-hosted website allows you to select from a range of pre-built templates. You have the ability to update and change content when you want, and create a website that best suits your business needs.”20 In addition, the specimen states that “Virtuoso’s Webservices (Content) Package is a collection of content for your website including our special offers and publications. Once you have added the content to your website, it automatically updates for you.”21 Lastly, the specimen lists Applicant’s various service offerings and pricing, which include: “hosted website,” “webservices content,” “customized virtuoso.com website,” and “other virtuoso hosting offerings” such as “domain transition,” “domain name registration,” and “email hosting.”22 19 Again, the specific identification of services, “[p]roviding multiple-user access to a global computer information network,” refers to ISP services in the nature of providing a computer connection that enables a computer user to access the databases and websites of others via the Internet. The identification only covers ISP services. See TMEP § 1402.11(a)(ii)-(iii). Applicant, however, provides content -- not ISP services. 20 Feb. 10, 2017 Specimen. 21 Id. 22 Id. Serial No. 87331400 - 11 - At best, the specimen’s repeated vague references to “webservices content” shows an association with content-provider services, which are classified in a variety of different classes, none of which are in Class 38. See TMEP § 1402.11(a)(ii) (“Content- provider services may be classified in a variety of classes depending upon the nature of the activity provided.”). Conversely, the “providing access” portion of the identification of services is not equivalent to merely making content available for users; instead, it actually means providing the computer connection needed for a user to access the Internet. TMEP § 1402.11(a)(iii) (“The ‘providing multiple-user access’ identification only covers the ISP services. If the applicant wishes to protect its ‘content-based’ services, it must identify those services with specificity and pay any additional fees, as appropriate.”). Applicant’s specimen of record fails to show the applied-for mark being used in association with “[p]roviding multiple-user access to a global computer information network,” and as previously discussed, none of Applicant’s service offerings show a direct association with the identified services of record. As such, the specimen refusal was also proper under Trademark Act Sections 1 and 45. Decision: The refusals to register Applicant’s mark, VIRTUOSO SPECIALISTS IN THE ART OF TRAVEL, for “Providing multiple-user access to a global computer information network,” in International Class 38 are affirmed.