Advanced Telecommunication Network, Inc.

Trademark Trial and Appeal Board

Oct 29, 1999

No. 75192310 (T.T.A.B. Oct. 29, 1999)

Paper No. 17
gfr
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 29,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Advanced Telecommunication Network, Inc.
________
Serial No. 75/192,310
_______
Rachel Brendzel of Blank Rome Comisky and McCauley LLP
for Applicant.
Frances G. Smith, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Walters, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of ADVANCED ACCESS for
“prepaid telephone calling card services,” in International
Class 36. In her initial action on the application, the
examining attorney entered, by examiner’s amendment
indicating the approval of applicant’s counsel, a
disclaimer of ACCESS. Applicant’s counsel, however,
promptly objected to entry of the disclaimer, arguing that
ACCESS is not descriptive of applicant’s services.
Ser. No. 75/192,310
2
The examining attorney then made final the refusal of
registration based on applicant’s failure to comply with
the requirement for the disclaimer, under Section 6 of the
Trademark Act, 15 U.S.C. §1056.1 Applicant has appealed.
Both the applicant and the examining attorney filed briefs.
An oral hearing was not requested.
The examining attorney contends that calling card
services allow users to access telephone lines and
applicant’s service “simply provides advanced access to
callers, by letting them prepay the costs of accessing the
telephone lines, so that they will not have the
inconvenience of having to find exact change….”
Applicant argues both that ACCESS is not descriptive
and need not be disclaimed and that its composite mark
ADVANCED ACCESS is not descriptive because it “does not
convey any immediate and unambiguous meaning.” In denying
a request for reconsideration, the examiner attached a good
deal of evidence of use of the phrase “advanced access” in
the telecommunications industry. Notwithstanding
applicant’s arguments and the examining attorney’s evidence
regarding the descriptive significance of the phrase
ADVANCED ACCESS, the appeal is limited to the question of

1 We construe the examiner’s amendment to embody a written
requirement for entry of the disclaimer. Thus, the examining
Ser. No. 75/192,310
3
whether ACCESS is descriptive of prepaid telephone calling
card services.
Apart from contesting the sufficiency of the evidence
of descriptiveness made of record by the examining
attorney, applicant argues (1) that there are existing
third-party registrations for marks containing the term
“access” which do not include a disclaimer, thereby
establishing that it is not the office’s practice to
require a disclaimer of the term, and (2) that its mark is
unitary and that a disclaimer is therefore inappropriate.
In regard to the first of these arguments, we sustain
the examining attorney’s objection to any consideration of
the registrations referenced by the applicant, because they
have not been properly made of record and have only been
referenced in a list by mark, registration number and goods
or services. Inasmuch as the objection is well taken, we
have given these registrations no consideration. See In re
Golden Griddle Pancake House Ltd., 17 USPQ2d 1074, 1075
(TTAB 1990); see also, Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992). In any event, even had we considered the
registrations, they would not have been persuasive, as each
case must be decided on its own merits. Moreover, even a

attorney did not act prematurely in making the refusal of
registration final in the second office action.
Ser. No. 75/192,310
4
cursory review of applicant’s list of registrations reveals
that none are for marks for calling card services.
In regard to the second of its arguments, applicant
asserts that the initial “A” in each of the terms in its
mark yields an alliterative quality and makes its mark
unitary. While it is office policy not to require
disclaimers of portions of unitary marks, we are not
persuaded that applicant’s mark is unitary and entitled to
the benefit of this policy.
We are left, then, with the question whether the
examining attorney has made of record sufficient evidence
to establish the descriptiveness of “access” when used in
conjunction with applicant’s services. The evidence is
assessed from the point of view of the average or ordinary
consumer in the class of prospective purchasers for
applicant’s service. See In re Omaha National Corporation,
2 USPQ2d 1859, 1861 (Fed. Cir. 1987). Moreover, the
evidence will have to establish that “access” immediately
describes an ingredient, quality, characteristic or feature
of applicant’s services or conveys information regarding
the nature, function, purpose or use of the services. See
In re Abcor Development Corp., 200 USPQ 215, 217-18 (CCPA
1978); and In re Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987).
Ser. No. 75/192,310
5
The examining attorney, in her brief, argues that “the
individual significance of the word ‘access’ is not lost in
the combination ‘advanced access.’ Customers still
perceive the merely descriptive meaning of the word
‘access.’ They still recognize that the services,
providing access to telephone lines through use of prepaid
calling cards, is immediately described by the word
‘access.’”
The evidence made of record by the examining attorney
does not clearly support the conclusion that consumers
would immediately think of “access”, as it appears in
applicant’s mark, as meaning, “access to telephone lines.”
In support of the final refusal of registration, the
examining attorney offered 35 references from the
LEXIS/NEXIS on-line database, displayed in the abbreviated
Kwic format. These were culled from among 723 “hits” when
the combined search terms “access” and “calling card” were
entered. We presume, therefore, that the examining
attorney made the most persuasive references of record.
The majority of the references, however, do not
discuss accessing telephone lines. Rather, for the most
part the excerpts include independent use of “access” as an
adjective or a verb to refer to subjects or activities not
Ser. No. 75/192,310
6
clearly or directly related to use of calling cards to
access phone lines.2
Of the examining attorney’s selected references, only
the following four provide arguable support for the
examiner’s refusal of registration, in that they tend to
illustrate the use of a calling card to access phone lines
or services available by phone:
RMC Internet Services has developed what it says
is the nation’s first pre-paid Internet calling
card. The card will enable travelers to access
their local Internet service provider 24 hours a
day for both e-mail and the World Wide Web. The
Idaho Statesman, July 31, 1997.
Premiere will offer these Cardmembers the
American Express® Connectionsm calling card, giving
users access to enhanced services. PR Newswire,
July 29, 1997.
The company will also launch international
calling, global access prepaid and postpaid
calling cards, fax and other integrated voice and
data services later this year. Asia Computer
Weekly, July 7, 1997.
But what about the increasing number of callers
who use their long distance calling cards from
pay phones or make calls to 800 numbers? They
are using the pay phone to access long distance
services but are not paying for the use of the
phone. M2 Presswire, May 22, 1997.
Two of these references appear to be for wire service
reports and one for a publication that may be circulated

2 Many of the excerpts, for example, refer to access codes,
numbers, fees and charges; others refer to accessing voice mail,
the global computer network, and even buildings.
Ser. No. 75/192,310
7
only in Asia. It is well settled that wire service reports
are of limited probative value, since it cannot be assumed
that they have been seen by consumers; and use of a term in
a foreign publication is discounted, in the absence of
evidence of cirulation in the United States. See In re
Patent and Trademark Services Inc., 49 USPQ2d 1537, 1538 fn
2 (TTAB 1998), and cases cited therein. Even if we assume
that these wire service reports appeared in publications
circulated in the United States, and that Asia Computer
Weekly is circulated in the United States, these references
providing support for the examining attorney’s basic
argument are few in number, when compared to the number of
“hits” returned by the LEXIS/NEXIS search. Moreover, even
these references evidence various uses of the term access,
i.e., as a noun, as a verb and as an adjective. With the
wide variety of uses of the term “access” in all the
references made of record by the examining attorney, we
view it as unlikely that consumers would immediately be
able to associate a particular meaning for the term when
used as part of applicant’s mark. Cf. In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987)(voluminous evidence before the Board included a
“mixture of usages unearthed by the NEXIS computerized
retrieval service” and did not stand as clear evidence that
Ser. No. 75/192,310
8
CASH MANAGEMENT ACCOUNT was a common descriptive term for
the particular services offered by the applicant seeking to
register the phrase).
The examining attorney also made of record 13
printouts from the Patent and Trademark Office’s search
system of applications or registrations wherein the term
“access” was disclaimed. Only one of these, however, deals
with calling cards, and that is for an abandoned
application.
In short, we agree with applicant that the examining
attorney has a burden of proof that has not been met to
establish the mere descriptiveness of ACCESS in connection
with the identified services, and that, in instances of
doubt, the office must resolve the doubt in favor of
approving the mark for publication. See In re Merrill
Lynch, supra, 4 USPQ2d at 1144.
Decision: The refusal of registration is reversed.
C. E. Walters
B. A. Chapman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board