American Medical Alert Corp.

Trademark Trial and Appeal Board

Feb 1, 2010

No. 76680233 (T.T.A.B. Feb. 1, 2010)

Mailed:
February 1, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Medical Alert Corp.
________

Serial No. 76680233
_______

Myron Amer of Myron Amer, P.C. for American Medical Alert
Corp.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Michael Baird, Managing Attorney).
_______

Before Seeherman, Bergsman, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
American Medical Alert Corp. filed an application to
register the mark CONNECTED AND PROTECTED, in standard
character format, for services ultimately identified as
“medical alert system in the nature of providing temporary
use of an on-line non-downloadable software for responding
to medical emergencies” in International Class 42.1
The trademark examining attorney refused registration
under Sections 1 and 45 of the Trademark Act of 1946, 15
U.S.C. §§ 1051 and 1127, on the ground that the specimens

1 Application Serial No. 76680233 was filed on February 25, 2004
pursuant to Section 1(b) of the Trademark Act, 15 USC § 1051(b),
alleging a bona-fide intent to use in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76680233
2
of record are not acceptable because they do not show use
of the proposed mark in connection with the services
recited in the application.
Applicant filed a timely appeal. Both applicant and
the examining attorney filed briefs, including a reply
brief from applicant. For the reasons discussed herein,
the Board affirms the final refusal to register.
We initially address the examining attorney’s
objection to applicant’s attachment of a declaration of
applicant’s Senior Vice President, Mr. Frederic S. Siegel,
with its appeal brief. Because this declaration was not
previously submitted, it is untimely and has not been
considered.2 Trademark Rule 2.142(d) (“The record in the
application should be complete prior to the filing of an
appeal.”) We hasten to add that even if we were to
consider the untimely declaration, we would not alter our
decision.
The subject application was originally filed seeking
registration of the mark for “medical alert system” in
International Class 42 (the international class for
computer and scientific services). In the first office
action, the examining attorney explained that said
recitation of services was in need of amendment because it
was overly broad. The examining attorney offered applicant

2 A similar declaration of Mr. Siegel, discussed infra, was filed
with applicant’s response to an office action (dated July 8,
2009). That declaration was timely filed and has been
considered.
Serial No. 76680233
3
the option of adopting the following recitation format, "if
accurate" (emphasis added):

Medical alert system in the nature of providing
temporary use of on-line non-downloadable software for
[specify particular function] in the field of [specify
particular field of use, if applicable]. (emphasis in
original.)
In response, applicant adopted the suggested
recitation of services format and amended the recitation to
its current state, namely, “medical alert system in the
nature of providing temporary use of an on-line non-
downloadable software for responding to medical
emergencies” in International Class 42.
Following the issuance of a notice of allowance,
applicant filed a statement of use asserting use of the
mark, and use of the mark in commerce, for the identified
services since October 1, 2008. The statement of use
included as a specimen advertising material that appears to
be in the nature of a sales brochure. The first page, or
cover page, of the specimen contains applicant’s name and
the proposed mark along with a picture of goods that is
later described in the following pages of the specimen as
the “PERS Console Unit.”
In her first office action considering applicant’s
statement of use, the examining attorney rejected the
proposed specimen “because it consists of advertising
Serial No. 76680233
4
material for goods.”3 In its response to this office
action, applicant did not offer any substantive arguments,
but attached the declaration of Frederic S. Siegel,
applicant’s senior vice president. In his declaration, Mr.
Siegel states, in relevant part,:

2. Declarant [Siegel] is familiar with the business
of applicant which is advising applicant’s sign-on
patients on how to obtain medical assistance in
medical emergency circumstances;

3. In the literature annexed as an exhibit to this
declaration [consisting of the same first three pages
of the original specimen], it is declarant’s
experience that it is understood to instruct
recipients how to contact applicant when a medical
emergency has occurred, the contact being (1)
communicating with applicant’s 24-hour manned response
center, (2) resulting in obtaining emergency
assistance of a fire department or police ambulance,
and (3) alternatively receiving a caregiver or family
assistance;...
In her next and “final” office action, dated August 3,
2009, the examining attorney again refused to accept the
specimen of use. She explained that the specimen is
unacceptable because it does not show the proposed mark
“being used in the sale or advertising of the identified
software services.” She went on to characterize each page
of the specimen4 and noted that although she “agrees with

3 In this office action (dated June 15, 2009), the examining
attorney appears to have been confused as to the nature of the
services and more than once refers to “goods” when the applicant
seeks registration of the mark in connection with services.
4 The examining attorney described the specimen as:
Specifically, page one of the materials shows the picture
of an alert device with the proposed mark, CONNECTED AND
PROTECTED appearing beneath it. Page two of the provided
materials indicates that applicant provides an “AMAC-PERS
Serial No. 76680233
5
[Mr. Siegel’s] statements regarding the information
presented in the materials of record...[t]here is nothing
on the specimens of record demonstrating that applicant is
providing the software services identified in the
application.”
A service mark specimen must show the mark used in the
sale or advertising of the services recited in the
application. Trademark Rule 2.56. Our primary reviewing
court has held that there must be a direct association
between the mark and the services specified in the
application. In re Advertising and Marketing Development,
821 F.2d 614, 2 USPQ2d 2010 (Fed.Cir.1987). The question

Product” featuring a “lightweight adaptable activator
(wrist, pendant, wall & belt clip options” with an
“illuminated help button” and a ”24 hour back-up battery.”
Page three of the materials features a flow-chart
illustrating the “emergency response system process.” It
features another picture of the device, shows arrows
indicating that the device is connected to a 24 hour
response center. The operators at the response center can
retrieve the client’s information from a database and then
contact either emergency or non-emergency assistance and
subsequently generate an incident and activity report.
Page four of the materials outlines the benefits of a
product or service called “VoiceCare.” Page five of the
materials consists of a chart providing the effects of
falls with the estimated time spent incapacitated and the
percentage of people found alive within the time frame.
Page six of the materials shows a sample “emergency
incident report” that is generated by the on call operator
once help has been requested. Page seven of the materials
refers to “Med-Time,” a “medication management solution”
consisting of a device for storing, organizing, reminding,
and dispensing medications. Page eight of the materials
provides contact information for applicant.

Serial No. 76680233
6
in the instant case is whether use of applicant’s proposed
mark in the sales brochure creates such an association.
We agree with the examining attorney’s description or
synopsis of each page (contained in footnote 4). Moreover,
we agree that there is no mention or even a suggestion in
the specimen that applicant’s services involve “providing
temporary use of an on-line non-downloadable software for
responding to medical emergencies.” Finally, the
statements made by Mr. Siegel in his declaration fail to
shed any light as to how the specimen indicates that
applicant is rendering those types of services. As a
result, we cannot find that the submitted specimen of use
makes the necessary association between applicant’s mark
and the services, as they are recited in the application.
In its reply brief, applicant essentially argues that
it was only acting upon “instructions” from the examining
attorney to amend its application to include the services
of “providing temporary use of an on-line non-downloadable
software for responding to medical emergencies.” Applicant
also argues that the examining attorney’s “objection to the
specimen of record is the absence of a reference to
software” and that she is “relying on form over substance.”
Applicant’s argument that “instructions” were being
given and that it was merely complying with said
instructions is not persuasive. As emphasized earlier, the
examining attorney’s office action suggests that applicant
could adopt the offered recitation of services format “if
Serial No. 76680233
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accurate.” The examining attorney was attempting to assist
applicant to arrive at an acceptable recitation of services
in light of the original recitation of services that was
overly broad. At the time, the examining attorney was not
in receipt of applicant’s submitted specimen of use and her
ability to offer an accurate recitation was therefore
limited. Applicant, on the other hand, presumably knows
best the nature of its services and, with the assistance of
counsel, should only have adopted a recitation of services
that accurately reflects these services. Simply put, if
applicant is not rendering services that are in the nature
of providing downloadable software, it should not have
adopted the suggested recitation language.
Ultimately, we conclude that applicant’s submitted
specimen does not show use of the proposed mark in
connection with the services recited in the application.
Decision: The refusal to register is affirmed.