Gateway Health Plan, L.P.

Trademark Trial and Appeal Board

Oct 26, 2010

No. 77063878 (T.T.A.B. Oct. 26, 2010)

Mailed: October 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gateway Health Plan, L.P.
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Serial No. 77063878
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Paul D. Bangor,Jr. of Thorp Reed & Armstrong, LLP for
Gateway Health Plan, L.P.

Steven Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Walters, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Gateway Health Plan, L.P. has filed an application to
register, on the Principal Register, BEEMSS in standard
characters for services ultimately identified as
“administration of Medicaid managed health care plans” in
International Class 36. The application was filed on
December 13, 2006, based upon an allegation of a bona fide
intention to use the mark in commerce. The application was
published for opposition on September 4, 2007 and a notice
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Ser No. 77063878
2
of allowance subsequently issued on November 27, 2007.
After securing extensions of time, applicant filed its
statement of use and a specimen on November 25, 2008,
alleging first use anywhere on October 1, 2001 and in
commerce on August 1, 2002. The examining attorney issued
a refusal to register under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground
that the specimen “fails to show proper use of the applied-
for mark in the sale or advertising of the recited
services.” First Office Action p. 1. In the Final Office
Action, the examining attorney elaborated on his refusal
stating that “[i]f the specimen does not show the mark with
reference to, or association with, the services, the
specimen fails to show service mark usage.” Final Office
Action p. 2.
When the refusal was made final, applicant appealed
and filed a request for reconsideration. On January 5,
2010, the examining attorney denied the request for
reconsideration. Thereafter, the Board resumed the appeal
and briefs have been filed. We affirm the refusal to
register.
The sole issue in this appeal is whether the applied-
for mark is used as a service mark in connection with the
services listed in the notice of allowance.
Ser No. 77063878
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The starting point for our analysis is Section 45 of
the Trademark Act, as amended, where “service mark” is
defined as “any word, name, symbol, or device, or any
combination thereof used by a person ... to identify and
distinguish the services of one person, including a unique
service, from the services of others and to indicate the
source of the services, even if that source is unknown.”
15 U.S.C. §1127. This section further provides that a mark
shall be deemed to be in use in commerce on services when
“it is used or displayed in the sale or advertising of
services and the services are rendered in commerce....”
Id. Thus, the mark must be used in such a manner that it
would be readily perceived as identifying the specified
services and distinguishing a single source or origin for
the services. In re Safariland Hunting Corp., 24 USPQ2d
1380 (TTAB 1992). The mere fact that a designation appears
on the specimens of record does not make it a service mark.
Id.
A critical element in determining whether matter
sought to be registered is a service mark is the impression
the matter makes on the relevant public. Thus, in a case
such as this, the critical inquiry is whether the asserted
mark would be perceived as a source indicator for the
identified services. See In re Brass-Craft Mfg. Co., 49
Ser No. 77063878
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USPQ2d 1849 (TTAB 1998); In re Volvo Cars of North America
Inc., 46 USPQ2d 1455 (TTAB 1998). To be a mark, the term
must be used in a manner calculated to project to
purchasers or potential purchasers a single source or
origin for the services. In re Volvo, supra. The specimen
must show a direct association between the mark and the
actual services for which registration is sought. In re
wTe Corp., 87 USPQ2d 1536, 1541 (TTAB 2008) citing In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457
(CCPA 1973). We determine whether this has been achieved
by examining the specimens of use along with any other
relevant material submitted by applicant during prosecution
of the application. In re Safariland, supra. Here, we
have only the specimens of record, shown below, wherein the
applied-for mark appears in the text of a fact sheet in the
form of a brochure:

Ser No. 77063878
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The examining attorney argues that the applied-for
mark, “appears to be only a feature in its ‘PCM’ program
... [and] is not being used as an indicator of source for
administering Medicaid managed health care plans.” Br. pp.
3-4. Further, the examining attorney contends that “the
proposed mark is buried in the text of the page to such a
Ser No. 77063878
6
degree that it would not be perceived as indicating the
source of applicant’s services and therefore, fails to show
the applied-for mark in the sale or advertising of the
services. ... The letters ‘BEEMSS’ appear solely to
identify an acronym for different aspects of a person’s
life: Behavioral, Environmental, Economic, Medical, Social
and Spiritual. The impression made by the term on the
purchasing public is simply that of an informational or
descriptive statement and thus, it would not be perceived
as an indicator of source.” Br. p. 4.
Applicant argues that “[t]he specimen provides more
than the requisite association between the mark and the
services. The mark BEEMSS with a superscript ‘SM’ is used
on this one page ‘Fact Sheet’ brochure which clearly
describes at least (5) times Applicant’s services of
‘Administration of Medicaid managed health care plans’.”
Further, applicant argues that “the mark BEEMSS is used on
the specimen in the midst of a description of a unique and
innovative approach used by Applicant in providing the
services.” Br. pp. 2-3.
In this case, we find that the manner in which the
applied-for mark is used on the specimen of use is not
indicative of service mark use. First, the use of the SM
symbol does not change the commercial impression of the
Ser No. 77063878
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applied-for mark, which as used in the specimen only
informs the consumer of a feature of a personalized health
care treatment plan. As stated by the examining attorney,
“[t]he use of the symbol SM next to the mark on the
specimen merely shows applicant’s intent to claim the
applied-for mark as a service mark and is not an indicator
of whether a mark is actually perceived by the public as a
source-indicator.” Br. p. 4. See In re Remington
Products, Inc., 3 USPQ2d 1714 (TTAB 1987). See also In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (“mere intent that a
term function as a trademark is not enough in and of
itself, any more than attachment of the trademark symbol
would be, to make a term a trademark”).
Second, applicant points to excerpts from its brochure
that arguably show “administration of Medicaid managed
health care plan” services; however, the letters BEEMSS are
not associated with this service. As they appear in the
specimen of use, BEEMSS simply is the abbreviation of a
group of attributes applicant measures in evaluating a
member’s access to health care. While this may be a
feature of applicant’s administration services it is not
the applied-for service. Inasmuch as BEEMSS is not
directly associated with the applied-for services it does
not serve as a source identifier for those services. Thus,
Ser No. 77063878
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the applied-for mark, as used, would not be perceived as a
service mark, and the mere addition of the service mark
symbol is not sufficient to transform the non-service mark
use into service mark use. At most, the manner in which
the applied-for mark is used on the specimen presents the
applied-for mark as a feature of the service and not as a
service mark. Even an inherently distinctive designation
is not a service mark if it is not used in a service mark
manner.
In summary, the manner in which the applied-for mark
is being used does not support a finding that potential
consumers would perceive it as a service mark. As used in
the specimen of record, the applied-for mark does not
convey the commercial impression of a mark identifying the
source of origin of applicant’s applied-for services. This
conclusion is not altered by the fact that a SM symbol is
displayed adjacent to the letters BEEMSS. See In re B.C.
Switzer & Co., 211 USPQ 644 (TTAB 1981).
Decision: The refusal to register under Sections
1 and 45 of the Act is affirmed.