Group O, Inc.Download PDFTrademark Trial and Appeal BoardJan 29, 2015No. 77815453 (T.T.A.B. Jan. 29, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: January 29, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Group O, Inc. _____ Serial No. 77815453 _____ Melinda B. Buurma of Howard & Howard Attorneys PLLC for Group O, Inc. Linda M. Estrada, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). Before Quinn, Shaw and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Group O, Inc. (“Applicant”) seeks registration of O-PTICS, in standard characters, for “Statistical analysis and reporting services for business purposes that offer a view of real time results and information associated with marketing campaigns, packaging, order and programs, and supply chain and logistics management.”1 The Examining Attorney refused registration on the ground that “Applicant’s specimens of use do not show use of the applied-for mark in connection with any of the services specified in the Statement of Use.” Examining Attorney’s 1 Application Serial No. 77815453, filed August 28, 2009 based on Applicant’s intent to use the mark in commerce under Section 1(b) of the Trademark Act. Following issuance of a Notice of Allowance, Applicant filed a Statement of Use alleging first use dates of April 16, 2013. Serial No. 77815453 2 Appeal Brief at 1. After the refusal became final, Applicant appealed and filed a request for reconsideration which was denied. Applicant and the Examining Attorney filed briefs. The Specimens Applicant’s April 17, 2013 Statement of Use is supported by the specimen reproduced below (the “SOU Specimen”): Serial No. 77815453 3 Applicant submitted additional specimens on May 27, 2014, reproduced below (“Supplemental Specimen Nos.” 1 and 2, respectively): Serial No. 77815453 4 The Examining Attorney argues that as used in the SOU Specimen and Supplemental Specimens, Applicant’s mark merely “identifies an analytical suite of tools,” as opposed to the source of Applicant’s services. Examining Attorney’s Appeal Brief at 3-6. More specifically, there is “no direct association” with “or reference to the statistical analysis and reporting services identified in the Statement of Use.” Id. at 4-6. Applicant argues that while its mark is used for software, the specimens also offer “analysis and reporting services” as identified in the application. In fact, Applicant claims, without evidentiary support, that the information produced by Applicant’s software is “packaged together and offered under the service mark O- PTICS.” Office Action response of November 8, 2013. A service mark is “any word, name, symbol, or device, or any combination thereof … [used] to identify and distinguish the services of one person … from the services of others and to indicate the source of the services, even if that source is unknown.” 15 U.S.C. § 1127. A service mark must be “used in such a manner that it would be readily perceived as identifying” the services, which is “determined by examining the specimens of record in the application.” In re Moody’s Investors Service Inc., 13 USPQ2d 2043, 2047 (TTAB 1989); see also In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1458 (TTAB 1998) (a mark “must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin” for the services, but mere intent that it function as a mark is not sufficient); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989). “At a minimum, the specimen must show a direct association between the services and Serial No. 77815453 5 the mark sought to be registered.” In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); see also, In re Advertising & Marketing Development, Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). That is, “[a] specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.” In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Here, Applicant’s specimens do not show the requisite “direct association” between the O-PTICS mark and Applicant’s “statistical analysis and reporting services.” Instead, the specimens only show an association between the mark and software. For example, the SOU Specimen indicates that: “O-ptics™ is an analytical suite that provides optimal transparency and visibility into your marketing campaigns.” “O-ptics is a convenient lens that provides fingertip access to key campaign information.” “O-ptics can be applied to a variety of key marketing programs ….” “O-ptics helps you to access the inner workings of your campaigns, allowing you to quickly and efficiently optimize performance.” “With O-ptics, you’ll get a convenient dashboard of both prepared and interactive reporting tools ….” “Call today to find out how O-ptics can help you reach new levels of optimization and collaboration.” Similarly, Supplemental Specimen No. 2 includes the heading: “O-ptics™ (Business Intelligence Tool),” and indicates that: (1) “O-ptics™ is an analytical suite that provides transparency and visibility into solution performance;” and (2) “More than Serial No. 77815453 6 a reporting package, O-ptics provides fingertip access to key performance indicators and results.” Supplemental Specimen No. 1 does not bear the mark at all.2 The specimens refer to O-PTICS as a “suite,” a “lens” and a “tool,” but not a service, much less a statistical analysis and reporting service providing information “associated with marketing campaigns, packaging, order and programs, and supply chain and logistics management.” See In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) (“The term ‘SegMentor’ is repeatedlly used as an adjective to modify the word ‘software.’”). That O-PTICS refers to a product rather than a service is reinforced by Applicant’s use of the trademark (“™”) symbol, but not the service mark symbol, following the mark. While Applicant’s specimens appear to at least suggest that the O-PTICS suite/lens/tool provides statistical and other information for business purposes, that does not constitute service mark use. In re DSM Pharmaceuticals, 87 USPQ2d at 1626 (it is “irrelevant” that software identified by a mark performs the services for which registration is sought); In re Walker Research, 228 USPQ at 692 (“Since we conclude that the mark, as used in the specimens, refers only to the software used in the performance of the services and does not identify and distinguish the services themselves, the refusal of registration is considered to be well taken.”). Cf. In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (the requirement that a mark must be used in the sale or advertising of services “is not met by evidence which only shows use of the mark as the name of a process and that 2 While this specimen includes what appears to be a screenshot labeled “Dashboard Optics and Intelligence,” Applicant does not seek registration of OPTICS, nor is “Optics” being used as a mark in Supplemental Specimen No. 1, much less as a service mark. Serial No. 77815453 7 the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used … It is clear enough to us that a ‘process,’ per se, is not a ‘service.’”); In re HSB Solomon Associates, LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (“The fact that the CEI process, measurement, metric, benchmark or standard may be used by applicant in the performance of its technical consulting service does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process.”). In short, consumers would view O-PTICS as a trademark for Applicant’s software, rather than as a service mark for statistical analysis and reporting services. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). We recognize that “the nature of the services does not need to be specified in the specimens,” but at the same time, “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re Johnson Controls, 33 USPQ2d at 1320. Here there is no such association. Furthermore, the specimens do not reveal, and there is no other evidence that,3 the O-PTICS mark is displayed during Applicant’s rendering of the identified services. Cf. In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992). “There 3 The evidence of record is limited to Applicant’s specimens, dictionary definitions and printouts of third-party registrations. See In re DSM Pharmaceuticals, 87 USPQ2d at 1626 (“However, here the record is sparse. Applicant has given us only the specimen to evaluate. We simply cannot conclude, based on the specimen of record, that applicant is using the LIQUIDADVANTAGE mark in connection with ‘custom manufacturing of pharmaceuticals featuring liquid fill and finish technology.’”) Serial No. 77815453 8 would be no reason for any reasonable person to suspect,” upon review of the specimens, that Applicant’s identified services are “being identified by the mark.” In re Johnson Controls, 33 USPQ2d at 1320 (“we have no evidence that the mark sought to be registered is used in advertising the custom manufacturing service of applicant, nor is it used during the rendering of the service … We have no basis upon which to conclude that purchasers would regard the mark as anything other than a trademark for applicant’s goods.”); see also, In re Osmotica Holdings Corp., 95 USPQ2d at 1668 (“It is not enough that the mark and a reference to the services both appear in the same specimen.”); In re DSM Pharmaceuticals, 87 USPQ2d at 1624 (“A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.”). Other than the specimens, Applicant has not introduced any evidence which relates to its use of O-PTICS. The specimens reveal use of the mark for software, but do not make a “direct association” between the mark and the services for which Applicant seeks registration. This case is therefore analogous to In re Walker Research, and unlike In re Ancor Holdings LLC, 79 USPQ2d 1218 (TTAB 2006), in which consumers were directed to Applicant’s website and in which evidence of record from that website revealed use of the applicant’s mark in direct association with the applicant’s services. Decision: The refusal to register Applicant’s mark because the specimens do not show use of the applied-for mark in connection with any of the services specified in the Statement of Use is affirmed. Copy with citationCopy as parenthetical citation