McCaw Cellular Communications, Inc.

Trademark Trial and Appeal Board

Jul 28, 1997

EX (T.T.A.B. Jul. 28, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 28, 97
Paper No. 26
TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re McCaw Cellular Communications, Inc.
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Serial No. 74/801,178
_______
Frank L. Politano, R. A. Ryan and Michele A. Farber of for
applicant.
Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Myra K. Kurzbard, Managing Attorney).
_______
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by McCaw Cellular
Communications, Inc.1 to register the designation 1-800-
IMAGINE for "cellular telephones and parts therefor; pagers

1The application originally was filed by McCaw Cellular
Communications, Inc., and all of the papers in this case,
including applicant's briefs, were filed by its attorney, Lynne
E. Graybeal. After all the briefs were in, applicant filed a
substitute power of attorney, with the new attorneys being shown
above. In that paper, it was stated that the applicant,
formerly McCaw Cellular Communications, Inc., is now AT&T
Wireless Services, Inc. A check of Office records reveals,
however, that the appropriate assignment documents have not been
recorded. See: Trademark Trial and Appeal Board Manual of
Procedure, §§ 125, 512.01 and 512.03.
Ser No. 74/801,178
2
and parts therefor; facsimile machines and user manuals and
instructional books sold as a unit therewith."2
The Trademark Examining Attorney has refused
registration under Sections 1, 2 and 45 of the Act3 on the
ground that the designation sought to be registered, as used
on the specimens of record, does not function as a
trademark.
After an initial examination and entry of an examiner's
amendment relating to the identification of goods, the
application was approved for publication and the mark was
published in the Official Gazette. No opposition being
filed, the Office issued a notice of allowance. Applicant
subsequently filed a statement of use with the required
specimens. Upon review of these documents, the Examining
Attorney issued the refusal. When the refusal was made
final, applicant appealed. Applicant and the Examining
Attorney have filed briefs.
Applicant contends that 1-800-IMAGINE, as it appears on
the specimens of record, functions as a trademark to
identify and distinguish applicant's goods from the goods of
others. That is to say, the designation sought to be
registered functions both as a phone number to contact

2Application Serial No. 74/801,178, filed November 13, 1991,
based on a bona fide intention to use the mark in commerce.
Applicant subsequently filed a statement of use alleging dates
of first use of July 1992.
3The Examining Attorney's reference to Section 3 is unnecessary
inasmuch as the involved application does not involve a service
mark.
Ser No. 74/801,178
3
applicant, as well as a trademark. Applicant asserts that
customers call 1-800-IMAGINE to purchase applicant's goods,
that the fact that the phone number is used on the specimens
as part of a phrase does not diminish its source-indicating
function, and that the designation is one of a family of
IMAGINE marks used by applicant to identify applicant's
various goods and services. In urging that the refusal be
reversed, applicant submitted the declaration of Bryn
Frazier, applicant's assistant corporate advertising
manager. Mr. Frazier states, in pertinent part, that
potential customers can and do call the 1-800-IMAGINE phone
number to order products and to obtain information about
applicant's products and services; and that the phone number
appears on labels on the products on display at applicant's
stores and on the products when they are sold. Applicant
also relied upon the declaration of Louis Briones, the
account director of an outside advertising agency who
handles advertising for applicant's goods.4 In this
connection, Mr. Briones asserts that applicant frequently
uses 1-800-IMAGINE and IMAGINE NO LIMITS together in the
advertising and sale of its goods and services. The
declaration is accompanied by five advertisements that
applicant has placed: two on the radio, one in a printed

4Mr. Briones' declaration and related exhibits were submitted
with applicant's appeal brief. Although the submission of
evidence with an appeal brief is untimely, the Examining
Attorney in this case considered the evidence as if properly
introduced. Thus, we have treated the evidence to be of record.
Ser No. 74/801,178
4
publication and two in golf tournament publications. The
text of the radio advertisements shows that at the end of
the ad, the announcer says "Cellular One. No one delivers
better service, better call quality or better
coverage...Call 1-800-IMAGINE." The printed advertisements
instruct interested readers to "call us at 1-800-IMAGINE."
Applicant also submitted a list of six third-party
registrations of "1-800-..." marks. Lastly, applicant has
relied upon a list of its registrations and applications for
marks comprising, in whole or in part, the word "IMAGINE."
The list was followed up with soft copies of these official
records.5 Applicant places significant value on its
ownership of Registration No. 1,718,806, issued September
22, 1992, for the mark 1-800-IMAGINE for "telecommunication
services."
The Examining Attorney maintains that the specimens do
not show use of 1-800-IMAGINE as a trademark for the
identified goods. Rather, in the Examining Attorney's view,
the specimens show use of the phone number as part of a
phrase that is merely informational (that is, customers and

5Although the list prepared by applicant is not sufficient to
properly make of record applicant's registrations and
applications, the soft copies are sufficient to do so. And,
while the soft copies were not submitted until applicant filed
its appeal brief, the Examining Attorney, in his brief,
addresses applicant's "family of marks" argument based on this
evidence. Inasmuch as the Examining Attorney did not object to
this evidence, but rather essentially treated it as if properly
made of record, we have considered the evidence in reaching our
decision.
Ser No. 74/801,178
5
potential customers can obtain more information about
applicant's goods and services by calling 1-800-IMAGINE).
The term "trademark", as defined in relevant part in
Section 45 of the Trademark Act, means "any word, name,
symbol, or device, or any combination thereof used by a
person to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods, even if
that source is unknown." Clearly, not every word or
combination of words which appears on an entity's goods
functions as a trademark. In re Remington Products Inc., 3
USPQ2d 1714 (TTAB 1987). Thus, the mere fact that
applicant's 1-800-IMAGINE telephone number appears on the
specimens does not make it a trademark. To be a mark, the
designation must be used in a manner calculated to project
to purchasers or potential purchasers a single source or
origin for the goods. Mere intent that a word or
combination of words functions as a trademark is not enough
in and of itself to make the word or combination of words a
trademark. Id.
A critical element in determining whether a term is a
trademark is the impression the term makes on the relevant
public. In the type of case presently before us, the
inquiry becomes a question of whether the designation sought
to be registered would be perceived as a source indicator
or, rather, as merely an informational telephone number.
Ser No. 74/801,178
6
Based on the evidence of record, with a particular eye
toward the specimens (labels affixed to the goods), we find
that 1-800-IMAGINE is merely an informational phone number
that would not be perceived by others as a trademark for
applicant's goods. The specimens show prominent use of
applicant's mark CELLULARONE. In subordinate fashion in
small print appear the following uses: "Additional
information on phones and service--1-800-IMAGINE" or "For
information or service call 1-800-IMAGINE". A sample
specimen label is reproduced below.
Applicant's uses of 1-800-IMAGINE convince us that it
would be perceived as nothing more than an informational
telephone number that interested consumers could call.
Every use by applicant of 1-800-IMAGINE, which is the
specific proposed mark at issue here, is that of a phone
number to call for additional information on applicant's
products and services. We cannot find, based on the
evidence of record, that 1-800-IMAGINE has been used in such
a manner that it would be readily perceived as identifying
the specified goods and distinguishing a single source or
origin for the goods. As the Examining Attorney points out,
the fact that consumers can purchase applicant's goods by
Ser No. 74/801,178
7
calling the telephone number may bear on use of the
telephone number as a service mark, but does not, as
demonstrated by the specimens, show trademark use for
goods.6
The third-party registrations of "1-800-..." marks are
not persuasive of a different result in this case. Although
uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to determine
whether applicant's particular mark is registrable. As the
Board often has stated, each case must be decided on its own
facts, and we are not privy to the file records (in
particular, the specimens) of the registrations which
applicant listed. Likewise, applicant's ownership of
several registrations and applications for IMAGINE marks
does not compel a different result.
This case is distinguishable from the one heavily
relied upon by applicant, namely, In re Safariland Hunting
Corp., 24 USPQ2d 1380 (TTAB 1992). Suffice it to say that
there the record as a whole established that the mark had a
source-indicating function. Here, 1-800-IMAGINE would be

6Applicant's reliance on Amica Mutual Insurance Co. v. R. H.
Cosmetics Corp., 204 USPQ 155 (TTAB 1979) is misplaced.
Applicant argues that its telecommunication goods are intimately
related to its telecommunication services such that "this
nexus...strengthens the mark's function as an identifier of a
single source for the goods." (brief, p. 9) Applicant overlooks
an important observation by the Board in that case, however, to
the effect that there was a distinction between the trademark
and service mark use of AMICA for purposes of registration.
That same distinction applies here.
Ser No. 74/801,178
8
perceived as merely a telephone number to call for more
information about applicant's goods and services.
The briefs have made and debated, and we have
considered, arguments other than those we have discussed
above, all of which we find unnecessary to specifically
comment on.
Decision: The refusal to register is affirmed.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/801,178
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