Methodist Healthcare System of San Antonio, Ltd.

Trademark Trial and Appeal Board

Jun 28, 2007

No. 78595687 (T.T.A.B. Jun. 28, 2007)

Mailed: June 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Methodist Healthcare System of San Antonio, Ltd.
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Serial No. 78595687
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Linda W. Browning of Kammer Browning PLLC for Methodist
Healthcare System of San Antonio, Ltd.

Doritt Carroll, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Methodist Healthcare System of San Antonio, Ltd.
has filed an application to register the mark DOTTIE (in standard
character form) on the Principal Register for "educational
services, namely, providing programs of instruction for children
in health care, nutrition and fitness" in Class 41.1

1 Application Serial No. 78595687, filed March 26, 2005, alleging a
date of first use and first use in commerce of December 1994.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78595687
2
The trademark examining attorney has refused registration
under Sections 1, 3 and 45 of the Trademark Act on the ground
that the term DOTTIE does not function as a mark to identify and
distinguish applicant's services.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Section 45 of the Trademark Act provides, in part, that a
service mark is used in commerce "when it is used or displayed in
the sale or advertising of services and the services are rendered
in commerce...." It is well settled that not every word, design
or symbol used in the sale or advertising of a service functions
as a mark for the service. A character name, like any other
designation, may function as a mark if it is used in the manner
of a mark to identify the services and distinguish them from
those of others. See In re McDonald's Corp., 229 USPQ 555 (TTAB
1985); and In re Hechinger Investment Co. of Delaware Inc., 24
USPQ2d 1057 (TTAB 1991). The determination of whether a
designation is used in the manner of a mark is made based upon
the specimens and other evidence of record. Id.

2 The examining attorney also initially refused registration under
Section 2(d) of the Trademark Act. That refusal was subsequently
withdrawn.

Serial No. 78595687
3
We agree with the examining attorney that based on the
specimens and other evidence of record in this case, the term
DOTTIE is not used in the manner of a mark.
The specimen submitted with the original application is
shown below.

Serial No. 78595687
4
This specimen consists of a page from applicant's website,
yhc.sahealth.com. The wording "meet the group" appears at the
top of the page followed by "YOUNG HEROES CLUB." The middle of
the page depicts two rows of fanciful animal characters. Below
each image is a caption with the name and a little information
about the character. The caption below the first character,
which appears to be a spotted cat, reads, "Dottie's real nice,
and pretty too!" The instructions above the character display
invite children to click on a character they would like to print
out and color or know more about.
In order to be used in the manner of a mark and therefore be
perceived as a mark identifying the services, the specimens must
show a direct association between the services and the mark
sought to be registered. See In re Universal Oil Products Co.,
476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). See also In re
Advertising & Marketing Development, 821 F.2d 614, 2 USPQ2d 2010
(Fed. Cir. 1987). There must be at least some reference to the
services in order to create the association. See In re Monograms
America Inc., 51 USPQ2d 1317 (TTAB 1999). Applicant is seeking
registration for educational services, but nowhere are the
educational services even mentioned on the web page, much less
identified by the term DOTTIE. Thus, the required direct
association between the asserted mark and the recited services
cannot be made. The term DOTTIE as used on this specimen would
Serial No. 78595687
5
be perceived simply as the name of the "nice" and "pretty" member
of the group of characters belonging to the "Young Heroes Club."
Applicant contends that this "advertising" presents the mark
"in clear association with the services." Brief, p. 3. Pointing
to the URL of applicant's website, yhc.sahealth.com, which
appears on the web page, applicant argues that "[w]hen the
consumer views the trademark DOTTIE on these web pages, they know
that the Methodist Healthcare System is the source of the goods
and services being described." Brief, p. 5. First, the URL does
not contain a reference to an educational service, or to any
service for that matter. Further, even assuming the URL did
refer to a service, this information, appearing in small print at
the bottom edge of the web page, is barely noticeable. Any
connection between the asserted mark and the service would be
vague and indirect at best.3 See Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320, 323 (TTAB 1985) ("No direct
association is demonstrated by the insignificant use of
"Peopleware" in the sentence at the bottom of the card.").
Applicant also argues that the web page shows that DOTTIE is
used "in the promotional program" to promote the educational
services applicant offers to children, and that the mark is

3 Applicant states on p. 5 of its brief that the wording "Brought to
you by your friends at Methodist Healthcare" appears on the web page.
We see no such statement on the record copy of the specimen. However,
even if this wording did appear on the specimen, if anything, it would
identify healthcare or hospital services, not educational services.
Serial No. 78595687
6
presented on the web page "with information regarding how
consumers can gain access to these services." Brief, p. 3. The
only information on the web page of record is the instruction for
printing and coloring the characters and for getting more
information about them. Applicant may be providing a
"promotional program," that is, applicant may be engaged in
promoting awareness of health and fitness to children, but
applicant is not seeking registration for "promotional" services.
Again, there is no reference to any educational service on this
specimen or to the promotion of any educational service, or even
any explanation by applicant as to how the asserted mark is used
to promote the educational services. A designation must not only
be used in the advertising or promotion of the services but it
also must be used in a manner which conveys a commercial
impression as a mark for the services. In re Hechinger
Investment Co., supra at 1059 (commercial impression created
by...'TWOBAFOR' is clearly and simply that of the name of a
fanciful dog character which appears in certain illustrations in
applicant's advertisements"); In re Whataburger Systems, Inc.,
209 USPQ 429, 430 (TTAB 1980) (nothing of record to show
promotion of applicant's various cartoon-like animals in a manner
that would create purchaser recognition of any individual animal
as an indicator of the source of applicant's restaurant services
as distinguished from "a promotional gambit"). The only
Serial No. 78595687
7
commercial impression created by "Dottie" is that of the name of
a particular character who is one of the members of applicant's
club.
Furthermore, while a mark need not be displayed in any
particular size or degree of prominence, the question is whether,
when it is noticed, it will be understood as indicating origin of
the services. See In re Singer Mfg. Co., 118 USPQ 310, 312 (CCPA
1958). In this specimen, the DOTTIE character is displayed as
one of a group of characters, and it is used no differently than
any other character in the group. The name DOTTIE, like all the
other character names, is used informationally to describe the
character itself - "Dottie's real nice, and pretty too!" - in the
same size and font as the rest of the wording. Used in this
manner, the term does not create an impression apart from its
informational context and it would not be understood by consumers
as a term identifying a service. See In re Metrotech, 33 USPQ2d
1049, 1052 (Com'r Pats. 1993) (mark must be used in such a manner
that it would be "readily" perceived as identifying source).
See, e.g., In re Chemical Dynamics, Inc., 839 F.2d 1569, 5 USPQ2d
1828, 1829-30 (Fed. Cir. 1988) (a designation must create "a
separate and distinct commercial impression, which thereby
performs the trademark function of identifying the source of the
goods to the customers.").
Serial No. 78595687
8
The second specimen submitted by applicant is a coloring
book. Below the heading "YOUNG HEROES' CLUB" is the wording
"from the Methodist Children's Hospital." The coloring book
includes a narrative story entitled "Dottie Changes Her Spots,"
and the main character of the story is Dottie who becomes ill and
visits the doctor.
Applicant argues that the coloring book "serve[s] as further
promotional material (material that promoted involvement in the
educational services program)..." and that by this coloring book
"children are taught various ways to be healthier." Brief, p. 3,
4. Applicant states that "it is in the business of providing
educational materials to children, such as the use of the DOTTIE
trademark in both the promotion and presentation of these
materials" and that "[t]he public, upon viewing this coloring
book, would identify its source as [applicant.]". Brief, pp. 4,
5.
First, applicant is seeking registration for educational
services, not educational materials. As stated by the Federal
Circuit in In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ
971, 973 (Fed. Cir. 1985), a service is "the performance of labor
for the benefit of another." The issue before us is not whether
applicant is in fact performing an educational service. We will
presume that it is. The question is whether the specimen shows
use of the mark for the service. This specimen is a coloring
Serial No. 78595687
9
book, not an advertisement for educational services and it makes
no reference to an educational service. It shows no courses, no
classes, no "performance of labor" of any kind relating to
educational services.
Applicant appears to argue that the educational service is
rendered through the distribution of the coloring book or through
the storyline in the coloring book. The story does convey an
educational message, for example, instructing children that "You
can get sick if you don't wash your hands before you eat" and
"You can get sick if you drink out of the same glass as a friend
who is sick." However, applicant's argument is unpersuasive.
The book itself is not a service, and simply providing children
with coloring books or other educational materials is not in
itself an educational service. See In re Landmark
Communications, Inc. 204 USPQ 692 (TTAB 1979) (newspaper
publisher is not rendering educational or information services
merely by publishing a newspaper section with educational
content).
While the specimen may show that source of the coloring book
is applicant, or the source of healthcare or hospital services is
applicant, or even that the source of the character name is
applicant, it shows neither that applicant is providing an
educational service nor that DOTTIE identifies any such service.
See In re Republic of Austria Spanische Reitschule, 197 USPQ 494,
Serial No. 78595687
10
499 (TTAB 1977) ("[although a designation] may be demonstrably
associated with an applicant, nevertheless it is not registrable
unless it is recognizably used as a mark, i.e., to identify and
distinguish the goods or services of the applicant.").
Furthermore, while the coloring book may be distributed as part
of applicant's efforts to promote health and nutrition to
children, as we pointed out earlier, applicant is not seeking
registration for a promotional service.
Moreover, the name DOTTIE is not used on this specimen in a
manner that would indicate the source of any service. In this
specimen as in the first one, DOTTIE is used in a purely
informational sense, solely to identify and refer to the
character in the story; for example, "When Dottie got to her
doctor's office, there were lots of other children there -
including her special friends Drew and Recess." This manner of
use reinforces consumers' perception of DOTTIE simply as a
character name.
Finally, we note applicant's contention that the names of
its other characters as well as a variation of the mark in this
application have been registered as service marks for the same
services. However, as the examining attorney correctly points
out, our determination of whether DOTTIE functions as a mark must
be based on the record before us. See McDonald's Corp., supra;
and Hechinger Investment Co., supra. Based on this record,
Serial No. 78595687
11
DOTTIE is used to identify, not any educational services, but
rather the name of the character itself, and it would be
perceived in that manner by the public.
Decision: The refusal to register is affirmed.