Michelin North America, Inc.

Trademark Trial and Appeal Board

Sep 11, 2015

No. 85077031 (T.T.A.B. Sep. 11, 2015)

Hearing: October 28, 2014 Mailed: September 11, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Michelin North America, Inc.
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Serial No. 85077031
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Fred W. Hathaway and Melissa Alcantara of Dickinson Wright PLLC for Michelin
North America, Inc.
Michael Webster, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).
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Before Wellington, Wolfson and Shaw, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Michelin North America, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark 1-800-TIRE-911 (in standard characters) for
Vehicle tire maintenance and repair services; Size fitting
and installation of replacement vehicle tires; Removal of
vehicle tires; Emergency roadside services for vehicles,
namely, flat tire changing, emergency fuel supplying,
battery jump starting, responding to calls for roadside
assistance, repair services in case of motor vehicle
breakdown in International Class 37;
Emergency roadside assistance services, namely, towing
services in the event of vehicle breakdown, services of
transportation of people and/or vehicles in the event of
breakdown, winch-out and key delivery services in
International Class 39; and
This Opinion is a Not a
Precedent of the TTAB
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Emergency roadside services, namely, opening of locks in
International Class 45.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark in all three classes under Sections 1, 2, 3 and 45 of the Trademark
Act, 15 U.S.C. §§ 1051-1053, 1127, on the ground that the mark, as used on the
specimens of record, fails to function as a service mark. After the Examining
Attorney made the refusal final, Applicant filed a request for reconsideration and
appealed to this Board. The Examining Attorney denied the request for
reconsideration and the appeal was resumed. For the reasons discussed more fully
below, we reverse the refusal to register.
Applicable Law
Section 2 of the Trademark Act, 15 U.S.C. § 1052, provides, inter alia, that
“[n]o trademark by which the goods of the applicant may be distinguished from the
goods of others shall be refused registration on the principal register . . . .” Section 3
of the Act, 15 U.S.C. § 1053, makes the provisions of Section 2 relating to the
registration of trademarks applicable to service marks. Section 45 of the Act, 15
U.S.C. § 1127, defines “service mark” as follows:
any word, name, symbol, or device, or any combination
thereof-- used…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.
According to this same section, a service mark is deemed to be used in commerce
“when it is used or displayed in the sale or advertising of services and the services

1 Application Serial No. 85077031 was filed on July 2, 2010, based on Applicant’s assertion
of first use of the mark in a different form at least as early as January 1, 1999.
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are rendered in commerce.” See In re Advertising & Marketing Development Inc.,
821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (recognizing that it is implicit
in the statutory definition of a service mark that it be used to identify the named
services for which registration is sought and to indicate the source of the services).
The law is clear that vanity telephone numbers (that is, a telephone number
that has been partly or fully converted into words, where the words form a
mnemonic tool for remembering the number) are registrable when perceived as
source-identifying and more than simply a means for contacting the applicant. See
Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675 (2d Cir. 1989) (“Telephone
numbers may be protected as trademarks, and a competitor’s use of a confusingly
similar telephone number may be enjoined as both trademark infringement and
unfair competition”; preliminary injunction granted against defendant’s use of
telephone number 1-800-MATTRESS in market area of plaintiff who had prior
rights to local telephone number comprising “MATTRES”); In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (holding “1-888-
MATRESS” registrable as a descriptive mark with secondary meaning); Murrin v.
Midco Commc’ns Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989)
(enjoining defendant from using a phone number outside the New York City
metropolitan area confusingly similar to plaintiff's unchallenged registered mark
“DIAL L-A-W-Y-E-R-S”); In re Page, 51 USPQ2d 1660 (TTAB 1999) (affirming
Section 2(e)(1) refusal to register 888 PATENTS). See also 3 CALLMANN ON UNFAIR
COMP., TR. & MONO. § 18:17 (4th Ed.) (“Telephone numbers may be protected as
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trademarks if they are used as such.”); and TMEP § 1209.03(l) (Jan. 2015)
(confirming that vanity phone numbers consisting of descriptive terms are
registrable upon a proper showing of acquired distinctiveness, or on the
Supplemental Register).
While the question of registrability in earlier cases has often turned on
whether a vanity telephone number is generic or merely descriptive, here there is
no dispute that given the addition of the distinctive mnemonic “TIRE-911” to the
generic “1-800” prefix, the mark is not merely descriptive or generic. The Examining
Attorney does not contend otherwise and explicitly states that Applicant’s telephone
number includes a “non-descriptive letter combination.”2 The Examining Attorney
argues, however, that consumers will immediately perceive the “inherent nature” of
1-800-TIRE-911 as a telephone number and thus view the designation only as one
means by which to contact Applicant. Comparing Applicant’s telephone number to a
domain name, the Examining Attorney argues, “[w]here the substance of the
designation is informational in nature, the presumption is that the use thereof is for
informational purposes. Consequently, the mark must be clearly used and displayed
as a source-indicator.”3 Applicant disputes the characterization of its applied-for
mark as purely informational. “The fact that a designation is recognizable on a
specimen as a telephone number, however, does not negate its ability to function as
an indicator of source.”4 Applicant contends that the specimens it has submitted

2 Examining Attorney’s August 20, 2013 Reconsideration Letter.
3 Examining Attorney’s Brief, 8 TTABVUE 5.
4 Applicant’s Brief, 4 TTABVue 10.
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demonstrate that its mark is used in direct association with its services in a
trademark manner.
To be clear, this is not a specimen refusal, that is, registration has not been
refused on the ground that the specimens do not evidence use of the applied-for
mark in association with the services specified in the application. Instead, the basis
for the refusal is that the applied-for mark is merely informational and would not be
seen as an indicator of source but merely as the means by which customers can
contact Applicant. Where a term fails to function as a mark, “registration must be
refused even if the specimen of record shows what would otherwise be acceptable
trademark or service mark use.” TRADEMARK MANUAL OF EXAMINING PROCEDURE,
(“TMEP”) § 1301.02(a) (January 2015).
To determine whether Applicant’s mark would be perceived as identifying
Applicant’s roadside emergency services, or only as a telephone number, we look to
the manner in which Applicant uses its vanity phone number on its specimens,
focusing on the likely consumer perception of Applicant’s proposed mark. See In re
AOP LLC, 107 USPQ2d 1644, 1654 (TTAB 2013) (refusing registration of term AOP
for wine as merely informational of a certification process, observing that in
deciding how the average purchaser will perceive and react to applicant’s proposed
mark, the question was whether the specimens submitted “show the applied-for
mark used in a source-identifying manner, or rather in a manner that simply
conveys information to the consumer”); In re Manco, Inc., 24 USPQ2d 1938, 1942
(TTAB 1992) (“[T]he manner in which an applicant has employed the asserted
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mark, as evidenced by the specimens of record, must be carefully considered in
determining whether the asserted mark has been used as a trademark with respect
to the goods named in the application”; THINK GREEN unregistrable because it
would be perceived only as an informational slogan encouraging environmental
awareness and not as a trademark for weather stripping and paper products) (citing
In re Standard Oil Co., 47 CCPA 829, 275 F.2d 945, 125 USPQ 227 (1960)); In re
Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008) (refusing registration to “irestmycase”
for legal services, where only use of applied-for mark was embedded in applicant’s
website address, www.irestmycase.com); In re Eilberg, 49 USPQ2d 1955, 1956
(TTAB 1998) (refusing registration to “www.eilberg.com” given its placement on
applicant’s letterhead).
Hence, we look closely at the manner in which Applicant uses the wording 1-
800-TIRE-911. On November 28, 2012, following publication of the application,
Applicant submitted the following specimen (a bi-fold brochure) with its statement
of use:
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The Examining Attorney accepted this specimen as showing use of the
applied-for mark in association with Applicant’s services in the nature of tire
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replacement or repair in Class 37, but rejected it for the Class 39 and 45 services.
On July 30, 2013, Applicant submitted the following page from its website,5 which
was accepted as showing the mark in association with the services in Classes 39
and 45. The refusal under Sections 1, 2, 3 and 45 was continued; although the
specimens show 1-800-TIRE-911 is used in association with the services, the
Examining Attorney maintains that it does not function as a source-identifier.

5 From http://www.michelintruck.com/michelintruck/services/onCall.jsp.
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While we acknowledge that this is a close call, we find Applicant’s mark is
being used and would be perceived as a service mark for emergency roadside
services. The vanity number is displayed prominently at the top of the specimens,
together with two other of Applicant’s marks and separated from the advertising
copy on the materials. It appears in a font size that is at least as large as the word
MICHELIN (clearly itself being used as a mark). It does not blend so well with the
other matter on the specimens that it is difficult to discern what the mark is, but
rather is set apart from the other marks as well as the text on the pages. See In re
McDonald’s Corp., 229 USPQ 555, 556 (TTAB 1985) (“It is not that the subject
matter must be more prominent than everything else on the specimens. On the
other hand, it must not blend so well with other matter on the specimens that it is
difficult or impossible to discern which element is supposed to be the service
mark.”). At one point Applicant’s vanity telephone number mark is differentiated
from the term “OnCall,” (which appears directly above it) by means of a different
color scheme. There is a ™ symbol following the telephone number, which although
not dispositive as to whether the telephone number is actually perceived as a mark,
lends a degree of visual prominence to the term. While in one instance, Applicant’s
vanity number is embedded in text suggesting that consumers make “one toll-free
call to 1-800-TIRE-911 (1-800-847-3911),” even here the trademark significance of
the mnemonic is not fatally impaired. The numerical values (i.e., the actual phone
number) are displayed directly underneath the mark, thereby providing consumers
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with “1-800-847-3911” to use as the means for reaching Applicant and setting off
the mnemonic phrase as something more than merely informational matter.
Our conclusion that Applicant’s vanity telephone number functions as a mark
is corroborated by Applicant’s submission of copies of the specimens for a large
number of live third-party “1-800” type registrations for vanity telephone numbers,
showing registration of vanity telephone numbers by the Office under the
Trademark Act. The specimens upon which these third-party registrations (totaling
over forty) are based do not appear to involve materially different displays than the
specimen in which Applicant displays its mark.
The following examples were filed with Applicant’s request for
reconsideration. The first group have been registered for vehicle towing services:
6

6 Reg. No. 3797354.
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7
8

7 Reg. No. 3873897.
8 Reg. No. 3278183. Registered on the Supplemental register.
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9

The next group is representative of marks registered for various services, as
indicated in the footnotes.

10

9 Reg. No. 3922672.
10 Reg. No. 4069535 for the mark 800 I CAN WIN for lawyer referral services.
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11 12
13

11 Reg. No. 4196740 for the mark 1-800-IN-STOCK for plumbing supply stores. Registered
with a claim of acquired distinctiveness under Section 2(f).
12 Reg. No. 1966592 for the mark 1-800-45HI-PRO for programs to sustain and improve the
health and quality of young calves and cattle.
13 Reg. No. 4298015 for the mark 1-800-My-Eye-Doc for optometry services.
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14
15 16 17

14 Reg. No. 4285135 for the mark 1-800-THERAPIST for providing information in the fields
of health, medicine, and mental health. Registered with a claim of acquired distinctiveness
under Section 2(f).
15 Reg. No. 2345079 for the mark 1-800-ASK-USPS for telephone directory services and
providing information regarding mail sorting, handling and receiving and related
information by means of the telephone.
16 Reg. No. 3106660 for the mark 1-800-WIN-WIN-1 for legal services.
17 Reg. No. 3538372 for the mark 1-800-CALL-JOE for legal services.
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18

18 Reg. No. 2224899 for the mark 1-800-622-BEST for the ordering of products designed to
measure, control or regulate laboratory temperature and other conditions.
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19
20 21

19 Reg. No. 3946570 for the mark 1-800-CALL-KEN for legal services; registered on the
Supplemental Register.
20 Reg. No. 3738707 for the mark 888-995-HOPE for financial counseling services.
21 Reg. No. 2734955 for the mark 800.ADT.ASAP for security systems.
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22

As noted above, Applicant provided copies of the specimens for over forty
vanity telephone number registrations. Conversely, the record is devoid of any
information regarding vanity telephone numbers that may have been refused
registration based on their alleged failure to function as a mark. Further, the fact
that four of these are for services identical to those provided by Applicant, namely
vehicle towing, mitigates the Examining Attorney’s argument that in the field of
roadside assistance, consumers are familiar with emergency service providers using

22 Reg. No. 3409750 for the mark 1-877-411-UNET for broadband communication services.
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vanity telephone numbers and thus would perceive Applicant’s mark as only a
means by which one could reach Applicant. We also note the Examining Attorney’s
argument and evidence regarding the alleged descriptive nature of the term
“OnCall” (which appears on Applicant’s specimens), but disagree that consumers
would connect “OnCall” with “1-800-TIRE-911” and “view this use on the specimen
only as a statement that applicant can be summoned by dialing the telephone
number that follows ‘OnCall’.”23 As used on Applicant’s specimens, the term OnCall
appears on a separate line and is also followed by a ™ symbol. The terms do not
form a unitary phrase, such as “on call at this number,” but would be perceived as
separate designations. Applicant’s vanity telephone number is not so blended with
“OnCall” or any other matter on the specimens that it is difficult or impossible to
discern what the mark is, nor is it displayed in close proximity to any other of
Applicant’s contact information, such as its address, fax number, email or website
address.
Applicant’s mark may serve an informational purpose in telling the customer
how to reach Applicant, but it also provides a catchy means by which to remember
that the services are for those unfortunate times when one has a “tire emergency.”
As used on the specimens, Applicant’s mark creates a commercial impression
beyond that of a mere telephone number and thus will be recognized by prospective
purchasers as a service mark. For these reasons, the designation 1-800-TIRE-911
functions as a mark.

23 Examining Attorney’s Brief, 8 TTABVue 8.
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Decision: The refusal to register applicant’s mark 1-800-TIRE-911 is
reversed.