Professional Research Consultants, Inc.

Trademark Trial and Appeal Board

Feb 25, 2013

No. 85447154 (T.T.A.B. Feb. 25, 2013)

Mailed:
2/25/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Professional Research Consultants, Inc.
________

Serial No. 77490850
Serial No. 85447154

_______

Daniel J Guinan of Fraser Stryker PC LLO, for Professional
Research Consultants, Inc.

Lucy Arant, Trademark Examining Attorney,1 Law Office 111 (Robert
Lorenzo, Managing Attorney).
_______

Before Grendel, Ritchie, and Masiello, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Professional Research Consultants, Inc. (“applicant”) filed
an application to register the mark PRC EASYVIEW, in standard
character format, ultimately amended to identify “computer
services, namely, providing access via the Internet to
interactive databases to retrieve information collected through
healthcare related research surveys conducted on patients,

1 Prior to the consolidation of these appeals, the examining attorney
for 77490850 was David Collier.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
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physicians, employees and the community,” in International Class
38.2
The trademark examining attorney refused registration under
Trademark Act Sections 1 and 45; 15 U.S.C. §§ 1051, 1127, on the
ground that the proposed mark as shown in the specimen does not
show the applied-for mark used in connection with the services
specified in the application. Applicant submitted a substitute
specimen on March 23, 2009 with a revised recitation of
services. However, the refusal was reiterated and made final.
Applicant also filed a second application on October 13,
2011, during the pendency of the first, for the mark
PRCEASYVIEW.COM, in standard character form, for “providing an
online computer database featuring information pertaining to
healthcare related research survey information on patients,
physicians, employees and community healthcare needs,”3 in
International Class 44.
The examining attorney for PRCEASYVIEW.COM also refused
registration under Trademark Act Sections 1 and 45; 15 U.S.C.
§§ 1051, 1127, on the ground that the proposed mark as shown in
the specimen does not show the applied-for mark used in

2 Application Serial No. 77490850, filed June 4, 2008, pursuant to
Section 1(a) of the Trademark Act, 15 USC § 1051(a), alleging first
use and first use in commerce on February 28, 1999.
3 Application Serial No. 85447154, filed October 13, 2011, pursuant to
Section 1(a) of the Trademark Act, 15 USC § 1051(a), alleging first
use and first use in commerce on January 1, 2000, and disclaiming the
exclusive right to use the term “.com” apart from the mark as shown.

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connection with the services specified in the application.
Additionally, the examining attorney for PRCEASYVIEW.COM refused
registration under Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d), on the ground that applicant’s mark
PRCEASYVIEW.COM, when used in connection with the recited
services, so resembles the registered mark EZ-VIEW, in standard
character form, for “providing a medical website that gives
medical professionals the ability to exchange medical
information by uploading medical images, namely, providing a
website in the field of medical imaging,”4 as to be likely to
cause confusion or mistake or to deceive.
Upon final refusal of registration of each application,
applicant filed a timely appeal. Both applicant and examining
attorney filed briefs, and applicant filed a reply brief. At
the request of applicant, and because the cases involve common
questions of law and fact, the applications were consolidated on
appeal by order of the Board dated July 5, 2012.
Specimen Refusals
To show service mark usage, the specimen must show use of
the mark in a manner that would be perceived by potential
purchasers as identifying the applicant’s services and
indicating their source. In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified
only a process held not registrable as service mark, even though
applicant was rendering services and the proposed mark appeared

4 Registration No. 3920045, registered February 15, 2011, in
International Class 44.
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in the same brochure in which the services were advertised). In
particular, the specimen must show a “direct association”
between the applied-for mark and the recited services. Id.; In
re DSM Pharmaceuticals Inc, 87 USPQ2d 1623 (TTAB 2008) (mark in
specimen refers to software not to custom manufacturing of
pharmaceuticals as sought in application).
1. First Specimen
The first specimen submitted in each case (and the only one
submitted for PRCEASYVIEW.COM) is the web page as shown in
Exhibit A at the end of this decision. The examining attorney
in each case argued that this web page does not create a direct
association between the applied-for mark and the recited
services. In the case of PRC EASYVIEW, the examining attorney
argues that the webpage merely shows the applied-for mark being
used in connection with some type of web search or result task,
but is unclear as to what service that may be.
In the case of PRCEASYVIEW.COM, the examining attorney made
the same refusal based on the same theory that the webpage did
not show a direct connection between the applied-for mark and
the recited services.
As noted above, a specimen must evince a “direct
association” between the applied-for mark, and the recited
services. Applicant relies on prior caselaw to show that its
web-based specimens show use of its mark. In re Metriplex 23
USPQ2d 1315, 1317 (TTAB 1992) (“In most cases, the specimens
submitted to evidence service mark use are advertising
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materials. Letterhead stationery and business cards are deemed
to fall into the category of advertising matter if they contain
a reference to the services.” (emphasis added)). However, while
allowing the web-based specimen in that case, the Board did not
change the standard. Rather, as it noted, they must contain a
reference to the services. See also In re Sones, 590 F3d 1282,
93 USPQ2d 1118, 1123 (Fed Cir 2009) (“the test for an acceptable
website-based specimen, just as any other specimen, is simply
that it must in some way evince that the mark is ‘associated’
with the goods and serves as an indicator of source.” (emphasis
added)). In short, it is clear that as with any other specimen,
a web-based one must show a “direct association” with the
recited services.
We find, that for each of the applications, the submitted
webpage specimen does not create the required “direct
association” between the applied-for mark and the recited
services. The submitted specimen simply does not specify what
type of services are offered by applicant. With such vagueness,
it would require a real leap for consumers to understand that
the webpage is associating the PRC EASYVIEW mark with “computer
services, namely, providing access via the Internet to
interactive databases to retrieve information collected through
healthcare related research surveys conducted on patients,
physicians, employees and the community,” or the PRCEASYVIEW.COM
mark with “providing an online computer database featuring
information pertaining to healthcare related research survey
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information on patients, physicians, employees and community
healthcare needs.” Finding that they do not, we find the
webpage specimen in each case to be inadequate.
2. Second Specimen
With respect to the PRC EASYVIEW application only,
applicant submitted a second specimen. This substitute
specimen, which was submitted before applicant filed the
PRCEASYVIEW.COM application, is not part of the record of the
PRCEASYVIEW.COM application. The consolidation of the appeal
proceedings for these two applications does not cause the
applications to lose their separate identities. Each retains
their separate character and requires a separate judgment since
an application must be complete prior to the filing of an
appeal. 37 CFR § 2.142(d)(“The record in the application should
be complete prior to the filing of an appeal”); see also 37 CFR §
2.193(g) (“Since each file must be complete in itself, a
separate copy of every document to be filed in connection with a
trademark application, registration, or inter partes proceeding
must be furnished for each file to which the document
pertains”).
The second specimen submitted with the PRC EASYVIEW
application is as shown in Exhibit B at the end of this
decision. The examining attorney argues that this does not show
use of applicant’s applied-for mark in commerce, because
applicant’s mark consists of “telecommunications services”
whereas the specimen submitted actually refers only to database
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services, i.e., the services recited in PRCEASYVIEW.COM.
(examining attorney’s brief at unnumbered 22 of 27).
In response, applicant argues that the specimen does indeed
show use of its mark for the applied-for services in the PRC
EASYVIEW application, citing In re Metriplex.
For our analysis, we do not find particularly helpful the
examining attorney’s characterization of the services in the PRC
EASYVIEW application as “telecommunication services.” The
services are listed in International Class 38. See TMEP §
1401.02(a) (Class 38 Telecommunications: Explanatory Note:
Class 38 includes mainly services allowing at least one person
to communicate with another by a sensory means.) However,
classification does not “limit or extend the applicant’s or
registrant’s rights.” 15 U.S.C. § 1112. It is merely an
administrative convenience “to facilitate searching for
registered marks.” See Jean Patou, Inc. v. Theon, Inc., 9 F.3d
971, 29 USPQ2d 1771 (Fed. Cir. 1993). Rather, we look at the
specimen, and at the identification, to see if there is a
“direct association” created by the applied-for mark.
The recital of services in the PRC EASYVIEW application is
for “computer services, namely, providing access via the
Internet to interactive databases to retrieve information
collected through healthcare related research surveys conducted
on patients, physicians, employees and the community.”
Examining the second specimen, we note that it sets forth the
PRC EASYVIEW mark, specifically in reference to a service “that
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allows [the user] to see the results of patient interviews
within 24 hours of completion… via the Internet!” and provides
access to an online database “to track patient satisfaction on a
daily basis.” The specific wording of the specimen clearly fits
within the recital of services, of providing access via an
online network to an interactive database of patient surveys
that relate to healthcare. Accordingly, we find this to be an
acceptable specimen for the PRC EASYVIEW application.
Conclusion
We find the web page specimen, submitted for both
applications, to be unacceptable for each. We find the second
specimen, submitted for the PRC EASYVIEW application only, to be
an acceptable specimen for that application. Accordingly, we
find that there has been an acceptable specimen for the PRC
EASYVIEW application only.5
DECISION: The refusal to register in Application No.
77490850 is reversed. The refusal to register in Application
No. 85447154 is affirmed as to the specimen refusal.
Accordingly, only Application No. 77490850 will proceed to
publication.

5 In light of our finding that there has been no acceptable specimen
for the PRCEASYVIEW.COM application, we decline to rule on the merits
of the Section 2(d) refusal in that case.
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Exhibit A:

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Exhibit B
(next page)
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Exhibit B