WebLink Wireless, Inc.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 75366565 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No. 32
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re WebLink Wireless, Inc.
________
Serial No. 75/366,565
_______
William A. Munck of Davis Munck, P.C. for WebLink Wireless,
Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office
114 (Margaret K. Le, Managing Attorney).
_______
Before Cissel, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
October 1, 1997, applicant filed the above-identified
application to register the mark “PACKFAST” on the
Principal Register for “data and voice communications
services, namely, providing paging and voice messaging
services and services related to the activation and use of
message pagers and personal communication systems,” in
International Class 38. Applicant asserted that it had a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. S.N 75.366,565
2
bona fide intention to use the mark in commerce in
connection with these services.
In addition to another informality, the original
Examining Attorney1 advised applicant that the recitation of
services was unacceptably indefinite. Accordingly,
applicant amended the recitation of services to read as
follows: “data and voice communications services, namely,
providing paging and voice messaging services, all in
International Class 38.”
On August 17, 2001, applicant filed a Statement of Use
under Trademark Rule 2.88. The specimen of use submitted
in conjunction with the Statement of Use is a printed
advertisement. Applicant is identified at the top of the
page, and three paragraphs appear beneath the heading
“PackFAST!” Next to this text, illustrations of the three
computer “screen shots” are shown with pictures of a
“beeper” and two text-messaging devices beneath them. The
text of the three paragraphs is shown below:
PackFAST! is one more way WebLink Wireless
puts control into the hands of its customers. The
administrator will no longer need to call an office to
request messaging device delivery and activation for
end users. Ordering devices has never been easier.
PackFAST! allows WebLink Wireless’ customers to
order wireless devices directly from our inventory
1 The Examining Attorney identified above was assigned to this
application following the first Office Action.
Ser No. S.N 75.366,565
3
distribution center, directly from a PC. Each order
is processed and can be shipped via next day
airfreight (such as FedEx) either directly to
employees or the Communications Administrator, fully
activated and ready to use. With each order the
account is automatically billed.
PackFAST! is a free computer program that permits
a centralized administrator to dial directly into
WebLink Wireless’ provisioning system. As part of the
ordering process PackFAST! gives the customer the
ability to select the messaging device and assign a
local toll-free number as well as select the desired
coverage for each device.
The Examining Attorney held that this specimen does
not show use of the mark in connection with the services
identified in the application, as amended. He found that
the specimen demonstrates that the mark is used to identify
a free computer program that simplifies ordering goods from
applicant, but that there is no indication that the mark is
used to advertise or sell paging or voice messaging
services. Citing Trademark Rules 2.56 and 2.88(b)(2), the
Examining Attorney required applicant to submit a new
specimen showing use of the mark used in connection with
the sale or promotion of the services recited in the
application, along with an affidavit or a declaration that
the substitute specimen was in use in commerce prior to the
expiration of the time allowed applicant for filing its
statement of use.
Ser No. S.N 75.366,565
4
Additionally, the Examining Attorney noted that the
mark on the drawing was displayed as “PACKFAST,” whereas
the specimens depict the mark as “PACKFAST!” Applicant was
advised that unless the new specimen applicant needed to
submit showing use of the mark in connection with the
recited services showed the mark as “PACKFAST,” applicant
was required to submit a new drawing of the mark depicting
it as “PACKFAST!”
Applicant did submit a substitute drawing which
includes the exclamation point, but argued that the
Examining Attorney’s requirement for another specimen of
use was not well founded. Applicant quoted from the text
of its advertisement and concluded that the specimen of
record clearly establishes applicant’s use of the mark in
connection with its paging and voice messaging services.
The Examining Attorney accepted the amended drawing,
but continued and made final the requirement for a
substitute specimen. Applicant timely filed a Notice of
Appeal and an appeal brief. The Examining Attorney filed
his brief on appeal and applicant filed a reply brief, but
applicant did not request an oral hearing before the Board.
Trademark Rule 2.56 requires that “[a] service mark
specimen must show the mark as actually used in the sale or
advertising of the services.” The sole issue on appeal is
Ser No. S.N 75.366,565
5
whether the specimen submitted by applicant demonstrates
use of the mark in the sale or advertising of the paging
and voice messaging services identified in the application.
The Examining Attorney takes the position that the
mark identifies “a free computer program,” i.e., software,
which is used to order applicant’s paging devices and
services, and concludes that although “this product is
tangentially related to the claimed services, it cannot be
said that the proposed mark serves to indicate the source
of any paging or voice messaging services. The specimen
makes no mention of the claimed services in any context
other than to promote Applicant’s software as a tool to
order such services and attendant devices.” (Brief, p. 3).
The legal principle involved in this appeal is not
disputed by either applicant or the Examining Attorney. In
order to be evidence of use of the mark as a service mark,
the specimen must show the mark used in a manner that would
be perceived by potential purchasers as identifying
applicant’s services and indicating their source. The
specimen must show the mark used in such a way that someone
considering the specimen would associate the mark with the
claimed services. In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456 (CCPA 1973); and In re Johnson
Controls, Inc. 33 USPQ2d 1318 (TTAB 1994). Applicant and
Ser No. S.N 75.366,565
6
the Examining Attorney simply disagree as to whether the
specimen shows the mark used in such a way that a
reasonable reader of it would understand the mark to
identify the source of applicant’s paging and voice
messaging services, rather than only as a mark for the
software used to order the services and the devices used in
the rendering of the services.
Simply put, we agree with applicant that the specimen
of record shows the mark used to identify the source of
applicant’s paging and voice messaging services. Although
there can be no dispute but that the mark is specifically
linked to applicant’s ordering software, the specimens do
show the mark used in association with the services which
are rendered by means of the devices. In the first
paragraph of the text, for example, in addition to showing
the mark, applicant states that its customers no longer
need to call an office to request delivery of messaging
devices “and activation for end users.” If the only thing
applicant did was provide messaging devices, the mark would
not be a service mark, but this language makes it clear
that applicant not only provides the devices, it also
activates them so that they can be used to receive
messages. Once a pager is “activated,” the service is
being provided. This point is verified in the second
Ser No. S.N 75.366,565
7
paragraph, which states that after order processing and
shipment, the devices arrive “fully activated and ready to
use.” The third paragraph of text in the advertisement
notes that the customer is given the ability to select not
just the particular messaging device, but also a local or
toll-free number as well as the desired coverage for each
device. The specimen thus makes it clear that applicant
does more than simply supply the electronic devices; it
provides the paging and messaging services which are
rendered by means of such products. In view of the fact
that the mark is clearly displayed in a manner which
creates an association between the mark and the ordering
and the provision of these services, the specimens meet the
requirement of Rule 2.56, i.e., they show the service mark
as actually used in the sale or advertising of the
services. Accordingly, the requirement for a substitute
specimen is not well taken.
DECISION: The requirement for a substitute specimen is
reversed, and the application will proceed to publication
in due course.