IN RE AMERICAN MEDICAL ALERT CORP., 76692069 (TTAB 2-28-2011)
Serial No. 76692069United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 28, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Myron Amer of Myron Amer, P.C. for American Medical Alert Corp.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney).
Before Bergsman, Wellington and Lykos, Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
American Medical Alert Corp. (?applicant?) seeks registration of the mark ENDORSED BY GRANDCHILDREN EVERYWHERE, in standard character form, for ?providing television advertising for others, namely, promoting a ready response medical alert system,? in Class 35.
At issue in this appeal is the Trademark Examining Attorney?s final refusal to register applicant?s mark on the ground that the mark does not function as a servicePage 2
mark to identify and distinguish the specified services. See Trademark Act Sections 1, 2, 3 and 45,15 U.S.C. ?? 1051-1053, 1127.
This application has an unnecessarily tortured history that could have been remedied by a simple telephone conversation between the examining attorney and applicant?s counsel. Instead, we are faced with a pointless appeal. The prosecution history of this application is instructive for purposes of how not to examine and prosecute an application.
The description of services in the original application was set forth as ?television advertisement for Walgreen?s ready response medical alert system,? in Class 42. That description, while clearly unacceptable because it includes the trademark of a third party, is ambiguous; it could be an advertising service or a medical alert system. TheTrademark Manual of Examining Procedure specifically addresses such situations.
1402.07(b) Ambiguous Identifications
* * *
Example ? If the applicant begins an indefinite identification of goods with superfluous wording such as ?sale of . . .,? ?advertising of . . .,? ?manufacture of . . .,? or similar wording, the applicant may amend to specify either goods or services withinPage 3
the scope of the existing identification. However, the specific terms used to preface the goods do establish some limitation as to scope. ?Sale of? may justify an amendment to retail or mail order services for specific goods, or to the goods themselves, but not to custom manufacturing or advertising agency services related to those goods.
Based on the specimens of record,[fn1] it is clear that applicant intended to use the term sought to be registered to identify a medical alert system. Accordingly, applicant sought to amend the description of services to the following description of goods: ?Elder person?s medical alert system,? in Class 9.[fn2] Contrary to the explanation in TMEP ? 1407(b), the examining attorney rejected the proposed amendment on the ground that ?it refers to goods and/or services that are not within the scope of the identification that was set forth at the time of filing,? and suggested, if accurate, that applicant amend the description of services to read as follows: ?providing television advertising for others, namely, promoting the READY RESPONSE MEDICAL ALERT SYSTEMS of others.? (Emphasis in the original).[fn3]
Despite the fact that the suggestedPage 4
description of services was inaccurate, and in lieu of arguing why its proposed amendment should not be rejected, applicant agreed to amend the description of services pursuant to the suggestion made by the examining attorney. As discussed below, the appeal before us is for a nonexistent issue: whether the mark ENDORSED BY GRANDCHILDREN EVERYWHERE is a service mark identifying television advertising services instead of whether applicant?s proposed amendment identifying an ?elder person?s medical alert system? is within the scope of the original description of services.
The application was published for opposition and no one lodged an opposition to registration. Accordingly, a notice of allowance was issued. Applicant subsequently filed a Statement of Use with a specimen comprising a story board for an advertisement. The relevant part of the specimen is set forth below.
Page 5
Because the specimen did not show the mark used to identify a television advertising service, the examining attorney required a new specimen showing the mark used to identify the services. Accordingly, applicant submitted the brochure shown below.
Applicant also submitted a copy an actual letter to a customer explaining how to use the ?ENDORSED BY GRANDCHILDREN EVERYWHERE personal response system.?
The examining attorney contends that the term ENDORSED BY GRANDCHILDREN EVERYWHERE does not function as a service mark to identify and distinguish television advertisingPage 6
services for others. The refusal on this ground was made final. The appeal is fully briefed. After careful consideration of the evidence and arguments of record, we affirm the refusal to register.
In its brief, applicant states that it ?seeks registration of the service mark ENDORSED BY GRANDCHILDREN (sic) for a personal response system.?[fn4] That is incorrect; applicant is seeking registration for ?television advertising for others, namely, promoting a ready to response medical alert system.? While applicant may have intended to file and prosecute an application for a personal response system, it did not. In this regard, when its amendment to an ?elder person?s medical alert system? was rejected, applicant agreed to amend its application to ?providing television advertising for others, namely, promoting a ready to response medical alert system.? Thus, the sole issue before us is whether applicant?s mark identifies those services.
As shown in the story board, brochure and letter, applicant?s mark is a tagline used to promote a ?personal response system,? not a television advertising service.
Decision: The refusal to register is affirmed.
[fn1] The specimens were not available to the examining attorney at the time she issued the first office action. [fn2] Applicant?s December 29, 2008 response. [fn3] January 9, 2009 Office Action. Upon review of applicant?s proposed amendment to ?Elder person?s medical alert system,? had the examining attorney spoken with applicant?s counsel, she could have ascertained the true nature of applicant?s goods and would not have suggested the inaccurate description of services. [fn4] Applicant?s Brief, p. 1.