In no way am I doubting that you've been through this before, but I honestly have no idea what you mean when you say "I dont think they would go through this much work if it wasn't approved." What work are you referencing specifically, the work of an attorney to attain a TM on a generic term contained within a .com domain they paid $250k for..? Seems a non-starter to me.
And not sure what you're referencing with a link to the terms. Is it this?
As evidenced above, their terms page claims a trademark on "bitcoinwallet.com". They may be claiming a "common law trademark" to the use of the domain name, but my personal research has revealed to me there is no "Bitcoinwallet.com" trademark registered with the United States Patent & Trademark Office (filed, live, dead or otherwise from my research). Seems to me that it's stock TM language, a preemptive legal protection.
As I clarified in my previous post, the current trademark application for "bitcoin wallet" (
) is under review. I surmise it's "Live" -- in that it has been filed -- but the status is "
." You'll also find with a bit of research, that the trademark was originally applied for by the previous owners of the domain, submitted under bitcoinwallet.net - not the .com. Furthermore,
from previous owner of application (Bitcoin Wallet, LLC) to new owner (Elttes LLC) on 6/1/14.
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicantโs services. Trademark Act Section 2(e)(1), 15 U.S.C. ยง1052(e)(1);
see TMEP ยงยง1209.01(b), 1209.03
et seq.
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicantโs services.
In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002);
In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001);
see TMEP ยงยง1209.01(c)
et seq.,1209.02(a).
Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended. See TMEP ยง1209.01(c).
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose, or use of an applicantโs services. TMEP ยง1209.01(b);
see, e.g.,
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004));
In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing
Estate of P.D. Beckwith, Inc. v. Commโr of Patents, 252 U.S. 538, 543 (1920)).
โA mark may be merely descriptive even if it does not describe the โfull scope and extentโ of the applicantโs goods or services.โ
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP ยง1209.01(b). It is enough if a mark describes only one significant function, attribute, or property.
In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP ยง1209.01(b);
see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
The determination of whether a mark is merely descriptive is made in relation to an applicantโs services, not in the abstract.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012);
In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP ยง1209.01(b);
see, e.g.,
In re Polo Intโl Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the โdocumentsโ managed by applicantโs software rather than the term โdoctorโ shown in a dictionary definition);
In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of โcomputer programs recorded on diskโ where the relevant trade used the denomination โconcurrentโ as a descriptor of a particular type of operating system). โWhether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.โ
In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The applicant is seeking to register the mark BITCOIN WALLET for โcash management namely facilitating and tracking transfers of electronic cash equivalents; virtual currency exchange transaction services for transferable electronic cash equivalent units having specified cash value.โ Bitcoins are a type of digital currency. The term โwalletโ is used in this context to refer to digital wallets which are the equivalent of wallets for e-commerce purposes. The examining attorney attaches several third party registrations in which the term โwalletโ has been disclaimed for similar services. These registrations serve as evidence of Office practice in holding this term to be descriptive. The applicantโs services involve the use of digital wallets to transfer digital currency for use in e-commerce. The applicant has conceded that each of the terms comprising the mark are descriptive through its disclaimer. However, an entire mark may not be disclaimed. TMEP ยง1213.06;
see 15 U.S.C. ยง1056(a);
In re Dena Corp. v. Belvedere Intโl Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991);
In re JT Tobacconists,59 USPQ2d 1080, 1081 n.1 (TTAB 2001). If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable. TMEP ยง1213.06. Accordingly, the disclaimer is not accepted and will not be entered into the USPTOโs database.
See TMEP ยง714.05(a)."
Although applicantโs mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Disclaimer
As stated above, the applicant has disclaimed the entire applied-for mark. However, an entire mark may not be disclaimed. TMEP ยง1213.06;
see 15 U.S.C. ยง1056(a);
In re Dena Corp. v. Belvedere Intโl Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991);
In re JT Tobacconists,59 USPQ2d 1080, 1081 n.1 (TTAB 2001).
If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable. TMEP ยง1213.06.
Accordingly, the disclaimer is not accepted and will not be entered into the USPTOโs database. See TMEP ยง714.05(a).
Specimen
Registration is refused because the specimen does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in use in commerce. 15 U.S.C. ยงยง1051, 1127; 37 C.F.R. ยงยง2.34(a)(1)(iv), 2.56(a); TMEP ยงยง904, 904.07(a).
Specimens consisting of advertising or promotional materials generally must show a direct association between the mark and the services for which registration is sought.
See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973);
In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012); TMEP ยง1301.04(b). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service.
In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting
In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994));
see In re Osmotica Holdings, Corp.,95 USPQ2d 1666, 1668(TTAB 2010).
In the present case, the specimen shows a world map that merely shows use of the terms BITCOIN WALLET without referencing any of the services at issue.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. ยง1051(a)(1); 37 C.F.R. ยงยง2.34(a)(1)(iv), 2.56(a); TMEP ยงยง904, 904.07(a).
Examples of specimens for services may include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
See TMEP ยงยง1301.04
et seq.
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified
โsubstituteโ specimen)
that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.
(2) Amend the filing basis to
intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.
But like I said, I'm not an IP attorney, personally. Merely my own interpretation and conclusion after reading all of the documents publicly available from the USPTO regarding the application history for this term. But it's time to call it a night, as I'm digressing and hijacking the thread. Cheers folks!
