Article by Clyde Shuman
In a precedential ruling, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office has affirmed the decision of a Trademark Examining Attorney that Tracfone Wireless, Inc. may not register the phrase “Unlimited Carryover” as a trademark for its telecommunications services, finding that the phrase merely conveys information about the company’s wireless services.
In In re TracFone Wireless, Inc., case number 87221529 (PTAB), the Examining Attorney originally refused registration for “Unlimited Carryover” under 15 U.S.C. §§ 1051-53 and 1127, on the ground that the proposed mark, as shown on the specimens of record, fails to function as a service mark for the recited services.
On appeal, the Board agreed, noting that the salient question was whether “Unlimited Carryover,” as used on TracFone’s specimen (here, a brochure advertising TracFone’s services), would be perceived as a source indicator for TracFone’s recited telecommunications services by consumers of telecommunications services, answering that question “no.”
The Board pointed out that, in the specimen, the wording “Unlimited Carryover” is last in a list of apparent features of TracFone’s “No-Contract Plans with Talk, Text, Data and Unlimited Carryover® starting at $15.” Per the Board, the fact that the phrase is set in the midst of other clearly informational matter, far from the TRACFONE logo, suggests that “Unlimited Carryover” also is informational matter. Per the Board, “Nothing in the specimen suggests that ‘Unlimited Carryover’ identifies the source of the telecommunications services any more than the other listed components of [TracFone’s] plans: ‘Talk,’ ‘Text,’ and ‘Data.’ Rather, the phrase will be perceived as part of the services rather than as a mark designating the source of the services.”
The Board also highlighted what it called the “inherent nature of the phrase” as “merely informational,” citing dictionary definitions of “unlimited” and informational use of “carryover” by other wireless telecommunications services providers. The Board concluded from this, that “‘Unlimited Carryover’ … will be perceived as merely an informational slogan which conveys information about carrying over unlimited data from one telecommunications billing cycle to the next rather than as a service mark to indicate source.”
The Board rejected TracFone’s argument that there is no evidence that “Unlimited Carryover” is a common term or one in everyday marketing, finding that “the record is devoid of any direct evidence to indicate that the purchasing public recognizes ‘Unlimited Carryover’ as a source indicator for Applicant’s services, and indicates the opposite instead.” Again, per the Board, “While the record may not support a finding that ‘Unlimited Carryover’ is a widely used phrase, it does support a finding that the meaning of the phrase simply provides information about the services, and [TracFone’s] manner of use underscores and illustrates that meaning, and how it would be perceived by consumers as such.”
The Board also rejected TracFone’s argument that the same mark is registered on the Supplemental Register, finding that the specimens for the registration on the Supplemental Register are not of record, the registration also is more than eight years old and consumer perception of the phrase “Unlimited Carryover” may have changed over time. In addition, the Board found the supplemental registration irrelevant, saying, “Moreover, an applicant cannot overcome a failure-to-function refusal issued on the ground that the matter does not identify source and is merely informational by seeking registration [on the Supplemental Register]. Matter that does not operate to indicate the source or origin of the identified services and distinguish them from those of others does not meet the statutory definition of a service mark and may not be registered, regardless of claims of acquired distinctiveness.”