From: Bal, Kamal
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`Sent: 5/14/2021 1:19:43 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 88201913 - FLYDULLES - N/A - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 88201913.doc
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 88201913
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`Mark: FLYDULLES
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`Correspondence Address:
` TODD L. JUNEAU
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` JUNEAU & MITCHELL
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` 1727 KING STREET, #300
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` ALEXANDRIA, VA 22314
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`Applicant: METROPOLITAN WASHINGTON AIRPORTS
`AUTHORI ETC.
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`Reference/Docket No. N/A
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`Correspondence Email Address:
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` TJUNEAU@JUNEAUMITCHELL.COM
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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` INTRODUCTION
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`Applicant, Metropolitan Washington Airports Authority, has appealed the examining attorney’s final
`refusal to register the proposed mark FLYDULLES for “providing a website featuring information in the
`field of air travel, airport parking, air travel booking, flight tracking in the nature of providing flight
`arrival and departure information, taxi and limousine transportation, airport light rail transportation,
`and toll road transportation” in International Class 039. Registration was refused on the Principal
`Register under Trademark Act Sections 1, 2, 3, and 45 for failure to function as a service mark on the
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`grounds that the applied-for mark, as used on the specimens of record, does not function as a service
`mark to indicate the source of applicant’s services because it is used as an Inte rnet domain name.
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`FACTS
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`On November 20, 2018, applicant applied for registration on the Principal Register for the mark
`FLYDULLES for “providing a website featuring information in the field of air travel, airport parking, air
`travel booking, flight tracking in the nature of providing flight arrival and departure information, taxi and
`limousine transportation, airport light rail transportation, and toll road transportation ” in International
`Class 039.
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`On February 20, 2019, the examining attorney issued an Office Action refusing registration under
`Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §1051-1053, 1127 for use of the applied-for mark as a
`hashtag and domain name, and also required applicant to clarify the identification of services. In
`response, on February 21, 2019, the applicant’s amendment to Section 1(b) filing basis overcame the
`refusals and satisfied the identification requirement. On April 9, 2019 the application was published in
`the Trademark Official Gazette followed by a Notice of Allowance, which issued on June 4, 2019.
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`Applicant filed a statement of use on October 10, 2019, which was refused on October 28, 2019 under
`Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §1051-1053, 1127 for use of the applied-for mark as a
`domain name. Applicant missed the six month response deadline and filed an incomplete Petition to
`Revive the abandoned application on May 18, 2020, that was automatically granted in error. As a result,
`on June 12, 2020 the Petition to Revive Deficiency Letter rescinded the May 18, 2019 petition to revive
`and required applicant to file a complete response to the Office Action within 30 days. Applicant
`ultimately filed a complete response on June 14, 2020 accompanied with substitute specimens that
`failed to overcome the refusal and resulted in this appeal. The examining attorney issued a Final Office
`Action on June 24, 2020 and refused to accept the specimens of record under Trademark Act Sections 1,
`2, 3, and 45 for failure to function as a service mark because the applie d-for mark is used as a domain
`name.
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`This appeal follows the applicant’s paper-filed Notice of Appeal on December 4, 2020, which the USPTO
`in error did not process until after the six month response deadline resulting in a Notice of
`Abandonment, issued on January 5, 2021. A Request for Reinstatement was promptly made the same day
`by the applicant, followed with several emails between the examining attorney and applicant conferring
`this procedural issue and a Petition to Director on February 5, 2021. On March 12, 2021 the application
`was reinstated in light of this processing error.
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`ARGUMENT
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`APPLICANT’S SPECIMENS FAIL TO SHOW USE OF THE MARK IN COMMERCE THEREFORE THE
`REFUSAL UNDER TRADEMARK ACT SECTIONS 1, 2, 3, AND 45 BARS REGISTRATION OF THE MARK.
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`The applicant submitted several specimens, all of which are unacceptable because they fail to function as
`a service mark for use as a domain name.
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`On October 10, 2019, applicant submitted four webpage specimens, which are refused under Trademark
`Act Sections 1, 2, 3, and 45 because each instance of the mark identifies applicant’s Internet domain
`name, by use of which one can access applicant’s website.
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`On June 14, 2020, applicant submitted seven specimens comprised of three examples of paper and digital
`signage, one example of applicant’s website, one example of applicant’s Facebook page, and two
`examples of their Twitter feed, which are all refused under Trademark Act Sections 1, 2, 3, and 45
`because each instance of the mark use of which one can access applicant’s website or social media
`platforms.
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`A. THE APPLIED-FOR MARK FAILS TO FUNCTION AS A SERVICE MARK AS USED ON EACH
`SPECIMEN
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`The applied-for mark, as used on the specimen of record, does not function as a trademark to
`indicate the source of applicant’s services and to identify and distinguish them from others because
`each use appear only as directing customers to a website address. Trademark Act Sections 1, 2, 3, and
`45, 15 U.S.C. §§1051-1052, 1127; see In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008); In re Eilberg,
`49 USPQ2d 1955, 1956 (TTAB 1998); TMEP §§904.07(b), 1215.02, 1215.02(a).
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`Whether a designation functions as a mark depends on the commercial impression it makes on
`the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the
`goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest
`Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence
`of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose
`Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d
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`1455, 1459 (TTAB 1998). Not every designation used in the advertising or performance of services
`functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A
`Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ
`149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers
`would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s
`Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
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`1. The webpage specimens are not acceptable because the applied-for mark is used as a domain
`name and, thus fails to function as a service mark.
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`In this case, the applied-for mark as shown on the webpage specimens of record, fails to function as a
`service mark because it is used as a domain name and as such would not be perceived as a mark. See In
`re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998);
`See also TMEP §§904.07(b), 1215.02, 1215.02(a). Specifically, the webpage specimens consist of
`screenshots of three different webpages from applicant’s website, www.FlyDulles.com, showing the
`applied-for mark in use as a domain name on each page.
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`a) The webpage describing the “Wings for All program” display the applied-for mark as an Internet
`domain name in the address bar of the web browser as a URL and also as “FLYDULLES.COM” in a blue
`square featured in the middle of the page. See October 10, 2019 Statement of Use Specimen Page 7; See
`also June 14, 2020 Response to Petition to Revive Page 12.
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`b) The webpage for booking hotel reservations by Priceline reference the applied for mark as
`“FLYDULLES.COM”. See October 10, 2019 Statement of Use Specimen Page 9.
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`c) The webpage for Dulles International Airport only shows the applied-for mark as an Internet domain
`name in the address bar of the web browser as a URL. See October 10, 2019 Statement of Use Specimen
`Page 8.
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`Each specimen shows the applied-for mark used as an Internet domain name because in each webpage
`example use of the wording “FLYDULLES” always appears with “.COM” as “FLYDULLES.COM”. As such,
`the mark consists only of wording coupled with a non-source-identifying generic top-level domain (gTLD)
`and, as used on the webpage specimens, would be perceived as the domain name where applicant’s
`website would appear on the Internet, and not as a service mark indicating source for the applied-for
`services. All of the uses of the applied-for mark on the webpage specimens appear only as directing
`customers to a website address. Once on the website, there are designations for “WINGS FOR ALL” and
`“DULLES INTERNATIONAL”, however no conspicuous “FLYDULLES” indication prominently displayed as
`indicating source such that consumers will call on at a later time.
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`Accordingly, the applied-for mark fails to function as a service mark because it is used as a domain name
`in each instance and not used as a source identifier.
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`2. The posters and display screen signage are not acceptable as a specimen because the applied-for
`mark is used as a domain name and hashtag and, thus fails to function as service mark.
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`The signage features two posters and a display screen showing the applied-for mark in use as a domain
`name:
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`a) The pair of outdoor poster signs in the Cell Phone Waiting Area display the applied -for mark as
`“fb.com/FlyDulles” on bottom of left sign and “Get updated flight information at: FlyDulles.com” on
`bottom of right sign. See June 14, 2020 Response to Petition to Revive Page 8.
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`b) The express bus display sign features the applied-for mark as “Fb.com/FlyDulles” in the lower right of
`the screen. See June 14, 2020 Response to Petition to Revive Page 9.
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`In this case, the applied-for mark as shown on the posters and display screen signage, fails to function as
`a service mark because it is used as a domain name, and as such would not be perceived as a mark. See
`In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB 2008); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998);
`See also TMEP §§904.07(b), 1215.02, 1215.02(a). The outdoor posters and display screen signage show
`the applied-for mark used as a part of an Internet domain name because the wording “FLYDULLES”
`appears as a part of the URL for applicant’s Facebook page, namely, “fb.com/FlyDulles”. The mark
`consists only of wording, “FlyDulles”, coupled with a non-source-identifying generic top-level domain
`(gTLD), “fb.com/” and would be perceived as the domain name where applicant’s website would appear
`on the Internet, and not as a service mark for the applied-for services. The mark, as depicted on the
`specimen, must be presented in a manner that will be perceived by potential purchasers to indicate
`source and not as merely an informational indication of the domain name address used to access a
`website. See Id. The applied-for mark, as displayed on the aforementioned signage, is not prominently
`displayed as the name under which applicant renders their air travel website , but rather always as a part
`of a larger URL directing customers to a website address. Thus, the applied-for mark does not function
`as a service mark for identifying and distinguishing an air travel website because, as shown on the
`posters and display screen signage, the mark identifies applicant’s Internet domain name, by use of
`which one can access applicant’s website.
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` Accordingly, the applied-for mark fails to function as a service mark because it is used as a domain
`name in each instance and not used to indicate source.
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`c) The non-stop flights display sign features the applied-for mark as “#FlyDulles”. See June 14, 2020
`Response to Petition to Revive Page 10.
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`Further, the non-stop flights display screen show the applied-for mark as a hashtag, namely,
`“#FlyDulles”, which fails to function as a service mark because it indicates to consumers how to identify
`or search online social media for flying at Dulles International Airport. See In re Hotels.com, L.P., 91
`USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); See also TMEP §§1202, 1202.18. A “hashtag” consists of a
`word or phrase preceded by the hash symbol or pound sign “#” (e.g., #chicago, #sewing, and
`#supremecourtdecisions) or by the term “hashtag” (e.g., hashtag skater). TMEP §1202.18. Hashtags are
`used on social-networking sites to identify or search for a keyword or topic of interest. Id. Thus, the use
`of the mark on the display screen fails to function as a service mark because it is merely used for
`searching online social media for information about the airport as a hashtag and, not as a source
`identifier of applicant’s services.
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`As such, the applied-for mark is unlikely to be perceived as a service mark because it is merely used as a
`hashtag.
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`3. The applicant’s social media accounts on Facebook and Twitter are not acceptable specimens
`because the applied-for mark is used as a handle link, domain name and hashtag to the applicant
`and, thus fails to function as a service mark.
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`In this case, the applied-for mark as shown on the social media specimens, fails to function as a service
`mark because it would not be perceived as a mark. See In re Roberts, 87 USPQ2d 1474, 1479-80 (TTAB
`2008); In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998); See also TMEP §§904.07(b), 1215.02,
`1215.02(a). In particular, the specimens show three different social media account examples with the
`applied-for mark used in a way that would be perceived as nothing more than an Internet address
`where the applicant can be contacted:
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`a) The applicant’s Facebook profile page features the applied-for mark as “@FlyDulles” in the upper left
`column below their name “Washington Dulles International Airport”. See June 14, 2020 Response to
`Petition to Revive Page 11.
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`The use of the applied-for mark as “@FlyDulles” fails to function as service mark because it would be
`perceived as merely an informational indication of applicant’s handle link used to access their
`applicant’s social media username. As such, potential purchasers will perceive the applied-for mark as
`shown on applicant’s Facebook profile as nothing more than an Internet address to access the applicant
`on social media platforms similar to a domain name address used as an address or as merely part of the
`information on how to contact the applicant. See Id.
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`Accordingly, the applied-for mark on the Facebook profile page does not function as a service mark for
`identifying and distinguishing an air travel website because the mark identifies applicant’s address to
`contact the applicant on social media and not for indicating source.
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`b) The applicant’s Twitter feed pages show the applied-for mark appearing in three places as
`“flyDulles.com” next to a hyperlink logo in the left column, as “FlyDulles.com” in the top of the
`cellphone screen appearing at the top of the page and “FlyDulles.com/booknow” in the upper center
`headline of the page. See June 14, 2020 Response to Petition to Revive Pages 14.
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`The uses of the applied-for mark as “FlyDulles.com” and “FlyDulles.com/booknow” on applicant’s
`Twitter page fails to function as a service mark because the mark consists only of the wording,
`“FlyDulles”, coupled with a non-source-identifying generic top-level domain (gTLD), “.com” and
`“.com/booknow” and would be perceived as the domain name where applicant’s website would appear
`on the Internet, and not as a source identifier for the applied-for services. The applied-for mark as
`shown on Twitter, is displayed as a part of a URL alongside surrounding text where the applicant can be
`contacted for “travel bookings”, at the top of a web browser in the cellphone screen, and also where
`general contact information can be found in the left hand column. Each instance demonstrates use of
`the applied-for mark as a domain name displayed merely as part of the information on how to contact
`the applicant. Thus, the applied-for mark does not function as a service mark for identifying and
`distinguishing an air travel website because the mark identifies applicant’s Internet domain name, by
`use of which one can access applicant’s website.
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` Accordingly, the applied-for mark fails to function as a service mark because it is used as a domain
`name in each instance and not used to indicate source.
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`c) The applicant’s Twitter feed pages show the applied-for mark appearing as “#FlyDulles” in the upper
`left corner in the bar at the top, in their twitter posts and also in the left column. See June 14, 2020
`Response to Petition to Revive Pages 13-14.
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`Finally, the applicant’s Twitter account page also features examples of the applied-for mark in use as a
`hashtag, which analogous to the signage with a hashtag, also fails to function as a service mark because
`it merely consists of the wording “FlyDulles” preceded by the hash symbol to identify or search for the
`applicant on social media. See In re Hotels.com, L.P., 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); See
`also TMEP §§1202, 1202.18. In this case, the use of “#FlyDulles” in the December 22, 2015 Twitter post
`fails to function as a service mark because it is in blue which indicates to users it is a hyperlink for
`consumers to identify or search social media for flying at Dulles International Airport. Similarly,
`“#FlyDulles” in the upper left corner of applicant’s Twitter account page also fails to function as a service
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`mark because it would be perceived merely as a hashtag for searching online social media rather than as
`a service mark for air travel website services. It is the perception of the ordinary customer that
`determines whether the asserted mark functions as a mark, not the applicant’s intent, hope, or
`expectation that it does so. See In re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229
`(C.C.P.A. 1960). The proposed mark is used in a way that would be perceived as nothing more than a
`hashtag where the applicant can be searched on social media for information about the airport and, not
`as a source identifier of applicant’s services.
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`As such, the applied-for mark is unlikely to be perceived as indicating source for the applied-for services
`because it is merely used as a hashtag.
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`CONCLUSION
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`For the foregoing reasons, Applicant’s specimens fail to show use of the proposed mark in
`commerce for the services identified in International Class 039 because they do not function as a service
`mark to indicate source. Therefore, the examining attorney respectfully requests that the refusal to
`register under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §1051-1052, 1127, be affirmed.
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`Respectfully submitted,
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`/Kamal Bal/
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`Kamal S. Bal
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`Examining Attorney
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`Law Office 119
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`571-272-5645
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`Kamal.Bal@uspto.gov
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`Brett J. Golden
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`Managing Attorney
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`Law Office 119
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`571-272-9257
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`Brett.Golden@uspto.gov
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