TracFone Wireless, Inc.

This Opinion Is a
Precedent of the TTAB

Mailed: June 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TracFone Wireless, Inc.
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Serial No. 87221529
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Candice E. Kim of Greenberg Traurig, LLP,
for TracFone Wireless, Inc.

Allison Holtz, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Ritchie, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Applicant TracFone Wireless, Inc. seeks registration on the Principal Register of

the proposed mark UNLIMITED CARRYOVER, in standard characters and with a

claim of acquired distinctiveness in whole under Trademark Act Section 2(f), 15

U.S.C. § 1052(f), for the following services in International Class 38:

Telecommunication services, namely, transmission of
voice, data, graphics, images, audio and video by means of
telecommunications networks, wireless communication
networks, and the Internet; Telecommunication services,
Serial No. 87221529

namely, wireless telephone services; Telephone
communication services.1

The Trademark Examining Attorney has refused registration under Sections 1, 2,

3, and 45 of the Trademark Act, 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. After the refusal was made final, Applicant appealed to

this Board and requested reconsideration, which was denied. The appeal is fully

briefed. We affirm the refusal to register.

I. Legal Standard for Failure to Function as a Service Mark

It has often been said that: “Before there can be registration, there must be a

trademark.” In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (quoting

In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978)). The starting point

for our analysis is Section 45 of the Trademark Act, where “trademark” is defined in

relevant part as “any word, name, symbol, or device, or any combination thereof used

by a person . . . to identify and distinguish his or her goods . . . from those

manufactured or sold by others and to indicate the source of the goods, even if that

source is unknown.” As the Board stated in American Velcro, Inc. v. Charles Mayer

Studios, Inc., 177 USPQ 149, 154 (TTAB 1973):

It is settled that not every designation that is placed or
used on or in connection with a product necessarily
functions or is recognized as a trademark for said product;
not every designation adopted with the intention that it
performs a trademark function and even labeled as a

1Application Serial No. 87221529 was filed October 31, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use anywhere and use in commerce as of
November 27, 2009.
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Serial No. 87221529

trademark necessarily accomplishes that purpose; and
there are certain designations that are inherently
incapable of functioning as trademarks to identify and
distinguish the source of the products in connection with
which they are used.

This analysis applies to service marks as well. Trademark Act Section 3. The mere

fact that a designation appears on the specimens of record does not make it a mark.

In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992). Subject matter

that, due to its inherent nature or the manner in which it is used, does not function

as a mark to identify and distinguish the applicant’s identified services cannot be

registered. In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1270 (TTAB 2012).

The key question is whether the asserted mark would be perceived as a source

indicator for Applicant’s services. See In re Brass-Craft Mfg. Co., 49 USPQ2d 1849,

1852 (TTAB 1998), aff’d mem., 217 F.3d 855 (Fed. Cir. 1999); In re Volvo Cars of N.

Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). “The critical inquiry in determining

whether a designation functions as a mark is how the designation would be perceived

by the relevant public. To make this determination we look to the specimens and

other evidence of record showing how the designation is actually used in the

marketplace.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (citations

omitted). Thus, in this case, we examine Applicant’s specimen to determine whether

UNLIMITED CARRYOVER would be perceived as a source indicator for Applicant’s

recited telecommunications services by consumers of telecommunications services.

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Serial No. 87221529

II. Applicant’s Specimen

Applicant’s sole specimen is:

The Examining Attorney contends that UNLIMITED CARRYOVER as shown on the

specimen fails to function as a mark because it does not identify the source of the

services and distinguish them from others due to its manner of use, both because of

its placement on the specimen and because the wording is “informational and

common.” 10 TTABVUE 7.
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Serial No. 87221529

We agree that UNLIMITED CARRYOVER, as used on the specimen, does not

identify the source of Applicant’s services and distinguish them from others. In the

specimen, the wording UNLIMITED CARRYOVER is last in a list of apparent

features of Applicant’s “No-Contract Plans with Talk, Text, Data and Unlimited

Carryover® starting at $15.” The phrase is set in the midst of other clearly

informational matter, far from the TRACFONE logo. This suggests that UNLIMITED

CARRYOVER too is informational matter. See, e.g., In re AOP LLC, 107 USPQ2d

1644, 1654 (TTAB 2013).2 Nothing in the specimen suggests that “Unlimited

Carryover” identifies the source of the telecommunications services any more than

the other listed components of Applicant’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. See In re Keep a Breast Found., 123 USPQ2d 1869, 1881

(TTAB 2017).

2 See also In re J. Hungerford Smith Co., 279 F.2d 694, 126 USPQ 372, 373 (CCPA 1960)
(stating, after reviewing specimens submitted: “We agree with the Patent Office that, so far
as the record shows, appellant has not used ‘Burgundy’ as a trademark for a soft drink syrup,
but only as a flavor designation. It follows that registration was properly refused, and it is
unnecessary to consider the further holding that ‘Burgundy’ is descriptive of appellant’s
product and has not been shown to have acquired a secondary meaning.”); In re True Temper
Corp., 219 F.2d 957, 105 USPQ 69, 71 (CCPA 1955) (“[A] combination of descriptive words
used [CRIPPLED SHAD for a fishing lure], as in the case at bar, as a mere adjunct to
applicant’s trade name are not registrable in any case where the combination is of such a
character as to be incapable of becoming a trade-mark or of distinguishing the applicant’s
goods.”) (citations omitted); In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288, 289
(CCPA 1954) (“[W]e think it is clear from the exhibits that Duvernoy & Sons, Inc., appellant’s
trade name (generally shown in large, fanciful letters), is relied upon to denote origin and
that ‘Consistently Superior’ is merely an adjunct thereto, operating in the shadow thereof, to
indicate to purchasers that appellant’s goods are always superior in quality. . . . A careful
consideration of the manner in which the appellant has employed the notation in question,
as indicated principally by the exhibits, compels us to conclude that actual trade mark usage
of ‘Consistently Superior’ is not adequately shown in the record.”).
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Serial No. 87221529

In addition to its placement on the specimen of use in a list of features, the

inherent nature of the phrase itself is merely informational and fails to function as a

mark. TMEP § 1202.04 (Oct. 2018) instructs that:

Matter is merely informational and does not function as a
mark when, based on its nature and the context of its use
by the applicant and/or others in the marketplace,
consumers would perceive it as merely conveying general
information about the goods or services or an informational
message, and not as a means to identify and distinguish
the applicant’s goods/services from those of others.

The Examining Attorney introduced a dictionary definition of “unlimited”

meaning: “Having no restrictions or controls.”3 Applicant submitted a definition of

“carry-over” meaning “that which is carried over, postponed, or extended to a later

time, account, etc.”4 We also take judicial notice that the unhyphenated noun

“carryover” is defined on Merriam-Webster.com as “the act or process of carrying

over” and “something retained or carried over.”5

Applicant’s use of the term “carryover” in association with wireless data is seen in

this offer of a “Total Wireless $10 Add-On Carryover Data Card” on walmart.com:6

3 December 5, 2016 Office Action at TSDR 16-17, from thefreedictionary.com.
4 June 5, 2017 Response to Office Action at TSDR 12, from dictionary.com.
5 The Board may take judicial notice of definitions from dictionaries, including online
dictionaries that exist in printed format. E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100,
1104 n.9 (TTAB 2018).
6 December 5, 2016 Office Action at TSDR 2-7. Applicant owns Total Wireless. See, e.g.,
Appeal Brief at 10-11, 8 TTABVUE 11-12; June 5, 2017 Response to Office Action at 16-28
(printouts of TOTAL WIRELESS registrations from the TSDR database).
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Serial No. 87221529

Although this use is accompanied by the federal trademark registration symbol, this

is not dispositive for our analysis, as further discussed below. Rather, this use too

appears to be informational. The Examining Attorney also submitted an example of

the use of “carryover” from the website of third party Northwest Cell.7 The page, titled

7 December 5, 2016 Office Action at TSDR 11-12. We have not considered two other examples
from websites located outside the United States. One of the websites is for a company that
appears to provide wireless services only in New Zealand, while the other is a news article
offering consumer advice on a site that “caters to a loyal South African audience.” See June 5,
2017 Response to Office Action at TSDR 29-33. Foreign websites may have probative value
depending on the circumstances, including whether the U.S. consuming public is likely to
have been exposed to the site. In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784,
1786 (TTAB 2013). Here, however, although the foreign websites are in English, they are
clearly directed to local consumers or readers and there is no basis in this record to conclude
that U.S. consumers of telecommunications services are likely to have been exposed to them.
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Serial No. 87221529

“Carryover Data,” explains how to “Carryover your unused data into the next billing

cycle,” stating in part: “At the end of the billing cycle, any remaining data is carried

over into the next billing cycle.”8 Although these examples are few in number, the

record supports a finding that UNLIMITED CARRYOVER as used on the specimen

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. See, e.g., In re Standard Oil Co., 275

F.2d 945, 125 USPQ 227 (CCPA 1960) (finding GUARANTEED STARTING ordinary

words conveying information about the services, not service mark for “winterizing”

motor vehicles).

III. Applicant’s Arguments

Applicant contends that it is unaware of any other telecommunications providers

using UNLIMITED CARRYOVER as a source identifier, Appeal Brief at 5, 8

TTABVUE 6; that UNLIMITED CARRYOVER “is not a common term nor is it used

in everyday marketing,” id. at 6, 8 TTABVUE 7; and that the phrase “is used to brand

and source identify the provision of wireless services which features additional talk,

text, and data that the customer will receive if purchased separately,” id. at 9, 8

TTABVUE 10. Yet 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. See Volvo Cars, 46 USPQ2d

at 1461. While the record may not support a finding that UNLIMITED CARRYOVER

8 December 5, 2016 Office Action at TSDR 11.
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Serial No. 87221529

is a widely used phrase, it does support a finding that the meaning of the phrase

simply provides information about the services, and Applicant’s manner of use

underscores and illustrates that meaning, and how it would be perceived by

consumers as such.

Applicant also points out that it owns a registration on the Supplemental Register

for the same mark it seeks to register here, UNLIMITED CARRYOVER in standard

characters, for the following services in International Class 38: “Cellular telephone

communications services, cellular telephone telecommunications services provided

via prepaid air time cellular telephones; cellular telephone telecommunications

services provided via prepaid air time cellular telephone calling cards.”9 Applicant

emphasizes that the specimen for that registration is identical to the subject

specimen, arguing: “This shows that not only is Applicant’s Mark capable of serving

as a service mark, it actually does function as a service mark, as it is shown on the

specimen of use.” Reply Brief at 2, 11 TTABVUE 3. The specimens for the registration

on the Supplemental Register are not of record, and Applicant’s argument is circular.

The registration also is more than eight years old; consumer perception of

UNLIMITED CARRYOVER may have changed with the passage of time. “It has been

said many times that each case must be decided on its own facts.” In re Eagle Crest

Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (citation omitted). The Board must make

its own findings of fact, and that duty may not be delegated by adopting the

9 Registration No. 3868810, June 5, 2017 Response to Office Action at TSDR 13-15. The
registration issued October 26, 2010, and a Declaration of Use under Section 8 of the
Trademark Act was accepted January 21, 2017.
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Serial No. 87221529

conclusions reached by an examining attorney in another application. In re

Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231

USPQ 873, 876 (TTAB 1986). This is particularly the case when the prior registration

is nearly a decade old and involves the rapidly evolving field of telecommunications.

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 pursuant to Section 2(f). Eagle Crest, 96 USPQ2d at 1229. 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.

Finally, Applicant relies on third-party registrations for ROLLOVER DATA and

ROLLOVER MINUTES, arguing: “If a term such as ROLLOVER can function as a

trademark in the telecommunications industry, so can CARRYOVER.” Reply Brief at

3, 11 TTABVUE 4. The Board, however, must assess each mark on its own facts and

record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.

2001) (“Even if some prior registrations had some characteristics similar to

[applicant’s] application, the PTO’s allowance of such prior registrations does not bind

the Board or this court.”). This argument is not persuasive.

Considering all the record evidence, we find that the specimen of use is insufficient

to show use of UNLIMITED CARRYOVER as a mark in connection with the

identified telecommunications services.

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Serial No. 87221529

Decision: The refusal to register is affirmed.

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