TMEP 1301.02(e): Process, System, or Method
October 2017 Edition of the TMEP
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1301.02(e) Process, System, or Method
A term that only identifies a process, style, method, system, or the like is not registrable as a service mark. A system or process is only a way of doing something, not a service. The name of a system or process does not become a service mark, unless it is also used to identify and distinguish the service. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used); In re HSB Solomon Assoc., 102 USPQ2d 1269, 1274 (TTAB 2012) (finding that the specimens show CEI identifying only a process and do not show a direct association between CEI and the applied-for services); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) (term does not function as service mark where it only identifies a photochemical process used in rendering service); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno-Metallurgichesky Institut Tsvetnykh Mettalov "Vnitsvetmet", 219 USPQ 69 (TTAB 1983) (KIVCET identifies only a process and plant configuration, not engineering services); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979) (term that merely identifies educational technique does not function as mark to identify educational services); In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) (term used only to identify liquefaction process does not function as mark to identify design and engineering services); In re Produits Chimiques Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976) (term that merely identifies a process used in rendering the service does not function as service mark); In re Lurgi Gesellschaft Fur Mineraloltechnik m.b.H., 175 USPQ 736 (TTAB 1972) (term that merely identifies process for recovery of high-purity aromatics from hydrocarbon mixtures does not function as service mark for consulting, designing, and construction services); Ex parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r Pats. 1953) (although used in advertising of applicant’s engineering services, CYCLOVERSION was only used in the advertisements to identify a catalytic treating and conversion process).
If the term is used to identify both the system or process and the services rendered by means of the system or process, the designation may be registrable as a service mark. See Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305 (TTAB 1979), in which the Board found that the mark LIQWACON identified both a waste treatment and disposal service and a chemical solidification process.
The name of a system or process is registrable only if: (1) the applicant is performing a service ( see TMEP §§1301.01 et seq.); and (2) the designation identifies and indicates the source of the service. In determining eligibility for registration, the examining attorney must carefully review the specimen, together with any other information in the record, to see how the applicant uses the proposed mark. The mere advertising of the recited services in a brochure that refers to the process does not establish that a designation functions as a service mark; there must be some association between the offer of services and the matter sought to be registered. In re Universal Oil Prods. Co., supra; In re J.F. Pritchard & Co., supra.