New York, N.Y. January 2008 - Darby & Darby is pleased to announce a recent successful appeal to the Trademark Trial and Appeal Board resulting in a rare precedential opinion.
Darby represented the New York Board of Trade (now ICE Futures U.S., Inc.) in the prosecution of three trademark applications in connection with its futures exchange services, SUGAR NO. 11, SUGAR NO. 14, and COTTON NO. 2. All three marks were refused registration on the basis of descriptiveness and that the marks did not function as services marks. Specifically, the PTO argued that specimens submitted did not show use in connection with the future exchange services identified in the applications.
This was a complicated matter stemming from the fact that the financial industry often refers to investments and other financial instruments, e.g., stocks, securities and mortgages, as “financial products.” By contrast, the PTO classifies such products as “”financial services.” This difference became apparent during the examination of the applications, because the industry used the marks in connection with “financial product” language. The Examining Attorney thus continued to refuse the marks on the ground that they were not being used in connection with futures exchange services.
Darby prevailed, and the Board relied upon Darby’s explanation of the services and the operation of a futures exchange in its precedential opinion. Darby’s description of the operation of a futures exchange was found to be relevant to the consideration of both refusals and was quoted in its entirety in the Board’s opinion.
Based on this understanding of the services, the Board found that there was no evidence that 11, 14, or 2 had any particular meaning and that when viewed in their entireties, the marks were arbitrary.
Additionally, the Board concluded that the specimens originally submitted were sufficient to show use of the marks in connection with futures exchange services. The Board explained that the service need not be referenced explicitly in the specimen. Here, the specimens identified futures contracts, which are integral and essential components of the operation of a futures exchange. Therefore, the specimens showed use of the marks in the rendering of the services identified in the application. This portion of the holding is particularly significant in explaining the types of specimens that the PTO will accept generally in support of an application to register a service mark.