Monday, May 11, 2020

PwC Files Application to Register AUTOMATIC CONTACT TRACING As a Trademark for Web-Based Software. Any Issues?

Coronavirus-related trademark applications are flooding the U.S. Patent and Trademark Office recently, to no one's surprise. And a recent application from PricewaterhouseCoopers is no different.

On May 6, the global professional services firm filed an application to register AUTOMATIC CONTACT TRACING as a trademark with the USPTO. The application covers the following services in Class 42:
  • Providing web-based software application that would assist organizations in making critical workforce strategies through the analysis of data based on employee location and interaction
According to the application, PwC has been using AUTOMATIC CONTACT TRACING as a trademark (or, more accurately, a service mark) since March 30, 2020. Submitted with the application to prove use is the specimen seen below.

See any potential issues? Is this mark merely descriptive of the underlying services?

Merely descriptive trademarks immediately describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." See TMEP 1209.01(b). Merely descriptive trademarks cannot be registered on the Principal Register (which affords all the benefits of a federal trademark registration) without a showing of acquired distinctiveness. 

Does AUTOMATIC CONTACT TRACING merely describe the underlying services listed in the application and show in the specimen above? If so, the USPTO will issue a refusal to register this mark. PwC can submit arguments against that refusal, amend the application to the Supplemental Register (assuming the mark is being used as a service mark and actually in use), or choose to abandon the application.

We'll find out what an examining attorney at the USPTO thinks when this application is examined in approximately three months. Stay tuned.

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