Wednesday, January 03, 2007

TTAB Finds "DPOF" Capable of Functioning as a Trademark for Digital Cameras

Did that digital camera you got for Christmas include DPOF? Before you check, you might want to know (or you might not) that the TTAB just reversed a refusal to register the mark DPOF on the Supplemental Register, finding the mark to be capable of functioning as a trademark for digital cameras and related goods. In re Fuji Photo Film Co., Serial No 75580709 (December 19, 2006) [not citable].

Applicant Fuji asserted that it, along with its partners Kodak, Canon, and Matsushita, developed a proprietary technical specification for digital cameras and other digital imaging products; that the DPOF mark identifies "both the technical specification and the goods of Applicant and its licensees which are compliant with the standard;" that more than 140 companies have entered into the DPOF Specification Agreement; and that Applicant controls the "relevant quality associated with the DPOF designation." [TTABlog note: DPOF is an acronym for "digital print order format," the purpose of which is, according to one article, "to allow consumers who aren't interested in working with a PC to easily review images [on the camera's screen], crop and size them, select the ones they want to print and be able to push a button to make the process simple."]

The Examining Attorney argued that DPOF is "an industry standard, and not an indicator of source," that the designation DPOF is applied to goods over which Fuji has no control, other than verifying compliance with its specifications, and that, although DPOF might have been a distinctive mark, Fuji's and its licensees' use of the DPOF acronym "has permanently changed [its] nature and meaning."

The Board noted that Fuji's sole basis for registration is its ownership of a Japanese registration for the mark (Section 44(e)), and therefore Fuji need not prove use of the mark anywhere in the world prior to registration. Thus the Board did not have to consider whether Fuji has made use of the DPOF mark as a trademark.

The Board could not find "on the record of this case" that DPOF is incapable of functioning as a trademark.

"We note that the evidence of record indicates that DPOF serves both as an initialism for a method of transferring digital images known as 'digital print order format' and also as a mark used to identify goods conforming with that standard. Nonetheless, the examining attorney has cited to no authority to support a finding that a term used to denote such a method is incapable of distinguishing applicant's goods from those of others."

The Board therefore reversed the refusal to register.

TTABlog comment: Left for another day is the question of whether the DPOF mark, as currently used, functions as a trademark. Fuji asserted that the DPOF technology is covered by "patent, copyright, trade secret and other protections," so perhaps the addition of a trademark registration is not that important in the grand scheme of things. In other words, even after the patents and copyrights expire (decades from now in the latter case), the trade secrets may still give Fuji and its cohorts perpetual rights in at least some of the technology, with or without a registered trademark.

Text Copyright John L. Welch 2007.


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