Monday, March 17, 2008

Software is Technology, Says TTAB: About Screen Language Suffices for Specimen of Use

Reversing a PTO refusal to register, the Board deemed the language appearing on an "about screen" as satisfying the specimen requirement for Applicant Mentor Graphics' mark VIRTUALWIRES for "computer hardware and software for electronic design automation." [See specimen below]. In re Mentor Graphics Corporation, Serial No. 78325604 (March 6, 2008) [not precedential].

The PTO first contended that the mark "is being used to to describe a technology" and not to "identify the goods" listed in the application. The Examining Attorney relied on a 1992 definition of "technology" as "the scientific method and material used to achieve a commercial or industrial objective."

The Board, however, found the PTO's definition to be out of date. A 2003 dictionary defines "technology" as "a manner of accomplishing a task esp. using technological processes, methods, or knowledge ...." It therefore disagreed with the PTO and found that "technology" encompasses electronic design automation software.

The PTO also argued that VIRTUALWIRES does not function as a trademark because the term "is embedded in a descriptive phrase ... in small text in the middle of a specimen containing other more prominently placed text and graphic elements." The Board again disagreed. First, the PTO did not refuse registration on mere descriptiveness grounds, and it offered no evidence of descriptiveness. Second, the Board found the mark not merely informational:

"While the sentence in which the mark appears provides information, the information is that the system being used is powered by software technology identified by the mark VIRTUALWIRES. The is evidenced by the nature of the sentence itself; by the representation of the term VIRTUALWIRES in all capital letters followed by the 'TM' symbol in all bolded capital letters; and by the mark's distinctive use to modify the descriptive terminology for the goods, i.e., 'technology.'"

Finally, the Board noted that Applicant referred to the specimen as a "splash screen" in its Statement of Use, when it is actually an "about screen." [A splash screen appears at start-up, while an about screen appears when the computer users requests "help."] That distinction did not change the issues at hand. However, the Board pointed out that "the question of whether a specimen of use consisting of an about screen is acceptable to show use of the subject matter as a mark is not before us."

TTABlog comment: I doubt that the Board would find an "about screen" to be a proper specimen, given the fact that it appears only on the rare occasion (if ever) when one looks under the "help" tab and clicks on "about."

Text Copyright John L. Welch 2008.


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