Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display
The TTAB reversed a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, overturning the USPTO's rejection of applicant's specimen of use. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, the Board concluded that the specimen "shows the applied-for mark used in connection with the goods ... and would be perceived as a trademark identifying the source of those goods." In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma).
The first page of applicant's two-page specimen (the login screen shot shown above) displays the wording "AWLview WMS for Sterling Jewelers" appearing above "AWL Logon WS 202" shown in the title bar of the login page. The second page (the SKU search query page shown below) contains the wording "AWLview WMS for Sterling Jewelers WS 202 - LCM" appearing above "Inventory By SKU Report-WS 202" shown in the title bar of the SKU search query window.
The Board observed that, according to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software "might be a photograph or printout of a display screen projecting the identifying trademark for a computer program."
Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see TMEP § 904.03(e), an acceptable specimen might be a photograph or screenshot of a computer screen displaying the identifying trademark while the computer program is in use. The second substitute specimen features screenshots of Applicant’s mark appearing on the log-in and search screens viewable by Applicant’s customers utilizing the downloaded software. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, we find that the second substitute specimen shows the applied-for mark used in connection with the goods in Class 9 and would be perceived as a trademark identifying the source of those goods.
Finally, the Board noted that, again according to Section 904.03(e) of the TMEP, "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."
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TTABlog comment: AWL set, in my VIEW.
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 2/14/2018
3 comments
3 Comments:
That's awesome software that is an acceptable specimen for software . and it might be a photograph or printout of a display screen projecting the identifying trademark for a computer program.. THanks for the source. And it can be used to the applicants in log in and search screens.
Rather than go all the way through an appeal, would it not have been better practice to work with your client to provide a better specimen?
This was filed as a regular TEAS application under 1(b). They had three tries to get it right, but each specimen was clearly "weak" for Class 9. I always wonder about the back story when an appeal may have been avoided in the first place.
I design software, and I have never seen a label or a caption show *outside* boundaries of a window (especially on Microsoft Windows platform, the shown specimen is obviously using that platform.) I don't even think there is anyway to control pixels outside the boundaries of a window within which a program runs (at least not in Windows platform unless if you do some extensive pointless tricks... pointless because why would one need to do all that to just show name or trademark on an app?) The presented specimen looks highly suspicious and photoshopped. And I agree with the other commenter - is this the best they could show as a specimen for a TRADEMARK which is supposed to clearly indicate the source of goods? If I were using the product, I wouldn't even have noticed it. It is general practice to have a trademark or a logo clearly shown within boundaries of an application window - most times on main window of the application. Or in many cases have it on "About" section accessible from "Help" top menu. I disagree with TTAB's decision in this case.
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