Wednesday, February 14, 2018

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., Serial No. 86430215 (February 12, 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

(Click on photo for larger version)

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.

(Click on photo for larger version)

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.

2 Comments:

At 9:33 PM, Anonymous Robert said...

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.

 
At 12:17 PM, Anonymous Anonymous said...

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.

 

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