Thursday, March 09, 2006

Distinguishing Dell, TTAB Finds Webpage Specimen Unacceptable for DVR

Ruling that Applicant's webpage specimen did not show actual trademark use, the Board affirmed a refusal to register the mark SHOW NAV for "digital video recorder featuring viewer selection option of recorded program segments." In re TeleVentions, LLC, Serial No. 78309794 (February 14, 2006) [not citable].

SHOW NAV specimen of use
Click on picture for larger image

Applicant TeleVentions contended that In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) is "directly applicable," and that its specimen (shown above) constitutes a display associated with the goods. [At the bottom of the SHOW NAV specimen, the following statement appears under the heading "Total Control": Show Nav: Power jump forward and back to show segments to get right to the parts you want to see."]

Examining Attorney Michael P. Keating argued that Dell is distinguishable on its facts and that "the proposed mark describes a feature of the REPLAY TV product rather than functioning as a trademark for the identified goods." He pointed out that the term SHOW NAV is "buried in the text describing the features of the REPLAY TV product," that the specimen does not include a photograph of the goods, and the website does not allow one to purchase the SHOW NAV feature, but only the DVRs themselves.

The Board agreed that Dell is directly applicable but factually distinguishable. [The Dell specimen is shown immediately below.] There, the applicant sought to register the mark QUIETCASE for "computer hardware; internal cases for computer hardware being parts of computer work stations." The specimen webpage described and offered a particular computer workstation, and referred to the QUIETCASE internal case. According to the Board, Dell "established that a website page such as applicant submitted herein may constitute a display associated with the goods." The Examining Attorney did not argue otherwise, but rather maintained that SHOW NAV "will not be perceived as a trademark for the identified goods."

Dell QUIETCASE specimen
Click on picture for larger image

Recognizing that TeleVentions' specimen is "very similar" to the Dell specimen, the Board pointed out that here "the problem arises not from the lack of a picture of the product or from the size or location of the term SHOW NAV on the specimen. Instead ... SHOW NAV identifies a navigational feature of the product rather than functioning as a mark identifying the digital video recorders recited in the application."

The Board therefore affirmed the refusal under Sections 1, 2, and 45 of the Trademark Act.

TTABlog comment: I agree that SHOW NAV does not function as a trademark, but I disagree that the size and location of the term on the specimen is not a "problem." I have the same problem with the Dell decision. As I stated in a prior posting (here), I don't think the Dell webpage is a proper specimen of use. The phrase "QuietCase(TM) acoustic environment" is buried in one of several bullet points on the webpage and hardly leaps off the page and grabs the reader. [And what is an "acoustic environment," anyway?] I have no problem with a website page being a proper trademark specimens for goods, provided the mark in question is displayed like and has the impact of a trademark. QUIETCASE does not. Nor does SHOW NAV.

Text Copyright John L. Welch 2006.


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