Wednesday, April 19, 2006

Citable No. 23: TTAB Affirms "Failure to Function" Refusal of "SPECTRUM" for Dimmable Pushbuttons

In its 23rd citable decision of 2006, the Board affirmed a refusal to register (under Sections 1, 2, and 45) the mark SPECTRUM (in the stylized form shown below) for dimmable illuminated pushbutton switches, because the mark as displayed on Applicant's specimens of use failed to function as a trademark. In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006).

(lined for eight different colors)

The Board pointed out that the "critical inquiry is whether the asserted mark would be perceived as a source indicator. *** To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or [sic] origin for the goods."

Examining Attorney Henry Zak argued that Applicant's mark, as used on its specimens (shown below) performs "only an informational function - to identify favorable features of the switches, rather than a particular source of origin."

(click on photo for larger picture)

Applicant contended that a mark may serve both to convey information and to identify source. Moreover, it asserted that its use of the TM symbol adjacent the mark (on the inner flap of one specimen, shown immediately below) was "dispositive of the question."

The Board agreed with the Examining Attorney, finding that "the manner in which the applied for mark is used on the specimens of use is not indicative of trademark use."

"[T]he applied-for mark merely informs the potential purchaser of an aspect of the goods, namely, the multiple color feature. The coloring and font are not sufficient to imbue this term, as used, with source-identifying significance or to set it apart from the other informational wording. *** Moreover, as noted by the examining attorney, the colors in the mark merely manifest and emphasize the information the word conveys." (slip op., pp. 7-8).

Furthermore, the use of the TM symbol on the inner flap location of one specimen "does not change the commercial impression of the applied-for mark." Even if the applied-for mark "may be registrable if it were used in a different context," as used here it "would not be perceived as a trademark, and the addition of the trademark symbol is not sufficient to transform the non-trademark use into trademark use." As the Board pointed out, "[e]ven an inherently distinctive designation is not a trademark if not used in a trademark manner."

(click on photo for larger picture)

The Board therefore affirmed the refusal to register.

TTABlog note: For a similar ruling involving a webpage specimen, see the Board's uncitable decision in In re TeleVentions, LLC, TTABlogged here.

Text Copyright John L. Welch 2006.


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