Tuesday, June 20, 2006

Citable No. 32: TTAB Affirms PTO Rejection of Brochure as Specimen of Trademark Use

In its 32nd citable decision of 2006, the Board affirmed a refusal to register the mark ALPHA-DISC & design for blank and pre-recorded optical discs, compact discs, and CD-ROMS, and for computer software for applying copyright protection thereto, on the ground that Applicant Settec's specimen of use (a promotional brochure) was not acceptable. In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006).

Settec provides optical digital media protection to creators of educational and game software, music, film, and video. The technology includes encryption software and a digital signature embedded within the physical layers of the discs. Settec's specimen of use (shown below) comprised a brochure directed to audio CD copy protection.

The subject mark appeared only on the back cover of the specimen brochure, and not on the goods or on packaging for the goods. Applicant Settec contended that the brochure fell within the exception language of Section 45 and Rule 2.56 as a document "associated with the goods or their sale," because it was undesirable to place the mark (its copy protection indicator) on the goods:

"placing the trademark on the final product available to the ultimate end-user consumers defeats the entire purpose of the Applicant's goods, thus rendering such placement inherently 'impracticable.' Such end-user consumers would thereby be armed with an additional piece of the encryption puzzle required to circumvent the copy protection of the relevant media."

The Board, however, distinguished this case from those cited by Settec, which cases involved "natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars." See TMEP Section 904.04.

Because Settec does not sell its finished goods to retail customers, the "content provider is the relevant consumer of the Applicant's goods." In that light, the Board concluded that

"it is not 'impracticable' for applicant to use this mark with its targeted consumers. For example, in dealing with content providers and their manufacturers, applicant could use this mark within its software products, on tangible media products, on packaging for such tangible media products, or on inserts included with software sent to publishers or discs sent to pressing houses, or even in the form of a catalogue."

Or, the Board continued, Settec could display its mark in connection with the downloading of its software or the distribution of CD-ROMS containing same. Or it could display the logo on computer images created by the software, or on its website where licensed users may access the software. Or it could use the mark on inserts accompanying the blank CD-ROMs when shipped, or on shipping labels therefor.

Hence, the Board concluded that it was not impracticable for Settec to use the mark in the traditional and acceptable way -- i.e., on labels, tags, packaging, or displays associated with the goods.

TTABlog comment: For another recent decision in which the TTAB affirmed the PTO's rejection of a specimen of use despite the applicant's claim that it could not put its mark on displays or labels, see the citable Genitope case, TTABlogged here.

Text Copyright John L. Welch 2006.


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