Friday, April 27, 2012

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

Applicant Azteca Systems sought to register the mark shown to the right, for "computer software for management of public works and utilities assets." The PTO refused registration on the ground that Azteca's specimen of use did not show the applied-for mark associated with the identified goods. The mark appears in the lower left-hand corner of Applicant's specimen webpage, shown immediately below. [Double-click on the picture for a larger image]. How would you rule? In re Azteca Systems, Inc., 102 USPQ2d 1955 (TTAB 2012) [re-designated precedential June 6, 2012].

The Examining Attorney contended that the textual description of the software clearly refers to the mark CITYWORKS and not the applied-for mark. There is no association of that mark with the description.

Azteca argued that it is not necessary that the mark be "right next to" the description. Some of the text included in the mark also appears in the description of the product, thereby connecting the goods to the mark. Only one product is described on the webpage.

The question, then, was whether the mark appears on the website in a manner that would associate the mark with the goods.

The Board found that the mark "fails to create an association with the goods and fails to serve as an indicator of source of applicant's goods as described on the webpage." The mark is distant from the description of the software and separated by text of marginal relevance (e.g., Applicant's philosophy regarding customers). Moreover, a number of different logos appear on the webpage that do not relate to the software. Links to event and news further distract the reader from the mark.

Just because the webpage contains a description of the software does not mean that the specimen must be accepted. Here, the specimen of use fails to display the mark in a manner that would associate it with the goods.

And so the Board affirmed the refusal.

TTABlog comment: Do you agree with the Board's assessment? Would you appeal?

Text Copyright John L. Welch 2012.


At 11:38 AM, Anonymous Anonymous said...

I disagree. I would appeal.

If this was on the upper left corner it likely would have been approved.

The USPTO is a square peg in a square hole enterprise though. Move the cheese just a little and it is game over.

At 4:50 PM, Anonymous Joshua Jarvis said...

The Board gets it right -- the placement of the mark isn't acceptable for software point-of-purchase -- but for the wrong reasons.

This is a Class 9 software ID, and it's not clear to me that the software is downloadable (the ID certainly doesn't recite as much) or otherwise immediately purchasable from the specimen web page. Where's the download link? Where's the "Add to Cart" button? Where's the phone number to place an order? In my opinion, this is merely advertising even if the mark were in the right place.

At 11:27 AM, Anonymous Anonymous said...

Agree with Joshua on this one. Think his reasoning is spot on with regards to Class 9 software goods that don't appear downloadable.

At 10:13 AM, Anonymous Anonymous said...

The Board is getting it wrong and wronger. This incredible "body" of case law developing about non acceptable specimens is going to drive people back to doing what they did in the era of token use - - make up a phony specimen for purposes of getting the registration. If a term that functions as a trademark is used in connection with the sale of goods so that consumers associate it with the product or service, it should go through. Period. You can be certain that if someone started using the same mark on similar goods and the 1st user filed a lawsuit, a court would not engage in such nonsense. As a matter of fact, they would rebuke the Board like they did 25 years ago in the "Damn I'm Good" decision.


Post a Comment

<< Home