Wednesday, December 18, 2019

TTAB Affirms Refusal of USER FIRST for Software Tools: Specimen Doesn't Show Use of Mark

The Board affirmed a refusal to register the mark USER FIRST for "Computer software, namely, software development tools for the creation of mobile internet applications and client interfaces," agreeing with Examining Attorney Jacob Vigil that applicant's specimen of use failed to show the mark in use with the identified goods. In re User First, Serial No. 87231226 (December 9, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant claimed that its specimen of use (shown above) was "the first page of a 103 page pdf instruction manual for the User First platform." The Board acknowledged that an instruction manual may be an appropriate specimen of use under Rule 2.56(b)(1).

The examining attorney, however, refused to accept the specimen because "the cover page is not clearly an instruction manual for downloadable software." He contended that the text on the page creates ambiguity as to the nature of the specimen. "[T]he specimen appears to be training materials for a class or training program and not an instruction manual provided with the goods such that it functions as a part of the goods." The Board agreed with the examining attorney.

We are not persuaded by Applicant’s contention that use of the wording “Certification Training Lab,” as opposed to “instruction manual” or “user manual,” does not substantially change the specimen’s purpose as a manual for the goods. While we accept that an instruction manual may be called different things, it is doubtful that materials associated with the terminology “Certification Training Lab” would be recognized by consumers as manuals containing instructions on how to create mobile internet applications or client interfaces using software development tools such as provided by Applicant. Moreover, the record is devoid of evidence showing that Applicant’s cover page specimen is from a manual provided contemporaneously with, and that functions as part of, the identified software goods.

Concluding that the specimen of use is "unlikely to be recognized as a cover to an instruction manual" for the identified goods, the Board deemed the specimen inadequate and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: During prosecution, applicant submitted two other specimens, but both were rejected. What can you say?

Text Copyright John L. Welch 2019.


At 10:37 AM, Anonymous Anonymous said...

If that specimen really is the first page of an "instruction manual," this could have been avoided by providing sufficient context to support that claim (such as the table of contents page and the first few pages of the manual showing that it clearly is an instruction manual for computer software). My guess is that it is not, though, and that this applicant is not actually using this mark for software (a look at this applicant's website says such things as "Webalo's patented technology enables companies to become User First™ organizations ...," which makes me think this applicant is trying to register a general marketing term and just filed an application for software since the applicant's business is related to software).

At 11:07 PM, Anonymous Arizona Trademark Attorney said...

This is one of those cases where I wonder why the applicant chose to appeal the refusal than just provide a better specimen. Which always makes we wonder if another specimen was available. Which always makes me wonder how legitimate the submitted specimen was....


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