Screen Shot Suffices as Specimen of Use for Downloadable Software, Says TTAB

In an unsurprising decision, the Board reversed a refusal to register the mark PERMWARE for "downloadable software for managing permeation laboratory master data," finding Applicant Mocon's screenshot to be an acceptable specimen of use. In re Mocon, Inc., Serial No. 90673935 (October 13, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

(Click on picture for larger image)

The Examining Attorney maintained that the screen shot was an improper specimen because it did not "mention what the software is used for," nor did it provide a means for ordering the software. Thus, the specimen failed to create an association between the mark and the goods.

Applicant Mocon cited In re Settec [TTABlogged here] and TMEP Section 904.03(e) in arguing that its specimen "is exactly what has long been accepted as a suitable specimen, a screen shot of a computer display screen projecting a page of the software bearing the trademark." The Board agreed.

In Settec, the Board found "[i]t is not uncommon for a software provider to display its product marks or relevant corporate logos on computerized images created by distributed software, or on the website page where licensed users are given authorized access to the software product. In either of these cases, an applicant would simply submit to the Office a screen-print from the appropriate access screen."

TMEP § 904.03(e) explains that "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce."

The Board observed that the Examining Attorney's objection appeared to arise from her misunderstanding of the nature of Mocon's specimen. The specimen is not a webpage excerpt advertising the software. If it were, then it must include sufficient information to allow the user to download or purchase the software. Here, however, the specimen is a "screen shot of a computer display screen projecting an image created by the running of [Applicant's downloadable] PERMWARE software."

And so, the Board reversed the refusal to register.

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TTABlogger comment: I thought PERMWARE would be some kind of beauty parlor software.

Text Copyright John L. Welch 2022.