TTAB Reverses Another Specimen Refusal: On Fourth Try, Webpage Specimen Suffices for CAPSIMOPS for Downloadable Software

The Board reversed a refusal to register the mark CAPSIMOPS for "Downloadable computer software for application and database integration in the educational field," finding that Applicant Capsim's fourth specimen of use displayed the mark with a description of the goods at a point of purchase where the consumer is given sufficient information and the means to consummate a purchase. In re Capsim Management Simulations, Inc., Serial No. 88410843 (October 19, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Webpages displaying goods and their trademark, and providing for on-line ordering, constitute electronic displays associated with the goods, and are acceptable specimens of trademark use. TMEP Section 904.03(i) sets forth three criteria that must be satisfied; the webpage must (1) contain a picture or textual description of the identified goods; (2) show the mark in association with the goods; and (3) provide a means for ordering the identified goods.

Applicant's first set of specimens comprised webpages displaying the mark and describing the software, but did not provide a way to download the software. In short, the webpages merely advertised the goods. The second set of webpages offered pricing information, but did not allow downloading of the software. They were not actual screen shots of the software when being utilized. Screen shots displaying the mark may be accepted as trademark specimens of use. The third specimen likewise failed to provide for downloading of the software.

On its fourth try, Applicant hit paydirt. The specimens comprised pages from applicant's website describing the sottware, stating its price, and offering a "shopping cart" for purchasing it. Most pertinent was a webpage stating that upon payment, a user may download the software and a related manual.

The Examining Attorney raised a new objection: that the description of the software did not exactly match the identification of goods. The webpages describe software used in connection with educational software for business simulation, not "application and date integration." The Board noted that this objection could have been made earlier, but in any case it rejected the Examining Attorney's argument. The specimens were accepted for applicant's SAAS services that have the same description. Moreover, "the application and data integration are marketed to the relevant consumers: instructors and students, and are the very purpose for purchasing its goods."

Finding the the fourth set of specimens satisfied all three elements of the TMEP test, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems like the Office's acceptance of the specimens for the class 42 services dictated the result.

Text Copyright John L. Welch 2022.