Opinion
Patent Appeal No. 76-581.
December 16, 1976.
Charles Hieken, Hieken Cohen, Waltham, Mass., atty. of record, for appellant.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Fred W. Sherling, Washington, D.C., of counsel.
Appeal from the Patent and Trademark Office Trademark Trial and Appeal Board.
This is an appeal from the decision of the Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board) affirming the refusal to register SYNCOM for loudspeaker systems for high-fidelity music reproduction. We affirm.
Background
Appellant filed an application to register SYNCOM for loudspeaker systems for high-fidelity music reproduction in which the specimens of record, instruction sheets and warranty registration cards attached to the goods, are as reproduced below:
Application serial No. 435,933, filed September 18, 1972.
The examiner refused registration due to a discrepancy between the specimens of record and the goods set forth in the application. As stated by the examiner, the specimens of record show the use of SYNCOM to identify a speaker-testing computer rather than the goods in the application, viz., loudspeaker systems. Relying on 15 U.S.C. § 1052, the examiner urged that the specimens of record fail to demonstrate the use of SYNCOM to indicate the origin of the goods in the application; that instead, SYNCOM demonstrably serves a trademark function, i. e., indicates origin, only with respect to a speaker-testing computer. In a brief opinion, the board essentially adopted the reasoning of the examiner and affirmed his refusal to register.
Section 1052 states in pertinent part:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless * * *.
The board opinion appears in digest form at 191 USPQ 296 (1975).
OPINION
In its main brief and reply brief before us, appellant asserts that neither the board nor the examiner applied any statutory basis in refusing to register SYNCOM. We cannot agree. The examiner specified the statutory basis ( 15 U.S.C. § 1052) in his final action and answer, and the board manifestly agreed with the examiner. Moreover, the rationale stated by the PTO for refusing to register is abundantly clear to us: the specimens of record contradict the use of SYNCOM as a trademark with respect to loudspeaker systems for high-fidelity music reproduction.
The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify. In re Standard Oil Co., 275 F.2d 945, 47 CCPA 829, 125 USPQ 227 (1960). Thus, it is essential for registration that words first become a trademark, i. e., "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." Indeed, the classic function of a trademark is to point out distinctively the origin of the goods to which it is attached.
An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application. In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (Cust. Pat.App. 1975); In re E. Kahn's Sons, 343 F.2d 475, 52 CCPA 1201, 145 USPQ 215 (1965). See also In re Chicago Rawhide Manufacturing Co., 455 F.2d 563, 59 CCPA 963, 173 USPQ 8 (1972); Mont-O-Min Sales Corp. v. Wyeth Inc., 92 F. Supp. 150, 86 USPQ 315 (W.D.Mo. 1950); Textron Inc. v. Alexander Smith Sons Carpet Co., 103 USPQ 151 (Comm'r Pats. 1954).
15 U.S.C. § 1051(a)(3) requires, together with the filing of a trademark application, "such number of specimens or facsimiles of the mark as actually used as may be required by the Commissioner." [Emphasis added.]
Applying these fundamentals of trademark law to the facts before us, it is quite apparent that, in the specimens of record, only INTERAUDIO identifies the loudspeaker systems for high-fidelity music reproduction as originating with appellant and distinguishes such goods from those manufactured and sold by others. The mark SYNCOM merely relates to a speaker-testing computer. Only INTERAUDIO would be used by purchasers in asking for the loudspeaker systems set forth in appellant's application, and the mark SYNCOM neither serves as an indication of origin of such goods, nor serves any other valid trademark function with respect to such goods. SYNCOM is not used as a trademark with respect to such goods.
Finally, appellant relies upon its advertisement (appendix A of the main brief before us) which states, inter alia, that SYNCOM is "your guarantee of quality from BOSE" and "as your assurance of stringent quality control, this mark [SYNCOM] appears on the back panel of every BOSE speaker." Appellant considers the advertisement persuasive evidence in this case. The point is, however, that an application for registration must be judged in light of the specimens of record. Although the examiner in this case invited appellant to submit five new specimens showing application of the mark SYNCOM as described in the advertisement, and supported by an affidavit attesting to their use as of the application filing date, appellant did not comply. The specimens which are of record fail to support, indeed they contradict, the use of SYNCOM as a trademark with respect to loudspeaker systems for high-fidelity music reproduction, and the decision of the board is, accordingly, affirmed.
AFFIRMED.