Apple Inc.

Trademark Trial and Appeal Board

Feb 23, 2017

No. 85008432 (T.T.A.B. Feb. 23, 2017)

This Opinion is Not a
Precedent of the TTAB

Hearing: January 12, 2017 Mailed: February 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Apple Inc.
_____

Serial Nos. 85008432 and 859805671
_____

Glenn A. Gundersen of Dechert LLP,
for Apple Inc.
Martha L. Fromm, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Cataldo, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Apple Inc. (“Applicant”) seeks registration on the Principal Register of
IBOOKSTORE (in standard characters), as a mark for the following services, as
amended:
Retail store services featuring electronic publications, for use with
proprietary software, provided via the Internet and other
communications networks; retail store services featuring electronic
publications for use with proprietary software on handheld mobile

1 Because the issues on appeal and the examination records adduced by the Examining
Attorney and Applicant are essentially identical, we have consolidated these appeals for
purposes of our determination herein.
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digital electronic devices and other consumer electronics in
International Class 35;

Providing an Internet website portal featuring technology that allows
Internet users to preview and download electronic publications, for use
with proprietary software, on a wide range of topics of general interest
in International Class 422 and

Providing online, non-downloadable electronic books, magazines,
newspapers, journals, periodicals, plays, and newsletters on a wide
range of topics of general interest in International Class 41;

Providing an online portal featuring temporary online use of online
non-downloadable software to allow internet users to preview and
download electronic publications in International Class 42.3

In both applications, Applicant sought to
(1) amend the mark in the involved applications from IBOOKSTORE to IBOOKS
STORE;
(2) amend the applications to assert a claim of acquired distinctiveness under
Trademark Act Section 2(f) in part as to IBOOKS based upon, inter alia, its
ownership of prior registrations; and
(3) disclaim STORE apart from the mark as shown.

2 Application Serial No. 85008432 was filed on April 7, 2010, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act and a claim of priority under Section 44(d) of the Trademark Act based
upon Trinidad and Tobago Application No. 41873. Applicant subsequently filed an
amendment to allege use and amended its application to seek registration under Section
1(a) of the Trademark Act, claiming a date of first use in commerce since at least as early as
September 30, 2013 as to the Class 35 services and since at least as early as June 10, 2013
as to the Class 42 services.
3 Application Serial No. 85980567, child application of Application Serial No. 85008432, was
filed on April 7, 2010, based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce under Section 1(b) of the Trademark Act and a subsequently deleted
claim of priority under Section 44(d) of the Trademark Act based upon Trinidad and Tobago
Application No. 41873.
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The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark in both applications under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that IBOOKSTORE merely describes a feature or
characteristic of the recited services. Further, in both applications the Examining
Attorney rejected Applicant’s claim of acquired distinctiveness under Section 2(f), 15
U.S.C. § 1052(f), and rejected Applicant’s amendment of its mark from
IBOOKSTORE to IBOOKS STORE on the ground that the amendment is an
impermissible material alteration of the mark.4 The Examining Attorney also
rejected Applicant’s specimen of use in application Serial No. 85008432 under
Trademark Act Sections 1 and 45 on the basis that the mark is displayed therein as
IBOOKS STORE, and does not match the mark as it appears in the drawing.
After the Examining Attorney made the refusals final, Applicant appealed to
this Board. Applicant and the Examining Attorney filed briefs and presented
arguments on the issues under appeal in an oral hearing held before this panel on
January 12, 2017. We reverse the refusals to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant attached copies of portions of its evidentiary record to its appeal briefs
and reply briefs. As Applicant indicated, the evidence attached to Applicant’s briefs
comprises part of the record previously submitted during prosecution of the involved

4 We presume that Applicant and the Examining Attorney are familiar with the prosecution
histories of the involved applications. We further note that the timelines of events in the
prosecution histories of the applications are not in dispute. Accordingly, we see no reason to
discuss them in detail herein.
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applications. Since it is already of record as part of the application files, its re-
submission with Applicant’s briefs was unnecessary. See ITC Entertainment Group
Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998)
(submission of duplicative papers is a waste of time and resources, and is and a
burden upon the Board).
Parties to Board cases occasionally seem to be under the impression that
attaching previously-filed evidence to a brief and citing to the attachments, rather
than to the original submission is a courtesy or a convenience to the Board. It is
neither. When considering a case for final disposition, the entire record is readily
available to the panel. Because we must determine whether such attachments are
properly of record, citation to the attachment requires examination of the
attachment and then an attempt to locate the same evidence in the record
developed during the prosecution of the application, requiring more time and effort
than would have been necessary if citations were directly to the prosecution history.
II. Applicable Law
Amendment of Applicant’s Mark.
We first turn to the Examining Attorney’s refusal of registration on the ground
that the amended drawing constitutes a material alteration of the original drawing.
The Examining Attorney argues that, based upon the evidence of record,

“BOOKSTORE” has an understood meaning, and an excerpt from the
Acronym Finder website which demonstrate that the prefix “I” refers to
services offered online or via the internet. Consumers encountering the
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prefix “I” used with the word “BOOKSTORE” will readily perceive that
the mark refers to an internet based bookstore.5

[C]onsumers will see the wording comprising the proposed amended
mark as a reference to a store selling Applicant’s “IBOOKS”.
“IBOOKSTORE”, on the other hand, references a place rather than a
form of publication and, therefore, connotes something else.6

By representing the “IBOOK” portion of the proposed mark as
“IBOOKS”, in its pluralized form, Applicant clearly delineates
“IBOOKS” as a separate word. The mark in the proposed amendment,
in its entirety, references a “STORE” selling “IBOOKS” which, given
the common meaning of “I” and “BOOKS” would be readily perceived
by the consuming public as internet based books, rather than an
internet based bookstore. Accordingly, the mark in the proposed
amendment has a different meaning than the original mark.7

Lastly, the Examining Attorney notes that the proposed mark
amendment would impact public notice because applicants seeking
registration of “IBOOKS STORE”, or even marks such as “IBOOK” or
“IBOOKS”, for the same or highly related retail services or website
services would not have been aware of the mark in the proposed
amendment, “IBOOKS STORE”, for the identified services at the time
of filing of their own applications. Furthermore, the proposed mark
amendment would require an additional search of Office records for
potentially conflicting earlier filed applications or registrations
encompassing the wording “IBOOK” or “IBOOKS”. While not
determinative, “the question of whether a new search would be
required is a factor to be considered in deciding whether an
amendment would materially alter a mark.” TMEP §807.14.8
Trademark Rule 2.72(a)(2) provides that an applicant may amend the
drawing of the mark if “[t]he proposed amendment does not materially alter
the mark. The Office will determine whether a proposed amendment materially

5 10 TTABVUE 7-8.
6 Id. at 8.
7 Id. at 9.
8 Id. at 10.
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alters a mark by comparing the proposed amendment with the description or
drawing of the mark filed with the original application.”
The general test of whether an alteration is material is whether the
mark would have to be republished after the alteration in order to
fairly present the mark for purposes of opposition. If one mark is
sufficiently different from another mark as to require republication, it
would be tantamount to a new mark appropriate for a new
application.
In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)
(quoting Visa International Service Association v. Life-Code Systems, Inc., 220
USPQ 740, 743-44 (TTAB 1983)).
Applicant’s amended drawing is not a material alteration o f the original
drawing. The amended drawing, IBOOKS STORE, differs from the original
IBOOKSTORE only to the extent that the term “IBOOKS” is pluralized and
presented as a separate word from “STORE.” There is no additional and/or
deleted wording, stylization or design element in the amended drawing that
creates a different mark or evokes a different commercial impression. The crux of
the Examining Attorney’s argument against allowing the amendment is that
IBOOKSTORE connotes an Internet-based bookstore whereas IBOOKS STORE
connotes a store selling Applicant’s Internet-based books. According to the
Examining Attorney, IBOOKS STORE connotes a STORE selling Applicant’s
IBOOKS whereas IBOOKSTORE connotes “a place rather than a form of
publication,”9 in other words, a BOOKSTORE selling books including IBOOKS.
However, the Examining Attorney does not explain how this rather fine

9 Id. at 8.
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distinction creates a significant difference. In addition, the record indicates that
Internet-based bookstores sell both hard copies of books and books in digital or
electronic form.10 Thus, to the extent that Internet-based books include digital or
e-books, these are available from Internet-based bookstores along with hard
copies of books. As a result, even if we accept the distinction drawn by the
Examining Attorney between the original and amended drawing, we find that it
does not create such a meaningful difference in the marks to arise to the level of a
material alteration. Although the Examining Attorney points to subtle differences
in the connotations evoked by the different drawings, the nature of the mark is
not changed by the proposed amendment. The modified mark contains the
essence of the original mark, and the new form of the mark creates the
impression of being essentially the same mark as the mark in the original
drawing.
Finally, the Examining Attorney fails to explain why potential applicants “would
not have been aware of the mark in the proposed amendment”11 for the same or
related services to those recited in the involved applications. As discussed above,
the mark IBOOKS STORE contains the essence of IBOOKSTORE in the original
drawing. The terms IBOOK(S) and STORE comprise the mark in the original and
amended drawing, and it is difficult to see how third party applicants viewing the
mark would not be aware of the presence of the terms IBOOK(S) and STORE in
either drawing. Similarly, the Examining Attorney fails to explain why allowing

10 See, e.g., April 6, 2012 Office action at 16-7.
11 10 TTABVUE 10.
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the amendment of the drawing to IBOOKS STORE would require a new search for
“potentially conflicting earlier filed applications or registrations encompassing the
wording ‘IBOOK’ or ‘IBOOKS’”12 inasmuch as the term “IBOOK(S)” is part of the
mark in both the original and amended drawing.
Based upon the foregoing, we find that the amendment to the drawing is not a
material alteration of the mark. In consequence thereof, Applicant’s amendment
of its drawing is accepted, and IBOOKS STORE is the operative mark in both of
the involved applications.
Mere Descriptiveness and Acquired Distinctiveness.
Applicant, having amended the involved applications to seek registration under
Section 2(f) of the Trademark Act, has conceded that the mark IBOOKS STORE is
merely descriptive under Section 2(e)(1) of the Trademark Act.13 See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005
(Fed. Cir. 1988); The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586
F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). Thus, we need not consider the
arguments and evidence presented by Applicant and the Examining Attorney on the
issue of mere descriptiveness. Rather, we need only determine whether Applicant

12 Id.
13 Applicant did not argue the merits of the Examining Attorney’s refusal to register under
Section 2(e)(1) and, in the alternative, claim that the matter sought to be registered has
acquired distinctiveness under Section 2(f). An alternative claim of acquired distinctiveness
under Section 2(f) does not constitute a concession that the matter sought to be registered is
not inherently distinctive. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB
2011); In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Prof’l Learning
Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986). See also TMEP § 1212.02(c) (Jan. 2017) and
authorities cited therein.
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has carried its burden of establishing by a preponderance of the evidence that the
merely descriptive designation, IBOOKS STORE, has acquired distinctiveness as a
mark indicating source under Section 2(f). See Yamaha, 6 USPQ2d at 1005; In re
Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).
“To establish acquired distinctiveness, applicant must show that the primary
significance of the [mark] in the minds of consumers is not the product but the
producer.” In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284 (TTAB 2000). As
discussed above, Applicant bears the burden of demonstrating that its mark has
acquired distinctiveness. See Yamaha, 6 USPQ2d at 1006; In re Hollywood Brands,
Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that
Congress intended that the burden of proof [under Section 2(f)] should rest upon the
applicant”). “[L]ogically that standard becomes more difficult as the mark’s
descriptiveness increases.” Yamaha, 6 USPQ2d at 1008.
Acquired distinctiveness may be shown by direct or circumstantial evidence.
Direct evidence includes actual testimony, declarations or surveys of consumers as
to their state of mind. Circumstantial evidence is evidence from which consumer
association might be inferred, such as years of use, extensive amounts of sales and
advertising, and any similar evidence showing wide exposure of the mark to
relevant consumers. We determine whether a mark has acquired distinctiveness on
the basis of all competent evidence, including “advertising expenditures, sales
success, length and exclusivity of use, unsolicited media coverage, and consumer
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studies (linking the name to a source).” In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (Fed. Cir. 2005).
There is no fixed rule for the amount of proof necessary to demonstrate acquired
distinctiveness; the evidence required is in proportion to the degree of non-
distinctiveness of the mark at issue. Yamaha, 6 USPQ2d 1001 at 1008. “The greater
the degree of descriptiveness the term has, the heavier the burden to prove it has
attained secondary meaning.” In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d
1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha, 6 USPQ2d 1001 at 1008). Thus,
even long periods of substantially exclusive use may not be sufficient to
demonstrate acquired distinctiveness when the term in question is highly
descriptive.
In support of her position that the applied-for mark is merely descriptive, the
Examining Attorney made of record the following definitions of terms comprising
the mark in relation to the recited services:
Bookstore – “a store that sells books.”14
I – “Internet.”15
The Examining Attorney further made of record copies of pages from third-party
Internet websites in which the terms “iBookstore(s)” and “Internet bookstore(s)” are
used in connection with bookstores that provide printed and electronic books over

14 Encarta.com. Examining Attorney’s June 29, 2010 Office action at 9-10. See also
Examining Attorney’s October 10, 2014 Office action at 6-17.
15 Acronymfinder.com. Id. at 11-13.
Serial No. 85008432 and 85980567
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the Internet.16 The Examining Attorney also made of record copies of third-party
registrations for various “I” formative marks in standard characters for a variety of
computer, media and retail goods and services, registered on the Supplemental
Register.17 These include, for example:
IVIDEOSONGS for “online retail store services featuring audio visual
recordings” (Reg. No. 3584928);

ISHOP for “promoting the goods and services of others by providing a
web site featuring coupons, rebates, price-comparison information,
product reviews, links to the retail web sites of others, and discount
information” (Reg. No. 3738342);

ILYRICS for “computer hardware and software programmable and
downloadable for the display of song lyrics without music” (Reg. No.
4144376); and

IRADIO for “digital media streaming devices, Internet radios, mobile
radios, radio receivers, radios, vehicle radios, wireless broadband
radios” (Reg. No. 4296661).

Based upon the evidence of record, we find that IBOOKS STORE is merely
descriptive, if not highly descriptive, of Applicant’s recited services and, as a result,
Applicant needs a commensurate degree of evidence to show that its mark has
acquired distinctiveness in connection therewith. See Yamaha, 6 USPQ2d at 1008
(“in general, the greater the degree of descriptiveness the term has, the heavier the
burden to prove it has attained secondary meaning.”)
Applicant asserts three separate grounds in support of its claim of acquired
distinctiveness:

16 April 6, 2012 Office action at 7-20.
17 June 27, 2015 Office action at 7-57.
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1. Apple is the owner of registrations of the mark IBOOKS (RN
4,810,756 and RN 2,446,634) and IBOOK (RN 2,470,147);

2. The public recognized IBOOKSTORE and recognizes IBOOKS
STORE as part of Apple’s famous family of “i”-prefix marks;

3. Apple has made substantially exclusive and continuous use in
commerce of the mark IBOOKS STORE and its predecessor
IBOOKSTORE for five years.18

Turning first to Applicant’s prior registrations, Trademark Rule 2.41(a) provides
that ownership of a registration of “the same mark” on the Principal Register may
be accepted as prima facie evidence of acquired distinctiveness. In relying on this
rule, an applicant is essentially seeking to “tack” the use of the registered mark to
its use of the present mark for purposes of transferring distinctiveness to the new
mark. See In re Flex-O-Glass, Inc., 194 USPQ 203, 205-6 (TTAB 1977). Thus, the
analysis used to determine whether Applicant’s present mark is “the same mark” as
its previously registered marks, for purposes of the rule, is the analysis used in
tacking cases, i.e., whether the marks are legal equivalents. See Van Dyne-Crotty,
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991).
See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001).
To meet the legal equivalents test, the marks must be indistinguishable from one
another or create the same, continuing commercial impression such that the
consumer would consider both as the same mark. See Van Dyne-Crotty, Inc. v. Wear-
Guard Corp., 17 USPQ2d at 1868; In re Dial-A-Mattress Operating Corp., 57

18 7 TTABVUE 9.
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USPQ2d at 1812. Aside from the legal equivalency of the marks in the registrations
and the applications, Applicant is also required to establish, through submission of
relevant evidence rather than mere conjecture, a sufficient relationship between the
goods in the prior registrations and the services identified in the applications to
warrant the conclusion that the distinctiveness of the mark associated with the
goods in the registrations will “transfer” to the goods listed in the application. See
In re Rogers, 53 USPQ2d at 1745.
Applicant relies upon two prior registrations, both issued on the Principal
Register without a showing of acquired distinctiveness under Section 2(f) in typed
or standard characters:19
Reg. No. 2446634 for the mark IBOOKS for computer software used to
support and create interactive, user-modifiable electronic books in
International Class 9;20 and

Reg. No. 2470147 for the mark IBOOK for computers, computer
hardware, computer peripherals and users manuals sold therewith in
International Class 9.21

Applicant further relies upon the following registration issued on the Principal
Register with a claim of acquired distinctiveness under Section 2(f) in standard
characters:
Reg. No. 4810756 for the mark IBOOKS for software for reading
electronic publications on digital electronic devices; computer software
for authoring, downloading, receiving, editing, displaying, storing and

19 Applicant’s March 21, 2013 communication at 15-20; Applicant’s December 28, 2015
communication at 8-11.
20 Issued on April 24, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
First renewal.
21 Issued on July 17, 2001. Section 8 affidavit accepted; Section 15 affidavit acknowledged.
First renewal.
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organizing text, graphics, images, and electronic publications in
International Class 9.22

Essentially, it is Applicant’s contention that because the mark IBOOKS in the
claimed Registration Nos. 2446634 and 4810756 is the distinctive and dominant
term in the instant IBOOKS STORE mark, it is the legal equivalent of the prior
IBOOKS registrations and creates the same continuing commercial impression such
that the consumer would consider them the same mark.
In this regard, we note that Applicant’s prior Reg. No. 2446634 for the mark
IBOOKS registered on the Principal Register without a showing of acquired
distinctiveness, is over five years old and thus at present is no longer subject to
attack by way of a cancellation proceeding based upon mere descriptiveness and
instead can only be cancelled if shown to be generic. See 15 U.S.C. §1065. See also
In re American Sail Training Association, 230 USPQ 879, 880 (TTAB 1986). We
further note that Applicant’s Reg. No. 4810756 for the mark IBOOKS registered on
the Principal Register with a showing of acquired distinctiveness under Section 2(f).
Cf. In re Canron, Inc., 219 USPQ 820 (TTAB 1983) (claims of acquired
distinctiveness may not be based upon ownership of registrations on the
Supplemental Register.). We also note that Applicant disclaimed the exclusive right
to use “STORE” apart from the mark as shown. Further, in view of the evidence
made of record by the Examining Attorney, the word “STORE” appears, at best, to
be highly descriptive of the recited services. As a result, we agree with Applicant
that the word IBOOKS in the involved mark, IBOOKS STORE, is the dominant and

22 Issued on September 15, 2015.
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distinguishing portion thereof.
Thus, the involved mark for which Applicant seeks to make a prima facie showing
of acquired distinctiveness consists of the word IBOOKS, previously found in
Applicant’s claimed registrations to be inherently distinctive or to have acquired
distinctiveness, and the highly descriptive word STORE. In light of the foregoing,
we find that on the record of this case the mark IBOOKS STORE creates the same,
continuing commercial impression as the previously registered IBOOKS marks such
that it is the legal equivalent thereof. Therefore, the marks are “the same” for
purposes of Trademark Rule 2.41(a).
We now consider whether the goods in Applicant’s claimed registrations are
“sufficiently similar” to the services in its involved applications. See Trademark
Rule 2.41(a)(1). As noted above, Applicant’s claimed registrations identify the
following goods:
computer software used to support and create interactive, user-
modifiable electronic books; (Reg. No. 2446634);

software for reading electronic publications on digital electronic
devices; computer software for authoring, downloading, receiving,
editing, displaying, storing and organizing text, graphics, images, and
electronic publications (Reg. No. 4810756).

The involved applications recite the following services:
Retail store services featuring electronic publications, for use with
proprietary software, provided via the Internet and other
communications networks; retail store services featuring electronic
publications for use with proprietary software on handheld mobile
digital electronic devices and other consumer electronics in
International Class 35;

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Providing an Internet website portal featuring technology that allows
Internet users to preview and download electronic publications, for use
with proprietary software, on a wide range of topics of general interest
in International Class 42 (Serial No. 85008432); and

Providing online, non-downloadable electronic books, magazines,
newspapers, journals, periodicals, plays, and newsletters on a wide
range of topics of general interest in International Class 41;

Providing an online portal featuring temporary online use of online
non-downloadable software to allow internet users to preview and
download electronic publications in International Class 42 (Serial No.
85980567).

The goods in Applicant’s Reg. No. 2446634, namely, software used to support and
create electronic books, appears to be related to the services in the involved
applications inasmuch as it may be used to purchase, access, preview, and download
the electronic books and other publications that are the subject of the services.
Similarly, the goods in Applicant’s Reg. No. 4810756, namely, software for reading,
downloading, displaying, and storing electronic publications appears to be closely
related to the services in the involved applications inasmuch as it may be used to
download, display, read and store the electronic publications provided by
Applicant’s services. Thus, while there are differences between the goods in
Applicant’s claimed registrations and its involved applications, the goods and
services perform overlapping and otherwise related functions, and any differences
between them are immaterial. See In re Best Prods. Co., 231 USPQ 988, 989 n.6
(TTAB 1986) (“[W]e infer in the instant case that the differences between the marks
BEST & Des. and BEST JEWELRY & Des., and between the identifications of
services in their respective registrations [‘mail order and catalog showroom services’
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and ‘retail jewelry store services’], were deemed to be immaterial differences.”); In
re Owens-Illinois Glass Co., 143 USPQ 431, 432 (TTAB 1964) (“Cut-glass and
plastic articles of tableware are customarily sold in the same retail outlets, and
purchasers of one kind of tableware might well be prospective purchasers of the
other.”); In re Lytle Eng’g & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (applicant’s
ownership of prior registration of LYTLE for various services, including the
planning, preparation, and production of technical publications, acceptable as prima
facie evidence of distinctiveness of identical mark for brochures, catalogs, and
bulletins).
Accordingly, we find that the inherent and acquired distinctiveness of the IBOOKS
mark associated with the goods in Registration Nos. 2446634 and 4810756 will
“transfer” to the related services listed in the involved applications.23 See In re
Rogers, 53 USPQ2d at 1745. We thus find that, based upon its ownership of prior
Registration Nos. 2446634 and 4810756 for the mark IBOOKS, applicant has made
a prima facie showing that its mark IBOOKS STORE has acquired distinctiveness
as used in connection with the recited services sufficient to permit registration
thereof under Section 2(f).

23 As a result, we need not and do not reach the question of whether the goods recited in
Applicant’s Registration No. 2470147 for the mark IBOOK are sufficiently related to the
services in the involved applications such that the distinctiveness of the IBOOK mark
therein would transfer to such services.
Similarly, we need not and do not reach Applicant’s claim of acquired distinctiveness based
upon its ownership of an asserted family of “I” formative marks, or the length and extent of
its asserted use of the IBOOKS STORE mark in commerce. We observe, in any event, that
Applicant did not submit a declaration under Trademark Rule 2.41(a)(2) that its IBOOKS
STORE mark has become distinctive of Applicant’s services by reason of Applicant’s
substantially exclusive and continuous use of the mark in commerce for the five years
before the date on which the claim of distinctiveness is made.
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Specimen of Use.
Finally, the Examining Attorney rejected Applicant’s specimen of use in
Application Serial No. 85008432 under Trademark Act Sections 1 and 45 on the
ground that the specimen does not show the applied-for mark in the drawing.
Specifically, “the specimen displays the mark as ‘IBOOKS STORE’; however, the
drawing displays the mark as ‘IBOOKSTORE.’”
As discussed above, because Applicant’s amendment of the drawing of its mark
from IBOOKSTORE to IBOOKS STORE is not a material alteration of the mark,
the display of Applicant’s mark in its specimen of use as IBOOKS STORE agrees
with the mark as it appears in the drawing. The Examining Attorney does not
argue that the specimens fail to show use of the mark in connection with the
services recited in application Serial No. 85008432, and we find that the specimen
does in fact reference these services. Accordingly, we find that Applicant’s specimen,
submitted with its second amendment to allege use, displays the mark as it appears
in the drawing and references the services recited in the involved application.
Applicant’s specimen submitted with its second amendment to allege use is
displayed below:24

24 Applicant’s July 17, 2014 communication at 14.
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Serial No. 85008432 and 85980567
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Summary.
Based upon the evidence of record, including any evidence not specifically
discussed herein, we find that: Applicant’s amendment of its mark from
IBOOKSTORE to IBOOKS STORE is not a material alteration of the mark under
Trademark Rule 2.72(a)(2) and that, as a result, Applicant’s operative mark in both
applications is IBOOKS STORE; Applicant’s amendment to seek registration on the
Principal Register with a claim of acquired distinctiveness under Trademark Act
Section 2(f) is a concession that the IBOOKS STORE mark is not inherently
distinctive under Trademark Act Section 2(e)(1); Applicant has made a prima facie
showing of acquired distinctiveness under Trademark Act Section 2(f) based upon
its ownership of Registration Nos. 2446634 and 4810756 for the mark IBOOKS; and
Applicant’s specimen of use in application Serial No. 85008432 displays the applied-
for mark and references the recited services under Trademark Act Sections 1 and 45
and therefore, is acceptable.
Decision: The refusals to register Applicant’s mark IBOOKS STORE are
reversed as to both applications.