Autometric, Inc.

Trademark Trial and Appeal Board

Jun 16, 1998

No. 74593151 (T.T.A.B. Jun. 16, 1998)

Paper No. 19
ejs
THIS DEPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Autometric, Incorporated
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Serial No. 74/593,151
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Jim Zegeer for Autometric, Incorporated
Dax Alvarez, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney)
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Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Autometric, Incorporated applied to register ORTHOMAX
as a trademark for computer software for terrain mapping.1
The Examining Attorney refused registration on the grounds
that the specimens were unacceptable as evidence of actual
trademark use because they are in the nature of advertising
materials, and required that the applicant submit substitute
specimens. Applicant’s counsel responded by stating that

1 Application Serial No. 74/593,151, filed October 31, 1994,
asserting first use and first use in commerce on June 1, 1993.
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2
“the specimens are in the nature of displays associated with
or documents associated with the goods and, thus, are
matters seen by the public in association with the
goods....” Response filed October 17, 1995. The response
also indicated that substitute specimens were being
procured. However, no further specimens were submitted.
The Examining Attorney made final the requirement for
acceptable specimens, and applicant thereupon filed the
instant appeal.
Both the applicant and Examining Attorney filed briefs;
an oral hearing was not requested.
Section 45 of the Trademark Act, 15 U.S.C. 1127, states
that a mark is deemed to be in use in commerce on goods when
“it is placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes
such placement impracticable, then on documents associated
with the goods or their sale....”
The specimens submitted clearly are not placed on the
goods or their containers or on tags or labels affixed to
the goods. While applicant concedes that the specimens,
which are a single 8½ x 11 sheet of glossy paper, printed on
both sides, may be deemed advertising, applicant has simply
reiterated in its brief that the specimens “are displays
Ser No. 74/593,151
3
associated with the goods or ‘documents associated with the
goods or their sales’....” p. 2.
Applicant has not provided any evidence from which we
can find that the specimens are either displays associated
with the goods or documents associated with the goods or
their sale. It is not sufficient for applicant to simply
recite this assertion; rather, this is a legal conclusion
which we must draw from the specimens and any facts which
applicant has made of record. In this case, however,
applicant has not provided any facts whatsoever about how
the specimens are used in the sale of applicant’s goods.
We would also point out that the provision that
documents associated with the goods or their sale are
considered acceptable as specimens of use only “if the
nature of the goods makes such placement impracticable.”
There seems to be nothing inherent in the nature of computer
software for terrain mapping which would make it
impracticable to, for example, apply a mark to the
containers of the goods, on labels attached to the goods, or
even have the mark appear on the screen when the program is
in use.
Further, a review of the specimens casts doubt on
whether they are associated with the goods at all. The
first sentence of the copy states, “Autometric, Inc.
announces the release of OrthoMAXJ, a high-performance
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4
softcopy terrain mapping and precise geopositioning software
package.” The last paragraph of the material indicates the
computer lines on which “OrthoMAX is available,” and states
that “Transition to other platforms will be announced at a
later date.” The advertisement ends with the statements
“For more information contact: Autometric Incorporated,” and
“OrthoMAX is available from ERDAS as IMAGINEJ OrthoMAXJ.”
These statements suggest that the “specimen” sheet is purely
an advertising document which is announcing a new product
which can be obtained from applicant, rather than material
which appears with the software product in such a manner
that it can be considered a display associated with the
goods.
Decision: The refusal of registration is
affirmed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board