Bose Corporation

Trademark Trial and Appeal Board

Aug 18, 2006

No. 76515273 (T.T.A.B. Aug. 18, 2006)

Mailed:
August 18, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bose Corporation
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Serial No. 76515273
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Charles Hieken of Fish & Richardson P.C. for Bose
Corporation.

Lesley LaMothe, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On May 19, 2003, Bose Corporation (“applicant”) filed
an intent-to-use application to register the mark
ADAPTISENSE in standard-character form on the Principal
Register for goods now identified as “headphones”1 in
International Class 9. After approval and publication of
the application and issuance of the notice of allowance,
applicant filed its statement of use.

1 At filing applicant identified the goods as “headsets” but
later amended the identification as indicated.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76515273
2
The Examining Attorney found the specimen of use filed
with the statement of use unacceptable and refused
registration under Trademark Act Sections 1 and 45, 15
U.S.C. §§ 1051 and 1127. Ultimately the Examining Attorney
issued a final refusal on the ground that, “the mark in the
drawing does not match the mark referring to the goods in
the specimen.” Applicant then appealed. Both the
applicant and the Examining Attorney have filed briefs.
Applicant did not request an oral hearing.2 For the reasons
indicated below, we reverse.
Section 1 of The Trademark Act requires that an
applicant submit “specimens or facsimiles of the mark as
used in commerce.” 15 U.S.C. § 1051. Trademark Act
Section 45 provides further that a mark is “in use in
commerce … on goods when – (A) 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 …” 15
U.S.C. § 1127. The Trademark Rules likewise specify, in
pertinent part, that, “A trademark specimen is a label, tag
or container for the goods, or a display associated with
the goods.” 37 C.F.R. § 2.56(b)(1).

2 Applicant submitted evidence with its reply brief consisting of
a publication entitled ALL ABOUT TRADEMARKS. We have not
considered this evidence because it was not submitted before the
filing of the appeal in accordance with 37 C.F.R. § 2.142(d).
Ser No. 76515273
3
Catalogs and the electronic equivalent of catalogs may
be acceptable as specimens, provided they qualify as
“displays associated with the goods” under cases, such as,
Lands’ End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314
(E.D. Va. 1992) and In re Dell Inc., 17 USPQ2d 1725 (TTAB
2004).
In this case, applicant filed copies of certain pages
from its Internet website as a specimen; the pages display
(1) a picture of applicant’s headphones, (2) explanatory
text quoted below, which includes the mark, and (3)
functions which enable a visitor to place an electronic
order for the goods. The Examining Attorney ultimately
accepted the specimen as a display associated with the
goods.
However, as we indicated above, the Examining Attorney
issued a final refusal based on the specimen on the ground
that “the mark in the drawing [did] not match the mark
referring to the goods in the specimen.” The Examining
Attorney explained the refusal further in the final
refusal:
The applicant has submitted a page from its website in
which the information displayed identifies the applied
for mark ADAPTISENSE referring to a “technology” used
in the performance of the goods (headsets)… The mark
that is used as a trademark on the goods is AVIATION
HEADSET X rather than ADAPTISENSE.

Ser No. 76515273
4
In her brief, the Examining Attorney explains further,
“The term ADAPTISENSE does not specifically identify the
headphones themselves but is used by the applicant in
association with other statements describing the favorable
features of the headphones.”
As the Examining Attorney notes, we must look to the
specimen in the particular case to determine whether the
use qualifies as trademark use. In re Bose Corp., 546 F.2d
893, 192 USPQ 213 (CCPA 1976). The relevant text from the
specimen, which appears immediately below the photo of the
goods, reads as follows:
Enjoy full-spectrum noise reduction, comfortable fit
and clearer sound when you fly with the Bose® Aviation
Headset X. Thanks to the proprietary TriPort® headset
acoustic structure, this unique combination of
benefits is available in one lightweight headset and
with our AdaptiSense headset technology you can enjoy
the performance of the Aviation Headset X …”

With regard to the Examining Attorney’s statement that
AVIATION HEADSET X is the mark which identifies the goods,
applicant disputes the implied premise by stating, “it is
settled that, ‘There is no doubt that one product can bear
more than one protectable trademark.’ MCCARTHY ON
TRADEMARKS § 7:2 and cases cited.” And with regard to the
Examining Attorney’s statement that the mark refers to “a
’technology’ used in the performance of the goods,”
Ser No. 76515273
5
applicant argues, “The contention that the mark ADAPTISENSE
refers to a technology ignores the ordinary name of the
goods ‘headsets’ immediately following the mark.”
We find applicant’s arguments persuasive. There is no
doubt that more than one mark may be used to identify the
source of the same product. As applicant points out here,
its BOSE mark, as well as the AVIATION HEADSET X mark,
identifies the product in question in the specimen.
Furthermore, we agree that the use of the mark ADPAPTISENSE
here immediately before and as a modifier of “headset” with
the  symbol indicates trademark use of ADAPTISENSE for
“headsets” or “headphones.”
We also reject the Examining Attorney’s implication
that the placement of ADAPTISENSE in this specimen is not
sufficiently close to the photograph of the goods to
associate the mark with the goods. The text where
ADPAPTISENSE appears is immediately below the photo of the
goods, and, as we noted, the name of the goods “headset”
follows immediately after ADAPTISENSE in the text.
We conclude that the totality of the circumstances are
such that the necessary association exists between the mark
and the goods.
The Examining Attorney cites a number of cases in
support of her position, but we find no support in those
Ser No. 76515273
6
cases for her position. See, e.g., In re Volvo Cars of
North America Inc., 46 USPQ2d 1455 (TTAB 1998)(DRIVE SAFELY
perceived as a safety admonition, not a trademark); In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992)(THINK GREEN
perceived as environmental slogan, not a trademark).
The Examining Attorney’s explanations for the refusal
are more consistent with cases which hold that certain
terms are not used as marks, or would not be perceived as
marks, because the term identifies a “process” or, in this
instance, a type of technology. See, e.g., In re Walker
Research, Inc., 228 USPQ 691, 692 (TTAB 1986). Cf. In re
Anchor Holdings LLC, 79 USPQ2d 1218 (TTAB 2006). For
example, in the Walker Research case, the Board held that
the mark SegMentor was not used as a service mark for
market research and related services, but that it merely
identified a computer program used in the rendering of the
services. The use in question was in text in a promotional
piece, as follows: “SegMentor – Integrated Software for
Multi-Attribute Segmentation + Market Simulation.” Walker
Research, 228 USPQ at 692. The Board held that the
SegMentor mark did not identify the market research
service.
While this rationale appears to be the basis, at least
in part, for the Examining Attorney’s rejection of the
Ser No. 76515273
7
specimen here, we do not believe it applies. A designation
may both identify a “process” or “technology” and function
as a mark. In re Lativ Systems, Inc., 223 USPQ 1037, 1038
(TTAB 1984). In this instance, ADAPTISENSE may also
identify the technology employed in the goods. Whether or
not it also identifies the technology, we conclude that
ADAPTISENSE, as used in this specimen, functions as a
trademark for the goods.
In conclusion, after a careful review of the specimen
in this case we conclude that the specimen demonstrates use
of ADAPTISENSE as a trademark for headphones.
Decision: The refusal to register the mark for
failure to provide a proper specimen of use is reversed.