Brainbow, Inc.

Trademark Trial and Appeal Board

Apr 3, 2008

No. 78223210 (T.T.A.B. Apr. 3, 2008)

Mailed: April 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brainbow, Inc.
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Serial No. 78223210
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David B. Dort of Dort Patent, P.C. for Brainbow, Inc.

James T. Griffin, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
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Before Bucher, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Brainbow, Inc., seeks to register the mark WARP
(in typed form) for goods ultimately identified as follows:1
Computer software for searching, compiling, indexing and
organizing information within individual workstations,
personal computers or computer networks; computer software
for creating indexes of information, indexes of web sites
and indexes of other information resources, in Class 9.

1 The application also originally included services in Class 42 which
class was subsequently divided out of this application.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78223210
2
The application was filed on March 7, 2003 based on
applicant's assertion of a bona fide intention to use the mark in
commerce. Following publication of the mark for opposition and
issuance of a notice of allowance on December 28, 2004,
applicant, on June 21, 2005, filed a statement of use together
with a specimen of use, alleging dates of first use of the mark
and first use in commerce on June 1, 1996.2 In subsequent
filings, applicant submitted three other distinct specimens.
The examining attorney refused registration of the mark on
the ground that the specimen submitted with the statement of use
is unacceptable to show use of the mark in connection with the
identified goods as required by Trademark Rules 2.56 and
2.88(b)(2). Nor did any of the three subsequently submitted
additional specimens, according to the examining attorney, show
use of the mark in connection with the goods. Further, according
to the examining attorney, none of the three additional specimens
was supported by the required verified statement that "the
specimens were in use in commerce prior to the expiration of the
time allowed to the applicant for filing a statement of use" as
required by Trademark Rule 2.59(b).
When the refusal was made final, applicant appealed. Briefs
have been filed.

2 Applicant's previously filed amendment to allege use on December 9,
2003 was later withdrawn on July 21, 2004.
Ser No. 78223210
3
Trademark Rule 2.56(b)(1) provides:
A trademark specimen is a label, tag, or container
for the goods, or a display associated with the
goods. The Office may accept another document
related to the goods or the sale of the goods when
it is not possible to place the mark on the goods or
packaging for the goods.

Trademark Rule 2.88(b)(2), applicable to this application
because applicant filed its specimen with its statement of use,
requires a specimen of the mark as actually used in commerce, and
specifically refers to Rule 2.56 for the requirements for
specimens.
Further, Section 45 of the Trademark Act states that a mark
is deemed to be in use in commerce:
(1) 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, or if the nature of the goods makes such
placement impracticable, then on documents
associated with the goods or their sale, and
(B) the goods are sold or transported in commerce.

The original specimen submitted with the statement of use is
not acceptable. As shown below, it consists merely of a graphic
depiction of the mark and there is nothing in the statement of
use itself or anywhere else in the record to indicate whether or
how this mark is actually used on or in connection with the
goods. Applicant describes the specimen in its statement of use
only as "The word 'warp.'"
Ser No. 78223210
4

The next specimen, as reproduced below, was submitted with
applicant's January 4, 2006 "Revised Amendment to Allege Use."
In this specimen, the mark WARP appears on a web page which, as
described by applicant "shows the Applicant's internet promotions
with the mark in connection with the goods." As the examining
attorney explains, this specimen only shows the mark used on a
web page and running in a web browser. In fact, as used on this
specimen the mark appears to identify a search engine, not a
software program. However, this specimen also shows use of WARP
in the nature of a service mark, and the examining attorney notes
that the specimen was considered acceptable to show use in
connection with applicant's services of providing online software
in Class 42.
Furthermore, applicant did not include the required verified
statement that this first of the three additional specimens was
in use in commerce prior to the expiration of the time allowed
for filing the statement of use.

Ser No. 78223210
5

The third specimen, which was submitted with applicant's
first request for reconsideration, dated January 23, 2007, is
reproduced below. Applicant describes this specimen as a
"screenshot of the software when it is run on a computer by a
consumer of the product." However, we agree with the examining
attorney that this does not appear to identify a software
product. Instead, the specimen clearly shows a website which
appears to be operated by "WARP.com" as it includes "Ads by
Ser No. 78223210
6
Goooooogle," links to "Advertise on this site" and various other
links.

We do find, however, that this specimen was properly
verified inasmuch as applicant has more or less consistently
referred to its "statement of use" as an "amendment to allege
use" and has averred that "The substitute specimen(s) was in use
in commerce prior to the filing of the Amendment to Allege Use."

Ser No. 78223210
7
The fourth and last specimen, shown below, was submitted
with a "revised amendment to allege use" along with applicant's
second request for reconsideration, on May 22, 2007. Applicant
contends that its software has a "stand-alone" component and that
the new specimen consists of "documentation of the on-screen
algorithm" of the stand-alone software.

Ser No. 78223210
8
Applicant states that this documentation is displayed to
consumers of the product, and applicant asserts that this
"specification" is the equivalent of "printed matter included
with the goods." It can be seen that the document consists of a
page of computer code with the typed words "WARP Relevancy
Algorithm" displayed at the top. However, as the examining
attorney points out, this is simply a page of printed matter, and
applicant has provided no evidence that it appears on a screen.
Furthermore, it is unclear how this documentation, i.e., these
printed lines of computer code, would otherwise be seen by
purchasers or users of applicant's software. Merely because a
document includes the mark, does not necessarily mean the
document is an appropriate specimen.
In any event, this specimen is unacceptable because it was
not accompanied by any form of verified statement as required by
Trademark Rule 2.59(b).
In view of the foregoing, we find that the specimens do not
show the applied-for mark in use in commerce as a trademark for
the identified goods.
Decision: The refusal to register is affirmed.