Fuji Photo Film Co., Ltd.

Trademark Trial and Appeal Board

Dec 19, 2006

No. 75580709 (T.T.A.B. Dec. 19, 2006)

Oral Hearing: September 12, 2006 Mailed: December 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fuji Photo Film Co., Ltd.
________

Serial No. 75580709
_______

David H. Deits of Davis Wright Tremaine LLP for Fuji Photo
Film Co., Ltd.

Michael W. Baird, Senior Trademark Examining Attorney, Law
Office 116 (M. L. Hershkowitz, Managing Attorney).1
_______

Before Hohein, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Fuji Photo Film Co., Ltd., a Japanese corporation,
filed an application to register on the Principal Register
the mark DPOF in standard character form for, as amended,
the following goods:2

1 The application at issue herein was examined by a series of
examining attorneys, and ultimately was assigned to the examining
attorney whose name is shown above.

2 Application Serial No. 75580709 was filed on October 29, 1998,
based upon applicant’s assertion of a bona fide intention to use
the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b), and upon applicant’s assertion of a bona fide
intention to use the mark in commerce with a claim of priority
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 75580709
2
digital cameras, printers for recording digital
images on unexposed photographic paper and other
recording paper; photofinishing apparatus and
instruments, namely, photofinishing machines for
developing, fixing, washing, drying, printing and
selectively enlarging photographic images;
computer software for creating, scanning,
displaying, analyzing, editing, processing,
recording, transmitting and printing digital
images for use in the field of photofinishing and
video image processing; video cameras; video
image processing apparatus, namely, multi-
function video image processing machines for
creating, scanning, displaying, analyzing,
editing, processing, recording and transmitting
and printing digital video images,

in International Class 9.
The original examining attorney issued a refusal to
register based on mere descriptiveness under Trademark Act
Section 2(e)(1), 15 U.S.C.§ 1052(e)(1). In response
thereto applicant, inter alia, proposed to amend the
involved application to seek registration on the
Supplemental Register. The original examining attorney
deferred consideration of applicant’s amendment until
applicant submitted a certified copy of its Japanese
Registration No. 4340869. Upon receipt thereof, a
succeeding examining attorney considered applicant’s
amendment to the Supplemental Register and issued a refusal

under Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d).
Applicant subsequently deleted Section 1(b) as a basis for
registration and relied upon ownership of its resulting Japanese
Registration No. 4340869 under Section 44(e) of the Trademark
Act, 15 U.S.C. §1126(e), as its sole basis for application.

Ser No. 75580709
3
to register under Trademark Act Section 23, 15 U.S.C. §1091
based upon genericness. These refusals subsequently were
withdrawn by the present examining attorney prior to this
appeal.
The present examining attorney has refused
registration on the ground that the mark is incapable of
functioning as a trademark within the meaning of Sections
1, 2, 23 and 45 of the Trademark Act, 15 U.S.C. §§1051,
1052, 1091 and 1127. When the refusal was made final,
applicant appealed. Applicant and the examining attorney
have filed briefs, and applicant has filed a reply brief.
At applicant’s request, an oral hearing was held on
September 12, 2006.
Applicant asserts that it, along with its business
partners Eastman Kodak Co., Canon, Inc. and Matsushita
Electric Industrial Co., Ltd., developed a proprietary
technical specification “which relates to a wide variety of
digital imaging products such as digital cameras and
printers and photo finishing services related to images
produced or reproduced by such products” (brief p. 6); that
the specification utilizes technology developed by
applicant and its partners and licensed from others, which
is the subject of patent, copyright, trade secret and other
protections; that the DPOF mark identifies both the above
Ser No. 75580709
4
technical specification and the goods of applicant and its
licensees which are compliant with that standard; and that
its DPOF mark is similar to other registered marks that
identify both a proprietary standard and a feature of
conforming goods. Applicant explains that it and its
partners grant non-exclusive licenses “to parties who
provide products which conform to the Specification in
accordance with the terms of the ‘DPOF Specification
Agreement’” (brief p. 9) allowing such parties to
“manufacture, have manufactured, and sell products” (id.)
that comply therewith; that such parties may use the DPOF
mark in association with licensed products to signify to
purchasers and potential purchasers that the products
conform to the DPOF specification; that over 140 companies
have entered into DPOF Specification Agreements; that
“while there is widespread use of the term ‘DPOF’ in
association with products and services conforming to the
Specification, such use reflects licensed use of the
trademark and does not reflect use of the mark in
association with any specification other than the
proprietary Specification described above” (id.); and that
while applicant does not control all qualities of the goods
bearing the DPOF mark, it does control the relevant quality
associated with the DPOF designation. Applicant argues
Ser No. 75580709
5
that the examining attorney takes the position that DPOF
solely denotes products fully complying with a certain
specification; that, however, the examining attorney fails
to state “why such a function would not be considered a
trademark function since it ‘relates to the nature and
quality of the goods with which it might be used’” (brief
p. 12); that even if such a function is not trademark use,
applicant or its licensees may place the DPOF mark on goods
and thus may perform a trademark function in the future;
and that, as a result, DPOF is capable of performing a
trademark function and is registrable on the Supplemental
Register. Applicant argues in addition that applicant
itself uses the mark as an indicator of origin; and that,
as a result, DPOF cannot be a certification mark.
Applicant further argues that the examining attorney has
failed to point to any authority to support the instant
refusal to register. In support of its position, applicant
has submitted a redacted copy of the written agreement
between applicant and its partners relating to licensed use
of the DPOF mark; a written summary of the specifications
for DPOF branded goods; and printed copies from the
Office’s Trademark Applications and Registrations Retrieval
(TARR) website of applicant’s prior registration for the
mark DPOF as well as registrations for marks owned by third
Ser No. 75580709
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parties. In addition, applicant submitted with the
declaration of Mr. Shoei Imai, the Engineering Manager of
the Intellectual Property Division of applicant, a copy of
an October 26, 1998 press release from applicant’s Internet
web-site describing the introduction of Version 1.00 the
DPOF specification; a copy of a July 17, 2000 press release
from applicant’s web-site describing the introduction of
the revised Version 1.10 of the DPOF specification; a
complete copy of the July 17, 2000 DPOF specification; and
a copy of the DPOF specification agreement granting license
to parties, inter alia, to use the DPOF mark on conforming
goods. The following excerpt is taken from applicant’s
July 17, 2000 DPOF Version 1.10 Specification:
3-1. Definitions of Files and Devices

DPOF File: A file group that may include four
text files; three control files (Auto Print File,
Auto Transfer File and Auto Play file) and a
Unicode Text Description File that describes user
information in Unicode character string.

DPOF Writer: A device that sets Auto Print
information, Auto Transfer information, Auto Play
information and/or Unicode character string
information using a DPOF File.

DPOF Reader: A device which makes print,
transfer and/or auto play based on the Auto Print
information, Auto Transfer information, Auto Play
information and Unicode text. A DPOF Reader that
can edit DPOF File is also a DPOF Writer.

DPOF Printer: A printer or print service that
makes prints based on Auto Print information in
Ser No. 75580709
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Auto Print file. A DPOF Printer is a DPOF Reader
as well.

DPOF compliant device: A DPOF Writer and a DPOF
Reader which supports either of Auto Print, Auto
Transfer or Auto Play including all the mandatory
parameters specified in this specification.
Supported functions shall be specified in a
product brochure, an operational manual etc. so
that a user can recognize them.

In addition, the following excerpt is taken from
applicant’s DPOF Specification Agreement:
Exhibit A

Terms and Conditions for Using the DPOF Trademark

This Exhibit A To the DPOF Specification
Agreement sets forth the terms and condition of
the license (“Trademark License”) of the
trademark “DPOF” and its logo (Shown in “The Logo
Usage” which is recorded in the attached CD)
(collectively “Trademark”) granted to the Company
under Paragraph 2-(3) of the DPOF Specification
Agreement. Those terms and conditions shall be
applied if the Company uses any of the Trademark.

Section 1 – USE

1-1 The use of the Trademark shall be limited
solely to:
i) the use of the Trademark on any
Licensed Product;
ii) the use of the Trademark on packaging
and documentation for the Licensed
Products; and
iii) the use of the Trademark on advertising
and promotional materials relating to
the Licensed Products
The Company shall not use any of the
Trademark for any other use than the above.

Section 2 – GUIDELINES FOR USAGE

Ser No. 75580709
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2-1 The usage of the Trademark shall comply with
the “Guidelines for Using the DPOF
Trademark” (“Guideline”) which is also
attached to the DPOF Specification Agreement
as Exhibit B.

The examining attorney argues that applicant and its
partners developed a digital print order format for direct
printing from digital cameras; that, however, neither
applicant nor its partners “created any specific device or
software in connection with the format” (brief, unnumbered
p. 4); that digital print order format “is simply a
standardization of file organization” (brief, unnumbered
9.5); that the DPOF designation is used by licensees to
indicate compatibility not only with applicant’s products,
but also with all other compatible goods; that the sole
requirement for using DPOF on any product is that the
product conform to the standards established by applicant
and its partners; but that applicant, however, provides
neither guidelines regarding the overall quality of the
products bearing the DPOF initialism nor “any specific
technology, hardware, software, or proprietary algorithms
necessary to the operation of such goods” (brief,
unnumbered p. 7). The examining attorney concedes that
applicant and its partners coined the proposed mark, DPOF;
and that applicant controls use thereof in commerce in the
United States. However, the examining attorney goes on to
Ser No. 75580709
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argue that “Applicant’s use of the proposed mark in
commerce has defined the nature of the proposed mark in
such a way that it has become incapable of either 1)
distinguishing the goods of Applicant from those of others,
or 2) indicating the source of the claimed goods” (id.);
that the designation DPOF is applied to goods over which
applicant has no control, other than verifying compliance
with its specification; that applicant’s own license
agreement states that the purpose of the DPOF designation
“is to indicate goods bearing the term DPOF conform to the
published DPOF specifications” (brief, unnumbered p. 8);
that goods so marked indicate that they are “DPOF
compatible”; that “such usage instantly alerts consumers to
the fact that DPOF does not function as an indicator of
source, but rather is intended to indicate compliant [sic]
with some sort of industry-wide standard” (id.); and that
such widespread use by applicant and its partners informs
consumers that DPOF “is an industry standard, and not an
indicator of source” (brief, unnumbered p. 9).
The examining attorney argues in addition that goods
bearing the DPOF designation “merely embody a particular
protocol for storing, transferring and printing digital
photographs” (id.); that prior to applicant’s use in
commerce, DPOF might have been found to be inherently
Ser No. 75580709
10
distinctive; that, however, applicant’s own use of DPOF, as
well of that of its licensees, “has permanently changed the
nature and meaning of the DPOF acronym” (brief, unnumbered
p. 10); that applicant sought to create an industry
standard for formatting and ordering digital photographs;
that DPOF is such an industry standard; but that “DPOF is
not a trademark, and will never become capable of
functioning as one” (brief, unnumbered p. 11). The
examining attorney further argues that applicant presents
no evidence in support of its claim that the third party
registrations it made of record are used in a manner
similar to the DPOF designation; that the facts leading to
the registrations of such marks are not of record; and
that, as a result, such third party registrations are of
limited probative value.
In support of the refusal, the examining attorney and
his predecessors have submitted articles from the
Lexis/Nexis computer database and Internet web-sites
relating to the use of DPOF by applicant, its partners and
licensees.3 Excerpts from these articles and web pages
follow (emphasis added):

3 We note that evidence made of record by previous examining
attorneys assigned to this case was submitted in support of
refusals to register that subsequently were withdrawn.
Nonetheless, we will consider this evidence for such probative
Ser No. 75580709
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Eastman Kodak Co., Canon Inc., Fuji Photo Film
Co. and Matsushita Electric Industrial Co. Ltd.
last month got together and jointly developed
DPOF, a format for direct printing from digital
cameras…The companies plan to propose DPOF to the
digital camera industry within the next few
months…If adopted, DPOF will let users order
prints of specific pictures from every file on a
digital camera’s storage card, whatever the
card’s configuration… DPOF would then record
information for each of the images a user wanted
to print in a recognizable format…Specification
for DPOF Version 1.0 are [sic] available free to
licensees. The companies hope to make the format
widely available by next spring.
(PC Week, November 9, 1998)

…The second, more economical method is to choose
your pictures while they’re still in the camera.
Most modern digicams offer a feature called DPOF
(digital print order format), a system of
flagging pictures on the camera’s screen. Then,
when you transfer the memory card to the printer,
you’ll get just the shots you requested…
(The New York Times, January 17, 2002)

Digital Print Order Format – or DPOF – allows
cameras to plug directly into a printer for
immediate photo publishing. The standard was
developed in 1999 by Canon Inc., Eastman Kodak
Co., Fuji Photo Film Co. and Matsushita Electric
Industrial Co. It prints multiple images on one
sheet, offers various print sizes and allows
images to be annotated in different languages.
Available in some cameras for nearly two years,
DPOF has only recently been integrated into
printers…Chute sees DPOF as a future technology.
Consumers may one day take their digital photos
to a kiosk at the store and not bother with
setting up the printer or the cost of photo paper
and printer ink. Canon, which launched its first
DPOF bubble jet printer last week, is targeting
consumers who may not be professionals but have

value as it may have in relation to the issue currently on
appeal.

Ser No. 75580709
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an interest in photography. The whole purpose of
DPOF is to allow consumers who aren’t interested
in working with a PC to easily review images,
crop and size them, select the ones they want to
print and be able to push a button to make the
process simple…
(The Orange County Register, October 8, 2001)

If you have a computer with an older operating
system, you can use the software included with
the camera for uploading photos, or a third-party
solution like a PC card adapter or card reader to
transfer images from the camera’s SmartMedia.
The unit also supports Digital Print Order Format
for adding date to photos or tagging them for
printing on a DPOF printer.
(The Boston Globe, August 9, 2001)

Sony’s new printer has built-in intelligence,
allowing digital photo processing with or without
the use of a PC. An enhanced on-screen display
helps consumers navigate and view their images on
a television monitor to select photos for
printing, crop and rotate images, and even
display a slideshow. The Digital Print Order
Format (DPOF) function automatically prints
photos that have been marked for print in-camera
by supporting cameras.
(PC Business Products, January 2001)

…The new version of DPOF offers a variety of new
functions:
• Multiple Image Print-so that multiple pictures
can be printed on the same sheet
• Specific Size Print-so that the user can select
different sizes for their printed images
• Automatic Transfer-so that image files can be
electronically transmitted to selected e-mail
addresses of fax numbers.
• Automatic Play-so that the user can create
“slide shows” of still pictures, audio files,
and movies files that can be displayed using a
digital camera, computer, or electronic display
device.
• Unicode*-so that images can be annotated in
many different languages (Note: this is a 2-
Ser No. 75580709
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byte character code that supports most of the
world’s languages).
(www.canon.com.au/news/story)

The DPOF format was made compact so that it can
be easily implemented in a compact camera. The
minimum requirement for DPOF printers is to make
standard prints and index prints based on the
DPOF information…As [sic] DPOF file does not
specify which printer is to be used. Detailed
specifications such as the size of margins around
pictures and layout of the index print are left
to each printer. To implement DPOF, no specific
hardware is needed, only a change of programming.
But cameras need to have user interfaces that
reflect DPOF functions.
(Electronic Engineering Times, November 2, 1998)

Applicant argues in reply that the technology
underlying the DPOF specification is proprietary; that the
right to use the technology thus may only be secured by
entering into a license agreement therefor; that to the
extent the underlying technology has been widely and
successfully licensed, it has become an industry standard;
but that, however, widespread licensing does not adversely
affect the function of DPOF as a trademark. Applicant
further argues that it, along with its business partners,
established and control use of the proprietary technology
created by them and licensed to others; that applicant
controls the relevant quality of goods bearing the DPOF
mark by requiring that they be compatible with other goods
meeting that specification; that such requirement is
imposed upon all users of the DPOF mark; and that use of
Ser No. 75580709
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the DPOF mark by licensees conveys to consumers that
applicant “controls an aspect of the listed goods and tells
them that the goods have a particular quality, namely that
they utilize the proprietary technology, and that they are
compatible with other products bearing the DPOF mark”
(reply brief, p. 4). Applicant also argues that the
examining attorney provides no support for his requirement
that applicant must control other qualities of the goods
bearing the DPOF mark; that those qualities “relevant to
consumers’ perception relating to the DPOF mark” (id.) are
controlled; and that by indicating that goods so marked
have certain qualities and features, namely, compatibility
with other such products, DPOF performs a trademark
function.
Applicant amended its involved application to seek
registration of the proposed mark DPOF on the Supplemental
Register, based solely upon Section 44(e) of the Trademark
Act. Section 44(e) provides as follows:
A mark duly registered in the country of origin
of the foreign applicant may be registered on the
principal register if eligible, otherwise on the
supplemental register herein provided. Such
applicant shall submit, within such time period
as may be prescribed by the Director, a true
copy, a photocopy, a certification, or a
certified copy of the registration in the country
of origin of the applicant. The application must
state the applicant’s bona fide intention to use
Ser No. 75580709
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the mark in commerce, but use in commerce shall
not be required prior to registration.

By pleading ownership of its Japanese Registration No.
4340869 and asserting a bona fide intent to use the mark in
commerce, applicant perfected its filing basis for the
involved application without the need to allege lawful use
in commerce or use anywhere in the world prior to
registration on the Principal or Supplemental Register.
See Id. See also Trademark Rule 2.47(b). Registration on
the Supplemental Register is provided under Section 23,
which states, in part, as follows:
(c) For the purposes of registration on the
supplemental register, a mark may consist of any
trademark, symbol, label, package, configuration
of goods, name, word, slogan, phrase, surname,
geographical name, numeral, device, any matter
that as a whole is not functional, or any
combination of any of the foregoing, but such
mark must be capable of distinguishing the
applicant’s goods or services.

Thus, we need not determine whether applicant has made use
of the proposed mark, DPOF, in commerce as a trademark on
or in connection with its identified goods. Rather, the
issue before us is whether the proposed mark is capable of
distinguishing applicant's goods under Sections 23(c) and
45 of the Trademark Act, that is, whether DPOF is capable
of functioning as a trademark. See 15 U.S.C. §1091(c),
Ser No. 75580709
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supra, and §1127. See also In re Controls Corp. of
America, 46 USPQ2d 1308, 1309 n. 2 (TTAB 1998).
In the Definitions of Files and Devices in its July
17, 2000 specification, excerpted above, applicant defines
the following devices under the DPOF designation: DPOF
Writer; DPOF Reader; and DPOF Printer. As defined, these
devices perform various functions related to the transfer,
display and printing of digital images. Applicant further
defines a DPOF Compliant Device as a DPOF Writer or Reader
that supports the functions of those devices. Finally,
applicant defines a DPOF File as one of several text files
that controls functions in the defined devices and
identifies user information therefor. Thus, in its
literature applicant does not use DPOF merely to designate
a technical specification or protocol for the transfer of
digital images, but rather to identify goods or features
thereof including at least a digital image writer, reader,
printer, and computer program files associated therewith.
Further, applicant’s excerpted Exhibit A to its DPOF
Specification Agreement sets forth terms and conditions for
use of the DPOF trademark, which manifests at least its
intention that DPOF function as a mark and not merely as a
technical specification. In addition, the above-excerpted
Nexis and Internet evidence made of record by previous
Ser No. 75580709
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examining attorneys suggests that DPOF is recognized by
consumers as denoting at least a function or feature of
goods, namely, that goods so denoted use digital print
order format for transferring and printing digital images.
Such evidence further suggests that these goods include
computer software, digital cameras and photo printers,
which goods are included among those identified in the
application at issue. In short, the evidence in this case
supports a finding that DPOF is capable of distinguishing
goods utilizing digital print order format from goods that
do not. As such, we cannot find on the record in this case
that DPOF is incapable of functioning as a trademark. We
note that the evidence of record indicates that DPOF serves
both as an initialism for a method of transferring digital
images known as “digital print order format” and also as a
mark used to identify goods conforming with that standard.
Nonetheless, the examining attorney has cited to no
authority to support a finding that a term used to denote
such a method is incapable of distinguishing applicant’s
goods from those of others.
We further find unpersuasive the examining attorney’s
argument that DPOF is actually a certification mark as
opposed to a trademark. In that regard, we note that
Section 4 of the Trademark Act provides for the
Ser No. 75580709
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registration of "certification marks, including indications
of regional origin." 15 U.S.C. §1054. See also Trademark
Rule 2.45. Certification marks differ from trademarks or
service marks in that a certification mark is not used by
its owner and, in addition, does not indicate commercial
source or distinguish the goods or services of one person
from those of another person. See TBMP §1306.01. In this
case, and as noted above, DPOF is used by applicant as well
as its licensees. Use of a mark by its owner is
antithetical to its capacity to function as a certification
mark. In addition, we have determined above that DPOF is
capable of distinguishing the goods of applicant from those
of others. As such, the record in this case does not
support a finding that DPOF is a certification mark.
We also find unpersuasive the examining attorney’s
argument that DPOF fails to function as a mark because the
designation is used to identify not only applicant’s goods
but also goods that conform with the digital print order
format standard that are produced by third parties.
Applicant has argued and submitted supporting evidence that
use of DPOF is available only to applicant and its
licensees. It is settled that ownership rights in a
trademark or service mark may be acquired and maintained
through the use of the mark by licensees even when the only
Ser No. 75580709
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use of the mark has been made, and is being made, by those
licensees. See Turner v. HMH Publishing Co., Inc., 380
F.2d 224, 154 USPQ 330, 334 (5th Cir. 1967), cert. denied,
389 U.S. 1006, 156 USPQ 720 (1967); and Central Fidelity
Banks, Inc. v. First Bankers Corp. of Florida, 225 USPQ
438, 440 (TTAB 1984). Thus, to the extent that applicant
may use DPOF to denote its goods as well as those produced
by third party licensees, such use does not preclude a
finding that the proposed mark is capable of functioning as
a trademark.
Decision: The refusal to register is reversed.