Gary J. Rogowski

Trademark Trial and Appeal Board

Dec 11, 2012

No. 77083475 (T.T.A.B. Dec. 11, 2012)

Mailed:
December 11, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
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In re Rogowski
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Serial No. 77083475
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Gary J. Rogowski, applicant, appearing pro se.
Janet H. Lee, Trademark Examining Attorney, Law Office 102 (Karen M.
Strzyz, Managing Attorney).
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Before Kuhlke, Wellington and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
On January 16, 2007, Gary J. Rogowski (“applicant”) filed an intent-to-
use application to register the mark ACTIVE REASONER in standard charac-
ter format for “audio recordings featuring music” in International Class 9.
Following issuance of a notice of allowance, on November 5, 2010, applicant
submitted the following specimen, consisting of a photograph or screen shot of
a web page from YouTube, a third-party Internet website, with his statement
of use:
This Opinion is a
Precedent of the TTAB
Serial No. 77083475

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The Trademark Examining Attorney has refused registration under
Trademark Act §§ 1 and 45, on the ground that applicant’s specimen fails to
show the applied-for mark used in direct connection with the identified goods.
See 15 U.S.C. §§ 1051, and 1127; 37 CFR §§ 2.56 and 2.88(b)(2).
For the reasons explained below, we affirm the refusal to register.
A statement of use must include a specimen showing the applied-for
mark in use in commerce for each class of goods and/or services specified in
the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051,
1127; 37 CFR §§ 2.56(a), 2.88(b)(2). See also TMEP §§ 904, 1109.09(b) (Oct.
2012).
In support of the refusal to register, the examining attorney argues that
the specimen does not show the applied-for mark used in connection with ap-
plicant’s identified goods. More specifically, the examining attorney contends
that “the specimen consists of a screen shot of a video performance uploaded
Serial No. 77083475

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on YouTube.” Appeal Brief, unnumbered p. 2. The examining attorney ob-
jects to the specimen on the basis that “a video recording is not necessarily an
audio recording” because “the main purpose of a visual recording is to present
visual content, whereas the main purpose of an audio recording is to provide
audio content.” Id., unnumbered p. 3. The examining attorney also objects on
the ground that the proposed mark as used on the specimen does not identify
any tangible musical recording or downloadable audio recording, either of
which would qualify as an audio recording featuring music in International
Class 9.1 Rather, the examining attorney maintains that the mark as used on
the specimen appears to identify a “non-downloadable musical video perfor-
mance that has been uploaded onto, or is streamed on the YouTube website in
International Classes 038 and 041, respectively.” Id. In addition, the examin-
ing attorney argues that the specimen is unacceptable because it “fails to indi-
cate that the audio recording may be downloadable.” Id.
During ex parte prosecution, applicant argued:
My specimen was found unacceptable, because it was stated my
specimen does not specifically show that my music can be down-
loaded from YouTube. I, and many others have downloaded my
music directly from YouTube. There are many computer pro-
grams available for free, on the internet, which enable the user to
download music and video. I use Real Player. I apologize for as-
suming that everyone who uses computers would be aware of the

1 International Class 9 encompasses musical sound recordings in either downloadable
or tangible form (for example, a compact disc). See USPTO’s Acceptable Identifica-
tion of Goods and Services Manual (“USPTO ID Manual”). Applicant’s identification
of goods is sufficiently broad to encompass musical sound recordings in both tangible
or downloadable formats.
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ease of downloading. Being involved in the music industry has
made me acutely aware of the music download phenomena….

Response to Office Action (March 8, 2011). According to applicant’s own de-
scription of the specimen submitted concurrently with his statement of use:
This is a photograph of my computer screen showing my
YouTube channel for my mark, Active Reasoner. It is at my
YouTube Active Reasoner channel, that my "audio recordings
featuring music," may be accessed, and downloaded.

Statement of Use (November 5, 2010). As further argued by applicant in his
brief, he has “downloaded onto my computer all my songs from YouTube…”
Applicant’s Brief, unnumbered pp. 2-3.
On its face, the specimen includes applicant’s mark used in connection
with an uploaded video of a musical performance that may be streamed and
viewed via the YouTube website. The specimen also displays the following in-
formation:
-The applied-for mark, ACTIVE REASONER, appears in the top
left corner of the screen print. Underneath the proposed mark, it
reads “activereasoner’s Channel.” In close proximity to the left of
the mark is a button labeled “Subscribe.”

-On the right side of the specimen is a link which reads “Edit My
Playlist.”

-Applicant’s proposed mark appears again under the wording
“Back to Playlist” accompanied by the following: “Here are my
songs presented in the order they were released on YouTube.” In
successive order, the title of each song appears in hyperlink for-
mat.

Upon consideration of the above and any other relevant information that
may be gleaned from the specimen, we do not find that the specimen shows
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trademark use for the identified goods. Section 1(d)(1) of the Trademark Act,
15 U.S.C. § 1051(d)(1), requires that the applicant file a “specimen” or facsimi-
le “of the mark as used in commerce.” Trademark Rule 2.56(a), 37 CFR §
2.56(a), amplifies that an applicant filing an intent-to-use application file “one
specimen . . . showing the mark as used in commerce on or in connection with
the goods or services” (emphasis added). Finally, the Trademark Manual of
Examining Procedure (“TMEP”) § 904.07(a) (Oct. 2012) directs the examining
attorney to “review the specimen to determine whether: . . . the specimen
shows use for the specific goods/services identified.” (emphasis added). Fur-
ther, to be considered use in commerce the mark must be “placed in any man-
ner on the goods or their containers or the displays associated therewith... and
the goods are sold or transported in commerce...” 15 U.S.C. § 1127.
The submitted specimen, however, does not show the required corre-
spondence between the mark and the identified goods being offered for sale or
transport in commerce. We acknowledge the advent and certainly the trend of
music being offered in downloadable formats or the equivalent thereof in lieu
of the traditional trade channels for tangible sound recordings, e.g., CDs being
sold via retail or online stores. But we nonetheless find dispositive that appli-
cant’s specimen does not include a “download” or similar link to put the con-
sumer on notice that the identified goods (“audio recordings featuring music”)
are indeed available for download or the equivalent thereof. We view this fail-
ing as being similar to on-line retailing situations in which a webpage speci-
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men fails to show a means for ordering the goods or service. See, e.g., In re
Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not
directly provide a means for ordering applicant’s goods); In re Genitope Corp.,
78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d
1725, 1727 (TTAB 2004) (website specimen for downloadable computer soft-
ware acceptable when it includes method to download, purchase or order the
software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed.
Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages
have a ‘point of sale nature. . . .’”) (citation omitted).
We further acknowledge applicant’s intent and his assertion that viewers
of his uploaded videos on YouTube may use third party software such as Re-
alPlayer to record the audio portions of the videos and ultimately transfer this
music file to an MP3 player or other devices and formats. However, on the
record before us, in the absence of a “download” link or the equivalent thereof,
applicant’s specimen on its face fails to show use of his mark in commerce for
the identified goods.
Decision: The refusal to register is affirmed.