GeeGuides, LLC

Trademark Trial and Appeal Board

Apr 13, 2009

No. 78541332 (T.T.A.B. Apr. 13, 2009)

Mailed: April 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GeeGuides, LLC
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Serial No. 78541332
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Janal M. Kalis of Schwegman, Lundberg, Woessner & Kluth for
GeeGuides, LLC

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Karen M. Strzyz, Managing Attorney).
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Before Seeherman, Hairston, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On January 3, 2005, GeeGuides, LLC (applicant) applied
to register the mark TICKLES (in standard characters) on
the Principal Register for goods ultimately identified as
“computer software that consists of an animated penguin
used to navigate through computer screens” in International
Class 9.1 The application (Serial No. 78541332) was based

1 The original identification of goods read “animated penguin
used to navigate through screens.” In an examiner’s amendment
(dated August 3, 2005), the examining attorney indicates that
counsel for applicant authorized him to amend the identification
THIS OPINION IS
NOT A
PRECEDENT OF
THE TTAB
Serial No. 78541332

2
on applicant’s assertion of a bona fide intention to use
the mark in commerce. Applicant’s mark was published for
opposition and a Notice of Allowance was issued on December
20, 2005. After being granted several extension requests,
applicant filed a Statement of Use alleging that it had
used the mark on the goods anywhere and in commerce at
least as early as January 1, 2006. The Statement of Use
(SOU) included a specimen, described as a brochure, with
the mark appearing directly below a stylized Penguin.
The examining attorney then refused to register
applicant’s mark because the “the specimen is unacceptable
for computer software,” noting that “brochures...do not
constitute acceptable specimens for use on goods.” Office
Action dated July 2, 2007.
In response, applicant submitted a substitute specimen
described as, “show[ing] an animated penguin, referred to
[as] TICKLES, used to navigate through computer screens.”
Response dated December 31, 2006.
The examining attorney then issued a final refusal
finding the substitute specimens unacceptable because “the
proposed mark, as used on the substitute specimen

of goods to its present state. We note, however, that the
present identification of goods is not ideal because the purpose
and field of use of the software remains unclear. Nonetheless,
our decision is not affected as a result.

Serial No. 78541332

3
identifies a particular character; it does not function as
a trademark to identify or distinguish applicant’s goods
and to indicate their source.” Office Action dated January
22, 2008.
Applicant appealed. Both applicant and the examining
attorney filed briefs.
Examining Attorney’s Objection
The Examining Attorney has objected to the portion of
applicant's brief (on page 2) wherein applicant references
website addresses that, according to applicant, demonstrate
applicant’s use of the mark TICKLES in connection with an
animated character and how the mark is associated with
applicant’s software.
The record on appeal is limited to materials properly
made of record either by applicant or the examining
attorney prior to appeal. 37 C.F.R. § 2.142(d).
Moreover, the mere provision of a website address in an
attempt to make the content of the associated site of
record is improper as it does not afford any of the
certainty or permanence required to establish a record. In
re Planalytics Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
If applicant sought to rely on content from those websites,
it should have printed out the relevant content and
submitted it for the record prior to appeal with
Serial No. 78541332

4
appropriate information as to the source. Accordingly,
both because of the untimeliness and the improper form of
the submission, we have not reviewed the websites, and any
content which may be associated with the website addresses
to which applicant refers in its brief has not been
considered.
Failure to Function as a Trademark
Fictitious or fanciful characters may function to
identify and distinguish the source of goods or services.
See, e.g., In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ
394 (CCPA 1982) and In re Red Robin Enterprises, Inc., 222
USPQ 911 (TTAB 1984). Nevertheless, in order to be
registrable, the use of such a character, however arbitrary
it may be in its conception, must be perceived by the
purchasing public not just as a character but also as a
mark which identifies and distinguishes the source of the
goods or services. Where the usage of a character in the
specimens of record fails to impart any commercial
impression as a trademark or service mark, it is not
registrable as such. See In re Burger King Corp., 183 USPQ
698, 700 (TTAB 1974).
Applicant argues that “a penguin named TICKLES” is a
“manifestation of computer software used to navigate
through computer screens, for interactive instruction
Serial No. 78541332

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software.” Brief, (unnumbered) p. 2. “The specimen
submitted shows the Penguin, marked TICKLES, in conjunction
with a description of the art instruction software.” Id.
And, referring to one of the websites (for which no
printouts have been submitted), applicant concludes that
the website “shows how the penguin, marked TICKLES, is used
to navigate a user through art instruction software.” Id.
Here, the only relevant evidence of record regarding
applicant’s use of its proposed mark consists of the
original and substitute specimens of use submitted by
applicant. In the original specimen, submitted with the
SOU, TICKLES appears at the bottom of a circle below “Your
Art Guide” and the fanciful penguin character. On the same
page, there are two other “art guides,” also depicted as
fanciful animal characters, named “Ruby” and “Furnace.” At
the bottom of the page appears the phrase, “Animated,
Interactive, Web-based Art Instruction.” The second page
of the specimen contains TICKLES being used in the same
manner, i.e., as the name of a penguin character, and
references web-based art instruction services. There is no
mention of applicant’s computer software and, more
importantly, there is no link between the proposed mark and
any such software.
Serial No. 78541332

6
Applicant’s substitute specimens are not significantly
different from the original specimens. Again, the proposed
mark TICKLES only appears alongside a fanciful penguin
figure on what appears to be a brochure advertising art
instruction and/or educational services. Applicant’s
software is not mentioned; thus, there can be no
association of the proposed mark with such goods.
The aforementioned specimens show that the commercial
impression created by applicant's use of TICKLES is clearly
and simply that of a fanciful penguin character which
appears in brochures or other materials. Such use, in and
of itself, is not sufficient to create a direct association
among purchasers and prospective customers with applicant's
computer software. Thus, on this record, we find that
applicant’s use of TICKLES is not being used in such a
manner that it is likely to be perceived as a trademark for
the identified goods.
Decision: The refusal to register is affirmed.