87951287 (T.T.A.B. Sep. 26, 2019)

Information Builders Inc.

Trademark Trial and Appeal BoardSep 26, 2019

87951287 (T.T.A.B. Sep. 26, 2019)

Mailed: September 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ——— In re Information Builders Inc. ——— Serial No. 87951287 ——— Howard F. Mandelbaum, Mandelbaum Silfin Economou LLP Alyssa Paladino Steel, Trademark Examining Attorney, Law Office 124, Lydia Belzer, Managing Attorney. ——— Before Mermelstein, Lynch, and Larkin, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Alleging use of its mark in commerce, Applicant seeks registration on the Princi- pal Register of the mark FOCUS for use on a variety of computer software. The Ex- amining Attorney finally refused registration on the ground that Applicant failed to provide evidence of use of the mark in commerce, citing Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv), 2.56(a), 2.63(b), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a), 2.63(b). Specifically, the Examining Attorney al- leges that the drawing is not a “substantially exact representation of the mark” as used on the specimen of record. We affirm. This Opinion is Not a Precedent of the TTAB Serial No. 87951287 - 2 - I. Applicable Law An applicant for registration under Trademark Act § 1(a) must provide a speci- men, “showing the mark as used on or in connection with the goods,” Trademark Rule 2.56(a), and a drawing of the mark to be registered, which must be a “substantially exact representation of the mark as used on or in connection with the goods,” Trade- mark Rule 2.51(a). While “it is up to the applicant to choose what it seeks to register,” what it “seeks to register must not only be in use, it must make a distinct commercial impression as used.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008). “That is, the mark as actually used must not be so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer.” Id. (citing In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988)). Applicant and the Examining Attorney cite various cases in support of their posi- tions. We have carefully considered the cited cases, but except to the extent they state the broad principles relevant to this issue, we do not find them especially useful in deciding the question before us.1 Our decision depends on the particular mark and specimen at issue in this case, which are considerably different from those in the cited cases. “It all boils down to a judgment as to whether that designation for which reg- istration is sought comprises a separate and distinct ‘trademark’ in and of itself.” Institut des Appellations d’Origine v. Vintner’s Int’l Co., Inc., 958 F.2d 1574, 22 1 Nor do we see the utility in discussing the difference between “compound” and “composite” terms. Serial No. 87951287 - 3 - USPQ2d 1190, 1197 (Fed. Cir. 1992) (quoting J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:17 (2d ed. 1984)). II. Applicant’s Drawing and Specimen Applicant’s drawing depicts the mark to be registered as the word FOCUS, in standard characters. In the application, Applicant described its specimen as a “screenshot of running software.” The relevant part of the specimen is as follows: As can be seen, the banner of the software screen display depicts the term WebFOCUS. Applicant claims that this depiction demonstrates its use in commerce of the mark FOCUS. A. Discussion The question before us is whether — as it is used on the specimen of record — the mark “sought to be registered creates a separate and distinct commercial impression, which thereby performs the trademark function of identifying the source of the Serial No. 87951287 - 4 - merchandise to the customers.” In re Chem. Dynamics, Inc., 5 USPQ2d 1828, 1829– 30 (Fed. Cir. 1988). The specimen of record depicts the term WebFOCUS, although Applicant seeks to register only the word FOCUS. Applicant emphasizes that the specimen depicts a term comprising the word “Web” (with an initial capital letter) and the word “FOCUS” (in all capital letters). App. Br., 4 TTABVUE 6. According to Applicant, the descriptive term “Web”2 “merely indicates a version of applicants [sic] ‘FOCUS’ software that is adapted for use on the worldwide web.” Id. at 8. Pointing to its three prior registrations of the mark FOCUS,3 Applicant maintains that “ ‘FOCUS’ performs a trademark function in and of itself and is separately registrable.” Id. at 9. The Examining Attorney emphasizes that WebFOCUS appears on the specimen as a single term “without a space between the terms,” “result[ing] in a term from which neither ‘Web’ nor ‘FOCUS’ could be removed.” Ex. Att. Br., 6 TTABVUE 6. According to the Examining Attorney, “[t]he term ‘Web’ [in the specimen] changes the commercial impression of the applied-for mark.” Id. at 8. The Examining Attorney maintains that the difference in capitalization between “Web” and “FOCUS” is insufficient to create a separate commercial impression in “FOCUS.” Id. at 10. We agree with the Examining Attorney that the drawing, depicting the standard- character mark FOCUS, is not a substantially exact representation of the mark as 2 We grant Applicant’s request for judicial notice, App. Br., 4 TTABVUE 8, to the extent that we recognize that the world wide web, often referred to as the “web,” is a part of the internet, and that some software operates over the web. Cf. Fed. R. Evid. 201(b)(1) (judicial notice of facts “generally known”). 3 Reg. No. 2821942, issued March 16, 2004 (renewed); Reg. No. 2606298, issued August 13, 2002 (renewed); and Reg. No. 1652265, issued August 23, 1990 (renewed), all for the mark FOCUS for various computer programs and services. Serial No. 87951287 - 5 - actually used, which is depicted on the specimen as WebFOCUS. Although the word “Web” on the specimen features different capitalization than the word “FOCUS,” the two words are both visually and conceptually joined. While “Web” is apparently descriptive of Applicant’s software, we have no indication that it is generic or otherwise completely lacking in trademark significance with respect to those goods. By contrast, in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), the mark TINEL- LOCK was connected by hyphens to a part number and a generic term, both of which were found not to be part of the applicant’s mark. On Applicant’s specimen, “Web” and “FOCUS” are conceptually joined because as Applicant admits, “Web” modifies “FOCUS” to denote a particular version of Applicant’s software designed to run on the web. The use of the words together creates the commercial impression of software focused on the Web, different than the commercial impression that FOCUS alone might create. Finally, while we agree that Applicant’s registrations suggest that FOCUS is registrable as a mark for Applicant’s software, the question before us is not whether FOCUS is registrable in the abstract, but whether Applicant’s specimens demonstrate that Applicant is using the mark FOCUS to identify the software identified in this application. Although Applicant seeks to register FOCUS, the specimen indicates that Applicant is using the mark WebFOCUS on or in connection with its software. Because the drawing (FOCUS) is not a substantially exact representation of the mark as actually used (WebFOCUS), registration must be refused. Serial No. 87951287 - 6 - III. Conclusion Having considered all of the evidence and argument of record, we conclude that the drawing of Applicant’s mark is not a substantially exact representation of the mark as used on or in connection with the goods. Decision: The refusal to register under Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv), 2.56(a), 2.63(b), is affirmed.