MediaShare Corp.

Trademark Trial and Appeal Board

Jun 6, 1997

EX (T.T.A.B. Jun. 6, 1997)

THIS OPINION IS
CITABLE AS PRECEDENT OF THE TTAB June 6, 1997
Paper No. 13
GDH/LCB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MediaShare Corporation
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Serial No. 74/634,610
_______
George H. Gates of Merchant, Gould, Smith, Edell, Welter &
Schmidt for applicant.
Chris Doninger, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Sams, Simms and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
MediaShare Corporation has filed an application to
register the mark "PB.WEB" for "computer software for publishing
information on a computer network and instruction manuals
therefor, sold together as a unit".1
Registration has been repeatedly refused2 on the ground
that the "fact sheet" brochures or "catalog pages" submitted as

1 Ser. No. 74/634,610, filed on February 15, 1995, which alleges
dates of first use of August 1, 1994.
2 Although the refusal to register was repeated rather than made
final, this appeal is properly before us inasmuch as Trademark Rule
Ser. No. 74/634,610
2
specimens with the application as filed "are unacceptable as
evidence of actual trademark use because they do not show use of
the mark on the actual goods or labels or tags for the goods" nor
do they constitute displays associated therewith3 as required by
Sections 1(a)(1)(C) and 45 of the Trademark Act, 15 U.S.C. §§1051
(a)(1)(C) and 1127, and Trademark Rule 2.56.4

2.141 provides, in relevant part, that: "A second refusal on the
same grounds may be considered as final by the applicant for purpose
of appeal."
3 While, in the application as originally filed, applicant alleged in
the affixation clause that "[t]he mark is used by applying it
directly to the goods; by printing it on labels affixed to the goods;
by printing it on packaging or displays for the goods, and other ways
customary in the trade," applicant subsequently amended such clause
to state only that "[t]he mark is used by printing it on displays for
the goods".
4 Section 1 of the Trademark Act, 15 U.S.C. §1051, provides in
pertinent part that, in the case of an application based upon use in
commerce, the following requirement must be met (emphasis added):
(a) The owner of a trademark used in commerce may
apply to register his or her trademark under this Act on
the principal register hereby established:
(1) By filing in the Patent and Trademark
Office--
(C) such number of specimens or facsimiles
of the mark as used as may be required by the
Commissioner.
Section 45 of the Trademark Act, 15 U.S.C. §1127, in turn defines
"use in commerce" in relevant part as follows (emphasis added):
For purposes of this Act, a mark shall be 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
Ser. No. 74/634,610
3
Applicant has appealed. Briefs have been filed,5 but
an oral hearing was not requested. We affirm the refusal that
the specimens fail to evidence trademark use.
Applicant asserts that "the specimens originally
submitted with the application are acceptable, since the
specimens comprise catalog pages."6 Referring to Examination
Guide No. 1-94 and TMEP §905.06, which incorporates such guide,
applicant asserts in particular that, as set forth therein, the
Examining Attorney "should accept any catalog or similar specimen
as a display associated with the goods provided that (1) it
includes the picture of the relevant goods, (2) it includes the
mark sufficiently near the picture of the goods to associate the
mark with the goods, and (3) it includes information necessary to
order the goods." Applicant maintains that, contrary to the
Examining Attorney's contentions, each of these conditions has

documents associated with the goods or their
sale ....
In accordance therewith, Trademark Rule 2.56 provides in pertinent
part that:
The specimens shall be duplicates of the labels, tags, or
containers bearing the trademark, or the displays
associated with
the goods and bearing the trademark (or if the nature of
the goods makes use of such specimens impracticable then
on documents associated with the goods or their sale) ....
5 Although the Board approved applicant's request for an extension of
time until July 8, 1996 to file its reply brief, such a brief has not
been received.
6 A copy of one such specimen is reproduced in the Appendix to this
opinion.
Ser. No. 74/634,610
4
been met, including a picture of a display screen its software
generates on a computer monitor.
Specifically, applicant insists in this regard that, as
shown on its "catalog page":
The middle screen display includes a drop-
down menu listing the function "generate HTML
files". This drop-down menu listing
comprises the "control panel" for the PB.WEB
software, which is used as an add-on module
to the PRODUCTBASE software. This drop-down
menu is generated by the PB.WEB software.
The "PB.WEB" mark itself, applicant notes, appears on each of the
specimens "in a prominent position across the top of the page,
with the [three] screen displays located underneath the mark."
"[T]he entire catalog page," applicant further asserts, is
"devoted to a description of the PB.WEB software." Finally,
applicant contends that despite the absence of any information on
pricing, each specimen provides everything necessary to order the
goods:
The catalog page provides a description of
the PB.WEB module, a list of System
Requirements necessary to operate the
software, an identification of MediaShare as
the source of the goods, and address and
telephone information for ordinary purposes.
Apparently, the Examiner believes that the
lack of pricing information is fatal, but
such a result is unsupported by law or common
practice in the industry.
Thus, as in the case of Lands' End Inc. v. Manbeck, 24 USPQ2d
1314 (E.D. Va. 1992), applicant maintains that the specimens
constitute displays associated with the goods and therefore
evidence trademark use of the mark "PB.WEB".
Ser. No. 74/634,610
5
We agree with the Examining Attorney, however, that the
specimens furnished by applicant are merely advertising material
and that such material has not been shown to have been used as a
display in a point-of-sale presentation for applicant's software
and associated instruction manuals.7 As the Examining Attorney
accurately observes in his brief with respect to each of the
three identical specimens submitted by applicant:
It consists of a single-sided, glossy page
entitled "MediaShare's® PB.web[ ]FactSheet."
(Emphasis added.) The page shows three
computer screen displays, [the bottom] one of
which is labeled "Actual HTML Web page." The
top display is clearly a prompt screen for
another of the applicant's software programs
entitled PRODUCTBASE. The middle display is
a screen labeled "ProductBase - Catalog
Demo." The bottom display is [additionally]
labeled "Cycling Outfits." None of the
screen displays include or in any way feature
the mark PB.WEB. PB.WEB is described
elsewhere in the fact sheet as "an add-on
module to the ProductBase system, [which]
automatically generates and indexes World
Wide Web compatible HTML documents."
Thus, contrary to applicant's assertions, none of the computer
monitor display screens reproduced in applicant's "fact sheet"
brochure or "catalog page" specimens clearly appears to
constitute or include a picture of applicant's "PB.WEB" computer
software, whether in use or otherwise.

7 We also note, as has the Examining Attorney, that there is no
contention by applicant that, due to the impracticality of placing
its "PB.WEB" mark on the goods or on any containers, packaging, tags,
labels or displays associated therewith, the specimens constitute
documents associated with the goods or their sale. In any event, as
the Examining Attorney points out, "[c]omputer software is extremely
easy to tag or label ... as it normally comes on diskettes or CD-
ROMs" and "[i]t also usually includes instruction manuals or
pamphlets" bearing the mark.
Ser. No. 74/634,610
6
Consequently, unlike the situation described in Lands'
End, supra at 1316, applicant's specimens do not utilize the mark
"PB.WEB" sufficiently near any picture of the goods, which are
variously referred to in the specimens as "a software module for
publishing product information on the World Wide Web and the
Internet" and as "an add-on module to the ProductBase system," so
as to associate the mark with a depiction of the goods. As the
Examining Attorney persuasively points out in his brief:
The mark is not used in connection with or
even in close proximity to any of the
photographs on the page. Even if the
pictures on the page were deemed to be
pictures of the goods at issue, the mark is
not used at any point in such a manner that
potential purchasers would associate it with
those pictures. Potential purchasers would
most likely view these as two pictures of the
PRODUCTBASE program in operation and an
example of the end product from using the
PRODUCTBASE program.
Furthermore, while the right-hand column of the
specimens lists certain features and benefits provided by
applicant's "PB.WEB" software, the description thereof, as the
Examining Attorney notes, is "in the laudatory manner customarily
reserved for advertising materials." More importantly, however,
such description, like the rest of the text of the advertising
copy in the specimens, omits any information as to product price
and how to order applicant's software. Unlike the "KETCH" purse
pictured and described in the specimens in Lands' End, supra at
1316, which included price information "so that a customer can
make a decision to purchase an item straight from the
identification in the catalogue," a potential customer for
Ser. No. 74/634,610
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applicant's "PB.WEB" software lacks such crucial purchasing
decision information as the price of the product and the
conditions or terms on which it is licensed or otherwise sold.
Consequently, as the Examining Attorney convincingly maintains in
his brief:
[T]he specimens do not provide all of
the information necessary to order the goods
but merely include an address and phone
number, as any normal advertising may. The
court in Lands' End held that the catalogs in
question were acceptable because "[a]
customer can identify a listing and make a
decision to purchase by filling out the sales
form and sending it in or by calling in a
purchase by phone." Lands' End, 24 USPQ2d at
1316. The specimens submitted by the
applicant do not include a sales form, a
price for the goods, or any of the other
information normally associated with ordering
goods via phone or mail. A phone number, an
Internet address and a mailing address are
included but no offers to accept orders or
special instructions on placing orders appear
anywhere on the specimens. The applicant
argues that the inclusion of computer system
requirements shows that the specimens are to
be used to order the goods. Many different
manufacturers of consumer goods routinely
provide performance characteristics and/or
statistical data about the use and abilities
of their goods in their advertisements. Such
advertisements, even when including a phone
number and/or mailing address for the
manufacturers of such ... goods[,] would not
be perceived by consumers as catalogs.
Consumers would view such materials merely as
informational advertisements, just as they
would view the applicant's specimens. Thus
the specimens do not contain adequate
information for routinely and easily placing
orders for the goods. Proper catalogs would
contain such information.
Ser. No. 74/634,610
8
It is plainly the case, therefore, that the specimens
submitted by applicant are simply advertising material. Such
material, generally speaking, is not acceptable as specimens for
goods. This is because any material whose function is simply to
tell a prospective purchaser about the goods or to promote the
sale of the goods is unacceptable to support trademark use. See,
e.g., In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979);
In re Dura Corp., 188 USPQ 701, 702 (TTAB 1975); In re Polymer
Machinery Corp., 183 USPQ 573, 574 (TTAB 1974); and In re Mautz
Paint & Varnish Co., 157 USPQ 637, 638 (TTAB 1968).
There remains, however, the question of whether
advertising material such as applicant's "fact sheet" brochure or
"catalog page" specimens may also function in certain
circumstances as displays associated with the goods. The Board,
in In re Bright of America, Inc., supra, indicated in general
that:
A display associated with the goods ...
comprises essentially point-of-sale material
such as banners, shelf-talkers, window
displays, menus, or similar devices which are
designed to catch the attention of purchasers
and prospective purchasers as an inducement
to consummate a sale and which prominently
display the mark in question and associate it
or relate it to the goods in such a way that
an association of the two is inevitable even
though the goods may not be placed in close
proximity to the display or, in fact, even
though the goods may not physically exist at
the time a purchaser views the display.
TMEP Section 905.06, in accordance therewith, instructs that
(emphasis added):
Ser. No. 74/634,610
9
Displays associated with the goods
essentially comprise point-of-sale material,
such as banners, shelf-talkers, window
displays, menus and similar devices.
These items must be designated [sic] to
catch the attention of purchasers and
prospective purchasers as an inducement to
consummate a sale. Further, the display must
predominantly display the mark in question
and associate it with, or relate it to, the
goods. The display must be related to the
sale of the goods in such a way that an
association of the two is inevitable. This
is true even though the goods may not be
placed in close proximity to the display or,
in fact, the goods may not physically exist
at the time a purchaser views the display.
See In re Bright of America, Inc., 205 USPQ
63 (TTAB 1979), and cases cited therein.
....
Folders and brochures describing goods
and their characteristics or serving as
advertising literature are not per se
"displays." In order to rely on such
materials as specimens, an applicant must
submit evidence of point-of-sale
presentation. See In re Ancha Electronics
Inc., 1 USPQ2d 1318 (TTAB 1986); In re
Columbia Chase Corp., 215 USPQ 478 (TTAB
1982). ....
Here, as the Examining Attorney indicates in his brief,
there is an absence of any photographs or other evidence
demonstrating that the advertising specimens filed by applicant
are utilized in point-of-sale presentations for applicant's
goods, such as being placed immediately adjacent to a diskette or
CD-ROM containing its "PB.WEB" software or a copy of the
instruction manuals therefor. Applicant's "fact sheet" brochures
or "catalog pages," instead, merely advertise the availability of
its "PB-WEB" software and highlight certain of the product's most
Ser. No. 74/634,610
10
prominent or desirable features, but such advertising simply has
not been shown, in the absence of an explanation or evidence
concerning its possible use in point-of-sale presentations, to
function as displays associated with the goods. Compare In re
Columbia Chase Corp., 215 USPQ 478, 479-80 (TTAB 1982) with In re
Ancha Electronics Inc., 1 USPQ2d 1318, 1320 (TTAB 1986). The
specimens, therefore, do not demonstrate trademark use of the
mark "PB.WEB" for "computer software for publishing information
on a computer network and instruction manuals therefor, sold
together as a unit".
Decision: The refusal on the ground that the specimens
fail to evidence trademark use is affirmed.
J. D. Sams
R. L. Simms
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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