Settec, Inc.

Trademark Trial and Appeal Board

Jun 5, 2006

No. 76181456 (T.T.A.B. Jun. 5, 2006)

Mailed:
June 5, 2006
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Settec, Inc.
________

Serial No. 76181456
_______

George A. Pelletier, Jr., of Cantor Colburn LLP for Settec,
Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Bucher, Kuhlke and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Settec, Inc., a Korean corporation, seeks registration
on the Principal Register of this special form mark:

THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76181456
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for goods identified in the application, as amended, as
follows:
“blank optical discs; blank compact discs
for audio and video recording; blank CD-ROM;
blank video discs; phonograph records
featuring music; blank digital video discs;
blank compact discs; pre-recorded optical
discs featuring motion pictures or music;
pre-recorded compact discs featuring motion
pictures or music; pre-recorded CD-ROMS
featuring motion pictures or music; pre-
recorded video discs featuring motion
pictures or music; pre-recorded digital
video discs and high definition digital
video discs featuring motion pictures or
music; computer software for applying copy
protection to the aforesaid goods” in
International Class 9.
Application Serial No. 76181456 was filed on December
15, 2000 based upon applicant’s allegation of a bona fide
intention to use the mark in commerce. The application was
published for opposition on May 7, 2002 and a notice of
allowance subsequently issued on July 30, 2002. Applicant
filed its statement of use and a specimen on January 30,
2004, alleging first use anywhere at least as early as
March 30, 2002 and first use in commerce at least as early
as October 23, 2003. The Trademark Examining Attorney
issued a final refusal to register this designation based
upon the ground that applicant’s specimen is not acceptable
to show use of the applied-for designation in connection
with the goods.
Serial No. 76181456
- 3 -
When the refusal was made final, applicant filed a
request for reconsideration and an appeal of the refusal to
register. When the request for reconsideration was denied,
this appeal went forward. Applicant and the Trademark
Examining Attorney submitted briefs, but applicant did not
request an oral hearing. We affirm the refusal to
register.
While applicant’s customers involve a variety of
content providers, including creators of educational and
game software, film and video, the specimen of use is a
four-fold, heavy vinyl brochure targeted to the music
industry, both sides of which are reproduced in 1:3 scale:

! Fifth page of text " Sixth page of text # Back cover of
brochure when folded
$ Front of brochure when
folded up completely

% First page of text
when one opens the
front cover
& Second page of text ' Third page of text ( Fourth page of text

Serial No. 76181456
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The Trademark Examining Attorney also introduced into
the record a printout from applicant’s website
<< http://www.settec.net/eng/pro_alphadvd.htm >>:

(What follows below is the
text drawn from the two
final paragraphs of this
webpage; emphasis of
Alpha-DISC supplied)

“Alpha-DISC
Authorized
Mastering &
Replication
companies or
Alpha-DISC
Resellers in your
area applies Alpha-
DVD technology to
make a protected
DVD master. This
protected DVD
master is delivered
for mass replication.
For customer
preference, Alpha-
DVD application to
DLT master is also
supported.”

“Alpha-DVD applied
DVD can be
manufactured in
Alpha-DISC
Authorized
Mastering &
Replication facilities.
For production
support at other
facilities, please
contact Alpha-
DISC Resellers in
your area.”

Serial No. 76181456
- 5 -
Background
The record shows that applicant provides optical
digital media copy protection to creators of educational
and game software, music, film and video. The technology
includes encryption software and a digital signature
imbedded within the physical layers of the disc that
authorizes the originality of the CD-ROM or DVD.
While the Alpha-AUDIO brochure submitted as a specimen
(p. 3, supra) is directed to audio CD copy protection, the
enclosed web page (p. 4, supra) discusses at length Alpha-
DVD – not Alpha-AUDIO. Alpha-AUDIO is a trademark for a
form of entertainment protection directed to the music
industry as a way of dealing with audio piracy. Alpha-DVD
is a trademark for a form of entertainment protection
directed to the U.S. motion picture industry that faces
billions of dollars in lost worldwide revenues each year
due to unauthorized copying.
However, both Alpha-AUDIO and Alpha-DVD involve multi-
layered encryption technology seemingly encompassed by the
proprietary term, Alpha-DISC. In both cases, applying
Alpha-ROM copy protection technology to the master is the
first step in the process -- “Alpha-DISC STK [Service
Toolkit].” At a later stage in each process, applicant’s
Serial No. 76181456
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content clients need to rely upon Alpha-DISC mastering and
replication companies, pressing houses, resellers, etc.,
all necessarily licensed or authorized by applicant.
Finally, it appears from applicant’s website that the same
Alpha-DISC umbrella includes online authentication and
activation of software distributed over the Internet.
Applicable Law
As noted earlier, the sole issue on appeal is whether
applicant’s specimen is acceptable to show use of the
applied-for designation in connection with the goods.
Trademark Rule 2.56(b)(1) provides:
A trademark specimen is a label, tag, or
container for the goods, or a display
associated with the goods. The Office may
accept another document related to the goods
or the sale of the goods when it is not
possible to place the mark on the goods or
packaging for the goods.

Trademark Rule 2.88(b)(2), applicable to this
application because applicant filed its specimen with its
Statement of Use, requires a specimen of the mark as
actually used in commerce, and specifically refers to Rule
2.56 for the requirements for specimens.
Further, Section 45 of the Trademark Act states that a
mark is deemed to be in use in commerce:
Serial No. 76181456
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(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 documents
associated with the goods or their sale,
and
(B) the goods are sold or transported in
commerce.

Applicant’s position
Applicant explains the reason why its copy protection
indicator should not be placed directly on the optical
digital media that ultimately will be distributed to end-
users qua potential hackers, crackers, rippers and
copyists:
Probably the most important strategy for
preventing the unauthorized duplication of
media is the secrecy of the very copy
protection scheme that is featured on the
media itself. By withholding the exact
nature or source of the copy protection,
potential hackers or crackers are dissuaded
from circumventing the encryption since they
do not know what techniques will succeed.
Further, and more importantly, casual users
will be less likely to randomly try numerous
different “cracks” to access the content of
encrypted media; the greater the effort
required to crack a medium, the more likely
an end-user will simply purchase a
legitimate copy.

The Applicant submits that in the instant
case, placing the trademark on the final
product available to the ultimate end-user
consumers defeats the entire purpose of the
Serial No. 76181456
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Applicant's goods, thus rendering such
placement inherently “impracticable.” Such
end-user consumers would thereby be armed
with an additional piece of the encryption
puzzle required to circumvent the copy
protection on the relevant media. Thus,
placement of the mark on the product
provided to end-users would impair the value
of the goods to the actual relevant
consumers of the Applicant’s goods, the
publishers.

Applicant’s brief, pp. 5 – 6.
Position of the Trademark Examining Attorney
By contrast, the Trademark Examining Attorney
hypothesizes that applicant has mistakenly filed for a
trademark for goods in International Class 9 when, in fact,
the applied-for designation may function instead as a
service mark:
Applicant’s statement that the software is
not used by the ultimate end user was
confusing, to say the least. In an effort
to understand this statement, the examiner
went to the applicant’s website. See
http://www.settec.net. After reading
through the material, it became clear that
applicant is not offering a good. The
software is not available to others for
purposes of encryption. This explains why
applicant has been unable to come up with an
acceptable specimen.

Rather, applicant is providing an encryption
service to its customers which uses software
that probably does not have the mark on it
anywhere. Applicant’s website indicates
that “Alpha-DISC Authorized Mastering and
Replication companies or Alpha-DISC
Resellers in your area applies Alpha-DVD
Serial No. 76181456
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technology to make a protected DVD Master.”
ALPHA-DISC is used to identify an encryption
service and not the actual software used to
perform the encryption.

Denial of applicant’s request for reconsideration, June 9,
2005.1
Analysis
Applicant markets computer software and hardware
The record is equivocal about exactly how the applied-
for matter is used. The Trademark Examining Attorney
concludes that applicant is using the mark as a service
mark. On the other hand, the specimen contains a
suggestion that applicant uses the term Alpha-DISC as an
over-arching label for its “technology.”2 On yet the other
hand, consistent with the identification of goods, the
balance of the evidence in the record shows that there may
well be some form of goods associated in some way with the
use of the Alpha-DISC designation. These International
Class 9 goods appear to include both computer software

1 Arguably, the cited language from applicant’s website
supports the contention that consumers may perceive the applied-
for matter as a service mark. However, inasmuch as applicant has
applied to register the mark for goods, that question is not
before us, and we look to the specimen of record to determine
whether or not applicant has made acceptable use of the proposed
trademark in connection with goods.
2 For example, the second sentence in the introductory
paragraph of applicant’s brochure includes the phrase “Settec’s
Alpha-DISC™ copy protection technology …” (emphasis supplied).
Serial No. 76181456
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(e.g., encryption software, as well as the programming that
permits applicant’s Alpha-ROM technology to be merged with
the client’s content master) and peripheral hard goods
(e.g., multi-layered compact discs).
Hence, we presume that applicant actually sells the
identified goods (e.g., software and hardware in
International Class 9). The sole question before us then:
whether applicant is using the proposed mark in connection
with those goods in a manner that potential consumers would
perceive as a trademark for such goods?
Looking to all the evidence of record
In making this kind of determination, the Board
recently restated a principle in the context of reviewing a
specimen for a service mark that fits well with our review
of applicant’s alleged trademark: “ … [W]hether or not a
term functions as a service mark [trademark] necessarily
depends on how that term is used and how it is perceived by
potential recipients of the services [goods],” considering
“any other evidence of record bearing on the question of
what impact applicant’s use is likely to have on purchasers
and potential purchasers.” In re Ancor Holdings, LLC.,
___ USPQ2d ____(TTAB SN 76213721 April 28, 2006), citing to
In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986)
Serial No. 76181456
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and In re International Environmental Corp., 230 USPQ 688
(TTAB 1986).
Are traditional trademark uses impracticable?
In order to clarify applicant’s position, we note that
applicant argues that it is “impracticable” to display this
alleged mark “in the ‘traditional’ formats specified in
37 C.F.R. § 2.56(b)(1)” (applicant’s brief, p. 4) such as
“labels, tags, containers or displays associated with the
goods,” in its dealings, for example, with media publishers
and producers and/or compact disc pressing houses. As
shown above, the only place the applied-for mark, Alpha-
DISC and design comprising a variation on the Greek letter
alpha (α) appears, is on the back cover of the brochure.
Using the exception language of the statute and rules,
applicant refers to its specimen of record as “documents
associated with the goods or their sale” (applicant’s
brief, p. 3, emphasis supplied) and “the literature …
associated with the goods and their sale to the relevant
consumer of the goods.” (applicant’s brief, p. 6).
We find that the facts of the instant case are not
analogous to cited situations involving “natural gas, grain
that is sold in bulk, or chemicals that are transported
only in tanker cars.” See TMEP § 904.04. Rather, for
Serial No. 76181456
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reasons it finds compelling, applicant has simply chosen
not to use or license its mark for use on finished goods
sold to retail consumers. As a result, retail consumers
are not among relevant purchasers for goods bearing the
mark. Certainly in the context of these goods, we agree
that it is not necessary that the ultimate purchaser of a
music CD or of a movie DVD knows of this source-indicator.
Possible forms of trademark usage with publishers
Given that applicant has chosen not to use its mark on
finished goods sold to retail consumers, we agree with
applicant that “the content provider is the relevant
consumer of the Applicant’s goods.” Applicant’s brief,
p. 6. However, it is appropriate, indeed necessary, for us
to examine the ways in which applicant’s clients, the
content providers or media publishers and producers, might
expect to encounter applicant’s source-indicator(s) in the
context of software and hardware. Even accepting
applicant’s logical constraints, it is not “impracticable”
for applicant to use this mark with its targeted consumers.
For example, in dealing with content providers and their
manufacturers, applicant could use this mark within its
software products, on tangible media products, on packaging
for such tangible media products, or on inserts included
Serial No. 76181456
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with software sent to publishers or discs sent to pressing
houses,3 or even in the form of a “catalogue.”4 However,
applicant has failed to provide a specimen showing any of
these kinds of uses.
We find that software providers may make products
available through downloading or by distributing CD-ROMS.
Use of applicant’s mark in conjunction with such procedures
would clearly qualify as use on the goods. It is not
uncommon for a software provider to display its product
marks or relevant corporate logos on computerized images
created by distributed software, or on the website page
where licensed users are given authorized access to the
software product. In either of these cases, an applicant
would simply submit to the Office a screen-print from the
appropriate access screen. Moreover, if applicant actually
ships blank, multi-layered CD-ROM’s to pressing houses, one
could use the mark on inserts associated with the goods, or
the shipping labels could easily be designed with

3 Nowhere does this literature contain suggestions that the
document has been shipped as an insert with packets of hardware
or software, and applicant does not make this argument.
4 The specimen of record is in no sense a catalogue in that
it does not constitute a means to order goods through the mail
using a sales form or a means by which one might call in an order
by telephone. Contra Lands’ End Inc. v. Manbeck, 797 F.Supp.
511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992) [specimen catalogs
acceptable displays associated with the goods]; and In re Dell
Inc., 71 USPQ2d 1725 (TTAB 2004) [web page usage of applied-for
term functions as a point of sale display].
Serial No. 76181456
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applicant’s product marks or relevant corporate logos.
Hence, based on this entire record, we find that it is not
impracticable, in this case, for applicant to have chosen
to do any of these things.
Conclusion
In conclusion, we find that the specimen of record
does not support trademark usage and that it is not
impracticable for applicant to have affixed this alleged
mark to goods in International Class 9 in a traditional
manner (e.g., label, tag, container or display associated
with the goods) in its dealings with media publishers and
producers and/or compact disc pressing houses.
Decision: The refusal to register is hereby affirmed.