Stephen AstorDownload PDFTrademark Trial and Appeal BoardJun 3, 2008No. 76111588 (T.T.A.B. Jun. 3, 2008) Copy Citation Mailed: June 3, 2008 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Stephen Astor ________ Serial No. 76111588 _______ Stephen Astor, pro se. William H. Dawe, III, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Walsh, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Stephen Astor filed an intent-to-use application for the mark EMAIL A FRIEND, in standard character format, for goods ultimately identified as a “housemark for a full line of downloadable electronic publications in the nature of books, magazines, newspapers and screenplays featuring fiction and nonfiction literature, art, history, education, health, mathematics, economics and other topics of general interests; downloadable musical sound recordings; and a housemark for a full line of downloadable video recordings featuring fiction and nonfiction literature, art, history, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76111588 2 education, health, mathematics, economics and other topics of general interests,” in Class 9.1 Applicant disclaimed the exclusive right to use the word “email.” The application was published for opposition on August 6, 2003. Because no one lodged an opposition to the registration of applicant’s mark, a notice of allowance was issued on November 18, 2003. On April 19, 2004, applicant filed a statement of use. The Examining Attorney refused registration on the ground that “[t]he specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark with the identified goods” and on the ground that the proposed mark does not function as a trademark.2 1 It appears that applicant is actually rendering a service by providing the capability of users to email excerpts of written, audio, and video works to others. (Applicant’s Brief, pp 1-2) (“Petitioner has a company that provides access to excerpts of books, video, and audio material on the internet, and /or the complete body of said works. . . . Petitioner has created a means to type an email address and click a single link-button, said link-button called ‘EMAIL A FRIEND’, which is Petitioner’s mark, to forward said Product to others”). Despite the best efforts of the Examining Attorney and the applicant to accurately identify applicant’s goods or services through multiple written communications, they were unsuccessful. Had either the Examining Attorney or the applicant used the telephone to communicate, it seems clear that this problem would have been avoided, and that what has been a tortuous prosecution would have been dramatically expedited. 2 May 6, 2004 Office Action. Applicant does not argue that the original specimen does not show use of the mark sought to be registered. Serial No. 76111588 3 On November 8, 2004, applicant filed a substitute specimen featuring the mark displayed in a web page. The relevant portion of the web page is shown below. Applicant did not submit a declaration supporting the use of the substitute specimen prior to the expiration of the time allowed for applicant to file a statement of use. The Examining Attorney “finally” refused registration on the grounds that the substitute specimen was not filed with a supporting declaration and that the specimen did not Serial No. 76111588 4 show use of the mark as a house mark for a full line of electronic publications.3 On October 17, 2005, applicant filed a request to reinstate its application along with another specimen showing use of EMAIL A FRIEND. The relevant portion of the specimen, shown below, is the excerpt of the work that the user transmits to others.4 Applicant did not submit a declaration supporting the use of the substitute specimen prior to the expiration of the time allowed for applicant to file a statement of use. In a communication dated December 13, 2005, applicant submitted the supporting declaration. 3 January 16, 2005 Office Action. 4 Applicant’s Brief, p. 6, Exhibit B. Serial No. 76111588 5 In his brief, applicant explained that the Examining Attorney’s refusal to accept the specimens of use was based on the “misunderstanding of the Petitioner’s ‘Product’.” Unfortunately for applicant, we are required to determine the registrability of applicant’s mark based on the description of goods made of record (i.e., a housemark for a full line of downloadable electronic publications). In other words, applicant’s mark - - EMAIL A FRIEND - - must be used to identify downloadable electronic publications, not the service of providing access to excerpts of such works. None of applicant’s specimens show use of his mark for downloadable electronic publications. The November 4, 2004 specimen (“Welcome to Email A Friend”) shows use of EMAIL A FRIEND in connection with transmitting excerpts of publications to others because it is used in connection with the activity of transmitting excerpts of the works. However, the specimen does not support the use of the mark on downloadable electronic publications because it does not show the mark used to identify electronic publications of any type.5 5 In addition, Applicant did not submit a declaration supporting the use of the specimen prior to the expiration of the time allowed for applicant to file a statement of use. Serial No. 76111588 6 The October 17, 2005 specimen does not show EMAIL A FRIEND used as a mark because it appears to be an instructional or informational statement regarding sending the publication to others. It does not function as a trademark and, even if it did, it does not identify electronic publications of any type. In view of the foregoing, we find that the term EMAIL A FRIEND does not function as a trademark for a “housemark for a full line of electronic publications.” Decision: The refusal to register the term EMAIL A FRIEND is affirmed. Copy with citationCopy as parenthetical citation