Tim Allyn Patterson

Trademark Trial and Appeal Board

Jan 8, 2001

No. 75294104 (T.T.A.B. Jan. 8, 2001)

Hearing: Paper No. 17
August 9, 2000 BAC
1/8/01
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tim Allyn Patterson
________
Serial No. 75/294,104
Serial No. 75/294,107
_______
James M. Graziano of Duft, Graziano & Forest, P.C. and
Steven P. Hollman of Hogan & Hartson L.L.P. for Tim Allyn
Patterson.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Chapman and Holtzman1, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On May 19, 1997, Tim Allyn Patterson filed two
applications, both for “printed materials, namely,
magazines and newspapers containing general information and
articles of interest to men, and general merchandise
catalogs containing items of interest to men” in
1Administrative Trademark Judge Holtzman has been substituted for
Administrative Trademark Judge McLeod, who was on the panel at
the oral hearing but left government service before these cases
were decided. See In re Bose Corporation, 772 F.2d 866, 227 USPQ
1 (Fed. Cir. 1985); and Jockey International, Inc. v. Bette Appel
Unltd., 216 USPQ 359 (TTAB 1982). See also, TBMP §§802.04 and
803.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/294104 & 75/294107
2
International Class 162; and both based on applicant’s
assertion of a bona fide intention to use the marks in
commerce. Application Serial No. 75/294,104 is for the
mark MUSCLE WITH ATTITUDE; and application Serial No.
75/294,107 is for the mark TESTOSTERONE-MUSCLE WITH
ATTITUDE. The marks were published for opposition on
December 16, 1997; and notices of allowance issued in both
applications on March 10, 1998. Applicant filed statements
of use on September 9, 1998 (via certificates of mailing)
asserting dates of first use and first use in commerce of
March 5, 1998.
Registration has been finally refused in both
applications because applicant has failed to submit
acceptable specimens. Specifically, the Examining Attorney
asserts that the specimens submitted by applicant do not
show use of the marks on the identified goods as required
by Trademark Rules 2.56 and 2.88.
Applicant has appealed, and briefs have been filed. A
single oral hearing was held, and the appeals are hereby
decided in a single opinion.
The specimens submitted by applicant (identical in
2 Applicant’s original identifications of goods read: “Printed
Materials such as magazines, newsletters, catalogs, newspapers,
periodicals.”
Ser. Nos. 75/294104 & 75/294107
3
both applications) are printouts of a page from applicant’s
website. A photocopy of applicant’s specimen is reproduced
below:
Applicant has not submitted any substitute specimens.
The Examining Attorney contends that specimens
submitted with a statement of use must show use of the mark
on the goods identified in the application; that
applicant’s specimens (printouts from an on-line
publication) evidence service mark use for the
International Class 42 service of an on-line publication;
and that such specimens are unacceptable in these
applications because a printout from an on-line publication
does not establish use of the mark for applicant’s
Ser. Nos. 75/294104 & 75/294107
4
identified printed materials in International Class 16.
While acknowledging that on-line publications and printed
publications are related, the Examining Attorney argues
that they are not interchangeable, specifically contending
that on-line magazines are a service disseminated in
electronic form and may or may not be printed by the
consumer, whereas a printed magazine is a product
disseminated in printed form; and that the identifications,
international classifications, method of use by the
applicant and the consumer, requisite specimens, and
channels of trade for these goods and services are
completely distinct.
Applicant contends that its “magazine is published in
digital form as a monthly periodical” (brief, p. 2); that a
federal court has determined that printed matter can exist
in electronic form under the Lanham Act3; that the Examining
Attorney’s refusal to accept applicant’s specimens as
evidence of use of the mark on “printed matter in the form
of an on-line magazine demonstrates a lack of knowledge
concerning the field of electronic publishing and Webster’s
dictionary” (brief, p. 5); that applicant’s specimens “are,
in fact, printed materials that exactly reproduce the
3 Ludden v. Metro Weekly, 8 F.Supp.2d 7, 47 USPQ2d 1087 (DCDC
1998).
Ser. Nos. 75/294104 & 75/294107
5
electronic signals on paper” (brief, p. 5); and that this
case turns on the meaning of the word “printed” which does
not exclude electronic production and dissemination.
Applicant submitted Webster’s Dictionary definition of
“print” as, inter alia, “3.a. Lettering or other
impressions produced in ink from type by a printing press
or other means.”
Section 1 of the Trademark Act, as well as Trademark
Rules 2.56 and 2.88, require that prior to registration
applicant submit a specimen showing the mark as used on the
goods in commerce.4 See also, TMEP §905. It is implicit
that the specimen must relate to the goods identified by
applicant in its application.
The USPTO recognizes a distinction between printed
magazines and newspapers on the one hand, and on-line
publications on the other, by classifying them in two
separate classes, and in fact, the latter is considered to
be a service, rather than an item of goods. See the USPTO
“ID Manual,” which lists “computer services, namely,
providing on-line [indicate specific nature of publication]
in the field of [indicate subject matter of publication]”
in International Class 42, and “magazines” and “newspapers”
4 The exception relating to applications filed pursuant to
Section 44 is not relevant here.
Ser. Nos. 75/294104 & 75/294107
6
in International Class 16. Moreover, USPTO classification
is based on the Nice Agreement Concerning the International
Classification of Goods and Services, to which the United
States is a party. Each of the countries party to the Nice
Agreement is obliged to apply the Nice Classification in
connection with the registration of marks.5 Accordingly,
electronic distribution of magazines and newspapers is not
encompassed within International Class 16.
In this case, we agree with the Examining Attorney
that the specimens submitted by applicant do not show the
marks sought to be registered used by applicant on “printed
materials, namely, magazines and newspapers containing
general information and articles of interest to men, and
general merchandise catalogs containing items of interest
to men.” Rather, the specimens of record evidence use as a
mark in connection with the service of an on-line
publication. That is, the specimens of record do not
support use of the marks in connection with the identified
goods because they do not show applicant’s use of its marks
in association with the sale of the goods specified in the
applications. See In re Capp Enterprises Inc., 32 USPQ2d
5 Informationally, on-line publications are considered services
under the Nice Agreement, but effective January 1, 2002, they
will be classified in International Class 41, due to a
restructuring of International Class 42 of the Nice Agreement.
Ser. Nos. 75/294104 & 75/294107
7
1855 (Comm. 1993); and The Jim Dandy Company v. Silver City
Mills, Inc., 209 USPQ 764 (TTAB 1981).
Applicant’s argument that a federal court has
determined what constitutes “printed matter” is simply
incorrect. The decision in the Ludden case, supra (cited
by applicant), was a denial of a motion for summary
judgment in a trademark infringement case involving the
title of a newspaper or magazine column. Moreover, other
court cases which may discuss classification of goods or
services at the USPTO would not necessarily be
determinative of the administrative classification of
various products and services. This Office must follow the
Nice Agreement, as explained earlier herein.
Decision: The refusals to register on the basis that
the specimens do not show use of the marks on the
identified goods is affirmed in both applications.6
6 Applicant’s alternative request (first requested in applicant’s
brief on appeal) that both identifications of services be amended
to read “on-line computer services, namely, providing magazines
and newspapers containing general information and articles of
interest to men, and general merchandise catalogs containing
items of interest to men” is denied. This was not timely raised
as an alternative position by applicant. See TBMP §1215. It is
also noted that the Examining Attorney prospectively advised
applicant on page 2 of her Final office actions, that any
proposed amendment to specify on-line publications in
International Class 42 would go beyond the scope of the original
identification of goods, and therefore is prohibited under
Trademark Rule 2.71(b). See also, In re Swen Sonic Corp., 21
USPQ2d 1794 (TTAB 1991).