Ultimus, Inc.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 78688816 (T.T.A.B. Mar. 31, 2008)

Mailed:
March 31, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ultimus, Inc.
________

Serial No. 78688816
_______

Howard A. MacCord, Jr. of MacCord Mason PLLC for Ultimus,
Inc.

David Collier, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Bucher, Zervas, and Ritchie de Larena,
Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Ultimus, Inc. seeks registration on the Principal
Register of the mark UNRULY EVENTS (in standard character
format) for services recited in the application as
“providing on-line communications links which transfer the
website user to other local and global web pages featuring
software for workflow automation” in International Class
38.1

1 Application Serial No. 78688816 was filed on August 9, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. A Statement of Use was filed on January
11, 2007 claiming first use anywhere and first use in commerce at
least as early as January 8, 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78688816
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that
applicant’s specimen of record (reproduced below) does not
show the applied-for mark in use in commerce as a service
mark for the services recited in the application and the
Statement of Use (SOU). 15 U.S.C. §§ 1051 and 1127, and 37
C.F.R. §§ 2.56 and 2.88.

Adaptive Discovery®
Adaptive Discovery Drives BPM Return on Investment
“Adaptive Discovery sets
Ultimus apart.”

Connie Moore, Forrester
Wave 2006

Adaptive Discovery helps drive strong ROI because it 1)
accelerates the launch of BPM projects, and 2) makes it
much faster to change and adapt processes after they have
been deployed.
Accelerating Deployment and Driving Savings

“Sure there is embedded BPM
in my ERP system. However,
I may wish to change my ERP
system. By using Ultimus, I
can get the immediate
benefits of BPM without
having to change every
process that touches my ERP
system."

Marcelo Ramirez Rexam do
Brazil, World’s Largest
Beverage Can Manufacturer

Process Discovery, the first step in BPM, can often
cause project delays. In fact, research shows that
defining business processes and rules takes up to 71%
of the time for a BPM project while developing,
installing and testing the system take far less time.

With Ultimus, organizations can deploy processes
faster by shortening process discovery. This reduces
the time and cost of deployment and generates
savings as shown below. With Adaptive Discovery
technology, an organization can quickly agree on the
key business rules and deploy the process. They do
not need to identify every possible rule, step or
exception because the Adaptive Discovery Unruly
Events™ technology enables new rules to be added
dynamically as they are discovered in the natural
course of doing business.
Serial No. 78688816
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Learn more about Adaptive Discovery... Learn more

“Our customer rebate process
is very complex. It deals with
hundreds of customers,
products and program
definitions - while requiring
approval from many people
across sales, marketing,
finance, and product
management. In addition, we
must handle exceptions as
they occur – which is
sometimes on a daily basis.
Ultimus BPM gives us great
process control and visibility
while Adaptive Discovery has
enabled us to handle
exceptions and change in
minutes or hours instead of
days or weeks.”

Minty Meade
National Gypsum 2

Applicant and the Trademark Examining Attorney have
briefed the issues before us. We affirm the refusal to
register.
Prosecution history since the filing of the SOU
In his initial examination of the SOU of January 11,
2007, the Trademark Examining Attorney refused
registration, stating the following:
In the present case, the specimen does not
describe the services, but rather describes
the underlying technology within the
software.

2 http://www.ultimus.com/products/Adaptive+Discovery.htm

Serial No. 78688816
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In its response of May 11, 2007, applicant argues that
its specimen shows use of its mark in the actual rendering
of its services, similar to what the Office has accepted
from hundreds of other registrants:
The specimen submitted with the Statement of
Use is a print from an on-line webpage that
includes “UNRULY EVENTS” as an active link
to other web pages featuring software for
workflow automation. The page that is live
has Unruly Events as hyperlink to
http://www.ultimus.com/products/Adaptive+Dis
covery.htm. As such, the usage on the
submitted specimen constitutes an on-line
communications link which transfers the
website user to other local and global web
pages featuring software for workflow
automation, which are exactly the services
recited in the application. While “unruly
events” also refers to a feature of the
software, that does not negate the fact that
it also meets the services description.

The Trademark Examining Attorney’s Final refusal to
register explained why the specimen fails to show an
association of the mark with the identified services:
… The applicant argues that the mark, as
shown on the specimen is a link to other web
pages featuring their services. As noted
before, this specimen is unacceptable. An
adequate specimen would consist of the mark
shown in direct connection with the
applicant’s services.

The Trademark Examining Attorney also explained his concern
regarding applicant’s specimen and the contents of TMEP
§ 1301.04, which is entitled “Specimens of Use for Services
Serial No. 78688816
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Marks.” According to the Trademark Examining Attorney, any
specimen must show use as a service mark and that there
must be an association between the alleged mark and the
recited services. The Trademark Examining Attorney
explores this in more detail in his brief, citing verbatim
to significant portions of TMEP §§ 1301.04, 1301.04(a),
1301.04(b) and 1301.04(c). Immediately following this
discussion, the Trademark Examining Attorney also addresses
the differences between the provision of the technical
telecommunication link by which persons can communicate, in
International Class 38, and the varied services of content
providers.
In its appeal brief, applicant responds directly to
the Trademark Examining Attorney’s citation to TMEP
§ 1301.04 in his Final refusal, arguing that its specimen
shows use of the mark in connection with the recited
services, and that the law does not require that the
specimen recite the services. Then, in its reply brief,
applicant argues that “the Examining Attorney has made a
new refusal in his brief.” Applicant argues that the
Trademark Examining Attorney’s brief, in referring to
classification notes related to International Class 38,
suggests that the basis for the refusal is that applicant’s
Serial No. 78688816
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services were misclassified. Applicant contends that in
the event that its services have been misidentified or
misclassified, in fairness to applicant, it would be
appropriate to remand this file so that the Trademark
Examining Attorney can more clearly elucidate the nature of
the refusal, and provide applicant an opportunity to amend
its recitation of services, as appropriate.
Analysis
Upon consideration of the specimen and the arguments of
both the Trademark Examining Attorney and applicant, we find
that the specimen fails to show the mark in use in commerce
as a service mark for the services identified in the
application.
A service mark is used in commerce “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are
rendered in more than one State or in the United States and
a foreign country and the person rendering the services is
engaged in commerce in connection with the services.”
Trademark Act Section 45, 15 U.S.C. § 1127. “[B]ecause by
its very nature a service mark can be used in a wide
variety of ways, the types of specimens which may be
Serial No. 78688816
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submitted as evidence of use are varied.” In re Metriplex
Inc., 23 USPQ2d 1315, 1316 (TTAB 1992).
As noted by the Trademark Examining Attorney, when
used in advertising of services, the service mark must not
merely appear in the advertising material that also
discusses or offers the services, but must be associated
with the services in such a manner as would be sufficient
to indicate to potential purchasers or users of the
services that the mark identifies the services and their
source. See In re Universal Oil Products Co., 476 F.2d
653, 177 USPQ 456, 457 (CCPA 1973) [“The minimum
requirement is some direct association between the offer of
services and the mark sought to be registered therefor.”]
(italics in original), and In re Moody's Investors Service
Inc., 13 USPQ2d 2043, 2047 (TTAB 1989) [requirement is for
“a direct association between the mark sought to be
registered and the services specified in the application,
i.e., that [the mark] be used in such a manner that it
would be readily perceived as identifying such services”].
When used in the actual sale of services, as opposed to
their advertising, it is not per se necessary that the
services be referenced, but in such cases it may be
necessary to explain how the mark appears during the
Serial No. 78688816
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rendering of the service and, therefore, why the purchaser
or user of the service would recognize and associate the
mark with the service. See Metriplex, 23 USPQ2d at 1316
[“As applicant explained in its declaration, the specimens
show the mark as it appears on a computer terminal in the
course of applicant’s rendering of the services.”].
In connection with applicant’s argument that the
specimen shows use of the mark in connection with the
services, we find that the fact a consumer may be able to
follow applicant’s hyperlink by clicking on the words
Unruly Events in the specimen in no way means that
applicant has shown use of the mark in the service of
transferring the website user to other local and global web
pages featuring software for workflow automation. In fact,
we agree with the Trademark Examining Attorney that this
specimen is unacceptable to show an association of the mark
with the identified services. Applicant does not identify
exactly how this specimen makes an association between the
mark and the services recited in the application and SOU.
The specimen identifies “Unruly Events” as “technology
[that] enables new rules to be added dynamically as they
are discovered in the natural course of doing business.”
This original web page qua specimen associates the mark
with a component of its Adaptive Discovery® software.
Serial No. 78688816
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While the words Unruly Events themselves serve as a
hyperlink, as one views this page, there is no association
between the alleged mark and “providing on-line
communications links which transfer the website user to
other local and global web pages featuring software for
workflow automation.” While this term, as used on the
specimen of record, identifies a proprietary piece of
applicant’s software, the web page neither promises nor
provides a single connection to the websites of others
featuring software for workflow automation.
Perhaps we can best clarify our determination (i.e.,
that applicant’s specimen of record does not show the
applied-for mark in use in commerce as a service mark for
the services recited in the Statement of Use) by
contrasting applicant’s case with the third-party situations
that applicant put forward as being analogous to the instant
case.
Contrasts with applicant’s two chosen examples
Applicant points to two examples from the XANGA
BLOGRINGS and XYREM websites that it claims are analogous
to this case. For the reasons set forth below, we find
that they are distinguishable from applicant’s
services/specimens.
Serial No. 78688816
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First, applicant points to a firm
involved in website linking and
providing blogging sites at Xanga.COM.
Xanga is involved in interactive
hosting services which allow the user
to publish and share their own content
and images online. In the website
excerpt made of record by applicant, on a page where the
XANGA BLOGRINGS marks appear prominently on the header,
XANGA provides an entire page of hyperlinks, as seen above.3
The language of “providing on-line communications
links which transfer the website user to other local and
global web pages” is the entirety of a recitation of
services that would be used by an information technology
(IT) company providing technical linking services. Like
each of the other three-hundred-plus listings in the ID and
classification manual for International Class 38 services,
this recitation fits into the category of services
characterized by information technologies and/or the

3 http://groups.xanga.com/groups/; Registration No. 3156276
for the mark BLOGRINGS for “providing on-line communications links
which transfer the website user to other local and global web
pages featuring the ability for users to affiliate websites of a
common focus or theme that use a dated log format” in
International Class 38.

Serial No. 78688816
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electronic transmission of data, etc. Consistent with this
understanding, Xanga is an IT company involved in
interactive online hosting and linking services for others
– services correctly classified in International Class 38.
By contrast with Xanga, applicant’s underlying
business is providing sophisticated tools to its clients
involved in Business Process Management (BPM) or Business
Process Reengineering (BPR). Applicant is clearly not a
telecommunication services provider, so the way in which
Xanga uses its service mark in the process of offering
interactive hosting services is not apropos to our case.
As noted by the Trademark Examining Attorney, more
apropos to applicant would be the recitations of services
of other content providers who are, according to the ID
manual, “providing links to websites of others featuring
{indicate field or subject matter of linked sites …}.”
Consistent with the Nice International Classification
System, a classification scheme used administratively for
purposes of registering marks with the United States Patent
and Trademark Office, such services are then correctly
classified in the class of that field or subject matter.
So, for example, an online website that promotes or
advertises the goods or services of another on another
Serial No. 78688816
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linked site would be classified in International Class 35.4
Similarly, links to other websites featuring travel would be
in International Class 39,5 Internet search engines would be
in International Class 42,6 links to medical information
would be in International Class 44,7 etc. In fact,
applicant’s second example fits this general category of
linking services.
The second website/third-party registration
combination that applicant points out involves the
trademark owner for XYREM pharmaceutical preparation for

4 For example, the ID manual has entries such as “promoting
the goods and services of others by providing hypertext links to
the web sites of others”; “promoting the goods and services of
others by providing a web site at which users can link to
{indicate subject matter of links}”; “promoting the goods and
services of others by means of operating an on-line shopping mall
with links to the retail web sites of others”; “promoting the
goods and services of others by providing a web site featuring
coupons, rebates, price-comparison information, product reviews,
links to the retail web sites of others, and discount
information”; or “promoting the goods and services of others by
providing a community-driven web site featuring user-submitted
content in the nature of coupons, rebates, price-comparison
information, product reviews, links to the retail web sites of
others, and discount information.”

5 “Providing a web site and web site links to geographic
information, map images, and trip routing” or “providing links to
web sites of others featuring travel.”

6 “Providing customized on-line web pages featuring user-
defined information, which includes search engines and on-line
web links to other web sites.”

7 “Providing links to the web sites of others featuring
information about the diagnosis and treatment of cancer.”

Serial No. 78688816
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the treatment of narcolepsy. The Xyrem website contains a
web page for prospective patients that has links to the
websites of a number of other organizations dealing with
sleep disorders, such as the American Academy of Sleep
Medicine.8
Accordingly, to the extent that applicant would be
providing content in the field of business process
management or business process reengineering, its underlying
services would be classified in International Class 35. To
the extent that any of applicant’s secondary, value-added
services allegedly involved herein are provided by means of
a telecommunication link, they would still remain in class
35.
However, the Trademark Examining Attorney’s final
refusals is not over any potential problems with

8 http://xyrem.com/html/main.isx; Registration No. 3162634
for the mark XYREM for “providing on-line communications links
which transfer the website user to other local and global web
pages; and on-line document delivery via a global computer
network” in International Class 38.

The screen-print from the XYREM.COM site shows that this
registrant is indeed providing a linking service on a page having
the service mark shown prominently at the top of the page.
However, as noted above, a more accurate ID and classification
might well have been “providing on-line communications links
which transfer the website user to other local and global web
pages about the diagnosis and treatment of narcolepsy and related
sleep disorders and on-line document delivery via a global
computer network of the same” in International Class 44.

Serial No. 78688816
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misclassification of the services. Rather, as suggested by
the Trademark Examining Attorney in the Office’s brief, it
appears that this is a case in which applicant chose an
appropriately-worded recitation of services that is on its
face acceptable to the Trademark Office, but one where
applicant may well not be providing the service recited.
With this background, we contrast the nature of
applicant’s link as well as the details of its alleged
services with the value-added services of XYREM.COM.
Turning again to applicant, with the involved
application, applicant is claiming a service in a hyperlink
contained in a page of its website, “ULTIMUS® Empowering
People. Driving Process, An Innovative Leader in Adaptive
Technologies.” Clicking on the hyperlink entitled Unruly
Events takes one to a second page on applicant’s own
website. Neither the Trademark Examining Attorney nor
applicant have supplied copies of this forward link.
While applicant chides the Trademark Examining
Attorney for allegedly failing to check out this forward
link, applicant has not provided an explanation or
declaration supporting registrability by explaining the way
in which the specimen shows use of the mark in the
rendering or selling of applicant’s services. Cf. In re
Metriplex Inc., 23 USPQ2d at 1316-17.
Serial No. 78688816
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In short then, applicant’s claimed service [“providing
on-line communications links which transfer the website
user to other local and global web pages featuring software
for workflow automation”] [emphasis supplied] is actually
encapsulated in ones clicking on the hyperlink, leading one
to another “Adaptive Discovery™”/Unruly Events™ page
located within applicant own website.
However, the key concept in all of the linking
services provided by content providers is that the service
provider’s web page is linking the user to “others,” “other
sites,” “the goods or services of another,” “promoting the
goods or services of others,” etc. As seen in the jumping-
off page of the XYREM.COM website, there is a brief
description about what the user will find upon following the
link forward: “For more information about narcolepsy … .”
By contrast, there is no text on applicant’s specimen
page – other than the markings characterizing any embedded
hyperlink – indicating that additional information is being
provided through this link. A hypothetical in the instant
case, analogous to the situation shown in the XYREM.COM
site, would be a web page using the UNRULY EVENTS mark
prominently on a page header, where a primary focus of the
page would be one or more links, for example, to scholarly
Serial No. 78688816
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resources from universities/think-tanks discussing the
cutting edge advances in Artificial Intelligence as applied
to the field of BPM: “For more information about the
latest software developments in BPM, ….” In this
hypothetical, the actual hyperlink may be in the image of a
button, without the alleged trademark even showing on the
button.
As noted above, applicant’s failure to be more explicit
about the link itself – particularly when that feature
comprises the entirety of the claimed service – actually
points to a related but equally serious problem fatal to
applicant’s registrability herein: simply linking back into
ones own website is of benefit only to the website owner.
While such a feature may well make applicant’s site more
usable, functional or profitable, that feature would be
considered, at most, self-promotion for the content
provider, and is not considered a service for the benefit
of others, under the Lanham Act.
Decision: We affirm the refusal to register this
designation based upon the ground that applicant’s specimen
of record does not show the applied-for mark in use in
commerce as a service mark for the services recited in the
Statement of Use. Inasmuch as the refusal herein is not
Serial No. 78688816
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predicated upon any potential misclassification of
applicant’s services, and given the posture of this case
otherwise, there is no reason to remand this application to
the Trademark Examining Attorney for further examination.