User First

Trademark Trial and Appeal Board

Dec 9, 2019

87231226 (T.T.A.B. Dec. 9, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re User First
_____

Serial No. 87231226
_____

Kenneth Linzer of Linzer Law Group PC,
for User First.
Jacob Vigil, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Taylor, Wolfson and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
User First (“Applicant”) seeks registration on the Supplemental Register of the
mark USER FIRST (in standard characters) for “Computer software, namely,
software development tools for the creation of mobile internet applications and client
interfaces” in International Class 9.
The Trademark Examining Attorney has finally refused registration of
Applicant’s applied-for mark under Sections 1(a) and 45 of the Trademark Act, 15
Serial No. 87231226
- 2 -
U.S.C. §§ 1051(a), 1127, on the ground that the specimens of record do not show the
mark used in commerce in connection with the identified software development tools.
Applicant appealed and requested reconsideration. After the Examining Attorney
denied the request for reconsideration, the appeal was resumed. We affirm the refusal
to register.
I. Evidentiary Issue
We first address an evidentiary matter. In response to the Examining Attorney’s
brief, Applicant submitted the declaration of its office manager, Michael Berlin,
attesting, in part, that “[t]he document entitled ‘Certification Training Lab: Apps,
KPIs, Dashboards and Charts from REST Data, SQL Server Data and Excel Reports’
[Document] is the cover page of an instruction manual for individuals using
Applicant’s software goods,”1 and a complete copy of the Document.2
Because the declaration and complete Document were not made of record until
the filing of Applicant’s reply to the Examining Attorney’s brief, they are untimely
and will be given no further consideration.3 See Trademark Rule 2.142(d), 37 C.F.R.
§ 142(d) (“The record in the application should be complete prior to the filing of an
appeal. Evidence should not be filed with the Board after the filing of a notice of

1 10 TTABVUE 106. The TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations refer to the docket and electronic file database for the involved application.
All citations to the TSDR database are to the downloadable .PDF version of the documents.
2 Id. at 2-105.
3 If Applicant desired to introduce additional evidence, it could have requested suspension of
the proceeding and remand of the application for further examination. See Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d).
Serial No. 87231226
- 3 -
appeal.”). See also In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) (“By
attempting to introduce evidence with its reply brief, applicant has effectively
shielded this material from review and response by the Examining Attorney.”).
II. Background
Before proceeding to the merits of the appeal, a review of the prosecution history
is in order. Application Serial No. 87231226 was filed on November 9, 2016, initially
seeking registration on the Principal Register of the wording USER FIRST, based
upon Applicant’s allegation of a bona fide intention to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). A first Office Action
issued on February 17, 2017, refusing registration on the ground that the wording
USER FIRST is merely descriptive of the goods pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). Applicant responded to the refusal by filing
an amendment to allege use (which was accepted on September 8, 2017), and
amending its application to seek registration on the Supplemental Register.
The Examining Attorney issued a second Office Action refusing registration for
failure to function as a trademark under Trademark Act Sections 1, 2, and 45, 15
U.S.C. §§ 1051-52, 1127, because Applicant’s specimen did not show trademark use
of the applied-for mark, and requiring the submission of a substitute specimen under
Sections 1(a) and 45 because the specimen filed with the amendment to allege use did
not show use in commerce in connection with the identified goods.
The original specimen is reproduced below:
Serial No. 87231226
- 4 -

In response, Applicant amended the application to its original intent to use basis,
making the amendment to allege use moot.
The Examining Attorney then issued a third Office Action, withdrawing the
failure to function refusal and the requirement for a substitute specimen, refusing
registration on the Supplemental Register on the ground that the application was no
longer eligible for Supplemental Register registration, and renewing the Section
2(e)(1) refusal.
Serial No. 87231226
- 5 -
Applicant responded by filing a second amendment to allege use, which was
accepted on September 29, 2018, accompanied by a different specimen. The specimen
is reproduced below:4

The Examining Attorney then issued a fourth and Final Office Action
withdrawing the refusal regarding eligibility for registration on the Supplemental
Register, noting that the 2(e)(1) refusal had been obviated, and reinstating and
making final the refusal of registration for failure to function as a trademark under
Sections 1, 2, and 45 because Applicant’s specimen did not show trademark use of the
applied-for mark, and the requirement for a substitute specimen under Sections 1(a)

4 The mark appears in the following statement: “Webalo Partners with Resellers, System
Integrators and Technology vendors to help companies transform into User First
organizations where every user always has the information they need to get their job done.”
Serial No. 87231226
- 6 -
and 45 because the specimen filed with the second amendment to allege use did not
show use of the applied-for mark in commerce in connection with the identified goods.
Applicant filed a notice of appeal and a “Request for Reconsideration after Final
Action,” by which it submitted the substitute specimen shown below, described as “[a]
scanned first page of a 103 page pdf instruction manual for the User First platform.”5

In his denial of the request for reconsideration, the Examining Attorney withdrew
the refusal for failure to function as a mark, but maintained the refusal based on the

5 March 21, 2019 Request for Reconsideration; TSDR 2.
Serial No. 87231226
- 7 -
requirement for a substitute specimen that clearly shows the mark used in connection
with the identified software goods.
Applicant subsequently filed its appeal brief based solely on the specimen
requirement as it pertains to the substitute specimen shown directly above, which
was filed with its request for reconsideration. The appeal is fully briefed. We affirm.
III. Issue
The sole question before us is whether the first page of the “instruction manual
for the USER FIRST Platform” is an acceptable specimen within the meaning of
Sections 1 and 45 of the Trademark Act, demonstrating use in commerce of the
applied-for mark USER FIRST in connection with the identified goods.
IV. Applicable Law
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a trademark is used in
commerce when “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 ....” See also Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a), “an
amendment to allege use under § 2.76 … must … include one specimen per class
showing the mark as used on or in connection with the goods ….” Applicant submitted
what it describes as the first page of a .pdf instruction manual as a specimen of use,
and the Examining Attorney does not dispute that an instruction manual may be an
appropriate specimen under Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1) (“A
trademark specimen is a label, tag, or container for the goods, or a display associated
Serial No. 87231226
- 8 -
with the goods. The Office may accept another document related to the goods or the
sale of the goods when it is impracticable to place the mark on the goods, packaging
for the goods, or displays associated with the goods.”). See also, e.g., In re Ultraflight
Inc., 221 USPQ 903, 906 (TTAB 1984) (The Board found that “the instruction manual
[that is part of a kit for assembling the product] is as much a part of applicant’s goods
as are the various parts that are used to build the gliders. Application of the mark to
the manual of assembly instructions, then, must be considered affixation to the
goods.”).
V. Discussion
Applicant has identified its current specimen as the first page of an instruction
manual for its software goods, stating that it “contains the applied-for mark USER
FIRST, prominently on the very top line of the document.” Applicant argues that
“[t]he circumstances surrounding the present Application are in every meaningful
way identical to those posed in Ultraflight,”6 such that its specimen adequately shows
its mark used in commerce within the meaning of Sections 1 and 45 of the Lanham
Act.
While recognizing that under Ultraflight instruction manuals can be acceptable
specimens of use under certain circumstances, the Examining Attorney refuses to
accept Applicant’s specimen because “the cover page is not clearly an instruction
manual for downloadable software.”7 The Examining Attorney expounds that:

6 7 TTABVUE 6.
7 9 TTABVUE 6.
Serial No. 87231226
- 9 -
Although the specimen description states that the
specimen is a cover page from an instruction manual, the
text of the page indicates otherwise and creates ambiguity
as to the nature of the specimen. The cover page is
noticeably missing generic terms that would be expected to
appear on an instruction manual, such as “manual,”
“instructions,” or “user guide.” Rather, the page features
the wording “Certification Training Lab: Apps, KPIs,
Dashboards and Charts from REST Data, SQL Server Data
and Excel Reports.” Printout data at the bottom of the page
shows the wording “Webalo Certification Training Lab –
KPIs, Dashboards and Charts.” The wording “Certification
Training Lab” indicates education or training for the
purpose of being certified in some discipline. This unusual
wording does not indicate an instruction manual. Instead,
the specimen appears to be training materials for a class or
training program and not an instruction manual provided
with the goods such that it functions as a part of the goods.8
We agree with the Examining Attorney and find that Applicant’s specimen does
not clearly show Applicant’s applied-for mark used in connection with the identified
“software development tools for the creation of mobile internet applications and client
interfaces.” Although Applicant describes its specimen as being the cover page of an
instruction manual for these goods, the text on the page does not reference these
goods and, in fact, creates something of an ambiguity as to the nature of the specimen.
Also, as pointed out by the Examining Attorney, the cover page does not include terms
usually associated with an instruction manual, such as, “manual,” “instructions,” or
“user guide.” While the use of these or other specific terms is not required before a
document is recognized as an instruction manual, the wording “Certification Training
Lab,” as presented on the proffered specimen, appears to refer to materials for an

8 9 TTABVUE 5.
Serial No. 87231226
- 10 -
education or training program for which Applicant’s specimen is the cover page,
instead of an instruction manual that is integral to the use of, and functions as part
of, Applicant’s identified software development tools, as was contemplated by the
Board in Ultraflight. Notably, the wording at the bottom of Applicant’s specimen
references “Webalo Certification Training Lab – KPI’s Dashboards and Charts.”
We are not persuaded by Applicant’s contention that use of the wording
“Certification Training Lab,” as opposed to “instruction manual” or “user manual,”
does not substantially change the specimen’s purpose as a manual for the goods.
While we accept that an instruction manual may be called different things, it is
doubtful that materials associated with the terminology “Certification Training Lab”
would be recognized by consumers as manuals containing instructions on how to
create mobile internet applications or client interfaces using software development
tools such as provided by Applicant. Moreover, the record is devoid of evidence
showing that Applicant’s cover page specimen is from a manual provided
contemporaneously with, and that functions as part of, the identified software goods.
Finally, the facts in this case are distinguishable from those in Ultraflight. In
Ultraflight, the Board was presented with the cover page of a recognizable instruction
manual that was integral to the operation of the Applicant’s goods, and which was
provided contemporaneously with the Applicant’s goods. However, in this case and as
discussed above, although Applicant’s specimen is characterized as a cover page of an
instruction manual for software goods sold by it, that fact is not discernable from a
reading of the cover page itself. Nor is it clear from the face of the specimen that the
Serial No. 87231226
- 11 -
“manual” is integral to the use and operation of the identified software or that it is
provided contemporaneously therewith such that it may be considered as part of the
software goods themselves.
For the reasons indicated, we find that Applicant’s substitute specimen is unlikely
to be recognized as a cover to an instruction manual for Applicant’s identified
software goods, and that the substitute specimen thus does not show affixation of the
mark to the goods identified as “computer software, namely, software development
tools for the creation of mobile internet applications and client interfaces.” We
therefore conclude that the substitute specimen of record is not adequate to support
trademark use of the mark with the identified goods.9
Decision: The refusal to register under Sections 1 and 45 of the Act is affirmed.

9 As discussed above, we have excluded what Applicant’s “Reply Brief” describes as the “User
First Manual,” 10 TTABVUE 1, because it was not timely submitted. We express no opinion
regarding the sufficiency of the entire “User First Manual” as a specimen of use of the
applied-for mark.