Automated Summary
Key Facts
Settec, Inc. applied to register the Alpha-DISC mark for goods in International Class 9, including blank optical discs, compact discs, CD-ROMs, and computer software for applying copy protection. The applicant submitted a four-fold vinyl brochure as a specimen, arguing that placing the mark directly on the finished goods would defeat the purpose of the copy protection technology by alerting potential hackers. The applicant contended it was impracticable to use the mark in traditional formats on goods sold to retail consumers, though they acknowledged content providers were the relevant consumers. The Trademark Examining Attorney refused registration because the specimen did not show acceptable use of the mark in connection with the goods. The TTAB affirmed the refusal, finding that the applicant could have used the mark on inserts with software sent to publishers, on packaging, or in other traditional ways with content providers, making such use not impracticable.
Issues
- The sole issue on appeal is whether applicant's specimen (a four-fold vinyl brochure) is acceptable to show use of the Alpha-DISC designation in connection with goods in International Class 9, including blank optical discs, CD-ROMs, and computer software for applying copy protection.
- The Trademark Examining Attorney hypothesizes that the Alpha-DISC designation may function as a service mark rather than a trademark, since applicant provides encryption services to content providers rather than selling goods directly to end consumers.
- Applicant argues that placing the Alpha-DISC trademark on finished goods sold to retail consumers is impracticable because it would defeat the purpose of the copy protection scheme, as end-users would gain knowledge of the encryption technique needed to circumvent the protection.
Holdings
The TTAB affirmed the refusal to register the Alpha-DISC special form mark. The Board concluded that the submitted specimen (a four-fold vinyl brochure) did not demonstrate trademark usage in connection with the identified goods in International Class 9. The Board further found that it was not impracticable for the applicant to have affixed the mark to goods in traditional formats (labels, tags, containers, or displays) when dealing with media publishers, producers, or compact disc pressing houses.
Legal Principles
Trademark Rule 2.56(b)(1) defines a trademark specimen as a label, tag, container, or display associated with goods, or another document when placement on goods is impracticable. Rule 2.88(b)(2) requires specimens showing mark use in commerce for Statement of Use applications. Section 45 of the Trademark Act defines use in commerce as placing marks on goods, containers, displays, tags, labels, or documents associated with goods when placement is impracticable, and goods are sold or transported in commerce. The Board must determine whether the specimen supports trademark usage and whether it is impracticable for the applicant to use the mark in traditional formats in dealings with relevant consumers (e.g., content providers, media publishers, pressing houses).
Precedent Name
- In re Dell Inc.
- Lands' End Inc. v. Manbeck
- In re Walker Research, Inc.
- In re Ancor Holdings, LLC.
- In re International Environmental Corp.
Cited Statute
Trademark Act
Judge Name
- Walsh
- Bucher
- Kuhlke
Passage Text
- 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. Rather, applicant is providing an encryption service to its customers which uses software that probably does not have the mark on it anywhere.
- 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.
- 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.