Dataweld, Inc.

Trademark Trial and Appeal Board

Jul 31, 1997

EX (T.T.A.B. Jul. 31, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 31, 97
Paper No. 17
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dataweld, Inc.
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Serial No. 74/421,648
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John M. Harrison for Dataweld, Inc.
James A. Rauen, Trademark Examining Attorney, Law Office 103
(Michael A. Szoke, Acting Managing Attorney)
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Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Dataweld, Inc. has applied to register ACUTRAX, in the
stylized form shown below, for "computer software for
tracking compressed gas cylinders."1

1 Application Serial No. 74/421,648, filed August 6, 1993, and
asserting first use and first use in commerce on May 15, 1993.
Ser No. 74/421,648
2
Registration was finally refused pursuant to Section 2(d) of
the Trademark Act, asserting a likelihood of confusion with
three cited registrations, and because the specimens
submitted by applicant were deemed unacceptable as evidence
of actual trademark use. The Examining Attorney noted, in
his brief, that two of the cited registrations were
cancelled for failure to file Section 8 affidavits of use,
and withdrew the refusal of registration with respect to
these registrations. The Board has now ascertained that the
third cited registration was similarly cancelled in May
1997. Accordingly, the only issue before us is whether the
specimens submitted as acceptable to evidence use of the
mark for applicant's identified computer software.
With its initial application papers applicant submitted
what appears to be an advertising brochure, a single sheet
of glossy paper, printed on both sides, and folded to
present 4 8½ x 11-inch pages. It states that "AcuTrax is a
unique cylinder tracking system for the compressed gas
industry," and details the benefits that will accrue to the
users of this system, which are listed under such headings
as "Provide superior asset protection," "Enhance customer
relations," and "Offer powerful marketing tools." The
materials conclude with the following paragraph:
Acu Trax is the cylinder tracking system
that takes you into the future.
Ser No. 74/421,648
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Combining state of the art cylinder
tracking software with Trovan's
transponder offers benefits not found in
any other cylinder tracking system.
Superior asset protection, enhanced
customer service, powerful marketing
tools and improved cylinder management
are just a few of the benefits you will
realize when you install Acu Trax.
When the Examining Attorney asserted that these
materials were merely advertising, and therefore were not
acceptable to evidence use of the mark on the goods,
applicant submitted a second set of specimens. The
declaration accompanying these specimens states that they
are screen print-outs of applicant's goods. They show an
approximation of the menu screen on which "Acu Trax" appears
near the top of the screen, and the text below the screen
includes such statements as "the databases created by Acu
Trax" and "The Utilities Menu is used for programs that
control the overall operation of Acu Trax." A reduced size
version of this specimen is reproduced below.

Ser No. 74/421,648
4
Although the Examining Attorney apparently would have
found such specimens acceptable for showing use of a mark on
the goods, he objected that the specimens did not evidence
use of the applied-for mark, since the specimens showed the
mark as "Acu Trax," and the mark shown in the drawing was in
the stylized form depicted on page 1 of this opinion.
Subsequent to the filing of the appeal applicant filed
yet a third set of specimens. These specimens appear to be
another version of the first set, using essentially
identical language. The primary difference is that these
brochures are in color, and are folded to present a six-,
rather than a four-, page layout. On remand, the Examining
Attorney found these specimens to be unacceptable to show
trademark use, asserting that they are merely advertising.
Applicant never discussed the issue of the
acceptability of its specimens in its brief, presumably
because it assumed that its substitute specimens would
resolve the problem. Nor, when the Examining Attorney
refused to accept the third set of specimens, did applicant
file a supplemental brief with respect to that issue. Thus,
the only argument we have with respect to applicant's
position is its statement, in response to the Examining
Attorney's refusal to accept the original set of specimens,
that these specimens "are designed to indicate origin, as
they detail the function of the software which is identified
by the trademark. These specimens are the equivalent of
Ser No. 74/421,648
5
displays associated with the goods." Response filed Aug.
23, 1994).
We agree with the Examining Attorney that the specimens
submitted by applicant are unacceptable to show trademark
use of the applied-for mark on computer software for
tracking compressed gas cylinders.
Section 45 of the Trademark Act states that "a mark
shall be deemed to be in use in commerce (1) on goods when
(a) 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...." The two sets
of brochures (the first and third specimens submitted by
applicant) appear to be mere advertising materials. It is
well established that specimens which constitute mere
advertising are not acceptable as specimens of trademark use
on goods. See in re Shipley Company, Inc., 230 USPQ 691
(TTAB 1986). Nor, despite applicant's assertion that the
first set are the equivalent of displays associated with the
goods, is there any basis in the record from which we can
reach such a conclusion. Applicant has not given any
information about how these brochures are distributed, such
that they could be considered displays associated with the
goods. Cf. In re Shipley Co. Inc., supra (prominent display
of the trademark on a trade-show booth where product
Ser No. 74/421,648
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literature is distributed and orders for the goods are taken
is a display associated with the goods).
As for the second set of specimens, the asserted screen
print-outs, they depict the mark as Acu Trax, rather than
the special form mark ACUTRAX shown in the application
drawing. Thus, these specimens do not evidence use of the
stylized mark sought to be registered.
Decision: The refusal of registration is affirmed.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board