Film E.C. NetDownload PDFTrademark Trial and Appeal BoardJul 10, 2009No. 76448429 (T.T.A.B. Jul. 10, 2009) Copy Citation Mailed: 10 July 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Film E.C. Net ________ Serial Nos. 76448428 and 76448429 _______ Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for Film E.C. Net. Heather D. Thompson, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Drost, and Bergsman, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On September 11, 2002, applicant Film E.C. Net, a Nevada corporation, filed two intent-to-use applications to register the mark EMPOWER PRODUCTION MANAGEMENT SYSTEMS in typed or standard character form on the Principal Register for: No. 76448428: Administration of business payroll for others; and employment hiring, recruiting, placement, and staffing in Class 35. Consulting services in the production of motion pictures, television programs, documentaries, music videos, live stage productions, commercials, government films, industrial films, and military THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. Nos. 76448428 and 76448429 2 films; and entertainment event planning and scheduling in Class 41. No. 76448429: computer software for tracking and facilitating the production of motion pictures, television programs, documentaries, music videos, and other entertainment events or programs, scheduling events, paying employees and consultants, and contacting potential employees and consultants therefor in Class 9. Subsequently, applicant filed Statements of Use that allege November 2002 as the dates of first use anywhere and first use in commerce for all the classes. The applications also disclaim the words “Production Management Systems.” The examining attorney has refused registration on the ground that “the specimens fail to show use of EMPOWER PRODUCTION MANAGEMENT SYSTEMS for the applicant’s services.” ‘428 Brief at unnumbered p. 9 and ‘429 Brief at unnumbered p. 10 (“for the applicant’s software goods”). See 15 U.S.C. §§ 1051, 1052, 1053, and 1127; 37 CFR §§ 2.56 and 2.88. We have set out the service mark specimens from Serial No. 76448428. We have chosen to include the specimens that applicant submitted with its requests in both applications for reconsideration (p. 1) that applicant describes as “a complete display of Applicant’s website.” The examining attorney agrees that these specimens “are more legible copies of the webpage excerpts filed with the Ser. Nos. 76448428 and 76448429 3 Statement of Use.” ‘428 Brief at 2. See also ‘429 Brief at 2. First page: Second page: Applicant also submitted the following substitute specimen in both applications: Ser. Nos. 76448428 and 76448429 4 Some uses of applicant’s mark in the text of the document (emphasis in original) follow: EMPOWER is the developer, licensor and distributor of the EMPOWER PRODUCTION MANAGEMENT SYSTEM, a powerful, new software solution that will: Streamline arcane and primitive film and television production management processes… [p.2] EMPOWER’s production management system will serve the unique challenges of entertainment production now… [p.6] Each of these markets is maturing, and the demand is growing for sophisticated, complex and higher-budget films. All of these films and TV centers will benefit from EMPOWER’s production management features. [p.7] The specimens submitted for the trademark in Serial No. 76448429’s statement of use are: The specimens in the ‘429 application are similar to the ‘428 specimens. Ser. Nos. 76448428 and 76448429 5 Because the issues and evidence are similar, we have chosen to issue one opinion that addresses applicant’s two applications. Arguments The examining attorney argues that the “latter specimen [the Executive Summary] clearly conveys the fact that applicant is primarily a software development company whose proposed mark EMPOWER PRODUCTION MANAGEMENT SYSTEMS serves to describe a software tool. A business summary sent to potential investors is provisionally lacking as a specimen and in this case, only reinforces the promotional nature of the webpage evidence.” ‘428 Brief at 3-4. See also ‘429 Brief at 4-5 (“The language of both the webpage excerpts and Executive Summary is descriptive and laudatory, but provides no indication that the mark is actually in use for the software. That is, the webpage simply answers the general question about the applicable field and the context of use… The Executive Summary speaks in terms of what the software solution will do”). Applicant maintains that its “webpage prominently features Applicant’s mark and clearly identifies Applicant’s services, particularly Applicant’s ability to streamline ‘the production of entertainment content’ so productions are ‘more efficient and cost effective.’ The Ser. Nos. 76448428 and 76448429 6 webpage then identifies the contact information for Applicant, and lists email address links pertaining to both general information and sales. Similarly, the Executive Summary prominently and repeatedly features Applicant’s mark, and clearly identifies Applicant’s services throughout its corpus.” ‘428 Brief at 8 (emphasis omitted). Regarding the trademark specimen, applicant argues that its “webpage specimen should be accepted as a point-of-sale display.” ‘429 Brief at 7. “Applicant’s website clearly provides a means of ordering Applicant’s computer software. Most importantly, Applicant’s website expressly includes a link to an email address entitled ‘sales@empowerproduction.com.’” Id. at 9. Discussion Service Mark Specimens (the ‘428 application) The Trademark Act provides that a service mark is “any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person….” 15 U.S.C. § 1127. “It is not enough for the applicant to be a provider of services; the applicant also must have used the mark to identify the named services for which registration is sought.” In re Advertising & Marketing Ser. Nos. 76448428 and 76448429 7 Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). Trademark Act § 1(a)(1) (15 U.S.C. § 1051(a)(1)) requires an applicant who is the owner of a trademark used in commerce to file “such number of specimens or facsimiles of the mark as used as may be required by the Director.” The Office currently requires the submission of one specimen for use-based applications (37 CFR § 2.56(a)). “To show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.” TMEP § 1301.04(a) (5th ed. rev. September 2007). See also 37 CFR § 2.56(b)(2) (“A service mark specimen must show the mark as actually used in the sale or advertising of the services”). The requirement that a mark must be “used in the sale or advertising of services” to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor. In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (emphasis added). Ser. Nos. 76448428 and 76448429 8 This association must be between the mark and the actual services for which applicant is seeking registration. In re wTe Corp., 87 USPQ2d 1536, 1542 (TTAB 2008) (“[W]hile the specimen may suggest that applicant is providing some type of goods or services, it is not at all clear from applicant’s specimen… that it is providing the specific service for which it seeks registration”). See also In re Monograms America Inc., 51 USPQ2d 13317, 1319 (TTAB 1999) (“While these notations might be interpreted as an indication that this is an association or ‘network’ of ‘embroidery stores,’ there is no indication as to the purpose or activities of this association. There is no reference whatsoever to any type of consultation service, even in the area of monogramming per se, much less in the management of, or advertising for, the stores offering this monogramming”). Here, the original service mark specimens (including the more complete specimen that applicant submitted in its request for reconsideration) refer to “The Industry’s First Real Time Production Management Tool.” In addition, the specimen contains the following sentences: “EMPOWER PRODUCTION MANAGEMENT SYSTEM is the developer, licensor and distributor of EMPOWER, a powerful, new software system that makes the production of entertainment content more Ser. Nos. 76448428 and 76448429 9 efficient and cost-effective. EMPOWER’s production management system will serve the unique challenges of entertainment content….” None of these references refer to the services in the application. One use refers to Empower Production Management Systems as “the developer, licensor and distributor,” which is a reference to applicant, perhaps as a trade name, not to the services. Other times the specimens use the term “tool” and “a software system,” which appear to refer to goods and not services. Applicant argues that: Much like the situation described above in [In re Ancor Holdings LLC, 79 USPQ2d 1218 (TTAB 2006)], Applicant is clearly rendering services under the mark, even though these services rely upon software… Applicant’s perspective customers presumably would be seeking Applicant’s business “tool” to revive the benefit of these services. Thus, similar to the use of the term in Ancor Holdings, Applicant’s use of the term “tool” is likely perceived by purchasers to refer to administrative and consultative services offered by Applicant. Brief at 10. The facts in Ancor Holdings are significantly different from the present facts. In that case, the applicant’s specimens clearly invited potential customers to its website to use its services. 79 USPQ2d at 1221 (“The fact that the word ‘tool’ appears on the specimen does not automatically associate the mark with computer software. Although it may well be software that is Ser. Nos. 76448428 and 76448429 10 generating the reminders and scheduling, in today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software”). In the present case, applicant’s specimens do not invite customers to use its services at its website. If anything, they refer to a “software system” and the term “tool” would be perceived as a reference to that software that applicant intends to distribute. The last page of the original specimen simply includes the term EMPOWER PRODUCTION MANAGEMENT SYSTEMS and contact information. Interestingly, the contact information mailing address only includes two lines, one for the street and the other for the city, state, and zip code. No company name is given, which would lead many potential purchasers to assume that “Empower Production Management Systems” is the trade or company name of the entity. This, of course, is consistent with how applicant referred to Empower Production Management Systems as a “developer, licensor and distributor.” The substitute specimen (the Executive Summary at 2) again refers to Empower as “the developer, licensor, and distributor of the “EMPOWER PRODUCTION MANAGEMENT SYSTEM, a Ser. Nos. 76448428 and 76448429 11 powerful, new software solution.” We agree with the examining attorney’s conclusion that “[t]here are no references to services in this detailed Executive Summary, and no indications that the Applicant is itself providing either of the services in Classes 35 or 41.” Brief at 7. As the examining attorney explained: The following language appears on the specimen, from the Executive Summary: - development of system upgrades and future releases (p. 5) - offering Release 1.0, Release 2.0. and beta testing of the product (p. 3) - indicating that Empower’s product specification [has] been fully validated by industry experts and are ready for market once product coding and QA are completed (p. 3) - simultaneous use [of the software] by an unlimited number of authorized uses (p. 8) There are no references to services in this detailed Executive Summary, and no indication that the Applicant is itself providing either of the services identified in Classes 35 or 41. Id. In addition, the Executive Summary itself is not a valid specimen of service mark usage because it appears to be designed for investors and it discusses future marketing efforts. In re Port Authority of New York, 3 USPQ2d 1453, 1455 (TTAB 1987)(“The use of a mark in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot Ser. Nos. 76448428 and 76448429 12 support registration.”). The cover of the specimen, which is marked “Confidential,” specifically indicates that: “This document contains forward-looking statements which are contingent upon the receipt of adequate investor funding… This document is transmitted by the management of EMPOWER LLC only to qualified investment candidates and is not intended for redistribution or publication.” Therefore, even if there was an association between the mark and the identified services this would not be a good service mark specimen. Intermed Communications, Inc. v. Chaney, 197 USPQ 501, 507 (TTAB 1977): Even if we accept applicant’s contention that one thousand copies of the Progress Report dated February 6, 1975 were mailed out prior to the filing date of the application, there would still have been no public use of the mark prior to the filing date because the Progress Report did not even mention the services identified in the application. A specimen which shows an alleged mark but which makes no reference to the services offered or performed thereunder is not evidence of service mark use. Furthermore, the mailing was not directed to prospective users of those services but, if anything, was a solicitation to prospective donors of money to enable the Dooley Foundation to offer those services. Although the definition of use of a service mark in Section 45 of the Trademark Act is less concrete than the definition of use of a trademark, it is nonetheless clear that, at the very least, there must be an open and notorious public offering of the services to those for whom the services are intended. Applicant argues that its specimen “will be perceived by the relevant purchasers as identifying Applicant’s Ser. Nos. 76448428 and 76448429 13 services” and that the “Office must take a flexible approach to the acceptance of specimens.” Brief at 5 and 10). “To determine what the perception of a term is, we must look to the specimens of record which show how the term is used in the marketplace.” In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986). In this case, the evidence does not support applicant’s argument. See, e.g., Specimen (“EMPOWER PRODUCTION MANAGEMENT SYSTEM is the developer, licensor and distributor of EMPOWER, a powerful, new software system”). As the Ancor Holdings case explained: “[W]e must base our determination of public perception of applicant’s mark on the manner of use of [the mark] in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record bearing on the question of what impact applicant’s use is likely to have on purchasers and potential purchasers.” 79 USPQ2d at 1220 (internal quotation marks omitted). Even if there was some evidence that applicant is offering services under its mark, it would not relieve applicant of the requirement to show that it “used the mark to identify the named services for which registration is sought.” Advertising & Marketing Ser. Nos. 76448428 and 76448429 14 Development, 2 USPQ2d at 2014. Applicant’s evidence does not do this. With the specimens of record, there is simply no direct association between the mark EMPOWER PRODUCTION MANAGEMENT SYSTEMS and applicant’s business payroll administration and employment hiring, recruiting, placement, and staffing services and consulting services. In re DSM Pharmaceuticals Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008) (“[T]he term LIQUIDADVANTAGE in this specimen clearly refers to a proprietary software by that name. Nowhere does the specimen show a direct association between use of the proposed LIQUIDADVANTAGE mark and ‘custom manufacturing of pharmaceuticals featuring liquid fill and finish technology’… [E]very description and explanation of LIQUIDADVANTAGE on the specimen refers to the capabilities and the purported advantages of the LiquidAdvantage software alone”). Therefore, we affirm the examining attorney’s refusal to register applicant’s mark in Serial No. 76448248 on the ground that it does not demonstrate use of the mark as a service mark for the identified services. Ser. Nos. 76448428 and 76448429 15 Trademark Specimens (the ‘429 application) Next, we look at whether the specimen in the ‘429 application demonstrate use of the mark for the goods identified in the ‘429 application. The examining attorney maintains that the “the webpage simply answers the general question about the applicable field and the context of use” and the Executive Summary “does not demonstrate actual use on or in connection with the goods.” Brief at 4-5. Applicant argues that its webpage is a point-of-sale display and that “specimens should be accepted because the nature of Applicant’s goods makes the submission of more traditional specimens impractical.” Brief at 5. For goods, a “mark shall be deemed to be in use 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 … [and] the goods are sold or transported in commerce.” Trademark Act Section 45, 15 U.S.C. § 1127. Implementing this statutory provision, Trademark Rule 2.56(b)(1) (37 CFR § 2.56(b)(1)) currently provides that: A trademark specimen is a label, tag, or container for the goods, or a display associated 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. Ser. Nos. 76448428 and 76448429 16 In a case discussing the display of the mark for software, the board noted that: We find that software providers may make products available through downloading or by distributing CD- ROMS. Use of applicant’s mark in conjunction with such procedures would clearly qualify as use on the goods. It is not uncommon for a software provider to display its product marks or relevant corporate logos on computerized images created by distributed software, or on the website page where licensed users are given authorized access to the software product. In either of these cases, an applicant would simply submit to the Office a screen-print from the appropriate access screen. Moreover, if applicant actually ships blank, multi-layered CD-ROM’s to pressing houses, one could use the mark on inserts associated with the goods, or the shipping labels could easily be designed with applicant’s product marks or relevant corporate logos. Hence, based on this entire record, we find that it is not impracticable, in this case, for applicant to have chosen to do any of these things. In re Settec Inc., 80 USPQ2d 1185, 1190 (TTAB 2006). Here, applicant has simply not submitted evidence to demonstrate why it is not possible to use its mark on its software in a more traditional manner. If applicant is asserting that the nature of its product precludes it from creating a display associated with the goods that satisfies the requirements of the Trademark Act… then applicant may not be able to rely on a display associated with the goods as its evidence of trademark use, but rather would have to submit evidence of a different manner of use. Applicant’s apparent recognition that its webpage does not comply with the requirements for a display associated with the goods only reinforces our own conclusion that it is not acceptable. In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006). Ser. Nos. 76448428 and 76448429 17 Turning next to the point-of-sale issue, the TMEP sets out factors for examining attorneys to consider when determining whether webpages are point-of-sale displays. “Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices.” TMEP § 904.03(g) (5th ed. rev. September 2007). A website page that displays a product, and provides a means of ordering the product, can constitute a “display associated with the goods,” as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. The Trademark Trial and Appeal Board has held that web pages that display goods and their trademarks and provide for online ordering of such goods are, in fact, electronic displays which are associated with the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. The web page is thus a point of sale display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). However, an Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (“[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way Ser. Nos. 76448428 and 76448429 18 that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone.”). TMEP § 904.03(i). See also TMEP § 904.03(h): Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders). However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. The board has held that “[w]eb pages which display goods and their trademarks and provide for the on-line ordering of such goods are, in fact, electronic displays associated with the goods. Such uses are not merely advertising because in addition to showing the goods and features of the goods, they provide a link for ordering the goods.” Dell, 71 USPQ2d at 1727. In In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB 2007), the board found that the following webpage described as follows was acceptable as a specimen: the webpage contains a link to an online catalog, and, under the heading “Service and Support,” toll free phone numbers and web links to customer service, technical support and “an instant link [via the “Go ValPro” button] to our Technical Resource Center.” Ser. Nos. 76448428 and 76448429 19 In the present case, applicant’s webpage specimens of record contain the following information: The Industry’s First Real Time Production Management Tool What is Empower EMPOWER PRODUCTION MANAGEMENT SYSTEM is the developer, licensor and distributor of EMPOWER, a powerful, new software system that makes production of entertainment content more efficient and cost-effective. Empower News Check here for upcoming announcements of the availability of the EMPOWER system. Value Proposition Empower’s production management system will serve the unique challenges of entertainment content production now, when industry profit margins are shrinking dramatically, and the pressure to reduce costs is more intense than ever before. Here, applicant’s specimen does not contain any information normally associated with ordering products via the telephone or the Internet as in Dell or Valenite. For instance, there is no sales form, no pricing information, no offers to accept orders, and no special instructions for placing orders anywhere on the specimen. At best, applicant’s specimen has included an email address for “sales@empowerproduction.com.” The simple fact that potential customers can send an email to “sales” does not convert an ordinary advertising display into a display associated with the goods. By definition, advertising means “to announce or praise (a Ser. Nos. 76448428 and 76448429 20 product, service, etc.) in some public medium of communication to induce people to buy or use it.” The Random House Dictionary of the English Language (unabridged) (2d ed. 1987) (emphasis added). We take judicial notice of this definition. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Therefore, to be more than mere advertising, a display associated with the goods must do more than simply promote the goods and induce people to buy them; that is the purpose of advertising in general. The specimen must not only show a picture of the goods in close proximity to the mark, but it must be “calculated to consummate a sale.” In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979). See also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (A “list of distributors and a link to their websites” was not sufficient to make the webpage a display associated with the goods). A simple email address or phone number is not sufficient to do this and adding the word “sales” to the email address does not establish that the advertising is now a point-of-sales display. The specimens submitted by the applicant do not include a sales form, a price for the goods, or any of the other information normally associated with ordering goods via phone or mail. A phone number, an Internet address and a mailing address are included Ser. Nos. 76448428 and 76448429 21 but no offers to accept orders or special instructions on placing orders appear anywhere on the specimens. The applicant argues that the inclusion of computer system requirements shows that the specimens are to be used to order the goods. Many different manufacturers of consumer goods routinely provide performance characteristics and/or statistical data about the use and abilities of their goods in their advertisements. Such advertisements, even when including a phone number and/or mailing address for the manufacturers of such … goods [,] would not be perceived by consumers as catalogs. Consumers would view such materials merely as informational advertisements, just as they would view the applicant’s specimens. Thus the specimens do not contain adequate information for routinely and easily placing orders for the goods. Proper catalogs would contain such information. In re MediaShare Corp., 43 USPQ2d 1304, 1306 (TTAB 1997) (quoting the examining attorney with approval). Applicant’s webpage contains little actual information about applicant’s goods and it is not clear how the goods would be routinely and easily ordered through the website as the Dell and Valenite specimens did. While the use of the email address may eventually result in sales, it appears to be no more calculated to do so then any corporate contact email address or phone number that would result in the call or email being referred to the sales office. The examining attorney also points out that “neither the webpages nor Executive summary includes a picture of applicant’s software tool, in use or otherwise.” Brief at 7. See TMEP § 904.03(h). We agree. Applicant’s specimens Ser. Nos. 76448428 and 76448429 22 fail to include such a picture and therefore do not meet the definition of a point-of-sale display. Furthermore, applicant’s Executive Summary, as discussed previously, is on its face directed to investors and not potential customers. It would be an offer to induce people to invest in the company as opposed to a display used in association with the sale of applicant’s goods. Thus, we conclude that applicant’s specimens do not show use of the mark as a trademark for the identified goods. Decision: The examining attorney’s refusals to register the term EMPOWER PRODUCTION MANAGEMENT SYSTEMS as a service mark for the services in Serial No. 76448428 and as a trademark for the goods in Serial No. 76448429 on the ground that the specimens fail to show that the mark is used as a service mark and trademark for the identified goods and services are affirmed. Copy with citationCopy as parenthetical citation