Samick Music Corp.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 75063066 (T.T.A.B. Sep. 20, 2000)

Paper No. 22
CEW
9/20/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Samick Music Corporation
___________
Serial No. 75/063,066
___________
Wendy K. Buskop of Buskop Law Group for applicant.
Lisa W. Rosaya, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
____________
Before Hairston, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
This case concerns an application by the Samick Music
Corporation on the Principal Register for the mark
DIGIPLAYER for “acoustic and electronic pianos and
electronic musical keyboards.”1 Following publication of
the mark for opposition and issuance of the notice of
allowance, on January 1, 1997, applicant submitted a
Statement of Use accompanied by specimens consisting of an

1 Application No. 75/063,066, filed February 26, 1996, based on an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/063,066
2
advertisement. Following the Examining Attorney’s refusal
to register on the ground that the specimens did not
evidence use of the mark on the goods, applicant submitted
verified substitute specimens consisting of computer
diskettes with the mark appearing on a label thereon.
The Examining Attorney has issued a final requirement
for the submission of specimens showing use of the mark on
or in connection with the goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not held.
We begin with a preliminary procedural matter. In the
final paragraph of its appeal brief, applicant requested
that, if the Board finds its specimens inadequate,
applicant be given time to furnish adequate specimens or
amend the declaration accompanying the specimens. In its
order of June 18, 1999, the Board denied this request and
informed applicant that any request for remand at this
point must be supported by a showing of good cause or the
consent of the Examining Attorney. Applicant then waited
until the submission of its reply brief of August 30, 1999,
to submit a request for remand along with the verified
statement of an officer attesting to the use of the
originally submitted specimen as a display associated with
Serial No. 75/063,066
3
the goods at trade shows since at least as early as January
1999. “[R]emand in an ex parte appeal is a matter of
discretion with the Board, and the Board may refuse to
remand for consideration of an amendment filed more than
six months after the date of the action from which the
appeal was taken ….” Trademark Trial and Appeal Board
Manual of Procedure (TBMP), Section 1205. Applicant has
been on notice since April 15, 1998, the date of the first
refusal based on the insufficiency of the specimens
submitted with applicant’s Statement of Use, that the
specimens have been considered to be advertisements by the
Examining Attorney. It is not, as applicant argues, the
Examining Attorney’s responsibility to guess whether these
materials, which on their face are clearly advertisements,
have also been used as displays associated with the goods.
Instead of correcting what applicant now asserts is the
Examining Attorney’s misunderstanding of the original
specimens, applicant said nothing at the time and merely
submitted substitute specimens. Applicant has not
established good cause for remand at this time. Thus, its
request for remand is denied and the declaration submitted
with its reply brief has not been considered.
Serial No. 75/063,066
4
We now turn to the issue before us, whether the
substitute specimens submitted by the applicant on August
10, 1998, are acceptable specimens of trademark use.2
The specimens are computer diskettes bearing labels
upon which the mark appears as follows:
Applicant explains in its brief that the specimens are
“copies of demo disks shipped with the Digiplayer pianos ….
The demo disks demonstrate the operation of the pianos and
are tantamount to an instruction manual.” Applicant

2 In its brief, applicant continues to argue that the originally
submitted specimens are acceptable. In view of our finding above that
we will not consider the declaration submitted with applicant’s reply
brief, we conclude that the specimens originally submitted are clearly
merely advertisements. Although the goods are pictured in the
advertisement, the mark does not appear on the goods, rather it appears
in the advertising copy. As such, these advertisements are not
acceptable specimens of trademark use of DIGIPLAYER on the identified
goods. We consider the text of the advertisements in our opinion,
infra, merely for the information conveyed therein about the nature of
the goods.
Serial No. 75/063,066
5
contends that the demo disks “are an integral part of the
product being sold, as would be an instruction manual.”
The advertisement submitted with the Statement of Use
refers to applicant’s piano as “a leading edge digital
piano”; that it “possesses all the general MIDI voices
needed to reproduce the rhythm and accompaniment programs”;
that it is “[c]apable of playing almost all currently
available piano software”; and that “[a] full 8 Meg General
MIDI Sound Engine by E-Mu, 16 bit Sampling, 32 note
polyphony, 8-track Standard MIDI File Sequencer and a
custom-made rhythm accompaniment section are all neatly
tucked away in your choice of five different cabinet
finishes.” We take judicial notice of the definition of a
MIDI file3 as follows:
Musical Instrument Digital Interface file. A set
of instructions for a computer or synthesizer to
play a certain musical composition. The MIDI
file does not include actual sounds, but
information on how to make the sounds. The MIDI
instructions include the notes played, length of
notes, instruments, volume, rhythm, etc.
Sections 1(a)(1)(C) and 1(d)(1) of the Trademark Act,
15 U.S.C. 1051(a)(1)(C) and (d)(1), require the submission
in an application of specimens of the mark “as used.”
Trademark Rule 2.56, 37 CFR 2.56, requires the submission

3 Computer Currents High-Tech Dictionary (1999); submitted by the
Examining Attorney with her brief.
Serial No. 75/063,066
6
of “specimens of the trademark as used on or in connection
with the goods in commerce.” As applicant notes, the
Board, in In re Ultraflight Inc., 221 USPQ 903 (1984), made
it clear that if printed matter included with goods
functions as an integral part of the goods, such as a
manual for assembling a kit for the product, placement of
the mark on that printed matter constitutes use on the
goods. Moreover, the Board concluded, in In re Brown
Jordan Co., 219 USPQ 375 (1983), that it is not necessary
that purchasers see the mark for the goods before they
purchase the goods.
From the information on the advertisement and
applicant’s explanation, it is clear that applicant’s goods
require software to operate; and that the software
contained on the demo disk specimen is used to demonstrate
the operation of the goods and is shipped with the goods.
Clearly, these demo disks are an integral part of the goods
themselves and, therefore, they constitute acceptable
specimens of trademark use. It is an immaterial difference
that the specimens are software rather than printed
manuals.
Serial No. 75/063,066
7
Decision: The refusal on the ground that the
specimens are unacceptable evidence of trademark use is
reversed.
P. T. Hairston
C. E. Walters
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board