AIXEP, Inc.

Trademark Trial and Appeal Board

Aug 31, 2020

86664663 (T.T.A.B. Aug. 31, 2020)

Mailed: August 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AIXEP, Inc.
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Serial No. 86664663
Serial No. 86664677
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Susan Kalra of Mahamedi IP Law LLP for AIXEP, Inc.

Anthony Rinker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Bergsman, Lykos and Greenbaum, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

AIXEP, Inc. (Applicant) seeks registration on the Principal Register for the marks
BACPAC, in standard character form,1 and BACPAC and design,2 reproduced below,
both for the services listed below:
Providing online computer databases in the field of
entertainment and in the field of education; on-line
journals, namely, blogs in the field of cultural commentary,
art, performing arts, music, dance, education, politics,

1 Serial No. 86664663 filed June 16, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce.
2 Serial No. 86664677 filed June 16, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce.
This Opinion Is Not a
Precedent of the TTAB

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culture, economics, science, food, beverages, travel, self-
improvement, self-fulfillment, personal experiences, and
personal knowledge, in International Class 41; and
Providing customized on-line web pages featuring user-
defined information, namely, blog posts in the fields of
cultural commentary, art, performing arts, music, dance,
education, politics, culture, economics, science, food,
beverages, travel, self-improvement, self-fulfillment,
personal experiences, and personal knowledge, in
International Class 42.

The description of the mark reads as follows:
The mark consists of the stylized term “bacpac” with “bac”
appearing in dark orange and the term “pac” appearing in
gold.
The color(s) dark orange and gold is/are claimed as a
feature of the mark.
After the USPTO published the applications for opposition and issued notices of
allowance, Applicant filed Statements of Use claiming first use of the marks
anywhere and in commerce as of March 26, 2018. However, the Examining Attorney
refused to register the marks on the ground that the specimens do not show use of
the marks in commerce. Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051
and 1127, and Trademark Rules 2.56(a) and 2.88(b)(2), 37 C.F.R. §§ 2.56(a) and
2.88(b)(2).3

3 In his briefs, the Examining Attorney cited Trademark Rule 2.34(a)(1)(iv), 37 C.F.R.
§ 2.34(a)(1)(iv) (requiring a specimen showing use of the mark with a use-based application),
as a basis for the refusals. However, as indicated above, Applicant filed the applications at
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We consolidate the appeals in these applications because they share common
issues of fact and law. See In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1102 (TTAB
2018); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1214 (2020). Citations to the record are to the file history of Application
Serial No. 86664663 unless otherwise indicated.4
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “service mark” as
follows:
The term “service mark” means 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 [Act], to identify and distinguish the
services of one person, including a unique service, from the
services of others and to indicate the source of the services,
even if that source is unknown….
Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the
applicant file a specimen or facsimile of the mark as used in commerce. A service
mark specimen must show a direct association between the mark and the services for
which the applicant seeks registration. Trademark Rule 2.56(b)(2); 37 C.F.R. §

issue based on Applicant’s bona fide intent to use the marks in commerce pursuant to Section
1(b) of the Trademark Act, 15 U.S.C. § 1(b). Accordingly, the Examining Attorney should have
cited Trademark Rule 2.88(b)(2), 37 C.F.R. § 2.88(b)(2) (requiring a specimen showing how
the applicant uses the mark with its Statement of Use) as he did in his May 9, 2018 Office
Actions.
4 References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket
system. Citations to the examination record refer to the Trademark Office’s online
Trademark Status & Document Retrieval system (TSDR), by page number. All citations to
the documents contained in the TSDR database are to the downloadable .pdf version of the
documents.
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2.56(b)(2). See also In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457
(CCPA 1973). A direct association is the minimum the specimen must show, and
specimen may establish that association textually, contextually, or logically. Id. A
specimen that shows only the mark with no reference to, or association with, the
services (as identified in the application) does not show service mark usage. See, e.g.,
In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas trees
that bear the mark TREE ARTS CO. and design and the applicant’s location, but
make no reference to services, failed to show use for “design services in the nature of
designing handcrafted, permanently decorated Christmas and designer trees”).
“Even though a service may be performed by a company’s software, the company
may well be rendering a service.” In re Job Diva, Inc., 843 F.3d 936, 121 USPQ2d
1122, 1126 (Fed. Cir. 2016).
To determine whether a mark is used in connection with
the services described in the registration, a key
consideration is the perception of the user. See Lens.com,
Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82 [103
USPQ2d 1672, 1676] (Fed. Cir. 2012) [“whether consumers
actually associate a mark with software, as opposed to
other services, is a factual determination that must be
conducted on a case-by-case basis.”].
Job Diva, 121 USPQ2d at 1126.
The question is whether a user would associate BACPAC with providing online
computer databases, blogs, and customized online webpages in the field of
entertainment, education, and cultural commentary, performed by Applicant, even if
Applicant’s smartphone application performs each of the activities comprising the
recitation of services. Id. In other words, the question is whether the evidence of
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Applicant’s use of its marks “sufficiently creates in the minds of purchasers an
association between the mark[s] and [Applicant’s] services.” In re Ancor Holdings, 79
USPQ2d 1218, 1221 (TTAB 2006).
As noted above, Applicant seeks to register its BACPAC marks for the services
listed below:
Providing online computer databases in the field of
entertainment and in the field of education; on-line
journals, namely, blogs in the field of cultural commentary,
art, performing arts, music, dance, education, politics,
culture, economics, science, food, beverages, travel, self-
improvement, self-fulfillment, personal experiences, and
personal knowledge, in International Class 41; and
Providing customized on-line web pages featuring user-
defined information, namely, blog posts in the fields of
cultural commentary, art, performing arts, music, dance,
education, politics, culture, economics, science, food,
beverages, travel, self-improvement, self-fulfillment,
personal experiences, and personal knowledge, in
International Class 42.
Applicant submitted the “screenshot of the mark as it appears in the user interface
of the product,” reproduced below, as the specimen for both classes.5 The specimen
shows that BACPAC is a smartphone application available at the Apple iStore in
iTunes.6 A smartphone application is software categorized in International Class 9.7

5 March 30, 2018 Statement of Use.
6 November 9, 2018 Response to Office Action (TSDR 1, 7, and 10-11) (“The substitute
specimens show that the application is available in the Apple iStore in iTunes, tagged as
social networking and displaying user generated content, which applicant respectfully
submits fits the description of Class 41.”).
7 Trademark ID Manual (“Smartphone application” defined as “downloadable DVR
sideloading software application for downloading DVR-recorded content for viewing on
smartphones.”).
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The Examining Attorney refused to accept the specimen for the services in Classes
41 and 42 because the “specimen consists of a screenshot of a smartphone application
bearing the mark. … Thus, it fails to show proper use of the applied-for mark in the
sale or advertising of the services.”8

8 May 9, 2018 Office Action (TSDR 1-2).
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In response to the refusal to accept the specimen, Applicant submitted a substitute
specimen that it identified as “screen shots of applicant’s website (www.bacpac.me)
showing use of the mark as used in commerce, and screen shots of the mark as seen
in the Apple iStore in iTunes.”9 In addition, Applicant explains,
The substitute specimens show that the application is
available in the Apple iStore in iTunes, tagged as social
networking and displaying user generated content, which
applicant respectfully submits fits the description of Class
41. In addition, applicant respectfully submits that the
backend is an online database that fits squarely within the
description of Class 42.10
We reproduce below the “what is bacpac” page from Applicant’s website.11 This
webpage is representative of the other webpages.

9 November 9, 2018 Response to Office Action (TSDR 2).
10 Id. at TSDR 1.
11 Id. at TSDR 7.
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We also reproduce below the screen shot of Applicant’s BACPAC product as
advertised on the Apple iStore.12 The Description at the bottom of the screen shot
reads as follows:
Bacpac holds at your fingertips cool ideas from the people
you love, organized in a private space … just the way you
want! Trusted recommendations from your go-to people to

12 Id. at 10.
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feed your passions and projects … with bacpac, you’ll never
go it alone.
Start by creating collections around topics you care about.
Add your own favorites and save cool stuff you discovery
every day … Invite your go-to people to contribute their
recommendations. Very soon, your Bacpac is full, and life
is so much easier! …
The Examining Attorney continued the refusal explaining,
A smartphone application good designed to perform
specific functions or to access specific content simply does
not show use of the mark for the 041 online databases or
class 042 webpage content regardless of potentially
related uses of the downloadable software. Downloadable
software is not an online database or webpage regardless
of the function of the application. Thus, it fails to show
proper use of the applied-for mark in the sale or advertising
of the services.13

13 December 10, 2018 Office Action (TSDR 2).
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In its Request for Reconsideration, Applicant submitted additional pages from its
website.14 Because the evidentiary value of the additional webpages is cumulative,
we do not reproduce any extracts here. The Examining Attorney denied the request
for reconsideration because the specimens do not show use of the mark in connection
with the services.15
Applicant contends that the Examining Attorney focused on the BACPAC
smartphone application rather than evaluating the services rendered by Applicant.16
With respect to the services in Class 41, “the entertainment activity would involve
the providing of information.”17
Applicant provides to its registered users an online
computer entertainment service, allowing users to create
collections of information in the form of images and text,
for example. The user’s collections can be customized by the
user by creating categories of information, such as beaches,
vacations, recipes, and so on. Thus, Applicant’s service
provides information as entertainment, and this is clearly
shown by applicant’s specimens.18
Likewise, with respect to Class 42, “Applicant’s services store user-generated
content for users, and thus the specimens show ‘electronic storage of data for other’
as demonstrated in the specimens submitted in connection with Applicant’s Request
for Reconsideration.”19

14 Applicant’s June 10, 2019 Request for Reconsideration (4 TTABVUE 10-29).
15 June 29, 2029 Denial of the Request for Reconsideration (5 TTABVUE 2).
16 Applicant’s Brief, pp. 15 and 18 (7 TTABVUE 18 and 21).
17 Id. at p. 14 (7 TTABVUE 17).
18 Id.
19 Id. at pp. 15-16 (7 TTABVUE 18-19).
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The original specimen is a screenshot of a smartphone application.20 The specimen
features the T-Mobile service provider with signal strength bars in the upper left
corner and the battery life in the upper right corner. In addition, the specimen does
not display Applicant’s URL as an additional indicator of the service provider. Based
on the specimen, consumers will associate BACPAC with a smartphone application
(i.e., software classified in International Class 9) rather than providing an online
computer database in the field of entertainment or education, providing an online
journal or blog, or providing customized on-line web pages featuring user-defined
information. Cf. In re Landmark Commc’n, Inc., 204 USPQ 692, 696 (TTAB 1979)
(holding that a publisher of a newspaper was not entitled to register the name of a
section of its newspaper for educational and entertainment services because it was
not qualitatively different from anything necessarily done in connection with the sale
of the goods).
The Board’s reasoning in Landmark Commc’n is applicable here.
To break down a newspaper, or any publication, into the
manifold and variegated kinds of articles, stories, reports,
columns, comics, advertising, and illustrations it contains
and to claim that each is a separate “service” for which a
mark (or several marks, e.g. the name of the paper, the
name of a section of the paper, and the name of a regular
column within a section of the paper) may be registered is
to ignore the commercial reality that a newspaper is a

20 The RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines the term “app,” inter alia, as
“an application, typically a small, specialized program downloaded onto mobile devices: the
best GPS apps for your iPhone.” Dictionary.com accessed August 7, 2020.
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re S. Malhotra & Co. AG,
128 USPQ2d at 1104 n.9; In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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tangible commodity purchased because of the variety of
reading material to be found and that a newspaper is
considered by its readers to be a single publication and not
a collection of services. The corner newsstand sells
publications printed and bound by publishers, not services
offered by a plethora of persons each purporting to provide
a personal service for every individual reader. Applicant
sells goods, not services for every individual reader.
Applicant sells goods, not services, and already owns a
registration for the trademark used on the goods here in
issue. There is no significant economic difference between
applicant as a publisher (manufacturer) of a periodical
(tangible product) and applicant as a provider of its alleged
services.
Id. In this case, Applicant is selling or licensing a smartphone application consumers
consider a single software product and not a collection of services that goes into
creating the application.
Likewise, the specimens comprising excerpts from Applicant’s website are online
advertisements for Applicant’s smartphone application. They are not advertisements
for an online computer database in the field of entertainment or education, providing
an online journal or blog, or providing customized on-line web pages featuring user-
defined information. A database in the field of entertainment or education, providing
an online journal or blog, or providing customized on-line web pages featuring user-
defined information are features of Applicant’s smartphone application not separate
and distinct activities comprising registrable services.
Decision: The refusal to register Applicant’s mark BACPAC, in standard
character form, and BACPAC and design are affirmed in each class.