Cybeye, Inc.

Trademark Trial and Appeal Board

Oct 19, 2020

87315962 (T.T.A.B. Oct. 19, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cybeye, Inc.
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Serial No. 87315962
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Edward F. Behm, Jr. of Armstrong Teasdale LLP,
for Cybeye, Inc.
Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
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Before Zervas, Kuczma and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Cybeye, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
CYBEYE IMAGE (in standard characters) for:
Electronic publishing services, namely, publishing of online works of
others featuring electronic media, multimedia contents, videos, movies,
pictures, images, text, photos, and user-generated content featuring
videos, movies, pictures, images, text, photos via the Internet and other
communications networks; electronic publishing of blogs of others in
International Class 41.1

1 Application Serial No. 87315962, filed on January 27, 2017.
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The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R.
§§ 2.34(a)(1)(iv), 2.56(a), for failure to submit an acceptable specimen for its services
on the ground that all the specimens Applicant filed in support of its application do
not show the applied-for mark in use in commerce in connection with any of the
services specified in International Class 41 in the Statement of Use. Applicant and
the Examining Attorney filed briefs. We affirm the refusal to register.
I. Relevant Prosecution History
Applicant filed the CYBEYE IMAGE service mark application based upon
Applicant’s allegation of a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). For purposes of this appeal, the
prosecution history of the application prior to publication of the mark for potential
opposition on June 13, 2017 is unremarkable.
With no oppositions or requests for extension of time to oppose having been filed,
the U.S. Patent and Trademark Office (“USPTO”) issued a Notice of Allowance for
the application on August 8, 2017. Applicant requested two extensions of time to file
its Statement of Use, which the USPTO granted.
On August 8, 2018, Applicant filed its Statement of Use, accompanied by the
following specimens, describing them as “graphic images of Applicant’s marketing
and advertising materials showing use of the mark with a description of the
services”:2

2 Statement of Use, and specimens, of August 8, 2018 at TSDR 2, 5-8.
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Serial No. 87315962

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Under the company name “CybEye Image Inc.” on the first page, it states “Open
iTunes to buy and download apps.” Under the company name on the second page,
there is a description of the CloudTV app that “allows premium users and reporters
to build and promote their own premium content.” Under the company name on the
third page, there are multiple names and logos of what appear to be Applicant’s apps
available for download from Google Play.
In a first Office Action, the Examining Attorney rejected these specimens because
they do:
not show the applied-for mark in use in commerce in connection with
any of the … services specified in International Class[] 41 in the
statement of use. … Specifically, the specimen[s] consist[] of marketing
materials for various software applications. The specimen[s] [are] not
acceptable for applicant’s Class 41 services because there is no reference
to applicant providing these services anywhere on the specimen[s].3

3 Office Action of August 20, 2018 at TSDR 1-2.
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In response, Applicant provided the following substitute specimen of use ; with no
description of what the specimen purported to be:4

4 Specimen accompanying Office Action Response of February 20, 2019 at TSDR 5-7.
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At the top of the web page is the name “GARRIKIDS” followed by the company name
“CybEye Image Inc.” and the word “Entertainment.” The app is described in the
middle of the page as providing “kids with popular cartoons, shows, and drawing
lessons.” At the bottom of the page, under “Additional Information,” it says “Offered
By CybEye Image Inc.”
In a final Office Action, the Examining Attorney rejected this substitute specimen
because it:
does not show the applied-for mark in use in commerce in connection
with any of the … services specified in International Class[ ] 41 in the
statement of use. … Specifically, the specimen shows the mark as
“Cybeye Image Inc.” used on the Google Play app store for a
downloadable software program. The specimen does not demonstrate
that applicant is providing any of the services listed in its Class 41
identification. There is no reference to applicant providing electronic
publishing services anywhere on the specimen.5
In response, Applicant appealed and requested reconsideration.6 With the
Request for Reconsideration, Applicant provided the following further substitute

5 Office Action of March 5, 2019 at TSDR 2.
6 Notice of Appeal of September 5, 2019, 1 TTABVUE; Request for Reconsideration of
September 5, 2019.
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specimens of use, describing them as “videos of Applicant’s marketing and advertising
materials showing use of the mark with the description of services”:7

7 Specimen accompanying Request for Reconsideration of September 5, 2019 at TSDR 7-9.
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This third and final specimen appears to be a YouTube channel page, established by
Applicant. At the top of the YouTube page is the company names “CybEye Image Inc.”
and “CybEye Image.” The remainder of the page appears to show links to videos
published to the page by or on behalf of Applicant.
Applicant’s Request for Reconsideration subsequently came to the Board’s
attention. The Board therefore suspended proceedings in the appeal, and remanded
the application to the Examining Attorney for further consideration.8
Denying Applicant’s Request for Reconsideration,9 the Examining Attorney
rejected the further substitute specimens because:
In its [September 5, 2019 Request for Reconsideration], applicant
submitted what it describes as “videos of Applicant’s marketing and
advertising materials showing use of the mark with the description of
services.” The specimens appear to be webpage screenshots from the
YouTube website. There is no reference to applicant providing
publishing services in connection with the CYBEYE IMAGE mark.

8 Board Order of December 13, 2019, 6 TTABVUE 1-2.
9 Denial of Request for Reconsideration of December 23, 2019, 17 TTABVUE 2.
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There is no reference to publishing services on any of the three
submitted screenshots.

* * *

Applicant’s substitute specimens show that it is merely one user of the
YouTube website, and that it may upload its own videos to the YouTube
website. Applicant has not provided any evidence demonstrating that it
provides publishing services or that it even uploads the online works of
others.

Furthermore, a review of the YouTube website shows that applicant
merely has a “channel” on YouTube, and that “channel” features 29
videos, most of which are over a year old. Additionally, the videos on the
“channel” appear to be applicant’s own videos, as evidenced by the
“Cybeye Image” logo featured in the top or lower portion of the screen.
… Applicant has not provided any sufficient specimens demonstrating a
connection between the mark and publishing of online works of others
or electronic publishing of blogs of others.
After the Examining Attorney denied the Request for Reconsideration, the Board
resumed the appeal.10
II. Contentions of Applicant and the Examining Attorney
On appeal:
Applicant [states it] has submitted several web-page specimens, that
adequately and sufficiently demonstrate the mark, CYBEYE IMAGE, in
commerce [describing its gaming platform, streaming app, and social
app available for sale, and that it has published videos for viewing].
Applicant believes [the] specimens that demonstrate the use in
commerce are the web-pages, which meet the criteria of an electronic
display specimen. Therefore, Applicant respectfully submits that these

10 Board Order of February 13, 2020, 9 TTABVUE 1. Inasmuch as the Denial of the Request
for Reconsideration issued after Applicant filed its Appeal Brief, Applicant was allowed
additional time to file a supplemental brief. After the expiration of time for the submission
of a supplemental brief elapsed without the filing of a supplemental brief, the file was
forwarded to the Examining Attorney who submitted an Appeal Brief answering Applicant’s
Brief.
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specimens demonstrate the mark in commerce and the applied-for mark
is entitled to registration.11
Applicant provides no further argument in support of the appropriateness of its
specimens filed in support of its Application for services in Class 41.
The Examining Attorney contends that:
Applicant has failed to submit an acceptable specimen for [the services
in] Class 41, and refusal is accordingly appropriate under Trademark
Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127. … It is not disputed that
Applicant is using its mark in commerce. What is in dispute is whether
Applicant is using its mark in direct connection with the specific services
listed in the identification. In the present case, there is no nexus
between the applied-for mark and Applicant’s publishing of online works
of others or its electronic publishing of blogs of others.12
III. Applicable Law and Analysis
The term “service mark” means “any word, name, symbol, or device, or any
combination thereof … used by a person … to identify and distinguish the services of
one person … from the services of others and to indicate the source of the services
….” Trademark Act Section 45, 15 U.S.C. § 1127. “[A] mark shall be deemed to be
in use in commerce … on services when it is used or displayed in the sale or
advertising of services and the services are rendered in commerce … and
the person rendering the services is engaged in commerce in connection with the
services.” Id.
Pursuant to the Trademark Rules of Practice:
[A] statement of use under [Trademark Rule 2.88, 15 U.S.C.] § 2.88, …
must include one specimen per class showing the mark as actually used
in commerce on or in connection with the … services identified. … A

11 Appeal Brief, 4 TTABVUE 7-8.
12 Examiner’s Brief, 7 TTABVUE 5, 7.
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service mark specimen must show the mark as used in the sale of the
services, including use in the performance or rendering of the services,
or in the advertising of the services. The specimen must show a
direct association between the mark and the services .
Trademark Rules 2.56(a) and 2.56(b)(2), 15 U.S.C. §§ 2.56(a) and 2.56(b)(2) (emphasis
added).
For a service mark specimen to demonstrate a direct association between the
mark and the services, the mark must be shown “in a manner that would be perceived
by potential purchasers as identifying the applicant’s services and indicating their
source via a ‘direct association.’” In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624
(TTAB 2008); see also In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016)
(“A specimen that shows only the mark with no reference to, or association with, the
services does not show service mark usage.”).
All of Applicant’s specimens submitted in connection with the CYBEYE IMAGE
application are copies of website pages. Webpages from an applicant’s or a third-
party’s website may be submitted. This type of specimen is acceptable if it shows the
mark used in advertising or offering the identified services and creates the required
direct association by referring to the services and by showing the mark being used to
identify and distinguish the services and their source. In re Florists’ Transworld
Delivery, Inc., 119 USPQ2d 1056, 1062 (TTAB 2016); In re Osmotica Holdings Corp.,
95 USPQ2d 1666, 1668 (TTAB 2010). The “direct association” test is the same for
website specimens as for any other submitted specimen of service mark use. In re
Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) (“[T]he test for
an acceptable website-based specimen, just as any other specimen, is simply that
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it must in some way evince that the mark is ‘associated’ with the … services as an
indicator of source.” (emphasis added)). Thus, “‘[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 ….’” In re Metriplex, Inc., 23 USPQ2d 1315, 1316
(TTAB 1992) (quoting Intermed Communc’n, Inc. v. Chaney, 197 USPQ 501,
507 (TTAB 1977)).
Applicant’s first specimens submitted with its Statement of Use show the
company name “Cybeye Image Inc.” in connection with software apps13 available for
download on the iTunes and Google Play platforms. They do not advertise or show
service mark use in connection with the “publishing of online works of others” or the
“electronic publishing of blogs of others.” Applicant’s second, substitute specimen
submitted with its response to the first Office Action once again shows the company
name “Cybeye Image Inc.” in connection with a software app available for download
on the Google Play platform. The substitute specimen is unacceptable for the same
reason.
Applicant’s third, substitute specimen submitted with its Request for
Reconsideration shows the mark CYBEYE IMAGE in connection with multiple

13 “Software applications (‘apps’) for smartphones and computer tablets are now commonly
used to provide online services. Apps are simply the interface that enables the providers of
the services to reach the users and render the services, and the users to access those services.
Common specimens for such apps are usually screenshots of electronic devices showing the
apps rendering the services. Such a specimen will not always depict proper service-mark use
of the mark in connection with the identified services unless the displayed screenshot clearly
and legibly shows the mark associated with the identified services as the services are
rendered or performed via the app. Mere depiction of the mark in the screenshot without
sufficient depiction of the activity identified in the services does not establish service mark
use….” TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1301.04(h)(iv)(D) (Oct. 2018).
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images of what appear to be Applicant’s own video clips available for viewing on its
channel on the YouTube platform.14 Applicant’s YouTube channel nowhere associates
the CYBEY IMAGE mark with the services recited in the application.
We therefore agree with the Examining Attorney that Applicant failed to submit
an acceptable specimen of use for the services in Class 41, as recited in the CYBEY
IMAGE application and Statement of Use. Applicant therefore failed to demonstrate
use of its mark in direct connection or nexus with the identified services. Refusal of
the application on this basis therefore was appropriate.
Decision: The refusal to register Applicant’s mark CYBEYE IMAGE on the
grounds that Applicant failed to submit an acceptable specimen for the services in
Class 41 under Trademark Act Sections 1 and 45 is affirmed.

14 “YouTube” is a free video sharing platform that makes videos available for viewing online.
The YouTube platform permits users to create and upload their own videos to share with
others. A “channel” is a webpage reserved for a user on the YouTube platform to which a user
can upload videos for viewing by others. Denial of Request for Reconsideration of December
23, 2019 at TSDR 3, 8.