Fitracks, Inc.

Trademark Trial and Appeal Board

Sep 13, 2007

No. 78100399 (T.T.A.B. Sep. 13, 2007)

Mailed:
September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Fitracks, Inc.
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Serial No. 78100399
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William S. Frommer and Marilyn Matthes Brogan of Frommer
Lawrence & Haug LLP for Fitracks, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Grendel, Rogers and Wellington,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Fitracks, Inc. (applicant) applied to register the
mark CLICK2FIT in typed form, under the intent to use
provisions of the Trademark Act. The original
identification of goods/services read "Virtual sales
assistant in the Footwear manufacture & Retail industry,"
and was designated as being in International Class 25, a
class that covers footwear and clothing, but not services
related thereto.
This Opinion is Not a
Precedent of the
TTAB
Ser No. 78100399
2
In two office actions, the examining attorney
explained that the original identification was in need of
amendment, and offered applicant the option of adopting one
of the following two possibilities, "if accurate":
"Computer hardware and software for use in [please specify
use and function] in the footwear industry, in
International Class 9" and "Online retail services in the
field of footwear, in International Class 42." In response
to the second of these two actions, applicant adopted the
latter identification.
Following issuance of a notice of allowance, applicant
filed an allegation of use asserting use of the mark, and
use of the mark in commerce, for the identified services
since March 2003. The allegation of use included as a
specimen a web page reprint of www.fitracks.com/click2fit.
The page is headed "Click 2 Fit" and lists the questions
"What is Click 2 Fit?" and "How does Click2Fit work?", as
well as information responsive to each question.1 Though
wording on the reprinted web page is truncated, the
information and accompanying illustration of the "Click2Fit
interactive system" make it clear that the "system"

1 The web page bears at the top the designation "Page 1 of 2" but
a second page is not of record. The examining attorney did not
inquire about the apparent second page and applicant, in
responding to the examining attorney's criticism of the specimen,
has not mentioned it.
Ser No. 78100399
3
involves a computerized apparatus that measures a
consumer's foot in various ways and is intended to, among
other things, promote proper fitting of shoes for the
consumer. The specimen also touts certain benefits for
shoe retailers, e.g., "Efficiently match inventory levels
to customer needs and preferences."
The examining attorney refused to accept the web page
specimen, asserting that it "does not show use for
applicant's goods and services because there is no
reference to retail footwear store services." Applicant
responded by first noting that the notice of allowance
listed "on-line retail services in the field of footwear"
and did not mention "retail footwear store services," and
second asserting that the web page specimen shows "the mark
as used in connection with Applicant's offering of its
goods on-line." In the alternative, applicant also
submitted a substitute specimen, specifically, "a
photograph of Applicant's mark as used in connection with a
computer terminal at which customers can access Applicant's
'on-line retail services in the field of footwear.'" The
photo clearly shows the designation "Click2fit" lettered
Ser No. 78100399
4
onto the terminal above a computer screen.2 The wording and
images on the screen, however, are indistinct.
In the absence of an acceptable specimen, the
examining attorney issued a final refusal of registration
"because applicant has failed to show use of the mark with
any retail services." In particular, the examining
attorney asserted that his earlier "use of 'retail store
services' and not 'on-line retail services in the field of
footwear' [was] inconsequential" and that it was incumbent
on applicant to provide a specimen showing it provides the
retail services referenced in its identification.
Applicant filed an appeal from the final refusal and
requested reconsideration, and included with the latter an
additional webpage specimen. Though the request for
reconsideration was denied and applicant's time for filing
a brief on appeal was set, applicant subsequently sought
and obtained a remand to the examining attorney. We agree
with the examining attorney that the request for remand did
not contain any new arguments or evidence. The examining
attorney once again refused to reconsider the final

2 Applicant's web pages, in various places, utilize "Click 2
Fit," "Click2Fit" or "Click2fit."
Ser No. 78100399
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refusal, the appeal was resumed, and briefs ultimately were
filed.3
Applicant's brief on appeal does not discuss any
relevant case law dealing with acceptable service mark
specimens, and merely reiterates, in cursory fashion,
arguments made during prosecution (including its request
for reconsideration and for remand) as to why its specimens
are acceptable. In the Office's brief, the examining
attorney discusses each of the two specimens submitted
prior to the appeal, and why each fails to show an
association of the mark with the identified services:
Applicant does not identify how or where the
original specimen makes an association between
the mark and the services in the application. The
specimen identifies CLICK2FIT as an interactive
system that helps consumers find their shoe size.
The specimen associates the mark with an
interactive computer system or the technology
that “provides the ideal match between consumer
preferences and show retailer inventory.” There
is no association between the mark and actual
retail services provided by applicant. … The
specimen does not advertise retail footwear
services nor show the mark in the sale of retail
footwear services [sic].

Applicant also submitted a substitute specimen
with its response dated March 1, 2005, namely, a
photo of the mark used on a kiosk. As Applicant
states, this specimen “demonstrates the mark as

3 Applicant filed five extensions of time to file its brief on
appeal, for the stated purpose of "gathering appropriate
materials" which would overcome the refusal or render it moot.
There is nothing in the record to indicate that any additional
materials were submitted to the Board or examining attorney, for
consideration by the latter.
Ser No. 78100399
6
used on a kiosk machine/computer device.” Brief
at 2. This does not show use of the mark in the
sale or advertisement of the services, namely,
retail footwear services. The mark identifies the
kiosk. There is no mention of the retail sale of
footwear or the means for consumers to purchase
footwear. The fact that a consumer may be able to
get “on-line” with the device in the specimen in
no way means that applicant has shown use of the
mark in the sale or advertising of “on-line
retail services in the field of footwear.”
(Emphasis added [by examining attorney]).

Earlier, in the final refusal of registration, the
examining attorney also noted, in regard to the kiosk
photo, "If applicant is providing retail services in the
field of footwear through the kiosk in the specimen,
applicant should have no problem providing a picture of a
screen on the kiosk where the user can actually order
footwear." Applicant did not address this point in its
request for reconsideration, request for remand or appeal
brief.
A service mark is used in commerce "when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are
rendered in more than one State or in the United States and
a foreign country and the person rendering the services is
engaged in commerce in connection with the services."
Trademark Act Section 45, 15 U.S.C. § 1127. "[B]ecause by
its very nature a service mark can be used in a wide
Ser No. 78100399
7
variety of ways, the types of specimens which may be
submitted as evidence of use are varied." In re Metriplex
Inc., 23 USPQ2d 1315, 1316 (TTAB 1992).
When used in advertising of services, the service mark
must not merely appear in the advertising material that
also discusses or offers the services, but must be
associated with the services in such a manner as would be
sufficient to indicate to potential purchasers or users of
the services that the mark identifies the services and
their source. See In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum
requirement is some direct association between the offer of
services and the mark sought to be registered therefor.")
(italics in original), and In re Moody's Investors Service
Inc., 13 USPQ2d 2043, 2047 (TTAB 1989) (requirement is for
"a direct association between the mark sought to be
registered and the services specified in the application,
i.e., that [the mark] be used in such a manner that it
would be readily perceived as identifying such services").
When used in the actual sale of services, as opposed
to their advertising, it is not per se necessary that the
services be referenced, but in such cases it may be
necessary to explain how the mark appears during the
rendering of the service and, therefore, why the purchaser
Ser No. 78100399
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or user of the service would recognize and associate the
mark with the service. See, e.g., Metriplex, 23 USPQ2d at
1316 ("As applicant explained in its declaration, the
specimens show the mark as it appears on a computer
terminal in the course of applicant's rendering of the
services.").
We agree with the examining attorney that neither
specimen submitted prior to appeal is acceptable to show an
association of the mark with the identified services. Nor
is the web page submitted with applicant's request for
reconsideration. We discuss first, the two web pages and,
second, the kiosk photo.
The original web page specimen references "The
FiTracks Click2Fit interactive system" as a system that
shows "retailer inventory" and as one that allows shoe
retailers to "match inventory levels to customer needs and
preferences." While these may be considered oblique
references to retailing of shoes, the overall thrust of the
specimen is that applicant is the manufacturer, retailer or
distributor of the system itself, not a retailer of
footwear. This is confirmed by the additional information
regarding applicant, specifically, additional material from
applicant's web site, placed in the record by the examining
attorney's action denying applicant's request for
Ser No. 78100399
9
reconsideration. This material explains how a potential
purchaser of shoes uses the "Click2Fit" system to have
"personal details" about his or her feet collected by the
system, which will then allow the customer to "browse
through the on-screen catalogue that shows which shoes are
available at the particular store, and place an order
immediately at the kiosk" or place an order "through the
company's website for convenient online shopping."4
This information about the "Click2Fit" system is
contained on the "Product & Technology" page of applicant's
website, and reveals that the system is applicant's
product. Indeed, applicant has never denied the examining
attorney's contention to this effect.
In sum, applicant's original web page would not draw
an association for a prospective retail purchaser of
footwear (whether on-line or off-line) with applicant's
mark and the service of footwear retailing. Nor would the
web page specimen offered with applicant's request for
reconsideration draw such an association. That consists
solely of a listing headed "Product & Technology," followed
by "Pedometer," "Quick2fit," "Click2fit," "Web Store" and

4 The web pages in evidence make clear that the "Click2Fit"
system can be used either as an individual offline unit, i.e.,
"as a convenient kiosk with catalogue information" or to access
online purchasing options.

Ser No. 78100399
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"Fitracks Kids." There is nothing on this page that
specifies what is available in the "Web Store."5
The examining attorney has suggested that the
substitute specimen consisting of a photograph of a kiosk
bearing the "Click2fit" mark would be acceptable if it not
only showed the mark but also showed something readable on
the computer screen below the mark that would indicate
shoes are available for purchase from applicant through the
kiosk. While we do not disagree with that position, we add
that the photo of the kiosk might also be acceptable even
if the computer screen did not show such information, so
long as there was a declaration in the record explaining
that prospective purchasers of footwear see the mark on the
kiosk when they use it to make on-line purchases of
footwear from applicant. See Metriplex, 23 USPQ2d at 1316.
As noted earlier, applicant's counsel introduced the
kiosk photo into the record with the statement that it was
"a photograph of Applicant's mark as used in connection
with a computer terminal at which customers can access
Applicant's 'on-line retail services in the field of

5 The reprint of the "Product & Technology" page that the
examining attorney entered into the record shows a pointer next
to "Click2fit" and then lists information about that system.
However, although the web page submitted with applicant's request
for reconsideration also has a pointer next to "Web Store," it
points to an empty space.

Ser No. 78100399
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footwear.'" Applicant's request for reconsideration did
not discuss this specimen, but applicant's "Supplemental
Request for Remand and Reconsideration" describes it as "a
photo of a point of purchase display, or kiosk, showing
Applicant's mark as the customer encounters it in the
marketplace. It is submitted that since this specimen
material displays the mark, as the purchaser encounters it
in the marketplace, in connection with the retail sale of
footwear, that this specimen is more than sufficient…."
Very similar language is utilized in applicant's brief.
The examining attorney has on three occasions asserted
that it does not appear that applicant is a retailer of
footwear. See, respectively, the order denying applicant's
request for reconsideration, the order denying applicant's
supplemental request for remand and reconsideration, and
the Office's brief on appeal.6 Applicant has not contested
any of these assertions and did not file a reply brief.
Moreover, we find it significant that applicant apparently
has retreated from the language first used in support of
the kiosk photo as a specimen, which states purchasers "can
access Applicant's 'on-line retail services in the field of

6 Section "II" of the brief on appeal focuses not on the various
specimens but instead on the examining attorney's argument that
applicant does not sell footwear, e.g., "Applicant's website
actually advertises the sale of the interactive kiosks and not
the retail sale of footwear."
Ser No. 78100399
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footwear'" via the kiosk. Subsequent references to the
kiosk, in contrast, explain that it shows the mark as the
customer or purchaser "encounters it in the marketplace, in
connection with the retail sale of footwear." Such shift
in language, in the face of the examining attorney's
repeated contention that applicant is not a retailer of
footwear, indicates that applicant's kiosks are used "in
connection with" retailing of footwear, but not applicant's
retailing of footwear. Thus, we clearly do not face a
situation as in Metriplex whereby applicant has provided a
declaration that the kiosk computer screen is used to
purchase footwear from applicant.
As noted by the examining attorney in the action
denying applicant's request for reconsideration, it appears
that this is a case in which applicant made an erroneous
choice between two identifications offered by the examining
attorney when the original identification was determined to
be indefinite. The examining attorney, however, only
suggested adoption of either proposal if it would be
accurate for applicant to do so, and cautioned applicant
about the ramifications for limiting an identification.
Decision: The refusal of registration on the ground
that none of applicant's specimens show use of the mark for
the identified services is affirmed.