GitHub, Inc.

Trademark Trial and Appeal Board

Apr 15, 2020

87283102 (T.T.A.B. Apr. 15, 2020)

This Opinion Is Not a
Precedent of the TTAB

Mailed: April 15, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re GitHub, Inc.
_____
Serial No. 87283102
_____

Pamela Chestek of Chestek Legal
for GitHub, Inc.

Tracy Whittaker-Brown, Trademark Examining Attorney, Law Office 111,
Christopher Doninger, Managing Attorney.
_____
Before Mermelstein, Lynch, and Johnson,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Serial No. 87283102
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I. Background
GitHub, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
OCTOCAT in standard characters for “Training services in the field of software
development and software editing” in International Class 41.1
Applicant initially based the application on an allegation of its bona fide intent to
use the mark in commerce. After the notice of allowance issued, Applicant filed a
statement of use with the following specimen for the Class 41 services that Applicant
described as “Website with the mark describing services offered.”2

1 Application Serial No. 87283102 was filed December 28, 2016, based on an alleged bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The application included goods in other classes that Applicant subsequently
divided out, leaving only the Class 41 services in the parent application that is the subject of
this appeal.
2 TSDR February 1, 2018 Statement of Use at 2.
Serial No. 87283102
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Serial No. 87283102
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The Examining Attorney refused registration under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen does
not show use in connection with the services because “it does not contain any
reference to the services.”3 She further explained:
The website is not a “training” facility. It merely contains
instructions, as in steps for use of the application. The web
page also conveys options of different ways to use
applicant’s software, including the latest updates.
Providing instructions on the use of a software application
does not constitute training in a particular field of practice,
namely, software development and software editing.4
Applicant responded to the refusal both by traversing it and by submitting a
substitute specimen. First, Applicant contended that the Examining Attorney
construed “training” too narrowly, and provided a dictionary definition as “the process
of learning the skills you need for a job or activity.”5 Applicant argued that the
original specimen “gives instructions on how to automatically and manually generate
GitHub pages, view them, use templates, and more.”6 Second, Applicant offered a
substitute specimen described as “screenshots from applicant’s website,” which
Applicant explained are “linked through the ‘View on GitHub’ flag in the top right
corner of the original specimen.”7 The screenshots appear below:

3 TSDR February 21, 2018 Office Action at 2.
4 Id.
5 TSDR August 21, 2018 Response to Office Action at 1, 6.
6 Id. at 1.
7 Id. at 2, 7-10.
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Serial No. 87283102
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Applicant’s Response to Office Action provides an explanation of the screenshots:
This substitute specimen shows a software code repository
created by a fictitious character, the Octocat [first
screenshot immediately above]. This character opened her
user account in 2011 and through this account provides
training to new users of the GitHub platform. In 2011 she
posted the Hello World repository, which has been watched
1,571 times. Attached are recent screenshots from this
“Hello World” repository showing where users have taken
the opportunity to test pull requests (Exhibit 3) [second
screenshot immediately above] and showing over 1262
users “forked” Octocat’s Hello World source code to practice
forking (Exhibit 4) [third screenshot immediately above].8

8 Id. at 1.
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The Examining Attorney rejected the substitute specimen and made the refusal
final, noting that “Applicant’s instructions [for use of its software development
product] do not constitute training in the field of software development within the
context of its ordinary meaning.”9 The Examining Attorney attached evidence about
software development training, alleging that it “involves taking a variety of courses,
the fundamentals of which include General Software Development, Core
Programming, Object-Oriented Programming, Web Applications, Desktop
Applications, Understanding Databases and the like.”10
Also in the same final Office Action, the Examining Attorney added a concluding
paragraph stating that:
Moreover, it is important to note that a service-mark
specimen must show the mark used or displayed in
connection with a registrable service offered for the benefit
of others. TMEP §1401.04(b). The specimen does not evince
use of the mark for others in that applicant is the
beneficiary of consumers’ knowledge of how to use its
product.11
See Trademark Manual of Examining Procedure (TMEP) §§ 714.05(e); 904.04(a) &
(b). After the Examining Attorney devoted a separate section of her Brief to this point,
in its Reply Brief Applicant “waive[d] its objection to adding a new basis for refusal
in the Final Office Action.”12 However, Applicant went on to make a contingent

9 October 10, 2018 Office Action at 2.
10 Id.
11 Id. at 3.
12 10 TTABVUE 6 n.12.
Serial No. 87283102
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request for a remand “to submit additional evidence” if “the Board is inclined to agree
with the Examining Attorney based on the current record.”13
Applicant appealed, and the appeal is fully briefed. As explained below, we affirm
the refusal to register for the specimens’ failure to show use of the mark in connection
with the services. We therefore need not reach Applicant’s request for remand
relating to whether Applicant’s recited services constitute a service for the benefit of
others under the Trademark Act.14
II. Use of the Mark for the Services
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, 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.” See also Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2)
(“A service mark specimen must show the mark as used in the sale or advertising of
the services”).
A. Training Services in the Field of Software Development and
Software Editing
Before we turn to whether Applicant’s specimens show use in connection with the
services, we must first understand what the services are, and therefore we address
the disputed meaning of “training services in the field of software development and

13 Id.
14 As Judge Lefkowitz noted in In re Heavenly Creations, Inc., 168 USPQ 317, 318 (TTAB
1971), “Insofar as the service is concerned, the statute makes no distinction between services
on the basis of primary, incidental or ancillary …. This does not mean that … instruction in
the use of one’s goods, which is required by the very nature and character of the goods, is
necessarily a service within the meaning of the statute.”

Serial No. 87283102
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software editing.” Applicant argues that “training is simply the process of learning
skills, which can be accomplished in many ways. In this case it is provided through
step-by-step instructions, as illustrated in Applicant’s First Specimen, or through
providing hands-on experiences where the learner can try new skills themselves, as
illustrated in Applicant’s Second Specimen.”15 The Examining Attorney contends that
software development training involves formal study that includes certain
coursework, and “is more than merely providing instructions on the use of a single
software development platform.”16 According to the Examining Attorney, “[t]he
specimen does not offer any of the aforementioned programming courses or provide
information regarding those courses, nor does it even offer any tutorial or basic
instructions in software coding.”17
We consider the evidence of record to inform our understanding. The dictionary
definition of “training” submitted by Applicant focuses on the recipient undergoing
“the process of learning the skills [he or she] need[s] for a job or activity.”18 We also
take judicial notice of the Merriam-Webster online dictionary entry for the transitive
verb “train,” which lists “training” as a verb form, defining it as “to teach so as to
make fit, qualified, or proficient.”19 See In re White Jasmine LLC, 106 USPQ2d 1385,
1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that

15 7 TTABVUE 8 (Applicant’s Brief).
16 9 TTABVUE 7 (Examining Attorney’s Brief).
17 Id. at 8.
18 TSDR August 21, 2018 Response to Office Action at 6.
19 Merriam-webster.com entry for “train,” accessed April 9, 2020. We also grant Applicant’s
request that we take judicial notice of other dictionary definitions of “training.”
Serial No. 87283102
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exist in printed format or have regular fixed editions). The Examining Attorney’s
submissions regarding software development training convey information about
educational requirements and opportunities in the software development field, and
show some examples of software development training. This evidence helps inform
our understanding of consumer perception of these types of services. However, the
evidence does not establish that “software development training” is a term of art, or
necessarily is synonymous with the formal education typical for the field. Thus, the
evidence does not foreclose a broader meaning of software development training that
encompasses less formal training to provide proficiency in software development. We
further note that Applicant’s recited services also include training in the field of
software editing.
B. Applicant’s Specimens
We next turn to whether Applicant’s specimens show use of the mark in
connection with instructing or teaching so as to make its consumers proficient in
software development or editing. Service mark “use may be established by:
(1) showing the mark used or displayed as a service mark in the sale of the services,
which includes use in the course of rendering or performing the services, or
(2) showing the mark used or displayed as a service mark in advertising the services,
which encompasses marketing and promotional materials.” In re WAY Media, Inc.,
118 USPQ2d 1697, 1698 (TTAB 2016); see also In re ICE Futures U.S. Inc., 85
USPQ2d 1664, 1669 (TTAB 2008) (noting that use in the rendition of services is an
element of the “sale” of services under Section 45 of the Trademark Act). While
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Applicant does not explicitly state whether it considers its specimens to involve the
sale or the advertising of its services, its briefing strongly implies that its specimens
should be viewed as showing the mark in the course of rendering the training
services.20 Applicant does not argue that these pages advertise some other training
services Applicant provides. Instead, Applicant points to a consumer’s interaction
with the webpage specimens as a form of training,21 and states:
Applicant designed the website functionality and software
repositories shown in the specimens specifically to educate
users about how to use its platform for software
development. The specimens also show that thousands of
people have actually used the website pages for exactly
that purpose. The word “training” is broad enough to
encompass this modality of learning.22
Thus, Applicant contends that the OCTOCAT mark is used in the course of rendering
the training services.
“To determine whether a mark is used in connection with the services described
in the [application], a key consideration is the perception of the user.” In re JobDiva,
Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016). The evidence is reviewed
to determine whether use of the marks “‘sufficiently creates in the minds of

20 Regardless, the specimens clearly contain no reference to training services, and therefore
would not qualify as service mark advertising specimens. For specimens showing the mark
in advertising the services, “[s]howing only the mark with no reference to, or association with,
the services does not show service mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d 1417
(TTAB 2018) (citations omitted). See also WAY Media, 118 USPQ2d at 1698 (quoting In re
Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)) (“‘[i]n order to create the
required ‘direct association,’ the specimen must not only contain a reference to the service,
but also the mark must be used on the specimen to identify the service and its source.’”).
21 7 TTABVUE 6-8.
22 Id. at 8.
Serial No. 87283102
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purchasers an association between the mark[s]’” and the applied-for services. Id.
(quoting In re Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)). We agree
that it certainly is possible for training services to be delivered through a website,
and the fact-specific inquiry into whether a consumer associates the mark with the
recited training services involves the “nature of the user’s interaction with [the
applicant] when using [the applicant’s website].” See JobDiva, 121 USPQ2d at 1126
(holding that “[e]ven though a service may be performed by a company's software, the
company may well be rendering a service”).
Applicant did not introduce a declaration or other evidence to provide more
information about a user’s interaction with the webpages provided as its specimen
and substitute specimen. However, as set forth above, its Response to Office action
provided some explanation that we take into account in weighing the specimens. As
stated in In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1420 (TTAB 2018) (citations
omitted):
Both precedent and examination guidance make clear that
in assessing the specimens, consideration must be given
not only to the information provided by the specimen itself,
but also to any explanations offered by Applicant clarifying
the nature, content, or context of use of the specimen that
are consistent with what the specimen itself shows.
Turning first to Applicant’s original specimen and Applicant’s explanation that
the webpage instructs users and therefore constitutes training, we find that
consumers would not perceive it as providing training services in the field of software
development or software editing. Rather, the “Welcome to the Octocat homepage!”
with the “latest updates” is presented as a very basic introductory overview of
Serial No. 87283102
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Applicant’s GitHub pages and its features. The webpage displays some simple
guidance about GitHub’s automatic page generator, the alternative ability to
manually create a page, and how to link to a contributor. Applicant insists that this
is the type of instruction that qualifies as training in software development or editing,
but given the format and minimal detail, we find that consumers would not perceive
the webpage as training. Instead, consumers would view this as a typical website
welcome page merely giving a brief summary of what is available. It does not rise to
the level of instruction that consumers would expect from “training in the field of
software development or software editing,” or indeed from any type of training.
We turn next to the substitute specimen, which Applicant explains is a webpage
reached from the original specimen webpage by clicking the button “View on
GitHub.”23 Consistent with Applicant’s explanation, this substitute specimen shows
a software code repository it provided for demonstration purposes. Nothing on the
repository webpage states or even suggests the availability of anything else provided
by Applicant that might qualify as instruction or training, nor does Applicant’s
explanation so indicate. Rather, Applicant proposes that because consumers have
used its demo software code to practice forking and pull requests, Applicant’s
provision of the demo code constitutes training services. With Applicant’s explanation
and the indicia on the repository and related webpages, we can infer that users have
forked the demo code and sent pull requests, but nothing further. Although Applicant
alleges in its Brief that “users are invited to make pull requests in order to

23 TSDR August 21, 2018 Response to Office Action at 2.
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practice and gain an understanding of how pull requests work,”24 the webpage
does not even contain any invitation to that effect. Regardless, users would not
consider Applicant’s mere posting of demo software code that users can choose to
experiment with on their own to be training in software development or editing
provided by Applicant. Cf. TMEP § 1301.04(h)(iii) (“a primary consideration in these
instances is whether the specimen indicates that the applicant is actually performing
the relevant service activities for others, or, for instance, merely providing software
that allows users of the software to perform those activities themselves”).
III. Conclusion
Decision: After careful consideration of all the specimens, Applicant’s
explanation, and the complete evidentiary record, we find that consumers would not
associate OCTOCAT with training services in the field of software development and
software editing. Neither specimen shows use of the mark in the course of rendering
such services. The refusal to register is affirmed.

24 7 TTABVUE 7 (emphasis added).