Robert Bosch GmbH

Trademark Trial and Appeal Board

Apr 10, 2001

No. 75455278 (T.T.A.B. Apr. 10, 2001)

4/10/01 Paper No. 12
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Bosch GmbH
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Serial No. 75/455,278
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J. W. Gipple of Gipple & Hale for applicant.
Laura Keegan, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
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Before Quinn, Walters and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Robert Bosch GmbH has filed an application on the
Principal Register to register the mark for services
identified, as amended, as “providing training in the use
and application of computer programs which interface with
embedded automotive control software for the purposes of
testing, measuring and application of hardware, but
excluding all those aforesaid goods being used in the field
of navigation including navigational systems for vehicles
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/455,278
2
in particular electronic travel pilots and electronic
maps,” In International Class 41.1
The Examining Attorney has issued a final refusal
requiring the submission of substitute specimens showing
use of the mark in connection with the sale or advertising
of the identified services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The specimens submitted with the application are
described by applicant, in its April 5, 2000 response, as
including photographs that “show signage at a display booth
at its headquarters where guests are informed about the
training services which applicant offers.” The specimens
consist of excerpts from a magazine entitled RealTimes,
which appears to be directed to prospective and existing
clients of applicant’s services. The page submitted
describes an “in-house event” conducted by applicant for

1 Application No. 75/455,278, filed March 23, 1998, based on use in
commerce, alleging first use as of June 1994, and first use in commerce
as of February 1997. The application also includes goods identified as
“computer programs which interface with embedded automotive control
software for the purposes of testing, measuring and application of
hardware, but excluding all those aforesaid goods being used in the
field of navigation including navigational systems for vehicles in
particular electronic travel pilots and electronic maps,” in
International Class 9. However, the acceptability of the specimens
submitted in connection with these goods is not at issue in this
appeal.
Serial No. 75/455,278
3
its customer, Volkswagen AG, at its customer’s premises.
The article includes a photograph of an exhibit booth
clearly exhibiting the mark ETAS.2 The magazine excerpt
submitted also includes a picture of applicant’s
headquarters in Germany with a sign in front of the
building upon which the mark, ETAS, appears.
The Examining Attorney contends that the service mark
specimens are unacceptable because “neither the sign
outside the applicant’s building nor the photograph of the
mark at a display booth at a client’s facility refer to the
services.” The Examining Attorney argues that neither the
photographs nor the text of the article “indicate that
applicant is providing the training services identified in
the application.”
Contrary to the Examining Attorney’s contentions, we
find that the specimens are acceptable evidence of the use
of the mark, ETAS, in connection with the services
identified in the application. The mark appears in the
photograph in connection with a booth at applicant’s event
which, from the text of the article excerpted, appears to
be a training session. The nature of applicant’s service

2 While it is clear from the article that the pictured event and booth
is in Wolfsburg, Germany, the magazine is in English and we must
conclude, because applicant has verified the use of the mark on the
specimens in commerce, that the magazine is distributed in the United
States.
Serial No. 75/455,278
4
does not need to be spelled out in greater detail on the
specimen. We conclude that the specimens of record are
adequate to support the use of the mark ETAS in connection
with the identified services.
Decision: The refusal to register on the ground that
the specimens are unacceptable evidence of service mark use
in connection with the identified services is reversed.