Star Bridge Systems, Inc.

Trademark Trial and Appeal Board

Dec 19, 2001

No. 75606002 (T.T.A.B. Dec. 19, 2001)

12/19/01

Paper No. 22
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Star Bridge Systems, Inc.
________

Serial No. 75/606,002
_______

John W.L. Ogilvie of Computer Law++ for Star Bridge
Systems, Inc.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Bottorff, Rogers and Drost,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Star Bridge Systems, Inc. has applied to register the
mark IIADL for goods that, following amendment, are now
identified as “supercomputer software development tools for
describing algorithms for use on reconfigurable parallel
processing supercomputers.”
The application was filed under the intent-to-use
provisions of the Lanham Act, was approved, published, and
a notice of allowance issued. Applicant filed a statement
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/606,002
2
of use (SOU), but the examining attorney then refused
registration because the specimen of use submitted with the
SOU1 was deemed unacceptable. Specifically, the examining
attorney stated:

The exact nature of the specimens is unclear,
thus the examiner can not determine whether the
specimen is used in commerce on the goods. In
addition, the applicant should note that if the
submitted photocopied page is from some sort of a
user manual for the goods, it must so clarify by
submitting the manual or at least the cover of
the manual indicating what it is. In addition,
the applicant must submit the page on which
trademark usage appears, not the page on which an
informational statement in which the applicant
asserts its rights concerning the mark appears.

The examining attorney also noted that submission of a
different specimen would be an option but that applicant
would have to verify, by affidavit or declaration, use of
any such substitute specimen in commerce prior to the
expiration of the deadline for filing the SOU.
Applicant responded to the refusal by explaining that
the specimen “is a photocopy of a screen shot, which shows
the mark as it is displayed in the goods on a computer

1 The specimen is a photocopied page headed with STAR BRIDGE
SYSTEMS and design, followed by a TM designation, and bearing the
following statement: “Star Bridge Systems, Hypercomputer,
Hypercomputing, Viva, IIADL, Hyper-specificity Processor,
Gateware, Pensa, Architecture on Demand and Tools to Build Your
World are marks of Star Bridge Systems, Inc., copyright 1998-1999
by Star Bridge Systems, Inc. All Rights Reserved.”

Ser No. 75/606,002
3
screen.” Applicant also argued that such screen shots are
acceptable as specimens of use of a mark; that there is no
authority for the examining attorney’s statement that a
specimen which consists of nothing more than an
informational statement asserting applicant’s rights to
particular marks does not show trademark usage; and that
use of a mark in an informational statement “serves a
primary purpose of the use-in-commerce requirement, namely,
providing notice to the consuming public of Applicant’s
mark in connection with the goods.”
As an alternative to its arguments in support of the
original specimen, applicant proffered a substitute
specimen, which was identified as “a photocopy of the back
side of page 1 of user documentation which shipped with the
goods.” Applicant offered to file a formal declaration as
to use of the substitute specimen if “the Office indicates
that this substitute specimen would be acceptable.”
The examining attorney made final the refusal of
registration, asserting, in regard to the original
specimen, that while a computer screen shot, per se, may be
an acceptable specimen, it must show proper trademark use
and that the screen showing applicant’s informational
statement does not show such use. In addition, the
examining attorney refused the substitute specimen because
Ser No. 75/606,002
4
“it is a cutout from more comprehensive matter” and was not
supported by an affidavit or declaration. The examining
attorney noted, however, that if the applicant submitted
the entire item from which the substitute specimen was
derived, with an affidavit or declaration, and if the
substitute specimen is thereby revealed to be part of “some
sort of user manual or documentation shipped with the
goods,” then the refusal would be reconsidered.
Applicant filed a request for reconsideration that
included the entirety of the user manual from which the
substitute specimen was derived; and a supporting
declaration by applicant’s counsel, attesting to use of the
manual in commerce prior to the deadline for filing the
SOU. In the request for reconsideration, applicant clearly
reserved the right to argue on appeal both that the
original specimen is acceptable and that the substitute is
acceptable.
The examining attorney denied the request for
reconsideration, noting that the complete user manual
submitted by applicant is a manual for a software product
titled VIVA, not IIADL, and that the latter mark merely
appears among a list of applicant’s products in the VIVA
manual. The final refusal of registration was maintained
and applicant then appealed. Applicant and the examining
Ser No. 75/606,002
5
attorney have filed briefs but applicant did not request an
oral hearing.
The appeal presents us with two questions. First, is
applicant’s original specimen -- a reproduction of a
computer screen shot taken from the IIADL program in
operation, which screen shot presents a statement asserting
applicant’s rights in a variety of marks -- an acceptable
specimen? Second, is applicant’s manual for its VIVA
computer program, which includes statements asserting
applicant’s rights in a variety of marks, including the
IIADL mark, acceptable as a specimen evidencing use in
commerce of the IIADL mark for the IIADL program?
Section 45 of the Lanham Act, 15 U.S.C. §1127, as
amended by the Trademark Law Revision Act of 1988,
provides, in part, that a mark shall be deemed to be in use
in commerce on goods when “it is placed in any manner on
the goods or their containers or the displays associated
therewith or on the tags or labels affixed thereto, or if
the nature of the goods makes such placement impracticable,
then on documents associated with the goods or their
sale....”
We do not believe that applicant’s goods are of a type
that it would be impracticable to use the mark in one of
the customary ways, such as on a tag or label or on
Ser No. 75/606,002
6
packaging. See In re MediaShare Corp., 43 USPQ2d 1304,
1306 n.7 (TTAB 1997). Indeed, applicant has not made such
a contention and, in the original application, stated that
it intended to use the IIADL mark “by applying it to the
goods, to computer-readable storage media and packaging for
the goods, and to marketing and advertising material
connected with the goods.”
It is clear that the original specimen is neither
packaging for the goods nor marketing and advertising
material for the goods.2 It is, as applicant has explained,
a reproduction of a computer screen shot which a user of
applicant’s software would encounter. The examining
attorney has conceded that on-screen use may be sufficient,3

2 Marketing and advertising material, in any event, generally is
insufficient to show proper trademark use, unless the material is
used as a display associated with the goods or in a catalog that
would qualify as such. Compare Lands’ End Inc. v. Manbeck, 797
F.Supp. 311, 24 USPQ2d 1314 (E.D. Va. 1992) (Catalog found to
qualify as display associated with goods) and In re Schiapparelli
Searle, 26 USPQ2d 1520 (TTAB 1993) (In the absence of a showing
that it was impracticable to use the mark on or in connection
with goods, use of mark for pharmaceutical product only on
advertising directed to potential prescribing physicians held not
proper trademark use). See also, In re MediaShare Corp., 43
USPQ2d 1304 (TTAB 1997) (Advertising material held not to qualify
as catalog display under Lands’ End case, or as any other type of
display associated with goods at point of sale).

3 Section 905.04(d) of the Trademark Manual of Examining
Procedure instructs, in pertinent part, that a reproduction of a
“display screen projecting the identifying trademark of a
computer program … should be acceptable as evidence of trademark
use.” The policy makes eminent sense, especially in view of the
routine delivery of some software online without any traditional
packaging. See, e.g., the following definition of “shareware”
Ser No. 75/606,002
7
but has argued, in essence, that the particular screen shot
must show the mark “used in a manner that clearly projects
a single source of the goods” and use in an “informational
statement” does not function as a “source identifier.”
Applicant, in contrast, argues that informational
statements and lists of marks, such as its trademark
notice, may influence prospective purchasers. We agree
with the examining attorney that the original specimen is
unacceptable.
The critical inquiry regarding material submitted as
evidence of use of a mark is whether a potential customer,
based on the display or use of the mark, will draw a
connection between the mark and the goods or services, not
with a particular corporate entity. West Florida Seafood
Inc. v. Jet Restaurants Inc., 31 USPQ2d 1660 (Fed. Cir.
1994). Section 45 of the Lanham Act, 15 U.S.C. §1127,
referenced by the Court in West Florida, defines trademarks
and service marks as words, names, symbols or devices which
“identify and distinguish [goods or services] from [goods
or services] of others and to indicate the source… even if
that source is unknown.” Applicant’s original specimen

from The Computer Glossary The Complete Illustrated Dictionary
354 (9th ed. 2001): “Software distributed on a trial basis through
the Internet, online services, BBSs, mail-order vendors and user
groups.”

Ser No. 75/606,002
8
only draws an association between applicant and its marks,
not between its marks and goods or services. Thus, it is
not proper evidence of trademark use.
Turning to the substitute specimen, the examining
attorney argues that the user “manual clearly is for a
software product named VIVA”; that the product titled VIVA
has no apparent connection to the product titled IIADL; and
that applicant has not even attempted to argue that the two
products are so related that “it is reasonable to expect
they use the same manual.” Applicant’s only argument on
this point is that “the Examining Attorney and the Board
are respectfully directed to paragraph 2 of the Declaration
dated February 1, 2001.” The declaration, however, only
states that the substitute specimen is a copy of what
“shipped with Applicant’s goods as user documentation” and
is not responsive to the examining attorney’s points.
The Board has held that an instruction manual may be
“as much a part of applicant’s goods” as the goods
themselves, and integral to their use, and therefore may be
accepted as evidence of “affixation to the goods.” In re
Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984). The
Ultraflight decision even contemplated use of a mark for a
computer program in a user’s manual:

Ser No. 75/606,002
9
A similar situation would be presented in the
case of a mark applied to a user’s guide for a
computer program, which guide must be considered
an integral part of the goods themselves. By
contrast, a package insert that is no more than
an invoice or advertisement on which the mark
appears may not be proper affixation of the mark
to the goods. Id.

Nonetheless, we find the case at hand distinguishable
from Ultraflight. In contemplating use of a mark for a
computer program on a user manual, the Ultraflight panel
clearly was contemplating use in the manner that was made
on the instruction manual for the powered hang-glider kits
that were involved in Ultraflight. Specifically, the mark
for these kits appeared on the first page of the
instruction manual and, more importantly, the manual was
integral to transforming the kit into a powered hang-
glider.
In the case at hand, applicant asserts that it ships
the manual for its VIVA computer program with the IIADL
program. The IIADL mark, however, is not on the first page
of the manual, so as to identify it as accompanying the
program. Rather, the only references to the IIADL mark in
the VIVA manual are on two inside pages in informational
statements that, like the original specimen already
considered, merely list applicant’s various marks.
Likewise, because the VIVA manual does not discuss the
Ser No. 75/606,002
10
working of the IIADL program in any way, the VIVA manual
clearly is not integral to the use of the IIADL program.
Indeed, it is entirely possible that the purchaser of the
IIADL program would have no need to refer to the VIVA
manual -- applicant has not asserted there would be such a
need -- and thus, the purchaser of the IIADL program might
never see the IIADL mark in the VIVA program manual. There
is no requirement that a mark be visible to a purchaser of
goods at the time a sale is consummated. Ultraflight, 221
USPQ at 905. It must, however, be used in such a manner
that there will inevitably be some association of the mark
with the goods.
The result might be different if applicant were
shipping an IIADL manual with the IIADL program, and
submitted that as a specimen. Shipping of the VIVA manual
with the IIADL program is akin to the type of “package
insert” or advertising that would not, even under
Ultraflight, constitute a proper specimen evidencing use of
a mark on goods.
Decision: The refusal of registration is affirmed.