Stephen Astor

Trademark Trial and Appeal Board

Jun 3, 2008

No. 76111588 (T.T.A.B. Jun. 3, 2008)

Mailed:
June 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stephen Astor
________

Serial No. 76111588
_______

Stephen Astor, pro se.

William H. Dawe, III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Walsh, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Stephen Astor filed an intent-to-use application for
the mark EMAIL A FRIEND, in standard character format, for
goods ultimately identified as a “housemark for a full line
of downloadable electronic publications in the nature of
books, magazines, newspapers and screenplays featuring
fiction and nonfiction literature, art, history, education,
health, mathematics, economics and other topics of general
interests; downloadable musical sound recordings; and a
housemark for a full line of downloadable video recordings
featuring fiction and nonfiction literature, art, history,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76111588
2
education, health, mathematics, economics and other topics
of general interests,” in Class 9.1 Applicant disclaimed
the exclusive right to use the word “email.”
The application was published for opposition on August
6, 2003. Because no one lodged an opposition to the
registration of applicant’s mark, a notice of allowance was
issued on November 18, 2003.
On April 19, 2004, applicant filed a statement of use.
The Examining Attorney refused registration on the ground
that “[t]he specimen is unacceptable as evidence of actual
trademark use because it does not show use of the mark with
the identified goods” and on the ground that the proposed
mark does not function as a trademark.2

1 It appears that applicant is actually rendering a service by
providing the capability of users to email excerpts of written,
audio, and video works to others. (Applicant’s Brief, pp 1-2)
(“Petitioner has a company that provides access to excerpts of
books, video, and audio material on the internet, and /or the
complete body of said works. . . . Petitioner has created a means
to type an email address and click a single link-button, said
link-button called ‘EMAIL A FRIEND’, which is Petitioner’s mark,
to forward said Product to others”). Despite the best efforts of
the Examining Attorney and the applicant to accurately identify
applicant’s goods or services through multiple written
communications, they were unsuccessful. Had either the Examining
Attorney or the applicant used the telephone to communicate, it
seems clear that this problem would have been avoided, and that
what has been a tortuous prosecution would have been dramatically
expedited.
2 May 6, 2004 Office Action. Applicant does not argue that the
original specimen does not show use of the mark sought to be
registered.
Serial No. 76111588
3
On November 8, 2004, applicant filed a substitute
specimen featuring the mark displayed in a web page. The
relevant portion of the web page is shown below. Applicant
did not submit a declaration supporting the use of the
substitute specimen prior to the expiration of the time
allowed for applicant to file a statement of use.

The Examining Attorney “finally” refused registration
on the grounds that the substitute specimen was not filed
with a supporting declaration and that the specimen did not
Serial No. 76111588
4
show use of the mark as a house mark for a full line of
electronic publications.3
On October 17, 2005, applicant filed a request to
reinstate its application along with another specimen
showing use of EMAIL A FRIEND. The relevant portion of the
specimen, shown below, is the excerpt of the work that the
user transmits to others.4 Applicant did not submit a
declaration supporting the use of the substitute specimen
prior to the expiration of the time allowed for applicant
to file a statement of use. In a communication dated
December 13, 2005, applicant submitted the supporting
declaration.

3 January 16, 2005 Office Action.
4 Applicant’s Brief, p. 6, Exhibit B.
Serial No. 76111588
5
In his brief, applicant explained that the Examining
Attorney’s refusal to accept the specimens of use was based
on the “misunderstanding of the Petitioner’s ‘Product’.”
Unfortunately for applicant, we are required to determine
the registrability of applicant’s mark based on the
description of goods made of record (i.e., a housemark for
a full line of downloadable electronic publications). In
other words, applicant’s mark - - EMAIL A FRIEND - - must
be used to identify downloadable electronic publications,
not the service of providing access to excerpts of such
works. None of applicant’s specimens show use of his mark
for downloadable electronic publications.
The November 4, 2004 specimen (“Welcome to Email A
Friend”) shows use of EMAIL A FRIEND in connection with
transmitting excerpts of publications to others because it
is used in connection with the activity of transmitting
excerpts of the works. However, the specimen does not
support the use of the mark on downloadable electronic
publications because it does not show the mark used to
identify electronic publications of any type.5

5 In addition, Applicant did not submit a declaration supporting
the use of the specimen prior to the expiration of the time
allowed for applicant to file a statement of use.

Serial No. 76111588
6
The October 17, 2005 specimen does not show EMAIL A
FRIEND used as a mark because it appears to be an
instructional or informational statement regarding sending
the publication to others. It does not function as a
trademark and, even if it did, it does not identify
electronic publications of any type.
In view of the foregoing, we find that the term EMAIL
A FRIEND does not function as a trademark for a “housemark
for a full line of electronic publications.”
Decision: The refusal to register the term EMAIL A
FRIEND is affirmed.