Tele-Ventions, LLC

Trademark Trial and Appeal Board

Feb 14, 2006

No. 78309794 (T.T.A.B. Feb. 14, 2006)

Mailed: February 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TeleVentions, LLC
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Serial No. 78309794
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George W. Hoover of Blakely Sokoloff Taylor & Zafman for
TeleVentions, LLC.

Michael P. Keating, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
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Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

TeleVentions, LLC has filed an application to register
the mark SHOW NAV, in standard character form, on the
Principal Register for, as amended, “digital video recorders
featuring viewer selection option of recorded program
segments,” in International Class 9. The application was
filed on October 6, 2003, based upon an allegation of a bona
fide intention to use the mark in commerce. Applicant filed
its amendment to allege use and a specimen on February 9,
2004, alleging first use anywhere and in commerce as of
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 78309794

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October 2003. The amendment to allege use was accepted on
April 19, 2004, although the examining attorney issued a
refusal to register under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. 1051, 1052 and 1126, on the ground
that the specimen is unacceptable as evidence of actual
trademark use. This refusal was ultimately made final.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The sole issue in this appeal is whether the specimen
submitted by applicant on February 9, 2004 with its
amendment to allege use is acceptable to show use of the
mark in connection with the identified goods. Shown below
is the specimen of record, which is a printout of a page
from the website of applicant’s licensee.
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Applicant contends that the decision of the Board in In
re Dell, 71 USPQ2d 1725 (TTAB 2004), is directly applicable
and that its specimen is, essentially, a display associated
with the goods. Applicant states that its specimen is
acceptable because the website page describes various
features of the Replay TV product, with one of the features
being identified by the trademark SHOW NAV; that the “page
invites customers to ‘Buy Replay TV’ with a selection on the
button bar” (brief, p.2); and that it is immaterial that
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there is no photograph or other representation of the goods
on the website page because the mark is unambiguously
associated with the Replay TV product as one of several
listed features and no other product is described on this
page.
The examining attorney argues that Dell is inapposite
because it presents an entirely different set of facts. He
contends that the specimen is unacceptable because it does
not show use of the proposed mark as a trademark; that the
specimen features a digital video recorder identified as
Replay TV Model 5500 and REPLAY TV is the trademark featured
prominently on the page; that the proposed mark describes a
feature of the REPLAY TV product rather than functioning as
a trademark for the identified goods; that SHOW NAV is
buried in text describing the features of the REPLAY TV
product; that the specimen contains no photograph or other
representation of the goods; and that, while the specimen
contains a tab entitled “Buy Replay TV,” “[c]onsumers cannot
click the tab to purchase the SHOW NAV feature, but only to
buy the digital video recorders themselves” (brief, p. 6).
While the law in the aforementioned Dell decision is
directly applicable to the case now before us, the facts in
this case lead us to a different conclusion. The applicant
in Dell applied to register QUIETCASE as a trademark for
“computer hardware; internal cases for computer hardware
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being parts of computer work stations.” The specimen
submitted was a printout of a page taken from applicant’s
website describing and offering for sale a particular
computer workstation that included, in the description of
the product on the webpage, a reference to the QUIETCASE
internal case. Following the reasoning in In re Shipley
Co., 230 USPQ 691 (TTAB 1986) and Lands’ End Inc. v.
Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992),
the Board concluded (Dell at 1727) that “a website page
which displays a product, and provides a means of ordering
the product, can constitute a ‘display associated with the
goods,’ as long as the mark appears on the webpage in a
manner in which the mark is associated with the goods” and
“such uses are not merely advertising, because in addition
to showing the goods and the features of the goods, they
provide a link for ordering the goods.”
Thus, Dell established that a website page such as
applicant submitted herein may constitute a display
associated with the goods. The Examining Attorney does not
really argue otherwise. Rather, it is his position that, as
used on the website page, SHOW NAV will not be perceived as
a trademark for the identified goods.
The specimen in the case before us is very similar to
the specimen described above in Dell. Nonetheless, in order
for a website page to be acceptable as a specimen, it must
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be clear therefrom that the mark in question identifies the
goods specified in the application. In this case the
problem arises not from the lack of a picture of the product
or from the size or location of the term SHOW NAV on the
specimen.1 Instead, as shown on the specimen, SHOW NAV
identifies a navigational feature of the product rather than
functioning as a mark identifying the digital video
recorders recited in the application. For this reason, we
conclude that the examining attorney correctly rejected the
specimen submitted in support of the application.
Decision: The refusal under Sections 1, 2 and 45 of
the Act is affirmed.

1 We do not address the validity of the examining attorney’s additional
arguments regarding the lack of a picture of the digital video recorder
or the size and placement of SHOW NAV on the website page in view of our
finding that SHOW NAV does not identify the recited goods.