Chengdu AOBI Information Technology Co., Ltd.

Trademark Trial and Appeal Board

May 31, 2011

No. 77723547 (T.T.A.B. May. 31, 2011)

Mailed:
May 31, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chengdu AOBI Information Technology Co., Ltd.
________

Serial No. 77723547
_______

Jeffrey M. Furr of Furr Law Firm for Chengdu AOBI
Information Technology Co., Ltd.

Drew Leaser, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Seeherman, Quinn and Lykos, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Chengdu AOBI Information Technology Co., Ltd. has
appealed from the final refusal of the trademark examining
attorney to register IObit on the Supplemental Register for
the following services, all in Class 42:
Computer programming; Computer software design;
Conversion of data or documents from physical to
electronic media; Data conversion of computer
programs and data, not physical conversion;
Duplication of computer programs; Hosting of web
sites; Installation of computer software;
Maintenance of computer software; Research and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77723547
2
development for new products for others; Research
and development of computer software; Updating
and maintenance of computer software.”1

Registration was refused on a number of bases, most of
which have now been resolved. Specifically, registration
on the Principal Register was refused pursuant to Section
2(e)(1) of the Trademark Act, on the ground that the mark
is merely descriptive of the identified goods. However, in
its request for reconsideration filed August 27, 2010,
applicant amended its application to the Supplemental
Register and, as a result, on September 1, 2010, the
examining attorney withdrew the refusal on that ground.
The examining attorney also refused registration pursuant
to Section 2(d), asserting that applicant’s mark was likely
to cause confusion with Registration No. 2557070. However,
that registration was cancelled on January 10, 2011,
subsequent to the filing of applicant’s appeal brief but
prior to the submission of the examining attorney’s brief.
The examining attorney pointed this out in his appeal
brief, and specifically withdrew the refusal of
registration based on Section 2(d).
Thus, the only remaining issue on appeal is pursuant
to Sections 1 and 45 of the Trademark Act, 15 U.S.C.

1 Application Serial No. 77723547, filed April 27, 2009,
asserting first use and first use in commerce on May 5, 2005.
Ser No. 77723547
3
§§ 1051 and 1127, on the ground that applicant’s specimens
do not show use of the mark in connection with any of the
services identified in the application. The examining
attorney points out that applicant’s application is based
on Section 1(a) of the Act, use in commerce, and that a
requirement for such an application is that it must include
a specimen showing use of the mark. Section 45 of the Act
defines “use in commerce” on services “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce….” Trademark Rule
2.56(b) further provides that “a service mark specimen must
show the mark as actually used in the sale or advertising
of the services.”
Applicant did not address this ground for refusal in
its brief, which argued only against the refusal based on
likelihood of confusion. Nor did applicant file a reply
brief, despite the fact that the examining attorney’s brief
was devoted solely to the refusal based on the
unacceptability of the specimens and their failure to show
use for the identified services. In fact, even during the
prosecution of the application applicant did not provide
any argument regarding the acceptability of its specimens,
addressing this point only by submitting substitute
Ser No. 77723547
4
specimens in its January 20, 2010 and August 27, 2010
responses.
Although we do not have the benefit of applicant’s
arguments, we do not treat the failure to submit such
arguments as a concession of this ground for refusal. It
is still the Office’s burden to show that registration
should be refused, and therefore we turn to a consideration
of both the original and substitute specimens.
We begin with the specimen submitted by applicant with
its August 27, 2010 request for reconsideration. Because
applicant did not argue about the acceptability of the
prior specimens, it appears that applicant accepted the
examining attorney’s view that the prior specimens did not
show use of the mark for its identified services. At the
very least, this specimen would appear to be the one that
applicant considers the best example of service mark use.
The specimen is a screenshot from applicant’s website,
www.iobit.com, with the following text:
Distributing Our Products
IObit
We are open to various levels of cooperation.
Currently our products are distributed on the
Internet and through local stores in the U.S.,
Europe and Asia countries. If you are interested
in exchanging links with us, or you would like to
help us with physical distribution and promotion,
in software compilations, or in other forms of
business cooperation, kindly let us know!
Contact: partner@iobit.com
Ser No. 77723547
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What We Do
Our sincere commitment to all our customers is
that we will continue delivering innovative
system utilities that are as simple to use as
they are powerful and reliable. We also promise
that we will keep providing the first-class free
software and online service, for personal or non-
commerical use.

We pursue the genuine ambition of becoming one of
the world’s top utility producers and Windows
system service providers on the Internet.

The only mentions of services in this webpage are in
the last two paragraphs—“we will keep providing the first-
class free software and online service,” and that the
company has the ambition of becoming “one of the world’s
top utility producers and Windows system service
providers.” Such vague references to services are
insufficient to show use of IObit for the services
identified in applicant’s application. In fact, we cannot
determine from this specimen whether the “online service”
refers to a separate service, or is merely part of the free
software product. Nor is applicant’s stated ambition to be
a Windows system service provider an indication that
applicant is providing a service now, and this statement
certainly does not show that applicant is offering any of
the services specified in the application.
As for the other specimens, although, as we have said,
it appears that applicant is not asserting their
Ser No. 77723547
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acceptability, we will discuss them briefly. The original
application includes approximately 31 pages of “specimens.”
Four pages are from whois.net, and simpy show owner
information for the domain name iobit.com; two pages are
from Google Trends, showing daily unique visitors for
iobit.com; while four pages are from alexa.com, also
showing traffic details for iobit.com. These pages do not
show IObit per se as a mark, let alone showing use of the
mark for the services identified in the application. The
other pages are from applicant’s website, www.iobit.com.
It is somewhat questionable whether, as used on these
pages, consumers would perceive applicant’s mark as IObit,
as opposed to IObit.Com and a design. In any event, these
pages discuss applicant’s products, not the services
identified in the application. See, for example:
Most of our products are 100% freebies. Our paid
products keep them the lowest priced on the
market—and your satisfaction is always
guaranteed.
...

Smart Defrag The Most Efficient Free
Defragmenter.
...

SOFTPEDIA “100%” clean” IObit Software

...

Advanced SystemCare PRO
Ser No. 77723547
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IObit SmartRAM monitors your system in the
background and frees up memory whenever needed to
increase the performance of your computer.

...

Welcome to IObit Update
Click ‘Next>’ to retrieve update information,
click ‘Cancel’ to exit update program.

At most, it appears that applicant’s products can be
used to maintain Windows operating system and diagnose a
system, but applicant is offering a product, not the
service of computer programming, or computer software
design, or conversion of data or documents from physical to
electronic media, or data conversion of computer programs
and data not physical conversions, or duplication of
computer programs, or hosting of web sites, or installation
of computer software, or maintenance of computer software,
or research and development for new products for others, or
research and development of computer software, or updating
and maintenance of computer software. Therefore, these
specimens do not show use of the mark for any of the
identified services.
It does not appear that applicant believes otherwise,
since, as noted above, it did not argue that the specimens
submitted with the original application are acceptable, but
simply submitted substitute specimens, consisting of six
pages taken from what appear to be different websites. In
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the Office action following such submission the examining
attorney stated that the substitute specimens were not
acceptable because, inter alia, they are illegible.
Applicant did nothing to rectify this problem, such as by
submitting larger specimens with its request for
reconsideration. We agree with the examining attorney that
the text on the specimens is, for the most part, too small
to make out any but the very largest words, and therefore
are unacceptable as specimens. We also point out that from
the little we can glean from these pages, they appear to be
press releases or articles that would not qualify as
evidence of service mark use. Further, with respect to the
first item, which appears to be an article from “Times
Online,” applicant itself, in identifying the specimen,
states that “the client’s software product bearing the
brand name ‘IOBIT’ is introduced in some well known
websites in the industry” (emphasis added). The only
specimen that is legible is a disc which applicant
identifies as “A sample product bearing the brand name
‘IOBIT.’” (emphasis added). To state the obvious,
applicant is seeking to register its mark for services, not
products.
In sum, after carefully reviewing all of the specimens
submitted by applicant, we agree with the examining
Ser No. 77723547
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attorney that none is acceptable to show use of the mark
IObit for any of the services identified in applicant’s
application.
Decision: The refusal of registration is affirmed.