Gary J. Rogowski

Trademark Trial and Appeal BoardDec 11, 2012

No. 77083475 (T.T.A.B. Dec. 11, 2012)

Mailed: December 11, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Rogowski ________ Serial No. 77083475 _______ Gary J. Rogowski, applicant, appearing pro se. Janet H. Lee, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Kuhlke, Wellington and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On January 16, 2007, Gary J. Rogowski (“applicant”) filed an intent-to- use application to register the mark ACTIVE REASONER in standard charac- ter format for “audio recordings featuring music” in International Class 9. Following issuance of a notice of allowance, on November 5, 2010, applicant submitted the following specimen, consisting of a photograph or screen shot of a web page from YouTube, a third-party Internet website, with his statement of use: This Opinion is a Precedent of the TTAB Serial No. 77083475 - 2 - The Trademark Examining Attorney has refused registration under Trademark Act §§ 1 and 45, on the ground that applicant’s specimen fails to show the applied-for mark used in direct connection with the identified goods. See 15 U.S.C. §§ 1051, and 1127; 37 CFR §§ 2.56 and 2.88(b)(2). For the reasons explained below, we affirm the refusal to register. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 CFR §§ 2.56(a), 2.88(b)(2). See also TMEP §§ 904, 1109.09(b) (Oct. 2012). In support of the refusal to register, the examining attorney argues that the specimen does not show the applied-for mark used in connection with ap- plicant’s identified goods. More specifically, the examining attorney contends that “the specimen consists of a screen shot of a video performance uploaded Serial No. 77083475 - 3 - on YouTube.” Appeal Brief, unnumbered p. 2. The examining attorney ob- jects to the specimen on the basis that “a video recording is not necessarily an audio recording” because “the main purpose of a visual recording is to present visual content, whereas the main purpose of an audio recording is to provide audio content.” Id., unnumbered p. 3. The examining attorney also objects on the ground that the proposed mark as used on the specimen does not identify any tangible musical recording or downloadable audio recording, either of which would qualify as an audio recording featuring music in International Class 9.1 Rather, the examining attorney maintains that the mark as used on the specimen appears to identify a “non-downloadable musical video perfor- mance that has been uploaded onto, or is streamed on the YouTube website in International Classes 038 and 041, respectively.” Id. In addition, the examin- ing attorney argues that the specimen is unacceptable because it “fails to indi- cate that the audio recording may be downloadable.” Id. During ex parte prosecution, applicant argued: My specimen was found unacceptable, because it was stated my specimen does not specifically show that my music can be down- loaded from YouTube. I, and many others have downloaded my music directly from YouTube. There are many computer pro- grams available for free, on the internet, which enable the user to download music and video. I use Real Player. I apologize for as- suming that everyone who uses computers would be aware of the 1 International Class 9 encompasses musical sound recordings in either downloadable or tangible form (for example, a compact disc). See USPTO’s Acceptable Identifica- tion of Goods and Services Manual (“USPTO ID Manual”). Applicant’s identification of goods is sufficiently broad to encompass musical sound recordings in both tangible or downloadable formats. Serial No. 77083475 - 4 - ease of downloading. Being involved in the music industry has made me acutely aware of the music download phenomena…. Response to Office Action (March 8, 2011). According to applicant’s own de- scription of the specimen submitted concurrently with his statement of use: This is a photograph of my computer screen showing my YouTube channel for my mark, Active Reasoner. It is at my YouTube Active Reasoner channel, that my "audio recordings featuring music," may be accessed, and downloaded. Statement of Use (November 5, 2010). As further argued by applicant in his brief, he has “downloaded onto my computer all my songs from YouTube…” Applicant’s Brief, unnumbered pp. 2-3. On its face, the specimen includes applicant’s mark used in connection with an uploaded video of a musical performance that may be streamed and viewed via the YouTube website. The specimen also displays the following in- formation: -The applied-for mark, ACTIVE REASONER, appears in the top left corner of the screen print. Underneath the proposed mark, it reads “activereasoner’s Channel.” In close proximity to the left of the mark is a button labeled “Subscribe.” -On the right side of the specimen is a link which reads “Edit My Playlist.” -Applicant’s proposed mark appears again under the wording “Back to Playlist” accompanied by the following: “Here are my songs presented in the order they were released on YouTube.” In successive order, the title of each song appears in hyperlink for- mat. Upon consideration of the above and any other relevant information that may be gleaned from the specimen, we do not find that the specimen shows Serial No. 77083475 - 5 - trademark use for the identified goods. Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the applicant file a “specimen” or facsimi- le “of the mark as used in commerce.” Trademark Rule 2.56(a), 37 CFR § 2.56(a), amplifies that an applicant filing an intent-to-use application file “one specimen . . . showing the mark as used in commerce on or in connection with the goods or services” (emphasis added). Finally, the Trademark Manual of Examining Procedure (“TMEP”) § 904.07(a) (Oct. 2012) directs the examining attorney to “review the specimen to determine whether: . . . the specimen shows use for the specific goods/services identified.” (emphasis added). Fur- ther, to be considered use in commerce the mark must be “placed in any man- ner on the goods or their containers or the displays associated therewith... and the goods are sold or transported in commerce...” 15 U.S.C. § 1127. The submitted specimen, however, does not show the required corre- spondence between the mark and the identified goods being offered for sale or transport in commerce. We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that appli- cant’s specimen does not include a “download” or similar link to put the con- sumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof. We view this fail- ing as being similar to on-line retailing situations in which a webpage speci- Serial No. 77083475 - 6 - men fails to show a means for ordering the goods or service. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not directly provide a means for ordering applicant’s goods); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer soft- ware acceptable when it includes method to download, purchase or order the software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages have a ‘point of sale nature. . . .’”) (citation omitted). We further acknowledge applicant’s intent and his assertion that viewers of his uploaded videos on YouTube may use third party software such as Re- alPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats. However, on the record before us, in the absence of a “download” link or the equivalent thereof, applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods. Decision: The refusal to register is affirmed.