Software Publishers Assn.

Trademark Trial and Appeal Board

Sep 8, 1999

No. 74528311 (T.T.A.B. Sep. 8, 1999)

Paper No. 23
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB SEPT. 8, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Software Publishers Association
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Serial No. 74/528,311
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Mark Harrison of Venable for applicant.
Diane Beth Melnick, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
____________
Before Hanak, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Software Publishers Association has filed an
application to register CSM as a certification mark for
“software asset and licensing management.”1 The information
in the application record indicates that applicant offers a
course in the field of software asset and licensing

1 Serial No. 74/528,311, in Class B, filed May 23, 1994, based on an
allegation of a bona fide intention to exercise legitimate control over
the use of the mark in commerce. Following publication for opposition,
applicant filed a statement of use, and specimens, alleging that it is
exercising legitimate control over the use of the mark in commerce,
alleging first use and use in commerce by parties authorized by
applicant as of May, 1994.
Serial No. 74/528,311
2
management; that an individual completing the course may
take a certifying exam administered by applicant; and that,
upon successful completion of the course and the exam, an
individual will receive from applicant a certificate
indicating that he or she is a “Certified Software
Manager.” The mark CSM appears on certificates and decals
that have been submitted as specimens of use and that,
according to the declaration of applicant, are displayed by
the individuals so certified by applicant. The decal and
the certificate submitted as specimens are reproduced
below.

Serial No. 74/528,311
3
The Trademark Examining Attorney has finally refused
registration on the ground that the specimens of use are
unacceptable. The Examining Attorney issued a final
requirement for the submission of specimens showing use of
the mark by persons other than applicant.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that “the specimens
must show use of the mark by parties other than the
applicant [and] that they show use of the mark by
authorized persons other than the certifier for the goods
or services which are recited in the application/Statement
of Use.”
The Examining Attorney acknowledges that the decal and
certificate submitted as specimens “show the name of
applicant as well as the mark, together with various
indicia of the nature of the services which are certified.”
She states in her brief that “[t]here is no disagreement
that ‘the use of a certification mark on decals and
certificates by authorized users’ could be an acceptable
use of the certification mark; [however,] the focus of this

Serial No. 74/528,311
4
appeal is the last three words of that phrase, namely, ‘by
authorized users’ [and] the specimens of record in this
application do not show such use.” She goes on to state
that “[t]he certificate is blank, which clearly indicates
that the specific certificate submitted is not certifying
anything to anyone”; that “[i]f these certificates are
evidence of anything, they are evidence that applicant is
the source of a certification program”; and that “[i]t is a
leap indeed to contend that these blank certificates
constitute evidence of actual use by any party.”
Applicant contends that the certificate submitted
includes a space for insertion of the name of the certified
party; and that the fact that the space is blank “should
not be construed as an indication that these specimens do
not show use of the mark by an authorized party [since]
[t]hese specimens are samples of the type that are in
actual use by parties certified by the applicant.”
Applicant characterizes the Examining Attorney’s refusal as
prohibiting the submission of an unused decal or
certificate as a sample, and requiring applicant to submit
a certificate that has actually been issued to an
individual or a photograph of a decal in use by a certified
individual.
Serial No. 74/528,311
5
It is clear from each of the official actions issued
by the Examining Attorney following submission of the
Statement of Use, as well as from the Examining Attorney’s
brief, that the sole issue before us is whether the
certificate or the decal are unacceptable specimens of
certification mark use in connection with the identified
services simply because the certificate is blank and the
particular certificate and decal submitted have not,
obviously, been used by a third party authorized by
applicant.
We find nothing in either the Trademark Act or the
Trademark Rules of Practice that would require applicant to
submit a certificate or decal that has actually been
previously issued to or used by a party authorized by
applicant.2 Applicant has submitted a verified statement
that its mark is used as indicated in the application; that
it is used by parties authorized by applicant on decals and
certificates issued by applicant; and that the decal and
certificate submitted as specimens are samples thereof.

2 In the majority of prior cases involving certification marks wherein
the specimens are certificates, the question has been whether, as used
on the specimens, the applied-for mark would be perceived as a
certification mark or as merely a title or degree. The fact that the
certificate submitted as a specimen was blank was not an issue. See,
American Speech-Language-Hearing Association v. National Hearing Aid
Society, 224 USPQ 798 (TTAB 1984); and In re National Association of
Legal Secretaries (International), 221 USPQ 50 (TTAB 1983).
Serial No. 74/528,311
6
We find that it is unreasonable to require applicant
to submit actual certificates and decals that have been
previously issued to qualified individuals and used by them
in the course of rendering their services. Further, such a
requirement is inconsistent with analogous requirements in
applications for trademarks or service marks wherein the
tags, labels, packaging or, in the case of service marks,
promotional materials and the like do not need to be
previously used on goods or services actually sold or
rendered in commerce. Applicant must merely verify that
the specimens submitted are samples of ones actually used
in the sale of goods or rendering of services. Applicant
has made the appropriate analogous verifications in this
case.
Decision: The refusal on the ground that the
specimens of record are unacceptable is reversed.
E. W. Hanak
C. E. Walters
D. E. Bucher
Administrative Trademark Judges,
Serial No. 74/528,311
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Trademark Trial and Appeal Board