IP Law Daily, TRADEMARK—TTAB: Specimen showing how a website user could purchase and download software satisfied ‘use in commerce’, (Oct 21, 2022)

By Kevin M. Finson, J.D.

A specimen consisting of a website screenshot showed use in commerce because it described the goods under the mark and gave a consumer the information and means necessary to complete a purchase.

A trademark examining attorney’s refusal to register the mark CAPSIMOPS for software based on failure to provide an acceptable specimen of use has been reversed by the Trademark Trial and Appeal Board. The applicant’s fourth specimen consisted of a website screenshot showing use of the mark on a web page that described the goods and allowed a consumer to purchase and download the goods. The specimen satisfied use in commerce because it described the goods under the mark and gave a consumer the information and means necessary to complete a purchase (In re Capsim Management Simulations, Inc., October 19, 2022, Heasley, D.).

Capsim Management Simulations, Inc. (Capsim) sought registration on the Principal Register of the standard character mark CAPSIMOPS for downloadable software for application and database integration in International Class 9 and non-downloadable software for the same in International Class 42. The Examining Attorney denied registration with regard to the International Class 9 goods on the ground that Capsim’s specimen did not show the proposed mark in connection with the identified goods. In several motions for reconsideration, Capsim filed a total of four sets of specimens. Capsim appealed and the Board considered whether any of the four sets of specimens showed the mark used in connection with the identified goods.

Specimens. Capsim’s first specimen was a set of screenshots from its website advertising the software and using the mark in connection with an “online tour” that would allow a customer to learn about the software. However, this website had no point-of-sale functionality or ability to allow a customer to actually download the product. The second and third specimens were screenshots of the consumer-facing software that contained the URL in the corner as well as additional screenshots of Capsim’s website. These screenshots did not overcome the objection raised originally. They showed advertising but did not indicate that the software in question was downloadable or offer the customer a way to download it. The fourth and final specimen included a screenshot of a page displaying the proposed mark and allowing the reader to purchase and download the software. The Board held that this specimen finally met the requirement that the use be in association with a description of the goods at a point of purchase where the potential purchaser was afforded the information and means necessary to complete the purchase.

Based on the fourth set of specimens, the Board reversed the Examining Attorney’s refusal to register.

The Case is Serial No. 88410843.

Attorneys: Brett M. Tolpin (Tolpin & Partners PC) for Capsim Management Simulations, Inc. Janet Lee for the USPTO.

Companies: Capsim Management Simulations, Inc.

Cases: Trademark USPTO