Information Builders Inc.

This Opinion is Not a
Precedent of the TTAB

Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board

———

In re Information Builders Inc.

———

Serial No. 87951287

———

Howard F. Mandelbaum, Mandelbaum Silfin Economou LLP

Alyssa Paladino Steel, Trademark Examining Attorney, Law Office 124, Lydia
Belzer, Managing Attorney.

———

Before Mermelstein, Lynch, and Larkin, Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Alleging use of its mark in commerce, Applicant seeks registration on the Princi-

pal Register of the mark FOCUS for use on a variety of computer software. The Ex-

amining Attorney finally refused registration on the ground that Applicant failed to

provide evidence of use of the mark in commerce, citing Trademark Act Sections 1

and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv), 2.56(a), 2.63(b),

37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a), 2.63(b). Specifically, the Examining Attorney al-

leges that the drawing is not a “substantially exact representation of the mark” as

used on the specimen of record.

We affirm.
Serial No. 87951287

I. Applicable Law

An applicant for registration under Trademark Act § 1(a) must provide a speci-

men, “showing the mark as used on or in connection with the goods,” Trademark Rule

2.56(a), and a drawing of the mark to be registered, which must be a “substantially

exact representation of the mark as used on or in connection with the goods,” Trade-

mark Rule 2.51(a). While “it is up to the applicant to choose what it seeks to register,”

what it “seeks to register must not only be in use, it must make a distinct commercial

impression as used.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB

2008). “That is, the mark as actually used must not be so entwined (physically or

conceptually) with other material that it is not separable from it in the mind of the

consumer.” Id. (citing In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828,

1830 (Fed. Cir. 1988)).

Applicant and the Examining Attorney cite various cases in support of their posi-

tions. We have carefully considered the cited cases, but except to the extent they state

the broad principles relevant to this issue, we do not find them especially useful in

deciding the question before us.1 Our decision depends on the particular mark and

specimen at issue in this case, which are considerably different from those in the cited

cases. “It all boils down to a judgment as to whether that designation for which reg-

istration is sought comprises a separate and distinct ‘trademark’ in and of itself.”

Institut des Appellations d’Origine v. Vintner’s Int’l Co., Inc., 958 F.2d 1574, 22

1 Nor do we see the utility in discussing the difference between “compound” and “composite”
terms.

-2-
Serial No. 87951287

USPQ2d 1190, 1197 (Fed. Cir. 1992) (quoting J.T. McCarthy, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 19:17 (2d ed. 1984)).

II. Applicant’s Drawing and Specimen

Applicant’s drawing depicts the mark to be registered as the word FOCUS, in

standard characters. In the application, Applicant described its specimen as a

“screenshot of running software.” The relevant part of the specimen is as follows:

As can be seen, the banner of the software screen display depicts the term

WebFOCUS. Applicant claims that this depiction demonstrates its use in commerce

of the mark FOCUS.

A. Discussion

The question before us is whether — as it is used on the specimen of record — the

mark “sought to be registered creates a separate and distinct commercial impression,

which thereby performs the trademark function of identifying the source of the

-3-
Serial No. 87951287

merchandise to the customers.” In re Chem. Dynamics, Inc., 5 USPQ2d 1828, 1829–

30 (Fed. Cir. 1988). The specimen of record depicts the term WebFOCUS, although

Applicant seeks to register only the word FOCUS. Applicant emphasizes that the

specimen depicts a term comprising the word “Web” (with an initial capital letter)

and the word “FOCUS” (in all capital letters). App. Br., 4 TTABVUE 6. According to

Applicant, the descriptive term “Web”2 “merely indicates a version of applicants [sic]

‘FOCUS’ software that is adapted for use on the worldwide web.” Id. at 8. Pointing to

its three prior registrations of the mark FOCUS,3 Applicant maintains that “?‘FOCUS’

performs a trademark function in and of itself and is separately registrable.” Id. at 9.

The Examining Attorney emphasizes that WebFOCUS appears on the specimen

as a single term “without a space between the terms,” “result[ing] in a term from

which neither ‘Web’ nor ‘FOCUS’ could be removed.” Ex. Att. Br., 6 TTABVUE 6.

According to the Examining Attorney, “[t]he term ‘Web’ [in the specimen] changes the

commercial impression of the applied-for mark.” Id. at 8. The Examining Attorney

maintains that the difference in capitalization between “Web” and “FOCUS” is

insufficient to create a separate commercial impression in “FOCUS.” Id. at 10.

We agree with the Examining Attorney that the drawing, depicting the standard-

character mark FOCUS, is not a substantially exact representation of the mark as

2 We grant Applicant’s request for judicial notice, App. Br., 4 TTABVUE 8, to the extent that
we recognize that the world wide web, often referred to as the “web,” is a part of the internet,
and that some software operates over the web. Cf. Fed. R. Evid. 201(b)(1) (judicial notice of
facts “generally known”).
3Reg. No. 2821942, issued March 16, 2004 (renewed); Reg. No. 2606298, issued August 13,
2002 (renewed); and Reg. No. 1652265, issued August 23, 1990 (renewed), all for the mark
FOCUS for various computer programs and services.

-4-
Serial No. 87951287

actually used, which is depicted on the specimen as WebFOCUS. Although the word

“Web” on the specimen features different capitalization than the word “FOCUS,” the

two words are both visually and conceptually joined. While “Web” is apparently

descriptive of Applicant’s software, we have no indication that it is generic or

otherwise completely lacking in trademark significance with respect to those goods.

By contrast, in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), the mark TINEL-

LOCK was connected by hyphens to a part number and a generic term, both of which

were found not to be part of the applicant’s mark. On Applicant’s specimen, “Web”

and “FOCUS” are conceptually joined because as Applicant admits, “Web” modifies

“FOCUS” to denote a particular version of Applicant’s software designed to run on

the web. The use of the words together creates the commercial impression of software

focused on the Web, different than the commercial impression that FOCUS alone

might create.

Finally, while we agree that Applicant’s registrations suggest that FOCUS is

registrable as a mark for Applicant’s software, the question before us is not whether

FOCUS is registrable in the abstract, but whether Applicant’s specimens

demonstrate that Applicant is using the mark FOCUS to identify the software

identified in this application. Although Applicant seeks to register FOCUS, the

specimen indicates that Applicant is using the mark WebFOCUS on or in connection

with its software. Because the drawing (FOCUS) is not a substantially exact

representation of the mark as actually used (WebFOCUS), registration must be

refused.

-5-
Serial No. 87951287

III. Conclusion

Having considered all of the evidence and argument of record, we conclude that

the drawing of Applicant’s mark is not a substantially exact representation of the

mark as used on or in connection with the goods.

Decision: The refusal to register under Trademark Act §§ 1 and 45, 15 U.S.C.

§§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv), 2.56(a), 2.63(b), is affirmed.

-6-