Mermelstein*
Lynch
Larkin
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 dOrigine v. Vintners Intl 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. Applicants Drawing and Specimen
Applicants 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 Web2 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 Applicants 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 Applicants 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 applicants mark. On Applicants specimen, Web
and FOCUS are conceptually joined because as Applicant admits, Web modifies
FOCUS to denote a particular version of Applicants 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 Applicants registrations suggest that FOCUS is
registrable as a mark for Applicants software, the question before us is not whether
FOCUS is registrable in the abstract, but whether Applicants 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 Applicants 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-
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 dOrigine v. Vintners Intl 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. Applicants Drawing and Specimen
Applicants 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 Web2 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 Applicants 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 Applicants 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 applicants mark. On Applicants specimen, Web
and FOCUS are conceptually joined because as Applicant admits, Web modifies
FOCUS to denote a particular version of Applicants 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 Applicants registrations suggest that FOCUS is
registrable as a mark for Applicants software, the question before us is not whether
FOCUS is registrable in the abstract, but whether Applicants 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 Applicants 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-