Offc Action Outgoing

The applicant has appealed the Trademark Attorney’s refusal to register the mark ANY ASSET, ONE NETWORK on the Principal Register for the goods “A COMPUTER SYSTEM COMPRISING COMPUTER HARDWARE AND RFID READERS, THAT ALLOWS ANY ULTRA HIGH FREQUENCY (UHF) GENERATION 2 (GEN 2) TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, REID READERS AND RFID HANDHELD READERS” in International Class 9 because all specimens of use submitted by applicant, which include the originally submitted specimen and substitute specimens submitted thereafter, were found unacceptable under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 2217. The refusal was issued for the reason that the specimens did not show the applied-for mark used in connection with any of the goods specified in the statement of use.

FACTS

On May 23, 2006 the applicant filed an intent to use application under Section 1(b) for the mark ANY ASSET, ONE NETWORK for the goods “A COMPUTER SYSTEM THAT ALLOWS ANY UHF GEN 2 TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, RFID READERS AND RFID HANDHELD READERS” in International Class 9. During examination, a standard character claim and a disclaimer statement for the term “NETWORK” were added to the record, as well as an amendment of the identification of goods to its current wording of “A COMPUTER SYSTEM COMPRISING COMPUTER HARDWARE AND RFID READERS, THAT ALLOWS ANY ULTRA HIGH FREQUENCY (UHF) GENERATION 2 (GEN 2) TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, REID READERS AND RFID HANDHELD READERS” in International Class 9. A Notice of Publication under Section 12(a) issued on February 7, 2007, followed by issuance of a Notice of Allowance on May 22, 2007. Applicant filed a Statement of Use on July 21, 2008, which included a specimen of use displaying the mark ANY ASSET, ONE NETWORK on a disc. An Office action issued September 30, 2008, where the specimen was rejected based on Trademark Act Sections 1 and 45, and raising the requirement for a substitute specimen. Applicant filed a response dated March 30, 2009 with substitute specimens. The substitute specimens were rejected in a Final Office action dated June 11, 2009. The applicant filed a timely Notice of Appeal and subsequently filed its appeal brief.

ARGUMENT

The rejection of the original specimen of use as submitted in the Statement of Use dated July 21, 2008, as well as the rejection of the substitute specimens of use submitted in the Responses dated March 30, 2009, are proper under Trademark Act Sections 1 and 45. Applicant’s specimens entitled “Exhibit 1” and “Exhibit 2” (Brief for Appellant) are unacceptable because they consists of advertising material for goods. Trademark Act Section 45 requires use "on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto." 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §904.04(b), (c). Both pages of the specimen clearly show the mark "Any Asset, One Network," but the content of the specimen indicates it is an advertising brochure to tout the advantages of applicant's RFID systems, and discusses use of those systems in the greater context of a business supply chain.

Applicant argues specimen Exhibit 1 “is a point of sale display associated directly with goods demonstrated and offered for sale at trade shows.” The applicant’s brief is the first mention that specimen Exhibit 1 is a point of sale display; no such explanation is provided in applicant’s Response dated 03/30/09 with which specimen Exhibit 1 was submitted. Notwithstanding, specimen Exhibit 1 continues to be unacceptable because, although identified as a point-of-sale display associated with the goods, it appears to be mere advertising material; it is not accompanied by evidence of point-of-sale presentation. See In re Ancha Elecs., Inc., 1 USPQ2d 1318, 1319-20 (TTAB 1986); TMEP §904.03(g). Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use. TMEP §904.04(b). Leaflets, handbills, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04. The language appearing on specimen Exhibit 1 merely function to tell prospective purchasers about the goods, and to promote the sale of the goods by using enticing language as follows:

Employ GS1Net3 enterprise wide achieving fully integrated GDSN, EDI, EPC for both RFID and Bar Code, DoD and/or Wal*Mart compliance, work in process, fixed and human asset tracking and control, across multiple geographies, employing heterogeneous technologies. Conduct business with data collected by sensory, identification and mobile devices…

The specimen also includes a detailed illustrated schematic entitled “Three Networks of the Supply Chain” to show an overview of the supply chain for which applicant’s goods will be used. Applicant presumes that “[i]t is apparent from a review of this specimen that it would make no sense as mere advertising literature to a customer without an associated demonstration and display.” This presumption seems contrary to what is actually shown on the specimen, replete with language touting applicant’s system.

The specimen Exhibit 2 is also mere advertising material. Similar to Exhibit 1, Exhibit 2 contains explanatory language for applicant’s system, highlighting features with bullets, such as “Greater possibilities for data processing” and “Increase resilience of the network”. In addition to bulleted features, the language in the specimen further provides information about the goods as follows:

First, epcSolutions offer RFID products which supply the radio-frequency identification functionality which is the foundation of the Any Asset, One Network™ solution. Sensors are then added to detect changes in the physical status of things which talk to the embedded intelligence located in the things themselves. Then, things can communicate with things. In essence, the power of the entire network is significantly enhanced. According to ITU, the result is a technological revolution. The customer will experience a shift from wireless sensors to empowering nanotechnology. The result is sensory connection, computing, communicating, interacting and connecting to nanotechnology in an intelligent way. Even the smallest of things can communicate to one another. The Internet of Things for Business – host of services are limited only by imagination.

Even more, the specimen includes the words “Work in Process Human Assets Supply Chain Fixed Assets” flanked by illustrated schematics which further explains applicant’s system. The content of specimen Exhibit 2 clearly shows it is advertising for applicant’s system. Applicant has indicated this specimen is a printout from the applicant’s web page, and that it “notes that epcSolutions supplies the goods and provides a means for ordering the goods.” While applicant has not expressly argued that the specimen is a web catalog with acceptable trademark use as a display associated with the goods, this appears to be what applicant is attempting to establish. In which case, the web page specimen is not acceptable to show trademark use as a display associated with the goods because it fails to include a picture or a sufficient textual description of the goods or the necessary ordering information or a weblink for ordering the goods, and thus, appears to be mere advertising material. A web catalog, web page, or similar specimen, which is otherwise a form of advertising, is acceptable to show trademark use as a display associated with the goods if it includes (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods. See In re Sones, ___ F.3d at ___, ___ USPQ2d at ___, 2009 U.S. App. LEXIS 28198, at *11-13; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; TMEP §904.03(h), (i); cf. Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316. Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822. Applicant’s assertion that the web page “notes” that applicant supplies the goods is hardly sufficient to meet the standards set forth in In re Sones and In re Dell Inc. Further, the specimen does not include any ordering information or a weblink for ordering the goods.

Applicant additionally argues that the original specimen (Exhibit 3, Brief for Appellant) submitted with the Statement of Use on July 21, 2008 is an acceptable specimen of use. Applicant describes the specimen as follows: “It is a disc that generates a visible showing of the mark on a computer monitor screen when the system is turned on or operated” (Brief for Appellant). Visual inspection of the specimen reveals it is a disc with the mark imprinted upon the disc, and such disc appears to be computer software on a recorded media. However, applicant’s goods are for “A COMPUTER SYSTEM COMPRISING COMPUTER HARDWARE AND RFID READERS, THAT ALLOWS ANY ULTRA HIGH FREQUENCY (UHF) GENERATION 2 (GEN 2) TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, REID READERS AND RFID HANDHELD READERS” (emphasis added). The specimen fails to show use of the mark on the applied-for goods that are in the nature of computer hardware and RFID readers. Applicant’s statement “that [the disc] generates a visible showing of the mark on a computer screen when the system is turned on or operated” would at best indicate that the mark is used with computer software. Obviously, to operate the computer software, it must be run by a computer or some other form of computer-related hardware. The generation of an image in the form of a trademark produced by running software on a computer speaks to the source of the software, not the hardware.

CONCLUSION

The specimens of use submitted by applicant fail to show the applied-for mark ANY ASSET, ONE NETWORK used in connection with any of the goods specified in the statement of use for "A COMPUTER SYSTEM COMPRISING COMPUTER HARDWARE AND RFID READERS, THAT ALLOWS ANY ULTRA HIGH FREQUENCY (UHF) GENERATION 2 (GEN 2) TAGGED ASSET TO BE CREATED OR ENCODED AND LATER READ AND VALIDATED BY RFID PRINTERS, REID READERS AND RFID HANDHELD READERS” in International Class 9. The original specimen of use showed the use of the mark upon a CD for software, but did not show the mark used in connection with applicant’s hardware goods. The substitute specimens consisted solely of advertising material for the goods, and therefore failed to show proper trademark use upon goods. The examining attorney respectfully requests that the Board affirm the rejection of applicant’s specimens of use under Trademark Act Sections 1 and 45.

Respectfully submitted,

Ada P. Han

/Ada P. Han/

U.S. Patent & Trademark Office

Trademark Attorney

Law Office 106

(571) 272-5873

(571) 272-9106 (fax)

Mary I. Sparrow

Managing Attorney

Law Office - 106