LAIPLALAIPLA
LAIPLALAIPLA
  • About
    • About LAIPLA
    • Ambassador Outreach Program
    • Board of Directors
    • Committees
    • Administration
    • Member Firms and Companies
    • Past Presidents
    • Recent Past Presidents
    • Public Service Award
    • Diversity Fellowship
    • Bylaws
  • Events
  • Membership
  • Sponsorship
  • Contact
  • About
    • About LAIPLA
    • Ambassador Outreach Program
    • Board of Directors
    • Committees
    • Administration
    • Member Firms and Companies
    • Past Presidents
    • Recent Past Presidents
    • Public Service Award
    • Diversity Fellowship
    • Bylaws
  • Events
  • Membership
  • Sponsorship
  • Contact

TTAB Affirms Refusal of USER FIRST for Software Tools: Specimen Doesn’t Show Use of Mark

December 18, 2019January 14, 2020| in The TTABlog| by John L. Welch
The Board affirmed a refusal to register the mark USER FIRST for “Computer software, namely, software development tools for the creation of mobile internet applications and client interfaces,” agreeing with Examining Attorney Jacob Vigil that applicant’s specimen of use failed to show the mark in use with the identified goods. In re User First, Serial No. 87231226 (December 9, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant claimed that its specimen of use (shown above) was “the first page of a 103 page pdf instruction manual for the User First platform.” The Board acknowledged that an instruction manual may be an appropriate specimen of use under Rule 2.56(b)(1).

The examining attorney, however, refused to accept the specimen because “the cover page is not clearly an instruction manual for downloadable software.” He contended that the text on the page creates ambiguity as to the nature of the specimen. “[T]he specimen appears to be training materials for a class or training program and not an instruction manual provided with the goods such that it functions as a part of the goods.” The Board agreed with the examining attorney.

We are not persuaded by Applicant’s contention that use of the wording “Certification Training Lab,” as opposed to “instruction manual” or “user manual,” does not substantially change the specimen’s purpose as a manual for the goods. While we accept that an instruction manual may be called different things, it is doubtful that materials associated with the terminology “Certification Training Lab” would be recognized by consumers as manuals containing instructions on how to create mobile internet applications or client interfaces using software development tools such as provided by Applicant. Moreover, the record is devoid of evidence showing that Applicant’s cover page specimen is from a manual provided contemporaneously with, and that functions as part of, the identified software goods.

Concluding that the specimen of use is “unlikely to be recognized as a cover to an instruction manual” for the identified goods, the Board deemed the specimen inadequate and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: During prosecution, applicant submitted two other specimens, but both were rejected. What can you say?

Text Copyright John L. Welch 2019.

IP Blog Categories

  • Announcements
  • Events
  • LAIPLA News
  • The TTABlog
  • Uncategorized
  • Wegner's Top 10
  • Wegner's Writings

Archives

Previous

TTAB Sustains Section 2(d) Opposition to CRAFT BEARINGS Based on Opposer’s Common Law Use of CRAFT BEARING COMPANY

Next

Divided TTAB Panel Finds “19 CRIMES” Merely Descriptive of Videos and Entertainment Services


Since 1934, LAIPLA has been educating and connecting members of the local intellectual property legal community

Pages

About 
Events
Membership
Sponsorship
Contact
Privacy Policy

Search
Contact

LAIPLA
1621 W 25th Street
Box 633
San Pedro, CA 90732
Phone: (323) 285-1654
Fax: ( 310) 878-0517
Email: office@laipla.net

© 2025 Los Angeles Intellectual Property Law Association. All Rights Reserved | Website design by Arclight Digital.