904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, and Videos, or Audio Recordings
The computer program, video, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, that is, programs or movies, are displayed on a screen (e.g., on the first several frames of a movie).
An acceptable specimen might be a photograph or printout of a display screen projecting the identifying trademark for a computer program, or a photograph of a frame(s) of a movie or video bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use).
For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website. See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007). See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.
Similarly, a specimen for audio recordings in Class 9 that shows use of the mark on an internet website must include a “download” or similar link to put the consumer on notice that the identified goods are available for download. Absent such a link or the equivalent thereof, the specimen on its face fails to show use of the mark in commerce for the goods. In re Rogowski, 104 USPQ2d 2012, 2014-15 (TTAB 2012).
Specimens for software may also indicate that the software is a “beta” version. This term is commonly used in the software field to identify a preliminary version of a product. Although some beta products may not be made available to consumers, others are. Thus, the appearance of this term on a specimen for software does not, by itself, necessarily mean that the relevant goods are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration under §§1 and 45 of the Trademark Act because the applicant has not provided evidence of use of the applied-for mark in commerce. 15 U.S.C. §§1051, 1127. See TMEP §1301.03(a) regarding service mark specimens containing the term “beta.”