1301.02(f) Computer Software
A term that only identifies a computer program does not become a service mark for a separate service activity, unless it is also used to identify and distinguish the service. In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identifies computer program used in rendering services does not function as a mark to identify market analysis services); In re Info. Builders Inc., 213 USPQ 593 (TTAB 1982) (term identifies only a computer program, not the service of installing and providing access to a computer program); In re DSM Pharms., Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals). If the applicant’s services are provided through software, it is possible for a mark to serve as a source indicator for the services provided and not just for the software itself. See In re JobDiva Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) ("Even though a service may be performed by a company’s software, the company may well be rendering a service."). Therefore the examining attorney must review all the information of record to determine how the mark is used and how it is likely to be perceived by potential consumers. See In re JobDiva, 843 F.3d at 941, 121 USPQ2d at 1126 ("To determine whether a mark is used in connection with the services . . . a key consideration is the perception of the user."); In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006).
The Trademark Trial and Appeal Board has noted that:
[I]n today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software. Because of the ... blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers.
In re Ancor Holdings, 79 USPQ2d at 1221 (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services); see also In re JobDiva,121 USPQ2d at 1126 843 F.3d at 941, (noting that the question of whether consumers would associate registrant’s mark with the identified services, when each step of the services is performed by software, is a factual determination involving case-specific factors).