Arrow Electronics, Inc.

Trademark Trial and Appeal Board

Nov 22, 2013

No. 77786012 (T.T.A.B. Nov. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
November 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Arrow Electronics, Inc.
_____

Serial No. 77786012
_____

Andrew Roppel of Holland & Hart LLP for Arrow Electronics, Inc.

David C. Reihner, Trademark Examining Attorney, Law Office 111 (Robert
Lorenzo, Managing Attorney).
_____

Before Quinn, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Arrow Electronics, Inc. (“applicant”) seeks registration of the mark shown
below

(with ENGINEER FOCUSED NAVIGATION disclaimed) for “Computer services,
namely, creating indices of information and other resources available on computer
Serial No. 77786012
2

networks,” in International Class 42.1 The examining attorney refused registration
of the mark under 15 U.S.C. §§ 1051 and 1127, because the specimen submitted
with applicant’s March 19, 2012 Statement of Use “does not show the applied-for
mark in use in commerce … in the sale or advertising of the services.” Office Action
of April 26, 2012.
After the refusal became final, applicant appealed and applicant and the
examining attorney filed briefs. We affirm the refusal to register.
By way of relevant background, applicant originally sought registration of the
involved mark based on use under Section 1(a) of the Act, for not only the “computer
services” in International Class 42 at issue in this appeal, but also for “On-line
retail store services” featuring electronic products in International Class 35. After
the examining attorney found applicant’s specimen of use to be acceptable for the
Class 35 services but unacceptable for the Class 42 services, applicant amended the
filing basis of the Class 42 services to intent to use, and successfully requested that
the Class 35 services be divided from the application.2 Ultimately, following
issuance of a notice of allowance with respect to the Class 42 services, applicant
filed this portion of an eight page advertisement as a specimen of use for those
services:

1 Application Serial No. 77786012, originally filed July 21, 2009 based on use, and
later amended to claim an intent to use the mark in commerce under Section 1(b) of the
Act. The color purple is claimed as a feature of the mark.
2 Child application Serial No. 77980880, which eventually issued on March 22, 2011
as Registration No. 3933700 for “On-line retail store services featuring radio-frequency
transistors, mixers, switches, amplifiers, oscillators, radio-frequency diodes, radio-
frequency modules, resonators, attenuators, bias drivers, detectors, digital signal processors
….”
Serial No. 77786012
3

Serial No. 77786012
4

The examining attorney found the specimen unacceptable “because it fails to
state how applicant will create indices on the computers of others to their order and
specification.” More specifically,
[t]he specimen indicates that applicant has instituted a
navigation system on its own web site in order for
customers to find the parts they want, which are
marketed by applicant. But this is an internal computer
navigation system employed by applicant to market its
own goods, not a service applicant provides to others by
which the computers of others are modified.

Office Action of March 27, 2012; see also Office Action of April 26, 2012. Eventually,
applicant filed the remaining seven pages of the eight page advertisement from
which the page reproduced above was copied, but the examining attorney found the
entire advertisement to also be unacceptable as a specimen, for essentially the same
reasons. Office Action of November 8, 2012.
Applicant argues that “creating indices of information” is a “real” activity or
service, relying on a Wikipedia entry for “database index” submitted with
applicant’s Office Action response of October 26, 2012. According to the entry, a
“database index” is “a data structure that improves the speed of data retrieval
operations on a database table …,” and applicant claims that such indices are
“central to the information age in which we live.” Applicant’s Appeal Brief at 2.
Moreover, rather than being “ancillary to Applicant’s primary business,” or being
for applicant’s own use, applicant argues that its database indices provide
applicant’s customers, i.e. others, “with a variety of different ways to obtain design
resources and to improve time to market, find alternative solutions, save
Serial No. 77786012
5

developmental costs, reduce risk, and improve design performance.” Id. at 2-3.
Applicant points out that its indices include not only “information from Applicant’s
own databases,” but also information “from the databases of third parties.” Id.
(emphasis in original).
The examining attorney argues that the eight page advertisement submitted
as a specimen “does not show applicant’s applied-for mark functioning as a source
indicator” because it does not “show use of the applied-for mark for … creating
indices of information and other resources available on computer networks.”
Examining Attorney’s Appeal Brief at 4-5. Rather, according to the examining
attorney, “applicant provides design services for engineers to help them in their
profession and to purchase related goods,” and there is “no direct association
between applicant’s proposed mark and the services it claims to provide to others.”
Id. at 6, 8. The examining attorney argues that applicant does not create database
indices for others, but instead created its database indices “to improve its own
business efficiency.” Id. at 9.
A service mark is “any word, name, symbol … used … to identify and
distinguish the services of one person, including a unique service, from the services
of others and to indicate the source of the services, even if that source is unknown.”
15 U.S.C. § 1127. While this is a broad definition, “some business activities which
may be described in terms of a ‘service’ to the public do not constitute a service
within the intendment of the Act.” In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d
1207, 1208 (Fed. Cir. 1987). In fact, “subject matter that, due to … the manner in
Serial No. 77786012
6

which it is used, does not function as a mark to identify and distinguish the
applicant’s applied-for services cannot be registered. A term that identifies only a
process, style, method or system is not registrable as a service mark.” In re HSB
Solomon Associates LLC, 102 USPQ2d 1269, 1270 (TTAB 2012). Moreover, “the
rendering of a service which is normally ‘expected or routine’ in connection with the
sale of one’s own goods is not a registrable service whether denominated by the
same or a different name from the trademark for its product.” In re Dr Pepper, 5
USPQ2d at 1208. Indeed, the “service for which registration is sought must be
rendered to others.” Id. (emphasis in original).
Applicant’s “service mark specimen must show the mark as actually used in
the sale or advertising of the services” for which registration is sought. Trademark
Rule 2.56(b)(2). Here, however, applicant’s specimen of use does not do so. In fact,
while applicant has established that “creating indices of information,” or as the
Wikipedia entry refers to it, a “database index,” may be described as a “service,” in
this case applicant’s specimen makes clear that applicant’s “indices of information”
are not “a service within the intendment of the Act.” Dr Pepper, 5 USPQ2d at 1208.
To the contrary, applicant’s specimen establishes that applicant’s Class 42 services
are not provided to “others.”
Specifically, applicant’s specimen promotes applicant’s “On-line retail store
services” featuring electronic products in Class 35, but does not constitute an offer
by applicant to create “indices of information and other resources available on
computer networks” for applicant’s customers or potential customers. For example,
Serial No. 77786012
7

page 3 of the specimen reproduced above states “Find the information you need the
way that makes the most sense to you,” including information about applicant’s
“Products,” which are sold through applicant’s “On-line retail store services.”
Applicant’s “indices of information” also allow applicant’s online retail store
customers to discover “Applications” for which applicant sells parts, to search for
parts related to various “Industries,” and to “Discover the services and capabilities
of [applicant] to build, customize or enhance products to your exact specifications.”
In other words, the goods and services applicant provides to others are not “indices
of information,” but are instead “On-line retail store services,” which are rendered
in part through the database. This is well illustrated on page 2 of the specimen:

Serial No. 77786012
8

This portion of applicant’s specimen makes clear that applicant’s “indices of
information” enable applicant’s online retail store customers “to locate parts,
documents and information on richardsonrfpd.com,” applicant’s website. However,
“[i]t is well settled that promoting the sale and use of one’s goods [or in this case
retail store services] is not, per se, a service within the meaning of the statute.” In
re Reichhold Chemicals, Inc., 167 USPQ 376, 377 (TTAB 1970).
This case is in many ways analogous to Lens.com Inc. v. 1-800 Contacts Inc.,
686 F.3d 1376, 103 USPQ2d 1672 (Fed. Cir. 2012). There, 1-800 Contacts
petitioned to cancel Lens.com’s registration for the mark LENS for “computer
software featuring programs used for electronic ordering of contact lenses in the
field of ophthalmology, optometry and opticianry.” The Board granted summary
judgment in favor of 1-800 Contacts, because Lens.com’s “software … for electronic
ordering of contact lenses” was not a “good in trade” but was instead merely the
“conduit” through which Lens.com rendered its online retail store services featuring
contact lenses. In affirming the Board’s decision, the Federal Circuit considered
whether Lens.com’s customers associated the LENS mark with software as opposed
to online retail store services, specifically by determining “whether the software: (1)
is simply the conduit or necessary tool useful only to obtain [Lens.com’s] services;
(2) is so inextricably tied to and associated with the service as to have no viable
existence apart therefrom; and (3) is neither sold separately from nor has any
independent value apart from the services.” Id., 103 USPQ2d at 1676. The Court
found that Lens.com’s software was “merely the conduit through which it renders
Serial No. 77786012
9

its online retail services,” that the software “is inextricably intertwined with the
service that Lens.com provides to its customers” and that while the software may
add value to Lens.com’s services “by enhancing the overall consumer experience,
there is no evidence that it has any independent value apart from in rendering the
service.” Id.
Similarly, in this case, applicant’s specimen makes clear that its “indices of
information” are merely the “conduit” through which applicant’s customers find the
products applicant sells and thereby obtain applicant’s online retail services, that
applicant’s indices are “inextricably tied to” and have “no viable existence apart”
from applicant’s online retail store services and that applicant’s indices are not sold
separately from and have no independent value apart from applicant’s online retail
store services. Indeed, applicant’s specimen promotes applicant’s retail store
services, but not “indices of information” apart therefrom, and applicant does not
claim, much less introduce any evidence, that it sells its “indices of information” to
others. To the extent that applicant’s mark is used in the specimen to identify
applicant’s “indices of information” regarding the products applicant offers through
its online retail store services, that does not elevate applicant’s “indices of
information” into a separate, registrable service offered or sold to others. See, In re
Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); In re HSB
Solomon, 102 USPQ2d at 1274.
In short, while applicant’s database index appears to be robust and useful to
applicant’s customers, it is not what applicant sells to others. Rather, the database
Serial No. 77786012
10

index is a “routine and ordinary” sales activity which is “part and parcel” of and
“incidental to” applicant’s online retail store services, and is merely “an inducement
to the sale” of those services. Dr Pepper, 5 USPQ2d at 1208-09; In re Orion
Research Inc., 669 F.2d 689, 205 USPQ 688, 690 (CCPA 1980); In re Thomas White
International Ltd., 106 USPQ2d 1158, 1160-63 (TTAB 2013); In re Ameritox Ltd.,
101 USPQ2d 1081, 1084-85 (TTAB 2011).

Decision: The refusal to register applicant’s mark is affirmed.