Boehringer Ingelheim Vetmedica, Inc.

Trademark Trial and Appeal Board

Nov 6, 2019

87072333 (T.T.A.B. Nov. 6, 2019)

Mailed: November 6, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Boehringer Ingelheim Vetmedica, Inc.
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Serial No. 87072333
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Scott J. Major, Millen White Zelano & Branigan PC, for Boehringer Ingelheim Vet-
medica, Inc.
Tejbir Singh, Law Office 106, Mary I. Sparrow, Managing Attorney.
———
Before Mermelstein, Bergsman, and Coggins, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Alleging an intent to use its mark in commerce, Boehringer Ingelheim Vetmedica,
Inc., applied to register1 the mark PREVENTION CHAIN (in standard characters)
for
Educational services, namely, providing classes, seminars,
workshops, conferences and webinars on the treatment and
management of infections in swine and other animals
(Class 41); and
Providing veterinary information on the prevention, treat-
ment and management of infections in swine and other an-
imals (Class 44).

1 Filed June 15, 2016.
This Opinion is not a
Precedent of the TTAB
Serial No. 87072333
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Following publication in the Official Gazette and issuance of a notice of allowance,
Applicant filed a statement of use (SOU) accompanied by a specimen for each class.
Stmt. of Use (Aug. 1, 2017). The Examining Attorney refused registration “because
the applied-for mark d[id] not appear anywhere on the specimen for” either class. Ofc.
Action (Aug. 25, 2017). In response, Applicant filed substitute specimens. Resp. to
Ofc. Action (Sept. 17, 2017).
Upon examination, the Examining Attorney found the substitute specimens un-
acceptable:
The first page is unacceptable because the mark does not
stand apart from other wording within the paragraph and
header. Consumers would not perceive the term as a ser-
vice mark. The second page shows the mark as the third
header in a row with three columns. It is unclear what ser-
vices, if any, applicant is providing in connection with the
mark.
Ofc. Action (Sept. 28, 2017).
Applicant responded, arguing that the specimens provided are acceptable. Resp.
to Ofc. Action (Dec. 10, 2017). Nonetheless, the Examining Attorney continued the
requirement for acceptable specimens and issued a new refusal on the ground that
“the applied-for mark, as used on the specimen of record, merely identifies a process
or system; it does not function as a service mark to indicate the source of applicant’s
services and to identify and distinguish them from others.” Ofc. Action (Dec. 29,
2017).
Once again, Applicant responded, contending that the specimens are acceptable
and that the mark is not used merely to identify a process. Resp. to Ofc. Action (June
Serial No. 87072333
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29, 2018). Not persuaded, the Examining Attorney made both refusals final. Ofc. Ac-
tion (July 23, 2018). Applicant filed an appeal and requested reconsideration, which
was denied. Req. for Recon. (Jan. 23, 2019), denied, Ofc. Action (Mar. 1, 2019).
We affirm.
I. Applicable Law
The Trademark Act is not an act to register words but to
register trademarks. Before there can be registrability,
there must be a trademark (or a service mark) and, unless
words have been so used, they cannot qualify for registra-
tion. Words are not registrable merely because they do not
happen to be descriptive of the goods or services with which
they are associated.
In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960).
Not surprisingly, Section 1 of the Trademark Act contemplates registration of
trademarks. See Trademark Act § 1(a)(1) (“The owner of a trademark . . . may re-
quest registration of its trademark . . . .” (emphasis added)); § 1(b)(1) (“A person who
has a bona fide intention . . . to use a trademark in commerce may request registra-
tion of its trademark . . . .” (emphasis added)). Likewise, Section 2, which sets out
various bars to registration, contemplates that what is sought to be registered must
be a trademark in the first place. Trademark Act § 2 (“No trademark . . . shall be
refused registration . . . unless it . . . .” (emphasis added)).2
A trademark “includes any word . . . used by a person . . . to identify and distin-
guish his or her goods . . . from those manufactured or sold by others and to indicate

2 While Section 2 and other provisions of the Act speak of trademarks used on goods, these
same provisions generally apply to the registration of service marks used in connection with
services. Trademark Act Section 3, 15 U.S.C. § 1053. Unless otherwise noted, references in
this decision to statutory provisions and cases discussing goods apply equally to services.
Serial No. 87072333
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the source of the goods.” Trademark Act § 45. But as the court noted in Standard Oil,
not every word that might be used on or in connection with a good is a trademark. To
be a trademark, a word must “identify and distinguish” the relevant goods or services
and “indicate the[ir] source.” Trademark Act § 45. During examination of an applica-
tion under Section 1, the Examining Attorney must examine the specimens to deter-
mine whether an applicant is using the applied-for matter as a trademark. See In re
Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (examining attorney
should look primarily to the specimen to determine whether a designation would be
perceived as a source indicator). As relevant to this case, it has long been determined
that a designation that is solely used to designate a process or method is neither a
trademark for services, In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456,
457 (CCPA 1973), nor goods, In re Griffin Pollution Control Corp., 517 F.2d 1356, 186
USPQ 166, 167 (CCPA 1975). While a designation may serve as a trademark notwith-
standing that it also identifies a method or process, “[a] term that identifies only a
process, style, method or system is not registrable as a [trade]mark.” In re HSB Sol-
omon Assocs., LLC, 102 USPQ2d 1269, 1270 (TTAB 2012).
II. Specimens and Evidence
Applicant “concede[s] that the specimens submitted with its SOU properly were
rejected by the Examiner.” App. Br. 8 TTABVUE 2. In response to the initial Office
Action addressing Applicant’s SOU, Applicant submitted two substitute specimens.
Applicant did not designate which substitute specimen is alleged to support which of
the two classes of services involved, so we will consider the acceptability of both sub-
Serial No. 87072333
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stitute specimens with respect to each class. We have reproduced3 Applicant’s substi-
tute specimens below:
First Specimen

3 Images were cropped and enlarged to show the relevant part.
Serial No. 87072333
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Second Specimen

Both specimens are webpages. The first is the beginning of an article, Prevention
Chain Approach for Systematic Disease Control in Large Farms, by Oliver Duran and
Eduardo Fano, dated August 4, 2016, discussing “[t]he Infection/Prevention Chain™
concept” and “Infection and Prevention Chain™ thinking.” The second is a chart,
Serial No. 87072333
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showing steps in the “Production Chain” alongside those in the “Infection Chain” and
the “Prevention Chain.”
With his final Office action, the Examining Attorney submitted a longer version
of the article comprising the first specimen, as well as an article about the Prevention
Chain, Final Ofc. Action (July 23, 2018) (National Hog Farmer, Integrating the In-
fection/Prevention Chain™ method into the swine herd). With his denial of reconsid-
eration, the Examining Attorney submitted several other articles:
• Global PRRS Solutions, Infection chain – PRRS control, https://www.prrs.
com/en/prrs-control/infection-chain/ (Mar. 1, 2019);
• WATTAgNet, Eduardo Fano and Oliver Duran, Controlling pig disease
with prevention chain approach, https//www.wattaqnetcom/articles/27880-
controlling-pig-disease-with-prevention-chain-approach (Mar. 1, 2019).
• Eduardo Fano, Applying the Infection Chain™ and Prevention Chain™,
https://www.swineresource.com/swine-resources/prevention/applying-the-
infection-chain-and-prevention-chain (Mar. 1, 2019).
Denial of Recon. (Mar. 1, 2019).
III. Analysis
The Examining Attorney maintains that, as used on the substitute specimens,
Applicant’s mark merely identifies a method or process in that it refers to an approach
or concept of livestock disease prevention. Ex. Att. Br. 10 TTABVUE 6. Pointing to a
more complete version of the article which comprises the first substitute specimen,
the Examining Attorney notes that
“logical chain-thinking is used to create multi-phase inter-
vention strategies,” and this is done “by matching ‘produc-
tion chain’ with ‘infection chain,’ resulting in a ‘prevention
chain’ ” that is focused on the entire production system at
all stages. See March 1, 2019 Reconsideration Letter,
TSDR p. 8. The article indicates that “implementation of a
Serial No. 87072333
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systematic prevention chain approach . . . has allowed suc-
cessful PRRS control, e.g., using load-close-homogenize
protocols.” The article further describes that “[b]y system-
atically applying these methods and measuring the out-
come you can establish two novel metrics.” See March 1,
2019 Reconsideration Letter, TSDR p. 9. This evidence
demonstrates that the applied-for mark refers to a method
or process.
Id. at 7.
Likewise, the Examining Attorney maintains that the second substitute specimen
merely “shows how the ‘production chain,’ ‘infection chain’ and ‘prevention chain’ are
connected.” Id. The chart shows “how the ‘Infection/Prevention concept’ connects ‘ep-
idemiological events (infection chain) alongside the herd/production system (produc-
tion chain), using a logical chain thinking to create this new concept focused in dis-
ease prevention in a comprehensive way (prevention chain).’ ” Id. The Examining At-
torney maintains that because the mark is used only to denote a concept, it does not
function as a trademark for the identified educational or information services.
We agree. As used on the specimens of record, the proposed mark PREVENTION
CHAIN identifies only a concept of disease prevention among swine. The first speci-
men variously identifies PREVENTION CHAIN as an “approach,” a “concept,” and
a manner of “thinking” about disease prevention. Nowhere, however, is
PREVENTION CHAIN used to identify either educational services or providing vet-
erinary information. Likewise, the second specimen uses PREVENTION CHAIN as
the title of a process of swine disease prevention, but not in connection with any of
the identified services. While Applicant’s specimens might themselves be character-
ized as educational or informational materials, they do not evidence use of
Serial No. 87072333
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PREVENTION CHAIN to advertise or sell the educational or informational services
identified in the application. It is not enough that the proposed mark merely appear
on educational or informational materials. The mark must identify those services and
indicate their source.
IV. Conclusion
Because a process is neither a good nor a service, it follows that a designation
which serves solely to identify a process does not function as a trademark, and cannot
be registered as one. HSB Solomon Assocs., 102 USPQ2d at 1270. Likewise, any spec-
imen must demonstrate use of an applicant’s mark to identify and distinguish the
applicant’s services and to indicate their source. Trademark Act § 45. In this case,
Applicant’s specimens do not show use of PREVENTION CHAIN to identify and
distinguish Applicant’s identified educational services or its information services. At
best, the mark identifies a process or concept of swine disease prevention. The speci-
mens are thus inadequate to support the application for registration in connection
with the identified services.
Decision: The refusal to register under Trademark Act §§ 1, 2, 3, and 45 is affirmed.