CEM CorporationDownload PDFTrademark Trial and Appeal BoardSep 29, 2014No. 85478890 (T.T.A.B. Sep. 29, 2014) Copy Citation Mailed: September 29, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re CEM Corporation ———— Application Nos. 85478855 & 85478890 Filed: November 22, 2011 ———— Philip Summa, Smith Parsons & Summa, for applicant. Karanendra S. Chhina, Examining Attorney, K. Margaret Le, Managing Attorney, Law Office 114. ———— Before Mermelstein, Shaw, and Kuczma, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant filed applications to register the marks CEM ONE TOUCH and CEM ONE TOUCH TECHNOLOGY, alleging a bona fide intent to use the marks in com- merce.1 After amendment, both applications identify the following goods and services: Scientific instruments for performing automated microwave- assisted chemical reactions, in International Class 9; and Scientific and technological consultation services in the field of automated microwave-assisted chemical reactions; infor- mation services, namely, providing techniques and protocols for conducting automated microwave-assisted chemical re- actions, in International Class 42. 1 “ONE TOUCH” and “ONE TOUCH TECHNOLOGY” were disclaimed in their respective ap- plications. This Opinion is Not a Precedent of the TTAB Application Nos. 85478855 & 85478890 2 After publication of the marks in the Official Gazette and issuance of notices of al- lowance, applicant submitted a statement of use and specimens in each application. The examining attorney rejected the specimens and applicant appealed. Because these applications share common issues of law and fact, we will issue a single opinion, noting the difference between the two appeals as appropriate. I. Applicable Law An application for registration of a trademark may be filed based on the applicant’s declaration that it has a bona fide intent to use the mark in commerce. Trademark Act § 1(b). Before registration can be granted, however, a § 1(b) applicant must file a timely statement of use, including a declaration that the mark is in use in commerce, a listing of the goods or services on or in connection with which the mark used, and providing the date of first use and use of the mark in commerce. The applicant must include at least one specimen per International Class of goods or services, showing how the appli- cant uses the applied-for mark in commerce. Trademark Act § 1(d)(1); Trademark Rule 2.88(b). The general requirement for a specimen is set out in the Trademark Rules: (a) An application under section 1(a) of the Act, an amend- ment to allege use under § 2.76, and a statement of use under § 2.88 must each include one specimen per class showing the mark as used on or in connection with the goods or services. When requested by the Office as rea- sonably necessary to proper examination, additional specimens must be provided. (b) (1) A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the Application Nos. 85478855 & 85478890 3 goods, or displays associated with the goods. (2) A service mark specimen must show the mark as ac- tually used in the sale or advertising of the services. .... Trademark Rule 2.56(a), (b)(1)–(2). The acceptability of specimens in Rule 2.56 is in turn based on the definition of “use in commerce” in the statute: Use in commerce. The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in com- merce— (1) on goods when— (A) it is placed in any manner on the goods or their con- tainers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Trademark Act § 45. Finally, in an application for registration of a trademark, “the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.” Trademark Rule 2.51(b). The “substantially exact” standard requires a high degree of similarity between the mark as actually used and the mark as it appears in the application. Although some variance is permitted, the Application Nos. 85478855 & 85478890 4 standard is higher, for instance, than the “material alteration” standard used when considering the acceptability amendments to the drawing in an application. In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 n. 4 (TTAB 2008). II. Issues A. Class 9 Goods Applicant’s class 9 specimens appear to be photographs depicting scientific instru- ments. There is no question that the words of the mark appear on the pictured goods. But according to the examining attorney, the elements of the marks, CEM and ONE TOUCH (‘885 Application) and CEM and ONE TOUCH TECHNOLOGY (‘890 Appli- cation), do not appear to be single marks as used on those goods. Ex. Atty. Br. at 6. Alt- hough applicant has not objected, we note that the examining attorney has been some- what inconsistent about the legal basis for the refusal. Part of the confusion may stem from the fact that this issue can be framed several ways: It could be said that the drawing is unacceptable because it is not a “substantial- ly exact” representation of the mark as actually used, Trademark Rule 2.51(b) (men- tioned in the final Office action), or that the specimen does not “show[ ] the mark as used on or in connection with the goods or services” as required by Trademark Rules 2.56 (cited in both Office actions) and 2.88(b)(2) (cited in the first Office action). The is- sue could also be stated as one of use under Trademark Act §§ 1 and 45, because a mark may not be registered under § 1 without use in commerce (as defined in § 45), and the mark in the drawing is arguably not the one applicant is using. (Cited as the primary grounds for refusal in the examining attorney’s brief and mentioned in the fi- nal Office action.) Or one could say that the specimens evidence applicant’s use of two Application Nos. 85478855 & 85478890 5 different marks, although according to Trademark Rule 2.52(a), the drawing in an ap- plication must be limited to a single mark. (Discussed in the final Office action and Brief). As noted, applicant has not objected to any inconsistency on the part of the Office in this regard, and we do not think the variations in the rationales put forward for the refusal to register are significant. In this situation, several sections of the statute and rules overlap or provide alternate aspects of the same issue, but it is clear that they all apply to the same facts here, and the examining attorney’s explanation of the problem was more than adequate to inform the applicant of the reason for the refusal: Although applicant has applied for registration of a single mark for goods in each application, the specimen depicts use of “the” mark as two separate elements. B. Class 42 Services Applicant’s International Class 42 services are identified as “scientific and techno- logical consulting services...,” and its specimen of use for this class comprises a single page from applicant’s website. It is the examining attorney’s contention that appli- cant’s specimen does not demonstrate the mark as it is used in connection with the identified services because it makes no mention of providing such services. Applicant disagrees. III. Discussion A. Class 9 Goods When considering similar cases, we have noted that “everything depends on the specimens.” In re Jordan Industries, Inc., 210 USPQ 158, 159 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649, 650 (TTAB 1977). We have cropped, enlarged, Applica and rep wording tion Nos. 8 roduced ap . C 5478855 & plicant’s c lass 9 — ‘ 85478890 lass 9 spec 885 Applic 6 imens belo ation for w and we CEM ONE have circle TOUCH d the relevant Applica Con show th tion Nos. 8 Class 9 — sistent wit e words “O 5478855 & ‘890 Ap h the exam NE TOUC 85478890 plication f ining atto H” and “ON 7 or CEM ON rney’s argu E TOUCH E TOUCH ment, app TECHNO TECHNOL licant’s cla LOGY” o OGY ss 9 specim n a label on ens the Application Nos. 85478855 & 85478890 8 upper-right hand corner of what appears to be the face of a scientific instrument. The words are set out in slightly leaning italic type in white on a blue background on top of a concentric-circle design. By contrast, the letters “CEM” are in both cases embossed in what appears to be the off-white plastic exterior of the depicted instrument, along the bottom center of the front side. The letters are depicted in a different size and typeface than “ONE TOUCH” and “TECHNOLOGY,” and in both cases, “ONE TOUCH” and “TECHNOLOGY” are separated from “CEM” by another label bearing another mark — MARS 6 (and design) — as well as the front door of the instrument itself. Citing Trademark Act § 45, applicant points out that a mark may be applied to goods in “any manner,” including by labels, stampings, and the like. App. Br. at 4 (cit- ing TMEP § 904.03). Applicant is correct — there is no limit to the ways in which a mark may be applied to goods, nor is there any specific requirement as to where a mark must appear on the goods. There is nothing per se “wrong” with the fact that part of applicant’s mark (“ONE TOUCH” and “TECHNOLOGIES”) appears on applicant’s goods on a label and another part (“CEM”) appears stamped or embossed in the surface of the goods. But that was not the basis of the refusal to register in this case. However they are applied to the goods and wherever they may appear, the ele- ments of a compound mark must — from the perspective of the purchasers and users of those goods — appear to comprise a single2 trademark. In this case, the considerable 2 Relying on some of our caselaw, applicant and the examining attorney seem to agree that “the issue ... is whether the specimen of use accurately depicts a single, unitary mark engendering a unique and distinct commercial impression, or whether the specimens depict two separate marks,” Ex. Atty. Br. at 6 (citing In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Indus., Inc., 210 USPQ 158 (TTAB 1980)); see App. Br. at 2, and each has (continued...) Application Nos. 85478855 & 85478890 9 difference in the appearance of “ONE TOUCH” or “ONE TOUCH TECHNOLOGY” and “CEM” — along with the fact that the elements are physically separated on the goods — belies the notion that they form a single mark. See In re Audi, 197 USPQ at 651 (“Much has been made of the space between ‘AUDI’ and ‘FOX’ and design on the lid of the car’s trunk. Applicant explains that the space results from esthetic and engineering considerations. Regardless of the cause, the arrangement does tend to reaffirm the pub- lic’s probable understanding that two marks are being used.”). The cases applicant cites are inapposite. See App. Br. at 3 (citing In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (CCPA 1972); In re Sones, 590 F.3d 1282, 93 USPQ2d 1118 (Fed. Cir. 2009); Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); In re Dell, 71 USPQ2d 1725, 1726 (TTAB 2004)). The is- sue in the case at bar is not whether a mark on a display associated with the goods is argued whether applicant’s marks are unitary or not. We have doubts about the usefulness of the concept of “unitary” marks in this context, at least in the way unitariness is usually defined. The concept of unitariness is usually used to de- termine whether a descriptive element of a mark must be disclaimed separately from non- descriptive elements. See TMEP § 1213.05. That is simply not an issue in this case. While a mark which appears to be “unitary” as it is used would surely satisfy the require- ment that what is in the drawing be used as one trademark, it does not seem that the opposite is necessarily true, i.e., that a compound mark which is not unitary cannot be registered. There is no requirement that all such marks be unitary, and many compound marks which are not unitary have been registered. We think it likely that what some of the cited cases meant by “unitary” in this context was merely that the elements comprising a compound mark must — as they appear on the specimens of use — give the impression of being a single mark (i.e., not two or more unrelated elements), whether or not they are unitary in the usual sense. In this case, applicant’s marks are clearly not unitary, either as applied for or as used. Although “ONE TOUCH” might itself be a unitary element, neither “CEM” nor “TECHNOLOGY” are connected physically or conceptually to the rest of the mark so as to be considered inseparable. We further note that applicant has disclaimed “ONE TOUCH” and “ONE TOUCH TECHNOLOGY” in the respective applications, which is inconsistent with the notion that the marks are, as a whole, unitary. We need not resolve this question, however, because it would not change the outcome of this decision. Application Nos. 85478855 & 85478890 10 acceptable as a specimen, or whether submitted specimens are mere advertising mate- rial, but whether the specimen depicts the applied-for mark as one mark. Applicant also assigns relevance to the fact that its “microwave instruments sub- ject to the mark[s at issue] are expensive, technical, and purchased by a specialized set of sophisticated, discriminating customers seeking instruments for performing auto- mated microwave-assisted chemical reactions.... Thus, the relevant purchaser of Appli- cant’s goods is a ‘sophisticated consumer’ who is ‘expected to exercise greater care’ in encountering the mark....” App. Br. at 5–6 (citing Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ 1388 (Fed. Cir. 1992); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 212 USPQ 246, 252 (1st Cir. 1981)). We fail to see what the sophistication of applicant’s customers has to do with whether they would see the applied-for mark as it is used on applicant’s goods as a single trademark. In some circumstances, the sophistication of the usual purchas- ers of the goods, or the fact that the goods are usually purchased with greater than usual care is a factor which reduces confusion which might otherwise be likely. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (fourth factor). But the examining attorney has not refused registration because con- sumers are likely to be confused as to the source of applicant’s goods, and applicant does not explain why sophisticated or careful consumers would be any more or less likely to perceive “CEM” as forming a single mark with “ONE TOUCH” and “TECHNOLOGY” as those terms appear on the specimens of record. Considering all of the evidence, we conclude that the applied-for mark — as it is Application Nos. 85478855 & 85478890 11 used in the specimens of record — does not appear as a single mark. “CEM” appears physically separate from the rest of the mark, with parts of the instrument as well as other trademarks intervening; the wording appears in significantly different styliza- tion; and different means of affixation (label vs. stamping or embossing). And to the ex- tent it matters, the wording is not unitary, i.e., physically or conceptually connected in some way as to make the disparate elements of the mark inseparable. As such, the drawing is not a substantially exact representation of the mark as used. Trademark Rule 2.51(b). Or put another way, the specimens do not show use in commerce of the applied-for mark as used on the identified goods, Trademark Rule 2.56(a), 2.88(b)(2), or show that applicant’s mark (i.e., the same, single mark as appears in the application) has been used in commerce, Trademark Act §§ 1, 45. B. Class 42 Services Applicant filed the same specimen for its class 42 services in both applications. Again, we have enlarged and cropped the image and circled the relevant wording. Applica App in Inter The tion Nos. 8 licant seek scien of aut matio for co action national C examining 5478855 & Class s registrat tific and te omated m n services nducting a s, lass 42. attorney 85478890 42 — ‘88 ion if its m chnologica icrowave-a , namely, p utomated contends th 12 5 & ‘890 A arks in co l consultat ssisted che roviding te microwave at the spe pplication nnection w ion service mical reac chniques a -assisted cimens do s ith s in the fie tions; info nd protoco chemical r not eviden ld r- ls e- ce use of appli- Application Nos. 85478855 & 85478890 13 cant’s mark in connection with the identified services because “there is no direct or in- direct reference [in the specimen] to the applicant’s services in relation to the mark.” Ex. Atty. Br. at 7. The relevant part of the specimen (the only place where CEM ONE TOUCH or CEM ONE TOUCH TECHNOLOGY3 appears together) reads: Choose from simple CEM One Touch™ Technology or MARS Classic method programming. The preceding paragraph describes “One Touch™ Technology” as an unparalleled combination of more than 30 years of mi- crowave chemistry expertise with the most advanced soft- ware, sensor, and touchscreen technologies. It’s like having a CEM chemist built into the system. Simply choose a One Touch method and the MARS 6 does the rest, automatically recognizing the vessel type, counting the vessels, and de- termining all of the parameters necessary for a fast, com- plete reaction. Applicant’s first argument is that the specimen says that the One Touch™ Tech- nology is “like having a CEM chemist built into the system. This statement clearly in- dicates that the Applicant’s chemists provide scientific and technological services for the benefit of the consumers of CEM ONE TOUCH [TECHNOLOGY] products.” App. Br. at 11. At the risk of pointing out the obvious, we note that the quoted language says that it’s “like” having a CEM chemist built into the system. Applicant does not allege — and we think it rather unlikely — that there actually is a CEM chemist inside appli- 3 We find it odd that applicant apparently claims the same use in the same specimen as evi- dence of its use of both CEM ONE TOUCH TECHNOLOGY and CEM ONE TOUCH in light of applicant’s strenuous arguments that both marks are unitary. If CEM ONE TOUCH TECHNOLOGY is an inseparable unitary phrase, how can the words CEM ONE TOUCH in the very same string of words form an impression as a separate mark? Neither applicant nor the examining attorney have focused on this apparent contradiction. Application Nos. 85478855 & 85478890 14 cant’s goods. Nothing in the specimen of record indicates that CEM Corporation offers the identified consultation services. Even if we assume that CEM’s goods will obviate the need for consultation services, providing those goods is not the same thing as providing consultation services. This is true of a wide variety of goods, especially in the age of automation. For instance, Microsoft cannot claim it is engaged in editing services because its word-processing software checks the spelling and grammar in documents and Google will not be able to claim it is engaged in chauffeur services when it brings its self-driving cars to market. Those companies may sell advanced software and vehi- cles, but in selling those goods they do not provide the services the goods are made to perform. Although one might imagine that using Microsoft Word is “like” having Bill Gates review your documents, neither Bill Gates nor anyone else at Microsoft will ac- tually check your spelling, although they will gladly provide software which will do so. Although the Trademark Act does not define what constitutes a “service,” prece- dent makes clear that a service must be a real activity performed by one for the benefit of another. In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984) (“(1) a [s]ervice is the performance of some activity; (2) the activity must be for the benefit of someone other than the applicant; and (3) the activity must be recognizable as a separate activi- ty, that is, it cannot be merely incidental or necessary to applicant’s larger business.”). Here, the only activity applicant performs — at least as far as can be ascertained from the specimens of record — is the manufacture or sale of certain scientific instruments. But the sale of one’s own goods is not a “service,” because it is merely ancillary to the production of the goods and is performed for the benefit of the manufacturer itself. And Application Nos. 85478855 & 85478890 15 the sale of a good that performs a function is not a service because that function is not an activity performed by the seller beyond the provision of the goods themselves. Likewise, applicant claims that “the term ‘technology’ can be defined as ‘the practi- cal application of knowledge,’ or as ‘a manner of accomplishing a task.’ ” App. Br. at 11. We can assume for the sake of argument that applicant’s goods were designed and built based on applicant’s considerable knowledge and experience in the field, and for all we know, the goods may incorporate ground-breaking innovations. But no matter what applicant puts into the design and construction of its goods, and no matter how ad- vanced they may be, providing goods is not the same as providing services, even if the goods eliminate the need for those services. A trademark can only be registered for ser- vices in connection with which it is used, and specimens must be submitted to show ac- tual use of the mark in commerce. Applicant’s class 42 specimens do not show that ap- plicant is in the business of providing any services, let alone the ones identified in its application. IV. Conclusion We have considered all of the evidence and argument of record, including that which we have not specifically discussed. For the foregoing reasons, we conclude that applicant’s specimens are not acceptable as evidence of its use in commerce of CEM ONE TOUCH or CEM ONE TOUCH TECHNOLOGY with respect to the identified class 9 goods and class 42 services. Decision: The refusal to register in both applications is AFFIRMED. Copy with citationCopy as parenthetical citation