CEM Corporation

Trademark Trial and Appeal Board

Sep 29, 2014

No. 85478855 (T.T.A.B. Sep. 29, 2014)

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.