Cross Hueller, LLC

Trademark Trial and Appeal Board

Jan 28, 2008

No. 78568912 (T.T.A.B. Jan. 28, 2008)

Mailed:
Jan. 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cross Hueller, LLC
________

Serial No. 78568912
_______

Richard J. McKenna of Foley & Lardner LLP for Cross
Hueller, LLC.

Mark Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Grendel, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark LASALLE (in standard character form) for Class
37 services recited in the application as “maintenance,
repair and remanufacture of assembly machinery and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78568912
2
metalworking machines to the order and specification of
others.”1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark in
Class 37 on the ground that applicant has failed to submit
an acceptable specimen of use. Specifically, the Trademark
Examining Attorney contends that the specimen submitted by
applicant fails to show use of LASALLE as a service mark
for the recited Class 37 services. See Trademark Act
Sections 1(a)(1) and 3, 15 U.S.C. §§1051(a)(1) and 1053;
Trademark Rules 2.56(a) and 2.56(b)(2), 37 C.F.R. §§2.56(a)
and 2.56(b)(2).
The appeal is fully briefed. After careful
consideration of the specimen at issue and the arguments of
counsel, we affirm the refusal to register.
Applicant’s proffered service mark specimen is a page
from an advertising brochure, depicted below:

1 Serial No. 78568912, filed on February 16, 2005. The
application is based on use in commerce, and December 31, 1957 is
alleged in the application to be the date of first use of the
mark anywhere and the date of first use of the mark in commerce.
The application also seeks registration of the mark for numerous
Class 7 goods generally identified as “machine parts for use with
assembly machinery and metalworking machinery, namely..." The
Trademark Examining Attorney has not refused registration as to
Class 7.
Ser. No. 78568912
3

Ser. No. 78568912
4
In the specimen, the LASALLE designation appears in
the center graphic, which depicts a lozenge or pill box or
tin holding twelve pills, nine of which bear words and/or
logos. The LASALLE logo appears on the first pill of the
second row of pills. The other marked pills bear what
appear to be the designations HÜLLER MILLS, CROSS HÜLLER,
CROSS, BENDIX MACHINE TOOL, BUHR, MICHIGAN, COLONIAL BROACH
and AVEY. Printed on the inside of the cover of the pill
box, directly above the pills bearing these various
designations, are the words (ending with a colon) “Parts,
service manuals and complete reconditioning for the Cross
Hüller family of machine tools:”. Directly below the
depiction of the pill box are the words “We Offer Relief
From Replacement Parts Headaches.” The text of the
advertisement includes, under the heading “We provide:”,
the words “Complete machine reconditioning.” The right
column of the advertisement includes the following text
under the heading “Experienced technical sales
consultants”: “Cross Hüller Aftermarket Sales Consultants
can evaluate your equipment, providing cost-saving
solutions to maintenance headaches. With many years of
special machine experience, our sales staff offers
consultation for preventive maintenance, in-house
inventories of repair parts, machine reconditioning, and
Ser. No. 78568912
5
other maintenance programs and capital projects.” Under
the heading “Knowledgeable parts specialists” appears the
following text: “The Cross Hüller order desk is staffed
with specialists, dedicated to each of the various product
lines now available under the Thyssen umbrella. You’re
assured of dealing with dedicated and knowledgeable
individuals who understand your problem.” At the bottom of
the page, in an oval background, appear the words “Your
Source For Parts • Manuals • Complete Reconditioning.”
In support of registration, applicant argues that the
specimen advertisement “includes a graphic in the middle of
the page that shows the LASALLE mark directly below the
text ‘[p]arts, service manuals and complete reconditioning
for the Cross Hüller family of machine tools’ (emphasis
added). This use of the LASALLE mark immediately adjacent
to such text is clearly a use in connection with the
identified services in Class 37.” (Applicant’s main brief
at 4.) Applicant goes on to argue:

The graphic shows a conventional metal box such
as an aspirin container or a throat lozenge
container with a series of white pills or
lozenges in the container. Many of the
pills/lozenges have a trademark depicted thereon,
one of which is the LASALLE mark. Immediately
below this graphical depiction of the pills is
the statement “We Offer Relief from Replacement
Parts Headaches.” Imprinted in the lid of the
metal box is a statement “Parts, service manuals
Ser. No. 78568912
6
and complete reconditioning for the Cross Hüller
family of machine tools.” [Omission of ending
colon is sic in applicant’s brief.] The
marketing ploy depicted in this advertising
brochure is quite clear. Namely, the Applicant
is suggesting that the customer is suffering from
some ailment and that the Applicant has the
necessary medicine to cure or otherwise provide
relief for the customer’s ailments. In this
case, the particular ailment is replacement part
headaches, service manuals and reconditioning of
machine tools and the relief provided by the
applicant is a pill bearing the mark at issue,
namely LASALLE. Immediately surrounding this
graphical depiction are a series of statements
[quoted supra] specifically calling out
Applicant’s maintenance, repair and
remanufacturing services.

(Id. at 4-5.)
For his part, the Trademark Examining Attorney argues
that although the advertisement includes both a depiction
of the designation LASALLE and text specifically referring
to the recited services, that in itself does not suffice to
establish use of LASALLE as a service mark. He notes that
LASALLE appears solely in small lettering on one of the
nine “pills” contained in the pill box directly beneath the
text reading “Parts, service manuals and complete
reconditioning for the Cross Hüller family of machine
tools:”. He argues that LASALLE would be understood by
purchasers merely as the trademark for one of the nine
product lines in applicant’s “family of machine tools,” and
not as a service mark for the Class 37 services themselves.
Ser. No. 78568912
7
“The pill box graphic merely advertises the individual
product lines that may be reconditioned by applicant.
Therefore, the mark LASALLE, along with the eight other
depicted marks, are clearly used as trademarks representing
product lines of the Cross Hüller family of machine tools,
and are not shown as service marks for the identified
international class 37 services.” (Brief at unnumbered
p.4.) Pointing to the advertisement’s text which refers to
“[t]he Cross Hüller order desk” and to “Cross Hüller
Aftermarket Sales Consultants,” he further argues that
purchasers will perceive “Cross Hüller,” not LASALLE or any
of the other eight product line marks, as the service mark
for the recited services.
After careful review, we find that the designation
LASALLE, as it appears on the specimen, would not be
perceived as a service mark for the recited Class 37
services.2 Rather, LASALLE would be perceived solely as a
trademark for applicant’s Class 7 goods, i.e., as the name
of or trademark for one of applicant’s machine tool product
lines.

2 We are assuming for purposes of this decision that purchasers
viewing the actual advertisements will be able to read the
LASALLE designation on the pill, although we note that it appears
on the specimen in small and somewhat illegible lettering.

Ser. No. 78568912
8
LASALLE and the other eight designations appearing on
the lozenges or pills appear immediately after the wording
“the Cross Hüller family of machine tools:”. LASALLE and
the other designations thus would be perceived not as
separate service marks for applicant’s recited services,
but rather as the trademarks for the various product lines
that applicant services under its Cross Hüller service
mark. Such a perception would be reinforced by the other
references in the advertisement’s text to Cross Hüller as
the source of the services, i.e., “the Cross Hüller order
desk,” and “Cross Hüller Aftermarket Sales Consultants.”
For these reasons, we find that the specimen of record
fails to demonstrate use of LASALLE as a service mark for
the recited Class 37 services.
Applicant also contends that the present application
to register LASALLE for the recited Class 37 services is a
companion application to another application which
applicant filed on the same day, Serial No. 78568909,
seeking registration of the mark CROSS for identical Class
37 services. That application matured to registration as
Registration No. 3238879 on May 8, 2007. Applicant notes
that the specimen it submitted in that companion
application, which was accepted (by a different Trademark
Examining Attorney) as an acceptable service mark specimen,
Ser. No. 78568912
9
is identical to the specimen at issue in this appeal,
displaying the CROSS mark and the LASALLE mark in the same
manner. Applicant contends that if the specimen was deemed
acceptable in the companion case, it should be deemed
acceptable in the this case as well, which presents an
identical record.
In support of this argument, applicant relies on TMEP
§702.03(a)(ii) dealing with “Companion Applications
Previously Assigned,” which provides as follows:

If TRAM indicates that a companion application
has been assigned to a different examining
attorney, the examining attorney should not
transfer his or her application to that person.
However, the examining attorney must review the
electronic record of the earlier companion
application before taking action in a later
companion case, and should act consistently,
unless it would be clear error to do so. If the
examining attorney believes that acting
consistently with the prior action(s) would be
erroneous, he or she should bring the issue to
the attention of the managing attorney or senior
attorney.

Applicant argues that “[i]n view of the fact that the
Trademark office has already registered Applicant’s
application for the CROSS mark, Applicant submits that
passing the application for the LASALLE mark to publication
is warranted, and accepting the Class 37 specimen for the
present application would not constitute clear error. ...
Ser. No. 78568912
10
Accordingly, the Trademark Office should treat the
companion applications consistently and accept the Class 37
specimen in the present case, as is required by TMEP
section 702.03(a)(ii).” (Reply brief at 9.)
We find applicant’s “no clear error” argument to be
unavailing. The issue of whether the Trademark Examining
Attorney has complied with the “clear error” rule is a
procedural examination issue which is reviewable by way of
petition to the Director, not by way of an appeal to the
Board. The Board’s determination on appeal is limited to
the correctness of the underlying substantive refusal to
register. See, e.g., In re Jump Designs LLC, 80 USPQ2d
1370 (TTAB 2006); In re Sambado & Son Inc., 45 USPQ2d 1312
(TTAB 1997).
It is settled that our decision as to the
registrability of applicant’s mark must be based on our own
analysis of the record before us in the case presently on
appeal, regardless of any non-precedential and non-binding
contrary conclusion that may have been reached by a
Trademark Examining Attorney in a different case.
Consistency in examination practice is an Office goal, but
it is secondary to the Board’s obligation to reach the
correct result in the case actually before us. See, e.g.,
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
Ser. No. 78568912
11
(Fed. Cir. 2001); In re Lighthouse Inc., 82 USPQ2d 1471
(TTAB 2007). Cf. In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
For the reasons discussed above, we have found on the
record before us that applicant’s specimen fails to
demonstrate use of LASALLE as a service mark for the
recited Class 37 services.

Decision: The refusal to register as to Class 37 is
affirmed. The application shall proceed to registration as
to Class 7.