Crosstex Int’l.

Trademark Trial and Appeal Board

Dec 18, 2002

No. 76351049 (T.T.A.B. Dec. 18, 2002)

Paper No. 10
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CROSSTEX INTERNATIONAL
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Serial No. 76/351,049
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Myron Amer for CROSSTEX INTERNATIONAL.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Hanak, Hairston and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge.
CROSSTEX INTERNATIONAL (applicant) seeks to register
in typed drawing form DERMA CARE SYSTEM on the Supplemental
Register for services which ultimately were identified as
“educational services, namely, conducting classes and
workshops in the field of infection control and proper
management of hazardous material in hand contact between
dentist and patient.” The application was filed on
December 17, 2001 with a claimed first use date of April 1,
2001.
Ser. No. 76/351,049
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The Examining Attorney has refused registration on two
grounds. First, the Examining Attorney contends that
applicant’s original specimen of use and its supplemental
specimen of use both fail to show use of applicant’s mark
in connection with the above identified services. Second,
with regard to the supplemental specimen of use, it is the
position of the Examining Attorney that it was not properly
made of record because “the declaration in support of this
[supplemental] specimen is insufficient as it is not signed
by the person verifying the truth of the matter asserted.”
(Office Action No. 2 at page 2).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
We affirm the refusal to register on the basis that
neither the original specimen of use nor the supplemental
specimen of use show use of applicant’s mark DERMA CARE
SYSTEM in connection with “educational services, namely,
conducting classes and workshops in the field of infection
control and proper management of hazardous material in hand
contact between dentist and patient.” Because the
supplemental specimen of use is defective on its merits, we
need not reach the issue of whether it was properly made of
Ser. No. 76/351,049
3
record. For the purposes of our discussion, we will assume
that it was properly made of record.
As our primary reviewing Court has made clear, “it is
not enough for the applicant to be a provider of services;
the applicant also must have used the mark to identify the
named services for which registration is sought.” In re
Advertising & Marketing, 821 F.2d 614, 2 USPQ2d 2010, 2014
(Fed. Cir. 1987) (emphasis added) citing In re Universal
Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA
1973). As one might gather from the “emphasis added”
wording just quoted, the real issue in this case is whether
applicant’s specimens of use (original or supplemental)
identify the services set forth in applicant’s amended
identification of services. In this regard, applicant’s
original identification of services read as follows:
“educational services in promoting infection control and
proper management of hazardous materials in hand contact
between dentist and patient.” In her first Office Action,
the Examining Attorney stated that the wording “educational
services” is unacceptable as indefinite. The Examining
Attorney then stated that “the applicant may adopt the
following recitation of services … if accurate.” (emphasis
added). In response, applicant adopted the suggested
recitation of services which, as previously noted, read as
Ser. No. 76/351,049
4
follows: “educational services, namely, conducting classes
and workshops in the field of infection control and proper
management of hazardous material in hand contact between
dentist and patient.” (emphasis added).
To cut to the quick, neither applicant’s original
specimen of use nor its supplemental specimen of use show
use of its mark DERMA CARE SYSTEM in connection with
conducting any type of classes or workshops, including in
particular classes and workshops in the field of infection
control and proper management of hazardous materials in
hand contact between dentist and patient. Applicant’s
supplemental specimen of use is a five-page brochure
entitled CROSSTEX DERMA CARE SYSTEM. This five-page
brochure is in reality a sales brochure which describes in
detailed fashion various products which applicant sells,
including antimicrobial soap and protective gloves.
Applicant’s supplemental specimen of use is truly a sales
brochure. While it features the mark applicant seeks to
register, it does not in any way associate the mark with
“educational services, namely, conducting classes and
workshops in the field of infection control and proper
management of hazardous materials in hand contact between
dentist and patient.”
Ser. No. 76/351,049
5
Applicant’s original specimen of use is also entitled
CROSSTEX DERMA CARE SYSTEM. This original specimen of use
consists of one page and it contains a series of 10
questions and answers. For example, the first question is:
“Why use an antimicrobial hand soap?” What follows is a
fact intensive answer. Applicant’s original specimen of
use does not discuss applicant’s specific products which it
offers for sale.
Applicant’s original specimen of use is actually a
“better” specimen of use than is applicant’s supplemental
specimen of use. This Board can easily envision a
situation where applicant’s original specimen of use could
be used as course material in conducting classes and
workshops in the field of infection control. We note in
passing that applicant’s original specimen of use does not
discuss the subject of the management of hazardous
materials in hand contact between dentist and patient.
However, the problem with applicant’s original
specimen of use is that it contains nothing to indicate
that it actually is used as course material in conducting
classes and workshops in the field of infection control and
the proper management of hazardous material in hand contact
between dentist and patient. Applicant’s original specimen
of use could just as easily serve as informational
Ser. No. 76/351,049
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literature that is mailed to dentists or is distributed to
dentists at dental conventions. The mere mailing or
distribution of applicant’s original specimen of use simply
does not constitute conducting classes and workshops.
This Board has been quite flexible in accepting
service mark specimens of use. For example, when an
applicant sought to register its mark for “commercial art
design services,” this Board accepted as proper service
mark specimens of use letterhead stationery, business cards
and the like which contained the mark because the mark
itself contained the word “design.” In so doing the Board
stated that “it is not necessary that the specific field of
design, i.e., commercial art, also appear thereon. Here,
the word ‘design’ alone is sufficient to create in the
minds of purchasers an association between the mark and
applicant’s commercial art services.” In re Ralph Mantia
Inc., 54 USPQ2d 1284, 1286 (TTAB 2000).
By analogy, had the present applicant’s original
specimen of use contained in a noticeable fashion such
words as class, workshop or course material, we would have
accepted the original specimen of use. However, as
previously noted, the original specimen of use in no way
makes reference to classes, workshops, courses or the like.
Ser. No. 76/351,049
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In another example of the Board’s flexible approach to
accepting service mark specimens of use, this Board
accepted a computer screen display which featured
applicant’s mark but which did not make any reference
whatsoever to the services for which applicant sought to
register the mark. However, in that case “applicant
explained in its declaration [that] the specimens show the
mark as it appears on a computer terminal in the course of
applicant’s rendering of” its services, namely, the
transmission of data to subscribers. In re Metriplex Inc.,
23 USPQ2d 1315, 1316 (TTAB 1992).
In stark contrast, in the present case we have of
record no declaration or affidavit from applicant stating
that its original specimen of use is indeed material used
in conducting classes and workshops. We do not even have a
statement from applicant’s counsel that the original
specimen of use (or the supplemental specimen of use) is
used as course material in classes or workshops. Instead,
at page 4 of applicant’s brief, applicant’s counsel makes
the following statements: “There is nothing of record that
precludes the use of the specimens before an assembly of
individuals which can be characterized as ‘classes’ or
‘workshops.’ Logic in fact dictates that the specimens,
because they are so fact intensive and also because of the
Ser. No. 76/351,049
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phraseology used, would be used at dentists’ workshops.”
As can be seen from the foregoing statements of applicant’s
counsel, applicant’s counsel never at any time stated that
applicant’s specimens (original or supplemental) are indeed
actually used as course material at classes or workshops.
Whether a mere statement by applicant’s counsel would have
“carried the day” as did the declaration of applicant in
Metriplex is an issue which we need not decide.
One final comment is in order. At pages 4 and 5 of
his brief, applicant’s counsel notes that it was the
Examining Attorney who suggested the addition of the
wording “conducting classes and workshops” into applicant’s
original recitation of services. Applicant’s counsel then
goes on to note at page 5 of his brief that originally
“there was no mention however of the unanticipated and
narrow meaning that would be applied to the added
references to ‘conducting classes and workshops.’”
Two points should be made. First, we do not
understand what applicant means by the words “narrow
meaning.” We have already said that had applicant’s
original specimen of use contained in noticeable fashion
the words class, workshop or course material, then the
specimen would have been acceptable. We would not have
required that the specimen contain any more, such as a
Ser. No. 76/351,049
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description of the precise nature of the classes, workshops
or courses. Moreover, it would have been acceptable if the
classes and the like not only conveyed information but also
promoted applicant’s products.
Second, applicant’s counsel acknowledges at page 5
of his brief that when the Examining Attorney suggested the
new recitation of services in the first Office Action, it
“was with a caveat ‘if accurate.’” Applicant’s counsel was
not obligated to accept the Examining Attorney’s suggested
recitation of services. If applicant’s counsel could not
affirmatively state that the original specimen of use was
indeed used in conjunction with classes and workshops, then
he should not have adopted the Examining Attorney’s
suggested recitation of services.
Decision: The refusal to register is affirmed.