CrowMarcrum, Inc.

Trademark Trial and Appeal Board

Jul 20, 2006

No. 76438849 (T.T.A.B. Jul. 20, 2006)

Mailed:
20 July 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crow Marcrum, Inc.
________

Serial No. 76438849
_______

L.F. Hilbers, Esq. for Crow Marcrum, Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Grendel, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 7, 2002, applicant Crow Marcrum, Inc. filed
an intent-to-use application (No. 76438849) to register the
mark SUBSTATION SERVICE COMPANY, in typed or standard
character form, for services ultimately identified as
“Repairs and installation of electrical equipment” in Class
37.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76438849
2
The application was amended on October 3, 2002, to allege
dates of use and first use in commerce of September 18,
1980.
The examining attorney1 initially refused registration
on the ground that the mark SUBSTATION SERVICE COMPANY was
merely descriptive under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), because applicant’s services
are “done as a part of its “substation servicing services.”
First Office Action, p. 2. Applicant responded to the
refusal by submitting an Amendment to Allege Use as well as
evidence of the extent of the use of the mark. Based on
this evidence, applicant alleged that the mark had become
distinctive. The examining attorney found that applicant’s
evidence did not show that the mark had become distinctive
of applicant’s services.
When the examining attorney ultimately made the
refusal to register final, applicant filed a notice of
appeal and a request for reconsideration. When the request
for reconsideration was not successful, this appeal
followed.
The following evidence was submitted by the examining
attorney and applicant in support of their positions. The

1 The current examining attorney was not the original examining
attorney in the case.
Ser. No. 76438849
3
examining attorney has submitted numerous printouts
retrieved from an electronic database in support of the
argument that the mark SUBSTATION SERVICE COMPANY is merely
descriptive and, despite applicant’s position to the
contrary, the examining attorney argues the mark “remains
highly descriptive and has not acquired distinctiveness.”
The most relevant articles are set out below:
We support these projects and are working with their
developers to address issues such as transmission
access, substation services and station power
requirements.
PR Newswire, February 28, 2001.2

ABB provides turnkey substation services for large
commercial and industrial consumers providing them
access to lower cost and higher reliability power
sources.
Federal News Service, September 5, 1997.

The New Horizons business line will design and
construct transmission and distribution systems for
utilities and others. It will offer full service
construction, substation services, vegetation
management and construction management, training and
consulting.
Energy Services & Telecom Report, January 15, 1998.

There are also many other references that apparently refer
to power substations in general or “police” substations;

2 Newswire stories are entitled to some weight. In re Cell
Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003) (“[I]t is
much more likely that newswire stories will reach the public
because they can be picked up and ‘broadcast’ on the Internet.
In short, while we are not saying that newswire stories are of
the same probative value as are stories appearing in magazines
and newspapers, we think that the situation has changed such that
said newswire stories have decidedly more probative value than
they did” previously).
Ser. No. 76438849
4
such references do not have any relevance to the issue in
this case. Finally, applicant’s specimen makes it clear
that: “Owners of substations rely on SSC for transformer,
relay, regulator, breaker, switch gear, and other equipment
maintenance.”
Applicant has submitted the following evidence in
support of its argument (Declaration of L.F. Hilbers dated
March 11, 2004) that its mark has acquired distinctiveness.
Applicant’s mark “SUBSTATION SERVICE COMPANY” has
become distinctive of the services by Applicant of
substation repair and maintenance through Applicant’s
exclusive and continuous use of its Mark in commerce
for over the twenty three (23) years immediately
before the date of this statement. The Date of First
Use is September 18, 1980 (09-18-1980). Since then
for more than twenty three (23) years, the Mark
“Substation Service Company” has been used exclusively
by Applicant under which all of its business, namely
of substation repair and maintenance, has been
conducted.

Applicant’s telephone is and always has been answered
“Substation Service Company.” All of Applicant’s
employee uniforms are clearly marked with “Substation
Service Company.” Numerous vendors have set up
internal accounts that list Applicant as “Substation
Service Company” exclusively.

Over these years Applicant has completed work in over
thirty two (32) states for national customers, all of
whom know Applicant exclusively as “Substation Service
Company.” Customers generated purchase orders,
contracts and checks are all made out exclusively to
“Substation Service Company.” “Substation Service
Company” has always been the exclusive trademark name
of Applicant’s company.

For the past more than twenty three (23) years and
presently, Applicant continues to receive new business
Ser. No. 76438849
5
from individuals exclusively seeking out Applicant by
looking for “Substation Service Company.” In 1990, an
outside agency was commissioned to complete a brochure
(pictures and company information) costing several
tens of thousands of dollars. It identified
Applicant’s company as “Substation Service Company,”
exclusively. These brochures specifically introduce
potential clients to Applicant exclusively as
“Substation Service Company.” Applicant’s web site is
www.substationservice.com. All documentation such as
invoices, contracts, quotations, checks, business
cards, employee uniforms, test results, and other
general office correspondence bear the name
“Substation Service Company” exclusively. Applicant’s
vehicles are clearly marked exclusively with
“Substation Service Company.” Christmas cards,
promotional items and the front of the building are
clearly marked exclusively with “Substation Service
Company.” Since 1980, more than Five Hundred Thousand
dollars ($500,000) has been spent in advertising
Applicant’s services of substation repair and
maintenance exclusively under the name “Substation
Service Company.”

Furthermore, over these twenty three (23) years,
Applicant[’s] annual income has steadily grown so that
during the fiscal year ending March 31, 2002 (03-31-
2002) Applicant grossed an annual income in the amount
of Three Million dollars ($3,000,000) for those
services delivered by Applicant under this Mark.
Applicant has conducted projects in over thirty two
(32) states with one hundred (170) customers and
currently has projects in seven (7) states.

DESCRIPTIVENESS
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987);
In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 525, 205
USPQ 505, 507 (CCPA 1980). To be “merely descriptive,” a
Ser. No. 76438849
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term need only describe a single quality or property of the
goods or services. Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA
1978).
In this case, applicant has conceded that its mark is
descriptive. See Applicant’s Brief at 10 (“The evidence
submitted in the Office Actions shows that CMI’s mark is
descriptive. CMI has not suggested otherwise”). We add
that the evidence confirms that applicant is a company that
provides maintenance and other services to substations.
Therefore, the term SUBSTATION SERVICES COMPANY immediately
describes a company that provides maintenance, repair and
installation of electrical equipment services for
substations.
ACQUIRED DISTINCTIVENESS
We now address the central issue in this appeal,
whether applicant’s term has acquired distinctiveness.
Applicant must demonstrate that the mark has acquired
distinctiveness under Section 2(f) of the Trademark Act.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
Ser. No. 76438849
7
1565 (Fed. Cir. 2001) (“A merely descriptive mark qualifies
for registration only if the applicant shows that it has
acquired secondary meaning”). Applicant has the burden of
proving that its mark has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1008 (Fed. Cir. 1988).
Applicant’s mark is SUBSTATION SERVICE COMPANY and it
is clear from applicant’s brochure that its company
provides an assortment of services to “owners of
substations.” These services include transformer services,
maintenance services, and rewinding and repair services.
The term SUBSTATION SERVICE COMPANY is highly descriptive
of a company that provides maintenance, repair, and other
services to substations.
The examining attorney argues (brief at unnumbered p.
4) that:
[Applicant’s] evidence is insufficient because (1) the
allegations of sales and advertising expenditures do
not establish that the proposed mark has acquired
distinctiveness, (2) the Applicant never provided any
actual evidence that the proposed mark served as a
Ser. No. 76438849
8
source identifier for Applicant’s services, and (3)
the other evidence of the Applicant’s use of the mark
in its internal operations is either irrelevant or
inadequate to establish that the public perception of
“SUBSTATION SERVICE COMPANY” is an indicator of
source.

The examining attorney “questions whether $500,000
spent over the course of 23 years in 32 states, totaling
roughly $680 per year per state, is sufficient or
significant enough to demonstrate Applicant’s proposed
mark’s acquisition of distinctiveness.” Brief at
unnumbered p. 5. Regardless of how it is considered,
applicant’s argument that it spent $500,000 promoting its
mark over 23 years amounts to less that $22,000 in
advertising per year. This is hardly a significant
advertising budget. We note that, concerning the
advertising expenditures, the brochure that applicant
produced in 1990 must have been a significant portion,
since it cost “several tens of thousands of dollars.”
Applicant did not provide any information as to the time
period in which this brochure was distributed, the number
of copies distributed or, for that matter, the
effectiveness of any of applicant’s advertising efforts.
The “mere statement of sales volume and advertising
expenditures are not persuasive since there is no way of
our determining whether these activities have had any
Ser. No. 76438849
9
impact on purchasers.” In re Kwik Lok Corporation, 217
USPQ 1245, 1248 (TTAB 1983).
Applicant’s use of its trade name on its letterhead
stationery, uniforms, trucks, and similar uses does not
necessarily demonstrate that the relevant public recognizes
applicant’s trade name as a service mark for its repair and
installation of electrical equipment services. The record
is devoid of any evidence that any relevant purchasers
recognize that the mark SUBSTATION SERVICE COMPANY
identifies applicant as the source of the identified
services. Applicant’s evidence consists of, inter alia,
the fact that: it uses the term in the course of its
business; it has had 170 customers over 23 years; it
currently has seven projects; in fiscal year 2002 it had $3
million dollars in revenue; and it has spent a half million
dollars over 23 years promoting its mark. When we look at
applicant’s evidence we can, at best, describe it as
modest. Even when we consider that substation services are
not purchased by ordinary consumers and the number of
potential purchasers would not be large, applicant has
given us no context to determine if its 170 customers in 23
years and its seven current projects is significant. On
its face, applicant’s evidence would seem to only show the
Ser. No. 76438849
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bare minimum of activity that an ongoing company would need
in order to stay in business for 23 years.
Regarding the sales volume ($3 million), again we do
not have a context and it appears to be relatively modest.
Applicant has not provided any context to demonstrate that
this level of sales is significant in this industry.
Furthermore, even if this evidence were more impressive, it
does not necessarily demonstrate acquired distinctiveness.
Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977) (“The only evidence
presented by Seabrook on secondary meaning is the sales
volume of its products. Although such evidence may have
relevance in establishing secondary meaning, it is not
necessarily indicative of recognition of the mark by
purchasers as an indication of source of the goods”)
(citation omitted). Even if, as applicant implies, its
sales have grown, “this may indicate the popularity of the
product [or service] itself rather than recognition of the
mark.” In re Bongrain International (American) Corp., 894
F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990). In
addition, “[b]ecause of long use, large sales and
advertising, it may be assumed that some persons might
recognize a mark as designating origin, but that alone is
Ser. No. 76438849
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not enough.” In re Andes Candies Inc., 478 F.2d 1264, 178
USPQ 156, 158 (CCPA 1973).
At this point, we emphasize that we have not
considered applicant’s evidence of acquired distinctiveness
in isolation but as a whole. As indicated above, the
evidence appears to show normal business activity rather
than trademark recognition. See In re Soccer Sport Supply
Co., 507 F.2d 1400, 184 USPQ 345, 348 (CCPA 1975) (“The
advertisements of record do not support an inference of
distinctiveness inasmuch as the evidence fails to disclose
information from which the number of people exposed to the
design could be estimated — such as circulation of the
publications in which the advertisements appear,
advertising expenditures, number of advertisements
published, volume of sales of the soccer balls, and the
like”). Considering the highly descriptive nature of
applicant’s mark and the limited evidence of acquired
distinctiveness, we find that applicant failed to meet its
burden of showing that its mark has acquired
distinctiveness.
Decision: The examining attorney’s refusal to
register applicant’s mark SUBSTATION SERVICE COMPANY on the
ground that the mark is merely descriptive and that
Ser. No. 76438849
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applicant has not shown that the mark has acquired
distinctiveness is affirmed.