DSM Pharmaceuticals, Inc.

Trademark Trial and Appeal Board

Jun 4, 2008

No. 78373640 (T.T.A.B. Jun. 4, 2008)

Mailed:
6/4/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DSM Pharmaceuticals, Inc.
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Serial No. 78373640
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Laura M. Kelley of Myers, Bigel, Sibley & Sajovec for DSM
Pharmaceuticals, Inc.

Khan M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Walters, Bucher, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

DSM Pharmaceuticals, Inc. filed an application to
register the mark LIQUIDADVANTAGE, in standard character
format, for “custom manufacturing of pharmaceuticals
featuring liquid fill and finish technology,” in
International Class 40.1
A Notice of Allowance was issued on March 14, 2006.

1 Application Serial No. 78373640, filed February 25, 2004,
pursuant to Section 1(b) of the Trademark Act, 15 USC §1051(b),
alleging a bona-fide intent to use in commerce.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Serial No. 78373640
2
Applicant filed a Statement of Use on September 11,
2006, including the required specimen. The trademark
examining attorney refused registration under Trademark Act
Sections 1, 2, 3, and 45; 15 U.S.C. §§ 1051, 1052, 1053 and
1127, on the ground that the proposed mark as shown in the
specimen does not function as a service mark to indicate
the source of the services.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney
filed briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
To show service mark usage, the specimen must show use
of the mark in a manner that would be perceived by
potential purchasers as identifying the applicant’s
services and indicating their source via a “direct
association.” In re Universal Oil Products Co., 476 F.2d
653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified
only a process held not registrable as service mark, even
though applicant was rendering services and the proposed
mark appeared in the same brochure in which the services
were advertised); In re Moody’s Investors Service Inc., 13
USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen,
identified the applicant’s ratings rather than its rating
services and therefore did not function as a mark);
Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB
1977) (business progress reports directed to potential
investors did not show service mark use for medical
Serial No. 78373640
3
services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975)
(phrase used merely to advertise goods manufactured and
sold by applicant’s franchisees did not serve as mark to
identify franchising services); In re Reichhold Chemicals,
Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and
data sheets on which mark was used merely to advertise
chemicals did not show use as service mark for consulting
services). Where the mark is used in advertising the
services, the specimen must show a direct association
between the proposed mark and the services for which
registration is sought. A specimen that shows only the
mark with no reference to, or association with, the
services does not show service mark usage. In re Adair, 45
USPQ2d 1211 (TTAB 1997) (tags affixed to decorated
Christmas tree that bear the mark “TREE ARTS CO. and
design” and the applicant’s location, but make no reference
to services, failed to show use for “design services in the
nature of designing handcrafted, permanently decorated
Christmas and designer trees”); In re Duratech Industries
Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing
only the mark did not show use to identify “association
services, namely promoting the interests of individuals who
censor the practice of drinking and driving”); In re
Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with
no reference to the services held unacceptable for
automotive service center); In re Whataburger Systems,
Inc., 209 USPQ 429 (TTAB 1980) (iron-on transfer clothing
Serial No. 78373640
4
patches in the form and shape of a cartoon animal mark,
distributed as free promotional items to restaurant
customers at counters, held insufficient to identify
restaurant services).
The specimen submitted by applicant to show use of its
identified service consists of one page of a brochure:
Serial No. 78373640
5
As the examining attorney observed, the term
LIQUIDADVANTAGE in this specimen clearly refers to a
proprietary software by that name. Nowhere does the
specimen show a direct association between use of the
proposed LIQUIDADVANTAGE mark and “custom manufacturing of
pharmaceuticals featuring liquid fill and finish
technology.” We note that if a mark is used to identify
both the system or process and the services rendered by
means of the system or process, the designation may be
registrable as a service mark. See Liqwacon Corp. v.
Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979)
(mark registrable where it identified both a waste
treatment and disposal service and a chemical
solidification process). However, that is not the case
here, where every description and explanation of
LIQUIDADVANTAGE on the specimen refers to the capabilities
and the purported advantages of the LiquidAdvantage
software alone. See In re Information Builders Inc., 213
USPQ 593 (TTAB 1982) (Board affirmed refusal to register
where mark was used in specimen to refer only to software
and not to service for which applicant sought
registration); cf. In re Ancor Holdings, 79 USPQ2d 1218
(TTAB 2006) (Board determined that term “tool” in specimen
referred to service since applicant did not even offer
software). Applicant’s submitted specimen does reference
“liquid fill and finish capabilities” as a service offered
Serial No. 78373640
6
by applicant, but does not directly associate that service
with its proposed LIQUIDADVANTAGE mark.
In determining whether a specimen is acceptable
evidence of service mark use, we may consider applicant’s
explanations as to how the specimen is used, along with any
other available evidence in the record that shows how the
mark is actually used. See In re Int’l Environmental
Corp., 230 USPQ 688 (TTAB 1986), in which a survey
distributed to potential customers of applicant’s heating
and air conditioning distributorship services was held to
be an acceptable specimen even though it did not
specifically refer to the services, where the applicant
stated that the sale of its services involved ascertaining
the needs of customers serviced, and the record showed that
the surveys were directed to potential customers and were
the means by which applicant offered its distributorship
services to the public. See also In re Metriplex Inc., 23
USPQ2d 1315 (TTAB 1992)(Board accepted computer screen
display as specimen to show sale of computer data
transmission services); In re Eagle Fence Rentals, Inc.,
231 USPQ 228 (TTAB 1986) (Board accepted photograph of
chain link fence as specimen to show alternately colored
strands of wire arranged in the fencing); In re Red Robin
Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (Board accepted
photograph of costume worn by performer during performance
as specimen to show entertainment services). However, here
Serial No. 78373640
7
the record is sparse. Applicant has given us only the
specimen to evaluate. We simply cannot conclude, based on
the specimen of record, that applicant is using the
LIQUIDADVANTAGE mark in connection with “custom
manufacturing of pharmaceuticals featuring liquid fill and
finish technology.”
This case is analogous to In re Walker Research, Inc.,
228 USPQ 691 (TTAB 1986) (term that merely identified
computer program used in rendering market analysis services
did not function as a mark to identify those services).
There the Board affirmed the refusal to register where the
use of the proposed mark in the specimen clearly referred
to a software product rather than to the service for which
the applicant sought registration. Importantly, the Board
found it irrelevant that the software was used in
performance of the identified service. Without direct
association between the service and the proposed mark in
the specimen, the Board could not conclude that the service
mark was in use. As explained by the CCPA in In re
Universal Oil Products Co., 177 USPQ at 457, it is
insufficient for an applicant to use the desired mark in
connection with the advertisement of a process where
applicant seeks to register that mark in connection with a
service even though, as here, the brochure may also mention
the service apart from the mark. In the words of the CCPA:
“Direct association is the minimum it must show.”
Serial No. 78373640
8
Therefore we conclude that applicant’s specimen does
not show actual service mark use of the mark
LIQUIDADVANTAGE for “custom manufacturing of
pharmaceuticals featuring liquid fill and finish
technology.”
Decision: The refusal to register is affirmed.