Elba, Inc.

Trademark Trial and Appeal Board

Dec 16, 2011

No. 77424767 (T.T.A.B. Dec. 16, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: December 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elba, Inc.
________

Serial No. 77424767
_______

Molly B. Markley of Young Basile Hanlon & Macfarlane PC for
Elba, Inc.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Karen Strzyz, Managing Attorney).
_______

Before Quinn, Holtzman and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Elba, Inc. to register on
the Principal Register the mark FORMULATING HEALTH in
standard characters for
contract and custom manufacturing in the fields
of personal care and pharmaceutical products and
manufacture of personal care and pharmaceutical
products to the order and/or specification of
others

in International Class 40.1

1 Application Serial No. 77424767 was filed on March 18, 2008,
based on applicant’s allegation of a bona fide intent to use the
Ser. No. 77424767
2
Upon applicant’s submission of a statement of use, the
trademark examining attorney issued an Office action on
July 8, 2009 refusing registration under Sections 1, 2, 3
and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053
and 1127, on the ground that the proposed mark, as used on
the specimen of record, fails to identify and distinguish
applicant’s services from similar services of others or
indicate their source. Applicant’s specimen, identified as
a screenshot from applicant’s Internet webpage advertising
its services, is reproduced below. The wording appearing
on applicant’s specimen inside the green “bubble” reads as
follows:
A legacy of excellence.
Elba Laboratories can trace its roots back nearly
150 years to 1866 with a rich heritage as The
Mark Allen Company, a personal care products
manufacturer. Today, Elba Laboratories provides
exceptional products and services that meet or
exceed regulatory, contractual, and partner
standards. We do this by combining innovative
formulations, unique and versatile designs,
strict production standards and time-tested
marketing expertise. Elba Laboratories creates
products with high perceived values and excellent
sell-through performance.
E Elba Laboratories formulating health2

mark in commerce under Section 1(b) of the Trademark Act. In
response to the examining attorney’s requirement, applicant
disclaimed HEALTH apart from the mark as shown. Subsequent to
publication, applicant filed a statement of use asserting January
2008 as a date of first use of the mark anywhere and in commerce.
2 Applicant’s specimen of use, submitted on May 26, 2009.
Ser. No. 77424767
3
Ser. No. 77424767
4
In its January 8, 2010 response, applicant submitted
arguments in support of registration and also submitted as
further evidence of use “a picture of an Elba Laboratories
product label that uses the FORMULATING HEALTH mark.”3
Applicant’s evidence is reproduced below:

In his January 25, 2010 Office action, the examining

3 Applicant’s January 8, 2010 communication, p. 1.
Ser. No. 77424767
5
attorney noted that above evidence submitted by applicant
was unacceptable as a substitute specimen of use because
(1) it does not show use of the mark in connection with
services, but rather is a label for an end product; and (2)
it is not verified with an affidavit or declaration as
provided by Trademark Rule 2.20. In its July 26, 2010
response, applicant presented additional arguments in favor
of registration. When the refusal was made final,
applicant appealed. Applicant and the examining attorney
have filed briefs on the issue under appeal.
Applicant asserts that its mark is used on its
Internet homepage which advertises all of applicant’s
services. Applicant argues that the FORMULATING HEALTH
mark, as it appears on its original specimen of use,
appears in a different font from the rest of the text on
the webpage; is physically separate from both the text
describing its services and applicant’s company logo
appearing on the webpage; and is presented in such a manner
as would be perceived as a service mark used in connection
with its services. Applicant further argues that its
“substitute specimen is further evidence of the mark used
as a source identifier. This example is additional
Ser. No. 77424767
6
evidence that the slogan is consistently used as a source
identifier.”4
The examining attorney maintains that the specimen
submitted with the original statement of use displays the
FORMULATING HEALTH mark in such small characters that “it
is extremely difficult to discern where the mark appears on
the specimen.”5 The examining attorney further maintains
that he does not dispute that the original specimen
displays the mark separate from the text appearing thereon,
however, “the wording in the proposed mark appears in such
a nondescript manner whereby it cannot be easily seen or
read to serve as a source identifier for the services.”6
The examining attorney argues that, as a result, “the
proposed mark as it appears on the web page specimen, does
not show the wording ‘formulating health’ functioning as a
service mark to identify and distinguish applicant’s
services from those of others and to indicate the source of
applicant’s services.”7
With regard to the product label subsequently
submitted by applicant, the examining attorney contends
that, by applicant’s own admission, “the purpose of the

4 Applicant’s brief, p. 4.
5 Examining attorney’s brief, unnumbered p. 3.
6 Id.
7 Id.

Ser. No. 77424767
7
product label specimen is to promote [applicant’s] own
goods and not promote services rendered for others;”8 that
the label does not reference the recited services; and
that, as a result, the label fails to show use of the mark
as a service mark.
Product Label
We turn first to the product label submitted by
applicant to show that the FORMULATING HEALTH mark “is also
used on labels advertising products made and distributed by
Elba Laboratories.”9 We observe initially that it is not
clear from the record of this case whether applicant
submitted the product label as a substitute specimen or
merely as “additional evidence” of use in support of the
original specimen. In that regard, we note that applicant
did not indicate that the product label was a substitute
specimen when it was first submitted. See generally TMEP
§904.05 (8th ed. 2011) and authorities cited therein. Nor
did applicant submit an affidavit or declaration in support
thereof under Trademark Rule 2.20, even after this
deficiency was noted by the examining attorney in his
January 25, 2010 Office action.

8 Id. at 4.
9 Applicant’s January 8, 2010 communication.
Ser. No. 77424767
8
We find, therefore, that to the extent the above
product label was ever intended to serve as a substitute
specimen, it was not properly submitted as such and
consequently will be given no consideration as a specimen
of use.10
Original Specimen Submitted with Statement of Use
We turn then to the screenshot from applicant’s
Internet website, submitted as a specimen with its
statement of use. Trademark Rule 2.88 provides, in part,
that a statement of use must include one specimen showing
how the applicant actually uses the mark in commerce. See
37 C.F.R. §2.88(b)(2). Trademark Rule 2.56(b)(2) specifies
that a “service mark specimen must show the mark as
actually used in the sale or advertising of the services.”
See 37 C.F.R. §2.56(b)(2). Section 45 of the Trademark Act
provides, in part, that a service mark is used in commerce
“when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce....”
See 15 U.S.C. §1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must

10 We note, in any event, that even if we were to consider the
product label as a specimen, such labels generally are not
sufficient to support use of a mark as a service mark.

Ser. No. 77424767
9
be a direct association between the mark sought to be
registered and the services specified in the application,
and there must be sufficient reference to the services in
the specimens to create this association. See In re
Monograms America Inc., 51 USPQ 1317 (TTAB 1999). It is
not enough that the term alleged to constitute the mark be
used in sale or advertising; there must also be a direct
association between the term and the services. See In re
Compagnie Nationale Air France, 265 F.2d 938, 121 USPQ 460
(CCPA 1959); In re Johnson Controls Inc., 33 USPQ2d 1318
(TTAB 1994); and Peopleware Systems, Inc. v. Peopleware,
Inc., 226 USPQ 320 (TTAB 1985). See also In re Adair, 45
USPQ2d 1211 (TTAB 1997). The mark must be used in such a
manner that it would be readily perceived as identifying
the source of such services. In re Advertising & Marketing
Development, Inc., 821 F.2d 614 2 USPQ2d 2010 (Fed. Cir.
1987); and In re Metrotech, 33 USPQ2d 1049 (Com’r Pats.
1993). See also TMEP §1301.04 (8th ed. 2011). Thus, the
issue before us is whether the specimen of record creates a
direct association between applicant’s FORMULATING HEALTH
mark and the services specified in the application.
In this case, we first find that the specimen
submitted by applicant with its application displays its
FORMULATING HEALTH mark, albeit in small characters.
Ser. No. 77424767
10
Inasmuch as applicant applied for its mark in standard
character form, the mark as it appears in stylized form in
its specimen of use is considered to agree with the mark as
it appears in its drawing. See Trademark Rule 2.52(a); 37
C.F.R. §2.52(a). See also TMEP §807.03(e).
Regarding the size of the mark, in In re Singer Mfg.
Co., 255 F.2d 939, 118 USPQ 310, 312 (CCPA 1958) the
predecessor to our primary reviewing court stated as
follows:
We are unable to agree with the Assistant
Commissioner that appellant's labels, because of
their relatively small size, ‘can hardly make a
commercial impression.’ No authority is cited,
and none has been found, to the effect that a
trademark use requires a display of a design of
any particular size or degree of prominence. The
important question is not how readily the mark
will be noticed, but whether, when it is noticed,
it will be understood as indicating origin of the
goods.

Similarly, in the case before us there is no requirement
that applicant display the mark FORMULATING HEALTH in any
particular size or degree of prominence on its website
specimen.
Inasmuch as the applied-for mark is present on
applicant’s specimen, we must next determine whether it
will be understood as indicating the source of applicant’s
recited services. Id. As noted above, Trademark Rule
2.56(b)(2) provides that "[a] service mark specimen must
Ser. No. 77424767
11
show the mark as actually used in the sale or advertising
of the services." When appropriate, the Board has been
fairly flexible in accepting service mark specimens. See
In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000); and In
re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992).
In this case, we find that applicant's specimen is an
advertisement for the identified services and that the
advertisement shows the requisite direct association
between the mark and the activities described therewith.
Cf. In re Adair, supra; and In re Johnson Controls, Inc.,
supra. Specifically, the specimen indicates in a paragraph
to the left and above the FORMULATING HEALTH mark that
applicant provides products and services in the field of
personal care “that meet or exceed regulatory, contractual,
and partner standards.” Further, the blue text to the left
of this information on applicant’s website specimen refers
to applicant’s “Private Label Partners” from which we may
infer that it manufactures such products for others. As a
result, applicant’s specimen creates a direct association
between the FORMULATING HEALTH mark and applicant’s recited
services. We note in addition that the examining attorney
does not argue that applicant’s website specimen fails to
create such an association with its services. Thus, we
conclude that the specimen of record is adequate to support
Ser. No. 77424767
12
the use of the mark in connection with the identified
services.
Decision: The refusal to register on the ground that
applicant’s mark, as used on its specimen of record, fails
to identify and distinguish applicant’s services from
similar services of others or indicate their source is
reversed.