Faucher Industries Inc.

Trademark Trial and Appeal Board

Jun 24, 2013

No. 85202870 (T.T.A.B. Jun. 24, 2013)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed:
June 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Faucher Industries Inc.
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Serial No. 85202870
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James R. Menker of Holley & Menker, PA for Faucher Industries Inc.

David Taylor, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
_____

Before Bucher, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Faucher Industries filed an application to register on the Principal Register
the mark set forth below.1

1 Application Serial No. 85202870, filed under Trademark Act §§ 1(b) and 44(e), 15 U.S.C.
§§ 1051(b) and 1126(e), on December 21, 2010.
Serial No. 85202870

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The application, as originally filed, identified a variety of electrical goods in
International Class 9, including two items identified as “choke seals” and “choke
seals for electric cables.”
The examining attorney, upon first examination, issued an Office action
stating that “The identification of goods is indefinite and must be clarified”; and
that “Applicant must specify the common commercial or generic name for the
goods.” The examining attorney set forth a proposed form of identification in which
all of the goods of applicant were set forth without change except the two items
called “choke seals.” With respect to these, he proposed as follows:
Seals for use in [specify material composition and use;
classification will vary depending upon specification],
namely, choke seals
Seals for electric cables [specify material composition],
namely, choke seals.2
Applicant responded by amending the identification of choke seals to read as
follows:
electrical connections in the nature of choke seals for
electric junction boxes;
electrical connectors in the nature of choke seals for
electric cables.
Applicant also submitted an excerpt from its online catalog relating to its choke
seals; and an excerpt from a third-party catalog relating to a “Junction Box with
cable fittings and Choke Seals.” Applicant argued that its own catalog “categories
[sic] such goods as ‘electrical: line accessories’”; and that the third-party catalog

2 Office action of March 23, 2011.
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shows the goods to be “components of an electrical system.” Applicant argued
further:
Because the US PTO classifies “electrical connectors” in
International Class 9 regardless of material composition,
Applicant avers that there is no justification for
requirement that Applicant specify the material
composition of its goods or that it [sic] goods be classified
in any other class than International Class 9. 3
The examining attorney then issued a final refusal to register the mark on
the ground that “[t]he identification of goods remains indefinite and must be
clarified. [Citation omitted.] The applicant must specify the material composition of
the goods identified as ‘seals’. Additionally, the applicant must indicate the field of
use for the goods.” The examining attorney again proposed a revised identification,
this time suggesting that the choke seals might be characterized as being “metal
seals” in Class 6, or “non-metal seals” in Class 17.4
Applicant responded with a request for reconsideration in which choke seals
were identified as follows:
choke seals, namely, connection fittings for electric
junction boxes;
choke seals, namely, connection fittings for electric cables.
In addition, applicant argued:
Applicant has amended the identification of goods to
clarify that the “choke seals” are “connection fittings”.
Applicant notes that "connection fittings" for electrical
applications are classified in the ID Manual International
Class 9 regardless of material composition. Further,

3 Applicant’s response filed September 15, 2011.
4 Office action of October 21, 2011.
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Applicant notes that “connection fittings” for electrical
applications are accepted in the ID Manual without any
specification of the material composition of those goods.5
The examining attorney denied the request for reconsideration. Applicant
thereupon filed a second request for reconsideration, in which it made no change to
the identification of goods, but argued as follows:
Applicant has previously explained that “choke seals”
identifies the common commercial name of the goods.
Therefore, an English speaker can understand what the
goods are. Moreover, because the goods are specified as
connection fitting for electric junction boxes and cables,
these goods are correctly classified in International Class
9.
The request for reconsideration included two advertisements of third parties that
refer to choke seals; and an excerpt from the U.S. Patent and Trademark Office
Acceptable Identification of Goods and Services Manual (the “ID Manual”),6
showing that goods identified as “Laboratory equipment, namely, plastic, rubber
and elastomer closures, seals and stoppers for laboratory bottles” are classified in
Class 9.7 Again, the examining attorney denied the request and maintained his
final refusal of registration. This appeal ensued.
1. Limits on Relief Available to Applicant.
Applicant argues that “choke seals” and “choke seals for electric cables” (the
original wording of applicant’s identification of goods) should be acceptable as
identifications of the goods because they are the common commercial names of the

5 Applicant’s request for reconsideration filed October 24, 2011.
6 The ID Manual can be viewed and downloaded from the Trademark Office website at
http://www.uspto.gov.
7 Request for reconsideration filed December 7, 2011.
Serial No. 85202870

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goods. Alternatively, applicant requests “acceptance of one of its two proposed sets
of amendments.”8
Initially, we must point out that an ex parte appeal to the Board is not the
ideal procedural context in which to assess an appropriate identification of
applicant’s goods. The Board may consider on appeal the examining attorney’s final
requirement of an amendment to the identification of goods. 37 C.F.R. § 2.141; In re
Stenographic Machines, Inc., 199 USPQ 313 (Comm’r Pats. 1978). However, the
Board cannot, as applicant suggests, pick and choose among the three sets of
identifications that were proposed during the prosecution of the application. The
Board’s ability to amend an application that it has reviewed on appeal is limited by
the Trademark Rules. See 37 C.F.R. § 2.142(g) (“An application which has been
considered and decided on appeal will not be reopened except for the entry of a
disclaimer… or upon order of the Director….”). If the Board finds that the
application as it now stands, including applicant’s latest amended identification, is
in acceptable form, the Board can reverse the examining attorney’s refusal.
However, the Board cannot re-write the application to reinstate an identification
previously discarded by the applicant, nor can it re-open the application for
amendment of the identification by applicant. Moreover, the Board will not review
a requirement for amendment of the classification of the goods. In re Tee-Pak, Inc.,
164 USPQ 88 (TTAB 1969); TMEP § 1703. As the Board stated in Tee-Pak, “[t]he
sole purpose of classification of goods is for internal administration within the

8 Applicant’s brief at 6.
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Patent Office and the class to which a given product may be assigned does not and
cannot limit or extend the rights of an applicant. [15 U.S.C. § 1112.] It is apparent
that the question of proper classification is not a substantive one and therefore not
a matter for appeal.” 164 USPQ at 89. See also TMEP § 1703 (“[A] requirement for
an amendment of the classification is a procedural matter that may only be
reviewed on petition [to the Director].”).
An option affording a broader scope of possible relief for applicant would have
been a timely petition to the Director under 37 C.F.R. §§ 2.146(a) and 2.63(b).
While questions of substance arising during the ex parte prosecution of an
application are not appropriate subject matter for a petition to the Director, 37
C.F.R. § 2.146(b), requirements with respect to identifications of goods are generally
regarded as petitionable matter. In re Stenographic Machines, 199 USPQ 313. The
Director has more flexibility in providing a remedy to applicant, within the scope of
her supervisory authority under 35 U.S.C. §§ 2 and 3, including the ability to
address the question of the classification of the goods, the ability to reopen the
application as contemplated by 37 C.F.R. § 2.142(g), and the authority to waive
rules in accordance with 37 C.F.R. § 2.148.9
However, it is clear that the applicant’s best option for resolving the issue of
the identification and classification of its goods (and, in our view, the only option
having a good likelihood of success) would have been to engage in a more open and

9 The Director has delegated the authority to decide trademark-related petitions filed under
37 C.F.R. § 2.146 and to exercise supervisory authority in trademark-related matters
pursuant to 35 U.S.C. § 2 to the Commissioner for Trademarks.
Serial No. 85202870

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frank discussion with the examining attorney. Examination procedures provide
ample time for discussion and resolution of the issues raised by an application. We
note also that the examining attorney did not expressly limit the scope of his refusal
to those particular goods as to which he deemed the identification indefinite (i.e.,
the choke seals). Neither did applicant’s counsel ever request that the examining
attorney so limit his refusal. Had the refusal been so limited, an adverse outcome
for applicant might have been limited to the abandonment of the application only as
to those goods. See 37 C.F.R. § 2.65(a) and TMEP § 718.02(a). However, the option
of partial abandonment is available only where a refusal or requirement was
“expressly limited.” 37 C.F.R. § 2.65(a). Following this rule, Office policy requires
that the Office action must “expressly state[ ] that a refusal or requirement is
limited to only certain goods/services/class(es). Unless the action includes a clear
and explicit statement that the refusal or requirement applies to only certain
goods/services/class(es), the refusal or requirement will apply to all the
goods/services/class(es), and failure to respond to the action will result in
abandonment of the entire application.” TMEP § 718.02(a) (emphasis in original).
As the appeal now stands, the disposition of the entire application will be
determined by our decision relating to the identification of goods. It is unfortunate
that the issues raised in this appeal could not have been resolved more efficiently.
2. Analysis.
The primary purposes for requiring a clear identification of the goods in a
trademark application are (i) to allow for informed judgments concerning likelihood
Serial No. 85202870

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of confusion under 15 U.S.C. § 1052(d) and (ii) to allow for the proper classification
of the goods. TMEP § 1402.01. The classification of goods and services is an
important organizational tool that greatly improves the ease with which
information in the Trademark Office’s various databases may be accessed -- not only
by Trademark Office personnel but by innumerable users of those databases
throughout the world. The Trademark Office classification system is based upon
the Nice Agreement Concerning the International Classification of Goods and
Services, to which the United States is a party. Each of the countries party to the
Nice Agreement is obliged to apply the Nice Classification in connection with the
registration of marks.10 The examining attorney has discretion in determining the
degree of particularity that is needed to clearly identify the goods and to classify
them under the international system of classification that has been adopted by the
Trademark Office. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir.
2007). Ideally, the appropriate class for an item ought, ultimately, to be
unambiguous; however, any conclusion that such an ambiguity exists should be
governed by the exercise of reason and in light of the evidence of record. See In re
Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007).
Applicant states that “choke seal” is the generic name of applicant’s goods. It
is the policy of the Trademark Office to recognize industry terminology “as sufficient
to identify the goods or services when supported by dictionary definitions or other

10 The most recent guidance is contained in “International Classification of Goods and
Services for the Purposes of the Registration of Marks” (10th ed. 2013), published by the
World Intellectual Property Organization.
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authoritative references.” TMEP § 1402.03(f). However, there is no entry for
“choke seal” in the MCGRAW-HILL DICTIONARY OF ENGINEERING (2nd ed. 2003); the
MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (6th ed. 2003); or
the SCIENCE & TECHNOLOGY ENCYCLOPEDIA (1999).11 Nor is there any other
authority in the record setting forth the meaning of “choke seal.” The excerpt from
applicant’s catalogue and the three third-party advertisements in the record
contained limited information regarding the nature of the goods and they raised
questions in the examining attorney’s mind regarding the proper classification of
the goods. It is not remarkable, therefore, that the examining attorney may have
needed assistance in understanding the nature of the goods. It should be noted that
under 37 C.F.R. § 2.61(b), the examining attorney is entitled to require information
and evidence, if necessary, to ascertain the nature of the goods or otherwise permit
proper examination of the application.
The examining attorney takes the position that the evidence of record
relating to the nature of applicant’s goods and similar goods of third parties “shows
that the goods in question are non-electric seals used in connection with electric
cables. … While it is shown that the goods are used in connection with electric
products, they function in the same manner as typical seals in that they are used to
join and seal two components; while allowing electrical cables to pass through an

11 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85202870

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opening in the seal.”12 He goes on to argue that the evidence establishes “that the
goods in question are used in a manner that is consistent with typical ‘seals’ and
that they have no electric functionality. The goods are merely used to provide a seal
between items that may have electric functionality.”13 As his brief indicates, the
examining attorney did not believe the goods should be in Class 9 unless they had
some “electric functionality.”14
The examining attorney sought to address his concerns initially by inquiring
as to the material composition of applicant’s goods. This approach clearly derives
from the fact that the ID Manual sets forth, as the broadest acceptable
identification of a “seal,” the following options:
Metal seals for use in {indicate field of use}, in Class 6;
Non-metal seals for use in {indicate field of use}, in Class
17.
Other more specific types of seals are classified differently; for example, some seals
that are exclusively for vehicles are in Class 12 and some seals that are exclusively
for engines are in Class 7. The ID Manual contains no reference to a seal that is
exclusively for use in electrical devices, whether in Class 9 or another class.15

12 Examining attorney’s brief at unnumbered pp. 5-6.
13 Id. at 6.
14 Id.
15 Applicant did demonstrate that the identification “Laboratory equipment, namely,
plastic, rubber and elastomer closures, seals and stoppers for laboratory bottles” appears in
the ID Manual in Class 9. We expect that these items were classified in Class 9 not
because they are electrical goods, but because they are goods for use in scientific
applications.
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Moreover, the ID Manual shows that not all goods that are used in connection with
electrical systems are classified in Class 9.
The record, as it stands, contains little information about the nature of
applicant’s goods. All of applicant’s relevant statements regarding the nature of the
goods are quoted above in our discussion of the prosecution history. In applicant’s
advertisement, the depiction of the goods suggests that they are similar to a plug of
rubber or other flexible material, with no visible wiring or other electrical
component; the advertisement provides no useful information about the goods, other
than their dimensions, that they are “PUSH IN TYPE,” and that the various listed
items are “for” various numbers of “CONDUCTORS CABLE.” The third-party ads
also appear to depict plugs of some flexible material. The Betts brand “Push-In”
choke seal is depicted in a cut-away cross section, showing the interior of the
product and revealing no electrical elements inside the plug. The Betts product is
described as follows:
Patented watertight Choke-Seals and threaded cable
entrance fittings assure a dry environment for
connections.
…
These EPDM seals are used as water-tight entrance
grommets. Part No. 920413 will accommodate 2, 3 and 4
conductor jacketed cable. Part No. 920420 will
accommodate up to four individual primary wires. After
installing in a lamp or junction box, pierce the Choke Seal
diaphragm (DO NOT DRILL) and insert wire. Use wire
pulling lubricant… before inserting cable. Both seals
require a 9/16” diameter hole.16

16 Submitted with request for reconsideration filed December 7, 2011.
Serial No. 85202870

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The advertisement marked “Trailer Connectors” describes a circuit box by reference
to the following feature: “Entrances stay dry by using the new “push-in” choke seals
and threaded fittings – comes with 4 choke seals.”17 At no time did applicant
provide any explanation of the meaning of the information set forth in its own
advertisement or in the third-party advertisements. We note that the Betts choke
seals are described as being “used as water-tight entrance grommets.” The
definition of “grommet” appears highly pertinent to the goods at issue:
2 b a device like a ring that is designed to protect or
insulate something passed through it : as (1) : a bushing
designed to protect from abrasion a cord or wire passing
through a hole 3 : a gasket or packing used to prevent
leakage (as of steam) or entry (as of dust).
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 1001.
Under the circumstances, the examining attorney could reasonably have
believed that applicant’s choke seals were analogous to insulating goods or gaskets.
This possibility would have affected the classification of the goods. The ID Manual
indicates that electrical insulating products, whether of rubber, ceramic, mica, or
other materials, are in Class 17; it also shows that most non-metal gaskets are in
Class 17, while metal gaskets are in Class 6.
In questioning the nature of the goods, in view of the evidence in the record,
the examining attorney was following Trademark Office policy: “An identification is
unacceptable if it is inconsistent with the goods or services indicated by the
specimens, or if the ordinary meaning of the identification language is at variance

17 Id.
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with the goods or services evidenced by the specimens or any other part of the
record.” TMEP § 1402.05. The examining attorney’s power to question such
inconsistencies is settled. See, e.g., The Procter & Gamble Co. v. Economics
Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972), modified without opinion, 498
F.2d 1406, 181 USPQ 722 (CCPA 1974); In re Petroglyph Games, Inc., 91 USPQ2d
1332, 1335 (TTAB 2009).
Applicant argues that its first amended identification should have been
accepted because “electrical connectors” and “electrical connections” are listed in the
ID Manual; and that its second amended identification should have been accepted
because “connection fittings” appears in the ID Manual in the context of the item
identified as “electric cables, wires, conductors and connection fittings therefor.”18
These arguments are unavailing in the face of the apparent inconsistency between
the goods depicted in the evidence and the ordinary meaning of the identification
language. In light of the evidence before him, the examining attorney could
reasonably question whether the choke seals depicted in the evidence of record
could be properly characterized as “electrical connectors,” “electrical connections,” or
“connection fittings” in Class 9.19
As applicant acknowledges in its brief,20 the TMEP sets forth four
requirements of an acceptable identification:

18 Applicant’s brief at 6.
19 We also doubt whether the fact that “electric cables, wires, conductors and connection
fittings therefor” is an acceptable identification sufficiently supports the conclusion that
“connection fittings” is an equally acceptable identification.
20 Applicant’s brief at 4.
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With few exceptions, an identification of goods and
services will be considered acceptable if it:
Describes the goods and/or services so that
an English speaker could understand what
the goods and/or services are, even if the
grammar or phrasing is not optimal;
Meets the standards (not necessarily the
language) set forth in the USPTO ID
Manual;
Is not a class heading; and
Is in the correct class, i.e., there is no
language in the identification that makes
classification difficult or ambiguous; each
class lists goods or services that are clearly
in a single class.
Deference should be given to the language set forth by the
applicant in the original application.
TMEP § 1402.01(a).
The examining attorney needed more information in order to determine the
proper classification of the goods. We find that the examining attorney’s
requirement that applicant disclose the material composition of its goods so that
proper classification could be determined was reasonable and correct. In re Omega,
83 USPQ2d at 1544. We also find that he needed additional information in order to
determine whether the goods depicted in applicant’s evidence should be considered
“electrical connections,” “electrical connectors,” or “connection fittings” within
International Class 9. It would likely have been useful to the examining attorney to
know, as well, whether the goods contained any components that have an electrical
function. This issue might have been reached had the dialogue with applicant
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progressed beyond the examining attorney’s stymied efforts to learn the material
composition of the goods. In any event, for the reasons explained above, we find
that the various identifications proffered by applicant do not “meet the standards”
of the ID Manual, nor do they contain enough information so that classification of
the goods is not “difficult or ambiguous.” TMEP § 1402.01(a).
Decision: The refusal to register is affirmed.