HD Medical Electronic Products Inc.

Trademark Trial and Appeal Board

Feb 7, 2020

87207921 (T.T.A.B. Feb. 7, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re HD Medical Electronic Products Inc.
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Serial No. 87207915
Serial No. 87207919
Serial No. 87207921
(Consolidated)
_____

HD Medical Electronic Products Inc., pro se.

Christina Calloway, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Zervas, Bergsman, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
HD Medical Electronics Products Inc. (“Applicant”), appearing pro se, seeks
registration on the Principal Register of the proposed standard character marks
MR1109, MR1108, and MR1107, all for “permanent magnet motors” in International
Class 7.1

1 Application Serial Nos. 87207915, 87207919, and 87207921 were filed on October 19, 2016
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed
first use of the proposed marks and first use in commerce at least as early as May 8, 2008.
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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The Trademark Examining Attorney has refused registration of each of
Applicant’s proposed marks under Sections 1, 2, and 45 of the Trademark Act, 15
U.S.C. §§ 1051, 1052, and 1127, on the ground that the proposed marks fail to
function as marks because they are merely model designations.
Applicant appealed when each of the three refusals were made final. The appeals
have been consolidated, 10 TTABVUE,2 and Applicant and the Examining Attorney
have filed briefs in each appeal. We affirm the three refusals to register.
I. Prosecution Histories and Record on Appeal3
We summarize below the prosecution histories of the involved applications
because they provide useful background to our analysis of the issues on appeal.
The Examining Attorney issued first Office Actions in each case in which she
refused registration of Applicant’s proposed marks on the grounds that the marks did
not appear on Applicant’s specimens and that the specimens did not show use of the
mark in connection with the goods, and issued advisories that upon the consideration
of substitute specimens, registration might be refused on the ground that the
proposed marks merely identified a model designation and did not function as

2 Citations in this opinion to the briefs and other materials on appeal refer to TTABVUE, the
Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear. Unless otherwise indicated, citations are to the
TTABVUE docket in Application Serial No. 87207915.
3 Citations in this opinion to the application record are to pages in the Trademark Status &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office
(“USPTO”).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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marks.4 Applicant responded to each Office Action by arguing that it had “established
a positive reputation in our industry for our part number,”5 and by submitting
substitute specimens, two of which showed the applied-for marks:6
7
8

4 February 7, 2017 Office Actions at TSDR 1.
5 August 7, 2017 Responses to Office Action at TSDR 1.
6 The substitute specimen in Application Serial No. 87207921 showed the alpha-numeric
WR 1107. Id. at TSDR 2 (Serial No. 87207921).
7 Id. at TSDR 2 (Application Serial No. 87207919).
8 Id. at TSDR 2 (Application Serial No. 87207915).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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The Examining Attorney then issued final Office Actions maintaining both
grounds for refusal of registration and continuing the model designation advisories.9
Applicant requested reconsideration in all three cases, submitting the substitute
specimens displayed below:
10
11
12

9 September 1, 2017 Office Actions at TSDR 1.
10 February 28, 2018 Request for Reconsideration at TSDR 2-3 (Serial No. 87207915).
11 February 28, 2018 Request for Reconsideration at TSDR 2-3 (Serial No. 87207919).
12 February 28, 2018 Request for Reconsideration at TSDR 2-3 (Serial No. 87207921).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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The Examining Attorney then issued superseding non-final Office Actions in all
three cases in which she withdrew the refusals based on Applicant’s failures to show
the proposed marks on the specimens and issued refusals based on the ground that
the specimens showed the proposed marks as merely model designators.13 The
Examining Attorney requested certain information regarding Applicant’s specimens
pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), and made of record pages
from Applicant’s website and third-party various webpages referring to the proposed
marks as model or part numbers.14 We reproduce below excerpts from the webpages
(all emphasis supplied by the Examining Attorney):
15

13 March 28, 2018 Office Actions at TSDR 1.
14 Id. at TSDR 2-10 (Serial No. 87207915), 2-11 (Serial No. 87207919), and 2-9 (Serial No.
87207921).
15 Id. at TSDR 2 (Serial Nos. 87207915, 87207919, and 87207921 (mcmotorusa.com)).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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16
17
18

16 Id. at TSDR 3 (Serial Nos. 87207915, 87207919, and 87207921).
17 Id. at TSDR 4 (Serial Nos. 87207915, 87207919, and 87207921).
18 Id. at TSDR 5 (Serial Nos. 87207915, 87207919, and 87207921).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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19
20

19 Id. at TSDR 10 (Serial No. 87207915).
20 Id. at TSDR 4 (Serial No. 87207919).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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21
Applicant traversed the refusals to register and provided information in response
to the Examining Attorney’s request.22 Applicant stated that its “goods are not sold
to the public, due to being industrial parts” and are “sold exclusively through
Distributors, Dealers, and offered at Trade Shows only,” and that its additional
substitute specimens submitted with the responses (portions of which are shown
below) showed the display of the goods at the Specialty Equipment Market
Association (“SEMA”) trade show in Las Vegas, Nevada:23

21 Id. at TSDR 5 (Serial No. 87207921).
22 September 25, 2018 Responses to Office Actions at TSDR 1 (Serial Nos. 87207915,
87207919, and 87207921).
23 Id.
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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24
The Examining Attorney then made final the failure-to-function refusals.25
Applicant purported to request reconsideration, making of record yet another
specimen of use of the proposed marks, displayed below:

24 Id. at TSDR 3, 5
25 October 19, 2018 Final Office Actions at TSDR 1 (Serial Nos. 87207915, 87207919, and
87207921).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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26

26 April 19, 2019 Requests for Reconsideration at TSDR 2-3 (Serial Nos. 87207915, 87207919,
and 87207921).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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II. Analysis of Failure-to-Function Refusals
A. Applicable Law
“It is well settled that terms used merely as model, style, or grade designations
are not registrable as trademarks because they do not serve to identify and
distinguish one party’s goods from similar goods manufactured and/or sold by others.”
In re Dana Corp., 12 USPQ2d 1748, 1749 (TTAB 1989). “This is so because such a
designation serves as a description of the product, informing one of the quality, size
or type of the particular product, rather than serving as an identifier of the source of
the goods.” Id. If a proposed mark is found to be a model number or designation, and
“it is shown that the designation in question has attained recognition by the public
as a source identifier, in addition to any other function it may perform, then it may
be registrable as a trademark.” Id. (citing In re Peterson Mfg. Co., 229 USPQ 466
(TTAB 1986)).27 The determination of whether a proposed mark is unregistrable
because it is a model, style, or grade designation is a question of fact. Id.
“[T]he central question in determining whether [each of] Applicant’s proposed
mark functions as a [trademark] is the commercial impression it makes on the
relevant public (e.g., whether the term sought to be registered would be perceived as
a mark identifying the source of the [goods]).” In re Keep A Breast Found., 123
USPQ2d 1869, 1879 (TTAB 2017).

27 We discuss below Applicant’s claim in its briefs that it is entitled to registration of its
proposed marks because they have acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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B. Arguments of Applicant and the Examining Attorney
1. Applicant’s Arguments
Applicant’s arguments are as follows:
Not all alphanumeric designations are all part numbers for
the sake of indexing. Some can be the Make and/or Model
of a final product of a commodity in commerce, especially
in our case of being sold on the market for industrial
applications, since May 8, 2008. Applicant respectfully
acknowledges the Examiners case, that some
alphanumeric designations merely serve as a model
designation, but let it be known that our mark MR1109 is
no different from (APPLICANT) Daimler AG (owner of
MERCEDES BENZ) being awarded the Trademark of
model S550E, per (Serial Number: 86393526) to help
distinguish it from competitors, and not merely as model
designation.
In the alternative, Applicant is entitled to registration of
its mark pursuant to Trademark Act § 2(f), on the basis that
the mark has acquired distinctness due to continuous use
and exposure of the mark in commerce for the five years
before the date of which the claim of distinctiveness is made.
See screenshot attachment of website [mcrmotorusa.com]
advertising mark MR1109 [as] early as January 11, 2012,
via internet archive, WAYBACKMACHINE.ORG.
4 TTABVUE 7 (emphasis in original).
2. The Examining Attorney’s Arguments
The Examining Attorney argues that each of the applied-for marks “merely
identifies a model designation because the mark is displayed in ordinary plain font
with no stylization, in small type, and is placed on the goods and their packaging on
the specimens in such a manner that consumers would likely perceive as merely a
model designation.” 7 TTABVUE 5. She argues that the “specimens of record show
the mark on the goods; on an advertisement for the goods; and on a display associated
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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with the goods,” id. at 6, and that all of these uses are as model numbers, not marks.
Id. at 6-7. She argues that “model designations are commonly used to distinguish
between different types of automobile parts within a single product line,” id. at 6
(citing Dana Corp., 12 USPQ2d at 1749); that Applicant “acknowledges in their [sic]
own arguments that [each] mark is a ‘part number;’” id. at 7; that each part number
is part of what Applicant calls its “1100 series” of automobile parts; and that the
record shows that “sellers reference [each] applied-for mark as a model designation
and not as source-indicating for the identified goods.” Id. She rejects Applicant’s
reliance on Mercedes-Benz’s registration of the mark S550E because it is not of record
and because each application must be considered on its own merits. Id. at 8.
With respect to Applicant’s asserted Section 2(f) claim, the Examining Attorney
argues that Applicant “asserted, for the first time, in its appeal brief, a claim of
acquired distinctiveness,” but that “this assertion is insufficient to obviate the refusal
as it is both untimely and not properly supported by evidence, and should not be
considered on appeal.” Id. She argues that Applicant “was advised on multiple
occasions that a Section 2(f) claim, backed by evidence relating to consumer
perception of the applied-for mark as a source indicator, could be proffered,” but that
“rather than proffering such evidence prior to the filing of its appeal, applicant
improperly asserts the Section 2(f) claim in its brief.” Id. at 8.
The Examining Attorney argues in the alternative that Applicant “failed to
provide sufficient evidence that the mark has become distinctive of applicant’s goods
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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in commerce thus, its allegation of five years’ use, even if timely, is insufficient to
show acquired distinctiveness.” Id. at 9.
C. Analysis of Refusal
1. Applicant’s Asserted Acquired Distinctiveness Claim
As discussed above, Applicant claims on appeal that its marks are registrable even
though they are model numbers because they have acquired distinctiveness under
Section 2(f). The Examining Attorney twice advised Applicant during prosecution
that an option for responding to the model number refusals was “[c]laiming acquired
distinctiveness under Trademark Act Section 2(f) by submitting evidence that the
applied for mark has become distinctive of applicant’s goods in commerce.”28
Applicant merely argued that “[i]n the last 8 years, we have established a positive
reputation in our industry for our part number . . . on the basis of performance and
high reliability,”29 and that “we have established a recognized and referenced part
number in our specialized industry [and] we are no longer a mere model
designation,”30 but never amended its applications to seek registration under Section
2(f), even in the alternative. We agree with the Examining Attorney that Applicant’s

28 March 28, 2018 Office Actions at TSDR 1 (Serial Nos. 87207915, 87207919, and 87207921)
(emphasis in original); October 19, 2018 Final Office Actions at TSDR 1 (Serial Nos.
87207915, 87207919, and 87207921) (emphasis in original).
29 August 7, 2017 Responses to Office Actions at TSDR 1 (Serial Nos. 87207915, 87207919,
and 87207921). This argument was made before the Examining Attorney issued the failure-
to-function refusals.
30 September 25, 2018 Responses to Office Actions at TSDR 1 (Serial Nos. 87207915,
87207919, and 87207921).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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invocation of Section 2(f) on appeal is untimely, and we have given it no consideration.
In re Integrated Embedded, 120 USPQ2d 1504, 1511-12 (TTAB 2016).31
2. Status of Proposed Marks as Model Numbers
Applicant acknowledges that the proposed marks are parts numbers, 4 TTABVUE
7, and its website characterizes the motors labelled with the proposed marks as part
of “[o]ur durable MR1100 Series Stepper Motors,”32 and states that “the MR1107,
MR1108, and MR1109 Series Stepper Motors can be utilized for replacing defective
Switer XC5.168, X15.168, X25.166, X25.168, X25.288, X25.569, XC5.589, X15.589.
X25.589, X25.689, X27.168, X27.589 [parts].”33 The proposed marks appear on
Applicant’s specimens in nondescript block lettering, together with other similar
lettering, in a manner befitting parts numbers, not marks:
34

31 Applicant’s bald claims of acquired distinctiveness are insufficient in any event. See Dana
Corp., 12 USPQ2d at 1750 (statements of seven of applicant’s customers and distributors that
they recognized applicant’s parts numbers as source indicators insufficient to establish
acquired distinctiveness); cf. Petersen Mfg., 229 USPQ at 467-68 (“a large number of
declarations” of retail consumers of applicant’s goods averring that parts numbers were
recognized as applicant’s marks sufficient to establish acquired distinctiveness).
32 March 28, 2018 Office Actions at TSDR 3 (Serial Nos. 87207915, 87207919, and 87207921).
33 Id.
34 February 28, 2018 Request for Reconsideration at TSDR 2-3 (Serial No. 87207915).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
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The proposed marks are also expressly identified as parts numbers on the backs
of Applicant’s packaging:
35
It is thus hardly surprising that, as shown above, resellers of Applicant’s goods
uniformly identify, or use, the proposed marks solely as numbers for parts in
Applicant’s “1100 Series.” The record is simply devoid of any evidence that anyone
other than Applicant considers the proposed marks to be source-identifiers rather
than indicators of product compatibility in automotive production and repair.36

35 April 19, 2019 Requests for Reconsideration at TSDR 2-3 (Serial Nos. 87207915, 87207919,
and 87207921) (emphasis supplied by Applicant). Applicant uses the designation ™ together
with the proposed marks on the packaging and in accompanying displays, id. at TSDR 2-3,
but “the mere use of TM or ‘trademarked’ does not automatically transform a word, design,
color, or sound into a trademark.” In re Vertex Grp. LLC, 89 USPQ2d 1694, 1701 n.16 (TTAB
2009) (citing In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006)).
36 As noted above, Applicant cites a purported registration of “model S550E” as a basis for
registration of its proposed marks. 4 TTABVUE 7. The registration is not of record, but even
if it were, it is axiomatic that each application must be decided on its own facts. See, e.g., In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).
Serial Nos. 87207915, 87207919, and 87207921 (Consolidated)
- 17 -

We find on the basis of the record as a whole that “the term[s] sought to be
registered would [not] be perceived as [marks] identifying the source of the [goods]).”
Keep A Breast Found., 123 USPQ2d at 1879.
Decision: The three refusals to register are affirmed.