ICE Futures U.S., Inc.

Trademark Trial and Appeal Board

Jan 16, 2008

No. 78199843 (T.T.A.B. Jan. 16, 2008)

Mailed:
January 16, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ICE Futures U.S., Inc.1
________

Serial No. 78199832,
Serial No. 78199843 and
Serial No. 78199848
_______

Karin Segall of Darby & Darby, P.C. for ICE Futures U.S.,
Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Walters, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

In an order mailed January 30, 2006, the Board
consolidated the proceedings in the appeals of the three
applications identified here because they involve the same
applicant and common issues of fact and law.

1 The Board of Trade of New York, Inc. filed the applications at
issue here. The Board of Trade of New York, Inc. assigned the
applications to Intercontinental Exchange, Inc., recorded at Reel
and Frame 3608/0080, on August 24, 2007. Intercontinental
Exchange, Inc. then assigned the applications to ICE Futures,
U.S., Inc., recorded at Reel and Frame 3635/0825, on October 9,
2007. All references to “applicant” include its predecessors.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Ser. Nos. 78199832, 78199843 and 78199848
2
In Application Serial No. 78199832, ICE Futures U.S.,
Inc. (applicant) has applied to register the mark SUGAR NO.
14 in standard-character form on the Principal Register for
services identified as “financial services, namely, futures
exchange and related commodity trading services” in
International Class 36. Applicant claims both first use of
the mark anywhere and first use of the mark in commerce on
December 16, 1942.
In Application Serial No. 78199843, applicant has
applied to register the mark SUGAR NO. 11 in standard-
character form on the Principal Register identifying the
same services and claiming the same dates of use as in the
SUGAR NO. 14 application.
In Application Serial No. 78199848, applicant has
applied to register the mark COTTON NO. 2 in standard-
character form on the Principal Register again identifying
the same services but claiming first use of the mark
anywhere and first use of the mark in commerce in 1870.
In each of the three applications applicant has
disclaimed the words “SUGAR” and “COTTON” respectively.
The Examining Attorney has finally refused
registration on the Principal Register on two grounds in
each of the three applications. First, the Examining
Attorney has refused registration on the ground that each
Ser. Nos. 78199832, 78199843 and 78199848
3
of the marks merely describes the identified services under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1051(e)(1).
Secondly, the Examining Attorney has refused registration
on the ground that the marks/designations at issue do not
function as service marks, that is, in each of the
applications the specimens fail to show use of the
respective marks as service marks in connection with the
identified services under Trademark Act Sections 1, 2, 3
and 45, 15 U.S.C. §§ 1051, 1052, 1053 and 1127.
Applicant has appealed both refusals in all three
applications. Applicant and the Examining Attorney have
filed briefs. We reverse the refusals on both grounds in
each of the three applications.
The Descriptiveness Refusal
First, we address the descriptiveness refusal. A term
is merely descriptive of services within the meaning of
Section 2(e)(1) if it forthwith conveys an immediate idea
of a quality, characteristic, feature, function, or purpose
of the services. See, e.g., In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s services in
order to be considered merely descriptive; it is enough
Ser. Nos. 78199832, 78199843 and 78199848
4
that the term describes one significant attribute or
function of the services. See In re H.U.D.D.L.E., 216 USPQ
358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338,
339 (TTAB 1973).
We must determine whether a term is merely descriptive
not in the abstract, but in relation to the services
identified in the application and the possible significance
that the term would have to the average purchaser of the
services. In re Polo International Inc., 51 USPQ2d 1061,
1062 (TTAB 1999); and In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
The Examining Attorney argues, “… the applicant’s
marks identify the commodity being traded through
applicant’s service… The wording SUGAR and COTTON identify
the type of commodity that the applicant provides through
the futures exchanges. The wording NO. 2, NO. 11 and NO.
14 identify the contract numbers for the cotton and sugar
commodity that the applicant provides via its futures
exchanges.” Examining Attorney’s Brief at 15. To support
this conclusion, the Examining Attorney points to
applicant’s rules which specify contract terms relevant to
the futures contracts covered by each of the marks and to
other evidence likewise referencing these contract terms.
Ser. Nos. 78199832, 78199843 and 78199848
5
The contract terms include specifications for the product
itself, quantity, delivery and other contract terms.
The Examining Attorney concludes his argument on this
issue by stating: “Furthermore, the proposed marks, by
their very nature, must be available for use by all futures
traders and any organization that reports out on futures
trading.” Id. at 19.
Applicant begins its argument by explaining how it
renders the identified services, that is, how a futures
exchange operates. This explanation is relevant to our
consideration of both refusals at issue here. Applicant
states:
The primary purpose of a futures exchange is
price discovery. Futures exchanges were created
in response to the need for fair, orderly and
efficient pricing of commodities in the
marketplace. The exchanges provide a regulated,
public marketplace for investors to discover the
price of a commodity by buying or selling futures
contracts. Investors profit or lose from the
differences in the prices agreed upon when
trading such contracts. “A person seeking to
liquidate his futures positions must form an
opposite contract for the same quantity so that
his obligations under the two contracts will
offset each other.” (citation omitted.)
Generally, investors do not want to actually
purchase or own the tangible commodity, such as
sugar or cotton, being traded. (citation and
footnote omitted.) In order to facilitate deal
making, the futures exchanges, such as Applicant,
created standardized futures contracts, so that
the obligations of the contracts offset each
other. Thus the contracts are interchangeable
and every term is the same except the price.
Ser. Nos. 78199832, 78199843 and 78199848
6

Applicant’s Main Brief at 9-10.

Applicant elaborates further:
Investors cannot purchase SUGAR NO. 11 brand
sugar. Investors cannot purchase a contract from
applicant. That is not the way a futures
exchange operates. Moreover, although in the
industry investors use the language “buying” and
“selling” with respect to trading futures
contracts, such contracts are not traded in the
sense that the same contract is bought and sold.
Rather, contracts are formed and discharged.
(citation omitted.) Investors can and do
negotiate deals to buy or sell a tangible
commodity at certain price (sic) according to the
established rules and regulations set forth by
the SUGAR NO. 11, SUGAR NO. 14, or, COTTON NO. 2
contract terms. Investors “trade”, “buy” or
“sell” contracts from each other, not from
applicant.

Id. at 9.
With this background as a foundation, applicant argues
that the numerical elements in its marks are arbitrary.
Applicant states that, “There are over a hundred
commodities exchanges worldwide but none of them offers
services concerning the SUGAR NO. 11, SUGAR NO. 14 or
COTTON NO. 2 contracts, such services are exclusively
associated with Applicant.” Id. at 8, n.7.
As applicant argues, we see no evidence that “11,”
“14” or “2” have any particular meaning other than to
identify the futures contracts uniquely associated with
applicant. As we indicated, applicant has disclaimed
Ser. Nos. 78199832, 78199843 and 78199848
7
“SUGAR” and “COTTON” in the respective applications. Also,
there is no evidence that anyone other than applicant uses
SUGAR NO. 11, SUGAR NO. 14 or COTTON NO. 2 in the rendering
of the identified services descriptively or otherwise.
There is no evidence that anyone in the relevant industry
understands SUGAR NO. 11, SUGAR NO. 14 or COTTON NO. 2, in
particular, the numerical elements, as having any industry-
wide meaning.
While the full marks identify contracts with detailed,
uniform terms, the record establishes that applicant
created those terms for its exclusive use in the rendering
of its services, that is, in the operation of a futures
exchange.
In fact, the evidence of third-party references to
SUGAR NO. 11, SUGAR NO. 14 or COTTON NO. 2 in varying forms
shows a consistent, explicit association of the marks with
applicant, usually referred to as “NYBOT,” a reference to
the New York Board of Trade, the predecessor owner. These
references are drawn from reports of quotations and
discussions regarding applicant and its activities. See,
e.g., evidence attached to the Office Action sent January
10, 2006 regarding SUGAR NO. 14 and evidence attached to
the Office Action sent August 30, 2005 regarding COTTON NO.
2.
Ser. Nos. 78199832, 78199843 and 78199848
8
Accordingly, based on the evidence of record we
conclude that SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2,
when viewed in their entireties and in the full context of
their use, are not merely descriptive of applicant’s
services. The marks, when viewed in their entireties, are
arbitrary. They do not identify a commodity applicant
sells, as the Examining Attorney argues. Furthermore,
there is no evidence that others have a need to use these
terms in rendering the identified services, as the
Examining Attorney argues. We find applicant’s long, and
apparently exclusive, use of the marks persuasive evidence
of the absence of such a need -- for over sixty-five years
in the case of the SUGAR NO. 11 and SUGAR NO. 14 marks and
one hundred and thirty-five years in the case of the COTTON
NO. 2 mark. The record does show that others can and do
use the terms/marks to refer to applicant’s specific
services. This use in no way indicates that the marks are
merely descriptive of the identified services.
The Use/Specimen Refusal
Next, we address the issue of the specimens, that is,
whether SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2, as
used on the specimens, function as service marks for
“financial services, namely, futures exchange and related
commodity trading services.”
Ser. Nos. 78199832, 78199843 and 78199848
9
We display the specimens of record below:

Ser. Nos. 78199832, 78199843 and 78199848
10

Applicant describes its specimens as follows:
Here, the specimens submitted in support of the
Subject Marks are printouts from Applicant’s
website discussing the trading specifics of SUGAR
NO. 11, SUGAR NO. 14 and COTTON NO. 2, such as
trading hours, strike prices, listing procedure,
ticker symbol and other trading options, which
clearly indicate futures exchange and related
commodity trading services. The specimens all
have the same layout. At the top of the page
appears a link to the contract specifications for
futures trading associated with the Subject
Marks. Below the link is a header that states
FUTURES CONTRACT ON SUGAR NO. 11 (WORLD) or
FUTURES CONTRACT ON SUGAR NO. 14 (DOMESTIC) or
COTTON NO. 2 FUTURES CONTRACT. Below the header
appears text describing the exchange and related
commodities trading services, such as the daily
price limits and position accountability.

Applicant’s Main Brief at 13.
The Examining Attorney argues:
Ser. Nos. 78199832, 78199843 and 78199848
11
A term that is used only to identify a
product, device or instrument sold or used
in the performance of a service rather than
to identify the service itself does not
function as a service mark. See In re
Moody’s Investors Service Inc., 13 USPQ2d
2043 (TTAB 1989) (“Aaa,” as used on the
specimen, found to identify the applicant’s
ratings instead of its rating services).
Clearly the applicant is using the proposed
marks SUGAR NO. 11, SUGAR NO. 14 and COTTON
NO. 2 to identify financial instruments used
in the performance of the futures exchange
and related commodity trading services. As
such, the proposed marks do not function to
identify the trading services but instead
are the apt names of the contracts that are
the subject of those services.

Examining Attorney’s Brief at 9.
Applicant argues that its marks do identify the source
of the identified services. To support its argument, in
addition to the specimens, in each of the applications
applicant has submitted copies of the regulations
specifying the terms of the contracts associated with each
of the three marks. Applicant issues these regulations
and, as applicant explains in the quoted language above,
there is a link to a copy of the regulations in each of the
specimens.
Also, applicant has submitted for the record examples
of a number of registrations for other marks which it
argues are similar to the marks at issue here and which
have been registered for similar financial or investment
Ser. Nos. 78199832, 78199843 and 78199848
12
services based on similar specimens of use. In each
instance, applicant has also submitted a copy of the
relevant specimen. The records include third-party
registrations and a copy of Registration No. 2853551 owned
by applicant for the mark COFFEE “C” in standard-character
form for services identical to those identified in the
three applications at issue here. The specimen is likewise
identical to the specimens submitted in the three
applications at issue here.
Trademark Act Section 1(a) requires that an applicant
submit “specimens or facsimiles of the mark as used” as
part of the application. 15 U.S.C. § 1051(a)(1). The Act
provides further that a mark is “in use in commerce … on
services when it is used or displayed in the sale or
advertising of the services.” 15 U.S.C. § 1127. The
Trademark Rules likewise specify, “A service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” 37 C.F.R. § 2.56(b)(2).
The Board has observed that use in the “rendition” of
services should be viewed as an element of the “sale” of
services under Section 45 of the Act. In re Red Robin
Enterprises, Inc., 222 USPQ 911, 913 (TTAB 1984). See also
In re Metriplex Inc., 23 USPQ2d 1315, 1316 (TTAB 1992); In
Ser. Nos. 78199832, 78199843 and 78199848
13
re Eagle Fence Rentals, Inc., 231 USPQ 228, 230 (TTAB
1986).
Also, the Board has recognized that the service need
not be referenced explicitly even in a specimen which
purports to show use of a mark in the advertisement or
promotion of the services. See In re International
Environmental Corp., 230 USPQ 688, 691 (TTAB 1986)(specimen
showing use of mark in surveys used to promote service with
no mention of “distributorship services” found acceptable).
In the case of a specimen intended to show use of the mark
in the sale or “rendering” of the service, the specimen
need not and often will not include an explicit reference
to the service. In re Metriplex Inc., 23 USPQ2d at 1316.
We conclude that the specimens of use, which applicant
has submitted in each of the three applications at issue
here, are sufficient to show use of the respective marks in
connection with the identified services. We conclude so
based on our analysis of the specimens themselves, the
context of use and the history of applicant’s exclusive use
in the industry reflected in this record.
In each of the three specimens the primary use of the
marks is with the wording “futures contract”: “Futures
Contract on Sugar No. 11 (World)”; “Futures Contract on
Sugar No. 14 (Domestic)”; and “Cotton No. 2 Futures
Ser. Nos. 78199832, 78199843 and 78199848
14
Contract.” The Examining Attorney overemphasizes and
misconstrues the significance of this wording. More
generally, the Examining Attorney fails to give adequate
consideration to the full context within which the
specimens are used and the services are rendered.
The Examining Attorney bases his rejection of the
specimens on the belief that the marks/designations at
issue only identify the goods which are the subject of the
futures contracts or the futures contracts themselves. The
Examining Attorney implies that this use contradicts
applicant’s claim that the marks/designations identify
applicant as the source of the futures exchange services.
However, in these cases, SUGAR NO. 11, SUGAR NO. 14 and
COTTON NO. 2 not only identify the relevant contracts,
contracts which are unique to applicant, but SUGAR NO. 11,
SUGAR NO. 14 and COTTON NO. 2 also identify the source of
the futures exchange services.
The circumstances present here are different from
cases in which the proposed mark is used to identify a
product or service which is completely distinct from the
goods or services identified in the application. Cf. In re
Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976) (As
used on specimen, SYNCOM only identifies a speaker-testing
Ser. Nos. 78199832, 78199843 and 78199848
15
computer and not the identified goods “loudspeaker systems
for high-fidelity music reproduction.”).
In the cases we consider here, when we view the full
context of the use of the marks, including the “futures
contract” wording, we conclude that the inclusion of this
wording would not interfere with the perception of the
marks as service marks for futures exchange services by
relevant consumers. While the marks may also identify the
futures contracts, again contracts which, on this record,
are unique to applicant, the contracts are an integral and
essential component of the identified services, that is,
the operation of a futures exchange. In re Ancor Holdings,
LLC, 79 USPQ2d 1218, 1220-1221 (TTAB 2006).
The contracts embody the intangible rights which are
being exchanged when customers use applicant’s futures
exchange services. Under the circumstances, the connection
between the marks and the services is evident and need not
be stated explicitly as the Examining Attorney implies. In
re Metriplex Inc., 23 USPQ2d at 1316. In fact, when we
view the marks at issue here in the full context of the
specimens, in each instance the mark would be perceived
readily: SUGAR NO. 11 from “Futures Contract on Sugar No.
11 (World),” SUGAR NO. 14 from “Futures Contract on Sugar
No. 14 (Domestic)” and COTTON NO. 2 from “Cotton No. 2
Ser. Nos. 78199832, 78199843 and 78199848
16
Futures Contract.” Thus, the specimens show use of the
marks in the rendering of the services.
The prominent use of the marks in the corresponding
regulations further confirms the fact that relevant
customers will associate the marks with applicant as the
operator of the exchange. In re Safariland Hunting Corp.,
24 USPQ2d 1380, 1381 (TTAB 1992). Likewise, the extremely
long periods of use of each of the marks by applicant
provides further confirmation of this association -- for
over sixty-five years in the case of the SUGAR NO. 11 and
SUGAR NO. 14 marks and one hundred and thirty-five years in
the case of the COTTON NO. 2 mark. Also, as we indicated,
the evidence of record shows a consistent, explicit
association of SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2
with applicant, and no evidence of use of these
designations by anyone else.
We decline to rely on applicant’s COTTON “C”
registration or the third-party registrations applicant
made of record. Actions on prior applications do not
dictate the result in later cases. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
The Examining Attorney relies on In re Moody’s
Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) to
support his position. However, we find the Moody’s
Ser. Nos. 78199832, 78199843 and 78199848
17
decision distinguishable from the cases under consideration
here. In that case the applicant sought to register “Aaa”
for “providing ratings of fixed interest rate obligations.”
The issue on appeal was whether the specimens showed use of
“Aaa” as a service mark for the identified services. The
specimens were publications of the applicant showing use of
“Aaa” in ratings of certain securities and explaining its
significance as a top rating. The Moody’s opinion includes
a quote from an article in the record in the case: “Under
present commercial bank regulations issued by the
Comptroller of the Currency, bonds rated in the top four
gradations by S&P, Moody's, and Fitch - triple-A, double-A,
single-A, and triple-B, or Baa - are generally considered
eligible for bank investment.” Id. at 2947, n.2. Thus,
unlike the cases before us, the record included evidence
that the applicant’s competitors also used “triple-A” to
identify their top rated securities. In contrast, in the
cases before us we have no such evidence. Rather, the
evidence of record indicates not only that applicant is the
only party which uses SUGAR NO. 11, SUGAR NO. 14 and COTTON
NO. 2 in the operation of a futures exchange, but that
applicant has done so for a very long time. Furthermore,
there are significant differences between the services
Ser. Nos. 78199832, 78199843 and 78199848
18
which were at issue in the Moody’s case and the nature and
use of the “Aaa” mark and the marks now before us.
Accordingly, we conclude that the specimens of record
show use of SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2 as
service marks for “financial services, namely, futures
exchange and related commodity trading services.”
Decision: We reverse the refusals to register the
marks in each of the three applications both on the ground
that the marks are merely descriptive and on the ground
that applicant has failed to show use of the marks as
service marks.