Ingram Micro Inc.

Trademark Trial and Appeal Board

Nov 15, 2011

No. 78321253 (T.T.A.B. Nov. 15, 2011)

Mailed:
November 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ingram Micro Inc.
________

Serial Nos. 78321253, 783212541
_______

Grant R. Clayton of Clayton Howarth & Cannon PC for Ingram
Micro Inc.

Hanno Rittner, Trademark Examining Attorney, Law Office 117
(J. Brett Golden, Managing Attorney).
_______

Before Quinn, Kuhlke and Bergsman , Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Ingram Micro Inc. has filed applications to register
as a trademark on the Principal Register the background
design shown below for services ultimately identified as
“communication services, namely, providing on-line
electronic bulletin boards for transmission of messages

1 Inasmuch as most of the issues raised by the above-listed
appeals are similar, the Board is addressing them in a single
opinion. Citations to the briefs refer to the briefs filed in
application Serial No. 78321253, unless otherwise noted; however,
we have, of course, considered all arguments and evidence filed
in each case.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 78321253; 78321254
2
among computer users concerning computer networking,
wireless communications, security, home entertainment,
point-of-sale POS/automated-identification-and-data-
collection AIDC/bar code technology, electronic storage
devices, software, imaging devices and computer systems” in
International Class 382 and “consultation services, namely,
technical consultation services in the field of computer
hardware and software; providing technical information to
others in the field of computer hardware and software;
providing temporary use of on-line non-downloadable
software in the field of configuration, marketing and
servicing of computer hardware, software and digital
devices” in International Class 42.3

2 Application Serial No. 78321253, filed on October 30, 2003,
based on an allegation of a bona fide intention to use the mark
in commerce under Section 1(b), 15 U.S.C. §1051(b).

3 Application Serial No. 78321254, filed on October 30, 2003
based on an allegation of a bona fide intention to use the mark
in commerce under Section 1(b), 15 U.S.C. §1051(b).
Serial Nos. 78321253; 78321254
3
Both applications include a description of the mark,
which was ultimately amended to the following:
The mark consists of a rearwardly positioned
rectangle that is outlined in the color blue with
a left rectangular pane and a right rectangular
pane. The left pane is in the color white and
the right pane is in the color blue.

At one point during prosecution of the applications,
applicant described the mark as “a background rectangle.”
See, e.g., App. ‘253 Resp. p. 2 (July 28, 2005).
Regardless of the description, it is clear from the
specimens of use reproduced infra and applicant does not
dispute, that the applied-for mark is a background design.
The applications also include the following color
claim:
The color(s) white and blue is/are claimed as a
feature of the mark.

In the first Office actions issued in 2004, the
examining attorney included the following advisory
statement:
In view of the nature of the proposed mark, the
applicant is advised that, upon the examining
attorney’s consideration of an amendment to
allege use or statement of use, registration may
be refused under Trademark Act Sections 1, 2, 3
and 45, 15 U.S.C. §§1051, 1052 and 1127, on the
ground that the proposed mark is merely
background matter and, thus, does not function as
a service mark.

In determining whether the public would perceive
the proposed mark as a service mark, i.e., an
Serial Nos. 78321253; 78321254
4
indicator of the source of the services, or
merely as a decorative or ornamental feature,
factors considered by the examining attorney
include the commercial impression created by the
display of the subject matter on the specimen,
any prior registrations of the same or similar
matter for similar goods, promotion of the
subject matter as a service mark, and the
practice of the relevant trade.

First Office Action (App. No. ‘253, June 14, 2004), (App.
No. ‘254, June 10, 2004).
This advisory statement is in compliance with Office
procedure at that time. We take judicial notice4 of the
following excerpt from the third edition of the Trademark
Manual of Examining Procedure (TMEP):
Generally, the issue of ornamentation is tied to
the use of the mark as evidenced by the
specimens. Therefore, no ornamentation refusal
will be issued in an intent-to-use application
until the applicant has submitted specimens of
use with either an amendment to allege use under
§1(c) or (d).

TMEP §1202.03(e) (3d ed. 2d rev.).
On December 5, 2009, applicant filed Statements of Use
in each application. Set forth below are examples of how
the mark appears in the specimens of use:

4 The Board may take judicial notice of standard reference works
and commonly known facts. See In re Tokutake Industry Co., 87
USPQ2d 1697, 1700 n.1 (TTAB 2008); In re Isabella Fiore LLC, 75
USPQ2d 1564, 1566 n.5 (TTAB 2005).
Serial Nos. 78321253; 78321254
5

Upon review of the Statements of Use in Application
Serial Nos. 78321253 and 78321254, the examining attorney
refused registration on the ground that “the proposed mark
as used on the specimens of use appears as non-distinctive
background matter and thus fails to function as a trademark
pursuant to Trademark Act 1, 2, 3 and 45, 15 U.S.C. §§1051,
1052 and 1127.” Br. p. 1. In Application Serial No.
78321253, the examining attorney refused registration on
the additional ground that “the specimens fail to show the
applied-for mark in use in commerce as a service mark for
any of the identified services under Trademark Act Sections
1 and 45, 15 U.S.C. §§1051, 1127.” Br. pp. 1-2.
When the refusals were made final, applicant appealed
and the appeals have been fully briefed.
In its briefs, applicant argues against the refusals
based on failure to function and asserts that the refusals
are untimely. Applicant does not address the second
Serial Nos. 78321253; 78321254
6
refusal in Application Serial No. 78321253 that the
specimen did not evidence use for the applied-for services.
Untimely Refusal
We begin by addressing applicant’s argument that the
failure to function refusal is untimely. Specifically,
applicant quotes the following entry in the TMEP:
Generally, in examining the statement of use, the
Office will only issue requirements or refusals
concerning matters related to the statement of
use. The Office will not issue any requirements
or refusals concerning matters that could or
should have been raised during initial
examination unless the failure to do so in
initial examination constitutes a clear error.
Clear error means an error that, if not
corrected, would result in issuance of a
registration in violation of the Act. The
failure to make a refusal is a clear error if
reasonable minds could not differ as to the
propriety of the refusal.

TMEP §1109.08 (5th ed. 2007).
This quote appears to be from the 2007 5th edition of
the TMEP; however, it was the 6th edition revision 1 which
was in place on December 5, 2009, when applicant filed its
Statements of Use and December 18, 2009, when the examining
attorney issued the refusals. Section 1202.03(e) of the
Sixth edition provides that, “unless the ornamental nature
of the mark is clearly apparent from the drawing and
description of the mark, no ornamentation refusal will be
issued in an intent-to-use application until the applicant
Serial Nos. 78321253; 78321254
7
has submitted specimen(s) of use with an allegation of use
under §1(c) or §1(d), 15 U.S.C. §1051(c) or (d).”
Applicant argues that:
Applicant gave clear notice of the appearance of
its applied for mark as comprising a left pane
colored white, in which a commonly owned mark
would be displayed and a right pane colored blue.
... In addition, ... the Trademark Senior
Attorney stated that “it appears that the
applicant is claiming the rectangle design and
colors that are used as background for the mark
in Reg. No. 1620552. The applicant should
indicate in its description that the design and
colors are background matter.” Thus, the
Trademark Senior Attorney herself addressed the
issue of the design functioning as background.
Hence, the distinctiveness issue could and should
have been raised in response to Applicant’s
December 14, 2004 Amendment A or at the time of
the January 27, 2005 Office Action. It was not,
and cannot be raised now.

In addition, the Office Actions have not asserted
that failure to raise the lack of distinctiveness
issue at this time would constitute clear error.
Hence, as a procedural matter, the Office Action
does not meet the burden of establishing that
raising the lack of distinctiveness issue, at
this very late date, is timely. In view of the
lack of any record in the post-Statement of Use
Office Actions that failure to raise the current
issue would be a matter of clear error, Applicant
asserts that the refusal in the most recent
Office Action must be withdrawn.

Br. pp. 9-10.
As noted above, at the time the first refusals were
made and the advisory statement provided in 2004, the 3rd
edition of the TMEP was in place and the examining attorney
followed appropriate procedure by deferring issuance of a
Serial Nos. 78321253; 78321254
8
failure to function refusal until specimens were submitted.
The fact that procedure altered somewhat by the time
applicant filed its Statements of Use does not provide
applicant with a windfall.
Moreover, in general, questions of procedural missteps
are not matters for Board consideration. In particular,
with regard to applicant’s arguments as to “clear error,”
it is well established that “questions involving the
applicability of the ‘clear error’ standard are the subject
matter of a petition to the Director, and are not proper
for consideration by way of an appeal to the Board.” In re
Jump Designs, LLC, 80 USPQ2d 1370, 1373 (TTAB 2006). As
stated in In re Sambado & Son Inc., 45 USPQ2d 1312, 1314-15
(TTAB 1997):
[T]he question of whether the clear error
standard was properly applied is a procedural one
arising out of examination practice. The
Examination Organization makes the determination
of “clear error,” which determination ultimately
is properly reviewable on petition to the
Commissioner. The Board’s determination on
appeal is to be limited to the correctness of the
underlying substantive refusal to register. The
Board will not second guess the Examining
Organization’s procedural determination, that is,
the latter’s application of the “clear error”
standard. As noted, the application of the
“clear error” standard is, in this context, a
procedural decision (one that answers the
question, “Should a new refusal be made and
defended by the Examining Attorney?”).

Serial Nos. 78321253; 78321254
9
See also Trademark Rules 2.63 and 2.146, 37 C.F.R. §§ 2.63,
2.146.
Thus, the Board will not consider the merits of
applicant’s argument that the refusal is procedurally
improper. Jump Designs, 80 USPQ2d at 1373.
Failure to Function
A background design that is not sufficiently
distinctive to create a commercial impression separate from
the word marks with which it is used may be registered only
with proof of acquired distinctiveness as provided under
Section 2(f). TMEP §1202.11 (8th ed. 2011). “[C]ommon
geometric shapes such as circles, squares, rectangles,
triangles and ovals, when used as backgrounds for the
display of word marks, are not regarded as trademarks for
the goods to which they are applied absent evidence of
distinctiveness of the background design alone.” In re
Benetton Group S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998),
citing, In re E.J. Brach & Sons, 256 F.2d 325, 118 USPQ
308, 310 (CCPA 1958). Further, the addition of a color to
the background design “does not change the standard by
which these types of marks are judged.” Id. On the other
hand “where the background design of a composite mark is
not commonplace, but is unique or unusual in a particular
field of endeavor” it may be considered to be inherently
Serial Nos. 78321253; 78321254
10
distinctive. In re Nat’l Inst. for Auto Serv. Excellence,
218 USPQ 744, 745 (TTAB 1983).
The examining attorney contends that applicant “has
not articulated any commercial impression apart from the
white and blue rectangle used as a background.” Br. p. 5.
Rather, the examining attorney argues that the “overall
rectangular shape adds very little visual impact other than
to stage the wording.” In support of his position, the
examining attorney submitted several third-party
registrations that have marks with similar background
designs registered on the Supplemental Register, indicating
similar background designs have not been considered to be
inherently distinctive. See, e.g., Reg. No. 2938999 (the
mark is described as “a solid red background with a green
upper right corner”), and Reg. No. 3203130 (mark is
described as “a label characterized by a grey rectangle
containing rows of small grey squares, on which a thin
white-colored band and a broader red-colored band are
superimposed. The label has a central rectangular hole and
three parallel bands which are symmetrical to its central
hole, the first band being red, the second yellow in the
left portion and green in the right portion, and the third
one green. There is a small, white vertical line inside
Serial Nos. 78321253; 78321254
11
the left portion of the red band and a white circle inside
the left portion of the third band.”)
In traversing the refusals, applicant argues that
“when color is applied to a defined shape or pattern, or
when several colors are combined in a pattern, courts have
long held and viewed such color added to shapes and
patterns as overall designs are candidates for trademark or
trade dress rights ... [and that] [m]eeting this standard
requires that colors be combined with shapes, patterns or
symbols in such a manner as to become distinctive designs.”
Br. p. 6.
Applicant contends that its mark meets this standard
because its “design comprises three rectangles. One
rectangle is colored blue and one rectangle is colored
white. Those two rectangles are then combined to create a
large, bicolor rectangle outlined in the color blue. In
addition, the design incorporates an asymmetry in its
design in that the white rectangle is larger than the blue
rectangle.” Br. p. 7.
We find that applicant’s proposed mark is a background
design and that it does not create a separate commercial
impression sufficient to permit registration absent a
showing of acquired distinctiveness. It is a simple
geometric design. To the extent separate rectangles would
Serial Nos. 78321253; 78321254
12
be perceived, they are not joined or juxtaposed in a way
that would be distinctive. Moreover, use of the two
background colors, white and blue, do not combine in a way
to make this simple geometric background design inherently
distinctive.
Applicant’s reliance on Quabaug Rubber Co. v. Fabiano
Shoe Co., Inc., 567 F.2d 154, 195 USPQ 689 (1st Cir. 1977)
and Hygienic Products Co. v. Coe, 85 F.2d 264, 29 USPQ 458
(DC Cir. 1936) do not persuade us of a different result.
The mark in issue in Quabaug, was an elongated, yellow
octagon. The court noted that the plaintiff’s advertising
had made the mark “more distinctive,” and that the
defendant had not challenged the validity of plaintiff’s
registration for the yellow elongated octagon and,
therefore, the court found that Quabaug’s registration was
“prima facie evidence that such mark has become distinctive
of the goods in commerce.” Id. at 694 (emphasis added).
This is not a definitive statement that the mark was
considered inherently distinctive; in fact, it implies the
opposite (“has become distinctive”).5 Similarly, in
Hygienic we note that the language in the decision sounds

5 Quabaug’s registration file is not of record and there is
nothing in the decision discussing the prosecution of the
registration, i.e., whether registrant was required to show
acquired distinctiveness.

Serial Nos. 78321253; 78321254
13
similar to a finding of acquired distinctiveness. See,
e.g., “There are of record copies of applicant’s
advertising material which prominently feature colored
illustrations of the bags ... and there are also of record
affidavits of officials of a number of applicant’s
customers attesting to the fact that to them the striped
markings on applicant’s bags serve both to distinguish
applicant’s goods from similar gods of others, and to
differentiate between the various types of abrasives which
it sells.”
In any event, we must make our determination based on
the proposed mark before us and it is clear from
applicant’s specimens of use that applicant’s mark does not
make a separate impression. Moreover, as the examining
attorney notes, applicant’s specimen of use shows other
background material within the large rectangle, namely, the
red rectangle serving as background for the word MICRO. As
the examining attorney states “not only is applicant
claiming background design as a service mark, it is only
claiming a portion of the overall background design. It
seems unreasonable to expect consumers to recognize and
pull out the white-and-blue rectangle as a service mark,
yet be unaffected by the red rectangle featured in the
overall design.” Br. p. 7.
Serial Nos. 78321253; 78321254
14
Specimens Fail to Show Use with Recited Services
Finally in Application Serial No. 78321253, the
examining attorney asserts that the specimens do not show
the applied-for mark in use in commerce as a service mark
for the identified electronic bulletin board services. As
noted above, applicant did not address this refusal in its
brief.
Applicant submitted manuals and printouts from its
website as specimens of use. As noted by the examining
attorney “there must be something which creates in the mind
of the purchaser an association between the mark and
service activity.” Br. p. 12, quoting, In re Adair, 45
USPQ2d 1211, 1215 (TTAB 1997).
Upon review of the specimens, the proposed mark only
appears on the cover pages. The examining attorney states
that the specimens reveal no reference to the identified
electronic bulletin board services. Specifically, the
examining attorney states that “whereas the identification
recites a public message board for general consumption,
applicant’s specimens identify highly organized and
directed dispatch and management solutions for handling and
routing incoming service requests to specific end-user
members to increase such member’s income opportunities.”
Br. p. 14.
Serial Nos. 78321253; 78321254
15
We agree with the examining attorney’s assessment.
The specimens showing the proposed mark on the cover of the
manuals and on the first page of the website do not show a
proper nexus with the identified services. Moreover, the
only services that could possibly be considered electronic
bulletin board services, described in the manual on page 18
and on pages 2 and 3 of the website are too attenuated from
the proposed mark and are described under different terms,
“Clarify” and “IMOnsite.”
Decision: The refusals to register the rectangular
designs in each application on the grounds that they fail
to function as marks are affirmed. Further, the refusal to
register the mark in Application Serial No. 78321253 is
also affirmed on the ground that the specimen of use does
not show use of the mark in connection with the applied-for
services.