Int’l Assn. of Certified Home Inspectors

Trademark Trial and Appeal Board

Mar 22, 2018

No. 86943943 (T.T.A.B. Mar. 22, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Int’l Assn. of Certified Home Inspectors
_____

Serial No. 86943943
_____

James A. Sheridan of Sheridan Law LLC,
for International Association of Certified Home Inspectors.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Wellington, Kuczma, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
The International Association of Certified Home Inspectors (“Applicant”) seeks
registration on the Principal Register of the claimed certification mark INFRARED
CERTIFIED (“CERTIFIED” disclaimed) in standard characters for “Inspection
services for indoor residential and commercial real estate, namely, detection of
moisture spots, detection of plumbing and roof leaks, termites, insulation defects, and
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electrical conditions in the inaccessible areas of an existing structure or home and/or
walls and voids by means of infrared imaging units,” in International Class B.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds
that the mark is merely descriptive of the identified services, and that Applicant has
made an insufficient showing of acquired distinctiveness pursuant to Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f), to make Applicant’s mark eligible for
registration on the Principal Register.
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, 13 TTABVUE, which was denied. 4-8 TTABVUE.
Applicant and the Examining Attorney have filed briefs. 10 TTABVUE; 12
TTABVUE. We affirm the refusal to register.
I. Prosecution History and Record on Appeal
In the first Office Action, the Examining Attorney refused to register Applicant’s
claimed mark on the ground that it was merely descriptive of the services identified
in the application.2 Applicant responded by arguing both that its mark was not
merely descriptive and that its mark was registrable “by reason of the authorized

1 Application Serial No. 86943943 was filed on March 17, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark and
first use in commerce at least as early as January 1, 2008.
2 June 22, 2016 Office Action at 1. In support of the mere descriptiveness refusal, the
Examining Attorney made of record definitions of “certified” from vocabulary.com and the
MACMILLAN DICTIONARY (macmillandictionary.com). Id. at 5-9. The Examining Attorney also
noted and made of record Applicant’s Registration No. 3795228 on the Supplemental Register
for the mark INFRARED CERTIFIED (CERTIFIED disclaimed) in standard characters for
the same services identified in the involved application. Id. at 1-4.
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users’ substantially exclusive and continuous use of the mark in commerce for in
excess of five years.”3 Applicant did not (i) formally amend its application to seek
registration under Section 2(f) of the Trademark Act; (ii) submit a “verified
statement” in support of its acquired distinctiveness claim, as required by Trademark
Rule 2.41(d)(2), 37 C.F.R. § 2.41(d)(2); or (iii) expressly reserve its right to argue, in
the alternative, that its claimed mark had acquired distinctiveness.4
Ordinarily, an applicant’s failure to expressly reserve the right to argue acquired
distinctiveness in the alternative may be deemed an admission of descriptiveness
that moots any further consideration of that issue. In re Thomas Nelson Inc., 97
USPQ2d 1712, 1713 (TTAB 2011). The Examining Attorney, however, did not treat
Applicant’s informal claim of acquired distinctiveness as such an admission. In a
second Office Action, the Examining Attorney deemed Applicant to have “amended
the application to assert acquired distinctiveness based on five years’ use in
commerce,” but she also maintained and continued the mere descriptiveness refusal.5
She rejected Applicant’s unverified five years’ use claim as “insufficient to show
acquired distinctiveness of the proposed mark because the mark is highly

3 July 6, 2016 Response to Office Action at 2. Applicant referred to and provided a link to a
definition of “infrared” from the MERRIAM-WEBSTER LEARNER’S DICTIONARY (merriam-
webster.com), but did not make the definition of record. Applicant did make of record a copy
of its certification requirements for use of the applied-for mark. Id. at 3-7.
4 Id.
5 July 14, 2016 Office Action at 1.
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descriptive,” and stated that Applicant “may respond by submitting additional
evidence.”6
In response to the second Office Action, Applicant submitted, “[i]n further support
of [its] claim of Acquired Distinctiveness,” a spreadsheet “showing a representative
sampling of the extensive and nationwide use by Applicant’s authorized users of the
mark INFRARED CERTIFIED (i.e., inspectors certified to provide home inspection
services under the certification mark INFRARED CERTIFIED) in connection with
the marketing and sale of inspection services for residential and commercial real
estate.”7 The spreadsheet was accompanied by copies of webpages of authorized
users.8 Applicant claimed that the spreadsheet “shows widespread geographically
dispersed use across the United States.”9
The Examining Attorney then issued a third Office Action making final the mere
descriptiveness refusal. The Examining Attorney made of record webpages from
third-party websites that she claimed show that “inspectors commonly use infrared
imaging in order to perform inspections,”10 and that Applicant’s claimed mark was
highly descriptive. She again rejected Applicant’s evidence of acquired distinctiveness
as insufficient.11

6 Id.
7 January 17, 2017 Response to Office Action at 2-4.
8 Id. at 5-196.
9 Id. at 2.
10 February 7, 2017 Office Action at 2-112.
11 Id. at 1.
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Applicant appealed and requested reconsideration of the Examining Attorney’s
conclusion that INFRARED CERTIFIED was highly descriptive.12 The Examining
Attorney denied the request for reconsideration and made of record additional
webpages regarding the use of infrared imaging in home inspections.13
As discussed above, Applicant neither formally amended its application to seek
registration under Section 2(f), nor expressly reserved its right to argue such a
position in the alternative in response to the Examining Attorney’s mere
descriptiveness refusal. On appeal, however, both Applicant and the Examining
Attorney have addressed mere descriptiveness and the sufficiency of Applicant’s
showing of acquired distinctiveness, and we will do so as well.
II. Mere Descriptiveness Refusal
A. Certification Marks and Section 2 of the Trademark Act
The Trademark Act defines a “certification mark” as “any word, name, symbol, or
device, or any combination thereof [used] to certify regional or other origin, material,
mode of manufacture, quality, accuracy, or other characteristics of [a] person’s goods
or services . . . .” 15 U.S.C. § 1127. There are generally three types of certification
marks: (1) marks that certify that goods or services originate in a specific
geographical region; (2) marks that certify that authorized users’ goods or services
meet certain standards in relation to quality, materials, or mode of manufacture; and
(3) marks that certify that authorized users’ work or labor was performed by a

12 August 3, 2017 Request for Reconsideration at 1.
13 August 25, 2017 Denial of Request for Reconsideration at 1-64.
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member of a union or other organization, or that the performer meets certain
standards. See generally TRADEMARK MANUAL OF EXAMINING PROCEDURE Section
1306.01 (Oct. 2017). Applicant’s claimed certification mark is in the third category,
as the certification statement in Applicant’s application states that the mark, “as
used by authorized persons, certifies compliance with Owner’s certification standards
for inspectors in the areas of indoor residential, commercial, and environmental
testing.”14
Section 4 of the Trademark Act, 15 U.S.C. § 1054, provides that certification
marks “shall be registrable under this chapter, in the same manner and with the
same effect as are trademarks.” Certification marks are thus subject to the same
statutory bars to registration as are other marks, including mere descriptiveness
under Section 2(e)(1) of the Trademark Act and lack of acquired distinctiveness under
Section 2(f) of the Trademark Act. See, e.g., In re Council on Certification of Nurse
Anesthetists, 85 USPQ2d 1403 (TTAB 2007) (affirming refusal to register merely
descriptive certification mark on the ground that it had not acquired distinctiveness);
In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50, 52 (TTAB 1983).
B. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has acquired

14 As noted above, Applicant’s certification standards are in the record. July 6, 2016 Response
to Office Action at 3-7.
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distinctiveness under § 2(f) of the Trademark Act. A term is “merely descriptive”
within the meaning of § 2(e)(1) if it “‘immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.’” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)). A certification mark is merely descriptive if it immediately
conveys knowledge about an attribute of the services provided by the authorized
users. Council on Certification of Nurse Anesthetists, 85 USPQ2d at 1415. “A mark
need not immediately convey an idea of each and every specific feature of the goods
[or services] in order to be considered merely descriptive; it is enough if it describes
one significant attribute, function or property of the goods [or services].” In re Fat
Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016).
“The determination of whether a mark is merely descriptive must be made in
relation to the goods or services for which registration is sought, not in the abstract.”
Id.; Bayer, 82 USPQ2d at 1831. “In other words, we evaluate whether someone who
knows what the [services] are will understand the mark to convey information about
them.” Fat Boys, 118 USPQ2d at 1515 (citing Duo ProSS Meditech Corp. v. Inviro
Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)).15

15 A mark is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
Serial No. 86943943
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“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services. . . . If such a showing is made, the
burden of rebuttal shifts to the applicant.” Id. at 1513.
To determine whether a multi-element mark such as INFRARED CERTIFIED is
merely descriptive, we are “required to examine the meaning of each component
individually, and then [to] determine whether the mark as a whole is merely
descriptive.” DuoProSS, 103 USPQ2d at 1758. If INFRARED and CERTIFIED are
each individually merely descriptive of the services, we must ask whether their
combination in “Applicant’s mark ‘conveys any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.’” Fat Boys, 118
USPQ2d at 1515-16 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1372 (Fed. Cir. 2003)). If each word instead “retains its merely
descriptive significance in relation to the [services], the combination results in a
composite that is itself merely descriptive.” Id. at 1516 (citing In re Tower Tech., Inc.,
64 USPQ2d 1314, 1317-18 (TTAB 2002)).
The Examining Attorney argues that INFRARED CERTIFIED is merely
descriptive of the identified services because “CERTIFIED is generic, and the
applicant has correctly disclaimed CERTIFIED” and because “INFRARED is merely
descriptive of the services because it identifies a feature of what it certifies—home
inspection services using infrared imaging units.” 12 TTABVUE at 7. She further
argues that the word INFRARED is also “highly descriptive of home inspection
services utilizing infrared imaging units,” on the basis of the record evidence showing
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that home inspectors “provide infrared home inspections and that home inspections
are conducted widely using infrared imaging units.” Id. at 7-11.16 We set forth below
the pertinent portion of a few representative webpages selected from the numerous
ones in the record that show that home inspectors commonly use infrared imaging
technology17 to detect the “moisture spots” and the “plumbing and roof leaks,
termites, insulation defects, and electrical conditions in the inaccessible areas of an
existing structure or home and/or walls and voids,” listed in Applicant’s identification
of services.

16 As discussed below, the degree of descriptiveness of Applicant’s claimed mark is relevant
on the issue of whether Applicant showed that the mark has acquired distinctiveness.
17 Somewhat surprisingly, no definition of “infrared” is in the record. As noted above,
Applicant referred to one during prosecution, but did not make it of record, and Applicant
mentioned that definition and a second one in its brief, 10 TTABVUE 9-10, 17, but did not
request that the Board take judicial notice of those definitions. 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 form or regular fixed editions. In re Red Bull GmbH,
78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice that “infrared” means
“describing light at the red end of the spectrum (=set of colors into which light is separated),
which cannot be seen by human beings, and which gives out heat.” CAMBRIDGE DICTIONARY
(dictionary.cambridge.org/us, accessed on March 10, 2018).
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August 25, 2017 Denial of Request for Reconsideration at 14-27.

August 25, 2017 Denial of Request for Reconsideration at 40-41.
Serial No. 86943943
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Serial No. 86943943
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August 25, 2017 Denial of Request for Reconsideration at 42-43.18

August 25, 2017 Denial of Request for Reconsideration at 28.
The word “certified” means “endorsed authoritatively as having met certain
requirements.”19 It is a generic term when used in a certification mark, and has been
disclaimed by Applicant. It immediately describes that the services are certified by
Applicant when it is used as part of Applicant’s claimed certification mark
INFRARED CERTIFIED.
As noted above, “infrared” means “describing light at the red end of the spectrum
. . . which cannot be seen by human beings, and which gives out heat.” The word
appears in the identification of the services certified by Applicant as an adjective that

18 This webpage bears Applicant’s claimed certification mark, indicating that the inspector is
certified by Applicant.
19 Vocabulary.com (June 22, 2016 Office Action at 5).
Serial No. 86943943
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describes the type of imaging units that the certified inspectors use to detect defects.
“Infrared” immediately describes a feature of the inspection services certified by
Applicant, namely, that they involve the use of imaging units that develop images
based on “light at the red end of the spectrum . . . which cannot be seen by human
beings, and which gives out heat.” This descriptive meaning of “infrared” in the
context of the certified services is corroborated by the record evidence showing that
“infrared” is used to describe the thermal imaging, thermal imaging technology, and
thermography commonly used in home inspections. January 17, 2017 Response to
Office Action at 6-11, 15-16, 52-65, 69-76, 90-95, 97-99, 106-107, 109-114, 119-121,
123-126, 132-139, 152-156, 164-169, 191-194; February 7, 2017 Office Action at 2-27,
35-46, 65-66, 69-83, 92-98, 103-112; August 25, 2017 Denial of Request for
Reconsideration at 2-33, 40-64.20
We agree with the Examining Attorney that the combination of the descriptive
term INFRARED and the generic term CERTIFIED in Applicant’s claimed mark does
“not create a unique, incongruous, or nondescriptive meaning in relation to the
services” and that the claimed mark as a whole “describes the applicant’s services of
certifying home inspections using infrared imaging units.” 12 TTABVUE 12. On the
basis of the meanings of the words “infrared” and “certified,” and the record evidence
regarding the use of those words in connection with inspection services, we find that

20 A few of the websites in the record are those of companies located outside the United States.
February 7, 2017 Office Action at 47-48, 67-68, 84-87, 88-91, and 111-112. Because there is
no evidence in the record that they have been visited by Americans, we have given them no
consideration in our decision.
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the Examining Attorney has established a prima facie case that INFRARED
CERTIFIED is merely descriptive of a feature or characteristic of the inspection
services certified by Applicant. Applicant must rebut that prima facie case to be
entitled to registration on the Principal Register without a showing of acquired
distinctiveness. Fat Boys, 118 USPQ2d at 1513.
Applicant’s rebuttal is essentially to claim that the words INFRARED
CERTIFIED per se do not identify any goods or services. Applicant first argues that
“the Examining Attorney relied on dissection of the terms ‘INFRARED’ and
‘CERTIFIED’ in determining that the compound mark INFRARED CERTIFIED is
not only merely descriptive, but highly descriptive.” 10 TTABVUE 17. Applicant
argues that “the individual term ‘INFRARED’ does not itself describe any particular
use, application, tool, or service of any kind, let alone related to property inspection,”
id., and that “[a] good deal of imagination, thought, and perception are required to
make the mental leap between ‘INFRARED’ in the abstract and Applicant’s
certification inspection services that employ infrared imaging tools.” Id. at 18.
With respect to INFRARED CERTIFIED in its entirety, Applicant argues that
[w]hen viewing the mark as a whole as it has continuously
and exclusively appeared in the marketplace for nearly ten
years, the mark INFRARED CERTIFIED provides the
commercial impression of some type of certification
involving infrared light wavelengths. Again, this
impression is suggestive of Applicant’s actual services, but
it requires imagination and thought, and more reasonably
requires direct knowledge of Applicant’s actual services, to
connect the mark with the nature of Applicant’s inspection
services using infrared imaging tools. Without these
additional links, the consumer has no indication of
Serial No. 86943943
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inspection services, of how infrared light wavelengths
might be involved, of what or who is certified, and so on.
Id.
These arguments reflect a fundamental misunderstanding of the relevant inquiry
under Section 2(e)(1). “‘The question is not whether someone presented with only the
mark could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods and services are will understand the mark to
convey information about them.’” In re Calphalon Corp., 122 USPQ2d 1153, 1161
(TTAB 2017) (quoting DuoProSS, 103 USPQ2d at 1757) (internal quotation omitted)).
Thus, the relevant question here is not whether someone would “make the mental
leap between ‘INFRARED’ in the abstract and Applicant’s certification inspection
services that employ infrared imaging tools,” or whether consumers viewing the
INFRARED CERTIFIED mark in the abstract would understand that it is used for
“inspection services,” or would discern “how infrared light wavelengths might be
involved, what or who is certified, and so on.” 10 TTABVUE 18. Instead, the issue is
whether a consumer who has what Applicant calls “knowledge of Applicant’s actual
services,” id., would understand INFRARED CERTIFIED to convey information
about “Inspection services for indoor residential and commercial real estate, namely,
detection of moisture spots, detection of plumbing and roof leaks, termites, insulation
defects, and electrical conditions in the inaccessible areas of an existing structure or
home and/or walls and voids by means of infrared imaging units.”
The meaning of the words “infrared” and “certified,” and the record evidence of
their use in connection with inspection services, leave no doubt that no imagination,
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thought, or perception is required for consumers to understand that INFRARED
CERTIFIED describes a feature or characteristic of the certified inspection services
that detect property defects “by means of infrared imaging units,” namely, that they
involve the use of “light at the red end of the spectrum . . . which cannot be seen by
human beings, and which gives out heat” to detect the defects. A term is merely
descriptive “if it describes one significant attribute, function or property of the goods
[or services],” Fat Boys, 118 USPQ2d at 1513, but here INFRARED CERTIFIED
describes the key feature or characteristic of the services identified in the application.
Id. We thus find that the claimed mark as a whole is merely descriptive of the services
that Applicant certifies. We turn next to the issue of whether INFRARED
CERTIFIED has acquired distinctiveness as Applicant’s mark.
III. Acquired Distinctiveness
Section 2(f) of the Trademark Act provides that “nothing . . . shall prevent the
registration of a mark used by the applicant that has become distinctive of the
applicant’s goods [or services] in commerce.” 15 U.S.C. § 1052(f). Applicant bears the
burden of proving that its claimed certification mark has acquired distinctiveness. In
re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015)
(citing In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir.
2005)). To show that INFRARED CERTIFIED has acquired distinctiveness,
Applicant “must demonstrate that the relevant public understands that the primary
significance of the mark as identifying the source of a product or service rather than
the product or service itself.” Steelbuilding.com, 75 USPQ2d at 1422. According to
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Applicant, the relevant public includes “purchasers of property inspection services
(e.g., homebuyers, commercial property buyers) . . . .” 10 TTABVUE 20. See Council
on Certification of Nurse Anesthetists, 85 USPQ2d at 1415 (relevant public for various
services rendered by certified nurse anesthetists comprised “surgical patients,
doctors, and hospital administrators”). To prove acquired distinctiveness, Applicant
may rely on evidence of advertising expenditures, sales success, length and
exclusivity of use, unsolicited media coverage, and consumer studies. Apollo Med.
Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB
2017).
An “‘applicant’s burden of showing acquired distinctiveness increases with the
level of descriptiveness; a more descriptive term requires more evidence of secondary
meaning.’” Id. at 1847 (quoting Steelbuilding.com, 75 USPQ2d at 1424). As the Board
has explained:
[T]he greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive terms,
for example, are less likely to be perceived as trademarks
and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
establish that such terms truly function as source-
indicators.
Id. at 1849 (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010)).
This general principle applies to certification marks. Council on Certification of Nurse
Anesthetists, 85 USPQ2d at 1415 (initialism CNRA for “Certified Registered Nurse
Anesthetist” found to be highly descriptive, increasing “the evidentiary burden on the
Serial No. 86943943
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user to establish acquired distinctiveness.”). As a result, “[t]he initial question before
us in our analysis of whether [INFRARED CERTIFIED] has acquired distinctiveness
is the degree of descriptiveness of that phrase as used in connection with Applicant’s”
certification of services. Apollo Med. Extrusion Techs., 123 USPQ2d at 1851.
The Examining Attorney argues that CERTIFIED is generic and that
“INFRARED is highly descriptive of home inspection services utilizing infrared
imaging units,” 12 TTABVUE 7, while Applicant asserts that if the mark is
descriptive at all, it is “not highly descriptive and subject to a greater evidentiary
burden to prove acquired distinctiveness.” 10 TTABVUE 19.
As discussed above, the record contains numerous examples of third-party uses of
the word “infrared” in connection with inspection services. 12 TTABVUE 7-11
(summarizing textual uses of “infrared” on websites of home inspectors). The record
similarly shows widespread use of the generic word “certified” in text and logos on
inspection websites, including those of Applicant’s authorized users, to indicate that
inspectors have been certified in various fields by certifying organizations.21 See, e.g.
January 17, 2017 Response to Office Action at 5, 17-19, 27 (webpage of “Arizona
Certified Home Inspection Services”), 33, 37 (depicting six logos stating that the
inspector is “certified” in a particular field), 45-46 (depicting 12 logos stating that the
inspector is “certified” in a particular field), 63 (depicting eight logos stating that the
inspector is “certified” in a particular field, including by a third party as a “Certified

21 Some of the certifications on these webpages are from Applicant in fields other than
infrared imaging under the acronym “InterNACHI” that is displayed in Applicant’s “Infrared
Certified” certification standards. July 6, 2016 Response to Office Action at 3.
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Infrared Thermographer”),22 78 (stating that inspector is “certified” by multiple
organizations to perform various types of inspections), and 145 (displaying 10 logos
bearing the words INTERNACHI CERTIFIED in various fields); August 25, 2017
Denial of Request for Reconsideration at 50 (offering “Infrared Thermography
Services” performed “by our Certified Level-III Thermographer”). The record also
shows some descriptive use of “Infrared Certified” by Applicant’s own certified
inspectors, such as the uses shown below:

January 17, 2017 Response to Office Action at 190.

22 We take judicial notice that “thermography” means “a technique for detecting and
measuring variations in the heat emitted by various regions of the body and transforming
them into visible signals that can be recorded photographically” and “a similar technique
used elsewhere (as on buildings).” MERRIAM-WEBSTER DICTIONARY (merriam-webster.com,
accessed on March 16, 2019). The record shows widespread use of “thermography” to refer to
the use of infrared imaging.
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January 17, 2017 Response to Office Action at 196.
The record also shows that the words CERTIFIED INFRARED (a transposition of
the words in the applied-for mark) are used by two other entities as part of the third-
party certification marks and the membership mark reproduced below:

February 7, 2017 Office Action at 25, 72; August 25, 2017 Denial of Request for
Reconsideration at 50.
Given the genericness of “certified” and the descriptiveness of “infrared” as applied
to the inspection services identified in the application, and the ubiquitous use of the
words in connection with those services by certified and non-certified inspectors alike,
we find that Applicant’s claimed mark is highly descriptive. Apollo Med. Extrusion
Techs., 123 USPQ2d at 1850-52 (finding that MEDICAL EXTRUSION
TECHNOLOGY was highly descriptive for polyurethanes for use in the manufacture
of various medical devices). “Accordingly, Applicant’s burden of proving acquired
distinctiveness is likewise very high.” Id. at 1856.
Applicant relies on only two types of evidence to show that INFRARED
CERTIFIED has acquired distinctiveness: (1) its unverified statements, made during
prosecution, that “the mark has become distinctive of the certified inspection services,
by reason of the authorized users’ substantially exclusive and continuous use of the
mark in commerce for in excess of five years” and that the “mark has been in use
Serial No. 86943943
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since at least as early as 2008, as also evidenced by Applicant’s ownership of
Registration No. 3795228 for the mark INFRARED CERTIFIED on the supplemental
register, which has been registered on the Supplemental Register since May 25,
2010;”23 and (2) the spreadsheet and webpages discussed above, which Applicant
characterizes in its brief as “extensive extrinsic evidence showing widespread,
national use of the mark INFRARED CERTIFIED by Applicant’s authorized users,
who form a network of certified property inspectors crisscrossing the whole of the
United States,” and which comprise “over sixty printouts from authorized inspector
websites [that are] a representative sampling of use in over thirty specific states.” 10
TTABVUE 19.
Applicant’s evidence of the length of use of its claimed certification mark is
unsworn and based in part on its claimed dates of use in its Supplemental Register
registration. Nevertheless, the Examining Attorney accepts that Applicant has been
“using the mark since January 1, 2008,” 12 TTABVUE 14, and we will do so as well.
The Examining Attorney argues that this “is a relatively short amount of time,” id.,
citing In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984), in which the
Board found that 16 years of use of PACKAGING SPECIALISTS, INC. for contract
packaging services was “a substantial period but not necessarily conclusive or
persuasive on the Section 2(f) showing.” Id. at 920. We will consider the probative
value of Applicant’s 10-year use of INFRARED CERTIFIED against the backdrop of

23 July 6, 2016 Response to Office Action at 2.
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what Applicant calls its “extrinsic evidence” of use, and the other evidence in the
record.
There is no evidence that others have used INFRARED CERTIFIED per se. This
fact is relevant to, though not determinative of, the issue of acquired distinctiveness.
Compare Apollo Med. Extrusion Techs., 123 USPQ2d at 1853-54 (multiple third-party
descriptive uses of “medical extrusion technology” and “medical extrusion
technologies” showed that the applicant’s use of MEDICAL EXTRUSION
TECHNOLOGIES for almost 25 years as a trademark was not substantially
exclusive) with Council on Certification of Nurse Anesthetists, 85 USPQ2d at 1414-15
(although there was no evidence of third-party use of the designation CRNA or a
similar designation, Board found that nearly 50 years of use of CRNA was insufficient
to establish acquired distinctiveness because CRNA was highly descriptive and the
applicant failed to establish its recognition by consumers as a mark). The record
shows, however, that two other entities, the Certified Infrared Thermographers
Association (CITA) and the Infraspection Institute, use CERTIFIED INFRARED, a
transposition of Applicant’s claimed mark, as part of marks used to certify property
inspectors as “infrared thermographers,” or to reflect membership in an organization
of certified infrared thermographers. The record further shows that several
inspectors certified by Applicant as “Infrared Certified” have also been certified as a
“Certified Infrared Thermographer” by the Infraspection Institute:
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January 17, 2017 Response to Office Action at 63.

January 17, 2017 Office Action at 73.
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January 17, 2017 Response to Office Action at 193.
The use of a transposition of Applicant’s claimed mark by inspectors who have
been designated by a third-party certifier as CERTIFIED INFRARED
THERMOGRAPHERS, or who belong to an association of such inspectors, reduces
the probative value of Applicant’s 10 years of use and other evidence because it
suggests that consumers of inspection services would be unlikely to associate the
highly descriptive words INFRARED CERTIFIED exclusively with Applicant.
With respect to the evidence of the manner of use of the applied-for mark by
Applicant’s certified inspectors, as the Examining Attorney correctly notes, 12
TTABVUE 15-17, the record shows that the applied-for mark is uniformly used
together with a multi-colored letter “C” logo in the manner shown below:
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January 17, 2017 Response to Office Action at 71. We do not agree with the
Examining Attorney that “the certification mark used by the companies is not the one
applied for in this application,” 12 TTABVUE 15, but we find that the uniform use of
the multi-colored letter “C” above the applied-for mark, and in immediate proximity
to the trademark designations discussed below, nevertheless undercuts Applicant’s
claim of acquired distinctiveness.
The certificate of completion depicted above states that the inspector has
completed the requirement for “Infrared Certification” and is thus “Infrared
certified.” The use of the words “Infrared certified” to identify a status resulting from
“Infrared Certification” reinforces the highly descriptive nature of the applied-for
mark. The multi-colored letter “C,” which appears to be intended to depict the light
spectrum, is visually striking and is akin to the other certification marks in the
record, such as those reproduced below:
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The record also shows use, just to the top right of the “C” logo, of either the
designation ™ (as on the “Certificate of Completion” shown above), or the federal
registration symbol ®, July 6, 2016 Response to Office Action at 3; January 17, 2017
Response to Office Action at 6, 13, 19, 24, 27, 30, 33, 39, 40, 52, 61, 63, 66, 68, 86, 117,
122-23, 128, 137, 140, 144-45, 147, 155, 164, 190, and 195-96, on Applicant’s website
and in consumer-facing uses of the logo on the websites of certified inspectors. Neither
trademark designation is used next to the words “Infrared certified” beneath the
logo.24
The record indicates that Applicant’s multi-colored “C” logo, which is always
accompanied by trademark designations, rather than the highly descriptive words

24 The Examining Attorney claims that an application was filed by Applicant post-appeal to
register the logo together with the words, 12 TTABVUE 15 n.1, but that application is not in
the record, and we have given no consideration to the Examining Attorney’s arguments
regarding its significance.
Serial No. 86943943
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“Infrared certified” appearing beneath it, which are not,25 would likely be viewed by
consumers as the symbol of certification, and the website of one of Applicant’s
certified inspectors expressly states that “[c]onsumers should always seek inspectors
who are Infrared Certified by looking for the Infrared Certified logo.” January
17, 2017 Response to Office Action at 137 (second emphasis added). The uniform use
of the logo together with the highly descriptive applied-for mark makes it unlikely
that consumers of the inspection services provided by Applicant’s certified inspectors
would “perceive the wording alone as in indication of the source of the [certification],
rather than as a highly descriptive designation.” Apollo Med. Extrusion Techs., 123
USPQ2d at 1855 (where applicant’s word mark “almost without exception” appeared
“in connection with the prominently displayed acronym MET,” Board was “not
convinced that relevant purchasers [would] associate the designation MEDICAL

25 As discussed above, Applicant owns a Supplemental Register registration of the
certification mark INFRARED CERTIFIED, which entitles Applicant to use the federal
registration symbol ® with those words, 15 U.S.C. § 1111, but the only evidence in the record
of Applicant’s use of the symbol with the words INFRARED CERTIFIED is on Applicant’s
website, July 6, 2016 at 3, which is primarily directed to inspectors. Consumer-facing uses of
the words “Infrared Certified” on inspector websites made of record by Applicant are not
accompanied by any trademark symbols. See January 17, 2017 Response to Office Action at
52 (using words in text on inspector webpage bearing Applicant’s logo), 61 (same), 78 (using
words in text stating that “Consumers should always seek inspectors who are Infrared
Certified”); 100 (using words in text describing inspector as being certified in, among other
things, “Infrared Certified Thermal Imaging”); 122 (using words in text to state that inspector
is “Infrared Certified”); 137 (using words in italics in text urging consumers to “look[] for the
Infrared Certified logo.”); 141 (using words in text to state that inspector is “Infrared
Certified”); 149 (using words in text to state that “I am Infrared Certified”); 164 (using words
in text to urge consumers to “hire an Infrared Certified home inspector); 190 (using words in
text offering “Infrared Certified Thermal imaging”); 196 (using words in text to state that
inspector is “Infrared Certified for Thermal Imaging Inspection”).
Serial No. 86943943
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EXTRUISON TECNOLOGIES, without the accompanying MET, solely with
Applicant.”).
Applicant’s “extrinsic evidence” is deficient as proof of acquired distinctiveness for
additional reasons. Applicant provided what it described as a “sampling of use by over
sixty of Applicant’s authorized users of INFRARED CERTIFIED . . . in over thirty
states,” 10 TTABVUE 7, but did not provide information regarding the actual total
number of certified inspectors. Even assuming the certification of thousands of
inspectors, however, that does not, by itself, “demonstrate that the relevant public
has come to view the designation [INFRARED CERTIFIED] as [A]pplicant’s source-
identifying certification mark.” Council on Certification of Nurse Anesthetists, 85
USPQ2d at 1415 (certification of 40,000 nurse anesthetists by applicant suggested
“that applicant has enjoyed a good deal of success in promoting its program in the
nurse anesthesia field” but did not show recognition of the mark by the relevant
consumers).26 There is no evidence regarding the extent or duration of the exposure
of the applied-for mark to home buyers and commercial property buyers through the
inspectors’ websites, or through their advertising and promotional efforts. There is
no evidence of the nature, duration, or extent of any efforts by Applicant to advertise

26 In Council on Certification of Nurse Anesthetists, the applicant was “the national certifying
organization in the nurse anesthesia field.” 85 USPQ2d at 1415. The record here shows that
there are at least two other certifiers of inspectors who perform inspections using infrared
technology. The aforementioned Infraspection Institute uses a transposition of Applicant’s
claimed mark as part of its certification mark, while the Infrared Training Center also
provides certification of inspectors in thermography. January 17, 2017 Response to Office
Action at 137-38. The fact that Applicant is not the only certifier of inspection services using
infrared technology increases the burden on Applicant to show that INFRARED CERTIFIED
points uniquely to Applicant.
Serial No. 86943943
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or promote to home buyers and commercial property buyers the benefits of hiring an
Infrared Certified inspector.27 Finally, “noticeably absent from this record is direct
evidence regarding how [home buyers and commercial property buyers] have come to
view the designation [Infrared Certified],” and “more evidence than that which has
been offered here would be necessary to establish acquired distinctiveness of the
designation.” Id.
Against the backdrop of the entire record, Applicant’s 10 years of use of
INFRARED CERTIFIED mark falls far short of establishing that its claimed
certification mark has acquired distinctiveness. See id. (nearly 50 years of use
insufficient to show acquired distinctiveness); Apollo Med. Extrusion Techs., 123
USPQ2d at 1855 (nearly 25 years of use of claimed trademark was “outweighed by
the other evidence showing that the phrase ‘medical extrusion technologies’ is highly
descriptive, and the absence of any additional direct evidence showing recognition of
the wording by consumers as a source indicator for Applicant’s goods.”). We find, on
the basis of the record as a whole, that Applicant failed to carry its burden of showing
that INFRARED CERTIFIED has acquired distinctiveness as Applicant’s
certification mark.
Decision: The refusal to register is affirmed.

27 The pages from Applicant’s website regarding the “Infrared Certified® Certification
Requirements” that are in the record display links called “Find an Inspector” and “Featured
Inspectors,” July 6, 2016 Response to Office Action at 3, as well as a “Warning to Consumers”
touting the benefits of Applicant’s certified members. Id. at 6. Applicant provided no evidence,
however, regarding the number of visits to this portion of its website, or the number of times
consumers have availed themselves of the links to locate Applicant’s certified inspectors.