MacDermid Acumen, Inc.

Trademark Trial and Appeal Board

Jan 29, 2015

No. 85824250 (T.T.A.B. Jan. 29, 2015)

Mailed:
January 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MacDermid Acumen, Inc.
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Serial No. 85824250
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Arthur G. Schaier of Carmody Torrance Sandak & Hennessey LLP for MacDermid
Acumen, Inc.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111 (Robert
L. Lorenzo, Managing Attorney).
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Before Kuhlke, Wellington, and Kuczma Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, MacDermid Acumen, Inc., filed an application to register on the
Principal Register the standard character mark M- for goods identified as
“Industrial chemicals for use in plating, cleaning and etching metal and plastic
surfaces; Chemicals used in the manufacture of commercial and industrial printing
plates, namely, polymer compositions,” in International Class 1.1 The application

1 Application Serial No. 85824250, filed on January 16, 2013, based on allegations of first
use and first use in commerce on March 30, 1999, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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includes a claim of ownership of Registration No. 2636976 for the typed form2 mark
M-PASS for goods identified as “plating chemicals, cleaners, microetchants,
polymeric coatings and photo-resists used in the manufacture of printed circuit
boards, including without limitation printed circuit boards with embedded
resistors,” in International Class 1.
Registration has been refused under Sections 1 and 45 of the Trademark Act,
15 U.S.C. §§ 1051, 1127, on the basis that the specimen does not show the applied-
for mark in the drawing in use in commerce. See also 37 C.F.R. §§ 2.34(a)(1)(iv)
(requirement for specimen showing how applicant uses the mark), 2.51(a) (drawing
of mark must be a substantially exact representation of the mark as used on or in
connection with the goods) and 2.56(a) (requirement for specimen showing the mark
as used on or in connection with the goods); TMEP §§ 807.12(d), 904 and 904.07(a).
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. On May 20, 2014, the Examining Attorney denied the request.
Thereafter, Applicant and the Examining Attorney filed briefs. We affirm the
refusal to register.
Section 1 of the Trademark Act provides:
1(a)(1) The owner of a trademark used in commerce may
request registration of its trademark on the principal
register hereby established by paying the prescribed fee
and filing in the Patent and Trademark Office an
application and a verified statement, in such form as may
be prescribed by the Director, and such number of
specimens or facsimiles of the mark as used as may be

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.

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required by the Director. … (4) The applicant shall comply
with such rules or regulations as may be prescribed by the
Director. The Director shall promulgate rules prescribing
the requirements for the application and for obtaining a
filing date herein.3
The relevant rules promulgated by the USPTO provide as follows:
… The requirements for an application based on section
1(a) of the Act are: … One specimen per class showing
how the applicant actually uses the mark in commerce. 37
C.F.R. § 2.34(a)(1)(iv); and
… In an application under section 1(a) of the Act, the
drawing of the mark must be a substantially exact
representation of the mark as used on or in connection
with the goods and/or services. 37 C.F.R. § 2.51(a).
Under Section 1 of the Trademark Act, the mark on the drawing must be the
complete mark, as evidenced by the specimen. As explained in the Trademark
Manual of Examining Procedure (TMEP), “[w]hen the representation on a drawing
does not constitute a complete mark, it is sometimes referred to as a ‘mutilation’ of
the mark.” TMEP § 807.12(d). “The mere fact that two or more elements form a
composite mark does not necessarily mean that those elements are inseparable for
registration purposes. An applicant may apply to register any element of a
composite mark if that element presents, or will present, a separate and distinct
commercial impression apart from any other matter with which the mark is or will
be used on the specimen.” Id. Further, “if registration is refused on the ground that
the mark on the drawing does not agree with the mark as shown on the specimen …

3 Section 45 of the Trademark Act provides the relevant definitions for construction of the
statute, e.g., “trademark” and “use in commerce.”
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the applicant may not amend the drawing if the amendment would materially alter
the mark on the original drawing.” Id.
In this case, Applicant did not seek to amend the drawing; therefore, the
question is whether the specimens of use support use of the applied-for mark and,
thus, fulfill the requirements of Sections 1 and 45 of the Lanham Act as detailed by
Trademark Rules 2.34 and 2.51, 37 C.F.R. §§ 2.34, 2.51.4 The analysis is whether
M- presents a separate and distinct commercial impression apart from any other
matter with which the mark is used in the proffered specimens of use, such that, as
Rule 2.51(a) requires, the drawing in the application is a substantially exact
representation of the mark as used on the specimens. In re Chemical Dynamics Inc.,
839 F.2d 1569, 5 USPQ2d 1828, 1829-30 (Fed. Cir. 1988) (eye dropper and drops of
water connected to watering can design constituting “a unitary mark which creates
a single commercial impression and that to try to separate out the eyedropper
portion of the mark results in an impermissible mutilation.”). See also In re
Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (the issue is “whether or not
the matter sought to be registered creates a commercial impression separate and
apart from the model number and generic term in association with which it is
used.”).
One practical aspect of this requirement is to accord an applicant the
appropriate scope of protection to whatever applicant seeks to protect. If, in this

4 To the extent the Examining Attorney argues Applicant is attempting to register a
phantom mark, the facts in this case do not present such a scenario, in that the drawing
does not depict phantom elements and there is no description referencing phantom
elements. As Applicant argues, it does not seek registration for phantom elements but only
seeks registration of the mark M- and “it is not subject to change.” App. Reply Br. p. 2.
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case, the mark as used, e.g., M-ACCELERATE B, is perceived by consumers as one
mark and the M- portion does not present a separate commercial impression, then
Applicant should not receive protection for something it does not use. In other
words, Applicant should not be allowed to block other applicants’ marks that may
incorporate the M- element with additional elements that may distinguish it from
Applicant’s actual mark M-ACCELERATE B but could be confusingly similar to M-
by itself.
One of Applicant’s specimens of use, which consist of labels, is reproduced in
full below.

The relevant portion of Applicant’s other submitted specimens of use are
reproduced below.
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The Examining Attorney argues that “the specimens constitute mutilations of
the proposed mark as it appears in the drawing” and the “current case law on the
subject of unitary marks and what has previously constituted separable elements of
a mark” does not support a conclusion that Applicant’s M- constitutes a separable
element on the specimens. Ex. Att. Br. p. 5. She frames the question as “whether
the applied for mark, M-, is separable from the additional language appended to it
on the various specimens of record, or whether the specimens instead depict
multiple unitary marks.” Ex. Att. Br. p. 6 (emphasis in original). Looking to case
law concerning whether a disclaimer is required, she argues that because of the
hyphen, the wording on the specimen is unitary and, “the M- is not separable from
the rest of the mark.” Id. The Examining Attorney concludes that the M- portion is
“‘entwined’ with the additional language appearing on the numerous specimens of
use [and] [c]onsumers therefore will not perceive the additional language merely as
indicating variations of the ‘M-‘ line, but as a composite portion of unitary marks.”
Ex. Att. Br. p. 13.
Applicant argues that its specimens “show the mark M- followed by
descriptive terms that do not and are not intended to indicate source and thus
respectfully submits that the cited case law supports Applicant’s conclusion that the
mark M- as used herein, creates a separate and distinct commercial impression and
therefore would not be considered a mutilation of the mark as used.” App. Br. p. 5.
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In support of its argument, Applicant submitted the declaration of John L.
Cordani, Applicant’s Secretary, and accompanying exhibits. In the declaration, Mr.
Cordani states that:
4. Each of the terms that appear with the M- mark on
Applicant’s specimens are terms that merely describe the
function or functionality of the particular chemical
product with which it is associated.
5. For example, the products that have on the associated
labels the descriptor “ACCELERATE” in connection with
the M- mark are products that provide a uniformly-active
layer of catalyst for electroless metal initiation. The use of
the “A” or “B” designation are simply for two components
that are to be mixed together.
6. The product that has on the associated label the
descriptor “GLASS ETCH” in connection with the M-
mark is a product that etches glass fibers. …
8. The products that have on the associated labels the
descriptor “PERMANGANATE” in connection with the M-
mark are products that provide for a desmearing of the
substrate, and the term “permanganate” is generally
understood in the relevant industry as a desmearing
agent. The use of the “P” and “L” designations are for
powder or liquid versions.
9. The product that has on the associated label the
descriptor “NEUTRALIZE” in connection with the M-
mark is a product that neutralizes the surface of a plastic
substrate to accept metal plating thereon.5
Applicant contends Mr. Cordani’s statements show that “the descriptors on
Applicant’s specimens … merely serve to identify the function or functionality of the
goods associated therewith and have no trademark significance … [and] consumers
viewing the use of the M- mark in Applicant’s specimens would likewise view such

5 Req. for Recon. (March 26, 2014) Exh. C, Trademark Status & Document Retrieval
(TSDR) pp. 26-27.

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terms not as source-identifying elements, but merely as providing descriptive
functionality of the goods themselves.” App. Br. p. 8.
The Examining Attorney responds that just because “a term is descriptive
[does not] mean that, ipso facto, it does not properly form a part of a composite
mark and hence is not a factor in creating the commercial impression of the mark as
a whole.” Ex. Att. Br. p. 8. The Examining Attorney relies on In re Jane P. Semans,
193 USPQ 727 (TTAB 1976) where applicant sought to register the word KRAZY
but the specimens showed the word used with other wording JANE’S KRAZY
MIXED-UP SALT. In that case, the Board found that the specimens highlighted the
phrase KRAZY MIXED-UP shown on the same line and in the same script apart
from the word “JANE’S.” Further, the Board found that the phrase is a recognized
“play on a unitary colloquial expression, and there is nothing in the record to
suggest that customers and prospective purchasers of applicant’s goods separate the
phrase into component parts and utilize ‘KRAZY’ alone to call for and refer to the
goods.” In re Jane P. Semans, 193 USPQ at 729.
The Examining Attorney argues that “the mere fact that these terms are
descriptive is not sufficient to hold M- as a separable element that can be pulled out
by a viewing consumer from the unitary whole.” Ex. Att. Br. p. 8. Noting that “the
M is not further distinguished in size, font, color or commercial impression” and
“the M- is merged with the descriptive terms by the hyphen in such a way that, as
viewed on the specimens of record, a consumer is unlikely to find or view the M- as
a separable element, particularly given it is but a single letter and therefore holds
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very little commercial connotation apart from the language which follows it.” Ex.
Att. Br. p. 8, 9 (emphasis in original).
Mr. Cordani also attached what he describes as “advertising materials” for
goods “sold under Applicant’s M-System and M- trademarks” that “make clear,
among other things, that consumers would be well aware that the descriptors noted
above and used in connection with the M- mark merely describe the function and
functionality of the products sold under the M-System brand, and that such
descriptors readily assist such customers in determining the product needed to
carry out the desired function in the polymer platemaking process, at least in part
because consumers would look only to the trademark M- based on such trademark
usage and advertising materials showing use of the mark without the above-
discussed descriptors.”6 The pertinent parts are shown below:
7

6 Id. TSDR p. 28.

7 Req. for Recon., March 26, 2014, TSDR p. 29.
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8

9

8 Id., TSDR p. 31.
9 Id., TSDR p. 33.
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10
Applicant argues these advertising materials support a finding regarding consumer
perception in that they “sensitize[] its consumers to the use of the M- family of

10 Id., TSDR p. 34.
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chemical products and that consumers would be well aware that the descriptors
used in connection with the M- mark merely describe the function and functionality
of the products themselves, as such descriptors readily assist customers in
determining the product needed to carry out the desired function in the polymer
platemaking process.” App. Br. p. 8.
The Examining Attorney contends that the several specimens of use showing
“multiple configurations of the mark” and the affidavit are not sufficient to show
consumer recognition of the M- as a separate mark. Ex. Att. Br. p. 10.
In response to the Examining Attorney’s argument that “any registration for
the mark [M-] would permit use of the mark with any other terms that applicant
chooses,” Applicant “asserts that the trademark is M-, [and] agrees generally that
its usage is not, and should not, be restricted by the use of merely descriptive terms
in proximity to the mark.” App. Br. p. 11.
Applicant particularly relies on the case In re Raychem Corp., 12 USPQ2d
1399 (TTAB 1989), where the Board found that the applied-for mark TINEL-LOCK
had a separate commercial impression from the other matter in the specimens that
showed TRO6AI-TINEL-LOCK-RING. The Board found that the word “ring” was
generic for the applied-for goods and TRO6AI was a model number. Specifically,
“the alpha-numeric designation appearing on the specimen in front of ‘TINEL-
LOCK’ is not essential to the commercial impression of ‘TINEL-LOCK’ as a
trademark for applicant’s metal rings. In a similar sense, the generic term ‘RING,’
although connected to the model number and the source-identifying term, ‘TINEL
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LOCK,’ by a hyphen, nonetheless plays no integral role in forming the portion of
applicant’s mark which distinguishes applicant’s goods from those of others.” Id. at
1400. The evidence included advertising brochures that referred to the “Tinel-Lock
system,” “Tinel-Lock heat-recoverable rings for cable shielding termination,” ‘Tinel-
Lock ring” and identified “Tinel” as a registered trademark. Id. at 1399. This
evidence supported the Board’s finding that TINEL-LOCK had an “independent
significance.” Further, the Board stated that “Even when a part number is joined by
a hyphen to other matter which does serve a trademark function, the trademark is
registrable without showing the part number as well in the drawing.” Raychem at
1400 citing In re Sansui Electric Co., Ltd., 194 USPQ 202 (TTAB 1977) As to the
part number and generic term the Board stated that neither is:
… essential to the commercial impression created by the
mark as shown in the specimens. Prospective purchasers
of these highly technical goods would readily recognize
both the part number and the name of the goods as such,
and would therefore look only to the trademark ‘TINEL-
LOCK’ for source identification. The fact that hyphens
connect both the part number and the generic term to the
mark does not, under the circumstances presented by this
case, create a unitary expression such that ‘TINEL-LOCK’
has no significance by itself as a trademark.
Id. at 1400.
Applicant also points to In re Sansui Electric Co., Ltd., 194 USPQ 202 (TTAB
1977) where the Board allowed registration of QSE and QSD when the specimens
showed use as QSE-4 and QSD-4. Specifically, the Board stated “In response to the
refusal to register, applicant has submitted additional specimens showing use of the
designations ‘QSD-1’, ‘QSE-1’, ‘QSE-5B’, and ‘QSE-5X’. In connection therewith,
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applicant asserts that it uses changeable model numbers with its marks ‘QSE’ and
‘QSD’ to designate the successive generations of its equipment; that under such
circumstances, the registrable portions of applicant’s marks are the letters ‘QSE’
and ‘QSD’ per se; and that the effect of sustaining the Examiner’s position would be
to require either a plurality of registrations to cover individual model number
designations, or constant amendment of the registration to keep pace with changes
in model numbers.” Id. at 202. That is, in fact, what the Examining Attorney
suggested to Applicant in this case: “Applicant is encouraged to consider applying to
register each individual mark on the respective specimens, just as it did with
Registration No. 2636976.” Denial of Req. for Recon. (May 20, 2014). In Sansui the
Board determined that the numbers would be perceived as model numbers by
purchasers and the letter designations truly serve as the indications of origin.
Applicant and the Examining Attorney point to a few unpublished cases
which are different on their facts. For example, in In re Hudson Fairfax Group LLC,
Ser. No. 76662560 slip op. (November 21, 2008) the Board found that the word
CONTINUUM had a separate commercial impression as shown in the specimens of
use depicting INDIA CONTINUUM FUND as the word “fund” is generic for the
services and “India” would be viewed not as a source-identifying element, but
merely as the geographic location of the investments. In In re Ahlstrom, Ser. No.
75362796 slip op. (June 19, 2001), AHL, depicted in the specimens as AHLstrom
and AHLsorter, was found not to have a separate commercial impression.

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In a more recent unpublished case, In re CirCaid Medical Products, Ser. No.
85401718 slip op. (February 5, 2013), the Board affirmed a similar refusal for
registration of the mark JUXTA where the specimens showed use of JUXTA-LITE
in stylized form and there was no evidence to support that the word LITE was
descriptive or would be perceived as merely indicating variations of the JUXTA
product line and, therefore, JUXTA did not make a separate commercial
impression. In addition, the Board noted that the terms are depicted in the same
style font. The Board distinguished Raychem and Sansui, by stating that there was
no evidence in the JUXTA case to show that the term LITE was used in the
industry or that it was descriptive or generic for the identified goods.
We begin our analysis by noting that we are not persuaded by the Examining
Attorney’s arguments based on disclaimer case law and its possible effect on the
presence of the hyphen in this case. A disclaimer serves as notice that the applicant
does not claim exclusive rights in that particular designation by itself. Such
disclaimer is “superfluous” when the merely descriptive wording is connected to the
source-identifying element by a hyphen because it would be “obvious that applicant
is not claiming any exclusive rights” in a descriptive or generic term. “X”
Laboratories, Inc. v. Odorite Sanitation Service of Baltimore, Inc., 106 USPQ2d 327
(Comm’r Pat. 1955). “Registration of a compound word mark is merely recognition
of rights in the entire mark, and it neither creates nor recognizes rights in the
components apart from each other.” Id. Here, Applicant is not seeking to register a
compound word mark. Rather, Applicant is requesting recognition of only what
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Applicant describes as the source-identifying element in the designation used on its
labels. The analysis of whether a term is unitary for purposes of a disclaimer, at
least in regards to the effect of a hyphen where the office routinely does not require
disclaimer, is not useful for determining whether, as used in commerce, a
component has a distinct and separate commercial impression as discussed in
Raychem and Sansui.
As recognized in the TMEP, an applicant has some latitude in selecting the
mark it wants to register and the fact that two or more elements form a composite
mark does not necessarily mean that those elements are inseparable for registration
purposes. TMEP § 807.12(d). However, these statements are tempered by the
requirement derived from the rules and case law that an element of a composite
mark may be registered if, as used on the specimens, it presents “a separate and
distinct commercial impression apart from any other matter with which the mark is
or will be used.” Id.
This case is not devoid of evidence regarding the descriptive or weak nature
of the additional wording as was the case in CirCaid Medical Products, as Mr.
Cordani’s declaration serves that purpose. Nor is this a case where there are only
specimens showing the various uses and a conclusory statement regarding
consumer perception, as Applicant has provided samples of advertising using M- as
part of the term M-System. However, the record does not show promotion of M- by
itself making the advertising evidence more akin to the multiple specimens of use
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with other terms, and less probative on the issue of separate commercial
impression.
While this case shares some similarities with the facts in Raychem and
Sansui, it nonetheless presents differentiating facts. The additional material in
Applicant’s mark is not merely a model number as was the case in Sansui, or model
numbers plus the generic name of the good as was the case in Raychem. Rather the
additional wording has, at most, only descriptive significance regarding the function
of the goods. In addition, the single letter with a hyphen M-, does not present the
level of commercial recognition as the term TINEL or the combination of letters
QSW and QSD. We further note the marks in Sansui consist of three letters, as
compared to the 1 or 2 letter number combinations for the model numbers. Here,
the single letter and hyphen combine with full words that are not the generic name
of the goods. Additionally, as the Examining Attorney observed, the M- is not
distinguished in size, font, color or commercial impression and holds very little
commercial connotation apart from the language which follows it.
In view thereof, we find that M- as used on the specimens does not create a
separate commercial impression. Accordingly, Applicant’s drawing of the mark is
not a substantially exact representation of the mark as used in commerce. See
Trademark Rule 2.51(a).
Decision: The refusal to register is affirmed.