MDK Investments LLC

Trademark Trial and Appeal Board

Sep 22, 2011

No. 77695283 (T.T.A.B. Sep. 22, 2011)

Mailed: September 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MDK Investments LLC
________

Serial No. 77695283
_______

Nancy V. Stephens of Foster Pepper PLLP for MDK Investments
LLC.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney).
_______

Before Grendel, Taylor and Lykos, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

MDK Investments LLC, on March 19, 2009, filed an
application to register on the Principal Register the mark
shown below,

for services identified in the application as “goods
warehousing; rental of garage space; storage of personal and
business goods in individually leased units or compartments
maintained at various facilities; warehouse storage” in
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77695283

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International Class 39.1 The application was filed under
Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), claiming February 15, 2003 as the date of first
use of the mark anywhere and in commerce. The application
includes a claim of ownership of Principal Register
Registration No. 3540393 for the mark

(“STORAGE” disclaimed) for the same services recited in the
involved application and, based on this registration,
applicant has claimed acquired distinctiveness as to term
“SECURE STORAGE” in accordance with the provisions of Section
2(f) of the Trademark Act of 1946, 15 U.S.C. § 1052(f).
The trademark examining attorney, in his first Office
Action, indicated that because the term “SECURE STORAGE” is
highly descriptive of the identified services, applicant’s
claim of ownership of a prior registration is insufficient
evidence of acquired distinctiveness, and required a

1 Application Serial No. 77695283 includes the following
statements: “The color(s) tan, green, black, brown, blue and red
is/are claimed as a feature of the mark.” “The mark consists of a
rectangle with the image of burglar with a tan face, wearing green
clothing, a black mask and carrying a brown bag on the outside of
the left side of the rectangle, the word elements ‘SECURE STORAGE’
appear in red outlined in blue inside the rectangle. The word
phrase ‘Who’s watching your stuff?’ appear in red directly beneath
the rectangle.”

Ser No. 77695283

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disclaimer of the term “SECURE STORAGE.” The examining
attorney also required a more complete description and color
statement.
In response, applicant argued against the disclaimer
requirement by claiming acquired distinctiveness based on
exclusive use for more than five years, i.e., since 1987 and
by asserting that when its mark is viewed in its entirety –
“words plus logo” – it is not highly descriptive but rather a
distinctive mark. Applicant also disclaimed the term
“STORAGE.” Applicant did not address the other requirements.
In his final Office Action, the examining attorney found
applicant’s claim of acquired distinctiveness based on
exclusive use of the mark since 1987 insufficient.
Particularly noting that applicant did not provide any other
evidence of acquired distinctiveness, and the significant
evidence of multiple third parties using the wording “SECURE
STORAGE” for like services, the examining attorney made final
the requirement for a disclaimer of “SECURE STORAGE,” on the
ground that the wording is merely descriptive of the
identified services under 15 U.S.C. § 1056(a). The examining
attorney also made final requirements for a more complete
description and color statement.
Applicant appealed and requested reconsideration of the
final requirements. On reconsideration, applicant reiterated
Ser No. 77695283

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its position on the required disclaimer, asserting treatment
of this application should be consistent with the treatment
of its companion application which matured into Registration
No. 3540393, namely that its Section 2(f) claim as to “SECURE
STORAGE” be accepted on the basis of five (5) years exclusive
use. Applicant also submitted amendments to the description
and color statements. In his September 7, 2010 response, the
examining attorney accepted the amendments to the description
of the mark and color claim and expressly withdrew those
requirements. However, the request for reconsideration was
denied as to sufficiency of the 2(f) showing and the
resulting disclaimer requirement. This appeal was resumed on
September 9, 2010.
Issue on Appeal
As an initial matter we note that applicant, in its
appeal brief, has expressly stated that “[t]he issue on
appeal is whether the Applicant’s mark should continue to be
refused as descriptive or whether the mark should be allowed
to register consistent with its prior Registration No.
3540393 entering 2(f) acquired distinctiveness claim.” Br.
unnumbered p. 2. We note, too, that the examining attorney
has presented arguments in its brief directed toward the
issue of whether “the SECURE STORAGE element” of applicant’s
applied-for mark is merely descriptive of the identified
Ser No. 77695283

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services as well as whether applicant has made a sufficient
showing that the wording “SECURE STORAGE” has acquired
distinctiveness under Section 2(f). We point out, however,
that applicant has conceded the mere descriptive nature of
“SECURE STORAGE” insofar as it sought in the original
application, and still seeks, registration of the mark as to
that wording under Section 2(f).2 That is, applicant’s 2(f)
claim of acquired distinctiveness is a concession that the
wording “SECURE STORAGE” is not inherently distinctive and
that it is therefore not registrable on the Principal
Register absent a sufficient showing of acquired
distinctiveness. Yamaha International v. Hoshino Gakki, 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as
here, an applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact.”
(emphasis in original)). To the extent that applicant argues
that its mark is distinctive, such claim is directed to the
mark in its entirety, i.e., both words and logo, and not as
to the wording “SECURE STORAGE.” As such mere
descriptiveness is not an issue in this appeal. Rather, the
issue before us is whether the merely descriptive wording

2 Accordingly, the arguments and evidence directed solely to the
issue of mere descriptiveness will not be further considered.
Ser No. 77695283

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“SECURE STORAGE,” as applied to “goods warehousing; rental of
garage space; storage of personal and business goods in
individually leased units or compartments maintained at
various facilities; [and] warehouse storage,” has acquired
distinctiveness and thus applicant’s mark is registrable on
the Principal Register without a disclaimer of that wording
under Section 2(f) of the Act.
Acquired Distinctiveness
Turning then to that issue, it is applicant who has the
burden to establish, by a preponderance of the evidence, a
prima facie case that the wording “SECURE STORAGE” has become
distinctive. See Yamaha Int’l Corp., supra; In re Hollywood
Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)
(“[T]here is no doubt that Congress intended that the burden
of proof [under Section 2(f)] should rest upon the
applicant”); and In re Rogers, 53 USPQ2d 1741 (TTAB 1999).
In support of its claim of acquired distinctiveness,
applicant asserts that the Office has acted inconsistently in
its treatment of the involved application and the application
that matured into Registration No. 3540393 for the mark
; that in the examination of the application for the
prior registration, applicant’s claim of acquired
distinctiveness was accepted on the basis of five (5) years
Ser No. 77695283

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exclusive use; and that, as the involved application fully
contains the exact mark of Registration 3450393, it be
treated in a manner consistent with the prior application and
its 2(f) claim be accepted as to the wording “SECURE
STORAGE,” with no requirement to disclaim the entire phrase
“SECURE STORAGE.” Applicant submitted no other evidence in
support of its claim.
Applicant also states, in the alternative, that in the
event the Board does not share its view, that its application
be remanded to the Examining Attorney for entry of a
disclaimer of “SECURE STORAGE.”
Considering first applicant’s claim of ownership of
prior Registration No. 3540393, Trademark Rule 2.41(b)
provides that the examining attorney may accept, as prima
facie evidence of acquired distinctiveness, ownership by
the applicant of one or more prior registrations of the
“same mark” on the Principal Register. The rule provides
further, however, that ownership of the existing
registration to establish acquired distinctiveness “may” be
considered acceptable in “appropriate cases,” but that the
USPTO may, at its option, require additional evidence.
Here, although the wording SECURING STORAGE is identical
to the literal element of applicant’s previously-registered
mark and the services are the same, the examining attorney
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nonetheless maintains that, because the “SECURE STORAGE”
element of applicant’s proposed mark is highly descriptive of
the services, applicant’s claim of ownership of the prior
registration is insufficient evidence of acquired
distinctiveness. The greater the degree of descriptiveness,
the greater the evidentiary burden on the user to establish
acquired distinctiveness. See Yamaha Int’l Corp., supra.
Highly descriptive terms, for example, are less likely to be
perceived as trademarks and more likely to be useful to
competitors than are less descriptive terms. More
substantial evidence of secondary meaning thus will
ordinarily be required to establish their distinctiveness.
Based on the evidence of record and the plain meaning of
the terms, there is no question that the wording “SECURE
STORAGE” is highly descriptive of a characteristic of the
identified storage/warehousing services provided by
applicant, namely that they are safe and secure.3
Consequently, a strong evidentiary showing is required to
establish that the relevant consumers view “SECURE STORAGE”

3 In this regard, we note that the services as identified include
storage and storage facilities. In addition, the examining
attorney made of record the definitions, from the online version
of Encarta® World English Dictionary [North American Edition] 2009
(www.encarta.msn.com/encnet/features/dictionary...), of the terms
“secure,” and “storage,” which are defined, in part, respectively
as “safe, especially against … theft” and “the act of storing
something, or the condition of being stored … space in which to
store things.”
Ser No. 77695283

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as identifying the source of applicant’s services as opposed
to the type of service. Applicant’s reliance on a prior
registration issued pursuant to a claim of 2(f) acquired
distinctiveness is simply not sufficient to show acquired
distinctiveness in this case, particularly where that prior
2(f) claim was based on five years’ use that is not, on this
record, as discussed below, substantially exclusive.
That bring us to applicant’s present claim of at least
five years’ use. The examining attorney contends that the
claim is not sufficient in view of the evidence of multiple
third-party usage of “SECURE STORAGE” for the exact same
service. To support his contention that applicant cannot
claim exclusive use of the wording “SECURE STORAGE,” the
examining attorney has made of record screen shots from
multiple storage company/facility websites advertising
identical storage services that use the wording “SECURE
STORAGE,” in combination with other matter, to identify
and/or describe their services. These companies include:
A* SECURE STORAGE (www.asecurestorage.com);
(www.securestorage.net);
(www.savannahsecurestorage.com);
ALL SECURE STORAGE www.allsecurestorage.net);
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MADISON SECURE STORAGE (http://onsmartpages.com/
madisonsecurestorage);
EUGENE SECURE STORAGE (www.eugenesecurestorage.com);
I 105 SECURE STORAGE (www.105securestorage.com);
SECURE STORAGE of Cool Springs (www.realpagessites.
ccm.sscs); and
SECURE STORAGE of Lockport (www.securestorage
lockport.com).
The Trademark Act provides that the USPTO may accept as
prima facie evidence of distinctiveness, applicant’s use of
the mark for five years. However, such use must be
“substantially exclusive and continuous.” Trademark Act §
2(f). In that regard, it has been held that:
In respect of registration, there must be a
trademark, i.e., purchasers in the marketplace
must be able to recognize that a term or device
has or has acquired such distinctiveness that
it may be relied on as indicating one source of
quality control and thus one quality standard.
When the record shows that purchasers are
confronted with more than one (let alone
numerous) independent users of a term or
device, an application for registration under
Section 2(f) cannot be successful, for
distinctiveness on which purchasers may relay
in lacking such circumstances.

Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222
USPQ 939, 940-41 (Fed. Cir. 1984); Target Brands Inc. v.
Hughes, 85 USPQ2d 1676, 1682 (TTAB 2007).
It is clear from the record that applicant’s use of
“SECURE STORAGE” is not “substantially exclusive.”
Ser No. 77695283

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Although absolute exclusivity is not required, see L.D.
Kitchler Co., v. Davoli, Inc., 192 F.3d 1349, 52 USPQ2d
1307 (Fed. Cir. 1999), the numerous third-party uses
demonstrated by the evidence of record clearly shows that a
substantial number of others are using the wording “SECURE
STORAGE” to identify and/or describe substantially similar,
if not identical, warehousing and storage services.
Accordingly, applicant’s may not rely on its asserted five
years’ use to show that the “SECURE STORAGE” component of
its mark has acquired distinctiveness.
Finally, as regards applicant’s request for action
consistent with its prior registration, the examining
attorney, citing In re National Novice Hockey League, Inc.,
222 USPQ 638, 639 (TTAB 1984), states that the previous
decisions of other examining attorneys allowing marks are
without evidentiary value and are not binding on the Board.
We agree and find the prosecution history of the earlier
application unpersuasive in this case. Even though we
appreciate applicant’s frustration over the “inconsistent”
examination given to the essentially identical terms in its
two applications, the Board must decide each case on its
own facts and record. In re Netts Design Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re
International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000).
Ser No. 77695283

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Section 20 of the Trademark Act of 1946, 15 U.S.C § 1070,
gives the Board the authority and the duty to decide an
appeal from an adverse final decision of the Examining
Attorney. This duty may not be delegated by the adoption
of a conclusion reached by an Examining Attorney on a
different record. In re BankAmerica Corp., 231 USPQ 873,
876 (TTAB 1986). While consistency in examination and the
register are commendable goals, we are not bound by the
prior actions of examining attorneys. Thus, we are not
bound by the previous attorney who apparently found
applicant’s claim of five years’ use sufficient to
demonstrate acquired distinctiveness of “SECURE STORAGE.”
See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1206)
(TTAB 2009) (“applicant is not automatically entitled to
return to the status quo … the Board is not bound by the
decision of the prior trademark examining attorney”); In re
Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB 2007); and In re
Outdoor Recreation Group, 81 USPQ2d 1392, 1399 (TTAB 2006).
See also In re Rodale Inc., 80 USPQ2d 1696, 1670 (TTAB
2006) (although the Board is “somewhat troubled” by
applicant’s prior Supplemental Register registrations of
the same or similar marks, genericness still found based on
the clear evidence of record). The record here simply does
not support a finding that the wording “SECURE STORAGE” has
Ser No. 77695283

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acquired distinctiveness as an indicator of source of
applicant’s warehouse and/or storage services.
In sum, applicant has not met its burden of showing
that the wording “SECURE STORAGE” has acquired
distinctiveness and, therefore, applicant is not entitled
to registration of its applied-for mark in the absence of a
disclaimer of “SECURE STORAGE.”

Decision: The requirement under Section 6 of the
Trademark Act for a disclaimer of the wording “SECURE
STORAGE” apart from the mark as a whole is affirmed.
However, if applicant submits a disclaimer of “SECURE
STORAGE” within twenty days of the mailing date of this
decision, the decision will be set aside.4

4 The standard printing format for the required disclaimer text is
as follows: No claim is made to the exclusive right to use
“Secure Storage” apart from the mark as shown. TMEP 1213.08
(a)(i) (5th ed. 2007).
Because the Board has jurisdiction to consider disclaimers after
final decision, applicant’s alternative request for remand is moot
and will not be further considered. See 37 CFR § 2.142(g); In re
Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) (requirement
for disclaimer affirmed, but decision would be set aside if
applicant submits disclaimer within 30 days); and In re S. D.
Fabrics, Inc., 223 USPQ 56, 57 n.1 (TTAB 1984) (Board accepts
disclaimers after decision by Board on appeal where the disclaimer
puts the application in condition for publication without the need
for any further examination).