Multi-Fineline Electronix, Inc.

Trademark Trial and Appeal Board

May 23, 2013

No. 77767435 (T.T.A.B. May. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Multi-Fineline Electronix, Inc.
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Serial No. 77767435
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Jennifer H. Hamilton and Connie P. Limperis of The Eclipse Group LLP for Multi-
Fineline Electronix, Inc.

Patty Evanko, Trademark Examining Attorney, Law Office 117 (J. Brett Golden,
Managing Attorney).
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Before Kuhlke, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On June 24, 2009, applicant Multi-Fineline Electronix, Inc. applied to
register the mark SMARTINK, in standard character form, based on Section 1(b) of
the Trademark Act (intent-to-use), for services ultimately identified as follows:
• Manufacture of flexible printed circuits, circuit assemblies, and
interconnects to the order and specification of others; Assembly
services for others for flexible printed circuits, namely, full turnkey
assemblies consisting of surface mount components, hot bar and
through hole components; consulting services in connection with the
manufacture of electroluminescent lamps, displays, electrical circuits,
inverters, microprocessors, integrated circuits and semi-conductors, in
International Class 40; and
Serial No. 77767435
2

• Consulting, research and design services in connection with the design
and development of electroluminescent lamps, displays, electrical
circuits, inverters, microprocessors, integrated circuits and semi-
conductors; Design and development of computer software for use in
connection with electroluminescent lamps, displays, electrical circuits,
inverters, microprocessors, integrated circuits and semi-conductors;
Providing scientific, mechanical, and/or product research information
in the field of electroluminescent lamps, displays, electrical circuits,
inverters, microprocessors, integrated circuits and semi-conductors;
Preparation of scientific, mechanical, and/or product research reports
for others in the field of electroluminescent lamps, displays, electrical
circuits, inverters, microprocessors, integrated circuits and semi-
conductors; research and design services in connection with the
manufacture of electroluminescent lamps, displays, electrical circuits,
inverters, microprocessors, integrated circuits and semi-conductors, in
International Class 42.1
Following publication in the Trademark Official Gazette, a Notice of
Allowance issued on July 6, 2010 and, after one six-month extension of time,
applicant timely filed specimens and a Statement of Use on July 6, 2011. The
specimens, in the nature of articles and news releases, did not show use of the
SMARTINK mark in connection with the sale or advertising of the identified
services in either class.2 Applicant timely submitted a substitute specimen on
January 24, 2012. The examining attorney made final a refusal of registration
under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the
ground that the specimens fail to show use of the mark for the services identified in
the application.3
After applicant’s request for reconsideration was denied, it filed this appeal,
which is fully briefed. We affirm the refusal to register.

1 Application Serial No. 77767435.
2 Office action, July 28, 2011.
3 Final Office action, February 17, 2012.
Serial No. 77767435
3

To show service mark usage, a specimen must show use of the mark in a
manner that would be perceived by potential purchasers as identifying the
applicant’s services and indicating their source via a “direct association.” In re
Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). Where
the mark is used in advertising the services, the specimen must show a direct
association between the proposed mark and the services for which registration is
sought. Id. (“The minimum requirement is some direct association between the
offer of services and the mark sought to be registered.”).
A specimen that shows the mark with no reference to, or association with, the
services does not show service mark usage. In re DSM Pharms. Inc., 87 USPQ2d
1623, 1624 (TTAB 2008) (LIQUIDADVANTAGE referred only to software and did
not identify and distinguish custom manufacturing services). See also In re HSB
Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (CEI identified
process by which applicant derived a measurement rather than technical consulting
service); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1669 (TTAB 2010)
(OSMODEX referred only to drug delivery technology, not consultation services); In
re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2049 (TTAB 1989) (“Aaa” as used
on specimen identified applicant’s ratings rather than its rating services); In re
Restonic Corp., 189 USPQ 248, 249 (TTAB 1975) (phrase used merely to advertise
goods manufactured and sold by applicant’s franchisees did not serve as mark to
identify franchising services).
Serial No. 77767435
4

Applicant states that it is a technology manufacturer and design consultant.4
“In particular, Applicant manufactures displays, and SmartInk is a custom
manufacturing technology offered by Applicant.”5 Its specimen for both classes of
services is a PowerPoint presentation comprising seven slides and characterized by
applicant as “an electronic brochure which is used by Applicant to advertise the
SMARTINK custom manufacturing technology and the related services under the
SMARTINK mark to potential customers.”6 The specimen appears as follows:

4 Appeal Brief at 6.
5 Id.
6 Id. (emphasis in original).
Serial No. 77767435
5

As noted by the examining attorney, SMARTINK is used in the brochure
above the wording “Business Overview Products and Applications” and in
connection with a “display technology,” but not as a source identifier for the applied-
for services.7 Because there is no direct association in the specimen between the
proposed mark and the identified services, applicant’s specimen does not show
actual service mark use of SMARTINK for those services.8 See In re DSM Pharms.
Inc., 87 USPQ2d at 1626.

7 Examiner’s Brief at unnumbered p. 6.
8 While not brought up on examination, applicant’s use of the federal registration symbol
rather than the “TM” or “SM” designation in the specimen appears to be inadvertent.
Serial No. 77767435
6

Decision: The refusal to register under Sections 1 and 45 of the Trademark
Act is affirmed.

Trademark Manual of Examining Procedure § 906.03 (April 2013). We add that use of the
symbol does not transform “SMARTINK” into a service mark. In re Aerospace Optics Inc.,
78 USPQ2d 1861, 1864 (TTAB 2006); In re Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1853
(TTAB 1998); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987).