Nanao U.S.A. Corp.

Trademark Trial and Appeal Board

Sep 5, 1997

EX (T.T.A.B. Sep. 5, 1997)

Paper No. 18
AKP/GDH
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB SEPT 5, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nanao U.S.A. Corporation
________
Serial No. 74/319,375
_______
John A. Hughes of Townsend and Townsend and Crew LLP for Nanao
U.S.A. Corporation.
Cora Moorhead, Trademark Examining Attorney, Law Office 102 (Myra
Kurzbard, Managing Attorney).
_______
Before Cissel, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Nanao U.S.A. Corporation has filed an application to
register the mark "FLEXCOLOR" for "cathode ray tube (CRT)
monitors for computers and television sets."1
Following publication and issuance of a notice of
allowance for such mark and goods, applicant submitted a timely
statement of use which alleges dates of first use for the goods

1 Ser. No. 74/319,375, filed on October 2, 1992, which alleges a bona
fide intention to use the mark in commerce.
Ser. No. 74/319,375
2
set forth in the notice of allowance of November 1, 1994. The
specimens accompanying the statement of use, however, show use of
the mark for a "Calibrator," specifically, a "Display Color
Calibrator". Because "[t]he specimens do not show use of the
mark for any goods identified in the statement of use," the
Examining Attorney has required that "applicant ... submit three
specimens showing use of the mark for the goods specified."2
Applicant, in response, submitted a proposed amendment
to identify the goods in its application as a "calibrator
assembly for use with cathode ray tube (CRT), in monitors and
television sets". In its accompanying remarks, applicant
maintains that "substitute specimens are no longer required"
because the specimens submitted with the statement of use show
use of the mark "FLEXCOLOR" for the goods set forth in the
proposed amendment.3

2 The Examining Attorney, in connection therewith, also required that
applicant "verify, with an affidavit or declaration, ... that the
substitute specimens were in use in commerce prior to the expiration
of the time allowed to the applicant for filing a statement of use."
3 Curiously, applicant offered no corresponding amendment to its
statement of use, which consequently continues to identify its goods
as set forth in the notice of allowance, namely, "cathode ray tube
(CRT) monitors for computers and television sets". Trademark Rule
2.88(i)(1) provides, however, that "[t]he goods or services specified
in a statement of use must conform to those goods or services
identified in the notice of allowance" and recommends, to avoid the
problem presently faced by applicant, that "[a]n applicant may
specify the goods or services [in the statement of use] by stating
'those goods or services identified in the notice of allowance' or,
if appropriate, 'those goods or services identified in the notice of
allowance except * * *' followed by an identification of the goods or
services to be deleted." Nevertheless, for purposes of this appeal,
we will assume that applicant intends to delete all goods identified
in the notice of allowance except for, arguably, a "calibrator
assembly for use with cathode ray tube (CRT), in monitors and
television sets," thereby conforming the goods identified in the
Ser. No. 74/319,375
3
Registration has been finally refused under Section
1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), on the
ground that applicant has failed to comply with the requirement
that it "submit substitute specimens showing use of the mark for
[the] goods specified" "in the notice of allowance and in the
statement of use as originally filed". Specifically, in this
regard, the Examining Attorney further states in her final
refusal that (emphasis added):
The specimens are unacceptable as
evidence of actual service mark use because
they do not show use of the mark in commerce
on goods identified in the notice of
allowance. The applicant's [proposed]
amendment to its identification of goods
clause is an unacceptable resolution to the
requirement that the applicant submit
acceptable specimens. ....
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.
Applicant, correctly noting that when filing a
statement of use, the application may be amended to delete items

statement of use to those identified in the proposed amendment to the
application.
4 While applicant, in its brief, accurately observes, among other
things, that the final refusal states that the specimens are
unacceptable as evidence of actual "service" mark use when, in fact,
its application involves goods and thus seeks to register a
trademark, the Examining Attorney, in her brief, reasonably notes
that it is clear from the context of the final refusal that
registration has been refused because the specimens fail to show
actual trademark use for the goods set forth in the application and
that, accordingly, the word "service" is simply a typographical
error.
Ser. No. 74/319,375
4
or to limit the identification of goods or services,5 argues
that:
The Notice of Allowance for this
application identified Applicant's goods as
"cathode ray tubes [sic] (CRT) monitors for
computers and television sets." In [its]
Amendment of September 18, 1995 Applicant
amended this identification of goods to:
"calibrator assembly for use with cathode ray
tubes [sic] (CRT)[,] in monitors and
televisions [sic] sets." The calibrator
assembly for CRT's is a subset of the general
category of CRT's. As such, the proposed
Amendment is a limitation of the
identification of goods in the Notice of
Allowance, which is expressly permitted by
the rules. .... The Amendment should
therefore be allowed. If so, the submitted
specimens would be acceptable. No substitute
specimens or Declaration were therefore
necessary. The Statement of Use therefore
should have been accepted, and the
Application passed to registration.
Nothing in the advertising literature submitted with applicant's
statement of use,6 however, supports applicant's assertion that
"[t]he calibrator assembly for CRT's is a subset of the general

5 Although Trademark Rule 2.88(c) states, in pertinent part, that
"[t]he statement of use may be filed only when the applicant has made
use of the mark in commerce on or in connection with all of the goods
or services, as specified in the notice of allowance, for which
applicant will seek registration in that application, unless the
statement of use is accompanied by a request in accordance with §
2.87 to divide out from the application the goods or services to
which the statement of use pertains," Trademark Rule 2.88(f)
provides, in relevant part, that "[t]he statement of use may be
amended in accordance with §§ 2.59 and 2.71 through 2.75." In
particular, Trademark Rule 2.71(b) specifies that "[t]he
identification of goods or services may be amended to clarify the
identification, but additions will not be permitted."
6 Applicant's statement of use also included copies of what appear to
be packaging for applicant's calibrators. In view thereof, the
Examining Attorney was careful to state in her brief that "the
specimens of record are [otherwise] acceptable because they show use
of the mark on boxes in which the goods are shipped."
Ser. No. 74/319,375
5
category of CRT's."7 In fact, applicant's advertising brochures,
which describe various models and features of its display
monitors, make no mention of either a "calibrator assembly" or
the mark "FLEXCOLOR". Instead, such literature makes references
only to applicant's "FLAT SCREEN CRT MONITORS," which it offers
under the "FlexScan" mark; its "Flexible Scanning Intelligent
Color Monitor"; and its "FlexScan® Monitor Family". None of such
products, however, is a calibrator assembly or "Display Color
Calibrator" as shown on the specimens submitted with the
statement of use.
The Examining Attorney maintains that applicant's
proposed amendment does not obviate the requirement for
substitute specimens since, contrary to applicant's assertion
that a "calibrator assembly for use with cathode ray tube (CRT)
in monitors for computers and television sets" is a "subset" of
"cathode ray tube (CRT) monitors for computers and television
sets," the former is outside the scope of the latter. As such,
the Examining Attorney contends that applicant's proposed
amendment of the identification of goods is an impermissible
addition, rather than a clarification or limitation, and thus
verified substitute specimens are necessary.

7 We judicially notice, for instance, that The American Heritage
Dictionary of the English Language (3rd ed. 1992) at 1791 defines
"subset" as "[a] set contained within a set" and at 1651 defines
"set," in relevant part, as "1. A group of things of the same kind
that belong together and are so used: a chess set." Thus, it is
clear that, in ordinary parlance, a calibrator assembly is simply not
a category, type or "subset" of cathode ray tubes.
Ser. No. 74/319,375
6
In particular, while conceding that if the Board "finds
that applicant's proposed amendment to the identification of
goods clause is permissible, then the specimens of record are
acceptable," the Examining Attorney urges that "[c]alibrators and
display color calibrators," which are the goods described by the
specimens, "are not logically within the scope of the original
identification." In this regard, the Examining Attorney asserts
that a cathode ray tube is defined in the Dictionary of Computer
Words (1995) at 37 as "[t]he basic element in standard computer
monitors and television sets" and in Spenser's Illustrated
Computer Dictionary (1995) at 61 as "the picture tube of the
standard computer display screen." 8 The Examining Attorney,
however, also points out that "[t]he record does not include any
information as to the nature of a calibrator assembly, nor has
the examining attorney found an authoritative definition outside
the record as to the nature of this item." Nevertheless, she
insists that the requirement for verified substitute specimens is
proper because:

8 Inasmuch as the Board may properly take judicial notice of
dictionary definitions, including definitions in technical reference
works, we have considered the above definitions, which were set forth
by the Examining Attorney for the first time in her brief. See,
e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 423 (CCPA
1962); Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Furthermore, while we note that the definition from the Dictionary of
Computer Words is accurate, the definition from Spencer's Illustrated
Computer Dictionary set forth above actually pertains to the
definition of the acronym "CRT," with the terminology "cathode ray
tube (CRT)" being defined in such publication at 43 as an
"[e]lectronic tube with a screen upon which information may be
displayed."
Ser. No. 74/319,375
7
[C]athode ray tubes and calibrator
assemblies are different items; and ... the
proposed amendment is a substitution of the
goods which does not include goods that are
logically within the scope of the
identification. .... Because the
applicant's proposed amendment to the
identification of goods clause is a
substitution of goods, because it does not
clarify or limit those goods identified in
the notice of allowance and statement of use
[as originally filed], and because acceptance
of the amendment would necessitate
reexamination of the application and
republication of the mark for opposition, it
is not, therefore, an acceptable amendment to
the instant application ....
While, like the Examining Attorney, we have been unable
to find an authoritative definition of a calibrator assembly, the
following definitions of "calibration," "calibrate" and
"assembly" nevertheless tend to shed some light on the nature and
use of a calibrator assembly:9
(i) "CALIBRATION," which Van Nostrand's
Scientific Encyclopedia (8th ed. 1995) at 507
discusses by noting that, "[w]ith reference
to industrial and scientific instruments, the
Instrument Society of America defines
calibrate as follows: ... 2. To adjust the
output of a device, to bring it to a desired
value, within a specified tolerance, for a
particular value of the input ...";
(ii) "calibration," which the IBM
Dictionary of Computing (1994) at 82 defines
as "[t]he adjustment of a piece of equipment

9 We also judicially notice, in this regard, that The Computer Desktop
Encyclopedia (1996) at 553 sets forth a definition of "monitor
calibrator" as "[a] hand-held device that is placed over the screen
of a monitor and 'reads' the colors."
Ser. No. 74/319,375
8
so that it meets normal operational standards
...";
(iii) " calibrate," which The American
Heritage Dictionary of Science (1986) at 84
sets forth as meaning "to determine, check,
or adjust the scale of (a thermometer, gauge,
or other measuring instrument). Calibrating
is usually done by comparison with a standard
instrument";
(iii) "calibrate," which the McGraw-Hill
Dictionary of Scientific & Technical Terms
(3rd ed. 1984) at 238 lists as meaning "[t]o
determine, by measurement or comparison with
a standard, the correct value of each scale
reading on a meter or other device, or the
correct value for each setting of a control
knob"; and
(iv) "assembly," which the McGraw-Hill
Dictionary of Scientific & Technical Terms
(3rd ed. 1984) at 113 defines as "[a] unit
containing the component parts of a
mechanism, machine or similar device.
In addition, we judicially notice the following
definitions of "cathode ray tube (CRT)," "CRT" and "monitor,"
which have a bearing on the nature and use of applicant's goods,
both as identified in the notice of allowance and as set forth in
the proposed amendment:
(i) "cathode ray tube (CRT)," which
Que's Computer User's Dictionary (5th ed.
1994) at 80 describes as connoting, "[i]n a
computer monitor, a vacuum tube that uses an
electron gun (cathode) to emit a beam of
electrons that illuminates phosphors on-
screen as the beam sweeps across the screen
repeatedly. The computer monitor is often
called a CRT. The same technology is used in
television. See monitor ...";
(ii) "CRT," which The Computer Desktop
Encyclopedia (1996) at 183 sets forth as
Ser. No. 74/319,375
9
connoting "(Cathode Ray Tube) A vacuum tube
used as a display screen in a video terminal
or TV. The term often refers to the entire
monitor rather than just the tube itself.
Years ago, CRT was the popular term for the
display screen. Today, monitor is the
preferred term See ... monitor";
(iii) "CRT," which The Dictionary of
Computer Graphics & Virtual Reality (2nd ed.
1995) at 30 lists as meaning "Cathode Ray
Tube; common element for displays, using a
beam of electrons, electrostatically or
electromagnetically deflected, to excite a
phosphor on the inner surface of a glass
faceplate of an evacuated tube. .... The
CRT is one element of a CRT display or
monitor also having a case, chassis, power
supply, and control electronics";
(iv) "monitor," which Que's Computer
User's Dictionary (5th ed. 1994) at 320
defines as "[t]he complete device that
produces an on-screen display, including all
necessary internal support circuitry. A
monitor is also called a video display unit
(VDU) or cathode-ray tube (CRT)";
(v) "monitor," which The Computer
Desktop Encyclopedia (1996) at 553 sets forth
as connoting "[a] display screen used to
present output from a computer, camera, VCR
or other video generator"; and
(vi) "monitor," which the Dictionary of
Computer Words (1995) at 179 lists as meaning
"[t]he display screen of a computer and the
case in which it is contained."
We agree with the Examining Attorney that substitute
specimens are necessary inasmuch as the proposed amendment, which
identifies applicant's goods as a "calibrator assembly for use
with cathode ray tube (CRT), in monitors and television sets,"
amounts to a substitution, rather than a clarification or
Ser. No. 74/319,375
10
limitation, of the goods as set forth in the notice of allowance,
namely, "cathode ray tube (CRT) monitors for computers and
television sets". Contrary to applicant's unsupported assertions
that the former is a "subset" of the latter,10 a "calibrator
assembly" for use with cathode ray tube computer monitors and
television sets is, on its face, a different item which is not
encompassed by the language "cathode ray tube monitors for
computers and television sets" listed in the notice of allowance.
Simply stated, the specimens, applicant's advertising literature
and the dictionary definitions make it plain that a calibrator
assembly is not a monitor; rather, it is a product or assembly
utilized to calibrate a monitor. As such, the former is outside
the scope of the latter. Thus, specimens showing use of the mark

10 Although not argued by applicant, there is nothing in the record
which indicates that applicant's calibrator assembly is sold as a
component of its cathode ray tube monitors for computers and
television sets, nor is such clear from the language of the proposed
amendment to the identification of goods. TMEP Section 804.08(b),
which is entitled "Goods Which Are Components or Ingredients,"
provides in relevant part that:
When a mark is used to identify only a component or
ingredient of a product, and not the entire product, the
identification should precisely set forth the component or
ingredient. In other words, when it is clearly indicated
by the specimens or other material in the record that the
mark relates only to a distinguishable part, component or
ingredient of a composite or finished product, then the
application should precisely describe that component or
ingredient as the goods so that there will be no doubt
that the mark refers only to one part and not the entire
product.
Here, however, the specimens submitted with the statement of use show
that the mark "FLEXCOLOR" pertains to a separate product, namely, a
"Display Color Calibrator," and that such a calibrator assembly is
not sold as a component of any of applicant's cathode ray tube
monitors for computers and television sets.
Ser. No. 74/319,375
11
"FLEXCOLOR" for a display color calibrator assembly are not
acceptable; instead, substitute specimens demonstrating use of
such mark for cathode ray tube (CRT) monitors for computers and
television sets are required.
Decision: The refusal to register under Section
1(d)(1), in view of the failure to comply with the requirement
for verified substitute specimens, is affirmed.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board