ND Industries, Inc.

Trademark Trial and Appeal Board

Mar 22, 2017

No. 86758877 (T.T.A.B. Mar. 22, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 22, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ND Industries, Inc.
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Serial No. 86758877
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Amber M. Underhill, R. Scott Keller and Gregory D. DeGrazia of Warner Norcross
& Judd LLP, for ND Industries, Inc.

Linda A. Powell, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Kuhlke, Bergsman and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
ND Industries, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark SEALTEK (in standard characters) for “applying a cure in place chemical
composition to a sealing surface of fasteners and rivets in place of O-rings and gaskets
to the order and specification of others,” in Class 40.1

1 Application Serial No. 86758877 was filed on September 16, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as August 18, 2009.
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The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that the specimens of use do not display SEALTEK as a service mark.
Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127; 37 C.F.R. §§
2.34(a)(1)(iv) and 2.56(a). The Trademark Examining Attorney argues that the
specimen and substitute specimen do not use SEALTEK to identify services; rather,
the specimens identify goods used in the performance of the services.2 Specifically,
The mark as used identifies the material that the
Applicant uses to apply to fasteners and rivets and coated
fasteners, but does not serve to identify the services of
applying the cure or chemical composition.
6 TTABVUE 4.
An application filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
must include a specimen showing the applied-for-mark in use in commerce. See also
Trademark Rule 2.34(a)(1)(iv), 37 C.F.R. § 2.34(a)(1)(iv) (A service mark application
filed under Section 1(a) of the Trademark Act must include “[o]ne specimen showing
how the applicant uses the mark in commerce”). Thus, Applicant must show that the
mark SEALTEK is being used to identify “applying a cure in place chemical
composition to a sealing surface of fasteners and rivets in place of O-rings and gaskets
to the order and specification of others.” See, e.g., In re Universal Oil Products Co.,
476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (a service mark specimen must show
use of the mark in a manner that consumers will perceive as identifying the
applicant’s services and indicating their source); In re Graystone Consulting Assocs.,

2 6 TTABVUE 3.
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Inc., 115 USPQ2d 2035, 2036 (TTAB 2015) (quoting In re Moody’s Investors Serv. Inc.,
13 USQP2d 2043, 2047 (TTAB 1989) (“A service mark must be ‘used in such a manner
that it would be readily perceived as identifying’ the services, which is ‘determined
by examining the specimens of record in the application.’”); In re Chengdu AOBI Info.
Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011) (specimens that show applicant was
offering a product, not a service, cannot support service mark application); In re
Supply Guys Inc., 86 USPQ2d 1488, 1495 (TTAB 2008) (distributor of the products of
others may not claim trademark use based on a display of those goods on its website;
applicant’s mark identified retail store services, not goods); In re Monograms America
Inc., 51 USPQ2d 1317, 1319 (TTAB 1999) (letterhead specimen failed to create an
association between the mark MONOGRAMS AMERICA and the consultation
services set forth in the application); TMEP § 1301.04(d) (January 2017)
(“[R]egistration must be refused if the specimen shows the mark is used only to
promote goods rather than the identified services, or the mark is used as a service
mark but not for the identified services (i.e., the applicant misidentified the
services).”).
Below is a reproduction of the specimen of use filed with the application. Although
Applicant identified the specimen as a “sales brochure,” the document identifies itself
as a “technical data sheet.”

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Reproduced below is the substitute specimen, a webpage from Applicant’s
website.3

3 April 25, 2016 Response to Office Action (TSDR p. 5 in .pdf format). Applicant inserted the
yellow highlight for emphasis.
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Applicant, in its brief, focuses its argument and analysis on the substitute
specimen. Inasmuch as the specimen submitted with the application clearly uses
SEALTEK as a trademark to identify a product, we will focus our analysis on the
substitute specimen as well.4
The “Overview” on the SEALTEK web page noted above is reproduced and
enlarged below:

Applicant explains that its “SealTek products are acrylic-based sealing materials”
that “replace the need for the assembly of O-rings, gaskets, or sealing washers,” which
“conforms to the surface dimensions and fills the voids between mating parts, forming
a robust seal.” Thus, in the Overview, Applicant uses SEALTEK to identify sealing
materials applied to fasteners as an alternative to O-rings, gaskets, and washers, not
as the activity or service of applying the materials.
“How It Works” is reproduced and enlarged below:

4 For example, the specimen filed with the application identifies SEALTEK as “a medium
viscosity material which is pre-applied and cured in place to form into a resilient, soft, and
flexible gasket” and “Seal Tek™ 1120 should be stored in a cool and dry environment.”
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Applicant explains that it “dispenses SealTek onto parts and then heat or UV
cures the material in place” and that “SealTek can be applied to a wide variety of
parts” for multiple uses. Applicant uses SEALTEK to identify its acrylic-based
sealing material, not the activity of applying an acrylic-based sealing material onto
to a fastener. See also “Advanced Sealing” (“SealTek products”), “Versatile” (“SealTek
adheres to ferrous and non-ferrous metals”) and “Chemical Resistant” (“SealTek’s
three-dimensional cross-linked structure”) portions of the webpage.
Applicant argues to the contrary contending that in “Other Benefits … Quality
Control,” shown below, Applicant links SEALTEK to the activity of applying the
sealing material by stating that SEALTEK is pre-applied.5

5 Applicant’s Brief, p. 4 (4 TTABVUE 2); see also Applicant’s Reply Brief (7 TTABVUE 2)
(when Applicant refers to SEALTEK fasteners, “it is referring to the customer’s fasteners
that the customer has provided to Applicant and to which Applicant has provided its SealTek
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We construe the phrase “Pre-Applied SealTek Fasteners are coated to
specification” as referring to when the SEALTEK acrylic-based sealing material is
applied to the fasteners as opposed to a SEALTEK activity or service of applying an
acrylic-based sealing material to fasteners. Our interpretation is supported by the
surrounding text (e.g., “Fasteners coated with SealTek,” “The bulk pre-application of
SealTek products to fasteners,” and “As with all our pre-applied products, ND
Industries can apply SealTek onto your fasteners”). The web page advertises the
advantages of SEALTEK coatings. There is nothing on the web page that refers to,
or even suggests, that there is such a thing as a SEALTEK activity or service.
Neither the specimen filed with the application, nor the substitute specimen, use
the mark SEALTEK to identify “applying a cure in place chemical composition to a

pre-application services. (‘pre-application[’] meaning that the thread-locker is applied before
the fastener is used, not after, which also is sometimes done.)”).
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sealing surface of fasteners and rivets in place of O-rings and gaskets to the order
and specification of others.”
Decision: The refusal to register Applicant’s mark SEALTEK is affirmed.