PEM Management, Inc.

Trademark Trial and Appeal Board

Nov 14, 2018

No. 86957812 (T.T.A.B. Nov. 14, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re PEM Management, Inc.
_____

Serial No. 86957812
_____

Joseph M. Konieczny, Sr. of Ryder, Lu, Mazzeo & Konieczny LLC,
for PEM Management, Inc.
Jessica Hilliard, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Cataldo, Bergsman and Lynch,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
PEM Management, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark PENN AUTO and design, shown below:1

1 Serial No. 86957812, filed on March 30, 2016, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1052(a), based on Applicant’s claim of first use anywhere and first use in
commerce on March 17, 2016, for all classes of goods and services.
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Applicant submitted the following description of the mark:
The mark consists of the shaded word “PENN” arranged
above an inverted triangle. The top horizontal bar of the
inverted triangle is thicker than the rest of the triangle and
inside the top horizontal bar of the triangle is the unshaded
word “AUTO.”
Color is not claimed as a feature of the mark.
The description of goods and services is set forth below:
Metal fasteners for the automotive industry, namely,
threaded fasteners, nuts, bolts, screws, inserts, rivets,
sleeves, studs and pins, in Class 6;
Hardware components for the automotive industry,
namely, fasteners for brake components and fluid handling
components; bushings, compression limiters and dowel
pins, all specially adapted for land vehicles, in Class 12;
and
Product engineering services for others, namely, design
engineering of hardware components and fasteners for the
automotive industry, in Class 42.
Applicant disclaimed the exclusive right to use the term “Auto.” Also, in response to
a requirement that Applicant disclaim the exclusive right to use the term “Penn,”
Applicant claimed, in the alternative, that its use of the term “Penn” has acquired
distinctiveness.
The Examining Attorney refused registration of Applicant’s mark for the services
in Class 42 under Section 2(d) of the Trademark Act, 15 U.S.C § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark PENN UNITED
(standard characters) for, inter alia, the services set forth below as to be likely to
cause confusion:
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Design and testing for new product development; Design
and testing of new products for others; Designing of
machines, apparatus, instruments or systems composed of
such machines, apparatus and instruments; Product
development; Product development for others; Product
research & development; Product safety testing; Research
and development for new products for others, in Class 42.2
The cited PENN UNITED mark was registered under the provisions of Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f).
The Examining Attorney also refused registration for the goods in Classes 6 and
12 pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,
on the ground that Applicant failed to submit a specimen showing proper trademark
use.
Finally, although the Examining Attorney accepted Applicant’s claim of acquired
distinctiveness for the term “Penn” made in the alternative, Applicant appeals the
Examining Attorney’s finding that the term “Penn” is primarily geographically
descriptive.
When the refusals and requirement were made final, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal has been briefed.

2 Registration No. 3358508, registered December 25, 2007; renewed.
The Examining Attorney also cited three other registrations owned by Registrant
incorporating the term “Penn United” for the same goods and services. For the sake of
economy, we confine our analysis to the issue of likelihood of confusion between Applicant’s
mark and the mark in Registration. No. 3358508. Of all the cited marks, this one is the most
similar to Applicant’s mark. If the refusal cannot be affirmed on the basis of this registered
mark, it could not be affirmed on the basis of the other cited marks. See In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
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I. Likelihood of confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
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marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The number and nature of similar marks in use in connection with similar
services.

Applicant argues that Registrant’s PENN UNITED mark is not entitled to a broad
scope of protection because the term “Penn” followed by a descriptive term has been
registered numerous times.3 Applicant states that the “Examining Attorney may take
judicial notice of the fact that there are currently more than 260 live trademark
registrations incorporating the mark PENN.”4 Applicant’s Office Action response
includes a list of 15 third-party registrations containing the term “Penn.”5
The Board does not take judicial notice of third-party registrations and listing
them does not make them of record.6 See In re Peace Love World Live, LLC,

3 January 3, 2017 Response to Office Action (TSDR 13-14). References to the TSDR database
are to the downloadable .pdf format.
4 Id. at TSDR 13.
5 Id. at TSDR 14. Applicant states that copies of the third-party registrations were attached
as Exhibit 15. Applicant did not attach any exhibits to its response. It is the responsibility of
the party making submissions to the Board via the electronic database to ensure that the
testimony or evidence has, in fact, been properly made of record. See Weider Publ’ns, LLC v.
D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) (“the onus is on
the party making the submissions to ensure that, at a minimum, all materials are clearly
readable by the adverse party and the Board”), aff’d per curiam 565 F. App’x 900 (Fed. Cir.
2014); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is
reasonable to assume that it is opposer’s responsibility to review the documents it submits
as evidence to ensure that such submissions meet certain basic requirements, such as that
they are legible and identified as to source and date.”).
6 The Federal Circuit, in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed.
Cir. 2010), exercised its discretion to take judicial notice of a third party’s registrations.
Although the court took judicial notice of a third-party registration in that case, the Board
does not take judicial notice of either third-party registrations or a party’s own registration[s]
insofar as the Trademark Rules of Practice specify how to make such registrations of record
in an inter partes proceeding. See 37 C.F.R. § 2.122(d) and 37C.F.R. § 2.122(e). See also
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127 USPQ2d 1400, 1405 n.17 (TTAB 2018); In re 1st Prof’ls, Inc., 84 USPQ2d 1581,
1583 (TTAB 2007); In re Duofold, 184 USPQ 638, 640 (TTAB 1974). However, because
the Examining Attorney did not object to the list of third-party registrations and, in
fact, addressed the probative value of the third-party registrations, any objection to
the list is waived and we consider Applicant’s list of third-party registrations for what
it shows on its face. See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding
that the examining attorney’s failure to advise applicant of the insufficiency of the
list of registrations when it was proffered during examination constituted a waiver of
any objection to consideration of that list); In re 1st USA Realty Prof'ls, 84 USPQ2d
at 1583 (allowing consideration of a list of third-party registrations because the
examining attorney did not advise applicant of the insufficiency of the list while there
was still time to correct the mistake).
The list of registrations is not probative because none of the listed PENN marks
are for services even remotely related to Registrant’s design, development, and
testing of new products. See In re i.am.symbolic, LLC, 123 USPQ2d at 1751
(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the
third-party registrations are of limited probative value because the goods identified

MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEALBOARD RULES,
81 Fed. Reg. 69950, 69955 (October 7, 2016) (Board considered but rejected suggestion of
taking judicial notice of USPTO records, explaining various reasons introduction of
information contained in USPTO trademark file records is most appropriately borne by the
party seeking to introduce the evidence).
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in the registrations appear to be in fields which are far removed from the goods at
issue). See also Key Chem., Inc. v. Kelite Chem. Corp., 464 F.2d 1040, 175 USPQ 99,
101 (CCPA 1972) (“Nor is our conclusion altered by the presence in the record of about
40 third-party registrations which embody the word ‘KEY’. The great majority of
those registered marks are for goods unrelated to those in issue, and there is no
evidence that they are in continued use. We, therefore, can give them but little weight
in the circumstances present here.”).
Subsequently, in its August 21, 2017 Response to an Office Action, Applicant
asserted that “[t]here are currently 35 live U.S. trademark registrations (including
Registrant’s marks) that include the word PENN and are registered for use in
connection with goods/services in classes 6, 12 and 42, which are the classes for which
Applicant seeks registration.”7 This time, Applicant submitted copies of the
registrations.8 Nevertheless, we note that the Examining Attorney limited the
Section 2(d) likelihood of confusion refusal to Applicant’s services in Class 42. After
reviewing the registrations, we find that only Registration No. 1308610 for the mark
PENN STATE for, inter alia, “performing research for others in the fields of …
industry, technology …” is relevant.9

7 August 21, 2017 Response to Office Action (TSDR 4).
8 Id. at TSDR 18-184.
9 Id. at TSDR 138. The classification of goods and services by the USPTO is a purely
administrative determination and has no bearing on the issue of likelihood of confusion.

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While the Federal Circuit has held that “extensive evidence of third-party use and
registrations is ‘powerful on its face,’ even where the specific extent and impact of the
usage has not been established,” see Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015)), the record of third-party registrations is
not persuasive because only one of the third-party registrations is for services related
to Registrant’s product development services. Ultimately, the one relevant third-
party registration submitted by Applicant does not rise to the level of persuasiveness
as the voluminous evidence in Juice Generation and Jack Wolfskin.
Nevertheless, we still must assess the inherent strength of Registrant’s mark
PENN UNITED issued under the provisions of Section 2(f) of the Trademark Act
based on Registrant’s claim that its mark has acquired distinctiveness. In other
words, by virtue of seeking registration under Section 2(f), Registrant has conceded
that PENN UNITED is primarily geographically descriptive when used in connection
with design, development, and testing of new products. However, Registrant claims
under Section 2(f) that through use its mark has developed trademark significance.
See G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635,
1637 (Fed. Cir. 1990) (acquired distinctiveness “arises when a symbol or device, not
inherently distinctive at the time of its adoption, later acquires distinctiveness such
that the symbol or device serves as a mark to indicate the source of the associated
goods. (Internal citation omitted). A mark that has acquired secondary meaning may
Serial No. 86957812
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serve as a trademark and be protected even if the mark was not distinctive at the
time of its adoption.”); Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572,
6 USPQ2d 1001, 1007 (Fed. Cir. 1988) (“Section 2(f) permits registration of marks
that, despite not qualifying for registration in light of Section 2(e), have nevertheless
‘become distinctive of the applicant’s goods in commerce.’”). Marks registered under
the provisions of Section 2(f) are registered on the Principal Register and, therefore,
provide the owner with a statutory presumption of trademark rights to preclude
others from such use as would result in confusion. Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b) (i.e., validity of the registered mark and of the registration of that
mark, registrant’s ownership of the mark, and the registrant’s exclusive right to use
the registered mark on or in connection with the goods or services specified in the
registration).
The fact that it is registered on the Principal Register under Section 2(f) of the
Trademark Act means that we presume it has acquired source-indicating significance
and that is enough for it to preclude the registration of a similar mark for use in
connection with related services.
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014). In comparing the marks, we are mindful that
Serial No. 86957812
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“[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether
the marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. See
also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
As noted above Applicant is seeking to register the mark PENN AUTO and design,
shown below, and the mark in the cited registration is PENN UNITED (standard
characters).

The marks are similar because they share the term “Penn” as the first word of their
respective marks.
Moreover, Registrant’s mark PENN UNITED is registered as a standard
character mark and, therefore, the rights associated with that mark reside in the
wording, and not in any particular display. Registrant’s standard character mark
PENN UNITED may be depicted in any manner, regardless of the font style, size, or
color. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012);
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
(Fed. Cir. 2011). Because Registrant’s mark may be presented in any style, the term
Serial No. 86957812
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PENN could be displayed in a larger size over the word UNITED in a manner
resembling Applicant’s mark as shown below:

UNITED

Although we assess each mark in its entirety, the term “Penn” is the dominant
part of Applicant’s mark PENN AUTO and design. The word “PENN” comes first in
the mark and is a large and prominent element of Applicant’s mark that is most likely
to catch consumers’ eyes.10 As is often the case with marks comprising both literal
and design elements, the wording is considered the dominant feature because it is
the literal portion most likely to make an impression upon purchasers, be
remembered by them, and be used by them to request the services. See Jack Wolfskin
116 USPQ2d at 1134; In re Viterra Inc., 101 USPQ2d at 1908 (citing CBS Inc. v.
Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). There is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, such as a common dominant element, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. See
Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985).

10 Applicant’s argument that “when viewing Applicant’s composite mark, one’s eye is
naturally drawn to the center, which is the word AUTO” strains credulity inasmuch as it is
displayed inconspicuously in the horizontal leg of the triangle. Applicant’s Brief, p. 9 (8
TTABVUE 15).
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Moreover, the design element in Applicant’s mark is not so distinctive that it
creates a commercial separate and apart from the words such that consumers will
notice it or remember it. See Herbko Int’l Inc. Kappa Books Inc., 64 USPQ2d at 1380
(words dominate the design feature where the design portion of applicant’s mark does
not convey any distinct or separate commercial impression apart from the word
portion of the mark); CBS, Inc. v. Morrow, 218 USPQ at 200 (“minor design features
do not necessarily obviate likelihood of confusion arising from consideration of the
marks in their entireties.”). We disagree with Applicant’s assertion that the inverted
triangle may be the focal point11 and overshadows the literal portion of its mark
PENN AUTO.12
Also, “Penn” is more significant than the term “Auto” in Applicant’s mark because
the term “Auto” is highly descriptive when used in connection with “design
engineering of hardware components and fasteners for the automotive industry” and
Applicant disclaimed the exclusive right to use it.13 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion

11 Applicant’s Brief, p. 7 (8 TTABVUE 13).
12 Id. a p. 8 (8 TTABVUE 14).
13 Applicant argues that PENN is not primarily geographically descriptive and, in the
alternative, that it has acquired distinctiveness meaning that, according to Applicant, “Penn”
is the more distinctive of the two terms in the mark PENN AUTO and design. Applicant’s
Brief, p. 11 (8 TTABVUE 17).
Serial No. 86957812
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on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 752));
In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In
re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”).
The significance of the term “Penn” in Applicant’s mark is reinforced by its
location in the first part of the mark. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first notice the identical
lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting
that the dominance of BARR in the mark BARR GROUP is reinforced by its location
as the first word in the mark); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”). Likewise, “Penn” is
the first part of the cited mark PENN UNITED making the marks similar in
appearance.
Consumers encountering Applicant’s PENN AUTO and design for automotive
design engineering services who are familiar with Registrant’s PENN UNITED
“design and testing for new product development” may mistakenly believe that PENN
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AUTO is the PENN UNITED line of automotive-related services because of the
similarity of the marks.
PENN AUTO and design is similar to PENN UNITED in terms of appearance,
sound, connotation and commercial impression.
C. The similarity or dissimilarity and nature of the services.
We must consider the services as they are described in the application and
registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”). See also Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods”). We
also do not read limitations into the identification of services. In re i.am.symbolic,
LLC, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent
nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read limitations into the
registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no
Serial No. 86957812
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authority to read any restrictions or limitations into the registrant’s description of
goods.”).
Applicant is seeking to register PENN AUTO and design for the services listed
below:
Product engineering services for others, namely, design
engineering of hardware components and fasteners for the
automotive industry.14
The description of services in the cited registration is listed below:
Design and testing for new product development; Design
and testing of new products for others; Designing of
machines, apparatus, instruments or systems composed of
such machines, apparatus and instruments; Product
development; Product development for others; Product
research & development; Product safety testing; Research
and development for new products for others.
Because Registrant’s description of services is not restricted or limited in any way,
Registrant’s product design and development services may encompass product
engineering for all types of goods, including hardware components and fasteners in
the automotive field. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137
(TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily
encompasses Registrant’s narrowly identified ‘residential and commercial

14 “Engineering” is defined, inter alia, as “the art or science of making practical application
of the knowledge of pure sciences, as physics or chemistry, as in the construction of engines,
bridges, buildings, mines, ships, and chemical plants.” Dictionary.com based on the RANDOM
HOUSE UNABRIDGED DICTIONARY (2018). See also Merriam-Webster.com (“the design and
manufacture of complex products”). The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 86957812
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furniture.’”). Moreover, the Examining Attorney submitted excerpts from third-party
websites showing that product design engineering is equivalent to product design,
development and research. For example,
• API Technologies Corp. (apitech.com)
When you retain our design engineering services, you
benefit from the experience we have acquired in over 30
years of product design and manufacture. Whether you
need an extension to your present engineering/technical
team, or a complete design engineering production unit,
API EMS is ready to meet your needs.
Want to find out how API EMS design engineering services
can help you create marketing-leading products? Call us
toll free at 1-800-295-8000 and ask for Sales.15
• Cascade Engineering (cascadeng.com)
Product development at Cascade Engineering is a
disciplined process that’s integral to our daily operation.
Powered by creativity and passion for problem solving, we
design and develop large parts, complex designs, aesthetic
finishes, structural performance, and sustainable
materials. Not only do we work closely with our customers
to engineer and manufacture their designs, we also design,
manufacture, and market our own products.16
Cascade Engineering offers computer aided design, material development, process
engineering and product testing services.
• ECA Enterprises Inc. (ecaenterprises.com)
ECA does more than just contract manufacturing services,
we are a full service product development company with
full design engineering services capable for taking a project
from infancy to delivery using state of the art design
engineering services. Using advanced 3D CAD tools, such

15 February 15, 2017 Office Action (TSDR 13).
16 Id. at TSDR 14,
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as Pro Engineering software, our product design and
manufacturing engineers help you model and test your
designs. Once these models have been developed, we can
create prototypes, build production tooling, and provide full
documentation for your parts.
Our engineers have years of experience in mechanical and
electrical design. We have helped our clients across
multiple industries develop prototypes, select materials,
streamline designs, troubleshoot problems, coordinate
testing and manufacture their product.17
We find that the services are in part identical. Applicant, in its brief, did not
challenge that the services are related.
D. Established, likely-to-continue channels of trade and buyers to whom sales are
made.

Because the services described in the application and the cited registration are in
part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 101 USPQ2d at 1908 (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039,
1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Applicant, in its brief, did not
challenge that the services are offered in the same channels of trade or to the same
classes of consumers.
E. Conclusion

17 Id. at TSDR 15,
Serial No. 86957812
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Because the marks are similar, the services are, in part, overlapping and legally
identical and presumed to be offered in the same channels of trade to the same classes
of consumers, we find that Applicant’s mark for “product engineering services for
others, namely, design engineering of hardware components and fasteners for the
automotive industry” is likely to cause confusion with the registered mark PENN
UNITED for “design and testing for new product development; design and testing of
new products for others; designing of machines, apparatus, instruments or systems
composed of such machines, apparatus and instruments; product development;
product development for others; product research & development; product safety
testing; research and development for new products for others.”
The refusal to register Applicant’s mark for the services in Class 42 is affirmed.
II. Applicant’s specimens for the goods in Class 6 and Class 12
The Examining Attorney refused registration for the goods in Classes 6 and 12
pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on
the ground that Applicant failed to submit a specimen showing proper trademark
use. Applicant identified its specimen as “screenshots of applicant’s online catalog
displaying the PENN AUTO logo in connection with the recited goods and services.”
The relevant portion of Applicant’s specimen is reproduced below:
Serial No. 86957812
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The Examining Attorney explained that the specimen appears to be mere
advertising and does not function as a display used in association with the goods
because it does not include a means for ordering the goods.18

18 June 25, 2016 Office Action (TSDR 4).
Serial No. 86957812
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Applicant contends, without providing a verified statement in support by someone
in the field, that the contact information and info@pemnet.com email address is
sufficient ordering information because “the specialized, technical nature of the
identified goods necessitates contact with sales representatives for guidance on
pricing and specifications during purchasing decisions.”19 While not specifically
stating that the contact information should be used for ordering, “the purpose of this
contact information is obvious to commercial clients.”20
In the next Office Action, the Examining Attorney explained that merely listing
contact information of sales associates in advertising is not sufficient to make the
advertising technical trademark use.21 The Examining Attorney quoted TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 904.03(h) reproduced below:
[T]he inclusion of a phone number, Internet address,
and/or mailing address merely as part of corporate contact
information on an advertisement describing the product is
not in itself sufficient to meet the criteria for a display
associated with the goods. There must be an offer to
accept orders or instructions on how to place an
order. See In re MediaShare Corp., 43 USPQ2d 1304,1306
(TTAB 1997) (finding applicant’s fact sheet brochure,
which included an address and phone number but omitted
any information as to product price and how to order
applicant’s software, was merely advertising material).
(Emphasis added).
In response, Applicant submitted a “substitute” specimen, an excerpt from the
pem.net website displaying the PENN AUTO and design trademark with the legend

19 January 3, 2017 Response to Office Action (TSDR 16).
20 Id.
21 February 15, 2017 Office Action (TSDR 6).
Serial No. 86957812
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“Fasteners & Precision Automotive Components.”22 The relevant portion of the
pem.net website is reproduced below:23

Applicant argues that “[i]t is common practice in the industry to have a single,
separate ‘contact us’ page on the website for ‘sales’, ‘technical support’, etc. Customers
browsing the original specimen can easily locate the contact information found in the
supplemental specimen with a few clicks.”24
The parties repeated the arguments in their briefs.
“[T]he company name, address and phone number that appears at the end of the
web page indicates only location information about applicant; it does not constitute a
means to order goods through the mail or by telephone, in the way that a catalog sales
form provides a means for one to fill out a sales form or call in a purchase by phone.”
In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006). See also In re Quantum
Foods Inc., 94 USPQ2d 1375, 1379 (TTAB 2010) (information normally associated

22 August 21, 2017 Response to Office Action (TSDR 200). The substitute specimen was not
supported by an affidavit or declaration attesting to the fact that the specimen was in use at
least as early as the filing date of the application. Trademark Rule 2.59(a), 37 C.F.R. § 2.59(a).
23 Id. at TSDR 202.
24 Id. at TSDR 7.
Serial No. 86957812
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with ordering products via the Internet includes sales form, pricing information,
offers to accept orders or special instructions for placing orders).
Our primary reviewing court has instructed that the Trademark Act “specifies no
particular requirements to demonstrate source or origin; for displays, the mark must
simply be ‘associated’ with the goods.” In re Sones, 590 F.3d 1282, 93 USPQ2d 1118,
1122 (Fed. Cir. 2009), citing In re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972).
However, the court, in the context of reviewing a Board determination that a webpage
specimen did not qualify as a display associated with goods, also stated that a
relevant consideration was whether the webpage specimen had a “point of sale
nature.” Sones, 93 USPQ2d at 1124, citing Lands’ End Inc. v. Manbeck, 797 F.Supp.
511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). The determination of whether a
proffered catalog specimen is merely advertising or serves the function of a display
associated with the goods is a question of fact. In re Shipley Co., 230 USPQ2d 691,
694 (TTAB 1986). A display used in association with the goods is essentially a point-
of-sale display designed to catch the attention of purchasers as an inducement to
consummate a sale. Id. at 694 (“A crucial factor in the analysis is if the use of an
alleged mark is at a point of sale location”). “Factually, we need to ask whether the
purported point-of-sale display provides the potential purchaser with the information
normally associated with ordering products of that kind.” In re Anpath Group Inc., 95
USPQ2d 1377, 1381 (TTAB 2010).
As noted above, Applicant, through counsel, asserts that this is the customary and
usual way for companies to provide point-of-sale information to customers. However,
Serial No. 86957812
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the specimens do not contain any information normally associated with ordering
products via catalog or the Internet. There are no sales forms, no pricing information,
no offers to accept orders, and no special instructions for placing orders anywhere on
the specimen. There are no instructions regarding what information the caller needs
to have available to help Applicant process an order.
Another problem with counsel’s explanation is that there is no support for his
statements in the record. We have only counsel’s statements as to how Applicant sells
its products. The facts in this appeal are similar to In re U.S. Tsubaki, Inc.,
109 USPQ2d 2002 (TTAB 2002) where applicant’s counsel explained how applicant
and its competitors conducted business without providing any foundational
information regarding counsel’s investigation of, or understanding of, applicant’s
business, that would put him in a position to make statements regarding the
marketing of the products at issue, which in these cases are essential to our analysis
of the registrability of the mark. Id. at 2006, citing In re DeBaun, 687 F.2d 459, 214
USPQ 933, 934 n.4 (CCPA 1982) (“we need not evaluate the weight to be given to the
attorney's declaration with respect to statements more appropriately made by
appellant”); In re Simulations Publications, Inc., 521 F.2d 797, 187 USPQ 147, 148
(CCPA 1975) (where appellant argued that the magazines at issue deal with
unrelated subject matter, the court held that “[s]tatements in a brief cannot take the
place of evidence.”); In re Scarbrough, 500 F.2d 560 182 USPQ 298, 302 (CCPA 1974)
(where patent claims were rejected for the insufficiency of disclosure under Section
112, the response of appellant was argument in lieu of evidence leading the court to
Serial No. 86957812
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hold that “argument of counsel cannot take the place of evidence lacking in the
record.”); In re Nat’l Distiller & Chem. Corp., 297 F.2d 941, 132 USPQ 271, 274 (CCPA
1962) (“statements made over the signature of counsel are not evidence of the facts
averred”); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69, 70
(TTAB 1983) (applicant argued without corroborating evidence that its brochure
would be recognized as an offer of services leading the Board to hold that
“[u]nfortunately we have no evidence of record to this effect and assertions in briefs
are normally not recognized as evidence”); Spin Physics, Inc. v. Matsushita Electric
Industrial Co., Ltd., 168 USPQ 605, 607 (TTAB 1970) (“The arguments and opinions
of counsel for applicant are wholly insufficient to overcome the facts established by
the Sugaya report.”). Compare In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB
2007) (appellant submitted the declaration of its director of marketing who testified
that appellant’s customers regularly order its products by contacting the customer
service department by telephone).
If applicant wished to show that orders for its industrial
chain cannot readily be ordered by reference to particular
goods and pricing information, and are regularly ordered
by telephone following customer review of technical
information in its specimens and consultation with
employees of applicant, so that applicant’s specimens are
viewed as point of sale displays, applicant was obligated to
introduce such evidence to rebut the prima facie case made
by the Trademark Examining Attorney. In cases such as
this, where it is asserted that the nature of the goods and
the consumers therefor require more involved means for
ordering products, it is critical that the examining attorney
be provided with detailed information about the means for
ordering goods, and that such information be corroborated
by sufficient evidentiary support, for example, a
declaration from the applicant about its process for taking
Serial No. 86957812
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and filling orders, as in the Valenite case. At best,
applicant’s catalog pages provides applicant’s telephone
number and domain name as information about applicant;
the telephone number and domain name do not constitute
a means to order applicant’s chains by telephone or the
Internet.
U.S. Tsubaki, 109 USPQ2d at 2006-07.
The specimens simply do not contain adequate information for making a decision
to purchase the goods and placing an order and, therefore, we find that Applicant’s
specimens are advertisements that do not show the mark PENN AUTO and design
used in commerce as a trademark for the goods described in Classes 6 and 12. The
mere listing of telephone numbers and emails do not turn what is otherwise ordinary
advertisements into a point-of-sale display or a “display used in association with the
goods” and, thus, into a valid specimens showing technical trademark use.
We find that applicant has not submitted evidence showing proper use of its mark
in commerce for the goods listed in Classes 6 and 12 and, therefore, we affirm the
refusal of registration for those Classes.
III. Requirement for Applicant to disclaim the exclusive right to use the
term “Penn”
The Examining Attorney required Applicant to disclaim the exclusive right to use
the term “Penn” on the ground that it is primarily geographically descriptive when
used on or in connection with Applicant’s goods and services.25 Sections 2(e)(2) and 6
of the Trademark Act, 15 U.S.C. §§ 1052(e)(2) and 1056. Under Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a), an applicant may be required to disclaim an

25 Examining Attorney’s Brief (10 TTABVUE 23-24).
Serial No. 86957812
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unregistrable component of a mark otherwise registrable. Failure to provide the
required disclaimer constitutes a ground for refusing registration. See In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005). In this
case, the Examining Attorney takes the position that PENN is the abbreviation of
“Pennsylvania” which is a geographically descriptive term and, therefore, must be
disclaimed.
To establish a prima facie case for refusal to register a mark, or for a disclaimer
of a portion of a mark, as primarily geographically descriptive, the examining
attorney must show that:
(1) the primary significance of the mark is a generally known geographic
location; and
(2) purchasers would be likely to believe that the goods or services originate in
the geographic place identified in the mark.
In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.32d 957, 3 USPQ2d
1450, 1451-52 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852,
1853 (TTAB 2014). The second inquiry, regarding goods/services-place association,
can be presumed when the goods or services do in fact emanate from the place named
in the mark. Hollywood Lawyers Online, 110 USPQ2d at 1853; In re JT Tobacconists,
59 USPQ2d 1080, 1082 (TTAB 2001) (“[W]here there is no genuine issue that the
geographical significance of a term is its primary significance, and where the
geographical place named by the term is neither obscure nor remote, a public
association of the goods or services with the place may ordinarily be presumed from
Serial No. 86957812
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the fact that the applicant’s goods or services come from the geographical place named
in the mark.”).
A geographic nickname (e.g., “Big Apple” or “Motown”), or an abbreviation or other
variant of the name of a geographic location, is treated the same as the actual name
of the geographic location, if it is likely to be perceived as such by the purchasing
public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (holding
that “Yosemite” is a well-recognized and frequently used shorthand reference to
Yosemite National Park and the Yosemite region in general and conveys a readily
recognizable geographic significance); In re Carolina Apparel, 48 USPQ2d 1542
(TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail
clothing store services, where the evidence showed that “Carolina” is used to indicate
either the state of North Carolina or the state of South Carolina).
The Examining Attorney submitted the evidence listed below to prove that “Penn”
is the abbreviation for “Pennsylvania”:
• AcronymFinder.com identifies “Penn,” inter alia, as Pennsylvania
(including “Pennsylvania Avenue Building (US government);26
• Merriam-Webster.com defines “Penn,” inter alia, as Pennsylvania.27 It also
identifies “Penn” as a surname identifying William Penn, the founder of
Pennsylvania;

26 June 25, 2016 Office Action (TSDR 23).
27 February 15, 2017 Office Action (TSDR 20).
Serial No. 86957812
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• ENGLISH OXFORD LIVING DICTIONARIES
(oxforddictionaries.com/definition/us/) defines “Penn.” as “Pennsylvania”;28
• THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed.
2016) (ahdictionary.com) defines “Penn.” as “Pennsylvania”;29 and
• MACMILLAN DICTIONARY (macmillandictionary.com/dictionary/American)
defines “Penn.” as “Pennsylvania.”30
See also the RANDOM HOUSE UNABRIDGED DICTIONARY, abbreviations for
Pennsylvania include “PA (for use with zip code), PA., Penn., Penna.”31
According to THE COLUMBIAN GAZETTEER OF THE WORLD, Pennsylvania is a state
in the Middle Atlantic region of the United States. It is one of the original 13 colonies.
It has an estimated population of over 12,000,000 that includes the cities of
Pittsburgh and Philadelphia.32
Applicant counters by submitting the “Penn” entry from Abbreviations.com
defining “Penn” as “Penn National Gaming, Inc.” and “Professional Educational

28 Id. at TSDR 21.
29 Id. at TSDR 22.
30 Id. at TSDR 23.
31 Dictionary.com based on the Random House Unabridged Dictionary (2018).
32 “Pennsylvania,” COLUMBIA GAZETTEER OF THE WORLD ONLINE (columbiagazetteer.org)
(2018). See also Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY
(2018); “Pennsylvania,” ENCYCLOPAEDIA BRITANNICA (2018) (britannica.com). The Board
may take judicial notice of information in a gazetteer which is a standard reference work, as
well as from an encyclopedia. See B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d
727, 6 USPQ2d 1719 (Fed. Cir. 1988); In re Consolidated Specialty Rests. Inc., 71 USPQ2d
1921, 1927 (TTAB 2004); In re Broyhill Furn. Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTB
2001); Sprague Elec. Co. v. Elec. Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980).
Serial No. 86957812
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Notetaking Network, not “Pennsylvania.”33 However, determining whether a term is
primarily geographically descriptive is not done in the abstract, but in connection
with the goods and services for which registration is sought. Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052(e)(2) provides that no mark shall be refused
registration on account of its nature if it consists of a mark which “when used on or
in connection with the goods of the applicant is primarily geographically descriptive
of them.” See also In re Nantucket, Inc., 677 F.2d. 95, 213 USPQ 889, 892 (CCPA
1982) (Section 2(e)(2) of the Trademark Act requires that the mark be evaluated when
applied to the goods of the applicant). Nevertheless, the term “Penn” is also a
surname identifying the prominent Sir William Penn, an English admiral, and his
son, William, the founder of Pennsylvania.34
Applicant argues that the Examining Attorney used the wrong term when
searching for the meaning of “Penn” “because the search term was ‘penn.’ [with a
period] not ‘penn’,” [without a period] and that changes the results.35 However, the
Examining Attorney used “penn” (without a period) as her search term and retrieved
results which identified “Penn.” (with a period) as the abbreviation for
“Pennsylvania.” The results showing that “Penn.” (with a period) is the abbreviation
for “Pennsylvania” are probative to suggest that “Penn” (without a period) may more
likely be the alternative meaning as a surname.

33 August 21, 2017 Response to Office Action (TSDR 186).
34 Dictionary.com based on the Random House Unabridged Dictionary (2018). See also
Merriam-Webster.com; William Penn, Sean Penn, Arthur Penn and Irving Penn,
ENCYLOPAEDIA BRITANNICA.
35 Applicant’s Brief, pp. 12-13 (8 TTABVUE 18-19).
Serial No. 86957812
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As noted above, in its August 21, 2017 Response to an Office Action, Applicant
submitted “35 live U.S. trademark registrations (including Registrant’s marks) that
include the word PENN and are registered for use in connection with goods/services
in classes 6, 12 and 42, which are the classes for which Applicant seeks
registration.”36 “A real evidentiary value of third party registrations per se is to show
the sense in which … a mark is used in ordinary parlance.” Juice Generation, 115
USPQ2d at 1675 (quoting MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:90 (4th ed. 2015) (emphasis added). “Third party registrations are relevant to
prove that some segment of the composite marks which both contesting parties use
has a normally understood and well recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak.” Id.; see Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976) (even if “there is
no evidence of actual use” of “third-party registrations,” such registrations “may be
given some weight to show the meaning of a mark in the same way that dictionaries
are used”).
We summarize the information in the registrations submitted by Applicant as
follows:
• Excluding the cited registrations, the exclusive right to use “Penn” was
disclaimed in two registrations;37

36 August 21, 2017 Response to Office Action (TSDR 4).
37 August 21, 2017 Response to Office Action (TSDR 18 and 63).
Serial No. 86957812
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• Registrants claimed acquired distinctiveness in seven registrations
presumably because the term “Penn” has geographic significance;38
• Applicant is the owner of Registration No. 0928124 for the mark PENN
ENGINEERING (typed drawing) for “self-clinching fasteners, self-locating
weld fasteners, and self-clinching drill bushings,” in Class 6, registered on
the Principal Register without a disclaimer of the term “Penn” or a claim of
acquired distinctiveness under Section 2(f) of the Trademark Act;39
• Penn is a surname in two registrations;40 and
• The remaining 19 registrations were registered on the Principal Register
without a disclaimer or claim of acquired distinctiveness.
The Examining Attorney has failed to show that the significance of the term
“Penn” is primarily geographic inasmuch as “Penn” also has surname significance.
No other indicia in the mark point to or emphasize one possible meaning over the
other.
Decision: The refusal to register Applicant’s mark for the services in Class 42
under Section 2(d) of the Trademark Act is affirmed.
The refusal to register Applicant’s mark for the goods in Classes 6 and 12 for
failure of Applicant to submit acceptable specimens of use is affirmed.

38 Id. at TSDR 26, 36, 59, 116, 133, 170 and 175.
39 Registered February 1, 1972; third renewal. Id. at TSDR 140.
40 Id. at TSDR 34 and 120
Serial No. 86957812
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The requirement for Applicant to disclaim the exclusive right to use the term
“Penn” is reversed.