Seegrid Corporation

Trademark Trial and Appeal Board

Oct 8, 2009

No. 77052669 (T.T.A.B. Oct. 8, 2009)

Mailed: October 8, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Seegrid Corporation
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Serial No. 77052669
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David V. Radack of the Eckert Seamans Cherin & Mellott, LLC
for Seegrid Corporation

Darryl M. Spruill, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Seegrid Corporation, applicant, has filed an
application to register the mark WALKTHROUGHTHENWORK in
standard characters on the Principal Register for
“industrial robots” in International Class 7. The
application was filed on November 29, 2006, under Section
1(b) of the Trademark Act, 15 U.S.C. §1052(b), alleging a
bona fide intention to use the proposed mark in commerce.
Applicant’s mark was published for opposition and a Notice
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 77052669
2
of Allowance was issued on September 18, 2007. On January
10, 2008, applicant filed a Statement of Use alleging that
it had used the mark in connection with the goods on
September 13, 2006 and in commerce at least as early as
October 2006. The Statement of Use (SOU) included a
specimen, described as a user manual shipped as part of the
product.
The examining attorney has refused registration under
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052, 1127, because “the proposed mark, as used on
the specimen of record, merely identifies a process or
system; it does not function as a trademark to identify and
distinguish applicant’s goods from those of others and to
indicate their source.” Final Refusal p. 2 (October 10,
2008). We reverse.
The specimen of use consists of a user manual where
the proposed mark appears on the cover as shown below:

Serial No. 77052669
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The examining attorney does not dispute the form of
the specimen and indeed user manuals are acceptable as
specimens of use. In re Ultraflight Inc., 221 USPQ 903,
906 (TTAB 1984). Rather the examining attorney submitted
excerpts from applicant’s website, shown below, and over
the course of the prosecution and appeal, the examining
attorney has repeatedly attempted to articulate a basis for
his refusal.

The excerpts set forth below follow the evolution of
the examining attorney’s arguments:
The specimen shows the proposed mark used
solely to identify a process or system because
the wording WALKTHROUGHTHENWORK is merely a
feature of the actual industrial robots. [The
e]xamining attorney attaches evidence from
applicant’s website stating that
WALKTHROUGHTHENWORK is some type of camera system
that operates with the SmartCaddy robot. (First
Office Action (February 29 2008))
Serial No. 77052669
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Additionally, the proposed mark as depicted
on the specimen denotes that the actual goods are
“Powered by Seegrid WALKTHROUGHTTHENWORK.” The
proposed mark is only shown on the first page of
the user’s guide in the aforementioned manner.
Further, the proposed mark as displayed in this
manner on the specimen does not show the mark as
functioning as a trademark for the goods
identified in the Notice of Allowance (industrial
robots) and distinguish applicant’s goods from
those of others and to indicate their source.
(Final Office Action (October 2008))

However, [the] examining attorney maintains
that the manner in which the proposed mark
WALKTHROUGHTHENWORK is used on the specimen of
use does not function as a trademark or source
indicator for the “industrial robots” goods as
specified in the Notice of Allowance.
Specifically, [the] examining attorney reviewed
applicant’s specimen of use and the manner in
which the proposed mark appeared on the specimen,
namely, “Powered by Seegrid ™
WalkThroughThenWork.” The aforementioned wording
was the only reference of usage of the proposed
mark WalkThroughThenWork in the user manual.
Also, throughout the user manual the goods are
referred to as “SmartCaddy,” which is
superimposed and mentioned throughout the
specimen of use. The position is more
prevalently demonstrated by the following wording
on the cover page of the manual...Contrary to
applicant’s arguments, the proposed mark
WalkThroughThenWork as demonstrated on the cover
page of the manual, may only serve to denote that
it may be some type of a feature in connection
with the goods, and not the actual goods or
source indicator of the goods...Additionally, the
wording WALKTHROUGHTHENWORK is shown in a drop
down menu format along with other wording as
follows under the heading “To learn more about
how SmartCaddy works, select the features below:”
WalkThroughThenWork Setup...As demonstrated on
the specimen the wording WalkThroughThenWork is
used similarly as the wording specified above
simply as a feature of the goods, not the actual
Serial No. 77052669
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“industrial robots,” and not to serve as a source
indicator of the “industrial robots.”...Based on
the aforementioned information the proposed mark
WalkThroughThenWork is merely a camera system
utilized in connection with the actual robot
under the name “SmartCaddy.” Thus, the evidence
further supports the position that the proposed
mark is a system, and fails to function as a
trademark or serve as a source indicator for the
“industrial robots.” (Examining Attorney’s
Brief)

Under Section 45 of the Trademark Act, as amended, a
“trademark” is defined as “any word, name, symbol, or
device, or any combination thereof used by a person to
identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that
source is unknown.” 15 U.S.C. §1127. This section further
provides that a mark shall be deemed to be in use in
commerce on goods when “it is placed in any manner on the
goods or their containers...or on the tags or labels
affixed thereto...and the goods are sold or transported in
commerce.” Thus, the mark must be used in such a manner
that it would readily be perceived as identifying the
specified goods and distinguishing a single source or
origin for the goods. In re Aerospace Optics, Inc., 78
USPQ2d 1861 (TTAB 2006); and In re Safariland Hunting
Corp., 24 USPQ2d 1380 (TTAB 1992).
Serial No. 77052669
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A critical element in determining whether matter
sought to be registered is a trademark is the impression
the matter makes on the relevant public. Thus, in a case
such as this, the critical inquiry is whether the asserted
mark would be perceived as a source indicator. See In re
Brass-craft Mfg. Co., 49 USPQ2d 1849 (TTAB 1998); and In re
Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB
1998). To be a mark, the designation must be used in a
manner calculated to project to purchasers or potential
purchasers a single source or origin of the goods. We
determine whether this has been achieved by examining the
specimens of use along with any other relevant material
submitted by applicant during prosecution of the
applications. In re Walker Research, Inc., 228 USPQ 691
(TTAB 1986). Here we look to the specimens.
We begin by noting that the refusal based on the
premise that the proposed mark identifies a process or
system is misplaced. For a discussion of these refusals
see TMEP § 1301.02(e) (6th ed. 2009). The “camera system”
is a component or perhaps a significant feature of the
industrial robot; it is not a process or system as
contemplated by that refusal.
As noted above, a user manual is sufficient to support
an allegation of use. The proposed mark is in large type
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on the front cover. Further, it is not associated with an
address or being used in informational text. While it is
in close proximity to what could be another trademark
“Seegrid,” a specimen of use may contain more than one
mark. Further, to the extent WALKTHROUGHTHENWORK is more
in the nature of a mark associated with a primary or
integral component, or in the examining attorney’s words,
“feature” of the product, it still may be perceived as
indicating source as to the entire product. In re
Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009).
Accordingly, as used on the manual, the proposed mark
functions as a mark under Trademark Act Sections 1, 2 and
45 as used in connection with applicant’s identified goods.
Decision: The refusal to register under Sections 1, 2
and 45 is reversed.