76720557 (T.T.A.B. Sep. 2, 2020)

Tannas Company

Trademark Trial and Appeal BoardSep 2, 2020

76720557 (T.T.A.B. Sep. 2, 2020)

Mailed: September 2, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Tannas Company _____ Serial No. 76720557 _____ Christopher John Rudy, Esq. for Tannas Company. Christopher M. Nunley, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Shaw, Adlin and Lynch, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Tannas Company seeks a Principal Register registration of PEI, in standard characters, for “providing scientific and industrial research and analysis services, namely, providing research, analysis and reports of amounts of phosphorus as emissions as a vapor from a sample, a liquid sample, an oleaginous sample, and a motor oil; and consulting services for scientific and industrial research and analysis services, namely, providing consulting in selection and operation of scientific instrumentation for providing analysis and reports of amounts of phosphorus as emissions as a vapor from a sample, a liquid sample, an oleaginous sample, and a This Opinion is Not a Precedent of the TTAB Serial No. 76720557 2 motor oil” in International Class 42.1 The Examining Attorney refused registration under Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127, on the ground that as used in Applicant’s specimens, PEI fails to function as a mark. Specifically, the Examining Attorney contends that consumers will perceive PEI as an initialism for the “Phosphorus Emission Index” test/metric, rather than as a source identifier. After the refusal became final, Applicant appealed, and the appeal is now fully briefed. I. Analysis “To show service mark usage, the 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 DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (“[I]n a case such as this, the critical inquiry is whether the asserted mark would be perceived as a source indicator”). “A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.” DSM Pharmaceuticals, 87 USPQ2d at 1624.2 Here, Applicant submitted a number of specimens during prosecution. As explained below, we agree with the Examining Attorney that PEI would not be 1 Application Serial No. 76720557, filed August 9, 2018 under Section 1(a) of the Trademark Act, based on first use dates of June 14, 2002. 2 To the extent Applicant argues that some of its specimens are not advertising, but instead show use of the mark in rendering the services, the issue is substantively similar − “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re Way Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). Serial No. 76720557 3 perceived as identifying the services specified in the involved application, or their source, and that therefore PEI does not function as mark for the identified services in any of the specimens. A. The Proposed Mark’s Meaning By way of background, the Examining Attorney introduced an excerpt from the book Catalytic Air Pollution Control: Commercial Technology which indicates that the “phosphorous emission index” is abbreviated as “PEI” and measures “the mass of phosphorous that escapes from engine oil at 250° C.” December 3, 2018 Office Action TSDR 6. He also introduced the Abstract from the Tribotest article “Phosphorus volatility of engine oils: Use of the phosphorus emission index,” written by T.W. Selby (who appears to be Research and Development Director for one of Applicant’s affiliates). December 3, 2018 Office Action TSDR 7; June 7, 2019 specimen at 1. This article refers to PEI as a “concept.” December 3, 2018 Office Action TSDR 7. B. The Proposed Mark Does Not Function As a Mark In Applicant’s Specimens Excerpts from Applicant’s initial specimens, submitted with its application, are reproduced below, with the proposed mark highlighted: Serial No. 76720557 4 Serial No. 76720557 5 According to Applicant, the first specimen “is a brochure available online that advertises instrumentation with introductions on how to use it and on the expertise of company personnel.” 4 TTABVUE 5. The second explains “how to submit samples for testing by Savant Labs,” Applicant’s affiliate, and displays the proposed mark in a list of tests, which Applicant claims to be “some testing services provided.” Id. at 6. Applicant stresses that in these specimens PEI is “set off in all upper case letters,” sometimes in italics, and that the screenshot includes “Contact and Request a Quote screen icons manifestly visible.” Id. We take no issue with Applicant’s characterization of these specimens. However, the specimens do not show service mark use of PEI. To the contrary, the full page headed “Noack S2™” advertises a machine, not a service, as revealed by its promotion of the machine’s “features” and “new design.” The screenshot immediately above arguably relates to certain types of measurement/testing services, but it does not identify what those specific services are, much less offer the specific research, analysis and consulting services identified in the involved application. Cf. In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419 (TTAB 2018) (“Showing only the mark with no reference to, or association with, the services does not show service mark usage.”). Furthermore, despite being capitalized, PEI is not used as a service mark in these specimens. To the contrary, PEI clearly identifies the Phosphorous Emissions Index metric/test/index, as revealed by the how the initialism is displayed immediately after Serial No. 76720557 6 the index’s full name: “(PEI).”3 In other words, according to the specimen, PEI is the “test” or “method” itself, not any research, analysis or consulting services related to the test or method. Neither research, nor analysis, nor consulting services are advertised or offered via the specimen. And while it is likely safe to assume that the tests mentioned in the specimen will eventually yield reports of some type, reporting services are not promoted in this specimen, much less under the involved mark. See In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno-Metallurgichesky Institut Tsvetnykh Mettalov, 219 USPQ 69, 71 (1983) (other than “obscure” reference in specimen that technical assistance could be provided, “[b]eyond this there is no clear indication or other text to show that such assistance is being commercially offered, by whom, and under what identifying designation”). Finally, the source of any services which might be offered on the first specimen is presumably a company, perhaps the displayed “Tannas Co.” (Applicant), but not PEI, which refers only to the Phosphorous Emissions Index “test” or “method.” Indeed, as the Examining Attorney points out, the screenshot specifically identifies “SAVLAB PEI 165” as a “Method,” rather than the provider of any services, much less the specific services identified in the application. That PEI identifies a metric/test, rather than the source of Applicant’s services, is illustrated by this website printout introduced by the Examining Attorney: 3 Applicant insists that PEI is not an abbreviation, but an acronym, and “acronyms constitute proper subject matter for registrable trade and service marks.” 4 TTABVUE 12. However, whether Applicant’s proposed mark is an initialism, acronym or something else is not the basis for the refusal here. Rather, the refusal is that as used, consumers would not view PEI as a source indicator for Applicant’s identified services. Serial No. 76720557 7 December 3, 2018 Office Action TSDR 8. This printout describes the Phosphorous Emission Index as a “measure” performed by the Selby-Noack Instrument. Thus, like Applicant’s first specimen, this printout reveals that even if Applicant’s identified services relate to the Phosphorous Emission Index, consumers would perceive the source of those services as Selby, Applicant or another provider, while consumers would perceive PEI – like, for example, MPG (miles per gallon) or CPI (consumer price index) − as merely a quantification. Applicant’s remaining specimens fare no better. Of those filed on June 7, 2019, the one below does not include the mark at all, but rather indicates that Applicant’s affiliate Savant is the source of the mentioned laboratory and testing services: Serial No. 76720557 8 Another is a price quotation for goods, specifically the Selby-Noack Volatility Test device—ASTM D5800, with two optional accessories, a manometer and the Selby- Noack Software Package, and indicates that the Selby-Noack Volatility Test collects “volatiles for PEI analysis”: Others merely use the proposed mark in reporting PEI test results: Serial No. 76720557 9 4 4 Applicant claims that this specimen and another similar one “constitute the sole specimens of … U.S. registration No. 2,728,970 for the same mark as here, PEI, for services of providing scientific and industrial research and analysis services, namely, providing research, analysis and reports of amounts of amounts (sic) of phosphorous as emissions as a vapor from a sample, a liquid sample, an oleaginous sample, and a motor oil in international class 42.” 4 TTABVUE 7-8. That registration was apparently assigned to Applicant. Id. While the Examining Attorney did not object to the mere citation of this registration and its specimens, even though they were not made of record, the argument is irrelevant. In fact, we take judicial notice that this registration was cancelled. Cf. Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., Inc., 204 USPQ 76, 80 n.3 (TTAB 1979) (taking judicial notice based on a change in the registration’s status). Cancelled registrations are evidence of nothing other than the fact that they once issued. Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB Serial No. 76720557 10 While Applicant’s identified services include providing reports, these specimens do not describe or offer reporting services. They merely display the test reports themselves, with the mark identifying the metric itself, rather than reporting or other services. To the extent any of Applicant’s specimens promote Applicant’s services generally, that is not enough to establish that PEI functions as a service mark. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (requirement that service mark must be used in the sale or advertising of services “is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used”). See also In re Chengdu AOBI Information Technology Co., Ltd., 111 USPQ2d 2080, 2082 (TTAB 2011) (“Such vague references to services are insufficient to show use of IObit for the services identified in applicant’s application.”). 1987). In any event, neither the existence of prior registrations nor any of the evidence in their prosecution records (even if it was of record) compels a specific result in later, allegedly analogous cases. See, e.g., Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1377 (Fed. Cir. 2018) (“[T]hese prior registrations do not compel registration of [Applicant’s] proposed mar[k].”) (citing In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016) (“The [US]PTO is required to examine all trademark applications for compliance with each and every eligibility requirement, . . . even if the [US]PTO earlier mistakenly registered a similar or identical mark suffering the same defect.”)); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-party registrations should have been refused registration under section 1052(a), such errors do not bind the USPTO to improperly register Applicant’s marks.”). As we recently stated in an analogous situation, to the extent that our decision here is inconsistent with the cited registration, “it is the decision required under the statute on the record before us.” In re Ala. Tourism Dept., 2020 USPQ2d 10485, *11 (TTAB 2020). Serial No. 76720557 11 The specimens submitted on October 1, 2019 show that the sources of PEI testing services are Savant or Applicant’s other affiliate IOM: The IOM specimen even indicates that IOM is “the world’s source for engine oil data,” and lists PEI only in its “IOM Test Matrix” (emphasis added). Serial No. 76720557 12 It is not enough that the mark and a reference to the services both appear in the same specimen. In order to create the required “direct association,” the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source. In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010).5 In short, here, as in DSM Pharmaceuticals, “every description and explanation of” PEI on the specimens refers to the PEI test or metric, rather than the services identified in the application, and to the extent the specimens touch on services generally, or relate to the specific services identified in the application, those services are not directly associated with the PEI mark. DSM Pharmaceuticals, 87 USPQ2d at 1626.6 C. Terms Which Identify a Process, Test or Metric Do Not Function As Service Marks Longstanding precedent establishes that the refusal of registration was proper. In Ex Parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r. Pat. 1953), the applicant sought registration of CYCLOVERSION for consultation engineering services. Its specimen was an advertisement promoting the “Perco Cycloversion process,” and the 5 “The asserted sophistication of applicant’s consumers is largely inapposite to the issue of whether applicant’s specimens show the applied-for mark used in connection with the services.” In re HSB Solomon Assoc., LLC, 102 USPQ2d 1269, 1273 (TTAB 2012). 6 Applicant’s argument that the proposed mark is capitalized, “distinctively set off in its use,” used as an adjective and used in advertisements is beside the point. The question raised by the refusal is not about how the mark is displayed or its general nature outside the context of the identified services, but instead whether it functions as a mark for the identified services in any of the specimens. See Aerospace Optics, 78 USPQ2d at 1863-64. Serial No. 76720557 13 record indicated “that ‘Cycloversion’ is advertised as identifying a process and ‘Perco’ as identifying an engineering service.” Nowhere in the record does it appear that the engineering or consultation service is advertised or recognized as the “Cycloversion” engineering or consultation service. Use of a mark (“Cycloversion”) identifying a process in an advertisement which also features another mark (“Perco”) identifying a service does not qualify the mark identifying the process as a service mark within the meaning of the Trade Mark Act. Id. at 26. Twenty years later, the Court of Customs and Patent Appeals went further, stating and holding as follows: “It is clear enough to us that a ‘process,’ per se, is not a ‘service.’” Universal Oil, 177 USPQ at 457; See also In re Lurgi Gesellschaft Fur Mineralotechnik M.B.H., 175 USPQ 736, 736 (TTAB 1972) (“While we do not dispute the fact that applicant may perform the services claimed in the application, there is nothing in the record to indicate that ‘AROSOLVAN’ identifies such services. This is to say that ‘AROSOLVAN’, as used by applicant in its literature, only identifies a process ….”). This case is no different. Here, PEI is analogous to CYCLOVERSION, while Applicant’s affiliates Savant and IOM are analogous to Perco. That is, PEI identifies a test or metric, not the source of the identified services. While Universal Oil and Phillips Petroleum involved proposed marks used to identify a “process,” later cases have confirmed that the same principles apply to benchmarks, metrics or indices, such as Applicant’s PEI/Phosphorous Emission Index. Serial No. 76720557 14 Similarly, upon review of the specimens of use, we find that CEI, an initialism for a “carbon emissions index,” is only used to identify applicant’s process by which applicant derives a particular measurement. In each instance CEI is identified as a metric, an index, an equivalency factor, a standard, a performance measure, but never as a technical consulting service. There is no direct association between applicant’s offer of the applied-for services and the term CEI … The fact that the CEI process, measurement, metric, benchmark or standard may be used by applicant in the performance of its technical consulting service does not transform that metric into a technical consulting service or associate the term CEI with the technical consulting service such that it serves as a source identifier rather than simply the name of a process. HSB Solomon, 102 USPQ2d at 1274.7 II. Conclusion As used in Applicant’s specimens, PEI does not function as a mark for Applicant’s identified services. Decision: The refusal to register Applicant’s proposed mark on the Principal Register under Sections 1, 2, 3 and 45 of the Trademark Act is affirmed. 7 Applicant’s argument that the mark is registrable because it is not descriptive of the services, 4 TTABVUE 14-15, is misplaced. Aerospace Optics, 78 USPQ2d at 1864 (“[T]he fact that the applied-for mark may be registrable if it were used in a different context is not the issue … the applied-for mark, as used, would not be perceived as a trademark.”).