WireCo WorldGroup Inc.

Trademark Trial and Appeal Board

Mar 22, 2018

No. 86853449 (T.T.A.B. Mar. 22, 2018)

Mailed: March 22, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re WireCo WorldGroup Inc.
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Serial No. 86853449
_____

Kris Kappel of Husch Blackwell LLP
for WireCo WorldGroup Inc.

Jaclyn Kidwell Walker, Trademark Examining Attorney, Law Office 112,
Renee Servance, Acting Managing Attorney.
_____
Before Shaw, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
WireCo WorldGroup Inc. (“Applicant”) seeks registration of TURBOLITE, in
standard characters, for “steel wire rope.”1 The Examining Attorney refused
registration under Sections 1 and 45 of the Trademark Act on the ground that
Applicant’s specimens do not show use of TURBOLITE in commerce as a trademark
for the identified goods. After the refusal became final, Applicant appealed and filed
a request for reconsideration which was denied. Applicant later requested and was

1 Application Serial No. 86853449, filed December 18, 2015, under Section 1(a) of the Trade-
mark Act, 15 U.S.C. § 1051(a), alleging first use dates of September 12, 2010.
This Opinion is not a
Precedent of the TTAB
Serial No. 86853449
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granted a remand to submit additional specimens, but the Examining Attorney also
found those unacceptable. The appeal is fully briefed.
I. Prosecution History, Specimens and Refusals
The Examining Attorney found that Applicant’s original specimen, reproduced
below, is merely “material used by applicant to conduct its business transactions and
thus does not show the applied-for mark in use in commerce …”:

Application; Office Action of April 16, 2016.
Applicant then submitted as additional specimens what it called “photos of mark
in use in trade show advertisement,” including the following:
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Office Action response of October 14, 2016. The Examining Attorney also found these
specimens unacceptable because “advertising materials are generally not acceptable
as specimens to show use in commerce for goods.” Office Action of November 15, 2016.
Applicant then filed a request for reconsideration including as additional specimens
Serial No. 86853449
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a “work order and invoice,” but the Examining Attorney found, using boilerplate
language often used to deny requests for reconsideration, that these specimens “fail
to raise a new issue or provide any new or compelling evidence with regard to the
outstanding issue(s).” Request for Reconsideration of May 15, 2017 and denial thereof
of June 8, 2017.
Finally, after appealing, Applicant submitted additional specimens with its
motion to remand, specifically another invoice and a “shipping label”:

Serial No. 86853449
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7 TTABVUE 6-9. The Examining Attorney found these specimens unacceptable,
again without substantive explanation, and again using the following boilerplate
language: “applicant’s request has not resolved all the outstanding issue(s), nor does
it raise a new issue or provide any new or compelling evidence with regard to the
outstanding issue(s).” 9 TTABVUE 3.
II. Arguments on Appeal
The Examining Attorney argues, as she did during prosecution, that: (1)
Applicant’s invoice and work order specimens “are materials for conducting
applicant’s business dealings and therefore do not show acceptable use in commerce
of the ‘TURBOLITE’ mark;” and (2) Applicant’s trade show materials “merely
advertis[e] applicant’s steel wire rope giving information on the benefits of the rope,
Serial No. 86853449
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applications thereof, and company information. The brochure did not include a way
of ordering the goods.” 13 TTABVUE 3-4.
In addition, in her Appeal Brief, the Examining Attorney substantively addresses,
for the first time, the materials Applicant submitted with its motion to remand.
Specifically, the Examining Attorney “does not dispute that the specimens provided
in the request for remand were shipping labels,” but she “does take issue with the
mark presented thereon …. The applied-for mark on the drawing page appeared as
‘TURBOLITE’. The shipping labels on the other hand featured the wording
‘TURBOLITE SEMI-HYBRID’ in all capital letters and in the same font not (sic) such
that the mark thereon appears as ‘TURBOLITE SEMI-HYBRID’.” Id. at 4.
Accordingly, because she found (albeit after the appeal was filed and Applicant had
already filed its Appeal Brief) that the mark in the drawing and the mark used on
the specimen do not “match,” she found that the specimens submitted on remand are
unacceptable.
Applicant argues, however, that the term SEMI-HYBRID in the shipping label
specimen is generic, such that it is immaterial to whether the specimen is sufficient.
Specifically, Applicant claims that it may “register any element of a composite mark
if that element, as shown in the record, presents a separate and distinct commercial
impression …. Ordinarily, even if it is used with a trademark, the generic name of a
product need not be included as part of the words applicant seeks to register unless
it forms a part of the unitary mark.” 14 TTABVUE 9-10.
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III. Decision
We reverse the Examining Attorney’s refusal on two grounds, one procedural and
one substantive.
A. The Refusal of the Shipping Label Specimen Introduced on Remand
Was Procedurally Improper
Applicant submitted a shipping label specimen for the first time with its motion
to remand, i.e. after it had appealed and its earlier motion for reconsideration had
been denied. On remand, the Examining Attorney did not address the shipping label
specimen specifically or substantively, and, in fact, did not even mention the shipping
label until filing her Appeal Brief. Instead, the Examining Attorney merely stated, in
response to Applicant’s submission on remand, that Applicant’s evidence fails to
“raise a new issue or provide any new or compelling evidence with regard to the
outstanding issue(s) in the final Office Action.” 9 TTABVUE 3.
We recognize that Applicant had the opportunity, in its Reply Appeal Brief, to
address the Examining Attorney’s eventually-stated reasons for rejecting the
shipping label specimen, and that it did so. Applicant’s substantive arguments about
the shipping label specimen rejection are addressed below.
However, the procedural problem is that the Examining Attorney raised a new
refusal in her Appeal Brief without first addressing it in her August 14, 2017 denial
of reconsideration after remand. As a result, the Examining Attorney never had the
opportunity to consider Applicant’s arguments that the shipping label is a sufficient
specimen, until it filed its Reply Appeal Brief, at which point prosecution was long
since over and it was too late for further communication or argument. It was improper
Serial No. 86853449
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for the Examining Attorney to reject the shipping label specimen without substantive
and specific explanation, or for that matter without even acknowledging that the
shipping label was different in kind than the previously-filed specimens and required
a different analysis. Indeed, as it turns out, the Examining Attorney apparently
agreed with Applicant that the shipping label would have been sufficient, had the
mark TURBOLITE been displayed without the words SEMI-HYBRID, but Applicant
never had the opportunity during prosecution to argue that the shipping label shows
use of TURBOLITE in commerce, notwithstanding its being followed by the term
SEMI-HYBRID, because the Examining Attorney failed to raise that issue on
remand.
We recognize that “the examining attorney is not precluded from raising, during
appeal, new arguments and/or additional case citations in support of a ground for
refusal which was timely raised and is a subject of the appeal.” TBMP § 1217 (June
2017). Here, however, her refusal of the shipping label specimen was effectively and
in substance a new ground for refusal, and should have been addressed on remand.
In fact, while the Examining Attorney’s rejection of the shipping label technically
relates to the label’s adequacy as a specimen, the Examining Attorney’s issue with
this specimen is completely different than her issue with the invoice and
advertisement specimens, which she found inadequate for goods by their very nature.
That is not what she found concerning the shipping label. To the contrary, the
Examining Attorney specifically states in her Appeal Brief that “[s]hipping or mailing
labels may be accepted” as specimens. 13 TTABVUE 4. Her issue with the shipping
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label specimen is that “‘TURBOLITE SEMI-HYBRID’ does not match the applied-for
TURBOLITE mark.” Id. This finding, while nominally related to the specimen, is in
reality a rejection based on the manner of displaying the mark, and as such is a new
ground for refusal. It is therefore untimely and procedurally improper because it was
raised for the first time in the Examining Attorney’s Appeal Brief, and is reversed on
that basis. See generally In re Dietrich, 91 USPQ2d 1622, 1624 (TTAB 2009) (“To the
extent that the examining attorney attempted to refuse registration on [a new] basis
for the first time in her appeal brief, the refusal is untimely and cannot be
considered.”); see also TBMP § 1204 (“If the request for reconsideration raises a new
issue, the examining attorney must give the applicant an opportunity to respond
before issuing a new final refusal and returning the application to the Board.”)
(addressing requests for reconsideration of final action) and TMEP § 715.04(b) (“If
the request for reconsideration does not raise a new issue, but presents new evidence
that is significantly different from evidence previously submitted by the applicant,
the examining attorney must issue an ‘Examiner’s Subsequent Final Refusal,’ that
… addresses the new evidence.”).
B. Even if the Refusal of the Shipping Label Specimen Was
Procedurally Appropriate, It is Substantively Incorrect
The drawing of Applicant’s mark “must be a substantially exact representation of
the mark as used on or in connection with the goods and/or services,” as shown by the
specimens. Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a). At the same time, however,
because Applicant seeks registration under Section 1, it “has some latitude in
selecting the mark it wants to register,” and “may seek to register any portion of a
Serial No. 86853449
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composite mark if that portion presents a separate and distinct commercial
impression which indicates the source of applicant’s goods or services and
distinguishes applicant’s goods or services from those of others.” In re 1175856
Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006); see also In re Chemical Dynamics
Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (in context of an attempt
to register the “background portion” of a mark, holding that the applicant “must show
that the portion sought to be registered creates a separate and distinct commercial
impression, which thereby performs the trademark function of identifying the source
of the merchandise to consumers”). Indeed, in appropriate cases we “may recognize
the right to registration of one part of an owner’s mark consisting of two parts.” In re
Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950).
Here, as the Examining Attorney at least implicitly recognizes in her Appeal Brief,
shipping labels may be sufficient specimens. 15 U.S.C. § 1127 (“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 ….”) (emphasis added); In re A.S. Beck Shoe Corp., 161
USPQ 168, 169 (TTAB 1969) (“Since the specimens in question are in fact applied to
the containers for applicant’s goods and the goods are transported in commerce, the
use thereon of applicant’s mark is clearly a use such as would satisfy the
requirements of Section 45 for registration.”); Elec. Communc’ns, Inc. v. Elec.
Components for Indus. Co. et al., 443 F.2d 487, 170 USPQ 118, 122 (8th Cir. 1971);
TMEP § 904.03(a) (Oct. 2017). See also In re Schering-Plough Corp., 211 USPQ 69
(TTAB 1981). The question is whether the mark in Applicant’s drawing,
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TURBOLITE, for which it seeks registration, creates a separate and distinct
commercial impression as used in Applicant’s shipping label specimen, and thereby
performs the trademark function of identifying the source of the goods to consumers.
We find that it does.
In fact, there are examples throughout the record revealing that Applicant’s mark
is TURBOLITE, which it at times uses with a variety of size and apparently otherwise
descriptive modifiers:

Request for Reconsideration of May 15, 2017. These uses of TURBOLITE with
different size and other indicators support a finding that TURBOLITE creates its own
commercial impression, apart from “1-5/8"” and SEMI-HYBRID which appear in the
Serial No. 86853449
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shipping label specimen. See generally In re Raychem Corp., 12 USPQ2d 1399, 1400
(TTAB 1989) (“Such independent significance is in fact supported by applicant’s use
of the mark without the part number or generic designation in its advertising
materials.”).
In addition to using TURBOLITE with terms such as SEMI-HYBRID and
designations such as M, the example immediately above includes the descriptive or
generic term “Hybrid Mine Hoist Rope” on a different line than TURBOLITE™ M, in
initial capital letters rather than all capital letters and in a different color and font.
Obviously, in at least this example, TURBOLITE™ M is the mark and it identifies a
“hybrid mine hoist rope,” a type of mine hoist rope. Other materials in the record also
reveal that the term HYBRID is merely descriptive of or generic for Applicant’s goods:

Request for Reconsideration of May 15, 2017.
This evidence also reveals that the prefix “semi-” is also merely descriptive as it
merely modifies the descriptive or generic term “hybrid.” Obviously, the designation
“1-5/8"” in the shipping label specimen is a size descriptor, with another size
descriptor in the work order above being “32MM.” Clearly, the size designation “1-
5/8"” and the term SEMI-HYBRID are merely “informational matter” identifying the
particular TURBOLITE product being shipped. In re the Dow Chem. Co., 122 USPQ
161 (TTAB 1959).
Serial No. 86853449
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The use of the “™” symbol with TURBOLITE in some of these examples also tends
to suggest that the term creates a separate and distinct commercial impression, apart
from “1-5/8"” and SEMI-HYBRID. “Though not dispositive, the ‘use of the designation
‘TM’ … lends a degree of visual prominence to the term’” TURBOLITE. In re Sones,
590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (quoting In re Dell Inc., 71
USPQ2d 1725, 1729 (TTAB 2004)).
In fact, it appears that Applicant offers a line of TURBO-branded products, with
different suffixes, further highlighting that TURBOLITE is one of several telescoped
trademarks Applicant uses which feature the TURBO prefix:

Office Action response of October 14, 2016 and Request for Reconsideration of May
15, 2017. Thus, Applicant’s consumers will perceive the terms with the TURBO
Serial No. 86853449
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prefix, including TURBOLITE, as Applicant’s marks, and Applicant’s sporadic use of
descriptive or generic terms such as “1-5/8"” and SEMI-HYBRID further suggests
that consumers will perceive the mark as TURBOLITE.
In analogous circumstances, we have allowed owners of a composite mark to
register separately one or more of its several elements. See e.g., In re Servel, Inc., 85
USPQ at 257 (reversing refusal to register SERVEL where specimen depicted mark
as SERVEL INKLINGS, in part because “’Servel’ is a “coined and arbitrary term”
while INKLINGS is not); In re Royal BodyCare, Inc., 83 USPQ2d 1564 (TTAB 2007)
(reversing refusal to register NANOCEUTICAL, where specimen depicted mark
“embedded in the phrase RBC’S NANOCEUTICAL”); In re Raychem Corp., 12
USPQ2d at 1399 (reversing refusal to register TINEL-LOCK for metal rings for
attaching a cable shield to an adapter where mark as used on specimens was
TRO6AI-TINEL-LOCK-RING); In re EMCO, Inc., 158 USPQ 622 (TTAB 1968)
(reversing refusal to register RESPONSER where specimen depicted use of MEYER
RESPONSER).
Here, because TURBOLITE creates a separate and distinct commercial
impression as used in Applicant’s shipping label specimen, it performs the trademark
function of identifying the source of Applicant’s goods to consumers, and the shipping
label specimen is therefore acceptable.
Decision: The refusal to register Applicant’s mark because the specimens do not
show use of TURBOLITE in commerce as a trademark for Applicant’s goods is
reversed.