Ciba Specialty Chemical Corp.

Trademark Trial and Appeal Board

Apr 25, 2005

No. 76438403 (T.T.A.B. Apr. 25, 2005)

Mailed: April 25, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ciba Specialty Chemical Corporation
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Serial No. 76438403
_______

JoAnn Villamizar, Esq. for Ciba Specialty Chemical
Corporation.

Glenn Clark, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______

Before Hohein, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Ciba Specialty Chemical Corporation has filed an
application to register the mark RECYCLOSSORB for goods
amended to read “chemicals, namely, light stabilizers for
use in the manufacture of outdoor articles, namely,
plastic, lumber, crates, drums and the like.” The
application, filed August 7, 2002, is based on applicant’s
claimed date of first use and first use in commerce of July
1, 2002. The application includes the following statement:
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76438403
2
“The numbers following the mark are not part of the mark as
shown.” The specimen shows the mark as follows:
RECYCLOSSORB ® 550.
In his first Office action, the Examining Attorney,
inter alia, citing Trademark Rule 2.61(b), noted that the
number “550” is not shown in the drawing. The Examining
Attorney, in view thereof, required applicant to state if
it believed that the number is merely a grade designation
or model number, and to submit evidence showing use of the
mark with other similar notations.
In response, applicant stated that “The designation
‘550’ following the mark is a composition description and
is not part of the mark. … the abbreviation ‘550’ is not
being used in a trademark sense. This is the first product
in the RECYCLOSSORB product line and, thus, additional
labels showing a variety of compositions is [sic] not
available at this time.”
In his next Office action, and citing Trademark Rule
2.511 and TMEP §807.14 (3d ed. 2002), the Examining Attorney
stated that the drawing of the mark RECYCLOSSORB differs
from the display of the mark RECYCLOSSORB 550 shown on the

1 Trademark Rule 2.51(a) states, in relevant part, that “the
drawing of the mark must be a substantially exact representation
of the mark as used on or in connection with the goods and/or
services.”
Ser. No. 76438403
3
specimens; that the designation “550” identifies a grade
designation or model number; that applicant stated
additional labels showing a variety of compositions were
not available; and that, therefore, applicant must submit a
substitute specimen showing use of the mark as it appears
in the drawing.
In response, applicant restated its previous
explanation, and submitted evidence in the form of screen
prints from its website and some third-party websites as
evidence that the use of numbers (or letters) as a
composition description is the “standard practice of the
industry.” Applicant argued that “The grade designation is
standard in the industry as shown in the attachments and,
thus, is not part of the mark but only indicates the
specific chemical product in a series of related chemicals
from a specific source.”
The Examining Attorney then made final the requirement
for a substitute specimen showing the mark as it appears in
the drawing, explaining that he had considered applicant’s
arguments and evidence and “found them unpersuasive.” He
again cited Trademark Rule 2.51.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Ser. No. 76438403
4
As shown by the prosecution history of this case as
related above, the Examining Attorney has refused
registration based on his requirement that applicant submit
a substitute specimen showing the mark without the numbers
“550” (along with an affidavit or declaration that the
substitute specimen was in use as of a date prior to the
filing date of the application as required by Trademark
Rule 2.59(a)).
The Examining Attorney contends that the mark
RECYCLOSSORB is not a substantially exact representation of
the mark RECYCLOSSORB 550 shown on the specimens; that the
word and the number appear in the same font, size and color
on the specimens; that the word alone does not create a
separate and distinct commercial impression; and that
although the registration symbol appears between the word
RECYCLOSSORB and the number “550,” use of the registration
symbol is improper where the mark has not been federally
registered. The Examining Attorney finds applicant’s
evidence of industry use of numbers as grade designations
to be unpersuasive because here applicant has not used a
second grade designation for its RECYCLOSSORB product line;
and that applicant may never use its RECYCLOSSORB mark with
any product grade designation other than “550.” He
concludes that registration must be refused, based on the
Ser. No. 76438403
5
requirement for a substitute specimen, inasmuch as the
current specimens do not show (are not a substantially
exact representation of) the mark as it appears in the
drawing, i.e., the word RECYCLOSSORB alone.
Applicant contends that customers and competitors in
the relevant industry recognize that marks indicating the
source of the goods are followed by grade designations, or
more specifically, “a numerical or other designation
indicating the specific chemical product sold under the
specific trademark, in order to distinguish the many types
of chemicals sold under a specific mark” (brief, p. 2);
that the number following the mark is essentially “a short
hand designation of the chemical being sold” (brief, p. 2);
that purchasers of these products understand the mark is
the word and not the number designation following the word;
and that the mark RECYCLOSSORB creates a separate
commercial impression without the number “550.”
We clarify that the only issue before the Board is
whether applicant’s mark as shown in the drawing conforms
to the mark shown on applicant’s specimens (that is,
whether the mark RECYCLOSSORB shown in the drawing is a
substantially exact representation of the mark as used on
the specimens). Because we find that it does, we reverse
the refusal to register.
Ser. No. 76438403
6
As explained in 3 J. McCarthy, McCarthy on Trademarks
and Unfair Competition, §19:59 (4th ed. 2001):
“Mutilation” refers to a situation
where a seller seeks registration of
something less than the totality of his
trademark. That is, the seller
“mutilates” his trademark, severs a
part of it, and seeks registration only
of that part. The Patent and Trademark
Office may then reject registration,
saying that the applicant is trying to
register something less than his full
trademark, thereby attempting to obtain
protection for an element that is only
his in combination with other words or
symbols. (footnote and citations
omitted).

The number “550” is somewhat spatially separated from
the word RECYCLOSSORB and the encircled “R” is placed
between the word and the number. In addition, in this
case, applicant has submitted evidence that generally the
entities in the relevant industry (applicant, as well as
its competitors, including GE Specialty Chemicals, Atofina
and Clariant) use numbers to specify the various
composition descriptions within a line of a particular
chemical. Applicant’s evidence of pages from its website
includes several trademarks almost all of which include at
least some, and in most cases many, listings for a single
mark each with a different number (or letter and number)
designation (e.g., ATMER, CHIMASSORB, IRGAFOS, IRGANOX,
IRGAMOD, IRGASAN, RECYCLOSTAB, TINUVIN, UVITEX). The same
Ser. No. 76438403
7
is true of the evidence for each of the third-party
websites -- GE Specialty Chemicals, Atofina and Clariant.
Applicant also submitted photocopies of six labels showing
its mark IRGANOX followed by different numbers (259, 1520,
1330, 1098, 1076 and 1010). It is clear that it is common
industry practice to utilize the number not as a mark or
part of a mark, but as a chemical composition designation
to differentiate between the specific products in a series
of related chemical products.2
While the Examining Attorney is correct that applicant
has not yet offered a second product in its RECYCLOSSORB
product line, applicant has clearly stated that its product
sold under RECYCLOSSORB 550 is the first product in a
product line. Certainly, the evidence from applicant’s
website indicates that its various product line marks are,
in fact, used with composition designation numbers. Such
use is analogous to use of a mark followed by a generic
term for the particular goods. The Examining Attorney, on

2 The cases cited by the Examining Attorney, including In re
Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999), are inapposite
here. The Miller Sports case involved the mark MILLER SPORTS (in
stylized lettering) and a skater design on a black background,
but the applicant applied to register only the skater design and
the partial capital letter “M.” The case now before the Board
does not involve the applicant attempting to register an
incomplete and inseparable portion of a composite word and design
mark.
Ser. No. 76438403
8
the other hand, offers only speculation that applicant will
not use the mark RECYCLOSSORB for a line of products.
We agree with applicant that its mark is registrable
without the number designation. That is, applicant’s
drawing presents a substantially exact representation of
the mark as actually used in commerce, and applicant need
not submit a new specimen showing the mark without the
number designation.
Decision: The refusal to register based on the
requirement for a substitute specimen is reversed.