HSB Solomon Associates, LLC

Trademark Trial and Appeal Board

Mar 21, 2012

No. 77136242 (T.T.A.B. Mar. 21, 2012)

Mailed:
March 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re HSB Solomon Associates, LLC
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Serial No. 77136242
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Dwayne L. Mason and A. Alex Nowamooz of Greenberg Traurig,
LLP for HSB Solomon Associates, LLC.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Kuhlke, Ritchie and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On March 21, 2007, HSB Solomon Associates, LLC,
applicant, filed application Serial No. 77136242 to
register CEI as a mark in standard characters on the
Principal Register for services ultimately identified as
“technical consultation in the field of hydrocarbon and
chemical processing, pipeline, and power industries” in
International Class 42. The application was originally
filed under Section 1(a), 15 U.S.C. §1051(a), alleging
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 77136242
2
April 2005 as the date of first use and first use in
commerce. On November 9, 2007, in response to a specimen
refusal issued by the examining attorney, applicant amended
the basis to Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b), alleging a bona fide intention to use the mark in
commerce. Thereafter, the USPTO published the application
for opposition and issued a notice of allowance; and
applicant filed a Statement of Use.
The examining attorney made final a refusal of
registration under Sections 1 and 45 of the Trademark Act,
15 U.S.C. §§ 1051, 1127, on the ground that the specimens
filed in support of applicant’s Statement of Use fail to
show use of the mark for the services identified in the
application. After receiving both applicant’s notice of
appeal and request for reconsideration the Board remanded
the application to the examining attorney for consideration
of the latter. Following denial of the request, the appeal
was resumed.
The appeal has been fully briefed. We affirm the
refusal to register.
Section 1 of the Trademark Act requires that the
subject matter presented for registration be a trademark or
service mark. Section 45 defines a service mark as “any
word ... used ... to identify and distinguish the services
Ser No. 77136242
3
of one person ....” 15 U.S.C. § 1127. Thus, subject
matter that, due to its inherent nature or the manner in
which it is used, does not function as a mark to identify
and distinguish the applicant’s applied-for services cannot
be registered. A term that identifies only a process,
style, method or system is not registrable as a service
mark. Trademark Manual of Examining Procedure (TMEP)
§1301.02(e) (8th ed. 2011); and In re Universal Oil Products
Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973). See also In
re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB 2010)
(OSMODEX only refers to drug delivery technology not the
consulting services); In re DSM Pharmaceuticals, Inc., 87
USPQ2d 1623 (TTAB 2008) (LIQUIDADVANTAGE only refers to
software and does not identify and distinguish the custom
manufacturing services); In re Moody’s Investor’s Service
Inc., 13 USPQ2d 2043 (TTAB 1989) (ratings symbols do not
identify and distinguish rating services); and In re Hughes
Aircraft Co., 222 USPQ 263 (TTAB 1984) (PHOTOX only refers
to deposition process and has no direct association with
applicant’s treatment services).
In support of its referenced Statement of Use,
applicant submitted its brochure as its specimen of use,
and pertinent excerpts are reproduced below:
Ser No. 77136242
4

In addition, applicant submitted substitute specimens
with its referenced Request for Reconsideration. The
portions highlighted by applicant are reproduced below.
Ser No. 77136242
5

The examining attorney argues that applicant’s
brochure discusses applicant’s “technical consultation
services but the specimen does not use the term ‘CEI’ in
Ser No. 77136242
6
the context of providing consultation services.” Br. p. 6.
The examining attorney continues that “[w]hile the specimen
states that the consulting services offered by Applicant
take Carbon Emissions Index measurements into account, at
no point in the brochure is it mentioned that ‘CEI’ refers
to the consulting service itself, rather than the clearly
proprietary standard developed by the applicant.” Br. p.
6. The examining attorney maintains that the substitute
specimen suffers from the same failure in that:
[CEI is only used] to describe the metric used
for benchmarking that may or may not be a
component factor in a larger consulting services,
but at no point do the specimens use the term CEI
to refer to the consulting services themselves.
Consumers exposed to the use of the mark CEI on
the specimens of record will view it as a
standard for use in performing the consulting
services but not as the source for the services
themselves. ... Just because the term “CEI” is
used to refer to a metric that may be analyzed in
order to provide more informed consulting advice
does not mean that consumers would recognize
“CEI” is providing consulting services.

Br. p. 8.
In response to the refusal applicant asserts that:
The Specimen clearly shows that CEI is a
benchmarking/consulting service that is used in
connection with Applicant’s GHG [greenhouse gas]
consulting services. The Specimen indicates that
Applicant uses CEI to help its customers (i)
assess CO2e emissions efficiency performance
relative to the industry; (ii) set targets for
critical area of performance, and (iii) monitor
their progress. Specimen, p.2. As such,
customers would regard CEI not as a simple
Ser No. 77136242
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measurement, but instead as a consulting service
whereby, e.g., Applicant measures a customer’s
CO2e emissions, assesses the measured emissions by
comparing it to Applicant’s proprietary data
collected from many other facilities worldwide,
advises the customer on areas in need of
improvement, and monitors the customer’s progress
by repeating the process. ... Moreover,
assuming arguendo that CEI “is a process of
measuring something ...,” that very “process of
measuring” is an aspect of the applied-for
services, i.e., “technical consultation in the
field of hydrocarbon and chemical processing,
pipeline, and power industries” in International
Class 042.

Br. pp. 4-5.
Applicant contends that its technical consulting
services:
... include, but are not limited to, collecting
data from an industrial facility so that it may
be benchmarked against other industrial
facilities. In the case of CEI, such services
include but are not limited to consultation
services to assess an industrial facility’s CO2e
emissions efficiency performance, benchmarking
the same against other industrial facilities,
setting targets for industrial facilities, and
providing services to assist the consumers to
better manage performance over time.

Br. pp. 5-6.
In this regard, applicant asserts that:
... if applicant uses CEI in connection with an
“aspect” of the consulting services, it is
without question that it uses the mark in
connection with the services. Similarly, if
Applicant uses CEI in connection with
benchmarking that it provides as part of the
consulting services, then the mark is being
provided in connection with the services.

Ser No. 77136242
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Reply Br. p. 2.

In addition, applicant argues that its consumers “are
sophisticated and are well aware that Applicant is a world
renowned company that is in business exclusively to provide
technical consultation services in the field of hydrocarbon
and chemical processing, pipeline, and power industries.”
Br. p. 5. In connection with this argument, in its brief,
applicant references websites describing its services. In
his brief, the examining attorney objected to these
references because, although applicant first made reference
to these websites in its Request for Reconsideration, that
request was not accompanied by dated printouts or
screenshots of the websites.
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. Nonetheless, to be complete in our
consideration of applicant’s appeal, we have considered
applicant’s argument that because the examining attorney
did not “make any mention of the need for dated printouts
or screenshots” in the denial of the Request for
Reconsideration, the examining attorney lost the
opportunity to make the objection now asserted in his
brief.
Ser No. 77136242
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It is correct that if an examining attorney does not
object to a listing of third-party registrations, proffered
in response to an Office Action, as being insufficient to
make the third-party registrations of record, any later
objection to the list would be waived. In re Dist. of
Columbia, 101 USPQ2d 1588, 1592 n.5 (TTAB 2012). However,
the examining attorney’s failure to advise applicant of the
insufficiency of its references to website evidence in its
Request for Reconsideration is not viewed as a waiver,
because there was no subsequent opportunity for applicant
to cure the insufficiency. In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007)
(listing of third-party registrations submitted with
Request for Reconsideration not considered because at the
time it filed the list applicant no longer had an
opportunity to add to the record of the application and
correct the evidentiary insufficiency of the submission);
see also Trademark Rule 2.142(d) and TMEP § 710.01(c).
Accordingly, the examining attorney’s objection in his
brief is timely and the right to make it was not previously
waived.
Moreover, a reference to a website’s internet address
is not sufficient to make the content of that website or
any pages from that website of record. TMEP §710.01(b).
Ser No. 77136242
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Dist. of Columbia, 101 USPQ2d at 1592 n.5. Thus, even if
the objection were considered waived, only the website
address itself would be of record and the Board would not
utilize the address to access the site and consider
whatever content appeared. As the Board has frequently
noted, the evanescent nature of web content makes it
particularly important that a copy of the relevant material
be submitted in the record, otherwise, it is impossible to
know what the examining attorney viewed while examining the
application.
Further, the record must be complete prior to the
filing of an appeal. Trademark Rule 2.142(d). Thus, the
printouts attached to applicant’s reply brief, in an
attempt to address the objection made in the examining
attorney’s brief, are untimely.1 In view thereof, neither
the website references nor the printouts have been
considered.2
Having fully considered applicant’s argument on this
point, we turn back to the refusal of registration. The

1 After a request for reconsideration has been filed and denied,
an applicant may only seek to introduce evidence by requesting
suspension of the appeal and remand to the examining attorney.
The Board’s decision to grant or deny such a request depends on
the applicant’s showing of cause therefor. See TBMP § 1207.02.

2 We add that even if we were to consider the untimely evidence
it would not change the result herein.

Ser No. 77136242
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case of Universal Oil, 177 USPQ at 457, is instructive for
our determination. In that case, the applicant sought to
register PACOL for, inter alia, “research, development,
evaluation, market and economic studies, consultation,
design, engineering and technical services in connection
with a process for the dehydrogenation of normal paraffins”
and PENEX for “research, development, evaluation, market
and economic studies, consultation, design engineering and
technical services for others in connection with an
isomerization process.” In circumstances similar to the
present case, the Federal Circuit’s predecessor court
affirmed the Board’s refusal to register the marks PACOL
and PENEX even though the words PACOL and PENEX appeared in
the applicant’s brochure for its services as the name of
processes. The Court reasoned that:
...The requirement [of the Statute] that a mark
must be “used in the sale or advertising of
services” to be registered as a service mark is
clear and specific. We think it 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. The minimum requirement is some
direct association between the offer of services
and the mark sought to be registered therefor.

Id.
Ser No. 77136242
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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. In view thereof, as
used in the specimens of record CEI serves only to identify
a process but not the applied-for services and hence is not
registrable. 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.
Decision: The refusal to register under Sections 1
and 45 of the Trademark Act is affirmed.