Rolled Alloys, Inc.

Trademark Trial and Appeal Board

Jun 3, 2014

No. 85223044 (T.T.A.B. Jun. 3, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
April 22, 2014 June 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rolled Alloys, Inc.
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Serial No. 85223044
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John A. Cullis and Mike R. Turner of Neal, Gerber & Eisenberg LLP for Rolled
Alloys, Inc.
Jason Paul Blair, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_____

Before Wellington, Wolfson, and Lykos, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Rolled Alloys, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark ROLLED ALLOYS (in standard characters) for goods amended to
“specialty metals and metal alloys for further manufacturing by others,” in
International Class 6.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Sections 2(e)(1) and 23(c) of the Trademark Act, 15 U.S.C. §§ 1052(e)(1)

1 Application Serial No. 85223044 was filed on January 21, 2011, based on an allegation of
first use and first use in commerce of January 7, 1953.
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and 1091(c), having determined that the applied-for mark is the generic name for
specialty metals and metal alloys or, in the alternative, that the mark ROLLED
ALLOYS merely describes the nature of the goods and that the evidence is
insufficient to show that the mark has acquired distinctiveness under Trademark
Act § 2(f), 15 U.S.C. § 1052(f). Applicant maintains that ROLLED ALLOYS is not
generic for specialty metals and metal alloys, and that the mark has acquired
distinctiveness.2
Applicant is a processor and distributor of heat and corrosive-resistant metal
alloys sold in various shapes and sizes such as bars, sheets, and rods,3 used in a
variety of applications, such as containers, car parts, radiant tubes for furnaces,
heat-treating fixtures and in aeronautics as, for example, supports for rocket
casings.4 Applicant offers “a wide variety of specialty metals, including, for example,
several varieties of cobalt alloys, nickel alloys and stainless steels.”5 In the 1930’s,
metallurgists at Applicant’s predecessor company, MISCO, recognized “that rolled
products could be a complement” to the company’s main business of producing

2 “By seeking registration under Section 2(f), Applicant, in effect, has conceded that its
mark is not inherently distinctive and is not registrable in the absence of a showing of
acquired distinctiveness.” In re Professional Learning Centers Inc., 230 USPQ 70, 71 (TTAB
1986). See also Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988) (when application is initially filed or subsequently amended to
Section 2(f), descriptiveness is conceded); In re Mine Safety Appliances Co., 66 USPQ2d
1694 (TTAB 2002); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 (TTAB
1983) (generally a claim under Section 2(f) is a concession that a mark is nondistinctive).
3 Declaration of David Nault dated January 24, 2013 (“Nault II”), ¶6; attached to January
24, 2013 response to Office Action.
4 “Rolled Alloys Story – 50 Years” booklet, printed in 2003; attached to October 25, 2011
response to Office Action.
5 Nault II Decl. ¶6.
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metal alloys through casting methods.6 According to the company’s circular, “Rolled
Alloys Story – 50 Years,” the Rolled Products division of MISCO officially began in
1945. As stated therein, “Its mission was to market the rolled (we would now say
wrought) alloys, as opposed to the cast alloys.”7 In 1952, MISCO was split into
separate companies and the new company, Rolled Alloys, Inc., was incorporated in
January 1953 “to be your dependable storeroom for heat resisting alloys.”8
Applicant has continuously produced specialty metals and metal alloys under the
mark ROLLED ALLOYS since 1953.9
When the refusal was made final, Applicant filed an appeal. Both the
Examining Attorney and Applicant filed briefs, and an oral hearing was held.
Because we find that the mark is not generic for the goods and that, while
descriptive, has acquired distinctiveness, we reverse the refusal to register.
I. Whether the term ROLLED ALLOYS is Generic?

A mark that refers to the class or category of goods on or in connection with
which it is used, rather than to the source of origin of the goods, is considered to be
a generic name for those goods. In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001)(“Generic terms are common names
that the relevant purchasing public understands primarily as describing the genus
of goods or services being sold.”); see also, H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). There is a two-part test

6 Id.
7 Id.
8 Id.
9 Declaration of David Nault dated May 22, 2012 (“Nault I”), ¶3; attached to May 22, 2012
response to Office Action.
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used to determine whether a designation is generic: (1) what is the genus (class or
category) of goods or services at issue? and (2) does the relevant public understand
the designation primarily to refer to that genus of goods or services?
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ 2d 1458, 1462
(TTAB 2014), citing Marvin Ginn, 228 USPQ at 530. The Office has the burden of
proving genericness by “clear evidence” thereof. In re Hotels.com LP, 573 F.3d 1300,
91 USPQ2d 1532, 1533 (Fed. Cir. 2009) (“The Patent and Trademark Office (PTO)
bears the burden of establishing that a proposed mark is generic, … and must
demonstrate generic status by clear evidence….)”, citing Am–Pro Protective Agency,
Inc. v. United States, 281 F.3d 1234, 1239–40 (Fed. Cir. 2002) (explaining that
“clear evidence” is equivalent to “clear and convincing evidence,” which is a heavier
burden than preponderance of the evidence). See also, In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Merrill Lynch, Pierce,
Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987)
(“Mixture of uses” both generic and non-generic did not prove with clarity that the
designation was a generic name).
In defining the genus of the goods at issue, we commonly look to the
identification of goods as it has been prepared by the applicant in filing the
application. See Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of
[goods or] services set forth in the [application or] certificate of registration.”). Here,
the identification of goods is “specialty metals and metal alloys used for further
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manufacturing by others.” Specialty metals are metals that have unique material
properties required for various specific applications and alloys are specialty metals
that combine two or more elemental metals, such as nickel, carbon, or aluminum.10
The genus of goods at issue is aptly described in the application.
Having defined the genus of goods at issue in this case, we now turn to the
critical issue of “whether members of the relevant public primarily use or
understand the term sought to be protected to refer to the genus of goods or services
in question.” Marvin Ginn, 228 USPQ at 530. See also, In re Am. Fertility Society,
188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Loglan Inst. Inc. v. Logical
Language Group Inc., 902 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992).
Evidence of the public’s understanding of a term may be obtained from any
competent source, including testimony, surveys, dictionaries, trade journals,
newspapers and other publications. Loglan, 22 USPQ2d at 1533; In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); Dan
Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105
(CCPA 1979). “The relevant public is “limited to actual or potential purchasers of
the goods or services.” Magic Wand, 19 USPQ2d at 1553.
The Examining Attorney seeks to prove that Applicant’s mark is generic for
specialty metals and metal alloys that have been formed by a rolling process in a
rolling mill. The definition of “rolled” includes “to form metal in a rolling mill” and
the definition of “rolling mill” is “a mill or factory where ingots of heated metal are
passed between rollers to produce sheets or bars of a required cross section and

10 Nault II Decl. ¶15.
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form”.11 These definitions, however, do not establish that the mark is generic for the
recited goods. Thus, the Examining Attorney has further relied on (1) three online
printouts intended as guides for engineers to learn about the standard
specifications in the industry for “rolled alloy” flanges, steel, and bars; (2) pages
from the websites of three foreign companies advertising steel for sale under the
wording “rolled alloys” and a single website wherein unrelated foreign companies
advertise for sale “hot rolled alloy steel”; and (3) pages from the websites of three
United States companies advertising “hot rolled alloy steel.” Upon careful review of
the totality of the evidence, we find it is insufficient to show that the mark ROLLED
ALLOYS is generic for the goods.
Specifically, the guides for engineers are not relevant because they are not
directed to Applicant’s customers. They also use term “rolled alloy” descriptively
and not as a generic name for the goods:
1). The ASTM International website uses the term “rolled
alloy” in the title of two of its “standards,” the first offered
for sale as a “Standard Specification For Forged Or Rolled
Alloy And Stainless Steel Pipe Flanges, Forged Fittings,
And Valves And Parts Of High-Temperature Services.”
An abstract of this reference is provided that explains the
scope of the specification is to cover the specified
dimensions and ASME specifications for “low alloy and
stainless steel piping components.”12
2). The second standard is entitled “ASTM A506-12
Standard Specification for Alloy and Structural Alloy
Steel, Sheet and Strip, Hot-Rolled and Cold-Rolled.” The
page offers for sale copies of the standard for $35.00. It is
a 4-page document that specifies “the standard for hot-

11 At http://dictionary.reference.com; attached to April 25, 2011 Office Action.
12 At http://www.astm.org; attached to November 22, 2011 Office Action.
Serial No. 85223044

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rolled and cold-rolled alloy.” The phrase “rolled alloys” is
not used.13
3). The TIMKEN company offers “practical data for
metallurgists” via a guide for engineers that lists the “Bar
Tolerance for Hot Rolled Alloy Bars.”14
The foreign companies’ websites identify one Indian company (Krishna
Trader) and over 30 Chinese companies (including “TPCO” and HiSupplier) that use
the term “rolled alloy” to describe rounded steel bars.
1). The company Krishna Trader advertises a “Wide
Range of Aluminium [sic] Rolled Product and Extrusions,”
one of which is “Rolled Alloy.” Contact information for
Krishna Trader is an address in Pune, Maharashtra,
India.15
The advertisement is depicted below.

2). Tianjin Pipe International Economic & Trading
Corporation (“TPCO”) advertises “hot rolled alloy steel
pipe” available “FOB Tianjin port.” An announcement on
the site indicates that TPCOINTL is one of the top 500
enterprises in China foreign trade.16

13 At http://www.astm.org; attached to July 24, 2012 Office Action.
14 At http://www.timken.com; attached to November 22, 2011 Office Action.
15 At http://www.indiamart.com; attached to July 24, 2012 Office Action.
16 At http://www.steelpipechn.com; attached to November 22, 2011 Office Action.
Serial No. 85223044

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3). HiSupplier.com advertises itself as the “global trade e-
marketplace” and offers for sale “Hot Rolled Alloy Steel
Bars” from Tianjin available through the China Steel
Holding Group Co., Limited, located in Hong Kong.17
4). On the seekpart.com website, the results of a search for
“hot rolled alloy steel” are displayed. Thirty-one
companies are listed (all with addresses in China). Nine of
the companies indicate that they sell “hot rolled alloy”
steel bars or pipes. One company also describes a “cold
rolled steel bar” (without using the phrase “rolled alloy”)
and several use “hot rolled” in association with “alloy” as
part of a larger composite phrase, such as “hot rolled P11
seamless alloy steel pipe,” and “hot rolled low alloy steel
pipe.”18
Two examples follow:

As foreign websites, without any evidence to support an inference that these
uses have “had any material impact on the perceptions of the relevant public in this
country,” In re Men’s Int’l Professional Tennis Council, 1 USPQ2d 1917, 1918-19
(TTAB 1986), they have little probative value. While there is a remote possibility
that some potential United States customers have viewed at least some of these
third-party websites, there is no indication that anyone, let alone a substantial

17 At http://www.hisupplier.com; attached to November 22, 2011 Office Action.
18 At http://www.seekpart.com; attached to July 24, 2012 Office Action.
Serial No. 85223044

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number of relevant consumers, has actually seen these materials in the United
States, or that such consumers would perceive the term ROLLED ALLOYS as a
generic term for the goods. Applicant’s declarant, with 38 years of stated experience
in the industry, contends that he has never heard of “Krishna Trader,”
“Indiamart.com,” or “Seekpart.com” and concludes that “these entities do not appear
to do business in the United States.”19 There is, moreover, no meaningful way to
gauge whether the Indian and Chinese companies are cognizant of or careful about
proper trademark usage in the United States, whether they are familiar with
Applicant, or their level of English proficiency. On all but the Krishna Trader
website, the term is used as part of the phrase “hot rolled alloy” and is followed by a
word that would more readily be considered the generic name, such as pipe, bar, or
steel to describe the product. Therefore, even when taken cumulatively, the
evidence has very little probative value.
The most relevant evidence provided by the Examining Attorney are the
print-outs from three United States companies. The first two use the phrase “hot
rolled alloy steel.” The third uses only the phrase “rolled rings.”
1). Online Metals, located in Seattle, Washington,
advertises “Hot Rolled Alloy Steel Round 8620.”20
The advertisement is depicted below.

19 Nault II, ¶ 8.
20 At http://www.onlinemetals.com; attached to July 24, 2012 Office Action. Emphasis
provided.
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Also, on the pages from Online Metal’s website provided
by Applicant, the company’s products are primarily listed
according to metal composition, but there are two columns
for “cold roll” and “hot roll” bars, sheets, rods and the
like.21

2). Fay Industries, Inc. of Strongsville OH utilizes the
terminology “hot rolled alloy steels” to describe “heat
treated rounds,” i.e., rounded steel bars meeting ASTM
specifications. The “4140” series includes: “Annealed Hot

21 Applicant’s Response dated January 24, 2013; exhibit A.
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Rolled Alloy Steels,” “Hot Rolled Heat Treated Alloy
Steel,” and “Hot Rolled Annealed Alloy Steel.”22
3). All Metals & Forge Group¸ providing a New Jersey
address, describes itself as a “producer of … seamless
rolled rings….” The website provides a chart “for size
capabilities in various metal alloys.” The term “rolled
alloys” does not appear.23
Applicant asserts that Online Metals and Fay Industries are “frequent
clients” of Applicant’s who would be well aware of Applicant’s mark.24 Applicant
further asserts that by referring to the method by which the metals are heat-
treated, the sub-categories of “hot rolled” or “cold rolled” simply suggest various
properties of the metals (such as ductility and malleability) that derive from the
manufacturing process.
We agree that these examples are not clear evidence of use by the relevant
public of the term “rolled alloys” in a generic manner. Moreover, these webpages
present a case of mixed usage in view of the continuous use, as a mark, of the term
ROLLED ALLOYS by Applicant for nearly 60 years (and in view of the evidence of
trademark recognition by third parties that we discuss more fully below). See
Merrill Lynch, 4 USPQ2d at 1143 (“The mixture of usages unearthed by the NEXIS
computerized retrieval service does not show, by clear evidence, that the financial
community views and uses the term CASH MANAGEMENT ACCOUNT as a
generic, common descriptive term for the brokerage services to which Merrill Lynch
first applied the term”); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107

22 At http://fayindustries.thomasnet.com; attached to July 24, 2012 Office Action.
23 At http://www.steelforge.com; attached to July 24, 2012 Office Action.
24 Nault II, ¶8.
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USPQ2d 1750, 1765 (TTAB 2013) (“However, when considered in conjunction with
the testimony of respondent’s competitors, these uses result in at best a mixed
record of use of the phrase both generically and as part of what appear to be
trademarks or trade names. This ambiguous evidence thus fails to establish that
the primary significance of ANNAPOLIS TOURS to the relevant public is guided
tour services of cities, rather than a guided tour service of cities provided by a
particular entity.”); In re America Online, 77 USPQ2d 1618, 1623 (TTAB 2006) (“the
evidence of generic use is offset by Applicant’s evidence that shows not only a
significant amount of proper trademark use but also trademark recognition [by
third parties]”).
Accordingly, on this record, we find that the Office has not met its burden to
show by clear and convincing evidence that the phrase ROLLED ALLOYS is
generic.
II. Whether the term ROLLED ALLOYS has acquired distinctiveness?
The remaining question before us is whether the term ROLLED ALLOYS is
entitled to registration on the Principal Register under Section 2(f) of the Act, 15
U.S.C. § 1052(f) and 37 CFR § 2.41(b), based on the sufficiency of Applicant’s
showing of acquired distinctiveness. On the Section 2(f) issue, Applicant has the
burden of proving that its designation has acquired distinctiveness. Yamaha, 6
USPQ2d 1001 at 1006 (Applicant established acquired distinctiveness in design); In
re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here
is no doubt that Congress intended that the burden of proof [under Section 2(f)]
should rest upon the Applicant”). The higher the level of descriptiveness, the
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greater need be the proportionate showing of acquired distinctiveness. In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2007); Qualitex
Co. v. Jacobson Prods. Inc., 514 U.S. 159, 163 (1995). “[L]ogically that standard
becomes more difficult as the mark’s descriptiveness increases.” Yamaha, 6
USPQ2d at 1008. “To show that a mark has acquired distinctiveness, an Applicant
must demonstrate that the relevant public understands the primary significance of
the mark as identifying the source of a product or service rather than the product or
service itself.” Steelbuilding, 75 USPQ2d at 1424. Factors to examine include
“copying, advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies (linking the name to a source).”
Id. Of this list, no single factor is determinative, and each of these elements need
not be present.
Applicant argues that its “long-standing, and deep-seated presence in the
specialty metals market”25 evinces not only that the mark ROLLED ALLOYS is not
generic, but that it has acquired distinctiveness. Applicant has been operating since
1953, under the name ROLLED ALLOYS, in a “niche sector of the steel industry as
a processor and distributor of specialty metals.”26 Applicant spent over $2,000,000
in advertising during a five-year period (2008-2013) and exceeded $250 million in
sales over that same period.27 Advertising is placed in trade journals and periodicals
that cater to the specialty metals industry.28 Applicant is an active member of a

25 Applicant’s Appeal Brief at 7.
26 Nault II Decl. ¶2.
27 Nault II, ¶9.
28 Nault II, ¶12, exhibit D.
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number of professional organizations29 and has participated in various trade shows
at which its ROLLED ALLOYS mark is prominently displayed.30 There are “roughly
twenty thousand purchasers and users” of Applicant’s specialty metals,
manufacturers of finished goods made from the “high quality heat, corrosion,
titanium and aerospace alloy specialty products”31 processed by Applicant. Mr.
Nault, Applicant’s Vice President of Finance, estimates that “nearly half” have
placed orders with Applicant.32 Currently, Applicant has a customer base “in excess
of 1,000 companies.”33 Nine of these customers provided declarations stating that
the customer “primarily recognizes ‘Rolled Alloys’ as a premier supplier of high
quality heat and corrosion resistant metals.”34 In addition, one of Applicant’s
suppliers (for 40 years) provided the same statement.35
We have examined all of the circumstances involving Applicant’s use of its
mark to determine its primary significance in relation to the involved goods. We
find that Applicant has shown that its mark ROLLED ALLOYS has acquired
distinctiveness for “specialty metals and metal alloys for further manufacturing by
others.”
Conclusion
The above evidence of record shows that the phrase “rolled alloys” is not
generic. Applicant’s resort to the benefit of Section 2(f) is a concession that the mark

29 Nault II, ¶13.
30 Nault II, ¶9; exhibit C.
31 Nault I, ¶5.
32 Nault II, ¶6.
33 Nault I Decl. ¶7.
34 Submitted with Applicant’s response dated May 22, 2012.
35 Id.
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is merely descriptive. Applicant’s demonstrated sales in the industry, its long-
standing use of the mark, and the recognition expressed by its customers and
supplier establish that the mark has acquired distinctiveness.
Decision: The refusal to register Applicant’s mark ROLLED ALLOYS under
Trademark Act § 2(e)(1) on the ground that the mark is generic, and the refusal to
accept Applicant’s claim of acquired distinctiveness under Section 2(f), are reversed.
The application will proceed to registration under Section 2(f).