Supreme Steel Framing System Association, Inc.

Trademark Trial and Appeal Board

Dec 28, 2012

No. 77859631 (T.T.A.B. Dec. 28, 2012)

Mailed:
December 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Supreme Steel Framing System Association, Inc.
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Serial No. 77859631
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Mark W. Hendricksen of Wells St. John P.S. for Supreme Steel Framing System
Association, Inc.

Gina M. Fink, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
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Before Kuhlke, Shaw, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On October 28, 2009, applicant Supreme Steel Framing System Association,
Inc. filed an application to register on the Principal Register the mark SSFSA
CERTIFIED CODE COMPLIANT, in standard character form, for services
ultimately identified as “Testing, analysis and evaluation of the goods and services
of others for the purposes of certification in the field of the use of cold-formed steel
tracks and steel framing studs,” in Class 42. The date of first use of the mark
anywhere and in commerce was claimed to be at least as early as October 5, 2009.
This Opinion is a
Precedent of the TTAB
Serial No. 77859631
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In response to the examining attorney’s requirement, applicant submitted a
disclaimer of the phrase CERTIFIED CODE COMPLIANT.1
In support of the application, applicant submitted the specimen of use shown
below, described as a “Label applied to certified steel products”:

Applicant also submitted as a substitute specimen a brochure produced by a
licensee, SCAFCO Corp., the most relevant pages of which are reproduced below:

1 We note that the disclaimer was entered with the word “compliant” misspelled as
“complaint.” Because it is clear that both the required and provided disclaimer should be
for the word “compliant,” the Board has corrected the Office records.
Serial No. 77859631
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The examining attorney has refused registration under Sections 1(a)(1) and
45 of the Trademark Act, 15 U.S.C. §§ 1(a)(1), 45, on the “closely related” grounds
that (1) applicant seeks registration of more than one mark, and (2) the mark differs
on the drawing page and specimens of use under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1, 45. Applicant timely appealed, and the appeal has
been fully briefed.
Analysis
We turn first to the examining attorney’s refusal on the basis that the
specimens are unacceptable because, as depicted, applicant is seeking to register
more than one mark. We note at the outset that this case presents some conceptual
complexity because it is applicant’s specimens and not the drawing itself which
form the basis for the final refusal. Nonetheless, we find that the facts here are
directly on point with other cases in which the Board has considered whether an
applicant is seeking to register multiple marks as illustrated by its specimen.
A. Refusal on the Basis that Applicant Seeks To Register Multiple Marks
The Trademark Act and the rules promulgated thereunder permit
registration of only one mark per application. Trademark Act Section (1)(a)(1), 15
U.S.C. § 1051(a)(1); 37 C.F.R. § 2.52; In re Int’l Flavors & Fragrances, Inc., 183 F.3d
1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443,
1445-46 (TTAB 2002). There is no limitation on the number of trademarks that
may appear on a specimen and serve to identify the source of the product. See 1 J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7.6
(4th ed. 2012). However, an applied-for mark combining separate elements is
Serial No. 77859631
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registrable only if it is a single unitary mark engendering a unique and distinct
commercial impression. In re Walker-Home Petroleum, Inc., 229 USPQ 773, 775
(TTAB 1985).
The question presented is whether the specimens of use accurately depict a
single, unitary mark engendering a unique and distinct commercial impression, or
whether the specimens depict two separate marks. See In re Jordan Industries,
Inc., 210 USPQ 158, 159 (TTAB 1980); see also In re Walker-Home Petroleum, 229
USPQ at 775-76. The issue is resolved by comparing the specimens to the drawing,
and our analysis is necessarily subjective. See In re Jordan Industries, 210 USPQ
at 159. The specimens of use presumably show how the average purchaser will
encounter the mark under normal marketing conditions and therefore suggest the
likely perception of the average purchaser to this display of the mark. In re Magic
Muffler Service, Inc., 184 USPQ 125, 126 (TTAB 1974). When “the specimens
disclose that applicant seeks to register two marks in one application, refusal of
registration is proper.” In re Audi NSU Auto Union AG, 197 USPQ 649, 651 (TTAB
1977).
Applicant focuses its arguments on the color label initially submitted as a
specimen (shown below) rather than on the brochure submitted as a substitute
specimen; in any event, both specimens appear to make the same presentation, as
follows:
Serial No. 77859631
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Applicant contends that, although the specimen does depict a composite
mark, it properly shows SSFSA CERTIFIED CODE COMPLIANT – the mark
depicted in the drawing – and gives one commercial impression to the viewer. “The
Applicant submits that as you read the large and similarly sized fonts from left to
right in the English sense, and then downward in the English reading sense, the
specimen shows one single trademark as required, i.e., ‘SSFSA CERTIFIED CODE
COMPLIANT.’” Reply Brief, at 2.
The examining attorney, in contrast, argues that elements of the mark on the
drawing page appear as two separate marks on the specimen, with “SSFSA” in a
different “carrier” from the wording “CERTIFIED CODE COMPLIANT.”
Particularly when considering the color scheme, the examining attorney argues that
SSFSA SUPREME STEEL FRAMING SYSTEM ASSOCIATION is presented in a
separate carrier and could be its own mark, as could CERTIFIED CODE
COMPLIANT.
Serial No. 77859631
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We have carefully considered applicant’s arguments and evidence, but
comparing the specimens to the drawing, we must agree with the examining
attorney. As they are presented on these specimens, “SSFSA” and “CERTIFIED
CODE COMPLIANT” would not be perceived as components of a single unitary
mark, but rather as two separate marks.
The terms “SSFSA” and “CERTIFIED CODE COMPLIANT” as they appear
in the specimens do not engender one distinct commercial impression. SSFSA
SUPREME STEEL FRAMING SYSTEM ASSOCIATION appears horizontally in its
own small box, outlined in black and with a white background, containing a sizable
design element. CERTIFIED CODE COMPLIANT is presented in large type in the
center of the specimen, with “CERTIFIED” and “COMPLIANT” curved inside a gold
circle and “CODE” on a red-bordered white ribbon across the center. The blue-and-
gray design element in the white rectangle, below and encapsulating “SSFSA,” and
the wording “SUPREME STEEL FRAMING SYSTEM ASSOCIATION” intervene
between the two elements “SSFSA” and “CERTIFIED CODE COMPLIANT.”
This spatially separate and distinct manner of presentation of these elements
creates separate commercial impressions for SSFSA and CERTIFIED CODE
COMPLIANT. Based on the manner in which they are depicted in the specimens,
purchasers would be more likely to perceive these two elements as two different
marks – SSFSA SUPREME STEEL FRAMING SYSTEM ASSOCIATION and
design on the one hand, and CERTIFIED CODE COMPLIANT and design on the
other – rather than the single mark shown on the drawing page.
Serial No. 77859631
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Our analysis comports with other cases in which the Board has addressed a
similar question. For example, in Jordan Industries, we affirmed the refusal to
register JORDAN JIF-LOK (stylized), finding that the presentation of the terms in
the following specimen did not make a unitary impression:

Instead, the Board found that
the manner in which “JORDAN” is presented separates
the commercial impression created by that name from the
impression created by “JIF-LOK,” especially when the
latter is seen, as it naturally would be observed by the
average customer, as part of the complete expression
“JIF-LOK ‘MIRACLE’ FASTENER.”
210 USPQ at 159.
The Board reached similar results where specimens did not display unitary
marks in In re Audi NSU Auto Union (refusing registration of AUDI FOX and
design) and In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974) (refusing
registration of the stylized mark MAGIC MUFFLER SERVICE).
On the other hand, BLUE MOUNTAIN KITTY O’S, presented as follows:

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was held to be a unitary, composite mark in New England Fish Co. v. Hervin Co.,
179 USPQ 743, 745 (TTAB 1973), aff’d, 511 F.2d 562, 184 USPQ 817 (C.C.P.A.
1975). The specimens depicted the phrase “BLUE MOUNTAIN” in one typeface
positioned directly above “KITTY O’S” in a different typeface, with both
designations inside a blue rectangular design. Id. “There can be no question from
this showing that ‘BLUE MOUNTAIN’ and ‘KITTY O’S’ are used in such close
relationship to one another as to form a single unitary mark and thereby project a
single commercial impression and thought.” Id.
We find the case at hand to be more analogous to Jordan Industries than
New England Fish. The refusal of registration is affirmed on the basis that
applicant is seeking to register multiple marks, as displayed in its specimen.
B. Refusal on the Basis that the Mark Differs in the Drawing and Specimen
Because we have found that the drawing presents a single composite mark
while the specimen does not, it necessarily follows that the mark on the drawing
differs from the multiple marks on the specimen. We therefore also affirm the
refusal of registration on the ground that applicant’s mark differs in the drawing
and the specimen.
Decision: The refusal to register is affirmed.