Thursday, May 05, 2005

TTAB Reverses Mutilation Refusal of Ciba's "RECYCLOSSORB" Mark

Although its specimen of use (shown below) displays the term "RECYCLOSSORB ® 550", Ciba Specialty Chemicals persuaded the Board that the specimen supported its application to register the word RECYCLOSSORB by itself. In re Ciba Specialty Chemical Corp., Serial No. 76438403 (April 25, 2005) [not citable].

Ciba sought to register RECYCLOSSORB for "chemicals, namely, light stabilizers for use in the manufacture of outdoor articles, namely, plastic, lumber, crates, drums and the like." It stated that "The numbers following the mark are not part of the mark as shown." The Examining Attorney inquired as to whether the number 550 is "merely a grade designation or model number," and requested Ciba to submit evidence showing use of RECYCLOSSORB "with other similar notations." Ciba responded that this is the first product in the RECYCLOSSORB line, and thus no other specimens were available. [As to the PTO's treatment of grade and model designations, see TMEP Section 1202.10 (4th edition)].

The Examining Attorney then required Ciba to submit a substitute specimen showing use of RECYCLOSSORB alone. Ciba had no such specimen. It argued that "550" is not being used in a trademark sense, and that "use of numbers (or letters) as a composition description is a 'standard practice of the industry.'" Ciba supplied screen prints from its own website and from third-party websites to show industry practice.

The Examining Attorney made final his refusal, asserting that the mark RECYCLOSSORB is not a "substantially exact reproduction" of the mark shown on the specimen, as required by Rule 2.51(a).

The Board sided with Ciba:

"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."

The Board also noted that Ciba "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 the other hand, offers only speculation that applicant will not use the mark RECYCLOSSORB for a line of products."

The Board concluded that "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."

mutilated photo from Ciba website?

TTABlog comment: The Board ignored the ® symbol that improperly appears on the specimen. The Examining Attorney pointed out in a footnote in his Statement on appeal that use of the symbol was improper. See TMEP Section 906 (4th ed.).

Text ©John L. Welch 2005. All Rights Reserved.


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