Monday, January 14, 2013

Precedential No. 41: TTAB Affirms SSFA CERTIFIED CODE COMPLIANT Refusal - Specimens Show Two Marks, Drawing One

In a rather straightforward, yet precedential decision. the Board affirmed two refusals to register the mark SSFSA CERTIFIED CODE COMPLIANT, in standard character form, for "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" [CERTIFIED CODE COMPLIANT disclaimed]. It agreed with examining Attorney Gina M. Fink that (1) applicant "is seeking to register multiple marks, as displayed in its specimens," and (2) applicant’s mark differs in the drawing and the specimen," both in violation of Sections 1 and 45 of the Trademark Act. In re Supreme Steel Framing System Association, Inc., 105 U.S.P.Q.2d 1385 (TTAB 2012) [precedential].

Specimen of Use

Multiple Marks: The Board observed that the Trademark Act and the Trademark Rules permit registration of only one mark per application. "However, an applied-for mark combining separate elements is registrable only if it is a single unitary mark engendering a unique and distinct commercial impression."

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.

To resolve the issue, the Board must compare the specimens with the drawing and make a necessarily subjective determination. The Board concluded that, "[a]s 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} 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.

The Board therefore affirmed this refusal.

Difference between the Drawing and Specimen: Having found that the drawing presents a single composite mark while the specimen does not, the Board perforce concluded that "the mark on the drawing differs from the multiple marks on the specimen." And so the Board affirmed this second refusal as well.

Read comments and post your comment here:

TTABlog comment: I don't understand the first refusal. It seems to me that Applicant is seeking to register only one mark. Unfortunately, its specimens of use don't "match" the drawing. IMHO, the second refusal is all that is needed.

Text Copyright John L. Welch 2013.


At 7:51 PM, Anonymous Anonymous said...

I agree. The mark as applied for was SSFSA CERTIFIED CODE COMPLIANT. That is one mark.

The specimen did not match because it showed two different marks. There Board says there was some "conceptual complexity" in this case. Really? Where?

Applicant had two EASY alternatives. 1) Refile for SSFSA alone and a separate application for CERTIFIED CODE COMPLIANT with the design or 2) Get a proper specimen of use that matches the mark as filed.

Either one would be easier than an appeal.

I just don't understand why someone would spend time on money on this when the alternatives are better and cheaper and right.


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