James Fallon

Trademark Trial and Appeal Board

Dec 6, 2018

No. 86915495 (T.T.A.B. Dec. 6, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fallon
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Serial No. 86915495
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Morland C. Fischer of Law Offices of Morland C. Fischer,
for James S. Fallon.
Christopher Buongiorno, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Kuczma, Larkin, and Coggins,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
James S. Fallon (“Applicant”) seeks registration on the Principal Register of the
mark MAX-FLOW in standard characters for goods identified (as amended) as “an
oral appliance having an integral frontal air opening used in the mouth and worn
over the teeth of an individual while sleeping to reduce the effects of snoring and
sleep apnea,” in International Class 10.1

1 Application Serial No. 86915495 was filed on February 22, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the
ground that on Applicant’s substitute specimen of use (reproduced below), the mark
fails to function as a trademark for the goods identified in the application.2

2 Applicant claims that this appeal “has facts and issues that are similar to those” in
Applicant’s appeal in Application Serial No. 86882668, and suggests that “for purposes of
efficiency, both appeals could be decided at the same time.” 4 TTABVUE 1. To the extent that
this is a request to consolidate the two appeals, or to decide them in a single opinion, it is
denied. Although the appeal in Serial No. 86882668 nominally includes a failure-to-function
refusal, it involves a different mark appearing on a different specimen for different goods.
Given the fact-intensive nature of specimen refusals, we elect to decide the two appeals in
separate opinions. See generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) Section 1214 (2018) and cases cited therein. See also In re Minerva
Assocs., Inc., 125 USPQ2d 1634, 1636 n.9 (TTAB 2018) (the Board is not bound by
registrability decisions in other cases, including decisions involving the same applicant’s
specimens).
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Applicant and the Examining Attorney have filed briefs. We affirm the refusal to
register.
I. Prosecution History and Record on Appeal
Applicant’s goods were originally identified in his application as a “frontal air
opening breathing feature that is integral to an oral appliance to be used in the mouth
and worn over the teeth of an individual during sleep to reduce the effects of snoring
and sleep apnea.” The identification was amended twice, first to “a frontal air opening
that is an integral component of an oral appliance used in the mouth and worn over
the teeth of an individual during sleep to reduce the effects of snoring and sleep
apnea,”3 and then to the current identification, “an oral appliance having an integral
frontal air opening used in the mouth and worn over the teeth of an individual while
sleeping to reduce the effects of snoring and sleep apnea.”4
Following the latter amendment, the application was published for opposition and
a Notice of Allowance was issued. Applicant subsequently filed a Statement of Use
supported by a specimen that was rejected by the Examining Attorney because it did
not show the entire package for the goods.5 Applicant then filed the substitute
specimen that is at issue in this appeal.6

3 June 2, 2016 Response to Office Action at 1. All citations to the record are to pages in the
Trademark Status & Document Retrieval (“TSDR”) database.
4 June 21, 2016 Examiner’s Amendment at 1.
5 February 27, 2017 Office Action at 1.
6 March 2, 2017 Response to Office Action at 1.
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In his first Office Action rejecting Applicant’s substitute specimen, the Examining
Attorney made of record Applicant’s specimens of use in his Application Serial No.
86915516 to register the mark POSI-LOCK for “a position adjustment ratchet lock
that is an integral component of an oral appliance used in the mouth and worn over
the teeth of an individual during sleep to reduce the effects of snoring and sleep
apnea,” and in his Application Serial No. 86915554 to register the mark THE
PREDICTOR for “an adjustable oral appliance to be used in the mouth and worn over
the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea
and to enable healthcare workers to determine the individual’s acceptance of said oral
appliance and the ideal setting for said oral appliance in the individual’s mouth.”7 In
his final Office Action, the Examining Attorney made of record pages from the TSDR
database regarding Registration Nos. 5183043 and 5187899, into which Application
Serial Nos. 86915516 and 86915554 had respectively matured,8 and pages from the
website at apnearx.com.9
II. Analysis of Specimen Refusal
“An application initially based on Trademark Act Section 1(b) must, upon the
filing of . . . a statement of use under Section 1(d), include one specimen showing the
applied-for mark in use in commerce, on or in connection with those goods or services

7 March 21, 2017 Office Action at 2-3. The Examining Attorney examined these applications
as well, and the specimens are the same in all three applications.
8 September 29, 2017 Final Office Action at 4-7.
9 Id. at 2-3. Apnea Sciences Corporation claims to own the copyright in the webpages. Id. at
3. The relationship between that company and Applicant in unclear, but the webpages show
the product and mark at issue.
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identified in the application . . . .” In re Florists’ Transworld Delivery, Inc., 119
USPQ2d 1056, 1062 (TTAB 2016). “A trademark specimen is a label, tag, or container
for the goods, or a display associated with the goods.” Trademark Rule 2.56(b)(1), 37
C.F.R. § 2.56(b)(1). Applicant submitted a photograph of a package, a “container for
the goods,” as a specimen of use, and the Examining Attorney does not dispute that
the package is an appropriate specimen under Rule 2.56(b)(1). Instead, the
Examining Attorney bases the refusal to register on the manner in which the MAX-
FLOW mark is used on the package, framing the issue on appeal as “whether the
applied-for mark, as used on the specimen of record, functions as a trademark to
indicate the source of an oral appliance.” 6 TTABVUE 4.
For ease of reference in following our summary and analysis of Applicant’s and
the Examining Attorney’s arguments, we reproduce Applicant’s substitute specimen:

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Applicant argues as follows:
There is simply no reason, and indeed the Examining
Attorney has not provided one, why a consumer would not
believe that each of the trademarks THE PREDICTOR®
and MAX-FLOW™ which are printed on the [specimen] so
as to lie adjacent [to] the same image of the applicant’s oral
appliance and above the words “Adjustable Sleep Apnea
Appliance” would not function as trademarks and identify
the applicant as the source of its oral appliance sold within
and pictured on the package. . . . [A]pplicant’s trademark
POSI-LOCK® is printed on the same specimen . . . on which
is also printed each of the applicant’s registered trademark
THE PREDICTOR® and its applied for mark MAX-
FLOW™. . . . POSI-LOCK® is positioned at one side of the
applicant’s oral appliance so as to lie opposite the applied
for mark MAX-FLOW™ which is positioned on the other
side. Although POSI-LOCK® is used to designate an
integral feature (i.e., a position adjustment ratchet lock) of
the applicant’s oral appliance pictured on its package,
Registration No. 5,183,043 . . . was nevertheless issued to
the applicant . . . by the same Examining Attorney. [T]he
applicant maintains that the specimen of record . . . . shows
the applicant’s use in commerce of THE PREDICTOR®,
POSI-LOCK®[,] as well as the applied for mark MAX-
FLOW™ on or in connection with or related to the identical
goods (i.e., an oral appliance) such that all 3 marks function
as trademarks that are equally capable of indicating the
applicant as the source of its goods sold in its package on
which all of the marks are printed.
4 TTABVUE 4-5.
The Examining Attorney responds that the substitute specimen
shows applicant’s proposed mark to the left of a picture of
an oral appliance on the same horizontal plane as the word
“Posi-Lock” that appears on the opposite side. The wording
“Max-Flow” is in the same font as the wording “Posi-Lock.”
Above the picture of the oral appliance is the wording “The
Predictor” in larger text than that of “Max-Flow” and ‘Posi-
Lock.” As positioned on the package, the wording “Max-
Flow” appears immediately next to the opening of the oral
appliance to bring attention to that particular feature of
the appliance. When consumers view this wording on the
Serial No. 86915495
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package, they are more likely to perceive it as highlighting
the opening rather than serving as a source indication for
the oral appliance itself.
6 TTABVUE 5.
The Examining Attorney argues that Applicant’s brief acknowledges that the
applied-for mark “is ‘located on the package so as to lie immediately adjacent [to] the
frontal air opening which is an integral component of the applicant’s oral appliance
that is illustrated at the center of the package,” id. (citing 4 TTABVUE 2-3 (emphasis
supplied by the Examining Attorney)), and that Applicant admitted during
prosecution that the applied-for mark “‘describes a feature of the applicant’s oral
appliance.’” Id. (quoting September 20, 2017 Response to Office Action at 1). The
Examining Attorney also points to a page from the website at apnearx.com, which he
claims “shows the wording in the proposed mark used to identify an opening or
feature of an oral appliance,” id. at 5-6, and argues that Applicant’s registrations of
the marks THE PREDICTOR and POSI-LOCK support the refusal. Id. at 6. He notes
that on the specimen, the “wording ‘Posi-Lock’ appears near a component of the oral
appliance exactly as it appears on the specimen associated with the applied-for mark
on appeal,” such that “neither the word ‘Max-Flow’ nor ‘Posi-Lock’ functions as source
indicators for the oral appliance itself.” Id. at 8.
Neither Applicant nor the Examining Attorney discusses the standard for
determining when an applied-for mark is associated on a specimen with the goods for
which registration is sought. “Implicit in the definition of a trademark is a
requirement that there be a direct association between the mark sought to be
registered and the goods specified in the application, that is, that the mark be used
Serial No. 86915495
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in such a manner that it would be readily perceived as identifying the specified goods
and distinguishing a single source or origin for the goods.” Minerva Assocs., 125
USPQ2d at 1638. Under this standard, we must determine whether the mark MAX-
FLOW on Applicant’s substitute specimen would be readily perceived as identifying
“an oral appliance having an integral frontal air opening used in the mouth and worn
over the teeth of an individual while sleeping to reduce the effects of snoring and
sleep apnea.”
The manner in which Applicant “has employed [his] asserted mark, as evidenced
by the [specimen] of record, must be carefully considered in determining whether the
asserted mark has been used as a trademark with respect to the goods identified in
the application.” Id. at 1636. We “may also consider other evidence bearing on the
question of what impact applicant’s use is likely to have on purchasers and potential
purchasers.” In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992).
Applicant’s substitute specimen displays seven registered or asserted trademarks
and, as noted above, Applicant claims that the marks THE PREDICTOR, POSI-
LOCK, and MAX-FLOW all “function as trademarks that are equally capable of
indicating the applicant as the source of its [oral appliance].” 4 TTABVUE 5. “[I]t is
settled that a product label can bear more than one trademark without diminishing
the identifying function of each portion,” Fort James Operating Co. v. Royal Paper
Converting Inc., 83 USPQ2d 1624, 1629 (TTAB 2007) (internal quotation omitted),
but we must determine what is identified by the applied-for MAX-FLOW mark in the
context of the specimen as a whole.
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The marks ApneaRx® and The Predictor™ appear at the top of the package shown
on the substitute specimen, directly above the picture of the product, in relatively
larger typefaces than those of the other five registered or asserted marks on the
substitute specimen. Given their relative size and placement, the ApneaRx and The
Predictor marks would be perceived as identifying the oral appliance as a whole. This
finding is corroborated by the facts that the mark THE PREDICTOR is now
registered, based on the same specimen, for “an adjustable oral appliance to be used
in the mouth and worn over the teeth of an individual during sleep to reduce the
effects of snoring and sleep apnea and to enable healthcare workers to determine the
individual’s acceptance of said oral appliance and the ideal setting for said oral
appliance in the individual’s mouth,” and that pages from the website at apnearx.com
(depicted below) use the registered ApneaRx mark to refer to the entire appliance
when they state, among other things, that “APNEARX is specially designed for
comfort,” that the “ApneaRx is specifically designed to treat mild to moderate sleep
apnea, and is the only boil and bite device that comes in two sizes, Standard and
Small, and is easily adjustable by 1mm increments,” and that the “ApneaRx is
available for purchase online or at your local pharmacy or drug store, including
Lawtons, London Drugs, Rexall and Shopper Drug Mart.”10

10 September 29, 2017 Final Office Action at 2-3.
Serial No. 86915495
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The Max-Flow™ and Posi-Lock™ marks appear in the middle of the substitute
specimen in typeface that is smaller than those of the ApneaRx and The Predictor
marks.11 As Applicant puts it, “POSI-LOCK® is positioned at one side of the
applicant’s oral appliance so as to lie opposite the applied for mark MAX-FLOW™

11 The marks Micro Adjust®, Flex Jaw™, and Micro-Fit® appear horizontally at the bottom
of the package in typeface that appears to be the same size as that used for the Max-Flow
and Posi-Lock marks.
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which is positioned on the other side.” 4 TTABVUE 4. The MAX-FLOW mark is
directly adjacent to the front opening of the appliance.
Given the relative size and placement of the Max-Flow and Posi-Lock marks, the
nature of the marks, and the presence of the ApneaRx and The Predictor marks at
the top of the package, the Max-Flow mark would be perceived as identifying some
feature of the appliance, rather than the appliance itself. This finding is corroborated
by the facts that POSI-LOCK is now registered, based on the same specimen, for “a
position adjustment ratchet lock that is an integral component of an oral appliance
used in the mouth and worn over the teeth of an individual during sleep to reduce the
effects of snoring and sleep apnea,” and that the website at apnearx.com displays the
MAX-FLOW and POSI-LOCK marks in connection with the appliance as follows:
12
Like its counterpart POSI-LOCK, the MAX-FLOW mark is used on this page to refer
to a feature of the oral appliance that is located at the front of the device, near where
the applied-for mark appears on the substitute specimen.13

12 September 29, 2017 Final Office Action at 2.
13 The Micro-Fit® mark that appears at the bottom of the substitute specimen is also
associated on this page with a feature of the appliance.
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We find that when the applied-for MAX-FLOW mark is considered in the context
of Applicant’s substitute specimen as a whole, and against the backdrop of Applicant’s
use and registration of the other marks that appear on the substitute specimen, the
MAX-FLOW mark would be perceived as identifying a feature of the oral appliance,
rather than the oral appliance itself. Applicant’s substitute specimen thus does not
show use of the applied-for mark in connection with the goods identified in the
application.
Decision: The refusal to register is affirmed.