Markimex, Inc.

Trademark Trial and Appeal Board

Aug 8, 2018

No. 87127555 (T.T.A.B. Aug. 8, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 8, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Markimex, Inc.
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Serial No. 87127555
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Amanda V. Dwight of Dwight Law Group,
for Markimex, Inc.
Giselle Agosto-Hincapie, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Kuhlke, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Markimex, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark ULTRAFAUCETS (in standard characters) for
Retail store services featuring kitchen and lavatory
fixtures, faucets, shower systems, bathroom accessories,
plumbing fixtures, and parts and fittings therefor, in
International Class 35.1

1 Application Serial No. 87127555 was filed on August 4, 2016, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as January, 2000. The
application also identifies goods in International Classes 11 and 21 that are not the subject
of this appeal.
Serial No. 87127555
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The Examining Attorney has issued a final refusal of registration under Sections
1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the
specimens do not show use of the mark in connection with Applicant’s identified
services.
I. Background
Applicant initially based the application on an allegation of use of the mark in
commerce, and submitted a specimen which it describes as “promotional material.”
The supporting specimen, reproduced below, shows the mark displayed at the top left
side of the web page, separate from the website navigation tabs and product links,
and well above a large photograph of a sink and faucet with running water and
superimposed wording “RELIABILITY QUALITY INNOVATION,” which appears in
large letters above the wording “Supplying plumbing products in the U.S. market for
over 20 years.” in smaller letters. The website navigation tabs “Who We Are,” “What
We Do,” “Why Choose Us,” “Mission Statement,” “FAQs” and “Contact” direct
consumers to information about Applicant, and the dropdown menus directly below
the navigation tabs include links to “New Products,” “Kitchen,” “Bathroom,” “RV &
MH” and “Collection”:
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m

The Trademark Examining Attorney refused registration of Applicant’s mark
under Sections 1 and 45 of the Trademark Act, on the ground that the specimen does
not show a direct association between the mark and the identified retail store
services. The Examining Attorney states that
the specimen shows a print-out from applicant’s website.
There are no links to shopping cart buttons or buy now
buttons. There are no references to the retail sale of kitchen
and lavatory fixtures, faucets, shower systems, bathroom
accessories, plumbing fixtures. There is no association
between the mark and retail store services. Moreover, even
if the print-out did show some reference to retail store
services, the identification fails to specify “online retail
store services.”2

2 November 18, 2016 Office Action.
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In response, Applicant amended the filing basis of the application from Section
1(a) to Section 1(b), 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark
in commerce for the Class 35 services only.3 After a notice of allowance issued,
Applicant filed a statement of use with a specimen, reproduced below, that Applicant
describes as a store sign.4 The specimen shows the mark on square tiles above a bath
tub and faucet with the wording “LIMITED LIFETIME WARRANTY” superimposed
on the bathtub, in the lower right corner of the specimen:

The Examining Attorney again refused registration under Sections 1 and 45 of the
Trademark Act, on the ground that the specimen, which she describes as “a

3 April 27, 2017 Response to Office Action.
4 August 11, 2017.
Serial No. 87127555
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photograph of a bath tub with the mark ULTRAFAUCETS,” does not show a direct
association between the mark and the identified retail store services.5
In response, Applicant explained that “the specimen submitted is not a
photograph of a bathtub. Rather, it is a business signage hung at the entrance of
Applicant’s retail store. The sign was placed on the ground to be photographed. …
[S]ignage display at a store (e.g., a photograph of the display) are acceptable
specimens….”6
In her Final Office Action, the Examining Attorney maintains that the business
signage submitted as a specimen does not show how the signage appears in the store.
She asserts that due to the lack of context, the signage may be presumed to advertise
bath tubs rather than retail store services. According to the Examining Attorney,
Simply identifying the specimen as business signage does
not eliminate the analysis of how the mark is used in the
rendering of the services. For example, signs used in a store
may serve the purpose of referring to or advertising a
particular product, and not serve the purpose of creating
an association between the mark and Class 35 retail
services.7
Applicant appealed and filed a Request for Reconsideration with a substitute
specimen, reproduced below.8 Applicant describes the substitute specimen as
“signage in applicant’s showroom; displayed in connection with products available for

5 September 8, 2017 Office Action.
6 September 8, 2017 Response to Office Action.
7 October 10, 2017 Office Action.
8 January 12, 2018 Request for Reconsideration. The accompanying declaration signed by
Applicant’s counsel attests to the timeliness of the substitute specimen.
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purchase.” The substitute specimen is a photograph of the same signage that
Applicant had submitted with its statement of use, amid several bathroom and
kitchen plumbing fixtures affixed to what appears to be a wall:

The Examining Attorney denied the Request for Reconsideration, again
contending that “[t]here is no association between the submitted specimen and Class
35 retail store services.” The Examining Attorney maintains that the substitute
specimen “clearly shows what appears to be an in-store display of the identified [Class
11 and 21] goods, showing the mark as the manufacturer of the products illustrated,
and does not show the mark as identifying retail store services.”9
The appeal was resumed and is now fully briefed. We reverse.

9 January 22, 2018 Denial of Request for Reconsideration.
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II. Applicable Law
Under Section 45 of the Trademark Act, a service mark is used in commerce “when
it is used or displayed in the sale or advertising of services.” See also Trademark Rule
2.56(b)(2), 37 C.F.R. § 2.56(b)(2) (“A service mark specimen must show the mark as
used in the sale or advertising of the services.”). Use of a service mark may be
established by: (1) showing the mark used or displayed as a service mark in the sale
of the services, which includes in the course of rendering or performing the services,
or (2) showing the mark used or displayed as a service mark in advertising the
services, which encompasses marketing and promotional materials. In re WAY
Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016); see also In re ICE Futures U.S.
Inc., 85 USPQ2d 1664, 1669 (TTAB 2008) (noting that use in the rendition of services
is an element of the “sale” of services under Section 45 of the Trademark Act); In re
Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (explaining that an
acceptable specimen need not explicitly refer to the services if it “show[s] use of the
mark in the rendering, i.e., sale, of the services”); In re Red Robin Enters., 222 USPQ
911, 914 (TTAB 1984) (stating that “rendition” of services is properly viewed as an
element of the “sale” of services).
An acceptable specimen must display use of the mark in a manner such that
potential purchasers would perceive “some direct association between the offer of
services and the mark sought to be registered therefor.” In re Universal Oil Prods.
Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); WAY Media, 118 USPQ2d at
1698. Specimens showing the mark used in rendering the identified services need not
Serial No. 87127555
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explicitly refer to those services, but “there must be something which creates in the
mind of the purchaser an association between the mark and the service activity.” In
re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). Whether a mark
sought to be registered as a service mark has been used “to identify” the services
identified in the application is a question of fact to be determined on the basis of the
specimens submitted by the applicant, together with any other evidence of record. In
re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997).
III. Analysis
The original specimen, submitted with the application, displays the mark in a
manner that appears consistent with an illustration of a macys.com webpage in
Section 904.03(i)(B)(2) of the Trademark Manual of Examining Procedure (“TMEP”)
(October 2017) (“Placement of Mark and Proximity to the Goods”). The macys.com
webpage was provided as an example of a specimen that is unacceptable for goods,
but acceptable for electronic retail department-store services:
Placement in a Location Typical for a Retail-Store
Service Mark. A mark may be displayed at the top of a
web page, separated from the relevant goods by the website
navigation tabs, which may direct consumers to
information about the goods, the applicant, and the
website. Since it is customary for retailers to place their
store marks in this location, such use of the applied-for
mark is likely to be recognized as an online retail-store
service mark, as shown in [the following example:]
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Likewise, TMEP § 1301.04(j) points to the following webpage as an example of a
specimen that is not acceptable for goods including toner cartridges and printer parts;
however, “had the mark been used in connection with retail store or distributorship
services, the specimen would likely have been acceptable due to the placement of the
mark on the upper left corner of the webpage where service marks normally
appear.”10

10 This specimen was discussed in In re Supply Guys Inc., 86 USPQ2d 1488, 1495 (TTAB
2008), where the Board found that applicant’s mark LEADING EDGE TONERS did not
identify the goods specified in the application, which included toner and printer cartridges.
“Rather, the uses point to the fact that Leading Edge Toner is a retail/distributor of toner
and similar products of others.”
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Applicant’s original specimen displays the mark in a manner that fits within the
guidelines set forth in the TMEP for webpage specimens that would be acceptable to
support use of a mark in rendering retail store services, whether online/electronic or
brick-and-mortar: the original specimen displays the mark in the upper left corner of
the webpage, separate from the navigation tabs and a photograph of a sink and
faucet, it includes navigation tabs directing customers to information about
Applicant, and it includes a tagline which states that Applicant has been “[s]upplying
plumbing products in the U.S. market for over 20 years.” Although the wording “retail
store services” is not included, that is not required, as the reference to “supplying
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plumbing products” would include “retail store services” featuring plumbing products
of the type identified in the application. We find, therefore, that Applicant’s original
specimen is acceptable to show use of the mark in the course of rendering or
performing the identified “retail store services featuring kitchen and lavatory
fixtures, faucets, shower systems, bathroom accessories, plumbing fixtures, and parts
and fittings therefor.”
We also find acceptable Applicant’s substitute specimen, submitted with
Applicant’s Request for Reconsideration. As discussed above, Applicant describes the
substitute specimen as “signage in applicant’s showroom; displayed in connection
with products available for purchase.” The substitute specimen consists of a
photograph of a sign bearing Applicant’s mark in the middle of a wall on which
bathroom and kitchen fixtures are affixed. Unlike some service mark specimens that
have been found unacceptable because the nature of the service was not obvious from
the specimen, see, e.g., In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (mark used on
return address label on boxes mailed to customers does not show a connection
between the mark and the service of contract processing of metals), this substitute
specimen shows use of the mark in the context of the rendering of the services, i.e.,
amidst the goods being offered for sale in Applicant’s store. See, e.g., In re Int’l
Christian Broad., Inc., Serial No. 85058128, 2012 WL 1267949 (TTAB 2012) (“a mark
can function as a mark for retail store services if it identifies a section of a store even
if a different name is used for the store as a whole; retail store services can be
rendered in a portion of a larger store and still constitute retail store services.
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Therefore, a mark that indicates origin in a portion of a store is still a mark used in
rendering retail store services, and a specimen showing use of a mark for a section of
a store can be an acceptable specimen. Thus, the fact that applicant’s specimen does
not show signage for an entire store does not mean that the specimen is
unacceptable.”).11 See also TMEP § 1301.04(f)(ii).
The Examining Attorney focuses her arguments on the purported lack of direct
association between the mark shown on the specimens and the identified retail store
services. As explained above, we find there is sufficient association with the identified
retail store services in the original specimen, and the substitute specimen is seen in
the context of rendering Applicant’s retail store services.12 See Metriplex, 23 USPQ2d
at 1316-17 (a specimen that “show[s] use of the mark in the rendering, i.e., sale, of
the services” is acceptable even if it does not explicitly refer to the services).
Decision: The refusal to register Applicant’s mark ULTRAFAUCETS is reversed.

11 Both Applicant and the Examining Attorney cited this case in support of their positions
although it is has not been designated as a precedent of the Board. The decision thus is
instructive, but not binding. See In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427 n.6
(TTAB 2014) (“Although parties may cite to non-precedential decisions, the Board does not
encourage the practice.”).
12 In addition, we note Applicant’s additional specimens (screenshots and an invoice) and the
declaration of Tiffany Tang, Applicant’s manager, which Applicant submitted with its reply
brief. Although we cannot consider these materials, see Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d), we believe the declaration would have provided additional support for our finding
concerning the substitute specimen, and the additional specimens also would have been
acceptable to show use of the mark in the rendering of the identified retail store services.
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Dissent By:
Bergsman, J., dissenting.
I agree with the majority that a mark can identify and distinguish retail store
services if it identifies a section of a store, but I dissent from the holding that the
specimens show use the mark ULTRAFAUCETS to identify retail store services.
With respect to the original specimen comprising a screen shot of Applicant’s
homepage, there is nothing that indicates that the website is interactive and allows
viewers to purchase products or that ULTRAFAUCETS is used in association with
retail store services. The majority goes too far when they interpret the statement
“Supplying plumbing products in the U.S. market for over 20 years” as possibly
meaning “‘retail store services’ featuring plumbing products.” In the context of the
website, appearing under the words “Innovation” and “Reliability,” that statement is
simply an advertising tagline touting Applicant’s character.
Moreover, Applicant’s webpage is not similar to the illustrative webpages cited in
the TMEP. The Macy’s webpage is recognized as retail store service because it
features links to different types of products, site promotions offering savings, and a
link to an express checkout function. None of those features are displayed on
Applicant’s website. Likewise, the LEADING EDGE TONER website advertises the
sale of toners including an “add to cart function,” which does not appear on
Applicant’s website. ULTRAFAUCETS as displayed on Applicant’s website identifies
Applicant’s products, not retail store services.
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The specimen comprising a photograph of an ULTRAFAUCET sign mounted amid
an ULTRA faucet product display shows ULTRAFAUCET identifying and
distinguishing faucets, not retail store services. Again, the majority goes too far
holding that the substitute specimen is acceptable because it is used in the rendering
of retail store services selling faucets. As pointed out in Int’l Christian Broad., Inc.,
“[t]he question, as with most cases involving specimens, is how the mark as shown in
the specimens would be perceived by consumers.” 2012 WL 1267949 *4. The
ULTRAFAUCETS sign in the middle of a display of ULTRA faucets serves to identify
and distinguish ULTRA faucets from the faucets of other manufacturers. While the
ULTRAFAUCETS sign in the middle of a display of ULTRA faucets may be in a retail
store, that sign, in that context, does not identify a retail store service. Unlike the
situation in Int’l Christian Broad., Inc., where the Board could see that the goods
being sold displayed different marks, in this case, the specimen shows that the
faucets being sold are ULTRA brand.13 Id.
Accordingly, I would hold that the specimens do not show use of the mark
ULTRAFAUCETS as a service mark for retail store services and I would affirm the
refusal to register.

13 If the ULTRA faucets being sold are not Applicant’s faucets, then Applicant has a bigger
problem than its inability to submit an acceptable specimen.