Standard Water Control Systems, Inc.

Trademark Trial and Appeal Board

Mar 30, 2005

No. 78165757 (T.T.A.B. Mar. 30, 2005)

Mailed:
30 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Standard Water Control Systems, Inc.
________

Serial Nos. 78165757 and 78165762
_______

Garrett M. Weber of Lindquist & Vennum P.L.L.P. for
Standard Water Control Systems, Inc.

Karla Perkins, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______

Before Hairston, Chapman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 19, 2002, Standard Water Control Systems,
Inc. (applicant) applied to register two marks in typed
form on the Principal Register, SEAMLESS DISCHARGE SYSTEM
(Serial No. 78165757) and SUPERIOR SUMP SYSTEM (Serial No.
78165762). Both applications were based on applicant’s
bona fide intention to use the marks in commerce and the
services were identified as “installing, maintaining, and
repairing foundation drainage systems of basement floors,
and sump pumps” in Class 37.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. Nos. 78165757 and 78165762

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After the examining attorney initially refused
registration on the ground that the marks were merely
descriptive under Section 2(e)(1) (15 U.S.C. § 1052(e)(1)),
applicant filed statements of use alleging April 19, 2003,
as its date of first use anywhere and in commerce. Along
with these amendments, applicant amended its applications
to seek registration on the Supplemental Register and it
disclaimed the words “Discharge System” in the ‘757
application and “Sump System” in the ‘762 application.
As a result of applicant’s submission of specimens
with its statements of use, the examining attorney made a
new refusal, i.e., that the marks are not eligible for
registration because the subject matter presented for
registration does not function as a mark under Sections 1,
3, and 45 of the Trademark Act. 15 U.S.C. §§ 1051, 1053,
and 1127. Despite the amendment to the Supplemental
Register, the examining attorney has cited the statutory
sections 1, 3 and, 45 as a bar to registration. Applicant
traversed the refusal, and argues that the terms function
as marks and, as a result, this appeal followed.
In a similar case involving a mark for registration on
the Supplemental Register that is refused registration on
the ground that it did not function as a mark, the board
observed that the “Examining Attorney, we believe
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incorrectly, cited (and continued to cite) the statutory
sections 1, 2, 3, and 45… Because the instant mark is now
sought to be registered on the Supplemental Register, the
appropriate refusal is Section 23 of the Act, 15 U.S.C.
§ 1191.” In re Eilberg, 49 USPQ2d 1955, 1956 n.2 (TTAB
1998). Accord TMEP § 1202 (3rd ed. 2003)(“The statutory
basis for refusal of registration on the Supplemental
Register of matter that does not function as a trademark
because it does not fit within the statutory definition of
a trademark is §§ 23 and 45, 15 U.S.C. §§ 1091 and 1127”).
As we understand the refusal in this case, it involves the
ability of the mark as presented on the specimens to
identify applicant’s services and not whether the mark
intrinsically is able to function as a mark. Therefore,
the refusal is not based on applicant’s term being generic
or informational matter that could never acquire trademark
status.1 Thus, the ultimate issue is the same regardless of
whether applicant’s term was an arbitrary term for
registration on the Principal Register or, as in this case,
a descriptive term for registration on the Supplemental
Register. The refusal is based on the failure of the
applied-for terms, as used on the specimens, to identify

1 The amendment to the Supplement Register overcame the examining
attorney’s descriptiveness refusal.
Ser. Nos. 78165757 and 78165762

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applicant’s services. Indeed, the examining attorney
“found the substitute [along with the original] specimen
unacceptable.” Brief at 3. Because, under the facts of
this case, the examining attorney’s and applicant’s
arguments and evidence are equally applicable to a refusal
on the Principal or Supplemental Registers, we proceed to
the merits of the case. Also, inasmuch as the facts and
issues in both applications are similar, we have chosen to
issue one opinion that discusses both applications.2
“The question whether the subject matter of an
application for registration functions as a mark is
determined by examining the specimens along with any other
relevant material submitted by applicant during prosecution
of the application.” In re The Signal Companies, Inc., 228
USPQ 956, 957 (TTAB 1986).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.

In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216
(CCPA 1976) (emphasis in original, footnote omitted).

2 A copy of the opinion will be placed in both files.
Ser. Nos. 78165757 and 78165762

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Registering a mark on the Supplemental Register is an
admission that the mark is merely descriptive. In re
Consolidated Foods Corp., 200 USPQ 477, 478 n.2 (TTAB 1978)
(“Registration of the same mark on the Supplemental
register is not prima facie evidence of distinctiveness; in
fact, such a registration is an admission of
descriptiveness”). See also Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972). However, even on the Supplemental Register,
it is necessary that a term as used on the specimens be
capable of functioning as a trademark or service mark for
the identified goods or services. In re Helena Rubinstein,
Inc. 419 F.2d 438, 161 USPQ 606, 608 (CCPA 1969) (A term
“cannot be registered as a trademark, even on the
Supplemental Register, unless it is intended primarily to
indicate the origin of the goods and is of such a nature
that the ordinary purchaser would be likely to consider
that it indicated such origin”)(italics added).
Therefore, we will look at applicant’s specimens
because they are critical in determining whether the terms
for which applicant seeks registration are capable of
functioning as service marks for applicant’s services of
installing, maintaining and repairing foundation drainage
systems of basement floors and sump pumps. Applicant has
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submitted the same specimens in both cases so we will
discuss the display of the terms together.
Applicant’s first specimen, an Internet page of
applicant, begins with the title “Standard Water Offers a
Superior Solution.” The text then continues:
Our system design and installation reflects our
commitment to provide your home with protection
against water seepage problems both now and into the
distant future. We allow for unpredictable changes in
water saturation and sediment infiltration that can
occur as a foundation ages. The Standard Water
solution includes:

A. Drain Holes …
B. Cove Plate …
C. Washed Rock used under and around drain tile as a
drainage medium and filter envelope.
D. Rigid PVC Drainage Pipe - large holes allow fast,
efficient drainage and virtually eliminate
clogging. Rigid pipe remains at a continuous
descending slope to sump basin.
E. A Plastic Moisture Barrier placed between the
system and the newly finished concrete floor.
F. Superior Sump SystemSM that is the finest quality
available and meets or exceeds all state code
requirements. The system includes a high quality
structural grade sump basin with a bolted down
steel cover for controlled access and safety,
along with a premium grade, totally automatic
submersible pump with check valve and high water
alarm.
G. Seamless Discharge SystemSM is designed not to
crack, break, or leak and be virtually
indestructible.

The specimen includes a drawing of a basement with the
system installed and the letters in the text above relate
to where the various items would be found in the drawing.
Ser. Nos. 78165757 and 78165762

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The other specimen of record is a standard form
contract. On the right side of the contract are a series
of eleven boxes that can be checked to become part of the
contract, which are followed by four boxes with blank
lines. The eleven specific boxes include:
Rigid PVC Drainage pipe descending grade to basin __
ft.

Washed rock drainage filter medium to envelope
draintile/basin

7/8” drainage hole drilled in all main and joining
cavities

Extruded PVC cove plate and drainage system on footing
__ ft.

Poly sheeting moisture barrier between draintile
system and new cement

Remove existing concrete floor and place new concrete

New concrete may bevel, slope up towards wall

Removal of all concrete and other debris from job site

Superior Sump SystemSM
Includes: High quality structural grade sump
basin with bolted down steel cover. Premium
grade totally automatic submersible pump with
check valve. High water alarm.

1¼” Seamless Discharge SystemSM

Finished walls may need trimming

“The Trademark Act is not an act to register mere
words, but rather to register trademarks. Before there can
be registration, there must be a trademark, and unless
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words have been so used they cannot qualify.” Bose Corp.,
192 USPQ at 215. Furthermore, cases involving whether
marks would be perceived as functioning as trademarks on
the Principal Register “are pertinent here [to cases
involving the Supplemental Register] so far as they relate
to whether the appearance of an article may constitute a
trademark, and whether it indicates origin.” In re Bourns,
252 F.2d 582, 117 USPQ 38, 39-40 (CCPA 1958).
The CCPA has noted that:
The requirement that a mark must be "used in the sale
or advertising of services" to be registered as a
service mark is clear and specific. We think it is
not met by evidence which only shows use of the mark
as the name of a process and that the company is in
the business of rendering services generally, even
though the advertising of the services appears in the
same brochure in which the name of the process is
used. The minimum requirement is some direct
association between the offer of services and the mark
sought to be registered therefor.

In re Universal Oil Products Co., 476 F.2d 653, 177
USPQ 456, 457 (CCPA 1973) (emphasis omitted).
In two cases involving passenger air transportation
services, this direct connection was missing even though
the terms SKY-ROOM and SKYLOUNGER were used on the
specimens. In re Compagnie Nationale Air France, 265 F.2d
938, 121 USPQ 460, 461 (CCPA 1959) (“Nothing in the
advertisement pertaining to the ‘SKY-ROOM’ identifies the
air transportation service of appellant and there is no
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other evidence which reveals that the public considers
‘SKY-ROOM’ as an identifying mark of this airline”) and In
re British Caledonian Airways Limited, 218 USPQ 737, 738-39
(TTAB 1983) (“It is clear from the specimens that the term
SKYLOUNGER makes reference, in three out of four instances,
to the reclining seats used in a section of applicant's
aircraft. While there is no noun accompanying the term
SKYLOUNGER in the initial and most prominent use, it is
clear from the context that it is also being used there to
identify applicant's seats.”).
On the specimens in this case, both of applicant’s
terms SEAMLESS DISCHARGE SYSTEM and SUPERIOR SUMP SYSTEM
refer to something specific. The pump system is described
as “the finest quality available and meets or exceeds all
state code requirements. The system includes a high
quality structural grade sump basin with a bolted down
steel cover for controlled access and safety, along with a
premium grade, totally automatic submersible pump with
check valve and high water alarm.” The description in the
specimen is referring to a system and not the service of
installing the system. The disposal system is listed as a
1¼” system and it is designed not to crack, break, or leak
and be virtually indestructible. These descriptions are of
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a physical item and not of a service of installing drainage
systems.
Applicant argues that it is installing products
manufactured by others, therefore applicant maintains that
it is performing a service. To the extent that applicant
is performing a service, it would have to use its terms as
proper service marks to identify these services on the
specimens. In re Johnson Controls Inc., 33 USPQ2d 1318,
1320 (TTAB 1994) (“[T]he labels submitted as specimens with
this application do not show use of the mark sought to be
registered as a service mark for the custom manufacture of
valves. If the application sought registration as a
trademark for these fluid control products, these specimens
would clearly be satisfactory, but that is not the issue
here); Peopleware Systems, Inc. v. Peopleware, Inc., 226
USPQ 320, 323 (TTAB 1985) (“No direct association is
demonstrated by the insignificant use of ‘Peopleware’ in
the sentence at the bottom of the card. Exactly what is
intended by the term in that sentence is unclear, but in
any case its use in the sense of an adjective modifying
‘emphasis’ does not, in our opinion, associate it with the
services Haelsig advertised in a manner which approaches
the level of service mark use.”). See also In re Adair, 45
USPQ2d 1211 (TTAB 1997) (Mark TREE ARTS CO. and design may
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function as a mark for goods but specimen did not show the
term used as a mark for the service of designing
permanently decorated Christmas trees).
We also note that both terms include the word
“system,” which suggests that applicant is providing goods
and not services. Furthermore, while applicant argues that
its contract lists the things to be installed, the eleven
items listed do not show service mark usage for those
items. Applicant’s original specimen listed seven items:
Drain Holes, Cove Plate, Washed Rock, Rigid PVC Drainage
Pipe, A Plastic Moisture Barrier, Superior Sump System, and
Seamless Discharge System. The contract lists a slightly
longer list of things “To be installed and/or performed.”
Simply including a term in a list of items to be performed
under a contract does not establish that the items are
services and not goods. For example, advertising for oil
change services that identifies a list of items included
with the service, e.g., “BRAND X Oil” and “BRAND X Oil
Filters” does not, by itself, demonstrate that BRAND X is a
service mark for oil change services. When prospective
purchasers encounter the terms “Superior Sump System” and
“Seamless Discharge System,” they are not likely to see
these terms as service marks for the installation services.
Just as the terms SKY-ROOM and SKYLOUNGER were held to not
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function as service marks for the air transportation of
passengers services, so applicant’s terms as used on its
specimens are not capable of functioning as service marks
to identify its services.
Merely because an applicant’s term appears on
specimens for the goods or services does not mean that the
term itself is used as a trademark or service mark or that
purchasers would perceive the term as a mark. Bose, 192
USPQ at 216 (SYNCOM used on instruction sheets did not
function as a trademark for loudspeaker systems. “[I]t is
quite apparent that, in the specimens of record, only
INTERAUDIO identifies the loudspeaker systems for high-
fidelity music reproduction as originating with appellant
and distinguishes such goods from those manufactured and
sold by others. The mark SYNCOM merely relates to a
speaker-testing computer.”). See also In re Moody’s
Investors Service, Inc., 13 USPQ2d 2043, 2049 (TTAB 1989):
That is, the significance of the symbols, as they are
used in the specimens, is that of rating symbols
(i.e., indications of applicant's opinion of the
investment quality of debt instruments), not service
marks. While it is not inconceivable that a
particular designation could be used, and therefore
function, both as a rating symbol and as a trademark
or service mark, applicant's designation "Aaa" is not
so used in the specimens of record.3

3 The board indicated that it was “inclined to agree” with the
examining attorney’s point that the designations appear to be
registrable as certification marks. 13 USPQ2d at 2043 n.5.
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We also note that applicant has used the service mark
symbol along with the terms for which it seeks
registration. The use of the use of the letters "TM" or
“SM” does not by itself convert a term that does not
function as a trademark or service mark on the specimens
into one that does. British Caledonian Airways, 218 USPQ
at 739; In re Caserta, 46 USPQ2d 1088, 1090 (TTAB 1998).
When we view the terms SEAMLESS DISCHARGE SYSTEM and
SUPERIOR SUMP SYSTEM, as they are used on applicant’s
specimens of record, they are not capable of functioning as
marks that identify the source of applicant’s installation,
repair, and maintenance of drainage systems and sump pumps
services.
Decision: The refusal to register is affirmed in both
applications.