Systemax Inc.

Trademark Trial and Appeal Board

Sep 23, 2020

88150991 (T.T.A.B. Sep. 23, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Systemax Inc.
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Serial Nos. 88150991 and 88151072

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Michael F. Sarney of Moritt Hock & Hamroff LLP,
for Systemax Inc.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Shaw, Lynch and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
Systemax Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark SYSTEMAX1 and the mark 2 both

1 Application Serial No. 88150991; filed October 11, 2018 alleging 1994 as the date of first
use and first use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 Application Serial No. 88151072; filed October 11, 2018 alleging 1994 as the date of first
use and first use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
The application includes the following description of the mark: “The mark consists of the
wording ‘SYSTEMAX’ in the color blue with a red arch extending above the wording. The
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for “holding company services, namely, providing business management, business
administration, and human resource management services to subsidiaries and
affiliates therefore” in International Class 35.
The Examining Attorney refused registration of each application on grounds that:
(1) the services identified in the involved application are not registrable services
within the meaning of Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C.
§§ 1051-1053, and 1127; and (2) Applicant’s original and substitute specimens do not
show use of Applicant’s mark for the identified services under Sections 1 and 45 of
the Trademark Act, 15 U.S.C. §§ 1051 and 1127.3 After the refusals were made final,
Applicant appealed and filed requests for reconsideration, which were denied. The
appeals resumed and are fully briefed.
For the reasons explained below, we affirm the refusal of each application on the
ground that the specimens do not show use of the applied-for mark for the recited
services. Accordingly, we do not reach whether the services are registrable. See, e.g.,
In re Brack, 114 USPQ2d 1338, 1343 (TTAB 2015).

wording ‘MAX’ has white horizontal bars throughout.” The colors blue, red, and white are
claimed as features of the mark.
3 The Examining Attorney also refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), citing a likelihood of confusion with a prior-registered mark.
Applicant submitted a consent agreement with the owner of the cited registration and the
Examining Attorney withdrew the Section 2(d) refusal. February 4, 2020 Request for
Reconsideration at TSDR 11; February 25, 2020 Denial of Request for Reconsideration at
TSDR 2.
In addition, the Examining Attorney required and Applicant submitted a new drawing in
application Serial No. 88151072. Application Serial No. 88151072, January 28, 2019 Office
Action at TSDR 5; July 17, 2019 Office Action Response at TSDR 5; August 5, 2019 Final
Office Action at TSDR 7.
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I. Proceedings Consolidated
When an applicant has filed ex parte appeals to the Board in co -pending
applications, and the cases involve common issues of law or fact, the Board, upon
request by the applicant or examining attorney or upon its own initiative, may order
the consolidation of the appeals for purposes of briefing, oral hearing, or final
decision. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 1214 (2020) and authorities cited therein. See also, e.g., In re Anderson, 101
USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals); In re
Country Music Assoc., Inc., 100 USPQ2d 1824, 1827 (TTAB 2011) (same). Because
these cases involve common issues of law and fact, the Board consolidates these
appeals.4
II. Applicant’s Specimens do not Show Use of the Applied-for-Marks
for the Applied-for-Services.

Each of Applicant’s specimens displays Applicant’s marks. The basis for the
Examining Attorney’s refusal is that the specimens do not reference or associate the
marks with the applied-for services.5
Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides that a service mark
is used in commerce “when it is used or displayed in the sale or advertising of services

4 The evidentiary records for these applications are identical. We refer to the record in
application Serial No. 88150991 unless otherwise indicated. All citations to documents
contained in the TSDR database are to the downloadable .pdf versions of the documents in
the USPTO TSDR Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d
1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal refer to the Board’s
TTABVUE docket system. Before the TTABVUE designation is the docket entry number
and after this designation are the page references.
5 Examining Attorney’s Brief, 11 TTABVUE 10.
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and the services are rendered in commerce.” See also 37 C.F.R. § 2.56(b)(2). “To
determine whether a mark is used in connection with the services described in the
[application], a key consideration is the perception of the user.” In re JobDiva, Inc.,
843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citation omitted). The
question is whether the evidence of Applicant’s use of its marks creates an
association between the marks and the applied-for-services. Id.
“Specimens showing the mark used in rendering the identified services need not
explicitly refer to those services in order to establish the requisite direct association
between the mark and the 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 Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson
Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). For specimens showing the
mark in advertising, the “specimen must not only contain a reference to the service,
but also the mark must be used on the specimen to identify the service and its
source.” Id. (quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB
2010).
Showing only the mark with no reference to, or association with, the services does
not show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997);
In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). Thus, an acceptable
specimen must show “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).
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Applicant filed with its application the following specimens consisting of website
screenshots:6

6 October 11, 2018 specimens.
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Applicant points to the highlighted text on the first screenshot as demonstrating
use of its marks for the applied-for-services:
Applicant’s original specimen plainly states that, “through its operating
subsidiaries,” Applicant operates as a direct marketer of brand name
and private label products. As such, Applicant necessarily and
inherently provides administration and management services to its
subsidiaries; otherwise it would not be able to operate as a direct
marketer “through” them.

This argument is unpersuasive. The screenshot describes the direct marketing
activities of Applicant’s subsidiaries and attributes these activities to Applicant. The
screenshot does not refer to Applicant managing its subsidiaries in this or any other
endeavor.7 Nor does the screenshot support such an inference or otherwise reference

7 Applicant previously acknowledged that “[t]he statement in the specimen … that Applicant
operates as a marketer of goods … means [that Applicant] offers for sale and sells goods
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“holding company services, namely, providing business management, business
administration, and human resource management services to subsidiaries and
affiliates therefore.” The same is true of the second screenshot which refers only to
“the Industrial Products Group selling private-label and brand name industrial
equipment and supplies[.]”
We now turn to Applicant’s three substitute specimens shown below.8
1. 2014 Proxy Statement and Annual Report:

though the subsidiaries it operates.” February 4, 2020 Request for Reconsideration at TSDR
10.
8 Id. at TSDR 30-39.
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2. 2016 Proxy Statement and Annual Report

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3. 2017 Annual Report

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Applicant argues that the “annual reports, which are publicly disseminated,
display Applicant’s mark[s] and describe management and administrative functions
that it provides to its subsidiaries, including evaluating and making strategic
acquisitions, moving various business locations to central geographic locations,
transitioning to online sales platforms for certain consumer directed businesses,
implementing strategies to exit underperforming businesses, implementing a
warehouse management system conversion, undertaking asset sales, and
implementing growth and productivity initiatives (see yellow highlighted versions
thereof).”9
The Examining Attorney asserts that the substitute specimens are unacceptable
because annual reports and stockholder letters:10
[A]re not generally used in the sale or advertisement of the services.
Annual reports to stockholders are merely that – a business document
the purpose of which is to inform shareholders of the state of a business.
The “Proxy Statement and Annual Report to Stockholders’ from years
2014 and 2016 and a letter to stockholders are not used in the sale or
advertisement of the services but are used to inform stockholders about
the status of their investments. Significantly, they are addressed ‘Dear
Fellow Stockholders,’ which shows that the reports and letter are
directed to applicant’s stockholders rather than used to advertise or sell
its services to new customers.11

In reply, Applicant asserts that because its annual reports are publicly
disseminated, “they are available to stockholders and potential investors alike, and

9 Appeal Brief, 9 TTABVUE 6.
10 Applicant’s assertion that we should disregard these arguments because the Examining
Attorney did not raise them during prosecution is without merit because the basis for refusal
remains the same. See In re D.B. Kaplan Delicatessen, 225 USPQ 342, 342 n.2 (TTAB 1985);
TBMP § 1217.
11 Examining Attorney’s Brief, 11 TTABVUE 11.
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therefore, clearly convey to both that Applicant provides the specified services to its
subsidiaries and affiliates.” 12
We find that the proxy statements and annual reports do not demonstrate use of
Applicant’s marks in the sale or advertising of “holding company services, namely,
providing business management, business administration, and human resource
management services to subsidiaries and affiliates therefore.” As an initial matter,
the documents are addressed to Applicant’s shareholders (Applicant’s owners) rather
than to subsidiaries or affiliates, specified in the application as Applicant’s
consumers. Moreover, the purpose of the documents is to update Applicant’s
shareholders about the internal workings and financial state of Applicant’s own
business.13 As such, the substitute specimens do not refer to or associate Applicant’s
marks with the specified holding company services of business management,
business administration and human resource management for subsidiaries and
affiliates. The documents tout steps, such as acquiring and divesting businesses,
selling assets, and relocating businesses, that Applicant has undertaken to
streamline its business and increase profits. To the extent any of the activities

12 Reply Brief, 12 TTABVUE 5.
13 “Annual report” is defined as “a usually lengthy report issued yearly by an organization
giving an account of its internal workings and especially its finances” and “proxy statement”
is defined as “a document containing information about a proposed corporate action that the
corporation is required to submit to shareholders for their vote on the action.” Merriam-
Webster online dictionary, https://www.merriam-webster.com/dictionary/annual%20report
and https://www.merriam-webster.com/legal/proxy%20statement (last visited September
23, 2020 (emphasis added). The Board may take judicial notice of online dictionaries that
exist in printed format or have regular fixed editions. In re White Jasmine LLC, 106 USPQ2d
1385, 1392 n.23 (TTAB 2013).
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described in the reports may be broadly construed as business management or
administration activities, the annual reports and proxy statements support that
Applicant engaged in such activities to increase its own profitability for the benefit
of its shareholders rather than for subsidiaries or affiliates as specified in the
recitation of services. In viewing these specimens, consumers would not perceive the
marks as source identifiers for the recited holding company services.
In view of the foregoing, we find that Applicant has not demonstrated use of
Applicant’s marks for the applied-for-services.
III. Applicant’s Request to Amend the Filing Bases of its
Applications is Denied.

In the final paragraph of each of its briefs, Applicant includes for the first time,
an alternate request for relief: “[I]n the event that the Board finds that Applicant’s
specimens are insufficient, Applicant respectfully requests the opportunity to amend
the subject application[s] to seek registration under Section 1(b) of the Trademark
Act.”14
Once an application has been considered and decided on appeal it will not be
reopened except for the entry of a disclaimer or upon order of the Director.
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). See also In re Societe D/Exploitation
de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1789 (TTAB 2003) (Board has no
authority to grant applicant’s request made for the first time in the last sentence of
its appeal brief to amend application to seek registration on an intent-to-use basis);

14 Appeal Brief, 9 TTABVUE 6.
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TBMP §§ 1217-1218 (2020); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1501.06 (Oct. 2018) and cases cited therein. Rather than burying its alternative
request for relief in its briefs, Applicant should have raised this issue prior to appeal,
or sought a remand for good cause prior to final decision.
Accordingly, Applicant’s alternative request for relief is denied.
Decision: In view of the foregoing, each refusal to register Applicant’s mark on
the ground that Applicant’s original and substitute specimens do not show use of
Applicant’s mark for the identified services under Sections 1 and 45 of the
Trademark Act is affirmed.