The Innovative Companies LLC

Trademark Trial and Appeal Board

Jan 5, 2006

No. 76421927 (T.T.A.B. Jan. 5, 2006)

1/5/2006

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

Trademark Trial and Appeal Board
___________

In re The Innovative Companies LLC
___________

Serial No. 76421927
___________

Myron Amer, Esq. for The Innovative Companies LLC

Toni Y. Hickey, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_____________

Before Hanak, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

The Innovative Companies LLC (applicant) seeks to
register INNOVATIVE STONE PRODUCTS for “providing training
that deals with the characteristics of granite, marble, and
ceramic tile for end uses of these materials for kitchen
countertops, floors, patios and related purposes.” The
intent-to-use application was filed on June 17, 2002. At the
request of the Examining Attorney, applicant disclaimed the
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2
exclusive right to use STONE PRODUCTS apart from the mark in
its entirety.
To briefly describe the history of this application,
suffice it to say that the PTO issued a Notice of Allowance
on June 17, 2003. Thereafter applicant filed a specimen of
use and later a substitute specimen of use.
The Examining Attorney has refused registration on the
basis that applicant’s “original specimen and substitute
specimen of record are unacceptable as evidence of actual
service mark use because they do not show use of the mark
INNOVATIVE STONE PRODUCTS in connection with the services
identified in the Notice of Allowance, i.e. ‘providing
training that deals with the characteristics of granite,
marble and ceramic tile for end uses of these materials for
kitchen countertops, floors, patios and related purposes.’”
(Examining Attorney’s brief page 2).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining Attorney
filed briefs. Applicant did not request a hearing.
We find that while applicant’s original specimen of use
is deficient, applicant’s substitute specimen of use does
indeed show use of applicant’s mark in connection with
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3
applicant’s services. Accordingly, the refusal to register
is reversed.
The pertinent law involving the issue in this case is
well summarized as follows: “It is not enough for the
applicant to be a provider of services; the applicant also
must have used the mark to identify the named services for
which registration is sought.” In re Advertising &
Marketing, 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir.
1987).
Applicant’s substitute specimen of use is the first page
of a brochure distributed by applicant. On the left side of
the first page there appears applicant’s address, telephone
numbers and website address. On the right side of this first
page there appears from top to bottom the following three
things. First, a very prominent display of applicant’s mark
INNOVATIVE STONE PRODUCTS, as conceded by the Examining
Attorney at page 4 of her brief. Second, a picture of a
kitchen countertop with various items on it as well as two
chairs placed near the countertop. Third, there appears in
close proximity to applicant’s mark and the just described
picture of a countertop the following words displayed in a
prominent fashion: “Reference guide to prepare for your
granite countertop templating and installation.” It should
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be noted that at no time did the Examining Attorney request
that applicant submit additional pages from its brochure.
Applicant’s services are essentially providing training
that deals with the characteristics of various materials such
that the end uses of these materials will result in kitchen
countertops, floors and patios, as well as other possible
items.
It is our judgment that the prominent wording appearing
on the first page of applicant’s brochure would be viewed by
consumers as indicating that the brochure provides training
in the installation of granite in order to create a kitchen
countertop. As previously noted, this prominent wording on
the first page of applicant’s brochure is as follows:
“Reference guide to prepare for your granite countertop
templating and installation.” The word “template” is defined
as follows: “a pattern, usually in the form of thin metal,
wooden or paper plate for forming an accurate copy of an
object or shape.” Webster’s New World Dictionary (2d ed.
1996). In essence, the first page of this brochure informs
consumers that they will be instructed as to how to prepare a
template for which they will use to overlay on a piece of
granite, and then cut the granite to the shape and size of
the template. This first page also informs consumers that
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they will then be instructed as to how to install the granite
countertop once it has been cut from a larger piece of marble
using the template.
We readily acknowledge that applicant’s substitute
specimen does not provide training that deals with marble or
ceramic tile, or that deals with any material for use in
conjunction with floors or patios. The first page of the
brochure merely shows use of applicant’s mark in conjunction
with training for the installation of granite to form a
countertop, which of course would include countertops of all
types including a kitchen countertops. Indeed, the picture
on the first page of applicant’s brochure features a kitchen
countertop.
It should be noted that at no time during the course of
this proceeding did the Examining Attorney object to
applicant’s substitute specimen on the basis that it did not
evidence use of applicant’s mark in conjunction with training
for the installation of marble or ceramic tile, and that it
did not provide training for the installation of any
materials for floors or patios. Rather, the Examining
Attorney’s objection is that “the brochure [substitute
specimen of use] submitted by applicant supports installation
services, not training services.” (Examining Attorney’s brief
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page 4). Continuing, the Examining Attorney merely
speculates that “it appears that [applicant’s] consumer is
buying goods and receiving necessary installation services.”
(Examining Attorney’s brief page 4, emphasis added).
The Examining Attorney never even inquired of applicant
as to whether applicant is selling any goods whatsoever. The
Examining Attorney’s statement that “it appears that
[applicant’s] consumer is buying goods and receiving
necessary installation services” is pure speculation.
(Examining Attorney’s brief page 4). Moreover, if
applicant’s consumers were indeed “receiving necessary
installation services,” then applicant’s training brochure
would simply be unnecessary. A professional installer would
not need to be taught about templating and installation of
granite countertops. Moreover, as previously noted, the
prominent wording appearing on the first page of applicant’s
brochure reads as follows: “Reference guide to prepare for
your granite countertop templating and installation.”
(emphasis added). By use of the word “your,” applicant is
clearly informing consumers that the brochure will instruct
them in the installation of their granite countertop.
In short, if it was the objection of the Examining
Attorney that the first page of applicant’s brochure did not
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cover training that dealt with marble and ceramic tile and
that did not deal with floors and patios, then she should
have clearly stated that this was the basis of her objection.
Applicant may well have then been able to produce additional
brochures that focused on other materials (marble and ceramic
tile) and other end products (floors and patios). Moreover,
if the Examining Attorney was concerned that applicant’s
training brochure was but an ancillary item involved with
applicant’s sale of granite, then she should have inquired of
applicant if that indeed was the case. However, she did not.
With one notable exception, not applicable here, it is
the policy of this Board to resolve close cases in
applicant’s favor. (The one notable exception involves
refusals pursuant to Section 2(d) of the Trademark Act where
the Board resolves the issue of likelihood of confusion in
favor of the registrant and against the applicant.).
To be blunt, we find that applicant’s substitute
specimen of use clearly shows use of applicant’s mark in
conjunction with at least one of applicant’s services,
namely, “providing training that deals with the
characteristics of granite for end uses of [this material]
for kitchen countertops.” Accordingly, following our
Ser. No. 76421927
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practice of resolving doubts in applicant’s favor, we reverse
the refusal to register.
Decision: The refusal to register is reversed.