Chicago Mercantile Exchange Inc.

Trademark Trial and Appeal Board

Jun 13, 2016

No. 77199918 (T.T.A.B. Jun. 13, 2016)

This Opinion Is Not a
Precedent of the TTAB

Mailed:
June 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chicago Mercantile Exchange Inc.
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Serial No. 77199918
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Joseph T. Kucala, Jr. and Tatyana V. Gilles of Norvell IP LLC,
for Chicago Mercantile Exchange Inc.

Linda A. Powell, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Rogers, Chief Administrative Trademark Judge, and Kuczma and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Chicago Mercantile Exchange Inc. (“Applicant”) seeks registration on the
Principal Register of the mark CHI, in standard characters, for “Investment services,
namely, providing futures, options contracts related to hurricanes for trading on an
exchange,” in International Class 36.1

1 Application Serial No. 77199918 was filed on June 7, 2007, by Carvill America, Inc. under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide
intention to use the mark in commerce. Its assignment to Applicant was recorded with the
U.S. Patent and Trademark Office (“USPTO”) Assignment Recordation Branch on March 19,
2009 at Reel/Frame 3955/0875.
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051-53 and 1127, on the
ground that the proposed mark, as shown on the specimens of record, fails to function
as a service mark for the recited services.
The application has a lengthy prosecution and appellate history. Applicant
initially appealed a final refusal of registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), and requested reconsideration on April 28, 2011. The appeal was
dismissed as moot after the application was published on June 21, 2011, and
Applicant submitted a specimen and statement of use on February 7, 2012.
On March 8, 2012, registration was refused under Sections 1, 2, 3 and 45 of the
Act. After the refusal was made final, Applicant once again appealed to this Board
and requested reconsideration, and submitted a substitute specimen of use.
Reconsideration was denied, and proceedings resumed on May 27, 2013.
Subsequently, at Applicant’s request, jurisdiction was twice restored to the
Examining Attorney to consider additional evidence and specimens.
In an order of September 4, 2014, after Applicant’s second request for remand, the
Board directed the Examining Attorney, if she was not persuaded of the registrability
of Applicant’s mark, to file a supplemental brief addressing the newly submitted
evidence and argument. Applicant was permitted to file a supplemental reply brief.
The appeal thus is fully briefed, and an oral hearing was held on March 1, 2016.2

2 At the hearing, Applicant was represented by Joseph T. Kucala, Jr.; and Michael Baird,
Managing Attorney, Law Office 121, appeared on behalf of the USPTO.
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We reverse the refusal to register.
It has often been said that: “Before there can be registration, there must be a
trademark.” In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (quoting
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978)). The starting point
for our analysis is Section 45 of the Trademark Act, 15 U.S.C. § 1127, where
“trademark” is defined in relevant part as “any word, name, symbol, or device, or any
combination thereof used by a person . . . to identify and distinguish his or her goods
. . . from those manufactured or sold by others and to indicate the source of the goods,
even if that source is unknown.” As the Board stated in American Velcro, Inc. v.
Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973):
It is settled that not every designation that is placed or
used on or in connection with a product necessarily
functions or is recognized as a trademark for said product;
not every designation adopted with the intention that it
performs a trademark function and even labeled as a
trademark necessarily accomplishes that purpose; and
there are certain designations that are inherently
incapable of functioning as trademarks to identify and
distinguish the source of the products in connection with
which they are used.
The mere fact that a designation appears on the specimens of record does not make
it a mark. In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992).
Subject matter that, due to its inherent nature or the manner in which it is used, does
not function as a mark to identify and distinguish the applicant’s applied-for services
cannot be registered. In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1270
(TTAB 2012). The key question is whether the asserted mark would be perceived as
a source indicator. See In re Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1852 (TTAB
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1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
“The critical inquiry in determining whether a designation functions as a mark is how
the designation would be perceived by the relevant public. To make this
determination we look to the specimens and other evidence of record showing how
the designation is actually used in the marketplace.” In re Eagle Crest Inc., 96
USPQ2d 1227, 1229 (TTAB 2010) (citations omitted). When appropriate, the Board
has been fairly flexible in accepting service mark specimens. See In re Ralph Mantia
Inc., 54 USPQ2d 1284 (TTAB 2000).
Applicant owns a registration for CHI, the same mark it seeks to register here, for
“compiling, providing and updating a financial index measuring potential damage
from a hurricane,” in Class 35.3 In a declaration, Matthew J. Kelly, managing director
and chief intellectual property counsel for Applicant, explained the services for which
Applicant now seeks to register the CHI mark, stating in relevant part that:
3. Applicant’s services offered under the CHI mark are part of its
Alternative Investment Products, which include Applicant’s weather
products. Applicant’s weather products consist of financial tools that
provide means for customers to transfer risk to the capital markets
associated with adverse weather events.
4. Applicant’s services offered under the CHI mark are based on its
proprietary hurricane index, which provides a numerical measure of
the destructive potential of a hurricane. The hurricane index
calculates the potential for damage by reference to each storm’s
maximum wind velocity and size (radius). The hurricane index uses
publicly available data from the National Hurricane Center and the
National Weather Service.

3 Registration No. 4315763, attached to the July 14, 2014 denial of request for
reconsideration, 26 TTABVUE 16. The registration issued April 9, 2013.
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5. Applicant’s target customers for its CHI services include hedge
funds, insurers and reinsurers, energy companies, utility companies,
hotel corporations and other commercial enterprises that might be
affected by hurricanes. Applicant’s customers are highly
sophisticated investors and organizations that are seeking
Applicant’s highly specialized investment products to hedge losses
and mitigate exposure caused by hurricanes.4
We first examine how Applicant’s proposed mark CHI is used on its specimens.
Although Applicant submitted several different specimens, the arguments in its final
brief center on the substitute specimens it attached as Exhibit 1 to its request to
suspend the appeal and remand for further examination on December 9, 2013.5
Therefore, we will focus our analysis on determining whether these substitute
specimens are acceptable. Two of the seven pages submitted, all from Applicant’s
Chicago Mercantile Exchange (CME) Rulebook, are reproduced infra:6

4 Exhibit A to the April 28, 2011 Request for Reconsideration, 4 TTABVUE 35-37.
5 22 TTABVUE 9-17. On August 8, 2014, Applicant submitted with its subsequent request
for remand a supporting declaration stating that the substitute specimens submitted with
the earlier request for remand were in use in commerce before either the filing of the
Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use.
31 TTABVUE 28-38 (Exhibit 4). The Board’s order of September 4, 2014 noted that the
subsequently submitted material forms part of the record. 34 TTABVUE.
6 22 TTABVUE 28, 30.
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The Examining Attorney does not dispute that a mark may be used in more than
one manner,7 for example, to identify both the indexing services recited in Applicant’s
existing registration and the investment services for which it now seeks registration.
Rather, the Examining Attorney argues that CHI as used on the substitute specimens
does not identify the source of Applicant’s recited investment services. We construe
the final refusal as based primarily on the rationale that the substitute specimens
consist of pages from the rulebook for members of Applicant’s Chicago Mercantile
Exchange, but CME members are merely brokers and not end consumers of the
identified services:
It is for this reason that the applicant’s specimens from the CME
Rulebook . . . are not viewed as acceptable to show use of the mark in
advertising or marketing materials or other material that shows the
mark used in the actual sale, rendering or advertising of the services in
a manner that the consumers for the services would encounter the mark
and understand the mark to identify the source of the applicant’s
services.8
Examining the substitute specimens, we find that both pages reproduced supra
clearly demonstrate that CME is an initialism for Chicago Mercantile Exchange, and
that Applicant’s CME Hurricane Index is designated by the acronym CHI, in which
the “C” stands for Applicant’s name. The specimens also show use of Applicant’s CHI
mark in association with “CHI futures,” “CHI futures contract[s],” and “CHI options.”
We agree with Applicant that the substitute specimens show the mark CHI used
in rendering the identified services. See In re ICE Futures U.S. Inc., 85 USPQ2d 1664,

7 See generally Denial of Request for Reconsideration, July 14, 2014, 25 TTABVUE 4.
8 Examiner’s Statement submitted October 6, 2014, 35 TTABVUE 7.
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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). The specimens detail the
rules and regulations for trading these CHI futures and contracts on Applicant’s
exchange. Whether the CME Rulebook is consulted by purchasers of Applicant’s
futures and options contracts on the one hand or traders of those financial products
on the other,9 it constitutes material made available to customers in the course of
rendering Applicant’s identified services, “namely, providing futures, options
contracts related to hurricanes for trading on an exchange.” The substitute specimens
therefore satisfy “[t]he minimum requirement [of] 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 (C.C.P.A. 1973).
Considering all the record evidence, we find that the specimens of use are
sufficient to show use of the CHI mark in connection with the identified investment
services.
Decision: The refusal of registration is reversed.

9 The Examining Attorney submitted a definition of “Exchange Member,” which begins: “A
person, normally a broker, who has membership on a stock exchange. This means that he/she
is allowed to trade on the floor of that exchange.” Id., 35 TTABVUE 18 (from http://financial-
dictionary.thefreedictionary.com/Exchange+Members); also submitted with Applicant’s
Supplemental Reply Brief, 36 TTABVUE 20.