Daniel J. Evans

Trademark Trial and Appeal Board

Feb 20, 2003

No. 75979988 (T.T.A.B. Feb. 20, 2003)

Mailed: February 20, 2003
Paper No. 19
Rls

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Daniel J. Evans
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Serial No. 75/979,988
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Joseph W. Berenato, III of Liniak, Berenato, Longacre &
White, LLC for Daniel J. Evans.
Khanh Le, Trademark Examining Attorney, Law Office 104
(Michael Hamilton, Managing Attorney).
_______
Before Simms, Seeherman and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Daniel J. Evans (hereafter applicant) has appealed
from the final refusal to register the mark ICESPIKE for
services now identified as maintenance services, namely,
freezing of fluid lines, in Class 37.1 The Examining
Attorney has refused registration on the ground that the
specimen is unacceptable because it does not show use of

1 Application Serial No. 75/979,988, created as a divisional
application on Nov. 1, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/979,988
2
the mark ICESPIKE for applicant’s maintenance services but
rather is used to refer to a freezing device or plumbing
tool. Applicant has appealed and both the Examining
Attorney and applicant have submitted briefs. No oral
hearing was requested.
The record in this case shows that applicant
originally filed an intent-to-use application (Serial No.
75/556,521) to register the mark ICESPIKE on September 21,
1998, for goods amended to read “manually-operated plumbing
tool for freezing fluid lines for the purpose of
maintenance,” in Class 8, and for “maintenance services,
namely, freezing of fluid lines,” in Class 37. The mark
was published for opposition on October 26, 1999, and a
notice of allowance was issued thereafter. On July 17,
2000, applicant filed both a statement of use as well as a
request to divide the original application, retaining the
goods in the parent application and creating the instant
divisional application for the maintenance services.2 The
statement of use indicated that applicant began use of his
mark for the services in June 1998 and commenced first use
in commerce in April 2000. The statement of use further
indicated that the mark ICESPIKE was used on brochures,

2 According to Office records, applicant has filed a number of
extensions of time in which to file a statement of use in the parent
application.
Serial No. 75/979,988
3
letterheads and promotional materials. The specimen is
reproduced below:3

3 The specimen of record states, in part: “FREEZETEC, INC. ‘Pipe
Freezing Service’ ·INTRODUCING THE NEW ICESPIKE FREEZING DEVICE·
CALL: (407) 257-4756 FOR AN ESTIMATE ··FREEZES WATERLINES EVEN WITH
MINOR FLOW/VALVE LEAKAGE·· ··PREVENTS DRAINING OF SYSTEM WHILE
KEEPING MAIN SYSTEM IN OPERATION·· ··PREVENTS LOSS OF CHEMICAL
TREATMENT AND LOSS OF MAN HOURS VENTING EACH COIL·· ··PREVENTS
POSTPONING REPAIRS/REPLACEMENT UNTIL THOSE COLD JANUARY NIGHTS··”
Serial No. 75/979,988
4
The Examining Attorney argues that this specimen of
use shows the mark ICESPIKE being used to identify and
refer to applicant’s plumbing tool and not to his
maintenance service. That is, the specimen does not
evidence use of the mark in the sale or advertising of
applicant’s service of freezing fluid lines but identifies
only the freezing device or tool used in rendering
applicant’s service. The Examining Attorney acknowledges
that the mark ICESPIKE appears in close proximity to the
words “Pipe Freezing Service,” but the mark does not
identify this service, according to the Examining Attorney.
While it is clear that the applicant
offers pipe freezing services, it is
equally clear that the mark “icespike”
is not being used to describe such services.
The mark appears only once in the specimen
and it is used in association with the
words, “freezing device.” The fact that
the mark is in close proximity to the
phrase “pipe freezing service,” does not
change this result. In fact, consumers are
more likely to perceive the words, “Freezetec,
Inc.,” as the mark that is associated with the
pipe freezing services, than the mark at issue.
Brief, 4.
Applicant, on the other hand, contends that the
specimen shows a direct association between the mark and
applicant’s services because the mark appears directly
below the words “Pipe Freezing Service.” Also, applicant
points to the words “freezes waterlines” beneath the mark
Serial No. 75/979,988
5
showing use, according to applicant, in the promotion of
his maintenance services. The fact that applicant also
uses the name to identify a product used to perform the
freezing does not lead to the conclusion, according to
applicant, that consumers do not recognize that applicant
is using the mark for maintenance services. Applicant
maintains, therefore, that the mark functions as both a
trademark and a service mark.
The specimen submitted to show use of this
term as a service mark is a brochure that
identifies Applicant’s pipe freezing
services and his ICESPIKE freezing device…
In the present case, these brochures of
record are the advertising materials the
applicant uses to advertise and sell its
[sic] service. The service offered by
Applicant (“pipe freezing”) is clearly
identified on the specimen, as is the mark
ICESPIKE. Prospective customers are
presented with…this brochure when Applicant
offers its [sic] pipe freezing services, see the
name ICESPIKE in close proximity to the phrase
“pipe-freezing service,” and will understand
that the service being offered, as well as the
tool used in performing the service, is
identified by the mark ICESPIKE.
Request for Reconsideration, filed April 25, 2002, p. 1, 2.
A service mark specimen must show the mark as actually
used in the sale or advertising of the services recited in
the application. See TMEP §1301.04. As indicated in TMEP
§1301.04(a):
To show service mark usage, the specimens
must show use of the mark in a manner that
Serial No. 75/979,988
6
would be perceived by potential purchasers
as identifying the applicant’s services and
indicating their source.
In other words, the specimens must show use of the
service mark in direct association with the recited
services in the sale or advertising of those services.
In re Universal Oil Products Co., 476 F.2d 653, 177
USPQ 456 (CCPA 1973).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the
Examining Attorney that the specimen of record does
not show use of the mark ICESPIKE in connection with
applicant’s maintenance services. The specimen
indicates that applicant is introducing the “new
ICESPIKE freezing device.” The specimen goes on to
indicate that this device freezes water lines,
prevents draining of the system while keeping the main
system in operation, prevents loss of chemical
treatment and loss of man hours in venting each coil,
etc. While the mark does appear beneath the words
“Pipe Freezing Service,” the mark is not used to
identify that service but rather to identify
applicant’s new freezing device. Applicant’s pipe
freezing service is identified by the mark FREEZETEC,
INC., shown at the top of the specimen. Accordingly,
Serial No. 75/979,988
7
the specimen of record does not show use of the mark
herein sought to be registered for applicant’s
maintenance services. See, for example, In re
Universal Oil Products Co., supra (term that
identified only a process held not registrable as
service mark, even though applicant was rendering
services and the services were advertised in the same
brochure in which the name of the process was used);
In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB
1994)(labels affixed to packaging of valves do not
show use of mark for custom manufacturing of valves);
and In re British Caledonian Airways Ltd., 218 USPQ
737 (TTAB 1983)(holding that the mark SKYLOUNGER
identified applicant’s first-class seats and was not
used as a service mark to identify its air
transportation service).
Decision: The refusal of registration is
affirmed.