Diamond Core Drilling and Sawing Company

Trademark Trial and Appeal Board

Sep 21, 2007

No. 76622449 (T.T.A.B. Sep. 21, 2007)

Mailed: September 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diamond Core Drilling and Sawing Company
________

Serial No. 76622449
_______

Sherry H. Flax of Saul Ewing LLP for Diamond Core Drilling
and Sawing Company.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Diamond Core Drilling and Sawing Company, applicant,
has filed an application to register the mark DIAMOND CORE
DRILLING AND SAWING COMPANY (standard character form) on
the Principal Register for “commercial and residential
construction services, namely concrete cutting, core
drilling, and wall sawing” in International Class 37.1

1 Application Serial No. 76622449, filed November 22, 2004, under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging
March 18, 1980 as the date of first use and first use in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76622449
2
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark is merely descriptive of its
services, and its evidence of acquired distinctiveness is
insufficient to entitle it to registration under Section
2(f).2
Applicant has appealed and both applicant and the
examining attorney have filed briefs. We affirm the
refusal to register.
Inasmuch as applicant has amended its application to
seek registration under Section 2(f) based on acquired
distinctiveness, applicant has conceded that the phrase
DIAMOND CORE DRILLING AND SAWING COMPANY is descriptive,
and the only issue before us is applicant’s assertion of
acquired distinctiveness.3 Yamaha Int’l Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB
1990). We note, in any event, that the examining attorney

2 The first examining attorney required that applicant only
disclaim the wording CORE DRILLING AND SAWING COMPANY on the
ground that it is merely descriptive of applicant’s services.
Applicant submitted a disclaimer of the words which remains in
the record; however, the only issue before the Board is the
refusal pertaining to the entire mark as discussed above.

3 It is clear from the record that applicant did not seek
registration under Section 2(f) in the alternative, and,
therefore, the amendment acts as an admission of the mark’s
descriptiveness.
Serial No. 76622449
3
has submitted ample evidence to establish the mere
descriptiveness of the phrase “diamond core drilling and
sawing company” as shown below in the discussion relating
to the highly descriptive nature of the phrase.
It is applicant’s burden to prove acquired
distinctiveness. Yamaha, supra, 6 USPQ2d at 1006; In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954) (“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha, supra, 6 USPQ2d at 1008. A claim that applicant
has been using the subject matter for a long period of
substantially exclusive use may not be sufficient to
demonstrate that the mark has acquired distinctiveness.
See In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB
2001) (66 years of use). The amount and character of
evidence required to establish acquired distinctiveness
depends on the facts of each case, Roux Laboratories, Inc.
v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and
more evidence is required where a mark is so highly
descriptive that purchasers seeing the matter in relation
to the goods or services would be less likely to believe
that it indicates source in any one party. See In re
Serial No. 76622449
4
Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990). Evidence of acquired distinctiveness can
include the length of use of the mark, advertising
expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. However, a
successful advertising campaign is not in itself
necessarily enough to prove secondary meaning. In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark).
It is the examining attorney’s position that DIAMOND
CORE DRILLING AND SAWING is highly descriptive and
applicant’s evidence is not sufficient to establish
acquired distinctiveness. The examining attorney argues
that the evidence shows that DIAMOND CORE DRILLING is a
type of drilling which uses diamond-impregnated drill bits.
Br. p. 4. Further, the examining attorney argues that the
evidence also establishes that SAWING COMPANY is highly
descriptive.
In support of his position, the examining attorney
submitted evidence from third-party websites that show
Serial No. 76622449
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various combinations of the words in the phrase DIAMOND
CORE DRILLING AND SAWING COMPANY widely used as terms of
art in the drilling and sawing industry to describe various
goods and services including the services applied for by
applicant. See, for example:
Concrete Core Drilling Machines Hand-Held & Rig
Mounted (Electric, Hydraulic & Pneumatic) Wet and
Dry Diamond Drilling ...Diamond Core Drilling
Machines ...
www.csunitec.com

All of our diamond core drills are manufactured
with our exclusive metal bond ... Braemar can
build your diamond core drills to suit your exact
needs ... diamond core drills can be made with
natural or synthetic diamonds, sieved to the
desired grit size ...
www.bgsusa.com

High quality, long lasting diamond core drill bits
manufactured to Concrete Sawing and Drilling
Association (CSDA) standards.
www.kor-it.com

Diamond Core Drilling Accessories ... Our products
include as follows: Diamond core bits Diamond
reamer shells Drill rods Core barrels ...
www.tradekey.com

Unico Completes Phase II Diamond Core Drilling
Program at the Deer Trail Mine ... The Phase II
underground diamond core drilling program was
primarily designed to target known horizons of
mineralization and identify new mineralized
horizons throughout the main ore channel of the
Deer Trail Mine. The Deer Trail Mining Company,
LLC reported that it has completed 7,235 feet of
diamond core drilling and finished 13 underground
drill holes.
www.findarticles.com

Serial No. 76622449
6
Diamond Core Drilling Services Suppliers ...
PowerSourcing is your best source for finding
diamond core drilling services suppliers. Use our
expansive on-line directory to source diamond core
drilling services and other products and services
from thousands of suppliers.
www.powersourcing.com

Lang Exploratory Drilling USA ... Provides rotary,
reverse circulation and diamond core drilling
services to the exploration, mining, water, energy
and construction industries.
www.boartlongyear.com

Ahtna Caron Drilling JV ... Alaska-based diamond
core drilling services.
www.minersmanual.com

Warren Diamond Core Drilling Services ... Business
types: Concrete Breaking Coring Cutting Drilling &
Sawing
www.allpages.com

Diamond Core Drilling Manufacturers Association
Acronyms.thefreedictionary.com
Class 16 Exploration Drilling Methods and Drill
Sections ... The two principle types of drilling
are diamond core drilling and reverse circulation
drilling ... Diamond core drilling uses a diamond
bit, which rotates at the end of drill rod ...
www.dmtcalaska.org

DOT Diamond Core Drilling is a full-service
concrete cutting business offering a wide range of
sawing and drilling expertise including wall
sawing, flat sawing, horizontal curb cutting, wire
sawing, hand sawing, bridge deck grooving, slab
sawing, and core drilling.
www.dotdrilling.com

Roughneck Concrete Drilling & Sawing Company
provides concrete cutting services including core
drilling ... and slab sawing ...
www.roughneck1.com

Concrete Wall Sawing Company, Inc., was founded in
1966 as a service-contracting company specializing
Serial No. 76622449
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in commercial and industrial concrete cutting and
demolition. Our primary business is core drilling,
sawing concrete walls and slabs, using diamond-
tipped cutting tools.
www.cwsco.com

Taylor’s Concrete Cutting Services, LLC ... Diamond
Core Drilling and Sawing In the Business since 1982
... Diamond Core Drilling ... We drill round holes
... in concrete, reinforced concrete ... Flat
Sawing ... We cut slab openings, trenches ... Wall
Sawing ... We can saw from 0” to 14” deep, or 28”
deep if both sides are accessible.
www.taylorsccs.com

The examining attorney also submitted an excerpt from
the website Wikipedia where “diamond core drilling” is
described as utilizing “an annular diamond-impregnated
drill bit attached to the end of hollow drill rods to cut a
cylindrical core of solid rock.” wikipedia.org.
Finally, the examining attorney submitted copies of
third-party registrations where “diamond core drills,”
“diamond core drilling machines” or “diamond core bits” are
listed in the identifications of goods. See, for example,
Reg. Nos. 1489877, 1456173, 2608957, 0806675, 0938717,
0969568, 2038864 and 2164512.
We are persuaded by the evidence of record that the
phrase DIAMOND CORE DRILLING AND SAWING COMPANY is highly
descriptive of applicant’s services.
As proof of acquired distinctiveness, applicant’s
attorney states that applicant has been using “using the
Serial No. 76622449
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mark continuously in interstate commerce for twenty-five
(25) years, since 1981” (Response filed June 22, 2006) and
that applicant has approximately 20 employees, has $1.8
million in annual revenue and has spent approximately
$185,000 in advertising for its services in connection with
the mark during the past five years (Response filed
February 8, 2007).
Applicant submitted excerpts from various websites
listing applicant’s name and address. See e.g.,
www.allpages.com, washingtondc.citysearch.com,
www.foremansfinder.com, www.constructionwork.com,
www.thomasnet.com, www.thebluebook.com, and
www.local.yahoo.com. Applicant also submitted a copy of a
“transcript of a Montgomery County, Maryland Board of
Education meeting that took place on March 21, 1983, that
references Applicant as a low bidder on a construction
project.” Response filed June 22, 2006. Finally,
applicant submitted an excerpt from the Maryland Department
of Assessments and Taxation showing the date of applicant’s
formation as an entity.
After a careful review of the record, we find that
applicant has not shown that the phrase “DIAMOND CORE
DRILLING AND SAWING COMPANY” has acquired distinctiveness.
Put simply, the evidence submitted by applicant does not
Serial No. 76622449
9
serve to show that the relevant consumers recognize this
phrase a mark. Thus, despite the many years of use, given
the highly descriptive nature of the phrase, we do not find
that DIAMOND CORE DRILLING AND SAWING COMPANY has come to
signify the commercial source of the services, but rather
continues merely to inform the consumers about the nature
of the services.
Decision: In view of the fact that applicant has
not shown that its mark is entitled to registration
pursuant to Section 2(f) of the Trademark Act, the
refusal under Section 2(e)(1) is affirmed.