Industrial Business Services, Inc.

Trademark Trial and Appeal Board

Jul 23, 2001

No. 75215495 (T.T.A.B. Jul. 23, 2001)

7/23/01 Paper No.
21
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Industrial Business Services, Inc.
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Serial No. 75/215,495
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Daniel S. Polley for Industrial Building Services, Inc.

Michael L. Engel, Trademark Examining Attorney, Law
Office 108 (David Shallent, Managing Attorney).
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Before Hanak, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Industrial Building Services, Inc. of Fort
Lauderdale, Florida (applicant) seeks to register on the
Supplemental Register INDUSTRIAL BUILDING SERVICES for
“plumbing services; electrical contracting; installation,
repair and maintenance of air conditioning apparatuses,
heating apparatuses, refrigeration apparatuses,
ventilating apparatuses, electrical apparatuses and air
conditioning apparatuses; general contracting services
for construction and building renovation; installation,
maintenance and repair of automation systems, namely,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
heating, air conditioning, ventilating, electrical, and
refrigeration.”
Ser. No. 75/215,495

The Examining Attorney has refused registration on
the basis that INDUSTRIAL BUILDING SERVICES is a generic
term for applicant’s services, and thus pursuant to
Section 23 of the Trademark Act is incapable of
distinguishing applicant’s services.
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.
Before proceeding to determine whether INDUSTRIAL
BUILDING SERVICES is a generic term for applicant’s
services, it is helpful to review the history of this
application. The application was initially filed with
the PTO on December 19, 1996 as an intent-to-use
application seeking registration of INDUSTRIAL BUILDING
SERVICES on the Principal Register. The Examining
Attorney initially refused registration pursuant to
Section 2(e)(1) of the Trademark Act on the basis that
applicant’s mark was merely descriptive of applicant’s
services. In response to the first Office Action,
applicant argued that its mark was not merely descriptive
of its services. In addition, applicant voluntarily
disclaimed the exclusive right to use the word SERVICES.
In the second Office Action, the Examining
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Ser. No. 75/215,495

Attorney maintained the refusal on the basis that
applicant’s mark was merely descriptive of its services.
Thereafter, applicant filed an amendment to allege use
with a first use date of January 1994 and an amendment to
seek registration on the Supplemental Register as opposed
to the Principal Register. In the third and fourth
Office Actions, the Examining Attorney refused
registration on the basis that applicant’s mark was a
generic term for applicant’s services. Thereafter,
applicant appealed to this Board.
We note at the outset that “the burden of showing
that a proposed trademark [or service mark] is generic
remains with the Patent and Trademark Office.” In re
Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987). Moreover, it is incumbent upon the Examining
Attorney to make a “substantial showing ... that the
matter is in fact generic.” Merrill Lynch, 4 USPQ2d at
1143. Indeed, this substantial showing “must be based on
clear evidence of generic use.” Merrill Lynch, 4 USPQ2d
at 1143. Thus, “a strong showing is required when the
Office seeks to establish that a term is generic.” In re
K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788
(Fed. Cir. 1994). Moreover, any doubt whatsoever on the
issue of genericness
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Ser. No. 75/215,495

must be resolved in favor of the applicant. In re
Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
Obviously, applicant’s mark INDUSTRIAL BUILDING
SERVICES consists of a three word phrase. Our primary
reviewing Court has made it clear that the PTO “cannot
simply cite definitions and generic uses of the
constituent terms of a [phrase] mark ... in lieu of
conducting an inquiry into the meaning of the disputed
phrase as a whole to hold a mark ... generic.” In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832, 1836 (Fed. Cir. 1999).
In his three page brief, the Examining Attorney (who
was not the original Examining Attorney) acknowledges
that the only evidence in the record showing the generic
use of the entire phrase “industrial building services”
are two newspaper articles which the original Examining
Attorney attached to Office Action No. 2 dated June 9,
1998. The first article is from the July 30, 1996
edition of the News & Record of Greensboro, North
Carolina. This article reads as follows: “Sunstates
Maintenance Corp., a commercial housekeeping and
janitorial company based in Greensboro, has acquired
Seacrest Services of West Palm Beach, Florida.
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Ser. No. 75/215,495

Terms were not disclosed. Seacrest is a janitorial
maintenance company serving South Florida. Its 600
employees bring Sunstates’ total payroll to 2,000.
Founded in 1975, Sunstates focuses primarily on the
commercial, corporate and industrial building services
market.” (emphasis added). The second article is from
the June 1, 1992 edition of The Washington Post. The
headline of this article reads as follows: “Maryland Food
Stores to Charge Tax.” The vast majority of this article
discusses how Maryland grocery stores will start charging
sales tax for a variety of snacks, deli sandwiches and
salad bar items. However, the final sentence of this
article reads as follows: “Starting July 1, commercial
and industrial building services also will become
taxable.” (emphasis added). The original Examining
Attorney also attached a third article to this second
Office Action. However, this third article supports
applicant’s position that its mark INDUSTRIAL BUILDING
SERVICES is capable of functioning as a trademark. This
third article is from the January 16, 1995 edition of the
Sun-Sentinel of Fort Lauderdale, applicant’s primary
place of business. This article clearly refers to
applicant as a $7 million company with nine locations
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Ser. No. 75/215,495

throughout Florida. The article then concludes with the
following sentence: “The business has expanded into
Industrial Building Services, which incorporates air
conditioning, plumbing, general contracting, electrical
and building automation.” (emphasis added).
In response to the first two articles, applicant
makes two points. First, applicant states that as
demonstrated by the article from the News & Record of
Greensboro, North Carolina, if the term “industrial
building services” is generic for any type of services,
it is generic for “housekeeping and janitorial services.”
(Applicant’s Reply Brief page 2). Second, as for the
article from The Washington Post, applicant simply notes
that it is impossible to tell from this article what
services the term “industrial building services” is
referring to. (Applicant’s Reply Brief page 2).
We agree with applicant on both points. To
elaborate, the article from the News & Record in no way
supports the notion that applicant’s mark INDUSTRIAL
BUILDING SERVICES is a generic term for applicant’s
plumbing services, electrical contracting services, air
conditioning services and the like. At the very most,
this article tends to demonstrate
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that the term “industrial building services” may be a
generic term for commercial janitorial services. We also
agree with applicant that the appearance of the term
“industrial building services” in The Washington Post
article sheds absolutely no light on what these services
might be. Thus, this article is of no probative value in
showing that applicant’s mark INDUSTRIAL BUILDING
SERVICES is a generic term for the services set forth in
applicant’s application.
In short, based upon the present record, we find
that the PTO has simply failed to make the required
“substantial showing” or “strong showing” that the phrase
INDUSTRIAL BUILDING SERVICES is generic for applicant’s
services. Merrill Lynch, 4 USPQ2d at 1143 and K-T Zoe
Furniture, 29 USPQ2d at 1788. At an absolute minimum,
there exist doubts on the issue of genericness, and
accordingly, we must resolve such doubts in favor of the
applicant. Waverly, 27 USPQ2d at 1624.
Decision: The refusal to register is reversed.

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