Modern Builders Supply, Inc.

Trademark Trial and Appeal Board

Mar 17, 2004

No. 78062671 (T.T.A.B. Mar. 17, 2004)

Mailed: 3/17/04
Paper No. 15
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Modern Builders Supply, Inc.
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Serial Nos. 78062665 and 78062671
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Oliver E. Todd, Jr. of MacMillan, Sobanski & Todd, LLC for
Modern Builders Supply, Inc.
Tonja M. Gaskins, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney.
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Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On May 9, 2001, Modern Builders Supply, Inc. filed
applications to register ENERGYTECH1 and ENERGYWELD2 as
trademarks for "non-metal windows and doors." Each
application was originally based on an asserted bona fide
1 Application Serial No. 78062665, filed May 9, 2001.
2 Application Serial NO. 78062671, filed May 9, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 78062665 and 78062671
2
intention to use the mark in commerce. After notices of
allowance issued, applicant filed Statements of Use. After
the examination of these Statements of Use, the Examining
Attorney refused registration pursuant to Trademark Rules
2.56 and 2.88(b)(2), on the basis that applicant failed to
submit a specimen showing use of the applied-for mark for
the identified goods. When these refusals were made final,
applicant filed notices of appeal.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not request an oral hearing.
Because the two appeals involve common questions of fact
and law, we are deciding both in a single opinion.
Trademark Rule 2.88(b)(2) provides that the Statement
of Use must include "one specimen of the mark as actually
used in commerce." It refers to Trademark Rule 2.56 for
the requirements for specimens. Trademark Rule 2.56(a)
provides, in part, that a statement of use under Rule 2.88
must include one specimen showing the mark as used on or in
connection with the goods. Rule 2.56(b)(1) further
provides, in part, that a trademark specimen is a label,
tag, or container for the goods, or a display associated
with the goods."
In order to determine whether applicant's specimens
show use of the involved marks on the goods, we must
Ser Nos. 78062665 and 78062671
3
examine the specimens themselves. Each application
contains an identical specimen, which applicant has
described as "a label that is affixed to all windows and
doors or their packaging manufactured by Polaris
Technologies." Response dated October 8, 2002. Applicant
has further explained that Polaris Technologies is
applicant's window and door manufacturing division. The
"label" is shown below, in reduced form:
As can be seen on the reproduced specimen, the
applied-for marks ENERGYTECH and ENERGYWELD are shown on
the label in a box headed, "Look for these other fine
Polaris® products..." There follows a list of various
trademarks, including ENERGY WALL, ENERGYTECH, MASTERTECH,
Ser Nos. 78062665 and 78062671
4
MASTERCRAFT and EVERVIEW. Included in this list are
ENERGYTECH and ENERGYWELD.
It is clear to us, as it would be clear to anyone
viewing this specimen, that the mark for the product on
which the label appears is POLARIS, and that ENERGYTECH and
ENERGYWELD, although marks used by applicant's Polaris
division, are not the marks under which the goods to which
the label is applied are sold. On the contrary, the label
states unequivocally that ENERGYTECH and ENERGYWELD are
trademarks for "other" Polaris products. Accordingly, the
label which applicant has submitted as its specimens does
not show use of the applied-for marks for the goods.
Decision: The refusals of registration are affirmed.