Vulcan Industrial Holdings LLC

Trademark Trial and Appeal Board

Sep 25, 2020

87772002 (T.T.A.B. Sep. 25, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 25, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vulcan Industrial Holdings LLC
_____

Serial No. 87772002
_____

Tye Biasco of Patterson Thuente Pedersen PA,
for Vulcan Industrial Holdings LLC.
Kamal S. Bal, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Kuhlke, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Vulcan Industrial Holdings LLC (“Applicant”) seeks registration on the
Supplemental Register of the mark ADVANCED STAINLESS (in standard
characters) for, as amended,
Oil and gas industry machine parts, namely, pump fluid
end assemblies including positive displacement
reciprocating pump fluid cylinders/fluid end bodies,
crankshafts, pump components, and subsea manifolds
in International Class 7.
Serial No. 87772002
- 2 -
The Trademark Examining Attorney has finally refused registration on the
Supplemental Register under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-
52, 1127, “for failure to function as a trademark and Sections 1 and 45 as mere
advertising material, … on the grounds that the applied-for mark, as used on the
specimens of record, does not function as a trademark to indicate the source of
applicant’s goods and to identify and distinguish them from others and also because
it [sic] is not an acceptable display associated with the goods and appears to be mere
advertising material.” Examining Attorney’s brief, pp. 1-2.1 Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Background
Before proceeding to the merits of the appeal, a review of the relevant prosecution
history is in order. Application Serial No. 87772002 was filed on January 26, 2018,
initially seeking registration on the Principal Register of the wording ADVANCED
STAINLESS, based upon Applicant’s allegation of use of the mark anywhere and in
commerce at least as early as September 1, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
A first Office Action issued on May 11, 2018, in-part refusing registration under
Sections 1 and 45, because the specimen did not show use of the applied-for mark in
commerce in connection with any of the goods identified in the application.2 Applicant

1 4 TTABVUE 2-3.
2 The application also was refused on the ground that the wording ADVANCED STAINLESS
is merely descriptive of the goods pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
Serial No. 87772002
- 3 -
was required to submit a more definite identification. The original specimen that
Applicant described as a “product technical comparison sheet used with product”
(Specimen no. 1) is reproduced below:3

§ 1052(e)(1), but the refusal was withdrawn after Applicant amended its application to seek
registration on the Supplemental Register.
3 Applicant initially sought registration in two international classes, Class 7 (mistakenly
referenced by the Examining Attorney in the first office action as Class 40) and Class 12.
Applicant submitted the same specimen for each class of goods. The Examining Attorney
required a more definite identification of goods, which was resolved by an acceptable
amendment to the Class 7 goods and a deletion of the Class 12 goods.

Serial No. 87772002
- 4 -
Applicant responded to the refusal by submitting the substitute specimen that
Applicant described as a “screen-shot of applicant’s website showing the mark used
in connection with goods” (Specimen no. 2) reproduced below:4

4 Applicant made no argument in response to the initial specimen refusal.
Serial No. 87772002
- 5 -

Citing Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R.
§2.56(a), the Examining Attorney, in a second Office Action issued December 5, 2019,
refused registration and required a substitute specimen, because the webpage
specimen in International Class 7 is not an acceptable display associated with the
goods and appears to be mere advertising,” thus “fail[ing] to show the applied-for
mark in commerce.”5 The Examining Attorney argues that although the specimen
shows the mark in use with a textual description of Applicant’s goods and a means
for requesting a quote for the goods, it does not show a means for placing an order to
purchase the goods.6
Applicant thereafter on June 5, 2019, filed a Petition to Revive,7 which was
construed as a “request for reconsideration,” that included the submission of its

5 December 4, 2019 second Office Action; TSDR 3.
6 Id. at TSDR 4.
7 Applicant also filed a Notice of Appeal on June 6, 2020, checking the “request for
reconsideration” box, and the appeal was suspended and the case remanded to the Examining
Attorney for further consideration. Thereafter, the Examining Attorney’s June 12, 2017 third
Serial No. 87772002
- 6 -
second substitute specimen that Applicant described as a “technical document used
in connection with the goods” (Specimen no. 3), shown below:

Office Action issued addressing this filing, and on June 25, 2019, the Office issued a
communication finding the “Petition to Revive” moot because the June 12, 2017 Office Action
gave Applicant six months to respond to additional matters.
Serial No. 87772002
- 7 -

Serial No. 87772002
- 8 -

Serial No. 87772002
- 9 -

On June 12, 2019, the Examining Attorney issued a third Office Action refusing
registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127,
because the applied-for mark, as used on the second substitute specimen of record,
does not function as a trademark to indicate the source of Applicant’s goods and to
identify and distinguish them from others. The Examining Attorney particularly
maintains that “[Applicant’s] applied-for mark, as shown on the specimen, does not
Serial No. 87772002
- 10 -
function as a trademark because it is embedded into the text and as such would not
be perceived as a mark.”8
Applicant, on December 11, 2019, responded by filing a third substitute specimen,
reproduced in relevant part below (emphasis supplied), consisting of warranty
documents accompanying products sold under the mark:

(document continued on the next page)

8 June 12, 2019 Office Action; TSDR 2.
Serial No. 87772002
- 11 -

(page 2 of document continued on the next page)
Serial No. 87772002
- 12 -

On January 8, 2020, the Examining Attorney issued a fourth and Final Office
Action, finding that the third substitute specimen did not show proper use of the
applied-for mark in commerce, because it does not function as a trademark to indicate
the source of Applicant’s goods and to identify and distinguish them from others as
required under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127.
Proceedings subsequently resumed and Applicant filed its appeal brief based
solely on the specimen requirement as it pertains to the third substitute specimen
shown directly above. The appeal is fully briefed. We affirm.
II. Issue
The sole question before us is whether Applicant has submitted an acceptable
specimen within the meaning of Sections 1, 2 and 45 of the Trademark Act,
demonstrating use in commerce of the applied-for mark ADVANCED STAINLESS in
connection with the identified goods.
Serial No. 87772002
- 13 -
III. Applicable Law/Discussion
As has been frequently stated, “[b]efore there can be registration, there must be a
trademark.” In re Bose Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 896,
192 USPQ 213, 215 (CCPA 1978). The starting point for our analysis is Section 45 of
the Trademark Act, as amended, where “trademark” is defined as “any word, name,
symbol, or device, or any combination thereof used by a person ... to identify and
distinguish his or her goods, including a unique product, from those manufactured or
sold by others and to indicate the source of goods, even if that source is unknown.” 15
U.S.C. 1127. This section further provides that a mark shall be deemed to be in use
in commerce on goods when “it is placed in any manner on the goods or their
containers or the displays associated therewith …, or if the nature of the goods makes
such placement impracticable, then on documents associated with the goods or their
sale, and the goods are sold or transported in commerce.” Id. Thus, the mark must be
used in such a manner that it would be readily perceived as identifying the specified
goods and distinguishing a single source or origin for the goods. See e.g., In re
TracFone Wireless, Inc., 2019 USPQ2d 222983, at *1-2 (TTAB 2019) (“The key
question is whether the asserted mark would be perceived as a source indicator for
Applicant’s [goods or] services.”); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862
(TTAB 2006) (“[T]he critical inquiry is whether the asserted mark would be perceived
as a source indicator.”); In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381
(TTAB 1992). The mere fact that a designation appears on the specimens of record
does not make it a trademark. Safariland Hunting, supra.
Serial No. 87772002
- 14 -
As the Board made clear in Aerospace Optics:
To be a mark, the term must be used in a manner
calculated to project to purchasers or potential purchasers
a single source or origin for the goods. In re Volvo [Cars of
North America Inc., 46 USPQ2d 1455 (TTAB 1998)]. We
determine whether this has been achieved by examining
the specimens of use along with any other relevant
material submitted by applicant during prosecution of the
application. (citation omitted)
78 USPQ2d at 1864. Here, Applicant only made its specimens of record. Because
Applicant did not argue, either during prosecution or in its brief, the refusal in
connection with the first, second and third specimens, Applicant waived its appeal of
the refusal with respect to those specimens. See TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (2020) § 1203.02(g) and cases cited therein. We also find,
however, they are properly refused for the reasons presented by the Examining
Attorney. We turn to the fourth specimen which consists of warranty documents
which accompany Applicant’s products when they are sold, the most relevant portions
of which we highlight below:

***
Serial No. 87772002
- 15 -

The Examining Attorney maintains that Applicant’s applied-for mark
ADVANCED STAINLESS, as shown on the warranty specimen, fails to function as a
mark because it is imbedded into the text and, as such, would not be perceived as a
mark. The Examining Attorney argues that, as it appears on the specimen,
Applicant’s applied-for mark fails to indicate source because 1) it appears in a single
instance in the middle of the sentence in the third warranty statement on page one;
2) it is in the same size, color and font as the surrounding text and thus is not
sufficiently set off from the surrounding text; 3) although the first letter in each term
is capitalized, that is not enough to create such prominence where it functions as a
source of the goods; and 4) Applicant’s use of the “TM” symbol next to the mark is not
Serial No. 87772002
- 16 -
sufficient to place consumers on notice that “ADVANCED STAINLESS” is a
trademark.
The Examining Attorney also contends that the applied-for mark is merely
descriptive as registration is sought on the Supplemental Register, and it appears as
part of descriptive text indicating a feature of the fluid ends in the warranty
specimen, particularly arguing with regard to the wording ADVANCED
STAINLESS:9
Specifically, it indicates the fluid ends feature superior
stainless steel material, namely, advanced stainless. Thus,
the highly descriptive nature of the applied-for mark lends
itself to being swallowed by the surrounding text as merely
describing a feature and characteristic of the applicant’s
fluid end products, thereby further diminishing its
prominence as a trademark to indicate source of the goods.
Applicant, by contrast, maintains that the specimen adequately shows use of its
mark in commerce that distinguishes Applicant as the source of the associated goods.
Applicant contends that the “TM” symbol is utilized by Applicant to expressly claim
common law rights in Applicant’s mark as a trademark and, pointing to the
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) Section 904.03(B)(1)
(Oct. 2018), argues that such use places the purchaser on notice that Applicant is
claiming such rights.10 Applicant also notes that its applied-for mark is presented
with the first letters in each word in the applied-for mark, “A” and “S,” in
capitalization to create a distinct commercial impression; capitalization of a word not

9 9 TTABVUE 7.
10 7 TTABVUE 5 (Applicant’s br. p 4).
Serial No. 87772002
- 17 -
appearing at the beginning of a sentence being unusual and further prompting
consumers to understand that wording on the specimens is a trademark. Applicant
concludes that its mark appears directly in front of the generic term for the goods,
namely, “fluid ends” and that, “combined with the fact that its mark is offset with
capitalization and use of the ‘TM’ symbol immediately adjacent to Applicant’s mark,
gives relevant consumers (those that have purchased the actual product) the clear
perception that the use is as a trademark.”11
It is well established that the refusal of failure to function is properly based on
Sections 1, 2 and 45 of the Act. See, e.g., In re Volvo, supra. In this case, we find that
the manner in which the applied-for mark is used on the specimen of use is not
indicative of trademark use. Notwithstanding the capitalization of the letters “A” and
“S,” the term ADVANCED STAINLESS is barely noticeable as it appears at the
bottom of the first page of the warranty document and is buried within the text, in
the same font size and lettering as the surrounding text. In addition, Applicant’s
multiple use of first-letter capitalization in the warranty, e.g., in connection with the
words Company, Purchaser, Pump Files, and Job and Pressure Data, is far from being
“unusual,” as Applicant argues, resulting in dilution of that manner of presentation
and negating the perception that such capitalization signals a distinct commercial
impression apart from the plain meaning of the words or terms.
The term “ADVANCED STAINLESS” also appears in the warranty document in
the first statement as follows: “The Company will have a [sic] 800 operating hour

11 7 TTABVUE 6-7. (Applicant’s brief, pp. 5-6).
Serial No. 87772002
- 18 -
warranty for any fluid end constructed from its proprietary Advanced Stainless™
steel, or 12 months from the time of delivery, whichever is achieved sooner.” While
an applicant may use the same wording as a trademark to identify multiple goods,
the term ADVANCED STAINLESS, Applicant’s use in this context is likely to be
perceived by purchasers and prospective purchasers as identifying an aspect of the
goods, namely, the material composition of the identified “fluid pump end
assemblies,” and not their source. Indeed, in its November 12, 2018 response,
Applicant corroborated our finding by stating that:
“ADVANCED STAINLESS” is used on applicant’s website
in reference to stainless steel that has been engineered to
eliminate deficiencies inherent to common stainless steel
while simultaneously improving the critical mechanical
properties that directly influence fluid end longevity.
Applicant’s goods are not merely a good that is far superior
in development or progress and unmarked by or resistant
to stains or discoloration. … Applicant’s goods are superior
not with regard to being “stainless,” but in terms of
strength and metallurgical superiority.
TSDR at 1 and 4.
Moreover, given that Applicant’s additional use of the term ADVANCED
STAINLESS is in the first statement of the warranty and identifies its “proprietary”
steel, the second instance of the term, being embedded within the text in statement
3 at the bottom of page 1, is likely to be viewed as descriptive or informational matter
instead of a source of origin in relation to Applicant’s fluid pump end assemblies. Eg.,
Aerospace Optics, supra. (the manner in which the purported mark is used does not
support a finding that consumers would perceive it as a mark); In re Gilbert Eiseman,
P.C., 220 UPSQ 89, 90 (TTAB 1983) (purported mark conveys advertising or
Serial No. 87772002
- 19 -
promotional information rather than identifying and distinguishing source); In re
Royal Viking Line A/S, 216 UPSQ 795, 797 (TTAB 1982) (purported mark would not
be perceived as a source indicator); In re Morganroth, 208 USPQ 284, 288 (TTAB
1980) (the purported mark was so obfuscated in the specimen that it was not likely
to make any impression on the reader); In re Dun-Donnelley Publishing Corp., 205
USPQ 575, 578 (TTAB 1979) (purported mark would be perceived as a indicia of the
contents of the magazine, not as an indicia of source).
As to Applicant’s use of the “TM” designation immediately after ADVANCED
STAINLESS, it is the perception of the relevant ordinary consumer that determines
whether the asserted mark functions as a mark, not the applicant’s intent, hope or
expectation that it does so. See In re Vertex Grp. LLC, 89 USPQ2d 1694, 1701 n. 16
(TTAB 2009); Aerospace Optics, 78 USPQ2d at 1864; TMEP 1202. In the present case,
Applicant’s use of the “TM” designation does not cause the term ADVANCED
STAINLESS to be viewed as a trademark for its “fluid pump end assemblies.”
We conclude that the manner in which the applied-for mark is being used in the
specimen does not support a finding that potential consumers would perceive it as a
trademark identifying the source of origin of Applicant’s goods. This conclusion is not
altered by the fact that a TM symbol is displayed adjacent to the word ADVANCED
STAINLESS.
Decision: The refusal to register under Sections 1, 2 and 45 of the Act is affirmed.
Bergsman, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority’s decision refusing registration on the
Serial No. 87772002
- 20 -
ground that ADVANCED STAINLESS “for failure to function as a trademark and
Sections 1 and 45 as mere advertising material, … on the grounds that the applied-
for mark, as used on the specimens of record, does not function as a trademark to
indicate the source of applicant’s goods and to identify and distinguish them from
others and also because it [sic] is not an acceptable display associated with the goods
and appears to be mere advertising material.”
As noted in the majority opinion, the mark ADVANCED STAINLESS appears in
the warranty twice:
Hydraulic Fracturing Pump Fluid End Warranty
* * *
1. The Company will have a 800 operating hour
warranty for any fluid end constructed from its
proprietary Advanced Stainless™ steel, …
* * *
2. The credit can only be applied to the purchase of a
new Advanced Stainless™ fluid end from the
Company.
Consumers will construe the display of Applicant’s mark as Advanced Stainless
[brand] steel and Advanced Stainless [brand] fluid end because the warranty
document is moving with machine parts sold by Applicant using the ADVANCED
STAINLESS. Consumers are not encountering the mark in a vacuum.
Applicant’s use of the “TM” designation reinforces the prominence of ADVANCED
STAINLESS as a trademark on the warranty document. TMEP § 904.03(i)(B)(1) (“A
mark may appear more prominent when the specimen: … uses the ‘TM’ designation
with the applied-for mark (however, the designation alone does not transform a mark
Serial No. 87772002
- 21 -
into a trademark if other considerations indicate it does not function as a
trademark.”). See also In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed.
Cir. 2009) (“Though not dispositive, the ‘use of the designation ‘TM’ . . . lends a degree
of visual prominence to the term.’” (quoting In re Dell Inc., 71 USPQ2d 1725, 1729
(TTAB 2004)).
Finally, Applicant displays ADVANCED STAINLESS using an upper-case “A”
and “S” further reinforcing the prominence of ADVANCED STAINLESS as a
trademark. See In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1831 (TTAB 2011)
(“[I]n the English language, initial capitalization of a term or phrase is generally used
to designate a brand name, as opposed to a generic term.”). The only other word or
name on the specimen with initial upper-case letter is “Company,” an obvious
reference to Applicant. Under these circumstances, customers and prospective
customers are likely to view “Advanced Stainless™” as a trademark.
Accordingly, I would reverse the refusal.