wTe Corporation

Trademark Trial and Appeal Board

May 13, 2008

No. 78227268 (T.T.A.B. May. 13, 2008)

Mailed:
13 May 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re wTe Corporation
________

Serial Nos. 78227268 and 78227272
_______

David Wolf of Wolf Greenfield & Sacks, P.C. for wTe
Corporation.

Monique C. Miller, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Holtzman, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 19, 2003, applicant wTe Corporation filed two
applications to register the mark SPECTRAMET in standard
character form on the Principal Register for the following
goods and services:
No. 78227268 – Contract processing of metals using
optoelectric and spectrographic sensors to rapidly
identify and optionally sort metals and other
materials by their chemical composition in Class 40.

No. 78227272 – Optoelectronic apparatus for measuring
and analyzing the composition of metal in Class 9.

Both applications were originally based on applicant’s
allegation of a bona fide intent to use the marks in
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser Nos. 78227268 and 78227272

2
commerce. After the marks were published for opposition,
applicant filed statements of use and provided the
following dates of use:
No. 78227268
First Use Anywhere – April 1994
First Use in Commerce - March 3, 2005

No. 78227272
First Use Anywhere – January 20, 2006
First Use in Commerce - January 20, 20061

Refusals

The examining attorney has refused registration in
both applications on the ground that “the specimen does not
match the drawing of the mark.” ‘268 and ‘272 Briefs at
11.2 The examining attorney has further explained that the
issue is whether “the drawing is a substantially exact
representation of the mark as used on or in connection with
the goods, as shown by the specimen. 37 C.F.R. § 2.51.”
‘272 Brief at 2. See also ‘268 Brief at 2 (“whether
applicant’s mark, as depicted on the drawing, matches the
mark show[n] on the specimen of use, as required under 37

1 On July, 30, 2007, the board granted applicant’s motion to
consolidate these appeals.
2 In the ‘272 application, the examining attorney also objected
to the new evidence that applicant attached to its brief. We
sustain the objection and we will not consider evidence that has
been submitted for the first time with applicant’s brief. 37 CFR
§ 2.142(d). See also In re First Draft Inc., 76 USPQ2d 1183,
1192 (TTAB 2005) (“Submission of the TARR printout with its
appeal brief, however, is an untimely submission of this
evidence”).
Ser Nos. 78227268 and 78227272

3
C.F.R. § 2.51; TMEP §§ 807.12-12(a)”). In the ‘268
application, the examining attorney has also refused
registration on the ground that “the specimen does not show
evidence of actual service mark use because it does not
show use of the mark in the sale or advertising of the
services.” ‘268 Brief at 1.
Drawings and Specimens
We begin by examining the specimens and drawings to
determine whether the mark shown in the drawing is a
substantially exact representation of the mark on
applicant’s specimen. The “drawing depicts the mark sought
to be registered.” 37 CFR § 2.52. “In an application
under section 1(b) of the Act, the drawing of the mark must
be a substantially exact representation of the mark as
intended to be used on or in connection with the goods
and/or services specified in the application, and once an
amendment to allege use under §2.76 or a statement of use
under §2.88 has been filed, the drawing of the mark must be
a substantially exact representation of the mark as used on
or in connection with the goods and/or services.” 37 CFR
§ 2.51(b). See also In re Hacot-Columbier, 105 F.3d 616,
41 USPQ2d 1523, 1525 (Fed. Cir. 1997) (“The regulation’s
term ‘substantially’ permits some inconsequential variation
from the ‘exact representation’ standard”).
Ser Nos. 78227268 and 78227272

4
The drawing in both applications is a standard
character drawing showing the mark as SPECTRAMET. The
specimens show the mark used as follows:
‘268 Application ‘272 Application

The examining attorney argues that the marks on the
specimens do not match the mark in the drawing for the
following reasons:
Applicant seeks to register the typed mark SPECTRAMET.
In the specimen submitted with the statement of use on
July 24, 2006, the applicant has replaced the letter
“C” in the mark with an arrow design. The design
consists of an arrow within an arrow in contrasting
shades, in which the outer arrow is dark and
surrounding the inner arrow in white. The inner arrow
is the reverse of the outer arrow, and turns in to the
outer arrow creating a design element that gives a
general circular impression similar to the yin and
yang symbol, and [is] clearly different from the
letter “C” as applicant argues…

Furthermore, because of the circular nature of the
arrow design that is depicted on the specimen of use,
the arrow design could be perceived as representing
the letter “O,” thereby creating a completely
different commercial impression, SPEOTRAMET, from that
Ser Nos. 78227268 and 78227272

5
of SPECTRAMET, the applied for mark… Moreover, since
the applicant’s mark is a coined term, it is not
obvious from viewing the context of the arrow design
in the mark that it is necessarily representing the
letter “C.”

‘272 Brief at 2-3. See also ‘268 Brief at unnumbered p. 3
(similar arguments).
Applicant responds by arguing that the “specimen
submitted by applicant depicts the word, SPECTRAMET, in a
slanted, block-style font. The letter ‘C’ has been
stylized to appear as interlocking arrows, however such
stylization conforms both in size and slant to the other
letters comprising this word. This depiction of the letter
‘C’ therefore is not an independent design element, but a
subtle modification of the chosen font style.” ‘268 Reply
Brief at 5.3 Applicant also argues that “application for a
standard character mark is made with the expectation that
the applicant is merely claiming a generic form of the
mark… [t]here is no corresponding requirement, however,
that the commercial use of the mark should match the same
generic, typed form.” ‘268 Reply Brief at 6.
The TMEP sets out the following considerations for
when a special form drawing is appropriate.

3 Applicant’s ‘272 Reply Brief (unnumbered p. 3) “relies upon the
same arguments made in the copending Brief on Appeal relating to
Application Serial No. 78/227268 as set forth under Argument
Section III(A) from pages 2-6 inclusive.”
Ser Nos. 78227268 and 78227272

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The USPTO encourages the use of standard character
drawings. As a general rule, an applicant may submit
a standard character drawing when the word, letter,
numeral, or combination thereof creates a distinct
commercial impression apart from any stylization or
design element appearing on the specimen. If a mark
remains the same in essence and is recognizable
regardless of the form or manner of display that is
presented, displaying the mark in standard character
format affords a quick and efficient way of showing
the essence of the mark.

TMEP § 807.04(b) (5th ed. September 2007).

We agree with applicant that when an applicant submits
a standard character drawing it will often not be an “exact
representation” of the mark as shown on the drawing because
the very purpose of the typed or standard character drawing
rule is to permit an applicant to apply for a mark without
showing any particular style or design. The mere fact that
there is a design element associated with the word in the
mark does not prevent an applicant from using a typed or
standard character drawing. For example in In re Oroweat
Baking Co., 171 USPQ 168 (TTAB 1971), the board held that
the mark OROWEAT could be registered without a special form
drawing even though the mark as used showed a design within
the letters “O” as shown below:

Ser Nos. 78227268 and 78227272

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In another case, the board reversed a refusal to
register the term HY-LINE even though the specimens showed
the words “HY-” and “LINE” separated by an “X” formed by
drill bits (the applicant’s goods). In re Lear Siegler,
Inc., 190 USPQ 317, 317-18 (TTAB 1976) (“‘HY-LINE’ is the
only literal portion of the mark and therefore it is the
part of the mark which will be used to order and
distinguish the goods”). Finally, in a third case, even
when the specimens showed two words sharing overlapping
letters, the board permitted the registration of the term
DUMPMASTER separately. In re Dempster Brothers, Inc., 132
USPQ 300 (TTAB 1961):

In the applications before us, we agree that the
determination of whether a mark shown in the drawing is a
substantially exact representation of the mark shown on the
specimen is “assuredly a subjective one.” In re R.J.
Reynolds Tobacco Co., 222 USPQ 552, 552 (TTAB 1984)
(Applicant permitted to register BE MORE YOU even though
the specimen showed use of the mark with hyphens). When a
trademark is used in a stylized form, there is always a
possibility that some purchasers may interpret the stylized
letters differently. For example in the Lear Siegler case,
Ser Nos. 78227268 and 78227272

8
it certainly was possible that the mark could have been
interpreted by some purchasers to be HY-X LINE rather than
HY-LINE with a cross bit design in between the word
portions of the mark. The mere possibility that one letter
in applicant’s mark may be perceived as an “O” or a “C” is
not necessarily fatal to applicant’s use of a standard
character drawing. If this were the case, it would be
difficult to use a standard character drawing whenever an
uppercase letter “O” or the lowercase letter “l” is used
because of their similarity to the numerals “0” (zero) and
“1” (one).
Here, while it is not beyond the realm of possibility
that some purchasers may, at least initially, wonder if
applicant’s mark is actually SPEOTRAMET, most would view
the mark as applicant indicates, SPECTRAMET. Not only is
“Spectr-” a more common beginning for a word in English
(spectral, spectrographic, spectrogram, spectrometer,
spectrophotometer, spectroscope, spectrum, etc.), but also
the fourth letter, as used by applicant, simply looks more
similar to a “C” than an “O.” There would be little reason
for consumers to view the mark as displayed on the specimen
as anything other than SPECTRAMET. We add that the arrow
design is not a very significant element and the mark in
the drawing and the specimens remain “the same in essence.”
Ser Nos. 78227268 and 78227272

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The examining attorney’s cases are distinguishable.
In In re United Services Life Insurance Co., 181 USPQ 655,
656 (TTAB 1973), the actual display of the mark was a
critical factor in permitting the expression to function as
a trademark:
The commercial impression of a mark is engendered by
the mark as a whole and, more often than not, by the
particular display or arrangement of the components
thereof. This is especially so in the present case
because the words “FOR LIFE INSURANCE SEE US” in an
ordinary display is nothing more than a trite
impression that may be devoid of the capability of
identifying and distinguishing the life insurance
services of any one particular company. It is
manifestly the enlargement of the letters “US” (the
initial letters of the distinguishing words of
applicant’s corporate name) and the underlining
thereof that bestows upon the mark the double entendre
which enables it to function as an indication of
origin to purchasers of life insurance and therefore
removes it from the category of unregistrable marks
and slogans.

In In re Morton Norwich Products, Inc., 221 USPQ 1023,
1023 (TTAB 1983), the board affirmed the refusal to
register the mark LABID because the actual display of the
mark involved a lower case “a” with a diacritical accent
mark, that set off the “BID” portion of applicant’s mark
and “the ‘BID’ portion of applicant's mark has an accepted
meaning when applied as an abbreviation in drug
prescriptions, i.e., twice a day.” In applicant’s case,
the use of the interlocking arrows to form the fourth
letter in applicant’s mark does not result in any such
Ser Nos. 78227268 and 78227272

10
highlighting or emphasis of a particular element that has
significance when considered on its own.
A mark cannot be shown as a typed or standard
character drawing if it “is stylized or has a design
element [that] engenders an uncommon or ‘special’
commercial impression that would be altered or lost were
registration to issue based on a typed drawing.” Morton
Norwich, 221 USPQ at 1023. The board has discussed when a
special form drawing is required and a typed drawing would,
therefore, be inappropriate.
In the particular instance it is our opinion that the
adjective “special” must be given its ordinary meaning
which would be “uncommon,” “noteworthy,”
“extraordinary.”

As we view applicant’s mark as used[,] the compound
term “luncheon time” is presented in an uncommon
manner to the extent that a prospective purchaser's
initial impression of the mark might well be other
than that which applicant may intend to convey by the
well understood term “luncheon time.”

In re Dartmouth Marketing Co., Inc., 154 USPQ 557, 558
(TTAB 1967) (parentheticals omitted).
In the present case, we cannot find that the display
of applicant’s mark is uncommon, noteworthy, or
extraordinary. Applicant’s mark, like many marks, contains
a design, but the Office encourages applicants to submit
drawings that depict their marks in standard character
form. See TMEP § 807.04(b). Here, inasmuch as the term
Ser Nos. 78227268 and 78227272

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SPECTRAMET creates a distinct commercial impression apart
from any stylization or design element appearing on the
‘268 and ‘272 specimens, we reverse the examining
attorney’s refusals to register on the ground that the mark
in the drawing is not a substantially exact representation
of the mark as displayed on the specimens in these cases.
Service Mark Use in ‘268 Application
The examining attorney also refused registration in
the ‘268 application on the ground that the specimens do
not show actual service mark use, citing 15 U.S.C. §§ 1051-
1053 and 1127 and 37 CFR §§ 2.56 and 2.76(b)(2). The
examining attorney argues that the “specimen of record
comprises a packaging label and is unacceptable as evidence
of actual service mark use because it does not show use of
the mark in the sale or advertising of the services, nor
does the specimen create in the mind of the purchaser an
association between the mark and the service activity.”
‘268 Brief at 5.
In response, applicant argues that:
Although the specimen provided by Applicant is a
packaging label in the sense that it is affixed to
boxes being mailed to customers, this specimen and the
information contained within it constitute an invoice
of the service provided to the customer clearly
displayed on the customer’s final product…
Accordingly, while the specimen offered may be
referred to as a “label” it is also much more. The
specimen offered by Applicant not only provides
Ser Nos. 78227268 and 78227272

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sufficient information to create an association
between the SPECTRAMET mark and the service provided,
but use of this specimen in the manner chosen by
Applicant allows for easy identification of the
respective service with its source.

‘268 Reply Brief at 11-12.
“The question whether the subject matter of an
application for registration functions as a mark is
determined by examining the specimens along with any other
relevant material submitted by applicant during prosecution
of the application.” In re The Signal Companies, Inc., 228
USPQ 956, 957 (TTAB 1986).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.

In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA
1976) (footnote omitted).
It is important that the specimens support use of the
mark in association with the services for which applicant
is seeking registration. In another case involving
specimens consisting of labels, the board held that they
did not show use in association with custom manufacturing
services. In re Johnson Controls Inc., 33 USPQ2d 1318,
1320 (TTAB 1994) (“[T]he labels submitted as specimens with
Ser Nos. 78227268 and 78227272

13
this application do not show use of the mark sought to be
registered as a service mark for the custom manufacture of
valves. If the application sought registration as a
trademark for these fluid control products, these specimens
would clearly be satisfactory, but that is not the issue
here”). See also In re Adair, 45 USPQ2d 1211 (TTAB 1997)
(Mark TREE ARTS CO. and design may function as a mark for
goods but specimen did not show the term used as a mark for
the service of designing permanently decorated Christmas
trees).
The CCPA has noted that:
The requirement that a mark must be "used in the sale
or advertising of services" to be registered as a
service mark is clear and specific. We think it is
not met by evidence which only shows use of the mark
as the name of a process and that the company is in
the business of rendering services generally, even
though the advertising of the services appears in the
same brochure in which the name of the process is
used. The minimum requirement is some direct
association between the offer of services and the mark
sought to be registered therefor.

In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ
456, 457 (CCPA 1973).
In this case, applicant admits that it uses the mark
as part of a return address on a “packaging label that is
affixed to boxes being mailed to customers.”

Ser Nos. 78227268 and 78227272

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The CCPA has made it clear that there must be “some
direct association between the offer of services and the
mark sought to be registered.” Applicant’s return address
on products that it already made and sold to the customer
does not show a connection between the offer of contract
processing of metals services and the mark.
Applicant relies on In re Metriplex, Inc., 23 USPQ2d
1315 (TTAB 1992) as well as In re Eagle Fence Rentals,
Inc., 231 USPQ 228 (TTAB 1986) in support of its position.
However, as the board subsequently pointed out:
As was the case in Metriplex, there are situations in
which the specimens do not contain a reference to the
services, but yet are acceptable, since they show
direct use of the mark in connection with the
rendering of the services. Here we have no evidence
of the rendering of the consultation services.

In re Monograms America Inc., 51 USPQ2d 1317, 1319 n.2
(TTAB 1999).
Similarly, while the specimen may suggest that
applicant is providing some type of goods or services, it
is not at all clear from applicant’s specimen as it was in
Metriplex or Eagle Fence that it is providing the specific
service for which it seeks registration. See Monograms
America Inc., 51 USPQ2d at 1319 (“While these notations
Ser Nos. 78227268 and 78227272

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might be interpreted as an indication that this is an
association or ‘network’ of ‘embroidery stores,’ there is
no indication as to the purpose or activities of this
association. There is no reference whatsoever to any type
of consultation service, even in the area of monogramming
per se, much less in the management of, or advertising for,
the stores offering this monogramming”).
Therefore, we conclude that applicant’s specimen does
not show actual service mark use of the mark SPECTRAMET for
contract processing of metals using optoelectric and
spectrographic sensors to rapidly identify and optionally
sort metals and other materials by their chemical
composition.
Decision: The refusals to register the marks in
application Serial Nos. 78227268 and 78227272 on the ground
that the mark on the drawing is not a substantially exact
representation of the mark on the specimen are reversed.
In Serial No. 78227268, the refusal to register on the
ground that the specimen does not show actual service mark
use is affirmed.