Catto Creations, LLCDownload PDFTrademark Trial and Appeal BoardMay 28, 2013No. 85092883 (T.T.A.B. May. 28, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 28, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Catto Creations, LLC _____ Serial No. 85092883 _____ Aaron T. Olejniczak for applicant Catto Creations, LLC. Michael Rademacher, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Seeherman, Cataldo and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Catto Creations, LLC filed an application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register on the Principal Register the special form mark Serial No. 85092883 2 for “precious and semi-precious crystal stones and beads for use in jewelry” in International Class 14.1 After publication of the mark for opposition, applicant filed a statement of use with the following specimen: Upon review thereof, the examining attorney refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that applicant's specimen did not show use of applicant's mark for the goods identified in the application; that is, the specimen shows use of the mark “on jewelry, not beads for making jewelry.” September 19, 2011 Office action. In response, applicant submitted the following substitute specimen with supporting affidavit: 1 The application claims the depicted colors as a feature of the mark, and contains a detailed description of the mark. The application also states that “the English translation of BELLA in the mark is BEAUTIFUL.” Serial No. 85092883 3 The examining attorney finally refused registration under Sections 1 and 45 of the Trademark Act, contending that “the specimen appears to be a finished ornament or jewelry. . . [because] it includes a ring to which a string of beads with alternating gold disks is attached,” rather than showing “use of the mark with the crystals or beads themselves apart from a finished product.” April 4, 2012 Office action. Applicant advised in its request for reconsideration that the specimens depicted the mark on a bracelet and an earring, and argued that use of the mark in this manner constitutes proper trademark use of the mark on the identified goods. The examining attorney denied the request for reconsideration, and this appeal ensued. As a preliminary matter, we address applicant’s alternative request, made for the first time in its reply brief, that the Board remand the application so that the identification of goods may be amended to “jewelry, particularly earing [sic] and bracelets made of precious and semi-precious stones.” Reply Br. p. 2. As the Board has said many times, a request for remand should be made in a separate paper, rather than being included as a sentence within a brief. In re HerbalScience Group LLC, 96 USPQ2d 1321 (TTAB 2010). In any event, applicant has made no showing of “good cause”, which is required in all requests for remand. See, e.g., In re Luxuria s.r.o., 100 USPQ2d 1146, 1147.2 Accordingly, applicant’s request for remand is denied. 2 We note that in determining good cause, the Board looks at the point in the appeal when the request is filed. See TBMP § 1205.01. Generally, it is more difficult to show good cause when the request is filed at the end of the appeal process, with the reply brief. Id. Serial No. 85092883 4 We turn now to the sole issue on appeal, namely, whether the specimens show use of the applied-for mark as a trademark for “precious and semi-precious crystal stones and beads for use in jewelry.” Under the Trademark Act, a statement of use must include “such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director.” 15 U.S.C. § 1051(d)(1). See also 37 C.F.R. § 2.56(a). Specimens serve to evidence an applicant’s “use in commerce.” “Use in commerce” is defined, in pertinent part, as follows: …For purposes of this chapter, a mark shall be deemed to be in use in commerce- (1) on goods when – (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale… Trademark Act Section 45, 15. U.S.C. § 1127. As the predecessor to our primary reviewing Court noted: 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). It is applicant’s position that the specimens, which, as applicant acknowledges, consist of photographs of a bracelet and an earring, are acceptable to show trademark use on the identified “precious and semi-precious crystal stones Serial No. 85092883 5 and beads for use in jewelry,” because use of the mark with jewelry made of such stones and beads constitutes use of the mark with the component stones and beads themselves. Applicant appears to be conflating “stones and beads for use in jewelry” with the jewelry itself. However, the only reasonable interpretation of “stones and beads for use in jewelry” is that the stones and beads are intended to be used in making jewelry; they are not the actual jewelry. See In re Gulf Coast Nutritionals, Inc., ___ USPQ2d ___, Ser. No. 77980412 (January 29, 2013) (determination as to what is identified in the application is made based on the common understanding of the language used to describe the goods). While the identified “precious and semi-precious crystal stones and beads for use in jewelry” are indeed part of the completed bracelet and earring depicted in the specimens, the specimens only show use of the mark on the finished bracelet and earring. The specimens do not show use of the mark on stones and beads that are to be used in making items of jewelry. In view of the foregoing, we find that the specimens do not show use of the applied-for mark on “precious and semi-precious crystal stones and beads for use in jewelry.” Accordingly, registration was properly refused under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1027, on the ground that the specimens do not show use of the mark in connection with the identified goods. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation