Datapipe, Inc.

Trademark Trial and Appeal BoardSep 20, 2013

No. 85173828 (T.T.A.B. Sep. 20, 2013)

Mailed: 9/20/2013 In re Datapipe, Inc. Serial No. 85173828 Filed: 11/10/2010 GLENN S BACAL BACAL LAW GROUP PC 6991 E. CAMELBACK RD., SUITE D102 SCOTTSDALE, AZ 85251-2465 T.J. Quinn, Administrative Trademark Judge: The Board, in an order dated August 2, 2013, postponed the oral hearing scheduled for August 8, 2013 in view of applicant’s communication filed on July 31, 2013. Applicant’s communication is a request for the Board to consider new evidence not filed prior to the appeal or, in the alternative, to remand the application to the examining attorney for further examination and consideration of such evidence. Applicant makes the following statements in support of its request (emphasis in original): There is substantial new evidence that the Trademark Office has consistently and recently (during the pendency of this appeal) taken the position that MY CLOUD marks (and variations thereof) are not merely descriptive, in contrast to the position taken on Applicant’s YOUR CLOUD mark. This apparently has been happening United States Patent and Trademark Office Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Ex parte Appeal No. 85173828 2 without disclosure to Applicant until this week. The Trademark Office approach both as to MY CLOUD and YOUR CLOUD marks is based upon a provision in a nonpublic, internal examination guide that apparently directs examining attorneys to treat the word MY differently than the word YOUR on the issue of mere descriptiveness. In fact, numerous recent MY CLOUD applications, apparently using the same internal guide, have been examined or otherwise progressed (some of which have registered) during the pendency of this appeal, and none have [sic] been found to be merely descriptive. Applicant learned only two days ago from the new examining attorney in this case that the disparate treatment between MY CLOUD and YOUR CLOUD was apparently based upon a distinction between the words MY and YOUR made in an internal, nonpublic examination guide. That guide was not referenced in the office actions of the prior examining attorney, but has obviously tied the hands of the new examining attorney who candidly disclosed how the examination guide’s provisions on MY and YOUR produced the refusal. Thus, Applicant just recently learned that it has been fighting against a phantom provision that it wasn’t previously aware of. If Applicant had been aware that such a provision in a nonpublic, internal examination guide of the Trademark Office would control the destiny of any YOUR CLOUD application, as opposed to any MY CLOUD application, Applicant’s strategy might have been different here. Such an arbitrary and undisclosed provision could not have been reasonably anticipated, and it makes the application process seem irrational. The inequity and arbitrariness of this result is readily apparent. The attempted distinction between MY and Ex parte Appeal No. 85173828 3 YOUR by the Trademark Office in the context of mere descriptiveness is the perfect example of an administrative distinction without a difference, for which there is no good argument. Applicant understands the need for internal guides. However, reliance upon a provision in a nonpublic, internal guide, which directly contradicts what was stated in a publicly available Board decision, creates the perfect Catch-22 here. Such an arbitrary examination procedure based on a hidden directive has created a manifestly unfair, inconsistent, and unfortunate result, the very kind of result that has led the Federal Circuit to criticize the Trademark Office. The Board should untie the hands of the examining attorney and unleash common sense – there is no reason to treat MY CLOUD marks differently from Applicant’s YOUR CLOUD mark. There is good cause supporting the Board’s consideration of this new and directly probative evidence. Substantial evidence regarding the Trademark Office’s conclusion that MY CLOUD is not merely descriptive simply did not exist prior to the filing of this appeal and therefore was unavailable to include in the record. Applicant also was unaware of the sub silentio role of the publicly unavailable examination guide in the refusal to register Applicant’s Mark on the basis of mere descriptiveness. Because there is no rational or legitimate basis for distinguishing between MY and YOUR on the issue of mere descriptiveness, or for contradicting what the TTAB said in an earlier public decision, this new evidence merits consideration by the Board. (Request, pp. 1-2). As indicated above, applicant’s principal points are (1) that the Office’s asserted different treatment of MY and Ex parte Appeal No. 85173828 4 YOUR marks in the context of mere descriptiveness is unwarranted, and (2) has resulted in refusal of applicant’s application only because of an “internal, nonpublic examination guide.” On the first point, and according to applicant, the examining attorney indicated that “this examination guide is not disclosed to the public,” and that the examining attorney explained “that the examination guide equates the word YOUR (but not the word MY) with the words ‘one,’ ‘a,’ and ‘the,’ which are often disregarded for purposes of determining whether a mark is merely descriptive.” (Request, pp. 6-7). On the second point, applicant further indicates that the examining attorney declined to stipulate to consideration of the new evidence; and, according to applicant, the examining attorney “suggested that making this new evidence part of the record would not have made a difference to the outcome based on his obligation to follow the guidance set forth in the nonpublic, internal examination guide.” (Request, p. 3). The request is accompanied by the declaration of David Andersen, one of applicant’s attorneys. Attached to the declaration are copies of two third-party registrations and thirteen third-party applications, all for various MY CLOUD marks, none of which, according to applicant, was refused registration on the basis of mere descriptiveness. Ex parte Appeal No. 85173828 5 With respect to any request that the Board consider additional evidence or remand a case for further examination in light of asserted new evidence, Trademark Rule 2.142(d) provides that the record in the application should be complete prior to the filing of an appeal, and that the Board will ordinarily not consider additional evidence filed with the Board after the appeal is filed. The Board does not, during an appeal, consider evidence not made of record prior to appeal unless the non-offering party does not object and treats it as being of record. See In re Iolo Technologies LLC, 95 USPQ2d 1498, 1500 n.3 (TTAB 2010); and In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009). In this case, the examining attorney, as the non-offering party, clearly has objected. A request that the Board suspend an appeal and remand with instruction that additional evidence be considered, must include a showing of good cause therefor. The length of the delay in making the request after the reason for the remand becomes known, and/or the point in the appeal process at which the request is made, will be considered in the determination of whether good cause exists. Generally, the later in the appeal proceeding that the request is filed, the stronger the reason that must be given for good cause to be found. As indicated at TBMP § 1207.02 (2013): “There is a point at which prosecution or examination must end.” See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011); and Ex parte Appeal No. 85173828 6 In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009). In the case at hand, the request for remand has come very late, after briefing and with the oral argument imminent. The two third-party registrations applicant now seeks to introduce issued in early-mid 2012, that is, over one- year prior to its request. Insofar as the thirteen third- party applications are concerned, in all but three of them, the pertinent information relied upon by applicant also was available several months prior to applicant’s recent submission. In the other three applications, the delays ranged from one month to five months. Given the delay in submitting this evidence, coupled with the manifestly late juncture of this appeal when the request was filed, the Board will neither allow the introduction of this additional evidence nor remand for further examination. Accordingly, the request to consider the additional evidence or to remand is denied. To the extent applicant’s argument that the Board “should untie the hands of the examining attorney” constitutes a third alternative request for relief, i.e., a request for remand with instruction that the examining attorney reexamine the application without regard to the purported examination guide, it is not the Board’s practice or role to direct the examination of applications. Moreover, the essence of applicant’s argument on this issue Ex parte Appeal No. 85173828 7 is that applicant’s delay in submission of the evidence was due to applicant’s being unaware of the “internal” guide; and that applicant may have taken a different approach with respect to the refusal if it had been aware of the guide. To the extent that applicant bases its delay on the “internal” examination guide, the blame is misplaced. There was nothing to prohibit applicant from making a timely “state of the register” argument earlier in the process. See TMEP § 1209.03(a) (2013). Further, the following information about Trademark Examination Guides is set forth on the USPTO’s website at http://www.uspto.gov/trademarks/resources/index.jsp: Trademark Examination Guides Between updates to the Trademark Manual of Examining Procedure (TMEP), the Office occasionally provides guidance about a particular issue through the issuance of an Examination Guide. Typically, as to that issue, the Examination Guide supersedes the current edition of the TMEP to the extent any inconsistency exists and the guidance contained therein is usually incorporated into the next edition of the TMEP. The Board definitively can state, as confirmed by TMEO, that there is no Examination Guide, either public or internal, which addresses examination of MY and YOUR marks.1 1 The Board cannot affirmatively state that there were no internal discussions between the examining attorney and others in the Office’s Trademark operations about the examination of this application. The Board has no information on this issue and has not inquired into it. It is noted, however, that it would not be at all unusual for an examining attorney to discuss an application with peers or supervisors. Ex parte Appeal No. 85173828 8 It does not appear to be the TMEO’s practice to keep Examination Guides secret for internal use only. Instead, it appears that the practice is to post Examination Guides on the Office’s web site. See the following TMEO web page: http://www.uspto.gov/trademarks/resources/Trademark_Exam_ Guides.jsp. In addition, in the recent past, the Office has solicited public comment on examination guides before they are issued to Examining Attorneys and posted for on-line reference. Id. Accordingly, the Board sees no basis upon which to remand the application “to the examining attorney for a full and careful consideration of the error of having a[n] essentially secret rule produce an unanticipated rejection of Applicant’s YOUR CLOUD application.” In view thereof, applicant’s request filed July 31, 2013 is denied. A final observation is warranted. Some of applicant’s arguments are more substantive than procedural in nature. In this connection, applicant references an unpublished Board decision, not issued as a citable precedent, wherein the Board stated there is “no reason why, in general, a distinction should be made between the words MY and YOUR in terms of whether a mark is descriptive.” Applicant argues that this decision would lead one to believe that MY and YOUR marks would be treated the same, and that the Board “should apply that approach consistently in this case rather than to let a wholly inconsistent rule promulgated by a provision in a nonpublic, undisclosed, unanticipated, Ex parte Appeal No. 85173828 9 internal examination guide dictate a different and unfair result.” (Brief, p. 7). Suffice it to say that the Board will, of course, reach a result as dictated by the merits of the appeal. There is no evidence of the existence of an Examination Guide that addresses the substantive issue on appeal. Further, and in any event, the Board is not bound by examination guides in its interpretation of substantive questions of registrability. Applicant will be contacted in due course for the scheduling of an oral hearing (in the event that applicant still wishes to proceed with an oral hearing).