David M. Allen

Trademark Trial and Appeal BoardJun 7, 2012

No. 85034692 (T.T.A.B. Jun. 7, 2012)

Mailed: June 7, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re David M. Allen ________ Serial No. 85034692 _______ Michael J. Folise of Black Lowe Graham PLLC, for David M. Allen. Jeffrey J. Look, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Seeherman, Quinn, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: David M. Allen, applicant herein, seeks registration on the Principal Register of the mark “TRITIUM,” in standard character format, for “battery operated flashlights and headlamps,” in International Class 11.1 The trademark examining attorney refused 1 Serial No. 85034692, filed on May 10, 2010, under Trademark Act Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 85034692 2 registration on the ground that applicant’s mark is merely descriptive of the identified goods under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). The examining attorney also refused registration on the alternative ground under Trademark Act Section 2(e)(1) that the mark is deceptively misdescriptive of the goods for which applicant seeks registration. The examining attorney further made a third refusal based on applicant’s failure to properly respond to a request for information under Rule 2.61(b); 37 C.F.R. § 2.61(b). When the three grounds for refusal were made final, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs and applicant filed a reply brief. We consider first the final refusal for applicant’s failure to furnish information as required under Rule 2.61(b); 37 C.F.R. § 2.61(b). Specifically, the examining attorney issued an information requirement in the Office action dated August 21, 2010, as follows: To permit proper examination of the application, applicant must submit additional product information about the goods. See C.F.R. § 2.61(b) . . . The requested product information should include Ser. No. 85034692 3 fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods. As applicant failed to provide the requested information, the request was made final. Trademark Rule 2.61(b), 37 CFR 2.61(b), provides that the “examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.” More specifically, the “examining attorney may request literature, exhibits, and general information concerning circumstances surrounding the mark as well as, if applicable, its use or intended use.” TMEP §814 (8th ed. 2011). In response to a request for information such as the Examining Attorney made in this case, an applicant has several options. It may comply with the request by submitting the required advertising or promotional material. Or it may explain that it has no such material, but may submit material of its competitors for similar goods or provide information regarding the Ser. No. 85034692 4 goods on which it uses or intends to use the mark. Or it may even dispute the legitimacy of the request, for example, if the goods identified in the application are such ordinary consumer items that a request for information concerning them would be considered unnecessary and burdensome. In re SPX Corp., 63 USPQ2d 1592, 1597(TTAB 2002). Applicant does not dispute the legitimacy of the request for information. Rather, applicant states on appeal, as its reason for not providing the requested information, that “[a]s the products have not yet been made, it is impossible to comply with the request for product literature, specification sheets, etc.” (reply brief at 2). The availability of applicant’s own literature is not at issue since the request by the examining attorney specifically allowed for submission of documents for comparable products already on the market or, if no competing goods were available, applicant was required to provide a detailed description of his goods. With a “bona fide intent to use” his goods, applicant must have a plan as to the “facts,” “instructions” and/or “advertising” of the goods for which he has sworn that he intends to use the applied-for mark. Considering the Office actions Ser. No. 85034692 5 regarding mere descriptiveness and deceptive misdescriptiveness of the term “TRITIUM,” we find the request for information to be a reasonable one, and in view of applicant’s failure to provide such information, we affirm the refusal to register on this basis. See In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003). In that case, as in this one, the Board upheld a highly similar request for information in an intent-to-use application. In affirming the refusal in DTI Partnership, the Board found it unnecessary to consider the substantive Section 2(e)(1) refusal, stating as follows: In view of our decision with respect to the Trademark Rule 2.61(b) requirement, we deem the substantive Section 2(e)(1) mere descriptiveness refusal to be moot. Applicant’s failure to comply with the Trademark Rule 2.61(b) requirement is a sufficient basis, by itself, for affirming the refusal to register applicant’s mark. Moreover, our ability to fully and accurately assess the substantive merits of the mere descriptiveness issue has been hindered by applicant’s failure to submit the information and materials which were properly requested by the Trademark Examining Attorney under Trademark Rule 2.61(b). . . In these circumstances, we decline to reach the merits of that refusal. Id., at 1702. Likewise, we find that here our ability to consider the substantive alternative Section 2(e)(1) Ser. No. 85034692 6 refusals for mere descriptivness and for deceptive misdescriptiveness has been significantly hampered by applicant’s failure to provide the information requested by the Examining Attorney. Accordingly, based on applicant’s own actions, we decline to consider the refusals made pursuant to Section 2(e)(1). Rather, we affirm the refusal to register solely on applicant’s failure to furnish information as required under Rule 2.61(b). Decision: The refusal to register is affirmed based on applicant’s failure to comply with the Examining Attorney’s requirement for information under Trademark Rule 2.61(b).