Hark’n Technologies, Inc.

Trademark Trial and Appeal BoardOct 23, 2019

86945327 (T.T.A.B. Oct. 23, 2019)

This Opinion is Not a Precedent of the TTAB Hearing: October 3, 2019 Mailed: October 23, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Hark’n Technologies, Inc. _____ Serial No. 86945327 _____ Stephen H. Bean of Legends Law Group, PLLC, for Hark’n Technologies, Inc. Michael A. Wiener, Trademark Examining Attorney, Law Office 108,1 Kathryn E. Coward, Managing Attorney. _____ Before Zervas, Kuczma, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Hark’n Technologies, Inc. (“Applicant”) seeks registration on the Principal Register of the mark BEAST in standard characters for goods identified as “sleeved elastic spring bars for exercising,” in International Class 28.2 1 Trademark Examining Attorney Wiener examined the involved application, issued the final refusal to register that is the subject of this appeal, and filed a brief for the United States Patent and Trademark Office (“USPTO”). Senior Trademark Examining Attorney Brin A. Desai appeared at the oral hearing for the USPTO. We will refer to both of them as the “Examining Attorney.” 2 Application Serial No. 86945327 was filed on March 18, 2016 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86945327 - 2 - The Examining Attorney has refused registration of Applicant’s mark under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant’s specimens of use do not show use of the applied-for mark in commerce in connection with the goods identified in the application. After the Examining Attorney made the refusal final, Applicant filed a notice of appeal, 1 TTABVUE,3 and subsequently filed its appeal brief. 4 TTABVUE. The Examining Attorney requested a remand of the application “for further examination so the examining attorney may submit additional evidence,” 8 TTABVUE 3, and the Board suspended the appeal, granted his request, and remanded the electronic record of the application file to the Examining Attorney. 13 TTABVUE 1. The Examining Attorney then issued a Superseding Subsequent Final Office Action,4 the appeal was resumed, and Applicant was given the opportunity to file a supplemental brief. 15 TTABVUE 1. The case is fully briefed,5 and counsel for Applicant and the Examining Attorney appeared at an oral hearing before the panel. We reverse the refusal to register. 3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited matter appears. Citations in this opinion to the application record are to pages in the USPTO’s Trademark Status & Document Retrieval (“TSDR”) database. 4 January 11, 2019 Superseding Subsequent Final Office Action at TSDR 1. 5 In addition to its appeal brief, Applicant filed a supplemental brief, 16 TTABVUE, and a reply brief, 21 TTABVUE, and the Examining Attorney filed a brief. 20 TTABVUE. Serial No. 86945327 - 3 - I. Evidentiary Issue We must address an evidentiary matter before proceeding to the merits of the appeal. In Applicant’s appeal brief filed prior to the remand of the application to the Examining Attorney, Applicant claimed that it “is the owner of a different federal trademark registration for the mark SLASTIX in International Class 028 for ‘sleeved elastic spring bars for exercising’ (U.S. Trademark Reg. No. 3,769,750 (the ’750 Registration).” 4 TTABVUE 3. Applicant attached to its appeal brief a declaration of its President, Shon L. Harker, id. at 8-10 (Exhibit A), as well as what it described as “packaging showing the mark used for sleeved elastic spring bars for exercising,” id. at 3, which it claimed was submitted to the USPTO as specimens of use to obtain and maintain the ’750 Registration. Id. at 3, 11-14 (Exhibits B-C). The Examining Attorney objects to the Board’s consideration of the Harker Declaration and the alleged specimens on the ground that they are untimely because they were not made of record prior to the filing of the appeal, and Applicant did not subsequently request a remand to make them of record. 20 TTABVUE 4-6. In response to these objections, Applicant discusses only the Harker declaration, which Applicant acknowledges “was new evidence at the time the appeal brief was initially filed.” 21 TTABVUE 3. Applicant argues that the Examining Attorney “reopened the examination through his successful request for remand,” and that “the Harker declaration . . . became evidence of record when the examiner successfully reopened examination.” Id. Citing Section 1207.02 of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), Applicant argues that it could have submitted Serial No. 86945327 - 4 - the Harker declaration with its supplemental brief in response to the Examining Attorney’s submission of additional evidence following remand, but that it merely referred to the declaration in its supplemental brief in lieu of resubmitting it. 21 TTABVUE 3 (citing 16 TTABVUE 4). We exercise our discretion to consider the Harker declaration and the putative specimens because the Examining Attorney had an opportunity to address them on remand. In re Consolidated Specialty Rests., Inc., 71 USPQ2d 1921, 1922 n.1 (TTAB 2004) (under the “unusual circumstances” of that case, and “in the interest of a full and fair adjudication,” the Board exercised its discretion to consider a third-party registration attached to the applicant’s appeal brief because the examining attorney had an opportunity to consider and respond to it following remand of the application). We note, however, that the putative specimens have no probative value in support of Applicant’s claim that “[i]f this evidence was sufficient in the ’750 Registration, it should be sufficient here,” 4 TTABVUE 7, because neither the specimens nor the ’750 Registration is mentioned in the Harker declaration, id. at 9-10, and the ’750 Registration was not attached to Applicant’s appeal brief or otherwise made of record.6 6 If Applicant’s statements in its appeal brief regarding the putative specimens and the ’750 Registration are accurate, we are at a loss to understand why Applicant did not simply make the file history of the ’750 Registration of record in response to the October 26, 2017 Office Action rejecting its initial specimen. This would have given the Examining Attorney the chance to consider the USPTO’s treatment of the specimens in the ’750 Registration in the course of evaluating the sufficiency of Applicant’s specimens here. At the very least, Applicant would have avoided the evidentiary objection to Exhibits B-C attached to its appeal brief. Serial No. 86945327 - 5 - II. Analysis of Refusal A. Prosecution History and Record on Appeal When it filed the involved application, Applicant was required to “specify the particular goods . . . on or in connection with which [it] . . . ha[d] a bona fide intention to use” the applied-for mark in commerce. Trademark Manual of Examining Procedure (“TMEP”) Section 1402.01 (Oct. 2018) (citing 15 U.S.C. §§ 1051(a)(2) and (b)(2), and 37 C.F.R. § 2.32(a)(6)). “It is the applicant’s duty and prerogative to identify the goods and services,” but “the examining attorney may require an amendment of the identification of goods and services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules.” TMEP § 1402.01(e). Applicant identified its goods as “sleeved elastic spring bars for exercising.”7 The Examining Attorney did not require amendment of that identification, and the application was published for opposition with it. Following allowance of the application, Applicant filed a statement of use supported by the specimen displayed below, which Applicant claimed showed use of the applied-for mark in connection with “sleeved elastic spring bars for exercising”: 7 March 18, 2016 Application at TSDR 1. Serial No. 86945327 - 6 - 8 The Examining Attorney rejected Applicant’s specimen because it did “not show the applied-for mark in use in commerce in International Class[ ] 28.”9 The Examining Attorney stated that “the specimen lists the goods as ‘battle ropes’ and shows a photograph of one,” while “the goods are listed in the application as ‘spring bars’,” and that a “specimen for goods must be for the goods in the application.”10 Applicant responded by submitting the substitute specimen displayed below, which was supported by a declaration of Applicant’s counsel that the substitute specimen was in use prior to the filing date of the statement of use:11 8 October 3, 2017 Statement of Use at TSDR 2. 9 October 26, 2017 Office Action at TSDR 1. 10 Id. 11 January 18, 2018 Response to Office Action at TSDR 1-2. Serial No. 86945327 - 7 - 12 The “Product Details” text on the substitute specimen is reproduced below in enlarged lettering: The Examining Attorney rejected this specimen as well for the same reasons that he had rejected Applicant’s original specimen, and made the refusal to register final.13 Applicant then appealed and filed its appeal brief. After remand of the application, the Examining Attorney made the following evidence of record: 12 Id. at TSDR 2. 13 February 25, 2018 Final Office Action at TSDR 1. Serial No. 86945327 - 8 - 1. Pages from Applicant’s website at stroops.com that listed various product categories and showed various products, including resistance bands, and several types of bars;14 2. Abstracts of patent applications entitled “Device for Using Ropes for Fitness and Method for Exercising Using a Rope Device,” “Adjustable handles for spring bars,” and “Endless elastic resistance exercise devices,” downloaded from Google Patents;15 and 3. Pages from the website at amazon.com displaying third-party products described as a “Power Twister Chest Resistance Spring Bar Exerciser” and “Pro Battle Ropes With Anchor Strap Kit,” and listing various customer reviews.16 B. Applicant’s and The Examining Attorney’s Arguments Regarding the Sufficiency of the Specimens 1. The Examining Attorney’s Arguments The Examining Attorney describes the insufficiency of Applicant’s two specimens as follows: The applicant’s specimens consist of point-of-sale web pages showing the applicant’s mark. These specimens must also show a direct association between the mark and the goods for which registration is sought. . . To show this direct association, the specimen must contain an explicit reference to the goods in addition to the mark being used on the specimen to identify the goods and their source. . . As the goods in the application are not listed on the 14 January 11, 2019 Superseding Subsequent Final Office Action at TSDR 26-40. 15 Id. at TSDR 2-25. 16 Id. at 41-58. Serial No. 86945327 - 9 - specimen, a connection between the mark and goods cannot be determined [and] [t]he use of applicant’s mark . . . fails to show a direct association between the applied-for mark and the identified goods. 20 TTABVUE 6 (citing, inter alia, In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) and TMEP Section 1301.04(f)(ii)). The Examining Attorney acknowledges that Applicant’s substitute specimen refers to the goods identified in the application because “[o]n the bottom of the specimen and under ‘Product Details’ the last two sentences are, ‘Twenty foot elastic battle rope! These are sleeved elastic spring bars for exercising.’” Id. at 7. The Examining Attorney argues, however, that “[t]hese printouts consist merely of the bottom part of one page” of Applicant’s website, and that the goods shown in the specimens properly falls into the product category “Resistance Bands” listed on the website, id., which “does not appear to have the wording, ‘Sleeved elastic spring bars,’” id., or the wording “spring bars” per se. Id. The Examining Attorney also points to the third-party websites in the record, which in his view show that products identified as “‘spring bars’ do not act in any way like ‘battle ropes’ as a type of exercise equipment, as the applicant claims,” id. at 8, and the patent applications in the record, which in his view “clearly distinguish ‘battle ropes’ from ‘spring bars.’” Id. The Examining Attorney argues that “Applicant’s description of ‘spring bars’ as encompassing ‘battle ropes’ as a type of exercise equipment in its [substitute] specimen . . . is at best a typographical error.” Id. at 8. Serial No. 86945327 - 10 - 2. Applicant’s Arguments Applicant’s basic argument is that “[t]his entire situation is caused by the examiner’s failure to understand the subject goods,” 16 TTABVUE 2, “sleeved elastic spring bands for exercising,” which Applicant abbreviates as “SESB.” Applicant claims that its “original specimen of use showed a SESB with accompanying text that called the SESB an elastic ‘battle rope,’” which the Examining Attorney improperly rejected “because he did not understand that the elastic battle rope shown in the picture was a SESB,” id. at 2-3, and that its “substitute specimen with a product description that clearly states, ‘[t]hese are sleeved elastic spring bars for exercising’” was improperly rejected “using the same vague, verbatim language from his previous rejection” with “no guidance or instruction as to what he believed a sleeved elastic spring bar to be.” Id. at 3. Applicant argues that “[p]resumably, the examiner has an idea of what constitutes a SESB for exercising because he approved of this language in issuing the Notice of Allowance,” but that the Examining Attorney “has three times rejected Applicant’s SESB specimen while never definitively stating what he believes constitutes a SESB for exercising.” Id. Applicant argues that its specimens show use of the applied-for mark “to advertise and sell sleeved elastic battle ropes, which are SESB’s for exercising,” and that “most battle ropes are only plain ropes,” and “[o]nly sleeved elastic battle ropes are SESB’s for exercising.” Id. Applicant “readily admits that spring bars are not battle ropes and that spring bars do not encompass battle ropes,” but “this fact is irrelevant.” Id. at 4. Applicant points to the statement in the Harker declaration that “‘sleeved elastic spring bars are also known as sheathed elastics, sheathed resistance bands, and Serial No. 86945327 - 11 - elastic battle ropes, among other names.’” Id. (quoting Harker Decl. ¶ 3 (emphasis added by Applicant)). Applicant dismisses the Examining Attorney’s patent and website evidence because “[n]oticeably absent from this sparse collection of evidence is a single document that mentions SESB’s for exercising.” Id. According to Applicant, this evidence shows only “that the examiner is confusing SESB’s for exercising with ‘spring bars,’ which are completely different things.” Id. at 5. Applicant rejects the Examining Attorney’s claim that Applicant’s website does not mention the identified goods because Applicant’s substitute specimen of use “is an Internet order page for goods sold under the BEAST mark that clearly states, ‘[t]hese are elastic spring bars for exercising.’” Id. In its reply brief, Applicant reiterates that the Examining Attorney “has utterly failed to provide any indication of what he believes constitutes a ‘sheathed elastic spring bar.’” 21 TTABVUE 3. C. Sufficiency of Applicant’s Specimens Our summary of Applicant’s and the Examining Attorney’s arguments illustrates the highly unusual nature of this appeal. It does not concern whether Applicant’s identification of its goods as “sleeved elastic spring bars for exercising” is indefinite or otherwise improper. As noted above, the Examining Attorney did not take issue with the identification during prosecution because it was not “specific, definite, clear, accurate, and concise,” or because it did not use “common names” and “terminology that is generally understood.” TMEP Section 1402.01 (discussing the general Serial No. 86945327 - 12 - requirements for an appropriate identification of goods or services).17 Nor does the appeal concern the insufficiency of Applicant’s specimens based on their nature, as the Examining Attorney accepts that they are “point-of-sale web pages showing the applicant’s mark.” 20 TTABVUE 6. See generally TMEP Section 904.03(i) (discussing when webpages may be considered “displays associated” with the goods within the meaning of Section 45 of the Trademark Act, 15 U.S.C. § 1127). There is thus no dispute that Applicant’s identification of goods is proper and that its specimens are sufficient to show use of its mark in commerce with those goods if the specimens show “sleeved elastic spring bars for exercising.”18 Accordingly, we must decide whether “sleeved elastic spring bars for exercising” are shown in the specimens. That issue is not as straightforward as it might seem at first blush. Although Mr. Harker claimed that he has been “designing, manufacturing, and selling sleeved elastic spring bars for over twenty years,” and could “competently declare that sleeved elastic spring bars are also known as sheathed elastics, sheathed resistance bands, and elastic battle ropes, among other names,” Harker Decl. ¶ 3, there is no evidence 17 At the oral hearing, the Examining Attorney confirmed that the identification was acceptable, but argued that it does not cover the goods shown in the specimens because those goods are not “bars” within the ordinary meaning of that word as rigid structures. 18 The Examining Attorney’s citation of WAY Media and TMEP Section 1301.04(f)(ii) in support of the refusal is misplaced. 20 TTABVUE 6. Those authorities involve the issue of whether specimens for service marks show a direct association between the marks and the identified services. See WAY Media, 118 USPQ2d at 1698 (discussing different tests for such a direct association when specimens show the mark in the rendition of the services or in the advertising of the services). The application here does not involve services, but even if the “direct association” requirement applied to specimens for goods, the specimens here directly associate the mark with some goods. The issue is whether those goods are “sleeved elastic spring bars for exercising.” Serial No. 86945327 - 13 - in the record that anyone in the exercise equipment industry other than Applicant has ever used the term “sleeved elastic spring bars” to identify any form of exercise equipment, or has ever referred to sheathed elastics, sheathed resistance bands, and elastic battle ropes as forms of “sleeved elastic spring bars.”19 Moreover, on this record, Applicant itself has publicly done so only on its website, where it stated that its “twenty foot elastic battle rope[s]” are “sleeved elastic spring bars for exercising.” As noted above, the Examining Attorney argues that this description of the goods is “at best a typographical error.” 20 TTABVUE 8. The description is not a typographical error because the sentence is not misprinted in any respect, but it is odd and seemingly contrived, particularly because there is no evidence of any third-party use of such a product description that would serve as a point of reference for a consumer in understanding Applicant’s explanation of what else its “elastic battle ropes” are called. As the Examining Attorney correctly notes, id. at 7-8, Applicant’s website does not contain any category of goods called “sleeved elastic spring bars for exercising” covering certain sheathed elastics, sheathed resistance bands, or elastic battle ropes, and, as the Examining Attorney points out, id. at 7, there is no evidence in the record that the “sheathed resistance bands” that are sold by Applicant are also identified as falling within the “sleeved elastic spring bars for exercising” product category described by Mr. Harker. Harker Decl. ¶ 3. These facts suggest that the language “These are sleeved elastic spring bars for 19 The absence of such evidence calls into question whether “sleeved elastic spring bars” are the common commercial name for the goods that Applicant sells under the applied-for mark, but as discussed above, the Examining Attorney does not take issue with the identification. Serial No. 86945327 - 14 - exercising” was included by Applicant in the Product Details for its “elastic battle ropes” in anticipation of or in response to the Examining Attorney’s argument that Applicant’s “elastic battle ropes” are not “sleeved elastic spring bars for exercising.” We have no basis, however, to doubt the bona fides of Applicant’s substitute specimen. Applicant’s counsel represented at the oral hearing that the substitute specimen was the full-page version of Applicant’s original half-page specimen, and other product pages from Applicant’s website in the record are consistent with this representation.20 Although the Examining Attorney has established that goods like those shown in Applicant’s specimens are commonly referred to simply as “battle ropes,”21 and that “spring bars” per se are a different type of exercise product from “battle ropes,”22 it is well settled that goods may have more than one generic name. In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983) (citing In re Sun Oil Co., 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring) and In re Minnetonka, 212 USPQ 772, 777 (TTAB 1981)). Applicant is correct that while the Examining Attorney claims that the goods shown in Applicant’s specimens are not “sleeved elastic spring bars for exercising,” he has not “explain[ed] what he believes constitutes a ‘sleeved elastic’ spring bar.” 21 TTABVUE 2. The record contains a sworn statement that a “sleeved elastic spring bar” is another name (albeit a counterintuitive one) for an “elastic battle rope,” Harker Decl. ¶ 3, and a specimen 20 January 11, 2019 Superseding Subsequent Final Office Action at TSDR 31-32, 37-40. The Examining Attorney acknowledges that the substitute specimen is “the bottom part of one page of the applicant’s web site.” 20 TTABVUE 7. 21 Id. at TSDR 2-7, 51-58. 22 Id. at TSDR 10-12, 41, 43-45. Serial No. 86945327 - 15 - with a statement (albeit an artificial one) to that effect. This evidence is unrebutted by the Examining Attorney, and we cannot find on this record that the goods shown in the specimen are not the “sleeved elastic spring bars for exercising” identified in the application, even if that alleged category of goods has only one seller, Applicant. Cf. In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (a generic name may exist even if it is used by only one seller of that genus of goods). We find that Applicant submitted a sufficient specimen of use of the applied-for mark in connection with the goods identified in the application. Decision: The refusal to register is reversed.