Tuesday, September 16, 2008

Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"

Finding that Applicant was seeking to register a marketing technique or method for its custom imprinting services, the TTAB affirmed a refusal to register the mark WOVEN MOMENTS for "kits consisting primarily of a box, an order form, a mailer, and an authorization key code, sold together as a unit, for use in submitting an image and obtaining blanket throws and tapestries bearing the image." The Board ruled that these kits are not "goods in trade" and it therefore affirmed the refusal under Sections 1, 2, and 45 of the Trademark Act. In re The Manual Woodworkers & Weavers Inc., Serial No. 76653876 (September 5, 2008) [not precedential].

Examining Attorney Michael P. Keating aptly pointed out the key question: whether the subject mark "is being used to identify goods that are sold or transported in commerce or that have utility to others." He contended that Applicant's kits "do not give purchasers or consumers the ability to obtain custom imprinted blanket throws and tapestries from any sources other than applicant. *** [T]he kits are only incidental items use by applicant in the ordinary course of business."

Applicant argued that the kits "move in commerce," that a consumer who possesses a kit has a product that entitles him or her to receive a tapestry product at no extra charge, and further that the kits are "bought, sold, exchanged and gifted by consumers as part of a trade in kits."

The Board observed that "a necessary prerequisite to the establishment of rights in, and the registration of, a term as a trademark is that the subject matter to which the term is applied must be goods. *** [I]ncidental items that an applicant uses in conducting its business (such as letterhead, invoices and business forms), as opposed to items sold and transported in commerce for use by others, are not 'goods in trade.'"

Moreover, simply affixing a mark to an item that is transported in commerce does not mean that the mark is used on "goods." The item must "have utility to others as the type of product named in the application." Although Applicant's kit comprises items that are sold in commerce, the kits are not goods in trade.

"There is no evidence that applicant is a manufacturer of boxes, order forms, mailers and/or authorization key codes (otherwise referred to by applicant as “redemption keys”) or that applicant is engaged in selling its kits for purposes other than providing a means by which purchasers of applicant’s custom imprinting services and/or custom imprinted blanket throws and tapestries can provide proof of purchase of such blanket throws and tapestries to applicant and submit their desired image to applicant for imprinting."

Nothing in the record convinced the Board that consumers recognize the kits -- even if sold by third parties, given as gifts, or resold -- as good in trade, "as opposed to means to acquire applicant's customized printing services."

The Board concluded that Applicant is seeking to register "a marketing technique or method for its custom printing services and/or its custom imprinted tapestries and blanket throws." But a technique is "only a way of doing something, and by itself is not an activity for the benefit of others." Consequently, the Board concluded that Applicant's kits are not goods in trade, and it affirmed the refusal.

Text Copyright John L. Welch 2008.


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