TTAB Affirms Refusal: Applicant Failed to Comply with Rule 2.61(b) Requirement for Additional Specimens
Pursuant to Rule 2.61(b), Examining Attorney Y.I. Lee required that pro se Applicant Kent G. Anderson provide additional specimens for his class 1 and class 3 goods because of the wide range of unrelated articles listed in his application. Anderson didn't. Ms. Lee refused registration. Anderson Appealed. He lost. In re Anderson, Serial No. 76497832 (August 4, 2009) [not precedential].
Anderson sought to register the mark TOMORROW for, inter alia, photographic chemicals, unprocessed artificial resins and plastics used in agriculture, manure, and food preservative compositions in class 1; and for more than 100 items in class 3, including after-shave gel, baby oil, boot cream, dish detergents, and grooming preparations for pets. The Examining Attorney rejected Anderson's specimens as inadequate to show use of the mark with the identified goods, and she also required that Anderson submit additional specimens because "the listed Class 1 goods and Class 3 goods, as recited in the Statement of Use, are long and contain numerous unrelated goods." She argued that:
The only Class 1 specimens provided during prosecution were of "photographic chemicals" and "additive fuel treatment." Photographic chemicals and fuel additives are unrelated to artificial resins and plastics used in agriculture, as well as manure, fire extinguishing compositions, food preservative compositions, and tanning agents for use in the manufacture of leather.
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Applicant's identification of goods of Class 3 goods is extremely long and contains a wide variety of goods that are also unrelated. Applicant did not provide any other specimens other than mouthwash and lipstick. These are not related to adhesive removers, adhesives for attaching artificial fingernails or eyelashes, non-medicated pet shampoo, pre-moistened cosmetic wipes, or tailors’ wax, to name a few. Applicant did not provide specimens demonstrating use of the mark with any of the other Class 3 goods listed in the identification.
The Board assumed arguendo that the particular specimens submitted by Anderson were themselves acceptable, but it proceeded to affirm the refusal to register based on Anderson's failure to comply with the requirement that he submit additional specimens.
... this small number of specimens fails to demonstrate use of the applied-for mark for the wide range of goods listed in Classes 1 and 3.
And so the refusal to register was affirmed.
TTABlog comment: Hooray for the Examining Attorney and the Board. I think that, in this digital camera age, the PTO should require a specimen for every item listed in the application. See my post called "Fraud and the Digital Camera."
Text Copyright John L. Welch 2009.
posted by John L. Welch @ 8/17/2009
5 comments
5 Comments:
Perhaps the Examining Attorney should have made the same requirement with regard to the service mark classes.
Although I agree that there is a certain ease of use with the digital camera, would the Trademark Office want to move in the direction of requiring a specimen for every good (or possibly more burdensome, every service) in an application? (And would the outside practitioner want to review each and every specimen the client provides?) Overall, there could be a huge time issue for the Examiner (particularly in a case similar to Mr. Anderson's TOMORROW application) - would the Examiner issue a full refusal simply because the specimen for "socks" in a laundry list of clothing was unacceptable? Limit objections to particular goods?
I suppose one way to get around the issue would be for the Trademark Office to allow broader IDs (e.g., for "clothing"). Though I seriously doubt that they'd go in that direction.
This decision seems to be laying the groundwork for a (hopefully) reasonable middle-ground with the Trademark Office taking people's descriptions of goods on faith unless the underlying laundry list is so broad as to become unrealistic (and being doubly skeptical in a case case like this one based on Mr. Anderson's history at the Office).
Assuming he didn't have any other specimens for the other goods, can you amend your description of goods and services post-SOU ?
What should Applicant have done differently after he faced the additional specimen requirement?
Once Anderson filed the SOU and got the refusal, he probably still could have amended the application to delete the "unused" goods. Even after he filed his appeal, he probably could have suspended the appeal and asked for remand to the Examining Attorney for purposes of amendment. One problem though: the Examining Attorney rejected the specimens of use that he did file, so Anderson still would face that problem.
I agree it would not be practical to require an Examining Attorney to look at specimens for over 100 items, although in this specific case, that may not be requiring too much.
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