TTAB Affirms Refusal For Failure to Comply with Rule 2.61 Information Request

The Board affirmed a refusal to register the mark GAUGEWEAR, in standard character form, for biometric data measurement devices (class 9) and various clothing items (class 25), because applicant failed to comply with the Examining Attorney Anne M. Farrell's request for information under Rule 2.61. Applicant provided a link to its website and identified a relevant utility patent, but that was not sufficient. In re gaugewear, Inc., Serial No. 86569473 (August 21, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo).

The examining attorney requested product information in the nature of fact sheets, instruction manuals, advertisements, and other documentation regarding the goods, in order to "make clear how the goods operate, their salient features, and their prospective customers and channels of trade." Applicant referred the examining attorney to its website and suggested that she peruse a certain utility patent, a copy of which was not provided.

The examining attorney then repeated the requirement for information, stating that merely pointing to a website was not a proper response. The applicant provided nothing further.

On appeal, applicant argued that the examining attorney had in fact downloaded some material from the website, and so there was no need to provide more information. As to the patent, applicant pointed out that it did not just refer to a website, but to a specific patent number.

The Board found the examining attorney's request for information to be proper, particularly in a case such as this where the application is based on intent-to-use. Applicant was afforded three opportunities to comply and simply failed to do so.

The Board reiterated that providing a hyperlink to Internet material is not sufficient to make the contents of a website of record. Moreover, here there was no indication of the extent of the information on the website or what part of it the examining attorney downloaded. As to the patent, the USPTO has no duty to search its records for a referenced patent or take judicial notice thereof when applicant could easily have provided a copy. To be sure, the Board does not take judicial notice of USPTO records.

The information required by the Examining Attorney was “reasonably necessary to the proper examination of the application.” Trademark Rule 2.61(b). Product information from Applicant’s website and patent documentation relating to the goods clearly assist the Examining Attorney in determining, e.g., whether GAUGEWEAR or the terms GAUGE and WEAR comprising the mark are merely descriptive of some or all of the recited goods.

The Board observed that it would have been a simple matter for applicant to supply the requested information. The failure to comply with the request required affirmance of the refusal to register.

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TTABlog comment: What a waste of time and money!

Text Copyright John L. Welch 2017.