DTI Partnership, L.L.P.

Trademark Trial and Appeal Board

Mar 16, 2004

No. 76197857 (T.T.A.B. Mar. 16, 2004)

Mailed:
March 16, 2004
Paper No. 11
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DTI Partnership, L.L.P.
________
Serial No. 76197856
Serial No. 76197857
Serial No. 76197858
_______
Glenn M. Seager of Crompton, Seager & Tufte, LLC for DTI
Partnership, L.L.P.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Hairston, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In the three above-referenced applications, applicant
has applied for registration on the Principal Register of
the marks IBLOCK, IBLOCKS, and IBLOCK TREND WATCH (all in
typed form) for goods identified in the applications, as
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76197856, 76197857 and 76197858
2
amended, as “computer software used to perform data
analysis in the field of demographics.”1
In each of the three applications, the Trademark
Examining Attorney has finally refused registration of the
marks on the ground that the mark is merely descriptive and
thus unregistrable under Trademark Act Section 2(e)(1), 15
U.S.C. §1052(e)(1), and on the alternative ground that
applicant has failed to comply with the Trademark Examining
Attorney’s requirement for information pursuant to
Trademark Rule 2.61(b), 37 C.F.R. §2.61(b).
Applicant has appealed in each case. In each case,
applicant and the Trademark Examining Attorney filed
opening briefs on appeal, but applicant did not file a
reply brief and did not request an oral hearing. Because
the three cases involve common issues of law and/or fact,
we shall decide them in this single opinion.
In each case, we affirm the refusal to register, based
on applicant’s failure to comply with (or even acknowledge)
the Trademark Examining Attorney’s requirement for
information under Trademark Rule 2.61(b).
1 All three applications were filed on January 22, 2001 and are
based on applicant’s asserted intent to use the mark, under
Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Ser. Nos. 76197856, 76197857 and 76197858
3
The facts of these cases are essentially identical to
those recited in our precedential decision affirming the
Trademark Examining Attorney’s refusal of registration in
applicant’s application to register the mark IBLOCK THERMAL
MAPS. In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB
2003). Familiarity with that decision is presumed.
In these cases as in that case, the Trademark
Examining Attorney, in her first Office action, made a mere
descriptiveness refusal and attached evidence in support of
that refusal. She also made the following requirements:
The applicant must submit samples of
advertisements or promotional materials for
goods of the same type to permit proper
consideration of the application. If such
materials are not available, the applicant must
submit a photograph of similar goods and must
describe the nature, purpose and channels of
trade of the goods. 37 C.F.R. Section 2.61(b);
TMEP sections 1103.04 and 1105.02.
The applicant must indicate whether the wording
in the mark has any significance in the
relevant trade or industry or as applied to the
goods. 37 C.F.R. Section 2.61(b).
In its response to the first Office action in each
case, applicant presented arguments in opposition to the
mere descriptiveness refusal, including detailed arguments
as to why the evidence made of record by the Trademark
Examining Attorney failed to establish mere
Ser. Nos. 76197856, 76197857 and 76197858
4
descriptiveness. Applicant did not specifically address or
acknowledge the Trademark Examining Attorney’s requirement
for information under Trademark Rule 2.61(b).
In her final Office action in each case, the Trademark
Examining Attorney presented further arguments and evidence
in support of her mere descriptiveness refusal and made
that refusal final. She also reiterated her requirement
under Trademark Rule 2.61(b) that applicant submit the
requested information and materials.
Applicant then filed a notice of appeal and a request
for reconsideration of the final refusal in each case. The
Board instituted and suspended the appeal, and remanded the
application to the Trademark Examining Attorney for
examination of the request for reconsideration. In the
request for reconsideration, applicant once again merely
presented arguments as to why the Trademark Examining
Attorney’s evidence failed to establish that its mark is
merely descriptive. Applicant did not comply with or
acknowledge the Trademark Examining Attorney’s final
Trademark Rule 2.61(b) requirement for submission of
additional information and materials.
The Trademark Examining Attorney issued an action in
each case denying the request for reconsideration. The
Board then resumed the appeal, and applicant filed an
Ser. Nos. 76197856, 76197857 and 76197858
5
appeal brief which essentially is a verbatim reiteration of
its request for reconsideration. Applicant’s appeal brief
included no response to or even acknowledgement of the
pending final Trademark Rule 2.61(b) requirement.
Likewise, although the Trademark Examining Attorney
specifically argued in a separately-headed section of her
brief on appeal that applicant has failed to comply with
the outstanding Trademark Rule 2.61(b) requirement and that
such failure constitutes an independent basis for refusing
registration, applicant did not file a reply brief
addressing this issue.
The Trademark Rules of Practice have the effect of
law, and failure to comply with a request for information
is grounds for refusal of registration. See In re DTI
Partnership, L.L.P., supra; In re SPX Corporation, 63
USPQ2d 1592 (TTAB 2002); In re Page, 51 USPQ2d 1660, 1665
(TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729, 1731
(TTAB 1990); In re Big Daddy’s Lounges, Inc., 200 USPQ 371
(TTAB 1978); In re Air Products and Chemicals, Inc., 192
USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison
Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973); see
generally Chrysler Corp. v. Brown, 441 U.S. 281, 295
(1979)(agency regulations have the force and effect of
law).
Ser. Nos. 76197856, 76197857 and 76197858
6
Trademark Rule 2.61(b) provides: “The examiner may
require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper
examination of the application.” We find that the
Trademark Examining Attorney’s requirement in each case for
information (regarding the nature of applicant’s goods and
the significance of the wording in the mark as applied to
such goods) was proper under Trademark Rule 2.61(b). Such
information is directly relevant to the issue of mere
descriptiveness and thus “may be reasonably necessary to
the proper examination of the application,” as required by
the rule. Applicant has not contended otherwise.
We also find that applicant, in each case, has failed
to comply with the Trademark Examining Attorney’s Trademark
Rule 2.61(b) requirement. Again, applicant has not
contended otherwise. Applicant’s noncompliance with the
Trademark Examining Attorney’s lawful requirement under
Trademark Rule 2.61(b) warrants rejection of the
application in each case. See In re DTI Partnership,
L.L.P., supra; In re SPX Corporation, supra; In re Page,
supra; and In re Babies Beat, Inc., supra.
Indeed, despite the Trademark Examining Attorney’s
repeated express warnings and reminders, applicant
inexplicably has ignored the Trademark Rule 2.61
Ser. Nos. 76197856, 76197857 and 76197858
7
requirement altogether, both during prosecution of the
applications and during these appeals. Such disregard of
the Trademark Examining Attorney’s lawful requirement, even
more than applicant’s noncompliance therewith, warrants
rejection of the application. As the Board has stated
previously:
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
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. What an applicant cannot do,
however, is to ignore a request made pursuant
to Trademark Rule 2.61(b), as applicant has
here.
In re SPX Corporation, supra, 63 USPQ2d at 1597.
For the reasons discussed above, we affirm the
refusals to register in each of the three applications,
based on applicant’s failure to comply with the Trademark
Examining Attorney’s final requirement for information
under Trademark Rule 2.61(b).
Ser. Nos. 76197856, 76197857 and 76197858
8
In view of our decision with respect to the Trademark
Rule 2.61(b) requirement in each case, we deem the
substantive Section 2(e)(1) mere descriptiveness refusal in
each case to be moot. Applicant’s failure to comply with
the Trademark Rule 2.61(b) requirement is a sufficient
basis, in itself, for affirming the refusals to register
applicant’s marks. Moreover, our ability to fully and
accurately assess the substantive merits of the mere
descriptiveness refusals 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). See In re DTI Partnership,
L.L.P., supra. In these circumstances, we decline to reach
the merits of those refusals.
Decision: In each of the three applications captioned
above, the refusal to register based on applicant’s failure
to comply with the Trademark Examining Attorney’s final
requirement for information under Trademark Rule 2.61(b) is
affirmed. The Section 2(e)(1) mere descriptiveness refusal
in each case is moot.