Great Lakes Ramco, Inc.

Trademark Trial and Appeal Board

Jun 29, 2004

No. 76302658 (T.T.A.B. Jun. 29, 2004)

Mailed:
June 29, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Great Lakes Ramco, Inc.
________
Serial No. 76302658
_______
Kenneth L. Mitchell of Woodling Krost and Rust for Great
Lakes Ramco, Inc.
John C. Hwang, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Great Lakes Ramco, Inc. seeks registration on the
Principal Register of the mark GREAT LAKES RAMCO for
services recited, as amended, as “business management
services,” in International Class 35.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
1 Application Serial No. 76302658 was filed on August 20,
2001 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. The words “GREAT LAKES” are
disclaimed apart from the mark as shown. On April 4, 2002,
applicant filed an amendment to allege use, alleging first use in
commerce at least as early as August 31, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76302658
- 2 -
register this designation based upon the ground that
applicant has not submitted a proper specimen of use
verified to have been in use in commerce prior to the date
of filing of the amendment to allege use.
The recitation of services in the application, as
filed, was simply “management services.” At the time of
filing of the amendment to allege use, based upon the
Trademark Examining Attorney’s suggestion in the initial
Office action, applicant amended the recitation to
“business management services.” However, the specimen
submitted with the amendment to allege use was a blank
invoice listing applicant's trade name and the legend
“Sales – Rentals – Parts – Service.” The Trademark
Examining Attorney objected to this specimen inasmuch as it
made no reference to the recited services.
Applicant then submitted substitute specimens in the
form of copies of advertising flyers promoting applicant’s
material handling businesses – again, listing sales,
service, parts and rentals. Like the invoice submitted
with the amendment to allege use, these substitute
specimens were properly supported by a declaration.
However, again, the Trademark Examining Attorney correctly
Serial No. 76302658
- 3 -
objected to these specimens as failing to make any mention
of the recited business management services.
In its response of April 22, 2003, applicant submitted
a partial photocopy of a brochure stating in part as
follows:
RIM® -- Remote Inventory Management
Great Lakes-Ramco recognizes the need to “track” inventory levels in real time and offers this
service to its clients via our Remote Inventory Management program (RIM®) The RIM® program
identifies inventory levels immediately and adjusts quantities to pre-determine levels automatically.
RIM® eliminates the risk of inventory deficits while offering management cost prediction and control
of inventoried parts usage.
In the final Office action, the Trademark Examining
Attorney noted the outstanding issues, as follows:
Applicant’s substitute specimen indeed shows
that applicant provides inventory management
of material handling equipment as a subset
of its retail parts distribution services.
Applicant may amend its identification to
“inventory management services in the field
of material handling equipment parts.”
Although applicant’s substitute specimen
shows inventory management services, the
applicant must verify, with an affidavit or
a declaration under 37 C.F.R. §2.20, that
the applicant used the substitute specimen
in commerce prior to filing the amendment to
allege use. 37 C.F.R. §2.59(b)(1).
Applicant omitted submitting this statement
and declaration.
Based on the language in the final Office action, the
examining attorney apparently concluded that applicant's
inventory management services were within the scope of its
identified business management services. Therefore, the
Serial No. 76302658
- 4 -
examining attorney clearly allowed applicant to remedy
irregularities in the application by amending the
identification and by submitting a verification for the
brochure showing use of applicant's mark for inventory
management services. However, instead of amending the
identification and submitting a verification, which
apparently would have led to approval for publication of
applicant's mark, applicant filed this appeal.
Simply stated, throughout the prosecution of this
application, the recitation of services has been limited to
“management services” and then “business management
services.” This language implies that applicant is
providing the service of managing the business operations
of another in some form. With the Trademark Examining
Attorney’s final suggestion of yet another more precise
recitation of services, he clearly had determined that
these “inventory management services” were still within the
scope of the earlier recited services. See 37 C.F.R.
§2.71(a).
As noted above, the first specimen of record (the
blank invoice) made no clear reference to any particular
service, and certainly did not allude to a service of
managing the business operations of another. The
Serial No. 76302658
- 5 -
substitute specimens (the flyers) demonstrate clearly that
applicant is in the business of meeting the material
handling needs of its clients, but again, make no reference
to managing the business operations of another. Thus,
neither of the verified specimens showed use of the mark
for the identified services.
Finally, as pointed out by the Trademark Examining
Attorney, the most recently submitted brochure would appear
to be acceptable to support the proposed amended recitation
of services, but lacks the critical verification required
by 37 C.F.R. §2.59(b)(1). We do not understand
applicant’s statement that “[n]o substitute specimen has
been submitted and no verification is necessary.” Taken
literally, applicant apparently did not submit the brochure
showing use of its mark for inventory management services
as a substitute specimen and must have submitted it solely
for informational purposes. We must, therefore, determine
whether applicant has submitted a proper, verified specimen
showing use of its mark for its identified business
management services by referring only to the invoice
submitted with the amendment to allege use and the verified
substitute submitted when the examining attorney refused to
accept the invoice as a proper specimen. Neither the
Serial No. 76302658
- 6 -
invoice nor the verified substitute therefore show use of
applicant's mark for the identified business management
services. Accordingly, the refusal of registration for
failure to comply with the requirement to submit a proper,
verified statement is affirmed.
Decision: The refusal to register based upon
applicant’s failure to submit a proper, verified substitute
specimen is hereby affirmed.