Vogel

Trademark Trial and Appeal Board

Apr 29, 2009

No. 78851627 (T.T.A.B. Apr. 29, 2009)

Mailed:
April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vogel
________

Serial No. 78851627
_______

Gene W. Arant, Esq. for Ronald J. Vogel.

William H. Dawe, III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Quinn, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Ronald J. Vogel (“applicant”) has applied to register
the mark VAMPOWER, in standard character form, for goods
ultimately identified as “a non-energized electronic device
having a physical means for sucking electrical energy from
another electronic device that is independently energized,”
in Class 9.
The Examining Attorney finally refused registration on
two grounds: (1) the description of goods is indefinite;
and (2) applicant failed to respond to a request for
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78851627
2
information regarding the nature of goods pursuant to
Trademark Rule 2.61(b).
Prosecution History
In the original application, applicant identified the
goods as “a parasitic power acquisition device.” In the
September 13, 2006 Office Action, the Examining Attorney
requested information regarding the goods or, in the
alternative, a description of the nature and purpose of the
goods. In addition, the Examining Attorney advised
applicant that the description of goods was indefinite and
must be amended using the common commercial name of the
product and avoiding indefinite terms such as “devices.”
Applicant amended the description of goods to read as
follows:
A parasitic power acquisition device,
namely, a non-powered device for
parasitically obtaining power from
another electronic device that is
independently energized.

Applicant did not provide any other information or a
description of the nature and purpose of the goods.
In the March 20, 2007 Office Action, the Examining
Attorney continued and made final his requirement for an
acceptable identification of goods, stating that the
amended description of goods is indefinite because “it does
not put consumers on notice as to the nature of applicant’s
Serial No. 78851627
3
goods.” Again, the Examining Attorney advised applicant to
“use the common commercial designation for the [goods], be
as complete and specific as possible and avoid the use of
indefinite words and phrases.” The Examining Attorney also
repeated and made final the requirement for the applicant
to provide information or a description of the nature and
purpose of the goods identified in the application.
In a request for reconsideration, applicant amended
the description of goods to read as follows:
A non-energized electronic device
having a physical means for sucking
electrical energy from another
electronic device that is independently
energized.

Applicant did not provide any other information or a
description of the nature and purpose of the goods. The
Examining Attorney denied the request for reconsideration,
noting that the description of goods remains indefinite and
that the applicant failed to provide any information or a
description of his product. Specifically, the Examining
Attorney required applicant to “amend the identification to
specify the common commercial name of the goods. If there
is no common commercial name, applicant must describe the
product and its intended uses.”
Applicant appealed. In his appeal brief, applicant
asserted that although there is no common commercial name
Serial No. 78851627
4
for the product, the identification of goods describes the
product and its intended use.
The Examining Attorney argues that the use of the word
“devices” in the identification of goods “does not fully
describe or explain the ‘devices’ in such a manner that
will be ‘understandable to the average person.’”
Description of Goods
Section 1(b)(1)(2) of the Trademark Act of 1946, 15
U.S.C. §1051(b)(1)(2), requires an applicant to specify the
goods in connection with which the applicant has a bona
fide intent to use its mark.
To “specify” means to name in an
explicit manner. The identification of
goods or services should set forth
common names, using terminology that is
generally understood. For products or
services that do not have common names,
the application should use clear and
succinct language to describe or
explain the item. Technical or
esoteric language and lengthy
descriptions of characteristics or uses
are not appropriate.

The language used to describe goods or
services should be understandable to
the average person and should not
require an in-depth knowledge of the
relevant field. An identification may
include terms of art in a particular
field or industry, but, if these terms
are not widely understood by the
general population, the identification
should include an explanation of the
specialized terminology.

Serial No. 78851627
5
The identification of goods or services
must be specific, definite, clear,
accurate and concise.

TMEP §1402.01 (5th ed. 2007). In other words, the
identification of goods must describe the goods so that an
English speaker can understand what the goods are. TMEP
§1402.01(a).
The identification should state common
names for goods or services, be as
complete and specific as possible and
avoid indefinite words and phrases.
The terms “including,” “comprising,”
“such as,” “and the like,” “and similar
goods,” “products,” “concepts,” “like
services” and other indefinite terms
and phrases are almost always
unacceptable.

TMEP §1402.03(a).
“Electronic” means “of or pertaining to electronics or
to devices, circuits, or systems developed through
electronics.”1
“Electronics” means “the science dealing with the
development and application of devices and systems
involving the flow of electrons in a vacuum, in gaseous
media, and in semiconductors.”2

1 The Random House Dictionary of the English Language
(Unabridged) p. 629 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
2 Id.
Serial No. 78851627
6
A “device” is defined as “a thing made for a
particular purpose; an invention or contrivance, esp. a
mechanical or electrical one.”3
The product described in the identification of goods
is an unpowered electronic apparatus that has the
capability of capturing energy from a different electronic
device with a power source. The description of goods uses
“clear and succinct language to describe or explain the
item.” See TMEP §1402.01. The Examining Attorney did not
explain why applicant’s amended description of goods does
not fully describe the product in such a manner as to be
understandable to the average person. To the extent that
the Examining Attorney objects to the use of the word
“device,” there is no per se prohibition against the use of
that term in the TMEP.4 Moreover, we note that there are
numerous identifications in the Trademark ID Manual that

3 Id. At 543.
4 The Examining Attorney incorrectly states that “[t]he rules
require that indefinite wording such as the term ‘device’ be
followed by the term ‘namely,’ followed by a list of the specific
goods identified by their common commercial or generic names,”
citing “TMEP §§1402.01 (sic).” The term “device” is not
mentioned in the TMEP as an unacceptable term, or one that must
be followed by naming specific items. As indicated above, TMEP
§1402.03(a) provides that the “terms ‘including,’ ‘comprising,’
‘such as,’ ‘and the like,’ ‘and similar goods,’ ‘products,’
‘concepts,’ ‘like services’ and other indefinite terms and
phrases are almost always unacceptable. The terms ‘namely’ and
‘consisting of’ are definite and are preferred whenever setting
forth an identification that requires greater particularity.”
Serial No. 78851627
7
include the word “device.” Here, applicant is not
identifying his goods only as a “device”; the
identification of goods includes information that explains
the nature and purpose of the device.
In view of the foregoing, we find that the amended
identification of goods is acceptable.
Request for Additional Information
We now address the refusal to register on the ground
that applicant did not comply with the requirement for
information. Trademark Rule 2.61(b) provides that the
“examiner may require applicant to furnish such information
and exhibits as may be reasonably necessary to the proper
examination of the application.” More specifically, the
“examining attorney may require literature, exhibits, and
general information concerning circumstances surrounding
the mark and, if applicable, its use or intended use.”
TMEP §814. “If applicant does not believe that it has
relevant information, applicant should submit a statement
to this effect.” Id. There is no question that during the
prosecution of the application applicant did not respond to
the request for information. However, in his appeal brief,
applicant asserted that “the identification of goods in and
of itself describes the product and its intended uses.”
Serial No. 78851627
8
Applicant has not directly discussed why he failed to
respond to the Examining Attorney’s requests for
information in either his response to the first Office
Action or his request for reconsideration. Failing to
respond to a request for information may, in itself, be a
sufficient basis to affirm a refusal for registration.
However, in view of our finding that the amended
description of goods is acceptable, applicant’s statement
that “the identification of goods in and of itself
describes the product and its intended uses,” and the
Examining Attorney’s failure to explain why the
identification of goods is indefinite, we find that
applicant’s failure to respond to the information request
during the prosecution of his application does not warrant
our affirming the refusal of registration on this basis.
We caution, though, that we are not suggesting by our
finding in this particular case that applicants can ignore
a request for information pursuant to Trademark Rule
2.61(b) without any risk of adverse consequences. See In
re Planalytics Inc., 70 USPQ2d 1453, 1457-1458 (TTAB 2004)
(an applicant has an obligation and responsibility to
produce the information that the examining attorney
requests because such information is reasonably necessary
for examination, and failure to provide such information is
Serial No. 78851627
9
grounds for refusal); In re DTI Partnership LLP, 67 USPQ2d
1699 (TTAB 2003) (applicant’s failure to comply with the
Examining Attorney’s request for information hindered the
ability of the Examining Attorney and the Board “to fully
and accurately assess the substantive merits of the mere
descriptiveness issue,” and is a sufficient basis, in
itself, for refusing registration). Clearly, the better
practice would have been for applicant to have specifically
responded to the request for information, even if the
response were to explain that this is a new product for
which there is no literature or other information.5
Decision: The refusals to register are reversed.

5 With respect to good practice, either the applicant or the
Examining Attorney should have tried to resolve the
identification goods issue through a telephone conference during
prosecution of the application, prior to the filing of
applicant’s notice of appeal.