William A.Jones, dba William A. Jones Co.

Trademark Trial and Appeal Board

Jun 5, 2006

No. 76491961 (T.T.A.B. Jun. 5, 2006)

Mailed:
June 5, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re William A. Jones, DBA William A. Jones Co.
________

Serial No. 76491961
_______

Richard W. Young and Nicole M. Murray of Gardner Carton &
Douglas for William A. Jones, DBA William A. Jones Co.

Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Bucher and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant has appealed the Trademark Examining
Attorney’s refusal to register the mark MOLD-A-RAMA
(standard character drawing). The sole issue on appeal is
the acceptability of the recitation of services.
Applicant initially recited its services as:
“personal souvenir production services in the
nature of vending machines that provide and
form plastic souvenirs” in International
Class 41.1

1 Application Serial No. 76491961 was filed on February 12,
2003 based upon applicant’s allegation of first use anywhere and
first use in commerce at least as early as 1971.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76491961
- 2 -
The Trademark Examining Attorney initially refused
registration of applicant’s mark on the ground that the
recitation of services was unacceptable as indefinite.
Applicant responded to that initial Office action by
requesting an amendment to the recitation of services to
add, before that earlier recited language, the words
“Entertainment services, namely … .” The Trademark
Examining Attorney eventually issued a final refusal
pursuant to Trademark Rule 2.32(a)(6) to register the mark
on the ground that applicant failed to propose an acceptable
recitation of goods or services, and furthermore, that the
latest proposed amendment exceeds the scope of the
recitation of services as recited in the original
application, in contravention of Trademark Rule 2.71(a).
This appeal followed the Trademark Examining Attorney’s
denial of applicant’s request for reconsideration.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, but applicant did not request an
oral hearing. We affirm the refusal to register.
Preliminary Matter
Before turning to the merits of this case, there is one
initial matter that requires our attention. The Trademark
Examining Attorney objected to the newly-attached evidence
Serial No. 76491961
- 3 -
in applicant’s appeal brief, i.e., copies of two third-party
registrations. He argues correctly that the record in any
application must be complete prior to appeal. 37 C.F.R.
§ 2.142(d). By contrast, applicant argues that these
registrations should be considered part of the record on
appeal because the Trademark Examining Attorney failed to
advise applicant of the insufficiency of these registrations
in a timely manner, citing to TBMP § 1208.02.
In reviewing the record, we note that applicant first
submitted information about these third-party registrations
in its request for reconsideration, providing the mark,
recitation of services, and registration numbers. However,
applicant did not submit copies of the registrations
themselves, either in the form of “soft copies” or as
electronic copies taken from the records of the Patent and
Trademark Office database. Thus, even if the Trademark
Examining Attorney, in his denial of the request for
reconsideration, had informed applicant of the need for
copies of the registrations, and the insufficiency of his
submission, at that point in the prosecution applicant would
not have been able to cure the insufficiency. Hence, the
Trademark Examining Attorney did not waive his right to
object to the mere listing of information about the
registrations. Inasmuch as the evidence of third-party
Serial No. 76491961
- 4 -
registrations in applicant’s brief was newly submitted on
appeal, we agree that the registrations should be excluded
from the record, and we have given them no consideration.2
Applicant’s position
In its brief, applicant points out that it places and
maintains its MOLD-A-RAMA machines at public venues such as
museums, zoos, aquariums, amusement parks and other tourist
attractions worldwide. Applicant’s machines are placed
throughout a venue, but they are not the primary
entertainment of the attraction (e.g., that being the
museum, zoo, etc.). Applicant states that it is not in the
business of selling these machines.
Applicant’s machines manufacture souvenirs and,
according to applicant, the primary attraction of
applicant’s machines is the entertainment provided by the
miniaturized manufacturing process – an operation that is
visible to the customer. The machines create souvenirs for
individuals in an operation that commences when the customer
deposits money in the machine. The machine, having the
footprint of a soft drink vending machine, produces a
plastic, molded figurine.

2 We hasten to add that even if we had considered these
registrations, it would not have changed the outcome herein.
Serial No. 76491961
- 5 -

Applicant notes in its brief that its “MOLD-A-RAMA
services excite four of the five human senses”:
Consumers can see the plastic flowing through
the machine, hear the rumble of the machine
as it roars to life, smell the distinct odor
of molten plastic, and feel the warm souvenir
as it exits the machine into the hands of the
consumer.

Applicant argues that one of the reasons for the
success of its services is the ability of the souvenir-
producing machine to engage and entertain consumers as they
watch their personal souvenirs being manufactured.
According to applicant, consumers deposit coins in the
machine for the pleasure of watching a small manufacturing
operation create a molded souvenir in an intricate shape
from molten plastic. Applicant argues that it is clearly
using its MOLD-A-RAMA mark to indicate the source of
entertainment provided by this miniature souvenir-
manufacturing factory. Applicant also argues that with its
Serial No. 76491961
- 6 -
proposed amendment to its recitation of services (adding
“entertainment services, namely” to the beginning of the
recitation), it has not broadened the scope of its services,
but has merely clarified and limited the recitation of
services consistent with 37 C.F.R. § 2.71(a).
Position of the Trademark Examining Attorney
In his brief, the Trademark Examining Attorney contends
that applicant’s proposed recitation of services is
unacceptable due to its indefiniteness, and furthermore,
alleges that the addition of “entertainment services”
results in an identification that is outside the scope of
the originally filed recitation.
Applicable Law
As noted by the Trademark Examining Attorney, the
identification of goods or recitation of services must be
specific, definite, clear, accurate and concise. See In re
Societe Generale des Eaux Minerales de Vittel S. A., 1 USPQ2d
1296 (TTAB 1986), reversed on other grounds, 824 F.2d 957,
3 USPQ2d 1450 (Fed. Cir. 1987). A written application must
specify the particular goods or services on or in connection
with which the applicant uses, or has a bona fide intention
to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and
1051(b)(2); 37 C.F.R. § 2.32(a)(6).
Serial No. 76491961
- 7 -
Additionally, both applicant and the Trademark
Examining Attorney have cited to Trademark Rule 2.71(a),
37 C.F.R. § 2.71(a), which states that an applicant “may
amend the application to clarify or limit, but not to
broaden, the identification of goods and/or services.”
Analysis
The question before us is whether the proposed
recitation of services, as amended: “entertainment
services, namely, personal souvenir production services in
the nature of vending machines that provide and form plastic
souvenirs,” is acceptable on its face. We find that it is
unacceptable because it is indefinite.
In his appeal brief, the Trademark Examining Attorney
argues that “from the wording in the identification, taken
as a whole, it is entirely unclear as to whether the
applicant provides Class 41 entertainment services, Class 40
souvenir production services, and/or Class 9 vending
machines.”
As to the last possibility, although applicant’s
recitation refers to the use of vending machines, the
recitation, as well as the record, clearly shows that the
vending machines are used in the rendering of applicant’s
services, but that applicant does not sell or lease vending
Serial No. 76491961
- 8 -
machines themselves. Simply referencing vending machines
within the recitation does not make the recitation unclear
as to whether applicant is offering goods in International
Class 9 as opposed to services.
However, we do agree with the Trademark Examining
Attorney’s conclusion that the proposed recitation of
services includes services in two classes, and is therefore
indefinite. Applicant originally applied for services in
International Class 41 (the classification of entertainment
services) and has proposed an amended recitation beginning
with the words “entertainment services, namely … .” On the
other hand, the identification also recites “personal
souvenir production services in the nature of vending
machines that provide and form plastic souvenirs.” Such
souvenir production services in the nature of manufacturing
on demand would fall in International Class 40. Because
applicant’s recitation includes services that may fall in
Class 40 and in Class 41, we find that this hybrid
recitation is indefinite, and therefore unacceptable.3

3 Having found the proposed amended recitation to be
unacceptable, we do not find it necessary to reach the question of
whether or not the proposed amended recitation should be barred
under Rule 2.71(a).
Serial No. 76491961
- 9 -
Decision: The refusal to register based upon
applicant’s failure to propose an acceptable recitation of
services is hereby affirmed.