Andrea I. Weinstein

Trademark Trial and Appeal Board

Feb 26, 2004

No. 76280695 (T.T.A.B. Feb. 26, 2004)

Mailed: 2/26/04
Paper No. 16
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Andrea I. Weinstein
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Serial No. 76280695
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Myron Amer for Andrea I. Weinstein
Russ Herman, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Seeherman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Andrea I. Weinstein has appealed from the final
refusal of the Trademark Examining Attorney to register
RETIREMENT REBATE PLAN for "providing rebates for online
purchases made via a portal site comprised of participating
retail establishments, such purchases providing for
remittances to a retirement account with a participating
broker or bank."1 The application was initially filed on
1 Serial No. 76280695.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Ser. No. 76280695
2
July 8, 2001, seeking registration on the Principal
Register, and asserting a bona fide intention to use the
mark in commerce. After the Examining Attorney refused
registration pursuant to Section 2(e)(1) of the Trademark
Act, applicant, on January 22, 2002, submitted a specimen
as well as a declaration stating that the mark was used in
commerce as early as January 11, 2002 (treated by the
Examining Attorney as an amendment to allege use), and
amended her application to the Supplemental Register. In
response to the Examining Attorney's requirement, she
disclaimed exclusive rights to the words REBATE PLAN.
The Examining Attorney has issued a final refusal of
registration on the basis that the specimen submitted by
applicant on January 22, 2002 does not show use of the mark
in connection with the identified services, and that the
substitute specimen submitted by applicant on January 24,
2003, does not show use of the mark as of the filing of the
amendment to allege use/amendment to the Supplemental
Register.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
We affirm the refusal.
We first address a procedural point raised by
applicant. Applicant contends that the Examining Attorney
Ser. No. 76280695
3
is, in effect, estopped from raising a requirement for
acceptable specimens because the Examining Attorney delayed
in making this requirement. A review of the prosecution
history shows that, after applicant amended her application
to the Supplemental Register, the Examining Attorney issued
an Office action, on November 1, 2002, in which he accepted
the amendment, but required a disclaimer of REBATE PLAN and
an acceptable identification of services. No objection to
the specimens was raised at this time. Therefore, it is
applicant's position that, when it complied with the stated
requirements in the response filed on November 12, 2002,
the application, "the prosecution of the application was in
effect closed, and at law no open issued remained." Brief,
p. 3. Applicant points to the statement made in the
November 1, 2002 Office action that "Publication for
opposition is deferred pending applicant's response to the
above noted issues"2 as further support for her position
that prosecution had been completed. Therefore, applicant
argues that the review that resulted in the December 26,
2002 Office action, ["on review of this application prior
to issuance on the Supplemental Register it was noted that
2 This statement is incorrect, in that applications for
registration on the Supplemental Register do not undergo the
publication procedure.
Ser. No. 76280695
4
applicant's specimens do not show use of the mark in
commerce"] was not in response to applicant's communication
filed November 12, 2002. Applicant further states that the
Examining Attorney's actions in raising this new
requirement were prohibited by TMEP §1105.01, which
applicant quotes as follows:
The examining attorney should leave no
point of refusal or requirement
necessary to secure correction or
amendment for later action. Omission
of a refusal or requirement would be
piecemeal prosecution, which should be
avoided whenever possible.
First it should be noted that Section 1105.01 does not
contain the quote provided by applicant. However,
applicant is correct that the Trademark Operation generally
discourages piecemeal prosecution of applications. See,
for example, Section 704.01, which includes the statement,
"Every effort should be made to avoid piecemeal
prosecution, because it prolongs the time needed to dispose
of an application." However, Examining Attorneys are not
prohibited from raising new issues or requirements in
subsequent Office actions. In fact, several sections of
the Trademark Manual of Examining Procedure discuss such an
event. See, for example, Section 706, which states, inter
alia:
Ser. No. 76280695
5
If in the first Office action the
examining attorney inadvertently failed
to refuse registration on a clearly
applicable ground or to make a
necessary requirement, the examining
attorney must take appropriate action
to correct the inadvertent error in a
subsequent action.
***
... an examining attorney who does make
a new refusal or requirement should
clearly explain why the refusal or
requirement is necessary, and apologize
for the delay in raising the issue, if
appropriate.
See also, Section 711.02.
Although it is unfortunate that the Examining Attorney
did not determine that the specimen submitted with
applicant's amendment to allege use was not acceptable
until the second Office action considering this amendment
and the amendment to the Supplemental Register, and not
until after applicant had responded to the requirements for
a disclaimer and an amendment to the identification, the
Examining Attorney was not prohibited from requiring
acceptable specimens in that Office action. The mandate of
the USPTO is to register only registrable marks, and when
an application and specimen do not show use of the applied-
for mark for the identified services, the mark is not
registrable, and any delay by the Examining Attorney in
raising this objection can have no effect on our decision
herein.
Ser. No. 76280695
6
This brings us to the substantive basis for refusal,
namely, that applicant has not provided acceptable
specimens showing use of the mark.
With respect to the original specimen, which applicant
submitted on January 22, 2002, it is the Examining
Attorney's position that this specimen does not evidence
use of the mark for the identified services. Applicant has
not addressed the adequacy of this specimen in her brief,
instead relying only on the estoppel argument discussed
above. Therefore, it appears that applicant is no longer
asserting that this specimen is acceptable. However, in
order to be perfectly clear, we specifically find that this
specimen is unacceptable to show use of the mark for the
identified services.
Trademark Rule 2.56 provides, inter alia, that:
(a) An application under section 1(a) of
the Act, an amendment to allege use
under §2.76, and a statement of use
under §2.88 must each include one
specimen showing the mark as used on or
in connection with the goods, or in the
sale or advertising of the services in
commerce.
***
(b)(2) A service mark specimen must show
the mark as actually used in the sale or
advertising of the services.
Section 45 of the Trademark Act, 15 U.S.C. 1127,
defines "use in commerce" as follows:
Ser. No. 76280695
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Use in commerce. The term “use in
commerce” means the bona fide use of a
mark in the ordinary course of trade,
and not made merely to reserve a right
in a mark. For purposes of this Act, a
mark shall be deemed to be in use in
commerce—
***
(2) on services when it is used or
displayed in the sale or advertising of
services and the services are rendered
in commerce, or the services are
rendered in more than one State or in
the United States and a foreign country
and the person rendering the services is
engaged in commerce in connection with
the services.
Applicant's original specimen is a twenty-page
document which bears, on the title page, the words
"Commitment, Inc. Business Plan." The body of the report
is clearly a business plan, stating, inter alia:
Notice to Potential Lenders and
Investors
Every effort has been made to give
potential lenders, investors and other
readers of this document a fair and
accurate picture of Commitment, Inc.,
and the environment in which we work.
(p. 19)
Commitment makes no warranty, express
or implied, with regard to the
successful implementation of this plan,
or any part of this plan, or with
regard to the future growth of revenue
or earnings. (p. 20)
The words RETIREMENT REBATE PLAN do appear in this
business plan, e.g.:
Ser. No. 76280695
8
Commitment is the world's largest
portal site for women, with a first
ever Retirement Rebate Plan that will
give millions of women rebates on
products they buy from our retail
partners that will be put into tax-free
retirement savings accounts, which will
be handled by a major U.S. investment
firm. (p. 2).
However, it is not enough that applicant has simply used
the term RETIREMENT REBATE PLAN in any type of literature
which she may distribute; the Statute specifically
prohibits the reserving of rights in a mark. Applicant
must use the mark in connection with the sale or
advertising of her identified services, and in a manner
which will identify to consumers that this is a trademark
for the services. It is well settled that an applicant
must have used the mark to identify the named services for
which registration is sought. In re Advertising &
Marketing, 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987),
citing In re Universal Oil Prods. Co., 476 F.2d 653, 177
USPQ 456 (CCPA 1973).
Applicant's use of RETIREMENT REBATE PLAN, as shown in
the identified specimen, is not in connection with the sale
or advertising of the service of providing rebates for
online purchases. It is not even clear from the specimen
that applicant currently even renders such a service, or
whether this is a planned service that will be offered at
Ser. No. 76280695
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the time she gets the necessary funding. What is clear is
that the business plan is not directed to or intended to be
viewed by consumers of the services.
Applicant also submitted a substitute specimen with
her request for reconsideration, filed March 13, 2003.
This specimen consists of a cover letter dated March 5,
2003, which refers to enclosed information, but which
information was not provided. It includes a paragraph
stating "Our Retirement Rebate Plan allows women to save
for retirement when they purchase products from our site
they already buy, such as books, toys, care, CDs, clothes,
flowers, and give [sic, should be gift] certificates."
This letter is signed by applicant, and is written on the
letterhead of the law firm of Schonfeld & Weinstein, L.L.P.
at which applicant appears to be a partner. Although in
the Office action considering this specimen the Examining
Attorney indicated certain problems as to the letter's
failure to show use of the mark in commerce for the sale or
advertising of services, in his brief he confined his
comments to the date the specimen was in use. Accordingly,
we will do the same.
As noted, the letter is dated March 5, 2003, and as
such does not evidence service mark use of RETIREMENT
REBATE PLAN prior to that date. However, applicant's
Ser. No. 76280695
10
amendment to allege use and amendment to the Supplemental
Register was filed on January 22, 2002. Thus, this
substitute specimen does not evidence use of the mark at
the time the amendment to allege use and the amendment to
the Supplemental Register were submitted.
Applicant asserts that no amendment to allege use was
made or required to be made because the "the application
was filed under Sec. 1(a) and converted to one based on
actual use during the prosecution of the application
pursuant to C.F.R. §2.76 [sic, should be 37 C.F.R. §2.76].
Brief, p. 4.
Applicant's statement has an internal inconsistency.
An application filed under Section 1(a) of the Trademark
Act is based on use in commerce, and need not be converted
to a use-based application. Applicant's original
application was based on Section 1(b) of the Statute, in
that it asserted a bona fide intention to use the mark in
commerce. As noted above, the Examining Attorney treated
the declaration which was filed on January 22, 2002, in
connection with the original specimen, as an amendment to
allege use. Further, applicant could not have amended her
application to the Supplemental Register at that time
without the amendment to allege use; Section 23 of the Act
clearly requires that to be eligible for registration on
Ser. No. 76280695
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the Supplemental Register, the mark must be in use in
commerce.
Thus, applicant must show that her mark was in use as
of the filing of the amendment to allege use and the
amendment to the Supplemental Register on January 22, 2002;
clearly, the substitute specimen, which is dated March 5,
2003, does not evidence use as of that time.
Decision: The refusal of registration on the basis of
the unacceptability of applicant's specimens is affirmed.