The Manual Woodworkers & Weavers Inc.

Trademark Trial and Appeal Board

Sep 5, 2008

No. 76653876 (T.T.A.B. Sep. 5, 2008)

Mailed: September 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Manual Woodworkers & Weavers Inc.
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Serial No. 76653876
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Eric G. Zaiser of Dority & Manning, PA for The Manual
Woodworkers & Weavers Inc.

Michael P. Keating, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Kuhlke, Taylor and Bergsman, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

The Manual Woodworkers & Weavers Inc. has filed an
application to register the mark WOVEN MOMENTS, in standard
character format, on the Principal Register for goods
ultimately identified as “kits consisting primarily of a
box, an order form, a mailer, and an authorization key
code, sold together as a unit, for use in submitting an
image and obtaining blanket throws and tapestries bearing
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 76653876
2
the image” in International Class 24.1 The application
includes a disclaimer of WOVEN apart from the mark as a
whole.
The trademark examining attorney has refused
registration on the ground that the identified goods are not
goods in trade under Trademark Act Sections 1, 2 and 45, 15
U.S.C. § 1051-1052 and 1127. When the refusal was made
final, applicant appealed and requested reconsideration of
the final refusal. On December 6, 2007, the examining
attorney denied the request for reconsideration and, on
December 27, 2007, the appeal was resumed. Both applicant
and the examining attorney filed briefs. For the reasons
discussed below, we affirm the refusal to register.
As the examining attorney aptly points out, the crux
of the issue on appeal is whether the proposed mark
identifies “goods in trade;” that is, whether applicant’s
mark WOVEN MOMENTS is being used to identify goods that are
sold or transported in commerce or that have utility to
others.
At the outset, we note that we have thoroughly
reviewed all of the arguments and the evidence presented by

1 Serial No. 76653876, filed January 20, 2006, and alleging
November 1, 2005 as the date of first use of the mark anywhere
and in commerce.

Ser No. 76653876
3
both applicant and the examining attorney, even if such is
not specifically mentioned herein. The parties’ primary
arguments are set forth below. The examining attorney
maintains that the goods on which applicant’s mark is used
are not “goods in trade” because the mark is not being used
to identify goods that are sold or transported in commerce
or that have utility to others. The examining attorney
particularly argues (emphasis supplied):
In this case, the identified goods are
kits used to obtain custom imprinted
items from applicant. The kits do not
give purchasers or consumers the ability
to obtain custom imprinted blanket throws
and tapestries from any sources other
than applicant. A consumer cannot take
the kits and its components to a source
other than applicant to obtain the throws
and tapestries. Rather, the purchase
price includes the right to obtain
customized woven products from applicant
itself as part of its custom imprinting
services. As such, the kits are only
incidental items used by applicant in the
ordinary course of business.

In addition, it is clear that in order to
be “goods in trade” as those terms are
understood by the Trademark Act, the
goods for which registration is sought
must have utility to others on a
commercial scale, i.e., utility as a type
of product named in the application.
TMEP § 1202.06(a). Thus, the identified
goods must have utility to others as a
kit for use in submitting an image and
obtaining blanket throws and tapestries
bearing that image. As shown by the
record, the kits have no such utility to
consumers. Rather, the kits are only
Ser No. 76653876
4
designed to obtain goods from applicant
as part of applicant’s custom imprinting
business. It is clear that because the
cost of the kit includes the imprinting
of the image by applicant, other
manufacturers will not accept the kit for
use in obtaining their goods, i.e., the
kits are for use only in obtaining
finished goods from applicant.

(Brief, unnumbered p. 6). The examining attorney submitted
web pages from applicant’s website as well as from
www.style-boutique.com and the catconnection.com, all
featuring applicant’s kits.
Applicant, on the other hand, maintains that its kits
are “goods in trade” because they have a value recognized
by consumers. Applicant particularly contends:
Applicant uses WOVEN MOMENTS as a
trademark; that is, Applicant places
WOVEN MOMENTS on kits which move in
commerce, with WOVEN MOMENTS used to
identify and distinguish the kits from
those manufactured and sold by others,
and to indicate the source of the kits.
Consumers recognize and treat
Applicant’s kits as goods. Thus
Applicant’s activity falls within the
letter and the spirit of the Lanham
Act, which compels registration.
Moreover, since the kits move in
commerce and have a substantial utility
to others, the “goods in trade” refusal
is inapplicable under present law, and
should be reversed.

(Brief, p. 8). Applicant further contends that its kits
are a unique product, that a consumer in possession of the
kits possesses a product that entitles him or her to
Ser No. 76653876
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receive a tapestry product at no extra charge, that its
kits are bought, sold, exchanged and gifted by consumers as
part of a trade in kits, and that the uniqueness of its
kits is not a valid ground for refusing registration.
Applicant has submitted copies of web pages from the
websites eBay.com and amazon.com featuring its WOVEN MOMENT
kits.
Section 1 of the Trademark Act, 15 U.S.C. § 1051,
permits registration of a trademark that has been used in
commerce. The Act defines a “trademark” as a mark which is
used by a person to “identify and distinguish his or her
goods, including a unique product, from those manufactured
or sold by others and to indicate the source of the goods,
even if the source is unknown.” Trademark Act Section 45,
15 U.S.C. § 1127. The same section indicates that a mark
shall be deemed to be in use in commerce on goods when “it
is placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels
affixed thereto, … and the goods are sold or transported in
commerce.” Thus, a necessary prerequisite to the
establishment of rights in, and the registration of, a term
as a trademark is that the subject matter to which the term
is applied must be goods. Gay Toys, Inc. v. McDonald’s
Corp., 585 F.2d 1067, 199 USPQ 722 (CCPA 1978). However,
Ser No. 76653876
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incidental items that an applicant uses in conducting its
business (such as letterhead, invoices and business forms),
as opposed to items sold or transported in commerce for use
by others, are not “goods in trade.” See e.g., In re
Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (CCPA
1974)(reports not goods in trade, where applicant is not
engaged in the sale of reports, but solely in furnishing
financial reporting services, and reports are merely
conduit through which services are rendered); In re
Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972)(reports
and printouts not goods in trade, where they are merely the
means by which the results of a beauty analysis service is
transmitted and have no viable existence separate and apart
from the service); and Ex Parte Bank of America National
Trust and Savings Association, 118 USPQ 165 (Comm’r Pats.
1958)(mark not registrable for passbooks, checks and other
printed forms, where forms are used only as necessary tools
in the performance of banking services, and the applicant
is not engaged in printing or selling forms as commodities
in trade).
In addition, simply affixing a mark to an item that is
transported in commerce does not in and of itself establish
that the mark is used on “goods.” That is, items sold or
transported in commerce are not goods in trade unless they
Ser No. 76653876
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have utility to others as the type of product named in the
application. See. e.g., Gay Toys v. McDonald’s Corp.,
supra. (plaster mockup of toy truck not goods in trade,
where there is no evidence the mockup is actually used as a
toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768
(TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (mark
not registrable for games, where purported games are
advertising flyers used to promote applicant’s services and
have no real utilitarian function).
In the present case, while applicant’s kits consisting
primarily of a box, an order form, a mailer, and an
authorization key code (“kits”) are items that are sold in
commerce, we nonetheless find that they are not goods in
trade. There is no evidence that applicant is a
manufacturer of boxes, order forms, mailers and/or
authorization key codes (otherwise referred to by applicant
as “redemption keys”)2 or that applicant is engaged in
selling its kits for purposes other than providing a means
by which purchasers of applicant’s custom imprinting
services and/or custom imprinted blanket throws and
tapestries can provide proof of purchase of such blanket
throws and tapestries to applicant and submit their desired

2 Brief at p. 7.

Ser No. 76653876
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image to applicant for imprinting. In addition, we are not
persuaded by applicant’s argument that its kits have
additional utility such that they constitute goods in trade
because they are sold by third parties, may be given as
gifts or may be resold. Applicant’s contention that
consumers are purchasing applicant’s kits to use the
individual components, i.e., a box, order form, mailer and
authorization key, as a general purpose kit to obtain
custom imprinting services and/or custom imprinted blanket
throws and tapestries from applicant, simply underscores
that the kits are not goods in trade but rather merely a
marketing device to sell applicant’s actual goods and/or
services. For example, the advertising copy for one eBay
listing of applicant’s kits states:
You are buying a Woven Moments Photo to
Tapestry Baby Throw Kit … that
transforms your favorite photo into a
woven heirloom. Perfect for 1st
Birthday’s, Mother’s Day, Father’s Day,
Graduations, Reunions, Weddings-
Remember loved one in a special and
unique way.

This is as easy as 1) Purchase the Kit
and give the kit itself as a gift or 2)
Select the perfect photo and 3) Submit
your selected image as a photo, digital
CD or upload to Manual Woodworkers &
Weavers website.

Your Woven Heirloom will arrive ready
to display in approximately 4-6 weeks,
made in the USA of 100% cotton to
Ser No. 76653876
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display as a wall hanging, on a sofa,
or over the top of the bed.

The shipping fee to you is included
with the price of the kit from the
Manual Woodworkers & Weavers factory
unless shipping outside the Continental
United States.

(Req. for Recon., Exh. C). In short, nothing convinces us
that applicant trades in kits consisting primarily of a
box, an order form, a mailer and an authorization key code
or, as applicant contends, that consumers recognize these
kits as goods in trade, as opposed to the means to acquire
applicant’s custom imprinting services.
In this regard, the record reveals that applicant is
seeking to register a marketing technique or method for its
custom imprinting services and/or its custom imprinted
tapestries and blanket throws. By this unique marketing
method or process, a consumer can purchase a tangible
stand-in for applicant’s custom imprinting services and/or
custom imprinted tapestries and blanket throws that can be
merchandised and sold, thus giving retailers a competitive
advantage, or gifted and/or resold. However, a technique,
method or process is only a way of doing something, and by
itself is not an activity for the benefit of others. A
term that merely designates a process, or is used only as
the name of a process, is not registrable as a service mark
Ser No. 76653876
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[or trademark]. See In re Universal Oil Products Co., 167
USPQ 245 (TTAB 1970), aff’d, 177 USPQ 456 (CCPA
1973)(alleged marks used only in the context of a process
and not in association with provision of the services); In
re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ
166 (CCPA 1975)(alleged mark identifies a water treatment
process but is not used as a mark); In re Hughes Aircraft
Co., 222 USPQ 263 (TTAB 1984)(proposed used only in
connection with a photochemical method, and there was no
association between the applicant’s offer of services and
the proposed mark); and In re J.F. Pritchard & Co., 201
USPQ 951 (TTAB 1979)(proposed mark used only to identify
liquefaction process, and not used in association with
design and construction services).
We thus conclude that applicant’s kits consisting
primarily of a box, an order form, a mailer, and an
authorization key code are not goods in trade.3

3 In the event applicant’s goods were not found to be goods in
trade, applicant requested the Board to “clarify the ‘goods in
trade’ jurisprudence so that the ‘utility’ requirement is
consistent with statutory law; that is, that the “determination
of traded items as ‘goods in trade’ should depend on how
consumers view the traded items. If an applicant moves items as
part of a bona find trade, and consumers treat such items as
goods, then the items should be found to be ‘goods in trade.’”
(Brief p. 14). For the reasons discussed above, we find no such
clarification necessary. Nonetheless, it is clear that applicant
seeks protection for its WOVEN MOMENTS mark. It is also apparent
from this record that applicant is engaging in custom imprinting
services and trades in custom imprinted blanket throws and
Ser No. 76653876
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Decision: The refusal to register under Sections 1, 2
and 45 of the Trademark Act is affirmed.

tapestries. We particularly observe that applicant’s kits, sold
under the WOVEN MOMENTS mark, would suffice as specimens for
applicant’s custom imprinting services, as they show the mark as
it is actually used in the sale and advertising of applicant’s
services and identify the source of those services. Similarly,
the display showing applicant’s kits and a sample throw (Exhibits
to the Office Action issued October 16, 2006) suffice as a
display associated with the sale of applicant’s custom imprinted
blanket throws and tapestries, as the display serves as point of
sale material.