X Technology, Inc.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75229690 (T.T.A.B. Sep. 25, 2001)

9/25/01
Paper No. 19
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re X Technology, Inc.
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Serial No. 75/229,690
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John R. Hlavka of Watts Hoffmann Fisher & Heinke Co., L.P.A.
for X Technology, Inc.

LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
_______

Before Simms, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
X Technology, Inc. seeks to register this mark:

(with the wording, X TECHNOLOGY INCORPORATED, disclaimed)
for services having an amended recitation as follows:
“advertising of personal computers, personal computer
monitors, mother boards, modems, random access memory for
personal computers, computer supplies, multimedia components
for personal computers and parts for personal computers, on
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/229,690
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a website, in mail order related magazines and in magazines
directed to personal computers,” in International Class 35.1
Following publication of the mark for opposition and
issuance of the notice of allowance, on August 13, 1999,
applicant submitted a Statement of Use accompanied by
specimens consisting of labels used on goods.
The new Trademark Examining Attorney assigned to review
the Statement of Use issued a final requirement for the
submission of a substitute specimen showing use of the mark
in connection with the services identified in the
application. The Trademark Examining Attorney contends that
while the specimens of record show use of the mark in
connection with goods, and perhaps even in connection with
the sale of computers and computer peripherals, there are no
specimens showing use of the mark in conjunction with
advertising services for others.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but applicant did not
request an oral hearing.

1 Application Serial No. Serial No. 75/229,690 was filed on
January 22, 1997 by Quark Technology, Inc., based upon applicant’s
allegation of bona fide intention to use the mark in commerce in
connection with the identified services. The official name change
to “X Technology, Inc.” was recorded in the Assignment Branch of
the United States Patent and Trademark Office at Reel 1777, Frame
0269.
Serial No. 75/229,690
- 3 -
When this intent-to-use application was originally
filed, applicant recited its goods/services as “computer
equipment, computer peripherals, multimedia kits, retail,
wholesale and mail order sales of computer hardware, and
computer related information services, namely, advertising
and promoting of computer related equipment, computer
peripherals and multimedia kits on an internet website,” in
International Class 7 (sic). In the initial Office action,
the Trademark Examining Attorney explained a number of
reasons why the above formulation was unacceptable. In two
successive amendments, applicant amended the recitation of
services, appearing to limit the recital of services to the
“advertising of personal computers … ” language listed
above.
Following publication, applicant submitted its
Statement of Use with labels as its specimen of use. They
are a fairly exact representation of the mark as shown in
the drawing. However, because they appeared to be labels
used on goods, the Trademark Examining Attorney refused them
as unacceptable for the recited services. Applicant then
submitted copies of its Web pages as well as a copy of a
two-page advertisement that appeared in the January 1997
issue of Computer Shopper. The Trademark Examining Attorney
rejected the Web pages and these advertisements as well,
Serial No. 75/229,690
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noting that they did not show the applied-for mark being
used in connection with advertising services for others.
The Examining Attorney contends that while the Web
pages and advertisements may demonstrate that applicant is
offering retail or mail-order services under the applied-for
mark, that is not the same as, or encompassed by, the
services as specified in the amended recitation of services,
and that applicant is limited in this application to a
recitation of services encompassed by the amended recitation
of record.
On the other hand, applicant contends that it now finds
itself in a “Catch 22” situation. Applicant’s intention
throughout was to obtain a registration for its mark used in
its own wholesale and retail sales of computers and computer
peripherals through mail order and on-line contacts.
Applicant claims that in trying to follow the suggestions of
the original Trademark Examining Attorney, it now discovers
that its recital is limited to advertising services for
others, a service it does not provide. In fact, applicant
contends that factually, the Trademark Examining Attorney’s
conclusion is an arbitrary one, as nowhere does its recital
mention “advertising services” directed to third parties.
Applicant contends, essentially, that it is manifestly
unfair of the Office to require a more specific recitation
Serial No. 75/229,690
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of services prior to applicant’s submission of its specimens
and Statement of Use, and then to reject the specimens in
view of the limited recitation of services.
We find that logically, the amended recital, to be
given any meaning at all, must be read to refer to
advertising services provided for the benefit of others. As
argued by the Trademark Examining Attorney, advertising
one’s own goods or services is simply not a recognized
service under the Lanham Act. See In re Reichhold
Chemicals, Inc., 167 USPQ 376 (TTAB 1970).
As originally filed, the broad listing of goods and/or
services was quite ambiguous. In the initial Office action,
the Trademark Examining Attorney provides various
suggestions on changing the identification of goods and/or
recital of services. Being an Intent-to-Use application,
the Trademark Examining Attorney had no specimens to guide
her in offering suggestions. However, she made suggestions
for amending the identification of goods and/or recital of
services to acceptable language for goods (computers and
peripherals) classified in International Class 9; for
retail, wholesale and mail order catalogue services
featuring computers and peripherals, etc., classified in
International Class 35; or advertising services for others,
also classified in International Class 35. With hindsight,
Serial No. 75/229,690
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it appears as if applicant, with its amendment of March
1998, should have adopted the identification of goods in
International Class 9 (if the applied-for mark is actually
used on labels affixed to the hardware or containers), or a
recital of services naming mail order catalogue services, in
International Class 35.
Regarding applicant’s argument, our rules and precedent
clearly require us to consider the recitation of services as
amended. See Trademark Rule 2.71(a) and In re Swen Sonic
Corp., 21 USPQ2d 1794 (TTAB 1991). In this regard, we point
out that at the time the recitation of services was amended,
the application contained no specimens of use and only
applicant was in a position to know the nature of the goods
or services upon which it intended to use the mark. It was
applicant’s responsibility to set forth an amendment to its
identification of goods or its recitation of services that
accurately reflected its intended use of the mark.
Hence, we conclude that nowhere do the labels, the Web
site or the magazine advertisements show use of the applied-
for mark as a service mark for the recitation of services as
amended, e.g., advertising of personal computers, etc.
Decision: The refusal is affirmed on the ground
that the Trademark Examining Attorney properly required
substitute specimens for the identified services.