Anderson

Trademark Trial and Appeal Board

Aug 4, 2009

No. 76497832 (T.T.A.B. Aug. 4, 2009)

Mailed: August 4, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Anderson
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Serial No. 76497832
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Kent G. Anderson, pro se.

Y. I. Lee, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Kent G. Anderson has filed an application to register
the mark TOMORROW (standard character form) for goods and
services in International Classes 1, 3, 35, 41 and 43.1
This case is on appeal from the trademark examining
attorney’s final refusal to register the mark on the
grounds that (1) the specimens do not show the applied-for

1 Application Serial No. 76497832 was filed on March 17, 2003,
based upon applicant’s assertion of his bona fide intent to use
the mark in commerce. A statement of use with specimens was
filed on April 7, 2008, alleging first use anywhere and first use
in commerce as of May 17, 2003.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 76497832
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mark in use in commerce for the goods in Classes 1 and 3,
and (2) applicant failed to comply with a requirement for
additional specimens to support the wide range of goods in
Classes 1 and 3.2
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
As background for this matter, we note that
applicant’s Class 1 goods are identified as: “photographic
chemicals; unprocessed artificial resins and plastics used
in agriculture, horticulture and forestry and for general
industrial use; manure; fire extinguishing compositions;
food preservative compositions; tanning agents for use in
the manufacture of leather.” Applicant’s Class 3 goods
include over one-hundred items, many of which are cosmetic
and skin preparations, such as “after-shave gel, baby oil,
bath foam, skin concealers, deodorant soap, shower gel,
talcum powder, hair lotions; and non-medicated dental
rinse.” Also included in the Class 3 goods are “boot
cream,” “dish detergents,” and “non-medicated grooming
preparations for cats, dogs, pets and livestock, namely
grooming sprays, grooming wipes, deodorants, coat

2 The two refusals pertain only to Classes 1 and 3. Other
refusals and/or requirements in the case have been resolved or
withdrawn.
Serial No. 76497832
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conditioners, anti-matting sprays, colognes, and pet
shampoo.”
With his statement of use filed April 7, 2008,
applicant submitted the specimens reproduced below in
support of the goods in Classes 1 and 3, respectively:

Serial No. 76497832
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In an office action mailed July 25, 2008, the
examining attorney advised applicant that additional
specimens were required. Specifically, she stated that:
Because applicant has listed a wide range of
unrelated goods … in its [sic] identification,
the applicant must submit additional specimens to
support … the classes of goods … recited in the
Statement of Use. The additional specimens for
each class of goods … are necessary for proper
examination of the mark. The examining attorney
may request additional specimens under 37 C.F.R.
§2.61(b), TMEP §904.01(a).
Based on the limited and unacceptable specimens
that applicant has submitted with its [sic]
Statement of Use, the examining attorney is
uncertain as to whether applicant is using the
mark in connection with all the goods and
services that are recited in the Statement of
Use.

In addition, the examining attorney rejected the
specimens submitted with the statement of use, stating as
follows:
… the specimens consist of … duplicated photos of
bottles. Although … the photos display the mark,
there is absolutely no association between the
proposed mark and any of the recited goods … .
Applicant has not demonstrated any connection
between the proposed mark and any of the recited
goods … in Classes 1, 3 … . These specimens fail
to demonstrate what the goods … are and how
prospective consumers would perceive the proposed
mark as a source-indicator for applicant’s
recited goods … .

The examining attorney required applicant to submit “a
substitute specimen showing use of the mark for each class
of goods,” and a statement, verified with an affidavit or
Serial No. 76497832
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signed declaration, that the specimens were in use in
commerce prior to expiration of the time allowed applicant
for filing a statement of use. (underlining in original)
In response to the refusal, applicant submitted
specimens consisting of several sheets of paper displaying
circles bearing only the mark TOMORROW and, respectively,
the words “cosmetics” and “chemicals.”
In an office action issued September 16, 2008, the
examining attorney advised applicant that he had failed to
comply with her requirement for additional specimens to
support the goods in Classes 1 and 3. In addition, the
examining attorney rejected the substitute specimens
stating that “they are not acceptable as evidence of actual
trademark use because their appearance suggests that they
are not actual labels used with all the recited goods.”
Thus, [they] fail to show proper use on the goods or on
packaging of the Class 1 and Class 3 goods that are
identified in the Statement of Use.” The examining
attorney then finally refused registration on the grounds
that (1) the specimens do not show use of the applied-for
mark in use in commerce for the goods in Classes 1 and 3,
and (2) applicant failed to comply with the requirement for
additional specimens to support the wide range of goods in
Classes 1 and 3.
Serial No. 76497832
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Applicant, on January 5, 2009, filed a request for
reconsideration along with specimens consisting of several
pictures of two different bottles with labels thereon
bearing only the mark TOMORROW and, respectively, the words
“Photographic Chemicals” and “Mouthwash.”
On February 12, 2009, the examining attorney denied
applicant’s request for reconsideration.
We turn first to the examining attorney’s refusal to
register on the ground that applicant failed to comply with
the requirement for additional specimens to support the
wide range of goods in Classes 1 and 3. The examining
attorney argues in her brief that:
The examining attorney also required applicant to
provide additional specimens because the listed
Class 1 goods and Class 3 goods, as recited in
the Statement of Use, are long and contain
numerous unrelated goods. Under 37 C.F.R.
§ 2.61(b) and TMEP §904.01(a), the examining
attorney may request additional specimens,
especially in cases where the applicant has
listed a wide range of unrelated goods and
services in its identification. In the examining
attorney’s final office action, dated September
16, 2008, she maintained the requirement that
applicant provide additional specimens that would
demonstrate actual use of the mark in connection
with these goods recited in the Statement of Use
for Class 1 and 3. The applicant did not provide
additional specimens for the other goods in Class
1 or Class 3.

The only Class 1 specimens provided during
prosecution were of “photographic chemicals” and
“additive fuel treatment.” Photographic
chemicals and fuel additives are unrelated to
Serial No. 76497832
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artificial resins and plastics used in
agriculture, as well as manure, fire
extinguishing compositions, food preservative
compositions, and tanning agents for use in the
manufacture of leather.
….
Applicant’s identification of goods of Class 3
goods is extremely long and contains a wide
variety of goods that are also unrelated.
Applicant did not provide any other specimens
other than mouthwash and lipstick. These are not
related to adhesive removers, adhesives for
attaching artificial fingernails or eyelashes,
non-medicated pet shampoo, pre-moistened cosmetic
wipes, or tailors’ wax, to name a few. Applicant
did not provide specimens demonstrating use of
the mark with any of the other Class 3 goods
listed in the identification.

Applicant’s brief consists of the following two
statements: “The applicant has attempted to comply with
all requirements set forth [b]y the examining attorney in
[the] February 12, 2009 office action. The applicant
believes that the mark is in condition for Registration.”
Accompanying applicant’s brief are specimens consisting of
several pictures of two different containers with labels
thereon bearing only the mark TOMORROW and, respectively,
the words “Fuel Additive” and “Lipstick.”
TMEP §904.01(a) provides, in pertinent part, that:
“If more than one item of goods, or more than one service,
is specified in an application in one class, it is usually
not necessary to have a specimen for each product or
service. However, if the range of items is wide or
Serial No. 76497832
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contains unrelated articles, the examining attorney may
request additional specimen(s) under 37 C.F.R. §2.61(b).”
37 C.F.R. §2.61 provides that “[t]he examiner may require
applicant to furnish such information and exhibits as may
be reasonably necessary to the proper examination of the
application.”
In this case, there is no question that the involved
application lists a wide range of goods in Class 1 and
Class 3. Thus, the examining attorney’s requirement for
additional specimens for these classes was proper. Also,
there is no question that the examining attorney, in her
July 25, 2008 and September 16, 2008 office actions,
specifically advised applicant that these classes listed a
wide range of unrelated goods and that additional specimens
were required to support these classes.
In response to the July 25, 2008 office action,
applicant submitted specimens consisting of several sheets
of paper displaying circles bearing only the mark TOMORROW
and, respectively, the words “cosmetics” and “chemicals.”
In his request for reconsideration, applicant submitted
specimens consisting of several pictures of two different
bottles with labels thereon bearing only the mark TOMORROW
and, respectively, the words “Photographic Chemicals” and
“Mouthwash.” Finally, with his brief on the case,
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applicant submitted specimens consisting of several
pictures of two different containers with labels thereon
bearing only the mark TOMORROW and, respectively, the words
“Fuel Additive” and “Lipstick.”
Even assuming that the specimens submitted by
applicant are acceptable, they fail to meet the examining
attorney’s requirement for additional specimens for the
goods listed in Classes 1 and 3. We recognize that the
examining attorney, in her office actions, did not specify
the number of additional specimens that applicant was
required to submit. However, in view of the wide
range/disparate nature of the goods listed in the
application in Classes 1 and 3, the submission of specimens
for goods identified as “Chemicals,” “Photographic
Chemicals” and “Fuel Additive” for Class 1; and
“Cosmetics,” “Mouthwash,” and “Lipstick” for Class 3 is not
sufficient to comply with the examining attorney’s
requirement. In other words, this small number of
specimens fails to demonstrate use of the applied-for mark
for the wide range of goods listed in Classes 1 and 3.
In view of the foregoing, we find that applicant
failed to comply with the examining attorney’s requirement
for additional specimens. Under the circumstances, we need
not reach the issue of whether any of the specimens
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submitted by applicant are acceptable, i.e., show the
applied-for mark in use in commerce for the goods in
Classes 1 and 3.
Decision: The refusal to register applicant’s mark in
Classes 1 and 3 on the ground that applicant failed to
comply with the examining attorney’s requirement for
additional specimens is affirmed. The application will go
forward with respect to the other classes.