Catto Creations, LLC

Trademark Trial and Appeal Board

May 28, 2013

No. 85092883 (T.T.A.B. May. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Catto Creations, LLC
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Serial No. 85092883
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Aaron T. Olejniczak for applicant Catto Creations, LLC.

Michael Rademacher, Trademark Examining Attorney, Law Office 112 (Angela
Wilson, Managing Attorney).
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Before Seeherman, Cataldo and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Catto Creations, LLC filed an application under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), to register on the Principal Register the special
form mark

Serial No. 85092883
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for “precious and semi-precious crystal stones and beads for use in jewelry” in
International Class 14.1 After publication of the mark for opposition, applicant filed
a statement of use with the following specimen:

Upon review thereof, the examining attorney refused registration under Sections 1
and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that
applicant's specimen did not show use of applicant's mark for the goods identified in
the application; that is, the specimen shows use of the mark “on jewelry, not beads
for making jewelry.” September 19, 2011 Office action.
In response, applicant submitted the following substitute specimen with
supporting affidavit:

1 The application claims the depicted colors as a feature of the mark, and contains a
detailed description of the mark. The application also states that “the English translation
of BELLA in the mark is BEAUTIFUL.”
Serial No. 85092883
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The examining attorney finally refused registration under Sections 1 and 45
of the Trademark Act, contending that “the specimen appears to be a finished
ornament or jewelry. . . [because] it includes a ring to which a string of beads with
alternating gold disks is attached,” rather than showing “use of the mark with the
crystals or beads themselves apart from a finished product.” April 4, 2012 Office
action. Applicant advised in its request for reconsideration that the specimens
depicted the mark on a bracelet and an earring, and argued that use of the mark in
this manner constitutes proper trademark use of the mark on the identified goods.
The examining attorney denied the request for reconsideration, and this appeal
ensued.
As a preliminary matter, we address applicant’s alternative request, made for
the first time in its reply brief, that the Board remand the application so that the
identification of goods may be amended to “jewelry, particularly earing [sic] and
bracelets made of precious and semi-precious stones.” Reply Br. p. 2. As the Board
has said many times, a request for remand should be made in a separate paper,
rather than being included as a sentence within a brief. In re HerbalScience Group
LLC, 96 USPQ2d 1321 (TTAB 2010). In any event, applicant has made no showing
of “good cause”, which is required in all requests for remand. See, e.g., In re Luxuria
s.r.o., 100 USPQ2d 1146, 1147.2 Accordingly, applicant’s request for remand is
denied.

2 We note that in determining good cause, the Board looks at the point in the appeal when
the request is filed. See TBMP § 1205.01. Generally, it is more difficult to show good cause
when the request is filed at the end of the appeal process, with the reply brief. Id.
Serial No. 85092883
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We turn now to the sole issue on appeal, namely, whether the specimens
show use of the applied-for mark as a trademark for “precious and semi-precious
crystal stones and beads for use in jewelry.”
Under the Trademark Act, a statement of use must include “such number of
specimens or facsimiles of the mark as used in commerce as may be required by the
Director.” 15 U.S.C. § 1051(d)(1). See also 37 C.F.R. § 2.56(a). Specimens serve to
evidence an applicant’s “use in commerce.” “Use in commerce” is defined, in
pertinent part, as follows:
…For purposes of this chapter, a mark shall be deemed to
be in use in commerce- (1) on goods when – (A) 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, or if the nature of the goods makes such
placement impracticable, then on documents associated
with the goods or their sale…
Trademark Act Section 45, 15. U.S.C. § 1127.
As the predecessor to our primary reviewing Court noted:
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to verify the
statements made in the application regarding trademark
use. In this regard, the manner in which an applicant has
employed the asserted mark, as evidenced by the
specimens of record, must be carefully considered in
determining whether the asserted mark has been used as
a trademark with respect to the goods named in the
application.
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976).
It is applicant’s position that the specimens, which, as applicant
acknowledges, consist of photographs of a bracelet and an earring, are acceptable to
show trademark use on the identified “precious and semi-precious crystal stones
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and beads for use in jewelry,” because use of the mark with jewelry made of such
stones and beads constitutes use of the mark with the component stones and beads
themselves. Applicant appears to be conflating “stones and beads for use in
jewelry” with the jewelry itself. However, the only reasonable interpretation of
“stones and beads for use in jewelry” is that the stones and beads are intended to be
used in making jewelry; they are not the actual jewelry. See In re Gulf Coast
Nutritionals, Inc., ___ USPQ2d ___, Ser. No. 77980412 (January 29, 2013)
(determination as to what is identified in the application is made based on the
common understanding of the language used to describe the goods). While the
identified “precious and semi-precious crystal stones and beads for use in jewelry”
are indeed part of the completed bracelet and earring depicted in the specimens, the
specimens only show use of the mark on the finished bracelet and earring. The
specimens do not show use of the mark on stones and beads that are to be used in
making items of jewelry.
In view of the foregoing, we find that the specimens do not show use of the
applied-for mark on “precious and semi-precious crystal stones and beads for use in
jewelry.” Accordingly, registration was properly refused under Sections 1 and 45 of
the Trademark Act, 15 U.S.C. §§ 1051 and 1027, on the ground that the specimens
do not show use of the mark in connection with the identified goods.
Decision: The refusal to register is affirmed.