Datapipe, Inc.

Trademark Trial and Appeal Board

Sep 20, 2013

No. 85173828 (T.T.A.B. Sep. 20, 2013)

Mailed: 9/20/2013

In re Datapipe, Inc.
Serial No. 85173828
Filed: 11/10/2010

GLENN S BACAL
BACAL LAW GROUP PC
6991 E. CAMELBACK RD., SUITE D102
SCOTTSDALE, AZ 85251-2465

T.J. Quinn, Administrative Trademark Judge:

The Board, in an order dated August 2, 2013, postponed
the oral hearing scheduled for August 8, 2013 in view of
applicant’s communication filed on July 31, 2013.
Applicant’s communication is a request for the Board to
consider new evidence not filed prior to the appeal or, in
the alternative, to remand the application to the examining
attorney for further examination and consideration of such
evidence. Applicant makes the following statements in
support of its request (emphasis in original):
There is substantial new evidence
that the Trademark Office has
consistently and recently (during the
pendency of this appeal) taken the
position that MY CLOUD marks (and
variations thereof) are not merely
descriptive, in contrast to the position
taken on Applicant’s YOUR CLOUD mark.
This apparently has been happening
United States Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Ex parte Appeal No. 85173828

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without disclosure to Applicant until
this week. The Trademark Office approach
both as to MY CLOUD and YOUR CLOUD marks
is based upon a provision in a
nonpublic, internal examination guide
that apparently directs examining
attorneys to treat the word MY
differently than the word YOUR on the
issue of mere descriptiveness. In fact,
numerous recent MY CLOUD applications,
apparently using the same internal
guide, have been examined or otherwise
progressed (some of which have
registered) during the pendency of this
appeal, and none have [sic] been found
to be merely descriptive.

Applicant learned only two days ago
from the new examining attorney in this
case that the disparate treatment
between MY CLOUD and YOUR CLOUD was
apparently based upon a distinction
between the words MY and YOUR made in an
internal, nonpublic examination guide.
That guide was not referenced in the
office actions of the prior examining
attorney, but has obviously tied the
hands of the new examining attorney who
candidly disclosed how the examination
guide’s provisions on MY and YOUR
produced the refusal. Thus, Applicant
just recently learned that it has been
fighting against a phantom provision
that it wasn’t previously aware of.

If Applicant had been aware that
such a provision in a nonpublic,
internal examination guide of the
Trademark Office would control the
destiny of any YOUR CLOUD application,
as opposed to any MY CLOUD application,
Applicant’s strategy might have been
different here. Such an arbitrary and
undisclosed provision could not have
been reasonably anticipated, and it
makes the application process seem
irrational.

The inequity and arbitrariness of
this result is readily apparent. The
attempted distinction between MY and
Ex parte Appeal No. 85173828

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YOUR by the Trademark Office in the
context of mere descriptiveness is the
perfect example of an administrative
distinction without a difference, for
which there is no good argument.
Applicant understands the need for
internal guides. However, reliance upon
a provision in a nonpublic, internal
guide, which directly contradicts what
was stated in a publicly available Board
decision, creates the perfect Catch-22
here. Such an arbitrary examination
procedure based on a hidden directive
has created a manifestly unfair,
inconsistent, and unfortunate result,
the very kind of result that has led the
Federal Circuit to criticize the
Trademark Office. The Board should
untie the hands of the examining
attorney and unleash common sense –
there is no reason to treat MY CLOUD
marks differently from Applicant’s YOUR
CLOUD mark.

There is good cause supporting the
Board’s consideration of this new and
directly probative evidence.
Substantial evidence regarding the
Trademark Office’s conclusion that MY
CLOUD is not merely descriptive simply
did not exist prior to the filing of
this appeal and therefore was
unavailable to include in the record.
Applicant also was unaware of the sub
silentio role of the publicly
unavailable examination guide in the
refusal to register Applicant’s Mark on
the basis of mere descriptiveness.
Because there is no rational or
legitimate basis for distinguishing
between MY and YOUR on the issue of mere
descriptiveness, or for contradicting
what the TTAB said in an earlier public
decision, this new evidence merits
consideration by the Board.
(Request, pp. 1-2).

As indicated above, applicant’s principal points are
(1) that the Office’s asserted different treatment of MY and
Ex parte Appeal No. 85173828

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YOUR marks in the context of mere descriptiveness is
unwarranted, and (2) has resulted in refusal of applicant’s
application only because of an “internal, nonpublic
examination guide.”
On the first point, and according to applicant, the
examining attorney indicated that “this examination guide is
not disclosed to the public,” and that the examining
attorney explained “that the examination guide equates the
word YOUR (but not the word MY) with the words ‘one,’ ‘a,’
and ‘the,’ which are often disregarded for purposes of
determining whether a mark is merely descriptive.”
(Request, pp. 6-7). On the second point, applicant further
indicates that the examining attorney declined to stipulate
to consideration of the new evidence; and, according to
applicant, the examining attorney “suggested that making
this new evidence part of the record would not have made a
difference to the outcome based on his obligation to follow
the guidance set forth in the nonpublic, internal
examination guide.” (Request, p. 3).
The request is accompanied by the declaration of David
Andersen, one of applicant’s attorneys. Attached to the
declaration are copies of two third-party registrations and
thirteen third-party applications, all for various MY CLOUD
marks, none of which, according to applicant, was refused
registration on the basis of mere descriptiveness.
Ex parte Appeal No. 85173828

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With respect to any request that the Board consider
additional evidence or remand a case for further examination
in light of asserted new evidence, Trademark Rule 2.142(d)
provides that the record in the application should be
complete prior to the filing of an appeal, and that the
Board will ordinarily not consider additional evidence filed
with the Board after the appeal is filed. The Board does
not, during an appeal, consider evidence not made of record
prior to appeal unless the non-offering party does not
object and treats it as being of record. See In re Iolo
Technologies LLC, 95 USPQ2d 1498, 1500 n.3 (TTAB 2010); and
In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009). In this
case, the examining attorney, as the non-offering party,
clearly has objected.
A request that the Board suspend an appeal and remand
with instruction that additional evidence be considered,
must include a showing of good cause therefor. The length
of the delay in making the request after the reason for the
remand becomes known, and/or the point in the appeal process
at which the request is made, will be considered in the
determination of whether good cause exists. Generally, the
later in the appeal proceeding that the request is filed,
the stronger the reason that must be given for good cause to
be found. As indicated at TBMP § 1207.02 (2013): “There is
a point at which prosecution or examination must end.” See
In re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011); and
Ex parte Appeal No. 85173828

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In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB
2009). In the case at hand, the request for remand has come
very late, after briefing and with the oral argument
imminent.
The two third-party registrations applicant now seeks
to introduce issued in early-mid 2012, that is, over one-
year prior to its request. Insofar as the thirteen third-
party applications are concerned, in all but three of them,
the pertinent information relied upon by applicant also was
available several months prior to applicant’s recent
submission. In the other three applications, the delays
ranged from one month to five months.
Given the delay in submitting this evidence, coupled
with the manifestly late juncture of this appeal when the
request was filed, the Board will neither allow the
introduction of this additional evidence nor remand for
further examination. Accordingly, the request to consider
the additional evidence or to remand is denied.
To the extent applicant’s argument that the Board
“should untie the hands of the examining attorney”
constitutes a third alternative request for relief, i.e., a
request for remand with instruction that the examining
attorney reexamine the application without regard to the
purported examination guide, it is not the Board’s practice
or role to direct the examination of applications.
Moreover, the essence of applicant’s argument on this issue
Ex parte Appeal No. 85173828

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is that applicant’s delay in submission of the evidence was
due to applicant’s being unaware of the “internal” guide;
and that applicant may have taken a different approach with
respect to the refusal if it had been aware of the guide.
To the extent that applicant bases its delay on the
“internal” examination guide, the blame is misplaced. There
was nothing to prohibit applicant from making a timely
“state of the register” argument earlier in the process.
See TMEP § 1209.03(a) (2013).
Further, the following information about Trademark
Examination Guides is set forth on the USPTO’s website at
http://www.uspto.gov/trademarks/resources/index.jsp:
Trademark Examination Guides
Between updates to the Trademark Manual
of Examining Procedure (TMEP), the
Office occasionally provides guidance
about a particular issue through the
issuance of an Examination Guide.
Typically, as to that issue, the
Examination Guide supersedes the current
edition of the TMEP to the extent any
inconsistency exists and the guidance
contained therein is usually
incorporated into the next edition of
the TMEP.
The Board definitively can state, as confirmed by TMEO,
that there is no Examination Guide, either public or
internal, which addresses examination of MY and YOUR marks.1

1 The Board cannot affirmatively state that there were no internal
discussions between the examining attorney and others in the Office’s
Trademark operations about the examination of this application. The
Board has no information on this issue and has not inquired into it. It
is noted, however, that it would not be at all unusual for an examining
attorney to discuss an application with peers or supervisors.
Ex parte Appeal No. 85173828

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It does not appear to be the TMEO’s practice to keep
Examination Guides secret for internal use only. Instead,
it appears that the practice is to post Examination Guides
on the Office’s web site. See the following TMEO web page:
http://www.uspto.gov/trademarks/resources/Trademark_Exam_
Guides.jsp. In addition, in the recent past, the Office has
solicited public comment on examination guides before they
are issued to Examining Attorneys and posted for on-line
reference. Id.
Accordingly, the Board sees no basis upon which to
remand the application “to the examining attorney for a full
and careful consideration of the error of having a[n]
essentially secret rule produce an unanticipated rejection
of Applicant’s YOUR CLOUD application.” In view thereof,
applicant’s request filed July 31, 2013 is denied.
A final observation is warranted. Some of applicant’s
arguments are more substantive than procedural in nature.
In this connection, applicant references an unpublished
Board decision, not issued as a citable precedent, wherein
the Board stated there is “no reason why, in general, a
distinction should be made between the words MY and YOUR in
terms of whether a mark is descriptive.” Applicant argues
that this decision would lead one to believe that MY and
YOUR marks would be treated the same, and that the Board
“should apply that approach consistently in this case rather
than to let a wholly inconsistent rule promulgated by a
provision in a nonpublic, undisclosed, unanticipated,
Ex parte Appeal No. 85173828

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internal examination guide dictate a different and unfair
result.” (Brief, p. 7). Suffice it to say that the Board
will, of course, reach a result as dictated by the merits of
the appeal. There is no evidence of the existence of an
Examination Guide that addresses the substantive issue on
appeal. Further, and in any event, the Board is not bound
by examination guides in its interpretation of substantive
questions of registrability.
Applicant will be contacted in due course for the
scheduling of an oral hearing (in the event that applicant
still wishes to proceed with an oral hearing).