David M. Allen

Trademark Trial and Appeal Board

Jun 7, 2012

No. 85034692 (T.T.A.B. Jun. 7, 2012)

Mailed:
June 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re David M. Allen
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Serial No. 85034692
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Michael J. Folise of Black Lowe Graham PLLC, for David
M. Allen.

Jeffrey J. Look, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
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Before Seeherman, Quinn, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

David M. Allen, applicant herein, seeks
registration on the Principal Register of the mark
“TRITIUM,” in standard character format, for “battery
operated flashlights and headlamps,” in International
Class 11.1 The trademark examining attorney refused

1 Serial No. 85034692, filed on May 10, 2010, under
Trademark Act Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b), alleging a bona fide intent to use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85034692
2
registration on the ground that applicant’s mark is
merely descriptive of the identified goods under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
The examining attorney also refused registration on
the alternative ground under Trademark Act Section
2(e)(1) that the mark is deceptively misdescriptive of
the goods for which applicant seeks registration. The
examining attorney further made a third refusal based
on applicant’s failure to properly respond to a
request for information under Rule 2.61(b); 37 C.F.R.
§ 2.61(b).
When the three grounds for refusal were made
final, applicant filed a timely appeal. Both
applicant and the examining attorney filed briefs and
applicant filed a reply brief.
We consider first the final refusal for
applicant’s failure to furnish information as required
under Rule 2.61(b); 37 C.F.R. § 2.61(b).
Specifically, the examining attorney issued an
information requirement in the Office action dated
August 21, 2010, as follows:
To permit proper examination of the
application, applicant must submit
additional product information about the
goods. See C.F.R. § 2.61(b) . . . The
requested product information should include
Ser. No. 85034692
3
fact sheets, instruction manuals, and/or
advertisements. If these materials are
unavailable, applicant should submit similar
documentation for goods of the same type,
explaining how its own product will differ.
If the goods feature new technology and no
competing goods are available, applicant
must provide a detailed description of the
goods.

As applicant failed to provide the requested
information, the request was made final.
Trademark Rule 2.61(b), 37 CFR 2.61(b), provides
that the “examiner may require the applicant to
furnish such information and exhibits as may be
reasonably necessary to the proper examination of the
application.” More specifically, the “examining
attorney may request literature, exhibits, and general
information concerning circumstances surrounding the
mark as well as, if applicable, its use or intended
use.” TMEP §814 (8th ed. 2011).
In response to a request for information such as
the Examining Attorney made in this case, an applicant
has several options. It may comply with the request
by submitting the required advertising or promotional
material. Or it may explain that it has no such
material, but may submit material of its competitors
for similar goods or provide information regarding the
Ser. No. 85034692
4
goods on which it uses or intends to use the mark. Or
it may even dispute the legitimacy of the request, for
example, if the goods identified in the application
are such ordinary consumer items that a request for
information concerning them would be considered
unnecessary and burdensome. In re SPX Corp., 63
USPQ2d 1592, 1597(TTAB 2002).
Applicant does not dispute the legitimacy of the
request for information. Rather, applicant states on
appeal, as its reason for not providing the requested
information, that “[a]s the products have not yet been
made, it is impossible to comply with the request for
product literature, specification sheets, etc.” (reply
brief at 2). The availability of applicant’s own
literature is not at issue since the request by the
examining attorney specifically allowed for submission
of documents for comparable products already on the
market or, if no competing goods were available,
applicant was required to provide a detailed
description of his goods. With a “bona fide intent to
use” his goods, applicant must have a plan as to the
“facts,” “instructions” and/or “advertising” of the
goods for which he has sworn that he intends to use
the applied-for mark. Considering the Office actions
Ser. No. 85034692
5
regarding mere descriptiveness and deceptive
misdescriptiveness of the term “TRITIUM,” we find the
request for information to be a reasonable one, and in
view of applicant’s failure to provide such
information, we affirm the refusal to register on this
basis. See In re DTI Partnership LLP, 67 USPQ2d 1699
(TTAB 2003). In that case, as in this one, the Board
upheld a highly similar request for information in an
intent-to-use application.
In affirming the refusal in DTI Partnership, the
Board found it unnecessary to consider the substantive
Section 2(e)(1) refusal, stating as follows:
In view of our decision with respect to the
Trademark Rule 2.61(b) requirement, we deem
the substantive Section 2(e)(1) mere
descriptiveness refusal to be moot.
Applicant’s failure to comply with the
Trademark Rule 2.61(b) requirement is a
sufficient basis, by itself, for affirming
the refusal to register applicant’s mark.
Moreover, our ability to fully and
accurately assess the substantive merits of
the mere descriptiveness issue has been
hindered by applicant’s failure to submit
the information and materials which were
properly requested by the Trademark
Examining Attorney under Trademark Rule
2.61(b). . . In these circumstances, we
decline to reach the merits of that refusal.
Id., at 1702.

Likewise, we find that here our ability to
consider the substantive alternative Section 2(e)(1)
Ser. No. 85034692
6
refusals for mere descriptivness and for deceptive
misdescriptiveness has been significantly hampered by
applicant’s failure to provide the information
requested by the Examining Attorney. Accordingly,
based on applicant’s own actions, we decline to
consider the refusals made pursuant to Section
2(e)(1). Rather, we affirm the refusal to register
solely on applicant’s failure to furnish information
as required under Rule 2.61(b).
Decision: The refusal to register is affirmed
based on applicant’s failure to comply with the
Examining Attorney’s requirement for information under
Trademark Rule 2.61(b).