Experticity, Inc.

Trademark Trial and Appeal Board

Oct 14, 2015

No. 85919907 (T.T.A.B. Oct. 14, 2015)

Mailed: October 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Experticity, Inc.
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Application No. 85919907
Filed: May 1, 2013
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John C. Stringham and Matthew A. Barlow of Workman Nydegger for Applicant.
Brian Pino, Examining Attorney, K. Margaret Le, Managing Attorney, Law Office 114.
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Before Cataldo, Mermelstein, and Adlin, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Experticity, Inc. seeks registration of the mark EXPERT COMMERCE on the Prin-
cipal Register based on its declared bona fide intent to use the mark in commerce. At
issue in this appeal is Applicant’s failure to comply with a final requirement that it
supply certain information which the Examining Attorney deemed “necessary for prop-
er examination of the application” pursuant to Trademark Rule 2.61(b). Final Ofc. Ac-
tion (March 17, 2014). Before turning to the merits of the requirement, we must ad-
dress a preliminary matter.
I. Goods or Services on Appeal
As filed, the application included goods and services in International Classes 9, 16,
41, and 42. Pursuant to the Examining Attorney’s requirements, Applicant ultimately
This Opinion is Not a
Precedent of the TTAB
Application No. 85919907

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added Class 35, deleted Class 42, and clarified the recitation of services in Classes 35
and 41. (Classes 9 and 16 were deemed acceptable as filed.) In the initial Office action,
the Examining Attorney required applicant to submit certain information,1 and that
request (in modified form) was made final and adhered to upon reconsideration. The
requirement was not limited to any particular International Classes or specific goods or
services. Thus, at the time Applicant filed its appeal, the application included Classes
9, 16, 35, and 41, and those goods and services were subject to the Examining Attor-
ney’s information requirement. Nonetheless, according to Applicant’s Notice of Appeal,
only Class 35 is subject to the appeal.2
Pursuant to Trademark Rule 2.142(c), “[a]ll requirements made by the examiner
and not the subject of appeal shall be complied with prior to the filing of an appeal.”
The Examining Attorney’s request for information applied to all classes in the applica-
tion, yet with respect to Classes 9, 16, and 41, the requirement was neither complied
with nor appealed. Accordingly, those three classes are considered abandoned as of six
months from the date of the final Office action.
Only Applicant’s Class 35 services are properly before us on appeal. As amended,
those services are:
Providing a web site featuring services, product and brand

1 Applicant was also required to disclaim “COMMERCE,” amend its identification of goods and
services, and claim ownership of several registrations. These requirements were satisfied, and
are not at issue in this appeal.
2 “The refusal to register has been appealed as to the following class of goods/services: – Class
035.” Not. of Appeal (Sept. 16, 2014). Consistent with its notice of appeal, Applicant paid a fee
sufficient for only one International Class of goods or services. See Trademark Rule 2.141(b)
(“The applicant must pay an appeal fee for each class from which the appeal is taken.”).
Application No. 85919907

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information, training, reviews, discounts, surveys and com-
ments for use by retail sales personnel and targeted groups
of product reviewers for use in promoting, advertising and
selling of such products and services.
II. Request for Information — Trademark Rule 2.61(b)
A. Background
In the first Office action, the Examining Attorney required Applicant to answer sev-
eral questions and submit other information largely concerning the significance of the
terms EXPERT, COMMERCE, and EXPERT COMMERCE with respect to the identi-
fied goods and services and in the relevant trade or industry. First Ofc. Action (Aug. 27,
2013).
In response, Applicant did not directly answer the Examining Attorney’s questions,
but it provided the required disclaimer of COMMERCE, and made the following state-
ment with respect to its goods and services:
Applicant’s goods and services are directed to retailers look-
ing to improve sales and provide a better customer purchas-
ing experience. Applicant is not aware of the wording
“EXPERT COMMERCE” having a meaning in connection
with the identified goods and services. So that the Examin-
ing Attorney can see Applicants [sic] general business, ref-
erence by the Examining Attorney to the provided snapshots
of Applicant’s website may assist in examination of the pre-
sent application. Applicant respectfully requests allowance
of the present application.
Response to Ofc. Action (Feb. 25, 2014). Attached to its response, Applicant provided
what appear to be three web pages promoting Applicant’s services, but providing only
vague information about them. Id. It appears that Applicant’s response partially satis-
fied the requirement for information. As the Examining Attorney explains in his brief,
Applicant’s response to the first Office action provided a statement that “Applicant is
Application No. 85919907

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not aware of the wording ‘EXPERT COMMERCE’ having a meaning in connection with
the identifed [sic] goods and services.” Ex. Att. Br., 9 TTABVue 7 (quoting Applicant’s
response). Accordingly, the Examining Attorney withdrew the requirement to supply
information with respect to “COMMERCE” and “EXPERT COMMERCE.” Nonetheless,
the requirement for information was repeated and made final with respect to the term
“EXPERT,” in a pared-down set of questions:
The applicant must directly answer the following question(s)
and/or provide the information requested:
1. Does EXPERT have any significance as applied to the
goods and/or services other than trademark and/or service
mark significance?
2. Does EXPERT have any significance in the relevant trade
or industry other than trademark and/or service mark sig-
nificance?
3. Will the goods and/or services be for use by experts?
4. Will the goods and/or services provide expert recommen-
dations or information?
Final Ofc. Action (Mar. 17, 2014).
Applicant filed a request for reconsideration and included the following information:
Applicant provides promotional and advertising services to
[various] brands. . . . Applicant provides a web site that is
used by the brand to provide information and incentives to
retail sales personnel and targeted groups of product re-
viewers to obtain product training or product information,
and review, rate and comment on the particular goods or
services. The more an individual engages in training or oth-
erwise qualifies to be considered to be knowledgeable about
the offered goods and services, the more they have the abil-
ity to increase their ranking so that they stand out when
compared to other product reviewers on the reviewer net-
work. Thus, their reviews tend to garner more weight and in
return, the product reviewer is provided additional dis-
Application No. 85919907

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counts and offers which when taken advantage of, provides
additional opportunities, be [sic] ranked as an “expert” in
their expertise and in return are offered more offers and dis-
counts. Attached is a publication and snapshots from Appli-
cant’s website containing additional information about the
services provided by Applicant. . . .
Req. for Recon. (Sept. 16, 2014). Attached to Applicant’s request for reconsideration
was what appears to be a copy of a thirteen-page booklet on Applicant’s business (What
is a Knowledgeable Sales Professional Worth? How to turn retail salespeople into au-
thentic brand advocates.) and five pages from Applicant’s web site. Nonetheless, Appli-
cant again failed to directly respond to the Examining Attorney’s questions.
Applicant and the Examining Attorney apparently were in contact between the fil-
ing of Applicant’s request for reconsideration and its denial. The record includes an ex-
aminer’s amendment issued concurrently with the denial of reconsideration, referenc-
ing a conversation on September 26, 2014. The amendment resolved an outstanding is-
sue with the Class 35 identification of services and further stated as follows:
The examining attorney has not received the information
expected from the applicant. The examining attorney under-
stood that the information would be filed by the applicant no
later than September 30, 2014.
The final information requirement is maintained and con-
tinued; the next action will deny the request for reconsider-
ation. . . .
Exm’r Amend. (Oct. 7, 2014).
The Examining Attorney subsequently denied the request for reconsideration:
While the identification issue was obviated, the applicant
failed to provide the information in the final information re-
quirement. The information requirement will provide rele-
vant information regarding any other potential issue in the
application, e.g., a merely descriptive refusal, and is there-
Application No. 85919907

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fore relevant to the application.
Therefore, applicant’s request has not resolved all the out-
standing issue(s), nor does it raise a new issue or provide
any new or compelling evidence with regard to the outstand-
ing issue(s) in the final Office action. In addition, applicant’s
analysis and arguments are not persuasive nor do they shed
new light on the issues. Accordingly, the request is denied.
Recon. Denied (Oct. 7, 2014).
B. Applicable Law
When considering an application for registration, it is important that the examin-
ing attorney understand the nature of the goods and services at issue, the meaning of
the mark, and its significance in the relevant trade or industry. Applications often lack
detailed information on these issues, which can be a problem when the goods or ser-
vices are novel or out of the ordinary, or when they are not described clearly or in fa-
miliar language. This is particularly so when the application is based on the applicant’s
intent to use the mark, as oftentimes neither specimens nor other evidence of the ap-
plicant’s actual use are of record or even available.
Recognizing this information deficit, the rules provide that “[t]he Office may re-
quire the applicant to furnish such information ... as may be reasonably necessary to
the proper examination of the application.” Trademark Rule 2.61(b). As the Board not-
ed recently:
Failure to comply with a request for information is grounds
for refusal of registration. In re Cheezwhse.com Inc., 85
USPQ2d 1917, 1919 (TTAB 2008); In re DTI Partnership
LLP, 67 USPQ2d 1699, 1701(TTAB 2003); TMEP § 814. In
view of applicant’s equivocal responses (not to mention its
complete silence on this point in its brief), we find that ap-
plicant has not complied with the requirement for more spe-
cific information.
Application No. 85919907

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In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013).
While a request for information must be clear, and the information requested must
be “reasonably necessary” for examination, see In re SPX Corp., 63 USPQ2d 1592, 1597
(TTAB 2002) (affirming requirement under Trademark Rule 2.61(b) “because . . . the
request for information was reasonable”), an examining attorney has considerable dis-
cretion in deciding whether and what information should be requested pursuant to
Trademark Rule 2.61(b). The examining attorney should not have to determine the reg-
istrability of a trademark without a clear understanding of the identified goods and
services or of the meaning of the mark, and the applicant is often in the best position to
supply that information. Finally, the failure to comply with a 2.61(b) requirement is it-
self a proper ground for refusal of registration, even if it is the only outstanding refusal
or requirement. In re DTI P’ship LLP, 67 USPQ2d 1699 (TTAB 2003) (affirming refusal
to register under Rule 2.61 without reaching refusal under Trademark Act § 2(e)(1)).
C. Discussion
The Examining Attorney’s outstanding requests for information all deal with the
term EXPERT and its significance to the identified services. Applicant was required to
indicate whether “EXPERT [has] any significance as applied to the . . . services”;
whether “EXPERT [has] any significance in the relevant trade or industry”; whether
the identified services are “for use by experts”; and whether “the . . . services provide
expert recommendations or information.” As noted, the Examining Attorney’s original
requests for information about the terms COMMERCE and EXPERT COMMERCE
were either satisfied or obviated.
There is no doubt that the information required by the Examining Attorney was
Application No. 85919907

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“reasonably necessary to the proper examination of the application.” Trademark Rule
2.61(b). The precise meaning of the term EXPERT as it relates to Applicant’s goods and
services had to be ascertained by the Examining Attorney in order to determine wheth-
er the mark was merely descriptive of some or all of the goods or services.3 Applicant
does not contend that the Examining Attorney’s request for information was unreason-
able or unnecessary. All that remains before us are the four questions set out in the fi-
nal Office action regarding the significance of the term EXPERT. The questions appear
to require little or nothing more than “yes” or “no” answers or at most, a very brief ex-
planation. (The Examining Attorney had already accepted Applicant’s bald statement
that Applicant was not aware that EXPERT COMMERCE had any meaning with re-
spect to the goods.) Nonetheless, Applicant never directly answered the Examining At-
torney’s questions about the meaning of EXPERT with respect to Applicant’s services.
In its brief, Applicant contends that the information it provided satisfied the Exam-
ining Attorney’s requirement. Arguing that it was not required to directly answer the
Examining Attorney’s questions, Applicant notes that the requirement was that it “an-
swer questions directly and/or provide the information requested.” App. Br., 7
TTABVue 9 (Applicant’s emphasis). Applicant misreads the requirement. Three of the
seven items in the information request originally posed in the first Office action re-
quired information other than the answer to a question (Question 3: “If available, the

3 Recall that Applicant had already disclaimed the exclusive right to use COMMERCE apart
from the mark as a whole, thereby conceding that one of the two terms in Applicant’s com-
pound mark is at least descriptive of the identified goods or services. In re DNI Holdings Ltd.,
77 USPQ2d 1435, 1442 (TTAB 2005) (disclaimer is “an admission of the merely descriptive na-
ture of that term”). A refusal of the entire mark under Trademark Act § 2(e)(1) might have
been appropriate if it was established that EXPERT is descriptive.
Application No. 85919907

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applicant will provide a website address at which the goods and/or services are of-
fered. . . .”; Questions 4 & 5: “[A]pplicant must submit additional” information about
the goods and services). But the remaining four items — the only ones at issue in this
appeal — were questions calling for a yes or no answer (e.g., “Will the goods and/or ser-
vices be for use by experts?”). Thus with respect to the outstanding items, “the infor-
mation requested” was a direct answer to each question.
In any event, the information Applicant provided was not as clear as Applicant con-
tends. At best, Applicant’s submissions hint at answers to only some of the Examining
Attorney’s questions. Further, the Examining Attorney was likely unable to rely on
common knowledge or easily available public information to fill in the gaps; it appears
that Applicant’s services may be unique (or at least uncommon), and it does not appear
that Applicant itself has begun commercial use of the mark. While the Examining At-
torney might have treated the information provided by Applicant as sufficient answers
to his questions, he was not obligated to guess when it would have been but a small
burden upon Applicant to simply answer the questions posed. It was within the Exam-
ining Attorney’s discretion to ask such questions and to refuse registration when the
requirement went unsatisfied. We affirm the refusal to register based on Applicant’s
failure to comply with the Examining Attorney’s information request.
Decision: The refusal to register is AFFIRMED with respect to the services in Interna-
tional Class 35. The Office’s records will be updated to reflect the abandonment of the
application with respect to International Classes 9, 16, and 41, as of September 17,
2014.