gaugewear, Inc.

Trademark Trial and Appeal Board

Aug 21, 2017

No. 86569473 (T.T.A.B. Aug. 21, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re gaugewear, Inc.
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Serial No. 86569473
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Robert G. Crouch of Marsh Fischmann & Beyfogle LLP,
for gaugewear, Inc.
Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____

Before Cataldo, Gorowitz and Coggins,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
gaugewear, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark GAUGEWEAR (in standard characters) for:
Biometric data measurement and transmitter device for athletic and
fitness measurements in the nature of multifunctional electronic devices
for measuring and transmitting the core body temperature in
International Class 9; and

Clothing, namely, active wear tops and bottoms, underwear, socks,
belts, hats, scarves, and gloves in International Class 25.1

1 Application Serial No. 86569473 was filed on March 19, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act in connection with both classes of goods.
Serial No. 86569473
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark is merely descriptive of both classes of the identified goods. In
addition, the Examining Attorney required Applicant to submit information
regarding the identified goods pursuant to Trademark Rule 2.61(b). After the
Examining Attorney made the refusal and requirement final, Applicant appealed to
this Board. We affirm the requirement and moot the refusal.
Preliminary Matter – Section 2(e)(1) Refusal as to Class 25
In its brief, Applicant presents general arguments against the refusal of
registration on the ground of mere descriptiveness, and presents specific arguments
in relation to its goods identified in Class 9, but not Class 25.2 In her brief, the
Examining Attorney argues that:
Applicant has limited its appeal to International Class 9. Since
applicant has neither responded to nor appealed the examining
attorney’s Final refusal as to International Class 25 in a timely manner,
that International Class and the goods identified therein are deemed
abandoned. 37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04.3

Trademark Rule 2.63(b) provides for an examining attorney’s issuance of a final
refusal or requirement and an applicant’s response thereto. Similarly, Trademark
Manual of Examining Procedure (TMEP) § 714.04 discusses the form of an examining
attorney’s final action. Neither supports the Examining Attorney’s position that
Applicant has “abandoned” its application as to the goods identified in Class 25 as a

2 4 TTABVUE 8-15. Applicant also addresses in its brief the requirement for information
under Trademark Rule 2.61(b).
3 6 TTABVUE 4.
Serial No. 86569473
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result of its failure to specifically discuss them in its appeal brief in response to the
refusal to register under Section 2(e)(1). Simply put, the authorities relied upon by
the Examining Attorney do not support her position that Applicant’s omission of a
specific discussion of the refusal of registration with regard to one of its recited classes
of goods constitutes an abandonment of the application on appeal as to those goods.
The filing of a notice of appeal has the effect of appealing all refusals or
requirements made final. In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). An
applicant’s failure to address the refusals or requirements is a basis for affirming an
examining attorney’s refusal of registration on those grounds. See In re Heather
Harley and Carolyn Jones, 119 USPQ2d 1775, 1777 (TTAB 2016) (refusing
registration based on failure to address or argue any of the examining attorney’s
refusals or requirements); In re DTI P’ship, LLP, 67 USPQ2d 1699, 1701-02 (TTAB
2003) (refusing registration based on failure to address request for information
requirement, finding Section 2(e)(1) refusal moot); In re The Ridge Tahoe, 221 USPQ
839, 840 (TTAB 1983) (failure to argue correctness of requirement may result in
refusal on that ground alone); In re Big Daddy’s Lounges Inc., 200 USPQ 371, 372
(TTAB 1978) (failure to respond or argue correctness of requirements on appeal could
result in a decision refusing registration by default); cf. Hyatt v. Dudas, 551 F.3d
1307, 89 USPQ2d 1465, 1469 (Fed. Cir. 2008) (an appellant who fails to provide any
argument in the appeal brief directed to rejected claims has waived a challenge to
that ground of rejection, and the Board of Patent Appeals has the discretion to simply
affirm any rejections against such claims).
Serial No. 86569473
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In this case, Applicant has argued against the Section 2(e)(1) refusal, making
specific reference to its goods in Class 9. In addition, Applicant discussed in its brief
potential meanings of its mark in relation to various types of apparel. We do not
construe Applicant’s failure to specifically reference its Class 25 goods in its
arguments against the mere descriptiveness refusal as an abandonment of its
application as to those goods. Therefore, we will consider the issues that are the
subject of the instant appeal as they apply to the goods identified in Class 9 and Class
25.
Requirement for Information
In her first office action, the Examining Attorney required Applicant to submit the
following information about the identified goods:4
To permit proper examination of the application, applicant must submit
additional product information about the goods. See 37 C.F.R. §2.61(b);
In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re
Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI
P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The
requested product information should include 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.

The submitted factual information must make clear how the goods
operate, their salient features, and their prospective customers and
channels of trade. Conclusory statements regarding the goods will not
satisfy this requirement.

4 June 25, 2015 office action at 3.
All references to the prosecution history of the involved application are to the .pdf version of
the file in the Trademark Search and Document Retrieval (TSDR) database.

Serial No. 86569473
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Failure to comply with a request for information can be grounds for
refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI
P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814. Merely stating that
information about the goods is available on applicant’s website is an
inappropriate response to a request for additional information and is
insufficient to make the relevant information of record. See In re
Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

In response, Applicant submitted the following statements:5
Further information on the goods can be found at the Applicant’s
website (www.gaugewear.com). As the product is still under
development, further detail is not readily available. In addition,
information about a similar product can be found in U.S. Patent No.
8,303,172 (a copy of which is attached). It is currently anticipated that
the product will not differ substantially from the patent description.

Applicant’s response, indicating that information can be found on its website,
ignored the Examining Attorney’s statement, supported by decisional law, that such
a response is insufficient. Furthermore, no copy of U.S. Patent No. 8,303,172 was
attached to Applicant’s communication, and none has been subsequently introduced
into the record.
The Examining Attorney’s December 31, 2015 Office action, raising for the first
time the Section 2(e)(1) refusal also at issue herein, noted without elaboration that
“The requirement for information about the goods is maintained and continued.”6
Applicant’s July 6, 2016 petition to revive addressed only the mere descriptiveness
refusal.

5 Applicant’s December 7, 2015 communication at 6.
6 December 31, 2015 office action at 2.
Serial No. 86569473
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In her final office action, the Examining Attorney again required further
information about the goods identified in the involved application.7 The language of
this request for additional information is essentially identical to the Examining
Attorney’s original request for information raised in her June 25, 2015 Office action.
The Examining Attorney did not indicate that a copy of U.S. Patent No. 8,303,172
was not made of record; however she did repeat the admonition that merely stating
information about the goods is available on Applicant’s website fails to satisfy the
requirement.
Applicant did not file a request for reconsideration. In its brief, Applicant argues as
follows:8
In the December 31, 2015 Office Action, the Examining Attorney
submitted evidence comprising the information taken from Applicant’s
website. Therefore, Applicant had no reason to supply such information
in Applicant’s Response because the Examining Attorney had already
entered the information into the record. As the Board pointed out in
Planalytics, there are several reasons it is necessary to enter
information from a website into the record rather than simply
referencing the website. Among these reasons cited by the Board are: 1)
evidence should be in the record to facilitate further review by the
USPTO, 2) Congress requires the Director to send the record to the
CAFC if an appeal were taken and therefore the record should be
complete with the website information itself, 3) an Examining Attorney
should not be required to scavenge a website in search of relevant
information, and 4) website content is transitory and may change over
time. Importantly, each of these reasons for the Applicant to supply
screenshots of the website were satisfied when the Examining Attorney
submitted screenshots of the website containing the required
information. Requiring Applicant to submit the same information would
be redundant and clearly unnecessary because the Examining Attorney
previously entered the information into the record. The Planalytics
opinion indicates that what is important is that the website itself be

7 August 9, 2016 office action at 5.
8 4 TTABVUE 16-7.
Serial No. 86569473
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submitted into the record, not that the Applicant must be the party who
submits it.

Moreover, Applicant did not only refer the Examining Attorney to a
website, but also referenced a specific U.S. Patent. Given the nature of
patents, much of the reasoning behind the Board’s requirements for
submission of screenshots from a website in Planalytics is inapplicable
to information contained in a patent. Specifically, a granted patent is
not transitory. That is to say, there is no risk that a trademark applicant
will revise a patent in order to remove information which may be
detrimental to acquiring a trademark. Additionally, patents are
technical documents which thoroughly describe a given product or
products and the entire copy of a patent may be beneficial to an
Examining Attorney in reviewing the product. Therefore, there is no
need for an applicant to specifically submit only a portion of a patent
because a “scavenger hunt” would not be required. Therefore, the
Examining Attorney has provided no precedent to support an assertion
that providing a reference to a patent is unacceptable to satisfy a request
for information.

“The Office may require 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 has noted:
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 P’ship 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 applicant has
not complied with the requirement for more specific information.

In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013).
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 generally has
considerable discretion in deciding whether and what information should be
Serial No. 86569473
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requested pursuant to Trademark Rule 2.61(b). An examining attorney’s ability to
determine the registrability of a trademark is impaired 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. This is
particularly the case where, as here, the application at issue is based upon an
assertion of a bona fide intent to use the mark in commerce, and there are no
specimens of record or other evidence of use of the applied-for mark. Finally, it is
settled that the failure to comply with a Trademark Rule 2.61(b) requirement is itself
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 at 1701-02 (affirming refusal to
register under Trademark Rule 2.61 without reaching refusal under Trademark Act
§ 2(e)(1)).
In this case, the Examining Attorney raised the requirement for information
concerning the identified goods in her first office action, continued the requirement
in her second office action and, inter alia, made the requirement final in her third
office action. Applicant’s December 7, 2015 response to the first office action
impermissibly referred the Examining Attorney to Applicant’s website in spite of the
Examining Attorney’s express indication in the first office action that such a response
would be inappropriate and insufficient, and also referred to a patent that it did not
make of record. Applicant did not address the information requirement in its July 6,
2016 petition to revive and did not file a request for reconsideration or request for
remand by which it could have introduced the required information. Applicant thus
Serial No. 86569473
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was afforded three opportunities in which to comply with the Examining Attorney’s
requirement for information and failed to do so.
The submission by the Examining Attorney of information from Applicant’s
website does not, contrary to Applicant’s arguments, relieve Applicant of the
obligation to submit such information as required. We have made clear that providing
hyperlinks to internet materials is insufficient to make such materials of record. See
In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (stating that
“a reference to a website’s internet address is not sufficient to make the content of
that website or any pages from that website of record”). Further, there is no indication
on this record of the extent of information available on Applicant’s website or what
portions of it were introduced by the Examining Attorney. It would have been a
simple matter for Applicant to submit such information or simply to supplement the
information introduced by the Examining Attorney and indicate that such
supplementation included the entirety of relevant website information. Similarly,
Applicant suggests in its brief that the Examining Attorney or this tribunal should
search USPTO records for referenced U.S. Patent No. 8,303,172 and thus obtain the
information therefrom. Applicant cites to no authority for its apparent position that
either the Examining Attorney or the Board should search USPTO records for a
referenced patent or take judicial notice thereof when Applicant easily could have
introduced the patent, or its relevant portions, into the record as required. The Board
does not take judicial notice of records residing in the Patent and Trademark Office;
they must be proved by competent evidence. See, e.g., In re Jonathan Drew Inc., 97
Serial No. 86569473
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USPQ2d 1640, 1644 n.11 (TTAB 2011) (stating that “the Board's well-established
practice is not to take judicial notice of registrations that reside in the USPTO”);
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986)
(“[W]e do not take judicial notice of application and registration files that reside in
the Patent and Trademark Office on the basis of their mere identification in briefs,
pleadings and evidentiary submissions.”).
The information required by the Examining Attorney was “reasonably necessary
to the proper examination of the application.” Trademark Rule 2.61(b). Product
information from Applicant’s website and patent documentation relating to the goods
clearly assist the Examining Attorney in determining, e.g., whether GAUGEWEAR
or the terms GAUGE and WEAR comprising the mark are merely descriptive of some
or all of the recited goods.
Applicant did not directly answer the outstanding request for information during
prosecution, but rather impermissibly directed the Examining Attorney to its website
and a referenced patent. It would have been a simple matter to directly provide
during prosecution the information required by the Examining Attorney. It was
within the Examining Attorney’s discretion to ask for such materials and to refuse
registration when the requirement went unsatisfied.
As a result, we find that Applicant failed to comply with the Examining Attorney’s
information request as posed in her first and final office actions.
Serial No. 86569473
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Section 2(e)(1) Refusal
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, in itself, for affirming the refusal to register Applicant’s mark. In re
DTI P’ship LLP, 67 USPQ2d at 1701-02. 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, particularly the
referenced but not produced patent, which were properly requested by the Trademark
Examining Attorney under Trademark Rule 2.61(b). Id. See also discussion supra. In
these circumstances, we decline to reach the merits of that refusal.
Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein.
The refusal to register based on Applicant’s failure to comply with the Trademark
Examining Attorney’s final requirement for information under Trademark Rule
2.61(b) is affirmed. The Section 2(e)(1) mere descriptiveness refusal is moot.