Handler Textile Corp.

Trademark Trial and Appeal Board

Jun 6, 2001

No. 75544959 (T.T.A.B. Jun. 6, 2001)

6/6/01
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Handler Textile Corporation
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Serial No. 75/544,959
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Myron Amer of Myron Amer, P.C. for Handler Textile
Corporation.
Scott M. Oslick, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Walters and Bottorff, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Handler Textile Corporation (applicant), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark
POSSIBILITY PANELS for custom quilting services.1 Applicant
and the Examining Attorney have submitted briefs but no oral
hearing was requested.
We affirm.
Essentially, it is the Examining Attorney’s position
1 Application Ser. No. 75/544,959, filed August 28, 1998, based
upon applicant’s alleged bona fide intention to use the mark in
commerce. After this application was published for opposition
and a Notice of Allowance was issued, applicant filed a statement
of use asserting use and use in commerce since January 4, 1999.
Pursuant to request, applicant submitted a disclaimer of the word
“PANELS.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/544,959
2
that the specimen submitted with applicant’s statement of
use (see below) does not show use of applicant’s mark in
connection with the services of custom quilting.
Ser. No. 75/544,959
3
Rather, the Examining Attorney contends that the specimen
shows use of this mark for goods in the nature of kits for
use in quilting. Because applicant’s specimen does not show
use of the mark for the services identified in applicant’s
amended application, in the notice of allowance and in the
amended statement of use, the Examining Attorney has refused
registration, and required that applicant submit a specimen
showing use of the mark for the services identified in the
amended application, supported by an appropriate affidavit
or declaration.
A brief review of the procedural history of this case
is in order. In the original application, applicant
indicated that it had a bona fide intention to use the mark
for “crafting of quilts, in International Class 24.” The
applicant also indicated that the mark “will be used on
labels affixed to the goods, and in other ways customary to
the trade.” Because the application was filed under Section
1(b) of the Act, a specimen of use was not filed with the
application. Following a telephone conversation with
applicant’s attorney, the Examining Attorney amended the
application to list the services as “custom quilting,” in
Class 40. The mark was thereafter published in the Official
Gazette, and applicant then filed a statement of use with a
specimen showing the mark used in connection with “Pre-
Printed Creative Blocks for Easy Foundation Piecing.” The
Ser. No. 75/544,959
4
Examining Attorney rejected the specimen on the ground that
it did not show use of the mark in connection with custom
quilting services. The Examining Attorney therefore
required that applicant submit a substitute specimen showing
use of the mark in connection with applicant’s services.
This appeal then followed.
As the Examining Attorney has argued in his brief, the
suggested amendment to the recitation was based upon a
rewording of the description “crafting of quilts,” and
apparently was the result of a discussion between the
Examining Attorney and applicant’s attorney. The Examining
Attorney indicates that the wording “crafting of quilts”
indicated to him that applicant sought registration of the
mark for services rather that goods. Upon entry of the
amendment by the Examining Attorney, a copy of the
Examiner’s Amendment was sent to applicant. Applicant did
not request further amendment to the description or to the
classification of services. Thereafter, applicant was
notified, by a Notice of Publication, that its mark was
being published for custom quilting services in Class 40.
Then, in the Notice of Allowance, applicant was notified
that the mark was allowed for the services of custom
quilting in Class 40.
Ser. No. 75/544,959
5
We agree with the Examining Attorney that applicant’s
description of services indicates that applicant is involved
in the making or selling of made-to-order quilts.
It is clear that applicant’s specimen does not show use
of the mark for custom quilting services. Whether a
specimen is acceptable as evidence of service mark use
depends upon the use reflected in that specimen. The use
must be of such a nature that potential purchasers would
perceive the mark as identifying and distinguishing
applicant’s services. See TMEP Section 1301.04, and In re
El Torito Restaurants Inc., 9 USPQ2d 2003 (TTAB 1988).
Applicant’s specimen is a kit used by purchasers to create
their own quilts. The specimen indicates that applicant’s
goods are “Perfect for Crafters and Quilters of Any Skill
Level.” Another example of use shows use of the mark for
patterns used to design quilts, and not in connection with
any custom quilting services performed by applicant.
Applicant argues, however, that the materials out of
which a quilt is created or “customized” are supplied by
applicant.2 Applicant argues that the supplying of these
materials is a service. However, as the Examining Attorney
contends, the service of custom quilting must be performed
by the applicant to the order or specification of others.
2 Applicant’s attorney states, Response, filed July 21, 2000, p.
2:
What is involved is a “custom quilt” in a
Ser. No. 75/544,959
6
From the specimen of record, it does not appear that
applicant is performing a service such as the constructing
of a quilt for a purchaser. The provision of the kit by
which the customer performs the activity of creating a quilt
is not a custom quilting service performed by applicant.
Moreover, the specimen of record clearly shows use of the
mark sought to be registered as a trademark for the kit and
not as a mark for custom quilting services. Applicant’s
kits are intended for the use by a consumer in making his or
her own quilt.
Decision: The refusal of registration is affirmed.
preliminary state as a “Kit.”