Robert S. Laughlin

Trademark Trial and Appeal Board

Jul 19, 2000

No. 75309438 (T.T.A.B. Jul. 19, 2000)

Paper No. 12
TH/TR
7/19/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert S. Laughlin
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Serial No. 75/309,438
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Michaela M. Barry for Robert S. Laughlin
John S. Yard, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney)
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Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Robert S. Laughlin (applicant) seeks to register the
mark TPE for “computer services, namely, providing an on-
line bulletin board in the field of adult-oriented
conversation and ideas.” The application was filed on June
16, 1997 with a claimed first use date of March 1992.
Citing Section 1 of the Trademark Act, the Examining
Attorney has refused registration on two grounds. First,
the Examining Attorney notes that the application was
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/309,438
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signed not by the applicant, but rather by applicant’s
attorney who, according to the Examining Attorney, lacked
color of authority to sign the application. Second, the
Examining Attorney contends that applicant’s specimens of
use are deficient because (1) they are “incomplete,” and
because (2) they do not show use of the mark TPE for the
services as set forth in the application.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
With regard to the first ground of refusal, we
reverse. As previously noted, the application was filed on
June 16, 1997. On June 15, 1997 applicant signed a paper
styled “Power Of Attorney At Law.” In that document,
applicant not only authorized his attorney to sign and
prosecute the application and to conduct all business with
the PTO in connection with his application, but in
addition, applicant stated that his attorney had personal
knowledge of the statements contained in the trademark
application. Thus, in view of this document signed by
applicant, applicant’s attorney had at least color of
authority to sign the trademark application and hence the
application was not void ab initio. Trademark Manual of
Examining Procedure Section 803.
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Subsequently, Trademark Rule 2.33(a)(3) was changed
effective on October 30, 1999 to permit attorneys to sign
applications on behalf of applicants provided that said
attorneys have “actual or implied written or verbal power
of attorney from the applicant.” Clearly, based on the
document signed by applicant, applicant’s attorney had such
power of attorney.
The PTO has taken the position that any trademark
application which was pending on October 30, 1999 (as was
the current application) is to be treated in accordance
with Trademark Rule 2.33 as modified. Accordingly,
applicant’s attorney properly signed the application.
In reversing this first ground of refusal to register,
we hasten to add that the actions of the Examining Attorney
were quite proper at all times from the application filing
date through the final paper in this file, namely, the
Examining Attorney’s brief dated May 10, 1999. It is
certainly not the fault of the Examining Attorney that
subsequent to May 10, 1999, Trademark Rule 2.33(a)(3) was
altered to permit attorneys with power of attorney to sign
applications.
We consider next the refusal to register on the basis
that applicant’s specimens of use are inadequate. As
previously noted, this refusal has two prongs. First, it
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is the position of the Examining Attorney that applicant’s
specimens of use, which applicant contends are printouts of
the first page of his web page, are “incomplete” because
they lack a URL destination, that is, the applicant’s web
address. The Examining Attorney acknowledges that not all
web pages have a URL destination. Rather, it is the
position of the Examining Attorney that the vast majority
of web pages do. In contrast, applicant has consistently
maintained his position that his specimens of use are
indeed actual printouts of his first web page.
Based on the above, we find that the refusal of the
Examining Attorney to accept applicant’s specimens because
they are “incomplete” or because they are not what they
purport to be is simply not well taken. Applicant has
repeatedly and consistently stated that the specimens are
indeed printouts of his first web page. In addition, the
Examining Attorney has conceded that not all web pages
contain a URL destination. Finally, we simply note that at
page two of Office Action No. 3, the Examining Attorney
appears to state that he actually “visited” applicant’s
computer web site, and then advised applicant that “various
printouts from the web site, properly submitted and
verified as substitute specimens, would indeed overcome
both specimen refusals.” Hence, the Examining Attorney
Ser No. 75/309,438
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himself has independently confirmed that applicant’s
specimens do indeed actually exist on the web.
We turn now to the second prong of the second ground
of refusal, namely, that applicant’s specimens do not show
use of the mark in connection with the services for which
applicant seeks registration (computer services, namely,
providing an on-line bulletin board in the field of adult-
oriented conversation and ideas). As our primary reviewing
Court has made clear, in order to obtain a service mark
registration, “the minimal requirement [for the specimens]
is some direct association between the offer of services
[for which registration is sought] and the mark sought to be
registered therefor.” In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456, 457 (CCPA 1973). See also In re
Advertising & Marketing, 821 F.2d 641, 2 USPQ2d 2010, 2014
(Fed. Cir. 1987) (“It is not enough for the applicant to be
a provider of services; the applicant also must have used
the mark to identify the named services for which
registration is sought.”)
While applicant’s mark TPE appears prominently and
repeatedly on applicant’s specimens (i.e. the first page of
applicant’s web site), these specimens in no way associate
the mark TPE with the services for which applicant seeks
registration, namely, “computer services, namely, providing
Ser No. 75/309,438
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an on-line bulletin board in the field of adult-oriented
conversation and ideas.” Stated somewhat differently, a
consumer reviewing applicant’s specimens (the first page of
his web site) would in no way be able to ascertain that
applicant’s computer services are the providing of an on-
line bulletin board, much less the providing of an on-line
bulletin board in the field of adult-oriented conversation
and ideas. There is simply no mention in applicant’s
specimens of an on-line bulletin board, either in those
words or in similar words. There certainly is no mention
in applicant’s specimens of an on-line bulletin board in
the field of adult-oriented conversation and ideas, either
in those words or in similar words.
Nevertheless, because of certain very unusual facts
present in this case, we are remanding this matter to the
Examining Attorney in order to afford applicant the
opportunity of submitting proper specimens (i.e. additional
pages from his web site) which show use of the mark TPE in
connection with the services for which registration is
sought, along with a declaration (if accurate) to the
effect that these additional specimens were in use as of
the application filing date of June 16, 1997. We are
taking this action because there is no dispute that the
Examining Attorney and applicant had a number of telephone
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conversations regarding the sufficiency of applicant’s
specimens. As previously noted, the Examining Attorney
visited applicant’s web site and after reviewing additional
pages of his web site, found that these additional pages
did show use of the mark TPE in connection with the
services for which registration was sought. The
recollections of the Examining Attorney and applicant
differ in that applicant was under the impression that
because the Examining Attorney viewed the additional pages
of the applicant’s web site and found that these pages
showed an association of the mark with the services, that
applicant need not physically submit these pages. On the
other hand, the Examining Attorney’s recollection is that
he informed applicant that while a review of applicant’s
other web pages indicate that they would serve as proper
specimens, nevertheless, applicant was advised that he had
to physically submit copies of the specimens along with a
declaration or verified statement that these additional
pages were in use at least as early as the application
filing date.
Accordingly, this matter is remanded to the Examining
Attorney with instructions to promptly issue another office
action which will afford applicant sixty days from the date
of said office action in which to submit additional pages
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from its web site showing use of the mark TPE in connection
with the applied for services along with a verified
statement or declaration to the effect that these
additional web site pages (specimens) were in use at least
as earliest as the application filing date of June 16,
1997.
Decision: The refusal to register on the basis that
the applicant did not sign the application is reversed.
The refusal to register on the basis that the specimens are
“incomplete” or are not what they purport to be is also
reversed. The refusal to register on the basis that
applicant’s specimens do not show use of the mark TPE in
connection with the applied for services is affirmed.
However, as explained in the preceding paragraphs,
applicant is afforded the opportunity to submit proper
specimens along with a verified statement or declaration
(if accurate) that said specimens were in use at least as
early as June 16, 1997, the application filing date.
E. W. Hanak
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board