DTI Partnership, L.L.P.

THIS DISPOSITION IS

CITABLE AS PRECEDENT

OF THE TTAB

Mailed:

April 10, 2003

Paper No. 12

Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re DTI Partnership, L.L.P.

________

Serial No. 76/197,868

_______

Glenn M. Seager of Crompton, Seager & Tufte, LLC for DTI

Partnership, L.L.P.

Angela M. Micheli, Trademark Examining Attorney, Law Office

108 (David E. Shallant, Managing Attorney).

_______

Before Hairston, Walters and Bottorff, Administrative

Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant has applied for registration on the

Principal Register of the mark IBLOCK THERMAL MAPS (in

typed form) for goods identified in the application, as

Ser. No. 76/197,868

amended, as “computer software used to perform data

analysis in the field of demographics.”1

The Trademark Examining Attorney has finally refused

registration of the mark on the ground that the mark is

merely descriptive and thus unregistrable under Trademark

Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and on the

alternative ground that applicant has failed to comply with

the Trademark Examining Attorney’s requirement for

information pursuant to Trademark Rule 2.61(b), 37 C.F.R.

§2.61(b).

Applicant has appealed. Applicant and the Trademark

Examining Attorney filed opening briefs on appeal, but

applicant did not file a reply brief and did not request an

oral hearing. We affirm the refusal to register, based on

applicant’s failure to comply with (or even acknowledge)

the Trademark Examining Attorney’s requirement for

information under Trademark Rule 2.61(b).

In her first Office action, the Trademark Examining

Attorney made a mere descriptiveness refusal and attached

evidence in support of that refusal. She also made the

following requirements:

1

Serial No. 76/197,868, filed January 22, 2001. The application

is based on applicant’s asserted intent to use the mark, under

Trademark Act Section 1(b), 15 U.S.C. §1051(b).

2

Ser. No. 76/197,868

The applicant must submit samples of

advertisements or promotional materials for

goods of the same type to permit proper

consideration of the application. If such

materials are not available, the applicant must

submit a photograph of similar goods and must

describe the nature, purpose and channels of

trade of the goods. 37 C.F.R. Section 2.61(b);

TMEP sections 1103.04 and 1105.02.

The applicant must indicate whether the wording

in the mark has any significance in the

relevant trade or industry or as applied to the

goods. 37 C.F.R. Section 2.61(b).

In its response to the first Office action, applicant

presented arguments in opposition to the mere

descriptiveness refusal, including detailed arguments as to

why the evidence made of record by the Trademark Examining

Attorney failed to establish mere descriptiveness.

Applicant also argued:

The determination of whether or not a mark is

merely descriptive must be made not in the

abstract but, rather, in relation to the goods

or services for which registration is sought.

See In re Omaha National Corp., 819 F.2d 1117,

2 USPQ2d 1859 (Fed. Cir. 1987). Applicant is

not aware of use of the term IBLOCK in relation

to demographics software. Further, the term

IBLOCK is a made-up word, not found in any

dictionary, such that it cannot be said to only

have descriptive significance. As discussed

below in relation to Exhibit 1 [the Trademark

Examining Attorney’s evidence], the term lacks

identifiable significance. Applicant thus

believes the proposed mark, IBLOCK THERMAL

MAPS, to be arbitrary, rather than descriptive.

3

Ser. No. 76/197,868

Applicant did not specifically address or acknowledge the

Trademark Examining Attorney’s requirement for information

under Trademark Rule 2.61(b).2

In her final Office action, the Trademark Examining

Attorney presented further arguments and evidence in

support of her mere descriptiveness refusal, and concluded

as follows:

…Applicant asserts other conclusions as to the

arbitrariness of the term IBLOCK, but fails to

provide any evidence in support of any of these

statements.

Based on the above reasons, the refusal under

Section 2(e)(1) is made FINAL and the

requirement for advertisements and promotional

materials is made FINAL.

2

Applicant’s statements (in the above-quoted excerpt) that

“[a]pplicant is not aware of use of the term IBLOCK in relation

to demographics software,” and that IBLOCK “is a made-up word,”

might be construed, generously, as partially responsive to the

Trademark Examining Attorney’s Trademark Rule 2.61(b) requirement

that “applicant must indicate whether the wording in the mark has

any significance in the relevant trade or industry or as applied

to the goods.” Given their surrounding context, however, it is

more likely that these statements regarding the significance of

the term IBLOCK were intended to be substantive arguments in

opposition to the mere descriptiveness refusal, rather than

informational statements responsive to the Trademark Rule 2.61(b)

requirement. In any event, applicant did not offer any

explanation as to the meaning or significance of THERMAL MAPS in

relation to the goods (e.g., whether the “data analysis in the

field of demographics” to be performed by the software upon which

applicant intends to use the mark includes or involves data

obtained by means of, or depicted in the form of, “thermal

maps”). Nor did applicant comply with, or even acknowledge, the

Trademark Examining Attorney’s specific requirements for

submission of advertising or promotional materials and for a

description of the nature, purpose and channels of trade of the

goods.

4

Ser. No. 76/197,868

If applicant files a request for remand, he

[sic – it] should include relevant evidence in

support of his [sic – its] position. Relevant

evidence would consist of advertisements or

promotional materials showing how the proposed

mark will be used. The applicant should also

indicate whether the term IBLOCKS has an [sic -

any] significance in the relevant trade.

Applicant then filed a notice of appeal and a request

for reconsideration of the final refusal. The Board

instituted and suspended the appeal, and remanded the

application to the Trademark Examining Attorney for

examination of the request for reconsideration. In the

request for reconsideration, applicant once again merely

presented arguments as to why the Trademark Examining

Attorney’s evidence failed to establish that the term

IBLOCK is merely descriptive. Applicant did not comply

with or acknowledge the Trademark Examining Attorney’s

final Trademark Rule 2.61(b) requirement for submission of

additional information and materials.

The Trademark Examining Attorney issued an action

denying the request for reconsideration, in which she

specifically noted that “[a]pplicant has not complied with

the request for information or given any reason why no

information has been provided. Applicant did not respond

to the examining attorney’s inquiry as to whether the

proposed mark has any significance in the relevant trade.”

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Ser. No. 76/197,868

The Board then resumed the appeal, and applicant filed

an appeal brief which essentially is a verbatim reiteration

of its request for reconsideration. Despite the Trademark

Examining Attorney’s specific reference, in her denial of

the request for reconsideration, to the pending final

Trademark Rule 2.61(b) requirement, applicant’s appeal

brief included no response to or even acknowledgement of

that requirement. Likewise, although the Trademark

Examining Attorney specifically argued in a separately-

headed section of her brief on appeal that applicant has

failed to comply with the outstanding Trademark Rule

2.61(b) requirement and that such failure constitutes an

independent basis for refusing registration, applicant did

not file a reply brief addressing this issue.

The Trademark Rules of Practice have the effect of

law, and failure to comply with a request for information

is grounds for refusal of registration. See In re SPX

Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Page, 51

USPQ2d 1660, 1665 (TTAB 1999); In re Babies Beat, Inc., 13

USPQ2d 1729, 1731 (TTAB 1990); In re Big Daddy’s Lounges,

Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and

Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In

re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB

1973); see generally Chrysler Corp. v. Brown, 441 U.S. 281,

6

Ser. No. 76/197,868

295 (1979)(agency regulations have the force and effect of

law).

Trademark Rule 2.61(b) provides: “The examiner may

require the applicant to furnish such information and

exhibits as may be reasonably necessary to the proper

examination of the application.”3 We find that the

Trademark Examining Attorney’s requirement for information

(regarding the nature of applicant’s goods and the

significance of the wording in the mark as applied to such

goods) was proper under Trademark Rule 2.61(b). Such

information is directly relevant to the issue of mere

descriptiveness and thus “may be reasonably necessary to

the proper examination of the application,” as required by

the rule. Applicant has not contended otherwise. We also

find that applicant has failed to comply with the Trademark

Examining Attorney’s Trademark Rule 2.61(b) requirement.

Again, applicant has not contended otherwise. Applicant’s

3

Generally, information and materials provided in response to a

Trademark Rule 2.61(b) requirement can be extremely useful in the

Board’s review on appeal of the Trademark Examining Attorney’s

substantive refusal (and likewise useful in the Trademark

Examining Attorney’s determination of whether to maintain the

refusal in the first place). This is especially so where the

applicant’s goods or services, or the wording in the mark, is

technical in nature or otherwise unfamiliar, or where the

application is based on intent-to-use. The Board encourages

Trademark Examining Attorneys to require information and

materials under Trademark Rule 2.61(b) in such circumstances, and

looks with disfavor on an applicant’s failure to comply with such

requirement fully and in good faith.

7

Ser. No. 76/197,868

noncompliance with the Trademark Examining Attorney’s

lawful requirement under Trademark Rule 2.61(b) warrants

rejection of the application. See In re SPX Corporation,

supra; In re Page, supra; and In re Babies Beat, Inc.,

supra.

Indeed, despite the Trademark Examining Attorney’s

repeated express warnings and reminders, applicant

inexplicably has ignored the Trademark Rule 2.61

requirement altogether, both during prosecution of the

application and during this appeal. Such disregard of the

Trademark Examining Attorney’s lawful requirement, even

more than applicant’s noncompliance therewith, warrants

rejection of the application. As the Board has stated

previously:

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

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. What an applicant cannot do,

however, is to ignore a request made pursuant

to Trademark Rule 2.61(b), as applicant has

here.

8

Ser. No. 76/197,868

In re SPX Corporation, supra, 63 USPQ2d at 1597.

For the reasons discussed above, we affirm 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).

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.

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). See discussion supra at footnote 3. In these

circumstances, we decline to reach the merits of that

refusal.

Decision: 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.

9