The USPTO refused to register the mark shown below, for “vodka,” based on the applicant’s failure to comply with a drawing requirement and its failure to amend the color claim in the application. The Office also refused registration under Section 2(d). Applicant argued against the Section 2(d) refusal but did not address the two requirements, either at the prosecution stage or in its appeal brief. The Board dismissed the appeal without reaching the Section 2(d) issue. In re Rainier Enterprises, LLC, Serial No. 87384516 (December 3, 2019) [precedential] (Opinion by Judge Frances Wolfson).

The failure to comply with a requirement established by the Trademark Rules is itself a proper ground for refusal of registration, even if it is the only outstanding refusal or requirement. See 15 U.S.C. § 1051(a)(4) (“The applicant shall comply with such rules or regulations as may be prescribed by the Director.”).

Procedural requirements, such as the drawing and color claim requirements at issue in this case, ensure “the public’s interest in timely and adequate notice of the marks on file at the Office.” Because the granting of a filing date to an application potentially establishes a date of constructive use of the mark under Section 7(c) of the Act, 15 U.S.C. § 1057(c), a drawing that does not accurately reflect the mark due to poor imaging is potentially unfair to third parties who search Office records, because they do not have accurate information about the application. Relying on the search of Office records, a third party may innocently begin using a mark that conflicts with the mark, but be unaware of the conflict because the drawing is obscure.

Examining Attorney Andrew Crowder-Schaefer required applicant to provide a substitute drawing of the mark that clearly showed the claimed gold outline around the wording described in the mark description, and to amend the color claim in the application to clarify whether the color white was being claimed as a feature of the mark.

For marks that include color, “the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.” Trademark Rule 2.52(b)(1), 37 C.F.R. §2.52(b)(1). Where there are white interior areas in a mark in which color is claimed, the applicant “must explain the purpose of the interior white areas on the drawing.” Trademark Manual of Examining Procedure (TMEP) § 807.07(d) (October 2018).

The Board observed that when an appellant fails to address a refusal or a requirement in its appeal brief, the Board may either affirm the refusal or it may treat the case as if no brief had been filed and therefore dismiss the appeal. “Either way, the application would stand abandoned.”

In this case, because Applicant failed to address the requirements both before the Examining Attorney and in its appeal brief, dismissal of the appeal is appropriate. Cf. Trademark Rule 2.142(b)(1) (“If the brief is not filed within the time allowed, the appeal may be dismissed.”).

The Board chose to dismiss the appeal, and therefore it did not reach the Section 2(d) issue.

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TTABlog comment: Not much explanation in this opinion. What difference does it make whether the appeal is dismissed instead of the refusals being affirmed? If the appeal is dismissed, may the applicant file a civil action for review of the underlying requirement? What about the Section 2(d) issue? It seems to me that if an opinion is going to be deemed precedential, it ought to be clear and instructive. To me, this one isn’t.

Text Copyright John L. Welch 2019.