Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  November 23, 2021

Yoel Fink (petitioner) petitioned the Director of the United States Patent and Trademark Office (Director) to redact from the record portions of the specimen filed with an April 14, 2021 statement of use (SOU) in the above-identified application.  The Director has authority to review this request under 37 C.F.R. §§2.146(a)(3), 2.165(b) and delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted, in part.

FACTS

On October 22, 2019, petitioner filed an application for registration of the above-identified mark for “fabrics with fibers that contain semiconductor devices; fabrics that connect with mobile devices; fabrics that sense and communicate; fabrics that monitor health; fabrics that can process information and compute” on the Principal Register based on an intent to use the mark in commerce under Trademark Act Section 1(b).  15 U.S.C. §1051(b). 

After informalities were resolved during initial examination, the application was published for opposition on March 17, 2020.  A notice of allowance (NOA) issued on May 12, 2020, informing petitioner that an SOU or a Request for Extension of Time to file a Statement of Use (Extension Request) would be due six months from the NOA’s issue date.  Petitioner filed a timely extension request on October 22, 2020, and it was granted the same day.  Petitioner filed his SOU on April 14, 2021, with an attached specimen described as a slide “deck we use to present the company to our customers.”  (SOU.)  The slide deck specimen submitted with the SOU (“slide deck specimen”) was from a presentation dated April 12, 2021, according to the first slide in the slide deck specimen, and contained a total of 16 slides.  Petitioner signed a declaration verifying that the slide deck specimen was in use.  (SOU.)  In an Office action dated June 2, 2021, the examining attorney refused registration because petitioner’s entire slide deck specimen was only advertising for goods, which functioned merely to tell prospective purchasers about the goods, or promote the sale of the goods.  A substitute specimen was required because, generally, advertising specimens are not acceptable specimens for showing a trademark used on the goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); Trademark Manual of Examining Procedure (TMEP) §§904.04(b), (c), 1301.04.

On June 3, 2021, petitioner filed this petition requesting that information be removed from two of the slides in the slide deck specimen because they show “confidential information - names, pictures of employees that did not authorize to publish their pictures as well as confidential business matters exposing business activities to competitors.” (Petition.) The petition included copies of the two slides to which the petition was referring from the slide deck. The first attached slide shows the name and image of the petitioner as well as the names and images of three of the petitioner’s employees.  This slide is numbered on the bottom right as slide 2 in the slide deck specimen.  The second attached slide shows written information about petitioner’s “initial markets and early commercial traction” in the “supply chain & authentication,” “medical & health,” “fitness & sports analytics, fan engagement” and “composites & aerospace, 3D printing” markets.  This second slide is numbered on the bottom right as slide 12 in the slide deck specimen. 

DISCUSSION

Pursuant to Trademark Rule 2.25, documents filed with the United States Patent and Trademark Office (USPTO) become part of the official record and will not be returned or removed.  37 C.F.R. §2.25; TMEP §404.  Because the USPTO acts based exclusively on this written record, the USPTO must preserve the integrity of its administrative record and provide the public with a complete application file.  See 35 U.S.C. §143; 37 C.F.R. §2.191.  This responsibility is unquestioned in light of the well-settled principle that review of USPTO decisions is limited to the administrative record below.  See 15 U.S.C. §1071(a)(4); see also Camp v. Pitts, 411 U.S. 138, 142 (1973); United States v. Carlo Bianchi & Co., 373 U.S. 709, 714-15 (1963).

In the petition, petitioner requests the redaction of information from slides 2 and 12 in the slide deck specimen because he did not have permission to use the names and images of the three employees appearing and named in slide 2 and slide 12 contains confidential business information he does not wish to disseminate to competitors.

The Director may waive Rule 2.25 “in an extraordinary situation, when justice requires and no other party is injured.”  37 C.F.R. §§2.146(a)(5), 2.148; see TMEP §1708.  To waive this rule, the Director must determine that all three conditions are satisfied.  See TMEP §1708. In this case, the Director finds that a waiver of Rule 2.25 is appropriate, in part.  Petitioner’s allegations that he did not have permission to use the names and images of his three employees in slide 2 establishes an extraordinary circumstance, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule.  See TMEP §§404, 1708.  Therefore, the names and images of the three employees appearing in slide 2 will be redacted.  In addition, this particular information was not necessary for the examination of the application. 

However, as to slide 12, petitioner described the April 14, 2021, slide deck specimen as being used “to present the company to our customers.”  (SOU specimen description.)  On petition, he argues that slide 12 contains “confidential business matters exposing business activities to competitors.” (Petition.)  Slide 12 shows written information about petitioner’s “initial markets and early commercial traction” in the “supply chain & authentication,” “medical & health,” “fitness & sports analytics, fan engagement” and “composites & aerospace, 3D printing” markets.  A review of the entire slide deck specimen in the SOU shows the petitioner’s “composites & aerospace, 3D printing” market plan discussed at slide 14 and petitioner’s “fitness & sports analytics, fan engagement” discussed at slide 15.  Furthermore, the entire slide deck was presented on April 12, 2021, according to the title page of the slide deck itself.  (SOU.) Clearly, this information was presented publicly before the SOU was filed.  Thus, none of the information shown on slide 12 appears to be confidential and, as such, will not be redacted.  In addition, this information was necessary for the examination of the application and the refusal identified in the June 2, 2021 Office action.

Accordingly, the Director waives Rule 2.25 and will redact the names and images of the three employees appearing in slide 2 in the specimen slide deck submitted with the SOU in the official record maintained by the USPTO.  See 37 C.F.R. §§2.146(a)(5), 2.148.  All the other information provided in the specimen slide deck, including slide 12, will not be redacted.

DECISION

The petition is granted, in part.  The USPTO will redact the names and images of the three employees from the specimen filed with the SOU on April 14, 2021, in the above-identified registration.  The registration will be returned to examining attorney to await the petitioner’s response to the June 2, 2021 Office action.

/John D. Dalier/

Office of the Deputy Commissioner

 for Trademark Examination Policy

john.dalier@uspto.gov

571.272.7412