[E-trademarks] Custom Services = No Goods?

[Montgomery, Alexander P.]

Applicant files application covering:


  *   Goods
  *   Engineering services related to those goods.

Applicant creates customized components for machines, vehicles, etc.

Mark appears on packaging for the goods. The examining attorney rejects the specimen because it isn't clear the goods have a specific purpose, as opposed to being of general applicability (it's the former, but that's an aside).

In discussions with the EA, he mentions the applicant might not even be provide "goods" depending on the level of customization for the customer. Rather, they're merely providing a service. The more customization, the more likely this is to be a service, rather than the provision of a good (according to the EA).

That seems strange to me, as the customers come to the applicant for a good and the applicant ships a good to the customer.

Has anyone dealt with this issue? Or have case law or TMEP cites to support the EA's position? I've never dealt with this before and am trying to figure out where the "line" between a good and service here falls.

Alexander P. Montgomery <http://www.hinckleyallen.com/people/alexander-p-montgomery>
Partner
________________________________
Hinckley Allen <http://www.hinckleyallen.com/>
28 State Street
Boston, MA 02109-1775
p: 617-378-4366 |  f: 617-345-9020
amontgomery at hinckleyallen.com<mailto:amontgomery at hinckleyallen.com>

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