Total Parent, Inc.

Trademark Trial and Appeal Board

Aug 24, 2009

No. 77299442 (T.T.A.B. Aug. 24, 2009)

Mailed: August 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Total Parent, Inc.1
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Serial No. 77299442
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Nicholas G. de la Torre and Rochelle Claerbaut of Brinks Hofer
Gilson & Lione for Total Parent, Inc.

Alex Seong Keam, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Holtzman, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Total Parent, Inc., seeks registration on the
Principal Register of the standard character mark TOTAL PARENT

1 We note applicant's request to amend applicant's name to Total
Parent, LLC. However, the change of name has not been recorded in the
Office and no documents evidencing such change of name have been
submitted. If applicant wishes a registration to issue in its current
name, applicant should file and record the appropriate documents with
the Assignment Branch of the Office. See Trademark Rule 3.85.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77299442
2
for goods and services in Classes 9, 16, 41 and 44.2 At issue in
this appeal are the following services in Classes 41 and 44:3
Providing a website which features links to the
websites of others on a global computer network in
the field of parenting, namely, raising and nurturing
children; providing a website which features links to
the websites of others on a global computer network
in the field of general life values, in Class 41; and

Providing a website which features links to the
websites of others on a global computer network in
the field of parenting, namely, raising and nurturing
children, in Class 44.

The trademark examining attorney refused registration on the
basis of applicant's failure to comply with requirements for (1)
a more definite statement of the wording "parenting, namely,
raising and nurturing children" in order to determine proper
classification of the services in that field, and (2) to

2 Application Serial No. 77299442, filed October 9, 2007, alleging a
bona fide intention to use the mark in commerce. PARENT is disclaimed.

3 The goods in Classes 9 and 16 are as follows: "pre-recorded CD's,
video tapes, and DVD's featuring information about health and illness,
education, life values, and parenting" in Class 9; and "series of
books, written articles, and handouts featuring information about
health and illness, education, life values, and parenting" in Class 16.
The application includes additional services in Classes 41 and 44 which
are not the subject of this appeal: "making presentations, namely,
educational services in the nature of parenting information about
health and illness, education, life values, and parenting via classes,
and conducting seminars and workshops featuring information about
health and illness, education, life values, and parenting; providing
electronic newsletters via email, podcast, and webcast featuring
information about health and illness, education, life values, and
parenting; providing a website which features links to the websites of
others on a global computer network in the field of education" in Class
41; and "providing a website which features links to the websites of
others on a global computer network in the fields of health and
illness" in Class 44.
Serial No. 77299442
3
reclassify applicant's services involving "general life values"
in Class 45, and submit a fee for the additional class of
services.
At the outset, as the examining attorney notes in her brief,
it is not permissible to use the identical language to describe
services in two different classes. See TMEP §1401.07. Thus, to
the extent that the identical language "providing a website which
features links to the websites of others on a global computer
network in the field of parenting, namely, raising and nurturing
children" appears in both classes, the identification of services
is unacceptable. Applicant in its reply brief acknowledges that
this was an inadvertent error and has agreed to reclassify the
services as appropriate. However, in order to classify these
services we must first determine whether the wording is
sufficiently definite for purposes of classification.
We turn then to the examining attorney's requirement for a
more definite statement of the services "providing a website
which features links to the websites of others on a global
computer network in the field of parenting, namely, raising and
nurturing children." Relying on TMEP §§1402.01 and 1402.11(b),
the examining attorney notes that services of providing
information via the Internet (like any other "information"
services) must indicate the subject matter of such information,
and also that the subject matter of the information provided via
Serial No. 77299442
4
the Internet determines the proper classification for the
services. The examining attorney argues that "parenting" and
similarly "raising and nurturing children" can encompass a
variety of activities, such as day care, education and health,
which may be classified in other classes. Of record are the
following entries from the Acceptable Identification of Goods and
Services Manual (ID Manual) which lists, for example,
Information in the field of parenting concerning
education [and/or entertainment] of children, in
Class 41;

Information about parenting topics, namely, drug and
alcohol awareness [and/or health of children], in
Class 44; and

Information in the field of parenting concerning
intrafamily relationships, in Class 45.

In addition, the examining attorney has submitted a
definition of "parenting" from The American Heritage® Dictionary
of the English Language (Fourth Edition 2000) as meaning "to act
as a parent to; raise and nurture."
Applicant is essentially providing an information service
which must be classified according to the subject matter of the
information, and the fact that the information is provided over
the Internet does not affect its classification. As stated in
Serial No. 77299442
5
the Nice Agreement Concerning the International Classification of
Goods and Services (9th ed. 2006),4
(c) Services that provide advice, information or
consultation are in principle classified in the same
classes as the services that correspond to the
subject matter of the advice, information or
consultation, e.g., transportation consultancy (Cl.
39), business management consultancy (Cl. 35),
financial consultancy (Cl. 36), beauty consultancy
(Cl. 44). The rendering of the advice, information
or consultancy by electronic means (e.g., telephone,
computer) does not affect the classification of these
services.

Thus, the service of "providing information" must indicate
the field(s) in which the information is provided so that the
service can be accurately classified. See TMEP § 1402.11(b).
Furthermore, Trademark Rule 2.32(a)(6) requires that an
application must include a statement "of the particular goods or
services on or in connection with which the applicant uses or
intends to use the mark." The U.S. Patent and Trademark Office
(USPTO) has the discretion to require "a more particularized
statement" of the services, if the terminology is indefinite. In
re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir.
2007). An identification of services may be considered
indefinite if it includes services that may be classified in more
than one class. See Omega, supra ("chronographs" held indefinite

4 From the "General Remarks - Services" section of the Nice
Classification.
Serial No. 77299442
6
because it includes both time recording devices in Class 9 and
watches in Class 14).
As defined in the ID Manual, the term "parenting" in the
context of information services, refers to services in more than
one class. "It is within the PTO's authority to develop
particularized definitions...and to require compliance with such
definitions." Omega, supra at 1543. We therefore find that the
term requires more particularity for proper classification.
Moreover, it is clear from the definition of "parenting" provided
by the examining attorney that the terminology "raising and
nurturing of children" is the equivalent of parenting, and is
likewise indefinite. Applicant has submitted no persuasive
evidence or arguments to the contrary.
Applicant's argument that the word "parenting" to describe
the information is "sufficiently clear" so as not to require
further explanation is not well taken. The term "parenting" is
not indefinite in terms of its commonly understood meaning, it is
considered indefinite by the USPTO for purposes of identifying
the subject matter of the information provided and thus proper
classification of the services.
Nor are we persuaded by applicant's argument that the term
"parenting" was acceptable as used to describe the content of
applicant's Class 9 audio/video goods, its Class 16 written
materials and its Class 41 educational services. Unlike
Serial No. 77299442
7
information services, goods and services in Classes 9, 16 and 41
are classified without regard to their content or subject matter.
Therefore, while the designation of a subject matter is required
for those classes, the subject matter may be phrased in broader
terms.
Applicant argues that the term "parenting" was accepted for
applicant's related design mark application (Ser. No. 77392505)
in connection with the same services covered by the present
application and applicant has attached a copy of the application
to its brief. Also attached to applicant's brief is a third-
party registration for the mark PARENTS.COM for "computer
services, namely, providing on-line magazines in the fields of
child development and parenting" which is listed in a single
class, i.e., Class 42 (Reg. No. 2146754).
First, this evidence is untimely as it was submitted for
the first time on appeal. See Trademark Rule 2.142(d) ("The
record in the application should be complete prior to the filing
of an appeal. The [Board] will ordinarily not consider
additional evidence filed with the Board...after the appeal is
filed."). We note that the examining attorney did not address
this late-filed evidence or otherwise treat it of record.
Accordingly, this evidence will not be considered. See TBMP
§1207.03 (2d ed. rev. 2004).
Serial No. 77299442
8
Even if considered, however, the evidence would not be
persuasive. The registration issued prior to the restructure of
Class 42 and the creation of three additional classes (43, 44 and
45) in January 2002, when the practice of "bundling" of various
fields of information in Class 42 (that is, allowing registration
in Class 42 as long as one of the listed fields was properly
classified in that class) was acceptable. This practice is no
longer permitted. See TMEP §1402.11(b). Furthermore, the fact
that others may have previously registered, or that applicant may
ultimately obtain a registration, with this indefinite
terminology does not preclude the Board from subsequently
determining that greater particularity is required. See Omega,
supra. See also In re Cooper, 254 F.2d 611, 117 USPQ 396, 401
(CCPA 1958) ("...the decision of this case in accordance with
sound law is not governed by possibly erroneous past decisions by
the Patent Office”); and In re Stenographic Machines, Inc., 199
USPQ 313, 317 (Comm'r Pats. 1978) ("Consistency of Office
practice must be secondary to correctness of Office practice.").
Applicant also argues that the fact that a topic might
encompass a variety of sub-topics does not necessarily mean that
the topic is indefinite, using as an example the topic of "food"
which applicant states could include food safety, restaurants,
healthy eating, etc. However, "food" is not analogous to
"parenting," and the question of whether that topic or any other
Serial No. 77299442
9
dissimilar field of information is sufficiently definite for
classification is simply not relevant to our determination.5
We note that applicant in its brief, and after the close of
examination, proffered untimely amendments to its identification
of services which the examining attorney has not addressed, and
we will not consider. We add, however, that neither amendment
would resolve this matter inasmuch as both proposals contain the
same, overly broad language "parenting" which has been found to
be unacceptable.6
The refusal to register as to these services is affirmed.
We turn next to the examining attorney's requirement to
reclassify the services of "providing a website which features
links to the websites of others on a global computer network in
the field of general life values" in Class 45 and to submit a fee
for the additional class of services. Applicant did not respond
to this requirement either in its request for reconsideration or

5 As provided in the "General Remarks" section of the Nice
Classification, "Services are in principle classified according to the
branches of activities specified in the headings of the service classes
and in their Explanatory Notes or, if not specified, by analogy with
other comparable services indicated in the Alphabetical List."

6 Applicant also contends that "there exists no International Class to
cover websites, likely because the last revision to the International
Classification of Goods and Services predates the widespread use of the
Internet." This statement is inaccurate and moreover irrelevant. The
United States is a party to the Nice Agreement and "Each of the
countries party to the Nice Agreement is obliged to apply the Nice
Classification in connection with the registration of marks." Preface
to Nice Classification.
Serial No. 77299442
10
in its appeal brief. Nevertheless, we agree with the examining
attorney that this service is more properly classified in Class
45. There is no specific entry in the ID Manual for the subject
matter "life values." However, as the examining attorney notes,
this type of information may be considered analogous to "general
lifestyle" information which is listed in the ID Manual in class
45 ("provision of a web site featuring information on
lifestyles"). We take judicial notice of the following
definitions of "lifestyle":7
"A way of life or style of living that reflects the
attitudes and values of a person or group."
The American Heritage® Dictionary of the English
Language, (Fourth Edition 2000) (from onelook.com)

"The habits, attitudes, tastes, moral standards,
economic level, etc., that together constitute the
mode of living of an individual or group."
Dictionary.com Unabridged based on the Random House
Dictionary (2009) (from dictionary.reference.com)

Based on these definitions, it seems to us that the term
"lifestyles" would broadly encompass information about "life
values" and that the two topics involve closely related and
overlapping concepts. It would therefore be appropriate, in our
view, to classify both types of information in the same class.
Inasmuch as such services have been incorrectly classified and

7 The Board may take judicial notice of dictionaries, including online
dictionaries, which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Serial No. 77299442
11
would fall into a separate class for which an additional fee has
not been paid, the refusal as to these services is well taken.
Decision: The refusal to register as to the Class 41 and 44
services which are the subject of this appeal is affirmed. The
application will go forward as to Classes 9 and 16, and as to the
remaining services in Classes 41 and 44 which are not the subject
of this appeal.