UUSI, LLC DBA Nartron

Trademark Trial and Appeal Board

Feb 24, 2020

87753966 (T.T.A.B. Feb. 24, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re UUSI, LLC
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Serial No. 87753966
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Daniel H. Bliss of Howard & Howard Attorneys PLLC for UUSI, LLC.

Cynthia R. Smith, Examining Attorney, Law Office 107,
Leslie Bishop, Managing Attorney.
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Before Wolfson, Larkin, and Lebow,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
UUSI, LLC (“Applicant”) seeks registration on the Principal Register of the mark
CLEAR VISION SAFETY SYSTEM (“SAFETY SYSTEM” disclaimed) in standard
characters for goods identified as follows:
System for vehicle windshields and windows, headlight, led
lamp, camera lens, lidar lens, radar lens, sensor washing
fluid heater adapted to be attached to vehicle windshields
and windows, headlight, led lamp, camera lens, lidar lens,
radar lens, sensor for heating the washer fluid prior to
being sprayed on vehicle surfaces for cleaning and/or de-
icing purposes
Serial No. 87753966
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in International Class 11.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the grounds that the identification of goods as written is indefinite and that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark CLEAR VISION (in standard characters) registered on the Principal
Register for “Automotive lighting headlights for vehicles” in International Class 112
as to be likely to cause confusion, mistake or deception under Trademark Act Section
2(d), 15 U.S.C. § 1052(d).
After the Examining Attorney issued a Final Office Action on these refusals,
Applicant appealed to the Board and filed a Request for Reconsideration. After the
Examining Attorney denied Applicant’s Request for Reconsideration, the Board
resumed the appeal and briefs were filed.
We affirm the Examining Attorney’s requirement for a definite identification of
goods. In view thereof, we do not reach the refusal under Trademark Act Section 2(d).
I. Requirement for a Definite Identification of Goods
Under Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6), a complete trademark
application includes a “list of the particular goods or services on or in connection with
which the applicant uses or intends to use the mark.” The identification of goods must
be “specific, definite, clear, accurate, and concise.” TRADEMARK MANUAL OF

1 Application Serial No. 87753966 was filed on January 12, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
anywhere, and first use of the mark in commerce, at least as early as May 25, 2016.

2 Registration No. 3957186, issued May 10, 2011, Sections 8/15 combined declaration
accepted and acknowledged.
Serial No. 87753966
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EXAMINING PROCEDURE (TMEP) § 1402.01. “An identification that fails to identify the
goods and services with specificity is indefinite, either because the nature of the goods
or services is not clear or because the wording is so broad that it may include goods
or services in more than one class.” Id. The primary purposes for requiring a clear
identification of the goods in a trademark application are (i) to allow for informed
judgments concerning likelihood of confusion under 15 U.S.C. § 1052(d), and (ii) to
allow for the proper classification of the goods. In re Faucher Indus. Inc., 107 USPQ2d
1355, 1358 (TTAB 2013); see also In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541,
1543-44 (Fed. Cir. 2007) (finding “scope of the term ‘chronographs’ is ambiguous for
registration purposes, for it includes both watches and time recording devices”); In re
Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980) (“It is within the
discretion of the PTO to require that one’s goods be identified with particularity.”).
II. Background
In her initial Office Action, the Examining Attorney rejected the identification
of goods as being indefinite and suggested that Applicant adopt the following
wording:
Heaters for vehicles, namely, heating systems for vehicle
windshields, windows, headlights, LED lamps, camera
lenses, lidar lenses, and sensors adapted for attachment
thereto for heating washer fluid prior to being sprayed on
vehicle surfaces for cleaning and de-icing purposes.
Applicant did not adopt this identification, but proposed its own, similar, amendment
(Amendment I):
Heating systems for vehicle windshields, windows,
headlights, led lamps, camera lens, lidar lens, radar lens,
Serial No. 87753966
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and sensors adapted for attachment thereto for heating
washer fluid prior to being sprayed on vehicle surfaces for
cleaning and/or de-icing purposes.
The Examining Attorney rejected Amendment I, finding it continued to lack the
“requisite specificity for examination” because it did not indicate the “parts or
components” of the heating system. November 18, 2018, Final Office Action at
TSDR 1. The Examining Attorney suggested that Applicant also change “adapted for
attachment thereto” to “adapted for attachment to vehicle windshields, windows, and
headlights.” Id. In response, Applicant amended the identification in compliance with
the “parts and components” requirement, and also changed “adapted for attachment
thereto” to “adapted for attachment to vehicles” (Amendment II):
Heating systems for vehicle windshields and windows
comprised of heater module, controller module, vehicle and
interconnect harnesses, switch assembly, and pressure
relief valve adapted for attachment to vehicles for heating
washer fluid prior to being sprayed on vehicle surfaces for
cleaning and de-icing purposes.
The Examining Attorney refused to accept Amendment II on the ground that it
impermissibly broadened the scope of the goods by stating that the heating systems
were adapted for attachment to “vehicles,” because “attachment thereto” in the
original identification related back to specific vehicle parts, and not “vehicles” in
general. See Applicant’s Request for Reconsideration, 4 TTABVUE 6, and the
Examining Attorney’s denial thereof, 5 TTABVUE 3.
On appeal, Applicant argued against the Section 2(d) refusal based on the
identification of goods as set forth in Amendment II. The Examining Attorney argued
in favor of the refusal on the basis of the original identification of goods. In its Reply
Serial No. 87753966
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Brief, Applicant requested a further amendment to change the “adapted for
attachment” language to “adapted for attachment to vehicle windshields and
windows” (Amendment III):
Heating systems for vehicle windshields and windows
comprised of heater module, controller module, vehicle and
interconnect harnesses, switch assembly, and pressure
relief valve adapted for attachment to vehicle windshields
and windows for heating washer fluid prior to being
sprayed on vehicle surfaces for cleaning and de-icing
purposes.
11 TTABVUE 2.
Applicant urges the Board to consider Amendment III, but that if the Board finds
that Amendment III is unacceptable, then the Board should accept Amendment II,
as it arguably did not unduly broaden the scope of the identification of goods. 11
TTABVUE 3-5.3 The Examining Attorney urges us to treat the original identification
of goods as operative. 10 TTABVUE 4-6.

3 Counsel for Applicant notes that the Examining Attorney “could have contacted Counsel for
Applicant to resolve this issue prior to submitting her appeal brief without wasting the
Board’s time to consider this issue.” 11 TTABVUE 5. Unfortunately, neither the Examining
Attorney, nor Applicant, took the time to speak with one another on the telephone to try to
resolve the identification issue. As the Board pointed out in Faucher Indus., 107 USPQ2d at
1358:
[I]t is clear that the applicant’s best option for resolving the issue
of the identification and classification of its goods (and, in our
view, the only option having a good likelihood of success) would
have been to engage in a more open and frank discussion with
the examining attorney. Examination procedures provide ample
time for discussion and resolution of the issues raised by an
application.
Serial No. 87753966
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III. Amendment III is Untimely
The Board does not sua sponte, during appeal, amend an identification of goods.
Under Trademark Rule 2.142(f)(1), 37 C.F.R. § 2.142(f)(1), the Board can sua sponte
remand the application to the Examining Attorney, but only for consideration of an
“issue not previously raised [that] may render the mark of the appellant
unregistrable.” Otherwise, remand is available only upon request by the applicant or
the examining attorney. See In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039
(TTAB 2019); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 1209.01. Here, consideration of Applicant’s proposal to amend its identification
would not result in an additional requirement or ground for refusal. Accordingly, the
Board may not sua sponte remand for consideration of Applicant’s proposed
Amendment III.
The Board, however, construes Applicant’s proposal as a request for remand,
although the better practice would have been for Applicant to have filed a separate
electronic submission through ESTTA, requesting remand and suspension of
proceedings in the appeal. See TBMP § 1205.01. Either way, Applicant must show
good cause for the request. See TBMP § 1209.04 (“No matter what the purpose, the
request for remand must include a showing of good cause.”).
“In determining whether good cause has been shown, the Board will consider both
the reason given and the point in the appeal at which the request for remand is
made.” In re Thomas White Int’l Ltd, 106 USPQ2d 1158, 1160 n.2 (TTAB 2013). As
good cause for remand, Applicant contends that it is “not attempting to broaden the
identification of goods,” but rather proposed the modifications in Amendment III to
Serial No. 87753966
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“forward prosecution of the application” and “to agree on the identification of goods
offered by the Examining Attorney in the Examining Attorney’s Appeal Brief [sic, in
the Final Office Action dated November 18, 2018] and eliminate this issue on appeal.”
11 TTABVUE 4.4
Although the newly proposed amendment may obviate the requirement for a
definite statement of goods, the timing of the proposal weighs heavily against a
finding of good cause. We previously remanded the application for consideration of
Applicant’s Request for Reconsideration, which included proposed Amendment II. In
light of the delay, we find no good cause shown for a remand at this time. See Thomas
White, 106 USPQ2d at 1160 n.2 (“Even if a request for remand had been filed, at this
late juncture applicant would not be able to show good cause”); cf. In re Big Pig Inc.,
81 USPQ2d 1436, 1437-38 (TTAB 2006) (applicant’s request for remand after filing
of reply brief denied; because proposed claim of ownership of a registration was
irrelevant, and clarification of the nature of its typed drawing was unnecessary,
applicant failed to show good cause).5

4 In her Final Office Action, the Examining Attorney proposed: “Heating systems for vehicle
windshields, windows, and headlights comprised of heater module, controller module, vehicle
and interconnect harnesses, switch assembly, and pressure relief valve adapted for
attachment to vehicle windshields, windows, and headlights for heating washer fluid prior to
being sprayed on vehicle surfaces for cleaning and de-icing purposes.” The Examining
Attorney’s proposed identification differs from Amendment III only by its inclusion of the
term “headlights” in two places. The term “headlights” is omitted from Amendment III.
5 Applicant is not precluded from refiling its application with a different identification of
goods. We express no opinion regarding any such later-filed application.
Serial No. 87753966
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IV. Amendments I and II are Moot
The Examining Attorney rejected Applicant’s proposed amendments I and II.
Amendment I was refused as being indefinite because it did not list the components
of the heating system. See TMEP 1401.05(d) (“In general, the USPTO will not accept
identifications of goods described as ‘systems.’ The examining attorney must require
an amendment to the identification. The amended identification must specify the
nature, purpose, or use of the system and its primary parts or components.”).6
In Amendment II, the composition of the “system” was clarified, but the wording
“adapted for attachment to vehicles,” which replaced the original phrase “adapted to
be attached to vehicle windshields and windows,” impermissibly expanded the scope
of the identification of goods and was properly rejected. Because the Examining
Attorney properly rejected Amendments I and II, and because the construed Request
for Remand to consider Amendment III is untimely, the original identification of
goods remains operative. Cf. TMEP § 1402.07(d) (“If the applicant proposes an
amendment to the identification of goods or services, and the examining attorney
determines that the amendment is unacceptable, the examining attorney should refer
to the identification of goods or services before the proposed amendment to determine
whether any later amendment is within the scope of the identification.”).

6 The Examining Attorney should have made this clear in her first Office Action because even
though Applicant’s Amendment I was overly broad, it essentially conformed to that suggested
by the Examining Attorney in the first Office Action. Moreover, the specimen of record (the
“Installation and Operation Manual”) listed the components of the system and could have
informed the Examining Attorney’s suggested amendment in the first Office Action. As noted
above, Applicant’s counsel could have also contacted the Examining Attorney to try to reach
an agreement on a mutually acceptable description.
Serial No. 87753966
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V. Applicant’s Original Identification of Goods is Indefinite
Applicant’s original identification of goods was properly refused as indefinite. It is
ambiguous; first describing a system for certain vehicle parts (“windshields and
windows, headlight, led lamp, camera lens, lidar lens, radar lens, sensor”), but then
describing a “washing fluid heater” that may or may not be comprised of these parts,
and which is apparently intended itself to be attached to vehicle parts (that may be
the “windshields and windows, headlight, led lamp, camera lens, lidar lens, radar
lens, sensor” referred to at first). The purpose of the product is clear, i.e., to heat
vehicle washer fluid in order to clean or de-ice vehicle surfaces, but whether or not
these surfaces include windshields, windows, headlights, etc., or whether the heater
is comprised of these parts, is unclear.7
Accordingly, we affirm the Examining Attorney’s decision, pursuant to Trademark
Rule 2.71(a), not to allow Applicant’s proposed amendments to the identification of
goods and to reject the original identification of goods as indefinite.
VI. Conclusion
Failure to comply with a legitimate requirement is sufficient grounds for refusal
of registration. See, e.g., In re Fiat Grp. Mktg. & Corp. Commc’ns S.P.A., 109 USPQ2d
1593, 1599 (TTAB 2014) (applicant’s failure to comply with a requirement pursuant
to 37 C.F.R. § 2.71(a) for an acceptable identification of services is grounds for refusal
to register as to the specified services). Moreover, our ability to assess the substantive

7 As noted above, the specimen of record listed the components of the system. A conversation
between the Examining Attorney and Applicant to discuss the nature of the goods,
particularly in light of the specimen, may have obviated the need for appeal on this issue.
Serial No. 87753966
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merits of the likelihood of confusion refusal has been hindered by our inability to
accurately determine the nature of the goods for which Applicant seeks registration.
In view of our decision affirming the refusal based on indefiniteness under
Trademark Rule 2.71(a), we need not and do not reach the Trademark Act Section
2(d) likelihood of confusion refusal. See In re Brack, 114 USPQ2d 1338, 1343 (TTAB
2015) (declining to reach refusal under Section 2(d) because applicant failed to comply
with the requirement to submit a signed and verified application); DTI P’ship, 67
USPQ2d at 1702 (declining to reach merits of refusal under Section 2(e)(1) in view of
applicant’s failure to comply with information request under Trademark Rule
2.61(b)); cf. In re Rainier Enters., LLC, 2019 TTAB LEXIS 385, *7 (TTAB 2019)
(dismissing appeal where Applicant did not address requirements in its appeal brief
and declining to reach substantive refusal under Section 2(d); application
abandoned).
Decision: We affirm the Examining Attorney’s final refusal to register
Applicant’s mark based on Applicant’s failure to comply with the requirement for a
definite statement of goods. In view thereof, we do not reach the refusal under
Trademark Act Section 2(d).