UUSI, LLC DBA NartronDownload PDFTrademark Trial and Appeal BoardFeb 24, 202087753966 (T.T.A.B. Feb. 24, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: February 24, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re UUSI, LLC _____ Serial No. 87753966 _____ Daniel H. Bliss of Howard & Howard Attorneys PLLC for UUSI, LLC. Cynthia R. Smith, Examining Attorney, Law Office 107, Leslie Bishop, Managing Attorney. _____ 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 - 2 - 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 - 3 - 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 - 4 - 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 - 5 - 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 - 6 - 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 - 7 - “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 - 8 - 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 - 9 - 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 - 10 - 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). Copy with citationCopy as parenthetical citation