Astilean

Trademark Trial and Appeal Board

Oct 27, 2008

No. 76655997 (T.T.A.B. Oct. 27, 2008)

Mailed: 10/27/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Astilean
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Serial No. 76655997
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Myron Amer for Aurel A. Astilean.

Tina Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Drost and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Aurel A. Astilean has filed an application to register
the mark LIFE ON DEMAND (“ON DEMAND” disclaimed) for
services identified, as amended, “health, fitness and
exercise instruction, namely, providing physical fitness
instruction.”1
The trademark examining attorney refused registration
on two bases, namely, (1) that applicant’s proposed

1 Application Serial No. 76655997, filed March 1, 2006, alleging
first use anywhere and first use in commerce on September 12,
2005.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76655997
2
amendment to the identification exceeds the scope of the
identification; and (2) that the specimens are unacceptable
inasmuch as they do not show use of the proposed mark in
connection with the identified services.
When the refusals to register were made final,
applicant appealed. Applicant and the examining attorney
filed briefs.
IDENTIFICATION OF GOODS/SERVICES
The original identification in the application as
filed read “health, fitness and exercise instruction;
ongoing television programs in the nature of health,
fitness and exercise instruction.” Applicant specifically
indicated that the identification identified services in
International Class 41. In response to the examining
attorney’s assertion that the identification was
unacceptable, applicant adopted the examining attorney’s
suggested identification to read “health, fitness and
exercise instruction, namely, providing physical fitness
instruction; ongoing television programs in the field of
health, fitness and exercise instruction.” Subsequently,
in a response to a Section 2(d) refusal, the “ongoing
television programs in the field of health, fitness and
exercise instruction” were deleted from the identification,
leaving the identification to read “health, fitness and
Ser No. 76655997
3
exercise instruction, namely, providing physical fitness
instruction.” Applicant then proposed yet another
amendment to the identification, apparently in an attempt
to conform the identification to the substitute specimen.
Applicant attempted to amend the services “health, fitness
and exercise instruction, namely, providing physical
fitness instruction” in International Class 41 to goods
identified as “health, fitness and exercise publications”
in International Class 16. The examining attorney refused
to accept and enter the amended identification because it
exceeded the scope of the identification, as amended.
TMEP §1402.07(b) (5th ed. 2007) provides as follows:
An applicant may amend an ambiguous
identification of goods or services
(i.e., an identification that fails to
indicate a type of goods or services)
in order to specify definite goods or
services within the scope of the
indefinite terminology. The policy
permitting applicants to amend to
specify either goods or services should
be construed narrowly. The applicant
should only be permitted to amend from
goods to services, or vice versa, when
the existing identification of goods
and services fails to specify a
definite type of goods or services and
when the existing identification
provides reasonable notice to third
parties that the applicant may be
providing either goods or services
within the scope of the existing
identification. [emphasis in original]

Ser No. 76655997
4
In the present case there was no such ambiguity because
applicant specifically indicated, in the original
application, that the identification covered services in
International Class 41.
TMEP §1402.07(e) (5th ed. 2007) provides as follows:
Once an applicant amends the
identification of goods or services in
a manner that is acceptable to the
examining attorney, the amendment
replaces all previous identifications,
and thus restricts the scope of
goods/services to that of the amended
language. Further amendments that
would add to or expand the scope of the
recited goods or services, as amended,
will not be permitted. In re Swen
Sonic Corp., 21 USPQ2d 1794 (TTAB
1991); In re M.V Et Associes, 21 USPQ2d
1628 (Comm’r Pats. 1991).

Of particular significance in the present case is the rule
that an applicant may not amend a definite identification
of goods to specify services, or vice versa. TMEP
§1402.07(c) (5th ed. 2007).
Here applicant’s amended identification of services
“health, fitness and exercise instruction, namely,
providing physical fitness instruction” in International
Class 41 is acceptable as a definite identification. Thus,
applicant is precluded from amending the definite
identification of services to specify goods as applicant
attempted in this case. Further, the goods listed in the
Ser No. 76655997
5
proposed amendment clearly exceed the scope of the services
in the identification.
Accordingly, the refusal to enter and accept the
amendment to the identification is well taken.
SPECIMENS
In view of our decision regarding the identification,
the operative identification for purposes of determining
the acceptability of the specimens covers services in
International Class 41. The identification reads “health,
fitness and exercise instruction, namely, providing
physical fitness instruction.”
Trademark Rule 2.56(b)(2) requires that a service mark
specimen must show the mark as actually used in the sale or
advertising of the services recited in the application.
Acceptable specimens may include newspaper and magazine
advertisements, brochures, billboards, handbills, direct-
mail leaflets, and the like. TMEP §1301.04 (5th ed. 2007).
Where the mark is used in advertising the services, the
specimen must show a direct association between the mark
and the services for which registration is sought. See In
re DSM Pharmaceuticals, 87 USPQ2d 1623, 1626 (TTAB 2008).
A specimen that shows only the mark, with no reference to
the services, does not show service mark usage. In re
Ser No. 76655997
6
Adair, 45 USPQ2d 1211 (TTAB 1997); and In re Johnson
Controls, Inc., 33 USPQ2d 1318 (TTAB 1994).
A copy of the original specimen is reproduced below.

The original application indicates that the mark is used
“on promotional materials” and that the specimen shows the
mark as actually used. The examining attorney contends
that the specimen is merely “a picture or a rendering” of
the proposed mark, and that it fails to show an association
between the mark and the identified services. Applicant
contends that it obtained a registration of SPEEDFIT based
on the same specimen, and “since the specimen was deemed
acceptable for SPEEDFIT, it should also be deemed
acceptable for LIFE ON DEMAND.”
Applicant also submitted a substitute specimen,
supported by a declaration. A copy of the substitute
specimen, identified as a “stamping,” is reproduced below.
Ser No. 76655997
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The Examining Attorney again refused to accept the specimen
because it did not reference the services identified in the
application. Applicant merely states that the specimen is
in the nature of a “stamping.”2
Although the mark is shown in each of the specimens,
there is no reference whatsoever to the services; thus, the
specimens do not show service mark usage. In re Adair, 45
USPQ2d at 1215 [“While the nature of the services does not
need to be specified in the specimens, there must be
something which creates in the mind of the purchaser an
association between the mark and the service activity.”].
In the two specimens of record, we find nothing that would
create in the mind of the purchaser a direct association
between applicant’s mark and the purported services.
We are not persuaded by applicant’s statement that the
same specimens were accepted in a co-pending application
that has matured into a registration. As often stated,

2 The substitute specimen accompanied an amendment to the
identification to list goods in International Class 16 (“health,
fitness and exercise publications”), discussed supra. While a
stamping may be acceptable to show use of a designation as a
trademark applied to goods, this specimen, as indicated above,
does not show service mark usage.
Ser No. 76655997
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each case must be decided on its own merits. Neither the
Board nor the Office is bound by the prior actions of
examining attorneys. In re Sunmarks, 32 USPQ2d 1470 (TTAB
1994). See also TMEP §1207(d)(vi) (5th ed. 2007).
The refusal based on applicant’s failure to comply
with the requirement to submit acceptable specimens showing
service mark use is well taken.

Decision: The refusals to register are affirmed.