Brian M. Kroll

Trademark Trial and Appeal Board

Apr 29, 2009

No. 76687931 (T.T.A.B. Apr. 29, 2009)

Mailed: April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brian M. Kroll
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Serial No. 76687931
Filed: March 20, 2008
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Myron Amer, Myron Amer, P.C. for Brian M. Kroll.

Dawn Han, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
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Before Kuhlke, Bergsman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Applicant seeks registration of MY SON THE BUM (in
standard characters) for “song lyrics of a rock-and-roll
band’s music” in International Class 16.1 The examining
attorney refused registration pursuant to Trademark Act
Section 1, 2 and 45, 15 U.S.C. §§ 1051, 1052, and 1127, on
the ground that applicant’s mark is merely the title of a
single creative work. This refusal was maintained

1 Based upon first use and first use in commerce as of April 1,
2007. The identification of goods is one of the issues on
appeal.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76687931
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throughout the prosecution of the application, and was made
final. Applicant did not address this issue in his appeal
brief. Accordingly, we consider that applicant has waived
any appeal on this ground.
The examining attorney also issued a final refusal for
applicant’s failure to comply with a requirement for an
acceptable identification of goods which does not exceed
the scope of a previously approved identification of goods.
Trademark Rule 2.71(a); 37 CFR §2.71(a). See the
discussion below. After the refusals to register were made
final, applicant appealed the requirement for an amended
identification of goods. This is the sole issue on appeal,
and the sole ground that we consider in this decision.
I. Identification of Goods
In order to address the examining attorney’s
requirement respecting applicant’s identification of goods,
we set out the relevant prosecution history on this issue.
A. Background
Applicant’s original application, filed on March 20,
2008, identified its services as follows: “musical rock and
roll band” in International Class 41. In support of its
identified services, applicant submitted as its specimen of
use a copy of a CD cover.
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The examining attorney issued an office action on June
30, 2008, refusing the application as merely a title of a
single work, based on the specimen of use; failure to
function as a service mark inasmuch as a CD cover does not
support use for alleged entertainment services; and a
requirement for applicant to amend its identification
inasmuch as it was indefinite. The examining attorney
suggested the following identifications: Pre-recorded CDs
featuring music by a rock-and-roll musical band in
International Class 9; and/or Entertainment, namely, live
performances by a rock-and-roll musical band in
International Class 41.
On July 21, 2008, applicant amended the identification
to: “pre-recorded CDs featuring music by a rock-and-roll
musical band” in International Class 9.2 While this
amendment satisfied the identification requirement and
mooted the failure to function refusal, it did not obviate
the refusal that the proposed mark was merely the title of
a single work, namely, the one CD evidenced by the original
specimen of use.

2 Applicant chose to amend its identification of goods to the
International Class 9 goods, presumably so that they would match
the specimen of use, rather than amending to the entertainment
services with substitute specimens to support use in connection
with services, i.e., brochures, advertisements, etc. An
amendment to services with substitute specimens would have
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In view thereof, on August 5, 2008, the examining
attorney accepted the amendment to the identification of
goods and issued a final refusal as to the remaining issue.
On August 20, 2008, applicant filed a response to the
refusal stating that “MY SON THE BUM-identified pre-
recorded CDs is a series in which the content of the CDs is
changed.” Applicant did not support this response with any
specimens to indicate a series. The listing provided by
applicant appears to be simply the list of songs on a
single CD.
Thereafter, on September 29, 2008, applicant requested
further amendment to the identification of goods as
follows: “a publication featuring song lyrics of music by a
rock-and-roll musical band,” in International Class 16.
Applicant also submitted what it characterized as “the
specimen of the publication” but which appears to be a copy
of the front and back pages of the CD insert originally
submitted.
The examining attorney rejected this identification
via an office action dated October 10, 2008 since it
“exceeds the scope” of the July 21 identification, the last
identification accepted into the record.

obviated the substantive refusal issued against the International
Class 9 goods.
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On November 3, 2008, applicant again requested
amendment of the identification to: “song lyrics of a rock-
and-roll band’s music,” (no International Class specified,
although the Office recorded the submission as being in
International Class 16).
The amendment was rejected by the examining attorney
on November 24, on the same grounds as previously
discussed, the refusals to register were made final, and
applicant appealed the requirement.
B. Analysis
The applicable rule reads as follows: “The applicant
may amend the application to clarify or limit, but not to
broaden, the identification of goods....” Trademark Rule
2.71(a). Further, it is the policy of the USPTO that an
unacceptable amendment is not construed to restrict or
narrow a previous amendment. Rather, the last acceptable
amendment remains operative unless and until a further
acceptable amendment is entered. Trademark Manual of
Examining Procedure (TMEP) § 1402.07(d) (5th ed. 2007).
The last identification accepted into the record was
applicant’s July 21 amendment: “pre-recorded CDs featuring
music by a rock-and-roll musical band.”
1. September 29 Amendment
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We agree with the examining attorney that applicant’s
identification of goods in the proposed September 29, 2008,
amendment is unacceptable. Applicant’s July 21, 2008,
amendment, the last identification accepted into the
record, refers specifically to “pre-recorded CDs.”
Therefore the only “music” or association with a “rock-and-
roll musical band” as accepted in the record refers to the
actual CDs. Accordingly, applicant’s proposed September 29
amendment to “a publication featuring song lyrics of music
by a rock-and-roll musical band,” is outside the scope of
the July 21 amendment. In particular, a CD is not commonly
or conventionally defined as a “publication.” Accordingly,
a “publication” may only be within the scope of a “pre-
recorded CD” if it so states within the original
identification of goods, which it does not in this case.
Instead, the September 29 amendment would encompass not
only “a publication featuring song lyrics” as displayed on
a CD jacket, but also any other type of publication of song
lyrics, such as printed music books, Internet postings, and
any other method of “publication.” The September 29
amendment was correctly refused.
2. November 3 Amendment
We likewise agree with the examining attorney that the
November 3, 2008, amendment is unacceptable. To recap, the
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July 21 amendment, the last identification accepted into
the record, reads: “pre-recorded CDs featuring music by a
rock-and-roll musical band.” Applicant’s November 3
amendment proffered the following amendment: “song lyrics
of a rock-and-roll band’s music.”
This amendment suffers the same infirmity as the
September 29 amendment, which is that it exceeds the scope
of the last identification accepted into the record. Like
the September 29 amendment, the November 3 amendment does
not contain the limitation of a “pre-recorded CD.” Thus,
while the November 3 “song lyrics” may be featured on a
“pre-recorded CD,” they may also be printed, posted, or
otherwise displayed or distributed through various means
unrelated to a “pre-recorded CD.”
II. Conclusion
We conclude that applicant’s current identification of
goods is not acceptable. Accordingly, we affirm the
examining attorney’s refusal to register in light of her
final requirement for an acceptable identification of
goods. We do not address the merits of the additional
final refusal to register made pursuant to Trademark Act
Section 1, 2 and 45, 15 U.S.C. §§ 1051, 1052, and 1127, on
the ground that applicant’s mark is merely the title of a
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single creative work, since applicant did not address that
ground in his appeal brief.
Decision: The refusal to register under Trademark
Rule 2.71(a) is accordingly affirmed.