Gina Marie Slattery and Kris Johnson

Trademark Trial and Appeal Board

Sep 23, 2008

No. 78887793 (T.T.A.B. Sep. 23, 2008)

Mailed: September 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gina Marie Slattery and Kris Johnson
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Serial Nos. 78887793 and 78887799
_______

Laura J. Zeman of Snell & Wilmer for Gina Marie Slattery
and Kris Johnson.

Ingrid C. Eulin, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Walters, Drost and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Gina Marie Slattery and Kris Johnson (“applicants”)
seek registration on the Principal Register of the marks
COMPACT WITH AN EDGE1 and COMPACT WITH AN ATTITUDE,2 both in

1 Serial No. 78887793, filed May 19, 2006. The application was
filed on the basis of and allegation of a bona fide intention to
use the mark in commerce, under Trademark Act Section 1(b), 15
U.S.C. §1051(b). The application includes a disclaimer of EDGE
apart from the mark as a whole.

2 Serial No. 78887799, filed May 19, 2006. The application was
filed on the basis of and allegation of a bona fide intention to
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 78887793 and 78887799
2
standard character form, for, as amended, “multi-function
pocket/pocketbook tool, namely, a small multi-function tool
having a combination of tools including two or more of a
pocket knife, scissors, shears, razor, bottle opener,
corkscrew, nail file, nail clippers, flashlight, whistle,
mirror, defensive spray, tweezers, screwdriver, mirror, and
needle and thread,” in International Class 8.
Because the issue on appeal is the same in both
applications, we are deciding these appeals together and
issuing this single opinion.
At issue in these appeals is the Trademark Examining
Attorney’s final refusal to register applicants’ marks on
the ground that the identification of goods is indefinite
in each application. See Trademark Act Section 1(b)(2), 15
U.S.C. §1051(b)(2), and Trademark Rule 2.32(a)(6), 37
C.F.R. §2.32(a)(6). The appeal is fully briefed.
As a preliminary matter, in each case, applicants
submitted copies of third-party registrations with their
briefs and the examining attorney has objected thereto. We
agree that this evidence is untimely, as all evidence must
be submitted prior to appeal, and, therefore, we have not
considered this evidence. See, 37 CFR 2.142(d); and In re

use the mark in commerce, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
Ser. Nos. 78887793 and 78887799
3
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Moreover, even if we were to consider this evidence, it
would not affect our decision in these cases as the fact
that an identification of goods or services was accepted in
an earlier-filed application or prior registration does not
necessarily mean it is controlling in a later-filed
application. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d
1541 (Fed. Cir. 2007).
Also preliminarily, we note that, in each application,
applicants filed a request for reconsideration which
included an amendment to the identification of goods. This
amendment was entered into the record in each application
and is the operative identification of goods on appeal.3
While the examining attorney sets out in her brief
essentially four reasons for her conclusion that the
identification of goods is indefinite, we find that her
argument principally relies on her contention that the use of
the word “including” is not “sufficiently specific and all-
inclusive” because it “permits a multitude of combinations
that have not been identified.” (Brief, unnumbered p. 3.)
Her other contentions about classification depend, first and

3 We note that the examining attorney issued a general denial of
the request for reconsideration. She neither informed applicant
that their amendment had been entered nor offered applicants any
further explanation as to why the amended identification of goods
is unacceptable.

Ser. Nos. 78887793 and 78887799
4
foremost, on her position that the identification of goods is
not all-inclusive.
On the other hand, applicants do not specifically
address what we have construed as the primary reason for
the examining attorney’s refusal. Instead, applicants
focus on the argument that the fact that goods may fall in
multiple classes does not make the description of goods
indefinite. Applicants contend that their identification
of goods is acceptable, stating that “the conclusion that a
term would clearly include terms classified in more than
one class should not be drawn unless reasonable, in light
of the commercial relationships between all the goods or
services identified in the application,” citing TMEP
§1402.03, guideline one. (Brief, p. 2.) Applicants refer
to their improperly submitted evidence to argue that the
USPTO has “allowed registration in International Class 8 of
a number of similar multi-function tools” and “allowed
registration of a number of marks for a multi-function
pocket tool containing multiple instruments without
requiring the registrant to identify and list the multiple
functions and/or instruments.” (Id.)
“It is within the discretion of the PTO to require
that one's goods be identified with particularity.” In re
Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA
Ser. Nos. 78887793 and 78887799
5
1980), aff’g In re Water Gremlin Company, 204 USPQ 261
(TTAB 1979). See also, In re Societe General des Eaux
Minerales de Vittel, 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d
on other grounds, 824 F.2d 457, 3 USPQ2d 1450 (Fed. Cir.
1987) and cases cited therein. The question before us is
whether the examining attorney abused this discretion.
The USPTO has consistently taken the position that the
identification of goods must be all-inclusive; and, thus,
that open-ended language suggesting additional items may be
part of the goods covered by the application/registration
is unacceptable. This prohibition almost always includes
use of the word “including” because, in the context of an
identification of goods, it usually means “such as” or “for
example.” See TMEP §1402.03(a). We take judicial notice
of the definition in Merriam-Webster’s Collegiate
Dictionary (11th ed. 2003) of “include” as, in relevant
part, “to take in or comprise as a part of a whole or
group” and “INCLUDE suggests the containment of something
as a constituent, component, or subordinate part of a
larger whole.”
The determination of whether the term “including”
renders the identification of goods indefinite must be
decided on a case-by-case basis in the context of the goods
so identified. We must determine what is a reasonable
Ser. Nos. 78887793 and 78887799
6
understanding of this identification of goods. In this
case, the product is a pocket tool consisting of a
combination of at least two items. The identification of
goods states: “a small multi-function tool having a
combination of tools including two or more of ….” This
statement is followed by a definite list of seventeen
items. However, the term “including” refers to the
“combination of tools” on any particular pocket tool and,
in this context, the term “including” is not all-inclusive.
Rather, as in many unacceptable identifications of goods,
it means “for example” or “such as,” suggesting that the
list of seventeen items are illustrative examples of the
items that can be combined on the pocket tool. In other
words, the pocket tool may include, but is not limited to,
the illustrative list of seventeen different items.
Therefore, the identification of goods is indefinite
because of the use of the word “including,” and the
examining attorney properly required applicants to amend
their identification of goods to replace the indefinite
word “including” in each application.4
Decision: The refusal to register is affirmed.

4 An example of a proper identification of goods in International
Class 8 would be “a multi-function pocket tool consisting of a
pocket knife and screwdriver and which may also include ….”