Marion L. Lonegro

Trademark Trial and Appeal Board

Apr 12, 2010

No. 76695362 (T.T.A.B. Apr. 12, 2010)

Mailed: April 12, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marion L. Lonegro
________

Serial No. 76695362
_______

Myron Amer of Myron Amer, P.C. for Marion L. Lonegro.

Julie Watson, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).1
_______

Before Grendel, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Marion L. Lonegro to
register in standard characters the mark SENSITIVITY
AWARENESS on the Principal Register for “fund raising and
educational seminars.”2
The trademark examining attorney initially refused
registration under Section 2(e)(1) of the Trademark Act on

1 The involved application was reassigned to the above-noted
examining attorney during prosecution thereof.
2 Application Serial No. 76695362 was filed January 21, 2009,
based on applicant’s allegation of a bona fide intent to use the
mark in commerce under Section 1(b) of the Trademark Act.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76695362
2
the ground of mere descriptiveness. In addition, the
examining attorney noted that the recited services fall
into more than one International Class and required
applicant to clarify or limit the recitation of services,
in accordance with Trademark Rule 2.71(a), by specifying
the type of “fund raising” in International Class 36 and
the subject matter of the “educational seminars” in
International Class 41.
In response thereto, applicant requested that the
recitation of services be amended to “publications for
charitable fund raising” in International Class 16. In
addition, applicant filed an amendment to allege use and
requested amendment of the involved application to seek
registration on the Supplemental Register. With the
amendment to allege use, applicant submitted the following
specimen of use, identified as “an image applied by a
rubber stamp to the packaging of publications used for fund
raising:”

The examining attorney ultimately withdrew the refusal
based upon mere descriptiveness, accepting both the
amendment to allege use and amendment to seek registration
on the Supplemental Register. However, the examining
Ser No. 76695362
3
attorney continued the requirement that applicant submit an
acceptable amendment to the recitation of services and
issued a requirement that applicant submit an acceptable
specimen of use. When the examining attorney made final
these requirements, applicant appealed. Applicant and the
examining attorney filed main briefs and applicant filed a
reply brief.
For the reasons discussed below, we affirm.
Amendment to Recitation of Services
We turn first to our determination with regard to
applicant’s proposed amendment to her recitation of
services. Section 7(c) of the Trademark Act provides, in
part, as follows:
Contingent on the registration of a mark on the
principal register provided by this Act, the
filing of the application to register such mark
shall constitute constructive use of the mark,
conferring a right of priority, nationwide in
effect, on or in connection with the goods or
services specified in the registration….

15 U.S.C. §1057. Thus, the identification of goods or
services in an application defines the scope of those
rights established by the filing of an application for
registration on the Principal Register. See TMEP §1402.06
(6th ed. 2009). An applicant may not expand those rights
through amendment of the identification of goods or
services. See TMEP §1402.06(b) (6th ed. 2009).
Ser No. 76695362
4
In accordance therewith, amendments to the
identification of goods or services are governed by
Trademark Rule 2.71(a), which provides as follows: “The
applicant may amend the application to clarify or limit,
but not to broaden, the identification of goods and/or
services.” 37 C.F.R. §2.71(a). Accordingly, an applicant
may not amend an identification of goods or services to add
or substitute a term that is not logically included within
the scope of the terms originally identified or that is
otherwise qualitatively different from the goods and
services as originally identified. See TMEP §1402.06(a)
(6th ed. 2009). In addition, TMEP §1402.07(d) (6th ed. 2009)
provides, in part, as follows:
If the applicant proposes an amendment to the
identification of goods and services, and the
examining attorney determines that the amendment
is unacceptable, the examining attorney should
refer to the identification of goods before the
proposed amendment to determine whether any later
amendment is within the scope of the
identification. In such a case, the applicant is
not bound by the scope of the language in the
proposed amendment but, rather, by the language
of the identification before the proposed
amendment.

Thus, the scope of the goods or services as originally
identified or as amended by an express amendment,
establishes the outer limit for any later amendments. See
TMEP §1402.07 (6th ed. 2009).
Ser No. 76695362
5
In this case, applicant’s services were originally
identified in her application as “fundraising and
educational seminars.” As noted by the examining attorney,
the wording “fundraising” and “educational seminars” is
indefinite and, in addition, recites services falling into
more than one International Class. See TMEP §1402.03 (6th
ed. 2009). Nonetheless, the recitation clearly encompasses
the services of fundraising in Class 36 and educational
seminars in Class 41. In accordance with the above
authorities, applicant is limited in any proposed amendment
to her recitation of services solely to narrowing or
clarifying the originally recited fundraising and
educational services. Applicant’s proffered amendment of
her recitation of services to goods, namely, “publications
for charitable fundraising” in International Class 16 falls
outside the scope of the original.
Applicant explains her proposed amendment by asserting
in her August 31, 2009 response to the examining attorney’s
Office action that certain charities prohibit telephone or
door-to-door solicitations and that “forsaking telephone
and door-to-door solicitations leaves only solicitation for
charitable fund-raising effort the use of ‘Publications’
and that applicant’s recitation thereof is not outside the
scope of the activity involved” (August 31, 2009
Ser No. 76695362
6
communication, p. 2). However, applicant cites to no
authority to support her apparent contention that
limitations on the manner in which organizations conduct
fundraising allows applicant to amend her recitation of,
inter alia, fundraising services to recite goods falling
outside the scope of the original. To the contrary, it is
settled that once the extent of an identification has been
established, it cannot be expanded later. See In re Swen
Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); and In re M.V Et
Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991). In this
case, the wording “fundraising” and “educational seminars”
establishes the parameters of applicant’s recitation of
services. Applicant therefore is limited in any amendment
solely to narrowing or clarifying the nature and type of
the applied-for “fundraising” and “educational seminars”
with greater particularity. See TMEP §1402.03(a), supra.
Inasmuch as the proposed amendment to the recitation of
services to identify related goods neither narrows nor
clarifies the original recitation of services, it was
properly rejected.3

3 Applicant’s remedy, in the event she seeks to register her mark
for “publications for charitable fundraising,” is to file a new
application for her mark identifying such goods.

Ser No. 76695362
7
Specimen Submitted with Amendment to Allege Use
Next, we turn to our determination regarding
applicant’s proposed specimen of use. While applicant does
not address this refusal to register in her briefing of the
case, we will not consider the matter to be conceded but
rather will consider the refusal on its merits.
Trademark Rule 2.34 provides, in part, that an
application based on use in commerce must include one
specimen showing how the applicant actually uses the mark
in commerce. See 37 C.F.R. §2.34(a)(1)(iv). Trademark
Rule 2.56(b)(2) specifies that a “service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” See 37 C.F.R. §2.56(b)(2).
Section 45 of the Trademark Act provides, in part, that a
service mark is used in commerce “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce....” See 15 U.S.C.
§1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, there must
be a direct association between the mark sought to be
registered and the services specified in the application,
and there must be sufficient reference to the services in
the specimens to create this association. See In re
Ser No. 76695362
8
Monograms America Inc., 51 USPQ 1317 (TTAB 1999). The mark
must be used in such a manner that it would be readily
perceived as identifying the source of such services. In
re Advertising & Marketing Development, Inc., 821 F.2d 614
2 USPQ2d 2010 (Fed. Cir. 1987); and In re Metrotech, 33
USPQ2d 1049 (Com’r Pats. 1993). See also TMEP §1301.04 (6th
ed. 2009). Thus, the issue before us is whether the
specimen of record creates a direct association between
applicant’s SENSITIVITY AWARENESS mark and the services,
namely, fundraising and educational seminars as specified
in the application.
In this case, we first find that the specimen
submitted by applicant with her application displays her
SENSITIVITY AWARENESS mark. Inasmuch as applicant applied
for her mark in standard character form, the mark as it
appears in stylized form in her specimen of use is
considered to agree with the mark as it appears in the
drawing. See Trademark Rule 2.52(a); 37 C.F.R. §2.52(a).
See also TBMP §807.03(e) (6th ed. 2009).
However, we further find that applicant’s specimen
fails to show the requisite direct association between the
mark and the activities described thereunder. Cf. In re
Adair, 45 USPQ2d 1211 (TTAB 1997); and In re Johnson
Controls, Inc., 33 USPQ2d 1318 (TTAB 1994). Specifically,
Ser No. 76695362
9
the specimen is a “stamping applied by a rubber stamp on
the packaging of the goods” (August 31, 2009
communication).4 Nonetheless, applicant applied to register
her mark in connection with services and, as discussed
above, her proposed amendment of the recitation of services
to goods, namely, “publications for charitable
fundraising,” is unacceptable. Because applicant’s
specimen fails to make any reference to the recited
services or otherwise provide any information which creates
a direct association between applicant’s SENSITIVITY
AWARENESS mark and her services, it is not acceptable as
evidence of applicant’s use of her mark in connection with
such services. We note, in that regard, that there is no
evidence of record that charitable fundraising or
educational services are so inherently unusual that the
typical methods of displaying a service mark therefor,
e.g., signage or advertisements, would be unavailable. Cf.
In re Metriplex, Inc., 23 USPQ2d 1315 (TTAB 1992); and In
re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).
As a result, we find that applicant’s specimen fails
to create a direct association between her SENSITIVITY

4 With this communication, applicant also submitted a brochure
from the “Make-A-Wish Foundation” including information regarding
the latter’s fundraising policies. We note, however, that
applicant did not submit such as a substitute specimen and, in
any event, applicant’s mark does not appear on this brochure.
Ser No. 76695362
10
AWARENESS mark and applicant’s recited fundraising and
educational services. We therefore conclude that the
specimen of record is not adequate to support the use of
the mark in connection with the identified services.
Decision: The refusal to register on the ground that
applicant’s proposed amendment of the recitation of
services falls outside the scope of the original recitation
is affirmed. The refusal to register on the ground that
the specimen is unacceptable evidence of service mark use
in connection with the identified services is affirmed.