Midwest Trading Group, Inc.

Trademark Trial and Appeal Board

Feb 13, 2008

No. 76666044 (T.T.A.B. Feb. 13, 2008)

Mailed: February 13, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Midwest Trading Group, Inc.1
_______

Application No. 76666044
_______

Myron Amer, Myron Amer, PC, for applicant.

Christopher M. Ott, Examining Attorney, Michael W. Baird,
Managing Attorney, Law Office 116.
_______

Before Seeherman, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark JOURNEY’S
EDGE2 (standard characters) for the following goods:
Household goods, namely, household utensils,
namely, graters and kitchen ladles, containers for
kitchen use, namely, pails and metal and plastic
pans, small hand-operated apparatus for mincing,
grinding and pressing, candle extinguishers,
electric hair combs and toothbrushes, dish stands
and decanter stands.

International Class 21.
Procedural History
Upon initial examination, the Examining Attorney issued
an office action, requiring amendment of the identification

1 Substituted for Glaze, Inc., pursuant to assignment, recorded
on December 12, 2007, at Reel 3680, Frame 0274.
2 Filed September 14, 2006, based on the allegation of a bona
fide intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76666044
2
of goods and proper classification. “[S]mall hand-operated
apparatus for mincing” was deemed to be improperly
classified in International Class 21, and “small hand-
operated apparatus for ... pressing” was deemed to be
indefinite without further definition. Suggestions for
appropriate corrective action were given and applicant was
advised that any proposed amendment must be within the scope
of the application as filed.
In response, applicant did not dispute the merits of
the examining attorney’s requirement,3 but responded in
significant part as follows:
Please delete the present description of the
goods and substitute in lieu thereof:

–Class 8: Small hand operated apparatus,
namely a crank-powered torch radio and
battery-powered LED booklight.–

The amendment is permitted pursuant to 37
C.F.R. § 2.71(a) because it clarifies and limits
the hand operated apparatus. The hand operation
of the LED booklight is turning it on to read and
off to sleep. The hand operation of the torch
radio is the cranking.

Response to Office Action, May 17, 2007.
On June 19, 2007, the Examining Attorney issued a final
requirement for an acceptable identification of goods,
finding that the “torch radio” and “battery-powered LED
booklight” which were the subject of applicant’s proffered

3 To be clear, we find the examining attorney’s requirements with
respect to the original identification of goods to be entirely
proper.
Application No. 76666044
3
amendment were entirely outside the scope of the application
as filed, and that the original identification remained
unacceptable. The Examining Attorney attached to his final
action dictionary definitions of the words involved in the
identification of goods and the proffered amendment.
Following final refusal, applicant requested
reconsideration based on the same arguments now raised on
appeal. The request was summarily denied.4
Applicant appealed. We affirm.
Applicable Law
“The applicant may amend the application to clarify or
limit, but not to broaden, the identification of goods
and/or services.” Trademark Rule 2.71(a); 37 C.F.R.
§ 2.71(a). In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r
1991); see In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB
1991)(rule also applies to subsequent amendments). As is
clear from its response to the first office action,
applicant – and its counsel – are aware of Trademark Rule
2.71(a), and its applicability to this amendment.

4 Applicant’s request for reconsideration indicates the likely
reason for the amendment: Counsel noted that aplicant sent a
cease and desist letter to a third party who was allegedly
selling “crank-powered torch radio[s]” and “battery-powered LED
booklights” under the JOURNEY’S END mark. Counsel urged approval
of the amendment because “to obtain legal redress, ... applicant
requires the issuance of a registration of JOURNEY’S EDGE for the
amended goods now being sought.” Req. for Recon., July 12, 2007.
Application No. 76666044
4
Discussion
Applicant urges that its amendment should be allowed,
because its original identification of goods includes the
words “small hand-operated apparatus,” and the radio and LED
booklight identified in its subsequent amendment are both
“1. Hand operated; and 2. Apparatus.”
This argument is entirely without merit, and relies on
an obviously erroneous construction of its originally-filed
identification of goods. The relevant wording in the
original identification of goods is:
small hand-operated apparatus for mincing,
grinding and pressing...

Emphasis added.
This clause does not identify “small hand-operated
apparatus” without limitation, as applicant would have us
believe. Rather, the plain meaning of this language is that
the term “apparatus” is limited to apparatus which may be
reasonably used for “mincing, grinding and pressing.”
It does not appear – and applicant does not argue –
that a “crank-powered torch radio” or a “battery-powered LED
booklight” can be used for “mincing, grinding [or]
pressing.” Because these goods cannot meet the limitation
in the original identification of goods, their addition to
this application would constitute a broadening, rather than
Application No. 76666044
5
limiting or clarifying, amendment, and are therefore
prohibited under Trademark Rule 2.71(a).5
Decision: The examining attorney’s requirement for an
acceptable identification of goods, including his refusal to
approve applicant’s amendment, is accordingly affirmed.

5 While applicant’s argument on appeal and before the examining
attorney focused on the “small hand-operated apparatus” language,
we note that the newly added goods do not appear to fall within
the scope of any of the other originally-identified goods.