EX (T.T.A.B. Jan. 30, 2003)

NIIT Ltd.

Trademark Trial and Appeal BoardJan 30, 2003

EX (T.T.A.B. Jan. 30, 2003)

Mailed: January 30, 2003 Paper No. 19 PTH UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re NIIT Limited ________ Serial Nos. 75/888,282; 75/888,284; 75/888,285; 75/888,383; and 75/888,387 _______ Mark B. Harrison of Venable, Baetjer, Howard and Civiletti for NIIT Limited. Cheryl L. Steplight, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _______ Before Simms, Hanak and Hairston, Administrative Trademark Judges. Opinion by Hairston, Administrative Trademark Judge: On January 6, 2000 NIIT Limited filed the above intent-to-use applications to register three composite NIIT marks and the marks BRICK & PORTAL and CENTURY OF THE MIND for goods that were identified as “computer software” in class 9.1 1 These applications also include services in classes 41 and 42. However, the issue on appeal relates solely to the goods in class 9. THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Ser Nos. 75/888,282; 75/888,284; 75/888,285; 75/888,383; and 75/888,387 2 The Trademark Examining Attorney, in her first office action in each of the applications, advised applicant that the identification of goods was unacceptable because it was indefinite and required applicant to specify the function of its computer software. In its responses, applicant stated that it intended to use the marks in connection with a variety of goods and services, and thus, the identification of goods should be accepted “as is.” The Examining Attorney was not persuaded and issued a final office action in each application requiring applicant to amend the identification of goods and refusing to register the mark in the absence of compliance with the requirement. Again, the Examining Attorney pointed out that applicant must indicate the function of its computer programs. Applicant filed a notice of appeal and a request for reconsideration in each application. By way of the request for reconsideration, applicant amended the identification of goods in the applications to read as follows: Computer software for use in conjunction with conducting classes, seminars, and conferences and workshops in the field of computer hardware and software usage and information technology; computer software for use in conjunction with computer consulting services, computer software consulting services, computer software writing services, technical consultation for others in the field of computer aided engineering and Ser Nos. 75/888,282; 75/888,284; 75/888,285; 75/888,383; and 75/888,387 3 engineering drawings, the design of computer software and computer hardware for others and computer programming for others. The Examining Attorney denied each request for reconsideration. Both applicant and the Examining Attorney filed briefs, but no oral hearing was requested. The five cases have been consolidated and this single opinion is being issued for the cases. The sole issue on appeal is whether the identification of goods, as amended, is acceptable. We note that the Board, in an opinion issued September 24, 2002, considered this same issue in eight other applications owned by applicant. For the reasons set forth in that opinion, we find that applicant’s amended identification of goods is unacceptable. A copy of the Board’s opinion is attached. Decision: The requirement to amend the identification of goods and the refusal to register in the absence of an acceptable amendment is affirmed in each application.