William O’Neill Foundation

Trademark Trial and Appeal Board

Feb 19, 2004

No. 75742677 (T.T.A.B. Feb. 19, 2004)

Mailed: 19 FEB 2004
Paper No. 17
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William O’Neill Foundation
________
Serial No. 75742677
_______
Stephanie Furgang Adwar1 of Furgang & Adwar, L.L.P. for the
William O’Neill Foundation.
Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On July 2, 1999, the William O’Neill Foundation2
(applicant) applied to register the mark EQOP, in typed
form, on the Principal Register for goods and services
originally identified as:
1 Applicant’s current attorney was not the attorney who filed the
brief in this case.
2 Applicant has identified itself as the William O’Neill
Foundation in its application. In other papers filed
simultaneously with the application, it is identified as the
William W. O’Neill Foundation.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75742677
2
Entertainment services and production services of all
types, towels, paper and toiletry products,
chronometers, CD-ROMs, light fixtures of all types,
sunglasses, sports equipment and accessories,
animation, stationery products, jewelry of all types,
stuffed toys and toys, advertising services of all
types, umbrellas, wall and floor coverings of all
types, and the like in International Class 42.3
The examining attorney4 has refused to register
applicant’s mark until applicant clarifies the
identification of its goods and services and pays the fee
for any additional classes of goods and services. 15
U.S.C. §§ 1051(b)(2) and 1112 and 37 CFR § 2.86(a)(2).
In the first Office action, the examining attorney
advised applicant that the identification of the goods and
services was indefinite and that the goods and services
were classified in more than one class. Applicant
responded that its “Statement of Goods is appropriate.”
Response dated April 3, 2000. After the examining attorney
made the requirement for a clarification of the
identification of the goods and services final, applicant
filed a notice of appeal.
3 Serial No. 75742677. The application is based on an allegation
of a bona fide intention to use the mark in commerce. This
application was, for a time, apparently consolidated with Serial
No. 75742425. However, Office records indicate that the ‘425
application is still in the examining operation.
4 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 75742677
3
On October 15, 2001, applicant filed an appeal brief and
an amendment to the identification of goods and services.
Applicant's entire appeal brief is set out below:
In Paper No. 1, the Examining Attorney requests that
the Applicant amend the Statement of Goods to use the
common commercial names for the goods. However, "when
a mark is used on a number of items which make up a
homogenous group, a term which identifies the group as
a whole would be understood as encompassing products
of the same general type which are commercially
related." TMEP 804.03. "ENTERTAINMENT SERVICES and
PRODUCTION SERVICES" are understood as identifying a
particular group of goods. Furthermore, "toiletry
products" identifies a particular group of goods. In
fact, the Examining Attorney admits this in Paper No.
2.
Accordingly, Applicant's Recitation is appropriate.
Therefore, Applicant respectfully requests that the
Examining Attorney’s refusal be reversed.
Applicant’s proposed amended identification of goods
and services, submitted simultaneously with its appeal
brief, including possible International Classes, is also
set out:
Computer and multimedia software, namely CD-ROMs and
Diskettes [International Class 9];
Jewelry, namely earrings, necklaces, pendants,
bracelets, watches, and the like [International
Class 14];
Stationery products, namely letterhead, envelopes,
business cards, brochures, posters, bulletins,
stickers, and brochures [International Class 16];
Sports equipment and accessories, namely, baseballs,
golf balls, golf tees, golf club covers, footballs,
Frisbees [sic], basketballs, towels, jerseys, T-
Ser. No. 75742677
4
shirts, sweatshirts, sunglasses, umbrellas, toys and
the like [International Class 28];
Advertising services, namely, providing advertising
for newspapers, magazines, internet services,
including web sites [International Class 35);
Entertainment services, namely theatrical
productions, musical productions, audio and visual
recordings, television and film productions,
Internet, artwork, animation; and production
services, namely documentaries, commercials, and
radio in International Class 41.
Applicant’s amendment did not include any fees for the
additional classes set out in its proposed amendment.
In view of the proposed amendment, the application was
remanded to the examining attorney on September 5, 2002.
The examining attorney and applicant exchanged
communications and applicant, on December 26, 2002,
proposed the following identification of goods and
services:
Sunglasses, computer and multimedia software, namely,
fixed media featuring theatrical performances, musical
performances, television programs, motion picture
films, audio and video recordings, animation,
documentaries, commercials, and radio entertainment in
International Class 9;
Stationery products, namely letterhead, envelopes,
business cards, posters, stickers, bulletins and
brochures featuring entertainment services namely,
production of theatrical and musical performances,
television programs, motion picture films, audio and
video recordings, animation, documentaries,
commercials, and radio entertainment in International
Class 16;
Ser. No. 75742677
5
Sports equipment and accessories, namely, baseballs,
golf balls, golf tees, golf club covers, footballs,
flying saucer toys, basketballs, jerseys, T-shirts,
and sweatshirts in International Class 28;
Advertising services, namely, the preparation and
dissemination of advertising matter via newspapers,
magazines, and Internet web sites in International
Class 35; and
Entertainment services, namely, theatrical and musical
performances, television programs[,] motion picture
films, audio and video recordings, animation,
documentaries, radio entertainment, Internet web
sites, commercials and museums in International Class
41.
The examining attorney pointed out several problems
with the proposed identification of goods and services.
When these issues could not be resolved, the examining
attorney, on February 24, 2003, denied applicant’s request
for reconsideration. In the denial, the examining attorney
again suggested additional changes to clarify the
identification of goods and services. In addition, the
examining attorney pointed out that applicant had only paid
the fee for a single class and advised applicant that it
must submit a fee for each international class for which it
sought registration.
Applicant did not file a supplemental brief in
response to the denial of its request for reconsideration
and the examining attorney submitted her appeal brief.5
5 Applicant has not filed a reply brief.
Ser. No. 75742677
6
The examining attorney raises several objections to
applicant’s proposed identification of goods and services.
First, the examining attorney argues that “fixed media” is
indefinite for Class 9 goods and the subject matter of the
goods is not specified. Second, concerning the Class 16
goods, the examining attorney objects to the language
“bulletins and brochures” as indefinite because the subject
matter or field of the goods is not specified. In
addition, she required clarification of the use of the
goods. Third, the goods in Class 28 include “jerseys, T-
shirts, and sweatshirts,” which are actually classified in
Class 25. Fourth, concerning the services in Class 41, the
examining attorney argues that the “exact nature of the
services is unclear.” Brief at 7. The examining attorney
has accepted the amendment to the services in Class 35.
Id.
We start by noting that applicant has identified goods
and services in more than one class. A fee for each class
is required. 15 U.S.C. § 1112 (“[I]f the Director by
regulation permits the fling of an application for the
registration of a mark for goods or services which fall
within a plurality of classes, a fee equaling the sum of
the fees for filing an application in each class shall be
paid”). The Director has established such a system. 37
Ser. No. 75742677
7
CFR § 2.86. Applicant has paid the fee for only one class.
See Denial of Request for Reconsideration, attachment.
Therefore, even if applicant’s identification of goods and
services is acceptable, it has not met this requirement and
the examining attorney’s refusal to register for
applicant’s failure to comply with this requirement is
affirmed.6
Next, we look at the requirements for applicant to
clarify its second amended identification of goods and
services, which are the goods and services discussed by the
examining attorney in her brief.7 We start with the goods
6 We note that applicant’s original and first and second amended
identifications of goods and services include goods and services
in more than one class. These goods and services were classified
in classes, inter alia, 9, 28, 35, and 41. Therefore, the
examining attorney properly refused to accept these
identifications of goods and services without the payment of the
appropriate fee for each class even if the identifications of
goods and services were acceptable.
7 The examining attorney considers the following identification
of goods to be the identification of record because she advised
applicant that “the applicant may not amend to include any goods
or services that are not within the scope of goods or services
set forth in the present identification.” Denial of Request for
Reconsideration at 3. We note that:
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.
Ser. No. 75742677
8
in Class 9. Applicant’s identification of these goods
includes the words “fixed media,” which the examining
attorney has held to be indefinite. Applicant has not
responded specifically to this requirement, or any of the
proposed identification of goods or services requirements.
We note that our own review of computer dictionaries does
not indicate that “fixed media” is a term of art in the
trade.8 The objectionable portion of the Class 9 goods is
apparently “computer and multimedia software, namely, fixed
media featuring theatrical performances, musical
performances, television programs, motion picture films,
audio and video recordings, animation, documentaries,
commercials and radio entertainment.” In addition, we
If the applicant submits an amendment to the identification
of goods and services and the examining attorney determines
that it is unacceptable, in whole or in part, the examining
attorney should advise the applicant of the item or items
that are unacceptable. The examining attorney should also
advise the applicant that the previous items listed in the
existing identification (not the unacceptable substitute)
remain operative for purposes of future amendment.
TMEP § 1402.07(d) (3rd ed. 2003).
Inasmuch as all the proposed identifications of goods and
services are not acceptable, we will consider the second
identification of goods, which is the least indefinite. However,
we will also discuss the original identification of goods and
services.
8 Webster’s New World Dictionary of Computer Terms (2000) and
Microsoft Computer Dictionary (5th Ed. 2002). We take judicial
notice of the lack of definitions in these dictionaries.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser. No. 75742677
9
agree that applicant must indicate the field or subject
matter of the television programs, motion picture films,
audio and video recordings, animation, documentaries, and
radio entertainment to make the identification of goods
definite. These terms do not explain what is on the
multimedia fixed media. These goods need to be further
clarified to prevent an overly broad identification of
goods that would make it difficult to determine likelihood
of confusion issues.
Regarding the goods in Class 16, we agree that the
identification of goods is indefinite. Bulletins and
brochures are not goods in trade if they are simply
advertising for applicant’s goods and services.9 In re
Douglas Aircraft Co., Inc., 123 USPQ 271, 271 (TTAB 1959)
(This material [pamphlets, booklets, brochures, bulletins,
and letterheads] serves only to advertise, explain, and
publicize the goods in which applicant deals; and as such
do not constitute ‘goods’ of applicant”). The examining
attorney’s requirement to clarify the nature of use of
these goods is appropriate.
9 Indeed, the same would apply to letterhead, envelopes, business
cards, posters, and stickers if they are used to advertise or
promote applicant’s other goods and services.
Ser. No. 75742677
10
Regarding the goods in Class 28, “jerseys, T-shirts,
and sweatshirts” are clearly in Class 25, and the examining
attorney had properly required applicant either to delete
those goods or add another class and fee. TMEP
§ 1401.02(a) (Class 25).
The services in Class 41 are “Entertainment services,
namely, theatrical and musical performances, television
programs, motion picture films, audio and video recordings,
animation, documentaries, radio entertainment, Internet web
sites, commercials and museums.” The examining attorney
correctly points out that television programs could include
broadcasting television programs and producing television
programs, which are classified in classes 38 and 41
respectively. Thus, this part of the identification of
services is indefinite. Also, the term “Internet web
sites” is indefinite because providing information via the
Internet is classified by the service-related subject
matter. Therefore, applicant’s second proposed
identification of goods and services is indefinite.
We also briefly address applicant’s original
identification of goods and services.
Entertainment services and production services of all
types, towels, paper and toiletry products,
chronometers, CD-ROMs, light fixtures of all types,
sunglasses, sports equipment and accessories,
animation, stationery products, jewelry of all types,
Ser. No. 75742677
11
stuffed toys and toys, advertising services of all
types, umbrellas, wall and floor coverings of all
types, and the like in International Class 42.
As we discussed previously, this identification of
goods is not acceptable for the simple fact that it
contains goods and services in more than one class and
applicant has only paid a fee for one class. Applicant
argues that “‘entertainment services’ and ‘production
services’ are understood as identifying a particular group
of goods.” Applicant’s Brief at 2, citing, TMEP 804.03
(now TMEP 1403.02 (3rd ed. 2003). However, applicant has
not provided any evidence of use or even of how it intends
to use the mark. Therefore, applicant has not provided any
reason to deviate from the requirement that the
“identification of goods or services must be specific,
definite, clear, accurate and concise.” TMEP 1402.01 (3rd
ed. 2003); In re Port Huron Sulphite & Paper Co., 120 USPQ
343 (TTAB 1959) (“Paper other than board papers” approved
because of evidence of actual use on various types of
paper).
Inasmuch as the original identification of goods and
services includes such indefinite items as “entertainment
services and production services of all types, sports
equipment and accessories, toys, and toiletry products,”
the examining attorney properly required applicant to
Ser. No. 75742677
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clarify the goods and services. See In re Air Products &
Chemicals, Inc., 192 USPQ 84, 85 (TTAB 1976), recon.
denied, 192 USPQ 157 (TTAB 1976) (“It is common knowledge
that "catalysts" encompass a wide range of products and
that there are catalysts which are used for a large variety
of catalytic and chemical processes. Thus, the present
identification could conceivably include a large number of
catalysts which applicant does not manufacture. Under such
circumstances, to allow applicant to register its mark for
so broad an identification of goods would give it a scope
of protection to which it is not entitled.”).
We add that applicant’s use of the phrase “and the
like” also renders the original identification of goods and
services indefinite.
The identification should state common names for goods
or services, be as complete and specific as possible
and avoid indefinite words and phrases. The terms …
“and the like” … and other indefinite terms and
phrases are almost always unacceptable.
TMEP § 1402.03(a).
Applicant has not shown any circumstances to
demonstrate why this ordinarily indefinite term would be
acceptable in its case.
Therefore, we affirm the examining attorney’s
requirement for a clarification of the original
identification of goods and services. For the sake of
Ser. No. 75742677
13
completeness, we have discussed applicant’s second proposed
amended identification of goods and services, and we agree
that this identification is also indefinite. We also
affirm the requirement that applicant is not entitled to
registration of its mark even if the identification of
goods and services is definite because applicant has not
paid the required fees for the additional classes.10
Decision: The refusal to register is affirmed.
10 As we have now decided this appeal, we advise applicant of the
provision of 37 CFR § 2.142(g): “An application which has been
considered and decided on appeal will not be reopened except for
the entry of a disclaimer under § 6 of the Act of 1946 or upon
order of the Director, but a petition to the Director to reopen
an application will be considered only upon a showing of
sufficient cause for consideration of any matter not already
adjudicated.” See also 37 CFR § 2.144; Trademark Trial and
Appeal Board Manual of Procedure § 1218 (2d ed. 2003).