Precedential No. 25: TTAB Affirms Refusal to Register Due To Indefinite Identification of Goods
In this enervating, yet precedential, decision, the Board affirmed a refusal to register the mark shown below, for "choke seals" and "choke seals for electric cables," finding "reasonable and correct" Examining Attorney David Taylor's requirement that applicant disclose the material composition of its goods so that they could be properly classified. In re Faucher Industries Inc., 107 USPQ2d 1355 (TTAB 2013) [precedential].
Applicant contended that "choke seals" is the common commercial name of the goods. It offered two sets of amended identifications, including "choke seals, namely, connection fittings for electric junction boxes," but the Examining Attorney requested more information.
The Board observed that the question of proper classification is not a substantive one and not a matter for appeal. A petition to the Commissioner would have been appropriate. [Then why hear this appeal? - ed.] The best option, however, would have been "an open and frank discussion with the examining attorney." [not always possible - ed.]
A clear identification of goods is required in order to permit informed judgments regarding likelihood of confusion, and proper classification of the goods. Classification is an important organizational tool for PTO personnel and for the public. The Examining Attorney has discretion in determining the degree of particularity needed to allow proper classification, but any conclusion that ambiguity exists "should be governed by the exercise of reason and in light of the evidence of record."
The Board noted that there was no dictionary evidence indicating the meaning of "choke seal." The catalogue page and third-party advertisements that used the term "choke seal" contained limited information as to the nature of the goods. Under Rule 2.61(b), the Examining Attorney is entitled to request additional information regarding the goods for purposes of proper examination of the application.
In short, the Examining Attorney did not believe that the goods belonged in class 9 unless they possessed some "electrical functionality." He requested information regarding the material composition of the goods, since metals seals may be in class 6, non-metal seals in class 17, and certain seals may be in classes 7 or 12. Moreover, not all goods that are used in connection with electrical systems fall in class 9.
The examining attorney needed more information in order to determine the proper classification of the goods. We find that the examining attorney’s requirement that applicant disclose the material composition of its goods so that proper classification could be determined was reasonable and correct. In re Omega, 83 USPQ2d at 1544. We also find that he needed additional information in order to determine whether the goods depicted in applicant’s evidence should be considered “electrical connections,” “electrical connectors,” or “connection fittings” within International Class 9. It would likely have been useful to the examining attorney to know, as well, whether the goods contained any components that have an electrical function.
The Board concluded that the various identifications offered by applicant do not "meet the standards" of the ID Manual, nor do they include sufficient information so that classification of the goods is not "difficult or ambiguous." (quoting TMEP Section 1402.01(a)).
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Text Copyright John L. Welch 2013.