Precedential No. 23: TTAB Affirms Refusal Of "pitchingsmart" Due To Faulty I.D. And Specimen
Applicant Jimmy Moore LLC struck out in its attempt to register the mark pitchingsmart (in standard character form) for "entertainment in the nature of baseball games" in Class 41. Recognizing that this original recitation of services was incorrect, applicant immediately tried to amend its identification to a pitching training system, and then to educational services, but Examining Attorney Tasneem Hussain rejected the amended identifications as beyond the scope of the original, and concluded that applicant's specimens of use did not show the mark in use with the original recited services. In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016) [precedential].
Applicant's headaches stemmed from the original sin of misidentifying its services. The error was noticed immediately and applicant filed a "voluntary amendment" seeking to amend the recitation of services to "baseball and softball training system for pitchers to improve their pitching skills for accurate and intelligent placement of baseball and softball in a strike zone." After that proposed recitation was rejected as beyond the scope of the original, applicant amended to "educational services, namely, providing seminars for baseball and softball pitching." The Examining Attorney rejected that recitation for the same reason, and maintained the requirement that applicant submit an acceptable specimen of use for the original services. Applicant petitioned the Director of Trademarks, who agreed with the Examining Attorney that the amended recitations were unacceptable, observing that:
an applicant who selects the wrong identification of services in the initial application must file a new application if the identification cannot be amended within the scope of the original identification. Therefore, the examining attorney’s action in changing the record back to the original identification was proper.
The Examining Attorney then made final the refusal to accept the amended recitation of services and the requirement for an acceptable specimen.
The Board declined to revisit the Director's decision that applicant did not have an absolute right to amend its identification if the amendment was filed before commencement of examination. Instead, the issues on appeal were whether either of the proposed amendments were acceptable and whether the applicant's specimens showed use of its mark with its identified services.
Identification of Services: Trademark Rule 2.71(a) provides that an applicant may amend its identification of goods or services to clarify or limit, but not to broaden. Applicant pointed to the language of the preamble to the rule, which refers to amendment "during the course of examination," arguing that examination had not begun and so the rule did not apply here. The Board was unmoved. First, it pointed out that it "cannot revisit the Director's decision on this point." Second, under applicant's interpretation, "there would have been no provision under the rules to file its preliminary amendment."
Applicant also contended that the amendments did not exceed the scope of the original identification, but its convoluted arguments were wholly unpersuasive. The phrase "entertainment in the nature of baseball games" is clear - the service of putting on a baseball game for the entertainment of spectators - and indeed it is one of the acceptable definitions set forth in the Trademark ID Manual. Those services do not encompass a training system for pitchers or providing educational seminars regarding pitching.
Specimens of Use: Applicant did not contend that its specimens of use supported the original identification of services. In fact, it stated that it "is not in the business of 'offering baseball games,' so applicant cannot deliver such specimens." Therefore, the Board affirmed the requirement for acceptable specimens.
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TTABlog comment: The Board noted that applicant did not invoke Rule 2.146(a)(5) to seek a waiver of Rule 2.71(a). I would have immediately filed a new application once the error was discovered, wouldn't you? I probably would also have tried to amend the original application.
Text Copyright John L. Welch 2016.