Tuesday, March 06, 2018

WYHA? TTAB Affirms Requirement for Specificity of Cable Clip Composition to Allow Proper Classification

The Board affirmed a requirement that Applicant Northeastern University amend its identification of goods for the mark NORTHEASTERN by specifying the material composition of its "clips for electric charging cables" to allow proper classification. The Examining Attorney maintained that the clips fall in Class 6 if they are metal, and International Class 20 if they are non-metal. Northeastern insisted that they fall in Class 9 with the rest of the goods in its application ("Cases for mobile phones; refrigerator magnets; battery packs; mouse pads’ computer mouse’ blank USB flash drives; sleeves for laptops). In re Northeastern University, Serial No. 87487674 (March 2, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Northeastern argued that the purpose of the clips controls their classification, and material composition s a secondary consideration to be used if the goods cannot be classified by function or purpose. It further contended that the singular purpose of its clips constitutes a special use or attribute justifying classification. The Board was unmoved.

[U]nlike “toilets adapted for medical patients or for use by disabled persons,” which are classified as medical apparatus in Class 10 based on the particular use of the goods, rather than in Class 11 with general “toilets,” Applicant’s “clips for electrical charging cables” do not have a special use or attribute that would justify classification in International Class 9 rather than by material composition in International Classes 6 or 20. See TMEP § 1402.03(5).

The Board agreed with Examining Attorney Steven M. Perez that “[n]othing in the identification of goods indicates that Applicant’s cable clips function differently than other cable clips, or that they are specially adapted for 'for electric charging cables.'"

The Board affirmed the refusal to register solely as to the "clips for electric charging cables."

Read comments and post your comment here.

TTABlog comment: Why not just go along with the Examining Attorney? Did the University want to avoid paying an extra class fee?

By applicant's logic, clips for potato chip bags would be in Class 30.

Text Copyright John L. Welch 2018.


At 8:47 AM, Anonymous Anonymous said...

What an exercise in futility. I can't imagine why someone would take on that battle rather than just pay the fee.

At 10:39 AM, Anonymous Anonymous said...

Yes. I was wondering the same thing. Was there some justification for incurring the cost (time and money) of arguing the point?

At 10:55 AM, Anonymous Anonymous said...

I agree with the applicant, and I'm impressed that it let its attorney have a go (rather than amending perhaps to cables sold with clips, etc.). Anyway, the Board states the overarching purpose then promptly acts to undermine that purpose. "An applicant must identify the goods with sufficient particularity to provide public notice, to enable the USPTO to classify the goods properly, and to allow the USPTO to reach informed judgments concerning likelihood of confusion under Section 2(d) of the Trademark Act." So that's the purpose, but the Classification system - procedural rule that aren't implemented consistently - wins? As stated, the purpose of classification is to promote effective searching and not to "hide" the goods in a Class you might not think to search; there's a common sense component. As noted in the decision, binder clips are in Class 16 with stationery. The applicant argued that the clips are made to hold electrical cables and are highly related to the rest of the goods claimed in the Class. A third party selling similar goods probably sells related compatible electrical goods and will likely search Class 9. But forget all that; clips for electrical cables should be in Class 6 with metal goods, or 20 if they're plastic. Or maybe Class 16 if you can tuck a pen in there too. [Questionable] form over substance.

At 12:27 PM, Anonymous Anonymous said...

My alma mater hard at work right there. (◔_◔)

At 1:12 PM, Anonymous Anonymous said...

Agree 100% with the previous comment. As a person whose job includes protecting the company's trademarks (both foreign and domestic, but primarily foreign), the choice of class is critical to our efforts. I don't want to pay for watch services in every conceivable class; I want consumer electronics accessories to be in Class 9, not some other class based on the material they are made of. I think the board got this one wrong.

At 2:02 PM, Anonymous Anonymous said...

The Board may be right... I dunno.
I bet the reason for this seemingly arbitrary classification is in the (il)logic of the Nice Agreement that they purport to implement. I virtually never question EA classification requirements because the standards are so incomprehensible that it is impossible to make a cogent argument in resistance. And every time I have tried I got shot down.

Changing those rules will, of course, be well nigh impossible, but it does seem that the bureaucrats should not need to don the mantle of insanity just because they are required to implement it.

At 3:22 PM, Anonymous Anonymous said...

Regarding previous comments concerning classification and Section 2(d), classification and likelihood of confusion are two completely different topics. The ID must be specific enough to ensure proper classification under the Nice Agreement, which the USPTO is required to follow, and it must also be specific enough for purposes of Section 2(d) (lest we forget that recent Board finding concerning a vague software ID). Classification, however, has absolutely nothing to do with whether goods and/or services are related for purposes of 2(d). The fact that goods are classified in the same class is almost meaningless, as eyeglasses are classified in Class 9, as are computers. I doubt that, just because they are in Class 9, someone could argue that eyeglasses and computers are closely related and likely to emanate from the same source. Moreover, classification does not have any effect on the scope of protection for the goods or services. For example, paints are in Class 2 and paintbrushes are in Class 16, and these are closely related, complementary goods, regardless of the classification. Furthermore, even if goods are misclassified (say, shirts in Class 11), they are still protected against confusingly similar marks for clothing that are properly classified in Class 25. So arguing over classification is a fool's errand, the Board was correct in its findings, and this applicant more likely than not spent more in attorney's fees than simply paying for the additional class and moving this case along.


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