Precedential No. 11: TTAB Affirms Refusal Based on Applicant's Failure to Pay Sufficient Fees

The TTAB affirmed two refusals to register the mark SEVEN DEVILS for "Wine related accessories, namely, foil cutters for wine bottles in Class 8; wine openers; wine aerators; pouring spouts for wine for household use; coolers for wine; beverage glassware, all in Class 21; clothing, namely, tshirts, hats, and visors in Class 25; and wine in Class 33." Applicant Carlton Cellars failed to pay sufficient fees to cover the four classes of goods in the application, and also failed to provide an acceptable identification of goods. In re Carlton Cellars, LLC, 2020 USPQ2d 10150 (TTAB 2020) [precedential] (Opinion by Judge Frances Wolfson).

Requirement for Sufficient Fees: Trademark Rule 2.86(a)(2) states that, in a multiple-class application, the applicant “must…submit the application filing fee required by § 2.6 for each class.” If the applicant does not pay all of the required fees, "the examining attorney must issue a written Office action noting the deficiency and requiring either payment of the fees or deletion of classes." TMEP § 810.01. However, the application will be examined and an appropriate Office Action issued because at least one class fee has been paid.

Here, the application proceeded in class 8, but applicant repeatedly made it clear that it sought registration in four classes. It stated "a future intent to pay additional class fees with every communication it has filed during the course of this proceeding." In its appeal brief, applicant requested "reversal of the Examining Attorney’s Section 2(e)(1) [sic] refusal, and remand to the Examining Attorney with instructions to issue an Office action for payment of the filing fees." The Board would have none of it.

The application identifies goods in multiple classes and Applicant has demonstrated a clear intention to seek registration in multiple classes. Yet Applicant has, at every opportunity, failed to pay additional fees to cover all the goods set forth in the identification. To proceed under Applicant’s proposed arrangement essentially denies the fee revenue the USPTO needs to carry out its operations. Accordingly, we affirm the Examining Attorney’s requirement to submit sufficient fees or restrict the identification of goods in the application to a single class. Trademark Rule2.86(a)(2).

The Board further observed that it would not re-open the matter to allow Applicant to pay the required fees or to amend the application to a single class: "once the Board issues its decision on the merits of a case, it may not be reopened except for entry of a disclaimer under Trademark Act Section 6, 15 U.S.C. § 1056, or upon petition to the Sirector, a situation inapplicable here. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); see also In re Brack, 114 USPQ2d 1338, 1342-43 (TTAB 2015)."

Requirement for Definite Identification of Goods: Trademark Rule 2.32(a)(6) requires that the application specify the “particular” goods or services with which the applicant uses or has a bona fide intent to use the mark in commerce. The Board assessed applicant's identification of goods "as Applicant has insisted on presenting it on appeal – the listing as set forth above in a single International Class."

The Board found the identification of goods to be indefinite for two reasons: (1) it refers to specific class numbers. See TMEP § 1402.01 (“The identification itself must not include references to specific class numbers”);  and (2) Applicant refused to either delete goods to limit the application to a single class or submit fees to allow for multiple classes.

This disconnect between the one class that was maintained and an identification containing not only goods from other classes but references to other class numbers themselves makes the identification indefinite. “An identification that fails to identify the goods and services with specificity is indefinite, either because the nature of the goods or services is not clear or because the wording is so broad that it may include goods or services in more than one class.” TMEP § 1402.01. (emphasis by the Board).

The Board therefore affirmed the refusal "based on the unmet requirement that the identification of goods be definite."

Conclusion:

Applicant’s continued attempt to maintain a multiple-class application upon payment of only a single class fee exhibits at best a misapprehension of, and at worst blatant disregard for, USPTO policy and procedure. Applicant had a duty under the Trademark Rules to submit the appropriate filing fee for the number of classes for which registration is desired, as well as a duty to include a listing of goods that is “specific, definite, clear, accurate, and concise.” TMEP § 1402.01. Applicant failed to comply with either requirement.

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Text Copyright John L. Welch 2020.