Tuesday, February 26, 2008

TTABlog Practice Pointer: Not Every Final Refusal Merits an Appeal

Of course, not all final refusals to register merit an appeal to the TTAB. This is one of them. The Board affirmed a refusal to register the mark JOURNEY'S EDGE because Applicant Midwest Trading failed to provide an acceptable identification of goods. In re Midwest Trading Group, Inc., Serial No. 76666044 (February 13, 2008) [not precedential].

Midwest Trading sought to register its mark for the following: "Household goods, namely, household utensils, namely, graters and kitchen ladles, containers for kitchen use, namely, pails and metal and plastic pans, small hand-operated apparatus for mincing, grinding and pressing, candle extinguishers, electric hair combs and toothbrushes, dish stands and decanter stands" (Class 21).

When Examining Attorney Christopher M. Ott objected to several terms in the identification of goods, Applicant responded by deleting the original i.d. in its entirety and substituting: "Small hand operated apparatus, namely a crank-powered torch radio and battery operated LED booklight" in Class 8 [sic!]. According to Applicant:

"The amendment is permitted pursuant to 37 C.F.R. § 2.71(a) because it clarifies and limits the hand-operated apparatus. The hand operation of the LED booklight is turning it on to read and off to sleep. The hand operation of the torch radio is the cranking."

The Examining Attorney found this amendment unacceptable because the proffered identification was "entirely outside the scope of the application as filed."

On appeal, Applicant lamely argued that the amendment was proper because the original identification includes the words "small hand-operated apparatus" and its booklight is a hand operated apparatus.

The Board not surprisingly found this construction to be "obviously erroneous," since the term "hand-held apparatus" in the original identification is limited to devices that mince, grind, or press.

"It does not appear - and applicant does not argue - that a 'crank-powered torch radio' or a 'battery-powered LED booklight' can be used for 'mincing, grinding [or] pressing.'"

The addition of these goods to the application "would constitute a broadening, rather than limiting or clarifying amendment, and [is] therefore prohibited under Trademark Rule 2.71(a)."

Consequently, the Board affirmed the refusal based upon Applicant's failure to provide an acceptable identification of goods.

TTABlog note: Not only did this Applicant appeal, but it first tried a request for reconsideration! Now, I'm not one to criticize, but come on!

Text Copyright John L. Welch 2008.


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