Thursday, March 05, 2009

TTAB Affirms PTO Refusal to Amend "FIT TEST" Application from Services to Goods

Applicant Aurel A. Astilean and his Application failed to fit the PTO test when he attempted to register the mark FIT TEST for "fitness exercise and instruction, not including fitness testing or assessment in a health club." The problem arose because Astilean's specimen of use was a photocopy of the opening screen of an exercise DVD. Examining Attorney Andrea P. Butler found the specimen unacceptable for the recited services. Astilean tried to amend the application from Class 41 services to Class 9 goods, but that was a no-go as well. In re Aurel A. Astilean, Serial No. 76688551 (February 9, 2009) [not precedential].

As to the attempted amendment of the application to class 9, the Board agreed with the PTO that "applicant's proposed amendment does not merely clarify or limit the original identification of services, but rather impermissibly broadens it" in violation of Rule 2.71(a).

The Board did not disagree with Attorney Myron Amer's assertion that there is no per se rule prohibiting amendment from goods to services, or vice versa. But TMEP Section 1402.07(b) provides that such an amendment is permitted only "when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification."

Here, the identification of services is not ambiguous as to whether it identifies goods or services. It "clearly and definitely sets forth Class 41 services; it cannot be read as potentially or ambiguously identifying Class 9 goods as well."

The Board therefore found that the PTO had properly rejected the proposed amendment.

The Board then turned its gaze to Astilean's specimen in order to determine the propriety thereof. It observed that a service mark specimen "must show the mark as actually used in the sale or advertising of the services," Rule 2.56(b)(2), and that the specimen "must show an association between the mark and the services for which registration is sought." In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §1301.04(b).

Astilean's original specimen (shown above) was "a DVD of exercises contributing to fitness." The Board found it unacceptable for the services identified.

Astilean's substitute specimen of use (shown below)consisted of "merely a sheet of paper upon which the words FIT TEST are stamped." Therefore, the Board held, it was likewise an unacceptable specimen.

And so, without further adieu, the Board affirmed the PTO's refusal to register.

TTABlog comment: I was talking with someone yesterday about the movie, "Cool Hand Luke" and the famous line, "What we have here is a failure to communicate." Apparently that's what happened when this application was filed.

Text Copyright John L. Welch 2009.


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