Friday, April 30, 2010

Test Your TTAB Judge-Ability on this Rejected Amendment and Specimen of Use

Applicant Marion L. Lonegro sought to amend her application for the standard character mark SENSITIVITY AWARENESS from "fund raising" and "educational seminars" to "publications for charitable fund raising." She submitted the specimen of use depicted immediately, identified as "an image applied by a rubber stamp to the packaging of publications used for fund raising." Was the amendment proper? Was the specimen acceptable? The PTO's Examining Attorney said no, so Ms. Lonegro appealed. What's your decision? In re Marion L. Lonegro, Serial No. 76695362 (April 12, 2010) [not precedential].

The Examining Attorney required clarification of Applicant's services, but instead she sought to amend the application to read "publications for charitable fund raising." The Board observed that an applicant may amend to clarify or limit, but not to broaden, the identification of goods or services. Not surprisingly, it concluded that "publications" did not fall within the services recited and that the refusal of the amendment was proper.

Turning to the proffered specimen of use, the Board noted that for services, there must be a "direct association between that mark ... and the services specified in the application, and there must be sufficient reference to the services in the specimens to create this association."

Not surprisingly, the Board found such required association lacking in Applicant's specimen of use. It noted that the services are not "so unusual that the typical methods of displaying a service mark therefor, e.g., signage or advertisements, would be unavailable."

And so the Board found the specimen inadequate.

TTABlog comment: WYHA? Applicant's attorney here is a frequent "WYHA?" source. True to form, he filed a three-page appeal brief and a two-page reply brief (which amounts to five fewer pages than the decision). Perhaps the PTO should raise the appeal fee?

Text Copyright John L. Welch 2010.


At 2:58 PM, Blogger Owen said...

Wow, the amount of ex parte appeals by Myron Amer is staggering:

Also, the amount of WYHAs is quite clear from just a cursory review. Lots of future TTABlog stories forthcoming.

At 4:26 AM, Blogger Paul Raynor said...

I would be curious to know if the use of ex-parte appeals is a growing strategy to pressure the examining attorney to accept the applicant's position on a given matter. I seem to be seeing more and more of this going on and many times the prosecution history shows a final OAL followed by an ex-parte appeal followed by correspondence, the dropping of the appeal, an amendment to the application and subsequent registration. Has anyone else noticed this?

At 11:37 PM, Anonymous Anonymous said...

One reason Amer has so many appeals is those go back 30 some odd years (s/n 73/). His PTO reg. Number is 18 thousand something, which makes him 80 some odd years old. He probably charges a flat fee for an appeal that clients bite on rather than abandon.

I'm not aware of the TTAB attrition by appeal strategy, but it has some legs on the other side of the PTO.


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