Friday, July 05, 2013

Precedential No. 25: TTAB Affirms Refusal to Register Due To Indefinite Identification of Goods

In this enervating, yet precedential, decision, the Board affirmed a refusal to register the mark shown below, for "choke seals" and "choke seals for electric cables," finding "reasonable and correct" Examining Attorney David Taylor's requirement that applicant disclose the material composition of its goods so that they could be properly classified. In re Faucher Industries Inc., 107 USPQ2d 1355 (TTAB 2013) [precedential].

Applicant contended that "choke seals" is the common commercial name of the goods. It offered two sets of amended identifications, including "choke seals, namely, connection fittings for electric junction boxes," but the Examining Attorney requested more information.

The Board observed that the question of proper classification is not a substantive one and not a matter for appeal. A petition to the Commissioner would have been appropriate. [Then why hear this appeal? - ed.] The best option, however, would have been "an open and frank discussion with the examining attorney." [not always possible - ed.]

A clear identification of goods is required in order to permit informed judgments regarding likelihood of confusion, and proper classification of the goods. Classification is an important organizational tool for PTO personnel and for the public. The Examining Attorney has discretion in determining the degree of particularity needed to allow proper classification, but any conclusion that ambiguity exists "should be governed by the exercise of reason and in light of the evidence of record."

The Board noted that there was no dictionary evidence indicating the meaning of "choke seal." The catalogue page and third-party advertisements that used the term "choke seal" contained limited information as to the nature of the goods. Under Rule 2.61(b), the Examining Attorney is entitled to request additional information regarding the goods for purposes of proper examination of the application.

In short, the Examining Attorney did not believe that the goods belonged in class 9 unless they possessed some "electrical functionality." He requested information regarding the material composition of the goods, since metals seals may be in class 6, non-metal seals in class 17, and certain seals may be in classes 7 or 12. Moreover, not all goods that are used in connection with electrical systems fall in class 9.

The examining attorney needed more information in order to determine the proper classification of the goods. We find that the examining attorney’s requirement that applicant disclose the material composition of its goods so that proper classification could be determined was reasonable and correct. In re Omega, 83 USPQ2d at 1544. We also find that he needed additional information in order to determine whether the goods depicted in applicant’s evidence should be considered “electrical connections,” “electrical connectors,” or “connection fittings” within International Class 9. It would likely have been useful to the examining attorney to know, as well, whether the goods contained any components that have an electrical function.

The Board concluded that the various identifications offered by applicant do not "meet the standards" of the ID Manual, nor do they include sufficient information so that classification of the goods is not "difficult or ambiguous." (quoting TMEP Section 1402.01(a)).

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 2:59 PM, Anonymous Anonymous said...

I don’t have a strong opinion one way or the other about whether “choke seals,” with or without amendment, was indefinite or overly broad, but I do take strong exception to the Board’s holding that the entire application should go abandoned because a portion of the identification was found objectionable. The Board states (page 7):

[T]he examining attorney did not expressly limit the scope of his refusal to those particular goods as to which he deemed the identification indefinite (i.e., the choke seals). Neither did applicant’s counsel ever request that the examining attorney so limit his refusal. . . . [T]he option of partial abandonment is available only where a refusal or requirement was “expressly limited.” 37 C.F.R. § 2.65(a). Following this rule, Office policy requires that the Office action must “expressly state[ ] that a refusal or requirement is limited to only certain goods/services/class(es). Unless the action includes a clear and explicit statement that the refusal or requirement applies to only certain goods/services/class(es), the refusal or requirement will apply to all the goods/services/class(es) . . .” TMEP § 718.02(a) (emphasis in original).

And with that, the Board affirmed the refusal of the entire application, even the goods to which the Examining Attorney had not objected.

The problem with the Board’s analysis is that, as the Board itself acknowledged (page 2), in the Examining Attorney’s first Office Action he “set forth a proposed form of identification in which all of the goods of applicant were set forth without change except the two items called ‘choke seals.’” So if an applicant identifies goods as “A; B; C” and an examining attorney requires amendment to “A; B; C, namely, ____,” that’s not expressly limiting the requirement to the C goods? True, the word “expressly” can be defined in several ways, but at least one definition is “plainly, exactly, or unmistakably” ( Here, there was nothing at all unmistakable about which goods the Examining Attorney was objecting to and which he was not.

As for the Board’s observation that the Examining Attorney did not expressly limit his requirement to “choke seals” and applicant’s counsel never asked him to, could that be because both used common sense and already understood that to be the case? And as for TMEP Section 718.02(a), which requires “a clear and explicit statement” that the requirement be limited to only certain goods, apparently the Examining Attorney never made such a statement here (I haven’t read the entire record). But it doesn’t matter because the Board isn’t bound by the TMEP – see, e.g., In re First Draft Inc., 76 U.S.P.Q.2d 1183, 1188 (T.T.A.B. 2005) (“[T]he Board is not bound by the examination guidelines set forth in the TMEP.”) – and it could, based on the meaning of “expressly” and common sense, have legitimately found the Examining Attorney’s requirement to be limited to only the goods objected to by the Examining Attorney.


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