Monday, August 29, 2016

Precedential No. 23: TTAB Affirms Refusal Of "pitchingsmart" Due To Faulty I.D. And Specimen

Applicant Jimmy Moore LLC struck out in its attempt to register the mark pitchingsmart (in standard character form) for "entertainment in the nature of baseball games" in Class 41. Recognizing that this original recitation of services was incorrect, applicant immediately tried to amend its identification to a pitching training system, and then to educational services, but Examining Attorney Tasneem Hussain rejected the amended identifications as beyond the scope of the original, and concluded that applicant's specimens of use did not show the mark in use with the original recited services. In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016) [precedential].

Applicant's headaches stemmed from the original sin of misidentifying its services. The error was noticed immediately and applicant filed a "voluntary amendment" seeking to amend the recitation of services to "baseball and softball training system for pitchers to improve their pitching skills for accurate and intelligent placement of baseball and softball in a strike zone." After that proposed recitation was rejected as beyond the scope of the original, applicant amended to "educational services, namely, providing seminars for baseball and softball pitching." The Examining Attorney rejected that recitation for the same reason, and maintained the requirement that applicant submit an acceptable specimen of use for the original services. Applicant petitioned the Director of the USPTO, who agreed with the Examining Attorney that the amended recitations were unacceptable, observing that:

an applicant who selects the wrong identification of services in the initial application must file a new application if the identification cannot be amended within the scope of the original identification. Therefore, the examining attorney’s action in changing the record back to the original identification was proper.

The Examining Attorney then made final the refusal to accept the amended recitation of services and the requirement for an acceptable specimen.

The Board declined to revisit the Director's decision that applicant did not have an absolute right to amend its identification if the amendment was filed before commencement of examination. Instead, the issues on appeal were whether either of the proposed amendments were acceptable and whether the applicant's specimens showed use of its mark with its identified services.

Identification of Services: Trademark Rule 2.71(a) provides that an applicant may amend its identification of goods or services to clarify or limit, but not to broaden. Applicant pointed to the language of the preamble to the rule, which refers to amendment "during the course of examination," arguing that examination had not begun and so the rule did not apply here. The Board was unmoved. First, it pointed out that it "cannot revisit the Director's decision on this point." Second, under applicant's interpretation, "there would have been no provision under the rules to file its preliminary amendment."

Applicant also contended that the amendments did not exceed the scope of the original identification, but its convoluted arguments were wholly unpersuasive. The phrase "entertainment in the nature of baseball games" is clear - the service of putting on a baseball game for the entertainment of spectators - and indeed it is one of the acceptable definitions set forth in the Trademark ID Manual. Those services do not encompass a training system for pitchers or providing educational seminars regarding pitching.

Specimens of Use: Applicant did not contend that its specimens of use supported the original identification of services. In fact, it stated that it "is not in the business of 'offering baseball games,' so applicant cannot deliver such specimens." Therefore, the Board affirmed the requirement for acceptable specimens.

Read comments and post your comment here.

TTABlog comment: The Board noted that applicant did not invoke Rule 2.146(a)(5) to seek a waiver of Rule 2.71(a). I would have immediately filed a new application once the error was discovered, wouldn't you? I probably would also have tried to amend the original application.

Text Copyright John L. Welch 2016.


At 9:34 AM, Anonymous Anonymous said...

Just like the SoupNazi of Seinfeld fame, make an error in the description of goods/services when filing and "No Registration for you!" In this regard, current USPTO practice, which does allow amending certain other items in the application, comes off merely as a bureaucratic penalty/tax, especially considering Applicant's point that there had been no substantive review of the application prior to the filing of the 'voluntary amendment.' While changing the goods/services (or even slightly amending the mark) could arguably alter an application's filing/priority date, would it not make more sense to simply allow this in a rule (i.e., effective filing date becomes date of amendment rather than date of filing the application) rather than to penalize the applicant with what amounts to total abandonment of the application?

At 10:12 AM, Anonymous Anonymous said...

One of the problems practitioners face is trying to conform to the arcane definitions of the Acceptable ID Manual and the often arbitrary classification rules.

Would it have been better to simply file the application with a goods ID of "products or services related to baseball" and pick some class that may be related, and wait to see what kind of refusals and requirements the examining attorney comes back with?

At 1:24 PM, Anonymous Anonymous said...

As far as I can tell they have still not filed a new application.

Why would you waste any time on this appeal? There was a Petition to the Director and then the appeal. Applicant's attorney filed a 25 page appeal brief and a 23 page reply brief.

Now two years have gone by and the client does not have a new application to cover themselves when the inevitable happens.

I hope someone has good insurance if any issues arise. Was the attorney afraid to admit the mistake? Was it a case of a patent attorney not understanding trademark law?

Did the attorney do all this for free? If not where do you find clients that are willing to spend this kind of money on a clear loser of a case?

At 2:21 PM, Anonymous Anonymous said...

Clearly "file again" was the cheaper and faster solution.
I cannot fathom the extent of time spent on this Petition/Appeal.

Oddly, this trademark is listed among the Exemplary Trademarks on the attorney's web site.
Only six are listed, to somewhat address the question at 1:24.

At 7:49 AM, Anonymous Anonymous said...

The 9:34 am poster ignores the fact that an "after-filing" changeable identification results in a database that's no longer accurate for search purposes. There's a big difference between correcting an applicant's street addres and amending an ID to something completely different. As to the 10:12 am poster's comments, the applicant does not have to agree to an ID straight out of the Manual unless filing under TEAS Plus. However, if the proposed ID is too amorphous (like the one suggested by the poster), the application may not even get a filing date in the first place.

At 4:42 AM, Anonymous Cliff Hyra said...

I think the applicant actually could have made a good argument that the "pitching training system" was a baseball game since it looks like it is a software program. E.g., "I got a new baseball game for my Xbox/computer". Lots of educational "systems" are also games. Now, it is under "entertainment services," but even so. I would have tried amending to something like "Entertainment in the nature of baseball games, namely games for improving baseball skills." You have a decent shot with that sort of amendment. Heck, email the Examining Attorney, ask if it's okay, you might even get an Examiner's Amendment entered. Easier than trying to make new law.

I also agree that if you are not sure what description of services applies, you can pay the higher filing fees and put something super broad down and let the Examiner whittle it down for you. That's better than having to re-file.


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