TTAB holds that class heading is not the same as all goods or services in the class

United States of America

In a precedential decision in In re Fiat Group Marketing & Corporate Communications SpA (Serial No 79099154, January 31 2004), the Trademark Trial and Appeal Board (TTAB) has affirmed the partial refusal of a request for extension of protection under the Madrid Protocol

In this case, Fiat identified the services covered by its application by using the language of the class heading for Class 35: “advertising services; business management; business administration; office functions”. In response to the examining attorney’s request for clarification of the services, Fiat amended the application to cover “advertising services; retail store and online retail store services featuring a wide variety of consumer goods of others”. Holding that retail store services and online retail store services were not within the scope of the original services identified in the application as filed, the TTAB affirmed the refusal of registration with respect to retail and online store services, and accepted the application as to advertising services.

The issue on appeal involved the application of Trademark Rule 2.71, which prohibits an applicant from broadening the identification of goods or services after an application is filed. The purpose of the rule is to provide the public with notice of the scope of goods and services for which an applicant is seeking registration and to enable the Patent and Trademark Office (PTO) to reach an informed decision about the likelihood of confusion. Thus, on appeal, the TTAB had to decide whether the language of the Class 35 class heading encompasses retail store services, which are not named in the class heading but fall within the scope of Class 35.

Section 1402.07(a) of the Trademark Manual of Examining Procedure (TMEP) provides that, where the identification of goods or services consists of the “entire general class heading”, the PTO will look to the ordinary meaning of the words in the class heading to determine the scope of the identification. The PTO will not permit an applicant to amend its application simply to include any good or service that falls into the class.

Fiat argued that the use of the class heading encompasses all of the goods or services within the class. It also compared its use of the class heading to wording such as “all other items in Class []”. In addition, Fiat argued that the words "business management" may be understood as including retail store services.

The TTAB found that the proposed amendment improperly broadened the identification of services in violation of Rule 2.71(a). Neither the term "business management" nor the other terms in the Class 35 heading could be construed as encompassing retail store services. The TMEP is clear in setting forth the requirement that goods and services be set forth with particularity, including that “common names” and “generally understood” terminology should be used, “not a class heading”. The ordinary meaning of the wording in an identification of goods or services must be considered when attempting to define the scope of an identification. “Business management” does not refer simply to any activity a business undertakes, but instead is defined as the “process and result of applying management and management science concepts and techniques to... a business organisation... to achieve its goals”. In view of this definition, the TTAB found business management services to be “significantly” different from retail store services.

The TTAB also rejected Fiat’s attempt to equate the class heading with the language “all of” the goods or services in a particular class. The plain meaning of the words “all of” the goods or services in an international class can be understood to mean only that the applicant is seeking protection of its mark for all goods or services in that class, as defined in WIPO’s International Classification manual. Class headings, on the other hand, are comprised of intentionally broad terms, but do not necessarily cover all goods or services within that class. Section 1402.07(a) of the TMEP clearly explains this and notes that, where an identification is only a repetition of the class heading, the PTO “will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words in the heading”.  The fact that Fiat’s identification could be understood in other countries to include retail store services has no impact on the interpretation of that identification in the United States. The TTAB also pointed out that a US application requires an applicant to support its application with a verified statement declaring that it is using the mark in connection with all of the goods or services covered by the application or that it has a bona fide intent to do so. Section 1402.02 of the TMEP advises that it is “unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class”.

This decision is consistent with the longstanding practice in the United States interpreting the scope of the goods or services covered by an application by the plain meaning of the words in the application as filed. A non-U.S. applicant seeking protection in the United States through a request for extension under the Madrid Protocol would be well-advised to include in its home-country application or registration not only a class heading, but also any specific goods or services of interest that are not clearly encompassed by the words that make up the class heading. In addition, in view of the statement an applicant must make concerning its use or bona fide intent to use the applied-for mark in connection with all of the goods or services listed in the application and recent US decisions concerning fraud, an applicant would be prudent to consider carefully the scope of the goods or services included in its US application in the context of its reasonably foreseeable plans for its US business.

Susan Progoff, Dorsey & Whitney LLP, New York

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