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The Pitfalls of Using Class Headings in USPTO Trademark Applications

by | Mar 9, 2021 | Firm News

I have been filing trademark registrations for international clients for more than twenty-seven years. For trademark filings based on international clients’ “home country” applications or registrations, problems frequently arise when their U.S. applications simply repeat the generalized descriptions and identifications of goods and classes of goods that are often acceptable overseas.

The Nice classifications (either all goods in class or the class headings) are not sufficiently specific for a successful application in the US Patent and Trademark Office. Rather, it is necessary to describe the claimed goods with a greater degree of specificity in their ordinary commercial terms. A failure to narrow descriptions of goods and classes sufficiently can lead to delays and even refusals to register. A textbook example of this can be seen in the Bottega Veneta application for its famous, and soon-to-be-registered, leather weave. When the application was first filed in June 2007, the description of goods in Class 18 encompassed a major part of the heading for class 18:
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and traveling bags.
After a number of office actions (which attacked the application on multiple grounds), in January 2009, Bottega Veneta finally amended the class 18 description (at the PTO’s urging) in keeping with its actual intended use:
wallets, purses, handbags, shoulder bags, clutch bags, tote bags, business card cases, credit card cases, key cases, cosmetic cases sold empty, briefcases, attache cases, valises, suitcases and duffle bags, all made in whole or in substantial part, of leather” in Class 18.
Bottega Veneta’s specific list of items fell within the plain meaning of the general language in the original filing (i.e., “goods made of these materials and not included in other classes,” and “trunks and traveling bags”). However, the use of the class heading can also prevent a later amendment, as it did recently in In re Fiat, 109 USPQ2d 1593 (Serial No. 79099154 TTAB 2014)

There, the applicant requested an amendment to the scope of its services from the class 35 heading (“Advertising; business management; business administration; office functions”) to “advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others.” In deciding whether to accept an amendment, however, the Trademark Office looks at the “plain meaning” of the initial description to determine whether it encompasses the added goods or services. In other words, an applicant may amend an application to clarify or limit the identification of goods or services, but not to broaden it. Looking at the original description, the TTAB held that the addition of “retail store and on-line retail store services featuring a wide variety of consumer goods of others” was an impermissible expansion of the scope of the original recitation, despite the fact that those services are properly included within class 35. The “plain meaning” rule, the TTAB explained, “is necessary to provide the public with notice as to the scope of goods and/or services for which applicant is seeking registration and to enable the USPTO to reach informed judgments concerning likelihood of confusion.”

The U.S. practitioner who takes on a registration for international clients under the Madrid Protocol or international convention — Section 44(d) (based on an application) and Section 44(e)) (based on a registration) — must be aware of these issues, among many others, in order to avoid delays and refusals which may cost the client both time and money — and even loss of trademark protection in the United States.