Fiat Group Marketing & Corporate Communications S.p.A. ___ U.S.P.Q.2d ___ (TTAB 2014)
The USPTO’s Trademark Trial and Appeal Board (“TTAB”) has decided that an application filed in the U.S. that recites the Class 35 class heading may not be amended to identify retail store services, as such services are not within the scope of the ordinary meaning of the words in the class heading.
In In re Fiat Group Marketing & Corporate Communications S.p.A. ___ U.S.P.Q.2d ___ (TTAB 2014), the applicant extended its International Registration for its mark FIAT 500 to the U.S., seeking registration in Class 35 for the International Class 35 heading in its entirety: “advertising services; business management; business administration; office functions.”
In response to the first Office action which required that certain of the services be identified more specifically, the applicant amended Class 35 to cover “advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others.” The Examiner refused to accept the “retail store services” portion of the amendment, because “this wording is beyond the scope of the identification because the initial application did not list any store services of any kind, nor any services which would encompass them . . . .”
The U.S. Trademark Manual of Examination Procedure provides that “for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class designation.” TMEP § 1402.07(a). The rule also provides that “the USPTO will not permit the applicant to amend to include any items that falls in the class, unless the items fall within the ordinary meaning of the words in the heading . . .” Id.
The applicant appealed the Examiner’s refusal to the Board, arguing that it should be allowed to specify retail store services because the language in the original specification comprised the full class heading for Class 35, and Class 35 protects retail and store services. The Board rejected that argument, ruling that the words comprising a class heading do not include all goods or services in the class. The applicant also argued that “retail store services” are within the ordinary meaning of the words “business management.” The Board also rejected this argument. Based on dictionary definitions for “business management,” the Board found that business management “entails a business-to-business service with one company helping another company function better in its business,” whereas retail store services “involve entities bringing together different goods for retail purchase by consumers; this is a service offered to the purchasers of the goods.” Thus, the Board found that retail store services are not within the scope of the ordinary meaning of the words “business management.” The Board also rejected applicant’s argument that reciting the class heading is equivalent to claiming an intention to use a mark on “all of” the goods or services within a class, because in that instance, the plain meaning of the words “all of” leads to a different result. The Board also was unpersuaded by the fact that in an application presenting the identical facts for a companion application, the applicant had been allowed to amend from the Class 35 class heading to identify “retail store services.”
The Board concludes that class headings are “by their nature comprised of intentionally broad terms, but do not necessarily cover all goods or services within that class.” This position differs from the view in some other countries that the scope of a class heading encompasses the entire alphabetical list of acceptable goods or services for that class. In a footnote, the Board “notes a trend” to move away from this so-called “class heading covers all” interpretation, citing the IP Translator case, Case C-07/10 Chartered Institute of Patent Attorneys v. Registrar of Trademarks, and the change in OHIM policy that followed requiring an applicant using class headings to affirmatively indicate that it is seeking protection for all listed goods or services in the class.
Practice Pointer: To the extent permitted by the practice of the country of the basic application or registration, and by the International Bureau, to be cautious, applicants seeking an extension of protection of an IR into the U.S. that recites the Class 35 class heading should specify the actual services of interest in Class 35 for the U.S. extension before the designation is forwarded to the U.S.