TMEP 1207.01(a)(iii): Reliance on Identification of Goods/Services in Registration and Application

This is the October 2015 Edition of the TMEP

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1207.01(a)(iii)    Reliance on Identification of Goods/Services in Registration and Application

The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Prods. Co. v. Johnson Publ'g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010).

If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that, to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (noting that, where registrant’s goods are broadly identified as “computer programs recorded on magnetic disks,” without any limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods); In re Diet Ctr., Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its identification to indicate that its goods were sold only through franchised outlets offering weight-reduction services, the cited registration’s identification contained no limitations as to trade channels or classes of customers and thus it must be presumed that registrant’s goods travel through all the ordinary channels of trade); In re Uncle Sam Chem. Co., 229 USPQ 233 (TTAB 1986) (finding that although applicant’s cleaning preparations and degreasers were limited to those for industrial and institutional use, registrant’s liquid preparations for cleaning woodwork and furniture, as identified, were not restricted to any particular trade channels or classes of customers and thus could presumably be used for institutional and industrial purposes).

Similarly, there may be a likelihood of confusion where an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for casino services offered to preferred customers identified by special identification cards, likely to cause confusion); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for banking services, and RESPONSE CARD for banking services rendered through 24-hour teller machines, likely to cause confusion). In addition, language seeking to limit otherwise identical, or highly similar, goods or services may not be sufficient to distinguish them so as to avoid a likelihood of confusion. See Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although opposer’s clothing items were limited by the wording “college imprinted” and the applicant’s identical or highly similar items were limited by the wording “professional baseball imprinted,” these restrictions did not distinguish the goods, their trade channels, or their relevant consumers in any meaningful way).

An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764–65 (TTAB 1986).

In cases where the terminology in an identification is unclear or undefined, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 & n.10 (TTAB 2009) (noting that, although extrinsic evidence may not be used to limit or restrict the identified goods, it is nonetheless proper to consider extrinsic evidence in the nature of dictionary entries to define the terminology used to describe the goods); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (noting that, “when the description of goods for a cited registration is somewhat unclear... it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.”)