Recitation of Class Name Does Not Imply That All Services Under That Class Included

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By Anandashankar Mazumdar  

Feb. 3 --When submitting a trademark registration application, an applicant must specifically describe the goods or services for which the registration is sought, the Trademark Trial and Appeal Board ruled Jan. 31 (In re Fiat Grp. Mktg. & Corp. Commc'ns S.p.A., T.T.A.B., No. 79099154, 1/31/14).

Affirming a final rejection to register the term “Fiat 500” for retail services, the board said that simply reciting the title or name of the international class does not imply that all goods and services included in that class are within the scope of the application.

The board noted that in several other countries, there very well might exist an assumption that when the title or name of an international class of goods or services is recited in an application, that all goods and services that might fit into that class are within the scope of the application.

This means that for companies seeking trademark registration in multiple countries, they will have to be aware that the scope of a registration application in the United States might be narrower than in other countries, even if the same wording is used.

Fiat Seeks Registration of 'Fiat 500' in Numerous Classes

Fiat S.p.A. of Turin, Italy, is the parent company of the world's 13th largest automobile manufacturer. Starting in 1936, Fiat began producing a small, economy car called the Fiat 500. The named “Fiat 500” was used for a series of small cars up to 1975 and from 1991 to 1998, when the nameplate was discontinued.

In 2007, Fiat reintroduced the “500” name for a new car, which also represented the first Fiat-branded car to be marketed widely in the United States since 1984. Fiat held several European and U.S. registrations incorporating the term “Fiat 500” and in March 2011, it obtained an international trademark registration (No. 1082074) covering nine classes of goods and services.

Subsequently, Fiat subsidiary Fiat Group Marketing and Corporate Communications S.p.A. filed an application with the Patent and Trademark Office to register “Fiat 500” for the same nine classes, which included International Class No. 35, relating to “advertising services; business management; business administration; office functions,” which constituted a verbatim recitation of the name of the class.

In August 2011, a trademark examiner issued an initial refusal to register the term as a trademark for this class and sought “clarification” on several points, emphasizing that under 37 C.F.R. §2.71(a) such clarification could not expand the scope of the registration as it was originally filed.

Fiat then responded by proposing to change the description of the goods and services with respect to this class to state “advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others.”

In March 2012, the examiner issued a final refusal to register the trademark with respect to this class, on the basis that this recitation was not within the scope of the original application and sought to add additional goods or services, specifically the retail services. Fiat sought reconsideration, arguing that the new description fell within the scope of the class.

The examiner rejected the request for reconsideration, stating that a recitation of the name of the class did not imply that the applicant was seeking to register any and all goods or services that fell under that class.

According to the examiner, because the new wording proposed by Fiat described services different from the original wording--the retail services--that the new language constituted an attempt to broaden the scope of the registration with respect to the original filing. Fiat appealed to the TTAB.

Board Affirms Examiner's Ruling

Administrative Trademark Judge Thomas W. Wellington agreed with the examiner that “the proposed amendment improperly broadens the identification of services.”

Furthermore, the board noted that Section 1402.01(a) of the Trademark Manual of Examining Procedure specifies that applicants should describe the relevant goods and services using “common names” and “generally understood” terms, and “not a class heading.”

“Class headings … are by their nature comprised of intentionally broad terms, but do not necessarily cover all goods or services within that class,” the board said.

To the extent that this policy might be contradictory to the policies applying to international registrations pursuant to the Madrid Protocol, leading such applicants to believe that recitation of a class description automatically included all the specific items that might fall under that heading when applying for a U.S. registration, the court said:

While we appreciate how such a mistaken notion may arise, no provision in U.S. law or any obligation by treaty obliges the USPTO to deviate from or make an exception to its longstanding practice governing the scope and interpretation of identifications and in deciding what amendments are permissible. Put simply, in the case at hand, the fact that applicant's use of the International Class 35 heading may be understood in other countries to include retail store services has no influence on our decision.  

 

Furthermore, the board rejected Fiat's argument that the inclusion of the phrase “business management” in the original application encompassed retail services.

The court thus affirmed the examiner's refusal to issue the registration for retail services. The board permitted the application to proceed to publication for such classes that had not been subject to a final rejection.

The board's opinion was joined by Administrative Trademark Judges Linda A. Kuczma and Cindy B. Greenbaum.

Fiat was represented by Leo M. Loughlin of Rothwell Figg Ernst& Manbeck P.C., Washington, D.C. The PTO was represented by Janice L. McMorrow, trademark examining attorney, Alexandria, Va.

 

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://pub.bna.com/ptcj/79099154TTAB3Feb2014.pdf.