IP Law Daily, TRADEMARK—TTAB: “FIAT 500” could not be registered for retail store services because amended application improperly broadened identification of services, (Feb 4, 2014)

By Mark Engstrom, J.D.

Trademark applicant Fiat Group Marketing & Corporate Communications could not extend the protection of its international registration of “FIAT 500” to the United States by registering the mark on the Principal Register, in standard character form, for retail store and on-line retail store services, the Trademark Trial and Appeal Board has ruled (In re Fiat Group Marketing & Corporate Communications S.p.A., January 31, 2014, Wellington, T.). Because the applicant filed an amended identification that sought protection for services were not within the scope of its original application, the Board affirmed the examining attorney’s refusal to register the mark for those services.

Background. In its original identification of goods and services, the applicant recited “Advertising services; business management; business administration; [and] office functions” in International Class 35. However, the applicant recited “Advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others” in its amended identification.

The examining attorney refused registration because the applicant did not comply with Trademark Rule 2.71(a), which allowed trademark applicants to amend their applications to “clarify or limit, but not to broaden,” the scope of their original recitations. According to the examining attorney, “retail store and on-line retail store services” did not fall within the scope of “advertising services; business management; business administration; [and] office functions”—the services that the applicant had recited at the time of its original filing. The examining attorney expressly accepted, however, the “advertising services” portion of the applicant’s amended identification.

Appeal. The issue on appeal was whether the applicant’s amendment—from “advertising services; business management; business administration; [and] office functions” to “advertising services [and] retail store and on-line retail store services”—constituted a “broadening” of its original identification, in violation of Trademark Rule 2.71(a), 37 C.F.R. §2.71(a).

The Board noted that the original recitation of services—”advertising; business management; business administration; office functions”—was the complete heading for International Class 35. Therefore, the essential issue on appeal was whether the language of the heading for International Class 35 encompassed “retail store services” such that the applicant’s amendment complied with Rule 2.71(a).

The Board also noted that §1402.07(a) of the Trademark Manual of Examining Procedure (TMEP) stated, in relevant part, 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 number designation. … In many cases, the identification is merely a repetition of the entire general class heading for a given class. In this situation, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification. The USPTO 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, or to amend to items in other classes.

The applicant argued that its amended services fell within the scope of its original application because the full heading for International Class 35 encompassed retail store and store services. The applicant further argued that its amendment did not broaden the scope of its original recitation of services because “retail services” were “definitely included under the umbrella of business management services,” inasmuch as the operation of a retail store and the offer of retail services were “business services” that involved the management of the business.

The examining attorney argued that the adoption and use of an international class heading in an identification “should not be construed as automatically encompassing any and all goods or services falling within that given class.” The examining attorney also argued that, in this particular case, the wording of the International Class 35 heading did not include “retail store services.” Finally, the examining attorney rejected the applicant’s assertion that “business management” could be understood as encompassing “retail store” services.

The examining attorney offered the following definition of “Business Management” from the Dictionary of Professional Management by I.S. Banki (Systems Research, 1997):

Process and result of applying Management (qv) and Management Science (qv) concepts and techniques to the system, function or office of planning, organizing, staffing, developing, directing, coordinating, evaluating and controlling all available or projected material, human, and environmental resources of a business organization or system to achieve its goals, objectives and mission, successfully.

Based on that definition and the TMEP’s “ordinary meaning” test, the examining attorney concluded that “’business management’ did not refer to any activity that a business undertook; rather, it referred to the application of management techniques, within a business, to achieve success.”

Decision. The Board agreed with the examining attorney that the applicant’s proposed amendment violated Rule 2.71(a) because it improperly broadened the original identification of services. According to the Board, the term “business management”—and the other terms in the heading for International Class 35—could not be construed as encompassing retail store services.

“Business Management” was a defined term, the Board explained, and its meaning was elucidated by the definition that the examining attorney had supplied. The record evidence did not show that the term possessed an additional meaning or a wider scope. Nor did it support the applicant’s contention that “business management” was an umbrella term that incorporated the operation of a retail store because any such operation involved “the management of [a] business.”

For those reasons, the Board concluded that “business management services” were significantly different from, and could not be construed as including, “retail store services.” In the Board’s view, business management was a business-to-business service that allowed one company to help another company function better, whereas retail store services were business-to-consumer services that allowed retailers to aggregate goods for purchases by consumers.

The Board acknowledged that: (1) class headings were allowed in international registrations and (2) the USPTO accorded filing dates to PTO applications that sought extensions of protection for international registrations that used class headings as recitations of goods or services. Nevertheless, the Board emphasized that the use of the “words” of an International Class heading as an identification in a PTO application was “not deemed to include all the goods or services in the established scope of that class.”

Finally, the Board addressed an issue that involved the existence of a policy—sometimes referred to as the “class heading covers all” policy—that had been adopted by some countries that were parties to the Madrid Agreement and/or Protocol. The policy interpreted the scope of an international class heading, in an application or registration, as encompassing the entire alphabetical list of acceptable goods or services for that class. It was therefore possible, the Board explained, that applicants who had requested extensions of protection to the U.S., based on international registrations that employed international class headings, could “incorrectly assume” that they could later amend their applications to identify “any one or more of the listed goods or services within the international class.”

The Board understood how that “mistaken notion” could arise. Nevertheless, “no provision in U.S. law or any obligation by treaty” required the USPTO to deviate from, or to make an exception to, its “longstanding practice governing the scope and interpretation of identifications and in deciding what amendments [we]re permissible.” Put simply, the fact that the applicant’s use of the International Class 35 heading could be understood in other countries to include “retail store services” had no influence on the Board’s decision.

In light of the facts and findings of record, the Board concluded that the applicant’s amended recitation of services in International Class 35 violated Rule 2.71(a), and thus was unacceptable, to the extent that it included “retail store services and on-line retail store services featuring a wide variety of consumer goods of others.” Because that language exceeded the scope of the services that were recited in the original application, the examining attorney’s refusal to register the applicant’s mark for “retail store services and on-line retail store services featuring a wide variety of consumer goods of others” in International Class 35 was affirmed. Nevertheless, the application could proceed to publication for “advertising services” in International Class 35 (and for the identified goods in other international classes).

The case is Serial No. 79099154.

Attorneys: Leo M. Loughlin (Rothwell, Figg, Ernst & Manbeck, PC) for Fiat Group Marketing & Corporate Communications S.p.A. Janice McMorrow, Trademark Examining Attorney.

Companies: Fiat Group Marketing & Corporate Communications S.p.A.

Cases: Trademark USPTO