Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SWEN SONIC CORPORATION
Serial No. 73/832,989
December 4, 1991
Vincent L. Carney for applicant
Elizabeth A. Dunn
Trademark Examining Attorney
Law Office 4
(Sharon R. Marsh, Managing Attorney)
Opinion by Samuels
This is an appeal from the Examining Attorney's refusal to amend the identification of goods in Swen Sonic's application for registration of the mark BLUE WAVE. [FN1]
Applicant applied to register the mark BLUE WAVE. The goods were originally identified as "ultrasonic cleaning and bathing apparatus" in Class 11. On December 13, 1989, applicant's counsel agreed to an amendment of the goods to read "ultrasonic-activated bathtubs" in Class 11. The next day, an examiner's amendment to that effect was mailed to applicant's counsel.
On January 11, 1990, applicant's counsel telephoned the examining attorney and attempted to amend the identification of goods to "ultrasonic cleaning tanks" in Class 9. Apparently, after conferring with his client, applicant's counsel was informed that the mark BLUE WAVE had only been used on cleaning tanks on the dates of use asserted in the application.
The examining attorney refused to accept the substitute identification of goods because it was beyond the scope of the existing identification of goods and therefore prohibited by 37 CFR § 2.71(b). This appeal followed. We affirm.
Does 37 CFR § 2.71(b) prohibit the applicant from changing its previously amended identification of goods from "ultrasonic-activated bathtubs" to "ultrasonic cleaning tanks"?
Section 2.71(b) provides that:
The identification of goods or services may be amended to clarify or limit the identification, but additions will not be permitted.
The examining attorney found that the amended identification of goods "ultrasonic-activated bathtubs" in Class 11 did not include the goods in applicant's proposed amended identification of goods, "ultrasonic cleaning tanks" in Class 9. Applicant apparently no longer disputes this point. Therefore, the proposed identification, "ultrasonic cleaning tanks," neither limits nor clarifies the amended identification of goods, "ultrasonic-activated bathtubs."
Applicant instead disputes the way 37 C.F.R. § 2.71(b) has been applied. Primarily, applicant alleges that the rule only applies to the original identification of goods. Thus, according to applicant, trademark applicants should be free to amend their identification of goods as long as it does not exceed the scope of the original identification. While perhaps an alternative interpretation of rule 2.71(b), the Commissioner has interpreted the rule differently. Under 15 U.S.C. § 1123, the Commissioner may "make rules and regulations, not inconsistent with law." Pursuant to this delegation of authority, the Commissioner promulgated changes to the Trademark rules to implement the Trademark Law Revision Act of 1988, Pub.L. 100-667, 102 Stat. 3935. 54 Fed.Reg. 37562 (Sept. 11, 1989).
*2 These new regulations provided that identifications of goods could only be limited or clarified. 37 C.F.R. § 2.71(b). The term "identification of goods" was not limited only to the original identification of goods. This rule prohibits an applicant who has previously deleted goods from its identification of goods from reintroducing these goods into the identification of goods.
... [O]nce the applicant has expressly amended the identification of goods and services to delete an item it may not be reinserted in a later amendment. 1108 Trademark OG 30, 45.
The scope of the goods and services, as originally identified or as amended by an express amendment, establishes the outer limit for any later amendments. 1108 Trademark OG at 45.
Once the identification has been limited, it cannot be expanded later. 1108 Trademark OG at 46.
Thus, the Commissioner has published his interpretation of 37 C.F.R. § 2.71(b). See also In re M.V. et Associes, Trademark Application No. 73/813814, ___ USPQ2d ___ (Comm'r Pat. Aug. 8, 1991) (Applicant not permitted to broaden amended identification of goods to include goods within the original identification of goods). Applicant has not provided any basis to conclude that 37 C.F.R. § 2.71(b), as applied by the Office, is contrary to law. Chrysler Corp. v. Brown, 441 U.S. 281, 295 (1979) (Agency regulations have the force and effect of law).
When the changes in 37 C.F.R. § 2.71(b) were published as a final rule, the notice explained why additions to identifications of goods would not be permitted: "The purposes of the requirement for the identification of goods or services are to give notice to third parties of the scope of the rights claimed by applicant and to permit an accurate search for conflicting marks." 54 Fed.Reg. at 37570. Subsequently, the supplement to the TMEP noted that the "identification of goods and services in an application ... defines the scope of those rights [constructive use and nationwide priority] established by the filing of an application for the Principal Register." 1108 Trademark OG at 45.
Applicants frequently submit broad identifications of goods covering a multitude of goods. When goods are deleted during the examination process, the record is quickly made available to the public in the Office's automated trademark search and retrieval systems. These automated systems only show the present identification of goods in an application. They do not indicate that the identification of goods has been narrowed. The public should be able to rely on these amended identifications of goods when making business decisions concerning likelihood of confusion. See also, M.V. et Associes, supra.
*3 Finally, the legislative history fully supports the Office interpretation and application of 37 C.F.R. § 2.71(b). "As the mark proceeds to registration, the goods identified in the application may be narrowed, but they may not be broadened." S.Rep. No. 515, 100th Cong., 1st Sess. 24 reprinted in 1988 U.S.Code Cong & Admin.News 5577, 5586.
In this case, applicant narrowed its identification of goods to read "ultrasonic-activated bathtubs" in Class 11. Subsequently, applicant attempted to revoke the amended identification of goods and substitute "ultrasonic cleaning tanks" in Class 9. Since the proposed identification of goods neither narrowed nor clarified the identification of goods, the examining attorney's refusal to accept the substitute identification of goods is affirmed.
Harry F. Manbeck, Jr.
Jeffrey M. Samuels
J. David Sams
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/832,989, filed October 23, 1989, and asserting first use and first use in commerce on September 7, 1989.