Free Reply in Support of Motion - District Court of Arizona - Arizona

EXHIBIT 2
Case 2:03-cv-00053-SMM Document 233-5 Filed 11/20/2006 Page 1 of 7

TRADEMARK MANUAL EXAMINING OF PROCEDURE 1401.09(b) lmplementation th6 Changes of

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The new requirements the 8'neditionof the NiceAgreement of applyonryro applications on or afterJanuary'1,2002.ln an application beforeJanuarv filed filed '1. 2002. examlning lhe anorney maygivetheapplicant option remaining the of in compliance with the 7" editionof the NiceAgreement amending application or the to complywith the classification requirements ofthe 8Inedition.The applicant may,of its own accord, submitan amendmnt its application bringsit intocompliance to that with the 8tneditionof the NiceAgreement. 1402 1402.01 ldentificationof Goods and Services Specifyingthe Goods and/or Services- in ceneral

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A writtenapplication mustspecifythe particular goodsor services or In on connection with whichthe applicant uses,or has a bonafide intention use,the to markin commerce. U.S.C.9S1051(a)(2) 1051(bX2); C.F.R. 15 and 37 92.92(aX6). To "specify" meansto namein an explicitmanner.The jdentification goodsor of services shouldset forthcommonnames,usingterminology is generally that understood.For products services or that do not havcommonnames, tha applicant shoulduse clearand succinct language describe explain item. to or the Technical esoteric or language lengthy and descriptions characteristics uses of or are not appropriate. The language goodsor services ussdto describe shouldbe understandable the to averagepersonand shouldnot require in-depth an knowledge the relevant of tield. An identification include may termsof art in a particular fieldor industry, but, if these termsare nol widelyunderstood the generalpopulation, identification by the should include explanation the specialized an of terminology. The identification goodsor services of mustbe specific, definite, clear,accurate ano concise.See /n re Societeceneraledes EauxMinerales VittelS.A...l USpO2d da 1296(TTAB1986\,rev'don othergrounds,g24F.2d957,3 USpO2d1450(Fed. Cir. 1987);Procter& Gamble v. Economics Co. Laboratory, \nc.,175USpe 505 (TTAB1972),modified without opinion,498F.2d 1406,18.1 USpe 722 (C.C.P.A. 1974\:ln re CardinalLaboratoies, /rc., 149USpe 709 (TTABj966); C;/,forn,:a Spray-Chemical Corp.v. Osmose WoodpreseNingCo. of America, /nc.,102USpe 321 (Comm'rPats.1954); padeA.C. citbeft Co.,99 USpe 344 (Comm'r pats. Ex 19 5 3 ) . The accuracy identification of language the original in application important is because identification the cannot laterbe expanded. 37 C.F.R. See fUee 52.Zt1a;; and et tn SS1402.06 1402.07 seq.: re M.VEt Associes,2.1 Uspe2d 1628(Comrn', P ats. 9 9 1 ) . 1

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AND ANDSERVICES OF CLASSIFICATION IDENTIFICATIONGOODS for ldentifications Goodsor of Guidelines Acceptable '1402.01(al General Services an of andservices be consrdered will few With exceptions, identificationgoods if it: accePtable . . . . . in ls written English; Describes goods the services thatan English so speaker could and/or what understand thegoods and/or services evenif the grammar are, or phrasing notoptimal; is Meets standards necessarily language) forthin the the (not the set Acceptable ldentification Goods of and Services Manual: ls nota classheading; and ls in thecorrect class.

should given the language the classification forthby the be to and set Deference in application. spelling in Obvious errors an identification of applicant theoriginal goods/services be corrected examiner's may by amendment without contacting the See applicant. TIVIEP 5707.02. 1402.01(b) ldentification Goodsand Services a S44Applicalion of in

of in Theidentificationgoods andservices an application based $44of the on Trademark 15 U.S.C. 1126,mustcomply Act, withthesamestandards govern that S goods applications. applicant The andservices other mustidentify the specifically, properly to enablethe Officeto classify goodsand services the and to reach judgments informed concerning likelihood confusion under15 U.S.C. of S1052(d). Foreign registrations ofteninclude will broad statements the identificationgoods of of andservices. rnany In cases identification the is merely repetition theentire a of general class heading a given for class.These broad identifications generally are unacceptableUnited in States applications. identificationgoods services The of or in theUnited States application be definite specific must evenif theforeign and registration includes overlybroadidentification. re Societe an ln Generale Eaux des Minerales Vittel de 5.4.,l USPO2d 1296. 1298(TTAB1986). revdotlother grounds,824 957,3 USPO2d (Fed. F.2d 1450 Cir.1987). Furthermore,an application in based S44of theTrademark the identrfication on Act, of goods andservices covered theS44basis the United in by States application may notexceed scope thegoods the of andservices identified theforeign in registration. Marmark Ltd. v. Nutrexpa S.4., 12 USPQ2d 1843(TTAB19891, re LowenbreLt lD M0nchen, USPQ178(TTAB1972).However, 175 ifthe applicant relies use also on goods in commerce intent-to-usecommerce, identification or in the of or:ervices mayinclude iterns services listed theforeign or in not registration applicant if the specifically theS44basis thegoods limits to andservices covered theforeign by

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TRA,DEMARK MANUAL EXAMINING OF PROCEDURE
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(7) 'personal (the services" short of Class title 45). These examples to meeteventheminimum fail requirements necessary receive to a filing dateunder C.F.R. 37 52.21(aXa). ln an application under or S44, an examining if attorney findsthattheapplication Sl materials failtospecify goods services, examining recognizable or the attorney should return materials thesupervisory instruments the to legal examiner with instructions cancelthe filingdatefor failureto specifygoodsor services, to under37 C.F.R5 2 .21(aX a). . lf the identification language includes wording that wouldnot be sufficient other and wording that,by itself,wouldbe specific enoughto entitlethe application a tiling to date,the Officewill grantthe application filingdate. The Officewill disregard a wording thatfailsto include scopelimitations the purpose determining any for of th permissjble scopeof amendments. example, the applicant For if uses"e-commerco services" alongwith definite language, identitication services the of may onlybe amended correct identification to the withinthe scopeof services indicated the by presence the definite of language.See TMEPSSl402.07et seq.regardtng the scopeof an identification purposes amendment. for of Reference the goodsor services to onlyon the specimen(s) does not satisfythe "identification goodsor services." requirement an ior of TheOffice notdenya lilingdateif the applicant will usesthe language an of international heading indicates the markis usedon ail goods class or that or services a certainclass. However, Officestrongly in lhe discourages use ofthe the language the international headings statements the markis usedon of class or that all goodsor services a classto identify goodsor services whichregistration in the for of the markis sought, willrequire and amendment anysuchidentification. of Note alsothat an applicant required submita verifiedstatement is to specifying eitherthat the applicant usingthe markin commerce has a bonafide intention use the is or to markin commerce or in connectlon the specified on with goodsor services.ll is unlikely anyapplicant using intends usea markon all goods services that is or to or withina certainclass. 1402.O3 Specificityof Terms Used in ldentifying coods and Services

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Applicants frequently broadtermsto identify goodsor services an use the in application. applications In based solely St(a),15 U.S.C. on the S1051(a), appticant musthaveusedthe markin commerce all of the goodsor services of the on as application filingdate. See Firctlnternationat SevicesCorp.v. Chuckles tnc.,s USPQ2d 1628(TTAB1988).In applications under fited 15 S1(b), U.S.C. SjOSI(b), andS44,'15U.S.C. the mustassert bonafideintent usethe a to S1126, applicant markin commerce thegoods services of theapplication date. The on or as filing requirement use or a bonafide intentto use is not necessarilv for violatedbv broad
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CLASSIFICATION IDENTIFICATIONGOODS AND OF ANDSERVICES terms.Whena markis usedon a number items identifying of thatmakeuo a group, termthatidentfies group a whole homogeneous a the as would be as products thesamegeneral understood encompassing of typethatare commercially related. As longas a broadterm identifies goodsor services the that are intendeo ne ro with reasonable covered certainty, will be reasonable, it froma comrnercral viewpoint, consider the markhasbeenusedforall the related to that eoods or that fall in the designated services group. See tn re Dynamit NobelAb, 169USpO ("ammunition" 499(TTAB1971) permitted because itsscope wasassumed be to understood); re PotT ln Huron Sulphite paperCo.,.l20 USPO343 (TTAB1959) & ('paperotherthan boardpapers" approved because evidence actualuse on of of typesof paper). various Wherean applicant identified goodsvery broadly doesnot use the n)ark has its but on a substantial number related of goods encompassed the identjficairon by language, Office the mayrequire further specificity. e;ample, Office For the generally requires "paper" identified greater that be wilh specificity, manymarks as for-paper actually are usedon specific typesof paperthat may b; classjfied in different classesand that havedistinct channels trade. of Theexamining attorney mustconsider followjng the guidelines: (1) A termthatclearly jtems particular includes thatareclassified rnore in rnan oneclass(e.9., "artists' materials") notacceptable. is Another exampte ts "tables," which would include suchdiverse differenfly and ctassified typesas operating tables,draftsmen's tablesand diningtables. However, the conclusion a termwouldclearlylncludeit;ms classified morethan that in oneclass should be drawn not unless reasonable, light thecomrnerctar in of relationships between the goodsor services all identifi;din the apptication. SeeTN4EP regarding goods thatmaybe ctassified rnore S1402.05(b) in than oneclass depending theirmaterial on composition. (2) Som_e terminology sufficient purposes according filingdate but too is for of a indefinite enable proper to examination be made(e 9i, ,metJttic to parts,,). For exampfe, /n re Soclefe ln Des paiums Schiapaieit, s./.. 122 uspo 349,350 n. 4 (TTAB1959), clarificationtheterm ,beauty of prortucts. was heldto be necessary because termdoesnot havea piriicrrlar the commercial meaning. sucha situallon examining In the attorney mayseek further information under C.F.R. 37 See 52.61(b). ItVElp Sg14. (3) An identification can be understood that whenreadin association the w,th titleof the classin whichit is placed, and that is otherwise satisfactorv. should be required be further not to qualified amendrnent. e.rampte by For "mufflers' theclothing in class would requjre not further modification ro .hcUse indicate articles clothing intended; that of are similarlv, term the organ" theclass printed in publications for would needflrrther not
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TRADEMARK MANUAL EXAMINING OF PROCEDURE qualificatjon. The limitednumber itemsto whichthis applies, of however, represents narow exception the generalru16 an identification a to that must itselfprovide clearindication the natureof the goodsor services.See a of TMEPSS1402.01 '1402.05(b). and However, titleof a class the cannot be usedto definethe natureof the goodswhenthe sameitemcouldbe classified morethanone classdepending material in on composition tield or of use. For example, toolsare classified Class7 if theyare power-driven in or ClassI if they are not power-driven. identitication The mustindicate (oowered nonwhether toolsshouldbe classified Class7 or I the in or powered).In this situation, classtitlecannotbe usedto iustifythe the appropriate classification. (4) The common understanding wordsor phrases of usedin an identification determine scopeand nature the goodsor services.A basicand the of widely-available dictionary shouldbe consulted determine definition to the or understanding a commonly of usedword.

(s) l\,lany goodsare commonly understood movein a particular to channelof

tradeor haveparticular attributes. Whenthosegoodsare classified the in classthat is appropriate thatcommon for understanding, oftenno very furtherspecification to the natureof thosegoodsis necessary.However, as whenthe goodshavea special or attributes are nottypically use that goodsthat wouldcauseit to be classifieo associated thoseparticular wilh In a different class,that use or attribute shouldbe indicated the identification in in orderto justifythe classification. exampl, "skinlotion"usuallyrefsrs For product onethat is not medicated. that reason,it can be to a cosmetic For classified Class3 without in furtherspecification. However. skin lotionthat a is medicated shouldbe classified Class5, and the identification in shoulo indicate that the product medicated orderto justiryits classification is in in Class5 ratherthan in the morecommonly understood assigned and Class

With broadidentifications, with any identification includes as that morethanone item,thereis a question to the amount proof(normally way of specimens) as of by that is necessary assurethe examining to attorney the markhas beenusedon that 'all" the itemsin the application. SeeTMEPS904.0'l(a). The Officedoesnot requirespecimens showinguseof the markfor everyitemset forthin an application. However, an identification so broadthat it encompasses widerangeof if is a products, applicanl the mustsubmilevidence it actually that usesthe markon a wide rangeof products obtainregistration. ln re Ah Products Chemicals, to See & /nc., 192USPQ84, recon.denied192USPQ157(TTAB1976). SeeTNIEP regarding accuracy the identification. of S1402.05 The examining attorney shouldconsider degreeof commercial the relationship between products; factthatthe applicant claimed of the mark,or an the the has use intention usethe mark,in regardto all goodsspecified the applicationi the to in and
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AND OF ANDSERVICES CLASSIFICATION IDENTIFICATIONGOODS are has factthat the aoDlicant statedthatthe factsset forthin the application true. group,a specimen itemof the showing of the markon one use Fora closelyrelated groupis sufticient.As the closeness the relationship becomes lesscertain, of item mightbe necessary showgeneralized to of specimens use on morethanone "House" marksare placedon use. The natureof the markmayalsobe considered. produces, whereas "product" markthat is appropriate a all the goodsthat a company is commodity usedonlyon thatcommodity.See TMEP onlyfor a specific regarding regarding house marks, TMEPS1402.03(c) and S1402.03(b) "a full lineof' a genreof products. identifications referto that depends the factsin the on of The appropriateness any broadidentification particular attorney shouldpermitapplicants adopttermsthat to case. The examining justify. as the circumstances are as broad 1402.03(a) InclusiveTerminology

namesfor goodsor services, as be The identification shouldstatecommon possible phrases.The as and avoidindefinite wordsand complete and specific 'such "andsimilar goods," "including," "comprising," as,""andthe like," terms "products," 'concepts," "likeservices" otherindefinite termsand phrasesare and almostalwaysunacceplable. whenever The terms"namely" "consisting and of'are definite and are preferred greaterparticularity. that Vagueterminology setting forthan identification requires possible. of shouldbe replaced "namely" "consisting whenever by and goods,certainindefinite termsmay be used in In limitedsituations closelyrelated for * for example, "fabricsuitable phrases for lhat followa definite term explanatory makingcoats,suits,and the like." see Ex pafteA.C. GilbeftCo.,99 USPQ344 (Comm'r Pats.1953). is whenit followsa definite 'Partstherefor," related machinery, acceptable as to "Accessories indefinite it has been identification. therefoi'is usually considered but particularly the toy field. ldentifications in allowed somecases, in suchas "dollsand thergfor'and "toyvehicles and accessories therefor" acceptable are accessories wouldbe classified Class in all because goodsthat fall withinthat broaddesignation 28 with the dollsor toy vehicles and couldbe the basisfor a refusalof registration However, phrase this should onlybe usedin a situation under15 U.S.C, $1052(d). goodsencompassed the phraserelatecloselyto the whereit is clearthat the by prlmary goodsand wouldall be classified the sameclassas the primarygoods. in 1402.03(b) HouseMarks

Housemarksreferto marksthat are usedby an entityon a widerangeof goods. and Marks thistvoeareoftenusedinthechemical, of oharmaceutical foodfields.A

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