Aurel A. Astilean

Trademark Trial and Appeal Board

Feb 9, 2009

No. 76688551 (T.T.A.B. Feb. 9, 2009)

Mailed:
Feb. 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aurel A. Astilean
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Serial No. 76688551
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Myron Amer of Myron Amer, P.C. for Aurel A. Astilean.

Andrea P. Butler, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark FIT TEST (in standard character form) for Class
41 services identified in the application, as amended, as
“fitness exercise and instruction, not including fitness
testing or assessment in a health club.”1

1 Serial No. 76688551, filed on April 11, 2007. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and December 1, 2007 is alleged to be the date
of first use of the mark anywhere and the date of first use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76688551
2
At issue in this appeal are (1) the Trademark
Examining Attorney’s final rejection of applicant’s
proposed amendment to the identification of services; and
(2) the Trademark Examining Attorney’s final refusal of
registration based on applicant’s failure to submit a
specimen which demonstrates use of the mark in connection
with the identified services.
The appeal is fully briefed. We affirm the refusals
to register.

Applicant’s proposed amendment to the identification of
services is impermissible.

Applicant seeks to amend the identification of goods
and services in the application from Class 41 services
identified as “fitness exercise and instruction, not
including fitness testing or assessment in a health club”
to Class 9 goods identified as “a DVD of exercises
contributing to fitness.”
Trademark Rule 2.71(a) provides that “[t]he applicant
may amend the application to clarify or limit, but not to
broaden, the identification of goods and/or services.” We
agree with the Trademark Examining Attorney that

commerce. In the application as originally filed, the Class 41
identification of services was “fitness exercise and
instruction.”
Ser. No. 76688551
3
applicant’s proposed amended identification does not merely
clarify or limit the original identification of services,
but rather impermissibly broadens it. That is, the goods
identified in the proposed amended identification are
beyond the scope of the services as originally identified
in the application.
Applicant is correct in noting that there is no per se
rule forbidding amendment of an identification from goods
to services or vice versa. However, TMEP §1402.07(b)
clearly provides:
The applicant should only be permitted to amend
from goods to services, or vice versa, when the
existing identification of goods and services
fails to specify a definite type of goods or
services and when the existing identification
provides reasonable notice to third parties that
the applicant may be providing either goods or
services within the scope of the existing
identification.

In this case, the Trademark Examining Attorney is not
seeking to apply any per se rule that goods cannot be
amended to services, or vice versa. Instead, she correctly
contends that the exception to the rule as set forth in
TMEP §1402.07(b) is not applicable in this case.
Applicant’s original identification of services is not
ambiguous as to whether it identifies goods versus
services. The current recitation clearly and definitely
sets forth Class 41 services; it cannot be read as
Ser. No. 76688551
4
potentially or ambiguously identifying Class 9 goods as
well. Therefore, applicant may not amend the
identification from Class 41 services to Class 9 goods.
For these reasons, we find that the Trademark
Examining Attorney’s rejection of the proposed amendment to
the identification of services is proper, because the
proposed amendment impermissibly broadens the scope of the
original identification of services. Trademark Rule
2.71(a). The original identification of services, i.e.,
“fitness exercise and instruction, not including fitness
testing or assessment in a health club,” remains the
operative identification of services in the application.

Applicant has failed to submit a specimen which
demonstrates use of the mark in association with the
identified services.

An applicant for registration must submit a specimen
showing the mark as used in commerce. Trademark Act
Section 1(a), 15 U.S.C. §1051(a); Trademark Rule
2.34(a)(1)(iv), 37 C.F.R. §2.34(a)(1)(iv). A service mark
specimen “must show the mark as actually used in the sale
or advertising of the services.” Trademark Rule
2.56(b)(2), 37 C.F.R. §2.56(b)(2). A service mark specimen
must show an association between the mark and the services
Ser. No. 76688551
5
for which registration is sought. In re Adair, 45 USPQ2d
1211 (TTAB 1997); TMEP §1301.04(b).
Applicant’s original specimen is a photocopy of the
opening screen of a DVD, reproduced below, which is aptly
described in applicant’s proposed (and rejected)
identification of goods as “a DVD of exercises contributing
to fitness.”

Ser. No. 76688551
6
Although this specimen might be acceptable as a specimen
for a Class 9 DVD (and we are not finding that it is), it
is not an acceptable specimen showing use of the mark in
connection with the services identified in the application.
Nowhere on this specimen is there any reference to the
Class 41 services recited in the application, i.e.,
“fitness exercise and instruction, not including fitness
testing or assessment in a health club.” Therefore, the
specimen is unacceptable as a service mark specimen.
Applicant has proffered a substitute specimen
consisting of merely a sheet of paper upon which the words
FIT TEST are stamped. Again, there is no reference at all
to the recited services, and no association between the
alleged mark and the recited services. The substitute
specimen therefore is not an acceptable specimen of service
mark use.
Because neither of the specimens submitted by
applicant is an acceptable service mark specimen, the
Trademark Examining Attorney’s final refusal of
registration on the ground that applicant has failed to
submit an acceptable specimen is proper.
In summary, we affirm the Trademark Examining
Attorney’s rejection of applicant’s proposed amendment to
the identification of services on the ground that the
Ser. No. 76688551
7
amendment impermissibly broadens the scope of the original
identification of services. The current identification of
services, “fitness exercise and instruction, not including
fitness testing or assessment in a health club,” remains
operative. We also find that neither of applicant’s
specimens shows use of the mark sought to be registered in
association with the recited services. The Trademark
Examining Attorney’s refusal of registration on this basis
is affirmed.

Decision: The refusals to register are affirmed.