Aurel A. Astilean

Trademark Trial and Appeal Board

Sep 21, 2007

No. 76662718 (T.T.A.B. Sep. 21, 2007)

Mailed:
Sept. 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aurel A. Astilean
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Serial No. 76662718
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Myron Amer of Myron Amer, P.C. for Aurel A. Astilean.

Katherine Connolly, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:
On July 7, 2006, applicant filed an application to
register the mark FITNESS SCORE (in standard character
form) for Class 41 services identified in the application
as “exercise instruction and fitness training.”1

1 Serial No. 76662718. The application is based on use in
commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76662718
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; (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 recited services; and (3) the Trademark Examining
Attorney’s final refusal of registration based on
applicant’s failure to submit a specimen of use upon which
the mark depicted is a substantially exact representation
of the mark as it appears on the application drawing page.
The appeal is fully briefed. We affirm the refusals
to register.

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

In the application as originally filed, the
identification of services was “exercise instruction and
fitness training,” in Class 41. Applicant seeks to amend
the identification from these Class 41 services to Class 16
goods identified as “an exercise reference chart used by an
individual during an exercising routine.”
Trademark Rule 2.71(a) provides that “[t]he applicant
may amend the application to clarify or limit, but not to
Ser. No. 76662718
3
broaden, the identification of goods and/or services.” We
agree with the Trademark Examining Attorney that
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
Ser. No. 76662718
4
services. The original identification clearly and
definitely sets forth Class 41 services; it cannot be read
as potentially or ambiguously identifying Class 16 goods as
well. Therefore, applicant may not amend the
identification from Class 41 services to Class 16 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.,
“exercise instruction and fitness training,” is the
operative identification of services in this case.2

Applicant’s specimens do not demonstrate 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

2 The proposed amendment of the identification of goods was
entered into the into the application record. In view of our
decision rejecting the proposed amendment, the application record
shall be changed back to reflect the original identification of
services as the operative identification.

Ser. No. 76662718
5
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
for which registration is sought. In re Adair, 45 USPQ2d
1211 (TTAB 1997); TMEP §1301.04(b).
Applicant’s original specimen is a chart, aptly
described in applicant’s proposed (and rejected)
identification of goods as “an exercise reference chart
used by an individual during an exercising routine.” At
the top of the chart is the heading “VIRTUAL COACH MATRIX”
and the subheading “FITNESS SCORE INDEX.” Nowhere on this
specimen is there any reference to the services recited in
the application, i.e., “exercise instruction and fitness
training.” The specimen displays the three words FITNESS
SCORE INDEX only as a subheading on the exercise chart. It
does not demonstrate use of this term in association with
the recited services. Therefore, the specimen is
unacceptable as a service mark specimen.
Applicant’s substitute specimen consists of merely a
sheet of paper upon which the words FITNESS SCORE INDEX 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 is
not an acceptable specimen of service mark use.
Ser. No. 76662718
6
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.

The mark appearing on the drawing is not a substantially
exact representation of the mark appearing on the
specimens.

In a service mark application under §1(a) of the Act,
the drawing of the mark must be a substantially exact
representation of the mark as used in the sale or
advertising of the services, as depicted on the specimen.
Trademark Rule 2.51(b)(1), 37 C.F.R. §2.51(b)(1); TMEP
§807.12(a). In this case, the mark appearing on the
application drawing is FITNESS SCORE. On both applicant’s
original specimen and the substitute specimen, the mark is
depicted as FITNESS SCORE INDEX. We find that the word
INDEX is a material part of the designation FITNESS SCORE
INDEX; together, the words make up a phrase consisting of
the noun INDEX directly modified by the adjectival phrase
FITNESS SCORE. The absence of the noun INDEX from the mark
depicted on the drawing page materially alters the mark.
Therefore, the designation FITNESS SCORE INDEX appearing on
the specimens is not a substantially exact representation
Ser. No. 76662718
7
of the asserted mark appearing on the drawing, FITNESS
SCORE. The Trademark Examining Attorney’s refusal on this
basis is proper.
In summary, we find that the Trademark Examining
Attorney’s rejection of applicant’s proposed amendment to
the identification of services on the ground that the
amendment impermissibly broadens the scope of the original
identification of services is proper. The original
identification of services 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. Finally, we find
that the mark as depicted on applicant’s specimens is not a
substantially exact representation of the mark as it
appears on the drawing page. The Trademark Examining
Attorney’s refusal of registration on this basis is
affirmed.

Decision: The refusals to register are affirmed.