No. 85325994 (T.T.A.B. Sep. 9, 2013)

Bentley Motors Limited

Trademark Trial and Appeal BoardSep 9, 2013

No. 85325994 (T.T.A.B. Sep. 9, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 9, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bentley Motors Limited _____ Serial No. 85325994 _____ Brian R. McGinley of SNR Denton US LLP for Bentley Motors Limited. Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _____ Before Cataldo, Bergsman, and Lykos Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Bentley Motors Limited (“applicant”) filed an application to register the mark BENTLEY, in standard character form1 for “perfume, cologne, aftershave, personal deodorants, cosmetics, hair lotions, soaps” in International Class 3 and “articles of glass, namely, perfume bottles and perfume decanters” in International Class 21. The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that 1 Serial No. 85325994, filed May 20, 2011 pursuant to Sections 1(b) and 44(d) of the Trademark Act. Serial No. 85325994 2 applicant’s mark so resembles the registered marks BENTLEY ORGANIC, BENTLEY, and BENTLEY UNIVERSITY for overlapping goods. See Registration Nos. 4017737, 3799891, 2994045 and 3349002. Following a request for reconsideration which was denied, applicant has appealed the examining attorney’s final refusal to register the application. The case is fully briefed. Concurrent with the request for reconsideration, applicant filed a timely amendment to the identification of goods in both international classes to add the restriction “… all of the foregoing sold exclusively through authorized dealers and authorized service outlets.” Applicant contends that this amendment restricting the trade channel for applicant’s goods will obviate any likelihood of confusion. As applicant argues in its appeal brief, page 4: Applicant’s registration seeks to cover goods promoted and sold under the BENTLEY mark offered exclusively through authorized dealers and service outlets. … Bentley dealers and service outlets are devoted to the distribution and sale of luxury vehicles such as Rolls Royce® and Bentley® brand automobiles and related parts and accessories, and they cater to a niche, affluent clientele base. We are suspending the appeal and remanding the application to the Trademark Examining Attorney to have applicant indicate whether it intended to restrict the identification of goods to clarify the type of authorized dealers and service outlets, namely, “all of the foregoing sold exclusively through authorized vehicle dealers and authorized vehicle service outlets.” If so, then applicant should amend the identification of goods accordingly. See TBMP § 1209.01 (“The Board may remand an application for clarification of the issues on appeal….”). Serial No. 85325994 3 If the goods are so amended and the examining attorney is persuaded, on the basis of the amendment, that applicant is entitled to the registration sought, the examining attorney may approve the application for publication, and the appeal will be moot. If the examining attorney, after consideration of the amendment, accepts the amendment but adheres to the final refusal to register, the examining attorney should issue a written action to that effect, indicating that the amendment has been accepted and that the refusal remains. In that circumstance, the application should be returned to the Board for proceedings to be resumed. TBMP § 1205.01. In view of the foregoing, the appeal is suspended, and the application is remanded to the Trademark Examining Attorney. Applicant is allowed until forty- five (45) days from the mailing date of this order to amend the identification. In the event the examining attorney and applicant are unable to amend the identification within this time frame, the examining attorney should return this application file to the Board, this ex parte appeal will be resumed, and the Board will consider the descriptiveness refusal.