Carlton Cellars, LLC

Trademark Trial and Appeal Board

Mar 11, 2020

87438793 (T.T.A.B. Mar. 11, 2020)

This Opinion is a
Precedent of the TTAB

Mailed: March 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Carlton Cellars, LLC
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Serial No. 87438793
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David P. Cooper of Kolisch Hartwell, P.C. for Carlton Cellars, LLC.

Tamara Hudson, Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
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Before Kuhlke, Wolfson and Lynch,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Carlton Cellars, LLC (“Applicant”) seeks registration on the Principal Register of
the mark SEVEN DEVILS in standard characters for goods ultimately identified as:
“Wine related accessories, namely, foil cutters for wine
bottles in Class 8; wine openers; wine aerators; pouring
spouts for wine for household use; coolers for wine;
beverage glassware, all in Class 21; clothing, namely, t-
shirts, hats, and visors in Class 25; and wine in Class 33.”1

1 Application Serial No. 87438793 was filed on May 5, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
anywhere, and first use of the mark in commerce, at least as early as September 24, 2010.

Serial No. 87438793
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As originally written, the identification of goods read: “wine and wine-related
accessories and other goods, namely foil cutters, openers, aerators, pour spouts, bottle
coolers, glassware, clothing, and other wine-related goods.” Applicant left the
“International Class” field blank in the application, and paid fees sufficient to satisfy
a single class only. During pre-examination, for purposes of applying the fee paid for
only one class, the U.S. Patent and Trademark Office (USPTO) designated the
application in International Class 8. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1401.03(b) (October 2018) (“In an application under § 1 or § 44
of the Trademark Act, if the applicant does not designate a class number(s), the
USPTO will do so.”).
The Trademark Examining Attorney initially refused registration of Applicant’s
mark on the grounds that the identification of goods as written was indefinite
(specifically with respect to “clothing” and “other wine-related goods”) and identified
goods in more than one International Class without payment of sufficient fees.2
August 4, 2017 Office Action, TSDR 1.3 Applicant responded by listing the goods in a
single identification statement as noted above,4 and asserting that it would “pay for

2 Trademark Rule 2.86(a)(2), 37 C.F.R. § 2.86(a)(2), provides: “In a multiple-class application,
the applicant must satisfy the following, in addition to the application requirements of § 2.32
for a trademark or service mark, and § 2.44 for collective marks: … (2) Submit the application
filing fee required by § 2.6 for each class… .”
3 Page references to the application record are to the USPTO’s Trademark Status &
Document Retrieval (TSDR) system. References to the briefs are to the Board’s TTABVUE
docket system.
4 That is, by identifying the goods as “Wine related accessories, namely, foil cutters for wine
bottles in Class 8; wine openers; wine aerators; pouring spouts for wine for household use;
coolers for wine; beverage glassware, all in Class 21; clothing, namely, t-shirts, hats, and
visors in Class 25; and wine in Class 33.”
Serial No. 87438793
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additional classes of goods in a separate communication.” February 5, 2018 Response,
TSDR 1. Applicant did not pay the fees for any additional classes, nor does the record
reflect any separate communication following this response.
After the Examining Attorney issued a Final Action not only on these
requirements, but also on a substantive refusal under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on U.S. Registration No. 4845400 for the mark SEVEN
DEVILS (in standard characters) registered on the Principal Register for “Distilled
Spirits; Spirits; Whiskey spirits” in International Class 33, Applicant appealed to this
Board.5 It then filed a Request for Reconsideration,6 which stated that “Applicant will
pay for the additional classes of goods after speaking with the Examining Attorney
to learn whether the goods are approved.” December 11, 2018 Request for
Reconsideration, TSDR 1. The Board then suspended the appeal and remanded to the
Examining Attorney for a decision on the Request for Reconsideration.7 However,
notwithstanding Applicant’s expressed intention of discussing the refusal with the
Examining Attorney, the record contains no indication that an oral communication
between Applicant and Examining Attorney occurred. After the Examining Attorney

5 Applicant paid the notice of appeal fee for only a single class. See Trademark Rule
2.6(b)(18)(ii), 37 C.F.R. § 2.6(b)(18)(ii) ($200 per class required).
6 The Request for Reconsideration is contained in Applicant’s “Petition to Revive Abandoned
Application,” which Applicant filed after the application was abandoned for Applicant’s
failure to timely respond to the March 1, 2018 Office Action. The Petition is entered in the
TSDR database, and not in TTABVUE. Applicant’s Petition was granted on January 29,
2019.
7 2 TTABVUE.
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denied Applicant’s Request for Reconsideration, 5-6 TTABVUE, the Board resumed
the appeal and briefs were filed.
In its Brief, Applicant’s only statement regarding the requirements is that it “will
submit payment of the fees for the additional classes of goods pending outcome of the
appeal.” 4 TTABVUE 2. The primary focus of Applicant’s Brief, as with its Responses
during prosecution and its Request for Reconsideration, is to traverse the Examining
Attorney’s substantive refusal to register Applicant’s mark under Section 2(d). Id. at
2-4.
We affirm the Examining Attorney’s requirements for a definite identification of
goods, and for payment of sufficient fees to cover four classes. As discussed below, in
circumstances such as this, we will not, and do not here, reach the substantive refusal
under Trademark Act Section 2(d).
I. Requirement for Sufficient Fees
We begin by addressing the Examining Attorney’s refusal based on the
insufficiency of the fees paid for the application, which identifies goods in
International Classes 8, 21, 25 and 33.
“Classification is the basis for determining the number of fees that must be paid.”
TMEP § 1401.04. Trademark Rule 2.86(a)(2), 37 C.F.R. § 2.86(a)(2), provides that in
a multiple-class application, the applicant “must…submit the application filing fee
required by § 2.6 for each class.” (emphasis added); see also Trademark Act Section
30, 15 U.S.C. § 1112 (in a multiple-class application, “a fee equaling the sum of the
fees for filing an application in each class shall be paid”); TMEP § 1401.04 (if the
application sets forth goods or services in more than one class, and insufficient fees
Serial No. 87438793
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to cover all the classes have been paid, “the applicant must either amend the
application to restrict the goods or services to the number of classes for which the fee
has been paid or submit additional fees to cover all the goods or services set forth in
the identification.”). Proper classification allows for administrative recordkeeping,
enables accurate and efficient public searches of USPTO records, and facilitates
examination of applications filed with the USPTO by aligning fees with costs.8
Because a search must be done in each class designated, a greater number of
international classes in an application may require a more extensive and time-
consuming search.
Where an application is filed with insufficient fees to cover all the goods identified
in the application because they fall into more than one class, the USPTO has an
established policy “to ensure the collection of application filing fees from all
applicants on an equitable basis.” TMEP § 810.01. The USPTO applies the fees on a
class-by-class basis. In this manner, the application may advance to examination

8 As explained in the USPTO FY 2019 Performance and Accountability Report, available at
https://www.uspto.gov/sites/default/files/documents/USPTOFY19PAR.pdf, on page 19:
The USPTO is a government agency with a strong commitment to delivering its mission;
yet, because it is funded through user fees, in many ways it operates like a private sector
business. The USPTO is a performance-based, production-oriented, revenue-generating
entity (i.e., zero dollars received in taxpayer funding), with a demand-driven workload
and budgetary requirements.
The USPTO’s fees are set at rates intended to cover the cost of services provided, including
maintaining prudent operating reserves, which are crucial for managing within the
agency’s complex and uncertain operating environment.
This includes providing a nationwide workforce “24/7/365” operational capability,
improving IT support for examination and revenue-collection capabilities, providing IT
recovery capabilities to sustain the business, making more successful and more reliable
IT deployments, and enhancing the understanding of the interactions between IT and
business functions.
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without delay, the lack of payment of appropriate fees may be addressed by an
authorization to charge an Applicant’s or its attorney’s Deposit Account. Id. If,
however, “an authorization to charge fees has not been provided and the examining
attorney is unable to secure one, the examining attorney must issue a written Office
action noting the deficiency and requiring either payment of the fees or deletion of
classes.” Id. As in this case, such an application will be prosecuted, and an
appropriate Office Action issued, because at least a single class fee has been paid.
Here, the application proceeded in Class 8. Nonetheless, Applicant has made it
clear at every opportunity throughout this proceeding that it is seeking a registration
that covers goods in more than one class. Applicant expressed its intent to obtain a
registration in four separate classes in several ways. First, Applicant’s identification
of goods lists the goods according to their classification, groups them by class, and
identifies them separately among Classes 8, 21, 25 and 33. Second, in Applicant’s
February 25, 2018 Response, the goods are explicitly grouped by their classifications
in Classes 8, 21, 25, and 33. Third, in describing the mark in its brief, Applicant again
divides the goods by class, listing the class first, then naming the goods.
4 TTABVUE 1. Fourth, Applicant indicates a future intent to pay additional class
fees with every communication it has filed during the course of this proceeding.9

9 Applicant’s brief includes a request for “reversal of the Examining Attorney’s Section 2(e)(1)
[sic] refusal, and remand to the Examining Attorney with instructions to issue an Office
action for payment of the filing fees.” 4 TTABVUE 4. The substantive refusal in this case was
made under Trademark Act Section 2(d), not Section 2(e)(1).
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The application identifies goods in multiple classes and Applicant has
demonstrated a clear intention to seek registration in multiple classes. Yet Applicant
has, at every opportunity, failed to pay additional fees to cover all the goods set forth
in the identification. To proceed under Applicant’s proposed arrangement essentially
denies the fee revenue the USPTO needs to carry out its operations. Accordingly, we
affirm the Examining Attorney’s requirement to submit sufficient fees or restrict the
identification of goods in the application to a single class. Trademark Rule
2.86(a)(2).10
II. Requirement for a Definite Identification of Goods
An application must specify the goods or services on or in connection with which
an applicant uses or has a bona fide intent to use the mark in commerce. 15 U.S.C.
§§ 1051(a)(2), 1051(b)(2) and 1053. Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6),
requires that the application specify the “particular” goods or services. To specify the
particular goods means to identify them in an explicit manner. TMEP § 1402.01. The
identification of goods and/or services must be specific, definite, clear, accurate, and
concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296
(TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
We assess the requirement for a definite identification of goods as Applicant has
insisted on presenting it on appeal – the listing as set forth above in a single
International Class.

10 As discussed more fully below, the proceeding will not be reopened to allow Applicant to
submit sufficient fees to cover all the classes, or amend the application to a single class.
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We find that Applicant’s identification of goods as submitted is indefinite for two
reasons. First, the identification improperly refers to specific class numbers. See
TMEP § 1402.01 (“The identification itself must not include references to specific
class numbers.”). Second, while Applicant appears to recognize that the identified
goods fall into multiple classes, it has maintained this as a single-class application,
refusing to either delete goods to limit the application to a single class or submit fees
to allow for multiple classes. This disconnect between the one class that was
maintained and an identification containing not only goods from other classes but
references to other class numbers themselves makes the identification indefinite. “An
identification that fails to identify the goods and services with specificity is indefinite,
either because the nature of the goods or services is not clear or because the
wording is so broad that it may include goods or services in more than one
class.” Id. (emphasis supplied). Cf. In re RSI Sys., LLC, 88 USPQ2d 1445, 1450 n.5
(TTAB 2008) (“If a proposed identification can be classified in more than one class, it
is not an acceptable identification of goods or services.”) (citing In re Omega SA, 494
F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (finding “scope of the term
‘chronographs’ is ambiguous for registration purposes, for it includes both watches
and time recording devices”)); TMEP § 1402.06(a) (“However, an identification may
not include phrases such as ‘included in this class’ or ‘not included in other classes.’
Such wording is not part of the common name of a good or service, and those
unfamiliar with the Nice Classification would not understand the limitation.”).
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Here, even though the wording in the identification is specific and the individually
listed goods are definite by themselves, the identification as a whole is indefinite
because it includes goods in more than one class and refers to class numbers.
“Terminology that includes items in more than one class is considered indefinite, even
with such additional wording as ‘included in this class’ at the end of the
identification.” TMEP § 1402.01.
Although the fee has been applied to International Class 8 for administrative
convenience, the Board will not, sua sponte, amend Applicant’s identification of goods
to “foil cutters for wine bottles.” To do so would require the Board to disregard the
remaining goods, together with their class designations, including the designation “in
Class 8.” Cf. TMEP § 1402.03, which notes that if an applicant fails to respond to an
Office action that “includes an advisory stating that amendment would require the
payment of additional fees because the fee paid is insufficient to cover all the classes
… the entire application will be abandoned.”
In addition, once the Board issues its decision on the merits of a case, it may not
be reopened except for entry of a disclaimer under Trademark Act Section 6, 15
U.S.C. § 1056, or upon petition to the Director, a situation inapplicable here. See
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); see also In re Brack, 114 USPQ2d
1338, 1342-43 (TTAB 2015) (“We note that the involved application may not be
reopened for further examination following this appeal. … Therefore, Applicant’s
failure to comply with the requirement to sign and verify the involved
application prior to appeal cannot be remedied after issuance of this decision.”
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(internal citations omitted)); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1218 (2019) (applicant “may not amend its application, or
submit additional evidence [once an application has been considered and decided by
the Board on appeal], except for entry of a disclaimer or upon order of the Director”).
By including the class designations for each category of goods, and because the
goods fall into more than one class, the identification suffers from indefiniteness.
Trademark Rule 2.32(a)(6). The USPTO will not register a mark in an application
where the identification of goods remains indefinite. We affirm the Examining
Attorney’s refusal based on the unmet requirement that the identification of goods be
definite.
III. Conclusion
Applicant’s continued attempt to maintain a multiple-class application upon
payment of only a single class fee exhibits at best a misapprehension of, and at worst
blatant disregard for, USPTO policy and procedure. Applicant had a duty under the
Trademark Rules to submit the appropriate filing fee for the number of classes for
which registration is desired, as well as a duty to include a listing of goods that is
“specific, definite, clear, accurate, and concise.” TMEP § 1402.01. Applicant failed to
comply with either requirement.
Failure to comply with a legitimate requirement is sufficient grounds for refusal
of registration. See, e.g., In re Ocean Tech., Inc., 2019 USPQ2d 450686, *2 (TTAB
2019) (“An applicant’s failure to respond to an information requirement is grounds
for a refusal.”); In re Fiat Grp. Mktg. & Corp. Commc’ns S.P.A., 109 USPQ2d 1593,
1599 (TTAB 2014) (applicant’s failure to comply with a requirement pursuant to 37
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C.F.R. § 2.71(a) for an acceptable identification of services is grounds for refusal to
register as to the specified services); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB
2013); In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI
P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003). Moreover, any attempt we would
have made to assess the substantive merits of the likelihood of confusion refusal
would have been hindered by Applicant’s failure to clarify the goods for which it seeks
registration.
In view of our decision with respect to the requirements, we do not reach the
Section 2(d) likelihood of confusion refusal. In re Brack, 114 USPQ2d at 1343
(declining to reach refusal under Trademark Act Section 2(d) because applicant failed
to comply with the requirement to submit a signed and verified application); DTI
P’ship, LLC, 67 USPQ2d at 1702 (declining to reach refusal under Trademark Act
Section 2(e)(1) because applicant failed to comply with Trademark Rule 2.61(b)
requirement for information). Further, even if the Board were to consider the Section
2(d) refusal, the end result would not change, given that we found that Applicant
failed to comply with the requirements and affirmed the refusal of registration on
that basis.
Decision: We affirm the Examining Attorney’s final refusal to register
Applicant’s mark for “Wine related accessories, namely, foil cutters for wine bottles
in Class 8; wine openers; wine aerators; pouring spouts for wine for household use;
coolers for wine; beverage glassware, all in Class 21; clothing, namely, t-shirts, hats,
and visors in Class 25; and wine in Class 33” based on Applicant’s failure to comply
Serial No. 87438793
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with the requirements for payment of sufficient fees and for a definite statement of
goods.