Fiat Group Marketing & Corporate Communications S.p.A.

Trademark Trial and Appeal Board

Jan 31, 2014

No. 79099154 (T.T.A.B. Jan. 31, 2014)

Hearing: October 17, 2013 Mailed: January 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fiat Group Marketing &
Corporate Communications S.p.A.
________

Serial No. 79099154
_______

Leo M. Loughlin of Rothwell Figg Ernst & Manbeck PC for
Fiat Group Marketing & Corporate Communications S.p.A.

Janice McMorrow, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney).1
_______

Before Wellington, Kuczma, and Greenbaum, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Fiat Group Marketing & Corporate Communications S.p.A.
(applicant) has filed an application for extension of
protection of an international registration under Section
66(a) of the Trademark Act, 15 U.S.C. § 1141f(a) (Madrid
Protocol), seeking registration of FIAT 500 (in standard
character form) on the Principal Register for various goods

1 The application was re-assigned to the identified examining
attorney after appeal briefs were filed. Ms. McMorrow appeared
on behalf of the Office at the oral hearing.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 79099154
2
and services,2 including, as originally identified, the
following in International Class 35:
Advertising services; business management; business
administration; office functions.

In this appeal, we are concerned with the amended
identification the applicant seeks to substitute for Class
35, which reads as follows:
Advertising services; retail store and on-line retail
store services featuring a wide variety of consumer
goods of others.

The examining attorney has refused registration for
failure of applicant to comply with a requirement pursuant
to 37 C.F.R. § 2.71(a) for an acceptable recitation of the
services in International Class 35, because the identified
retail store and on-line retail store services are not
within the scope of the recitation that was set forth in
the application at the time of filing.
It is clear that, throughout prosecution, the refusal
has been limited to the “retail store and on-line retail
store services featuring a wide variety of consumer goods
of others” portion of the application’s Class 35 recitation

2 Application Serial No. 79099154, based on International
Registration No. 1082074, has been accorded an effective filing
date of May 3, 2011, and a priority date of April 26, 2011,
pursuant to Section 67 of the Act. See 15 U.S.C. §§ 1141f(b)
(filing date) and 1141g (claim of priority).
Serial No. 79099154
3
of services; indeed, the examining attorney has expressly
accepted the “advertising services” portion.3
Section 1904.03(d) of the TMEP (October 2013)
provides:
If a notification of refusal in a §66(a) application
does not pertain to all the goods/services, the mark
may be protected for the remaining goods/services,
even if the holder does not respond to the
notification of refusal. Sections 68(c) and 69(a) of
the Trademark Act, 15 U.S.C. §§1141h(c) and 1141i(a),
provide that an application under §66(a) of the
Trademark Act is automatically protected with respect
to any goods or services for which the USPTO has not
timely notified the IB of a refusal by either ex
officio examination or opposition.

In view thereof, our consideration of the refusal to
register is expressly limited to the “retail store and on-
line retail store services featuring a wide variety of
consumer goods of others.” Therefore, regardless of our
determination herein, the application will move forward
with respect to the “advertising services” in Class 35, as
well as the identified goods in the other classes.

3 In the Office action issued on March 14, 2012, making the
refusal final, the examining attorney noted the retail store and
on-line retail store services and stated “[s]pecifically, this
wording is beyond the scope of the identification….” The
examining attorney also continued to suggest “advertising
services” as an acceptable recitation. Moreover, in the August
23, 2012 Office action denying applicant’s request for
reconsideration, the examining attorney acknowledged and accepted
applicant’s amendments as to the goods in the other classes and
articulated the refusal with respect to Class 35 solely based on
the “retail store and on-line retail stores services.”

Serial No. 79099154
4
Background
In the first Office action, the examining attorney
informed applicant that several of the identifications of
goods and services, including those in Class 35, required
“clarification in several respects,” and informed applicant
that while it may clarify or limit the goods and services,
Trademark Rule 2.71(a) expressly prohibits any broadening
of the scope of the identifications. In response,
applicant amended the Class 35 services to its current
form, namely, “advertising services; retail store and on-
line retail store services featuring a wide variety of
consumer goods of others.”
In a second Office action, the examining attorney
continued the refusal and made final the requirement for a
proper identification of goods and services. With respect
to Class 35, the examining attorney stated that applicant’s
proposed wording is unacceptable because the retail store
services portion is outside the scope of the application’s
initial recitation of services (“this wording is beyond the
scope of the identification because the initial application
did not list any store services of any kind, nor any
services which would encompass them...”).4

4 Office action dated March 14, 2012.
Serial No. 79099154
5
After issuance of the final refusal, applicant filed a
request for reconsideration which was denied by the
examining attorney. Applicant appealed; both applicant and
the examining attorney have filed briefs and presented oral
arguments.
Issue on Appeal
The issue on appeal involves whether amending the
identification to retail store services from “advertising
services; business management; business administration;
office functions” constitutes broadening, in violation of
Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a). The rule
permits an applicant to “amend the application to clarify
or limit, but not to broaden, the identification of goods
and/or services.” The rule is necessary to provide the
public with notice as to the scope of goods and/or services
for which applicant is seeking registration and to enable
the USPTO to reach informed judgments concerning likelihood
of confusion. Here, there is no dispute that the
recitation of services in the application, as originally
filed, i.e., “advertising; business management; business
administration; office functions,” constitutes the
Serial No. 79099154
6
International Class 35 heading in its entirety.5 There is
likewise no dispute that the objectionable, proposed
amended wording, i.e., “retail store and on-line retail
store services featuring a wide variety of consumer goods
of others,” is a sufficiently definite service that would
be properly classified in Class 35. Thus, the essential
question or issue on appeal is whether the language of the
Class 35 heading encompasses retail store services such
that applicant’s amendment is in compliance with Rule
2.71(a). The question is not, contrary to applicant’s
argument discussed below, whether the scope of Class 35, as
shown by the listing of services that fall within it,
encompasses the services in applicant’s proposed amendment.
Argument
As noted by the examining attorney, the Trademark
Manual of Examining Procedure (TMEP) explicitly addresses

5 International trademark classification, and the headings of the
international classes, are established by the Committee of
Experts of the Nice Union and set forth in the International
Classification of Goods and Services for the Purposes of the
Registration of Marks (10th ed. 2011), published by the World
Intellectual Property Organization (“WIPO”). In addition,
alphabetical listings of acceptable goods or services within each
class are published by WIPO. The USPTO also publishes a similar
list, “U.S. Acceptable Identification of Goods and Services
Manual (ID Manual)”; the USPTO list is consistent with and
expands on the WIPO list, and may be accessed at the following
website address: http://tess2.uspto.gov/netahtml/tidm.html
Serial No. 79099154
7
the scenario presented here, where an identification
recites the wording of a class heading. The TMEP provides:
…for the purpose of determining the scope of an
identification, the examining attorney should consider
the ordinary meaning of the wording apart from the
class number designation.
… In many cases, the identification is merely a
repetition of the entire general class heading for a
given class. In this situation, the USPTO will look
to the ordinary meaning of the words for the purposes
of determining the scope of the identification. The
USPTO will not permit the applicant to amend to
include any item that falls in the class, unless the
item falls within the ordinary meaning of the words in
the heading, or to amend to items in other classes.
As noted in TMEP §1402.01(b), class headings are
generally unacceptable to identify goods/services in
United States applications, even if the class heading
is used as the identification in the foreign
registration.

TMEP § 1402.07(a) (The “Ordinary-Meaning” Test)(Emphasis in
bold added).

Applicant asserts that “the amended service[s] should
be considered within the scope of protection of the
original application, since the full heading for Class 35
protects ‘retail store and store services.’” Brief, p. 2.
In support, applicant cites to the following language from
TMEP § 1402.02 concerning the filing date requirement that
an application identify recognizable goods/services:
The USPTO will not deny a filing date if the applicant
uses the language of an international class heading or
indicates that the mark is used on all goods or
services in a certain class. However, the USPTO
strongly discourages the use of the language of the
international class headings or statements that the
mark is used on all goods or services in a class to
Serial No. 79099154
8
identify the goods or services for which registration
of the mark is sought, and will require amendment of
any such identification.
...
Note also that an applicant is required to submit a
verified statement that the applicant is either using
the mark in commerce or has a bona fide intention to
use the mark in commerce on or in connection with all
the goods and/or services set forth in the
identification. It is unlikely that any applicant is
using or intends to use a mark on all goods or
services within a certain class.

According to applicant, the above TMEP language “makes
it clear that the PTO considers a class heading to
encompass all of the goods or services in a particular
class.” Brief, p. 3. Applicant also compares its use of
the class heading to others’ use of wording such as “all
other items in Class []” in identifications and cites to a
non-precedential Board decision where it was held that the
latter phrase does encompass all goods or services within
the specified class.6 With respect to its own proposed
amendment, applicant contends that it is not improperly
broadening the scope of the original services because
“retail services are definitely included under the umbrella
of business management services” inasmuch as “[o]perating a

6 See In re Mark D. Baruffi, (not precedential) App. No. 78164161
2005 WL 1285669 (TTAB, May 6, 2005). Non-precedential decisions
are not binding on the Board, but may be cited to and considered
for whatever persuasive value they may hold. In re the Procter &
Gamble Company, 105 USPQ2d 1119, 1120-21 (TTAB 2012); In re
Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011). See also,
TBMP §§ 101.03, 801.03, and 1203.02(f) (2013).
Serial No. 79099154
9
retail store and offering such services is [sic] a business
services and involve the management of the business.” Id.
at p. 4.
Finally, applicant references in its appeal brief a
third-party application that was allowed by the USPTO to
mature into a registration.7 The examining attorney’s
objection to applicant’s introduction of this registration,
and reliance thereon, is sustained inasmuch as a copy of
the registration was not submitted prior to appeal.
Trademark Rule 2.142(d). Accordingly, we have given no
further consideration to this registration. Applicant also
referenced in its reply brief an additional registration
that applicant itself acquired under what it claims are
identical circumstances.8 Again, because this registration
was not timely submitted, it has not been given
consideration. Id. In any event, prior decisions by
examining attorneys involving the scope of headings and any

7 Applicant asserts that Registration No. 3505278 issued “for
retail services in International Class 35 where the application
was originally based on Section 1(b), but was amended to Section
44 based on a [European Community Trademark] listing the same
[International] Class 35 headings as the instant application.”
Brief, p. 5.
8 Applicant asserts that it is the owner of Registration No.
4162910 for the mark FIAT for goods and services that include
“retail store services” in International Class 35 and that it
obtained this registration under Section 66(a) based on a foreign
registration that merely lists the International Class 35 heading
as the identified services in said class.
Serial No. 79099154
10
permissible amendments do not dictate a particular result
for this appeal. In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also In re
Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (“Although
consistency in examination is a goal of the Office, the
decisions of previous Trademark Examining Attorneys are not
binding on us, and we must decide each case based on the
evidence presented in the record before us.”).
The examining attorney, on the other hand, argues that
the adoption and use of an international class heading in
an identification should not be construed as automatically
encompassing any and all goods or services falling within
that given class; and, in this particular case, the wording
of the International Class 35 heading does not include
“retail store services.”
In addition, the examining attorney rejects
applicant’s assertion that the specific term “business
management” may be understood as covering retail store
services. In support, she submitted the following
definition with her appeal brief:
Business Management (BM) – Process and result of
applying Management (qv) and Management Science (qv)
concepts and techniques to the system, function or
office of planning, organizing, staffing, developing,
directing, coordinating, evaluating and controlling
all available or projected material, human, and
environmental resources of a business organization or
Serial No. 79099154
11
system to achieve its goals, objectives and mission,
successfully.

Dictionary of Professional Management by I.S. Banki
(Systems Research, 1997).9

Based on this definition and in accordance with the
“ordinary meaning” test provision of the TMEP, the
examining attorney concludes that “‘business management’
does not simply refer to any activity a ‘business’
undertakes, e.g., retail store services, it refers to
applying management techniques within a business to achieve
success.” Brief, p. 9. And while applicant has argued
that it manages its own business and thus performs
“business management” services, the examining attorney
counters that this is not a service rendered in commerce
for others but is merely a service that is incidental to
running any business. Rather, the examining attorney

9 The examining attorney requested that the Board take judicial
notice of this definition. In its reply brief, applicant
objected because the definition was not submitted prior to the
appeal. Because the Board may take judicial notice of dictionary
definitions, timeliness is not an issue. Furthermore, in this
case, the examining attorney submitted with the brief copies of
the definition, cover and publication information pages. In view
thereof, we take judicial notice of the provided definition. In
re Thomas White Int’l Ltd, 106 USPQ2d 1158, 1160 n.1 (TTAB 2013)
(judicial notice taken from dictionary existing in print format);
see also, In re Analog Devices Inc., 6 USPQ2d 1808, 1810 n.2
(TTAB 1988) (judicial notice of technical trade dictionaries such
as IEEE Standard dictionary of Electric and Electronics Terms)
aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial No. 79099154
12
asserts that “applicant’s retail store services are
separable, core activities which entail offering third
party products to consumers for purchase and do not entail
providing business techniques as an end product to those
consumers.” Id.
Finding
We agree with the examining attorney that the proposed
amendment improperly broadens the identification of
services, in violation of Rule 2.71(a). The term “business
management,” as well as the other terms in the
International Class 35 heading, cannot be construed as
encompassing retail store services. An applicant must
identify the goods and services specifically to provide
public notice and to enable the USPTO to classify the goods
and services properly and to reach informed judgments
concerning likelihood of confusion under 15 U.S.C.
§1052(d). As our reviewing court has held, the USPTO has
discretion to require the degree of particularity deemed
necessary to clearly identify the goods and/or services
covered by the mark. In re Omega SA, 494 F.3d 1362, 83
USPQ2d 1541 (Fed. Cir. 2007). The TMEP contains clear
guidance about the particularity required, including that
“common names” and “generally understood” terminology
should be used, “not a class heading.” TMEP 1402.01(a).
Serial No. 79099154
13
It is clear that the examining attorney has properly
followed Office policy, specifically the policy set forth
in the TMEP’s “Ordinary-Meaning Test” section (set forth
above), in considering the scope of the term “business
management,” as well as the other terms in applicant’s
original Class 35 recitation of services. We see no error
in the examining attorney’s reliance on this section nor do
we see any reason to deviate from the Office’s clear and
publically-stated policy. Consideration of the “ordinary
meaning” of wording in any identification of goods or
services when attempting to define the scope of an
identification is pragmatic and encourages consistent
interpretation of various terms.
“Business management” is a defined term, with the
meaning set forth above. No other defined meanings have
been made of record nor is there evidence showing that
“business management” possesses any additional meaning or
may be construed any differently in scope. Applicant’s
contention that “business management” is an umbrella term
that incorporates “[o]perating a retail store” because the
latter involves “the management of [a] business” is not
supported by the record.
With the above in mind, we find that business
management services are significantly different from and
Serial No. 79099154
14
cannot be construed as including retail store services.
Given the definition of “business management” and the
requirement that for a mark to be registrable for services,
the services must be performed for the benefit of others,
such services would necessarily involve one entity
employing a variety of techniques or skills in order to
assist another “business organization or system” and help
that business “achieve its goals, objectives and mission,
successfully.” In other words, this entails a business-to-
business service with one company helping another company
function better in its business. Retail store services, on
the other hand, involve entities bringing together
different goods for retail purchase by consumers; this is a
service offered to the purchasers of the goods.
We are furthermore not persuaded by applicant’s
attempts to equate or liken the mere recitation of an
international class heading with other identifications that
include specific language asserting use of a mark on “all
of” the goods or services within a particular international
class. The plain meaning of the wording “all of” the goods
or services in an international class can only be
understood as meaning that applicant is seeking protection
of its mark for all goods or services in that particular
class, as defined in WIPO’s International Classification
Serial No. 79099154
15
manual (see footnote 5). The unpublished In re Baruffi
decision is readily distinguishable on this basis;
applicant in that proceeding stated in his initial
application that he intended to use his mark on certain
clothing items as well as “all other items in Class 25.”
Class headings, on the other hand, are by their nature
comprised of intentionally broad terms, but do not
necessarily cover all goods or services within that class.
TMEP § 1402.07(a) clearly explains this by noting that
where an identification is the mere repetition of a class
heading, “[t]he USPTO will not permit the applicant to
amend to include any item that falls in the class, unless
the item falls within the ordinary meaning of the words in
the heading.” Applicant relies on TMEP § 1402.02 to
support its contention that use of a class heading covers
all of the goods or services in the class. Such reliance
is misplaced. TMEP § 1402.02 only equates use of an
international class heading with language such as “all of
the goods [or services]” in a particular class, for the
purpose of explaining that applications with such improper
identifications will still be accorded a filing date.
Furthermore, the provision in TMEP § 1402.02 advising that
it is “unlikely that any applicant is using or intends to
use a mark on all goods or services within a certain class”
Serial No. 79099154
16
was clearly made only in the context of requiring an
applicant to submit a verified statement that it is either
using the mark in commerce or has a bona fide intention to
use the mark in commerce with all of the identified goods
or services.
To be clear, while class headings are allowed in
international registrations, and the USPTO will accord a
filing date to a USPTO application seeking extension of
protection to an international registration that uses a
class heading as an identification of goods or services,
use of the words comprising a class heading as an
identification in an application filed with the USPTO is
not deemed to include all the goods or services in the
established scope of that class.
Finally, we address an issue raised at oral hearing
involving the existence of a policy (sometimes referred to
as “class heading covers all”) adopted by certain countries
party to the Madrid Agreement and/or Protocol. This policy
involves interpreting the scope of an international class
heading in an application or registration as encompassing
the entire alphabetical list of acceptable goods or
services for that class. It is therefore possible that an
applicant requesting extension of protection to the United
States based on an International Registration employing
Serial No. 79099154
17
international class headings may incorrectly assume that it
can later amend its application to identify any one or more
of the listed goods or services within the international
class. While we appreciate how such a mistaken notion may
arise, no provision in U.S. law or any obligation by treaty
obliges the USPTO to deviate from or make an exception to
its longstanding practice governing the scope and
interpretation of identifications and in deciding what
amendments are permissible. Put simply, in the case at
hand, the fact that applicant’s use of the International
Class 35 heading may be understood in other countries to
include retail store services has no influence on our
decision.10
In sum, we conclude that the application’s current
recitation of services in International Class 35 is

10 We further note that the trend is to move away from this “class
heading covers all” construction of identifications with respect
to Community Trademarks (CTM’s) in the European Union. In 2012,
the Court of Justice of the European Union (ECJ) issued a
decision involving the use of international class headings. See
Case C-307/10[2012] Chartered Institute of Patent Attorneys v.
Registrar of Trade Marks (commonly referred to as “IP
Translator”). Subsequent to and in accordance with the IP
Translator decision, the European Union’s Office of Harmonization
in the Internal Market (OHIM) set forth a new CTM application
policy requiring an applicant who uses class headings to
affirmatively indicate that it is seeking protection for all
listed goods or services in the class. Our observation of the IP
Translator decision and OHIM policy is solely for purposes of
noting a trend in other countries; the decision and OHIM policy
do not factor into our decision in this particular matter.

Serial No. 79099154
18
unacceptable insofar as it includes “retail store services
and on-line retail store services featuring a wide variety
of consumer goods of others,” because that language exceeds
the scope of the services originally recited in the
application in violation of Rule 2.71(a).
Decision: The refusal to accept registration of
applicant’s mark for “retail store services and on-line
retail store services featuring a wide variety of consumer
goods of others” in International Class 35 is affirmed.
The application shall proceed to publication for
“advertising services” in International Class 35, as well
as the identified goods in the other international classes.