G. A. Modefine S.A.

Trademark Trial and Appeal Board

Jul 2, 1997

EX (T.T.A.B. Jul. 2, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 3, 1997
Hearing: Paper No. 31
October 24, 1996
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re G.A. Modefine S.A.
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Serial No. 74/049,538
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Herbert Dubno of The Firm of Karl F. Ross, P.C., for G.A.
Modefine S.A.
Priscilla Milton, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
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Before Simms, Cissel and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 12, 1990, applicant, a Swiss company, filed an
application to register the mark "GIORGIO ARMANI" on the
Principal Register for "retail store services," in Class 42.
The application was based on applicant's assertion that it
possessed a bona fide intention to use the mark in
connection with these services in commerce. The application
further noted that the name "Georgio Armani" identifies a
living individual whose consent is of record. In accordance
with applicant's authorization, an Examiner's Amendment
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issued in which applicant claimed ownership of three
subsisting registrations and amended the recitation of
services to read as follows: "retail store services in the
field of clothing." The application was accordingly passed
to publication under Section 12(a) of the Act.
A Statement of Use was filed. The specimens of use
submitted with it were found to be unacceptable by the
Examining Attorney because they did not show use of the mark
in connection with the services set forth in the
application. New specimens of use which show the mark used
in connection with retail store services in the field of
clothing were required by the Examining Attorney.
When the requirement for new specimens was made final,
applicant appealed to the Board. Along with the notice of
appeal, applicant filed a substitute specimen and a
supporting declaration. The Examining Attorney maintained
the requirement for specimens which show the mark used in
connection with the services specified in the application,
noting that the specimens applicant had submitted show the
mark used with business management assistance or franchising
services.
The specimens submitted with the Statement of Use and
the one submitted thereafter are the only evidence in the
record of how the mark is used. One specimen is a copy of
a "Management Agreement" that applicant entered into with an
affiliate retail clothing store business. Under the terms
of the agreement, applicant promises to provide specific
Ser No. 74/049538
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services as the "exclusive manager of the Boutique."
Accounting, cash management, personnel management, payroll
services, insurance and other management services are
specified, but the agreement does not show the mark sought
to be registered used in connection with any of these
activities.
Also submitted with the agreement, however, were
invoices to one of applicant's retailers for "management
fees." These invoices display the mark at the top of the
letterhead.
The specimen submitted by applicant with the notice of
appeal in an attempt to satisfy the requirement for
acceptable specimens is a copy of a letter to a prospective
customer. The mark is shown at the top of the sheet, and
the text advises the prospect that applicant provides
"advertising, public relations, display and retail
management services." It goes on to explain that
bookkeeping and inventory systems are two of the retail
management services it is able to render.
Next, applicant offered to amend the recitation of
services to "business management assistance, namely,
services to retail stores," or to "retail store services,
namely, business management assistance for retail store
business." The appeal was suspended and the application was
remanded to the Examining Attorney for consideration of the
proposed amendments. She held them to be unacceptable on
the ground that the proposed language designates services
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that are not within the scope of the identification of
services in the Notice of Allowance.
Applicant then amended the application to state its
services as follows: "retail store services, namely,
directing, coordinating and supervising conduct of retail
establishments including providing financial accounting and
bookkeeping services, coordinating purchase of merchandise
and distribution of inventory and supervising implementation
of marketing and advertising strategy," in Class 42. The
Examining Attorney maintained her position that the amended
version of applicant's services is unacceptable because it
exceeds the scope of what the words "retail store services
in the field of clothing" are understood to mean.
The appeal was resumed. Applicant supplemented the
briefs it had previously filed, and the Examining Attorney
filed her brief. Both applicant and the Examining Attorney
argued their positions at the oral hearing held before the
Board.
The issues before us in this appeal are the
acceptability of the most recently proposed amendment to the
recitation of services and the acceptability of the
specimens, i.e., whether the specimens show the mark used in
connection with the services identified in the application,
as applicant has been allowed to amend it.
Two underlying legal principles govern the resolution
of this appeal. One is that the specimens of use submitted
with an application must show the mark used to identify the
Ser No. 74/049538
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services which are specified in the application. Section
1(a)(1)(A) and (C) of the Act. The second is stated in
Trademark Rule 2.71(b), which provides that "The
identification of goods or services may be amended to
clarify or limit the identification, but additions will not
be permitted." As the Examining Attorney points out, the
Trademark Manual of Examining Procedure, Section 804.10(b),
elaborates on the rule. It directs Examining Attorneys to
allow amendments if they serve to "...restrict one or more
of the items by inserting qualifying language or
substituting more specific language," or "...to insert an
item which is equivalent to or logically encompassed by an
item already included in the identification of goods and
services." Amendment is not permitted, however, where the
term or wording which is proposed is not logically included
within the scope of the terms in the existing
identification. TMEP Section 804.09(b) notes that "The
scope of the goods and services, as originally identified or
as amended by an express amendment, establishes the outer
limit for any later amendments."
In the instant case, applicant takes the position that
"retail store services in the field of clothing" encompass
the services the specimens show applicant renders under the
mark to the operators of retail clothing stores. Consistent
with this contention, applicant argues that the most recent
amendment to the recitation of services specifies services
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which are within "retail store services in the field of
clothing."
The Examining Attorney maintains that the specimens do
not show the mark used to identify retail store services in
the field of clothing, and that the proposed amendment to
the recitation of services represents an impermissible
broadening of the services set forth in the Notice of
Allowance.
It does not appear to be oversimplifying to state that
the question before us is whether "retail store services"
include the types of services applicant renders to the
operators of retail stores, i.e., whether activities such as
bookkeeping and accounting services, inventory procurement
and distribution, and supervising the implementation of
marketing and advertising strategy are kinds of retail store
services. If so, the specimens are acceptable and the
amended recitation of services is both acceptable and
unnecessary.
We agree with the Examining Attorney that the specimens
do not show the mark sought to be registered used in
connection with retail store services in the field of
clothing. We also agree that the services the specimens
show that applicant provides to retail clothing store
operators are not encompassed within what retail store
services in the field of clothing are normally understood to
be.
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It is well settled that services are activities
performed for the benefit of others. Retail store services
in the field of clothing are the services rendered to the
consuming public by a business operating a retail clothing
store. As the Examining Attorney points out, the dictionary
defines a retail store in terms of "a place of business...
in which merchandise is sold primarily to ultimate
consumers." (Webster's Third New International Dictionary,
1938(1986). The addition of the term "services" to "retail
store" simply refers to the activity conducted in such a
store. The Patent and Trademark Office, as also noted by
the Examining Attorney, has viewed "retail store services"
as "the activity of gathering together various products,
making a place available for purchasers to select goods
(often in numerous locations for the convenience of those
purchasers) and providing other necessary means for
comsummating purchases." Marshall, Trademark Examining
Operation, 82 TMR 94, 108 (1992).
The management and business services with which
applicant uses this mark are not the services a store
renders to its retail clothing customers, but rather are
services applicant performs for the business entities which
provide such store services. The latter are clearly not
included within the former. The fact that the services
applicant renders are performed for the benefit of clothing
store businesses simply does not make them clothing store
Ser No. 74/049538
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services. The activities are fundamentally different. Not
even the beneficiaries of the services are the same.
Applicant therefore must lose this appeal on both
counts. The specimens do not show the mark used to identify
the services set forth in the application at the time of
issuance of the Notice of Allowance, and the proposed
amendment to specify the services rendered to the operators
of retail clothing stores represents an impermissible
broadening of the services as previously set forth in the
application. Accordingly, the requirement for acceptable
specimens is affirmed, as is the refusal to accept the
proposed amended recitation of services.
R. L. Simms
R. F. Cissel
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board