George Christopher Fischer

Trademark Trial and Appeal Board

Dec 13, 2004

No. 76345954 (T.T.A.B. Dec. 13, 2004)

Mailed 12/13/2004
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re George Christopher Fischer
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Serial No. 76345954
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James C. Wray, Esq. for George Christopher Fischer.
William H. Dawe III, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Hanak, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
George Christopher Fischer (applicant) seeks to
register in typed drawing form OFFSHORE ADVENTURES for
services, which as identified in the 3rd amended recitation
of services, read as follows: “production of television
programs and distribution of television programs,
production and presentation of visual and audio works,
movies, videos and television programs for cultural and
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entertainment purposes.” The intent-to-use application was
filed on December 7, 2001.
Citing Trademark Rule 2.71(a), the Examining Attorney
refused registration on the basis that “applicant’s [3rd]
amended recitation [of services] contains services that are
not within the scope of the recitation [of services] that
was set forth in the application at the time of filing.”
(Examining Attorney’s brief page 2).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
Trademark Rule 2.71(a) provides as follows: “The
applicant may amend the application to clarify or limit,
but not to broaden, the identification of goods and/or
services.” (emphasis added). See also In re Swen Sonic
Corp., 21 USPQ2d 1794 (TTAB 1991).
In its original application, applicant’s recitation of
services read as follows: “production and distribution of
television programs.” In the first Office Action, the
Examining Attorney stated that the “recitation of services
was unacceptable as indefinite.” The Examining Attorney
then suggested that applicant may amend his recitation of
services to read as follows: “production of television
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3
programs and distribution of television programs for
others.” (emphasis added). The Examining Attorney
explained that the addition of the words “for others” was
necessary because “a service must be performed to the order
of, or the benefit of someone other than the applicant.”
(original emphasis). The Examining Attorney then explained
that the addition of the words “for others” to applicant’s
original recitation of services would make it clear that
applicant’s services are being performed for the benefit of
entities other than applicant itself.
Thereafter, applicant amended his recitation of
services on three occasions. On each occasion, the
Examining Attorney took the position that applicant’s
amended recitation of services was impermissible pursuant
to Trademark Rule 2.71(a) because the amended recitation of
services constituted a broadening of the original
recitation of services, which, as previously noted, read
“production and distribution of television programs.”
We agree with the Examining Attorney that applicant’s
third and final amended recitation of services includes
services not included within applicant’s initial recitation
of services, and accordingly we affirm the refusal to
register. Applicant’s third and final amended recitation
of services is broader than applicant’s original recitation
Ser. No. 76345954
4
of services in two ways. First, applicant’s original
recitation of services was limited to the production and
distribution of television programs. Applicant’s final
recitation of services is decidedly broader in that it
includes not only the “production of television programs
and distribution of television programs,” but in addition
it includes the production and presentation of products
besides television programs, namely, audio works, movies
and videos. At page 2 of its brief, applicant argues that
“the production and presentation of visual and audio works,
movies and videos all describe types of television
services, and should not be rejected as describing services
outside of the original identification of services.” We
simply disagree. Clearly, audio works (sound only) and
movies are not within the ordinary meaning of “television
programs.” If applicant truly believed that audio works,
movies and videos were all but a part of “television
programs,” then applicant could simply have stood by his
original recitation of services which read “production and
distribution of television programs.” In other words,
applicant by adding in his final recitation of services the
words “production and presentation of visual and audio
works, movies, videos and television programs” has
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acknowledged that television programs are distinct from
audio works, movies and videos.
Second, applicant’s third and final recitation of
services impermissibly broadens applicant’s original
recitation of services in a second way. Applicant’s
original recitation of services was limited to the
production and distribution of television programs.
Applicant’s final recitation of services includes not only
the production and distribution of television programs, but
also the presentation of television programs. Obviously,
applicant itself has by including the word “presentation”
in its final recitation of services, acknowledged that the
presentation of television programs is distinct from the
production and distribution of television programs.
We also note that applicant argues at page 2 of his
brief that his addition of the words “for cultural,
educational and entertainment purposes” should be accepted
and not rejected because such words “merely serve to limit
the scope of goods to television services produced for
these purposes.” To be perfectly clear, if applicant had
simply added the words “for cultural and entertainment
purposes” to his original recitation of services, this
would not constitute an impermissible broadening of the
original recitation of services, but would instead
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constitute a permissible clarification or limitation of
applicant’s original recitation of services. In other
words, we are not sustaining the refusal to register
because applicant has added the limiting and clarifying
words “for cultural and entertainment purposes” to its
original recitation of services.
One last comment is in order. While not relevant for
deciding this case, we simply note that applicant’s first
and second amended recitation of services are also
impermissible in that, like applicant’s third and final
recitation of services, they include products, such as
movies, videos and audio works not encompassed by the
original recitation of services.
Decision: The refusal to register is affirmed.