George R. Fuller

Trademark Trial and Appeal Board

Jan 27, 2020

87042629 (T.T.A.B. Jan. 27, 2020)

This Opinion Is Not a
Precedent of the TTAB

Mailed: January 27, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re George R. Fuller
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Serial No. 87042629
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Christine C. Washington, Esq.
for George R. Fuller.

James W. Stein, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Kuhlke, Lynch, and English,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

George R. Fuller (“Applicant”) seeks registration on the Principal Register of BE-
GEORGEOUS in standard characters.1 The Examining Attorney finally refused
registration on two grounds: first, the unacceptable identification of goods/services;

1 Application Serial No. was filed May 19, 2017, based on Applicant’s alleged use of the mark
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
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and second, the unacceptable specimens in which the mark does not match the
drawing. We affirm the refusal to register based on the unacceptable identification,
and therefore need not reach the refusal based on the specimens. See In re DTI
Partnership LLP, 67 USPQ2d 1699, 1702 (TTAB 2003).
I. Relevant Background
We limit our discussion of the prosecution history to that involving the
identification of goods/services. Applicant’s initial application contained the following
identification, with no International Class specified:
Provision of a website featuring information and materials
(graphic, audio, video, downloadable, non-downloadable,
live, streamed, pre-recorded, interactive and on-demand
creative content), television/webisode/radio programs,
instructional audio/visual materials, books, apparel,
accessories, cosmetics, and related merchandise, products
and services pertaining to hair and cosmetic esthetics.
The September 6, 2016 Office Action required, inter alia, an amended
identification to clarify the goods/services, which were so broadly identified that they
could fall in multiple International Classes, and to remove the parentheses. The
Office Action included suggested language for the identification and cautioned
Applicant that the identification could not be expanded.
In an April 24, 2017 Response to Office Action submitted with a petition to revive,
Applicant offered the following amended identification, in International Class 35
(“First Proposed Amendment”):
Provision of a website featuring information in the field of
hair care, esthetics, fashion, style techniques;
downloadable audio, video, materials and mobile
applications in the field of hair care, esthetics, fashion,
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style techniques; non-downloadable, live, streamed, non-
interactive, interactive and on-demand
television/webisode/radio programs featuring instruction
and commentary in the field of hair care, esthetics, fashion,
style techniques; books; apparel; accessories; related
merchandise, products and services.
The April 25, 2017 Office Action rejected the proposed amendment as exceeding
the scope of the original identification and as indefinite and misclassified. The
Examining Attorney noted that Applicant had improperly deleted some limiting
language, included very broad and general wording such as “related merchandise,
products and services,” and included items such as “books.” The Examining Attorney
explained that the original identification would remain operative.
In a February 7, 2018 Response to Office Action submitted with another petition
to revive, Applicant addressed the identification only by stating, “Applicant is
amenable to further modifying the identification of goods in the manner suggested by
the Examiner if doing so will result in approval of the Application for registration.”
The March 19, 2018 Final Office Action again rejected the original operative
identification for containing matter that is overly broad and potentially falling in
multiple classes, including misclassified goods/services, and containing parentheses.
The Office Action again included suggested language for the identification and
cautioned Applicant that the identification could not be expanded.
On September 19, 2018, Applicant requested reconsideration and appealed.
1 TTABVUE; 4 TTABVUE. The Request for Reconsideration proposed the following
amendment to the identification, with no International Class specified (“Second
Proposed Amendment”):
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Provision of a website featuring information in the field of
hair care, [cosmetic – modifier proposed by Examining
Attorney] esthetics, fashion, style techniques,
downloadable audio-visual materials and mobile
applications in the field of hair care, esthetics, fashion,
style techniques; non-downloadable, live, streamed, non-
interactive, interactive and on-demand television,
webisode, and radio programs featuring instruction and
commentary in the field of hair care, esthetics, fashion, and
style techniques, books pertaining to hair care, esthetics
fashion and style techniques, apparel related to hair care,
esthetics, fashion and style, hair care, esthetics, fashion
and style accessories.
4 TTABVUE 4.
On May 1, 2019, the Examining Attorney responded that the Request for
Reconsideration failed to comply with the requirement for an acceptable
identification, and allowed Applicant an additional 30 days in which to comply.
5 TTABVUE.
Applicant submitted no further amendment of the identification, and no response
to the Office Action within the 30-day deadline. The Board therefore resumed the
appeal. 6 TTABVUE.
However, on June 26, 2019, concurrently with its Appeal Brief, Applicant
requested a remand, alleging that its amendment to the identification in its Request
for Reconsideration “appears to have been overlooked and still requires a response.”
8 TTABVUE 1. The Board denied the requested remand for lack of good cause,2 9
TTABVUE, because the Examining Attorney’s May 1, 2019 Office Action directly
addressed the identification and stated that Applicant had not complied with the

2 TBMP § 1209.04 (2019).
Serial No. 87042629
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identification requirement. See 5 TTABVUE 1. This appeal proceeded, and the
Examining Attorney filed a brief.
II. Analysis
Applicants must provide “[a] list of the particular goods or services on or in
connection with which the applicant uses … the mark.” Trademark Rule 2.32(a)(6),
37 C.F.R. § 2.32(a)(6). The U.S. Court of Appeals for the Federal Circuit has noted
that “[t]he PTO will generally accept any identification of goods or services so long as
it is ‘specific, definite, clear, accurate, and concise.’” In re Cordua Rests., Inc. 823 F.3d
594, 118 USPQ2d 1632, 1639 (Fed. Cir. 2016) (quoting TMEP § 1402.01). Because
clarity of the identification of goods/services is crucial to its public notice function,
however, “[t]he PTO has discretion to determine whether and how a trademark
registration should include a more particularized statement of the goods for which
the mark is [to] be used.” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544
(Fed. Cir. 2007).
In this case, we agree that Applicant’s original identification and the proposed
amendments include indefinite language that violates the requirement for a clear and
particular list of the goods or services. For example, the reference to “and related
merchandise, products and services pertaining to hair and cosmetic esthetics” in the
original identification lacks clarity as to whether Applicant intended to identify goods
on which the mark is used, and if so, what they are, or if these are part of the subject
matter of the services. The original identification also lacks definiteness as to
whether there is only a single service of providing a website, whether there are
Serial No. 87042629
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multiple goods and services (as the First Proposed Amendment seems to indicate, by
separating them with semi-colons), or whether there are multiple services but no
goods (as the Second Proposed Amendment seems to indicate – providing a website,
and providing television, webisode, and radio programs).
The First Proposed Amendment remains deficient. Applicant’s use of semi-colons
to separate distinct goods and services conveys a proposal to identify goods/services
such as “accessories; related merchandise, products and services” that could
encompass a vast array of unspecified goods and services that would fall in multiple
classes. In addition to being indefinite as to the nature of what the “products and
services” are, because they are not limited to those “pertaining to hair and cosmetic
esthetics” as in the original identification, they exceed the scope of the original
identification. Thus, the First Proposed Amendment runs afoul of the prohibition
against broadening the identification. Pursuant to Trademark Rule 2.71(a), 37 C.F.R.
§ 2.71(a), “The applicant may amend the application to clarify or limit, but not to
broaden, the identification of goods and/or services.”
In the Second Proposed Amendment, whereas Applicant’s original identification
indicates that the programs “pertain[ed] to hair and cosmetic esthetics,” the proposed
amendment language expands the field to include “fashion, style techniques,”
“fashion and style,” “esthetics,” in general, and “fashion and style accessories.”
Therefore, this proposed amendment also exceeds the scope of the original
identification. We also note that the Second Proposed Amendment introduces
improper bracketed language. Applicant was previously advised in the September 6,
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2016 Office Action at p.2 that “brackets should not be used in identifications.” See
TMEP § 1402.12.
Because of the ambiguity of Applicant’s identification, uncertainty also remains
about the proper classification of the services.

Decision: Because Applicant’s original identification and proposed amendments
are unacceptable, the requirement for an acceptable identification is affirmed. We do
not reach the other ground for refusal.