GoldenCare Corp.

Trademark Trial and Appeal Board

Jun 30, 1998

No. 74349470 (T.T.A.B. Jun. 30, 1998)

Paper No. 24
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re GoldenCare Corporation
________
Serial No. 74/349,470
_______
H. Robert Henderson, Richard L. Fix and Michael O. Strum of
Henderson and Strum for GoldenCare Corporation.
Darlene D. Bullock, Trademark Examining Attorney, Law Office 101
(R. Ellsworth Williams, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
GoldenCare Corporation has filed an application to
register the mark "GOLDENCARE PROTECTOR" for services which by a
"supplemental" amendment were ultimately identified as "providing
services to the life and health insurance industry; namely,
conducting business and market research surveys for the
development and marketing of life and health insurance products
and annuities."1

1 Ser. No. 74/349,470, filed on January 19, 1993, based upon an
allegation of a bona fide intention to use the mark in commerce. As
originally filed, the application cryptically identified the services
as "providing services to the health care insurance industry: namely,
Ser. No. 74/319,375
2
Following publication of the mark for such services on
March 8, 1994 and issuance of a notice of allowance therefor on
May 31, 1994, applicant submitted, along with the required fee, a
timely statement of use on November 21, 1994 which alleges dates
of first use for the services identified in the notice of
allowance of November 1, 1993. The specimens accompanying the
statement of use, however, are advertising brochures or booklets
which show use of the mark "GOLDENCARE PROTECTOR" in connection
with "LONG-TERM CARE INSURANCE" policies which include "Nursing
Home and Optional Home Health & Community Care Benefits".2
Because "[t]he specimens do not show use of the mark for any
services identified in the application," the Examining Attorney
issued an Office action on February 6, 1995 requiring that

in developing and marketing health care insurance products". Such
identification, prior to being further amended as set forth above, was
subsequently modified, along the lines suggested by the Examining
Attorney in her first Office action, to read: "providing services to
the health care insurance industry, namely conducting business and
market research surveys for the development and marketing of health
care insurance products". We note, however, that although the
supplemental amendment of applicant’s services, as set forth above, is
broader--by virtue of the inclusion of both the life insurance
industry and life insurance products and the deletion of the word
"care"--than either the original or modified identifications, no
objection thereto was ever raised by the Examining Attorney.
2 Among other things, the brochures state that (emphasis added):
This booklet provides only a brief outline of the major
provisions of the GOLDENCARE PROTECTOR long-term care health
insurance program. Your GOLDENCARE PROTECTOR Policy ... and
its riders, if any, will describe your coverage in detail
and will be used in determining your coverage and
eligibility for benefits. The benefits provided, the
premium, and the form number will depend on the Policy
selected and issued.
Ser. No. 74/319,375
3
"applicant ... submit three specimens showing use of the mark for
the services specified."3
Applicant, in a timely response, submitted a set of
substitute specimens on August 4, 1995. Applicant’s submission
includes a declaration, pursuant to Trademark Rules 2.20 and
2.59(b), "verifying that the substitute specimens were in use in
commerce at least as early as the expiration of the time allowed
to Applicant for filing a statement of use." The set of
substitute specimens, however, consists in part of advertising
brochures or booklets which, like those filed with the statement
of use, show use of the mark "GOLDENCARE PROTECTOR" for "LONG-
TERM CARE INSURANCE" policies which include "Nursing Home and
Optional Home Health & Community Care Benefits".4 The substitute
specimens also include copies of a letter dated July 26, 1995
which accompanied such literature. The letter, which contains
the salutation "Dear Agent" and is typed on stationery bearing

3 The Examining Attorney, in connection therewith, also required that
applicant "verify, with an affidavit or declaration, ... that the
substitute specimens were in use in commerce at least as early as the
filing date of the application" (emphasis added), citing Trademark
Rule "2.59(a)". It is pointed out, however, that the applicable rule
is Trademark Rule 2.59(b), which provides in relevant part that, after
filing a statement of use, "the applicant may submit substitute
specimens of the mark as used ... in the sale or advertising of the
services, provided that the use in commerce of any substitute
specimens submitted is supported by applicant’s affidavit or
declaration ... verify[ing] that the substitute specimens were in use
in commerce prior to filing of the statement of use or prior to the
expiration of the time allowed to applicant for filing a statement of
use."
4 Like the specimens submitted with the statement of use, the brochures
include the same language as that previously quoted in footnote 2 of
this opinion.
Ser. No. 74/319,375
4
the letterhead "GOLDENCARE," reads in pertinent part as follows
(emphasis added):
In order to provide better service to agents
in the life and health insurance industry, we
are conducting a business and market research
survey to help develop and market life and
health insurance products and annuities.
We ask that you review the enclosed brochure
which describes such products, entitled
GOLDENCARE PROTECTOR. (This particular
brochure was prepared by us for use in
Massachusetts.) We will be contacting you to
ascertain whether the material as presented
is easy for a consumer to understand--and, of
course, its usefulness as a sales tool for
the agent.
In view thereof, and inasmuch as any substitute
specimens had to have been in use in commerce by no later than
November 30, 1994 (which is the date of expiration of the six-
month period provided by the May 31, 1994 notice of allowance),
the Examining Attorney issued a final refusal on September 5,
1995 in which she indicated, among other things, that (emphasis
in original):
The examining attorney has carefully
considered the [set of substitute] specimens
but they remain unacceptable for the
following reasons. First, the substitute
specimens do not appear to have been in use
before the expiration period for filing the
Statement of Use. The date shown on the
"letter" part of the substitute specimens
list [sic] the date as July 25 [sic], 1995.
Secondly, the new specimens still do not show
use of the mark [in connection] with the
services identified in the notice of
allowance. .... Consequently, the examining
attorneys [sic] refusal regarding the
specimens is maintained and made FINAL.
Ser. No. 74/319,375
5
Applicant, in a timely response submitted with a
certificate of mailing dated March 5, 1996, filed an amendment to
change the identification of its services to "providing services
to the life and health insurance industry; namely, conducting
business for the development and marketing of life and health
insurance products and annuities".5 As justification for such
amendment, which differs in substance from the identification of
services set forth in the notice of allowance by deleting the
reference in the latter to both the word "care" and the language
"and market research surveys," applicant asserts that:
We have an allowable mark and a
Statement of Use submitting appropriate
specimens showing use as early as September
1993; although Applicant claims only a date
of first use of November 1, 1993. It remains
only, therefore, for Applicant and the U.S.
Patent and Trademark Office to agree on an
identification of those services based upon
the specimens submitted with the Statement of
Use.
Applicant, after acknowledging a telephone conference
with the Examining Attorney on March 4, 1996, further contends
that:
The Statement of Use specimens show that
as of September 1993, Applicant had done
business with ... Bankers United Life
Assurance Company of Cedar Rapids, Iowa, in
developing a long-term health insurance
program involving a Golden Care Protector

5 With respect to an amendment to the identification of goods or
services set forth in a statement of use, Trademark Rule 2.88(f)
provides in relevant part that "[t]he statement of use may be amended
in accordance with §§ 2.59 and 2.71 through 2.75." Trademark Rule
2.71(b), in particular, specifies that "[t]he identification of goods
or services may be amended to clarify or limit the identification, but
additions will not be permitted."
Ser. No. 74/319,375
6
Policy for individuals, underwritten by said
Bankers United Life Assurance Company.
In this instance, Applicant worked with
Bankers United Life in developing the certain
type of policy, and provided the brochure
submitted as the specimens to be utilized for
marketing the program. ....
During the prosecution of this intent-
to-use application, the notice of allowance
included the term ... "market research
surveys" [--] a term [previously] recommended
by the Trademark Examining Attorney ....
Applicant admittedly was [subsequently]
unable to submit specimens showing such use
prior to [its claimed dates of first use of]
November 1, 1993, and thus respectfully
submits [that] its identification of services
should be limited to what its specimens do
support.
....
It is respectfully submitted that the
specimens of record do show use of the mark
for the services now identified. ....
The Examining Attorney, in reply, issued an Office
action on April 29, 1996 stating that "[t]he Final refusal to
accept the specimens is maintained." The Examining Attorney
additionally noted, moreover, that:
The applicant has [submitted an] amendment
[to] the recitation of services. However,
said recitation in unacceptable because it is
beyond the scope of the services as listed in
the notice of allowance. Therefore, the
applicant may not amend [the application] to
include any services that are not within the
scope of the services recited in the present
identification.
In a timely response thereto, applicant on July 29,
1996 submitted a further amendment to change the identification
of its services to "providing services to the life and health
care insurance industry; namely, in developing and marketing
Ser. No. 74/319,375
7
health care insurance products for others". Applicant insists
that such amendment is justified by the set of substitute
specimens which it filed on August 4, 1995 and that, despite the
July 26, 1995 date appearing on some of the specimens, "those
specimens do show use in commerce at least as early as the
expiration of time allowed to Applicant for filing the Statement
of Use". Applicant also urges that "the amended recitation of
services are not ’beyond the scope of the services listed in the
Notice of Allowance’ because the amended services are actually
less or of a diminished nature than those set forth in the Notice
of Allowance of May 31, 1994."
In reply, the Examining Attorney on September 11, 1996
issued an Office action which "maintained and made Final" the
requirement for "acceptable specimens showing use of the mark for
the proposed services." The Examining Attorney also "maintained
and made Final" the refusal on the ground that applicant’s
"amendment to the recitation of services ... is unacceptable
because it is beyond the scope of the goods [sic] listed in the
notice of allowance."
Applicant has appealed. Briefs have been filed, but an
oral hearing was not held.6 We affirm both the refusal that the
identification of services exceeds the scope of the services
specified in the notice of allowance and the requirement for
specimens showing use of the mark for the services set forth in
the notice of allowance.

6 Although applicant timely filed a request for an oral hearing, it
subsequently withdrew such request.
Ser. No. 74/319,375
8
Applicant, in its initial brief, notes that, in the
response which it filed with a certificate of mailing dated March
5, 1996, it "admitted that its specimens could not meet the
’market research surveys’ portion of the identification of
services in the Notice of Allowance." Applicant argues, however,
that amending its services from "providing services to the life
and health insurance industry; namely, conducting business and
market research surveys for the development and marketing of life
and health insurance products and annuities," as identified in
the notice of allowance, to "providing services to the life and
health insurance industry; namely, conducting business for the
development and marketing of life and health insurance products
and annuities," as set forth in its amendment of March 5, 1996,
is within the scope of the services listed in the notice of
allowance. Specifically, applicant maintains that such amendment
simply "attempted to limit the identification of services as per
the specimens of record submitted with the Statement of Use."
Although applicant’s initial brief is silent with respect to the
fact that, on July 29, 1996, it further amended its services to
"providing services to the life and health care insurance
industry; namely, in developing and marketing health care
insurance products for others," applicant argues in its reply
brief such amendment likewise is merely a limitation designed to
reflect the services evidenced by, presumably, the specimens
filed with the statement of use.7

7 It would appear from applicant’s reply brief that applicant is no
longer relying upon the set of substitute specimens which it
Ser. No. 74/319,375
9
In any event, applicant insists in its reply brief
that:
There is no doubt that Applicant clearly
has attempted to limit the identification of
services. That identification at the time of
the Notice of Allowance included both ... (1)
conducting of business for the development
and marketing of life and health insurance
products and annuities; and (2) conducting
market [research] surveys for the development
and marketing of life and health insurance
products and annuities. By deleting the
services of "conducting market [research]
surveys for the development and marketing of
life and health insurance products and
annuities," it is respectfully submitted that
Applicant clearly has given up the scope of
protection of its mark as to that feature of
its services.
Applicant accordingly maintains, as set forth in its reply brief,
that "the Amendment to the recitation of services is not beyond
the scope of services listed in the Notice of Allowance."
The Examining Attorney, on the other hand, contends
that "the applicant’s amendment to the recitation of services is

submitted, under a declaration from its president, on August 5, 1995.
Specifically, applicant states in its reply brief that it "wishes to
point out that Applicant’s Brochure specimen filed previously herein,
under Declaration by Applicant’s President, shows that as of September
1993, prior to the filing ... of the Statement of Use on November 21,
1994, Applicant’s specimens indicate and prove up the provision of
services to the life and health insurance industry; namely, the
conducting of business for development and marketing of life and
health insurance products and annuities." Notwithstanding that
applicant further amended the identification of its services to read
as indicated above, the only group of specimens which arguably fit the
quoted description thereof in applicant’s reply brief are the
brochures or booklets furnished with applicant’s verified statement of
use. Although, as previously mentioned, applicant also submitted,
with an accompanying declaration from its president, a set of
substitute specimens on August 5, 1995 which included brochures or
booklets which are identical in substance to those it submitted with
its statement of use, the substitute brochures or booklets bear a date
of March 1995 (written as "3/95") and thus, unlike those filed with
the statement of use, which show a September 1993 date (listed as
"9/93"), could not have been in use in commerce prior to November 30,
1994, as sworn to by applicant’s president.
Ser. No. 74/319,375
10
beyond the scope of the services listed in the Notice of
Allowance." Moreover, the Examining Attorney states, with
respect to the requirement for specimens showing use of the mark
for the services identified, that inasmuch as "applicant has
admitted that the specimens submitted did not support [any of]
the services listed in the notice of allowance ..., this issue is
moot and is not addressed in this brief."8
Citing an accompanying definition of the word "survey"
from the "Random House Dictionary," which among other things
defines such term as a verb meaning "3. to conduct a survey of or
among: to survey TV viewers" and as a noun signifying "9. a
sampling or partial collection, of facts, figures, or opinions
taken and used to approximate or indicate what a complete
collection and analysis might reveal: The survey showed the
percentage of the population that planned to vote,"9 the

8 We do not take such statement, however, as a withdrawal of the
requirement. Although, in particular, the word "moot" is problematic,
we construe the Examining Attorney’s statement to mean that,
irrespective of whether applicant’s amended identification of services
is beyond the scope of the services set forth in the notice of
allowance, none of applicant’s specimens is acceptable, since they do
not evidence use of the mark "GOLDENCARE PROTECTOR" for any of the
services identified in the notice of allowance, and thus the
requirement is proper. However, as to applicant’s asserted
"admission," we note that such applies only to its concession that the
specimens which it has furnished do not evidence use of the mark
"GOLDENCARE PROTECTOR" for the services of providing market research
surveys. Applicant plainly maintains, at least with respect to the
specimens furnished with its statement of use, that such specimens
demonstrate use of the mark "GOLDENCARE PROTECTOR" for the services
described in the amendments to its identification of services.
9 The Examining Attorney’s request that we take judicial notice thereof
is approved inasmuch as it is settled that the Board may properly take
judicial notice of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953) and University of Notre Dame du Lac v. J. C. Gourmet
Ser. No. 74/319,375
11
Examining Attorney argues in her brief that, as amended,
applicant’s identification of services is outside of the scope of
the services set forth in the notice of allowance. Specifically,
noting that the notice of allowance lists "providing services to
the life and health insurance industry; namely, conducting
business and market research surveys for the development and
marketing of life and health insurance products and annuities" as
the identification of applicant’s services, the Examining
Attorney argues that (emphasis in original):
It is clear from the above recitation of
services that the services provided by
applicant consist of conducting business and
market surveys. The applicant’s recitation
of services is further narrowed by the
wording "for the development and marketing of
life and health insurance products and
annuities." The ordinary meaning of these
services is conducting marketing surveys
regarding life and health insurance products
and annuities. ....
The applicant has attempted to amend its
recitation of services to "providing services
to the life and health [care] insurance
industry; namely, [in] developing and
marketing health care insurance products for
others ..." The applicant erroneously
believes that because the wording "marketing"
remains in the recitation of services that
the applicant has "limited" the recitation of
services. However, the examining attorney
contends that the applicant has broadened the
recitation of services. The applicant has
basically gone from "conducting business and
marketing surveys" to "developing and
marketing health care insurance products."
Developing and marketing health care
insurance products is a very broad
description of services that goes beyond
conducting surveys. Therefore, the
applicant’s proposed amendment does not

Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/319,375
12
constitute a limitation of the recitation of
services. Consequently, the applicant’s
proposed recitation of services is beyond the
scope of the services listed in the Notice of
Allowance and is[,] therefore, not
acceptable.
Trademark Rule 2.88(i)(1) requires that "[t]he goods or
services specified in a statement of use must conform to those
goods or services identified in the notice of allowance." While,
as noted previously (see footnote 5), Trademark Rule 2.71(b), as
made applicable by Trademark Rule 2.88(f), provides that the
identification of services may be amended to clarify or limit the
identification, additions thereto are not permitted. Here, the
amendments subsequently made by applicant plainly list services
different from those stated in the notice of allowance. Such
amendments consequently constitute additions to, and thus exceed
the scope of, the services set forth in the notice of allowance,
which identifies applicant’s services as "providing services to
the life and health insurance industry; namely, conducting
business and market research surveys for the development and
marketing of life and health insurance products and annuities."
In either event, it is clear that the amendment of the statement
of use to identify such services as "providing services to the
life and health insurance industry; namely, conducting business
for the development and marketing of life and health insurance
products and annuities" and the further amendment to identify
applicant’s services as "providing services to the life and
health care insurance industry; namely, in developing and
marketing health care insurance products for others" fail to take
Ser. No. 74/319,375
13
into account that the crux of the services recited in the notice
of allowance is the conducting of business surveys and the
conducting of market research surveys, which in each instance are
conducted for purposes of the development and marketing of life
and health insurance products and annuities. That such is the
ordinary and reasonable construction of the services identified
in the notice of allowance is made clear, for example, by
applicant’s set of substitute specimens, which show, in the case
of the July 26, 1995 letter accompanying a copy of its brochure,
that applicant is "conducting a business and market research
survey to help develop and market life and health insurance
products and annuities." By thus deleting reference, in its
amendments, to conducting business and market research surveys
from the services identified in the statement of use, applicant
has added different services and, thus, has broadened its
identification of services beyond the scope of those set forth in
the notice of allowance.
Moreover, even if we were to agree with applicant that
the amended identifications of its services are included within
the services set forth in the notice of allowance and thus the
amendments were permissible, the fact remains that none of the
specimens furnished demonstrates use of the mark "GOLDENCARE
PROTECTOR" for the services recited. Section 1(d)(1) of the
Trademark Act, 15 U.S.C. §1051(d)(1), provides in relevant part
that an applicant, as part of the submission of a statement of
use, shall "submit specimens or facsimiles of the mark as used in
commerce". In view thereof, Trademark Rule 2.88(b)(2)
Ser. No. 74/319,375
14
specifically requires that "[a] complete statement of use must
include .. . [t]hree specimens or facsimiles .. . of the mark as
used in commerce."
We agree with the Examining Attorney that additional,
properly verified specimens are necessary inasmuch as the
brochures or booklets submitted as specimens with the statement
of use, although in use in commerce prior to November 30, 1994,
evidence use of the service mark "GOLDENCARE PROTECTOR" to
identify and distinguish only a health care insurance policy
which has certain features and benefits rather than the services
of developing and marketing of health insurance products for
others. Likewise, the brochures or booklets submitted as part of
applicant’s set of substitute specimens demonstrate use, as of
March 1995, of the mark "GOLDENCARE PROTECTOR" only in connection
with health care insurance services consisting of an insurance
policy with various enumerated benefits and features and simply
do not show use thereof for the services of developing and
marketing health insurance products for others. Although, as
indicated earlier, the substitute specimens also include copies
of a letter dated July 26, 1995 which accompanied such
advertising literature, such letter utilizes only the term
"GOLDENCARE" in reference to applicant’s conducting of a business
and market research survey of insurance agents to help develop
and market life and health insurance products and annuities. The
service mark "GOLDENCARE PROTECTOR," as the letter makes clear,
is used to identify and distinguish the actual health insurance
services available under such a policy, as is shown by the
Ser. No. 74/319,375
15
reference in the letter to "the enclosed brochure which describes
such products, entitled GOLDENCARE PROTECTOR." Furthermore, and
in any event, applicant has never offered any explanation as to
the glaring discrepancy between its president’s verification that
the substitute specimens were in use in commerce as of no later
than the November 30, 1994 deadline for filing the statement of
use and the subsequent dates of March 1995 and July 26, 1995
respectively shown on the face of the advertising brochure or
booklet and the business and marketing survey letter sent to
insurance agents.
Simply stated, therefore, since none of the specimens
furnished by applicant establishes use of the mark "GOLDENCARE
PROTECTOR" for the identified services, as amended, set forth in
the statement of use, the requirement for "acceptable specimens"
showing use of such mark for the services identified is proper.
Decision: The refusal on the ground that applicant’s
amendment of the identification of its services is unacceptable
because it is beyond the scope of the services listed in the
notice of allowance and the requirement for "acceptable specimens
showing use of the mark for the proposed services" are affirmed.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Ser. No. 74/319,375
16
Administrative Trademark Judges,
Trademark Trial and Appeal Board