Inprove Inc.

Trademark Trial and Appeal Board

Aug 21, 2015

No. 86002803 (T.T.A.B. Aug. 21, 2015)

Mailed: August 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Inprove Inc.
________

Serial No. 86002803
_______

Gerald A. Gowan of Gowan Intellectual Property,
for Inprove Inc.

April K. Roach, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_______

Before Bucher, Cataldo, and Ritchie, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Inprove, Inc. (“Applicant”) seeks registration of the mark INPROVE, in standard
character form, for services, ultimately identified as follows:1:
IC 37:Ad hoc support services, namely, troubleshooting of computer software
application function and technical support services regarding software
configuration setup for user requirements;

IC 42: Performance management software development services, namely,
application setup, application installation, and software programming,
implementation, configuration, and installation; data import services and
scheduling, namely, services for the setup and timing of the transfer
of data between systems, devices and systems and devices; data

1 Serial No. 86002803, filed July 4, 2013, based upon Applicant’s assertion of a bona fide
intent to use the mark in commerce in all classes. This appeal only concerns certain
services in International Class 42.
This Decision is not a
Precedent of the TTAB
Serial No. 86002803
2
automation and library design development, namely, computer software
development for regulating the transfer of data between systems and devices
to fulfill user requirements; providing bug fixes namely software fixes
for troubleshooting of computer software problems; providing software
patches, namely, providing software programming edits for correcting
software function to expected condition and function, improving data or
information capacity within the software application, and improving
performance in terms of software response time to user requests and
requirements; providing software upgrades for business management
software, namely, providing computer software for increasing security and
function of operating software application, improving data or information
capacity within the software application, and improving performance in
terms of software response time to user requests and requirements; computer
system design services, namely, providing information technology strategies
and related system architecture consulting in the nature of design and
development of information technology systems and network and data-center
architecture, design of information technology network architecture, database
access protocols, system and network security strategies and user access
administration and control strategies; technology and system design,
development, implementation, configuration and management services,
namely, computer software design and development, computer software
implementation and configuration; consultation services for business
management software, namely, services for development, installation,
implementation, configuration, maintenance and updating of computer
software; technical support services and advice relating to the installation
and configuration of computer software; software installation applications
and database environment services to configure data access utilities, data
import scheduling, key performance indicators, management reports and
user privileges, namely, installation of computer software, software
application configuration according to user requirements and ongoing
maintenance of computer software and database for users; technical support
services, namely, remote and on-site infrastructure services in the nature of
troubleshooting of computer hardware and software applications, for
monitoring, administration and management of data transmission and
overall application and database integrity, performance and utility.

The Examining Attorney ultimately accepted the identification of services except
for the two services listed in bold, above, in International Class 42, “data import
services and scheduling, namely, services for the setup and timing of the transfer of
data between systems, devices and systems and devices;” and “providing bug fixes
Serial No. 86002803
3
namely software fixes for troubleshooting of computer software problems,” for which
the Examining Attorney issued a final refusal for Applicant’s failure to comply with
a requirement for an acceptable identification of services; Trademark Rule 2.71(a);
37 CFR § 2.71(a).
When the refusal to register was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Identification of Services
In order to address the Examining Attorney’s requirement respecting Applicant’s
recital of services in International Class 42, we set out the relevant prosecution
history on this issue.
A. Prosecution History
Applicant’s original application, filed on July 4, 2013, identified its services all in
one unspecified class, as follows:
Business consulting services, namely, business research and analysis,
business management, operation and data diagnostic reviews and
analysis, business process redesign and restructuring, performance
measurement and audits, project planning and scheduling;
Performance management software development services, namely,
application setup, application installation, programming,
implementation, configuration, installation, data import services and
scheduling, key performance indicator configuration, software
maintenance programs, data automation and library design
development, bug fixes, software patches, upgrades for business
management software; Training services, namely, business
management training and business management software training;
Computer system design services, namely, information technology
strategies and related system architecture consulting, network
architecture, database access protocols, system and network security
strategies, user access administration and control strategies,
technology and system design, development, implementation,
Serial No. 86002803
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configuration and management; Software licensing and subscription
services; Consultation services for business management software,
namely services for development, installation, implementation,
configuration, maintenance and updating computer software;
Technical support services and advice relating to the installation and
configuration of computer software; Software install application and
database environment services to configure data access utilities, data
import scheduling, key performance indicators (KPIs), management
reports and user privileges; Ad hoc support services and training;
Technical support services, namely, remote and on-site infrastructure
services for monitoring, administration and management of data
transmission and overall application and database integrity,
performance and utility.

In an Office Action, dated October 17, 2013, the Examining Attorney noted that
“The identification of services needs clarification because it is too broad and could
include services classified in multiple international classes.” The Examining
Attorney recommended splitting the application into eight distinct classes of goods
and services, as follows:
International Class 9: Bug fixes, namely, ____ [specify goods, e.g.,
computer software for scheduling and installing updates to other
software]; software patches, namely, ____ [specify goods, e.g., computer
software for increasing security of operating systems];

International Class 35: Business consulting services, namely, business
research and analysis, business management, operation and data diagnostic
reviews and analysis in the nature of ____ [specify type of Class 35
service, e.g., business appraisals], business process redesign and
restructuring, performance measurement and audits in the nature of ____
[specify type of Class 35 service, e.g., business auditing], and project
planning and scheduling in the nature of ____ [specify type of Class 35
service, e.g., business planning and appointment scheduling]; Software
subscription services, namely, _____ [specify type of service, e.g.,
arranging of subscriptions for others]; Ad hoc support services, namely,
____ [specify type of services in this class, e.g., providing office support
staff services];

International Class 37: Ad hoc support services, namely, ____ [specify type
of services in this class, e.g., troubleshooting in the nature of repair of
Serial No. 86002803
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computer hardware]; Technical support services, namely, remote and on-
site infrastructure services in the nature of ____ [specify services in this
class, e.g., troubleshooting of computer hardware] for monitoring,
administration and management of data transmission and overall application
and database integrity, performance and utility;

International Class 38: Ad hoc support services, namely, ____ [specify type
of services in this class, e.g., providing technical support services
regarding the usage of communications equipment];

International Class 40: Ad hoc support services, namely, ____ [specify type
of services in this class, e.g., providing technical advice relating to the
manufacture of information technology devices];

International Class 41: Training services, namely, business management
training and business management software training; International Class 40:
Ad hoc training, namely, ____ [specify type of services in this class, e.g.,
business training services];

International Class 42: Performance management software development
services, namely, application setup, application installation, and software
programming, implementation, configuration, and installation; Data import
services and scheduling, namely, ____ [specify services in this class, e.g.,
data migration and computer programming of data migration
timelines]; key performance indicator configuration, namely, ____ [specify
services in this class, e.g., computer programming]; software
maintenance programs, namely, _____ [specify type of services, e.g.,
design and development of computer software for maintenance use,
updating of software for others]; data automation and library design
development, namely, ____ [specify type of services in this class, e.g.,
design and development of computer databases for libraries]; bug
fixes, namely, ____ [specify type of services, e.g., troubleshooting of
computer software problems]; software patches, namely, ____ [specify
type of services, e.g., updating of computer software]; upgrades for
business management software, namely, ____ [specify type of services,
e.g., updating computer software for others]; Computer system design
services, namely, information technology strategies and related system
architecture consulting in the nature of ____ [specify type of service, e.g.,
design and development of information technology systems and
datacenter architecture], design of information technology network
architecture, database access protocols, system and network security
strategies, and user access administration and control strategies; Technology
and system design, development, implementation, configuration and
management, namely, ____ [specify specific services and subject of
Serial No. 86002803
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services, e.g., computer system design and development, computer
software implementation and configuration]; Software subscription
services, namely, _____ [specify type of service, e.g., updating of
computer software for others on a subscription basis]; Consultation
services for business management software, namely services for development,
installation, implementation, configuration, maintenance and updating of
computer software; Technical support services and advice relating to the
installation and configuration of computer software; Software install
application and database environment services to configure data access
utilities, data import scheduling, key performance indicators,
management reports and user privileges, namely, ____ [specify actual
services, e.g., installation of computer software and maintenance of
computer databases for others]; Ad hoc support services, namely, ____
[specify type of services in this class, e.g., troubleshooting of computer
software problems]; Technical support services, namely, remote and on-site
infrastructure services in the nature of ____ [specify services in this
class, e.g., troubleshooting of computer hardware] for monitoring,
administration and management of data transmission;

International Class 45: Software licensing; Ad hoc support services, namely,
____ [specify type of services in this class, e.g., litigation support
services].

In its Response to Office Action dated April 17, 2014, Applicant opted to pursue
only services in International Classes 37 and 42, as follows:
International Class 37: Ad hoc support services, namely, troubleshooting of
computer software application function and technical support services
regarding software configuration setup for user requirements; ad hoc access
services, namely, use of remote software application access protocols to
provide remote user desktop and computer service;

International Class 42: Performance management software development
services, namely, application setup, application installation, and software
programming, implementation, configuration, and installation; data import
services and scheduling, namely, services for the setup and timing of data
transfer(s) between systems and/or devices; monitoring and updating key
performance indicators; data automation and library design development,
namely, computer software development for regulating the transfer of data
between systems and devices to fulfill user requirements; providing bug fixes
for troubleshooting of computer software problems; providing software
patches, namely, providing software programming edits for correcting
software function to expected condition and function, improving data or
Serial No. 86002803
7
information capacity within the software application, and improving
performance in terms of software response time to user requests and
requirements; providing software upgrades for business management
software, namely, providing computer software for increasing security and
function of operating software application, improving data or information
capacity within the software application, and improving performance in
terms of software response time to user requests and requirements; computer
system design services, namely, providing information technology strategies
and related system architecture consulting in the nature of design and
development of information technology systems and network and data-center
architecture, design of information technology network architecture, database
access protocols, system and network security strategies and user access
administration and control strategies; technology and system design,
development, implementation, configuration and management services,
namely, computer software design and development, computer software
implementation and configuration; consultation services for business
management software, namely, services for development, installation,
implementation, configuration, maintenance and updating of computer
software; technical support services and advice relating to the installation
and configuration of computer software; software installation applications
and database environment services to configure data access utilities, data
import scheduling, key performance indicators, management reports and
user privileges, namely, installation of computer software, software
application configuration according to user requirements and ongoing
maintenance of computer software and database for users; technical support
services, namely, remote and on-site troubleshooting of data transfer between
software applications, in terms of data accuracy, completeness, and integrity
for monitoring, administration and management of data transmission and
overall application and database integrity, performance and utility.

In the May 11, 2014 Final Office Action, the Examining Attorney made final the
identification requirement and stated that the identification, as amended, exceeded
the scope of the original identification of services. The Examining Attorney noted
that Applicant may adopt the following identification, “if accurate”:
International Class 9: Bug fixes, namely, ____ [specify goods, e.g.,
computer software for troubleshooting of computer software
problems];

Serial No. 86002803
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International Class 37: Ad hoc support services, namely, troubleshooting of
computer software application function and technical support services
regarding software configuration setup for user requirements;

International Class 42: Performance management software development
services, namely, application setup, application installation, and software
programming, implementation, configuration, and installation; data import
services and scheduling, namely, ____ [specify services in this class, e.g.,
data migration]; key performance indicator configuration, namely, ____
[specify type of service within the scope of the original identification,
e.g., computer programming]; data automation and library design
development, namely, computer software development for regulating the
transfer of data between systems and devices to fulfill user requirements;
providing bug fixes, namely, _____ [specify actual services provided, e.g.,
troubleshooting of computer software problems]; providing software
patches, namely, providing software programming edits for correcting
software function to expected condition and function, improving data or
information capacity within the software application, and improving
performance in terms of software response time to user requests and
requirements; providing software upgrades for business management
software, namely, providing computer software for increasing security and
function of operating software application, improving data or information
capacity within the software application, and improving performance in
terms of software response time to user requests and requirements; computer
system design services, namely, providing information technology strategies
and related system architecture consulting in the nature of design and
development of information technology systems and network and data-center
architecture, design of information technology network architecture, database
access protocols, system and network security strategies and user access
administration and control strategies; technology and system design,
development, implementation, configuration and management services,
namely, computer software design and development, computer software
implementation and configuration; consultation services for business
management software, namely, services for development, installation,
implementation, configuration, maintenance and updating of computer
software; technical support services and advice relating to the installation
and configuration of computer software; software installation applications
and database environment services to configure data access utilities, data
import scheduling, key performance indicators, management reports and
user privileges, namely, installation of computer software, software
application configuration according to user requirements and ongoing
maintenance of computer software and database for users; technical support
services, namely, remote and on-site infrastructure services in the nature
of _____ [specify services in this class, e.g., troubleshooting in the
Serial No. 86002803
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nature of diagnosis of computer hardware problems] for monitoring,
administration and management of data transmission and overall application
and database integrity, performance and utility.

In its Request for Reconsideration, filed on November 12, 2014, Applicant
asserted that it had “amended the listing of services in Classes 037 and 042 in order
to clarify the scope of the listed services and to ensure that the current listing of
services does not exceed the scope of the services listed in Applicant’s original U.S.
application.” The amendment proposed by Applicant amended the services to those
as currently stated in the application.
In the Denial of Request for Reconsideration, dated December 12, 2014, the
Examining Attorney stated as follows:
The wording “providing bug fixes namely software fixes for
troubleshooting of computer software problems” in the identification of
services must be clarified because it is too broad and could include
goods and services in other international classes. See TMEP
§§ 1402.01, 1402.03. Providing bug fixes that are recorded or
downloadable software for troubleshooting use are in International
Class 9, and providing troubleshooting services are in International
Class 42.

The wording “data import services and scheduling, namely, services for
the setup and timing of the transfer of data between systems, devices
and systems and devices” in International Class 42 in the
identification of services is indefinite and must be clarified because it
does not specify the actual services applicant will provide. See TMEP
§ 1402.01.

The Examining Attorney further suggested the following identification “if
accurate” for the two services at issue in the present appeal:
International Class 9: Bug fixes, namely, ____ [specify goods, e.g.,
computer software for troubleshooting of computer software
problems];

Serial No. 86002803
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International Class 42: data import services and scheduling, namely,
____ [specify type of services, e.g., providing temporary use of online
computer software for setting up and timing data transfers between
systems and devices, file sharing services in the nature of providing a
website featuring technology enabling users to upload and download
electronic files];.

B. Appeal and Further Proposed Amendment
In the brief on appeal, the Examining Attorney again clarified that the
identification requirement applied only to two services in International Class 42,
“data import services and scheduling, namely, services for the setup and timing of
the transfer of data between systems, devices and systems and devices”; and
“providing bug fixes namely software fixes for troubleshooting of computer software
problems.”
C. Analysis
The Trademark Act requires that an application be specific as to the goods or
services for which the mark is or will be used. 15 U.S.C. § 1051(a)(2), (b)(2),
15 U.S.C. § 1053. Regarding amendments, an applicant “may amend the application
to clarify or limit, but not to broaden, the identification of goods ... .” Trademark
Rule 2.71(a). In this case although there was never an accepted recital of services in
International Class 42, Applicant may not extend the scope of the services beyond
the identification of services as originally filed.
The Examining Attorney argues that the wording “data import services and
scheduling, namely, services for the setup and timing of the transfer of data
between systems, devices and systems and devices” is indefinite. Applicant argues
in its brief that these services are “clearly limited to data import and scheduling
Serial No. 86002803
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services, and no additional clarification of these services is required.” 7 TTABVUE
7.2
We note, however, that despite Applicant’s argument, there does not appear to
be any clear meaning of the term “data import and scheduling” in the context of its
services. Applicant does not point to the phrase having been used in any
registration or in any Internet-wide database search. Neither does the phrase
appear in the ID Manual. Indeed, data transfer services generally are considered to
be Class 38 telecommunications services. Accordingly, we agree that this wording is
indefinite and may identify services that should be classified in more than one
International Class.
With its appeal brief, Applicant proposes an amendment in the alternative, to
“data import services and scheduling for use in performance management software,
namely, services for the setup and timing of the transfer of data between systems,
devices and systems and devices.” While noting that the timing of the proposed
amendment was improper, the Examining Attorney stated that in any case “the
proposed wording is unacceptable for the same reasons set forth above.” 9
TTABVUE 10, n1. We agree both that the proposed amendment is untimely, and for
the same reasons, the proposed amendment does not sufficiently clarify the
identification, but rather is indefinite and may identify services in more than one
Class. See TBMP § 1205.01 (Board will treat request for amendment filed more

2 Record citations are to TTABVue, the Trademark Trial and Appeal Board’s publicly
available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014).
Serial No. 86002803
12
than six months after final action as request for remand, which may be denied if it
will “serve no useful purpose.”).
The Examining Attorney further argues that the wording “providing bug fixes
namely software fixes for troubleshooting of computer software problems” is
indefinite and could include goods and services in International Classes 9 and 42.
Applicant argues in its brief that in fact these services are “directed to the provision
of software fixes for troubleshooting of computer software problems.” 7 TTABVUE
6.
We find that, as written, the wording is ambiguous as to whether the “software
fixes” are themselves goods (i.e. downloadable software patches of code to repair
computer problems in International Class 9), a “retail” type of service (i.e. on-line
ordering services featuring downloadable software patches of code in International
Class 35), provision of temporary use of non-downloadable software in International
Class 42 or a true International Class 42 technical support activity/service.
The ID Manual offers the following:
035 On-line retail store services featuring downloadable
{indicate goods, e.g., magazines, books, ring tones, etc.}
042 Technical support services, namely, troubleshooting of
computer software problems
042 Repair of computer software
042 Maintenance and updating of computer software
042 Maintenance of computer software

Serial No. 86002803
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As written, however, the phrase “software fixes for troubleshooting … ” does
not clearly recite an activity. Accordingly, we find that the wording is
indefinite and improperly classified.
II. Conclusion
We conclude that the following wording in applicant’s current identification of
services in International Class 42 is not acceptable: “data import services and
scheduling, namely, services for the setup and timing of the transfer of data
between systems, devices and systems and devices;” and “providing bug fixes
namely software fixes for troubleshooting of computer software problems.”
We note that the Examining Attorney attempted on several occasions to offer
alternative options to Applicant for appropriate wording, and that Applicant made
several attempts to amend the wording as well. Nonetheless, Applicant was
afforded several opportunities to submit an acceptable amendment to the services in
question, and we affirm the refusal to register for the reasons stated above.3
Decision: The refusal to register International Class 42 services “data import
services and scheduling, namely, services for the setup and timing of the transfer of
data between systems, devices and systems and devices;” and “providing bug fixes
namely software fixes for troubleshooting of computer software problems.” is
affirmed. The application shall proceed to publication as to all of the services recited

3 Under the circumstances detailed above, this seems to have been an area of examination
ripe for a telephone conference. Rather than issuing a final refusal and filing an appeal, it
seems to us that optimal examination practice would have been to have Applicant’s counsel
and the Trademark Examining Attorney hammer out an agreement resulting in an
Examiner’s Amendment.
Serial No. 86002803
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in International Classes 37 and the remaining services acceptably recited in
International Class 42.