Mark D. Baruffi

Trademark Trial and Appeal Board

May 6, 2005

No. 78164161 (T.T.A.B. May. 6, 2005)

Mailed 5/6/2005

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
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In re Mark D. Baruffi
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Serial No. 78164161
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Mark D. Baruffi, Pro Se

Maria-Victoria Suarez, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
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Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Mark D. Baruffi (applicant) seeks to register in typed
drawing form VEGAS BABY for “clothing, namely, shirts,
blouses, T-shirts, tank tops, tops, vests, sweaters,
dresses, skirts, jumpers, jump suits, rompers, overalls,
jackets, boxer shorts, pants, jeans, shorts, leggings,
bottoms, sweatshirts, sweat pants, sweat suits, jogging
suits, sleep wear, socks, bandannas, swim wear, hats, caps,
visors, belts, shoes, sneakers, sandals, and boots.” The
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2
intent-to-use application was filed on September 18, 2002.
Applicant disclaimed the exclusive right to use VEGAS apart
from the mark in its entirety.
The Examining Attorney refused to register the mark
“on the grounds that the [current] identification of goods
[set forth above] is unacceptable because it exceeds the
scope of the identification as it was set forth in the
application at the time of filing.” (Examining Attorney’s
brief page 1). When the refusal to register was made
final, applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
Applicant’s original identification of goods reads as
follows: “T-shirts, headwear, aprons, baby bibs, pull
overs, polos, tank tops, all other items in Class 25.” In
the first Office Action, the Examining Attorney noted that
“the wording ‘all other items in Class 25’ in the
identification of goods is unacceptable because it does not
specify actual goods. The applicant must delete this
wording from the identification.”
Thereafter, applicant did indeed delete the wording
“all other items in Class 25.” However, applicant then
added numerous other specific types of goods to its
identification of goods which were not included within the
Ser. No. 78164161
3
specific set of goods set forth in its initial application,
namely, “T-shirts, headwear, aprons, baby bibs, pull overs,
polos, tank tops.” Just by way of example, applicant’s
amended identification of goods includes such items as
“jackets, pants, jeans, swimwear and bandannas” which
clearly were not specifically listed in applicant’s
original identification of goods. There are numerous other
specific types of goods included in applicant’s amended
identification of goods which were not specifically listed
within applicant’s original identification of goods.
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).
As noted earlier, applicant’s original identification
of goods included the words “all other items in Class 25.”
In her brief dated October 19, 2004 the Examining Attorney
contends that such wording is impermissible and that
specific items cannot be substituted for this broad phrase,
citing TMEP Section 1402.02. Prior to April 29, 2005 TMEP
Section 1402.02 provided the following example: “For
example, if the applicant uses ‘all goods in Class 16’
along with definite language, the identification of [goods]
Ser. No. 78164161
4
may only be amended to correct the identification within
the scope of [goods] indicated by the presence of the
definite language.”
However, effective April 29, 2005 Section 1402.02 was
amended to delete this language. Section 1402.02 now
reads, in part, as follows: “The Office will not deny a
filing date if the applicant uses the language of an
international class heading or indicates that the mark is
used on all goods or services in a certain class.”
Accordingly, it is now permissible to substitute for the
broad phrase “all other items in Class 25” specific goods
in Class 25. Therefore, applicant’s amended identification
of goods falls within the scope of the original
identification, and is acceptable.
Decision: The refusal to register is reversed.