Templer

Trademark Trial and Appeal Board

Jun 20, 2006

No. 76577262 (T.T.A.B. Jun. 20, 2006)

Mailed: June 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Templer
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Serial No. 76577262
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Myron Amer of Myron Amer, P.C. for Lazar Templer.

Ellen J.G. Perkins, Trademark Examining Attorney, Law
Office 100 (Chris A.F. Pedersen, Managing Attorney).
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Before Hohein, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Lazar Templer to register
the mark PRIMA-CARE on the Principal Register for “medical
supplies, such as gauze pads, and related goods.”1
The trademark examining attorney initially required
applicant to clarify or limit the identification of goods
to goods that fall within the scope of those goods set
forth originally in the application, in accordance with

1 Application Serial No. 76577262, filed February 23, 2004, based
on applicant’s allegation of a bona fide intent to use the mark
in commerce under Section 1(b) of the Trademark Act.
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76577262
2
Trademark Rule 2.71(a), by substituting more definite
language for the wording “such as” and “related goods.”
In response thereto, applicant requested that the
identification of goods be amended to read “gauze of cloth”
in International Class 24.
In the second Office action, the examining attorney
rejected the proposed amendment to the identification of
goods, and made final the requirement that applicant submit
an amendment that falls within the scope of the goods as
originally identified.
In response thereto, applicant requested that the
identification of goods be amended to read “cloth gauze” in
International Class 24.
When the examining attorney rejected the second
proposed amendment and continued the final requirement that
applicant submit an acceptable amendment to the
identification of goods, applicant appealed. Applicant and
the examining attorney filed main briefs and applicant
filed a reply brief.
Applicant argues that his proposed amendment to the
identification of goods eliminates the wording deemed
indefinite by the examining attorney; and that the proposed
amendment thus complies with the examining attorney’s
requirement for a more definite identification of goods.
Ser No. 76577262
3
Applicant further argues that he is a manufacturer of all-
purpose gauze cloth; and that the examining attorney’s
suggestion of prefacing applicant’s amended recitation with
the wording “medical supplies, namely,” would, in essence,
render inaccurate the identification of goods.
The examining attorney maintains that the prefatory
wording in the original identification of goods clearly
indicates that applicant provides goods in the medical
field; that elimination of the indefinite wording from the
original identification of goods leaves “gauze pads,” which
is an acceptable identification of medical goods in
International Class 5; and that applicant’s proposed
amendment to “gauze cloth,” however, falls outside the
scope of the goods as originally identified.
Applicant contends in reply that the issue on appeal
is whether his goods, identified as “cloth gauze,” fall
outside the scope of the goods as previously amended,
namely, “gauze of cloth.” Applicant further contends that
the authority relied upon by the examining attorney does
not support the requirement at issue on appeal.
We turn then to our determination with regard to
applicant’s proposed amendment to his identification of
goods. Section 7(c) of the Trademark Act provides, in
part, as follows:
Ser No. 76577262
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Contingent on the registration of a mark on the
principal register provided by this Act, the
filing of the application to register such mark
shall constitute constructive use of the mark,
conferring a right of priority, nationwide in
effect, on or in connection with the goods or
services specified in the registration….

15 U.S.C. §1057. Thus, the identification of goods or
services in an application defines the scope of those
rights established by the filing of an application for
registration on the Principal Register. See TMEP §1402.06
(2d ed. rev. April 2005). An applicant may not expand
those rights through amendment of the identification of
goods or services. See TMEP §1402.06(b) (2d ed. rev. April
2005).
In accordance therewith, amendments to the
identification of goods or services are governed by
Trademark Rule 2.71(a), which provides as follows: "The
applicant may amend the application to clarify or limit,
but not to broaden, the identification of goods and/or
services." 37 C.F.R. §2.71(a). Accordingly, an applicant
may not amend an identification of goods or services to add
or substitute a term that is not logically included within
the scope of the terms originally identified or that is
otherwise qualitatively different from the goods and
services as originally identified. See TMEP §1402.06(a)
Ser No. 76577262
5
(2d ed. rev. April 2005). In addition, TMEP §1402.07(d)
(2d ed. rev. April 2005) provides, in part, as follows:
If the applicant proposes an amendment to the
identification of goods and services, and the
examining attorney determines that the amendment
is unacceptable, the examining attorney should
refer to the identification of goods before the
proposed amendment to determine whether any later
amendment is within the scope of the
identification. In such a case, the applicant is
not bound by the scope of the language in the
proposed amendment but, rather, by the language
of the identification before the proposed
amendment.

Thus, the scope of the goods or services as originally
identified or as amended by an express amendment,
establishes the outer limit for any later amendments.2 See
TMEP §1402.07 (2d ed. rev. April 2005).
In this case, applicant’s goods were originally
identified in his application as “medical supplies, such as
gauze pads, and related goods.” As noted by the examining
attorney, the wording “such as” and “related goods” is
indefinite. See TMEP §1402.03(a) (2d ed. rev. April 2005).
Nonetheless, the goods clearly encompass medical supplies,
including gauze pads. In accordance with the above
authorities, applicant is limited in any proposed amendment

2 Contrary to applicant’s assertion in his reply brief, we need
not determine whether “cloth gauze” falls within the scope of
applicant’s previous amendment to his identification of goods,
namely, “gauze of cloth,” inasmuch as that earlier proposed
amendment was rejected by the examining attorney in her final
Office Action. See TBMP §1402.07(d), supra.
Ser No. 76577262
6
to his identification of goods solely to narrowing or
clarifying the originally recited medical supplies.
Applicant’s proffered amendment of his identification of
goods to “cloth gauze” falls outside the scope of the
original. Applicant explains his proposed amendment by
asserting in his response to the first Office Action that
the recited goods were “inadvertently misdescribed as filed
and should have been for a piece goods component used for
children’s hats.” However, applicant cites to no authority
to support his contention that the inadvertent
misdescription of the goods in his application can be
corrected by amending his goods to fall outside the scope
of the original. To the contrary, it is settled that once
the extent of an identification has been established, it
cannot be expanded later. See In re Swen Sonic Corp., 21
USPQ2d 1794 (TTAB 1991); and In re M.V Et Associes, 21
USPQ2d 1628 (Comm'r Pats. 1991). In this case, the wording
“medical supplies” establishes the parameters of
applicant’s identification of goods. Applicant therefore
is limited in any amendment solely to narrowing or
clarifying the nature and type of the applied-for “medical
supplies” with greater particularity. See TMEP
§1402.03(a), supra. Inasmuch as the proposed
Ser No. 76577262
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identification of goods neither narrows nor clarifies the
original identification of goods, it was properly rejected.3
Decision: The refusal to register is affirmed.

3 Applicant’s remedy, in the event he seeks to register his mark
for “cloth gauze,” is to file a new application for such goods.