Trendsetter Engineering, Inc.

Trademark Trial and Appeal Board

Sep 28, 2018

No. 87065949 (T.T.A.B. Sep. 28, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Trendsetter Engineering, Inc.
_____

Serial No. 87065949
_____

John S. Egbert, Kevin S. Wilson and Michael F. Swartz of Egbert Law Offices
PLLC, for Trendsetter Engineering, Inc.

Edward Fennessy, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Acting Managing Attorney.
_____

Before Taylor, Bergsman and Lynch,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Trendsetter Engineering, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark RESPONSE 360 (in standard character format) for services
originally identified as “[e]mergency response services to provide, notify and mobilize
emergency personnel, ships, vessels and equipment in response to oil and gas well
control and oil and gas well blowouts”1 in International Class 45.

1 Application Serial No. 87065949, filed June 9, 2016 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), and alleging a bone fide intent to use the mark in
commerce. The word “RESPONSE” has been disclaimed at the Examining Attorney’s request.
Serial No. 87065949
- 2 -
Registration was finally refused because Applicant did not amend the recitation
of services as required by the Examining Attorney, who found activities in the
recitation to be indefinite and not properly classified. Applicant appealed and
requested reconsideration. After reconsideration was denied, this appeal resumed.
Both Applicant and the Examining Attorney filed briefs. We affirm.
I. Background
Prior to issuing the first office action, the Examining Attorney notified Applicant,
by email, that a disclaimer of the word “Response” was required and informed
Applicant that the nature of the services was not clear as recited. Applicant
responded, by email, consenting to the requested disclaimer and indicating that it
was willing to “consider … proposals” from the Examining Attorney concerning the
identification of services.
On September 22, 2016, the Examining Attorney issued the first office action2
entering the disclaimer statement and refusing registration until Applicant clarified
the nature of the services, finding the wording indefinite because it broadly
encompassed several different services that may be classified in more than one class.
The Examining Attorney offered the following recitation for possible adoption, if
Applicant’s services involved alarm monitoring:
Class 45 – Emergency response alarm monitoring services,
namely, monitoring of alert devices by a remote monitoring

2 The first office action issued on September 22 contained a typographical error and was
superseded in full by a second one issued on the same day. All references are to the second
version.
Serial No. 87065949
- 3 -
center for the dispatch of emergency public health and
security services and notification to third parties
Applicant responded on March 22, 2017, indicating that the Examining Attorney’s
“suggestion … is not appropriate,” and proposing the following recitation and
classification of services:
Class 45 – Emergency response planning services to
provide consultation and information regarding
emergency personnel, ships, vessels and equipment, to
notify emergency personnel, ships, and vessels when
appropriate, and to mobilize emergency personnel, ships,
vessels and equipment, all of the foregoing in response to
oil and gas well control and oil and gas well blowouts
[Emphasis added by the Examining Attorney, as explained
below].
The Examining Attorney then issued a Final Office Action dated May 2, 2017,
wherein he did not accept the amendment to the recitation of services, maintaining
that the proffered recitation, as it regards the underlined wording noted above, is
indefinite because it encompasses services in more than one class, and the bolded
wording exceeds the scope of the services as originally identified.
Applicant then, in a request for reconsideration dated November 2, 2017, proposed
the following recitation of services:
Class 45 – Emergency response services that provide
emergency personnel, ships, vessels and equipment to
subscribers in response to oil and gas well control and oil
and gas well blowouts that have been reported; emergency
response services to notify emergency personnel, ships,
vessels and equipment for subscribers in response to oil
and gas well control and oil and gas well blowouts that
have been reported; emergency response services to
mobilize emergency personnel, ships, vessels and
equipment for subscribers in response to oil and gas well
control and oil and gas well blowouts that have been
reported [Emphasis added by the Examining Attorney in
Serial No. 87065949
- 4 -
his denial of the request for reconsideration, and explained
below].
The Examining Attorney denied the request for reconsideration in an action dated
December 30, 2017, indicating that the underlined wording in the identification is
indefinite because the exact nature of the services and their correct classification
cannot be determined from the wording, and this appeal resumed.
II. Applicable Law
An application for registration must specify the particular goods or services on or
in connection with which the applicant uses, or intends to use, the mark in commerce.
15 U.S.C. §§ 1051(a)(2) and 1051(b)(2). See also Trademark Rule 2.32(a)(6), 37 C.F.R.
§ 2.32(a)(6) (requiring an applicant to include “[a] list of the particular goods or
services on or in connection with which the applicant uses or intends to use the
mark.”). The identification of goods and/or services must be specific, definite, clear,
accurate, and concise. See In re Cordua Rest., Inc., 823 F.3d 594, 18 USPQ2d 1632,
1639 (Fed. Cir. 2016). In that regard, the applicant must identify the goods and
services specifically to provide public notice and to enable the USPTO to classify the
goods and services properly and to reach informed judgments concerning likelihood
of confusion under 15 U.S.C. §1052(d). An identification that fails to identify the goods
and services with specificity is indefinite, either because the nature of the goods or
services is not clear or because the wording is so broad that it may include goods or
services in more than one class. The USPTO has discretion to require the degree of
particularity deemed necessary to clearly identify the goods and/or services covered
by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
Serial No. 87065949
- 5 -
Any amendment to the identification of goods or services must comply with
Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), which reads as follows: “The applicant
may amend the application to clarify or limit, but not to broaden, the identification
of goods and/or services.”
III. Discussion
Under this framework we consider the various recitations proffered by Applicant
and note initially that, inasmuch as neither of Applicant’s proposed amendments to
its “Class 45” services have been accepted and made of record, we look first to the
original recitation, which reads: “[e]mergency response services to provide, notify and
mobilize emergency personnel, ships, vessels and equipment in response to oil and
gas well control and oil and gas well blowouts.”
The Examining Attorney, in his brief, found the recitation unacceptable because
it does not clearly identify one or more particular services and, when clearly
identified, may include activities beyond the scope of Class 45, specifically arguing
that:
the wording “emergency response services” encompasses a
variety of services related to emergencies involving “oil and
gas well control and oil and gas well blowouts.” The
wording “notify and mobilize,” for example, may suggest a
type of dispatch services. Such services are properly
classified in Class 45 but additional clarification is needed.
For example, the “remote monitoring of emergency alarms
and dispatching personnel to respond to such alarms” is an
acceptable identification of services in Class 45. …
However, if the applicant communicates notifications of
emergencies, the services may be a type of
telecommunications service. For example, the
transmission, reception and processing of coded and
emergency signals is a type of Class 38 communications
Serial No. 87065949
- 6 -
service. The communication activity determines the correct
classification even though the subject matter of the
communication is related to emergencies.
The wording “provide … ships” is also indefinite because it
is not clear whether the word “provide” refers to the
dispatching of ships or to the sailing or operation of ships
in the context of “oil and gas well control” and “well
blowouts.”3
As noted, an identification of services must specify the services for which a
proposed mark is to be registered. To “specify” means to name in an explicit manner
using common names and terminology that is generally understood. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1402.01 (Oct. 2017). For services
that do not have common names, the applicant should use clear and succinct language
which is understandable to the average person, and it must identify the goods and
services specifically to provide notice to the public of the scope of rights claimed by an
applicant in a mark. Id. We reiterate, the specificity required must enable the USPTO
to properly classify the goods or services and reach informed judgments concerning
the issue of likelihood of confusion under Section 2(d). See Omega SA, supra.
In the present case, as the Examining Attorney aptly explains in his brief, the
proffered identification is indefinite because it includes services that may be classified
in more than one class and fails to adequately inform the public of the scope of rights
to be afforded to any registration that may issue from the application. See Omega SA,
supra, (affirming indefiniteness where term used in Class 14 identification
encompassed goods in Classes 9 and 14). Specifically, and as agreed to by Applicant

3 9 TTABVUE 11-12.
Serial No. 87065949
- 7 -
in his brief, the terminology “emergency response services” by itself is not definite.4
We find the remaining portion of the identification fails to clarify the services because
it does not specify how Applicant provides, notifies and mobilizes personnel, ships
and equipment in response to oil and gas well control and well blowouts, and such
specification is necessary to not only properly classify the services, but to ensure that
sufficient information is conveyed to the USPTO and the public to make informed
likelihood of confusion judgments.
Applicant’s arguments to the contrary are unavailing. Applicant argues that the
wording “emergency response services” is clarified by the remaining wording in the
original identification, i.e., “to provide, notify and mobilize emergency personnel,
ships, vessels and equipment in response to oil and gas well control and oil and gas
well blowouts.” Applicant further argues that its original identification of services fits
into Class 45,5 since the emergency response-related services listed are encompassed
by the class heading which includes: “personal and social services rendered by others
to meet the needs of individuals.” However, the additional wording does not
sufficiently clarify the type of services provided, but instead merely denotes the
purpose of the services and describes the general field of use. It does not provide

4 7 TTABVUE 6.
5 Further, citing to the USPTO’s 2012 general remarks to Nice Agreement [the International
Classification of Goods and Services for the Purposes of the Registration of Marks], Applicant
states that the Class 45 heading encompasses “investigation and surveillance services
relating to the safety of persons and entities.” Applicant did not include the agreement in the
record and therefore this argument has limited probative value. We hasten to add that
consideration of this evidence and argument would not change the outcome of this decision.
Serial No. 87065949
- 8 -
sufficient information to determine the nature and classification such that notice of
potential conflicts, as required by Section 2(d) of the Trademark Act, is given.
We consider next Applicant’s first proposed amendment by which Applicant seeks
to amend the recitation of services to:
Emergency response planning services to provide
consultation and information regarding emergency
personnel, ships, vessels and equipment, to notify
emergency personnel, ships, and vessels when appropriate,
and to mobilize emergency personnel, ships, vessels and
equipment, all of the foregoing in response to oil and gas
well control and oil and gas well blowouts in Class 45.
The Examining Attorney found the proposed amendment unacceptable because
the wording bolded above exceeds the scope of the original identification as the
original identification did not include or encompass planning, consultation, or
providing information. He also maintains that the wording “providing consultation
regarding emergency personnel” is indefinite because it could refer to a variety of
services.
In making our determination as to whether this language exceeds the scope of the
original identification, we look to the ordinary meaning of the words. See TMEP
§ 1402.07(a). When so considered, we find that instead of clarifying the nature of its
“emergency response services” which, as the original identification particularizes,
entails some type of provision, notification and mobilization of people, ships and
equipment in response to oil and gas well control and blowouts, Applicant’s proposed
amendment improperly expands the scope of the services by adding planning,
consultation and information services. While the subject of these planning,
consultation and information services involve oil and gas well control and blowouts
Serial No. 87065949
- 9 -
and, depending on the exact language, such provision of consultation and information
services in the emergency response field may be allowable in Class 45, these more
preparatory-type services are not encompassed by the actual emergency response
services originally identified in the application. See e.g., In re Jimmy Moore LLC, 119
USPQ2d 1764 (TTAB 2016) (finding that pitch training and the educational seminars
for baseball and pitching exceeded the scope of the original identification of
“entertainment in the nature of baseball games”). The issue here is not whether
Applicant’s proffered “planning” and “providing consultation and information”
services are properly classified in Class 45, but whether these services are
encompassed by the original identification. See 37 C.F.R. § 2.71(a). As explained,
they are not.
We now consider Applicant’s second proposed Class 45 amendment:
Emergency response services that provide emergency
personnel, ships, vessels and equipment to subscribers in
response to oil and gas well control and oil and gas well
blowouts that have been reported; emergency response
services to notify emergency personnel, ships, vessels and
equipment for subscribers in response to oil and gas well
control and oil and gas well blowouts that have been
reported; emergency response services to mobilize
emergency personnel, ships, vessels and equipment for
subscribers in response to oil and gas well control and oil
and gas well blowouts that have been reported.
Applicant states that it “separated the verbs ‘provide’, ‘notify’, and ‘mobilize’ as three
distinct entries … in an attempt to … create a portion of the identification that the
examiner would find acceptable.”6

6 7 TTABVUE 7.
Serial No. 87065949
- 10 -
A review of the proffered identification shows that besides indicating that the
services would be provided to subscribers and that the oil and gas well control
situations and blowouts are reported, additions that limit the scope of the services by
identifying to whom and when they are to be provided, this identification, essentially
restates the one originally filed, and suffers from the same deficiencies. We agree
with the Examining Attorney’s assessment that the first clause is indefinite because
it fails to sufficiently clarify the exact nature of the services and, “providing
personnel” encompasses Class 35 services such as personnel placement, even if the
personnel are engaged in the mitigation of oil well and gas well-related emergencies.
Similarly, the wording “provide … ships, vessels” is overbroad because it encompasses
multiple services which relate to ships, such as ship brokerage and piloting, both
transportation services in Class 39. The wording “provide equipment” is also
indefinite because it could refer to equipment brokering, leasing, or other activities
relating to equipment.
As to the second clause, the wording “emergency response services to notify
personnel …” is overbroad because it does not specify how the notification takes place.
It could describe a variety of services, including the provision of a website through
which subscribers may be notified either of oil and gas well disasters or of emergency
assets that are available to respond such disasters in Class 45 or, as previously
discussed, services involving the transmission of emergency signals which would be
classified in Class 38.
Serial No. 87065949
- 11 -
As regards the third clause, the wording “to mobilize”7 is also indefinite because
it fails to specify what emergency response services Applicant provides that would
ready personnel, ships and vessels to respond to oil well and gas well-related
emergencies.
At bottom, Applicant’s original and proffered amendments to the identification of
services are not sufficiently definite to provide notice to the public of the nature and
scope of the services for which Applicant seeks to register its mark and, by extension,
their appropriate classification. As discussed, the wording “emergency response
services” encompasses a variety of potential services, and Applicant’s attempts to
specifically and concisely describe those services are inadequate.
Applicant alternatively requested that in the event the Board did not accept
Applicant’s second proposed amendment, the Board “should send the present
application back to the Examiner with an explanation of which parts of the present
application are allowable.” This remedy is not available to Applicant and, accordingly,
Applicant’s alternative request is denied.8 “If the Board finds that the application as

7 “Mobilize” is defined, in part, in Merriam Webster’s on-line dictionary as “to marshal
(something, such as resources) for action.” https://www.merriam-
webster.com/dictionary/mobilize, last accessed September 19, 2018. The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
8 We note that an option affording a broader scope of possible relief for Applicant would have
been a timely petition to the Director under 37 C.F.R. §§ 2.146(a) and 2.63(b). While
questions of substance arising during the ex parte prosecution of an application are not
appropriate subject matter for a petition to the Director, 37 C.F.R. § 2.146(b), requirements
with respect to identifications of goods are generally regarded as petitionable matter. In re
Stenographic Machines, Inc., 199 USPQ 313 (Comm’r 1978).
Serial No. 87065949
- 12 -
it now stands, including applicant's latest amended identification, is in acceptable
form, the Board can reverse the examining attorney's refusal. However, the Board
cannot … re-open the application for amendment of the identification by applicant.
Moreover, the Board will not review a requirement for amendment of the
classification of the goods.” In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB
2013) (citing In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969)); TMEP § 1703. As
further discussed in Faucher Indus., “the applicant's best option for resolving the
issue of the identification and classification of its goods (and, in our view, the only
option having a good likelihood of success) would have been to engage in a more open
and frank discussion with the examining attorney. Examination procedures provide
ample time for discussion and resolution of the issues raised by an application.”
Faucher Indus., 107 USPQ2d at 1358. Unfortunately, Applicant apparently did not
avail itself of the opportunity to speak with the Examining Attorney on the telephone
to resolve the identification issue.9 It is now too late to seek to do so.
As a last comment, we feel compelled to address the excerpt from Applicant’s
website referencing its RESPONSE 360 services, made of record by the Examining
Attorney and shown below.

9 Although we note that the Examining Attorney invited Applicant to participate in
telephone discussions, he could have initiated the calls.
Serial No. 87065949
- 13 -

A review of this excerpt leads us to surmise that Applicant may have intended to
register its mark for the services of providing information to subscribers on the
availability of personnel, ships and equipment to respond to oil and gas well control
and oil and gas well blowouts, although the excerpt fails to disclose how such
information is conveyed, for example, by computer software. However, such services
would not have fallen within the scope of the original recitation and, in any case, the
exact nature thereof is not discernable. When the Examining Attorney broached this
possibility, Applicant essentially responded that the relevant discussion in this
appeal is whether any of its proffered identifications should be allowed. Applicant is
correct that that is the matter before us, but is reminded that its duty is to identify
the services for which it seeks registration and, in so doing, be as accurate as possible.
We conclude that the Examining Attorney needed more information in order to
determine not only the precise nature of Applicant’s services, but their correct
classification. For the reasons explained above, we find that the various
Serial No. 87065949
- 14 -
identifications proffered by Applicant are indefinite and do not contain enough
information so that classification of the services is not “difficult or ambiguous.” TMEP
§ 1402.01(a).
Decision: The refusal to register Applicant’s mark RESPONSE 360 is affirmed.

Concurrence By:
Bergsman, J., concurring.
While I agree with the result reached by the majority, I am dismayed it appears
that neither the Examining Attorney, nor Applicant, picked up the telephone to
discuss the recitation of services; instead, they were content to use Office Actions,
responses, and emails to communicate at each other, rather than with each other. See
Faucher Indus. Inc., 107 USPQ2d at 1358 (“applicant’s best option for resolving the
issue of the identification and classification of its goods (and, in our view, the only
option having a good likelihood of success) would have been to engage in a more open
and frank discussion with the examining attorney. Examination procedures provide
ample time for discussion and resolution of the issues raised by an application.”).10
The September 22, 2016 Office Action is illustrative. The Examining Attorney
explained that the original recitation of services was indefinite for the following
reason:
The wording “emergency response services” by itself is not
sufficiently definite because such services encompass a
variety of services related to emergencies. If the applicant
communicates notifications of emergencies, for example,

10 While the Examining Attorney and the Applicant at various times discussed having a
telephone conference, the record does not reflect that they had a telephone conference.
Serial No. 87065949
- 15 -
the services may be a type of telecommunication service, in
which case the type of communication must be indicated
and any scope limitations in the original wording must be
maintained. The communication activity would determine
the correct classification even though the field or subject
matter of the communication is related to emergencies.
Conversely, if the services involve alarm monitoring, the
activities would constitute a Class 45 service and might be
described by the following potentially-relevant wording, for
example:
Class 45 Emergency response alarm monitoring
services, namely, monitoring of alert devices by a remote
monitoring center for the dispatch of emergency public
health and security services and notification to third
parties11
“Emergency response services” that encompass a variety of services related to
emergencies could be a comprehensive term used to identify such activities in the
same way that “medical services” is a broad term that encompasses, inter alia,
medical imaging services, medical assistance services, emergency medical services,
etc.12 The majority referred to the Examining Attorney’s brief to explain the basis for
holding the original recitation of services indefinite, rather than the September 22,
2016 Office Action. Had Applicant had the benefit of that well-reasoned explanation
from the brief, it might have led to the resolution of the recitation of services issue.
By the same token, Applicant did not telephone the Examining Attorney and ask,
“What are you talking about?” Acting on the Examining Attorney’s “indefinite”
explanation, Applicant proceeded to dig itself into a deeper hole until it appealed the

11 TSDR 2. The citation to the TSDR database is to the downloadable .pdf format.
12 We assume that it is not because Applicant did not explain that “emergency response
services” is a term of art.
Serial No. 87065949
- 16 -
requirement for an amended recitation of services, instead of petitioning the
requirement. See footnote 8 supra.
From my perspective, the Examining Attorney and Applicant wasted a lot of time
and energy by not using the telephone to communicate with each other.