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Client Alert - The Fiat 500 Decision: Is it Desirable to Use a Class Heading for a U.S. Trademark Application?

02.12.2014

Many non-U.S. trademark applicants using class headings to identify goods or services will be affected by a precedential decision issued by the Trademark Trial and Appeal Board (“Board”) of the U.S. Patent and Trademark Office (“USPTO”).  In re Fiat Group Marketing & Corporate Communications S.p.A., Serial No. 79099154 (T.T.A.B. January 31, 2014).

The Facts

Fiat had used an Italian registration for its mark FIAT 500 as the basis for an international registration (“IR”) under the Madrid Protocol.  The IR covered nine classes and used the class heading to identify the goods or services for each of them.

When Fiat applied to extend this IR to the United States, its extension application identified the eight classes of goods with greater particularity, but it continued to use the class heading for the services in Class 35:  “Advertising services; business management; business administration; office functions.”

The U.S. examiner required greater particularity as to the services.  Fiat sought to amend them to:  “Advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others” (emphasis added).

The examiner accepted “Advertising services.”  But the examiner rejected the other amended services on the ground that they impermissibly broadened the original identification, although otherwise they would be proper in Class 35.

Fiat appealed, arguing that business management services include operating and managing retail stores.

The Decision
 

Although class headings are allowed in IRs, and the USPTO accords a filing date to extension applications for such IRs, the USPTO requires the goods or services to be identified with particularity in accordance with its Acceptable Identification of Goods and Services Manual which can be found online at http://tess2.uspto.gov/netahtml/tidm.html.   Moreover, the applicant is not permitted to amend the identification in a way that broadens the original identifications.

The Board agreed with the examiner, holding that the language of the class heading—the generally understood meaning of the words—did not include the amended services. 

It concluded that “business management services” would necessarily involve business-to-business services with one company helping another to function better.  “Retail store services” involve services offered to purchasers of different goods.  The latter do not fall within the ordinary meaning of the words in the class heading.

The Board also referred to a statement in the USPTO Trademark Manual of Examining Procedure § 1402.02 that it is “unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class.”  Every applicant for a U.S. registration is required to submit a verified statement that it is either using the mark in commerce on all of the identified goods or services or has a bona fide intention to do so.

The Board stated that it is aware that certain signatories to the Madrid Protocol follow the “class heading covers all” policy.  An applicant from such a country may mistakenly believe that this applies to the United States.  But no provision in U.S. law or any treaty obligation requires the USPTO to deviate from its longstanding practice to the contrary.

The Board also noted that there is a trend to move away from the “class heading covers all” policy.  This is exemplified by the decision of the Court of Justice of the European Union (CJEU) in the IP Translator case, C-307/10 [2012], and implementing regulations, that an applicant who claims a class heading in a Community Trade Mark (CTM) application must affirmatively indicate that it seeks protection for all listed goods or services in the class.

Accordingly, Fiat will get its U.S. registration for all of the specifically identified goods and for “advertising services” but not for retail store services because they would broaden the scope of the class heading words used in the original identification.

Conclusion

A non-U.S. applicant that intends to extend, in appropriate circumstances, an IR to the U.S. would be well advised in the basic national application or registration supporting the IR to:

•    Avoid using a class heading
•    Avoid using “all goods in class”
•    Specify the common names of all the goods and services

If a basic application is filed for a class heading or for “all goods in class,”  it would be desirable also to list the common names of all goods and services for which the mark is specifically intended to be used.

For further inforamtion, contact Bill Borchard (2127909290, wmb@cll.com), or your attorney at CLL.

Click here for a PDF version of this Client Alert.

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