R.C.S. Periodici S.p.A.v.Max H. Schwartz

Trademark Trial and Appeal Board

Sep 8, 2004

No. 91110915re (T.T.A.B. Sep. 8, 2004)

Mailed: September 8, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
R.C.S. Periodici S.P.A.
v.
Max H. Schwartz
_____
Opposition No. 91110915
to application Serial No. 75348849
filed on August 28, 1997
_____
Request for Reconsideration
_____
Frank P. Presta of Nixon & Vanderhye P.C. for R.C.S.
Periodici S.P.A.
Todd E. Stockwell of Stockwell & Associates for Max H.
Schwartz.
______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Board, in a decision issued May 13, 2004,
sustained the opposition of R.C.S. Periodici S.p.A. to Max
H. Schwartz’ application to register the mark MAX MAGAZINE
and design for a “magazine expressly for readers over thirty
years of age featuring topics about their lifestyles and on
medicine, health, exercise and diet.” The Board found that
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91110915
2
applicant’s mark MAX MAGAZINE and design for the identified
goods was likely to cause confusion with opposer’s
previously used and registered mark MAX for “adult
entertainment magazines.”
Applicant has filed a timely request for
reconsideration. In particular, applicant requests that the
Board remand its application to the Examining Attorney in
order to amend the identification of goods to: “magazine
expressly for readers over thirty years of age featuring
topics about their lifestyles and on medicine, health,
exercise and diet, and distributed freely solely in free
distribution publication areas of retail outlets.”
Applicant argues that the proposed amendment restricts the
channels of trade of its magazine and thereby eliminates the
likelihood of confusion.
Opposer has filed a brief in opposition to applicant’s
request for reconsideration.
Although styled a request for reconsideration,
applicant’s request is essentially a motion to amend its
application. Trademark Rule 2.133 provides that, once an
opposition has commenced, the application which is the
subject of the opposition may not be amended in substance,
except with the consent of the other party and the approval
of the Board, or except upon motion granted by the Board.
Moreover, when a motion to amend an application is made
Opposition No. 91110915
3
without the consent of the other party, it should ordinarily
be made prior to trial in order to give the adverse party
fair notice thereof. See TBMP §514.03 (2d ed. rev. 2004).
In this case, opposer has objected to applicant’s
proposed amendment and the amendment is clearly untimely
since it was filed after final decision.
Under the circumstances, the request for
reconsideration is denied.1
1 We should add that, even if applicant had timely filed a
motion to amend, applicant’s proposed amendment would not
necessarily overcome the likelihood of confusion. As
indicated in our decision, the question of likelihood of
confusion must be determined on the basis of the goods as
they are set forth in opposer’s registration and applicant’s
application, and not in light of what such goods are shown
or asserted to actually be. In view of the fact that
opposer’s registration contains no limitations as to the
channels of trade, it must be presumed that opposer’s adult
entertainment magazines travel in all of the normal channels
of trade, which could include retail outlets that have free
distribution publication areas.