Sharp Kabushiki Kaisha TA A/T/A Sharp Corp.

Trademark Trial and Appeal Board

Oct 31, 2012

No. 76704878 (T.T.A.B. Oct. 31, 2012)

Mailed: October 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sharp Kabushiki Kaisha TA A/T/A Sharp Corp.
________

Serial No. 76704878
_______

Robert W. Adams of Nixon & Vanderhye PC, for Sharp
Kabushiki Kaisha TA A/T/A Sharp Corp.

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Holtzman, Bergsman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Sharp Kabushiki Kaisha TA A/T/A Sharp Corp.
(“applicant”) seeks registration of the mark shown below
for goods and services in International Classes 9, 35, 38,
and 411:

1 Serial No. 76704878, filed October 12, 2010, based upon a bona
fide intent to use commerce. The identification of services in
Class 41 is on appeal.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76704878
2

The examining attorney ultimately accepted the
identification of goods and services for International
Classes 9, 35 and 38, but for Class 41 issued a final
refusal for applicant’s failure to comply with a
requirement for an acceptable recital of services which
does not exceed the scope of a previously approved recital
of services. Trademark Rule 2.71(a); 37 CFR § 2.71(a).
See the discussion below. After the refusal to register
was made final, applicant appealed the requirement for an
amended recital of services. Both applicant and the
examining attorney filed briefs, and applicant filed a
reply brief.
I. Recital of Services
In order to address the examining attorney’s
requirement respecting applicant’s recital of services in
Serial No. 76704878
3
International Class 41, we set out the relevant prosecution
history on this issue.
A. Amendments
Applicant’s original application, filed on October 12,
2010, identified its services in IC 41 as follows:
“publication of books; providing electronic publications.”
In an Office Action issued on December 10, 2010, the
examining attorney required a more specific identification
for IC 41, noting that the wording is “indefinite and must
be clarified because applicant must (1) indicate that the
goods are non-downloadable, (2) indicate the types of
publications and (3) indicate the subject matter. See TMEP
§ 1402.01.”
In this regard, the examining attorney suggested the
following ID:
“publication of books; providing non-downloadable
electronic publications in the nature of
[applicant to specify publications, i.e.,
magazines, books, etc.] in the field of
[applicant to specify subject matter, i.e.,
information technology, art, mathematics, etc.]”

Applicant responded with an amendment submitted via
Response to Office Action on April 7, 2011 as follows:
“publication of books; providing downloadable and
non-downloadable electronic publications in the
nature of magazines, books and newspapers
covering the general fields of business, the
arts, news, entertainment, fiction, non-fiction
and technical information”
Serial No. 76704878
4

In an Office Action labeled “final,” on May 6, 2011,
the examining attorney again refused applicant’s IC 41 ID
as unacceptable, noting that “the identification of goods
is indefinite and must be clarified because the non-fiction
and technical information subject matter is not specific
enough. See TMEP § 1402.01.” The examining attorney
further stated that “the identification of services is
unacceptable because (1) downloadable publications are
considered goods in Class 092 and (2) as indicated above,
the fields of non-fiction and technical information are not
specific enough. See TMEP § 1402.01.”
In this regard, the examining attorney suggested the
following ID:
“publication of books; providing non-downloadable
electronic publications in the nature of
magazines, books and newspapers covering the
general fields of business, the arts, news,
entertainment, fiction, non-fiction and technical
information, namely, [applicant to specify, non-
fiction, ie., biographies, history, etc.] and
technical information, namely, [applicant to
specify technical information, i.e., information
technology, pharmaceutical manufacturing, food
processing, etc.].”

2 The examining attorney explained the rationale more fully on
brief. However, it would almost certainly have benefited the
parties if it had been explained during the prosecution process,
while the parties could still have come to an agreement on the ID
in IC 41. Both the EA and applicant’s counsel expressed
willingness in their papers to have a telephone conference. But
Serial No. 76704878
5
Applicant responded with an amendment submitted via
Response to Office Action on June 20, 2011 as follows:
“publication of books; providing downloadable and
non-downloadable electronic publications in the
nature of magazines, books and newspapers
covering the general fields of business, the
arts, news, entertainment, fiction and non-
fiction, namely, biographies, histories, current
events, and educational and scientific non-
fiction.”

In a Denial of Request for Reconsideration dated
August 6, 2011, the examining attorney reiterated that “the
identification of services is unacceptable because
downloadable publications are considered goods in Class 09.
See TMEP § 1402.01.”
In this regard, the examining attorney suggested the
following ID:
“publication of books; providing non-downloadable
electronic publications in the nature of
magazines, books and newspapers covering the
general fields of business, the arts, news,
entertainment, fiction, and non-fiction, namely,
biographies, histories, current events, and
educational and scientific non-fiction.”

Applicant responded with an amendment on September 6,
as follows:
“publication of books, magazines and newspapers
covering the general fields of business, the arts,
news, entertainment, fiction and non-fiction, namely,

none is noted on record. Better communication between the
parties would almost certainly have avoided this appeal.
Serial No. 76704878
6
biographies, histories, current events, and
educational and scientific non-fiction.”

In another Denial of Request for Reconsideration dated
October 17, 2011, the examining attorney again refused the
IC 41 ID, stating that the “wording is beyond the scope of
the original wording because the application as filed
identifies only publication of books, not the magazines and
newspapers identified in the amendment.”
In this regard, the examining attorney suggested the
following ID:
“publication of books covering the general fields
of business, the arts, news, entertainment,
fiction, and non-fiction, namely, biographies,
histories, current events, and educational and
scientific non-fiction.”

This appealed followed and there was never an accepted
identification of services in IC 41.
C. Analysis
The applicable rule reads as follows: “The applicant
may amend the application to clarify or limit, but not to
broaden, the identification of goods....” Trademark Rule
2.71(a). Further, it is the policy of the USPTO that an
unacceptable amendment is not construed to restrict or
narrow a previous amendment. Rather, the last acceptable
amendment remains operative unless and until a further
Serial No. 76704878
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acceptable amendment is entered. Trademark Manual of
Examining Procedure (TMEP) § 1402.07(d) (5th ed. 2007).
In this case although there was never an accepted recital
of services in IC 41, nevertheless, applicant may not
extend the scope of the services beyond the recital of
services as originally filed.
The original identification by applicant identified
“publication of books; providing electronic publications.”
The latter service is unacceptably broad. See TMEP
1402.11(a), which notes that an “acceptable identification”
would be: “providing online [indicate specific nature of
publications, e.g., magazines or newsletters] in the field
of [indicate subject matter of publication].”
The example applicant submitted from the Office ID Manual
with its September 6, 2011 Response to Office Action, for
example, states “[p]ublishing and distribution of books,
reviews and other printed matter as well as related
electronic data carriers.” This is also more specific than
simply “providing electronic publications.” Accordingly,
we agree with the examining attorney’s original requirement
for a more specific identification of services.
Applicant submitted its first amendment to the ID with
its Response to Office Action on April 7, 2011.
Serial No. 76704878
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“publication of books; providing downloadable and
non-downloadable electronic publications in the
nature of magazines, books and newspapers
covering the general fields of business, the
arts, news entertainment, fiction, non-fiction
and technical information” (April 7, 2011)

The ID Manual explains in its “Explanatory Notes
for Class 41 – Nice Classification” the following:
041 Providing on-line publications in the
nature of {indicate specific nature of
publication} in the field of {indicate subject
matter of publication} [not downloadable]

Downloadable publications are classified in Class
9. This service was moved from 42 to 41 as a
result of the revisions in the 8th edition of the
Nice Agreement. 5-20-10 - Providing a website
featuring specific types of downloadable
publications is not an acceptable identification
because it is unclear whether the applicant is
offering goods in the nature of downloadable
publications in Class 9 or services in the nature
of website hosting in Class 42.

Hence, the ID Manual requires that “downloadable
publications,” be listed in IC 9 and not, as per the
April 7, 2011 amendment, in IC 41, despite applicant’s
argument regarding the goods/services divide.
Accordingly, we agree with the examining attorney that
the April 7, 2011 amendment was not acceptable due to
its inclusion of “downloadable” electronic
publications in IC 41.
Serial No. 76704878
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Applicant submitted a further amendment to the ID
with its Response to Office Action on June 20, 2011.

“publication of books; providing downloadable and
non-downloadable electronic publications in the
nature of magazines, books and newspapers
covering the general fields of business, the
arts, news, entertainment, fiction and non-
fiction, namely, biographies, histories, current
events, and educational and scientific non-
fiction.” (June 20, 2011)

Again, the examining attorney refused this amendment
as being non-compliant, for the same reason that it
included “downloadable” electronic publications in IC 41.
Accordingly, for the same reason as stated above, with
regard to the explanatory notes in the ID Manual, we agree
that the June 20, 2011 amendment was not acceptable.
Finally, applicant submitted a further amendment via
its Request for Reconsideration on September 6, 2011.
“publication of books, magazines and newspapers
covering the general fields of business, the
arts, news, entertainment, fiction and non-
fiction, namely, biographies, histories, current
events, and educational and scientific non-
fiction.” (September 6, 2011)

Again, the examining attorney refused this amendment
as being non-compliant. We agree with the examining
attorney’s assessment that the September 6, 2011 amendment
was beyond the scope of the originally filed ID for IC 41
Serial No. 76704878
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since it is not limited to “publication” of only “books”
but rather includes also “magazines and newspapers.”
As the examining attorney explained during prosecution
and further on brief, the “downloadable” publications
included by applicant in several iterations of its ID must
be, and in fact are, covered by its ID in IC 9.
Furthermore, the September 6, 2011 amendment was beyond the
scope of the original ID in that the original ID included
“publication of books” but did not specify other types of
publications as does the September 6, 2011 amendment.
Accordingly, there has been no acceptable ID for IC
41.
II. Conclusion
We conclude that applicant’s current recital of
services in IC 41 is not acceptable. Applicant asks in its
reply brief for the Board “in the alternative” to proffer
“an acceptable identification of services for Class 41.”
(reply at unnumbered 6 of 6). However, since unfortunately
applicant and the examining attorney were not able to agree
on one at any point during prosecution, the Board cannot
simply assign one on appeal.
Decision: The refusal to register International Class
41 services is affirmed. The application shall proceed to
publication only in International Classes 9, 35, and 38.
Serial No. 76704878
11

Bergsman, J., concurring.
I agree with the majority that an acceptable
recitation of services has not been made of record. My
departure from the analysis of the majority is that we
would be remiss not to note that “What we have here is (a)
failure to communicate.”3
This appeal was an unnecessary waste of time, effort
and money. Had the Trademark Examining Attorney picked up
the telephone and called applicant’s counsel, it is
inconceivable that the issue regarding the recitation of
services could not have been resolved. By the same token,
the telephone works both ways and applicant’s counsel
should have called the Trademark Examining Attorney and
specifically inquired as to the difference between
downloadable and nondownloadable electronic publications.
Defining an acceptable recitation of goods and
services can be an arcane science. In fact, it often
appears to be more of an art than a science. For example,
because “considerable weight is given to the material of

3 Cool Hand Luke (1967). The phrase was spoken by Strother
Martin (as the Captain, prison warden) to the assembled inmates
upon the return of the escaped convict Luke (Paul Newman).
Serial No. 76704878
12
which goods are made,”4 classification may not make any
commercial sense. Thus, while to lay persons, doors are
doors, in the world of trademark classification, metal
doors are in Class 6 while non-metal doors are in Class 19.
Likewise, in the world of providing electronic
publications, there is no commercial distinction between
downloadable electronic publications and non-downloadable
electronic publications. In this case, applicant clearly
did not understand the difference between downloadable and
nondownloable publications. It is meaningless distinction
commercially; it only has bearing for trademark
classification.
Applicant applied to register its mark for, inter
alia, providing electronic publications. The Trademark
Examining Attorney explained that the recitation of
services was indefinite.
Finally, the wording “providing
electronic publications” in the
identification of services is
indefinite and must be clarified
because applicant must (1) indicate
that the goods are non-downloadable,
(2) indicate the types of publications,
and (3) indicate the subject matter.
See TMEP § 1402.01.

4 Trademark Manual of Examining Procedure § 1401.05 (8th ed.
2011).
Serial No. 76704878
13
TMEP Section § 1402.01 offers no guidance regarding
downloadable and nondownloadable software.5
Applicant amended the recitation of services to read as
follows:
providing downloadable and non-
downloadable electronic publications in
the nature of magazines, books and
newspapers covering the general fields
of business, the arts, news,
entertainment, fiction, non-fiction and
technical information.

In the second Office action, the Trademark Examining
Attorney explained that downloadable publications are
considered goods in Class 9 and suggests a possible
amendment placing the downloadable publications in Class 9
and the nondownloadable publications in Class 41.
Applicant clearly did not understand that distinction
because in its second amendment, it continued to identify
its services s “providing downloadable and non-downloadable
electronic publications.” In the third Office action, the
Trademark Examining Attorney explained that providing
downloadable electronic publications “in the Class 41
identification of services is unacceptable because
downloadable publications are considered goods in Class 9.
See TMEP § 1402.01.” Because applicant did not understand

5 Ironically, TMEP 1402.01(e) provides that “The examining
attorney should explain clearly and concisely the reason for
requiring an amendment.”
Serial No. 76704878
14
this explanation when the Trademark Attorney first offered
it, it is unclear why the Trademark Examining Attorney
thought it would be understood the second time.
Nevertheless, applicant could have called the Trademark
Examining Attorney for a better explanation.
In its September 6, 2011 response, applicant
specifically addressed the issue regarding the distinction
between downloadable and non-downloadable electronic
publications.
[T]he Examining Attorney states that the
wording “downloadable electronic
publications” in the International Class
41 identification of services is
unacceptable because “downloadable”
publications are considered goods in
International Class 9.

Applicant respectfully disagrees with
this argument because it overlooks the
fundamental difference between goods and
services. For example, the Trademark
Attorney states that downloadable
publications are in Class 9. It also
notes that books, magazines and the like
fall within Class 16.

However, according to the Trademark ID
Manual (Trademark Acceptable
Identification of Goods and Services),
acceptable services in Class 41 include
the publication of books, magazines, and
the like. … Thus, it is acceptable for
an application to cover both the goods
(e.g., a book) and related services
(e.g., publication of books). Further
the aforesaid Manual makes no
distinction between publication service
relating to downloadable and non-
downloadable publications with respect
to Class 41.

Serial No. 76704878
15
The Trademark Examining Attorney did not address the
preceding argument in the fourth Office action.
Finally, in her appeal brief, the Trademark Examining
Attorney provided what passes as a substantive explanation
for the requirement that there is a distinction between
downloadable and non-downloadable electronic publications.
In the present case, downloadable goods
are classified in Class 09 because
purchasers receive and retain data on
their local systems. In the context of
applicant’s identified goods, purchasers
receive on their computers or mobile
devices copies of applicant’s
downloadable electronic publications.
The publication data is stored on those
devices in a manner that purchasers
have, effectively, walked away with a
product. On the other hand, Class 41
non-downloadable publications are
distinct from their Class 09
counterparts because purchasers merely
access the publication content through a
network. Purchasers can view the
content through the network, but do not
actually walk away with anything because
the access to the content stops when
purchasers close their web browsers.
This hosting of a website and/or
provision of access to a website where
purchasers can view the content is what
is contemplated by the Class 41 “non-
loadable electronic publications.”’
Thus, consistent with the Nice
Agreement, the provisions of printed
matter is considered a service in Class
41 only when the content is viewed
electronically and is non-downloadable.6

That explanation should have been provided earlier in the
prosecution of the application.
While the requirement for a more definite recitation of
services is affirmed, as indicated above, we find it
Serial No. 76704878
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inconceivable that if applicant and the Trademark Examining
Attorney had spoken on the telephone that an appeal would
have been necessary.

6 Trademark Examining Attorney’s Brief, pp. 9-10 (unnumbered).