Tek Experts Global Ltd

Trademark Trial and Appeal BoardApr 22, 2021

88257320 (T.T.A.B. Apr. 22, 2021)

This Opinion is not a Precedent of the TTAB Mailed: April 22, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tek Experts Global Ltd. _____ Serial No. 88257312 Serial No. 88257320 _____ Michael C. Martensen of Martensen IP, for Tek Experts Global Ltd. Tina L. Snapp, Trademark Examining Attorney, Law Office 116, Elizabeth Jackson, Managing Attorney. _____ Before Kuhlke, Shaw and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Tek Experts Global Ltd. (“Applicant”) sought registration on the Principal Register of the marks: TEK EXPERTS (standard characters)1 and .2 1 Application Serial No. 88257312. 2 Application Serial No. 88257320. Serial Nos. 88257312 and 88257320 - 2 - The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that TEK EXPERTS is merely descriptive of the services identified in the applications. The standard character mark was refused in its entirety, and the composite mark was refused absent a disclaimer of the wording TECH EXPERTS (the correct spelling for TEK EXPERTS), under Section 6 of the Trademark Act, 15 U.S.C. § 1056. We affirmed both refusals in an April 8, 2021 decision. However, we stated that the application (Serial No. 88257320) would proceed if Applicant submitted, within thirty days of the mailing date of the decision, the required disclaimer to read as follows “No claim is made to the exclusive right to use “tech experts” apart from the mark as shown.” It was explained that “[i]f a disclaimer is required of words that are misspelled in the mark, the applicant must disclaim the words as properly spelled.” Applicant submitted a disclaimer on April 20, 2021: “No claim is made to the exclusive right to use “Tek Experts” apart from the mark as shown.” However, the disclaimer does not comply with the Board’s April 8, 2021 decision because it includes the misspelled word “tek,” rather than the correct spelling “tech.” Although Applicant did not provide the correct disclaimer, its filing shows an attempt to comply with the disclaimer requirement. Therefore, Applicant will be allowed time to submit the proper disclaimer. Serial Nos. 88257312 and 88257320 - 3 - Also in the April 20, 2021 filing, Applicant has sought to amend application Serial No. 88257312 to the Supplemental Register and has provided a disclaimer of “tech.” However Applicant’s request to amend this application to the Supplemental Register raises a new issue as to whether TEK EXPERTS is capable of registration, and thus, is not permitted after the appeal was decided.3 See In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (once final decision rendered, request to amend to Supplemental Register not possible). See also In re S. D. Fabrics, Inc., 223 USPQ 56, 57 (TTAB 1984) (“While the Board can and does accept disclaimers after appeal in appropriate cases (e.g., where the submission of the disclaimer puts the application in condition for allowance without the need for any further examination) the Board cannot and will not accept a conversion to the Supplemental Register after a case has been decided on appeal (regardless of whether the request to convert is accompanied by a disclaimer)”). Therefore, the request to amend application Serial No. 88257312 to the Supplemental Register is denied. In view of the foregoing, Applicant is allowed until TWENTY DAYS from the mailing date of this order to provide the disclaimer in application Serial No. 88257320 with the misspelled word “tek” substituted with “tech” as follows: No claim is made to the exclusive right to use “tech experts” apart from the mark as shown.” 3 In the decision, we noted that at one point during prosecution, Applicant had sought to amend the application to the Supplemental Register, but we found the request to amend to the Supplemental Register to have been withdrawn.