Reliance on Identification of Goods/Services in Registration and Application

The nature and scope of a party’s goods or

services must be determined on the basis of the goods or services recited in

the application and cited registration.

See

,

e.g.

,

B & B Hardware, Inc. v. Hargis

Indus., Inc.

, 575 U.S. 138, 143, 113 USPQ2d 2045, 2049 (2015)

(recognizing that an "applicant’s right to register must be made on the

basis of the goods described in the application");

In re Charger

Ventures LLC

, 64 F.4th 1375, 1383, 2023 USPQ2d 451, at *7

(Fed. Cir. 2023) (quoting

In re Detroit Athletic Co.

, 903

F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) ("The relevant

inquiry . . . focuses on the goods and services described in the application

and registration.");

Stone Lion Cap. Partners, L.P. v. Lion Cap.

LLP

, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir.

2014);

Coach Servs., Inc. v. Triumph Learning LLC

, 668

F.3d 1356, 1370, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012);

Hewlett-Packard Co. v. Packard Press Inc.

, 281 F.3d

1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002);

J & J Snack

Foods Corp. v. McDonald’s Corp

., 932 F.2d 1460, 1463, 18

USPQ2d 1889, 1892 (Fed. Cir. 1991);

Octocom Sys., Inc. v. Hous.

Computer Servs., Inc.

, 918 F.2d 937, 942, 16 USPQ2d 1783, 1787

(Fed. Cir. 1990);

Canadian Imperial Bank of Com., N.A. v. Wells

Fargo Bank

, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed.

Cir. 1987);

Paula Payne Prods. Co. v. Johnson Publ’g Co.

,

473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973).

If the cited registration describes goods or

services broadly, and there is no limitation as to their nature, type,

channels of trade, or class of purchasers, it is presumed that the

registration encompasses all goods or services of the type described, that

they move in all normal channels of trade, and that they are available to

all classes of purchasers.

See

,

e.g.

,

Levi Strauss & Co. v. Abercrombie & Fitch Trading

Co.

, 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir.

2013);

New Era Cap Co.

, 2020 USPQ2d 10596, at *15-16

(citing

SquirtCo v. Tomy Corp

presumed that the

registration encompasses all goods or services of the type described, that

they move in all normal channels of trade, and that they are available to

all classes of purchasers.

See

,

e.g.

,

Levi Strauss & Co. v. Abercrombie & Fitch Trading

Co.

, 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir.

2013);

New Era Cap Co.

, 2020 USPQ2d 10596, at *15-16

(citing

SquirtCo v. Tomy Corp.

, 697 F.2d 1038, 1042-43,

216 USPQ 937, 940 (Fed. Cir. 1983);

In re Bercut-Vandervoort &

Co.

, 229 USPQ 763, 764 (TTAB 1986)) ("the [Trademark Trial and

Appeal] Board may not read limitations into [the] unrestricted registration

or [] application");

see also

B & B Hardware, Inc.

, 575 U.S. at 143, 113 USPQ2d at

2049 (quoting 3 J. McCarthy,

Trademarks & Unfair

Competition

§20:15, at 20-45 (4th ed. 2014)) ("if an

'application does not delimit any specific trade channels of distribution,

no limitation will be' applied"). Therefore, if the cited registration has a

broad identification of goods or services, an applicant does not avoid

likelihood of confusion merely by more narrowly identifying its related

goods.

See

,

e.g.

,

In re Linkvest

S.A.

, 24 USPQ2d 1716 (TTAB1992) (noting that, where registrant’s goods are broadly identified

as "computer programs recorded on magnetic disks," without any limitation as

to the kind of programs or the field of use, it must be assumed that

registrant’s goods encompass all such computer programs, including computer

programs of the type offered by applicant, that they travel in the same

channels of trade normal for such goods, and that they are available to all

classes of prospective purchasers of those goods);

In re Diet Ctr.,

Inc

c disks," without any limitation as

to the kind of programs or the field of use, it must be assumed that

registrant’s goods encompass all such computer programs, including computer

programs of the type offered by applicant, that they travel in the same

channels of trade normal for such goods, and that they are available to all

classes of prospective purchasers of those goods);

In re Diet Ctr.,

Inc.

, 4 USPQ2d 1975 (TTAB1987) (noting that, although applicant had limited its

identification to indicate that its goods were sold only through franchised

outlets offering weight-reduction services, the cited registration’s

identification contained no limitations as to trade channels or classes of

customers and thus it must be presumed that registrant’s goods travel

through all the ordinary channels of trade).

Similarly, there may be a likelihood of

confusion where an applicant identifies its goods or services so broadly

that the identification encompasses the goods or services identified in the

registration of a similar mark.

See, e.g.

,

In re

Solid State Design Inc.

, 125 USPQ2d 1409, 1413, 1415 (TTAB

2018) (holding POPULACE and design for computer software intended for travel

and destination marketing organizations and travel marketing professionals,

and POPULACE (stylized) for computer software for visualizing the popularity

of places in real time with an underlying map capability for navigation sold

only as business to consumer software and not as "business to business"

software, likely to cause confusion);

In re Fiesta Palms

LLC

, 85 USPQ2d 1360

(TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for

casino services offered to preferred customers identified by special

identification cards, likely to cause confusion);

In re Equitable

Bancorporation

, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for

banking services, and RESPONSE CARD for banking services rendered through

24-hour teller machines, likely to cause confusion)

d 1360

(TTAB 2007) (holding CLUB PALMS MVP for casino services, and MVP for

casino services offered to preferred customers identified by special

identification cards, likely to cause confusion);

In re Equitable

Bancorporation

, 229 USPQ 709 (TTAB 1986) (holding RESPONSE for

banking services, and RESPONSE CARD for banking services rendered through

24-hour teller machines, likely to cause confusion).

In addition, language seeking to limit

otherwise identical, or highly similar, goods or services may not be

sufficient to distinguish them so as to avoid a likelihood of confusion.

See

In re i.am.symbolic, llc

, 866 F.3d 1315, 1326, 123 USPQ2d

1744, 1751 (Fed. Cir. 2017) (affirming the Board's finding that an

identification restricting the goods to those "associated with William

Adams, professionally known as ‘will.i.am,’" imposed no meaningful

limitation on the nature of the goods or the trade channels or classes of

purchasers of the goods);

Bd. of Regents v. S. Ill. Miners,

LLC

, 110 USPQ2d 1182,

1190-93 (TTAB 2014)

(finding that although opposer’s clothing items were limited

by the wording "college imprinted" and the applicant’s identical or highly

similar items were limited by the wording "professional baseball imprinted,"

these restrictions did not distinguish the goods, their trade channels, or

their relevant consumers in any meaningful way).

An applicant may not restrict the scope of its

goods and/or the scope of the goods covered in the registration by extrinsic

argument or evidence, for example, as to the quality or price of the goods.

See

,

e.g.

,

In re FCA US

LLC

, 126 USPQ2d 1214, 1217 (TTAB 2018);

In re La Peregrina

Ltd.

, 86 USPQ2d 1645,

1647 (TTAB 2008)

;

In re Bercut-Vandervoort & Co.

, 229

USPQ at 764–65;

see also

In re Detroit Athletic Co.

, 903 F.3d at 1308, 128 USPQ2d

at 1052 ("The third DuPont factor—like the second factor—must be evaluated

with an eye toward the channels specified in the application and

registration, not those as they exist in the real world.")

4, 1217 (TTAB 2018);

In re La Peregrina

Ltd.

, 86 USPQ2d 1645,

1647 (TTAB 2008)

;

In re Bercut-Vandervoort & Co.

, 229

USPQ at 764–65;

see also

In re Detroit Athletic Co.

, 903 F.3d at 1308, 128 USPQ2d

at 1052 ("The third DuPont factor—like the second factor—must be evaluated

with an eye toward the channels specified in the application and

registration, not those as they exist in the real world.").

In cases where the terminology in an

identification is unclear or undefined, the Board has permitted an applicant

to provide extrinsic evidence to show that the registrant’s identification

has a specific meaning to members of the trade.

See

,

e.g.

,

In re Thor Tech, Inc.

, 90

USPQ2d 1634, 1638 & n.10 (TTAB 2009) (noting that, although extrinsic

evidence may not be used to limit or restrict the identified goods, it is

nonetheless proper to consider extrinsic evidence in the nature of

dictionary entries to define the terminology used to describe the goods);

In re Trackmobile Inc.

, 15 USPQ2d 1152, 1154 (TTAB

1990) (noting that, "when the description of goods for a cited registration

is somewhat unclear . . . it is improper to simply consider that description

in a vacuum and attach all possible interpretations to it when the applicant

has presented extrinsic evidence showing that the description of goods has a

specific meaning to members of the trade.")