GlobalReport

Global Report: North America
In the News continued from page 37
on its conclusion that the ’753 Trademark
lacks secondary meaning in the eyes of consumers.
In effect, it could potentially be more
challenging for Converse to claim exclusive
rights to certain elements of its sneaker design,
such as the toe cap and multilayered toe
bumper with the diamond and line patterns.
The ITC was largely persuaded by evidence
that the Converse outsole design at issue
had actually been used by several other shoe
designers for over eight decades. Converse’s
rights in its other two registrations at issue, the
’103 and ’960 Trademarks, remain affirmed by
the ruling.
Contributor: Sonia Lakhany
Lakhany Law, PC, Atlanta, Georgia
Verifier: Rui W. Geissler
Muncy, Geissler, Olds & Lowe, P.C., Fairfax, Virginia
Ms. Lakhany and Ms. Geissler are members of
the INTA Bulletins Law & Practice—North America
Subcommittee.
UNITED STATES: TTAB: Amended Identification
Cannot Exceed Scope of Original ID
The U.S. Trademark Trial and Appeal Board (TTAB)
affirmed a refusal to register the mark PITCHING-
SMART because the applicant’s amendments to
the identification of services exceeded the scope
of the original identification, and the specimens
did not show use of the mark. In re Jimmy Moore
LLC, Serial No. 86353015 (T.T.A.B. Aug. 24,
2016) (precedential).
The applicant filed its trademark application
for “entertainment in the nature of baseball
games.” According to the applicant, it inadvertently
misidentified the services and filed
a “voluntary amendment” ten days after the
application was filed. In that amendment, the
identification was changed to a baseball and
softball pitching training system.
During examination, the examining attorney
rejected the amendment because it was
beyond the scope of the original identification.
She reinstated the original identification but rejected
the applicant’s specimens because they
did not show the mark’s use for the originally
identified services. The applicant submitted
substitute specimens, but those were also
rejected on grounds that they did not show use
of the mark for the identified services.
In response, the applicant tried to amend
the identification once more to educational
seminars for baseball and softball pitching. It
also provided new specimens. However, the
amendment and specimens were rejected for
the same reasons the previous amendment
and specimens had been rejected.
The applicant petitioned the Director to reverse
the examining attorney’s actions as procedural
error because the initial amendment was voluntarily
filed shortly after the application had been
filed and before the examining attorney had
performed a substantive review. The Director,
however, dismissed the petition. Trademark
Rule 2.71 prohibits amendments that broaden
the scope of the original identification of
services or goods. Accordingly, the Director
determined that the examining attorney could
not accept the amendment since it was outside
the scope of the original, even though the initial
amendment was filed voluntarily before being
reviewed. Also, the Director found that reinstating
the original identification was proper.
The applicant then appealed the refusal and
claimed (among other things) that the examining
attorney improperly refused the applicant’s
preliminary amendment and specimens.
However, the TTAB did not consider that issue
because “a formal requirement which was the
subject of a petition decided by the Director
may not thereafter be the subject of an appeal
to the Board.” TBMP § 1201.05 (2016).
Instead, the TTAB addressed, among other
issues, whether the amended identifications
were broader than the original identification.
Although the TTAB found the applicant’s
arguments were “quite creative,” it was not
persuaded by them, and found that the proposed
amendments exceeded the scope of the
original. Furthermore, the TTAB rejected the
applicant’s specimens, as they did not support
the original identification, and the applicant
had acknowledged as much.
Contributor: Connie Limperis
Law Office of Connie P. Limperis,
San Diego, California
Verifier: Cynthia Moyer
Fredrikson & Byron, P.A., Minneapolis, Minnesota
Ms. Limperis and Ms. Moyer are members of the
INTA Bulletins Law & Practice—North America
Subcommittee.
UNITED STATES: Federal Courts Have Jurisdiction
over Cross-Border Conduct
The Ninth Circuit Court of Appeals has reversed
a trial court’s finding that it lacked jurisdiction
over claims arising from selling branded goods
in a Canadian store meant to mimic the trade
dress of the brand owner. Trader Joe’s Co. v.
Hallatt, No. 14-35035 (9th Cir. Aug. 26, 2016).
The plaintiff owns several federal trademark registrations
for its mark TRADER JOE’S for grocery
store services and food products in the United
States. It also claims rights in its South Pacific–
Among other things, the
owner alleged that the
defendant had failed to
adhere to quality control
standards in transporting
the goods, thus tarnishing
its reputation.
themed trade dress in its stores. The defendant
allegedly purchased large quantities of TRADER
JOE’S branded goods in a Trader Joe’s store
located near the United States/Canada border
and sold them at higher prices in a Canadian
store, which employed a trade dress similar to
that of Trader Joe’s stores and did business as
Pirate Joe’s. The trial court dismissed the case
for lack of subject matter jurisdiction over the
non-U.S. activity of the defendant.
The appellate court determined that the
Lanham Act was meant to have an expansive
38 INTA Global Report, February 2017