UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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` Mailed: May 4, 2011
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`Opposition No. 91194490
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`Crunch IP Holdings, LLC
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`v.
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`Interserve, Inc.
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`mc
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`M. Catherine Faint,
`Interlocutory Attorney:
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`On April 6, 2011, applicant filed a proposed amendment to
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`its application Serial No. 77358572, with opposer's consent.
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`By the proposed amendment applicant seeks to change the
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`identification of services in Classes 41 and 45 as follows,
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`from
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`Class 41:
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`Arranging and conducting educational conferences; arranging of
`seminars; education services, namely, providing live and
`online classes, seminars, and workshops in the fields of
`technology, internet products and services, start-up
`companies, entrepreneurship, marketing, design, finance,
`recruitment, intellectual property, and leadership;
`educational services, namely, developing, arranging and
`conducting educational conferences and programs and providing
`courses of instruction in the fields of technology, internet
`products and services, start-up companies, entrepreneurship,
`marketing, design, finance, recruitment, intellectual
`property, and leadership; electronic publishing services,
`namely, publication of text, graphic works, video, pod casts,
`and sound recordings in online, CD, and DVD formats featuring
`technology, internet products and services and start-up
`business content; production of sound recordings; online
`electronic publishing of books and periodicals; publication of
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`Opposition No. 91194490
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`printed matter; publishing of reviews of technology,
`innovations, products, services, businesses, management;
`organization of seminars, working groups, research groups and
`conventions in the fields of computer and mobile device
`technology, internet products and services, and start-up
`businesses; social club services, namely, arranging of social
`events, parties, and social networking events; providing
`recognition and incentives by the way of awards to demonstrate
`excellence in the fields of technology, internet products and
`services, and entrepreneurship
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`to
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`Arranging and conducting educational conferences; arranging of
`seminars; education services, namely, providing live and
`online classes, seminars, and workshops in the fields of
`technology, internet products and services, start-up
`companies, entrepreneurship, marketing, design, finance,
`recruitment, intellectual property, and leadership;
`educational services, namely, developing, arranging and
`conducting educational conferences and programs and providing
`courses of instruction in the fields of technology, internet
`products and services, start-up companies, entrepreneurship,
`marketing, design, finance, recruitment, intellectual
`property, and leadership; electronic publishing services,
`namely, publication of text, graphic works, video, pod casts,
`and sound recordings in online, CD, and DVD formats featuring
`technology, internet products and services and start-up
`business content; production of sound recordings; online
`electronic publishing of books and periodicals; publication of
`printed matter; publishing of reviews of technology,
`innovations, products, services, businesses, management;
`organization of seminars, working groups, research groups and
`conventions in the fields of computer and mobile device
`technology, internet products and services, and start-up
`businesses; arranging of social events, parties, and social
`networking events; providing recognition and incentives by the
`way of awards to demonstrate excellence in the fields of
`technology, internet products and services, and
`entrepreneurship; none of the above relating to health,
`fitness, or sports
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`from
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`Class 45:
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`social networking services; Internet based social networking,
`introduction and dating services
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`to
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`Opposition No. 91194490
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`social networking services; Internet based social networking,
`and business introduction services, none of the above relating
`to health, fitness, or sports
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`The amendment to Class 41 is acceptable and made of
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`record.1
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`The proposed amendments, however, must also comply with
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`all applicable rules and statutory provisions. These
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`include Trademark Rules 2.71 to 2.75. Thus, for example,
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`the Board will not approve a proposed amendment which
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`involves an addition to the identification of goods, or
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`which materially alters the character of the subject mark.
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`See Trademark Rules 2.71(b), 2.72, 2.173(a) and 2.173(b);
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`and Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926
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`(TTAB 1993). See also Louise E. Rooney, TIPS FROM THE TTAB:
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`Rule 2.133 Today, 81 Trademark Rep. 408 (1991).
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`Trademark Act Section 7(c), 15 U.S.C. § 1057(c),
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`provides that the filing of any application for registration
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`on the Principal Register establishes constructive use and
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`nationwide priority contingent on issuance of the
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`registration. Therefore, the identification of goods and
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`services in an application defines the scope of those rights
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`established by the filing of an application for the
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`Principal Register. While an application may be amended to
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`clarify or limit the identification, additions to the
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`1 Classes 16, 35, 42 and 45 remain unchanged.
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`Opposition No. 91194490
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`identification are not permitted. Trademark Rule 2.71(a);
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`TMEP §§ 804.09 and 804.09(a).
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`The proposed amendment of the recitation of services in
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`Class 45 is unacceptable because it designates services that
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`are indefinite and/or appear to belong in Class 35. It is
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`noted that Class 35 is already a part of the pending
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`application and applicant could potentially amend the
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`wording in that class by adding the wording noted below.
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`Specifically, the wording “business introduction
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`services” is indefinite and appears to belong in Class 35.
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`An acceptable recitation of services would add the
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`wording, “online business introduction services in the
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`nature of professional networking services” in Class 35.2
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`Accordingly, because the proposed amendment to Class 45
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`is indefinite, it is denied. The amendment to Class 41 is
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`acceptable and the motion to amend is granted as to this
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`Class.
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`Because it is evident that the parties are attempting
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`to reach a settlement to this proceeding, applicant is
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`allowed until THIRTY DAYS from the mailing date of this
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`order to submit another amendment to Class 45, and
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`potentially to Class 35, failing which the proposed
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`2 The wording, “social networking services; Internet-based social
`networking services, none of the above relating to health,
`fitness, or sports” is acceptable in Class 45.
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`Opposition No. 91194490
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`amendment will be given no further consideration, and the
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`proceeding will go forward on the application as amended.
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`Proceedings are otherwise suspended.
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`***
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