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`RA/SWF
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`September 18, 2024
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`Opposition No. 91290247
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`Hugo Boss AG
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`v.
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`Floyd Bennett
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`Steven W. Ferrell Jr., Interlocutory Attorney:
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`On September 5, 2024, Applicant submitted what the Board construes as a
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`supplement to its July 18, 2024 motion to amend. The September 5, 2024 submission
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`consists of a specimen regarding Applicant’s application Serial No. 97089316.1
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`A proposed amendment to any application which is the subject of an inter partes
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`proceeding is governed by Trademark Rule 2.133, and must also comply with all
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`applicable rules and statutory provisions, including Trademark Rules 2.56, 2.59, and
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`2.71, 37 C.F.R. §§ 2.56, 2.59, 2.71. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL
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`OF PROCEDURE (TBMP) §§ 514.01, 605.03(b) (2024).
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`As discussed in the Board’s August 16, 2024 order, the proposed amendment to
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`the identification of services is limiting in nature, as required by Trademark Rule
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`1 The Board’s August 16, 2024 order granting Applicant’s motion to set aside the default
`judgment had the effect of reinstating Applicant’s application Serial No. 97089316.
`Accordingly, the Board will have the abandoned status removed and updated to pending
`status.
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`Opposition No. 91290247
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`2.71(a), and Opposer consents thereto. However, an application based on use in
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`commerce under Trademark Act Section 1(a) must include one specimen per class
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`showing the mark as actually used in commerce on or in connection with the goods or
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`services identified. See Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a).
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`In this case, Applicant still has not provided a verified substitute specimen that
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`shows the mark as use in connection with Applicant’s amended services. See
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`Trademark Rule 2.59(a), 37 C.F.R. § 2.59(a). First, Applicant’s September 5, 2024
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`submission does not include the required verified declaration, which must state that
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`the substitute specimen was in use in commerce at least as early as the filing date of
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`the application. See id. Second, the unverified specimen does not show the mark used
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`in association with the proposed amended services being “Comic Bookstore Business
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`Administration none of which in the field of physical or virtual fashion.” Instead, it
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`appears the specimen shows the mark in use in association with retail comic book
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`store services. Business administration services involve services for a third-party
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`business, such as “book-keeping, drawing up of statements of accounts, business and
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`financial auditing, business appraisals, tax preparation and filing services,” while
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`retail store services involve “the bringing together, for the benefit of others, of a
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`variety of goods, excluding the transport thereof, enabling customers to conveniently
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`view and purchase those goods.” See TRADEMARK MANUAL OF EXAMINING PROCEDURE
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`(TMEP) § 1041.02(a) (May 2024).
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`In view of these findings, the motion to amend is denied without prejudice.
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`The present identification of services, that is, the identification of services prior to
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`2
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`Opposition No. 91290247
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`the filing of the motion to amend, remains operative for purposes of future
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`amendment. See Trademark Rule 2.71(a); TMEP § 1402.07(d).
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`However, inasmuch as the filing of the proposed amendment indicates to the
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`Board that the parties are making efforts to settle this matter, proceedings remain
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`suspended, and the parties are allowed until thirty days from the date of this
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`order to file a revised motion to amend, failing which the Board will resume
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`proceedings and reset dates, and the opposition will go forward on the present
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`application.
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`3
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