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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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`November 4, 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 October 29, 2024 and November 1, 2024, Applicant submitted what the Board
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`construes as a renewed stipulated motion to amend its application Serial No.
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`97089316, with Opposer’s consent, and Opposer’s withdrawal without prejudice of the
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`opposition, contingent upon entry of the amendment.1
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`By the proposed amendment, Applicant seeks to amend the identification of
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`services in International Class 35 as follows (deletion are in strike-through and
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`additions are in bold):
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`FROM: Advertising services; Advertising, marketing and promotion services in
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`field of comic books; Business administration; Business
`management; Business marketing services
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`1 The Board notes that Applicant continues to use the improper ESTTA form for these
`requests. In particular, Applicant has, on multiple occasions, selected the “Consent Motion
`for Suspension in View of Civil Proceeding” despite the fact that the motions are not for this
`purpose. For any future motions to amend the application, Applicant should utilize the
`“Motion to Amend Application” selection under “Discovery/Trial Motions.”
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`Opposition No. 91290247
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`TO:
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`Comic Bookstore Business Administration Promotion none of
`which in the field of physical or virtual fashion
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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, 37 C.F.R. § 2.133, and must also
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`comply with all applicable rules and statutory provisions, including Trademark Rules
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`2.56, 2.59, and 2.71, 37 C.F.R. §§ 2.56, 2.59, 2.71. See TRADEMARK TRIAL AND APPEAL
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`BOARD MANUAL OF PROCEDURE (TBMP) §§ 514.01, 605.03(b) (2024).
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`First, the proposed amendment is unacceptable inasmuch as it identifies services
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`that are not within the scope of the present identification. Specifically, the proposed
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`wording “business administration promotion” is unclear and indefinite in that it
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`appears that Applicant has attempted to combine business administration services
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`with promotion services. Thus, the nature of the services is not clear as written.
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`Therefore, the amendment is beyond the scope of the original identification of
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`services.
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`Additionally, an application based on use in commerce under Trademark Act
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`Section 1(a) must include one specimen per class showing the mark as actually used
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`in commerce on or in connection with the goods or services identified. See Trademark
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`Rule 2.56(a), 37 C.F.R. § 2.56(a). In this case, to the extent Applicant is attempting
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`to amend its identification of services to include only promotion or advertising
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`services in the field of comic books, Applicant has not provided a verified substitute
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`specimen that shows the mark as use in connection with Applicant’s amended
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`services. See Trademark Rule 2.59(a), 37 C.F.R. § 2.59(a). The required verified
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`declaration must state that the substitute specimen was in use in commerce
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`2
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`Opposition No. 91290247
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`at least as early as the filing date of the application. See id. The Board notes
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`that the unverified specimens that Applicant provided would suffice to show the
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`mark in use in connection with advertising or promotion services.
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`In view of these findings, the motion to amend is denied without prejudice. The
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`present identification of services, that is, the identification of services prior to the
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`filing of the motion to amend, remains operative for purposes of future amendment.
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`See Trademark Rule 2.71(a); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
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`§ 1402.07(d) (May 2024).
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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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