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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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`December 23, 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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`
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`Steven W. Ferrell Jr., Interlocutory Attorney:
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`On December 16, 2024, Applicant submitted what the Board construes as a
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`renewed stipulated motion to amend its application Serial No. 97089316, with
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`Opposer’s consent, and Opposer’s withdrawal without prejudice of the opposition,
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`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:
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`Advertising services; Advertising, marketing and promotion services in
`the
`field of comic books; Business administration; Business
`management; Business marketing services
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`1 The Board once again 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
`
`
`TO:
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`
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`Comic Bookstore Business 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, while the amended identification of services is within the scope of the
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`original identification of services, the Board notes that the promotion of one’s own
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`business is not a service as defined by the Trademark Act. See TRADEMARK MANUAL
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`OF EXAMINING PROCEDURE
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`(TMEP) §§ 1215.02(b), 1301.01(a)(ii), 1402.11(i)
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`(November 2024) and authorities cited therein. Thus, to the extent Applicant’s
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`services are the operation of a comic bookstore, the advertising and promotion of
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`Applicant’s own comic bookstore is not a service provided for the benefit of others. See
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`id.
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`Additionally, again, an application based on use in commerce under Trademark
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`Act Section 1(a) must include one specimen per class showing the mark as actually
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`used in commerce on or in connection with the goods or services identified. See
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`Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a). The required verified declaration
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`must state that the substitute specimen was in use in commerce at least as
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`early as the filing date of the application. See id. The Board notes that the
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`unverified specimens that Applicant provided would suffice to show the mark in use
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`2
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`
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`Opposition No. 91290247
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`in connection with advertising or promotion services in the field of comic books if
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`properly verified.
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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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`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). However, inasmuch
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`as the filing of the proposed amendment indicates to the Board that the parties are
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`making efforts to settle this matter, proceedings remain suspended.
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`The Board sua sponte elects to hold a telephone conference with the parties to
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`futher discuss Applicant’s desire to amend its application. Following this order, the
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`Board will contact the parties at their email addresses of record for purposes of
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`scheduling the conference.
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`3
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