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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
`
`May 31, 2024
`
`Opposition No. 91290247
`
`HUGO BOSS AG
`
`v.
`
`Floyd Bennett
`
`
`
`Steven W. Ferrell Jr., Interlocutory Attorney
`
`On May 1, 2024, the Board issued a notice of default to Applicant because no
`
`answer had been filed.
`
`On May 10, 2024, Applicant filed a proposed amendment to its application Serial
`
`No. 97089316, without Opposer’s consent.1
`
`By the proposed amendment Applicant seeks to amend the identification of
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`services in International Class 35 as follows:
`
`FROM: Advertising services; Advertising, marketing and promotion services in
`the
`field of comic books; Business administration; Business
`management; Business marketing services
`
`
`TO:
`
`
`
`Comic book store services none of which in the field of physical or virtual
`fashion
`
`
`1 The Board notes that on May 9, 2024, Applicant filed a document in which he stated that
`he desired to file a motion to amend his application and then a form consent motion for
`suspension in view of a civil proceeding to which Applicant attached the same motion to
`amend his application. In his May 10, 2024 submission, Applicant withdraws his motion to
`suspend. Accordingly, the motion to suspend will receive no further consideration.
`
`
`
`
`
`Opposition No. 91290247
`
`
`A proposed amendment to any application or registration which is the subject of
`
`an inter partes proceeding must also comply with all other applicable rules and
`
`statutory provisions, including Trademark Rules 2.71-2.75. See TRADEMARK TRIAL
`
`AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 514.01, 605.03(b) (2023). In
`
`particular, while an applicant may amend to clarify or limit the identification, adding
`
`to or broadening the scope of the identification is not permitted. See Trademark Rule
`
`2.71(a); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §§1402.06 et seq.,
`
`1402.07 (November 2023).
`
`The proposed amendment is unacceptable in its entirety inasmuch as it identifies
`
`services that are not within the scope of the present identification. Specifically, the
`
`proposed amendment is beyond the scope of the present identification because comic
`
`book store services are a type of retail store service that are not encompassed by any
`
`of Applicant’s originally
`
`identified advertising, marketing, or business
`
`administration services.
`
`Therefore, the Board cannot accept the proposed amendment and will not enter
`
`the amendment.2
`
`In view of these findings, the motion to amend is denied without prejudice.
`
`The present identification of services, that is, the identification prior to the filing of
`
`the motion to amend, remains operative for purposes of future amendment. See
`
`Trademark Rule 2.71(a); TMEP §1402.07(d).
`
`
`2 Additionally, even if the amendment were otherwise acceptable, the Board will generally
`defer determination of a timely filed (i.e., pretrial) unconsented motion to amend in substance
`until final decision, or until the case is decided upon summary judgment. See TBMP § 514.03
`and authorities cited therein.
`
`
`
`2
`
`
`
`Opposition No. 91290247
`
`
`However, the Board views Applicant’s motion as an attempted response to the
`
`notice of default, and, accordingly, Applicant is allowed twenty days from the date
`
`of this order to show cause why judgment by default should not be entered against
`
`Applicant in accordance with Fed. R. Civ. P. 55(b)(2).
`
`Proceedings otherwise remain suspended.
`
`* * *
`
`THE FOLLOWING INFORMATION ON BOARD PROCEEDINGS IS
`PROVIDED AS A COURTESY TO APPLICANT.
`
`Nature of an Opposition Proceeding
`
`An inter partes proceeding before the Board is similar to a civil action in a Federal
`
`district court. There are pleadings, a wide range of possible motions; discovery (a
`
`party’s use of discovery depositions, interrogatories, requests for production of
`
`documents and things, and requests for admission to ascertain the facts underlying
`
`its adversary’s case), a trial, and briefs, followed by a decision on the case. The Board
`
`does not preside at the taking of testimony. Rather, all testimony is taken out of the
`
`presence of the Board during the assigned testimony, or trial, periods, and the written
`
`transcripts thereof, together with any exhibits thereto, are then filed with the Board.
`
`No paper, document, or exhibit will be considered as evidence in the case
`
`unless it has been introduced in evidence in accordance with the applicable
`
`rules.
`
`Legal Representation Is Strongly Encouraged
`
`It should also be noted that while U.S. Patent and Trademark Office (USPTO)
`
`Rule 10.14 permits any person to represent itself, or him or herself, it is generally
`
`
`
`3
`
`
`
`Opposition No. 91290247
`
`
`advisable for a person (including an entity) who is not acquainted with the
`
`technicalities of the procedural and substantive law involved in an opposition or
`
`cancellation proceeding to secure the services of an attorney who is familiar with such
`
`matters. The USPTO cannot aid in the selection of an attorney.
`
`It is recommended that Applicant obtain a copy of the latest edition of Title 37 of
`
`the Code of Federal Regulations, which includes the Trademark Rules of Practice.
`
`These
`
`rules may
`
`be
`
`viewed
`
`at
`
`the USPTO’s Trademarks
`
`page:
`
`https://www.uspto.gov/trademark/laws-regulations. The Board’s main webpage,
`
`https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`
`board, includes information on the Trademark Rules applicable to Board proceedings,
`
`on the Board’s online systems, Alternative Dispute Resolution (ADR), Frequently
`
`Asked Questions about Board proceedings, and a web link to the TBMP.3 Further, all
`
`Board proceedings and other information regarding the Trademark Trial and Appeal
`
`Board may be accessed at the following URLs: http://ttabvue.uspto.gov/ttabvue/ and
`
`http://www.uspto.gov/trademarks/process/appeal/index.jsp.
`
`Electronic Submissions to the Board
`
`All submissions in Board proceedings must be made via ESTTA, the Electronic
`
`System for Trademark Trials and Appeals, and must be in compliance with
`
`Trademark Rules 2.126(a) and 2.126(b). See TBMP § 110.01. The ESTTA user
`
`
`the
`at
`accessed
`be
`may
`TBMP
`The
`3
`https://tbmp.uspto.gov/RDMS/TBMP/current#/current/tbmpd0e18.html.
`
`
`following
`
`URL:
`
`
`
`4
`
`
`
`Opposition No. 91290247
`
`
`manual, ESTTA
`
`forms, and
`
`instructions
`
`for
`
`their use are
`
`located at
`
`http://estta.uspto.gov/.
`
`Requirement for Service on Adverse Party of All Submissions Filed
`
`Trademark Rules 2.119(a) and (b) require that every submission filed in the
`
`USPTO in a proceeding before the Board must be served upon the attorney for the
`
`other party, or on the party if there is no attorney, and proof of such service must be
`
`made before the submission will be considered by the Board. Consequently, copies of
`
`all submissions which the parties may file in this proceeding (including for Applicant,
`
`the answer required herein) must be accompanied by “proof of service” of a copy on
`
`the adverse party or the adverse party’s counsel if one is appointed.
`
`“Proof of service” usually consists of a signed, dated statement attesting to the
`
`following matters: (1) the title or nature of the submission being served, (2) the
`
`method of service (i.e., electronic mail), (3) the person being served and the email
`
`address used to effect service, and (4) the date of service. This written statement
`
`should take the form of a “certificate of service” which should read as follows:
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`[insert title of document] was served upon Opposer by forwarding said copy, via
`email to: [insert email address].
`
`The certificate of service must be signed4 and dated.
`
`
`4 An electronic signature comprises a forward slash, “/”, placed before and after the typed
`name of the person actually signing the document. See Trademark Rule 2.193; see also TBMP
`§§ 106.02 and 106.03.
`
`
`
`5
`
`
`
`Opposition No. 91290247
`
`
`All Parties Must Comply with Board Deadlines
`
`While it is true that the law favors judgments on the merits wherever possible, it
`
`is also true that the USPTO is justified in enforcing its procedural deadlines. Hewlett-
`
`Packard v. Olympus, 18 USPQ2d 1710 (Fed. Cir. 1991). Strict compliance with
`
`the Trademark Rules of Practice, and where applicable the Federal Rules
`
`of Civil Procedure, is expected of all parties before the Board, whether or
`
`not they are represented by counsel.
`
`The Parties’ Correspondence Address
`
`The parties are reminded that it is their responsibility to ensure that the Board5
`
`has their current correspondence address, including email address and telephone
`
`number. See TBMP § 117.07 (If a party fails to notify the Board of a change of address,
`
`with the result that the Board is unable to serve correspondence on the party, default
`
`judgment may be entered against the party).
`
`Information on Initial Disclosures
`
`The parties are referred to TBMP § 401.02 and to the following web addresses to
`
`obtain
`
`information
`
`regarding
`
`initial
`
`disclosures:
`
`http://www.uspto.gov/trademarks/process/appeal/RULES08_01_07.pdf
`
`and
`
`to
`
`http://edocket.access.gpo.gov/2006/pdf/06-197.pdf
`
`or
`
`to
`
`http://www.uspto.gov/trademarks/process/appeal/RULES01_17_06.pdf. See Notice of
`
`Final Rulemaking (“Miscellaneous Changes to Trademark Trial and Appeal Board
`
`
`5 When an inter partes proceeding is not pending before the Board, the registrant must
`maintain a current address with the Trademark Office.
`
`
`
`6
`
`
`
`Opposition No. 91290247
`
`
`Rules”) in the Federal Register, 72 Fed. Reg. 147 (August 1, 2007) and 71 Fed. Reg.
`
`10, 2501 (January 17, 2006).
`
`
`
`7
`
`
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