`
`
`
`RA/kb
`
`
`
`
`
`
`
`
`
`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
`
`December 14, 2024
`
`Opposition No. 91293350
`
`Hugo Boss AG
`
`v.
`
`Sugo, LLC
`
`Katie Bukrinsky, Interlocutory Attorney:
`
`On December 4, 2024, Applicant filed a proposed amendment to application Serial
`
`No. 98184492, with Opposer’s consent, and Opposer’s withdrawal without prejudice
`
`of the opposition, contingent upon entry of the amendment. Applicant’s requested
`
`amendments are addressed in turn.
`
`I.
`
`Amendment to Identification of Goods Denied
`
`Applicant seeks to amend its identification of goods in Class 25 as follows (deleted
`
`items in strikethrough text, added items in bold text):
`
`FROM: Scarves; Skirts; Suits; Swimwear; Tunics; Belts for clothing; Bottoms as
`clothing; Dresses; Footwear; Jumper dresses; Rompers; Tops as clothing
`
`TO: Scarves; Tunics; Belts for clothing; hat and glove sets; caftans.
`
`A proposed amendment to any application or registration which is the subject of
`
`an inter partes proceeding must comply with all other applicable rules and statutory
`
`provisions, including Trademark Rules 2.71-2.75; see also TRADEMARK TRIAL AND
`
`
`
`
`
`Opposition No. 91293350
`
`
`APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 514.01 and 605.03(b) (2024). 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, 1402.07
`
`(Nov. 2024).
`
`The proposed amendment is unacceptable inasmuch as it identifies goods that are
`
`not within the scope of the present identification. Specifically, “hat and glove sets”
`
`are outside the scope of the present identification.
`
`II.
`
`Amendment to Description of the Mark Denied
`
` Applicant proposes to amend its standard character mark to a design mark, and
`
`to also amend the description of the mark, as follows:
`
`
`
`FROM:
`
`SUGOWEAR
`
`The mark consists of standard characters without claim to any
`
`
`
` particular font style, size, or color.
`
`
`
`
`TO:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The mark consists of the stylized wording “sugowear” centered
`over a stylized flower with stylized pedals radiating radially
`outwardly from the wording “sugowear.”
`
`In an application based on a bona fide intention to use a mark in commerce under
`
`section 1(b) of the Act, the applicant may amend the description or drawing of the
`
`mark only if “[t]he proposed amendment does not materially alter the mark. The
`
`
`
`2
`
`
`
`Opposition No. 91293350
`
`
`Office will determine whether a proposed amendment materially alters a mark by
`
`comparing the proposed amendment with the description or drawing of the mark filed
`
`with the original application.” Trademark Rule 2.72(b), 37 C.F.R. § 2.72(b). The
`
`controlling question is always whether the old and new forms of the mark create
`
`essentially the same commercial impression. See Jack Wolfskin Ausrustung Fur
`
`Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
`
`n.1 (Fed. Cir. 2015). Generally, the addition of any element that would require a
`
`further search will also constitute a material alteration. In re Pierce Foods Corp., 230
`
`USPQ 307, 308-09 (TTAB 1986). See also TMEP §807.14.
`
`The proposed amendment to the mark and description is unacceptable because it
`
`materially alters the mark, adding design elements that would necessitate a new
`
`search. Accordingly, the Board cannot accept or enter the proposed amendment. See
`
`TMEP § 807.14 and cases cited therein.
`
`III. Amendment to Allege Use Improper
`
`Applicant also requests that the Board accept its amendment to allege use. 5
`
`TTABVUE 3-4.
`
`Under 37 C.F.R. § 2.76(a)(1), the USPTO will not review an amendment to allege
`
`use filed after the date that the application is approved for publication by the
`
`examining attorney. Under 37 C.F.R. § 2.88(a)(1), the USPTO will not review a
`
`statement of use filed before the date of issuance of the notice of allowance.
`
`These two rules combine to create a time period, known as the “blackout period,”
`
`
`
`3
`
`
`
`Opposition No. 91293350
`
`
`when neither an amendment to allege use nor a statement of use may be filed. See
`
`TMEP § 1104.03(b).
`
`Applicant filed its amendment to allege use during the blackout period.
`
`Accordingly, the amendment to allege use is given no consideration.
`
`IV. Summary; Proceeding Suspended
`
`For the foregoing reasons, the motion to amend is denied without prejudice.
`
`The present identification of goods and the present mark remain operative for
`
`purposes of future amendment. See Trademark Rule 2.71(a); TMEP §1402.07(d).
`
`However, inasmuch as the filing of the proposed amendment indicates to the
`
`Board that the parties are making efforts to settle this matter, proceedings are
`
`suspended, and the parties are allowed until THIRTY DAYS from the date of
`
`this order to file a revised motion to amend, failing which the Board will resume the
`
`proceeding and reset dates, and the opposition will go forward on the mark and goods
`
`as set forth prior to the filing of the amendment.
`
`
`
`4
`
`
