May
02

The Usage of Commas Versus Semicolons in a Trademark Application’s Description of Goods and Services – Does It Matter? Yes, Virginia, It Does!

Although the usage of commas and semicolons in the description of goods and services included in a trademark application may seem to be nothing more than compliance with a  grammatical rule, the fact is that the presence of a comma and/or semicolon can have a substantive law effect.  Section 1402.01(a) of the Trademark Manual of Examining Procedure (“TMEP”) has specific guidelines governing the usage of semicolons and commas:

Semicolons should be generally used to separate distinct categories of goods or services within a single class.  For example, “cleaners, namely glass cleaners, oven cleaners, and carpet cleaners; deodorizers for pets” is an acceptable classification for [International] Class 3.  In this example, the word “cleaners” means the category covering “glass cleaners, oven cleaners, and carpet cleaners.”  The semicolon prior to “deodorizers for pets” indicates that the deodorizers are a separate category of goods from the cleaners. 

Seems straight forward enough, doesn’t it?   Just use the right punctuation in describing the goods and services.  Yet the 2013 precedential opinion by the Trademark Trial and Appeal Board (“Board”) in In re Midwest Gaming & Entertainment, LLC* demonstrates that punctuation can impact the interpretation of the “reach” of the described goods and services.  In Midwest Gaming, the examining attorney had rejected the standard character word mark LOTUS for “bar services located in a casino” under International Class 43 on likelihood of confusion grounds with the previously registered mark LOTUS, also for Class 43 services.  The registrant’s specified services were for “providing banquet and social function facilities for special occasions; restaurant and bar services.” Note the usage of the semicolon in the registrant’s description of services.

In appealing the examining attorney’s rejection, the applicant argued that the registrant’s bar and restaurant services were limited to services involving banquet and social function facilities.   Thus, the registrant was restricting its services to trade channels and purchasers distinct from the applicant’s trade channels and purchasers associated with casinos and casino patrons.  Since the trade channels were distinguishable, any likelihood of confusion among purchasers of the registered mark owner’s services and the applicant’s own services was eliminated.

The registrant’s usage of a semicolon “ruined” the applicant’s argument.  The Board emphasized that under the standard examination practice, a semicolon is user to separate distinct categories of goods and services.  Here, the semicolon separates the registrant’s restaurant services and bar services into a discrete category of services which are not connected to or dependent on the “ ‘providing banquet and social function facilities for special occasions’ ” services set out on the other side of the semicolon.”

Moreover, the services following the semicolon themselves formed an independent basis for the Board’s likelihood of confusion findings under the du Point factors.  The Board held that the registered LOTUS mark owner’s “restaurant and bar services” encompass and are thus legally identical to applicant’s “bar services located in a casino” and the trade channels and purchasers for the respective services likewise are legally identical.  As such, the “simple” semicolon in the registrant’s description of services served to prevent the registration of the applicant’s LOTUS mark.

The outcome may well have been different if the registrant’s description of goods and services had included a comma instead of the semicolon.   Why?  Because then the applicant would have had a stronger argument that the registrant was limiting its restaurant and bar services to banquet and social function facilities.

What is the take-home point from Midwest Gaming?    Even relatively simple descriptions of goods and services should be carefully reviewed by applicants in view of both the TMEP’s rules and the Midwest Gaming decision.  This is particularly important where the applicant’s goods and services fall into the same international classification of the goods and services listed for a similar registered mark and the registered mark’s listed goods/services for the international classification are separated by a semicolon indicating the presence of separate categories of goods/services within the specified international classification.   As the Board stated in Midwest Gaming, services and goods separately set out in the identification of services/goods by means of a semicolon, stand alone and independently as a basis of a likelihood of confusion findings under both the second (similarity or dissimilarity of the services/goods as they are identified in the applicant’s application and in the cited registration respectively) and third (similarity or dissimilarity of the trade channels in which, and the classes of purchasers to whom, the respective services or are would be marketed) du Pont factors.

The applicant in Midwest Gaming may well have “read” the registrant’s description as including restaurant and bar services provided at only banquets and social function facilities.   Under trademark law, the presence of the semicolon in the description of goods and services for the registered mark produced a different interpretation by the Board resulting in rejection of the application.    So yes, punctuation does matter in a trademark application no matter how mundane it may seem at the time.

*If interested in reading the opinion, use 85111552 as the application number when taken to TTABVUE.  See also 106 USPQ 2d 1163 (2013).

 

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