Trademark Application Strikes a Dissonant Cord

In Brief:  The identification of goods and services in a trademark application isn’t as easy as it might look.

Here’s What Happened:

First, a little background. The USPTO offers two types of applications. TEAS Plus allows an applicant to pay a lower fee ($250.00) but the identification of services has to be taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual without any deviation. For a slightly higher fee ($350.00), the TEAS Standard application allows the applicant to customize the identification of goods and services. The identification of goods and services has to be accurate because once the application is filed, the applicant cannot change the identification to add or broaden the goods and services.

That is the hard lesson that Win-D-Fender, LLC learned.

Win-D-Fender used the TEAS Plus form to file an application to register “EN-D-FENDER” for “musical instruments”. Actually Win-D-Fender didn’t sell musical instruments. It sold flute accessories.

Fender Musical Instruments Corporation owns the trademark “FENDER” for a variety of musical instruments and accessories especially electric guitars and accessories.

Fender filed an opposition before the Trademark Trial and Appeal Board (the “Board”) to Win-D-Fender’s trademark application based on the fact that Win-D-Fender was not using the trademark for musical instruments. Fender filed a motion for partial summary judgment. Win-D-Fender filed a cross-motion requesting leave to amend the identification of goods and services to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments."

The Board denied Win-D-Fender’s motion to amend. The identification of goods and services in Win-D-Fender’s application was not accurate. Win-D-Fender inappropriately sought to change or broaden the original identification. Win-D-Fender argued that it clarified the goods and services in the “Miscellaneous” section of the application. However, that section only allows information for which no other section is appropriate. The Identification of Goods and Services section was the appropriate place to clarify the goods.

The Board then went on to grant Fender’s motion for summary judgment based on non-use.

Why You Should Know This: As can be seen in this case, the identification of goods and services connected with a trademark can make or break registration. While the TEAS Plus application may look like a good deal, the applicant can’t always find the appropriate description in the USPTO’s Manual of Identification. For $100.00 more, the TEAS Standard application allows the applicant the flexibility to properly identify their goods and services. 

Case Information: Fender Musical Instruments Corp. v. Win-D-Fender, LLC, Opposition No. 91272326 (Precedential) (Trademark Trial & App. Bd. September 22, 2022)