The Board re-designated as precedential its decision (on summary judgment) sustaining guitar-maker Fender's opposition to registration of the mark EN-D-FENDER for "musical instruments," on the ground of nonuse. The Board rejected the Applicant Win-De-Fender's Hail Mary motion to amend its identification of goods to "musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments," because the amended goods exceeded the scope of the original identification.  Fender Musical Instruments Corporation v. Win-D-Fender, LLC, 2023 USPQ2d 61 (TTAB 2023) [By the Board].


Motion to Amend: Win-De-Fender argued that its application was "qualified" by a "miscellaneous statement" entered on the TEAS application form, stating: "For Musical Instrument Accessories namely a wind guard mounted to a flute." Unfortunately, that limiting language was not included in the proper field on the form and therefore it is not considered a part of the identification of goods.

Although Applicant's listing of "musical instruments" as the identification of goods may have been a mistake on Applicant's part, it is settled that once the extent of an identification has been established, it cannot be expanded later. *** Here, the wording "musical instruments" establishes the parameters of Applicant's identification of goods. Applicant therefore is limited in any amendment solely to narrowing or clarifying the nature and type of the applied-for "musical instruments" with greater particularity.

Because accessories are not musical instruments, they are not encompassed within the original identification of goods, and so the Board denied the motion to amend.


Nonuse: Win-De-Fender's interrogatory answers supported Fender's claim: "Applicant states the products sold under the 'En-D-Fender' mark are not musical instruments, as such products are accessories for a flute." And so the Board wasted no time in granting Fender's partial summary judgment on the nonuse claim.

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TTABlogger comment: The subject application was filed and prosecuted pro se. I wonder if the default TEAS position that leads one to file a TEAS-Plus application (therefore requiring resort to the ID Manual) threw the applicant off course. I always find it annoying that the default when filing an application is TEAS-Plus. How about you?

PS: If Win-De-Fender files a new and proper application for its wind flute joint guards, what do you think will happen with Fender's likelihood of confusion and dilution claims?

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