The Usage of Commas versus Semicolons in a Trademark Application’s Description of Goods and Services — Does It Matter?
As a brief introduction, PG disparaged semicolons on TPV yesterday. He stated that some types of lawyers tend to overuse this punctuation mark and that writers should be careful when using it.
Many defenders of the semicolon commented on its usefulness and relevance to 21st Century writing.
Following is an example of legal issues arising with using a semicolon when a comma is needed.
From Troy & Schwartz, Attorneys at Law:
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.”
. . . .
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.
Link to the rest at Troy & Schwartz