Conceding no intent for listed services in a trial brief forfeits them
An applicant narrowing its identification during an opposition must do so by timely motion under Trademark Rule 2.133(a). In this non-precedential decision, a deletion first requested in the trial brief was denied as untimely, and the applicant's admission there that it had no evidence of intent for those services gave the opposer judgment on them. With the deletion refused, descriptiveness was judged against every listed service, and a mark descriptive of one service in a class is refused for the whole class (slip op. at 7–9, 14–15).
The intent attack has limits. The opposer carries the burden, typically met with the applicant's own discovery responses showing no documents. An opposer that leaves the applicant to prove its own intent loses the claim for services the applicant shows it had the capacity to provide (at 6–7, 10–12). Section 66(a) requests are judged under the same case law as §1(b) applications (at 5), and an examining attorney's withdrawal of a descriptiveness refusal has "very little evidentiary value" (at 16 n.30).
The case: a Turkish developer of broadcast compositing software sought REALITY ENGINE for a long Class 42 list. With no discovery responses in the record, the intent claim failed for the services the applicant defended. Its website, trade press and a definition of "reality engine" from the examination record showed the term describes AR and VR engine software. The descriptiveness finding rested largely on software design, programming and software rental, services the applicant had tried to delete (at 15–20).
In the editors' view, broad Madrid identifications should be pruned before trial, not in the brief.