Requirement of PTO not so Extreme or Unreasonable as to Warrant Judicial Intervention

In re Omega SA, [2006-1234] (July 23, 2007) [NEWMAN, Friedman, Dyk] The Federal Circuit affirmed the TTAB sustaining the refusal to register AQUA TERRA because the definitions of goods "chronographs" was unclear.
SIGNIFICANCE: The PTO has broad discretion to require description of goods in trademark applications more extensive and specific than established by WIPO
BRIEF: Omega's application to register AQUA TERRA for chronographs in International Class 14 was refused because chronographs could be scientific apparatus in Class 9 or watches in Class 14. The Examiner required Omega to specify chronographs s used as watches. Omega resisted, pointing out that only watches were included in Class 14. The Federal Circuit said that it was within the PTO's authority to develop particularized definitions that are more extensive and specific than the Alphabetical List of Goods and Services that is published by WIPO. The Federal Circuit confirmed that it is within the discretion of the PTO to require that one's goods be identified with particularity.
The Federal Circuit agreed with Omega that consistency is highly desirable, and that the time and expense of complying with inconsistent applications burdens both the PTO and the public that depends on its services. However, the Federal Circuit found that the requirement imposed by the PTO was not so extreme or unreasonable as to warrant judicial intervention.