Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SUN REFINING AND MARKETING COMPANY
Serial Nos. 73/544,875; 73/561,987
April 23, 1992
Issued: February 22, 1991
Hearing: January 16, 1991
Donald R. Johnson for applicant
Michael E. Bodson
Trademark Senior Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Rooney, Simms and Quinn
Applicant, Sun Refining and Marketing Company, has appealed from the final refusals of the Trademark Examining Attorney to register the mark ULTRA for motor oil, [FN1] and gasoline for use as automotive fuel, sold only in applicant's automotive service stations. [FN2] The Examining Attorney has refused registration in both cases under Section 1 of the Trademark Act, (15 U.S.C. 1051), on the basis that applicant's declaration does not include the unqualified averment as to exclusive ownership as required by the Act. Applicant and the Examining Attorney have submitted briefs on the refusal. Because of the identity of the issues involved in these two appeals, the Board heard oral arguments relating to both appeals at the same time and the Board shall decide these cases in one opinion.
A brief review of the relevant prosecution history of the involved applications is helpful in understanding our decision. The applications, as originally filed, contained declarations in accordance with Trademark Rule 2.20 wherein applicant asserted the exclusive right to use the marks, with no territorial restrictions. The marks were subsequently published for opposition in the Official Gazette. Oppositions were filed by American Ultramar Limited, Golden Eagle Refining Co., Inc. and Ultramar Petroleum Inc. (hereinafter "Ultramar"). Ultramar and the present applicant entered into a settlement agreement wherein Ultramar agreed to withdraw the oppositions. Of particular significance in the agreement is applicant's acknowledgment of Ultramar's right to use the term ULTRA for gasoline and gasoline related products and automotive service station services in the area comprising the states of California, Nevada, New Mexico, Arizona, Oregon and Hawaii. In furtherance of this acknowledgment, applicant agreed "to refrain from itself making any use of a mark either including or comprising [sic] of, or consisting of, the term ULTRA in [Ultramar's territorial area], in connection with the sale of products and/or services through automotive service stations." Subsequent to the dismissals of the oppositions, applicant requested the Office to withdraw its applications from issue to allow applicant to submit an amended declaration in each case. This was done and applicant filed the "Amended Declaration" wherein applicant acknowledged that it would refrain from using its mark in the states of California, Nevada, New Mexico, Arizona, Oregon and Hawaii. The Examining Attorney then refused registration and these appeals ensued.
The Examining Attorney essentially contends that the pertinent agreement, coupled with the amended declaration, preclude applicant from entitlement to a geographically unrestricted registration. Applicant would have us conclude to the contrary. Applicant argues that it has complied with the statutory requirements of Section 1 of the Act. Applicant states:
*2 There is no requirement in the Act that, in order to be entitled to registration, the applicant must continue at all times to be of the belief that no other person has the right to use the mark in commerce. Nor is there any requirement in the Act of any action to be taken by applicant in the event that circumstances arise, after the filing of the application, which change that belief. The only requirement is that an application be filed with a statement of applicant's belief at that time. This requirement has been met by applicant.
The Amended Declaration (Exhibit D) spoke as of the date it was executed, October 18, 1988. It could not, and did not speak as of the date of the original declaration, June 17, 1985 [and October 2, 1987]. It did not amend the statement of belief as of 1985, nor did it replace the original declaration, which still is the only statement of belief as of the filing of the original application. It is therefore not correct to say that applicant's declaration is insufficient because it does not contain an averment of ownership as required in Section 1. Applicant's original declaration, which is the only declaration the Act requires, did contain such averment and is clearly sufficient. Since there is no defect in applicant's declaration, no basis exists for refusal of registration under Section 1 of the Act.
(Applicant's brief, pp. 7-8, emphasis in original).
The owner of a trademark used in commerce may register his trademark ... by filing ... a written application ... verified by the applicant ... including a statement to the effect that the person making the verification believes himself, or the firm, corporation, or association in whose behalf he makes the verification, to be the owner of the mark sought to be registered, that the mark is in use in commerce, and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods of such other person, to cause confusion, or to cause mistake, or to deceive....
Applicant had a duty in this case, which it fulfilled, to continuously review and amend the declaration filed with its application. A declaration obviously must be truthful, and the present applicant clearly was under an obligation to acknowledge, by way of an amended declaration, Ultramar's rights which were recognized by the terms of the settlement agreement. See: Rosso and Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed.Cir.1983) [In some instances a senior user would be making a false oath where he fails to acknowledge conflicting rights of a junior user which are clearly established, for example, by a court decree, by the terms of a settlement agreement, or by a registration.].
*3 In view of the amended declaration, we absolutely fail to comprehend how applicant can expect the Office to nevertheless issue geographically unrestricted registrations. Section 7(b) of the Act provides, in pertinent part, that a certificate of registration of a mark upon the principal register shall be prima facie evidence of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods specified in the certificate. In light of applicant's acknowledgment of another's rights as set forth in the amended declaration and its own agreement to refrain from using its marks in six states, applicant is not entitled to this presumption under Section 7(b). If we were to take applicant's position, it would be entitled to the presumption. [FN4] In view of the amended declaration, we decline to afford applicant that luxury.
The circumstances which prevent applicant from entitlement to unrestricted registrations apparently were not known when the applications were filed. However, the circumstances changed markedly when applicant learned of conflicting rights and entered into the June 29, 1988 agreement. The circumstances before the Office as a result of that agreement unquestionably support the Examining Attorney's conclusion that applicant is not entitled to geographically unrestricted registrations. That the facts regarding limitations on applicant's use were not in the original declaration on the dates of the filing of applicant's applications is immaterial since the time when the issue of registrability is under consideration extends up to the time the applications are acted upon by the Office. See: In re Wells Fargo & Co., 231 USPQ 95, 105 (TTAB 1986) and cases cited thereat. The facts before us as of the date of this appeal lead unquestionably to the conclusion that applicant cannot now make the same claim of an unrestricted exclusive right to use ULTRA in United States commerce as was made on its behalf in the declarations filed with the applications for registration. [FN5]
Applicant's substantial reliance on two decisions of our reviewing court is clearly misplaced. [FN6] Those cases are distinguishable on the law and facts for reasons so obvious that we need not state them.
Decision: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/544,875, filed June 24, 1985, alleging use since September 1984.
FN3. Inasmuch as the applications were filed prior to the enactment of the Trademark Law Revision Act, this appeal must be decided under the Trademark Act of 1946. We note, however, that the changes to the cited provision of the Act of 1946 are minor. Even under the amended Act we would reach the same result.
FN4. We wonder about the reaction of a district court judge were he or she confronted with registrations such as the ones proposed by applicant. One reaction, of which we are certain, would be the judge's bewilderment and questioning of the competence of the Patent and Trademark Office.
FN5. In point of fact, applicant's counsel conceded, at the oral hearing, that an application filed now would have to be a concurrent use application.
FN6. Hollowform, Inc. v. Delma AEH, 720 F.2d 1266, 185 USPQ 790 (CCPA 1975); and Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed.Cir.1984).