Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATIONS OF PAUL WURTH S.A.
Refusal Nos. 008502 and 009593 [FN1]
June 19, 1991
*1 Petitions Filed: December 13, 1990
For: EU-BRAIN
For: EU-BRAIN and design
For: Miscellaneous Design
Filing Date: Not Assigned [FN2]
Attorney for Petitioner
Michael A. Cantor
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
On Petition
Paul Wurth S.A. has
petitioned the Commissioner pursuant to Trademark Rule 2.146 to exercise his
supervisory authority and accord a filing date of September 27, 1990 for the
above-captioned applications which were denied filing dates for failure to
comply with Trademark Rule 2.21(a)(5). Trademark Rule 2.146(a)(3) provides
appropriate authority for the requested review.
On September 27, 1990,
Petitioner filed the three subject trademark applications claiming priority
pursuant to Section 44(d) of the Trademark Act based on its ownership of three
corresponding Benelux applications. In addition to specifying the applicable
serial number and filing date for the corresponding Benelux application, the
petitioner stated, in each application, that "[t]he mark is presently
being used in interstate commerce by a related company".
Thereafter, a Notice of
Incomplete Trademark Application issued relative to all three applications. It
specified that the papers were incomplete as filed and were not being accorded a filing date
since they failed to establish a basis for filing. Specifically, it was noted
that under Section 44(d), among other things, there must be a claim of a bona
fide intention to use the mark in commerce. [FN3]
Petitioner then refiled
the same documents on October 25, 1990 together with a cover letter explaining
why the statement of a bona fide intent to use the mark in commerce had not
been provided. The application papers were once again returned to the
petitioner with a Notice of Incomplete Trademark Application that pointed to
the lack of a claim of a bona fide intent to use the mark. [FN4]
This petition followed.
Petitioner does not
dispute there was not a claim of a bona fide intention to use the mark in
commerce. Rather, petitioner states:
Because the
"magic" phrase of "bona fide intent to use" is not present
in the application is clearly of no consequence here. The fact is that a
statement of "bona fide intent to use" would be inaccurate under
these circumstances as the marks are "presently used in commerce".
***
Applicant's attorney
advised Applicant that stating "Applicant had a bona fide intent to use" the mark was
incorrect and untruthful as Applicant was actually using the mark. Thus,
Applicant simply stated the true and accurate facts of its trademark usage.
Under the Trademark Law
Revision Act of 1988, all applications not based on use in commerce pursuant to
Section 1(a) of the Act are required to state a bona fide intent to use the
mark in commerce for the specified goods or services. This includes
applications based on Section 44.
*2 Section 44(d)
of the Act, which entitles a foreign national to the benefit of priority based
on an application filed in its home country, specifically requires, among other
things, that:
(1) the application
filed in the United States is filed within six months from the date on which
the application was first filed in the foreign country; [and]
(2) the application
conforms as nearly as practicable to the requirements of the Act, including a
statement that the applicant has a bona fide intention to use the mark in
commerce; ....
Reference to the actual
language of Section 44(d) illustrates that this requirement was meant for all
44(d) applications in that any and all mention of actual use in commerce was
deleted from this section of the Act. In fact, Section 44(d) used to include
the language "but use in commerce need not be alleged." This was
replaced with the language "including a statement that the applicant has a bona fide intention to use the
mark in commerce." As such, this Section now requires the inclusion of
this statement as part of every Section 44(d) claim. There is no ambiguous
language or language of exception. Accordingly, the requirement that a Section
44(d) applicant specifically set forth its bona fide intent to use the mark in
commerce is a clear statutory requirement. The Commissioner is without
authority to waive a statutory requirement.
It is, however, further
noted that the petitioner believes that specifying a claim of bona fide intent
to use the mark in commerce is "incorrect and untruthful" when actual
use of the mark in commerce has begun. There is no reason why, in such a case,
the petitioner can not also set forth a statement regarding its actual use as
additional information in the record. In this way, the application will contain
the statutorily required language of a bona fide intention to use the mark in
commerce as well as the additional clarifying language that, in this particular
instance, the mark is actually in use in commerce. A complete record will
therefore be submitted.
Since it is a clear
statutory requirement that a Section 44(d) applicant specifically state that it
has a bona fide intention to use the mark in commerce, the petition is denied.
FN1. The refusal numbers apply to all three applications. The
first goes to the refusal of the September
27, 1990 filing of the three applications and the second is to their October
25, 1990 refiling.
FN2. The filing date is the issue on petition.
FN3. The Notice of Incomplete Trademark Application also noted
that a claim of a bona fide intent to use the mark in commerce is required
under Section 1(b). There is, however, no indication that Petitioner intended
to file under Section 1(b) as well.
FN4. In this Notice of Incomplete Trademark Application, the
petitioner was also advised that under Section 1(a) a date of first use in
commerce must be specified. Once again, there is no indication that the
petitioner intended to apply on a dual basis. It is further noted that this
second refiling of the applications was more than six months after the filing
date of the Benelux applications upon which petitioner was basing its Section
44(d) claims.
1991 WL 332564 (Com'r Pat. & Trademarks), 21 U.S.P.Q.2d 1631
END OF DOCUMENT