Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF MERCK & CO.,
INC.
Serial No. 74/057,873
April 27, 1992
*1 Filing Date: May 10, 1990
For: CALCIDE
Petition Filed: November 29, 1991
Attorney for Petitioner
Paul T. Meiklejohn
Seed and Berry
Attorney for Applicant
Meck & Company, Inc.
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
On Petition
Alcide Corporation has
petitioned the Commissioner to order that its Notice of Opposition to the
registration of the above identified mark be considered timely filed, and that
the Opposition commence forthwith. Trademark Rules 2.146(a)(3), 2.146(a)(5) and
2.148 provide authority for the requested review.
The subject application
was filed on May 10, 1990, by Merck & Co., Inc., pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. §
1051(b), based on a bona fide intention to use the mark in commerce. The
application was published for opposition on August 13, 1991. Pursuant to
Section 13 of the Act, an opposition, or request to extend time to oppose, was
required to be filed within thirty days of the date of publication, in this
case, September 12, 1991.
Another application,
Serial No. 74/061,106, filed by Glo-Tex Chemicals, Inc., for the mark
REACTIREZ, was also published for opposition on August 13, 1991. Serial Nos. 74/057,873 and 74/061,106 appeared
on the same page of the Official Gazette.
On September 16, 1991,
petitioner filed a request for extension of time to oppose, under a certificate
of mailing dated September 11, 1991. In the extension request, the name of the
applicant was set forth as "Glo-Tex Chemicals, Inc.," and the
application was identified as Serial No. 74/061,106. On the second page of the
extension request, the mark which was the subject of the extension request was
identified as "CALCIDE." The request for extension of time to oppose
application Serial No. 74/061,106 was granted through October 12, 1991.
When no notice of
opposition or request for extension of time to oppose was timely filed in
connection with application Serial No. 74/057,873, a Notice of Allowance was
issued on November 5, 1991.
In an unverified
statement, [FN1] petitioner asserts that it intended to file a request for extension
of time to oppose application Serial No. 74/057,873; that, due to a clerical
error, it misidentified the applicant and the serial number of the application
it wished to oppose; that this clerical error was not discovered until
petitioner filed its Notice of Opposition, at which time it corrected the
error; that it filed a Notice of Opposition against Serial No. 74/057,873 on
October 8, 1991; that an employee of the Trademark Trial and Appeal Board
telephoned petitioner's counsel on October 23, 1991 to ask why it had filed a Notice of Opposition against a mark
that had published almost two months earlier; that he sent a facsimile copy of
the extension request to the Board on October 23, 1991, and was advised by an
employee of the Board that the opposition would be instituted; [FN2] and that
on November 1, 1991, counsel received another call from an employee of the
Board, advising him that the Notice of Opposition would not be considered
effective. Petitioner contends that notwithstanding its misidentification of
the name of the applicant and the serial number of the application it wished to
oppose; it fully complied with all the requirements of Section 13 of the Act
and Rule 2.102.
*2 The
Commissioner will exercise supervisory authority under Trademark Rule
2.146(a)(3) to vacate an action of the Trademark Trial and Appeal Board only
where the Board has committed a clear error or abuse of discretion. In re
Societe Des Produits Nestle S.A., 17 U.S.P.Q.2d 1093 (Comm'r Pats.1990); Riko
Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm'r Pats. 1977).
Trademark Rule 1.5(c), 37
C.F.R. § 1.5(c), requires that any
letter or communication relating to a trademark application identify the mark
by the name of the applicant and by the serial number and filing date of the
application.
In view of petitioner's
failure to identify the applicant or the serial number of the application for
which it sought an extension of time to oppose, it can hardly be said the Board
erred or abused its discretion in refusing to accept the extension request
filed September 16, 1991 as having been properly filed in connection with application Serial No.
74/057,873. Petitioner's "misidentification" is more than a minor
typographical error. Petitioner identified a live application by serial number,
name of applicant and date of publication, and caused an extension of time to
file an opposition to be granted against said application.
Trademark Rules
2.146(a)(5) and 2.148 permit the Commissioner to waive any provision of the
Rules which is not a provision of the statute, where an extraordinary situation
exists, justice requires and no other party is injured thereby. However, the
circumstances presented here do not justify a waiver of Rule 1.5(c).
Inadvertent errors and omissions that could have been prevented by the exercise
of ordinary care are not extraordinary situations, as contemplated by the
Trademark Rules. In re Tetrafluor Inc., 17 U.S.P.Q.2d 1160 (Comm'r Pats.1990);
In re Choay S.A., 16 U.S.P.Q.2d 1461 (Comm'r Pats.1990); In re Bird & Son,
Inc., 195 USPQ 586 (Comm'r Pats.1977).
Since the Notice of
Opposition filed October 8, 1991 was not filed within 30 days of the date the
mark was published, or within a previously granted extension period, it was not
timely filed, and is not in compliance with the statute. In re Cooper, 209 USPQ
670 (Comm'r Pats.1980).
The petition is denied.
The application will be forwarded to the Intent to Use Unit to await filing of
a Statement of Use.
FN1. Trademark Rule 2.146(c) requires
that when facts are to be proved in a petition, proof in the form of affidavits
or declarations in accordance with §
2.20 shall accompany the petition.
FN2. Rule 1.2 of the Rules of Practice in Patent Cases, which is
made applicable to trademark cases under Trademark Rule 2.1, indicates that
"[t]he action of the Patent and Trademark Office will be based exclusively
on the written record in the Office. No attention will be paid to any alleged
oral promise, stipulation, or understanding in relation to which there is
disagreement or doubt."
24 U.S.P.Q.2d 1317
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