TTAB - Trademark Trial and Appeal Board - *1 GOODWAY CORPORATION v. INTERNATIONAL MARKETING GROUP, INC. Opposition Nos. 78,397; 78,455; 79,459 February 6, 1990

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Opposition Nos. 78,397; 78,455; 79,459

February 6, 1990


Don B. Finkelstein for Goodway Corporation



Lahive & Cockfield for International Marketing Group, Inc.



Before Sams, Rice, and Rooney






By the Board:



J.D. Sams, J.E. Rice and L.E. Rooney






 The Board, on May 13, 1989, consolidated Opposition Nos. 78,397, 78,455 and 79,459.



 On October 27, 1989, International Marketing Group, Inc. (hereinafter  "IMG"'), who is applicant in Opposition Nos. 78,397 and 78,455, filed abandonments of its applications, Serial Nos. 695,437 and 699,344. Inasmuch as IMG has not submitted Goodway Corporation's written consent thereto, judgment is hereby entered against IMG with respect to those oppositions, those oppositions are sustained and registration to IMG is refused.



 With respect to Opposition No. 79,459, Goodway Corporation, who is applicant in that opposition, on October 16, 1989, filed a motion to amend the involved application to add use in commerce as a basis for federal registration. The application presently is based solely upon Section 44(e) of the Lanham Act.



 In support of its motion, Goodway Corporation alleges that since at least as early as December 6, 1983, and well prior to the filing of the application, Goodway Corporation has used the mark that is the subject of the involved application; that this fact was established by discovery taken by IMG in that opposition; that allowance of the motion will serve to clarify Goodway Corporation's rights in the mark that is the subject of that opposition and to make the application consistent with the evidence adduced during the opposition. The motion is accompanied by a declaration attesting to the dates of first use and by an amendment setting forth the dates of first use. [FN1]



 No brief in opposition to Goodway Corporation's motion was filed and IMG, who is opposer in Opposition No. 79,459, subsequently filed a withdrawal of the opposition.



 IMG apparently has no objections to the motion of Goodway Corporation. However, where, as here, the mark in an application for registration has been published, it is the policy of the Office to refuse to allow the applicant to amend the application to add or to substitute a new statutory basis for registration. The allowance of such an amendment after publication would be disruptive to the orderly examination of subsequent applications; would necessitate further examination of the application; and would be unfair to third parties, who need to know with certainty, by the time of publication, the asserted basis or bases for registration, so that they can weigh their own rights against applicant's, as represented by such basis or bases, and make informed judgments about whether to oppose. Inasmuch as an applicant is allowed to amend its application at any time prior to publication to add or substitute any new statutory basis therefor permitted under the Trademark Rules, any burden and inconvenience that may be caused by an applicant's failure to file such an amendment in a timely, seasonable manner should fall squarely on the applicant. [FN2] Cf. Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241 (TTAB 1989); Sherlock's Home, Inc. v. Tippling House Ltd., 10 USPQ2d 1709 (TTAB 1989).



  *2 In view thereof, the motion of Goodway Corporation to amend its application, Serial No. 706,435 is denied.



 The opposition, that is Opposition No. 79,459, is hereby dismissed with prejudice, in view of IMG's withdrawal of the opposition. [FN3]



 In summary, the motion of Goodway Corporation to amend its application, Serial No. 706,435, which is the subject of Opposition No. 79,459, is denied, and Opposition No. 79,459 is dismissed with prejudice. Trademark Rule 2.106.



 In view of the withdrawal of IMG's applications, to which Goodway Corporation has not submitted its written consent, Opposition Nos. 78,397 and 78,455 are sustained and registration to IMG in each of those oppositions is refused. Trademark Rule 2.135.



J. D. Sams



J. E. Rice



L. E. Rooney



Members, Trademark Trial and Appeal Board



FN1. The application, as filed originally, already contained an affixation clause as well as five photographs demonstrating use of the mark shown therein.



FN2. An applicant who has asserted more than one basis for its application prior to publication, however, is permitted to delete a basis after publication.



FN3. Inasmuch as Goodway Corporation has indicated that its motion to amend was not made pursuant to an agreement with the opposer, and since opposer's withdrawal is not captioned as contingent upon entry of the amendment, we treat the filing of IMG's withdrawal as independent of our ruling on Goodway's motion. In this regard, we also note, as has Goodway Corporation, that our denial of this motion will not preclude Goodway Corporation from relying on actual use of the mark in commerce in any subsequent proceeding. Thus, we are persuaded that the interests of administrative economy and fairness to third parties expressed herein should not cause Goodway Corporation undue prejudice.


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