Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MARMARK, LTD.
v.
NUTREXPA, S.A.
Opposition No. 79,057
July 10, 1989
Before Sams, Simms and Hanak
Members
Opinion by Hanak
Member
This matter is before us on motions filed by opposer Marmark, Ltd. to (1) amend its notice of opposition to add a second cause of action alleging that applicant Nutrexpa, S.A. should be denied a registration because the goods covered in its United States application exceed the scope of goods covered in the Spanish registration upon which its United States application is based, and for (2) summary judgment in opposer's favor on the aforementioned second cause of action. Applicant has filed briefs in opposition to opposer's motions.
Considering first the motion to amend the notice of opposition, it should be noted at the outset that FRCP 15(a) states that leave to file an amended pleading "shall be freely given when justice so requires." Opposer has stated that at the time it filed its initial notice of opposition, it did not have a copy of the complete application file for applicant's mark, and thus was not aware that the goods recited in the application exceeded the scope of the goods covered in the Spanish registration upon which the application was based. Under these circumstances, it is appropriate to accept the amended notice of opposition which opposer has filed with this Board and served upon the applicant. We do not accept applicant's contention that, because applicant has already filed interrogatories and requests for production of documents, therefore it would be prejudiced by the amendment to the notice of opposition.
Turning to opposer's motion for summary judgment upon the second cause of action as set forth in the amended notice of opposition, [FN1] we note at the outset that applicant contends that opposer lacks standing to oppose the application on the basis that the description of goods contained therein exceeds the description of goods contained in the Spanish registration. Applicant's position is without merit. Opposer--as owner of registrations of OKIR and O'KIR for beverages--has a real interest in preventing the registration of applicant's mark OKEY for beverages when the latter is at least arguably confusingly similar to OKIR and O'KIR. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Once opposer has established its standing, it may raise any statutory ground for its opposition, including what applicant terms "ex parte matters." Lipton Industries, 213 USPQ at 189.
Turning to the merits of opposer's motion for summary judgment, it is opposer's contention that the description of goods set forth in applicant's United States application [FN2] is not contained in the description of goods set forth in applicant's Spanish registration [FN3] upon which the United States application is based. Opposer correctly notes that when an application is based upon Section 44 of the Lanham Trademark Act of 1946 (as is applicant's), the description of goods in the United States application cannot include goods which are not included in the description of goods in the foreign registration upon which the U.S. application is based. In re Lowenbrau Munchen, 175 USPQ 178 (TTAB 1972).
*2 In arguing that the description of goods in its United States application does not exceed the scope of the goods in its Spanish registration, applicant notes that chocolate, cocoa, strawberry and vanilla flavored milk based beverages "are foodstuffs and ... are not cheese, butter, or casein." (Applicant's brief in opposition to opposer's motion for summary judgment page 4).
Applicant is asking this Board to interpret quite broadly the description of goods in its Spanish registration which serves as the basis for its U.S. application pursuant to Section 44 of the Lanham Trademark Act of 1946. Because Section 44 represents an exception to the normal registration procedures, it is the policy of this Board to construe narrowly this section. United Rum v. Distillers Corp., 9 USPQ2d 1481, 1483 (TTAB 1988). Accordingly, we find that the description of goods set forth in the Spanish registration cannot be broadly read to include any kind of foodstuff with the exception of cheese, butter and casein. Such a broad interpretation renders meaningless the specific enumeration of foodstuffs set forth in the Spanish registration, namely, "canned fish, shellfish and pickles, sauces, seasonings and spices." If the words in the Spanish registration "any kind of foodstuff" meant all foodstuffs (except for cheese, butter and casein), there would simply be no need to enumerate "canned fish, shellfish and pickles, sauces, seasonings and spices." Construing narrowly the description of goods set forth in the Spanish registration, we find that this description is limited to canned fish, shellfish and pickles, sauces, seasonings and spices (except cheese, butter and casein).
Therefore, we find that the goods set forth in applicant's United States application (chocolate, cocoa, strawberry and vanilla flavored milk based beverages) exceed the scope of goods set forth in the Spanish registration upon which the U.S. application is based (canned fish, shellfish and pickles, sauces, seasonings and spices). Accordingly, applicant is not entitled, on the basis of its Spanish registration, to obtain the United States registration which it seeks. In re Lowenbrau Munchen, 175 USPQ at 181. [FN4]
If our determination concerning the proper interpretation to be given the description of goods set forth in the Spanish registration is in error in the sense that the Spanish registration should be interpreted to include any kind of foodstuff except cheese, butter and casein, we in the alternative hold that by excepting casein from the description of goods, the Spanish registration should be interpreted not to include flavored milk based beverages. Casein is defined as "a phosphoprotien that is one of the chief constituents of milk and the basis of cheese." Webster's New World Dictionary (2d ed.1970). In our view, the Spanish registration, by excluding one of the chief constituents of milk (casein), should in the alternative be interpreted to exclude milk and milk based beverages.
*3 Decision: Opposer's motions to amend its notice of opposition and for summary judgment on the second cause of action set forth in the amended notice of opposition are hereby granted. The opposition is sustained and registration to applicant is refused.
J. D. Sams
R. L. Simms
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. While applicant has not formally filed a pleading to the amended notice of opposition, it is clear from its briefs that applicant denies the allegations contained in the amended notice of opposition, including in particular those set forth in the second cause of action. Therefore, in the interest of expediency, we will treat this matter as if applicant filed a pleading to the amended notice of opposition in which it denied the salient allegations thereof.
FN2. United States goods: "Chocolate, cocoa, strawberry and vanilla flavored milk based beverages."
FN3. Spanish goods: "Any kind of foodstuff,--canned fish, shellfish and pickles, sauces, seasonings and spices; except any cheese, butter and casein."
FN4. Obviously, in making the determination that applicant is not entitled to a United States registration of OKEY for chocolate, cocoa, strawberry and vanilla flavored milk based beverages based upon its Spanish registration, we are holding that the Examining Attorney committed error in passing applicant's application to publication. However, it need hardly be said that the decisions of Examining Attorneys allowing registration "are not binding upon the agency [PTO] or the Board." In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984).