FOR PUBLICATION IN FULL
Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
MATT GROENING
vs.
MISSOURI BOTANICAL GARDEN
Opposition No. 114,370
December 29, 2000
Filed: July 20, 1999
Attorney for Petitioner:
Daniel A. Crowe, Esq.
Bryan Cave LLP
One Metropolitan Square
211 N. Broadway, Suite 3600
St. Louis, Missouri 63102-2750
Attorney for Opposer:
Nicole Nehama Auerbach, Esq.
Katten Muchin & Zavis
525 West Monroe Street
Chicago, Illinois 60661-3693
Decision
*1 Missouri
Botanical Garden, the applicant in the above referenced opposition proceeding,
has petitioned the Commissioner, now the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and Trademark
Office (hereinafter, "the Director") to (1) dismiss the opposition
proceeding, (2) withdraw an amendment to the record of the application that had
been made by the Examining Attorney and (3) issue a Notice of Allowance with
respect to the application. The petition is denied pursuant to 37 C.F.R. §
2.146(a).
FACTS
The application that is
the subject of the above referenced opposition proceeding was initially
published for opposition in the Official Gazette on November 24, 1998. The
various goods and services recited in the application were classified in
International Classes 9, 35, 37, and 42. However, the Office subsequently
determined that the services that had been classified in International Class 37
should have been classified in International Class 42. The Notice of Allowance
was cancelled, and the Examining Attorney was directed to amend the application
to reclassify the services.
Thereafter, the Examining
Attorney issued an Examiner's Amendment that classified the service previously
believed to have been a class 37 service in International Class 42.
Petitioner contends that
the Examining Attorney entered this amendment without Petitioner's approval,
and the record appears to support that contention: although the body of the
Examiner's Amendment includes a statement that the amendment was made
"[i]n accordance with the authorization granted by the above Applicant or
attorney," no name appears in the space designated for identifying that
applicant or attorney. Instead, that space bears a reference to TMEP § 1111.02,
the section of the TMEP that provides that under certain circumstances, an
Examining Attorney may amend the classification of goods or services without
first obtaining the applicant's approval.
A mark that is reclassified after it has been published must be
republished. See TMEP § 1505.01(b). The Office accordingly republished the mark
in the Official Gazette on April 27, 1999. The various goods and services were
now classified in International Classes 9, 35 and 42. The second publication
was followed by the filing of a Request for Extension of Time to Oppose at the
Trademark Trial and Appeal Board (hereinafter, "the Board") on
December 23, 1999, and eventually, by the filing of the above referenced
opposition proceeding, on July 3, 1999.
The present petition
followed.
ANALYSIS
Failure to Issue a Notice of Allowance
Petitioner urges that the
Office erred by declining to issue a Notice of Allowance after the mark was
first published. Petitioner notes that 15 U.S.C. § 1063(b)(2) provides that "a notice of allowance shall be
issued to the applicant" if a registration is not successfully opposed.
Petitioner reasons that since no opposition was filed after the mark was
published on November 24, 1998, the Office was required to issue a Notice of Allowance.
*2 Yet the
requirement that the Office issue a Notice of Allowance after publication presupposes that the publication was
proper. Where the mark was published with errors, the publication may be void,
and a Notice of Allowance cannot be issued. Instead, the errors must be
corrected, and the mark republished.
Here, regretfully, the
classification of services set forth when the mark was published for opposition
on November 24, 1998 was erroneous. The service of "technical advisory and
consulting services related to the adaptation and use of computer software and
hardware, namely, software and hardware for reading magnetic cards, encoded
cards and cards with embedded computer chips" was classified in
International Class 37, but should have been classified in International Class
42. Although the adoption and use of computer hardware and software may be
considered an installation or maintenance service that would be classified in
International Class 37, consultation services that pertain to installation
services are classified in International Class 42. The publication of November
24, 1998 was thus improper, and should not have been followed by the issuance
of a Notice of Allowance.
Petitioner suggests that
republication was unnecessary, since any party monitoring applications
published in the Official Gazette that recited services classified in
International Classes 9, 35 and 42 -- the classifications assigned to the mark
when it was republished -- would have encountered Petitioner's mark, and would
therefore have reviewed all the services associated
with Petitioner's mark when the mark was originally published.
This reasoning assumes
that parties who come across marks published in the Official Gazette that
recite goods and services classified in multiple International Classes will
necessarily scrutinize the recitations associated with each of the classes. Yet
some parties may choose to limit their search to include only particular
classes. Here, some parties who reviewed the Official Gazette of November 24,
1998 may have chosen not to read any of the recitations of services in
International Class 37. Had Petitioner's mark not been republished, such
parties would have had no notice that Petitioner's services include
"technical advisory and consulting services related to the adaptation and
use of computer software and hardware, namely, software and hardware for
reading magnetic cards, encoded cards and cards with embedded computer
chips."
In further support of its
contention that republication was unnecessary, Petitioner notes that the Office
allowed the services in question to be classified in International Class 37 in
a companion application filed by Petitioner (Application Serial No. 75/340688).
Petitioner suggests that this classification was therefore proper here as well.
However, if the Office erred in allowing the other application to be published,
it would be illogical and inappropriate to repeat that error. Consistency must
be secondary to correctness of Office practice. See In re Stenogrraphic
Machines, Inc. 199 USPQ 313, 317 (Comm'r Pats. 1978).
Petitioner's Request that the Commissioner Withdraw the Amendment
Made by the Examining Attorney
*3 Petitioner
argues that the Examining Attorney lacked jurisdiction to reclassify the services.
An Examining Attorney may
amend the international classification of services recited in an application
without the applicant's approval. TMEP § 1111.02(1). However, current practice
provides that permission must nevertheless be obtained "where the change
is made after publication and thus would require republication of the
mark." Id. If a mark must be reclassified after it has been published, an
Examining Attorney must either (1) amend the classification with the
applicant's consent, or (2) if such consent cannot be obtained, request that
the Commissioner for Trademarks restore jurisdiction and issue an Office Action
requiring the applicant to authorize the reclassification.
The Director hereby
announces a change to that policy. Henceforth, an Examining Attorney may
reclassify the goods or services recited in an application without either (1)
the applicant's approval or (2) a restoration of jurisdiction [FN1], even if
the application has already been published for opposition. In all such cases, the
Examining Attorney must advise the applicant that the goods or services have
been reclassified by issuing an Examiner's Amendment
[FN2]. Following this notification, the mark will be published for opposition
in the Official Gazette.
The Trademark Manual of
Examining Procedure will be amended to reflect this change in policy.
This change will not
prejudice an applicant's rights. Classification is within the sole discretion
of the Office. In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969). Hence, under current
practice, any amendment to classification sought by an Examining Attorney will
ultimately be made, even if the applicant's approval is solicited but not
obtained. An objection to an amendment to classification may postpone -- but
will never prevent -- the republication of a mark.
In view of the change in
policy regarding the requirement that an applicant's approval must be sought
before republication, the Director declines to grant Petitioner's request to
withdraw the amendment made by the Examining Attorney.
Dismissal of the Opposition
Petitioner asks the
Director dismiss the opposition proceeding. This request is based on the claim
that the amendment to the classification and the second publication of the mark
were invalid, and that a Notice of Allowance should have issued after the first
publication. However, for the reasons discussed above,
the second publication was valid, and the amendment to the application was
proper. Hence, no grounds exist for dismissing the opposition.
DECISION
The petition is denied.
The file will be returned to the Board for continuation of the opposition
proceedings.
Lynne G. Beresford
Deputy Commissioner for Trademark Policy
FN1. Under 37 C.F.R. § 2.84(a), an examining attorney may exercise
jurisdiction over an application after publication with the permission of the
Commissioner. In this case, the examining attorney did not request that the
Commissioner restore jurisdiction before entering the examiner's amendment.
However, as a result of the policy change just described, 37 C.F.R. § 2.84 does
not bar the examining attorney from amending the classification of goods and
services after publication.
FN2. An applicant who believes that the amendment to the
classification was erroneous may petition
the Commissioner to review the amendment.
59 U.S.P.Q.2d 1601
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