Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATIONS OF ST. MARY'S
HEALTH CARE SYSTEM, INC.
96-33; 96-43; 96-48
June 18, 1996
*1 Petitions Filed: November 27, 1995
For: ST. MARY'S HEALTH CARE SYSTEM, INC. and
design
Serial No. 74/469408
Filing Date: December 14, 1993
For: ST. MARY'S HEALTH CARE SYSTEM, INC. and
design
Serial No. 74/476654 [FN1]
Filing Date: January 5, 1994
For: Miscellaneous Design
Serial No. 74/476644
Attorney for Petitioner:
Richard A. Flynt, Esq.
Roylance, Abrams, Berdo and Goodman
1225 Connecticut Avenue, N.W.
Washington D.C. 20036-2680
Philip G. Hampton, II
Assistant Commissioner for Trademarks
On Petition
St. Mary's Health Care
System, Inc. has petitioned the Commissioner to restore jurisdiction of the
above-referenced applications to the Examining Attorney. [FN2]
FACTS
The above-referenced
applications were filed under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based on the Petitioner's bonafide intention to use the
marks in commerce. On June 8, 1994, Amendments to Allege Use were filed
alleging March 17, 1994, as the date of first use and first use in commerce of
the marks in connection with all the services listed in the applications. On
June 21, 1994, the Examining Attorney accepted the Amendments to Allege Use and
approved the applications for publication. After publication in the Office
Gazette, but prior to registration, the Petitioner discovered that the dates of
first use and first use in commerce alleged in its Amendments to Allege Use
were partially incorrect. Consequently, as an amendment after publication. The
Petitioner requests that the above-referenced applications be divided and that
the Amendments to Allege Use be withdrawn in each application. [FN3]
DECISION
An Examining Attorney no
longer has jurisdiction over an application filed under Section 1(a) or Section
44 of the Trademark Act after the date the mark is published for opposition in
the Official Gazette. After publication, the Examining Attorney may not take
further action which may constitute a refusal or a requirement without the
permission of the Commissioner. Trademark Rule 2.84(a), 37 C.F.R. § 2.84(a); TMEP § 1504.01.
With respect to the services
in connection with which the Petitioner has not in
fact made use of the mark, the Examining Attorney cannot approve the
Petitioner's amendments after publication without republishing the marks.
Consequently, a petition requesting that jurisdiction be restored to the
Examining Attorney is required. Trademark Rule 2.84(b), 37 C.F.R § 2.84(b).
Trademark Rule 2.84(a),
37 C.F.R. § 2.84(a) provides, in part:
After publication of an
application under Section 1(a) or 44 of the Act the examiner may, with the
permission of the Commissioner, exercise jurisdiction over the application.
*2 The petitions
are granted. Accordingly, jurisdiction is restored to the Examining Attorney
for consideration of the amendments after publication including the requests to
withdraw the Amendments to Allege Use. With respect to the services in
connection with which the Petitioner has not in fact made use, the
above-referenced applications, after processing the requests to divide, will be
republished in due course to provide notice of the Petitioner's amendments
after publication.
FN1. This Application Serial Number registered inadvertently and
will be canceled as an inadvertently issued registration restored to pendency
and then forwarded to the Examining Attorney.
FN2. The Petitions are styled "Petition to the Commissioner
of Patents and Trademarks under Trademark
Rules 2.146(a)(5) and 2.148 to Waive the Timing Provisions of Trademark Rules
2.76(h) and 2.87(c) to Permit the Filing of a Divisional Service
Application." However, because the Petitioner seeks to amend the
above-reference applications after publication, these Petitions are decided
under Trademark Rule 2.84(a) as petitions to the Commissioner requesting that
jurisdiction be restored to the Examining Attorney.
FN3. Requests to Divide application and Request to Withdraw
Amendment to Allege Use together with the divisional fees, were filed
subsequent to the filing of these petitions.
39 U.S.P.Q.2d 1380
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