Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF AMERICAN
PSYCHOLOGICAL ASSOCIATION
95-511
May 15, 1996
*1 Petition Filed: July 10, 1995
For: PSYCHOLOGICAL METHODS
Serial No. 74/464,795
Filing Date: December 2, 1993
Attorney for Petitioner:
Brian D. Anderson, Esq.
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1755 Jefferson Davis Highway, Fourth Floor
Arlington, Virginia 22202
Philip G. Hampton, II
Assistant Commissioner for Trademarks
On Petition
American Psychological
Association has petitioned the Commissioner to suspend the above identified
application pending the submission of an Amendment to Allege Use, or, in the
alternative, to "postpone" the Examining Attorney's final refusal to
register the subject mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), until specimens have been
submitted. Trademark Rules 2.146(a)(3) and 2.146(a)(4), 37 C.F.R. § § 2.146(a)(3) and 2.1 46(a)(4), provide
authority for consideration of the petition. [FN1] The petition is denied.
FACTS
Petitioner filed this
application on December 2, 1993, under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), based upon the
Applicant's bona fide intention to use the mark in commerce. The application
seeks registration of the mark PSYCHOLOGICAL METHODS for a "printed
journal pertaining to the psychological and
social sciences." On May 10, 1994, the Examining Attorney issued an Office
Action refusing registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that
the proposed mark was merely descriptive of the subject matter of the
Applicant's publication. The refusal was supported with evidence obtained from
the Lexis/Nexis database. On November 10, 1994, Petitioner filed a response
traversing the refusal. On January 9, 1995, the Examining Attorney issued a
second Office Action in which the refusal of registration was made final, and
additional Lexis/Nexis evidence was made of record.
On January 24, 1995,
Petitioner filed a request for reconsideration, [FN2] arguing that the final
refusal had been made "without facts of record pertaining to the contents
of the publication in question;" and that the refusal "should be made
or adhered to only in view of the publication itself-- such issues being proper
for 'second examination' following the submission of the Statement of
Use." Alternatively, Petitioner requested that the case be suspended
"pending the ability of the applicant to make the publication in question
of record by way of Amendment to Allege Use prior to Publication--thus enabling
the Examining Attorney to consider the propriety of the refusal in view of the
Publication itself." In an Office Action dated March 24, 1995, the
Examining Attorney adhered to the final refusal of registration, and denied the
request for suspension of the application.
*2 This petition followed. Petitioner asserts that the
descriptiveness of a publication title that does not name a target industry or
group must be reviewed in connection with the contents of the publication;
thus, the issue of descriptiveness should be "postponed" until second
examination. Alternatively, Petitioner asserts that it has shown good cause for
suspension of the application under Trademark Rule 2.67, 37 C.F.R. § 2.67.
STANDARD OF REVIEW
The Commissioner will
reverse the action of an Examining Attorney only where there has been a clear
error or abuse of discretion. In re GTE Education Services, 34 USPQ2d 1478
(Comm'r Pats.1994); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d
1393 (Comm'r Pats.1993); In re Stenographic Machines, Inc., 199 USPQ 313
(Comm'r Pats.1978). In this case, Petitioner has not established that the
Examining Attorney clearly erred or abused his discretion.
SECTION 2(e)(1) REFUSAL
The Trademark Manual of
Examining Procedure (TMEP) clearly and explicitly requires that "to the
fullest extent possible," an Examining Attorney examine an "intent-to-use" application for
registrability under § 2(e)(1) "according
to the same procedures and standards which apply to any other
application." TMEP § §
1105.01(a)(iv) and 1209.02. Furthermore, the Examining Attorney must
develop evidence of descriptiveness during initial examination. TMEP § 1105.01(a)(iv). In fact, Office policy
precludes the issuance of a Section 2(e)(1) refusal during second examination
if the refusal could or should have been treated in initial examination, unless
the failure to issue the refusal constitutes a clear error. TMEP § § 1 105.01(a)(iv) and 11 05.05(f)(ii).
Petitioner relies upon
Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 23
USPQ2d 1878 (TTAB 1992), aff'd 994 F.2d 1569, 26 USPQ2d 1912 (Fed.Cir.1993). In
that case, an opposition to an intent-to-use application was brought on the
grounds that the Applicant intended to use the proposed mark as a model
designation, and that model designations were, per se, descriptive and
unregistrable. The Board found that numerical model designations were not, per
se, merely descriptive; that a numerical designation might function as both a
model designation and a trademark; that the determination of descriptiveness
depended on how the designation was used on the goods in commerce; that,
because Applicant had not yet begun to use its mark in commerce, Opposer could
not prove that the mark had been used and was perceived by purchasers merely as
a model designation; and that, therefore, Applicant was entitled to judgment on
the issue of descriptiveness in the opposition
proceeding. The opposition was dismissed, without prejudice.
*3 Cases like
Eastman Kodak, in which it is the manner in which a designation is used that
renders it descriptive, are relatively rare. The Board has stated that
"Eastman Kodak does not, and was not intended to, place any limits on the
Board's jurisdiction to decide, in the context of an ex parse appeal or
opposition, issues of descriptiveness or misdescriptiveness where an
intent-to-use application is involved." In re Berman Bros. Harlem Furniture
Inc., 26 USPQ2d 1514, 1516 (TTAB 1993). As the Court of Appeals noted in
affirming Eastman Kodak, the legislative history of the Trademark Law Revision
Act of 1988 (TLRA), Pub.L. 100-667, 102 Stat. 3935, amending 15 U.S.C. § 1051 et seq. (1988), demonstrates that
Congress intended most intent-to-use applications to be reviewed for
descriptiveness in the initial examination/pre- use stage of the application
process. Senate Report No. 100-515 states:
Patent and Trademark
Office procedures for examining applications based on intent-to-use must
parallel, to the greatest extent possible, existing procedures and practice for
examining applications based on use. This will reduce the likelihood of
inconsistency and should result in greater economy and efficiency. Although the
absence of specimens will prevent the Office from determining whether an
intent-to-use application covers subject matter not constituting a trademark,
whether the mark is being used as a mark and whether the mark, as used, differs
materially from the drawing of the mark, the
absence of specimens at the time the application is filed will not affect
examination on numerous fundamental issues of registrability (that is,
descriptiveness, geographic or surname significance, or confusing similarity).
If it appears from this examination that the mark is entitled to registration
subject to its being used in commerce, the mark will be published for
opposition. Subjecting an intent-to-use application to the opposition process
before the applicant makes use of its mark is essential if the system is to
achieve its goal of reducing uncertainty before the applicant invests in
commercial use of the mark....
The Patent and
Trademark Office's examination of the statement of use will be only for the
purpose of determining issues that could not have been fully considered during
the initial examination of the application, that is, whether the person filing
the statement of use is the applicant, whether the mark as used corresponds to
the drawing submitted with the application, whether the goods or services were
identified in the application and not subsequently deleted, and whether the
mark, as displayed in the specimens or facsimiles, functions as a mark....
Senate Judiciary
Committee Rep. on S. 1883, S.Rep. No. 515, 100th Cong., 2d Sess. (1988),
reprinted in United States Trademark Association, The Trademark Law Revision
Act of 1988 184, 186 (1989) (emphasis added).
*4 Petitioner's
suggestion that a determination of "the descriptiveness
... of a publication title that does not name a target industry or group must
necessarily be postponed until second examination" is not deemed
persuasive. For purposes of determining descriptiveness, marks which comprise
titles of publications are evaluated using the same standards and criteria as
any other marks. An applicant who seeks registration of a mark used or intended
to be used on a publication, must specify both the specific physical nature and
the literary subject matter of the publication. TMEP § 804.03(c). In determining descriptiveness,
the Examining Attorney considers themeaning of the mark that appears on the
drawing, in relation to the goods identified in the application. The Trademark
Trial and Appeal Board has held that "the question of registrability must
be determined, in proceedings before the Board, on the basis of the goods or
services as set forth in the application, rather than in reference to the
precise nature of the goods or services on or in connection with which the mark
is actually used or intended to be used (emphasis added)." In re Vehicle
Information Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994).
In this case, the mark
consists of the words PSYCHOLOGICAL METHODS, and the goods are identified as a
"printed journal pertaining to the psychological and social
sciences." The identification itself provides enough information about the
goods to permit consideration of the issue of descriptiveness. The Examining
Attorney has held that the proposed mark is merely descriptive of the subject matter of the publication, and has
supported his refusal with evidence of use of the term PSYCHOLOGICAL METHODS in
relation to the goods. The Commissioner sees no error or abuse of discretion in
the Examining Attorney's actions.
REQUEST FOR SUSPENSION
TMEP § 1105.05(a)(i) explicitly states that an
Examining Attorney "should not suspend action in the case or take any
other similar action for the purpose of extending the time for filing an
amendment to allege use." Thus, the Examining Attorney acted properly in
refusing Petitioner's request for suspension.
The suspension of an
intent-to-use application pending the filing of an Amendment to Allege Use
would allow the intent-to-use Applicant to reserve rights in the mark
indefinitely, which is clearly contrary to the legislative intention of the
TLRA Sections 1(c)and 1(d)of the Trademark Act, 15 U.S.C. § § 1051 (c) and 1051(d), set forth specific
time periods in which Amendments to Allege Use and Statements of Use can be
filed. These provision would be rendered meaningless if the Office were to
permit the suspension of an intent- to-use application pending the filing of an
Amendment to Allege Use.
DECISION
The petition is denied.
Petitioner is hereby granted 30 days from the mailing date of this decision to
respond to the final Office Action dated January 9, 1995.
FN1. Petitioner cites, inter alia, Trademark Rules 2.63(b) and 2.1
46(a)(I) as authority for the requested review. These rules permit an Applicant
to petition the Commissioner to review the propriety of an Examining Attorney's
formal requirement, if the Examining Attorney's action is limited to subject
matter appropriate for petition to the Commissioner. However, under Trademark
Rule 2.1 46(b), "[q]uestions of substance arising during the ex parse
prosecution of applications, including, but not limited to, questions arising
under sections 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to
be appropriate subject matter for petitions to the Commissioner." While
the propriety of issuing the final refusal under Section (2)(e)(1) prior to the
filing of specimens, and the propriety of the Examining Attorney's denial of
Petitioner's request for suspension are both procedural issues that are
appropriate for review by the Commissioner, the question of whether the mark is
merely descriptive is clearly a matter of substance that is inappropriate for
review on petition. Accordingly, because the Office Action was not limited to
petitionable subject matter, and because it contained no "formal requirement,"
Trademark Rules 2.63(b) and 2.146(a)(1) do
not apply.
Trademark Rules
2.146(a)(3) and 2.146(a)(4) do provide authority for consideration of the
petition. Unlike Rule 2.63(b)), these rules do not stay the period for
responding to an Office Action until 30 days after the date of the
Commissioner's decision on petition. However, the Commissioner construes
Petitioner's request for suspension of the application as an implied request
for a stay of the period for response to the final Office Action, pursuant to
Trademark Rule 2.146(g).
FN2. Any paper filed after final action containing new amendments,
new evidence, or new arguments is construed as a request for reconsideration.
TMEP § 1110.
39 U.S.P.Q.2d 1467
END OF DOCUMENT