Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF B.E.L.-TRONICS
LIMITED
Serial No. 74-005,430 [FN1]
February 15, 1991
*1 Petition Filed: March 12, 1990
For: LEGEND
Filed: November 27, 1989 [FN2]
Counsel for Petitioner
Donald E. Hewson
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
B.E.L.-Tronics Limited
has petitioned the Commissioner for an order granting a filing date to the
application it submitted on November 27, 1989 to register the mark LEGEND for
"radar detectors" in international class 9. The application was
rejected by the Supervisor of the Application Section. Review of this petition
is undertaken pursuant to Trademark Rules 2.146(a)(3), 37 C.F.R. § § 2.146(a)(3).
FACTS
The relevant passages of
petitioner's application include the following:
--The application notes
that petitioner "has adopted and intends to use" the mark shown in
the application's accompanying drawing for class 9 radar detectors.
--The application
asserts petitioner's intent to use the mark in Canada, petitioner's home
country, and also asserts: "The trademark is intended to be used in
Foreign Commerce from Canada into the United States in respect of the class
named above."
--Next, the application
recites: "This application is based on Canadian Application No. 638,407
filed August 11, 1989 and a certified copy of the registration to issue from that application
will be filed in due course."
--Finally, the
application recites the intended method of use of the mark and notes that five
specimens "showing the mark as actually used will be submitted in due
course."
While petitioner's
application was "accepted" by the Mail Room and accorded a serial
number, upon further review by personnel in the Application Section the
application was found deficient. The serial number was declared
"misassigned" and an action issued by the Supervisor of the
Application Section on December 28, 1989 noted for petitioner that its
application was deficient because it failed to include a statement of
petitioner's bona fide intention to use its mark in commerce. [FN3] This
petition followed.
DECISION
1. The Application Section's Review
Trademark Rule
2.146(a)(3) permits the Commissioner to invoke supervisory authority in
appropriate circumstances. This authority will not be invoked, however, unless
an action taken by an Office employee is determined to have been taken in
error.
Neither the application
nor its transmittal letter sets forth, through explicit
reference to the Trademark Act, the basis or bases upon which the application
was submitted. The Rules of Practice require each application to establish a
basis for filing to receive a filing date. Trademark Rule 2.21(a)(5), 37 C.F.R.
§ 2.21(a)(5). While the Rules do not
require specific references to provisions of the Trademark Act to establish the
basis or bases of an application, an applicant's failure to provide such a
reference can result in a determination that no acceptable basis has been set
forth. In re Trademark Application of Choay S.A., 16 U.S.P.Q.2d 1461 (Comm'r
Pats.1990) (clear language in an application which was consistent only with an
application filed pursuant to Section 44(e) insufficient to establish basis for
filing pursuant to Section 44(d), notwithstanding submission of the U.S.
application within 6 months of the filing of petitioner's foreign application).
*2 In this case,
petitioner's failure to make clear reference to specific provision(s) of the
Trademark Act pursuant to which its application was submitted required the
Application Section to determine the probable basis for filing. The only
language in the application which suggests a basis for filing is that
paragraph, quoted above in full, which begins, "This application is based
on Canadian Application No. 638,407 filed...." Accordingly, the
Application Section construed the application as one filed pursuant to Section
44(d) of the Trademark Act, 15 U.S.C. §
1126(d).
2. Establishing a
Basis for Filing
To establish a basis for
filing in accordance with Trademark Act Section 44(d), the applicant must
include in its application a "claim of a bona fide intention to use the
mark in commerce and a claim of a benefit of a prior foreign application"
(emphasis added). Trademark Rule 2.21(a)(5)(iii), 37 C.F.R. § 2.21(a)(5)(iii). Clearly, this provision of
the Rules requires an application filed pursuant to Section 44(d) to set forth
two distinct "claims."
While petitioner did not
literally "claim" the benefit of a prior foreign application, its
application contains language sufficient to meet this requirement. Established
Office practice allows an applicant filing under Section 44(d) to meet the
requirement by including in its application a "statement" of priority.
Thus, when an application filed with the Office includes language indicating
that another application has been filed indicates that filing in the U.S. was
effected within 6 months of the prior foreign filing, then this will be
accepted as a "statement" of priority. Trademark Manual of Examining
Procedure (TMEP) Section 1003.02.
Since petitioner's
application meets the second of the two requirements set forth in Rule
2.21(a)(5)(iii), the only remaining question is whether the application
included a "claim of a bona fide intention to use the mark in
commerce." Again, though the Rules require a "claim" to be set
forth, actual Office practice is not so
strict as to require precise, literal compliance with this requirement for
Section 44(d) applications. Indeed, Section 44(d) itself only requires
inclusion of "a statement that the applicant has a bona fide intention to
use the mark in commerce."
Regardless of whether it
is framed as a "claim" or a "statement," the language
employed in an application to indicate the applicant's "bona fide
intention to use the mark in commerce" must meet two criteria. First, the
intention to use the mark must be a "bona fide" or "good
faith" intention to use. Second, the intention to use the mark must be an
intention to use the mark "in commerce."
The language of
petitioner's application clearly indicates an intention to use the mark
"in commerce," specifically in commerce between the United States and
Canada. However, it is equally clear that petitioner has nowhere asserted that
its stated intention to use the mark is "bona fide" or in "good
faith."
*3 Counsel for
petitioner nonetheless argues "it is clear from the context of the
application that there is indeed a bona fide intent to use the trade mark in
the United States of America." Counsel notes that the vice president of
the petitioner signed the application and declaration "all clearly
acknowledging the serious intent to use the trade mark in the United States of
America." Finally, counsel poses the question, "Why, otherwise, would
the applicant undertake the costs and expenses of instructing the undersigned
and paying the application fees to the
United States of America if it did not have a bona fide intent to use the trade
mark?"
Whether it is likely that
the petitioner would expend time and money in an effort to secure a U.S.
registration for its mark absent a "serious intent" to use the trade
mark in the U.S. is not a question that need be answered here. It is clear that
any application filed pursuant to Section 44(d) must include a
"claim" or "statement" of the applicant's "bona
fide" or "good faith" intention to use a mark "in
commerce." [FN4] The requirement that Section 44(d) applications include a
statement of "bona fide" intention to use the mark in commerce"
is analogous to the requirement that applications filed under Section 1(b), 15
U.S.C. § 1051(b), specify
"applicant's bona fide intention to use the mark in commerce."
Section 1(b) specifies
that an applicant may file an application based on a bona fide intention to use
a mark in commerce "... under circumstances showing the good faith"
of the applicant. Office policy on the ex parte examination of applications
precludes an evaluation of, or inquiry into, the good faith of the applicant.
Trademark Examining Operation (TMEO) Examination Guide 3-89, issued as a
supplement to the TMEP, revision 7, at page 10, 1108 TMOG 30, 33. Rather,
Office policy considers "applicant's sworn statement of a bona fide
intention to use the mark in commerce" as "sufficient evidence of
good faith."
As with statements of a
"bona fide" or "good faith" intention to use a mark that are included in Section 1(b)
applications, trademark Examining Attorneys will not evaluate such statements
that are included in Section 44 applications. Therefore, it is incumbent upon
such applicants to include in their applications a "sworn statement"
of the applicant's "bona fide" or "good faith" intention to
use a mark in commerce.
These standards were
further clarified in TMEO Examination Guide 1-90. In Section A(1) of Exam Guide
1-90, at page 1, in regard to Section 1(b) applications it is noted: "The
applicant may use the words 'good faith' instead of 'bona fide.' " Also,
in Section C(1), at page 9, in regard to the filing date requirements for
Section 44 applications it is noted: "The policies concerning the form and
the placement of the statement in the written application set forth with
respect to intent-to-use applications apply equally to applications under
Section 44."
*4 In sum,
petitioner did not include in its application a written "claim" or
"statement" establishing its "bona fide" or "good
faith" intention to use its mark in commerce, and the Office will not
infer "circumstances showing the good faith" of the applicant when an
application is lacking such a statement. Since the petitioner failed to include
such a statement, its application pursuant to Section 44(d) cannot be accorded
a filing date for failure to comply with Rule 2.21(a)(5)(iii).
Trademark Rule 2.146(d),
37 C.F.R. § 2.146(d), provides that a
petition to the Commissioner must be filed within sixty days of the mailing
date of the Office action from which the relief is requested. The action of the
Supervisor of the Application Section was mailed December 28, 1989. This
petition to the Commissioner was not filed until March 12, 1990.
CONCLUSION
The petition is denied.
Also denied is petitioner's request that its petition fee be refunded. Since
the Application Section did not err in refusing to accord petitioner's
application a filing date, filing of the petition was not necessitated by
Office error. The application papers are hereby returned to petitioner.
FN1. This serial number has been declared misassigned and will not
be reassigned to this application.
FN2. The filing date is an issue in this petition.
FN3. The action also
noted that the application was being rejected based on petitioner's failure to
include priority filing information in the heading of the drawing sheet. Based
on subsequent clarification of Office policy, this omission would not stand as
sufficient grounds for refusing to accept the application. However, the
resolution of this petition renders this issue superfluous.
FN4. This requirement applies equally to applications filed
pursuant to Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e). That provision of the statute
allows the owner of a foreign registration for a mark to rely on that
registration as both a basis for filing an application in the U.S. and a basis
for obtaining a U.S. registration. Applicants whose basis for filing is
provided for by Section 44(d) most often rely on the basis for registration
that is provided for by Section 44(e).
24 U.S.P.Q.2d 1397
END OF DOCUMENT