Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE: FORTEX INDUSTRIES, INC.
U.S. Registration No. 1,525,715
December 3, 1990
By: Jeffrey M. Samuels
Assistant Commissioner
Decision on Petition
*1 Fortex
Industries, Inc. (Fortex) has petitioned the Commissioner pursuant to 37 CFR §
§ 2.146 and 2.148 to suspend the rules
to amend its Certificate of Registration to include additional goods to conform
to a court order entered by the United States District Court for the Eastern
District of New York.
On September 29, 1975,
Fortiflex, Inc. (predecessor in interest to petitioner) filed a trademark
application seeking to register its trademark FORTIFLEX and Design for
"rubber and plastic pails, buckets and tubs"D' in International Class
21. The application was published for opposition on July 26, 1977. An
opposition was filed by Soltex Polymer Corporation (Soltex) which owned a
trademark for FORTIFLEX for plastic resins. Opposition proceedings were instituted
on May 8, 1978, before the Trademark Trial and Appeal Board (TTAB). The
opposition proceeded to the point of setting a date for oral argument before
the TTAB.
In March 1981, opposer
Soltex filed a civil action for infringement in the United States District
Court for the Eastern District of New York (District Court) against applicant
and others. On November 16, 1981, applicant requested the TTAB to suspend all
proceedings pending the outcome of the civil action. The TTAB suspended
proceedings on December 22, 1981.
The District Court
entered a decision and written opinion on September 23, 1986, finding little
likelihood of confusion would result from applicant's use of FORTIFLEX on its
animal feeder line due to the different markets for animal feeders and plastic
resins. (Exhibit A to Petition at unnumbered pages 52-53 [FN1] ). However,
because there was a market overlap for industrial containers, applicant was permitted to continue to use
FORTIFLEX provided it used a disclaimer disclaiming association with opposer.
(Exhibit A at 55).
On January 22, 1987, the
District Court further entered a Final Judgment Order which provides in
pertinent part:
6. Defendant,
Fortiflex, Inc. shall have the right to register on the Principal Register of
the United States Patent and Trademark Office, the trademark FORTIFLEX and
stylized logo as applied to its animal feeder line and its industrial container
line of products; the Commissioner of Patents is hereby ordered to dismiss
Opposition No. 60,860 to defendant Fortiflex, Inc.'s application for
registration of the trademark FORTIFLEX and logo application serial number
64,300, and to grant the defendant, Fortiflex, Inc. registration on the
Principal Register of the trademark FORTIFLEX and logo as appears in said application
for buckets, pails, tubs, animal feeders and industrial containers made from a
blend of rubber and plastic, and the plaintiff is ordered to take no further or
additional action before the United States Patent Trademark Office respecting
said defendant's right to said registration inconsistent with the Court's
findings of fact and conclusions of law in this action.
*2 The decision of
the District Court was affirmed on appeal on November 3, 1987. See Soltex
Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325, 4 U.S.P.Q.2d
1785 (2d Cir.1987).
On May 20, 1988, applicant filed with the
TTAB a motion to dismiss the opposition and register its trademark FORTIFLEX
and design pursuant to the District Court Order. The motion to dismiss was
granted and the opposition was dismissed with prejudice on July 20, 1988. The
registration, identifying the goods as filed, issued on the Principal Register
on February 21, 1989, as U.S. Reg. No. 1,525,715.
Upon receipt of the
registration, petitioner Fortex noted that the identification of goods was as
originally filed in the application and had not been amended to the list of
goods indicated by the District Court. On August 2, 1989, petitioner filed a
"Petition for Correction"D' requesting the description of goods be
changed pursuant to section 7 of the Act, 15 U.S.C. § 1057 [FN2] .
On October 19, 1989,
petitioner was notified by the Patent and Trademark Office (PTO) that the
registration could not be amended because the new identification of goods
exceeded the scope of the goods identified in the original application and a
reexamination of the file would be required. (Exhibit F). The PTO's decision
was based on Section 7 of the Trademark Act which prohibits amendments to a
registration when the character of the mark is materially altered. [FN3] It is
from this decision that petitioner has filed this petition to the Commissioner.
Differences between the goods recited in the registration
and the goods ordered
to be registered by the District Court
The application was
processed for registration as ordered by the District Court. However, the
description of the goods in the application is different from the description
of the goods set out in the District Court's Order. The application as filed
sought registration for "rubber and plastic pails, buckets and
tubs"D' in International Class 21. The District Court Order describes the
goods as "buckets, pails, tubs, animal feeders and industrial containers
made from a blend of rubber and plastic."DD'
Petitioner requests that
the identification of goods set forth in its application, and now the
registration, be corrected to conform with the goods set forth in the District
Court Order.
The identification of
goods as set out in the District Court's Order differs from the application in
two material respects:
(1) "Animal
feeders,"D' not identified as goods in the application, are sought to be
added to the registration; and
(2) "Industrial
containers,"D'also not identified as goods in the application, are sought
to be added to the registration and they fall into a different international
class, i.e., International Class 20.
As stated above, the
changed descriptionof goods adds new items, animal feeders and industrial
containers. Also, designating the plastic goods as "'industrial
containers"D', results in these goods being classified in International
Class 20. Section 30 of the Act, 15 U.S.C. §
1112, provides that the Commissioner may establish a classification of
goods and services:
*3 The applicant
may apply to register a mark for any or all of the goods or services on or in
connection with which he or she is using or has a bona fide intent to use the
mark in commerce: Provided, That if the Commissioner by regulation permits the
filing of an application for the registration of a mark for goods or services
which fall within a plurality of classes, a fee equaling the sum of the fees
for filing an application in each class shall be paid, . . .
Because the new
identification of goods adds a class to the application, all of the statutory
requirements governing applications, which have not been complied with in
relation to the new class, should now be complied with [FN4]. These
requirements include: providing specimens of the mark as used on those goods,
[FN5] paying the filing fee for the new class, [FN6] conducting a search for
the added goods and class, [FN7] and publishing the mark in the new class for
opposition. [FN8] To circumvent these statutorily-mandated administrative procedures would affect the rights of others
who were not parties to the case before the District Court.
Argument
Petitioner contends:
1. The PTO was notified
that the District Court had ordered registration with an amended identification
of goods;
2. The TTAB could have
remanded the application to the examining division if necessary; and
3. The Commissioner
should exercise his discretion because if he fails to do so petitioner
"would be deprived of its court won right to register and use its mark on
the goods provided . . . ."D' (Petition at 7).
Trademark Rules
2.71-2.75, 37 CFR § § 2.71-2.75, govern
amendments to applications during ex parte examination, and Rule 2.133, 37 CFR
§ 2.133, governs the amendment of an
application during inter parte proceedings. Petitioner, then applicant, never
requested the PTO to amend the identification of goods. (Exhibit G).
Applicant's motion was to dismiss the opposition and register the mark.
(Exhibit C). The motion was not to amend the identification of goods to conform
to the District Court Order.
The District Court's
authority over registrations is found in Section 37 of the Act, 15 U.S.C. § 1119. The statute provides:
In any action involving
a registered mark the court may determine the right to registration, order the
cancelation of registrations, in whole or in part, restore canceled
registrations, and otherwise rectify the register with respect to the
registrations of any party to the action. Decrees and orders shall be certified
by the court to the Commissioner, who shall make appropriate entry upon the
records of the Patent and Trademark Office, and shall be controlled thereby.
[FN9]
This grant of authority
allows a district court to order the Commissioner to cancel registrations in whole
or in part, and to restore cancelled registrations. The power to order a mark
registered, however, is not expressly provided for in the statute. If it exists
it must be implied either from the court's ability to "determine the right
to registration,"D' or from the power to "'rectify the
register."DD'
*4 There is no
indication that the district court has ordered the PTO to circumvent the
administrative procedures for registration established by Congress. Massa v.
Jiffy Products Co., 240 F.2d 702, 112 USPQ 241 (9th Cir.), cert. denied, 353
U.S. 947 (1957). In Massa, the U.S. Court of Appeals for the Ninth Circuit
affirmed a lower court decision which not only ordered cancellation of the
registration of one party, but also ordered the granting of a registration to
the other party, even prior to the filing of an application for registration. However, the
court made it clear that the registration would be awarded upon proper
application. Id. at 704, 707, 112 USPQ at 242, 244.
In Durox Co. v. Duron
Paint Manufacturing Co., Inc., 320 F.2d 882, 138 USPQ 353 (4th Cir.1963), the
Fourth Circuit held that a district court could modify a decision of the PTO by
ordering registration as to some of the goods, but not others. However, the
Fourth Circuit stated that while the PTO had indicated that it would issue a
registration to Durox in accordance with the court's opinion, the PTO had also
stated that, as a matter of administrative practice within the Patent Office,
it would place the registration in Class 16. When Duron objected to
registration in that class, the court stated: "We think it should be left
to the Patent Office to determine as an administrative matter the appropriate
classification for such registration."D' Id. at 885 n. 5, 138 USPQ at 355
n. 5.
Jeno's Inc. v.
Commissioner of Patents and Trademarks, 498 F. Supp. 472, 208 USPQ 492
(D.Minn.1980) involved a civil action in the nature of mandamus to compel
registration of plaintiff's trademark "PIZZA ROLLS."D' The court
indicated that while it had previously entered a Consent Judgment ordering the
Commissioner of Patents and Trademarks to deny an application for registration
for Vitale's "PIZZAROLLAS,"D' and to issue a registration for Jeno's
"PIZZA ROLLS"D' pursuant to its pending application, that order was
not intended to change the law or affect
the rights of others not party to the case [FN10]. The court declined relief.
Courts have insisted upon
compliance with the Trademark Act's statutory scheme. Supreme Wine Co. Inc. v.
American Distilling Company, 203 F.Supp. 736, 133 USPQ 322 (S.D.N.Y.1962),
modified, 310 F.2d 888, 135 USPQ 481 (2d Cir.1962), involved an appeal from a
TTAB decision sustaining the defendant's opposition to registration of
plaintiff's trademark. In affirming the TTAB's decision, the court declined to
order the Commissioner to register defendant's mark which the defendant had
continuously used prior to plaintiff's adoption of a similar mark, since:
*5 [T]he
registerability of this mark may depend on the resolution of issues not
involved in this proceeding which should be determined in the first instance by
the Patent Office.
Id. at 739, 133 USPQ at 325.
Thus, while district
courts may have implied jurisdiction to order registration of a particular
mark, they have not exercised that jurisdiction so as to contravene the
statutory rights granted to other parties to oppose registration of marks. The
Act provides a statutory scheme which the Commissioner must follow to issue
registrations. [FN11] Several of the statutory provisions will be circumvented
if the PTO interprets the District Court's Order as one to "amend"D'
or "correct"D' the description of goods as set out in applicant's original application
without notice to the public.
In the instant case,
petitioner did not have aregistration which was the subject of the infringement
action. The Court, therefore, could only have "'determined the right to
registration,"D' which it did. The Court determined that the petitioner
had a right to register its mark for animal feeders and industrial containers
vis-a-vis Soltex. [FN12] But petitioner did not have an application before the
PTO for animal feeders or industrial containers. Rather, the goods as set out
in the application were for rubber and plastic pails, buckets and tubs. The
goods petitioner seeks to add, animal feeders and industrial containers, are
critical to the court's finding of no likelihood of confusion. It is certainly
possible that another party may not have opposed Fortex's original application
but would oppose a registration of the same term for animal feeders or
industrial containers.
Petitioner's request to
amend the description of goods involves a material alteration to the character
of the mark, namely the goods the mark identifies. To make the requested change
without the initial examination and publication for opposition contemplated by
the Trademark Act could impinge on the statutory rights of others (non-parties
to the civil action) and would be contrary to the statutory scheme established
by Congress. The District Court could not have intended the Commissioner to
take any action which is contrary to statutory requirements. Likewise, the
Commissioner has no discretion to waive the statutory
requirements.
In light of the
foregoing, the request to suspend the rules and amend the Certificate of
Registration to include additional goods is DENIED. Petitioner may file a new
application for any of the goods listed in the District Court's order. In
compliance with that Order, the mark FORTIFLEX owned by Soltex Polymer
Corporation will not be cited against any new application. If no third- party
opposes the application, the mark for all the goods will be registered.
The Commissioner notes
Fortex's argument that it would "be deprived of its court won right to register
it mark. . . ."D' (Petition at 7). It already has a registration for most
of its goods. It will only be denied a registration if an unknown third-party
that was not a party to the litigation establishes superior rights in the mark
on animal feeders and/or industrial containers. Certainly the court did not
intend to prejudice the rights of third-parties who had no notice of Fortex's
attempt to register the mark for these goods.
Harry F. Manbeck, Jr.,
Commissioner of Patents and Trademarks
By: JEFFREY M. SAMUELS,
Assistant Commissioner for Trademarks
FN1. Because the pages in the exhibits to the petition are
unnumbered, the pages have been counted to
aid with reference to the record. It is further noted that counted pages 26-39
are duplicates of pages 12-25.
FN2. Petitioner requested relief under Section 7 of the Act and 37
CFR § 2.176. However, Section 7, 15
U.S.C. § 1057, contains a couple of
subsections concerning amendments and corrections to certificates of
registration. Accordingly, it is unclear whether petitioner claims that the
amendment is necessary due to a PTO mistake or a mistake by petitioner.
Regardless of the grounds, relief cannot be granted under either section due to
the nature of the requested change. See discussion infra.
FN3. Section 7 of the Act, 15 U.S.C. § 1057, provides procedures for amending or correcting certificates
of registration. In particular, subsection (e) provides:
Upon application of the
registrant and payment of the prescribed fee, the Commissioner for good cause
may permit any registration to be amended or to be disclaimed in part:
Provided, That the amendment or disclaimer does not alter materially the
character of the mark.
FN4. Section 12(a) of the Act, 15 U.S.C. § 1062(a), provides in pertinent part:
Upon the filing of an
application for registration and payment of the prescribed fee, the
Commissioner shall refer the application to the examiner in charge of the
registration of marks, who shall cause an examination to be made and, if on such
examination it shall appear that the applicant is entitled to registration, or
would be entitled to registration upon the acceptance of the statement of use
required by section 1051(d) of this title, the Commissioner shall cause the
mark to be published in the Official Gazette of the Patent and Trademark
Office: . . .
FN5. 15 U.S.C. §
1051(a)(1)(c).
FN6. 15 U.S.C. § 1051(a).
FN7. 15 U.S.C. § 1062(a)
FN8. 15 U.S.C. § § 1062(a)
and 1063.
FN9. To date, a Certified Order of the District Court has not been
received by the PTO.
FN10. The "other"D' who was not a party to the case was
RJR Foods, Inc. which had opposed an
earlier application by Jeno's for "PIZZA ROLLS"D' and which would
have been denied the opportunity to oppose the registration based on the
application before the court if the Commissioner had been ordered to register
the mark without following the statutory procedures.
FN11. Section 12 of the Act, 15 U.S.C. § 1062.
FN12. We do not know whether the application, which matured into
the registration, in question and the goods identified in it was before the
District Court for review, inasmuch as the civil action was an independent
infringement action, separate and apart from the opposition proceeding pending
before the TTAB at the time.
18 U.S.P.Q.2d 1224
END OF DOCUMENT