Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF KABUSHIKI KAISHA
KANEDA KIKAI SEISAKUSHO, AND
KABUSHIKI KAISHA TOKYO KIKAI SEISAKUSHO
89-264
September 28, 1990
*1 Petition Filed: December 6, 1989
For: FPPR
Serial No. 73-833,859 [FN1]
Filing Date: Not Assigned
Attorney for Petitioners
B. Franklin Griffin, Jr.
Griffin, Branigan & Butler
Assistant Commissioner for Trademarks
On Petition
The joint applicants
listed above have petitioned the Commissioner for an order granting their
request for transfer of a certified copy of a foreign registration for their
mark. The copy is contained in the file for an application that has been
abandoned. Petitioners request its transfer to the file for the above
referenced, subsequently-filed application. In addition, the petition requests
that the application be considered as properly filed on October 26, 1989, the
date on which the Office received the application and the foreign registration
transfer request. The petition will be reviewed under Rule 2.146, 37 C.F.R.
§ 2.146.
FACTS
Petitioners are two
companies sharing a parent/subsidiary relationship. As joint applicants, they
obtained a registration for the mark FPPR in their home country of Japan.
Subsequently, petitioner Kabushiki Kaisha Kaneda Kikai Seisakusho filed an
application seeking registration of the mark in the United States, pursuant to Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e).
Registration was refused
on the ground that the "applicant"D' in the U.S. application was not
the registrant listed in the foreign registration that served as the basis for
the U.S. application. The Examining Attorney handling this initial U.S.
application noted that the defect could not be corrected and made the refusal
final. Thereafter, on October 26, 1989, the application now in question was
submitted to the Office. A photocopy of the certified copy of the home
registration was attached to the new application. The application was also
accompanied by a separate document which requested that the initial
application, properly identified by its serial number, be abandoned and also
requesting that the certified copy of the home country registration contained
therein be transferred to the new application.
In a letter dated
November 8, 1989, the Supervisor of the Application Section rejected the
application as a Section 44(d) application filed more than six months after the
filing of the foreign application providing the basis for a claim of priority.
Counsel for petitioners then contacted the Supervisor, explained that the
application was based on Section 44(e), and noted that its application would be
complete if the Application Section would simply make the requested transfer. Counsel
was informed that the transfer was not permitted. The instant petition
followed.
Initially, it must be
determined whether the Supervisor of the Application Section erred in refusing
to honor petitioner's transfer request. Though Trademark Rule 2.146(a)(3)
permits the Commissioner to reverse the action of an Examiner in appropriate
circumstances, this will be done only where there has been a clear error or
abuse of discretion. In re Richards-Wilcox Manufacturing Co., 181 USPQ 735
(Comm'r Pats.1974); Ex parte Peerless Confection Co., 142 USPQ 278 (Comm'r
Pats.1964).
*2 In this case,
the Supervisor of the Application Section did not commit clear error in
refusing to make the requested transfer. As counsel for petitioners has noted,
Rule 2.26, 37 C.F.R. § 2.26, permits an
applicant to request the transfer of a drawing from a previously filed,
abandoned application to the file for a new application seeking registration of
the same mark. In support of the contention that the transfer request was
proper and ought to have been granted, counsel for petitioners notes that the
request complied with the procedural requirements set forth in Rule 2.26
regarding transfers of drawings. However, since the Rules clearly provide for
transfer of drawings, it follows that the drafters of the Rules would have
provided for transfers of other items from abandoned applications had they
intended to do so. Thus, the Supervisor of the Application Section properly
determined that she lacked the authority to
grant the transfer request.
Since it is clear that
the Supervisor had no authority to grant petitioners' request, it next must be
determined whether it is within the power of the Commissioner to grant the
request. Under Rule 2.146(a)(4), 37 C.F.R. §
2.146(a)(4), a petition to the Commissioner may be filed "in any
case not specifically defined and provided for"D' by the Trademark Rules.
Petitioners' transfer request is just such a case. As noted in the petition,
the Rules do not expressly permit or expressly prohibit transfers of certified
copies of foreign registrations.
There are two aspects of
petitioners' request that must be examined. First, can the certified copy be
removed from the now abandoned application? Second, can the certified copy be
associated with a Section 44(e) application to enable that application to meet
the requirements for receiving a filing date?
Clearly, no useful
purpose is served by barring removal of the certified copy from the now
abandoned application, since the file will simply sit in the Office's warehouse
and be destroyed after two years have passed. Further, there is no substantive
reason why the certified copy cannot be removed. Trademark Rule 2.25, 37 C.F.R.
§ 2.25, does state that the papers in
an application file "'will not be returned for any purpose."D' The
prohibition against returning application papers is, however, solely a
requirement of the Rules, is not a statutory requirement, and could be waived
by the Commissioner in appropriate
circumstances. In any event, petitioners have not sought removal of the
certified copy for the purpose of having it returned. Rather, they merely have
requested the Office to transfer the certified copy in the same way in which a
drawing might be transferred. It is clear, then, that no practical or
substantive reasons bar removal of the certified copy from the abandoned
application.
In regard to the second
inquiry noted above, a substantive issue is raised when the certified copy is
associated with petitioners' Section 44(e) application to allow that
application to be considered as complete and acceptable for filing. For any
application filed pursuant to Section 44(e), Rule 2.21(a), 37 C.F.R. § 2.21(a), requires submission of "a
certification or certified copy of the foreign registration on which the
application is based." D' However, Section 44(e) specifically requires
that such an application "shall be accompanied by a certification or a
certified copy of the registration in the country of origin of the
applicant"D' (emphasis added). Therefore, while petitioners' transfer
request is not substantively barred because the certified copy would have to be
removed from an abandoned application file, use of the certified copy to
complete a Section 44(e) application might be viewed as contrary to the express
language of the statute. The question then, is whether the words
"accompanied by"D' must be interpreted to require simultaneous
submission of the Section 44(e) application and the supporting certified copy of the home country
registration?
*3 The federal
statute that provides for removal of a lawsuit from a state court to a federal
district court, 28 U.S.C. § 1446, until
quite recently, required "'[e]ach petition for removal...shall be
accompanied by a bond..."D' (emphasis added). [FN2] In one case, the
Seventh Circuit Court of Appeals was "squarely presented"D' with the
question "whether a petition for removal in proper form and filed in the
District Court in apt time, together with a bond not filed simultaneously with
the petition but filed subsequently and within the time allowed for the filing
of the petition, is sufficient to legally effect the removal."D' Tucker v.
Kerner, 186 F.2d 79, 81 (7th Cir.1950).
The court reasoned that
the bond was filed in timely fashion and the defendants could have strictly
complied with the statute had they simply filed a duplicate petition
contemporaneously with the filing of the bond. Turner, 186 F.2d at 82. Thus,
the court determined "it would bear on the absurd to hold... the
defendants could file another petition 'accompanied' by a bond but that they
could not file a bond in connection with or in support of the petition on
file."D' Turner, 186 F.2d at 82. Accordingly, the court rejected
plaintiff's contention that the statutory language required the petition and
bond to be filed simultaneously, and held "accompanied"D' could also
be construed to mean "'in relation to, connected with, or to
follow."D' Turner, 186 F.2d at 82. The court concluded by holding that
"the procedure employed was a substantial,
if not literal, compliance with the statute."D' Turner, 186 F.2d at 83.
More recently, the Turner rationale was relied on by the Court of Appeals for
the Sixth Circuit. See Fakouri v. Pizza Hut of America, Inc., 824 F.2d 470, 473
(6th Cir.1987).
The instant petition
presents a situation closely analogous to that faced by the Turner court. The
phrase that the court was required to interpret, i.e., "'shall be
accompanied by,"D' is the exact phrase from Section 44(e) that is here in
issue. Further, it is conceivable that petitioners herein could have petitioned
for waiver of the Rule 2.25 prohibition against return of application papers,
and sought the return of the certified copy. If such a petition were filed and
granted, petitioners then could have filed the current application
"accompanied by"D' a certified copy of their home country
registration. Just as the Turner court found that it would have been
"absurd"D' to hold that the defendants therein could have filed a
duplicate petition with their bond but they could not file a bond to supplement
their petition, it would be pointless here to have required petitioners to seek
return of the certified copy so that they could simply re-submit it
"accompanied by"D' their application.
*4 The requirement
of Section 44(e) that an application based on that section "'shall be
accompanied by"D' a certified copy of the home country registration serves
to ensure that the Office will have the means to ascertain the propriety of the applicant's claim that it
is has a valid basis for filing the application and for obtaining a
registration under the provisions of the section. In this case, the Office
could determine whether petitioners had a valid basis for filing their
application because a photocopy of the certified copy accompanied the second
application and the request for transfer directed the Office to the location,
within its own files, where an original of the photocopy could be found.
Further, the Examining Attorney that handled the original application of petitioner
Kabushiki Kaisha Kaneda Kikai Seisakusho had, in effect, previously determined
that petitioners herein had a right to apply to register their mark under
Section 44(e) only as joint applicants relying on the home country registration
now in issue.
In sum, it appears that no substantive reason bars removal of the
certified copy from the initial, abandoned application. Also, the subsequent
association of the certified copy with petitioners, under the facts of this
particular case, would not circumvent either the requirements of Section 44(e)
or the Office's ability to assess whether petitioners had a proper basis for
filing their application. Petitioners request for transfer of the certified
copy may therefore be approved. In addition, given their substantial compliance
with the requirements of Rule 2.21 as of the filing of the second application
and the separate request for transfer of the certified copy, petitioners are
entitled to a filing date of October 26, 1989.
CONCLUSION
The certified copy of the
home country registration, and the translation thereof, are hereby removed from
abandoned application Serial No. 73-745,825. The application here in issue
shall be forwarded to the Application Section accompanied by the certified copy
and translation, will be granted a filing date of October 26, 1989, and will be
further processed to prepare it for examination in accordance with this
decision.
FN1. This serial number has been declared
"misassigned"D' and will not be reassigned to petitioner's application.
FN2. The requirement was contained in subsection (d) of the
removal statute. This subsection was deleted in 1988 by the Judicial
Improvements and Access to Justice Act, Pub.L. 100-702, Title X, § 1016(b), 102 Stat. 4669. Deletion of the
subsection was effected when Congress determined that a bond was not required
at all when removing an action to federal court, since no bond is required when
an action is originally filed in a federal court. See House Report 100-889,
August 26, 1988. Thus, the deletion of the subsection was entirely unrelated to
judicial interpretations of subsection (d), and the case law construing its language was not,
therefore, affected by the change.
18 U.S.P.Q.2d 1084
END OF DOCUMENT