Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF VITAMIN BEVERAGE
CORPORATION
94-212
September 5, 1995
*1 Petition Filed: July 25, 1994
For: OLD NEW ORLEANS STYLE
Serial No. 74/230,642
Filing Date: December 13, 1991
Philip G. Hampton, III
Assistant Commissioner for Trademarks
On Petition
Vitamin Beverage
Corporation has petitioned the Commissioner to reverse the denial of a Request for Extension of Time to
File a Statement of Use in connection with the above identified application.
Trademark Rules 2.89(g) and 2.146(a)(3) provide authority for the requested
review.
Facts
A Notice of Allowance
issued for the subject application on May 18, 1993. Pursuant to Section 1(d) of
the Trademark Act, a Statement of Use, or request for an extension of time to
file a Statement of Use, was required to be filed within six months of the
mailing date of the Notice of Allowance. On October 19, 1993, Petitioner filed
its first request for an extension of time to file a Statement of Use, which
was approved. On May 18, 1994, Petitioner filed a second request for an
extension of time to file a Statement of Use, in which it asserted that:
Applicant's mark is
currently in use in commerce in connection with the goods identified in the
Notice of Allowance. Applicant intended to file a Statement of Use in
connection with the instant application by May 18, 1994. However, through an
inadvertent error, the specimens supporting such use were lost in shipment to
applicant's counsel. Accordingly, it is respectfully requested that the time
for filing the Statement of Use be extended.
In an Office Action dated
June 29, 1994, the Paralegal Specialist in the ITU/Divisional
Unit denied the extension request because it did not include a verified
statement that the applicant has a continued bona fide intention to use the
mark in commerce, specifying those goods or services identified in the notice
of allowance on or in connection with which the applicant has a continued bona
fide intention to use the mark in commerce, as required by Trademark Act
Section 1(d)(2), 15 U.S.C. §
1051(d)(2), and Trademark Rule 2.89, 37 C.F.R. § 2.89. Petitioner was advised that, since the
period of time within which to file an acceptable extension request or
Statement of Use had expired, the application would be abandoned in due course.
On June 3, 1994, the
Applicant filed a Statement of Use. On July 8, 1994, the Paralegal Specialist
issued an Office Action advising Petitioner that its Statement of Use was
untimely filed because it was received after the expiration of the existing
extension period. The filing fee for the Statement of Use was refunded on or
about July 21, 1994.
This petition was filed
July 25, 1994. Petitioner contends that its statement that the mark is actually
in use in commerce subsumes the statement that it has a continued bona fide
intention to use the mark in commerce.
Decision
*2 Section 1(d)(2)
of the Trademark Act, 15 U.S.C. §
1051(d)(2), provides:
The Commissioner shall
extend, for one additional 6-month period, the time for filing the statement of
use under paragraph (1), upon written request of the applicant before the
expiration of the 6-month period provided in paragraph (1). In addition to an
extension under the preceding sentence, the Commissioner may, upon a showing of
good cause by the applicant, further extend the time for filing the statement
of use under paragraph (1) for periods aggregating not more than 24 months,
pursuant to written request of the applicant made before the expiration of the
last extension granted under this paragraph. Any request for an extension under
this paragraph shall be accompanied by a verified statement that the applicant
has a continued bona fide intention to use the mark in commerce and specifying
those goods or services identified in the notice of allowance on or in
connection with which the applicant has a continued bona fide intention to use
the mark in commerce. Any request for an extension under this paragraph shall
be accompanied by payment of the prescribed fee. The Commissioner shall issue
regulations setting forth guidelines for determining what constitutes good
cause for purposes of this paragraph (emphasis added).
Until now, the Patent and
Trademark Office has taken the position that an allegation of use in commerce
does not satisfy the statutory requirement that an extension request be
accompanied by a verified statement that the applicant has a continued bona fide intention to use the
mark in commerce. Therefore, the Paralegal Specialist acted properly in denying
the extension request.
After further
consideration and review of the legislative history of the Trademark Law
Revision Act of 1988, which became effective November 16, 1989, the Office has
decided to change its practice in this area, and to grant Petitioner's second
Request for Extension of Time to File a Statement of Use.
Legislative History & Analysis
The Legislative History,
Reports, Testimony, and Annotated Statutory Text: Trademark Law Revision Act of
1988, (Public Law 100-667), reported at p. 25/177 of the USTA publication
states:
Requests for extensions
of the period of time in which to file the statement of use must be accompanied
by a statement of continued bona fide intent-to-use. This requirement takes
into account the surrounding circumstances as of the time when the continued
bona fide intent is stated. The absence of concrete steps to commence use of
the mark in commerce taken by the applicant since the filing of the previous
statement of bona fide intent may cast doubt on the bona fide nature of the
intent.
Nowhere does the statute
require that the applicant use the specific words or phrase "bona fide
intention to use" the mark. What the statute does require is a statement that applicant has a bona fide
intention to use its mark. Black's Law Dictionary defines "statement"
as "an allegation, a declaration of matters of fact." By stating that
the mark is currently in use, the applicant, in this case, has made an
allegation or declaration that exceeds the statutory requirement of a mere
continuing bona fide intent to use the mark. The applicant avers that, in fact,
use in commerce has been effected.
*3 Section 45
defines "Use in Commerce" as the "bona fide use of a mark in the
ordinary course of trade...." This is the same phraseset out in Section
1(d)(2), minus the word "intention." Black's Law Dictionary defines
"intention" as the "determination to act in a certain way or to
do a certain thing. Here the "certain thing to be done" is use of the
mark in commerce. Petitioner has stated its bona fide intention to use the mark
in commerce by declaring that it is, in fact, using the mark in commerce. Thus,
the Petitioner has surpassed the statutory requirements of Section 1(d)(2).
The Legislative History,
Reports, Testimony, and Annotated Statutory Text: Trademark Law Revision Act of
1988, (Public Law 100-667), reported at p. 44/196 of the USTA publication
states:
Amendment of the
definition of "use in commerce" is one of the most far- reaching
changes the legislation contains. Revised to eliminate the commercially
transparent practice of token use, which becomes unnecessary with the
legislation's provisions for an intent-to-use application system, ...
The committee intends
that the revised definition of "use in commerce "be interpreted to
mean commercial use which is typical in a particular industry. Additionally,
the definition should be interpreted with flexibility so as to encompass
various genuine, but less traditional, trademark uses, such as those in test
markets, infrequent sales of large or expensive items, or ongoing shipments of
a new drug to clinical investigators by a company awaiting FDA approval, and to
preserve ownership tights in a mark if, absent an intent to abandon, use of a
mark is interrupted due to special circumstances. Finally, the revised
definition is intended to apply to all aspects of the trademark registration
process, from applications to register, whether they are based on use or intent-to-use,
and statements of use filed under Section 13 of the Act, to affidavits of use
filed under Section 8, renewals and issues of abandonment....
Crocker National Bank v.
Canadian Imperial Bank of Commerce, 223 USPQ 909, 914 (TTAB 1984) (quoting
Chief Judge Markey in In re Nantucket, Inc., 213 USPQ 889, 892 (CCPA 1982))
notes that:
Each part or section of
a statute should be construed in connection with every other part or section so
as to produce a harmonious whole ..., and it is not proper to confine
interpretation to the one section to be construed.
The statute and
legislative history of the Lanham Act and its amendments are focused on use of the mark in commerce. Under
the TLRA, U.S. law was amended to permit filers who have a bona fide intention
to use the mark in commerce to apply to register their marks. However, with the
exception of applications filed under Section 44 of the Act, use in commerce is
a requirement for registration.
Even for applications
under Section 44, the statute requires the assertion of a bona fide intention
to use the mark in commerce in order for a filing date to be granted.
Furthermore, when filing a Section 8 affidavit, or renewal application, foreign
registrants must provide proof of use of the mark in commerce, or explain why
non-use is excusable. Finally, a third party may petition to cancel a
registration owned by a foreign filer after a period two years' non-use on the
part of the registrant.
*4 It is clear
from the legislative history that the intent of the statute is to make use in
commerce, (or excusable non-use), a requirement for continued federal
protection of all marks. Therefore, once an applicant makes a declaration that
the mark is currently in use in commerce, it would defy congressional intent to
treat such a statement as an incurable deficiency under Section 1(d)(2). As a
practical matter, once an applicant provides a declaration of actual use in an
extension request, subsequent requests for extensions of time in which to file
a Statement of Use should be rare.
Effective immediately,
paralegals in the ITU/Divisional Unit of the Office will accept as being
substantially in compliance with the statutory requirement that an extension
request be accompanied by a verified statement that the applicant has a
continued bona fide intention to use the mark in commerce the applicant's
allegation that the mark is in use in commerce on or in connection with the
goods or services identified in the Notice of Allowance.
The petition is granted.
The application will be forwarded to the ITU/Divisional Unit for further action
in accordance with this decision.
37 U.S.P.Q.2d 1537
END OF DOCUMENT