Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF VESPER
CORPORATION
Serial No. 193,628
August 23, 1988
*1 Petition Filed: January 4, 1988
For: Miscellaneous Design
Filed: November 17, 1978
Attorney for Petitioner:
Eugene Chovanes
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
Vesper Corporation [FN1]
has petitioned the Commissioner to reopen prosecution of the above-identified
application in order to amend the description of the mark and enter a
disclaimer. Petitioner cites Trademark Rule 2.142(g), 37 C.F.R. 2.142(g), as
authority for this request.
FACTS
Petitioner filed the
subject application to register a design configuration for steel plate, on
November 17, 1978. The Examining Attorney refused registration on the ground
that the design for which registration was sought was a configuration which is
functional and that registration was barred under the doctrine of res judicata,
since the United States District Court for the District of Columbia held in
Alan Wood Steel Company v. Watson, Comr. Pats., 113 USPQ 311 (D.D.C. 1957),
that the Patent and Trademark Office had properly denied registration of the
same mark to petitioner in Ex parte Alan Wood Steel Co., 101 USPQ 209 (Comm'r
Pats. 1954).
Upon appeal by the
petitioner to the Trademark Trial and Appeal Board, the refusal was withdrawn
by an Examining Attorney to whom jurisdiction of the case was returned to
consider whether the mark had acquired distinctiveness as applied to the goods. Pursuant to petitioner's
claim of acquired distinctiveness under Section 2(f) of the Trademark Act, the
mark was published in the Trademark Official Gazette on February 14, 1984. The
application contained a statement that the mark consists of 'projections in the
form of diamonds set normally to one another in alternating patterns' and a
disclaimer of the representation of a steel plate apart from the mark as shown.
Registration was opposed by Eastmet Corporation and Lukens, Inc. [FN2]
In its opposition
proceeding, Lukens, Inc. moved for summary judgment on the ground that
petitioner was collaterally estopped by the prior decisions of the Patent and
Trademark Office and the District Court for the District of Columbia from denying
that the configuration is functional as a matter of law. The motion for summary
judgment was granted, the opposition sustained and registration refused. Lukens
Inc. v. Vesper Corporation, 1 U.S.P.Q.2d 1299 (TTAB 1986). The refusal was
affirmed by the Court of Appeals for the Federal Circuit in an unpublished
decision on September 18, 1987. Petitioner's petition for rehearing was denied
on October 19, 1987 and its suggestion for rehearing en banc was declined on
November 3, 1987. Petitioner filed this petition on January 4, 1988.
A Supplement to the
Petition, filed January 11, 1988, requests that the description of the mark be
changed and a disclaimer entered as follows:
*2 --The mark
consists of a fanciful diamond silhouette in a repeating pattern on the surface of a metal plate. No
claim is made to the exclusive right to use of the repeating pattern with a
different silhouette.--
DECISION
The basis for
petitioner's request is inapproriate. Rule 2.142 concerns matters in an ex
parte appeal to the Trademark Trial and Appeal Board. Rule 2.142(g) provides:
An application which
has been considered and decided on appeal will not be reopened except for the
entry of a disclaimer under Section 6 of the Act of 1946 or upon order of the
Commissioner, but a petition to the Commissioner to reopen an application will
be considered only upon a showing of sufficient cause for consideration of any
matter not already adjudicated.
This application was
involved in an inter partes proceeding rather than an ex parte proceeding in
which the Trademark Trial and Appeal Board affirmed a refusal to register. The
refusal to register herein is based on a successful opposition. Petitioner
appealed the decision of the Board to the Federal Circuit, which affirmed the Board's
decision and denied petitioner's request for rehearing. Petitioner has cited no
authority that would permit the Commissioner to reopen an application after a
final decision of the Federal Circuit. [FN3]
Regarding appeal to the U.S. Court of Appeals
for the Federal Circuit, Section 21 of the Trademark Act, 15 U.S.C. § 1071(a)(4) provides as follows:
The court shall decide
such appeal on the evidence produced before the Patent and Trademark Office.
The court shall return to the Commissioner a certificate of its proceedings and
decision, which shall be entered of record in the Patent and Trademark Office
and govern further proceedings in the case.
In this case, the
granting by the Trademark Trial and Appeal Board of the opposer's motion for summary
judgment was affirmed by the Court of Appeals for the Federal Circuit in a
judgment which was issued as a mandate on November 3, 1987. Receipt of the
mandate by the Patent and Trademark Office terminated proceedings in the case.
See In re Jones, Laskin, and Sokol, 191 USPQ 249 (CCPA 1976).
The petition is denied.
FN1. Petitioner's change of name from Alan Wood Steel Company to
Vesper Corporation was recorded in the Assignment Division of the Patent and
Trademark Office on May 14, 1982 at Reel 415, Frame 606.
FN2. Eastmet Corporation filed Opposition No. 69,115 on April 11,
1984. Lukens, Inc. filed Opposition No. 69,116 on April 16, 1984. Action on Opposition No. 69,115 was suspended on March
27, 1986 pending the disposition of Lukens, Inc.'s motion for summary judgment.
FN3. Even if petitioner's request was properly before the
Commissioner pursuant to Trademark Rule 2.142(g), it would be denied because
the proposed amendment presenting a new description of the mark would require
consideration by the Examining Attorney. See Ex parte Helene Curtis Industries,
Inc., 134 USPQ 73 (Comm'r Pats. 1962); Ex parte Simoniz Company, 161 USPQ 365
(Comm'r Pats. 1969); In re Mack Trucks, Inc., 189 USPQ 642 (Comm'r Pats. 1976).
Petitions to reopen prosecution are only granted when the amendment would place
the application in condition for publication subject only to an updating
search, and no other examination would be required on the part of the Examining
Attorney. See In re Hickory Mfg. Co., 183 USPQ 789 (Comm'r Pats. 1974).
8 U.S.P.Q.2d 1788
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