Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF G. HEILEMAN
BREWING COMPANY, INC.
94-155
November 10, 1994
*1 Petition Filed: May 6, 1994
For: ICE-LAGERED
Serial No. 74/2124,324
Filing Date: October 15, 1991
Philip G. Hampton, II
Assistant Commissioner for Trademarks
On Petition
Anheuser-Busch Companies,
Incorporated has petitioned the Commissioner to reverse
the decision of the Administrator for Trademark Classification and Practice
(Administrator) denying a Letter of Protest filed in connection with the above
identified application. Trademark Rule 2.146(a)(3) provides authority for the
requested review.
FACTS
The above-identified
intent-to-use application for the mark ICE-LAGERED, to be used in conjunction
with "alcoholic malt beverages, namely, beer" in International Class
32, published for opposition on May 19, 1992. [FN1] Petitioner filed several
requests for extensions of time to file an opposition with the Trademark Trial
and Appeal Board, extending the time for filing an opposition through September
16, 1992. When no notice of opposition was filed within the statutory period,
the Notice of Allowance proceeded to issue on April 13, 1993.
On August 3, 1993,
Petitioner filed a Letter of Protest, submitting evidence and arguments against
registration of the subject mark based upon its alleged descriptiveness and/or
genericness. Exhibits A through H from the Letter of Protest have been
incorporated by reference in the petition. A significant portion of the
evidence consists of excerpts of newspaper and magazine articles from the Nexis
(R) database showing common usage of the terminology "lagered" and "ice beer." Included in this
evidence is an excerpt from an article in the March 23, 1992 issue of Marketing
Intelligence Service Ltd., which references the following usage of "ice
lagered:" "Ice lagered, cold filtered Draft and Draft Light Beers are
now available from Rainier Brewing Co. of Seattle, WA, under its Rainier banner."
The Letter of Protest
asserted that the evidence of descriptiveness submitted was not available at
the time the application was initially examined and published, and referred to
the fact that the first alleged descriptive or common descriptive reference to "ice
beer" in the Nexis (R) database occurred on March 25, 1993, well after the
publication date of the application. The Administrator denied the Letter of
Protest as untimely filed, citing In re Pohn, 3 U.S.P.Q.2d 1700 (Comm'r
Pats.1987) and In re BPJ Enterprises, Ltd., 7 U.S.P.Q.2d 1375 (Comm'r
Pats.1988). This petition followed. [FN2]
Counsel for Petitioner
argues that the Letter of Protest should be accepted because it contains
evidence that could not be obtained until well after the thirty day period following
publication of the subject mark, and thus is consistent with In re Pohn, supra,
which expressly states an exception to the time restriction on Letters of
Protest filed beyond thirty days after publication where "the protester
could not earlier have obtained the information provided in the letter, or has
required additional time to gather relevant information for inclusion in the
letter, such as evidence of descriptiveness."
Specifically, Petitioner's Counsel asserts that evidence of the subject mark's
descriptiveness only first appeared in the Nexis database on March 25, 1993,
well after the date when a Letter of Protest could be timely filed under the
present case law, i.e., June 18, 1992. In addition, Counsel has submitted a
second Letter of Protest with the petition which includes additional evidence
and arguments against registration.
DECISION
*2 The
Administrator for Trademark Classification and Practice has broad discretion in
determining whether to grant a Letter of Protest. While Trademark Rule
2.146(a)(3) permits the Commissioner to invoke his supervisory authority in
appropriate circumstances, the Commissioner will reverse the action of the
Administrator on a Letter of Protest only where there has been an abuse of this
broad discretion. In re Pohn, 3 U.S.P.Q.2d 1700 (Comm'r Pats.1987).
The Letter of Protest
procedure was adopted, among other reasons, because it was recognized that the
Trademark Examining Groups did not have the same resources and expertise as
those who worked in or were involved with a particular industry or trade. A
Letter of Protest filed more than 30 days after the date of publication of the
subject mark is generally denied by the Administrator as untimely unless
"the protester could not earlier have obtained the information provided in the Letter, or has
required additional time to gather relevant information for inclusion in the
Letter, such as evidence of descriptiveness. However, Letters of Protest are
not appropriate when the protester's purpose is merely to delay the issuance of
a registration, or to use it as a substitute for opposition." In re Pohn,
3 U.S.P.Q.2d 1700, 1703 (Comm'r Pats.1987).
The published decision
that established a time limitation with respect to Letters of Protest filed
after publication, In re Pohn, supra, was decided prior to the implementation
of the Trademark Law Revision Act (TLRA) of 1988, which was implemented on
November 16, 1989. The Trademark Manual of Examining Procedure (TMEP) § 1116.02(a) has extended application of this
time period to intent to use applications as well, although there are no
published decisions on this issue. [FN3]
In the present case, the
Nexis (R) excerpts (Exhibit G) show that, although the evidence was not
available during the initial examination of the application, it was available
to Petitioner at least as early as March 23, 1992, a date almost two months
prior to the date of publication of the subject mark on May 19, 1992. This
situation does not fit the exception enumerated in Pohn, inasmuch as the
evidence of descriptiveness was available prior to the date of publication, and
thus the Administrator properly denied the Letter of Protest as untimely.
Action on this petition is generally consistent with the principle that
Letters of Protest, as a procedure outside formal rules, should be limited to
minimize possible delay and disruption in the processing of an application.
Furthermore, this action is consistent with the intended framework for
processing intent to use applications. Cf. Eastman Kodak Co. v. Bell &
Howell Document Management Products Co., 994 F.2d 1569, 26 U.S.P.Q.2d 1912
(Fed.Cir.1993). The Examining Attorney will have the opportunity to revisit the
issue of registrability upon the examination of the Statement of Use with
specimens. The Examining Attorney is responsible for undertaking appropriate
research related to the mark based on knowledge of developments within the
relevant industry and other factors, and will issue a refusal in appropriate
circumstances. In addition, interested parties have a remedy via a cancellation
proceeding.
*3 Accordingly,
the petition is denied. The application file will be forwarded to the
Administrator for review of the second Letter of Protest filed with the
petition. The petition papers and this decision will not be a part of the
application file, but will instead be forwarded to the Administrator to be
filed with the first Letter of Protest papers.
FN1. A note to the file dated January 16, 1992, indicates that the
Examining Attorney conducted a Nexis (R) search for variations on the words
"ice lager." No Office action was
issued during examination of the application prior to publication.
FN2. On August 9, 1993, a Statement of Use was filed by Applicant
which will be forwarded to the Examining Attorney for examination following
resolution of the instant petition and second Letter of Protest filed with the
petition.
FN3. An intent-to-use application is inherently different from a
use-based application. For example, an intent-to-use application is examined
both after the application has received a filing date, and after the filing of
a Statement of Use. Thus, contrary to an application based upon Section 1(a) of
the Act which, once published, generally does not return to the Examining
Attorney for further examination, an intent-to-use application is returned to
the Examining Attorney for examination of the Statement of Use. During
examination of the Statement of Use, an Examining Attorney generally "will
not issue any requirements or refusals concerning matters which could or should
have been raised during initital examination, unless the failure to do so in
initial examination results in clear error. 'Clear Error' refers to an error
which, if not corrected, would result in issuance of a registration in
violation of the Act." TMEP §
1105.05(f)(ii). The registration of a generic term would be an example
of "clear error."