Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF KABUSHIKI KAISHA
HITACHI SEISAKUSHO
94-124
May 4, 1994
*1 Petition Filed: December 6, 1993
For: I-ZTAT
Serial No. 74/215,986
Filing Date: October 28, 1991
Robert M. Anderson
Acting Assistant Commissioner for Trademarks
On Petition
i-STAT Corporation has
petitioned the Commissioner to reverse the decision of the Applications Examiner at the Trademark
Trial and Appeal Board denying a request for an extension of time to file a
notice of opposition to the registration of the above referenced mark.
Trademark Rule 2.146(a)(3) provides authority for the requested review.
FACTS
The mark in the subject
intent-to-use application published for opposition in the Official Gazette on
July 14, 1992. Petitioner timely filed several requests for extensions of time
to file an opposition which were granted by the Board, extending the time to
file an opposition through October 19, 1993.
On October 20, 1993,
petition filed a request for a thirty day extension of time with a certificate
of service and a certificate of mailing by Express Mail with this same date. By
letter dated November 23, 1993, the Applications Examiner at the Board informed
the petitioner that the extension request was not timely filed, and the request
was summarily denied. This petition followed. [FN1]
Counsel for petitioner
declares that the extension request was filed one day late because an employee
miscalculated the due date for the request by adding one additional day to the
thirty day period of time of the previous extension. Counsel asserts that this
employee mistakenly believed that the federal holiday of Columbus Day, which occurred on October 11,
1993, affected the time period for filing the request.
DECISION
Trademark Rules
2.146(a)(5) and 2.148 permit the Commissioner to waive any provision of the
Rules which is not a provision of the statute, where an extraordinary situation
exists, justice requires and no other party is injured thereby. However, the
Commissioner has no authority to waive a requirement of the statute.
Section 13 of the
Trademark Act, 15 U.S.C. § 1063,
provides that a Notice of Opposition may be filed within thirty days after the
date of publication of a mark. "Upon written request prior to the
expiration of the thirty day period, the time for filing [an] opposition shall
be extended for an additional thirty days, and further extensions of time for
filing [an] opposition may be granted by the Commissioner for good cause when
requested prior to the expiration of an extension (emphasis added)."
Section 13 was expressly
amended in 1982 to require that any further extension requests, and the Notice
of Opposition, be filed prior to the expiration of any previous extensions.
Public Law 97-247 § 13(a) 1982.
Petitioner's failure to
file the subject extension request prior to the expiration
date of the previous extension request, and thus prior to the due date for
filing an opposition, is in violation of the time restraints dictated by the
statute. Since the time period for filing an opposition or requesting an
extension of time to oppose is prescribed by statute, the Commissioner has no
authority to waive this requirement. In re Cooper, 209 USPQ 670 (Comm'r
Pats.1980).
*2 Furthermore,
even if the time period for filing an opposition or requesting an extension of
time to oppose was not statutory, the circumstances presented here do not
justify a waiver of the rules. An oversight or a misunderstanding of trademark
practice and procedure is not an extraordinary situation, within the meaning of
Rules 2.146(a)(5) and 2.148. In re Tetrafluor Inc., 17 U.S.P.Q.2d 1160 (Comm'r
Pats.1990); In re Choay S.A., 16 U.S.P.Q.2d 1461 (Comm'r Pats.1990); In re Bird
& Son, Inc., 195 USPQ 586 (Comm'r Pats.1977).
Accordingly, the petition
is denied. The application file will be forwarded to the ITU/Divisional Unit
for issuance of the Notice of Allowance.
FN1. Petitioner has filed additional requests for extensions of
time to file an opposition, requesting additional time to file an opposition
through March 17, 1994. It is unclear whether additional extension requests or
a notice of opposition have been filed.