Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF L.R. SPORT, INC.
92-157
September 1, 1992
*1 Petition Filed: March 23, 1992
For: COLLUSION
Serial No. 74/084,223
Filing Date: August 2, 1990
Attorney for Petitioner
Michael T. Sun
Katz, Hoyt, Seigel & Kapor
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
On Petition
L.R. Sport, Inc. has
petitioned the Commissioner to reinstate the above identified application. The
petition will be considered pursuant to Trademark Rule 2.146(a)(3).
The subject mark was
published for opposition on May 28, 1991. When no opposition was filed, a
Notice of Allowance issued on August 20, 1991, for this intent-to-use
application. Pursuant to Section 1(d) of the 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 September 4, 1991,
petitioner filed a Statement of Use. In an Office action dated March 17, 1992,
the Applications Examiner in the ITU/Divisional Unit notified petitioner that
the papers submitted September 4, 1991 did not comply with the minimum
requirements for filing a Statement of Use, because the prescribed fee, as
required by Trademark Rule 2.88(e)(1), had not been submitted. Petitioner was
advised that, since the period of time within which to file an acceptable
Statement of Use had expired, the application would be abandoned in due course.
Subsequently, the application was in fact abandoned, effective February 22, 1992. This petition was
filed, March 23, 1992, requesting reinstatement of the application.
Section 1(d)(1) of the
Trademark Act, 15 U.S.C. § 1051(d)(1),
provides, in part, that:
Within six months of
the issuance of the notice of allowance ... the applicant shall file in the
Patent and Trademark Office, together with such number of specimens or
facsimiles of the mark as used in commerce as may be required by the
Commissioner and payment of the prescribed fee, a verified statement that the
mark is in use in commerce and specifying the date of the applicant's first use
of the mark in commerce, those goods or services specified in the notice of
allowance on or in connection with which the mark is used in commerce, and the
mode or manner in which the mark is used on or in connection with such goods or
services (emphasis added).
Trademark Rule 2.88(e),
37 C.F.R. § 2.88(e), sets forth the
minimum requirements that a Statement of Use must meet before it can be
referred to an examining attorney for examination. Trademark Rule 2.88(e)(1)
requires that the application be accompanied by "[t]he fee prescribed in
§ 2.6." Trademark Rule 2.6(a)(3)
sets the fee for filing a Statement of Use at $100 per class.
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. In re Culligan International
Co., 915 F.2d 680, 16 U.S.P.Q.2d 1234 (Fed.Cir.1990); In re Raychem Corp., 20
U.S.P.Q.2d 1355 (Comm'r Pats.1991).
*2 Because the
requirement for timely payment of the fee for filing a Statement of Use is set
by statute, the Commissioner has no authority to waive it. Furthermore, even if
the requirement were not statutory, the circumstances presented here do not
justify a waiver of the rules. An oversight or inadvertent omission 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).
Petitioner asserts that
abandonment is "unfair" in the instant case, because it was not
notified of the statutory deficiency until after expiration of the period for
filing the Statement of Use. However, while the Office attempts to notify
parties as to defective papers to permit timely refiling, it has no obligation
to do so. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273
(Fed.Cir.1984); In re Fuller-Jeffrey Broadcasting Corp. of Santa Rosa, 16
U.S.P.Q.2d 1456 (Comm'r Pats.1990). The applicant is ultimately responsible for
filing proper documents.
The petition is denied.
The application is abandoned.