Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE FERRERO S.P.A.
Serial No. 73/748,088
June 29, 1992
G. Franklin Rothwell and Raymond A. Kurz of Rothwell, Figg, Ernst
& Kurz, P.C. for applicant.
Jerry L. Price
Senior Examining Attorney
*1 Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Comer
Deputy Commissioner
Assistant Commissioner
Sams and Rice
Members [FNa1]
Opinion by Rice
Member
Request for Reconsideration
In a decision dated
November 25, 1991, the Board reversed the Trademark Examining Attorney's
refusal to register, on the Supplemental Register, the mark EXTRA MILK-MILK
CHOCOLATE for candy. On January 17, 1992, the Examining Attorney submitted a
request for reconsideration of the Board's decision. Applicant opposed the
request for reconsideration, citing In re McKee Baking Co., 219 USPQ 759 (TTAB
1983), where the Board held that "it is not a proper procedure for an
Examining Attorney to seek reconsideration of a decision rendered by the
Board." In a decision dated April 22, 1992, an augmented panel of the
Board expressly overruled McKee, and allowed applicant time in which to respond
to the merits of the Examining Attorney's request for reconsideration.
On May 26, 1992, by certificate of mailing dated May 22, 1992, applicant
filed a request for reconsideration of the Board's decision of April 22, 1992.
The arguments contained
in applicant's request have been given careful consideration. However, the
Board is not persuaded thereby that its decision of April 22, 1992, is in
error.
In this regard, we note
that while the applicable statute (that is, the Trademark Act of 1946, 15
U.S.C. 1051 et seq.) and rules do not specifically provide for a request by the
Examining Attorney for reconsideration of the decision of the Board on an ex
parte appeal, neither do they prohibit such a request. [FN1] We are of the
opinion that in the absence of a statutory or regulatory prohibition, the Board
has the inherent authority to entertain a request from the Examining Attorney
for reconsideration of the Board's decision on an ex parte appeal. Although the
Board chose in the past not to exercise that inherent authority, we now believe
that the better policy is to entertain such requests, which may identify, and
provide us with an opportunity to correct, possibly erroneous decisions.
Applicant maintains that
the Examining Attorney's request for reconsideration in this case is, in any
event, untimely, having been filed more than one month after the date of the
decision to which it is directed. Because we have not chosen previously to
exercise our inherent authority to entertain a request from an Examining
Attorney for reconsideration of the Board's decision on an ex parte appeal, we have not established any
specific time limit for the filing of such a request. Accordingly, we will not
reject the Examining Attorney's request for reconsideration in this case as
untimely. However, we hereby give notice that in future cases, we will require that
any request by the Examining Attorney for reconsideration of the decision of
the Board, on an ex parte appeal, be filed within one month of the date of the
decision to which the request is directed, unless the time is extended by the
Board upon a showing of sufficient cause.
*2 For the
foregoing reasons, applicant's request for reconsideration is denied. A
decision on the merits of the Examining Attorney's request for reconsideration
will be issued, in due course, by the panel which issued the decision to which
the request is directed.
Douglas B. Comer
Jeffrey M. Samuels
J. David Sams
Janet E. Rice
Members, Trademark Trial and Appeal Board
FNa1. Commissioner Manbeck, who participated in the decision which
is the subject of the present request for reconsideration, left Government
service effective May 1, 1992, and therefore
did not participate in this decision.
FN1. Rule 2.144, which relates to reconsideration of the Board's
decision on an ex parte appeal, provides as follows:
Any request for
rehearing or reconsideration, or modification of the decision, must be filed
within one month from the date of the decision. Such time may be extended by
the Trademark Trial and Appeal Board upon a showing of sufficient cause.
This rule clearly does not prohibit the Examining Attorney from
seeking reconsideration of the decision of the Board on an ex parte appeal.
24 U.S.P.Q.2d 1155
END OF DOCUMENT