Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK REGISTRATION OF ANNA VERONIKA
MURRAY DBA MURRAY SPACE SHOE
CORPORATION AND MURRAY SPACE SHOE, INC.
Registration No. 440,188
October 21, 1991
*1 Petition Filed: January 17, 1991
For: SPACE SHOE
Renewed: August 17, 1968
Issued: August 17, 1948
Attorney for Petitioner
Donald C. Lucas
Lucas & Just
Assistant Commissioner for Trademarks
On Petition
Anna Veronika Murray dba
Murray Space Shoe Corporation and Murray Space Shoe, Inc., jointly, have
petitioned the Commissioner to review the action of the Post Registration
Affidavit-Renewal Examiner denying renewal of the above identified
registration. Trademark Rules 2.146(a)(2) and 2.184(b), 37 C.F.R. § § 2.146(a)(2) and 2.184(b), provide authority
for the requested review.
Facts
The above registration
issued on August 17, 1948, and was renewed on August 17, 1968.Pursuant to
Section 9 of the Trademark Act, an application for second renewal of the
registration was due to be filed within the six months preceding August 17,
1988, or, on payment of a late fee, within the three month grace period
following that date.
On July 26, 1988, an
application for renewal of the registration was filed by Mrs. Anna Murray,
doing business as Murray Space Shoe Corporation. The application was
accompanied by the required fee and a specimen showing the mark as currently used. The application was signed
by Anna Murray. [FN1]
On August 16, 1988, a
second application for renewal was filed in the name of Murray Space Shoe, Inc.
and Anna Veronika Murray, jointly. This second application was signed by
Franklin Espriella as president of Murray Space Shoe, Inc. The application
stated that Murray Space Shoe, Inc. was co-owner with Anna Veronika Murray, as
successors-in-interest to the rights of Alan E. Murray (deceased) and Lucile
Marsh Murray; that the mark was still in use in commerce on the goods recited
in the registration; that the co-owner of the application, Anna Veronika
Murray, had previously paid the renewal fee and submitted the specimens in
support of the application for renewal; and that, therefore, it was not
believed that any additional fee or specimens were required. [FN2]
By letters mailed April
21, 1989, [FN3] the Affidavit-Renewal Examiner notified each of the renewal
applicants that the Office had received two renewal applications for the
registration, one by Mrs. Anna Murray claiming ownership, and another by Murray
Space Shoe, Inc. claiming co-ownership with Anna Veronika Murray; that the
records of the Patent and Trademark Office showed joint ownership of the
registration; that a renewal application by joint owners must be signed by each
of the owners acknowledging joint ownership with the other; that although the
application by Murray Space Shoe, Inc. acknowledges joint ownership with Anna
Veronika Murray, it was not signed by Mrs. Murray; and that the application by
Anna Murray did not acknowledge joint ownership
with Murray Space Shoe, Inc. The letter further stated that since the time for
filing a proper renewal application ended on November 17, 1988, the
registration had expired.
*2 On October 23,
1989, a response to the letters of April 21, 1989, was filed by Murray Space
Shoe, Inc. and Anna Veronika Murray dba Murray Space Shoe Corporation, jointly.
The response was accompanied by a photocopy of an uncertified "status
copy" of the registration, dated August 26, 1988, showing record title to
the registration in the name of Anna Veronika Murray dba Murray Space Shoe
Corporation. The renewal applicants stated that, in view of this status copy,
it was not understood how the Affidavit-Renewal Examiner determined that the
registration was jointly owned by Anna Veronika Murray and Murray Space Shoe,
Inc. Nevertheless, "to expedite proceedings," the response was
accompanied by a third renewal application, executed by both parties as joint
owners.
By letter dated September
5, 1990, the Affidavit-Renewal Examiner notified the joint renewal applicants
that the status copy of August 26, 1988 was incorrect. The Examiner attached a
corrected status copy dated August 31, 1990, showing record title in Anna
Veronica (sic) Murray and Murray Space Shoe, Inc. The Examiner's letter further
stated that renewal could not be granted based on the newly-executed renewal
application because it was received after the statutory period for filing, and
that the registration had expired.
This petition was filed January 17, 1991. Petitioner contends that
according to the records of the Patent and Trademark Office, as evidenced by
the status copy mailed August 26, 1988, the record owner of the registration
when the first renewal application was filed on July 26, 1988 was Anna Veronika
Murray dba Murray Space Shoe Corporation, and, accordingly, the first renewal
application was proper. Petitioner contends that it is entitled to rely on the
records of the Patent and Trademark Office, as evidenced by the 1988 status
copy. Petitioner further contends that the 1990 status copy relied on by the
Examiner shows incorrect ownership of the registration. In the alternative,
petitioner contends that, if the registration was owned jointly by Anna
Veronika Murray dba Murray Space Shoe Corporation and Murray Space Shoe, Inc.,
then both owners had properly filed timely applications for renewal, albeit in
separate documents. Petitioner requests that the failure of both owners to
execute a joint renewal application should be treated as "a mere
technicality" which was corrected by filing the third renewal application
on October 23, 1989.
Decision
15 U.S.C. § 1059, which provides, in part:
(a) Each registration
may be renewed ... upon payment of the prescribed fee and the filing of a verified application
therefor, setting forth those goods or services recited in the registration on
or in connection with which the mark is still in use in commerce and having
attached thereto a specimen or facsimile showing current use of the mark ...
Trademark Rule 2.183, 37
C.F.R. § 2.183, promulgated in
accordance with the Commissioner's authority under Section 9, sets forth the
following procedural requirements for renewal of a registration:
*3 Requirements
of application for renewal
(a) The application for
renewal must include a statement which is verified or which includes a
declaration in accordance with § 2.20
by the registrant setting forth the goods or services recited in each class for
which renewal is sought in the registration on or in connection with which the
mark is still in use in commerce ... (emphasis added)
(b) The declaration or
verified statement ... must be filed within the period prescribed for applying
for renewal. If defection or insufficient, [it] cannot be completed after the
period for applying for renewal has passed ...
Although Section 9 of the
Act does not specifically require that the renewal application be verified by
registrant, Rule 2.183 does require verification "by the registrant."
Furthermore, the rule requires that the declaration or verified statement be
filed within the period prescribed by the statute for applying for renewal.
The term
"registrant" includes the original registrant as well as successors
and assigns who have acquired ownership through proper transfer of title.
Section 45 of the Trademark Act, 15 U.S.C. §
1127. An action with respect to a registration which must be taken by
the registrant can be taken by an assignee only if the assignment has been
recorded with the Assignment Branch of this Office, or if other proof of the assignment
has been submitted. Trademark Rule 2.186, 37 C.F.R. § 2.186. The party taking the required action is responsible for
establishing that it is the owner of the registration, through appropriate
evidence. Therefore, when a person or entity other than the original registrant
applies for renewal, the Office must search its records to ascertain the record
owner of the registration, in order to determine whether the application has
been properly executed and filed by the registrant.
In the instant case, the
records of this Office show clear chain of title from the original registrant
to Murray Space Shoe, Inc. and Anna Veronika Murray, dba Murray Space Shoe
Corporation, as joint owners. The registration was issued August 17, 1948 to
Alan E. Murray, an individual United States citizen. By order of the Superior
Court of Fairfield County, Connecticut, dated July 14, 1975 and recorded in the
Patent and Trademark Office November 29, 1979, title to the registration was
transferred to Alan E. Murray and Lucile Marsh Murray, as joint owners. Lucile
Marsh Murray assigned her interest in the registration
to Murray Space Shoe New York Corporation and Murray Space Shoe Carolina
Corporation by agreement dated October 16, 1979, recorded November 29, 1979.
Murray Space Shoe New York Corporation and Murray Space Shoe Carolina
Corporation assigned their interest in the registration to Franklin Espriella
and Marie J. Dermer by agreement dated October, 1979, recorded November 29,
1979, who in turn each assigned their interest in the registration to Murray
Space Shoe, Inc., by two separate agreements dated December 18, 1979, recorded
May 11, 1981. Upon the death of Alan E. Murray, his half interest in the
registration passed through the executor of his estate to Anna Veronika Murray,
dba Murray Space Shoe Corporation, by documents dated January 21, 1980,
recorded March 18, 1980.
*4 Thus, since May
11, 1981, the records of this Office have shown title to the registration in
Murray Space Shoe, Inc. and Anna Veronika Murray, dba Murray Space Shoe
Corporation, as joint owners. Anna Veronika Murray dba Murray Space Shoe
Corporation has never been the sole owner of the registration. Therefore, the
status copy of the registration dated August 26, 1988 is incorrect. [FN4]
Accordingly, the
"registrant" is Murray Space Shoe, Inc. and Anna Veronika Murray, as
joint owners. The issue presented herein is whether a renewal application was
timely filed "by the registrant," as required by Section 9.
The application filed
July 26, 1988, by Anna Veronika Murray dba Murray Space Shoe Corporation, cannot be accepted, even when
viewed in conjunction with the application filed August 16, 1988, as having
been filed by the registrant, because it names an improper party as owner of
the mark.
The application filed
October 23, 1989 cannot be accepted because it was not filed within the
statutory period for filing set forth in Section 9. The Commissioner cannot
extend, suspend, or waive the time for filing a complete application for
renewal. In re Culligan International Co., 915 F.2d 680, 16 U.S.P.Q.2d 1234
(Fed.Cir.1990); In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273
(Fed.Cir.1984); In re Michaels Stern & Co., Inc., 199 USPQ 382 (Comm'r
Pats. 1978); Ex parte Firmenich & Co., 137 USPQ 476 (Comm'r Pats. 1963).
For the reasons set forth
below, however, the application filed August 16, 1988, executed by Murray Space
Shoe, Inc., can be accepted as having been executed and filed "by the
registrant."
The standards for
determining whether a renewal application has been verified by the
"registrant," within the meaning of Rule 2.183, are the same
standards used to determine whether a Section 8 affidavit has been properly
executed. The statutory requirement that the registrant file an affidavit of
continued use or a renewal application cannot be waived. However, it has been
held that, in certain limited circumstances, the Commissioner may determine
that a Section 8 affidavit or renewal application was properly executed and
filed on behalf of a corporate registrant
even though it was executed by someone other than a corporate officer. The
acceptance of a signature by a non-officer is dependent upon the registrant's
ability to establish facts regarding the signatory's relationship to the corporate
registrant, the signatory's firsthand knowledge of use of the mark, and
registrant's ratification of the signer's action. In re Cooper Industries Inc.,
16 U.S.P.Q.2d 1453 (Comm'r Pats. 1990); In re Schering Agrochemicals Ltd., 6
U.S.P.Q.2d 1815 (Comm'r Pats. 1987).
The question of who is
the proper party to execute an affidavit of continued use or a renewal
application on behalf of joint registrants is one of first impression. Joint
owners are individual parties rather than a single entity, each without
authority to bind the other. For this reason, this Office has always required
the signature of each of the owners in an application for registration of a
mark under Section 1 of the Trademark Act. See Trademark Manual of Examining
Procedure § § 802.03 and 803.08.
*5 Whenever
possible, a renewal application or affidavit of continued use should be
executed by each of the joint owners. However, this is not a statutory
requirement which must be satisfied within a specified time period. The
relationship between joint owners is such that a document signed by one of the
owners can be considered as being properly executed and filed "by the
registrant," if the signer's action is subsequently ratified by each of
the other owners. By virtue of its ownership, each party has firsthand
knowledge of the facts relating to the use
of the mark, as well as implied authority to act on behalf of the registrant.
Because the parties are in fact separate legal entities, any action taken with
respect to a registration by less than all of the owners must be supplemented
with an affidavit or declaration (37 C.F.R. §
2.20) by each of the co-owners, ratifying the facts stated in the
application. Such a ratification can be accepted after expiration of the period
for applying for renewal or filing an affidavit of continued use, because it is
not a requirement of the statute. [FN5]
In this case, the renewal
application filed October 23, 1989 contains a declaration, pursuant to
Trademark Rule 2.20, signed by Anna Veronika Murray dba Murray Space Shoe
Corporation, acknowledging co-ownership of the registration with Murray Space
Shoe, Inc. and verifying the facts stated in the renewal application. While
this document was filed too late to be accepted as a renewal application, it can
be accepted for the purpose of ratifying the statements in the application
which was filed on August 16, 1988 on behalf of the joint owners of the
registration.
Accordingly, the petition
is granted. The registration file will be forwarded to the Affidavit-Renewal
Examiner, who is directed to consider the renewal application filed August 16,
1988 as being properly executed and filed by the registrant.
FN1. There is some
inconsistency in setting forth the renewal applicant's name, in that the
preamble states that "Mrs. Anna Murray, doing business as Murray Space
Shoe Corporation ... now owns" the registration, while the declaration
asserts that Anna Murray "is an officer of Murray Space Shoe Corporation,
the owner of [the registration]."
FN2. The second renewal application was filed under a cover letter
which authorized a charge of any additional fees which may be required against
the deposit account of the renewal applicant's attorney. Pursuant to this
authorization, a second renewal fee was charged against the deposit account.
Since the August 16, 1988 renewal application was filed by an entity different
than the entity which filed the July 26, 1988 application, the second fee was
properly charged.
FN3. Although the file copies of these letters are undated, the
records of this Office indicate that they were in fact mailed April 21, 1989,
and that each of the renewal applicants' copies were stamped as such.
FN4. The error in the status copy dated August 26, 1988 is
regretted. However, the registrant is responsible for establishing ownership
and filing proper documents. Petitioner's reliance on the uncertified status
copy of the registration as proof of
ownership is inappropriate.
FN5. This is not inconsistent with Office practice under Section 1
of the Act. An application for registration by joint applicants under Section 1
which is signed by only one party is granted a filing date. Additional
declarations by the other owner(s) verifying the facts stated in the
application must be submitted during prosecution of the application, before the
mark can be approved for publication.
21 U.S.P.Q.2d 1937
END OF DOCUMENT