Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ACCU PERSONNEL, INC.
Opposition No. 89,360; 91,524; 92,823
February 23, 1996
Before Cissel, Seeherman and Quinn
Administrative Trademark Judges
By the Board:
R. F. Cissel, E. J. Seeherman and T. J. Quinn
Administrative Trademark Judges
This case now comes up on opposer's motion for summary judgment in Opposition No. 89,360 on its claim that application Serial No. 74/265,991, the application involved in that opposition, was void ab initio. [FN1] Applicant has filed a brief contesting the motion, and opposer has filed a reply brief. [FN2]
The record in this case reveals the following facts. These facts are not in genuine dispute, although the parties dispute the legal conclusions to be drawn from the facts.
In early 1992, four regional temporary staffing companies decided to merge their operations to form one large company. Pursuant to this plan, a new corporation was to be formed, into which the four regional companies would be merged. In early April, 1992, prior to the formation of the new corporation and to the merger, the principals of the four regional companies conducted a contest among the employees of the four companies to come up with a name for the new corporation, and decided that the new corporation would be called Accustaff Incorporated.
On April 13, 1992, Delores Kesler, chief executive officer of one of the regional companies, executed the intent-to-use application at issue herein. The application named Accustaff Incorporated, a Florida corporation, as applicant, and Ms. Kesler signed the application as President and CEO of that corporation. The trademark application was filed with the PTO on April 15, 1992.
On April 16, 1992, the Articles of Incorporation for Accustaff Incorporated, the entity named as applicant in the application, were filed with the office of the Florida Secretary of State. The merger of the four regional companies into the single surviving corporation, Accustaff Incorporated, took effect on May 4, 1992 with the filing of the Articles and Plan of Merger with the Florida Secretary of State.
Pursuant to the merger agreement, the officers of the four regional companies became the officers and directors of the surviving corporation, Accustaff Incorporated, with Ms. Kesler being designated President and Chief Executive Officer of the corporation. On or about May 4, 1992, Accustaff Incorporated began providing services under the Accustaff mark.
In support of its motion for summary judgment, opposer argues, in essence, that Accustaff Incorporated, the entity named as applicant in the application, did not begin its existence under Florida law until April 16, 1992, and that therefore the application filed on April 15, 1992 was filed by a non-existent entity, not by a "person" authorized to file an intent-to-use application pursuant to Trademark Act Sections 1(b) and 45, 15 U.S.C. Sections 1051(b) and 1127. Opposer concludes that the application was void ab initio, citing Aloe Creme Laboratories, Inc. v. The Magic of Aloe, Inc., 182 USPQ 45 (Comm'r Pats.1973), wherein it was stated that "... if the applicant did not exist at [the time the application was filed], the application is null and void." Opposer further argues this defect in the application, i.e., the naming of a non-existing entity as applicant, may not be cured by amending the application to name another entity, nor may the application, which was void ab initio, be assigned.
*2 Opposer's motion for summary judgment is denied. We decline to view the above-quoted language from Aloe Creme, supra, as a rule which must be mechanically applied in every case. Rather, we believe that the Aloe Creme case must be read in the context of more recent case law and statements of Office policy in the Trademark Manual of Examining Procedure. It is clear from these additional authorities that the mere fact that the entity named as applicant in the application did not exist in law as of the application filing date does not ipso facto render the application void ab initio, so long as the application was in fact filed, albeit in an incorrect name or with an incorrect entity designation, by the proper person, i.e., the commercial enterprise which owned the mark or which was entitled to claim a bona fide intention to use the mark as of the application filing date.
For example, in Argo & Company, Inc. v. Springer, et al, 198 USPQ 626 (TTAB 1978), the Board allowed an application to be amended to name three individuals as joint applicants in place of the originally named corporate applicant, after it was found that the corporation had never been legally incorporated and thus had not been in existence as of the application's filing date. The Board expressly rejected the contention that the application was void ab initio because it was filed by a non-existent entity, as well as the contention that the application could not be amended to change the applicant's entity designation from that of a corporation to that of joint applicants. The Board found that the application had been filed by the proper person, i.e., by the commercial enterprise comprised of the three individuals, and that their misidentification of themselves in the application as a corporation was a curable defect. The individuals and the non-existent corporation were found not to be different persons, but the same, single commercial enterprise.
Similarly, TMEP section 802.03 expressly provides that an application may be amended to change the applicant's entity designation in cases where the application was filed by the proper person, but in an incorrect name or with an incorrect entity designation. Such an amendment is not an impermissible substitution of one person for another. Rather, where there is only a single commercial enterprise in existence which is entitled to file the application, and the application in fact is filed by that enterprise, the amendment is merely a correction in the manner in which that enterprise/person is identified in the application.
In view of these authorities, we decline to hold that the application involved in this case was void ab initio as a matter of law. Even if the Florida corporation named in the application technically did not exist under Florida law on the application filing date, it does not necessarily follow that the application was not filed by a "person," within the meaning of the Lanham Act. The application was obviously filed by some person. The issue is whether that person was the person entitled to file the application. We find that it was.
*3 As of the filing date of the application, the four regional staffing companies constituted and acted as a single commercial enterprise when they decided to merge their operations into a single surviving corporation, and when they selected the name and mark under which they, as a single commercial enterprise, would do business. It was this single commercial enterprise, and no other, which was entitled to file the application on April 15, 1992, and it was this single commercial enterprise, and no other, which in fact filed the application.
It is true that this single commercial enterprise misidentified its entity type in the application, inasmuch as its metamorphosis into its final form, i.e., the Florida corporation named in the application, technically had not been completed under Florida law as of the application filing date. However, under the authorities discussed above, that misidentification is not a fatal defect in the application.
This is not a case where two separate commercial enterprises are in existence on the application filing date, and the application is filed by the wrong one. Rather, there has been only one commercial enterprise in existence throughout the life of this application. The Florida corporation named as applicant, although not in existence on the filing date, is merely a later manifestation of the same, single commercial enterprise which filed the application. It is not a separate commercial enterprise, but rather the same enterprise, albeit in corporate form. The four regional companies were transformed into the corporation; they did not survive the merger as entities separate and apart from the corporation.
We need not and do not decide what applicant's proper "entity designation" was as of the application filing date, nor do we deem it necessary at this inter partes stage of proceedings to require applicant to amend the entity designation in the application and then assign the application to Accustaff, Incorporated. In view of the fact that the four regional companies were transformed, as a result of the merger, into the named corporate applicant, it is immaterial whether those four companies were, as of the filing date of the application, a de facto corporation, a partnership, or joint owners of the application. Regardless of how the applicant, this single commercial enterprise, might have or should have identified itself in the application, we find that it was in fact the proper person to have filed the application. Its premature identification of itself as a Florida corporation was a harmless mistake.
In short, we do not find that opposer is entitled to judgment as a matter of law on its claim that the application was void ab initio. Accordingly, opposer's summary judgment motion is denied. See Fed.R.Civ.P. 56(c).
Furthermore, we find that applicant is entitled to partial summary judgment in its favor on opposer's claim that application Serial No. 74/265,991 was void ab initio. That is, even though applicant has not filed a cross-motion for summary judgment on this issue, we grant partial summary judgment to applicant. See Tonka Corp. v. Tonka Tools, INc., 229 USPQ 857 (TTAB 1986); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984).
*4 Applicant is allowed until thirty days from the date of this order to file and serve its answer to opposer's amended notice of opposition in Opposition No. 89,360. Furthermore, applicant is allowed until thirty days from the date of this order to file and serve its answers to the notices of opposition in Opposition Nos. 91,524 and 92,823. Although these three oppositions have been consolidated, the caption of each of the answers should bear only the proceeding number of its respective opposition. After applicant's answers to the three notices of opposition have been entered, the Board will issue a consolidated trial order setting discovery and testimony periods. [FN3]
Trademark Trial and Appeal Board
FN1. Opposer's June 14, 1994 motion for leave to file an amended notice of opposition is granted. FRCP 15(a). The amended notice of opposition includes the newly-added claim which is the subject of the present motion for summary judgment, as well as additional allegations going to opposer's Section 2(d) claim.
FN2. Opposition Nos. 89,360, 91,524 and 92,823 were previously consolidated, upon opposer's consented motion. Proceedings in the consolidated cases have been suspended pending disposition of opposer's summary judgment motion in Opposition 89,360. Neither Opposition Nos. 91,524 and 92,823 nor opposer's separate Section 2(d) ground of opposition in Opposition No. 89,360 are involved in opposer's summary judgment motion.
FN3. This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case. See Copelands' Enterprises Inc. v. CNV Inc., 887 USPQ 1065, 12 USPQ2d 1562 (Fed.Cir.1989).