Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CENTURY 21 REAL ESTATE CORPORATION
CENTURY LIFE OF AMERICA, DBA CENTURY COMPANIES OF AMERICA AND CENTURY LIFE OF
Opposition No. 75,090
January 17, 1989
J.D. Sams, L.E. Rooney and E.J. Seeherman
This case now comes up on the following:
Opposer's request for reconsideration of the Board's June 29, 1988 decision denying opposer's motion for summary judgment;
Opposer's motion to amend its notice of opposition;
Opposer's motion to extend the time for the commencement of its testimony period; and
Opposer's motion to extend its time to respond to applicant's second set of interrogatories and first request for production.
Applicant has opposed the request for reconsideration and the various motions.
Turning first to the request for reconsideration, opposer's motion sought summary judgment on the ground that applicant failed to submit with its application proper specimens evidencing valid service mark use. The motion was denied because the insufficiency of specimens is not a ground for sustaining an opposition:
The sufficiency of the specimens submitted with an application is a technical question which is within the province of the Examining Attorney to determine, and it is not within the function of this Board to supervise the Examining Attorney. See Granny's Submarine Sandwiches v. Granny's Kitchen Inc., 199 USPQ 564, 567 (TTAB 1978); Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 642 (TTAB 1977). Even assuming applicant's specimens do not show service mark use but only trade name use, the applicant should not be penalized by the Examining Attorney's error in judgment, since any problem with the specimens might have been corrected had the Examining Attorney made a request for new specimens. See Granny's Submarine Sandwiches v. Granny's Kitchen, Inc., supra.
It is this ruling from which opposer requests reconsideration, arguing inter alia that the cited cases do not prohibit the Board from overruling the decision of the Examining Attorney when clear error was committed. In particular, opposer points to the following language in Granny's Submarine Sandwiches:
We have previously stated that it is not the Board's function to review the work of the Examiner. We are not going to substitute our judgment for that of the Examiner, on the same facts that were before the Examiner, unless we are convinced that clear error was committed.
199 USPQ at 567.
We have carefully considered opposer's arguments, but we are not convinced that our decision was in error.
While the Board is not bound by the decision of the Examining Attorney, in that the mere acceptance of specimens by the Examining Attorney does not mandate a finding by us that service mark usage was made, it is not the adequacy of the specimens, but the underlying question of service mark usage which would constitute a proper ground for opposition.
*2 The reason why unacceptable specimens, per se, should not be a ground for opposition becomes apparent when one considers the purpose of specimens. The specimens are to show the mark as it is actually used (Section 1 of the Trademark Act, 15 U.S.C. 1051; Trademark Rules 2.56-58), so that it can be determined whether the matter for which registration is sought is being used as a trademark or service mark. Objections to the specimens made by the Examining Attorney during examination are not actually to the acceptability of the specimens themselves, but are that the specimens do not show trademark use of the matter for which registration is sought. Thus, in the present case, even assuming, arguendo, that applicant's specimens are unacceptable, if the Examining Attorney had refused registration based on them it would have been because they did not show that applicant's mark was being used as a service mark, and the ground for refusal would have been, not the insufficiency of the specimens, but that the matter did not function as a mark.
Moreover, fairness dictates that the ex parte question of the sufficiency of the specimens not be the basis for sustaining an opposition. If, as was pointed out in our June 29, 1988 decision, the Examining Attorney had objected to the specimens during the examination of the application, the applicant would have had an opportunity to submit acceptable substitute specimens. Again assuming, arguendo, that applicant's specimens are unacceptable, it would be unfair to penalize applicant for not submitting substitute specimens when that requirement was never made by the Examining Attorney. Accordingly, for both legal and equitable reasons, we reaffirm our prior decision that unacceptable specimens are not a proper ground for opposition, and deny the request for reconsideration on this basis.
Turning now to opposer's motion to amend the notice of opposition, opposer seeks to add the allegation that applicant did not use its mark as a service mark in commerce prior to the filing of its application. The failure to make service mark use (as opposed to a failure of the specimens to show such use) is a proper ground for opposition, and in view of the nature of the allegation and the stage in which the proceeding is, applicant would not suffer any prejudice by our granting the motion. Applicant's argument that the proposed allegation does not provide a ground for opposition (because the Examining Attorney had previously accepted the specimens as showing service mark use) is without merit.
In view of our decision to allow the amendment of the notice of opposition, opposer is granted an additional thirty day period to conduct discovery solely with respect to the newly pleaded issue. Testimony periods are reset accordingly.
As for opposer's motion for an extension of time to respond to applicant's discovery requests, opposer is granted until fifteen days from the date of this decision to serve its responses. No further extensions will be granted, however, without the consent of applicant or a showing of extraordinary circumstances.
*3 Finally, opposer also requests that we reconsider our decision denying summary judgment in light of the new ground alleged in its amended notice of opposition. Opposer argues that applicant failed to produce any documents evidencing service mark use during discovery or as a specimen with its application and thus there is no genuine issue that applicant failed to make service mark use of the term sought to be registered.
This is a different ground from that alleged in the motion for summary judgment and is, therefore, not a proper subject for reconsideration. Opposer's request for reconsideration on this basis, too, is denied.
In summary, opposer's request for reconsideration is denied; opposer's motion to amend the notice of opposition is granted, the discovery period is extended for thirty days with respect to the newly pleaded issue, with trial dates reset as shown in the attached trial order; and opposer is granted until fifteen days from the date of this decision to respond to applicant's second set of interrogatories and first request for production.
Members, Trial and Appeal Board