Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ELEXIS CORPORATION
Opposition No. 88,355
June 8, 1993
Roy H. Wepner of Lerner, David, Littenberg, Krumholz & Mentlik for Elexis Corp.
Allan M. Lowe of Lowe, Price, LeBlanc & Becker for Sunwatch, Inc.
Before Sams, Rice and Hohein
By the Board:
Elexis Corporation (opposer), on July 23, 1992, filed a notice of opposition to the registration of the mark SUNWATCH for a wristwatch device which measures exposure from sunlight. [FN1] In the notice of opposition opposer alleged, inter alia, that, prior to applicant's filing date, opposer had begun use of the mark SUNDIAL for a wristwatch having a sensor for the intensity of incident sunlight and an indicator of how long a wearer can remain exposed to the sun without experiencing skin damage; that, on January 22, 1990, a newspaper article mentioned this product; that opposer has subsequently introduced and is now selling this product; that, on information and belief, applicant has not yet begun use of its mark; that, because the goods of the parties are virtually identical and the marks are similar, when the marks are used upon the respective goods, confusion is likely on the part of the public; and that applicant's mark is highly descriptive of the device upon which it is used.
After applicant filed an answer, in which it denied the salient allegations of the notice, and after the Board set trial dates, applicant, on January 21, 1993, filed a motion to clarify or amend its involved application to assert, under Section 44(d), a priority to the January 12, 1990 filing date of applicant's corresponding Canadian application. In this motion, applicant states that the U.S. application, as originally filed, recited two bases for registration, namely, intent to use the mark in commerce (Section 1(b)) and a claim under Section 44 based upon the corresponding application filed in Canada. Applicant goes on to state that suspension of prosecution was initially requested pending issuance of the Canadian registration, but after experiencing delays in obtaining that registration, an amendment was filed, whereby applicant deleted the claim of priority and elected to rely solely upon Section 1(b) as the basis for registration. The mark was subsequently published for opposition on this basis.
Applicant now argues in its motion that it only intended to amend its application to delete Section 44 (i.e., Section 44(e)) as a second basis for registration; that applicant did not intend to give up its priority date under 44(d); and that, if its amendment inadvertently withdrew its claim to the priority date, applicant wishes to amend its application to reclaim this date. As support for the retention of this date, applicant points to an examination guide of the Office [FN2] that states that, if an applicant files under Section 44(d) as well as Section 1(a) or 1(b), the Office presumes that Section 44(e) is also a basis for registration; but, if the applicant elects to proceed without completing the 44(e) basis for registration, the applicant may retain its priority claim under Section 44(d).
*2 Opposer, in its opposition to the motion, argues that applicant's application would not have been published if the foreign priority claim had not been relinquished; that applicant's Canadian application is still in a pending status and thus registration under Section 44(e) is not possible; and that opposer is likely to be prejudiced if applicant's foreign priority date is reinstated, since the January 1990 date set forth in the notice of opposition may be the first date opposer can prove of "trademark-type" use of its mark and may be a date between applicant's priority date and its U.S. filing date.
Applicant, in its application as originally filed, not only claimed a bona fide intention to use the mark in commerce (Section 1(b) basis for registration) but also asserted a claim of priority under Section 44(d) based on a foreign application filed in Canada on January 12, 1990 (implying a claim of a Section 44(e) basis for registration). On October 18, 1991, applicant filed a request that the application be amended "by deleting Applicant's claim for priority based upon a foreign application". Applicant stated that, because it was not at that time able to "perfect its claim to foreign priority based upon the Canadian application", it had elected to withdraw this claim, so that the only basis for registration was Section 1(b). Thus, the mark was published for opposition solely as an intent-to-use application.
Applicant is entirely correct in its present contentions that its foreign priority date could have been retained, even through it elected to proced without perfecting its claim for registration under Section 44(e). Contrary to opposer's arguments, the application could have been published for opposition with a claim for a foreign priority date, even though registration was to be based solely on use in commerce (a statement of use being the only prerequisite to the issuance of a registration). Applicant had satisfied the requirement of Section 44(d) that its U.S. application be filed within six months of the filing date of the Canadian application.
The problem is that applicant did not make such an election during the prosecution of its application. Instead applicant specifically amended its application to delete its claim for priority based on its Canadian application. While applicant (or its counsel) may now be well versed in the applicable law and practice and the appropriate language to be used to delete Section 44(e) as a basis for registration, applicant did not tailor its amendment in this manner. Thus, its claim under Section 44(d) was eliminated and the mark was published without any indication of a priority date.
Insofar as applicant's request now to amend its application to reassert its priority claim is concerned, a similar motion to amend an application involved in an opposition so as to claim the benefits of Section 44(d) was considered by the Board in Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 U.S.P.Q.2d 1241 (TTAB 1989). We are aware that distinctions may be drawn between the two cases. In the Marnier case, the applicant was, by its amendment, attempting to add Section 44 as a basis for registration, rather than simply to claim a foreign priority date. Nonetheless, the Board finds the general principles of fairness and equity set forth in that case to be equally applicable here. Pointing out that publication gives notice to the public of the details concerning an application, including the alleged date of first use and information with respect to any foreign application, the Board found a Section 44 claim to be not seasonable if made after publication of the mark for opposition. The Board believed such a policy to be in accordance with its long-held position that an opposer is entitled to an adjudication of the issues which it has raised against an application as published.
*3 Here, opposer has specifically described the prejudice which might result from the amendment of applicant's application to include a foreign priority date. Moreover, it is possible that opposer might not have incurred the expenses of filing an opposition or even of going ahead with the production of its device, if it had been on notice that applicant was entitled to a filing date of January 12, 1990, inasmuch as opposer's potential first use date appears to be sometime within the month of January 1990. Thus, allowance of a claim to an earlier priority date to applicant at this point in time would clearly be unfair to opposer.
Accordingly, applicant's motion to clarify or amend its application to include a foreign priority date under Section 44(d) is denied. The consented motions to extend the discovery and testimony periods filed February 22, 1993 and May 3, 1993 are approved. In view of the considerable delay in the Board's disposition of applicant's motion, trial dates are further extended as set forth in the accompanying trial order.
Members, Trademark Trial and Appeal Board
FN1. Application Ser. No. 74/031,391, filed February 21, 1990 by the Canadian partnership of Donald D. Dorrity, J. Stephen Hunter and Terry R. Allen and subsequently assigned to Sunwatch, Inc. (applicant).
FN2. Examination Guide 1-91: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and Other Areas (1991). Note that these provisions of Examination Guide 1-91 have now been incorporated into Section 1006.01 of the Trademark Manual of Examining Procedure (TMEP) (2d ed. 1993).
June 8, 1993
In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE August 6,
Testimony period for party in position of plaintiff to close October 5,
(opening thirty days prior thereto) 1993
Testimony period for party in position of defendant to close December 6,
(opening thirty days prior thereto) 1993
Rebuttal testimony period to close (opening fifteen days prior January 20,
*4 Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.