Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MARIE CLAIRE ALBUM S.A.
KRUGER GMBH & CO. KG
Opposition No. 88,932
November 16, 1993
Before Rice, Cissel and Quinn
Administrative Trademark Judges
By the Board:
J.E. Rice, R.F. Cissel and T.J. Quinn
Administrative Trademark Judges
Before us are (1) opposer's motion to suspend proceedings herein pending the outcome of a civil action between the parties in Cologne, Germany and (2) applicant's motion to strike matter from the notice of opposition and to strike the certified status copies of opposer's registrations, which opposer filed subsequent to the notice of opposition.
In an order dated May 12, 1993, the Board deferred action on the motion to strike and requested the parties to file supplemental briefs on the motion to suspend in light of the decision in In re De Luxe N.V., 990 F.2d 607, 26 U.S.P.Q.2d 1475 (Fed.Cir.1993). Both parties filed supplemental briefs. [FN1]
Briefly reviewing the relevant history of this proceeding with regard to the motion to suspend, applicant filed a trademark application [FN2] in the United States on July 5, 1991 based solely on its ownership of a German registration under Sections 44(c) and (e) of the Trademark Act. A notice of opposition was filed against this application on August 24, 1992, on the ground of likelihood of confusion, mistake or deception. On December 7, 1992, opposer filed a motion to suspend the proceeding pending the outcome of a civil action between the parties filed in the Landgericht (Regional Court) of Cologne, Germany on March 9, 1992. Opposer indicated that in the German action it is seeking the cancellation of the German registration on which applicant's U.S. application is based. [FN3]
In its initial and supplemental briefs in support of the motion to suspend, opposer has argued that the German civil action could result in the cancellation of the German registration which serves as the basis of applicant's U.S. application; that only bona fide foreign registrations should be permitted to serve as bases for U.S. registrations; that Trademark Act Section 44(f) states that a U.S. registration is independent of the foreign registration upon which it was based, implying that a U.S. application is dependent upon the foreign registration until it matures to registration in the United States; that the Trademark Act consistently relies on registration as the trigger for acquiring independent rights; and that it was Congress's likely intent that the foreign registration be valid at the time of the U.S. registration. With regard to In re De Luxe, opposer asserts that the two cases are distinguishable, because in De Luxe the foreign registration was subsisting, while in this case the foreign registration may be found to be invalid; and that the decision in De Luxe should not be extended beyond its facts to grant independent rights to a U.S. application before it matures to registration, i.e., permitting an application's existence without a continuing valid basis for registration. The current proceeding, according to opposer, should therefore be suspended so that the German Court may determine whether the German registration, upon which the U.S. application is based, is valid.
*2 Applicant has argued that the final determination of a foreign court should not determine the outcome of a U.S. proceeding; that at the time the present application was filed the foreign registration on which it is based was valid and in full force and effect; that the United States and Germany are separate marketplaces in which the present application and the foreign registration can each survive on their own merits; and that the Trademark Trial and Appeal Board must follow the precedent of In re De Luxe, which is directly on point. Applicant asserts that De Luxe stands for the proposition that in every case involving an application under Trademark Act Section 44, if there is in existence a foreign registration at the time the U.S. application is filed in reliance thereon, then any subsequent actions involving the foreign registration are irrelevant to the U.S. application. Applicant argues that this proceeding should not be suspended because a subsequent cancellation of the foreign registration would have no effect on the current U.S. application. [FN4]
Upon careful consideration of the parties' arguments, we believe a suspension of the current proceeding is warranted. Precedent in existence prior to In re De Luxe stated that a valid foreign registration must exist for a U.S. application under Section 44 to register, and the Board does not believe that the De Luxe case overrules this precedent.
A foreign applicant seeking a U.S. registration under Trademark Act Sections 44(c) and (e) must own a mark "duly registered" in its country of origin. That is, if, at any time prior to the issuance of the U.S. registration, the foreign registration is shown not to be in full force and effect, the U.S. application loses its Section 44 basis. See Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, recon. denied, 1 U.S.P.Q.2d 1308 (TTAB1986); Hudson Pharmaceutical Corp. v. Laboratories Hosbon, S.A., 177 USPQ 707 (Com'r Pats.1973). The U.S. application is dependent upon the validity of the foreign registration up until the time the U.S. registration based thereon is issued. See Fioravanti, supra. Only once issued is a registration secured under Sections 44(c) and (e) independent of the foreign registration and subject only to the requirements of United States law. See Trademark Act Section 44(f); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB1982); Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB1963).
The Trademark Trial and Appeal Board held in Fioravanti that the commencement of a proceeding in the applicant's country of origin seeking to cancel the registration upon which a U.S. application is based may serve as a ground for opposing registration in the United States. The Board further held that, in such circumstances, suspension of the opposition proceedings in the United States would be appropriate. This is applicable to the current case as well. The validity of the foreign registration which is the basis of the U.S. application has been brought into question, and opposer has requested suspension pending the outcome of its German civil action rather than attempt to question the validity of the foreign registration in the opposition proceeding. Were the foreign registration found to be invalid, there would be no valid basis for this application, in which case the opposition would be sustained. Therefore, it is appropriate to suspend this proceeding pending the determination of the German civil action concerning the validity of the foreign registration.
*3 The Board does not believe that the holding of In re De Luxe is applicable to the current case. In De Luxe, a U.S. application was filed under Trademark Act Section 44(d) by a foreign entity which owned a foreign application. Upon issuance of the foreign registration, the applicant submitted a certified copy of the foreign registration to the Patent and Trademark Office, satisfying the requirements of Section 44(c). Subsequently, the U.S. application, but not the foreign registration, was assigned to another entity. Registration in the U.S. application was then refused by the Examining Attorney because the assignee of the U.S. application was not also the owner of the foreign registration. The Court reversed this decision and stated that "a foreign applicant must comply with the requirements [of Section 44] at the time the application is filed...." De Luxe, 26 U.S.P.Q.2d at 1477. However, the Court's further explanation reveals the limits of this holding. Central to this decision is the fact that a valid foreign registration, upon which the U.S. application was based, always was in existence. The original applicant merely put a new applicant in its place, and the Court saw no difference between this and an assignment made subsequent to the issuance of the U.S. registration. This holding is clearly limited to the proposition that "a foreign applicant for U.S. registration who satisfies the requirements of § 44 may assign the application without assigning foreign rights, and without precluding the assignee's ability to thereafter obtain a U.S. registration." De Luxe, 26 U.S.P.Q.2d at 1477.
Here, we are contemplating the possibility that no "duly registered" foreign mark exists, as was the case in Fioravanti. Therefore, it is appropriate for the Board to suspend proceedings pending a determination of whether the foreign registration is valid. To hold otherwise would be inconsistent with the intent of the statute and the need to protect against unfair competition, as was previously stated by the Board:
If we were to open the door, under Section 44, to applications filed by persons not the owners of registrations of marks in their countries of origin, on the basis suggested by applicant--that it is enough to prove the fact of registration in the country of origin and that record ownership or title thereto is irrelevant and immaterial--we would be making possible the most outrageous frauds by permitting the most unscrupulous persons to obtain registrations in this country of marks to which they had not the slightest color or claim of right other than the winning of a race to the Patent and Trademark Office door; and such an interpretation of our statute might make it impossible for the true owner of the mark in the country of origin to register the mark in this country. Such a result, directly contrary to our treaty obligations under Article 10 bis (1) of the Paris Convention, is not to be countenanced, and the possibility thereof, however remote, must be prevented by any reasonable interpretation of our Act.
*4 Fioravanti, 230 USPQ at 43, quoting, In re Fisons, Ltd., 197 USPQ 888, 893 (TTAB1978).
Accordingly, opposer's motion to suspend is granted. Proceedings herein are suspended pending final determination of the civil action between the parties before the Landgericht in Cologne, Germany. Within twenty days of such final determination, the interested party should call up this proceeding for appropriate action.
Action on applicant's motion to strike is deferred.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Opposer filed two supplemental briefs in succession, both of which were submitted after the date the Board set for the submission of opposer's arguments. Because applicant has consented to their late submission, the two briefs were considered by the Board.
FN2. Application Serial No. 74/184,273 for "MARIE CLAIRE COSMETIC" for toilet soaps, perfumes, colognes, body oils, body lotions, hair conditioners, hair shampoos and hair color preparations.
FN3. A copy of the pleadings in the German civil action, and a translation thereof, are attached to opposer's motion to suspend.
FN4. Applicant has also requested the Board to forbid any discovery by opposer concerning the validity of the foreign registration. The Board will not rule on such a request because we do not issue advisory rulings and will only consider formal motions based on actual discovery requests, rather than potential or hypothetical requests, of the parties. Furthermore, the motion is untimely because proceedings have been suspended since the Board order dated May 12, 1993 with the exception of the filing of the parties' supplemental briefs concerning the motion to suspend.