Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ETA SYSTEMS, INC.
Serial No. 515,302
March 6, 1987
Robert M. Angus and Joseph A. Genovese, for ETA Systems, Inc.
John Michael Curtin
Trademark Examining Attorney
Law Office 3
(Myra Kurzbard, Managing Attorney)
Before Rice, Allen and Rooney
Opinion by Rooney
An application was filed by ETA Systems, Inc. to register the mark ETA for computer peripherals, printers, disk drives, tape drives, input/output terminals, keyboards, keyboard terminals, computer disks and tapes, video display apparatus, and computer programs for the foregoing; textbooks, workbooks, operator's and user's manuals and guides, all relating to computers and data processing apparatus; data processing services in the fields of engineering, business, science and manufacturing; and accounting services; repair installation and maintenance services for data processing equipment; training services in operating, maintaining and programming data processing apparatus; rendering engineering services, timesharing services and designing supercomputer systems for others, namely, data processing apparatus and computer programs. The application is based on an application filed in France on September 3, 1984 claiming a right of priority under Section 44(d). [FN1]
Registration was finally refused on the ground that a company incorporated and located in the United States cannot register a mark under Section 44 but must proceed under Section 1 which requires an allegation of use in commerce and specimens illustrating such use prior to the filing date of the application. Applicant appealed, contending that it is entitled to the benefits of Section 44(d) pursuant to Section 44(i).
While the appeal was pending, a decision was issued in another case [In re International Barrier Corporation, 231 USPQ 310 (TTAB 1986)] holding that a corporation domiciled in the United States is entitled to claim the benefits of Section 44(d) provided that it has a bona fide and effective industrial or commercial establishment in one of the counties, other than the United States, described in Section 44(b). In that case, applicant was a corporation of Delaware but it had a bona fide and effective commercial establishment (its only such establishment) in Canada. Consequently it satisfied the requirement of Section 44(b) and was properly entitled to claim the benefits of Section 44(d) of the Act. In view of said decision, this appeal was suspended and the case was remanded to the Examining Attorney for further consideration in light of that decision. In particular, we requested the Examining Attorney to make inquiry as to whether applicant has a 'bona fide and effective industrial or commercial establishment' in France. In response to the Examining Attorney's inquiry, applicant stated that its French registration is based on intended use, not on actual use, and not on any presence of a business establishment in France. Applicant stated, additionally, that it makes no claim that it has a bona fide and effective industrial or commercial establishment in France or in any other country outside the United States. Applicant then reiterated its claim to the benefits of Section 44 pursuant to Section 44(i). Applicant takes the position that it is entitled to the same benefits of Section 44 as those granted to persons described in Section 44(b), conceding that it is not a person described in Section 44(b), and that the holding in International Barrier is inapplicable here since the applicant in that case was a person under Section 44(b), hence it did not need resort to section 44(i). Applicant's rationale in support of the application of Section 44(i) to its case follows:
*2 Section 44(d) describes a procedure for trademark registration in the United States without the requirement of use of the mark when based on a foreign application or registration. Under Section 44(d) those persons described in part (b) of Section 44 may register marks pursuant to Sections 1, 2, 3, 4, and 23, may claim priority based on an application previously filed in any country [FN2] described in Section 44(b) and need not allege use in commerce. This procedure is based on and supercedes Section 2 of the 1905 Act which was limited to foreign applicants and denied this method of registration to U.S. applicants. By enacting Section 44(i), Congress intended to, and did, extend the benefits of Section 44 to U.S. citizens and residents putting them on equal footing with persons described in Section 44(b) and enabling them to register marks under Section 44(d) without alleging use in commerce so long as the U.S. application is based on an application filed in a foreign country as set forth in Section 44(b). As support for its position, applicant cites In re Vanity Fair Mills, Inc. v. The T. Eaton Co. Limited, 109 USPQ 438, (CA2 1956) cert. denied 111 USPQ 468 (1956) and former Assistant Commissioner Leeds (nee Robert) (The New Trade-Mark Manual BNA, Inc. 1947 p. 120) but with the qualification that it consider inappropriate the limitations found in those references, i.e., that U.S. applicants must have a 'bona fide and effective business or commercial establishment' (as stated in Vanity Fair) or be domiciled or have a business establishment in the foreign country (The New Trade-Mark Manual). Rather, asserts applicant, Section 44(i) is not limited to U.S. citizens with foreign business establishments or domiciles as evidenced by Stauffer v. Exley, 87 USPQ 40 (CA9 1950), In re Lyndale Farm, 88 USPQ 377 (CCPA 1951) and The American Automobile Association v. Spiegel, 98 USPQ 1 (CA2 1953). Finally, applicant states that it is aware of no case holding that Section 44(i) does not extend benefits to U.S. citizens and residents.
The applicable sections of the statute read as follows.
Section 44(b) (15 U.S.C. 1126b)
Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law . . .
No registration of a mark in the United States by a person described in paragraph (b) of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.
*3 Country of origin defined.
For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries in paragraph (b) of this section, the country of which he is a national.
Section 44(d) (15 U.S.C. 1126d)
An application for registration of a mark under section 1, 2, 3, 4, or 23 of this Act filed by a person described in paragraph (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in paragraph (b) shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country:
Provided, That--. . ..
Citizens or residents of the United States shall have the same benefits as are granted by this section to persons described in paragraph (b) hereof.
There is no question that, in enacting Section 44(i), the Congress of the United States intended precisely what is expressed by the clear language of that subsection, namely, in the context of the facts of the instant case, that appellant, as a citizen and resident of the United States, is entitled to the same benefits as those accorded by Section 44 to 'persons described in [Section 44(b)],' i.e., persons (including legal entities) whose countries of origin are countries bound to a relevant treaty (or equivalent relationship by reciprocal law) with the United States. Consistent with that premise, the broadsweeping analysis supporting the Examining Attorney's refusal of registration that a U. S. company cannot proceed under Section 44 but must proceed under Section 1 of the Trademark Act would effectively read Section 44(i) out of the Act as far as the benefits of Section 44(c), (d) and (e) are concerned. We have been unable to find any basis in the legislative history of the Lanham Act for any such limitation; [FN3] neither do we have the power to impose such limitations sua sponte. [FN4] However, we nevertheless conclude that this appellant is not entitled to registration under Section 44(c), (d) and (e), without use in United States commerce, based on the facts of this case, including appellant's statement that it does not possess a bona fide real and effective industrial or commercial establishment in France, the country which issued the registration on which it relies, or in any other country outside the United States.
Concerning our premise that Section 44(i) is available to applicant, and since its application has been filed under Section 44(d), we must first consider what are the benefits of Section 44(d) to which appellant is entitled by reason of its being assimilated to the same position as 'a person described in [Section 44(b)].' The principal benefit of Section 44(d) is the right of priority which is created by the first filing of an application for registration of a mark in 'one of the countries described in paragraph (b)' on a date which is within six months from the filing date of an application in the United States for registration of the same mark. As to this benefit, whereas, pursuant to Section 44(d) such application (and the application on the basis of which the right of priority is claimed) must be filed by a person described in Section 44(b), that requirement need not be satisfied by any citizen or resident of the United States who claims the benefits of Section 44(i). Thus, appellant here might have secured the benefit of a right of priority under Section 44(d) by filing its application in the United States based on use in commerce which commenced on a date subsequent to the filing date of its application for registration of the same mark in France (September 4, 1984) but prior to the filing date of the United States application (December 24, 1984). In that event, the effective filing date of such an application would have been the date of filing of the first-filed application in France and that date would have been the constructive use date of the mark for purposes of determining priority rights in the United States. [FN5] SCM Corp. v. Langis Foods, Ltd., 539 F.2d 196, 190 USPQ 288 (D.C. Cir. 1976). [FN6]
*4 A second benefit of Section 44(d)--one which is ancillary to the first--, is that an applicant who is a person described in Section 44(b) seeking registration based on Sections 44(c) and (e), a condition precedent of which is registration in the country of origin of the applicant rather than use in commerce, may preserve its right of priority in the case where its country of origin and the country of first filing for priority purposes are one and the same country. [FN7] As a citizen and resident of the United States, appellant is also assimilated to the same position as persons described in Section 44(b) as far as this second benefit is concerned.
It should be apparent, however, from what we have already said, that even though appellant is excused from satisfying the eligibility requirements of Section 44(b) in claiming these benefits of Section 44(d), a fundamental condition of both of them is that appellant have a basis for United States registration i.e., either use in commerce or a duly issued registration of the same mark for the same goods or services in appellant's country of origin. [FN8] Inasmuch as appellant has not made any allegation of use in commerce in its application for registration, the only conceivable basis for registration lies in Section 44(c) and (e), i.e. registration of the same mark in appellant's country of origin. Presumably, it was in order to comply with this requirement that appellant has submitted a certified copy of its registration in France resulting from its first-filed priority application in that country.
Since it has now been established that appellant does not have a real and effective industrial or commercial establishment in France and that appellant's only country of origin is the United States, appellant has no basis for registration under Section 44(c) and (e). [FN9] Consequently, registration based on an application filed pursuant to Section 44(d) is properly refused.
In view of the foregoing, the refusal to register in the absence of an allegation of use in interstate commerce and appropriate specimens is affirmed.
J. E. Rice
D. B. Allen
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. French application No. 713520. A copy of the registration thereof was subsequently submitted. The right of priority is stated to be based additionally on applications filed on September 6, 1984 in Canada and the United Kingdom and on September 7, 1984 in Australia and West Germany.
FN2. Applicant stresses that Section 44(d) does not specify 'country of origin' and concludes that an applicant thereunder may base its U.S. application on an application filed in any country described in part (b) without regard to what may be the applicant's country of origin.
FN3. An interesting colloquoy between Edward S. Rogers, H. J. Savage, and Congressman Lanham during the March, 1939 hearing of the House of Representatives on one of the early Lanham bills clearly supports the proposition that no limitation was intended. Thus, in discussing the effect of (now) Section 44(e) on the registration of configurations of goods by foreign applicants these conferees had the following exchange:
Mr. Savage. One of the first things, back under the principal register, is that you provide that anyone, whether foreigner or not, can register, if he has used his mark.
Mr. Lanham. Yes.
Mr. Rogers. Of course, that is quite different. There are two kinds of registration permitted foreigners. If a foreigner uses a mark in this country, he is entitled to register on the basis of use. If he had not used it in this country, then he is entitled to registration under the convention which does not require use here.
Mr. Savage. We are still going to leave in the closing statement [(now) Section 44(i) are we? That is going to be left in? I am just asking that as a matter of information. I am not saying one way or another.
Mr. Rogers. I do not know. I think that is a matter for the committee.
Mr. Savage. Let us pass it over.
Mr. Lanham. We certainly want to preserve for our citizens all the rights we accord to everyone else. It would seem on the first blush information it would be the thing to do. It works no injustice, does it?
Mr. Rogers. Not at all; on the contrary--
Mr. Savage. It gives us some advantage. If we want our citizens to have that advantage, then it should stay in.
Hearing on H.R. 4744 Before the Committee on Patents, Subcomm. on Trade-marks, 76th Cong., 1st Sess. (1939), at 172.
The language of § 44(i) remained unchanged from the date of this hearing until enactment of the final Lanham bill.
FN4. It goes without saying that the Trademark Trial and Appeal Board, being a creature of the Congress, is bound to apply the statute as it was enacted, subject only to such amendments as have been made since by that body. This limitation on our power applies even to constitutionality challenges. E.g., Hawaiian Host, Inc. v. Rowntree Mackintosh PLC., 225 USPQ 628, 630 (TTAB 1985).
FN5. It should not be surprising that Congress provided for entitlement by United States citizens and residents to the right of priority based on a first filing in a country other than the United States in trademark cases. Inventors who are citizens or residents of the United States have long been entitled to the benefit of the right of priority attaching to first-filed patent applications in countries other than the United States without resort to any provision of law equivalent to Section 44(i) based on the same article of the Convention of Paris for the Protection of Industrial Property (Article 4) as the one which accords the right of priority in trademark cases. See, 35 U.S.C. § 119; I S. Ladas, PATENTS, TRADEMARKS AND RELATED RIGHTS, 258 (1975).
FN6. No right of priority may be claimed based on appellant's applications filed in Canada, United Kingdom, Australia, and the Federal Republic of Germany, however. These applications were obviously not 'first-filed' applications within the meaning of Section 44(d) as the statute requires. See, Fioravanti v. Fioravanti Corrado S.R.L., 1 USPQ 2d 1304 at 1307-1308 (TTAB 1986). There is, of course, no question that an applicant proceeding under Section 44(d) may also allege use in commerce as its basis for registration. In re Daiwa Seiko, Inc., 230 USPQ 794, 795 at note 1, (Com'r Pats., 1983); TRADEMARK MANUAL OF EXAMINING PROCEDURE ¶1003 (Rev. Dec. 1983).
FN7. The significance of this benefit is that without it, the only time when an applicant could avail itself of the right of priority based on an application filed in its country of origin and also the right to secure registration in this country pursuant to Sections 44(c) and (e) would be in those rare circumstances where the Trademark Office in the applicant's country of origin issued registration sufficiently prior to the expiration of six months, counted from the filing date of the country of origin/priority application to enable the applicant to accompany its United States application with a certified copy of the country of origin registration. Thus, by filing under § 44(d), the country of origin registration need not accompany the United States application but can be supplied when it has issued in due course. In such cases the United States application is routinely suspended pending issuance of the country of origin registration. Trademark Rule 37 CFR § 2.67 (1985).
FN8. A major fallacy in appellant's argument is that its basis for registration is in Section 44(d). This is incorrect. The basis for registration of a mark applied for under Section 44(d) lies entirely outside that section, i.e., either Section 1 of the Act (including by reference, in appropriate cases, Sections 2, 3, 4, and 23) or registration in the applicant's country of origin. Conceding this point has been the subject of much confusion in the legal literature, it is now well settled by several recent decisions interpreting Section 44(d). E.g., SCM, supra, 190 USPQ at 292; Daiwa Seiko, supra, 230 USPQ at 795; Fisons, supra, 197 USPQ 892.
FN9. None of the cases cited by applicant as support for its position, Stauffer, Lyndale Farm, and American Automobile Association, supra, involved the question of the right to register a trademark under Section 44.