Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE TONG YANG CEMENT CORPORATION
Serial No. 73/730,247
January 23, 1991
Laurence R. Brown of Laurence Brown & Associates, P.C., for applicant
Ellen A. Rubel
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Sams, Cissel and Seeherman
Opinion by Cissel
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Tong Yang Cement Corporation, a Korean corporation, applied to register the design shown below on the Principal Register for "non-metalic building materials, namely, cement, lime, gypsum, wood and timber, stone and synthetic stone, and sound-proof board for use as building materials and glass tiles." [FN1] Applicant claimed priority under Section 44(d) of the Lanham Act based on an application which had been filed in Korea on January 23, 1988. The U.S. application included language, which was subsequently deleted by amendment, to the effect that applicant controls the use of the mark on the goods set forth, and benefits from use of the mark in different fields by two related companies, Tong Yang Confectionery Corporation and Tong Yang Securities Co., Ltd.
The original application included a translation of the Korean application upon which it was based. That translation and the one subsequently submitted both identify the Korean applicant/registrant as a joint venture consisting of the U.S. applicant, Tong Yang Cement Corporation, and the two other corporations, Tong Yang Confectionery Corporation and Tong Yang Securities Co., Ltd. The Examining Attorney refused registration under Section 1 of the Act on the ground that at the time the United States application was filed, the applicant which filed it was not the owner of the foreign application on which it was based. Applicant sought to amend its application to name the three owners of the Korean registration as the owners of the United States application, but the Examining Attorney refused to allow such amendment, holding the application void ab initio because it was not filed by the owner of the mark.
Applicant appealed when the refusal to register was made final. No oral hearing was requested, but the issues were thoroughly briefed by counsel for applicant and the Examining Attorney.
Based on the record before us we affirm the refusal to register. Section 1(a) of the Act requires the owner of the mark to file the application to register it and Section 44(d) requires that an applicant which claims priority under that section must be the owner of the foreign application on which the claim is based. The record before us is clear that Tong Yang Cement Corporation was not the owner of the mark when this application was filed and did not own the Korean application on which the claim of priority was based. The translation of the Korean application, as well as the translation of the resulting Korean registration, shows the joint venture of three corporations as the owner of the Korean application and registration. The joint venture should therefore have applied as such to register the mark here. It would be just as improper to issue a registration to only one of the entities as it would be to allow amendment of the application to show the joint venture to have applied, when in fact only one member did so, and did so on its own behalf, rather than on behalf of the combined companies.
*2 Applicant admits that the joint venture, consisting of all three corporations, was and is the owner of the mark and of the Korean application and resulting registration (brief, p.2), but contends that the designation of one corporation as the owner in the United States application is a mistake which applicant should be allowed to correct by amendment. Applicant cites, as support for its position, In re Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982); U.S. Pioneer Electronics Corp. et.al. v. Evans Marketing, Inc., 183 USPQ 613 (Comm. Pats. 1974); and Argo & Co., Inc. v. Springer et al., 189 USPQ 581 (TTAB 1976); and attempts to distinguish Howe Sound Co. v. Vitza-Zahfabrik H. Rauter "o". H.G., 134 USPQ 348 (TTAB 1963). None of this case law supports the acceptance of applicant's proposed amendment.
The Techsonic case, supra, stands for the proposition that an application filed by one who is not the owner of the mark sought to be registered is a void application. This is exactly what happened in the case at hand. The joint venture owns the mark, but the application was filed by another legal entity, a corporation which was one member of the joint venture. In the Techsonic case a proposed amendment changing the way the owner was identified was permitted because the owner had been incorrectly identified in the original application. The mistake was held correctable because throughout the entire period in question there had been only a single entity which had owned the mark. The U.S. Pioneer Electronics case cited by applicant also stands for these principles. There the word "Company" was stricken from "Evans Marketing Company, Inc." In the case at hand, although there has apparently been only one entity which has owned the mark in question, it is not now and has not ever been the applicant, Tong Yang Cement Corporation, so those cases do not support applicant's position.
The Argo case, supra, also presented a factual situation which is not analogous to the situation before us in the instant case. There the application was amended to substitute three individuals for the corporation which had filed the application. After the filing of the application and the institution of opposition proceedings, a court held that the attempted incorporation had been defective and that ownership of the mark lay with the three individuals. The Board found that substituting their names for that of a legally defective corporate applicant was simply correcting a mistake in the way the applicant should have been identified in the first place. In the case at hand the owner is and apparently always has been the joint venture, whereas the applicant is and was at the time of the filing of the application a properly established corporation, which has never itself been entitled to registration based on its use or registration of this mark.
*3 The Howe Sound case, supra, was cited by the Examining Attorney and it is agreed by applicant not to apply because in that case the entity identified in the application was no longer in existence when the application was filed. We agree that this case does not control the one before us now, but it is not inconsistent with our ruling either.
Applicant seems to argue that because the other two joint venturers were named in the now-stricken language of the application as it was filed, and because the translation of the Korean application which accompanied the original U.S. application clearly showed the joint venture as the owner of the Korean application, the proposed amendment should be permitted. Neither of these facts alters the fact that the filer of the U.S. application was not the owner of the Korean application, however, and nowhere in the U.S. application did the applicant indicate that the other two corporations owned any rights to the mark in connection with the goods specified in this application.
In summary, amendment of the application to identify the applicant as a joint venture made up of the three named Korean corporations is improper because the application was filed by another legal entity, and the application is void ab initio because the applicant entity, Tong Yang Cement Corporation, never owned either the mark or the Korean application upon which the U.S. application is based. The refusal to register based on Section 1 is therefore affirmed. The joint venture which owns the mark and the Korean registration is, of course, free to apply for U.S. registration based on the Korean registration.
R. F. Cissel
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. S.N. 73/730,247 was filed on May 23, 1988.