Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE W.R. CASE & SONS CUTLERY COMPANY
Serial No. 669,662
August 23, 1989
Michael T. Platt, Stanford W. Berman, Irwin M. Aisenberg, Samuel D. Littlepage and Conrad J. Clark for applicant
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Sams, Simms and Cissel
Applicant seeks registration of the mark shown below on
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the Principal Register for "pocket knives and fixed blade and folding hunting knives." [FN1] The application states that "[t]he Flying C trademark in substantially the same form was first used on the goods at least as early as 1895; was first so used in interstate commerce at least as early as 1895 and is now in use in such commerce." The specimens submitted with the application show the mark as it appears in the drawing engraved on the blade of a knife. In the application applicant also claimed ownership of Registration Nos. 541,284 [FN2] and 541,917, [FN3] for the mark shown.
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The Examining Attorney advised applicant that if its claimed dates of first use were based on use of the previously registered mark, which includes the letters "ASE" in addition to the letter "C", such claim was inappropriate because the use of the registered mark was not "substantially the same" as use of the mark shown in the application. Concluding that "the commercial impression is materially affected by the presence of the letters 'ase'," the Examining Attorney required amendment of the application to indicate the first use "of the mark in the form shown on the drawing, without the letters 'ase'."
When the requirement for amendment of applicant's date of first use was made final, applicant appealed.
Both the Examining Attorney and the applicant have filed briefs arguing the case as if mutilation were the issue before us. Our dissenting colleague states that it is "peripherally involved." Mutilation is not the issue. The mark shown on the specimens is the mark shown in the drawing. There is no question that the "Flying C," as applicant describes its mark, functions by itself to identify and distinguish applicant's knives. The sole issue before us is whether or not applicant should be required to amend its application to assert a different date of first use.
The requirement that an applicant for registration state the date on which it first used the mark it seeks to register and the date on which it first used that mark in commerce that may be regulated by Congress is embodied in Section 1 of the Trademark Act, as follows:
The owner of a trademark used in commerce may register his trademark under this Act on the principal register hereby established: (a) By filing in the Patent and Trademark Office--(1) a written application ... verified by the applicant ... specifying applicant's domicile and citizenship, the date of applicant's first use of the mark, the date of applicant's first use of the mark in commerce, the goods in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods....
*2 The statutory requirement for specifying dates of use serves to elucidate the Section 1 ("use in commerce") basis on which the applicant is filing its application and to give notice to the public (including competitors) of the extent of the applicant's claim of rights in the mark it seeks to register.
A Section 1 basis for registration exists if an applicant used the mark it seeks to register prior to the filing date of its application to register. Thus, if an applicant's claimed dates of first use are inconsistent with a claim of a basis for registration under Section 1, that is, if the applicant states dates of use that are subsequent to the filing date of the application, the Examining Attorney is obliged to challenge those stated dates and to refuse registration if the dates are not amended. In such case, the statutory basis for refusal is that the applicant had not used its mark as of the filing date of the application and, thus, has no "use in commerce" basis, under Section 1 of the Trademark Act, for registration of its mark.
The question that arises in this case is whether there exists a statutory basis for refusing registration where the record makes clear that the applicant used the mark it seeks to register, in commerce, at some time prior to the filing date of the application but where the Examining Attorney believes that the specific dates of first used claimed by the applicant are not borne out by the evidence of use appearing in the ex parte record. More particularly, the issue presented is whether the Examining Attorney may refuse registration based on his disagreement with applicant's claim that it is entitled to claim rights in the mark for which it seeks registration dating from its first use of the mark in another form. We find that there is no statutory basis for refusing registration in this case.
The Board has held, in the context of inter partes proceedings, that a plaintiff does not state a claim for opposition or cancellation by merely pleading that the dates of use claimed by an applicant or registrant in its application to register were incorrect. See CarX Service Systems, Inc. v. Exxon Corp., 215 USPQ 345, 351 (TTAB 1982). A plaintiff must, instead, plead and prove that there was no use of the mark prior to the filing date and, thus, no Section 1 basis for registration. It would appear inappropriate to find, as a proper basis for ex parte refusal of registration, an allegation that would not state a claim for opposition or cancellation and, thus, could not be asserted in an inter partes proceeding.
We recognize, of course, that there are certain grounds for refusal of registration that, although inappropriate for assertion in inter partes proceedings, may be asserted by the Examining Attorney. The Examining Attorney may refuse registration on the basis of an applicant's refusal to comply with application filing requirements set by the Commissioner, under authority of the Trademark Act, such as applicant's refusal to comply with drawing format requirements, classification requirements, or rules relating to the size of specimens. Here, it should be emphasized, the only statutory requirement is that applicant state the extent of its claim of use of the mark it seeks to register by making of record the date of first use and the date of first use in commerce that it would seek to prove in establishing its priority of use vis-a-vis other parties' use, should the issue of priority arise in inter partes proceedings.
*3 In finding that there is no statutory basis for refusal in this case, we do not intend to foreclose all inquiry by the Examining Attorney concerning the claimed dates of first use. It obviously serves an applicant's interest and that of the public to state as accurately as possible the extent of applicant's claim of rights. Thus, it is perfectly appropriate for the Examining Attorney to seek clarification of the record if he or she has doubts about the accuracy of the dates of use claimed in the application. The Examining Attorney may even refuse registration when, after inquiry by the Examining Attorney, applicant refuses to clarify for the record whether the claimed dates of first use reflect the earliest dates on which applicant believes it may rely in establishing its priority in the particular mark it seeks to register. But where, as in this case, the matter becomes one not of a refusal to clarify the extent of applicant's claim, but of honest disagreement between the applicant and the Examining Attorney as to whether that claim could withstand legal challenge, the Examining Attorney's authority under the Trademark Act does not extend to refusing registration if applicant declines to amend its claim of dates of first use to conform to the Examining Attorney's conclusion on this point (unless, as noted, the claimed dates of use are subsequent to the filing date).
As for the concern that a potentially incorrect statement of dates of use might be prejudicial to competitors or the public, we note that the claim of dates of first use made in an application is not evidence probative of actual use in any proceeding in which priority is at issue. Trademark Rule 2.122 provides that, in inter partes proceedings, the date of first use specified in a registration is not proved by the registration certificate, but rather must be established by competent evidence. Moreover, with respect to the question of the evidentiary effect of the claimed dates of use, there may be good reason for an applicant, in claiming dates of first use, to claim any use on which it may ultimately seek to rely for priority purposes. That is to say, dates of first use claimed in an application have been held to be an admission against interest where a party involved in an inter partes proceeding attempts to prove that it used its mark earlier than the date of first use stated in its application for registration. See Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773-4 (Fed.Cir.1987).
We note further that it is our responsibility to resolve a controversy such as this based on our view of the requirements of the statute and the rules, irrespective of any contrary interpretation embodied in the Trademark Manual of Examining Procedure. The purpose of the manual is to reflect accurately both the law and Office practice and procedure, but the manual does not establish the law.
Aside from finding that, in the circumstances here presented, there is no statutory authority for the Examining Attorney to refuse registration for applicant's failure to amend its claim of dates of first use to those dates dictated by the Examining Attorney, we would make one additional point. We believe that deciding what previously used variations of a mark may be relied on in establishing priority and which previously used variations may not or, as in this case, determining at what point a particular component of a composite mark previously used by applicant became recognized as a mark, separate and apart from the composite, is best accomplished in an inter partes proceeding, where evidence may be introduced by the parties who have a stake in the decision as to the date of use on which applicant may rely in attempting to establish priority of use. We expressly do not decide that issue on this appeal.
*4 Decision: The refusal to register is reversed.
J. D. Sams
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. S.N. 669,662 was filed July 1, 1987.
FN2. Issued April 24, 1951; renewed.
FN3. Issued May 8, 1951; renewed; the mark also includes the word "TESTED" in small letters next to the double "X"s.
R. L. Simms
Because I believe that the Examining Attorney was within his discretion in seeking clarification of, and requiring an amendment to, applicant's allegation of dates of use, I would affirm.
There is no question that applicant is now using the mark sought to be registered ("Flying C logo" or "Flying C") as a trademark for its pocket knives and hunting knives. [FN1] That is not the issue before us. Rather, the issue before us is whether applicant should be required to state when it first used that mark.
In the application, applicant states:
The Flying C trademark in substantially the same form was first used on the goods at least as early as 1895; was first so used in interstate commerce at least as early as 1895 and is now in use in such commerce ...
Applicant is the owner of Registration Nos. 541,284 dated April 24, 1951 (renewed) and 541,917 dated May 8, 1951 (renewed).
Based upon these statements, the Examining Attorney in his initial Office action made the following inquiry:
The Applicant claims first use of the "Flying C trademark in substantially the same form" [emphasis in original] at least as early as 1895. If this usage was in the form of the mark shown in its prior registrations (Reg. No(s). 541,284 and 541,917), the mark shown in this application is not substantially the same. The commercial impression is materially affected by the presence of the letters "ASE," forming the name "Case." The Applicant must amend the application to indicate the first usage of the mark in the form shown on the drawing, without the letters "ASE." Any change in the dates of use must be verified by an affidavit or declaration (37 CFR Section 2.20), signed by an officer of Applicant.
With this action, the Examining Attorney made of record computer-generated copies of applicant's claimed registrations showing the mark in the form reproduced in the majority opinion ("Case" and design).
Applicant replied that the Flying C which appears as a part of the "composite" marks shown in the early registrations is the same as the mark shown in the drawing of the application, except that the original "C" is slightly flattened.
The fact that it was first used as a part of the composite mark, however, and that certain elements of the composite mark were deleted does not change the fact of the date of first use of the mark shown by the application. There has also been no substantial or material change in the mark sought to be registered from the form in which it was first used. Thus, the date claimed is accurate and should not be amended. (Applicant's Amendment and Remarks, filed March 16, 1988, 2).
*5 The Examining Attorney takes the position that the Flying C is not a separable component of the mark originally used ("Case" and design), and that applicant cannot therefore rely on the first use of that "unitary mark" as the date of first use of the component. The Examining Attorney required applicant to indicate the dates of first use of the Flying C mark without the letters "ase." I would affirm the refusal in the absence of compliance with this requirement.
First, I disagree with an apparent premise of the majority opinion that it is improper for an Examining Attorney to refuse registration on the basis of an allegation that would not form a ground for opposition or cancellation in an inter partes proceeding. There are numerous requirements in the rules (not statutory requirements) that must be complied with in order for an applicant to qualify for registration. These requirements pertain to the drawing (character of drawing so that it will reproduce, size of drawing, etc.), to specimens and to numerous other matters in the written application itself (name of applicant, description of goods and services, designation of class, form of verification, etc.). The fact that it might not be a ground for opposition that an applicant has not complied with certain rules relating to these matters does not mean that an Examining Attorney is foreclosed from requiring full compliance with the rules. Therefore, I think that the majority errs when it makes the analogy between a proper basis for an ex parte refusal and a proper claim or ground in an opposition or cancellation.
In my view, this case does not present a substantially different issue from this situation: An applicant seeks to register the letter "A," now being used as a mark, and asserts as the first use thereof the date when it used that letter as a part of the mark "Acme." The reason he may not do so is, of course, that his claim is incorrect--the use of the mark "Acme" is not use of the mark "A." Applicant must therefore indicate in the application when he first used the letter "A" as a mark.
While the issue of "mutilation" per se is not before the Board because applicant is not seeking to register the Flying C logo based upon use of the mark "Case" and design (since applicant is now using the Flying C mark alone), it is peripherally involved because applicant is claiming as its date of first use the date when, according to the Examining Attorney, applicant used the Flying C as an integral part of another mark. If, as contended by the Examining Attorney, the Flying C is an inseparable component of that mark, then applicant should not be able to claim herein as the date of first use of the Flying C the date when that different mark was first used. If, on the other hand, the stylized "C" is viewed as a separable component of the earlier used mark (and therefore not a "mutilation"), then its claim herein is appropriate.
While it is true that a stylized "C" similar to the Flying C mark sought to be registered is incorporated into the earlier used marks which are the subject of applicant's claimed registrations, in my opinion this application does not represent an attempt to register a separable component of a composite mark, but rather an improper attempt to rely upon a use date of an integral portion of a word mark. It is clear that an applicant may register separately an element of a composite mark (and claim as the date of first use the first use of the composite) if the element creates a separate and distinct impression from the remaining elements of the composite and serves to identify and distinguish applicant's goods. Such applications are typically filed in "background" cases where an applicant seeks to register an element, such as the background design, which creates a separate commercial impression from the remainder of the mark, typically a word mark. There, the question is whether the element of the composite performs a trademark function in and of itself. In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1829 (Fed.Cir.1988) and In re Sperouleas, 227 USPQ 166, 167 (TTAB 1985). In such situations, of course, the remainder of the mark also represents a separate commercial impression. This cannot be said here because the Flying C is an integral part of the "Case" word mark, which is materially altered when the Flying C is removed (i.e., "ase" instead of "Case" remains). In other words, the Flying C in the mark "Case" and design does not create a separate commercial impression; nor do the letters "ase." Contrary to applicant's contention, the fact that the "C" in the original mark "("Case" and design) may be the single most prominent visual feature does not mean that it alone creates a separate commercial impression, that is, is a trademark itself. [FN2] It must be recognized that we are not simply dealing with a design element, but an integral part of a word mark. Compare In re Hickory House Motel Enterprises, Inc., 152 USPQ 518 (TTAB 1966) (HI-H does not create a commercial impression separate and apart from display of marks HI-WAY HOST and HICKORY HOUSE, where "H" 's in both marks are linked) and In re Industrial Condenser Corp., 123 USPQ 458 (TTAB 1959) (In mark STABELEX "D", "D" does not create separate commercial impression and is not registrable by itself).
*6 Also, contrary to applicant's argument, it is a comparison of the two marks ("Case" and design and Flying C) which must be made to determine the question of commercial impression and not the Flying C's in the two marks. The mark "Case" is pronounced differently and has a different significance (that of a surname or perhaps a term suggesting case-hardened knives) from that of the Flying C mark alone. Nor are the cases cited by applicant involving a mere change in the form of the same mark apposite. In those cases, both marks convey the same significance or commercial impression. Those cases would be relevant were applicant here trying to register a mark comprising a minor variation in the stylization of a previously used mark as long as the modified display of the mark and the original mark created the same continuing commercial impression.
Moreover, I believe what the Examining Attorney has done in this case is consistent with Office practice as embodied in the Trademark Manual of Examining Procedure. For example, where an applicant seeks to register a composite mark (word and design, for example), the Manual requires that dates of first use for the composite must be set forth. TMEP Section 806.09. The Manual notes, however, that there is no objection to inclusion of a statement of earlier use of a separable element of the composite (the word mark, for example), if applicant wishes to do so. Similarly, while this applicant should set forth when it first used the Flying C mark per se, applicant may state, if it wishes, that the Flying C was first used as a part of the word mark "Case" as early as 1895. Such a statement is adequate to put others on notice of any claims applicant makes.
Finally, I do not believe that an affirmance of the Examining Attorney's requirement in this case would needlessly result in numerous appeals requiring the Board to make evaluations of the validity of claims in the dates of use clauses. Only where there is information in the record, such as here, is the Examining Attorney at liberty to make inquiry concerning a statement made in that clause. In similar situations where there is information in the record which leads the Examining Attorney to believe that a statement in the dates of use clause is inaccurate, an Examining Attorney may make legitimate inquiry. See TMEP Sections 806.10 and 806.11. Therefore, and because I believe that the Examining Attorney has the authority and discretion to make this reasonable and fully justified requirement, applicant should be required to indicate when it first used the Flying C alone as a trademark (without the letters "ase"). I would affirm the refusal of registration without compliance with this requirement. [FN3]
FN1. The specimens of record show that applicant is using a serial number after the Flying C mark. Upon inquiry, applicant explained that a different serial number appears on each knife produced by applicant and that the serial number is not part of the mark. The Examining Attorney has accepted this explanation.
FN2. I note that applicant has given no factual basis for its belief that customers viewed the "C", used as a part of the mark "Case" and design, as a separate mark (before the "C" was used separately), so that the Examining Attorney's position could be judged as unreasonable. See In re Chemical Dynamics Inc., supra.
FN3. The majority states that because this case involves an "honest disagreement" over applicant's claim, the Examining Attorney has no "authority" to refuse registration if applicant declines to amend the dates of use clause. I cannot agree. To change the "Acme" hypothetical slightly, if an applicant seeks to register the letter "A" on the basis of use only of the mark "Acme," the Examining Attorney would have "authority" to refuse registration in the absence either of an amendment to the mark in the drawing (to show "ACME") or of the submission of previously used and supported specimens showing use of the letter "A" as a mark. This would be so despite the fact that there may be an "honest disagreement" over what applicant's mark is, applicant believing that use of "Acme" supports his claim that he has rights in the letter "A." Almost every appeal we see involves an "honest disagreement" of one type or another.