Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SHERLOCK'S HOME, INC.
TIPPLING HOUSE LIMITED
Opposition No. 78,190
February 23, 1989
J.D. Sams, G.D. Krugman and E.J. Seeherman
An application has been filed by Tippling House Limited, a Canadian corporation, to register the mark "THE SHERLOCK HOLMES" AND DESIGN for "restaurant, bar and lounge services." The application was filed based solely on use in commerce with the United States.
Registration was opposed by Sherlock's Home, Inc. on the grounds, in essence, that applicant has not rendered any restaurant, bar or lounge services in the United States or United States commerce under the term "THE SHERLOCK HOLMES" AND DESIGN and that, therefore, the involved application is void ab initio. Additionally, opposer alleges that since at least as early as April 29, 1988, opposer has used the mark "SHERLOCK'S HOME" AND DESIGN for restaurant, bar and lounge services actually rendered in commerce and that applicant's mark so closely resembles opposer's mark as to be likely to cause confusion, to cause mistake, or to deceive.
Applicant, on July 20, 1988, filed its answer to the opposition. Applicant, in its answer, essentially denied the salient allegations of the opposition and alleged as an affirmative defense, inter alia, that opposer adopted its mark with full knowledge of applicant's long prior use of its mark and with the intent to capitalize upon applicant's goodwill. Following disposition of a motion to dismiss, trial dates were set.
Subsequently, on August 31, 1988, applicant filed a certified copy of Canadian Registration No. 321,146, which had issued prior to the filing date of applicant's U.S. application, together with an ex parte request that the Canadian registration be placed "of record" in the file of the application which is the subject of this proceeding.
The Board construed applicant's ex parte request as a motion for leave to amend its application to assert Section 44(e) as an additional basis for registration and allowed the parties time to submit briefs on this issue. The motion has been fully briefed.
Applicant, in support of this motion, alleges that there exists no issue that opposer commenced use of its mark after publication of applicant's mark. Applicant also alleges that opposer was aware of applicant's Canadian registration. Accordingly, applicant argues that opposer cannot be prejudiced by the amendment sought since opposer adopted and commenced use of an allegedly confusingly similar mark with full knowledge of applicant's prior use of its own mark.
Opposer, in opposition to applicant's motion, argues that it is the owner of two United States applications for the marks "SHERLOCK'S HOME" and "SHERLOCK'S HOME" AND DESIGN for "bar and restaurant services" with filing dates preceding the date of submission of applicant's certified copy of its Canadian registration; that a filing date cannot be assigned to a Section 44(e) application until a certified copy of the foreign registration is filed; that therefore the filing date of applicant's application for purposes of Section 44(e) should be considered the date of submission of applicant's Canadian registration, together with its request for amendment; and that to allow applicant to amend its application without changing the effective filing date of applicant's application would result in prejudice to opposer by depriving opposer's pending applications of the benefit of an earlier filing date as against applicant's Section 44(e) claim.
As a preliminary matter, we agree with opposer that it would be unfair to allow applicant to retain the benefits of an earlier filing date, if opposer were able to prove at trial that applicant's claim of use in commerce is invalid. Accordingly, even if we were inclined to grant applicant's motion, which we are not, this would afford applicant little benefit, since we would do so only on the understanding that, if opposer were able to prove at trial that applicant's claim of use in commerce was invalid, the effective filing date of applicant's United States application be changed to the date of receipt, by the Patent and Trademark Office, of applicant's Canadian registration. See, Trademark Rule 2.21(a)(6). Since opposer has pleaded a date of use in commerce prior to the date of filing of applicant's Canadian registration in the United States, this would afford applicant little benefit.
More fundamentally, however, the problem with applicant's motion to amend is that it generally is not the policy of the Board to approve amendments that might result in a change in the effective filing date of an application after publication. As indicated earlier, if opposer were able to prove at trial that applicant had made no use in commerce of its mark prior to the filing date of applicant's U.S. application, yet applicant were able to prevail in the opposition, the change from use in commerce to add Section 44(e) would require a change in the effective filing date of applicant's United States application. [FN1] This would promote neither consistency nor stability in the United States registration process since, as a purely practical matter, there would be no way to apprise Examiners of the change in the effective filing date before applicant's mark proceeded to registration. Thus, other third party applications, now with earlier filing dates than applicant's U.S. application, because of the change in applicant's effective filing date, might well be held up while applicant's application, contrary to the intention of the Lanham Act and Office policy, proceeded to registration. Since our rules provide that an applicant may claim, at the time of filing, as many bases for registration to which applicant may be entitled, we believe that the burden for failing to make these claims in a timely, reasonable manner should fall squarely on the applicant.
For these reasons, we believe that general principles of equity and fairness mandate that one claiming the benefits of Section 44 do so in a timely, seasonable manner. As stated by the Board in a recent case involving a similar question:
Since the requirements concerning Section 44 require examination of various matters by the Examining Attorney and since a mark published for opposition gives notice to the public of the details concerning an application, including the alleged date of first use and/or information concerning the corresponding foreign registration, we believe a Section 44 claim is seasonable if made during the ex parte prosecution of the application when the Examining Attorney has jurisdiction over the case. Where, as here, the application is taken out of the Examining Attorney's jurisdiction, by being published for opposition, any amendment to add Section 44 as a basis for registration (or to change the basis from use in commerce to Section 44) is, in our view, untimely. This policy is consistent with our long held position that an opposer generally is entitled to an adjudication of the issues raised by it against an application as published for opposition.
*3 Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., --- U.S.P.Q.2d --- (TTAB 1989).
In view thereof, applicant's motion to amend is denied. Accordingly, applicant's application will proceed to trial based solely on the allegations of use in commerce.
The Board notes, however, that applicant has pleaded, as an affirmative defense, that opposer adopted its mark in bad faith, in essence, with full knowledge of applicant's prior rights in its own mark. It is unclear to the Board whether applicant is referring to applicant's prior rights in United States commerce, or elsewhere. Nevertheless, in case applicant intends to prove at trial that opposer had knowledge of applicant's use in Canada and of applicant's Canadian registration prior to adoption and use by opposer of its own mark, it should be emphasized that the sole issue decided herein today is whether applicant's application can be amended, at this stage, to claim the benefits of Section 44(e) of the Lanham Act. The issue of whether opposer's knowledge of applicant's prior use in Canada and/or its Canadian registration when coupled with a showing of intent, should invalidate opposer's claim to priority is an issue not foreclosed at trial by our ruling herein.
Accordingly, proceedings herein are resumed and trial dates, including the period for discovery, are rescheduled as set forth in the accompanying trial order.
Members, Trademark Trial and Appeal Board
FN1. The Board notes that Trademark Manual of Examining Procedure Section 706 provides that during the ex parte prosecution of an application, the applicant may amend an application based solely on use in commerce to rely also on a foreign registration and that the effective filing date of the United States application remains the same. This section, however, does not contemplate a situation in which the original basis of use in commerce is dropped and the basis of a foreign registration is substituted in its place. Nor does it contemplate a situation, as here, in which the original basis of use in commerce is alleged to be invalid and therefore is not followed for our purposes herein.