Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WELLS FARGO & COMPANY
v.
LUNDEEN & ASSOCIATES
Opposition No. 84,203
July 19, 1991
Before Sams, Rice and Quinn
Members
By the Board:
J.D. Sams, J.E. Rice and T.J. Quinn
Members
Lundeen & Associates filed an intent to use application to register the mark "EXPRESS CHECKIT" for "computer programs for home banking".
Registration was opposed by Wells Fargo & Company essentially on three grounds. These are: (1) Opposer's allegedly prior use and registration of the marks "EXPRESS COVERAGE, EXPRESS DEPOSIT, EXPRESS SAVINGS, EXPRESS STOP" for banking services and "MICROEXPRESS" for computer programs and the allegation of likelihood of confusion; (2) the allegation that applicant's mark is merely descriptive; and (3) the allegation that "applicant has improperly used and has authorized the improper use by others of the federal registration symbol in connection with its claimed mark "EXPRESS CHECKIT" with the intention of deceiving and misleading the public and such improper use of the federal registration symbol when the claimed mark has not been so registered constitutes fraud" fraud."
Applicant, in lieu of answer, on April 26, 1991, filed a motion to dismiss or, in the alternative, a motion to strike the allegations of the opposition respecting the alleged misuse of the federal registration symbol. Inasmuch as applicant's motion attacks, in essence, the sufficiency of one of opposer's grounds for opposition, applicant's motion will be construed as one to dismiss under Fed.R.Civ.P. 12(b)(6). See, 5A Wright and Miller, Federal Practice and Procedure § 1380 (2nd ed. 1990).
Applicant, in support of its motion, argues that the allegations of the opposition respecting the alleged improper use of the federal registration symbol fail to state a claim upon which relief can be granted, or are otherwise immaterial and impertinent to the issue of registrability of applicant's mark, inasmuch as: (1) the Office appears to no longer regard intentional misuse of the federal registration symbol as a ground for refusal of registration; (2) the notice of opposition fails to allege that the alleged fraud had any bearing on the prosecution of applicant's intent-to-use application because no statement of use nor an amendment to allege use has, as yet, been filed; and that in the absence of some fraud on the Office, even intentional premature use of the federal registration symbol cannot serve as a bar to registration.
Opposer argues that it is settled that the intentional misuse of the federal registration symbol can defeat an applicant's right to registration in an inter partes proceeding and that there is no reason why this ground should not be considered where a mark has been in actual use, even though no statement of use has, as yet, been filed.
Applicant has submitted a reply brief and opposer has submitted a motion to strike applicant's reply brief and, alternatively, has moved to strike the evidentiary affidavit of Timothy Lundeen, submitted by applicant together with its reply brief in further support of applicant's motion.
*2 As a preliminary matter, opposer's motion to strike applicant's reply brief and to strike the affidavit of Timothy Lundeen is well taken. The Trademark Rules of Practice make no provision for the filing of a reply brief, and while the Board has exercised its discretion to consider such a brief in circumstances where, in fairness, the moving party must be allowed an opportunity to respond to the allegations of the non-moving party's brief, we see no such circumstances here. Moreover, on a motion to dismiss for failure to state a claim under Fed.R.Civ.P. 12(b)(6), the Board may not consider matters extrinsic to the pleadings unless the Board intends to treat the motion as one for summary judgment and allows each party an opportunity to furnish evidentiary materials with respect thereto. The Board does not deem this an appropriate case to convert the motion to dismiss into one for summary judgment. Accordingly, the reply brief of applicant and the evidentiary affidavit of Timothy Lundeen have been given no consideration in our disposition of applicant's motion.
Turning now to the merits of the motion to dismiss, opposer's arguments are well-taken. Improper use of the federal registration symbol by an applicant can defeat an applicant's right to registration where misuse of the symbol is occasioned by an intent to deceive the purchasing public or others in the trade into believing that the mark was registered. See e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, (CCPA 1976); Knorr-Nahrmittel Akg v. Havland International, Inc., 206 USPQ 827 (TTAB 1980). See generally, 1 McCarthy, Trademarks and Unfair Competition § 19:53 (2nd ed. 1984). Applicant's reliance on TMEP Sections 902.02 and 902.02 is misplaced. These sections mean only that the Office has recognized that an examining attorney is in a singularly poor position to determine questions of fraud and that therefore the examining attorney no longer will require an explanation from the applicant respecting the premature use of the federal registration symbol as a prerequisite to obtaining federal registration. TMEP Sections 902.02-.03 do not mean that fraudulent misuse of a registration symbol is no longer an issue in an inter parties proceeding. Moreover, a party's intentional misuse of the federal registration symbol in an effort to deceive the public does have a bearing on an intent-to-use applicant's right to registration. An intent-to-use application ultimately is dependent upon actual lawful use in commerce in order to result in a registration. We see no reason why the Trademark Trial and Appeal Board should not hear, in an opposition proceeding, any facts which can serve to defeat an applicant's right to registration at that time, including fraudulent misuse, even though a formal statement of use has not yet been filed.
In view of the above, applicant's motion to dismiss is denied. Applicant is ordered to file its answer to the opposition within twenty days of the mailing date of this order.
J.D. Sams
J.E. Rice
Members, Trademark Trial and Appeal Board