PMSI, Inc.

Trademark Trial and Appeal Board

Jun 3, 2009

No. 76667397 (T.T.A.B. Jun. 3, 2009)

Mailed:
June 3, 2009
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re PMSI, Inc.
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Serial No. 76667397
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Stanley B. Kita of Howson & Howson LLC for PMSI, Inc.

Deirdre G. Robertson, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before Hairston, Walsh and Ritchie, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

PMSI, Inc. (PMSI) has appealed the Examining
Attorney’s repeated refusal to approve the statement of use
in this case on the grounds that the applicant, that is,
the owner of the application and mark, did not file the
statement of use. We will recount the relevant facts which
are not in dispute.
On October 13, 2006, AmerisourceBergen Corp. (ABC)
filed the involved application to register the mark PMSI
MSA in standard characters for services identified as
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76667397
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“healthcare cost containment, namely, medical, pharmacy,
durable medical equipment and specialty service
reimbursements for third party payers under government
sponsored programs” in International Class 35. ABC filed
the application under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b), based on a statement of its bona fide intention
to use the mark in commerce. The application was published
for opposition on January 8. 2008. On April 1, 2008, the
USPTO mailed the notice of allowance which required ABC to
file a statement of use within six months of the mailing
date, that is, by October 1, 2008.
On September 8, 2008, ABC signed a statement of use
with regard to Application Serial No. 76667397. Also on
September 8, 2008, and after signing the statement of use,
ABC signed an assignment of the PMSI MSA mark and
Application Serial No. 76667397, among other things, to
PMSI, Inc. (PMSI). We conclude that the assignment took
effect immediately when ABC signed the assignment document.
Nothing in the document indicates otherwise, and indeed,
PMSI does not argue otherwise.
On September 10, 2008, ABC mailed the statement of use
to the USPTO with a certificate of mailing. The USPTO
received the statement of use on September 12, 2008. On
September 11, 2008, PMSI transmitted the document assigning
Serial No. 76667397
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the PMSI MSA mark and Application Serial No. 76667397 from
ABC to PMSI electronically to the USPTO for recording. The
USPTO recorded the assignment document on that same date,
September 11, 2008. The Examining Attorney did not issue
an office action on the statement of use until October 9,
2008. Neither ABC nor PMSI filed a request for an
extension of time to file the statement of use in this
case. Therefore, the time to file a new statement of use
or to correct any substantive defects in the statement of
use had expired by the time the Examining Attorney acted on
the statement of use.
The Examining Attorney argues that ABC, identified as
the applicant and owner of the mark in the statement of
use, was not the owner of the mark or the application on
the date ABC filed the statement of use, September 10,
2008.
Applicant argues,
The Examining Attorney improperly held that ABC
was not the owner of the mark when the SOU was
filed on September 10, 2008. As of that date,
the USPTO records would have shown that ABC, the
original Applicant, was the owner of record of
the application and entitled to take action,
namely to file a SOU to issue the allowed
application for registration. The assignment to
PMSI was submitted the day after the SOU was
filed for the purpose of insuring that the
registration would issue in the name of the
assignee of the mark and goodwill pursuant to
§ 502 T.M.E.P.
Serial No. 76667397
4

Applicant’s Brief at 4-5 (emphasis in the original).
In its argument PMSI focuses on the impact of the
timing of the recording of assignment, but PMSI discounts
the importance of the timing of the assignment itself,
citing Assignment Rule 3.54, which states,
The recording of a document pursuant to § 3.11 is
not a determination by the Office of the validity
of the document or the effect that the document
has on the title to an application, a patent, or
a registration. When necessary, the Office will
determine what effect a document has, including
whether a party has the authority to take an
action in a matter pending before the Office.

37 C.F.R. § 3.54 (emphasis added).
PMSI argues further that the discrepancy underlying
the refusal here is merely the result of its own early
attention to the recording of the assignment and the
promptness of the USPTO in effecting the recording through
its electronic system. PMSI also argues that its intent
was obvious when one views the sequence in the timing of
the signing of the statement of use and the assignment.
The fundamental flaw in applicant’s argument is that
it fails to address the effect of the assignment on the
application and the statutory requirements attendant to the
filing of a statement of use. To decide this appeal, we
must first consider the effect of the assignment applicant
recorded as Assignment Rule 3.54 contemplates. The only
Serial No. 76667397
5
conclusion we can draw from our review of the assignment
document applicant recorded is that the document effected a
transfer of ownership of the application on September 8,
2008. The effect of that document was to transfer
ownership of the application from ABC to PMSI on that date.
Therefore, on September 8, 2008, PMSI stepped into the
shoes of ABC as owner of the application. PMSI became “the
applicant.”
Trademark Act Section 1(d)(1), 15 U.S.C. § 1051(d)(1),
requires, in relevant part, that “Within six months after
the date on which the notice of allowance with respect to
the mark is issued … the applicant shall file in the Patent
and Trademark Office … a verified statement that the mark
is in use in commerce….” 15 U.S.C. § 1051(d)(1) (emphasis
added). On September 10, 2008, when ABC filed the
statement of use, PMSI, not ABC, was “the applicant.”
Therefore, the statement, which ABC filed, was not in
compliance with the statutory requirement. See In re
Colombo Inc., 33 USPQ2d 1530 (Comm'r Pat. 1994).
In fact, we would reach the same conclusion whether or
not there had been an attempt to record the assignment.
The prompt filing and recording of the assignment document
simply disclosed the existence of the defect in the filing
of the statement of use to the Examining Attorney. In the
Serial No. 76667397
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absence of the recording, the defect would still be present
and could potentially serve as grounds for attacking any
resulting registration. See Huang v. Tzu Wei Chen Food Co.
Ltd., 849 F/2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988). Faced
with the knowledge of the assignment, the Examining
Attorney’s action was entirely proper in this case.
Before concluding we hasten to add that we have no
doubt that both ABC and PMSI acted with the best intent and
even in earnest to secure early issuance of the
registration in the assignee’s name. We regret that ABC
and PMSI failed to comply with the statutory requirements
in the process. ABC and PMSI could have avoided this
circumstance simply by filing the statement of use before
effecting the assignment.
Decision: We affirm the refusal on the grounds that
ABC was not “the applicant” when ABC filed the statement of
use.