John Michael Brack

Trademark Trial and Appeal Board

Mar 31, 2015

No. 85483943 (T.T.A.B. Mar. 31, 2015)

This Opinion is a
Precedent of the TTAB

Mailed: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John Michael Brack
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Serial No. 85483943
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Luke Brean of Breanlaw LLC for John Michael Brack.

Amy E. Hella, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
_______

Before Cataldo, Ritchie and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, John Michael Brack, filed an application to register on the
Principal Register the mark SIMPLY ORANGECELLO (standard characters)
for “alcoholic beverage, namely, orange flavored liqueur” in International
Class 33.1 During prosecution of the involved application, Applicant
disclaimed “ORANGECELLO.”

1 Application Serial No. 85483943 was filed November 30, 2011, based upon
applicant’s allegation of his bona fide intent to use the mark in commerce.

Serial No. 85483943

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The Examining Attorney noted that Applicant failed to sign and verify the
involved application as required by Sections 1(a)(3), 1(b)(3) and 44 of the
Trademark Act, 15 U.S.C. §§ 1051(a)(3), 1051(b)(3) and 1126, and required
Applicant to submit the verification by signed affidavit or declaration under
Trademark Rule 2.20, 37 C.F.R. § 2.20.
The Trademark Examining Attorney also refused registration of the
application under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the basis of likelihood of confusion with the mark CARAVELLA
ORANGECELLO (typed drawing, equivalent of standard characters)2 issued
for “alcoholic beverage, namely, orange flavored liqueur” in International
Class 33.3
When the refusal and requirement were made final, Applicant appealed.
Requirement for Verification
Applicant filed the involved application online using the Trademark
Electronic Application System (TEAS). A review of the application file
confirms that the application is neither signed nor dated.

2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended
to replace the term “typed” drawing with “standard character” drawing. A mark
depicted as a typed drawing is the legal equivalent of a standard character mark.

3 Registration No. 3203224 issued on January 30, 2007. Section 8 affidavit accepted;
Section 15 affidavit acknowledged.
The Examining Attorney also refused registration under Section 2(d) based upon
Registration No. 3203223, owned by the same entity as the registration cited above,
for the mark ORANGECELLO for identical goods. Applicant petitioned to cancel
Registration No. 3203223 on September 12, 2012 and the petition was granted on
December 31, 2012 after Registrant failed to submit an answer thereto. Prosecution
of the involved application was suspended during the pendency of the cancellation
proceeding.

Serial No. 85483943

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In her first Office Action, issued on March 16, 2012, the Examining
Attorney refused registration pursuant to Section 2(d), citing both the
registration which is the basis for this appeal and another, now-cancelled
registration owned by the same registrant for ORANGECELLO (see footnote
3). The Examining Attorney also noted that the involved application was not
signed and verified, stating that signature and verification are application
requirements. The section of her Office Action setting forth the requirement
is reproduced below.
The application was not signed and verified, both of which are
application requirements. See 15 U.S.C. §§1051(b), 1126(d)-(e);
37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
Therefore, applicant must verify the statements specified
further below in a signed affidavit or declaration under 37
C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R.
§§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

If applicant responds to this Office action online via the
Trademark Electronic Application System (TEAS),
applicant may satisfy this requirement by answering “yes” to the
TEAS response form wizard question relating to submitting a
“signed declaration,” and following the instructions within the
form for signing. See 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(a), (c)-
(d), (e)(1); TMEP §§611.01(c), 804.01(b).

If applicant responds to this Office action on paper, via
regular mail, applicant may satisfy this requirement by
providing the following statements and declaration at the end of
the response, personally signed by a person authorized under 37
C.F.R. §2.193(e)(1) and dated, with the printed or typed name of
the signatory appearing immediately below the signature. See
37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP
§§611.01(b), 804.01(b).

STATEMENTS: The undersigned is properly
authorized to execute this application on behalf of
the applicant; he/she believes the applicant to be
Serial No. 85483943

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entitled to use the mark in commerce; applicant
has had a bona fide intention to use the mark in
commerce on or in connection with the goods and/or
services listed in the application as of the
application filing date; the facts set forth in the
application are true and accurate; and to the best of
the undersigned’s knowledge and belief no other
person, firm, corporation, or association has the
right to use the mark in commerce, either in the
identical form thereof or in such near resemblance
thereto as to be likely, when used on or in
connection with the goods/services of such other
person, to cause confusion, or to cause mistake, or
to deceive.

DECLARATION: The undersigned being warned
that willful false statements and the like are
punishable by fine or imprisonment, or both, under
18 U.S.C. §1001, and that such willful false
statements and the like may jeopardize the validity
of the application or document or any registration
resulting therefrom, declares that all statements
made of his/her own knowledge are true; and all
statements made on information and belief are
believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)

Applicant’s September 12, 2012 Response to Office Action addresses the
Section 2(d) refusal by requesting suspension of prosecution of the involved
application pending cancellation of cited Registration No. 3203223 for the
mark ORANGECELLO. However, Applicant’s September 12, 2012
communication does not address the requirement for signature and
verification. In her September 14, 2012 Office Action suspending prosecution
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of the involved application, the Examining Attorney clearly states that both
the refusal to register under Section 2(d) and the requirement that Applicant
sign and verify his application are continued. Applicant’s March 4, 2013
Response to Suspension Inquiry or Letter of Suspension addresses the
Section 2(d) refusal, notifies the Examining Attorney that Registration No.
3203223 is cancelled, and argues against the refusal based on Registration
No. 3203224 for CARAVELLA ORANGECELLO, but again does not comply
with or even address the requirement for signature and verification.
Subsequently, the Examining Attorney’s April 1, 2013 Office Action makes
final both the Section 2(d) refusal based upon
Registration No. 3203224 for the mark CARAVELLA ORANGECELLO and
the requirement for a signed application, and again includes the language
quoted above from her first Office Action.
The involved application was abandoned on October 28, 2013, and
Applicant filed a Petition to Revive on December 28, 2013, which was granted
on January 28, 2013. Applicant’s Petition to Revive includes his Response to
the Examining Attorney’s April 1, 2013 final Office Action, addressing the
Section 2(d) refusal and including evidence in support of registration, but not
complying with or addressing the signature and verification requirement. In
her March 11, 2014 denial of Applicant’s Request for Reconsideration, the
Examining Attorney addresses Applicant’s arguments regarding the Section
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2(d) refusal and states that both the requirement and refusal made final in
her April 1, 2013 Office Action are maintained.
Applicant does not address the signature and verification requirement in
his brief, but merely discusses the Section 2(d) refusal. In her brief, the
Examining Attorney addresses both the Section 2(d) refusal and requirement
for a signed and verified application; however, Applicant did not submit a
reply brief, foregoing this opportunity to explain his failure to comply with or
address the signature requirement.
The requirement for a verified statement in an application such as this
one, based upon an applicant’s assertion of a bona fide intent to use the mark
in commerce, is set forth in Trademark Act Section 1(b), 15 U.S.C. § 1051(b),
set forth in relevant part below:
(b)(1) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use a
trademark in commerce may request registration of its
trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement, in
such form as may be prescribed by the Director.

(2) The application shall include specification of the
applicant’s domicile and citizenship, the goods in
connection with which the applicant has a bona fide
intention to use the mark, and a drawing of the mark.

(3) The statement shall be verified by the applicant and
specify—

(A) that the person making the verification believes
that he or she, or the juristic person in whose
behalf he or she makes the verification, to be
entitled to use the mark in commerce;
Serial No. 85483943

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(B) the applicant’s bona fide intention to use the
mark in commerce;

(C) that, to the best of the verifier’s knowledge and
belief, the facts recited in the application are
accurate; and

(D) that, to the best of the verifier’s knowledge and
belief, no other person has the right to use such
mark in commerce either in the identical form
thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the
goods of such other person, to cause confusion, or to
cause mistake, or to deceive.

Trademark Rules 2.33(b)(2) and 2.33(c), 37 C.F.R. §§ 2.33(b)(2) and 2.33(c),
provide as follows:
(2) In an application under section 1(b) or section 44 of the
Act, the verified statement must allege:
That the applicant has a bona fide intention to use the mark
shown in the accompanying drawing in commerce on or in
connection with the specified goods or services; that the
applicant believes it is entitled to use the mark in commerce;
that to the best of the declarant’s knowledge and belief, no other
person has the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when
applied to the goods or services of the other person, to cause
confusion or mistake, or to deceive; and that the facts set forth
in the application are true.
(c) If the verified statement is not filed within a reasonable
time after it is signed, the Office may require the applicant to
submit a substitute verification or declaration under § 2.20 of
the applicant’s continued use or bona fide intention to use the
mark in commerce.

Trademark Rule 2.34(a)(2), 37 C.F.R. § 2.34(a)(2), provides as follows:
(2) Intent-to-use under section 1(b) of the Act. In an
application under section 1(b) of the Act, the applicant must
verify that it has a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in
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the application. If the verification is not filed with the initial
application, the verified statement must also allege that the
applicant had a bona fide intention to use the mark in commerce
on or in connection with the goods or services listed in the
application as of the filing date of the application.

Finally, Trademark Rule 2.193(e)(1), 37 C.F.R. § 2.193(e)(1), provides as
follows:
(e) Proper person to sign. Documents filed in connection with
a trademark application or registration must be signed by a
proper person. Unless otherwise specified by law, the following
requirements apply:
(1) Verification of facts. A verification in support of an
application for registration, amendment to an application for
registration, allegation of use under § 2.76 or § 2.88, request for
extension of time to file a statement of use under § 2.89, or an
affidavit under section 8, 12(c), 15, or 71 of the Trademark Act
must be sworn to or supported by a declaration under § 2.20,
signed by the owner or a person properly authorized to sign on
behalf of the owner. A person who is properly authorized to
verify facts on behalf of an owner is:
(i) A person with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership);
(ii) A person with firsthand knowledge of the facts and actual
or implied authority to act on behalf of the owner; or
(iii) An attorney as defined in § 11.1 of this chapter who has
an actual written or verbal power of attorney or an implied
power of attorney from the owner.

Thus, an applicant filing an application under Section 1(b) of the
Trademark Act must submit a verified statement that the applicant has a
bona fide intention to use the mark in commerce on or in connection with the
goods or services listed in the application. 15 U.S.C. § 1051(b)(3)(B). If the
verification is not filed with the original application, the verified statement
must also allege that the applicant had a bona fide intention to use the mark
in commerce on or in connection with the goods or services listed in the
Serial No. 85483943

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application as of the application filing date. Trademark Rules 2.34(a), 37
C.F.R. §§ 2.34(a). See also Trademark Manual of Examining Procedure
(TMEP) §§ 804.02 and 806.01(b) (January 2015).
In this case, neither Applicant nor his counsel, as provided under
Trademark Rule 2.193(e)(1)(iii), signed the original application as required by
Section 1(b)(3) of the Trademark Act, 15 U.S.C. § 1051(b)(3). As discussed
above, the Examining Attorney raised the requirement for a verified
statement in her first Office Action, and continued and made final the
requirement in subsequent Office Actions. Furthermore, the Examining
Attorney explained in detail in her March 16, 2012 and April 1, 2103 Office
Actions the procedures necessary for Applicant to comply with the
verification requirement. As noted above, Applicant neither complied with
this requirement nor addressed it in his communications in response to the
Examining Attorney’s Office Actions or in his brief on appeal.
We also observe in that regard that while all of Applicant’s
communications submitted subsequent to his original application were
properly signed by his counsel of record, none of them contained the required
averments and thus do not satisfy the outstanding requirement for
verification.
In accordance with the above authorities, signature and verification of the
averments in an application is a requirement for establishing a basis for
application; in this case, a bona fide intent to use the mark in commerce
Serial No. 85483943

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pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). See also
Trademark Rule 2.34(a)(2), 37 C.F.R. § 2.34(a)(2). A simple and
straightforward requirement, it nonetheless is necessary to support the
averments made in an application. Applicant failed to comply with this
requirement despite clear and repeated admonitions from the Examining
Attorney.
Accordingly, we affirm the Examining Attorney’s requirement that
Applicant sign and verify the involved application, and registration is refused
to Applicant on this basis.
We note that the involved application may not be reopened for further
examination following this appeal.4 See Trademark Rule 2.142(g), 37 C.F.R.
§ 2.142(g); Trademark Trial and Appeal Board Manual of Procedure (TBMP)
Section 1218 (2014). Therefore, Applicant’s failure to comply with the
requirement to sign and verify the involved application prior to appeal cannot
be remedied after issuance of this decision.
Decision
The refusal of registration on the ground that Applicant failed to comply
with the requirement to submit a signed and verified application is affirmed.
Accordingly, registration of the involved application is refused.

4 Trademark Rule 2.142(g) provides for a petition to the Director to reopen an
application upon a showing of sufficient cause for consideration of any matter not
already adjudicated. We observe, nonetheless, that Applicant’s failure to sign the
involved application has been adjudicated herein.
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In view thereof, we need not consider the Examining Attorney’s refusal of
registration under Section 2(d).