Phillips Beverage Co.

Trademark Trial and Appeal Board

Sep 13, 2000

No. 75313753 (T.T.A.B. Sep. 13, 2000)

Paper No. 14
GFR
9/13/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Phillips Beverage Company
________
Serial No. 75/313,751
Serial No. 75/313,753
_______
Aaron B. Karas and Michael F. Sarney of Helfgott & Karas,
P.C. for Phillips Beverage Company
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney)
_______
Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Phillips Beverage Company [Phillips], a Minnesota
corporation, has filed applications to register the two
marks shown below, each for "vodka" in Class 33. Though
applicant and the Examining Attorney disagree as to an
appropriate description of each mark, they agree that the
individual in each portrait is the Polish composer Chopin.
In the presentation of each mark, the portrait appears on
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/313,751 and Serial No. 75/313,753
2
the rear of a frosted (opaque) vodka bottle and is visible
through a clear oval on the front of the bottle. Also, in
the mark on the left, the name CHOPIN appears on the front
of the bottle as an overlay.1
Three months after their filing, Phillips recorded in
this Office a document purporting to assign both
applications to Podlaska Wytwornia Wodek "POLMOS" [Polmos],
a corporation of Poland.2 The Examining Attorney originally
refused registration to Phillips, under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), because of the prior
registration, owned by Polmos, of two composite marks, each
featuring the name CHOPIN and a portrait of the composer.
In addition, the Examining Attorney noted a prior pending

1 The portrait on the left is the mark in application Serial No.
75/313,751. The portrait on the right is the mark in application
Serial No. 75/313,753. Each application was filed June 24, 1997,
and alleges dates of first use and first use in commerce of March
1997.
2 Recorded in the Assignment Branch at Reel 1637, Frame 0476.
Ser. No. 75/313,751 and Serial No. 75/313,753
3
application owned by Polmos for a composite CHOPIN and
portrait mark. Finally, the Examining Attorney made
various requirements in each application related to the
drawing, the description of each mark, the lining and
stippling statements, the asserted failure of the specimens
to show use of the respective marks in connection with the
identified goods, and an unnecessary disclaimer in
application Serial No. 75/313,751.
Later, after Phillips acknowledged that Polmos is the
owner of the marks in Poland and recordation of the
purported assignment of the involved applications, the
Examining Attorney refused registration in each application
under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a), on the ground that the applications are void ab
initio. Eventually, the Examining Attorney withdrew the
Section 2(d) refusal of registration, in view of the
assignment of the applications by Phillips to Polmos, and
accepted substitute specimens as sufficient to show use of
the marks. The applicant deleted the inappropriate
disclaimer.
The Examining Attorney then made final refusals of
registration in both applications on the grounds that
Phillips was not the owner of the marks when it applied to
register them, and because of applicant's failure to comply
Ser. No. 75/313,751 and Serial No. 75/313,753
4
with the requirements related to the drawings, descriptions
of the marks, and lining and stippling statements.
Applicant has appealed in each application.3 Both
applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
We consider, first, the ownership issue. Phillips
acknowledges that it is a licensee of Polmos and "the
exclusive importer and distributor of goods sold under the
[involved] mark[s] pursuant to its agreements with Polmos,
producer of the goods in Poland…. Polmos is the owner of
the mark in Poland."
Applicant, however, contests "the PTO's interpretation
of Section 1" as "inconsistent with the rest of the
statute," and argues that "it is the registrant of a mark
which must be the owner, not necessarily the applicant."
Applicant explains that Phillips believed it was entitled
to file for registration of the involved marks but, when
Polmos objected, Phillips "readily agreed" to assign the
applications to Polmos rather than jeopardize their
business relationship. Applicant argues that Polmos is now
the owner of the applications, as well as the marks, and

3 The issues presented by each appeal are essentially identical,
and the facts are similar. Accordingly, in the interest of
judicial economy, we consider the appeals together and issue a
single opinion.
Ser. No. 75/313,751 and Serial No. 75/313,753
5
that continued refusal of registration under Section 1 of
the statute "is to the detriment and prejudice of Polmos"
and is "contrary to the purpose of Section 1"; that "[t]he
concept of an application being 'invalid' is a creation of
the Patent and Trademark Office"4; and that the Huang case5
relied on by the Examining Attorney "does not support the
position that an application filed by a party that is not
the owner cannot be cured by assignment."
Under Section 1(a) of the Trademark Act, it is only
the owner of a trademark used in commerce who may file an
application to register the mark. Otherwise the
application is void for failure to comply with the
statutory requirement that an applicant be the owner of the
mark sought to be registered. See Huang, supra.
The Examining Attorney has correctly explained that,
under the law, a licensee, even if an exclusive licensee,
is not an owner of a mark and applicant has not established
that it is entitled to register its licensor's mark.
Likewise, the Examining Attorney has correctly explained
that, absent an agreement to the contrary between the

4 Specifically, applicant argues "Only registrations can be valid
or invalid. An application is merely a vehicle for perfecting a
right granted by the statute."
5 Huang v. Tzu Chen Food Co. Ltd., 849 F.2d. 1458, 7 USPQ2d 1335
(Fed. Cir. 1988).
Ser. No. 75/313,751 and Serial No. 75/313,753
6
parties, an importer or distributor is not entitled to
register the mark of a foreign owner.
We are not persuaded by applicant's argument that
there is no requirement that an applicant, in contrast to a
registrant, be the owner of the applied-for mark and that
the concept of a void application is solely "a creation of
the Patent and Trademark Office." We need look no further
than the Huang decision, in which the Court stated "[t]he
statute requires … that the application be filed in the PTO
by the owner," and thus affirmed "the Board's holding that
the application for registration is void for failure to
comply with Section 1 of the Lanham Act" [emphasis added].
Huang, supra at 1336.
We are likewise unpersuaded by applicant's attempt to
distinguish Huang. Applicant argues that Huang applies
only in cases "where no attempt is made to correct the
ownership of the application." The argument, however,
relies on dicta and ignores the following unequivocal
statement by the Federal Circuit: "No authority has been
cited for excusing noncompliance with 15 U.S.C. §1051.
Neither the Board nor the courts can waive this statutory
requirement." Huang, supra, at 1336. The Court then
wrote, "we need not decide whether, under the unusual
Ser. No. 75/313,751 and Serial No. 75/313,753
7
circumstances of this case, the Commissioner in his
discretion could have allowed correction." Id.
Applicant argues that the assignment from Phillips to
Polmos is just the type of "correction" contemplated by the
Court. We are not convinced. Moreover, even if we were to
accept counsel's view of the Huang dictum, i.e., that the
Commissioner could allow correction of the designation of
ownership in circumstances presented by the Huang case,
recordation of an assignment would not necessarily equate
to action by the Commissioner.
The Office's Assignment Branch routinely accepts for
recordation as assignments those documents submitted for
recording and listed in the required cover sheets as
assignments. Recordation of a purported assignment is a
ministerial function of the Office. There is no
substantive examination of the document or the
circumstances of the purported transfer, regarding legal
effect or validity. See Patent and Trademark Rule 3.54, 37
C.F.R. §3.54. The Huang dictum suggests a more direct
action by the Commissioner, insofar as it specifically
contemplates exercise of the Commissioner's discretion.6

6 Cf. Trademark Rule 2.146(a)(5) and 2.148, 37 C.F.R.
§§2.146(a)(5) and 2.148, which contemplate exercise of discretion
by the Commissioner upon petition. We do not, by this reference,
reach any conclusion regarding whether the Commissioner has
authority to grant applicant relief under the circumstances
Ser. No. 75/313,751 and Serial No. 75/313,753
8
In addition to its argument regarding Section 1,
applicant argues that the courts have been willing to order
transfer of a trademark application filed by a non-owner to
the rightful owner, and that the Board has done so in the
context of an inter partes proceeding under Section 18 of
the Trademark Act [15 U.S.C. §1068]. In this regard,
applicant cites Matusalem v. Ron Matusalem, 872 F.2d 1547,
10 USPQ2d 2014 (11th Cir. 1989), and Chapman v. Mill Valley
Cotton, 17 USPQ2d 1414 (TTAB 1990). Applicant goes on to
argue that "if the Board has the authority in an inter
partes proceeding [to transfer to the owner of a mark an
application filed by a non-owner] it must also have such
authority in an ex parte proceeding."
However, the Matusalem case is inapposite because it
does not deal with Section 18 or the authority of the Board
to act in an ex parte case. In regard to the Chapman case,
as the Examining Attorney notes, and applicant's counsel
acknowledges, that was an inter partes case. Section 18 of
the statute, as amended by the Trademark Law Revision Act,
provides the Board with authority to determine which party,
as between or among those involved in an inter partes

presented by this case or whether, presuming the existence of
such authority, the Commissioner would have done so. We merely
seek to illustrate the difference between the ministerial act of
recording an assignment and the exercise of discretion by the
Commissioner in the context of granting a petition.
Ser. No. 75/313,751 and Serial No. 75/313,753
9
proceeding, is entitled to registration of a mark or marks;
but under the plain language of this section of the
statute, it is authority exercisable only in inter partes
cases. Applicant provides no basis in law for its argument
to the contrary.
We affirm the refusal of registration on the ground
that the applications are void ab initio because applicant
was not the owner of the marks.
In order to render a complete decision, we turn to the
Examining Attorney's requirements that the applicant submit
amended drawings, amended descriptions of its marks, and
amended lining and stippling statements. We acknowledge
applicant's statements that, in essence, applicant is
willing to negotiate with the Examining Attorney on
whatever amendments are necessary, but that it would be
wasteful to do so unless applicant receives a favorable
ruling on the ownership refusal. While the argument is not
illogical, it is impractical and contrary to the Rules of
Practice in Trademark Cases, i.e., Part Two of Title 37 of
the C.F.R. See, e.g., Trademark Rule 2.64(a); and TMEP
Section 1106.01.
The Examining Attorney is entirely correct in stating
that the Office cannot allow piecemeal prosecution of
applications. Once an application has been considered and
Ser. No. 75/313,751 and Serial No. 75/313,753
10
decided on appeal, the application will not be reopened
except for entry of a disclaimer. See Trademark Rule
2.142(g), 37 C.F.R. §2.142(g). Thus, had we reversed the
substantive refusal of registration, we would not have
remanded the application for further examination in regard
to the outstanding requirements. Accordingly, we also
refuse registration for applicant's failure to comply with
the Examining Attorney's requirements.
We note, specifically, that the requirement for an
amended drawing is appropriate and that the applicant has
not contested the Examining Attorney's contention that the
Office has been consistent in its requirements for drawings
of marks which, like applicant's, are "visible through a
window on frosted beverage bottles." Of course, the mark
description and lining and stippling statement must match
the drawing and the existing descriptions and statements
are inappropriate because they are relevant only to the
current improper drawings.
Decision: The refusal to register the marks on the
ground that each application was void ab initio is
affirmed; and the refusal of registration for applicant's
failure to comply with requirements for proper drawings,
Ser. No. 75/313,751 and Serial No. 75/313,753
11
mark descriptions, and lining and stippling statements,
also is affirmed.
B. A. Chapman
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board