Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class

July 23, 2007
Post by Blog Staff

In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark application.

More on In re Omega SA after the jump.

The case involved Omega AG's application for a trademark on AQUA TERRA in class 14, which covers items like jewelry and watches. The disputed portion of the application was the use of the term "chronograph" to describe the goods used in connection with the trademark. The examining attorney argued the term was ambiguous, as chronographs can include both watches (in class 14) and time recording devices (in class 9). As a result, the examiner was concerned that granting the registration with the goods as written would allow Omega to assert the trademark against manufacturers that produced chronographs that were not watches. In order to prevent this from happening, the examining attorney required the usage statement be amended to read "chronographs for use as watches."

Omega declined to make the amendment, arguing that because the goods were in class 14, such a limitation was already implicitly imposed. Also, Omega was concerned about the possible effect of such an amendment on previous registrations that used the term chronograph without such a restriction.

While the court noted that they "doubt[ed] the rigor of the USPTO's hypothesis" that Omega would seek to assert its mark against companies using the mark in connection with time recording chronographs, it weighed avoiding foreseeable confusion against the detriment to Omega. Given the USPTO's assurances that Omega's past registrations would not be affected, the court determined that there was no damage to Omega caused by the requirement for additional clarification. The court then turned to the USPTO's ability to impose use description requirements, noting that it was well within the discretionary authority of the USPTO, and that any burden to Omega due to inconsistency from prior applications was slight. The court therefore affirmed the refusal to register the application without the requested amendment to the listing of goods.

To read the full decision in In re Omega SA, click here.

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