Humanoids Group v. Rogan, 03-1896.

• Decision Date: 20 July 2004
• Docket Number: No. 03-1896.,03-1896.
• Citation: 375 F.3d 301
• Parties: HUMANOIDS GROUP, Plaintiff-Appellant, v. James E. ROGAN, Director of the United States Patent and Trademark Office, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

375 F.3d 301

HUMANOIDS GROUP, Plaintiff-Appellant, v. James E. ROGAN, Director of the United States Patent and Trademark Office, Defendant-Appellee.

No. 03-1896.

United States Court of Appeals, Fourth Circuit.

Argued: June 2, 2004.

Decided: July 20, 2004.

ARGUED:

Mark Lebow, Young & Thompson, Arlington, Virginia, for Appellant. C. Edward Polk, Jr., Associate Solicitor, United States Patent & Trademark Office, Arlington, Virginia, for Appellee.

ON BRIEF:

Thomas W. Perkins, Young & Thompson, Arlington, Virginia, for Appellant. Paul J. McNulty, United States Attorney, Dennis E. Szybala, Assistant United States Attorney, Office Of The United States Attorney, Alexandria, Virginia; John M. Whealan, Solicitor, Cynthia C. Lynch, Associate Solicitor, Arlington, Virginia, for Appellee.

Before MOTZ and KING, Circuit Judges, and DAVID R. HANSEN, Senior Circuit Judge of the United States Court of Appeals for the Eighth Circuit, sitting by designation.

Affirmed in part and dismissed in part by published opinion. Judge MOTZ wrote the opinion, in which Judge KING and Senior Judge HANSEN joined.

OPINION

DIANA GRIBBON MOTZ, Circuit Judge:

In this appeal, we consider whether the United States Patent and Trademark Office may reject an application to register a trademark because the application contains multiple marks. For the reasons that follow, we conclude that it may. Accordingly, except for the appeal of a subsidiary point that we dismiss for lack of jurisdiction, we affirm the judgment of the district court.

I.

On March 19, 2001, Humanoids Group registered the mark¹ "Humanoids" with the Institut National de la Propriete Industrielle of the Republic of France. Under § 44(d) of the Lanham Act, 15 U.S.C. § 1126(d) (2000), Humanoids Group could claim priority for use of the mark in the United States as of this date, if it filed an application to register the mark with the United States Patent and Trademark Office ("PTO") within the next six months.²

On the last day of the six-month period, September 19, 2001, Humanoids Group filed an application with the PTO that contained the mark "Humanoids." The application identified the mark submitted for consideration as "Humanoids," stated that the application was filed pursuant to § 44(d) of the Lanham Act (which requires that the mark in the application and the previously-filed foreign mark be the same), and noted the serial number of the French trademark application for the mark "Humanoids." But, the application also presented another mark, "Graphic Stories." The application stated that "[a] drawing page displaying the mark in conformance with 37 C.F.R. 2.52 is submitted with this application," and, on the attached drawing page, identified "Graphic Stories" as the mark it sought to obtain.

The PTO accepted Humanoids Group's application and assigned it a September 19 filing date, but treated it as an application for the mark set forth on the drawing page — "Graphic Stories." Because the six-month window expired the next day, the PTO's failure to treat the application as one for the "Humanoids" mark caused Humanoids Group to lose the right to claim use of that mark in the United States as of its March 19 French filing date. Thus, another party's May 4, 2001 application with the PTO to register the "Humanoids" mark gained that party priority over use of the mark in the United States.

In an effort to lay claim to the French filing date, and maintaining that it had committed only a "scrivener's error" in identifying "Graphic Stories" as its mark in the September 19 application, Humanoids Group petitioned the PTO to designate "Humanoids" as the mark submitted in that application. The PTO declined, pointing to its regulatory requirement that an application must present only one mark and to its policy of relaxing this requirement and granting a filing date to an application containing multiple marks only when the body of an application and its drawing page present different marks, and then only by permitting the mark presented on the drawing page to constitute the submitted mark. The PTO also noted the general interest in avoiding "impractical and time consuming" procedures and "delay" of "the entry of ... mark[s] into the Office's automated systems."

Humanoids Group then filed this action pursuant to the Administrative Procedure Act ("APA"), 5 U.S.C. § 701 et seq. (2000), seeking a judgment that the PTO's denial of its petition violated the APA and an order substituting "Humanoids" as the mark submitted in the September 19 application. The district court granted summary judgment to the PTO. The court reasoned that PTO regulations limit an application to one mark at the time the application is filed, that the PTO acted reasonably in adopting a policy of granting a limited exception to this requirement by looking to the mark identified on the drawing page, and that the PTO correctly applied these regulations and policies in denying Humanoids Group's petition. Humanoids Group appeals.

II.

An entity must complete two, distinct steps to register a mark with the PTO. First, the entity must submit an application that meets relevant requirements in order to receive a filing date. Second, the entity must meet more detailed requirements to secure final approval of the application to obtain registration. This case involves only the first of these steps.

In 1998, Congress enacted the Trademark Law Treaty Implementation Act, Pub.L. No. 105-330, 112 Stat. 3064 (1998) (codified in scattered sections of 15 U.S.C.). That statute affected several changes to the underlying Trademark Act of 1946 and instructed that "[t]he Director [of the PTO to] promulgate rules prescribing the requirements for the application and for obtaining a filing date herein" and "[t]he applicant [to] comply with such rules or regulations as prescribed by the Director." 15 U.S.C. § 1051(a) (2000).

Consistent with this charge and the changes made by the Act, the PTO promulgated regulations providing that in order to receive a filing date, an application must contain:

(1) The name of the applicant;

(2) A name and address for the correspondence;

(3) A clear drawing of the mark;

(4) A listing of goods or services; and

(5) The filing fee....

37 C.F.R. § 2.21 (2003). When the PTO receives an application, it labels the application with a receipt date and then reviews the application for compliance with these "minimum requirements for receipt of a filing date." Patent & Trademark Office, U.S. Dep't of Commerce, Trademark Manual Examining Procedure ("PTO Manual") § 203 (3d ed.2003). If the PTO determines that an application contains the required elements, the PTO assigns the application a filing date as of the date of receipt and enters the mark into its Trademark Electronic Search System, which the public may access through the PTO's website.³

Humanoids Group contends that the PTO violated the APA in interpreting one of these "minimum requirements" — the requirement that the application contain "[a] clear drawing of the mark" — in the case at hand and that the district court erred in holding to the contrary and granting summary judgment to the PTO. 37 C.F.R. § 2.21(a)(3). We review a grant of summary judgment de novo. Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 349 (4th Cir.2001). However, because Humanoids Group brings this action pursuant to the APA, we conduct our review in accordance with the standards announced therein. Under the APA, we may, "[t]o the extent necessary," "decide all relevant question of law" and "interpret constitutional and statutory provisions." 5 U.S.C. § 706. We can reverse an agency only if we find that its actions are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." 5 U.S.C. § 706.

III.

Humanoids Group argues that the PTO has misinterpreted the requirement, set forth in its regulation, that to receive a filing date an application must contain "[a] clear drawing of the mark." 37 C.F.R. § 2.21. The PTO interprets this regulatory requirement to mean that an application must present only one drawing of one mark. See In re Lavorazioni, 61 U.S.P.Q.2d 1063, 1063, 2001 WL 1669421 (Comm'r Pat.2001) ("An application that includes two or more drawings displaying materially different marks does not meet this requirement and is not entitled to a filing date."); see also PTO Manual § 807.03; Patent & Trademark Office, U.S. Dep't of Commerce, Exam Guide No. 3-99 II.A (Oct. 30, 1999) ("Exam Guide"). Humanoids Group argues that the regulation should instead be interpreted to require merely that an application contain at least one drawing of the mark sought to be registered. Brief of Appellant at 10.

Generally, courts must defer to an agency's interpretation of its own regulation, regarding that interpretation as "controlling unless plainly erroneous or inconsistent with the regulation." Auer v. Robbins, 519 U.S. 452, 461, 117 S.Ct. 905, 137 L.Ed.2d 79 (1997) (internal quotation marks and citation omitted); see also Kentuckians for the Commonwealth, Inc. v. Rivenburgh, 317 F.3d 425, 439 (4th Cir. 2003). Humanoids Group, however, argues that this deferential standard is not warranted here. Alternatively, it maintains that even if the deferential Auer standard applies, we must reject the PTO's interpretation. We consider each of these contentions in turn.

A.

Humanoids Group contends that the PTO's interpretation of § 2.21 does not warrant deference for several reasons.

First, Humanoids Group argues that the PTO did not adopt its interpretation in a formal enough manner to merit judicial deference. In support of this argument, Humanoids Group points to the holding in Christensen v. Harris Co., 529 U.S. 576, 587, 120 S.Ct. 1655, 146 L.Ed.2d 621 (2000), that agency interpretations not subject to notice and comment rulemaking — such as "interpretations contained in policy statements, agency manuals, and enforcement guidelines" — "lack the force of law" and,...