94 F.3d 1578 (Fed. Cir. 1996), 95-1400, In re ECCS

Docket Nº:95-1400.
Citation:94 F.3d 1578
Party Name:39 U.S.P.Q.2d 2001 In re ECCS, INC.
Case Date:September 06, 1996
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1578

94 F.3d 1578 (Fed. Cir. 1996)

39 U.S.P.Q.2d 2001

In re ECCS, INC.

No. 95-1400.

United States Court of Appeals, Federal Circuit

September 6, 1996

        Mark B. Harrison, Spencer, Frank & Schneider, Washington, DC, argued for appellant.

        Kevin T. Kramer, Associate Solicitor, U.S. Patent and Trademark Office, Arlington, Virginia, argued for the Commissioner. With him on the brief were Nancy J. Linck, Solicitor,

Page 1579

Albin F. Drost, Deputy Solicitor, and Nancy C. Slutter, Associate Solicitor.

        Before RICH, NEWMAN, and CLEVENGER, Circuit Judges.

        RICH, Circuit Judge.

        This is an ex parte appeal from a decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (Board) affirming the Examining Attorney's refusal to register a trademark.

        This might be called the case of the missing space for, as will hereinafter appear, in reality that is all that is involved.

        It is also a sort of comedy of errors in which both the applicant and the PTO fail to deal with the actual situation and learnedly discuss issues that are not actually involved.

        Furthermore, the discussions in the parties' briefs seem to ignore the most fundamental aspect of United States trademark law, namely, that trademark ownership and attendant rights are acquired in the marketplace by use and that the statute, popularly known as the Lanham Act, aside from modern "intent to use" law not here involved, provides only for registration of existing marks.

        ECCS' trademark as acquired by use in commerce is:



        for "COMPUTER STORAGE PRODUCTS, NAMELY TAPE BACKUP UNITS." The applicant, ECCS, Inc., filed an application to register that mark, Ser. No. 74/355,094, on February 3, l993, comprising the usual Statement, Power of Attorney, Declaration, drawing, and specimens. See 15 U.S.C. § 1051; 37 C.F.R. §§ 2.21, 2.33 (hereinafter, 37 C.F.R. sections will be referred to simply as "Rules").

        With respect to the specimen, the Statement said:

        The mark is used by applying it to labels for the goods, and three specimens showing the mark as actually used are submitted herewith.

        The specimens show the mark as reproduced above, EXA positioned above MODULE.

        With respect to the "drawing" required by Lanham Act § 1(a)(1)(B) and Rule 2.21(3), the details of which are prescribed in Rules 2.51 and 2.52, the applicant filed as part of the original application a paper on which was typed


        in apparent compliance with and exercising the right given by, Rule 2.51(e) which reads:

        (e) If the application is for the registration of only a word, letter or numeral, or any combination thereof, not depicted in special form, the drawing may be the mark typed in capital letters on paper, otherwise complying with the requirements of § 2.52. [Emphasis ours.]

        However, this "drawing" of typed capital letters on paper was not in compliance with other provisions of Rule 2.51, such as section (a)(1) reading:

        (a)(1) In an application under section 1(a) of the Act [15 U.S.C. § 1051(a), Lanham Act § 1(a) ], the drawing of the trademark shall be a substantially exact representation of the mark as used on or in connection with the goods. [Emphasis ours.]

        Therefore, the "drawing" was defective insofar as it differed from the specimens. It was not an "exact representation of the mark." The mark as used on the goods is shown, in this case, by the specimens on file, and the disparity is self-evident. In the typewritten "drawing," the two-line arrangement was changed to a single line, and the two parts of the mark were run together without a space.

        In the first Office Action of May 24, l993, the Examining Attorney reported her "determinations" by stating, first:

        The drawing displays the mark as EXAMODULE. However, this differs from the display of the mark on the specimens, where it appears as EXA MODULE.

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[Apparently she was not concerned with the difference between one-line and one-over-the-other...

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