In re Precious Diamonds, Inc., Appeal No. 80-540.

• Decision Date: 18 December 1980
• Docket Number: Appeal No. 80-540.
• Citation: 635 F.2d 845
• Parties: In re PRECIOUS DIAMONDS, INCORPORATED.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

635 F.2d 845

In re PRECIOUS DIAMONDS, INCORPORATED.

Appeal No. 80-540.

United States Court of Customs and Patent Appeals.

December 18, 1980.

Andrew J. Cornelius, Pittsburgh, Pa., for appellant.

Joseph F. Nakamura, Sol., Jeffrey H. Kaufman, Trademark Atty., Fred E. McKelvey, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

MILLER, Judge.

This appeal pursuant to 15 U.S.C. § 1071(a) is from a decision of the Commissioner of Patents and Trademarks, acting through the Assistant Commissioner for Trademarks ("Commissioner"), denying appellant's petition to review the decision of the Post-Registration Examiner refusing to accept appellant's alleged declaration under section 8 of the Lanham Act¹ filed October 12, 1978. We affirm.

Appellant registered "PRECIOUS" as a trademark for diamonds and diamond rings on the Supplemental Register on October 17, 1972. The October 12, 1978, declaration² states that "DAVID K. FINKEL, II, "Finkel" declares that he is a citizen of the United States, dba PRECIOUS DIAMONDS, INC. "Precious"" and "that he owns Registration No. 945,486." It was signed by Finkel dba Precious. The Patent and Trademark Office withheld acceptance of the declaration because its records indicated that title was held by Precious and not Finkel dba Precious. After the statutory deadline prescribed by section 8, appellant filed a declaration executed by Finkel as its president. The examiner refused to accept this as untimely. Appellant's petition to the Commissioner for acceptance of the October 12, 1978, declaration was denied, and the registration was cancelled.

The Commissioner concluded and the Solicitor argues that because the timely-filed October 12, 1978, declaration was submitted by an individual and not by the corporation, a separate legal entity, the declaration was not filed by "the registrant," and amendment of the declaration after the statutory deadline would be impermissible. Appellant characterizes the mistake as a "clerical error" and argues that the Commissioner's refusal to accept the October 12, 1978, declaration was an abuse of discretion. The Solicitor contends that the Commissioner "has no discretion to waive a requirement of a statute" and that Congress intended that a specific, rigid cutoff date be applied, citing the Commissioner's decision in In re Kruysman, Inc., 199 USPQ 110, 111 (1977).

We do not agree with appellant that the mistake was a "clerical error." Appellant has presented no evidence of error in transcription or otherwise. At the same time, we recognize that the Commissioner does have discretion to provisionally accept a declaration or affidavit having a defective execution.³ Also, we note that Kruysman involved a failure to file any affidavit (or declaration) within the statutory period and that the Solicitor has not cited any legislative history to support his interpretation of Congressional intent.

Appellant argues further that a technically defective declaration should be accepted if the legislative intent expressed by section 8 is not to be defeated, citing Morehouse Manufacturing Corp. v. J. Strickland & Co., 56 CCPA 946, 407 F.2d 881, 160 USPQ 715 (1969). In Morehouse, the inadequacy of a section 8 affidavit was asserted as grounds for cancellation of a registration where it was shown that the particular specimen submitted with the affidavit was not the label in use at the time of filing the affidavit. Admittedly, the mark was used by the registrant, and the affidavit was otherwise in order. This court held that the affidavit was sufficient because section 8 requires only a showing that the mark is still in use and does not require submission of a specimen label. The court said:

It should be remembered that the purpose of section 8 affidavits is to remove from the register automatically marks which are no longer in use. Failure of registrants to file affidavits results in removal of such deadwood. The significant facts, therefore, are that an affidavit is filed and that a mark is actually still in use. Given the fact of continuing use, from which practically all of the user's substantive trademark rights derive, nothing is to be gained from and no public purpose is served by cancelling the registration of a technically good trademark because of a minor technical defect in an affidavit. Footnote omitted; emphasis supplied.

Id. at 954, 407...