Mother Tucker's Food Experience (Canada) Inc., In re
| Decision Date | 05 February 1991 |
| Docket Number | No. 90-1260,90-1260 |
| Citation | 17 USPQ2d 1795,925 F.2d 1402 |
| Parties | , 17 U.S.P.Q.2d 1795 In re MOTHER TUCKER'S FOOD EXPERIENCE (CANADA) INC. |
| Court | U.S. Court of Appeals — Federal Circuit |
Lawrence E. Abelman, Abelman, Frayne, Rezac & Schwab, New York City, submitted for appellant. With him on the brief was Julie B. Seyler, New York City.
Fred E. McKelvey, Sol., Office of the Solicitor, Arlington, Va., submitted for the Com'r of Patents and Trademarks. With him on the brief was Albin F. Drost, Beacon Falls, Conn., Associate Solicitor.
Before NEWMAN, ARCHER and PLAGER, Circuit Judges.
This case concerns affidavits filed under Section 8 of the Lanham Act, and the consequences of failure of the trademark owner to show that the registered mark is in use "in commerce". The principal issue is whether use in commerce must be explicitly averred in an affidavit filed before the end of the statutory period for filing affidavits under Section 8. Subsidiary issues include whether the omission of such averral is curable after the end of the statutory period; whether use in commerce is presumed for restaurant service marks; and whether there are special considerations when the initial filing was made by a foreign applicant under Section 44(e) of the Lanham Act.
Mother Tucker's Food Experience (Canada) Inc. appeals the decision of the Commissioner of Patents and Trademarks, acting through the Assistant Commissioner for Trademarks, cancelling three service mark registrations for failure to comply with Section 8. We affirm.
Appellant is the owner of three United States registrations for restaurant service marks; Registration Nos. 1,221,235, 1,221,236, and 1,221,237. The marks are the phrase "MOTHER TUCKER'S FOOD EXPERIENCE"; a stylized design featuring a smiling grandmotherly figure; and the phrase and design used together. Section 8 of the Lanham Act, 15 U.S.C. Sec. 1058(a), at the time here applicable, read as follows:
Sec. 1058(a). Each certificate of registration shall remain in force for 20 years: Provided, That the registration of any mark under the provisions of this chapter shall be canceled by the Commissioner at the end of six years following its date, unless within one year next preceding the expiration of such six years the registrant shall file in the Patent and Trademark Office an affidavit showing that said mark is in use in commerce or showing that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark. Special notice of the requirement for such affidavit shall be attached to each certificate of registration.
This requirement was amplified in the Regulations, including 37 C.F.R. Sec. 2.162(e) which, at the time here applicable, read in part:
Sec. 2.162. The affidavit or declaration required by [C.F.R.] Sec. 2.161 must: ....
(e) State that the registered mark is in use in commerce and specify the nature of such commerce....
Three declarations 1 on behalf of Mother Tucker were filed shortly before the end of the sixth year, stating that each of the three marks was "still in use as evidenced by the attached specimens showing the mark as currently used in association with restaurant services". Each declaration included the statement that "no other person ... has the right to use said mark in commerce". The examiner refused to accept the declarations, on the ground that they did not allege use by the registrant in commerce and did not specify the type of commerce in which the marks were in use. The sixth year set in Section 8 for the filing of such declarations had expired, and the examiner held that the three registrations would be cancelled.
Mother Tucker filed a petition to the Commissioner, 37 C.F.R. Sec. 2.146(a)(2), requesting permission to submit corrected declarations and explaining that the omission of the words "in commerce" was inadvertent and was due to an error in the retyping by the registrant of the first page of the printed Section 8 forms that had been provided by registrant's United States counsel. The Commissioner denied the petition, holding that the declaration that the marks were "in use" did not comply with statute and regulation, and that the Section 8 submissions viewed as a whole were not a sufficient showing that the marks were used in commerce. The Commissioner held that the specimen marks submitted with the declarations did not cure the omission in the text of the declarations, for the specimens did not show use in commerce.
The Commissioner's position is that since the requirement of use in commerce is set by statute, and since such use was not shown during the sixth year as the statute requires, this essential element can not be waived, or the deficiency cured after the statutory period has ended.
This appeal is taken under 15 U.S.C. Sec. 1071(a)(1), which authorizes, inter alia, direct appeal to this court of a Commissioner's decision concerning an affidavit of continuing use.
The purpose of Section 8 of the Lanham Act is to remove unused marks from the Register. At the times here pertinent 2 the requirements for compliance with Section 8 were somewhat less stringent than the requirements for renewal affidavits under Section 9. In re Holland American Wafer Co., 737 F.2d 1015, 1018 n. 4, 222 USPQ 273, 275 n. 4 (Fed.Cir.1984). The PTO followed the practice that a Section 8 affidavit was sufficient for examination if it simply included the statement that the mark was still in use in commerce (or contained an excuse for non-use). Trademark Manual of Examining Procedure Secs. 1603.07, 1603.08. Thus Mother Tucker argues that since the marks were indeed in use in commerce, and it timely filed the declaration that the marks were "in use", omission of the words "in commerce" was at most a minor technical defect.
"A minor technical defect in an affidavit", in the words of one of our predecessor courts, is a poor reason to remove an otherwise good trademark from the federal register, thus obliging the trademark owner to repeat the entire registration process. In Morehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881, 887-88, 160 USPQ 715, 720 (CCPA 1969), the registrant had filed a timely Section 8 affidavit but had inadvertently included a specimen mark that differed in minor ways from the current form of the registered trademark--a flaw not discovered until some years later. The CCPA observed that the only purpose of the requirement that a specimen be filed with the Section 8 affidavit was to corroborate the averment of continuing use in commerce, and that the submission of an incorrect specimen was a minor technical defect, and not sufficient grounds for cancellation of the registration. Id. at 887-88, 160 USPQ at 720. Mother Tucker urges, citing Morehouse, that the policy implemented by Section 8 is to remove "deadwood", and that when the affidavit is timely filed and the mark is actually still in use in commerce, a technical defect in the affidavit is remediable, even after the sixth year. Mother Tucker states that denial of the opportunity to correct the inadvertent omission of the words "in commerce" violates the legislative purpose of Section 8.
The Commissioner's position is that the omission of averral of use in commerce was not a minor technical defect, for unlike the requirement for the provision of current specimen marks (the defect in Morehouse ), the showing of use in commerce was a statutory requirement. We thus consider whether the Commissioner has discretion to accept a showing of use in commerce made after the end of the sixth year.
We strive to avoid imposing any greater bureaucratic rigor on the public than the trademark statute and orderly administration demand. However, there is a compelling difference between noncompliance with a statutory requirement and a mere technical defect. While the latter may often be remedied with discretionary benevolence, the former is another matter. Administrative discretion may enable correction of a technical defect nunc pro tunc, but failure to comply with a statutory provision offers far less flexibility to the administrator and the courts. 3
Analogy is seen in the case of In re Precious Diamonds, 635 F.2d 845, 208 USPQ 410 (CCPA 1980), where the Section 8 affidavit was filed by an individual instead of the registrant corporation. Since the statute required that the affidavit be filed by the registrant, and since the sixth year had passed, the court upheld the Commissioner's ruling that no valid affidavit had been filed and that the PTO had properly cancelled the registration. Id. at 847, 208 USPQ at 411. In In re Culligan International Co., 915 F.2d 680, 16 USPQ2d 1234 (Fed.Cir.1990) this court affirmed that an applicant's failure to pay the late renewal fee under Section 9 during the three month period allowed in the statute for late renewal applications "on payment of the additional fee", 15 U.S.C. Sec. 1059(a), could not be waived by the Commissioner since it was an express requirement of the statute. In Culligan, as in Precious Diamonds, failure to comply with the statutory requirements was not curable nunc pro tunc.
The history of Section 8 supports the view that compliance with the statutory requirements is mandatory. The words "in commerce" were added to Section 8 in 1982, when the phrase "still in use" was changed to "in use in commerce". P.L. 97-247 Sec. 8(a)(1982). While the purpose of the statutory change was to assure that foreign or intrastate commerce not be included as "in use" under Section 8, see H.R.Rep. No. 542, 97th Cong., 2d Sess. at 10, reprinted in 1982 U.S.Code Cong. & Admin. News 765, 774 (referring to reports that some courts had interpreted "still in use" as not limited to interstate commerce or commerce between the United States and foreign nations), this legislative action underlines the central importance of use in commerce that is subject to the Lanham Act...
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