Safety-Kleen Corp. v. Dresser Industries, Inc.

• Decision Date: 09 October 1975
• Docket Number: Patent Appeal No. 75-522.
• Citation: 518 F.2d 1399
• Parties: SAFETY-KLEEN CORPORATION, Appellant, v. DRESSER INDUSTRIES, INC., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

518 F.2d 1399

SAFETY-KLEEN CORPORATION, Appellant, v. DRESSER INDUSTRIES, INC., Appellee.

Patent Appeal No. 75-522.

United States Court of Customs and Patent Appeals.

August 7, 1975.

Rehearing Denied October 9, 1975.

James T. FitzGibbon, Chicago, Ill. (Wetzel, Greenwalt & Fitzgibbon, Chicago, Ill.) attorney of record, for appellant.

Jerome Gilson, Melvin F. Jager, Chicago, Ill. (Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill.), Daniel Rubin, Dallas, Tex., attorneys of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.

LANE, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, 181 U.S.P.Q. 726 (TTAB 1974), sustaining the opposition by Dresser Industries, Inc. (Dresser) to an application filed by Safety-Kleen Corporation (Safety-Kleen) to register,

displayed in ligatured form, as a service mark for leasing, periodic maintenance and servicing of apparatus for cleaning mechanical parts, and granting Dresser's petition to cancel Safety-Kleen's registration covering the same mark for mechanical parts, cleaning units, and parts thereof including a solvent circulating pump, sink and drum reservoir. Familiarity with the board's opinion is assumed. We affirm.

The two issues presented for our consideration concern the correctness of the board's finding that there is a reasonable likelihood that "the respective products and services of the parties herein would be attributed by those encountering them to the same source," and whether this court has jurisdiction in the first instance to hear and determine the appeal.¹ Since, without an affirmative determination that this court has jurisdiction, the substantive aspects of this appeal cannot be considered, we shall first address ourselves to the jurisdictional issue.

Jurisdiction

Dresser questions the jurisdiction of this court to entertain the instant appeal, arguing that Safety-Kleen's notice and reasons of appeal, filed on May 24, 1974,² was not timely filed under Rule 2.145(d) of the Trademark Rules of Practice, 37 CFR 2.145(d), because it was filed more than sixty days from the date of the board's decision on February 25, 1974. Trademark Rule 2.145(d) specifies in part:

The time for filing the notice and reasons of appeal to the U.S. Court of Customs and Patent Appeals * * * is 60 days from the date of the decision of the Trademark Trial and Appeal Board or the Commissioner, as the case may be.

Although Dresser has failed to file any notice or reasons of appeal from the Commissioner's decision, we cannot dismiss as untimely Dresser's contentions concerning lack of jurisdiction. This court's jurisdiction is limited by Article III, Section 2, of the United States Constitution. Its jurisdiction to hear and determine an appeal may be challenged at any stage of the proceedings. 28 U.S.C. § 211. See also American Fire & Cas. Co. v. Finn, 341 U.S. 6, 71 S.Ct. 534, 95 L.Ed. 702 (1951); Resnik v. La Paz Guest Ranch, 289 F.2d 814 (9th Cir. 1961); Tolchester Lines, Inc. v. Dowd, 253 F.Supp. 643 (S.D.N.Y. 1966). The Commissioner's decision on Dresser's petition does not alter this court's obligation to independently determine whether it has jurisdiction. See the discussion in the dissenting opinion of Smith, J., In re Wiechert, 370 F.2d 927, 940, 54 CCPA 957, 973 (1967).

It has been established that Safety-Kleen's failure to file its notice and reasons of appeal within sixty days from the date of the board's decision was occasioned when, on March 27, 1974, thirty days after the date of the board's decision, it requested an extension of time to file a petition for reconsideration which was stipulated to by Dresser's counsel. This request was denied on April 3, 1974, with leave to file a prompt supplemental request. The supplemental request, which was also stipulated to by Dresser's counsel, was filed on April 10, 1974, simultaneously with the petition for reconsideration.

The Commissioner granted Safety-Kleen's supplemental request for extension of time, but the petition for reconsideration was denied on April 25, 1974. Then, on May 24, 1974, eighty-eight days after the board's original decision, but within thirty days after the decision on reconsideration, Safety-Kleen filed a notice and reasons of appeal to this court.

Dresser contends that the sixty-day period for filing the notice and reasons of appeal under the rule is waived only if a reconsideration petition is filed within thirty days from the date of the decision. The pertinent portion of Rule 2.145(d) provides:

If a petition for rehearing or reconsideration is filed within 30 days after the date of the decision, the time is extended to 30 days after action on the petition. No petition for rehearing or reconsideration filed outside the time specified herein after such decision, nor any proceedings on such petition shall operate to extend the period of 60 days hereinabove provided.

The Commissioner of Patents and Trademarks, in his decision on Dresser's petition opposing acceptance of Safety-Kleen's notice and reasons of appeal, notes that the time for seeking rehearing or reconsideration of a board decision in inter partes cases, set in Rules 2.127(b) and 2.129(c), may be waived in appropriate cases by filing a petition for extension of time and that such waiver "is normally construed by the Patent Office also as a request for waiver of that portion of Rule 2.145(d) which refers to the thirty day period set by Rule 2.129(c) for requesting rehearing or reconsideration * * *." The Commissioner states further:

Logically, a waiver of Rule 2.129(c) to extend, or reset the expiration of, the thirty day period for requesting rehearing or reconsideration should also apply to the same thirty day period specified in Rule 2.145(d). A specific reference to Rule 2.145(d) is not necessary for a waiver of Rule 2.129(c) to also apply to the same thirty day period in Rule 2.145(d).

We find ourselves in substantial agreement with the Commissioner's construction of Rule 2.145(d).

Appeals to this court from decisions of the Trademark Trial and Appeal Board are governed by section 21(a)(2) of the Lanham Act, 15 U.S.C. § 1071(a)(2), which at the time of this appeal provided:³

When an appeal is taken to the United States Court of Customs and Patent Appeals from a decision of the Trade-mark Trial and Appeal Board, the appellant shall give notice thereof to the Commissioner, and shall file in the Patent Office his reasons of appeal, specifically set forth in writing, within such time after the date of the decision appealed from, not less than sixty days, as the Commissioner appoints. Emphasis added.

Pursuant to the rule-making authority conferred by section 41 of the Lanham Act, 15 U.S.C. § 1123, the Commissioner promulgated the Trademark Rules of Practice, 37 CFR 2.1 et seq., including Trademark Rule 2.145(d), which specifies the time for appeal to this court. The Commissioner has further provided in Rule 2.148 that any rule not a requirement of the statute may be suspended or waived by the Commissioner in appropriate circumstances in inter partes cases. Eckey v. Watson, 106 U.S.App.D.C. 16, 268 F.2d 891, (1959); Commonwealth of Australia v. Radio Corporation of America, 399 F.2d 807 (2d Cir. 1968).

We agree with Dresser that administrative agencies should be bound by their own rules and regulations, so that an agency's power to suspend its own rules pursuant to potentially all-inclusive waiver or suspension provisions, exemplified by Rule 2.148, must be closely scrutinized especially where the substantive rights of a party in the administrative process may be adversely affected. We, nevertheless, must conclude that this is just the kind of case where a rule which is not a requirement of statute may be suspended or waived by the Commissioner in the interests of justice, especially since no substantive interest of Dresser has been adversely affected.

A contrary construction of the rule might force a party who wishes to appeal an adverse decision of the board to file his appeal before the board has ruled on the petition for reconsideration or at least before the interested parties have had an adequate opportunity to review the decision on reconsideration. It is entirely within the Commissioner's discretion to avoid such...