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The PTO Has Discretion to Determine Whether and How a Trademark Registration Should Include a More Particularized Statement of the Goods for Which the Mark Is to Be Used

July 23, 2007

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Last Month at the Federal Circuit - August 2007

Judges: Newman (author), Friedman, Dyk

[Appealed from: TTAB]

In In re Omega SA (Omega AG) (Omega Ltd.), No. 06-1234 (Fed. Cir. July 23, 2007), the Federal Circuit affirmed the TTAB’s decision sustaining the Trademark Attorney’s refusal to register Omega S.A.’s (“Omega”) trademark AQUATERRA for “jewelry, precious stones; watches, watch straps, watch bracelets and parts thereof; chronometers, chronographs, watches made of precious metals, watches partly or entirely set with precious stones in International Class 14,” unless Omega amended its application to limit “chronographs” to “chronographs for use as watches.”

The Trademark Attorney refused Omega’s application to register AQUATERRA in Class 14 on the ground that the term “chronographs” can refer not only to watches in Class 14, but also to time-recording instruments in Class 9. Omega refused to amend its application, arguing that it already had several registered trademarks in Class 14 for “watches and chronographs,” and that the term “chronographs” includes timepieces such as watches, regardless of whether “chronographs” is also used for time-recording instruments. The TTAB sustained the Trademark Attorney’s decision. Omega appealed.

The Federal Circuit affirmed, noting that the scope of the term “chronographs” is ambiguous for registration purposes, for it includes both watches and time-recording devices. The Court explained that “[t]he PTO has discretion to determine whether and how a trademark registration should include a more particularized statement of the goods for which the mark is to be used” and that the PTO did not abuse its discretion in determining that the term “chronographs” should be restricted to those “for use as watches.” Slip op. at 6. In so doing, the Court noted that the International Classification used by the PTO does not prohibit the imposition of additional requirements for national registration. It reasoned that treaty and statute do not prohibit domestic requirements that do not significantly diverge from the International Classification.

The Court rejected Omega’s argument that the PTO’s requirement for amendment to “chronographs for use as watches” will adversely affect Omega’s other trademarks. The Court explained that in general, “the definition of goods in one registration does not taint the definition of similar goods in any other registration.” Id. at 4-5. In addition, while the Court agreed with Omega that consistency in the examining process is highly desirable and that the time and expense of complying with inconsistent applications burdens both the PTO and the public, the requirement imposed by the Trademark Attorney to amend “chronographs” to “chronographs for use as watches” was not “so extreme or unreasonable as to warrant judicial intervention into the internal procedures and requirements of PTO trademark examination.” Id. at 5. Accordingly, the Court affirmed the decision of the TTAB.