Petition to Director Granted

UNITED STATES PATENT AND TRADEMARK OFFICE

PETITION TO DIRECTOR GRANTED

Mitsubishi Jidosha Kogyo Kabushiki Kaisha (petitioner) has petitioned the Director of the United States Patent and Trademark Office (Director) to permit petitioner to amend the goods in the original application.  The Director has authority to review petitioner’s request. See 37 C.F.R. §2.146(a)(3).  The petition is granted.

FACTS[1]

On August 28, 2018, using the Trademark Electronic Application System (TEAS), petitioner filed an application for registration of the above referenced mark for goods in International Classes 9 and 12 based on an intent to use the mark in commerce pursuant to Trademark Act Section 1(b).  15 U.S.C. §1051(b).  On the TEAS portion of the form, petitioner listed the same goods in the two international classes and paid the filing fee for two international classes.  Along with the TEAS form, petitioner attached a verified paper application that set forth much of the same information as that listed in the TEAS form.  However, the goods listed in the attached paper application in International Class 12 were different from the goods listed on the TEAS form, which goods merely listed the same International Class 9 goods.

On September 4, 2018, petitioner filed a preliminary amendment amending the goods in International Class 12 to be consistent with the goods from the paper application attached to the TEAS form.  In the “Miscellaneous Field” on the preliminary amendment, petitioner states “Applicant, through its Attorney, is submitting a Petition to the Director to correct the inconsistency between the TEAS submission and the executed new application (New Application Declaration) that was submitted August 28, 2018.”  Petitioner states that the error in entering the International Class 9 goods into International Class 12 was a clerical mistake. 

This petition followed that same day on September 4, 2018.  Petitioner restates that the preliminary amendment was filed to correct the goods in the application and petitioner declares further that “[d]ue to a clerical error when the application was filed, the Class 9 goods were inadvertently entered twice. The Class 12 goods were correctly identified in the New Application Declaration that was submitted with the application at the time of the electronic filing. A copy of the application (New Application Declaration) that was submitted with the TEAS application on August 28, 2018 is attached.” (Petition 1).

DISCUSSION

Trademark Rules Governing the Deletion of Goods or Services

Under Trademark Rule 2.71(a), “[t]he applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” 37 C.F.R. §2.71(a); see In re Jimmy Moore LLC, 119 USPQ2d 1764.  This Rule has been interpreted to mean that the scope of goods and services listed in the original application or as amended by express amendment establish the outer limit of an applicant’s right in a mark.  TMEP §1402.06.  As such, petitioner cannot amend the goods listed in a specific class in the application if those goods are not within the scope of the original identification.

However, under certain circumstances, on petition, the Director may exercise supervisory authority.

Exercise of Supervisory Authority is Appropriate

Under Trademark Rule 2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances.  37 C.F.R. §2.146(a)(3).  In some cases, the Director will exercise supervisory authority under Trademark Rule 2.146(a)(3) even where there has been no clear error or abuse of discretion on the part of the examining attorney or the United States Patent and Trademark Office (USPTO), if a petitioner can show that it has substantially complied with the requirements of the statute or rules.   See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013); In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that an assertion of verified date of first use, coupled with statement of current method of use, interpreted as substantially in compliance with the minimum filing requirement for a statement of use for a verified statement that the "mark is in use in commerce."). In this case, based on these particular facts, it is appropriate for the Director to exercise supervisory authority.  TMEP §1707. 

Counsel for petitioner declares that due to a clerical error when the application was filed, the goods in International Class 9 were inadvertently entered twice. However, the attachment to the TEAS initial application did correctly identify the goods that should be in International Class 12.  The paper application that was attached to the TEAS form included a declaration signed by petitioner attesting to the statements in the paper application and attesting to the fact that the goods for which registration was sought were those listed in the paper application.  Thus there was an inconsistency in what goods should be included in International Class 12 based on the TEAS form and the attached paper application.

The unique facts of this case warrant that the Director exercise supervisory authority to permit the goods as entered in the preliminary amendment to be the goods that control International Class 12.  Specifically, the facts include that:  1. In the initial application petitioner paid for two International Classes; 2. The two International Classes recited the exact same International Class 9 goods; 3.  Submitted with the TEAS application was a paper application executed by petitioner that states the correct goods that should be in International Class 12; 4. The paper application that was attached created an inconsistency regarding which goods should be in International Class 12; 5. Upon realizing the clerical mistake in the TEAS portion of the form, petitioner filed a preliminary amendment reciting the goods that should be in International Class 12; 6. As a result of the preliminary amendment, within days of the application being filed, the goods in International Class 12 were amended in the Trademark database to list properly the correct goods that petitioner intended that class to cover; 7. A review of the entire record from the time the application was filed would have placed the public on notice that there was an inconsistency with the goods identified in the TEAS form as the TEAS form listed the same goods in both classes but the attached paper application listed the correct International Class 12 goods.  In view of all these facts, justice requires that the Director invoke supervisory authority to allow the goods in International Class 12 to be amended to list the goods as they appeared in the paper application and as properly amended in the preliminary amendment.

DECISION

The petition is granted.  The goods as currently listed in International Class 12 will be the goods for which the application will be examined.

/Dawnmarie D. Sanok/

Attorney Advisor

Office of the Deputy Commissioner

for Trademark Examination Policy

dawn-marie.sanok@uspto.gov

571-272-9577 (O)

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