Citable No. 27: Domestic Assignee of Section 44 Applications Allowed to Amend Basis for Registration

In its 27th citable decision of 2006, the Board gave Applicant Joker, Inc. 30 days to amend two applications to change the filing basis because the original section 44 basis became invalid when the applications were assigned to Joker, a Texas corporation. Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).

Applicant's PINGU & Design mark
The Board noted that, because Section 44(e) of the Trademark Act represents an exception to the requirement that applicants must make use of a mark in commerce prior to US registration, "the requirements imposed on Section 44 applicants are strictly construed." A Section 44 applicant must be a person whose country of origin is a party to a convention or treaty to which the US is also a party. "Country of origin" means the country in which applicant has a "bona fide and effective commercial or industrial establishment," or if none, the country of domicile, or the country of which applicant is a national.

Opposer's PING mark
Applicant Joker contended that it has qualifying "countries of origin" that entitled it to rely on its predecessors' Section 44 claims. The Board disagreed. Joker's status as a trademark holding company and wholly-owned subsidiary of a UK company was not sufficient, nor was the fact that its officers and principals operate outside the US and that it may sell products abroad through related companies or licensees. Joker is "purely and simply a domestic corporation and, thus, does not qualify as a 'person' entitled to claim the benefits of Section 44(e)." The Board therefore agreed with Opposer Karsten that Joker cannot rely on the Section 44 basis asserted by its foreign assignor.

The next question was whether the assignment rendered the applications invalid. The Board noted that the Trademark Law Treaty Implementation Act of 1998 (TLTIA) permits an applicant to amend or substitute bases both before and after publication of a mark for opposition. In Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002), the Board confirmed that "such an amendment or substitution of application basis was acceptable for applications that are the subject of an opposition proceeding, noting that such amendments to add a post-publication Section 1(b) basis are permissible if there is a continuing valid basis for registration."

Therefore, the Board ruled that the subject applications are not void due to the assignment to the Texas corporation and that the corporation may file an amendment (within 30 days) to substitute an acceptable basis for registration in each application.

Text Copyright John L. Welch 2006.