TTAB Affirms Rejection of SOU filed by Assignor After Assignment
AmericasourceBergen Corp. (ABC) and PMSI Inc. were slightly off in their timing in filing a Statement of Use for the mark PMSI MSA for "healthcare cost containment" services. ABC filed the SOU on September 10, 2008, but it had assigned the mark to PMSI on September 8, 2008 (after ABC signed the SOU on that same day). Oops! The Board agreed with Examining Attorney Deirdre G. Robertson that the Statement of Use was ineffective because it was not filed by the owner of the mark, and so the Board affirmed the refusal to register. In re PMSI, Inc., Serial No. 76667397 (June 3, 2009) [not precedential].
The notice of allowance issued on April 1, 2008, so ABC's Statement of Use was due on or before October 1, 2008. When it filed the SOU on September 10th, it did not request an extension of time. The PTO first rejected the SOU on October 9, 2008, by which time it was too late to file a new SOU or to correct any substantive defects in the SOU filed on September 10th.
The PTO took the position that ABC was not the owner of the mark when the SOU was filed on September 10th. PMSI argued that as of that date, the PTO records still showed ABC as the owner of the mark (because the assignment to PMSI was not recorded until the next day, September 11th). So what? said the Board.
First it pointed to Assignment Rule 3.54, which states:
The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that the document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office. 37 C.F.R. § 3.54 (emphasis added by Board).
Reviewing the assignment document of September 8th, the Board found that its effect was "to transfer ownership of the application from ABC to PMSI on that date." Therefore, on September 8, 2008, PMSI stepped into the shoes of ABC as owner of the application. In short, PMSI became 'the applicant.'"
The Board then turned to Trademark Act Section 1(d)(1), 15 U.S.C. § 1051(d)(1), which requires, in pertinent part, that “Within six months after the date on which the notice of allowance with respect to the mark is issued … the applicant shall file in the Patent and Trademark Office … a verified statement that the mark is in use in commerce….” 15 U.S.C. § 1051(d)(1) (emphasis added by the Board).
On September 10, when ABC filed the Statement of Use, PMSI was "the applicant." Therefore the filing was not in compliance with the statutory requirement.
The Board noted that even in the absence of the recording, "the defect would still be present and could potentially serve as grounds for attacking any resulting registration." It pointed out that ABC and PMSI "could have avoided this circumstance simply by filing the statement of use before effecting the assignment."
TTABlog comment: ABC and PMSI could also have avoided the problem had PMSI filed the SOU that had been signed by ABC. The statute doesn't say that the Statement of Use must be signed by the owner of the mark, just filed by the owner. In short, the wrong company filed the perfectly valid, ABC-signed document. If this isn't elevating form over substance, I don't know what is.
Text Copyright John L. Welch 2009.