Friday, April 03, 2015

Precedential No. 12: WYHA? TTAB Says Application Must Be Verified, Affirms Refusal to Register

Here's a shocker: a trademark application must be verified! The Board affirmed a refusal to register the mark SIMPLY ORANGECELLO for orange flavored liqueur because Applicant John Michael Brack never satisfied the verification requirement. In fact, applicant never even addressed that refusal to register, either during prosecution of the application or during the appeal. In re John Michael Brack, 114 USPQ2d 1338 (TTAB 2015) [precedential].

Examining Attorney Amy E. Hella issued a refusal to register under Section 2(d), and also noted that the application was not signed or verified. Applicant addressed the Section 2(d) issue in his response, but ignored the verification requirement. Subsequently, the Section 2(d) refusal and the verification requirement were made final, and the refusals were maintained on reconsideration.

In his appeal brief, applicant ignored the verification requirement. In her brief, the examining attorney addressed both the Section 2(d) refusal and the verification requirement. Applicant did not submit a reply.

The Board observed that an applicant filing a Section 1(b) application must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce in connection with the identified goods and/or services. See Section 1051(b)(3)(B) of the Lanham Act. Here, the original application (filed by applicant himself) was unsigned. The examining attorney explained in detail the procedures necessary for applicant to comply with the verification requirement. Although all of applicant's communications submitted after the original application were properly signed by applicant's attorney, none contained the required averments and thus they did not satisfy the verification requirement.

[S]ignature and verification of the averments in an application is a requirement for establishing a basis for application; in this case, a bona fide intent to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.§ 1051(b). See also Trademark Rule 2.34(a)(2), 37 C.F.R.§ 2.34(a)(2). A simple and straightforward requirement, it nonetheless is necessary to support the averments made in an application. Applicant failed to comply with this requirement despite clear and repeated admonitions from the Examining Attorney.

Therefore, the Board affirmed the verification requirement and affirmed the refusal to register on that basis. The Board also noted that the application cannot be reopened for further examination following this appeal. See Trademark Rule 2.142(g).

Read comments and post your comment here

TTABlog note: What the ....?

Text Copyright John L. Welch 2015.


At 8:17 AM, Anonymous Bob O'Connell said...

Stunned to click on the link and see that applicant was not pro se (at least on appeal).

At 9:49 AM, Anonymous Anonymous said...


At 11:34 AM, Anonymous Joe Dreitler said...

Stunned indeed. Especially to see that while filed pro se there was a lawyer who filed the response to the first Office Action and subsequent action. Not quite sure why that is an issue or why you would appeals if your client refused to verify it.

At 12:04 PM, Blogger eliadesn said...

This Applicant was ill informed from the start. Whether this entire debacle was just a method to produce more billable hours remains to be seen. Though obviously the client has the last word, to move forward with "SIMPLY ORANGECELLO" in light of the highly probable opposition from Coca-Cola, the owner of "SIMPLY ORANGE" (registered for orange juice, R# 2692046), is just bad practice.


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