Wednesday, July 25, 2007

CAFC Affirms TTAB Decision Upholding PTO Requirement for More Particularized Identification of "Chronographs"

In an enervating precedential ruling, the U.S. Court of Appeal for the Federal Circuit has affirmed the TTAB's decision of November 4, 2005 (here), upholding the PTO's refusal to register the mark AQUA TERRA for, inter alia, "chronographs" in class 14, unless Omega amended its application to limit "chronographs" to "chronographs for use as watches." In re Omega SA, 83 USPQ2d 1541 (Fed. Cir. 2007).

The Examining Attorney maintained that the term "chronographs" is ambiguous because it may refer not only to watches in class 14, but also to time recording instruments in class 9. Applicant Omega argued that it already owns several registration in class 14 for "watches and chronographs," and it expressed a concern that the requirement of a restriction of the instant application might affect its existing registrations.

The Board agreed with the PTO, ruling that it was within the PTO's discretion to require that goods be identified with particularity. "[T]he requirement herein imposed is not so extreme or unreasonable as to warrant judicial intervention into the internal procedures and requirements of PTO trademark examination."

As to Omega's concern regarding its other registrations, the court confirmed "the general rule that the definition of goods in one registration does not taint the definition of similar goods in any other registration." Moreover, "the PTO has assured the court that the imposition of this requirement will not effect [sic!] existing registrations."

And so, the court affirmed the TTAB's decision.

Text Copyright John L. Welch 2007.


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