Federal Circuit has no time for imprecise identifications

The US Court of Appeals for the Federal Circuit has upheld the US Patent and Trademark Office's (USPTO) decision to refuse an application to register the mark AQUA TERRA for a number of goods in Class 14 of the Nice Classification, including "chronographs" (In Re Omega SA (Case SN 78/192,104, July 23 2007)).

The examining attorney refused Omega's application on the grounds that the term 'chronographs' can refer not only to watches in International Class 14, but also to time recording instruments in International Class 9. The USPTO directs attention to the online "Acceptable Identification of Goods and Services Manual", which identifies "chronographs for use as specialized time recording apparatuses" as classified in International Class 9, whereas "chronographs for use as watches" or "chronographs for use as timepieces" are in Class 14. The examining attorney requested that Omega limit the identification 'chronographs' to either "chronographs for use as watches" or "chronographs for use as timepieces".

Omega declined to amend its application and appealed to the Trademark Trial and Appeal Board (TTAB), arguing that it already has several registered trademarks in International Class 14 for use with "watches and chronographs", and that the term 'chronographs' includes timepieces such as watches, whether or not that term is also used for time recording instruments. Omega pointed out that US Class 14 does not include time recording instruments and argued that the USPTO requirement to restrict the definition of goods for registration of AQUA TERRA in International Class 14 is inconsistent with Omega's several other trademark registrations in International Class 14. Omega expressed concern as to the effect of such a restriction on its existing registrations.

Omega further argued that the term 'chronograph' is internationally understood in the watch industry; although Omega did not dispute that 'chronograph' can also designate time recording instruments. It contended that the USPTO should not now require this additional qualification to the US registration because the parent Swiss registration is based on International Class 14, which includes "chronographs [watches]", "chronometers" and "chronometrical instruments".

The TTAB noted that the USPTO has discretion to determine whether and how a trademark registration should include a more particularized statement of the goods for which the mark is to be used. It further stated that the requirement of a more precise description of goods for a US registration is not governed by the international classification, nor by the existence of any foreign registration or other domestic registration for similar goods. The TTAB stated that the classification system is merely a search tool and does not determine the trademark owner's rights, which are based on use of the mark and identification of the goods, not on the class in which the mark is registered. Moreover, it held that if Omega were permitted registration for 'chronographs' without limitation to watches, Omega could assert the registered mark against a maker of time recording instruments despite not using the trademark for such goods.

On appeal to the Federal Circuit, the court held that the USPTO had not abused its discretion in determining that the term 'chronographs' in the registration should be restricted to those "for use as watches" and affirmed the identification limitation requirement.

Brian E Banner, Rothwell Figg Ernst & Manbeck PC, Washington DC

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