On June 3rd, 2009, the Trademark Trial and Appeal Board (TTAB) upheld a decision by the Examining Attorney, rejecting the Statement of Use for the mark PMSI MSA on "healthcare cost containment, namely, medical, pharmacy, durable medical equipment and specialty service reimbursements for third party payers under government sponsored programs" in International Class 35. The Examining Attorney concluded that the Statement of Use was ineffective as it was not filed by the actual owner, as the mark had changed hands three days before filing. The TTAB affirmed.
The United States Patent and Trademark Office (USPTO) mailed the Notice of Allowance to AmerisourceBergen Corp. (ABC) for the PMSI MSA mark on April 1, 2008 which required ABC to file its Statement of Use by October 1, 2008.
On September 8th, 2008, ABC completed and signed the Statement of Use for its PMSI MSA application. On that same day, but after signing the Statement of Use, ABC assigned the PMSI MSA mark to PMSI, Inc. (PMSI). The TTAB concluded that the assignment was effectuated the moment ABC signed the assignment document. Nothing in the document stated otherwise, and neither PMSI nor ABC argued with this conclusion by the Board.
On September 10th, 2008, ABC mailed the Statement of Use to the USPTO, which was received by the USPTO on September 12th, 2008. On September 11th, 2008, PMSI recorded the assignment electronically with the USPTO, thus the assignment was recorded on the same date.
The Examining Attorney issued an office action rejecting the Statement of Use several weeks later, on October 9th, after the deadline to file or correct the Statement of Use had passed, concluding that the Statement of Use was improper, as ABC, was not the owner of the application on the date ABC filed the Statement of Use, September 10th, 2008. Neither PMSI nor ABC had filed an extension of time to file a Statement of Use before the deadline lapsed, thus no corrections could be made, and the application was deemed abandoned.
ABC disagreed, arguing that
The Examining Attorney improperly held that ABC was not the owner of the mark when the SOU was filed on September 10, 2008. As of that date, the USPTO records would have shown that ABC, the original Applicant, was the owner of record of the application and entitled to take action, namely to file a SOU to issue the allowed application for registration. The assignment to PMSI was submitted the day after the SOU was filed for the purpose of insuring [sic] that the registration would issue in the name of the assignee of the mark and goodwill pursuant to § 502 T.M.E.P.
PMSI also argued against the refusal, discounting the importance of the timing of the assignment itself, citing Assignment Rule 3.54 which states, in sum, that the Office does not determine the validity of an assignment document recorded with the USPTO, or the effect that the same document has on title of an application. The section also states, however, that, when necessary the Office will determine whether a party cited in the assignment document has the authority to take action in a matter pending before the Office.
PMSI argued that, at the time the Statement of Use was filed, the USPTO records still listed ABC as owner of the mark. Moreover, PMSI's intention was clear, given the sequence of timing in signing the Statement of Use and the assignment.
The Trademark Trial and Appeal Board disagreed, acknowledging that the effect of assignment could not be reconciled with the statutory requirements for filing a Statement of Use in the present situation.
The Board reviewed the assignment document and concluded that the assignment effectuated a complete and total transfer of ownership of the application on September 8th, 2008, as no other intention could be inferred from the language in the assignment, itself. Therefore, PMSI, "stepped into the shoes of ABC as owner of the application. PMSI became, 'the applicant.'"
Trademark Act Section 1(d)(1) requires that the "applicant shall file in the Patent and Trademark Office a verified statement that the mark is in use in commerce." On September 10, 2008, when ABC filed the Statement of Use, ABC was not the applicant, and thus was not in compliance with the statutory requirement.
Even if the assignment had NOT been recorded with the USPTO, the defect could potentially serve as grounds for attack on the resulting registration, according to the Board. Thus, the application was deemed abandoned for lack of a proper Statement of Use.
The Board also acknowledged its regret in the decision, noting that ABC and PMSI acted with "the best intent and even in earnest to secure early issuance of the registration in the assignee's name," but that the lack of compliance with necessary statutory requirements and regulations could not be ignored.
This ruling, though apparently sound in its reading of the relevant regulations, appears to set form over substance. True, ABC could have avoided the problem by waiting to physically assign the application until after the Statement of Use was filed. However, could this result have been avoided if PMSI had physically filed the Statement of Use document signed by ABC? The governing statute for filing a Statement of Use cited by the Board in its decision, 15 U.S.C. § 1051(d)(1), states that the applicant of the mark must file the Statement of Use document, not that the applicant must sign the Statement of Use document. At the time of verification, ABC was the only party that could verify the actual use of the mark, as ABC was the applicant at the time use commenced, namely, October 13, 2006, according to the Statement of Use document filed by ABC.
Though ABC and PMSI stressed their intent as owners of the mark in their respective arguments against the refusal, namely, the parties' intent to bring the application to registration, while ensuring registration would be with the proper party, this intention was seemingly found irrelevant by the TTAB's decision to follow their reading of the respective statute and regulations.
Vol. 53, June 2010