Dermahose Inc.

Trademark Trial and Appeal Board

Feb 13, 2007

No. 76585901 (T.T.A.B. Feb. 13, 2007)

Mailed:
13 February 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dermahose Inc.
________

Serial No. 76585901
_______

Myron Amer of Myron Amer, P.C. for Dermahose Inc.

Cynthia Sloan, Trademark Examining Attorney, Law Office 116
(M.L. Hershkowitz, Managing Attorney).
_______

Before Holtzman, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 9, 2004, Dermahose Inc. (applicant) applied
under the intent to use provisions of the Trademark Act (15
U.S.C. § 1051(b)) to register the mark EPIL HOSE in
standard character form on the Principal Register for
“pantyhose treated with inhibitors of hair growth” in Class
25. Serial No. 76585901. The application contains a
disclaimer of the term “Hose.”
The application was published for opposition on
January 25, 2005. On April 19, 2005, the Office issued a
notice of allowance. On August 29, 2005, applicant filed a
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 76585901

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“Declaration Pursuant to 37 C.F.R. § 2.20 to Support
Allegations in Statement of Use under Sec. 2.88.”
The language in the declaration is set out below:
Paul Zaidman declares: That he is president of
the applicant of the above-captioned application and
has authorized MYRON AMER, as attorney, to execute
this declaration on his behalf; that he believes said
applicant to be the owner of the trademark sought to
be registered and entitled to use the mark in
commerce; that to the best of his knowledge and
belief, no other person, firm, corporation or
associate [sic] has the right to use said mark in
commerce, either in the identical form or in such near
resemblance thereto as may be likely, when applied to
the goods of such other person, to cause confusion, or
to cause mistake, or to deceive; that the mark was
first used in intrastate and interstate commerce at
least as early as August 17, 2005, and is still in use
in such commerce; that the mark is used for “PANTYHOSE
TREATED WITH INHIBITORS OF HAIR GROWTH” in
International Class 25; that the mark is used on the
packaging of the goods, there being submitted herewith
pursuant to TMEP 905.04(b) a specimen, consisting of a
stamping applied by a rubber stamp on the packaging of
the goods, showing the manner in which the mark is
used on the goods; that all statements made of his own
knowledge are true and that all statements made upon
information and belief are believed to be true; and
further that these statements were made with the
knowledge that willful false statements and the like
so made are punishable by fine or imprisonment, or
both, under Section 1001 of Title 18 of the United
States Code, and that such willful false statements
may jeopardize the validity of the application or any
registration resulting thereform.

The declaration was signed1 as follows:

1 We note that the declaration was apparently incorrectly dated
August 24, 2004 instead of 2005.
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On September 21, 2005 (p. 1), the examining attorney
notified applicant that the declaration was not acceptable
because “Myron Amer does not make any statements in the
declaration. Rather, the declaration is merely a statement
as to the beliefs of applicant’s president, Paul Zaidman.”
TMEP § 1109.07 (4th ed. April 2005) (“The examining attorney
will review the statement of use to confirm that it meets
the requirements of the Act and the rules”). On October
11, 2005, applicant responded to the examining attorney’s
objection to the statement of use but it did not file an
alternative statement of use or a request for an extension
of time to file a statement of use. See TMEP § 1109.02:
However, to gain additional time to comply with the
minimum requirements, the applicant may file a final
(“insurance”) extension request with or after the
filing of a statement of use, if there is time
remaining in the statutory period for filing the
statement of use, provided that granting the extension
request would not extend the time for filing the
statement of use beyond thirty-six months from the
issuance of the notice of allowance).

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See also TMEP § 1109.11 (“The requirement that a statement
of use include a signed verification or declaration is a
statutory requirement that must be satisfied before
expiration of the deadline for filing the statement of
use”).
Ultimately, the examining attorney refused
registration on the ground that “the declaration supporting
the statement of use is unacceptable.” Brief at 1.
Specifically, the examining attorney maintains that
“Applicant’s attorney attempts to sign a declaration for
which he makes no statement. Rather, he is relying on
statements made by Paul Zaidman. If the declaration is
made by Paul Zaidman, which is clear from the above
language, ‘PAUL ZAIDMAN declares,’ then it must be signed
by him.” Brief at unnumbered pp. 3-4.
Applicant maintains (Brief at unnumbered p. 2) that
the statement that “Paul Zaidman … has authorized MYRON
AMER, as attorney, to execute this declaration on his
behalf” is an implied power of attorney under 37 CFR
§ 2.33(a)(3). Also, applicant’s position is that the
application’s power of attorney is an authorization to sign
the declaration. Finally, applicant asserts that “the
procedure followed by counsel was recommended by another
examining attorney and, by approximate count of fifty or so
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instances, has been accepted without objection by any other
examining attorney.” Reply Brief at unnumbered p. 2.
In this case, applicant has filed a statement of use
and the examining attorney has objected to the statement
because the declaration indicates that it is the
declaration of Paul Zaidman but it is signed by Myron Amer.
USPTO’s rules list some of the requirements for a statement
of use as follows (37 CFR § 2.88):
(a) In an application under §1(b) of the Act, a
statement of use, required under §1(d) of the Act, must
be filed within six months after issuance of a notice
of allowance under §13(b)(2) of the Act, or within an
extension of time granted under §2.89. A statement of
use that is filed prior to issuance of a notice of
allowance is premature, will not be considered, and
will be returned to the applicant.
(b) A complete statement of use must include:
(1) A statement that is signed and verified (sworn to)
or supported by a declaration under §2.20 by a person
properly authorized to sign on behalf of the applicant
(see §2.33(a)) that:
(i) The applicant believes it is the owner of the mark;
and
(ii) The mark is in use in commerce, specifying the
date of the applicant’s first use of the mark and first
use of the mark in commerce, and those goods or
services specified in the notice of allowance on or in
connection with which the applicant uses the mark in
commerce.
Trademark Rule 2.20 (37 CFR § 2.20) provides that trademark
verifications may be made by “an oath, affidavit,
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verification, or sworn statement, the language of 28 U.S.C.
1746,” or a declaration punishable under 18 U.S.C. § 1001.
Trademark rules (37 CFR § 2.193) also require the
following:
(c)(1) Each piece of correspondence that requires a
person’s signature, must:

(i) Be an original, that is, have an original
signature personally signed in permanent ink by that
person; or

(ii) Be a copy, such as a photocopy or facsimile
transmission (§2.195(c)), of an original. In the
event that a copy of the original is filed, the
original should be retained as evidence of
authenticity. If a question of authenticity arises,
the Office may require submission of the original.2

When the Office changed the rules to permit attorneys
to sign the application and other papers, the following
explanation was provided (64 Fed. Reg. 48900, 48901-02,
September 8, 1999):
Currently, sections 1(a)(1)(A) and 1(b)(1)(A) of the
Act require that an application by a juristic
applicant be signed "by a member of the firm or an
officer of the corporation or association applying."
TLTIA section 103 amends sections 1(a) and 1(b) of the
Act to eliminate the specification of the appropriate
person to sign on behalf of an applicant.

2 37 CFR § 2.193(c)(1)(iii) also addresses signatures for
electronic filings. Obviously, if applicant filed electronically
or used the USPTO’s standard form this problem could have been
avoided. See also TMEP § 1109.05 (4th ed. April 2005) (“To
expedite processing, it is recommended that the statement of use
be filed through TEAS, available at
http://www.uspto.gov/teas/index.html. Alternatively, the
applicant can call the Trademark Assistance Center at (571) 272-
9250 or (800) 786-9199 to have a pre-printed form mailed”)
(citation omitted).
Ser. No. 76585901

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The applicant or registrant, and the applicant’s or
registrant’s attorney, are best able to determine who
should sign documents filed in the Office. Therefore,
the Office will no longer question the authority of
the person who signs a verification, or a renewal
application, unless there is an inconsistency in the
record as to the signatory’s authority to sign.
Proposed § 2.33(a) stated that a person properly
authorized to sign on behalf of the applicant
"includes a person with legal authority to bind the
applicant and/or a person with firsthand knowledge and
actual or implied authority to act on behalf of the
applicant."

Comment: One comment suggested that § 2.33(a) be
amended to state that a person who is properly
authorized to sign on behalf of the applicant
includes: (1) A person with legal authority to bind
the applicant, (2) a person with firsthand knowledge
of the facts asserted, and actual or implied authority
to act on behalf of the applicant, and (3) an attorney
as defined in §10.1(c) of this chapter who has an
actual or implied, written or verbal power of attorney
from the applicant, provided that the Office may
require written confirmation of such power of attorney
subsequent to the filing of the verified statement.

Response: The suggestion has been adopted, but
modified slightly. The Office will not require
written confirmation of a power of attorney, but will
accept the attorney's word that he or she is
authorized to sign on behalf of the applicant.

It is clear that a statement of use must include a
“statement that is signed and verified (sworn to) or
supported by a declaration under §2.20 by a person properly
authorized to sign on behalf of the applicant.” The rules,
however, do not provide authority for attorneys to sign
another person’s declaration. It is also clear that
persons who may sign the statement of use include, inter
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alia, a person with legal authority to bind the applicant3
and an attorney4 “who has an actual or implied written or
verbal power of attorney from the applicant.” 37 CFR
§ 2.33(a)(1) and (3). Therefore, both Mr. Zaidman and Mr.
Amer had the authority to sign the statement of use. The
question then becomes whether Mr. Amer may sign
Mr. Zaidman’s declaration.5 We hold that he cannot.

3 “Generally, the Office does not question the authority of the
person who signs a verification, unless there is an inconsistency
in the record as to the signatory's authority to sign.” TMEP
§ 804.04 (4th ed. rev. April 2005). “President” is considered a
title that would indicate that the person has authority to sign
on behalf of the corporation. See, e.g., TMEP § 712.01(a)(iv)
(4th ed. rev. April 2005) (“A response to an Office action by a
corporation that is not represented by an attorney must be signed
by a corporate officer. An officer is a person who holds an
office established in the articles of incorporation or corporate
bylaws. The usual titles for officers are President…”).
4 “If an attorney signs a verification on behalf of an applicant,
the Office will not require a power of attorney or other
documentation stating that the attorney is authorized to sign.”
TMEP § 804.04.
5 We are aware that this case could also have been subject to a
petition to the Commissioner for Trademarks. In re Du Pont Merck
Pharmaceutical Co., 34 USPQ2d 1778, 1781 (Comm’r Pat. 1995) (“In
the present case, the issue regarding the proper signatory for an
application and Statement of Use filed by a partnership Applicant
is clearly one of procedure and practice under the rules, and is
properly reviewable on petition"). However, there are matters
that may be reviewable “by either appeal or petition.” TBMP
§ 1201.05 (2d ed. rev. 2004). Specifically, an “appeal to the
Board may be taken from any final action … issued by the
trademark examining attorney … whether the matter involved in the
examining attorney’s action is substantive or procedural in
nature”). Id. Inasmuch as this case has been appealed to the
board and it appears to be reviewable by either petition or
appeal, we will proceed to decide the issue in this case. We
note that it is not clear why applicant did not provide a
substitute declaration to satisfy the examining attorney’s
requirement and, thereby, avoid this appeal.

Ser. No. 76585901

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As indicated above, an applicant may meet the
requirement for a verified or sworn statement by using an
oath, affidavit, verification, or sworn statement. In
addition, 28 U.S.C. § 1746 permits the use of an unsworn
declaration under penalty of perjury whenever “any matter
is required to be supported or permitted to be supported …
by the sworn oath, verification, or statement” of a person.
The unsworn declaration under penalty of perjury concludes
with the following statement:
I declare (or certify, verify, or state) under penalty
of perjury under the laws of the United States that
the foregoing is true and correct.

USPTO rules also provide another option. Rule 2.20
permits the use of a statement in which the person is
warned of 18 U.S.C. § 1001’s criminal penalties:
The undersigned being warned that willful false
statements and the like are punishable by fine or
imprisonment, or both, under 18 U.S.C. 1001, and that
such willful false statements and the like may
jeopardize the validity of the application or document
or any registration resulting therefrom, declares that
all statements made of his/her own knowledge are true;
and all statements made on information and belief are
believed to be true.
Applicant attempted to use this option. However, it
changed the language.
Paul Zaidman declares: That he is president of the
applicant of the above-captioned application and has
authorized MYRON AMER, as attorney, to execute this
declaration on his behalf; that he believes said
applicant to be the owner of the trademark… that all
Ser. No. 76585901

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statements made of his own knowledge are true and that
all statements made upon information and belief are
believed to be true; and further that these statements
were made with the knowledge that willful false
statements and the like so made are punishable by fine
or imprisonment, or both, under Section 1001 of Title
18 of the United States Code, and that such willful
false statements may jeopardize the validity of the
application or any registration resulting thereform.

Most critically, the statement omits the language “the
undersigned.” In effect, the common feature of oaths,
sworn statements, unsworn declarations under penalty of
perjury, and declarations under Rule 2.20 is that the
person making the statement is subjecting himself or
herself to criminal penalties for making statements that
the person knows are not true. For example, the unsworn
declaration ends with the statement “I declare” and a
properly worded Rule 2.20 declaration states the
“undersigned … declares.”
Applicant has modified the Rule 2.20 statement to
indicate that the undersigned is not declaring or
subjecting himself to anything. Therefore, it does not
meet the requirement for a Rule 2.20 declaration or any
other form of oath or declaration and applicant has not
complied with the requirements for submitting a statement
of use under Rule 2.88 and as a result there is material
inconsistency in the declaration. TMEP § 804.04. Inasmuch
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as applicant’s declaration is deficient, we affirm the
examining attorney’s refusal to register.6
Decision: The examining attorney’s refusal to
register the mark is affirmed.

6 We add that there is no evidence that the Office has permitted
these types of declarations in the past besides applicant’s
closing statement in its reply brief to which the examining
attorney has not had an opportunity to reply. Even if this were
the case, it would hardly justify the continuation of the
practice. These examining attorneys would not have had the
authority to ignore the requirement for a proper declaration
under Rule 2.20. Accord In re Boulevard Entertainment Inc., 334
F.3d 1336, 67 USPQ2d 1475, 1480 (TTAB 2001) (“The fact that,
whether because of administrative error or otherwise, some marks
have been registered even though they may be in violation of the
governing statutory standard does not mean that the agency must
forgo applying that standard in all other cases”).