Spearhead Holdings, Inc.

Trademark Trial and Appeal Board

Mar 3, 1999

No. 74398247 (T.T.A.B. Mar. 3, 1999)

Paper No. 15
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Spearhead Holdings, Inc.
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Serial No. 74/398,247
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Charles W. Quinn of Dann Dorfman Herrell and Skillman for
Spearhead Holdings, Inc.
Cheryl A. Butler, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 7, 1993, the above-referenced application was
filed, based on applicant’s assertion that it intended to
use the mark “COLORBURST” in commerce on “egg coloring
kits,” in Class 28. In addition to claiming it possessed a
bona fide intention to use the mark, applicant, through the
declaration of its president, who executed the application,
stated that “the undersigned hereby states on his/her own
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2
behalf and on behalf of Applicant, Spearhead Holdings,
Inc., that he/she believes Applicant, Spearhead Holdings,
Inc., will be, upon the filing of this application, the
owner of the mark ColorBurst sought to be registered for
use on and in connection with egg coloring kits…”
The Examining Attorney held that this language did not
satisfy the requirement of the Lanham Act for a verified
statement that applicant either believes it is entitled to
use the mark sought to be registered, or believes itself to
be the owner of the mark sought to be registered. The
Examining Attorney required a proper verified statement.
Applicant took issue with the requirement, arguing
that ownership could come about only as a result of use, so
that, in the absence of actual use of the mark, applicant
could not claim that it owned the mark until the intent-to-
use application had been filed, which would entitle
applicant to constructive use as of the filing date of the
application. Applicant did not address the alternative
option provided under Section 1(b) of the Act of claiming
that it believed itself to be entitled to use the mark it
intends to use and seeks to register.
In view of applicant’s failure to comply with the
requirement for a substitute verified statement which meets
the requirement of the statute, the Examining Attorney made
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the requirement final. Applicant timely filed a Notice of
Appeal. Both applicant and the Examining Attorney filed
briefs. Applicant did not request an oral hearing before
the Board.
Interestingly, following the brief timely filed on
April 15, 1998 by Examining Attorney Butler, applicant, on
May 15, 1998, filed a “REPLY TO EXAMINING ATTORNEY’S APPEAL
BRIEF,” to which counsel for applicant attached an
unexecuted copy of a declaration which meets the
requirements of the statute. In the proposed declaration,
the declarant states that “applicant believes applicant to
be the owner of the mark for which registration is sought
and applicant believes applicant is entitled to use the
mark in commerce.” Counsel for applicant acknowledged that
the copy of the declaration which was submitted was
unsigned, but explained that the original had been
forwarded to applicant for execution, and that the appeal
would be moot when the executed version was forwarded to
the Board after applicant’s counsel received it back from
applicant.
The Board has received no further papers in this
regard from applicant or applicant’s counsel. We must
therefore decide this appeal on its merits, as if
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4
applicant’s counsel had not offered to comply with the
requirement.
In any event, the Examining Attorney is correct in
requiring a declaration which satisfies the statutory
requirement for a verified allegation that applicant
believes that it is entitled to use the mark in commerce.
Our decision is not based on applicant’s argument
concerning the fact that applicant might not be technically
correct in asserting ownership of the mark until the filing
of its application based on its intention to use the mark.
Instead, our ruling is based on a point not even argued by
applicant in opposition to the requirement, that the
statute itself, in Section 1(b)(1)(A), provides that in the
case of an application based on the intent to use the mark,
in lieu of a verified assertion of ownership, an applicant
must include “a statement to the effect that the person
making the verification believes himself, herself, or the
firm, corporation, or association in whose behalf he or she
makes the verification, to be entitled to use the mark in
commerce…” Applicant has not explained why this provision
of the statute does not apply in this case.
Accordingly, the requirement for an acceptable
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verified statement that applicant believes that it is
entitled to use the mark it seeks to register is affirmed.
R. F. Cissel
E. J. Seeherman
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/398247
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