Definition of Goods in one Trademark Registration Does not Affect Earlier Registrations
In In re Omega S.A., watchmaker Omega appealed a decision of the Trademark Trial and Appeal Board (TTAB) sustaining PTO's refusal to register Omega’s trademark AQUA TERRA in Class 14 for "chronographs" unless Omega limited "chronographs" to "chronographs for use as watches." The PTO’s refusal was based on its contention that the term "chronographs" can refer not only to watches in Class 14, but also to time recording instruments in Class 9.
Omega declined to amend its application, arguing that it already has several registered trademarks in Class 14 for use with "watches and chronographs," and that the term "chronographs" includes timepieces such as watches, whether or not "chronographs" also is used for time recording instruments. During proceedings, Omega expresses concern as to the effect the amendment could have on its existing registrations. On appeal, the Federal Circuit requested additional briefing on this point.
In its brief, the PTO acknowledged Omega’s concern. However, it stated that "third parties cannot challenge prior registrations based on terminology used in the ID in a more recent application/registration." Moreover, the requirement for amendment to "chronographs for use as watches" has "no retroactive effect on [Omega’s] existing registrations" and "in no way harms or puts at risk previously registered marks having broader IDs." The Federal Circuit agreed, stating the general rule that the definition of goods in one registration does not taint the definition of similar goods in any other registration.In its brief, Omega pointed to its several existing registrations for "chronographs" in Class 14, and argued that variations in the definition of goods among several trademarks might make its valuable marks vulnerable in unknown ways, or at least would require the burden and expense of modification of the existing registrations. The Federal Circuit acknowledged that consistency is highly desirable, and that the time and expense of complying with inconsistent applications burdens both the PTO and the public. However, the court found that the requirement being imposed on Omega was not so extreme or unreasonable as to warrant judicial intervention into the internal procedures and requirements of PTO trademark examination.
Holding: no abuse of discretion in refusing the AQUA TERRA registration.
Comments:
- Federal Circuit opinion: In re Omega SA, No. 2006 Civ 1234 (Fed. Cir. 2007)
- TTAB opinion: In re Omega SA, Ser. No. 78/192,104 (TTAB Nov. 4, 2005).
