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Trademark Application’s Identification of Goods is Within The PTO’s Discretion

Jul.24.2007

In In re Omega SA (No. 2006-1234; June 12, 2007), a Federal Circuit panel affirms the Trademark Trial and Appeal Board’s refusal to register the mark AQUA TERRA unless Omega amended its application to limit “chronographs” to “chronographs for use as watches,” on the ground that “chronographs” can refer not only to watches in Class 14, but also to time recording instruments in Class 9.

On appeal, Omega argued that (1) it already had several registered trademarks in Class 14 for “watches and chronographs;” (2) the parent Swiss registration is based on Class 14 and includes “chronographs [watches],” “chronometers,” and “chronometrical instruments;” and (3) the required limitation is superfluous because the only chronographs in Class 14 are watches. Omega also asserted that the PTO’s required limitations in the instant application would adversely effect the scope of its prior registrations.

The Court agrees with the TTAB’s finding that “the scope of the term ‘chronographs’ is ambiguous for registration purposes, for it includes both watches and time recording devices.” The Court then affirms that the PTO has discretion to determine whether and how a trademark registration should include a more particularized statement of goods, and that “the PTO did not abuse its discretion in requiring a limitation of chronographs in Class 14 to those “as use for watches. Lastly, regarding Omega’s assertion that the required limitation would adversely effect its prior trademark registrations, the Court noted that “the PTO has assured the court that the imposition of this requirement will not effect existing registrations.”

[http://www.fedcir.gov/opinions/06-1234.pdf]

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