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

Client Alert | 1 min read | 07.24.07

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.”

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Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

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