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Baxley Mailed: May 16, 2007Opposition No.
91162715
Persis International, Inc.v.Burgett, Inc.Before Hohein, Rogers and Bergsman, Administrative Trademark JudgesBy the Board:Burgett, Inc. ("applicant") seeks to register the markSOHMER in typed form for "musical instruments, namelypianos" in International Class 15.
1
 Persis International, Inc. ("opposer") has filed anotice of opposition to the registration of applicant's markon the grounds of abandonment and fraud. In particular,opposer contends that applicant committed fraud by falselyasserting in a declaration in support of its applicationthat the mark had become distinctive through thesubstantially exclusive and continuous use of the mark by
1
Application Serial No. 76214968, filed February 23, 2001, basedon an assertion of a bona fide intent to use the mark in commerceunder Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). Theapplication includes a claim of acquired distinctiveness underTrademark Act Section 2(f), 15 U.S.C. Section 1052(f).
UNITED STATES PATENT AND TRADEMARK OFFICETrademark Trial and Appeal BoardP.O. Box 1451Alexandria, VA 22313-1451
 
 
Opposition No. 91162715
2applicant and related companies for at least five yearsprior to the date of the declaration.This case now comes up for consideration of thefollowing motions: 1) applicant's motion (filed April 28,2006) for summary judgment in its favor on the grounds thatit has not abandoned the mark and did not commit fraud inthe declaration at issue; 2) applicant's motion (filed April28, 2006) to exclude as trial evidence information anddocuments that opposer did not produce in discovery andwhich were obtained by way of nine subpoenas after the closeof the discovery period; 3) opposer's motion (filed May 15,2006) for entry of judgment as a discovery sanction forapplicant's failure to comply with the Board's March 7, 2006order compelling discovery; and 4) opposer's cross-motion(filed May 30, 2006) for summary judgment in its favor onthe ground of fraud. As an initial matter, applicant's involved applicationwas filed with the Office based on an assertion of a bonafide intent to use the mark in commerce under Trademark ActSection 1(b), 15 U.S.C. Section 1051(b). No amendment toallege use was filed in connection with the applicationprior to the publication for opposition of the application.Therefore, until applicant amends its application to allegeuse in commerce, opposer cannot properly assert anabandonment claim. See
Consolidated Cigar Corp. v.
 
Opposition No. 91162715
3
Rodriguez,
65 USPQ2d 1153, 1155 (TTAB 2002) (petitionercannot assert a three-year period of nonuse that began priorto respondent’s filing of its statement of use). Therefore,the abandonment claim herein is dismissed.Further, the Office file for applicant's involvedintent-to-use application indicates that the application wasapproved for publication on the basis of a declaration thatthe mark has become distinctive of applicant's goods"through the substantially exclusive and continuous use ofthe mark in commerce by the [a]pplicant and relatedcompanies for at least five years before the date of thisstatement."
2
An intent-to-use application should not beapproved for publication on the basis of a five years' usedeclaration unless an amendment to allege use has beenfiled. See TMEP Section 1212.09 (4th ed. 2005).
2
Applicant's contention that the application was approved forpublication on the basis of evidence of use and a priorregistration is contradicted by a review of the application file.In a January 7, 2003 Office Action, the examining attorneyfinally refused registration of the mark under Trademark ActSection 2(e)(4), 15 U.S.C. Section 1052(e)(4), finding thatapplicant's claim of acquired distinctiveness under Trademark ActSection 2(f), 15 U.S.C. Section 1052(f), which was based onapplicant's expired Registration No. 137464 and evidence of useof the involved SOHMER mark by applicant's predecessors-in-interest, was insufficient. The examining attorney, in aNovember 20, 2003 Office Action, denied applicant's request forreconsideration of the final refusal of registration, pointingout precisely why applicant could not rely on the priorregistration and evidence of use at issue in support of itsSection 2(f) claim. Applicant then submitted, on February 5,2004, the five years' use declaration, which resulted in theapplication being approved for publication on April 6, 2003. Accordingly, the record indicates that the application wasapproved for publication under Section 2(f) based solely on thefive years' use declaration.
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