Addressing whether the registrant’s U.S. trademark description can be more particularized than the international classification of goods, the U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) that the United States Patent and Trademark Office (USPTO) has the discretion to require a more precise statement of goods. In Re Omega Sa (Omega AG) (Omega Ltd.) Case No. 06-1234 (Fed. Cir., July 23, 2007) (Newman J.).
Omega applied for a U.S. trademark on AQUA TERRA in Class 14 for "jewelry, precious stones; watches, watch straps, watch bracelets and parts thereof; chronometers, chronographs, watches made of precious metals, watches partly or entirely set with precious stones in International Class 14." The USPTO refused to register the trademark unless Omega amended its application to limit "chronographs" to "chronographs for use as watches" on the grounds that the term "chronograph" can refer to both "watches" in Class 14 as well as "time recording instruments" in Class 9.
Omega did not dispute the finding that "chronograph" in Class 14 can also designate "time recording instruments" in Class 9. Omega declined, however, to amend its application. Omega argued that the requested limitation was unnecessary under the Trademark Manual of Examination Procedures (TMEP) and would lead to inconsistent application of U.S. trademark laws since the only "chronographs" in Class 14 were watches. Omega further argued that it already had foreign and domestic registrations in Class 14 without such a limitation and requiring one on this application would adversely affect Omega’s other trademarks in that class.
The USPTO responded by arguing that U.S. registrations are not governed by international classification, nor by the existence of other foreign and domestic registrations in the same class. The USPTO argued that such an unfettered description of goods could allow Omega to assert the proposed trademark on "time recording instruments," although Omega would not be using the trademark on such goods. The USPTO argued that the requested limitation in the current application could not be used against any of Omega’s existing trademarks.
The Court held that the USPTO has discretion to require a more particularized description in U.S. trademark applications than the international classification of goods, as long as such requirements are not extreme or unreasonable. Although the Court was doubtful whether the USPTO’s concerns were realistic, the Court held that confusion or conflict between similar trademarks registered in Class 9 and Class 14 could be avoided without harm to Omega’s trademarks. The Court also confirmed the general rule that that the definition of goods in one registration does not taint the definition of similar goods in any other registration.
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