Humanoids Group v.  JAMES E. ROGAN, Director of the United States Patent and Trademark Office

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
 HUMANOIDS GROUP,
Plaintiff-Appellant,
v.
No. 03-1896  JAMES E. ROGAN, Director of the
United States Patent and Trademark
Office,
Defendant-Appellee. 
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
James C. Cacheris, Senior District Judge.
(CA-02-1419)
Argued: June 2, 2004
Decided: July 20, 2004
Before MOTZ and KING, Circuit Judges,
and David R. HANSEN, Senior Circuit Judge of the
United States Court of Appeals for the Eighth Circuit,
sitting by designation.
Affirmed in part and dismissed in part by published opinion. Judge
Motz wrote the opinion, in which Judge King and Senior Judge Han-
sen joined.
COUNSEL
ARGUED: Mark Lebow, YOUNG & THOMPSON, Arlington, Vir-
ginia, for Appellant. C. Edward Polk, Jr., Associate Solicitor,

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UNITED STATES PATENT & TRADEMARK OFFICE, Arlington,
Virginia, for Appellee. ON BRIEF: Thomas W. Perkins, YOUNG &
THOMPSON, Arlington, Virginia, for Appellant. Paul J. McNulty,
United States Attorney, Dennis E. Szybala, Assistant United States
Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alex-
andria, Virginia; John M. Whealan, Solicitor, Cynthia C. Lynch,
Associate Solicitor, Arlington, Virginia, for Appellee.
OPINION
DIANA GRIBBON MOTZ, Circuit Judge:
In this appeal, we consider whether the United States Patent and
Trademark Office may reject an application to register a trademark
because the application contains multiple marks. For the reasons that
follow, we conclude that it may. Accordingly, except for the appeal
of a subsidiary point that we dismiss for lack of jurisdiction, we
affirm the judgment of the district court.
I.
On March 19, 2001, Humanoids Group registered the mark1 "Hu-
manoids" with the Institut National de la Propriete Industrielle of the
Republic of France. Under § 44(d) of the Lanham Act, 15 U.S.C.
§ 1126(d) (2000), Humanoids Group could claim priority for use of
the mark in the United States as of this date, if it filed an application
to register the mark with the United States Patent and Trademark
Office ("PTO") within the next six months.2
1A "mark" is a word, phrase, symbol or design, or a combination
thereof, that identifies and distinguishes the source of the goods or ser-
vices of one party from those of others. 15 U.S.C. § 1127 (2000).
2Generally, the Lanham Act provides that an applicant seeking to reg-
ister a trademark in the United States may claim a nationwide right of
priority for use of the mark as of the filing date of its application with
the PTO. See 15 U.S.C. § 1057(c) (2000). However, § 44(d) provides
that an applicant who has registered a mark with certain foreign regis-
tries, including the Institut National, may claim priority in the United
States as of the date of the foreign filing if the applicant files an applica-
tion with the PTO within six months of that date. See id. § 1126(d).
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On the last day of the six-month period, September 19, 2001,
Humanoids Group filed an application with the PTO that contained
the mark "Humanoids." The application identified the mark submitted
for consideration as "Humanoids," stated that the application was
filed pursuant to § 44(d) of the Lanham Act (which requires that the
mark in the application and the previously-filed foreign mark be the
same), and noted the serial number of the French trademark applica-
tion for the mark "Humanoids." But, the application also presented
another mark, "Graphic Stories." The application stated that "[a]
drawing page displaying the mark in conformance with 37 C.F.R.
2.52 is submitted with this application," and, on the attached drawing
page, identified "Graphic Stories" as the mark it sought to obtain.
The PTO accepted Humanoids Group’s application and assigned it
a September 19 filing date, but treated it as an application for the
mark set forth on the drawing page — "Graphic Stories." Because the
six-month window expired the next day, the PTO’s failure to treat the
application as one for the "Humanoids" mark caused Humanoids
Group to lose the right to claim use of that mark in the United States
as of its March 19 French filing date. Thus, another party’s May 4,
2001 application with the PTO to register the "Humanoids" mark
gained that party priority over use of the mark in the United States.
In an effort to lay claim to the French filing date, and maintaining
that it had committed only a "scrivener’s error" in identifying
"Graphic Stories" as its mark in the September 19 application,
Humanoids Group petitioned the PTO to designate "Humanoids" as
the mark submitted in that application. The PTO declined, pointing to
its regulatory requirement that an application must present only one
mark and to its policy of relaxing this requirement and granting a fil-
ing date to an application containing multiple marks only when the
body of an application and its drawing page present different marks,
and then only by permitting the mark presented on the drawing page
to constitute the submitted mark. The PTO also noted the general
interest in avoiding "impractical and time consuming" procedures and
"delay" of "the entry of . . . mark[s] into the Office’s automated sys-
tems."
Humanoids Group then filed this action pursuant to the Adminis-
trative Procedure Act ("APA"), 5 U.S.C. § 701 et seq. (2000), seeking
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a judgment that the PTO’s denial of its petition violated the APA and
an order substituting "Humanoids" as the mark submitted in the Sep-
tember 19 application. The district court granted summary judgment
to the PTO. The court reasoned that PTO regulations limit an applica-
tion to one mark at the time the application is filed, that the PTO
acted reasonably in adopting a policy of granting a limited exception
to this requirement by looking to the mark identified on the drawing
page, and that the PTO correctly applied these regulations and poli-
cies in denying Humanoids Group’s petition. Humanoids Group
appeals.
II.
An entity must complete two, distinct steps to register a mark with
the PTO. First, the entity must submit an application that meets rele-
vant requirements in order to receive a filing date. Second, the entity
must meet more detailed requirements to secure final approval of the
application to obtain registration. This case involves only the first of
these steps.
In 1998, Congress enacted the Trademark Law Treaty Implementa-
tion Act, Pub. L. No. 105-330, 112 Stat. 3064 (1998) (codified in
scattered sections of 15 U.S.C.). That statute affected several changes
to the underlying Trademark Act of 1946 and instructed that "[t]he
Director [of the PTO to] promulgate rules prescribing the require-
ments for the application and for obtaining a filing date herein" and
"[t]he applicant [to] comply with such rules or regulations as pre-
scribed by the Director." 15 U.S.C. § 1051(a) (2000).
Consistent with this charge and the changes made by the Act, the
PTO promulgated regulations providing that in order to receive a fil-
ing date, an application must contain:
(1) The name of the applicant;
(2) A name and address for the correspondence;
(3) A clear drawing of the mark;
(4) A listing of goods or services; and
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(5) The filing fee. . . .
37 C.F.R. § 2.21 (2003). When the PTO receives an application, it
labels the application with a receipt date and then reviews the applica-
tion for compliance with these "minimum requirements for receipt of
a filing date." Patent & Trademark Office, U.S. Dep’t of Commerce,
Trademark Manual Examining Procedure ("PTO Manual") § 203 (3d
ed. 2003). If the PTO determines that an application contains the
required elements, the PTO assigns the application a filing date as of
the date of receipt and enters the mark into its Trademark Electronic
Search System, which the public may access through the PTO’s web-
site.3
Humanoids Group contends that the PTO violated the APA in
interpreting one of these "minimum requirements" — the requirement
that the application contain "[a] clear drawing of the mark" — in the
case at hand and that the district court erred in holding to the contrary
and granting summary judgment to the PTO. 37 C.F.R. § 2.21(a)(3).
We review a grant of summary judgment de novo. Inova Alexandria
Hosp. v. Shalala, 244 F.3d 342, 349 (4th Cir. 2001). However,
because Humanoids Group brings this action pursuant to the APA, we
conduct our review in accordance with the standards announced
therein. Under the APA, we may, "[t]o the extent necessary," "decide
all relevant question of law" and "interpret constitutional and statu-
tory provisions." 5 U.S.C. § 706. We can reverse an agency only if
we find that its actions are "arbitrary, capricious, an abuse of discre-
tion, or otherwise not in accordance with law." 5 U.S.C. § 706.
3"Timely public notification of the filing of applications is important
because granting a filing date to an application potentially establishes a
date of constructive use of the mark." PTO Manual § 807. Constructive
use "establishes a priority date with the same legal effect as the earliest
actual use of a trademark at common law;" all ownership rights in a mark
flow from prior use. Allard Enters., Inc. v. Advanced Programming Res.,
Inc., 249 F.3d 564, 572 (6th Cir. 2001). Thus, publication of the filing
date, through the electronic search system puts the world — those
already using that mark and those contemplating investing in use of a
similar mark — on notice that use may be limited in the future. See gen-
erally id. at 572; Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760
F.2d 1383, 1395 (3d Cir. 1985).
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III.
Humanoids Group argues that the PTO has misinterpreted the
requirement, set forth in its regulation, that to receive a filing date an
application must contain "[a] clear drawing of the mark." 37 C.F.R.
§ 2.21. The PTO interprets this regulatory requirement to mean that
an application must present only one drawing of one mark. See In re
Lavorazioni, 61 U.S.P.Q.2d 1063, 1063 (Comm’r Pat. 2001) ("An
application that includes two or more drawings displaying materially
different marks does not meet this requirement and is not entitled to
a filing date."); see also PTO Manual § 807.03; Patent & Trademark
Office, U.S. Dep’t of Commerce, Exam Guide No. 3-99 II.A (Oct. 30,
1999) ("Exam Guide"). Humanoids Group argues that the regulation
should instead be interpreted to require merely that an application
contain at least one drawing of the mark sought to be registered. Brief
of Appellant at 10.
Generally, courts must defer to an agency’s interpretation of its
own regulation, regarding that interpretation as "controlling unless
plainly erroneous or inconsistent with the regulation." Auer v. Rob-
bins, 519 U.S. 452, 461 (1997) (internal quotation marks and citation
omitted); see also Kentuckians for the Commonwealth, Inc. v. Riven-
burgh, 317 F.3d 425, 439 (4th Cir. 2003). Humanoids Group, how-
ever, argues that this deferential standard is not warranted here.
Alternatively, it maintains that even if the deferential Auer standard
applies, we must reject the PTO’s interpretation. We consider each of
these contentions in turn.
A.
Humanoids Group contends that the PTO’s interpretation of § 2.21
does not warrant deference for several reasons.
First, Humanoids Group argues that the PTO did not adopt its inter-
pretation in a formal enough manner to merit judicial deference. In
support of this argument, Humanoids Group points to the holding in
Christensen v. Harris Co., 529 U.S. 576, 587 (2000), that agency
interpretations not subject to notice and comment rulemaking — such
as "interpretations contained in policy statements, agency manuals,
and enforcement guidelines" — "lack the force of law" and, therefore,
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"do not warrant Chevron-style deference." But this holding addresses
only an agency’s use of a policy statement, manual, or the like to
interpret a statute; it does not address the deference to be afforded
when an agency employs these materials to state the agency’s inter-
pretation of its own regulations. See, e.g., id. at 587-88 (conducting
a separate analysis under Auer after determining that Chevron-style
deference did not apply); Akzo Nobel Salt, Inc. v. Fed. Mine Safety
& Health Review Comm’n, 212 F.3d 1301, 1304 (D.C. Cir. 2000)
("[A]gency interpretations that lack the force of law (such as those
embodied in opinion letters and policy statements) do not warrant
Chevron-style deference when they interpret ambiguous statutes but
do receive deference under Auer when interpreting ambiguous regula-
tions.") (emphasis in original) (internal quotation marks and citation
omitted). When an agency interprets its own regulation, as opposed
to a statute, Auer deference applies.
However, Humanoids Group also offers several arguments as to
why, even if Auer generally requires judicial deference to an agency
interpretation of its own regulations, we should not defer to the PTO
here. Noting that deference under Auer is due "only when the lan-
guage of the regulation is ambiguous," Christensen, 529 U.S. at 588,
Humanoids Group asserts that because the district court found (and
the PTO argues) that the "plain language" of § 2.21
"[u]nambiguously" limits an application to one mark, we cannot now
afford deference to the PTO’s interpretation of the assertedly "unam-
biguous" regulation.
Of course, determining whether a regulation or statute is ambigu-
ous presents a legal question, which we determine de novo. See, e.g.,
United States v. Mitchell, 39 F.3d 465, 468 (4th Cir. 1994). Examina-
tion of the language in § 2.21 leads us to conclude that the regulation
is indeed ambiguous. Section 2.21 merely requires that an application
"contain[ ]" "[a] clear drawing of the mark" (emphasis added); it does
not define what constitutes "a clear drawing," nor does it address the
submission of multiple drawings or marks. 37 C.F.R. § 2.21. This lan-
guage neither plainly compels nor clearly precludes the PTO’s inter-
pretation; thus its precise import is ambiguous and certainly "not free
from doubt." Martin v. Occupational Safety & Health Review
Comm’n, 499 U.S. 144, 150 (1991) (internal quotation marks and
citation omitted).
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Nor, contrary to Humanoids Group’s further contention, does the
PTO’s interpretation of § 2.21 constitute a "de facto new regulation,"
Christensen, 529 U.S. at 588, thereby removing it from the scope of
Auer. The PTO’s interpretation — that § 2.21 requires an application
to present only one mark — simply reflects the use of the singular in
§ 2.21 itself. 37 C.F.R. § 2.21(a)(1)(3) ("A clear drawing of the
mark."). Such an interpretation cannot be considered to be so far
afield of the regulation’s text as to constitute a "de facto new regula-
tion." Id.; cf. Selgeka v. Carroll, 184 F.3d 337, 343 (4th Cir. 1999)
(interpreting statutory language referencing "a procedure" to mean "a
single procedure") (emphasis in original).
Finally, Humanoids Group argues that we should not defer to the
PTO’s interpretation of § 2.21 because the PTO has not offered the
"reasoned" statement of this interpretation that Auer requires. As
noted above, however, the PTO has explained its interpretation in a
Commissioner’s decision, In re Lavorazioni, 61 U.S.P.Q.2d 1063, in
the PTO Manual, and in the Exam Guide No. 3-99. These expressions
clearly constitute the PTO’s interpretation adopted upon its "fair and
considered judgment" under Auer, 519 U.S. at 461-63 (recognizing
that even an agency’s amicus brief filed during the course of litigation
expressing its understanding of the meaning of a regulation can suf-
fice to state an "interpretation" warranting deference). See also United
States v. Deaton, 332 F.3d 698, 712-13 (4th Cir. 2003) (upholding
Army Corps of Engineers’ interpretation of its regulation set forth in
agency’s "Wetlands Delineation Manual" after affording it Auer-like
deference); Reutter v. Barnhart, ___ F.3d ___, 2004 WL 1335850, at
*3 (8th Cir. June 16, 2004) (upholding Social Security Administration
interpretation of its regulation set forth in agency publication titled
"Programs Operations Manual System" under Auer deference).
Thus, the deferential standard set forth in Auer governs our review
of the PTO’s interpretation of § 2.21. We will, therefore, uphold the
PTO’s interpretation unless Humanoids Group demonstrates that this
interpretation is "plainly erroneous or inconsistent with the regula-
tion" itself. Auer, 519 U.S. at 461. We now turn to that inquiry.
B.
Humanoids Group maintains that the PTO’s interpretation is both
"plainly erroneous" and "inconsistent with" PTO regulations. Auer,
519 U.S. at 461.
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First, it maintains that the PTO’s interpretation of § 2.21 conflicts
with the Lanham Act and therefore is plainly erroneous. The Lanham
Act describes two classes of applicants who "may request registra-
tion" of a trademark — owners of a "trademark [already] used in
commerce," and "[a] person who has a bona fide intention . . . to use
a trademark in commerce." 15 U.S.C. § 1051(a)-(b). On the basis of
these provisions, Humanoids Group argues that "the mark" referenced
in § 2.21 necessarily means the mark that the applicant intends to reg-
ister. From this, Humanoids Group extrapolates that the Lanham Act
imposes an affirmative duty on the PTO to identify from an applica-
tion the mark that the applicant intends to register, a duty that requires
the PTO, when confronted with an application containing two or more
marks, to contact the applicant and ascertain its intent. Humanoids
Group maintains that the PTO has "excis[ed] the [statutory] intent
requirement" by rejecting applications that contain multiple marks
without making such an inquiry. Brief of Appellant at 10-12.
Of course, the Lanham Act permits only "[a] person who has a
bona fide intention . . . to use a trademark in commerce [to] request
registration of its trademark." § 1051(b)(1). But nothing in the statute
indicates that such an "intent requirement" gives rise to an affirmative
duty on the part of the PTO. No provision of the Lanham Act speci-
fies how the PTO must process an application setting forth multiple
marks, some of which the applicant does not intend to register.4 Cer-
4Humanoids Group also argues that we should reject the PTO’s inter-
pretation of § 2.21 because requiring the PTO to ask applicants who sub-
mit applications containing multiple marks which mark they intend to
register would constitute a preferable interpretation. According to
Humanoids Group, its interpretation would not unduly delay notice to the
public or place an excessive burden on the PTO, yet would more accu-
rately determine an applicant’s intent. Whether such an interpretation is
preferable appears doubtful. If the PTO granted an applicant a filing date
based on an application containing multiple marks, this would likely
delay entry of the application into the electronic search system while the
PTO attempted to identify the intended mark; any delay in public notice
of the filing date might well "raise the risk of harm to third parties who
may have acted in reliance on the record of pending applications." In re
Tetrafluor Inc., 17 U.S.P.Q.2d 1160, 1162 (Comm’r Pat. 1990). But,
even if Humanoids Group’s interpretation of § 2.21 would be superior to
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tainly no statutory provision precludes the approach adopted by the
PTO of generally rejecting applications that present multiple marks.
If anything, such an "intent requirement" would seem to place the
onus on the applicant — here Humanoids Group — to submit a draw-
ing of the mark that it intends to trademark, and only that mark. Thus,
the PTO’s interpretation of § 2.21 does not contravene the Lanham
Act.
Alternatively, Humanoids Group contends that the PTO’s interpre-
tation of § 2.21 is inconsistent with the PTO’s own regulations. Brief
of Appellant at 13-15. Specifically, Humanoids Group points out that
§ 2.21 (setting forth the minimum requirements for receipt of a filing
date) does not have language expressly prohibiting multiple marks,
but a subsequent regulation, § 2.52 (setting forth requirements related
to the drawing for receipt of registration), does expressly provide that
a drawing "must show only one mark." From this, Humanoids Group
reasons that while the "one mark" requirement must be satisfied to
secure registration, it need not be satisfied to receive a filing date, and
that § 2.21 cannot, therefore, be interpreted to contain the "one mark"
requirement.
However, Humanoids Group fails to appreciate the differing con-
text and purpose of the two regulations. Near the outset of the PTO’s
regulations, § 2.21 sets forth the minimum requirements for receipt of
a filing date and provides that one such requirement is that an applica-
tion contain "[a] clear drawing of the mark." Later, § 2.52, titled
"Types of drawings and format for drawings," sets forth detailed
instructions on how a drawing and mark must be presented (how to
represent marks with three dimensional features, with color, to dem-
onstrate motion, etc.) to register a mark after the PTO has already
granted a filing date to the application. § 2.52(b)(2). In an unenum-
erated paragraph preceding the list of detailed instructions, § 2.52
the PTO’s that does not render the PTO’s interpretation "plainly errone-
ous or inconsistent with the regulation." Auer, 519 U.S. at 461. Thus, it
provides no ground for rejecting the PTO’s interpretation. See Thomas
Jefferson Univ. v. Shalala, 512 U.S. 504, 512 (1994) ("Our task is not
to decide which among several competing interpretations best serves the
regulatory purpose.").
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states: "A drawing depicts the mark sought to be registered. The
drawing must show only one mark. The application must include a
clear drawing of the mark when the application is filed." § 2.52(a)
(emphasis added). This brief, prefatory paragraph merely recaps basic
requirements relating to "when the application is filed." § 2.52(a).
Section 2.52 then goes on to describe the additional and more compli-
cated issues involving the mechanical details of rendering a drawing
and mark for purposes of registration. Contrary to Humanoids
Group’s assertion, then, § 2.52 entirely accords with (and, indeed,
reiterates) the PTO’s interpretation of its preceding companion regu-
lation, § 2.21.
Thus, we find the PTO’s interpretation of § 2.21 — requiring the
submission of only one mark — to be neither plainly erroneous nor
inconsistent with the PTO’s regulations.5
IV.
For all of these reasons, the judgment of the district court is
AFFIRMED IN PART AND DISMISSED IN PART.
5In its appellate briefs, Humanoids Group also challenged the PTO
policy that permits an exception to the one mark rule in certain, limited
circumstances. See In re Lavorazioni, 61 U.S.P.Q.2d at 1063-64. How-
ever, at oral argument, Humanoids Group acknowledged that if we
upheld the PTO’s interpretation of § 2.21, as we have, invalidating this
policy would not afford it any relief. Thus, Humanoids Group does not
have standing to challenge that policy. See Friends of the Earth, Inc. v.
Laidlaw Envtl. Servs., Inc., 528 U.S. 167, 180-81 (2000). Accordingly,
we lack jurisdiction to consider this point and so must dismiss this por-
tion of the appeal.
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