B-186591, NOV 29, 1976

B-186591, NOV 29, 1976

SECTION 17 OF LANHAM ACT, 15 U.S.C. 1067 (SUPP. V, 1975), REQUIRING THAT PERSONS APPOINTED TO TRADEMARK TRIAL AND APPEAL BOARD BE EMPLOYEES OF OFFICE OF PATENTS AND TRADEMARKS AT TIME OF APPOINTMENT TO SAID BOARD, CONTAINS NO REQUIREMENT REGARDING LENGTH OF TIME PERSON MUST BE EMPLOYEE BEFORE HE IS ELIGIBLE FOR MEMBERSHIP ON BOARD. HOWEVER, APPOINTMENT OF INDIVIDUAL TO VACANCY ON BOARD THAT EXISTED AT TIME HE BECAME EMPLOYEE OF OFFICE OF PATENTS AND TRADEMARKS WOULD NOT BE PROPER.

DAVID KERA - ELIGIBILITY FOR APPOINTMENT TO TRADEMARK TRIAL AND APPEAL BOARD:

BY LETTER OF OCTOBER 19, 1976, MR. J. T. SMITH, GENERAL COUNSEL OF THE DEPARTMENT OF COMMERCE, REQUESTED OUR OPINION ON THE PROPER INTERPRETATION OF SECTION 17 OF THE LANHAM ACT IN THE LIGHT OF OUR LETTER OF AUGUST 11, 1976, B-186591, TO SENATOR WARREN G. MAGNUSON, CHAIRMAN OF THE SENATE COMMITTEE ON COMMERCE, REGARDING THE APPOINTMENT OF MR. DAVID KERA TO THE TRADEMARK TRIAL AND APPEAL BOARD. SPECIFICALLY, MR. SMITH ASKS WHETHER MR. KERA COULD BE CONSIDERED FOR DESIGNATION TO A SUBSEQUENT VACANCY ON THE BOARD. SECTION 17 OF THE LANHAM ACT, AS AMENDED, 15 U.S.C. 1067 (SUPP. V, 1975), READS IN PARTINENT PART AS FOLLOWS:

"THE TRADEMARK TRIAL AND APPEAL BOARD SHALL INCLUDE THE COMMISSIONER, THE ASSISTANT COMMISSIONERS, AND SUCH PATENT AND TRADEMARK OFFICE EMPLOYEES, DESIGNATED BY THE COMMISSIONER AND WHOSE QUALIFICATIONS HAVE BEEN APPROVED BY THE CIVIL SERVICE COMMISSION AS BEING ADEQUATE FOR APPOINTMENT TO THE POSITION OF EXAMINER IN CHARGE OF INTERFERENCES. * * * "

IN OUR AUGUST 11 LETTER TO SENATOR MAGNUSON WE STATED THAT THE STATUTORY PHRASE "SUCH PATENT AND TRADEMARK OFFICE EMPLOYEES, DESIGNATED BY THE COMMISSIONER * * * " REFERRED ONLY TO PERSONS WHO ARE EMPLOYED BY THE OFFICE AT THE TIME THEY ARE DESIGNATED TO THE BOARD. ACCORDINGLY, WE ADVISED "THAT THE APPOINTMENT OF MR. DAVID KERA TO THE TRADEMARK TRIAL AND APPEAL BOARD WAS BEYOND THE AUTHORITY OF THE COMMISSIONER OF PATENTS AND TRADEMARKS," AS MR. KERA WAS NOT AN EMPLOYEE OF THE PATENT OFFICE PRIOR TO HIS DESIGNATION AS A MEMBER OF THE BOARD.

IN HIS LETTER OF OCTOBER 19, MR. SMITH STATES THAT "MR. KERA IS NO LONGER A MEMBER OF THE TRADEMARK TRIAL AND APPEAL BOARD, AND HAS ACCEPTED THE POSITION OF SPECIAL ASSISTANT TO THE ASSISTANT COMMISSIONER OF TRADEMARKS IN THE PATENT AND TRADEMARK OFFICE." HE ASKS FOR OUR OPINION ON THE FOLLOWING APPLICATION OF SECTION 17 OF THE LANHAM ACT TO MR. KERA:

"IN LIGHT OF MR. KERA'S STATUS AS SPECIAL ASSISTANT TO THE ASSISTANT COMMISSIONER OF TRADEMARKS, IT IS OUR VIEW THAT SHOULD THERE BE A SUBSEQUENT VACANCY ON THE TRADEMARK TRIAL AND APPEAL BOARD, OTHER THAN THE VACANCY TO WHICH MR. KERA WAS DESIGNATED AN ACTING MEMBER ON OCTOBER 12, 1975, THE COMMISSIONER OF PATENTS AND TRADEMARKS UNDER SECTION 17 OF THE LANHAM ACT, AS AMENDED, COULD CONSIDER HIM FOR DESIGNATION TO SUCH A SUBSEQUENT VACANCY ON THE BOARD. IT IS BELIEVED THAT SUCH A DESIGNATION, IF MADE, WOULD MEET THE REQUIREMENT OF THE STATUTE THAT MR. KERA BE AN EMPLOYEE OF THE PATENT AND TRADEMARK OFFICE."

THE TRADEMARK TRIAL AND APPEAL BOARD, IS PROVIDED FOR UNDER THE PROVISIONS OF SECTION 17 OF THE LANHAM ACT, QUOTED ABOVE. ITS MEMBERSHIP CONSISTS OF THE COMMISSIONER AND ASSISTANT COMMISSIONERS AND SUCH OTHER PERSONS WHO ARE:

(1) EMPLOYED AT THE PATENT AND TRADEMARK OFFICE,

(2) DESIGNATED BY THE COMMISSIONER, AND

(3) APPROVED BY THE CIVIL SERVICE COMMISSION AS BEING QUALIFIED FOR APPOINTMENT TO BE AN EXAMINER IN CHARGE OF INTERFERENCES.

SECTION 17 CONTAINS NO REQUIREMENT REGARDING ANY PERIOD OF EMPLOYMENT NECESSARY BEFORE AN EMPLOYEE OF THE PATENT AND TRADEMARK OFFICE MAY BE DESIGNATED TO THE BOARD. NEVERTHELESS, WE DO NOT BELIEVE THAT THE APPOINTMENT OF AN INDIVIDUAL TO A VACANCY ON THE BOARD THAT EXISTED AT THE TIME HE BECAME AN EMPLOYEE OF THE PATENT AND TRADEMARK OFFICE WOULD BE PROPER, SINCE SUCH APPOINTMENT COULD BE CONSTRUED AS A CIRCUMVENTION OF THE STATUTORY REQUIREMENT THAT AN EMPLOYEE OF THE OFFICE BE DESIGNATED TO THE BOARD. HOWEVER, THE APPOINTMENT OF AN INDIVIDUAL TO A VACANCY ON THE BOARD THAT AROSE AFTER HIS EMPLOYMENT BY THE OFFICE WOULD BE PERMITTED BY THE STATUTE.

ACCORDINGLY, SHOULD THERE BE A VACANCY ON THE TRADEMARK TRIAL AND APPEAL BOARD SUBSEQUENT TO OCTOBER 19, 1976, THE DATE MR. DAVID KERA BECAME AN EMPLOYEE OF THE PATENT AND TRADEMARK OFFICE, WE PERCEIVE NO REASON WHY HE COULD NOT BE CONSIDERED FOR DESIGNATION TO SAID VACANCY. OF COURSE, IT WOULD BE NECESSARY TO SUBMIT HIS NAME TO THE CIVIL SERVICE COMMISSION FOR APPROVAL OF HIS QUALIFICATION, AS IS REQUIRED BY THE STATUTE.