Court of Appeals affirms Trademark Board’s decisions on Nagarajan Duraisamy applications

Court of Appeals affirms Trademark Board’s decisions on Nagarajan Duraisamy applications

States that the applicant did not comply with the USPTO requirements

The U.S. Court of Appeals for the Federal Circuit has affirmed two decisions of the Trademark Trial and Appeal Board (TTAB), rejecting trademark applications in Case No. 24-2181 and Case No. 24-2183 filed by pro se applicant Nagarajan Duraisamy.

In both matters, the Board affirmed the examining attorney’s refusals. It concluded that the applications did not comply with the U.S. Patent and Trademark Office (USPTO) requirements for identifying goods and services, fee payment, entity designation and mark description.

The matter concerns Duraisamy applying to register a mark in connection with a broad range of goods and services, including virtual and real space design, consumer appliances, security systems, transportation, medical and health services, education, hospitality, and defense technologies.

He designated only International Class 42 and paid fees for a single class. However, the Board noted that the scope of his description extended across 11 classes.

The trademark examining attorney issued a non-final office action. He directed Duraisamy to provide a specific identification of goods and services, indicate the number of classes sought, and submit the filing fees for each additional class.

Duraisamy responded that his application covered Classes 9, 35, 41, and 42, but did not submit the necessary fees for those.

In June 2023, a final office action was issued. Affirming the refusal, the Board explained that the identification did not comply with the requirements under Trademark Rule 2.32(a)(6), which mandated identification of goods and services to be ‘specific, definite, clear, accurate, and concise.’

The court reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence. It agreed that Duraisamy’s identification was too vague to satisfy the rules and the statutory and regulatory provisions required the payment of fees for each class covered by an application.

Meanwhile, Duraisamy filed another application for the registration of the same mark in regular, black and white text. He identified the applicant as a limited liability company but listed his name as the owner. The mark description stated that it was presented in a ‘Times New Roman [font], with size 19 pt. No character styles. Text Color Black in white background.’

As in Case No. 24-2181, the list of goods and services extended considerably beyond Class 42 and included multiple industries.

Thus, the examining attorney issued a non-final office action highlighting three issues:

(1) Clarification of the legal entity designation, because ownership of the mark must appear in the owner’s name, or providing the name of the limited liability company as the owner.

(2) Correction of the mark description, since it must identify the literal and design elements appearing in the mark.

(3) Amending the identification of the goods and services, as the previous amendments were ‘beyond the scope of the original identification.’

While Duraisamy amended the entity designation to ‘individual,’ he reverted to ‘limited liability company’ by including ‘DBA Thalami, LLC.’ He declined to amend the description of the mark or narrow the goods and services and added International Class 38 to his application.

The examining attorney issued a final refusal, and it was affirmed by the Board, which found that the inconsistent designation was unclear as the description of the mark referenced font and color, and the amendments broadened the scope of the application beyond what was originally filed.

The court affirmed the Board’s findings and in both appeals stated that the Board acted within its authority in refusing Duraisamy’s applications and did not abuse its discretion.

The bench emphasized that trademark applicants must comply with USPTO procedural requirements, including submitting clear and definite identifications of goods and services, paying fees for each international class sought, designating the correct legal entity, and providing accurate descriptions of the mark.