In TTAB Practice and in Kindergarten, the Following the Rules is Important
In a recent citable decision by the Patent and Trademark Office, the Trademark Trial and Appeal Board (“TTAB”) dismissed Opposer’s Oppositions for failure to comply with the service of process rules outlined in Trademark Rule 2.101.
In Schott A.G. v. Scott, Opposer filed its notices of Opposition by mail and did not include a proof of service Applicant moved to dismiss the Opposition on the basis of no proof of service. In its response papers, Schott admitted to its failure and sought to amend its Opposition by adding the proof of service, noting that no answer had yet been filed. The TTAB didn’t buy it.
In granting Respondent’s Motion to Dismiss, the Board wrote, “opposer cannot, by filing amended notices, cure its failure to properly serve the original notices of opposition. A notice can be amended as a right only if the original notice of opposition was proper.”
The new Trademark Rules, amended in April of 2007, state that a notice of opposition “must include proof of service on the applicant, or her attorney or domestic representative of record, at the correspondence address of record in the Office[.]”
Practice Note: Instead of filing by mail, parties should consider using the ESTTA online filing system. The ESTTA filing system does not allow an opposer to complete the filing process unless it confirms the service of the opposition on the applicant. While online filing is not a fail-safe process (opposer still has to post the opposition to the applicant), it can serve as an important reminder to serve the complaint first.