Tuesday, November 09, 2004

First Section 66(a) Application Published Today!

Today, for the first time, a Section 66(a) Request for Extension of Protection was published for opposition. Reportedly, 22 more are in the queue for publication next Tuesday, November 16th. Today's application is Serial No. 79000752, owned by Merck KGaA of Darmstadt, Germany, for the mark OSTEOSOFT for certain chemicals and pharmaceuticals. Carl Oppedahl, at Oppedahl & Larson's patents.com website, provides some interesting comments here regarding this application.

TTAB practitioners should note that the rules for opposing a Section 66(a) application differ in some important respects from those applicable to a "non-Madrid" opposition. Those differences are discussed in a paper that I co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes," published early this year in Intellectual Property Today.

For example, once a Notice of Opposition to a Section 66(a) application has been filed, the Notice may not be amended to add grounds for opposition after the opposition period ends. Thus, unlike in "non-Madrid" oppositions, a Section 66(a) opposer cannot wait for discovery to determine whether a ground such as fraud is available. On the other hand, FRCP 11, applicable to opposition proceedings pursuant to Trademark Rule 2.116(a), requires that an attorney or unrepresented party have a good faith factual and legal basis for the allegations made in a pleading. The TTAB practitioner thus may face a drafting dilemma in preparing the Section 66(a) Notice of Opposition.


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