Thursday, January 27, 2005

Leo Stoller Claims TTAB Constitutional Violations After Dismissal Of Opposition

After dismissal of an opposition due to his filing fee error, frequent TTAB litigant Leo Stoller has charged the TTAB with violation of his rights to due process and equal protection under the 5th and 14th Amendments, respectively.

U.S.S. Constitution, Charlestown Naval Yard

In Central Mfg. Co. v. Market America, Inc., Opposition No. 91158582, the Board invoked Rule 2.101(d)(3)(1) in dismissing the opposition as a nullity because it was not timely filed with a sufficient filing fee. After the opposition was instituted, the Board recognized that Opposer's check for the $300 filing fee had been returned for insufficient funds. The Board stated:
"If an otherwise timely opposition is submitted on paper, and if the opposition is not accompanied by any fee or a sufficient fee to pay for one person to oppose the registration of a mark in at least one class, the opposition will be rejected."
Central and Stoller have filed a request for reconsideration of the Board's ruling, alleging Constitutional violations. Stoller claims that he did not have notice of the PTO's change prior to his filing of the Notice of Opposition on November 4, 2003. He asserts that notice was first given at the PTO website on November 6, 2003, when the PTO made available an index to changes in the Trademark Board Manual of Procedure. Stoller states that, had he been given proper notice, he would not have relied on the Board's prior practice and would have obtained a certified check.
"Not allowing a party the opportunity to cure a fee requirement, as was previously the case, clearly is an outrageous violation of the Opposer's Due Process and Equal Protection Rights."
However, one should note that the amendment to Rule 2.101 appeared in the PTO's Final Rule published in the Federal Register on September 26, 2003, which states that the rule changes would become effective on November 2, 2003.

As pointed out in Welch and Hammitte, "TTAB Practice and the Madrid Rule Changes," Intellectual Property Today (February 2004), the wise practitioner can avoid this insufficient fee problem by authorizing the PTO to charge necessary fees to a properly-maintained deposit account.

Stoller is not completely without a remedy here. The TTAB will, in denying his request for reconsideration, likely point out that Stoller may petition for cancellation of any registration that issues on the subject application.

Text and photograph ©John L. Welch 2005. All Rights Reserved.


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