Wednesday, August 10, 2005

TTABlog Reminder: Madrid Oppositions Require Electronic Filing

In September 2003, in light of United States accession to the Madrid Protocol, the PTO amended the Trademark Rules of Practice in a number of respects. Many of the changes affected TTAB practice and procedure, as discussed in an article that Ann Lamport Hammitte and I co-authored, entitled "TTAB Practice and the Madrid Rule Changes."

One significant change was the requirement that notices of opposition directed at Section 66(a) applications (Madrid requests for extension) be filed electronically via ESTTA. [See Rule 2.102(b)(2)]. Likewise, requests for extension of time to oppose a Section 66(a) application must be filed electronically. [See Rule 2.102(a)(2)]

Earlier this year, the Board drew attention to these electronic-filing requirements in its citable decision in In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005). [Discussed here at the TTABlog]. Sara Lee Corporation failed to comply with Rule 2.102(a)(2) when it filed by mail an extension request regarding a Section 66(a) application owned by the German company, Börlind, maker of ANNEMARIE BÖRLIND brand cosmetics. The Board denied the request for extension of time, and it took the opportunity to explain the importance of the electronic filing requirement for Madrid oppositions:

"Because of the strict time frame in which the USPTO must notify the IB [WIPO's International Bureau] of the filing of an opposition, it would be virtually impossible to assure potential opposers that their rights would be preserved if the Board accepted paper filing of either extensions of time to oppose or notices of opposition against Section 66(a) applications."

Apparently the Board's message has not gotten across. On three occasions in the past three months, the Board has dismissed Section 66(a) oppositions that were filed on paper: Oppositions Nos. 91165062, 91165377, and 91165624. In each case, the Board order terminating the opposition contained the following explanation (in more or less the same verbiage):

"The opposed application was filed based on Trademark Act Sec. 66(a). Trademark Rule 2.101(b)(2) provides that '[a]n opposition to an application based on section 66(a) of the Act must be filed through ESTTA.'"

Of course, these three terminations were not "on the merits," and so each of these potential opposers will have the opportunity to challenge, via a petition for cancellation, any registration that issues on the application it sought to oppose.

Reportedly, 21 oppositions have been filed against Section 66(a) applications to date. Thus 1 in 7 of those oppositions were filed in violation of the Trademark Rules of Practice because they were not filed electronically. That's a remarkably poor showing by the trademark bar, don't you think?

TTABlog comment: In another of the pending Section 66(a) oppositions (No. 91164850), an answer was filed on behalf of the applicant (a Turkish company) by Erdal Handanoglu of Simaj Patent Limited Sirketi, located in Ankara, Turkey. The Opposer has notified the Board that Mr. Handanoglu "does not appear to meet the requirements in 37 C.F.R. Sec. 10.14 of individuals entitled to practice before the Patent and Trademark Office." Opposer asks that the Board require Applicant to "submit evidence showing on what basis its counsel is authorized to practice before the Board, or alternatively, that Applicant retain substitute counsel in the instant proceeding."

Apparently some Madrid applicants believe that, because they can file a Section 66(a) application without employing an American attorney, they can also participate in opposition proceedings involving such an application without representation by an American attorney. The Board should soon be setting this Turkish applicant straight on that notion.

Text Copyright John L. Welch 2005. All Rights Reserved.


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