Monday, March 27, 2006

Leo Stoller Responds to March 27th TTABlog Report

Leo Stoller has sent a response to today's TTABlog posting entitled "TTABlog Report: Leo Stoller Marches On" (here). In his response, set forth below, he addresses the item relating to his filing of hundreds of request for extension of time to oppose. Here is Mr. Stoller's response [verbatim]:

The question before the trademark community is whether Leo Stoller's filing of 750 Extensions to Oppose represents a bellwether for a major paradyne shift, of asserting rights in trademarks, or is merely an obstructionist activity that should be condemned.

How is it possible for a single entity to assert rights in 750 marks or 7000 marks?

Trademark attorneys from time immortal has been raised to believe that companies normally can acquire rights in one mark and/or a small family of marks depending on the specific goods and services offered by that entity. Leo Stoller argues that with the advent of the internet that the normal and customary ownership-of-a-few-trademarks-paradyne has now shifted. Leo Stoller argues that with the advent of the internet it, allows an entity such as to legitimately claim rights in an infinite number of trademarks based upon exclusive use and licensing to third parties via the net. There is no limit to a legitimate web site holder's ability to from forming links to an infinite number of marketers of goods and services which can be offered to the public under an infinite number of trademarks on the internet, as long as there is a provision for quality control is maintained of these goods and services licensed, and sold.

Thus where once is may have been normal for a party to examine the weekly TRADEMARK OFFICIAL GAZETTE for confusingly similar applications that publish, in today's internet-global-trademark-licensing-environment an examination of the GAZETTE reveals 100's and 1000's of confusingly similar marks, which entitle the potential opposer, to file numerous extensions of time to oppose.

The questions was raised as to whether Leo Stoller has filed many oppositions since November of 05. Leo Stoller would argue that he has probably file more notices of opposition than any other single entity against such parties as TARGET, GOOGLE etc. In addition, Leo Stoller argues that the current system of permitting potential opposers to file 90 day extensions works perfectly well.

First of all since the TTAB has gone on line the man hours to prosecute a request for an extension has been automated by having auto responders sent it from the TTAB to the email address of the parties, once the extension of time has been filed. Secondly, the extension of time permits the parties to work out a amicable resolution to the registerability prior to the filing of any oppositions.

The framers of the TTAB rules that designed the request for an extension of time were right on target. The extension period is a safety valve for the TTAB and elevates the need for the unnecessary filing of oppositions by giving the parties time to address the registerability issues and settle the controversy out side of the Board decision making process. The reason why Leo Stoller does not file more oppositions is that the parties which are the subject of the request for an Extension of Time, are notified of the potential conflict. The vast majority of potential oppositions, settle the controversies, rather than burden the Board with another opposition.

TTABlog note: Although Mr. Stoller states that he has filed "many" oppositions since November 2005, by my count he has commenced 8 oppositions in the five-month period from November 1, 2005 to March 30, 2006: 5 involving the mark STEALTH, and one each involving the marks HAVOC, AIRFRAME, and FIRE POWER. Mr. Stoller has, as of March 30, passed the 1,250 mark for extension requests since November 1, 2005.


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