Thursday, November 09, 2006

Citable No. 47: TTAB Sets Aside Cancellation Default Judgment for Lack of Service on Respondent

In the 47th citable decision of 2006, the Board swept aside a default judgment entered in a cancellation proceeding because the Respondent was never served with notice of the proceeding. Smart Inventions, Inc. v. TMB Products, LLC, 81 USPQ2d 1383 (TTAB 2006).


The challenged registration, for the mark SMART BROOM for brooms, issued to Yellowtop North America, Inc. Three years later, in May 2004, the assignment of the mark (and of the application from which the registration issued) to Respondent TMB was recorded in the USPTO. The cancellation proceeding was instituted in September 2004 naming Yellowtop as the Respondent, and the Board sent notice of the proceeding to Yellowtop. When Yellowtop did not file an answer, a notice of default was issued and subsequently a default judgment was sent to Yellowtop.

Note that, because the notice of proceeding was not returned to the TTAB undelivered, the Board did not publish notification of the proceeding in the Official Gazette. Instead it went directly to the default judgment.

Trademark Rule 2.113(c) requires that the Board forward a copy of the cancellation petition to the respondent. "The respondent shall be the party shown by the records of the Office to be the current owner of the registration(s) sought to be cancelled ...." Here, the Board failed to serve the owner of record, TMB. Therefore, the Board wisely concluded, TMB "was not afforded reasonable notice of the proceeding and an opportunity to respond."

The Board noted that if a judgment is void, "it must be set aside without regard to any potential hardship to the petitioner and there is no time limit on an attack to [sic] a judgment that is void." Thus Petitioner's argument that the Board must apply the balancing test of FRCP 60(b)(4) was misplaced.

TTABlog comment: Note that Petitioner named Yellowtop and not the assignee TMB as the respondent in the petition for cancellation. Nonetheless, under the Rule, the TTAB was obligated to forward the petition to the record owner. This it failed to do.

Why does this decision merit the "citable" designation when it seems to be a fairly straightforward application of the Rules? Perhaps because the Board wanted to make the point that FRCP 60(b)(4) is irrelevant here because the default judgment was void, as they say, ab initio.

Text Copyright John L. Welch 2006.


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