Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
I'll bet the Board was just waiting for this to happen: an opposer failed to follow the new TTAB rules (effective Nov. 1, 2007) that require service of a Notice of Opposition on the applicant prior to filing. See Rules 2.101(a) and 2.101(d)(4). The opposition was dismissed as a nullity. Springfield, Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) [precedential].
Opposer Springfield filed its opposition on November 7, 2007, the last day of the opposition period, using the Board's ESTTA electronic system. Springfield checked the box on the ESTTA form indicating that it had effected service on Applicant [otherwise it would not have been allowed to file electronically], but in fact it hadn't served.
On November 26th, Springfield filed a motion for leave to file an amended notice of opposition indicating that it served a copy of the notice of opposition on applicant on that same day, November 26th.
No way, said the Board. The Rules require service prior to filing, not a mere "promise to make service at some time in the future." The Notice of Opposition should not have received a filing date and the proceeding should not have been instituted. [How was ESTTA supposed to know that the notice hadn't been served? - ed.].
The Board pointed out in a footnote that Opposer Springfield is not without recourse, since "it may file a petition to cancel if and when the mark in the involved application registers."
TTABlog query: What would have happened if Opposer had managed to serve Applicant prior to the end of the opposition period, but after filing the Notice of Opposition and the proof of service? I suspect the Board would have allowed the amendment.
TTABlog comment: Why did the Board make this change to service by the plaintiff? I think it happened this way: The new rules as originally proposed would have required the opposer/petitioner to investigate and find the defendant, and then serve. Only after a failed investigation could the plaintiff go to the Board and ask for the Board's help with service. When practitioners complained about that proposal, the Board relented by requiring the plaintiff to do nothing more than serve the papers at the respondent's address listed in TARR. But it kept the idea of the plaintiff serving the defendant before filing.
Which leads one to ask: if all the plaintiff has to do is serve at the TARR-listed address (which is what the Board did in the past anyway), why bother to make the rule change?
Text Copyright John L. Welch 2008.