Tuesday, March 04, 2008

TTABlog Practice Pointer: Include a Certificate of Service When Filing a Notice of Opposition

As of November 1, 2007, under the revised TTAB Rules one must first serve a Notice of Opposition, then file it with the Board. The filing must include a certificate of service. Failure to include the certificate of service will prove fatal to the intended opposition. So Oakley, Inc. learned when it attempted to oppose the design mark shown below, for sunglasses and sunglass cases.

The Board refused to institute the opposition, as stated in a communication from TTAB paralegal Karl Kochersperger (here):

"Each opposer is required to serve a copy of its notice of opposition on the applicant, at the correspondence address of record in the USPTO and must include proof of such service with its notice of opposition at the time of its filing. See Trademark Rules 2.101 (a), (b) and (d)(4), and 2.119. A notice of opposition filed without the required proof of service does not result in the commencement of an opposition.

"Because proof of service is mandatory, the notice of opposition will not be considered. However, if time remains in the opposition period or any approved extension of that period, then opposer may be able to file a new notice of opposition with the appropriate fee and proof of service.

"The opposition lacking proof of service will be referred to the Finance Branch of the Office for consideration of a refund of the opposition fee."

Of course, Oakley, Inc. may still seek cancellation of the resulting registration, should one issue; so all is not hopeless.

Text Copyright John L. Welch 2008.


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