Tuesday, May 13, 2008

TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing

Applicant Tracy Artman filed an application to register the mark TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN for various soaps and related products. Unfortunately, she admitted in her answer to Opposer's amended notice of opposition that Tracy's Treats, Inc. was the owner of the mark. She is the President of Tracy's Treats Inc., but filed the application in her name. Opposer successfully moved for summary judgment on the ground that her application is void ab initio because Tracy Artman was not the owner of the mark when the application was filed. Tracie Martyn, Inc. v. Tracy Artman, Opposition No. 91173009 (May 1, 2008) [not precedential].

The Board observed that when an application is filed in the name of the wrong party, the defect cannot be cured by amendment or assignment. However, if the application is filed by the owner but a mistake is made in the manner in which applicant's name is set forth, that may be corrected.

37 C.F.R.§ 2.71(d) The applicant may amend the application to correct the name of the applicant, if there is a mistake in the manner in which the name of the applicant is set out in the application. The amendment must be supported by an affidavit or declaration under § 2.20, signed by the applicant. However, the application cannot be amended to set forth a different entity as the applicant. An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.

Section 1201.02(c) of the TMEP provides examples of correctable and non-correctable errors in the identification of the applicant. If there is an inconsistency -- i.e., if the application names an individual as the owner in one place, and a corporation in another -- the application may be amended to clarify the inconsistency. However, here the example of non-correctable error applies:

President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application as between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Here, there was no inconsistency in the application. There was no reference to the company and no mention that Tracy was an officer of the company. Accordingly, the application is void ab initio, and judgment was entered summarily in favor of Opposer.

However, the Board then noted that Opposer might wind up opposing a new, properly filed, application for the mark at issue. So, in the interest of judicial economy, the Board allowed Opposer thirty days to decide whether it wants to proceed with this opposition and seek a determination on the merits of its Section 2(d) claim, or withdraw that claim as moot.

TTABlog comment: I find it strange that the Board would allow this proceeding to continue when Tracy Artman is the wrong party. She is not the owner of the mark at issue. Is she expected to defend the opposition? Should her company be substituted for her as the defendant? Must the company consent to the substitution?

In support of this procedural ruling, the Board cited a case in which a registration involved in a cancellation proceeding had inadvertently expired, but the petitioner was allowed to proceed with the cancellation anyway. But there, at least the correct entity was already the party defendant and was the owner of the mark in question.

Text Copyright John L. Welch 2008.


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