Tuesday, March 31, 2009

Precedential No. 11: Section 2(d) Opposer Fails to Submit Registration Properly, Loses on Priority Issue

Once again, an Opposer who failed to properly introduce a registration into evidence reaped dire consequences. Syngenta Crop Protection, Inc. filed a Section 2(d) opposition to registration of the mark AgMeter for "pesticide detectors" and "evaluation and testing of produce for pesticides," alleging likelihood of confusion with the registered mark AGROMETER for related goods and services. Were the registration in evidence, it would have removed the issue of priority, but without it Opposer's evidence of prior use was inadequate. So the Board dismissed the opposition for failure to prove priority. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 UPSQ2d 1112 (TTAB 2009 [precedential].

The Board plowed through numerous evidentiary issues before burying Syngenta's notice of opposition. The key one concerned Sygenta's submission of a mere copy of the registration certificate for the AGROMETER mark (under which it was licensed). This was not “a copy ... of the registration prepared and issued by the Patent and Trademark Office showing both the current status of and current title to the registration.” Trademark Rule 2.122(d)(2) [emphasis by the Board]. Nor did Syngenta take advantage of the other ways to submit a certificate: a status-and-title copy submitted with the notice of opposition; via testimony; or via stipulation or admission. [Note that this proceeding was commenced prior to August 31, 2007; for inter partes cases commenced on or after August 31, 2007, a pleading may be accompanied by copies of USPTO electronic records showing the status and title of a pleaded registration.]

That mistake proved to be fatal. As stated, had Syngenta properly submitted the registration, priority would not have been an issue. Instead Syngenta had to beat Applicant's constructive first use date (i.e., its filing date) of June 29, 2005, but Syngenta's testimony merely implied that it was using the mark before June 4, 2007. End of Section 2(d) story.

The case was infected with various other evidentiary problems, involving Opposer Syngenta's three notices of reliance (one timely-filed) and its submission of numerous exhibits with its brief.

Syngenta's testimony period closed on January 13, 2008, but it filed notices of reliance on January 31 and March 17, 2008. However, Syngenta was actually submitting the transcripts of its testimony taken during the testimony period. The transcripts were not untimely; they were just improperly (and unnecessarily) submitted with notices of reliance. So the Board accepted the transcripts as part of the record.

At final hearing, Applicant Bio-Chek objected to the testimony transcripts because they were not signed by the witnesses, and because only one of the two was signed by the official who administered the oath. The Board, however, ruled that Bio-Chek had waived this objection by failing to raise it in a timely fashion. Such an objection should be made at the time the transcripts were submitted, which would have given Syngenta time to correct the error.

The exhibits attached to Syngenta's brief were untimely, and the Board refused to consider them. See TBMP Sec. 704.05(b).

As to Syngenta's timely notice of reliance, the Board refused to consider the copy of the AGROMETER registration (as discussed above). Various other documents (e.g., product descriptions, marketing materials, shipping records, internal correspondence, and Internet materials) were not proper subject matter for a notice of reliance. They require testimony for identification and authentication.

Several definitions from the Merriam-Webster online dictionary were accepted via judicial notice, even though the pages did not indicate that this online dictionary is the electronic version of the printed dictionary. The Board reasoned that "the definitions appear to be of a type that are 'not subject to reasonable dispute in that [they are] capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.' Fed. R. Evid. 201(b)(1)."

Copies of Office Actions from two trademark files and a copy of a U.S. patent application were admissible as official records of the USPTO.

And so, Syngenta's evidence consisted of the two testimony transcripts, the dictionary definitions, and copies of two office actions and one published patent application.

TTABlog comment: One might say that Syngenta pulled a "Mister Fluffy."

Text Copyright John L. Welch 2009.


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