Monday, March 09, 2009

Precedential No. 5: Board Shows Mercy, Forgives Cancellation Petitioner Who Served Petition One Week after its Electronic Filing

Rule 2.111(a), effective November 1, 2007, requires that a petition for cancellation "include proof of service on the owner of record for the registration." The Equine Touch Foundation filed a Petition for Cancellation electronically on October 10, 2008, indicating on the ESTTA form that service had been made on registrant that same day. However, Petitioner in fact had not made service. What would the Board do? The Equine Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943 (TTAB 2009) [precedential].

Of course, if this were an opposition proceeding, the "plaintiff" might have been thrown off the TTAB track. See Springfield, Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) [precedential] [TTABlogged here]. [Opposition filed on last day of opposition period dismissed as a nullity because Opposer had failed to serve Applicant].

However, cancellation proceedings are a different breed. As long as Petitioner filed and served its Petition for Cancellation (on the ground of mere descriptiveness) within five years of the registration date, the petition would be timely. [See Section 14 of the Trademark Act.] Here, the challenged registration issued on September 14, 2004, and so Petitioner had until September 14, 2009, to properly file its petition.

On October 9, 2008, counsel for petitioner informed the Board of the mistake, stating that he had "interpreted the TBMP as excusing the petitioner from making service because the the TTAB would make service." [TTABlog note: the TBMP hasn't been revised in five years]. Because Petitioner acknowledged its mistake, served the petition on Registrant's counsel (October 16), and moved swiftly (October 17) to seek amendment of the petition to state when service had actually been made, the Board gave Petitioner a break:

Inasmuch as petitioner acted promptly to cure its acknowledged failure of service, and given the fact that this petition would not be time-barred as of the date of actual compliance with the service requirement, petitioner cured the defective filing by its amendment of the proof of service. Therefore, the Board will not dismiss this petition as a nullity but instead will accord the petition a new filing date of October 17, 2008, which is the date of such amendment.

Petitioner's counsel made one more teensy-weensy mistake, which the Board also forgave. Service was made on Registrant's counsel rather than on Registrant, although Rule 2.111(b) states that the petition "is to be served on the owner of the registration or its domestic representative, if one has been appointed, at the correspondence address of record for the owner or domestic representative, if any." But since Respondent filed an answer to the petition on November 17, 2008, the Board let it go.

Tip from the TTABlog: Don't horse around! Read the rules or you may never get out of the starting gate.

Text Copyright John L. Welch 2009.


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