Precedential No. 32: TTAB Okays Service of Opposition by Mail to Applicant's Address, Not the Correspondence Address of Record

The intense, dark cloud hanging over this opposition was lifted by the Board's merciful ruling that Opposer Lindt's service of its Notice of Opposition on Applicant Karlo Flores by mail at his address, rather than at the address of record (his attorney's), was acceptable under the circumstances at hand. Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698 (TTAB 2009) [precedential].


Lindt filed a notice of opposition under Section 2(d) to registration of the mark 73% INTENSE DARK for chocolate and chocolate bars, relying on its previous use of INTENSE DARK for candy. The problem arose because Lindt had served the notice of opposition by mailing it to Applicant Flores' address, rather than to the "correspondence address of record" stated in the TARR database. See 37 C.F.R. § 2.101(a).

Flores' answer included an affirmative defense that Lindt had failed to make proper service under Rule 2.101. Six days later, Lindt mailed a copy of the notice of opposition to Flores’ attorney at the correspondence address of record.

One month later, Flores moved to dismiss under FRCP 12(b), but his motion was untimely because a motion to dismiss for improper service of process must be filed before or with the answer. However, because Lindt did not object to this untimeliness, the Board chose to consider the motion on the merits.

The Board observed that, under Rule 2.101, "an opposition is commenced only when two conditions are fulfilled: (1) opposer makes sufficient efforts to serve the notice of opposition and (2) the Board is notified of the service at the time the notice of opposition is filed." Here, the Board received notice of the filing via ESTTA. The question, then, was "whether opposer's failure to serve the complaint on applicant's 'correspondence address of record,' as that phrase is used in Trademark Rule 2.101(a), nullifies the opposition."

There was no dispute that Lindt initially served Flores at his business address of record, and not at his "correspondence address," which was his attorney’s address. Lindt's subsequent service of the notice on the attorney occurred after the opposition period had expired.

The Board ruled that Lindt's actions were "sufficient to comply with Trademark Rule 2.101." It pointed to its recent decision in The Equine Touch Foundation, Inc. v. Equinology Inc., ___ USPQ2d ___, Cancellation No. 92050044 (TTAB 2/10/2009,) wherein it accepted as sufficient service in a cancellation proceeding, "service on respondent's counsel rather than, as required, on respondent." [TTABlogged here].

Just as the Board in The Equine Touch Foundation recognized that there is a distinction between a complete lack of actual service and defective but curable actual service, so too do we recognize this distinction. The purpose of service in a Board proceeding is to provide notice of the action.

The Board took a lenient position because Lindt had timely served Flores, but had merely mailed the paper to Applicant rather than his attorney. Flores clearly received notice, since he filed an answer. Lindt then promptly cured the technical defect by mailing a copy of the notice to Flores' attorney.

Under the circumstances, the opposition may go forward on the pleadings of record. Opposer need not re-serve a copy of the complaint on applicant’s counsel.

And so, the Board ruled that the proceeding may go forward.

TTABlog comment: Equine Touch was a cancellation proceeding, a different breed from an opposition. There, had the petition been thrown out for improper service, the petitioner still had time to file a new petition for cancellation.

Here, the opposition period had expired by the time Lindt made proper service, so Lindt could not have timely re-filed the opposition. [Of course, it could later petition for cancellation if a registration ever issued]. So this is a somewhat bigger act of TTAB mercy than was Equine Touch.

One wonders whether it wouldn't be better if, as in the old days, the Board served the opposition papers. After all, under current procedure, when an opposition is filed the Board immediately sends out an initiation order to the parties. Why not make that the initial service of the notice of opposition?

Text Copyright John L. Welch 2009.