Precedential No. 30: TTAB Strikes Counterclaim Allegations Based on Ex Parte Prosecution Errors, but Okays Section 10 Abandonment Claim

Opposer Flash moved under FRCP 12(b)(6) to dismiss Applicant's counterclaim for cancellation of one of Opposer's pleaded registrations. The Board agreed with Flash that several of Applicant's allegations did not state a valid claim for cancellation, but one allegation did. Flash & Partners S.P.A. v. I. E. Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) [precedential].


With regard to the challenged registration, the underlying ITU application was filed without a verification. The drawing page was then amended from the mark shown above top to the mark shown above bottom, and the verification was subsequently filed, confirming Applicant's bona fide intent as of the original filing date.

Applicant contended that (1) the underlying application was incomplete and thus void ab initio, and(2) Opposer did not have a bona fide intent to use the original mark, or the mark as amended.

As to (1), the Board pointed out that even an unsigned application is given a filing date. The Examining Attorney must require that applicant submit a verification that relates back to the original filing date. That is what happened here.

The determination of opposer's compliance with the signature requirement was an ex part examination issue addressed during prosecution. This issue, as with similar ex part examination matters, does not form a basis for cancellation.

As to (2), the submission of an amended drawing does not require verification. and the submission does not raise the issue of opposer's bona fide intent. The Examining Attorney's acceptance of the amended drawing is an ex parte decision that necessarily involves the determination of whether the amended mark creates that same commercial impression as the original mark.

In summary, opposer's filing of an amended drawing did not invalidate or otherwise affect its statutory allegation of a bona fide intent to use either the original or the amended mark as of the application filing date.

The Board pointed out that canceling a registration based on a finding of a material alteration "would, in effect, punish opposer for an alleged error on the part of the examining attorney, without allowing opposer the remedies it would have had if the issue had been raised during examination."

We recognize that prosecution of a trademark application involves numerous regulatory requirements, and that whether an applicant has satisfied them often entails some degree of subjective judgment on the part of the examining attorney. Considerations of due process, as well as fairness to parties against whom allegations of examination error are asserted, dictate that such matters be solely a matter for ex parte determination, and not grounds for opposition or cancellation.

Finally, the Board okayed Applicant's allegations that Opposer's underlying application was "twice invalidly assigned under Trademark Act Section 10 prior to the filing of the statement of use."

The assignment of a §1(b) application to an entity that is not the successor to the applicant’s business, before filing an allegation of use, renders the application and any resulting registration void. See The Clorox Co. v. Chem. Bank, 40 USPQ2d 1098 (TTAB 1996).

And so the Board re-set discovery and trial dates and resumed the proceeding.

Text Copyright John L. Welch 2010.