Precedential No. 20: Madrid Opposer Limited to Single Ground Designated in ESTTA Form
A few months ago, the Board issued a decision that limited the goods opposed in a § 66(a) application to those identified on the ESTTA electronic form, despite the fact that additional goods were listed in an attached pleading. Hunt Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558 (TTAB 2011). [TTABlogged here]. In this case, the Board applied the same reasoning to limit the grounds for opposition to the single ground designated on the ESTTA form, despite the inclusion of additional grounds on the attached pleading. And so Opposer CSC Holdings was allowed to pursue only its electronically-designated Section 2(d) claim, and not its additional claims of fraud and lack of bona fide intent. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959 (TTAB 2011) [precedential].
An opposition to a "Madrid application" must be filed via ESTTA, and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed. ESTTA generates an opposition form that is automatically forwarded to WIPO.
In filing an opposition via ESTTA, the Opposer must complete the ESTTA electronic form and must attach a "pleading, i.e. a short and plain statement showing that the filer is entitled to relief." See TBMP § 110.09(c)(1) (3d ed. 2011).
The Board pointed out that, in the case of an opposition to a Madrid Protocol application (i.e., a Section 66(a) request for extension of protection), the electronic form plays an "additional, vital role." When such an opposition is instituted:
[T]he USPTO must so notify the International Bureau (“IB”) of the World Intellectual Property Organization, informing it of certain information required under U.S. law implementing the Madrid Protocol. This notice must be sent within strict time limits, and any USPTO failure to fully and timely notify the IB may result in the opposition being limited by the information sent or dismissed in its entirety.
The ESTTA sends to WIPO only the information that is entered on the ESTTA electronic form. The system is fully automated, and "Board personnel do not review or edit the information provided on the electronic form to ensure that it is complete."
Here, Opposer designated a claim of priority and likelihood of confusion on the ESTTA form. It set forth the two additional grounds in its attached pleading. Therefore, the Board limited this opposition to the Section 2(d) claim.
TTABlog comment: How do you say "electronic form over substance" in Spanish?
Text Copyright John L. Welch 2011.