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.
posted by John L. Welch @ 8/23/2011
2 comments
2 Comments:
Several interesting issues.
1. This was not a firm that can claim ignorance of forgetting to “put a check in the box.” Fross Zelnick handles a few Oppositions I would imagine.
2. The Board did this on its own - no papers have been filed by Applicant yet.
3. In a footnote the Board hints:
Had Opposer filed the notice of opposition with time remaining in the opposition period, rather than on the last day for filing, it could have filed a new opposition with a fuller statement of its grounds on the ESTTA cover sheet.
Thus, there is a good reason why one should NOT wait until last day to file an opposition. In fact in this case the due date was 5/22 (Sunday) and Opposer waited until 5/23 after THREE extensions (30, 60, 60)
4. Another question:
Why would one ever file two separate extensions to oppose? I say just file the 90 day and be done with it. I asked a TTAB judge a few years back why anyone would file 30 and then 60 and he said "Beats me, there is no reason, unless you like to charge a client twice."
5. A final thought:
When you file an extension to oppose then do something productive with that time. It's not just a free chance to bill a client for nothing.
Too many firms, this one included, just file the extension out of hand, and never use it to contact the other side. Only when they have run out of time on the first 90 days do they bother calling you to ask for another 60 day extension. Then most people appear to be too busy to do anything with that extra time, so they file the Opposition on last day and then ask you to suspend because they are still too busy to discuss settlement (although the excuse is usually that the client is very busy). In the old days this could go on for years. I find it better to tell the other side, “No, there is plenty of time to work this out during the discovery period. You filed the case, now make some time to at least outline your proposal.”
If the Board wants to do something in this area, then maybe if you file an extension of time there has to be a mandatory settlement conference within two weeks to discuss settlement - which is the alleged basis for filing the extension in most cases anyway.
Another interesting comment appears in footnote 4, where the Board seems to suggest that Opposer could later petition to cancel any issuing registration. But would a cancellation petition be barred by res judiciata in light of the failure to properly bring the additional claims in the opposition?
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