Tuesday, March 20, 2012

Precedential No. 12: TTAB Dismisses Cancellation Petition Due to Improper Service

When Petitioner Jacques Moret, Inc. commenced this proceeding by the filing of its petition for cancellation, it was supposed to have served the petition on either the Respondent or Respondent's domestic representative, if one had been appointed. See Rule 2.111(a) and (b). Here, Respondent Speedo did not appoint a domestic representative, and so Petitioner should have served Speedo (a Netherlands company) directly. It did not. Instead Petitioner served an attorney who had corresponded with Petitioner's counsel regarding a cease-and-desist letter. The Board therefore granted Speedo's motion to dismiss under FRCP 12(b)(5). Jacques Moret, Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212 (TTAB 2012) [precedential].

Even if the PTO records for a registration indicate an attorney of record, if that attorney is not designated as domestic representative for the registration, service of a petition for cancellation on that attorney is not sufficient. Likewise, service on an attorney who represented registrant during prosecution, or who represented registrant as to other matters, is not sufficient.

As stated, Petitioner should have served a copy of the petition for cancellation on Speedo at its correspondence address in the Netherlands. Service on an attorney who was never counsel of record in this proceeding, nor appointed domestic representative, was insufficient. [Note that a power of attorney filed in connection with an application expires when the application issues to registration.]

Petitioner also served a copy of its petition on the Director of the USPTO (concurrently with its motion opposition papers), pointing to Rule 2.24(a)(2). But the Board pointed out that that Rule concerns service of notices or process in applications during ex part prosecution, and does not govern service of papers in cancellation proceedings.

Nonetheless, the Board noted that the firm that filed the motion to dismiss here is now recognized as counsel of record in this proceeding. That firm received a copy of the petition for cancellation as part of Petitioner's opposition to the motion. Since Respondent was then clearly on notice of the proceeding, the Board deemed the proceeding as commenced on July 28, 2011 (when the law firm received the copy), revoked the original filing date of June 16, 2011, and set out a discovery and trial schedule.

TTABlog comment: Big deal, huh? But suppose the challenged registration reached its fifth anniversary between June 16th and July 28th? And suppose the claim was for likelihood of confusion under Section 2(d)? Get my drift? No? See Section 14(1) of the Lanham Act.

Note that the motion to dismiss was pending for seven months!

Text Copyright John L. Welch 2012.


At 6:03 PM, Anonymous Anonymous said...

The Board does not seem to want to toss cases on technicalities. This is a shame, because it suggests attorneys in the TTAB do not have to follow the rules as strictly as they would in USDC.

There are other cases where the notice of opposition or cancellation was not mailed to the correct address. With a cancellation it appears the Board just says no harm no foul because it will just get refiled, but I am not aware of any "five year" cases.

With an opposition, the Board goes overboard to find a reasonable effort was made at service. So even if an Opposer fails to follow the rules, the Board appears to find that an Opposer acted reasonably, although I have seen the Board does point out it would be a good idea to check the address before filing.

The problem is how many cases this has happened where the other party never got a notice and the case went to default because the other party never knew.

Anyone know of such a case?

Would a registrant be able to resurrect a canceled mark that was canceled if the Registrant was improperly served?

At 3:23 PM, Anonymous Rob said...

The Board committed a clear error when it said: "Trademark Rule 2.24 [...] governs service of notices or process in applications during ex parte prosecution."

No part of that Rule distinguishes or even mentions that it applies only to ex-parte prosecution. It can and does equally apply to inter-partes proceedings involving applications.

At 3:57 PM, Blogger John L. Welch said...

Rob: I agree that the Board's interpretation was a bit strained. Are you saying that Rule 2.24 should apply both to oppositions and cancellations? If it doesn't apply to cancellations, then the Board's error is harmless, right?

At 4:50 PM, Anonymous Rob said...

Not quite. I agree with the Board that it applies only to applicant (as opposed to registrant) defendants. But I disagree with the Board when it says it only applies to ex-parte (as opposed to inter-partes) proceedings, because it makes no sense and has no basis in the language of the rule. Still, I agree with you John that given the facts of the case, this was dictum.

At 6:09 PM, Blogger John L. Welch said...

Rob, we're in agreement. I always appreciate your comments. I hope we meet at INTA in DC in May.

At 4:18 PM, Anonymous Rob said...

Thanks, John, the appreciation is certainly mutual!

BTW, I was wondering what your thoughts were on the pending petition for rehearing en banc of the Lovin case. For obvious reasons it's mainly been covered by patent law bloggers, but perhaps there could be some interesting twists for trademark practitioners as well.

At 6:04 PM, Blogger John L. Welch said...

For those who don't know, Rob is talking about In re Lovin, 651 F.3d 1349 (Fed Cir. 2011) which deals with judicial deference to an agency's interpretation of its rules.
It certainly would seem to have ramifications for trademark practitioners. In this case, the Board may have misinterpreted the rule, but since it was irrelevant anyway.


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