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.