Monday, April 08, 2013

Precedential No. 13: TTAB Nixes Stipulation for Service By E-Mail And Five Extra Mailing Days

The parties to this opposition proceeding filed a stipulation to accept service by e-mail while retaining the five additional days afforded by Rule 2.119(c) for filing and/or serving responsive documents, applicable for service by first-class mail. No can do, said the Board, as it rejected the stipulation. McDonald's Corporation v. Cambridge Overseas Development Inc., 106 USPQ2d 1339 (TTAB 2013) [precedential].

Rule 2.119(b)(6) allows service of papers by electronic transmission when the parties so agree. But they cannot also take advantage of the five-extra-days-for-mailing provision of Rule 2.119(c). That five-extra-days rule applies only to service by first-class mail, Express Mail, or overnight courier. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42442, 42250 (August 1, 2007) ("as for agreed use by parties of e-mail or fax for forwarding service copies, the office confirms that Section 2.119(c) would not apply to service by electronic transmission (email or fax) under Section 2.119(b)(6).").

The Board pointed out that a stipulation such as that filed here would run afoul of Rule 2.127, which states that the time for filing reply briefs and motions under FRCP 56(d) "will not be extended."

Therefore, the Board refused to approve the stipulation.

The parties could stipulate that they would accept service by first-class mail but with a courtesy e-mail copy sent simultaneously. Then the five-extra-days-for-mailing would apply. [TTABlog query: what is the sanction if one fails to send the courtesy e-mail copy?]

Read comments and post your comments here.

TTABlog comment: FWIW, my practice is to never agree to service by e-mail. That's because, from one case to another, I can never remember in which cases I've agreed to e-mail service and in which I haven't. So the simple way to remember is to never agree. I will agree to sending courtesy copies by e=mail, however, being that kind of guy.

Text Copyright John L. Welch 2013.


At 7:58 AM, Anonymous Morris Turek said...

I personally think its time for the Board to require email service in all proceedings. There is absolutely no reason in this day in age to have service by first-class mail, courier, fax, or express mail. It's a complete waste of time and money.

At 3:30 PM, Anonymous Rob said...

On the contrary, in my view, the proper practice is to ALWAYS agree to e-mail service. Future generations would mock us for requiring paper copies. It would be their equivalent of us requiring an additional service copy by telegraph.

Anyway, each case is entirely unique, I fail to understand the benefit in keeping uniformity only with respect to service stipulations. You can always serve by e-mail, even if in some cases it's required whereas in others it's a courtesy.

At 5:00 PM, Anonymous Anonymous said...

I agree with John, we never agree to service. Otherwise we have to remember which rule applies to which case. It looks bad when you have the discovery conference, but I explain that is why we cannot agree.

I have always said, "I can agree to email if we get the five extra days."

So it appears that stip is not available.

Interestingly, I received three unsolicited Board orders on this issue recently and one that was corrected again. Perhaps this case is why?

At 9:42 AM, Anonymous Erik Pelton said...

For those who serve by email, how do you ensure and document that the email was received? Email is just not as reliable for a variety of reasons in my experience. One the envelope is put in the mail, I no longer need to think about my obligations regarding service - I like that simplicity. But if there was a simple reliable way to make email service hassle-free I would love to avoid paper. I just don't want be stuck 30 days later figuring out what happened to an email (file too large, spam filter, requested confirmation of receipt from other side not received promptly, etc.) and having lost an entire month. Any practice tips are welcome.

At 7:02 PM, Anonymous Anonymous said...

I am very late to the party on this issue.

Did anyone on the TTAB take contracts? A stipulation is a contractual agreement. If 5 days is a condition of the contract, but the TTAB says it violates another rule and cannot be performed, then due to impossibility of performance there is no stipulation. In that case, the parties are bound by the US Mail rule and 5 days DOES apply.

TTAB got it wrong. Again. Coin flip or TTAB: Is there a difference?


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