Monday, June 17, 2013

Precedential No. 21: TTAB Dismisses Belatedly-Filed Opposition, Rejects Claim of Privity With Extension Recipient

The Board dismissed this opposition for lack of jurisdiction because the notice of opposition was filed too late. Opposer Renaissance Rialto claimed the benefit of an extension of time to oppose that was obtained by a third-party, Lakeside Cinema, by way of a "Transfer Agreement," but the Board ruled that Opposer failed to show that Lakeside used the mark that it purported to transfer or that Opposer and Lakeside were in the position of parent-subsidiary, licensor-licensee, or any other relationship of privity. Renaissance Rialto Inc. v. Ky Boyd, 107 USPQ2d 1083 (TTAB 2013) [precedential].

Applicant Boyd sought to register the mark RIALTO CINEMAS for movie theaters. Opposer Renaissance Rialto instituted the opposition on November 23, 2010, claiming, inter alia, likelihood of confusion and genericness. The original opposition deadline was October 7, 2010. The third-party, Lakeside Cinema had obtained an extension of time to January 5, 2011 to file an opposition, but Lakeside did not file a notice of opposition. Instead, it executed a "Transfer Agreement" purporting to transfer to Opposer its right to initiate and prosecute this opposition. The question, then, was whether Opposer may claim the benefit of the extension of time granted to Lakeside.

Under Rule 2.102(b), the party filing an opposition during an extended period for filing must have obtained the extension of time in its own name or must be in privity with the person that obtained the extension of time. The concept of "privity" includes, among other things, the relationship of successive ownership of a mark. See TBMP Section 206.02. The Board therefore looked to the terms of the Transfer Agreement to see whether Lakeside effectively transferred its right to oppose (and the benefit of the extension of time to do so). "Typically, the right to go forward with an opposition may be transferred when the opposer, or its pleaded mark and the goodwill associated therewith, has been acquired by another party." SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

The Transfer Agreement, dated November 1, 2010, recited that Lakeside owned a leasehold interest in a movie theater, that for several years prior to Lakeside obtaining said interest the theater had been operated as "Rialto Cinemas," that Lakeside file a request for extension of time to oppose the instant application, and that Lakeside "has now decided to use a different name." By its terms, the Transfer Agreement assigned to Opposer any right that Lakeside might have to use of the name RIALTO CINEMAS, as well as its right to oppose the subject application pursuant to the extension of time that Lakeside had obtained. [To further complicate matters, the prior leaseholder was Ky Boyd, the applicant here].

The Board, however, found it "not at all clear" from the agreement that Lakeside Cinema ever used the mark or had any goodwill therein to transfer to Opposer Renaissance Rialto. Nothing in the record indicated that Lakeside used the mark in a manner that would create trademark rights that could be transferred to Opposer. Applicant Boyd testified that he did not license use of his mark to Lakeside, nor was he aware of anyone else using the RIALTO CINEMAS mark for movie theaters. Opposer's owner testified that Lakeside had not used that mark, and that the right to oppose that was purportedly transferred was not based on any use of the mark by Lakeside, but rather on "a natural right of a competitor to stop applicant from using what opposer deems to be a generic term."

Therefore, the Board found that the record evidence was insufficient to establish that Lakeside had a proprietary interest in the RIALTO CINEMAS mark. Opposer's acquisition of another's right to oppose, independent of a transfer of trademark rights, is an insufficient basis upon which to assert privity for purposes of claiming the benefit of an extension of time obtained by another person.

Because Opposer's did not timely file its notice of opposition, the Board had no jurisdiction over the matter and it dismissed the opposition, but without prejudice to Opposer's filing a petition for cancellation if and when appropriate.

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Text Copyright John L. Welch 2013.


At 9:29 PM, Anonymous Jay Spiegel said...

Why would anyone waste money litigating this issue when they could just wait until the mark registers and petition to cancel at that juncture?


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