Precedential No. 35: Filing of Opposition by Foreign Attorney is Curable Defect, Says TTAB

In this cat fight over rights to the mark TOBERMORY CAT, Applicant Angus Stewart moved for dismissal on the ground that the notice of opposition, and two extension requests that preceded it, were signed by a foreign attorney not authorized to practice before the USPTO. The Board, however, ruled that this defect was curable. It then suspended the proceeding in order to assess the impact of a pending UK invalidation proceeding involving the foreign registration on which the opposed application is based. Birlinn Limited. v. Angus Stewart, 111 USPQ2d 1905 (TTAB 2014) [precedential].

The cure: The extension requests and the notice of opposition were signed and filed by an attorney in Edinburgh, Scotland, using the ESTTA system; this resulted in their automatic approval and the institution of this proceeding. When applicant moved to dismiss, a new attorney for opposer, authorized to practice before the USPTO, filed an opposition to the motion and an amended notice of opposition (differing from the original notice only in the name of the signatory and the certificate of service).

Opposer relied on TBMP § 114.06 (2014) [Note to reader: the TBMP is not the law - ed.], which provides:

If it comes to the attention of the Board that an individual who is not entitled, under 37 CFR § 11.14(a), 37 CFR § 11.14 (b), 37 CFR § 11.14 (c) or 37 CFR § 11.14 (d), to practice before the Office in trademark cases, is attempting to represent a client in a Board proceeding, the Board will notify the individual that he or she is not entitled to do so. If the individual signs and files a submission on behalf of a client to a Board proceeding, the submission will not be considered unless a new copy thereof, signed by the party or by an authorized representative who is entitled to practice before the Office in trademark cases, is filed.

In response, Applicant Stewart asserted that the amended notice of opposition was untimely and therefore there was no operative notice of opposition to amend or to cure.

Applicant's motion was based on the premise that service of the original notice of opposition was improper, but the Board pointed out that the Rules do not require service by a person authorized to practice before the USPTO. The real issue was whether the extension requests and the original notice of opposition "were signed in conformity with the Trademark Rules of Practice, and if they were not, whether and when the rules allow Opposer to cure the defect in the signature of these papers."

Rule 2.102(a) requires that an extension request be signed by "the potential opposer or by the potential opposer’s attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter." Rule 2.101(b) states the same requirement for notices of opposition. Opposer did not contend that the original signatory was either an attorney or an authorized representative, as defined by the Rules. [There was no contention that the Scottish attorney was not in fact authorized to sign and file the papers].

The question, then, was whether and how the defective filings could be cured. The Board noted that Rules 2.102(a) and 2.101(b) do not say that filings that are not properly signed are null and void. It found instructive Rule 2.119(e), which allows a party to cure the defect of a lack of a signature for any inter partes filing at the Board. That Rule provides:

Every paper filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office.

The Board saw no reason why this opportunity to cure should not also apply when a paper is signed by a person not authorized to practice before the USPTO. Nor does Rule 2.119(e) require that the defect be cured within the original time limit for the filing. Rule 2.119(e)requires only that the party re-file the properly signed copy "within the time limit set in the notification of this defect by the Office."

Opposer had filed an amended notice of opposition with a proper signature, but had not filed amended extension requests. The Board allowed opposer twenty days to file amended requests with proper signature.

The Board emphasized that its ruling should not be interpreted to cover situations beyond the circumstances at hand, where there was no evidence of intentional misconduct.

The suspension: The Board observed that opposer had referred to a pending UK invalidation proceeding instituted by Opposer Birlinn. The Board therefore suspended this proceeding pending receipt of further information that would allow the Board to assess whether the final determination in the UKIPO proceeding might have a bearing on the issues in this opposition. See Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792, 1793-94 (TTAB 1993).

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TTABlog note:  Since the opposed application is based only on Section 44, invalidation of the underlying UK registration could be fatal to the application.

Text Copyright John L. Welch 2014.