Precedential No. 45: TTAB Grants Motion to Amend Opposition to Section 66(a) Application

In this consolidated proceeding, Prosper filed a notice of opposition against IBM’s Section 66(a) application (Request for Extension of Protection) to register the mark BIGINSIGHTS for various goods and services in International Classes 9, 35, and 42. As required for an opposition to a Section 66(a) application, Prosper employed the USPTO’s electronic filing system (ESTTA), indicating on the ESTTA form that it was opposing IBM’s application in all classes, on the grounds of likelihood of confusion under Section 2(d) and likelihood of dilution under Section 43(c), without specifying which claims pertained to which classes. However, in the opposition document attached to the ESTTA notice Prosper more specifically pleaded its Section 2(d) claim against only the class 35 services only, and its dilution claim against only the class 9 goods and the class 42 services. Before IBM answered, Prosper filed an amended notice of opposition, by right under FRCP 15(a)(1), in which it dropped the dilution claim but asserted likelihood of confusion against all three classes in IBM's application. When Prosper moved for leave to file a second amended notice of opposition in order to set forth in greater detail its Section 2(d) claim, IBM responded by asserting that Prosper was trying to improperly expand its notice of opposition because in the original notice of opposition, the Section 2(d) claim was aimed only at the class 35 services. The Board sided with Prosper. Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148 (TTAB  2014) [precedential].

IBM pointed out that classes 9 and 42 were not the target of the likelihood of confusion claim included in the notice of opposition that Prosper filed along with the ESTTA opposition form. The Board framed the issue as follows: to what extent may an opposer amend a notice of opposition to a Section 66(a) application, “when the grounds stated in the original notice of opposition are arguably narrower in scope than the grounds for opposition set forth on the ESTTA electronic form?” The Board explained:

An opposition to a Section 66(a) application must be filed through ESTTA. See Trademark Rule 2.101(b)(2). Filing an opposition through ESTTA requires the completion of an electronic form, and the attachment of a “pleading (i.e. a short and plain statement showing that the filer is entitled to relief).” TBMP § 110.09(c)(1). In all oppositions filed through ESTTA, the electronic form requires entry of information necessary for the Board to institute the proceeding, including the grounds for opposition, which, it is expected, are further explained in the attached pleading. When an opposition to a Section 66(a) application is filed, the USPTO must notify the International Bureau (“IB”) of the World Intellectual Property Organization within strict time limits of “all of the grounds for the opposition.” Trademark Act Section 68(b)–(c), 15 U.S.C. § 1141h(b)-(c). In fulfillment of this requirement for notification, the ESTTA system automatically transmits to the IB the information provided by the filer on the ESTTA electronic opposition form. The automated system does not send a copy of the attached pleading to the IB. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).

Once the IB is timely notified of the grounds for an opposition, the USPTO may not entertain an opposition on any ground as to which the IB has not been timely notified. See Trademark Act Section 68(c)(3), 15 U.S.C. § 1141h(c)(3). That is, once filed, an opposition against a Section 66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition beyond those as to which the IB has been notified. See Trademark Rule 2.107(b); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011). Because the IB is notified of the grounds of the opposition by the contents of the ESTTA electronic opposition form and not the actual pleading attached thereto, it is the ESTTA electronic opposition form, and not the text of the pleading, that controls the scope of permissible amendments to claims in opposition proceedings involving Section 66(a) applications. See CSC Holdings LLC, 99 USPQ2d at 1962-63.

Here, the IB was notified that Prosper opposed in three classes, and that the grounds for opposition were likelihood of confusion and dilution. "Because the limitation on a party opposing registration of a Section 66(a) application prohibits asserting grounds for opposition which were not timely noticed to the IB, it is the scope of the notice to the IB which controls the scope of permissible amendments to the notice of opposition under Trademark Rule 2.107(b)." The Board therefore granted Prosper's motion for leave to file its second amended notice of opposition, noting the Board's "general policy of liberally granting leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would be prejudicial to the rights of the adverse party or would violate settled law."

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TTABlog note: No, oppositions to Madrid Protocol applications are not conducted in Spanish. Note that IBM, a US Corporation, based its request for extension on a French registration. (See footnote 1).

Text Copyright John L. Welch 2014.