Tuesday, July 28, 2015

Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice

On December 31, 2014, Applicant Stacy Lee Huggins filed electronically an abandonment of his application to register the mark COKE HEAD for t-shirts. On that same day, 3PMC filed a notice of opposition via the TTAB's ESTTA system. Two months later, the Board entered judgment against Applicant Huggins under Rule 2.135 based on his abandonment of the application without consent. The Board, however, has granted Huggins's Rule 60(b) motion for relief from judgment, ruling that "a day is an indivisible period of time for purposes of the situation presented here." The Board, assuming that the abandonment and notice of opposition were filed at the same instant, held that Huggins's application was not subject to opposition when it was abandoned. 3PMC, LLC v. Stacy Lee Huggins, 115 USPQ2d 1488 (TTAB 2015) [precedential].

Opposer 3PMC filed its notice of opposition via the TTAB's ESTTA electronic filing system. On that same day, Applicant Huggins filed an abandonment of his application via the USPTO's TEAS electronic filing system.

In his motion for relief from the judgment under FRCP 60(e), Huggins contended that his abandonment had been filed before the opposition was filed, and therefore the opposition proceeding should be dismissed without prejudice.

The Board reaffirmed its holding in In re First Nat’l Bank of Boston, 199 USPQ 296, 301 (TTAB 1978), that it "shall not take cognizance of fractions of a day," and it therefore assumed that the opposition and the express abandonment were filed "at the same instant." "In accordance with our precedent, we conclude that the involved application was not subject to an opposition when it was abandoned, and therefore Trademark Rule 2.135 does not apply."

 The Board noted that the Boston case was decided when all documents were filed on paper and it was not possible to decide which document was filed first. Greater certainty as to timing may be available with electronic filing, but even now computer systems are subject to technological limitations. Moreover, the interaction between TEAS, ESTTA, and TRAM is complicated by the fact that some data is inputted automatically and some by hand.

The Board considered the prejudice that opposer would suffer if the opposition were dismissed without prejudice. Opposer contended that it "may be subject to opposition or cancellation proceedings by Applicant 'down the road' and 'will be forced to monitor the activities of Applicant at the USPTO for an indeterminate amount of time.'" The Board, however, deemed those concerns to be a cost of doing business that did not rise to the level of "manifest injustice" requiring further consideration.

Finally, opposer argued that the Board's ruling here would reduce the period for filing an opposition by one day. The Board pointed out, however, that an applicant may abandon its application at any time during the opposition period, thus completely eliminating the statutory time period for filing an opposition.

The Board therefore granted applicant’s Rule 60(b) motion, vacated its earlier judgment, and dismissed the opposition without prejudice. Opposer's filing fee for the opposition will be refunded.

Read comments and post your comment here

TTABlog comment: Well, at least opposer got its money back. But what about interest?

Text Copyright John L. Welch 2015.


At 10:44 AM, Anonymous Anonymous said...

Does the Opposer's interests matter since the application has been abandoned?

At 2:39 PM, Anonymous Anonymous said...

Was anyone else as curious as me about how this got published and who filed the Opposition? After looking into this further it got even stranger.

Interestingly, Coca-Cola did not oppose. Coca-Cola filed an extension to oppose but did not file an Opposition.

3PMC, the party who opposed, has a pending application for COKE HEAD which it filed on the same day it filed the Opposition. This application is for "clothing" and claims first use back to 2008. The 3PMC application has been refused based on several registrations owned by Coca-Cola and is still pending.

However, the most interesting part is the application filed by Huggins in 2013 for COKE HEAD on T-shirts. She claims first use back to 2012. But this application was not refused under 2d. It was only refused because the specimens were deemed "ornamental." The application was abandoned for failure to respond, then revived after an attorney was hired and submitted new specimens. It was published without any 2d issue being raised.

Is this the end or will Coke simply sue 3PMC? and did Coke settle with Huggins?

I doubt this is the end of this matter, but I suspect it is not likely to come up again at TTAB.


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