Precedential No. 5: TTAB Rejects Untimely, Fee-less Paper Opposition Filed Sans Petition to Director

DFC Expo LLC tried to oppose Brian Coyle's application to register the mark SODA CITY FIRE DEPT. for "Mobile beverage cart services featuring self-serve gourmet soda," but it turned out to be a false alarm. DFC's submission of its notice of opposition was untimely, did not include the required fee payment, and was filed on paper without the required petition to the Director of the USPTO. Too TTABad for DFC. DFC Expo LLC v. Coyle, 121 USPQ2d 1903 (TTAB 2017) [precedential].

On December 20, 2016, Potential Opposer DFC filed a request for, and was granted, an extension of time to February 6, 2017 to oppose Coyle's application. In a letter accompanying the notice of opposition [here], DFC's counsel claimed that on February 6th, he attempted to file the notice electronically via the ESTTA website, but could not access the payment screen. [Apparently, DFC's counsel attempted to upload a Microsoft Word document, which ESTTA does not accept]. He then, on that same day, mailed the notice to the USPTO but, since he did not have any "extra business checks," he promised to contact the Board upon return to his office and would make payment at that time.

Untimeliness: The notice of opposition was filed without a certificate of mailing under Trademark Rule 2.197(a), and so the effective date of the filing was the date of receipt by the USPTO, February 9, 2017. See Trademark Rule 2.195(a). Because the effective filing date was three days after the deadline date, the notice was untimely and could not be considered by the Board. That alone was reason enough not to institute an opposition proceeding.

No Fee: Another ground for rejecting the notice was DFC's failure to pay the required fee.  See Vibe Records In. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008).

The Board noted that the deadline and payment requirements are statutory and cannot be waived by the Office. See Section 13 of the Trademark Act.

No Petition: Finally, under the recent amendments to the Trademark Rules of Practice that took effect on January 14, 2017, a notice of opposition must be filed electronically via the ESTTA system. See Rule 2.101(b). However, in oppositions to applications under Trademark Act Sections 1 or 44 (but not Section 66), the notice of opposition may be filed in paper form if "ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present." However, in such case, the paper opposition must "be accompanied by a petition to the Director under Rule 2.146, with the fees therefor and the showing required."

DFC did not file the required petition with its notice of opposition. The explanation set forth in DFC's cover letter was not a petition, and even if it were, it did not include the requisite verified explanation of the reasons for the paper filing. The USPTO's internal data showed that DFC attempted to upload a Microsoft Word document at 1:45 PM, that ESTTA was unavailable due to technical problems from about 2 PM to 4 PM, and that DFC made no subsequent attempt to file the notice electronically.

Conclusion:

In sum, Potential Opposer’s submission of the notice of opposition in paper form is not acceptable because it was not timely-filed, it was not accompanied by the requisite fee, and it was not accompanied by a Petition to the Director. The remedy for Potential Opposer lies in filing a petition to cancel once a registration issues.

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TTABlog comment: Takeaway: Read the rules and don't wait until the last minute to file.

Text Copyright John L. Welch 2017.