Precedential No. 40 (2017): TTAB Strikes Evidence of Common Law Rights Not Listed By Madrid Opposer On ESTTA Cover Sheet

Fellow Bostonian Keith Toms has called to my attention a precedential TTAB interlocutory order issued on December 28, 2017. [The opposition was dismissed the same day, in a lengthy opinion discussed here]. In its order, the Board struck opposer's evidence regarding common law rights in its DON Q marks for certain goods (other than rum, the subject of opposer's pleaded registrations) because opposer did not list those alleged rights when it completed the ESTTA cover sheet for this opposition to applicant's Section 66(a) request for extension of protection under the Madrid Protocol. Destileria Serralles, Inc. v. Kabushiki Kaisha Donq DBA Donq Co., Ltd., 125 U.S.P.Q.2d 1463 (TTAB 2017) [precedential].

The Board pointed out once again that "Madrid applications are treated differently in many key respects from other applications." The USPTO, in order to meet its obligations under the Madrid Protocol, has promulgated specific regulations and requirements to accommodate the Madrid system.

[T]he USPTO must ... notify the International Bureau (“IB”) of the World Intellectual Property Organization, informing it of certain information required under U.S. law implementing the Madrid Protocol. This notice must be sent within strict time limits, and any USPTO failure to fully and timely notify the IB may result in the opposition being limited by the information sent or dismissed in its entirety. CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) [TTABlogged here]

The ESTTA cover sheet "performs an integral function in cataloguing and reporting to the IB information on oppositions filed against Madrid applications." The ESTTA sends to WIPO only the information that is entered on the ESTTA electronic form. The system is fully automated, and "Board personnel do not review or edit the information provided on the electronic form to ensure that it is complete." Id.

ESTTA allows the opposer to identify the grounds for opposition, as well as the registrations and/or pending applications of which it claims ownership, and on which it relies as a basis for its opposition. ESTTA also permits an opposer to identify common law rights in a mark or marks, and the goods and/or services associated therewith as a basis for its asserted claims.

The Board ruled that opposer’s failure to identify on the ESTTA cover sheet its common law rights in "other goods and services" (including rum cakes, chocolates and bar services) precluded opposer from relying on such common law rights in connection with its likelihood of confusion and dilution claims.

Indeed, if an opposer is precluded from amending its pleading to add an additional claimed registration to support a previously asserted likelihood of confusion claim under Section 2(d) of the Trademark Act [See Rule 2.107(b) and accompanying Notice of Proposed Rulemaking], it would follow that an opposer also could not add common law trademark rights not previously identified on the ESTTA cover sheet. By doing so, an opposer would be impermissibly expanding, not clarifying, the scope and/or basis of its Section 2(d) claim.

The Board, construing applicant's objection to the evidence as a motion to strike, granted the motion and refused to consider opposer’s common law rights in its DON Q marks for these additional goods or services, and it further refused to allow opposer to amend its pleading to add said common law rights.

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TTABlog comment: Suppose that during discovery, one uncovers facts that would support a finding of abandonment or fraud? If you can't add those claims in a Section 66(a) opposition, will you be forced to appeal by way of civil action in order to bring in these claims?

Text Copyright John L. Welch 2018.