Precedential No. 26: Listing of Application on ESTTA Cover Sheet Suffices for Claim of Common Law Rights in Opposition to Section 66(a) Application

Opposer Sterling Computers opposed IBM's Section 66(a) applications to register the marks STERLING and IBM STERLING for various Class 42 services. In its notice of opposition, opposer claimed a likelihood of confusion with its marks STERLING, in standard character and design form, and STERLING COMPUTERS. On its ESTTA cover sheet, opposer listed pending applications for all three marks, as well as common law rights in the mark STERLING COMPUTERS. When it filed an amended notice of opposition, opposer added common law rights in its STERLING marks. IBM objected because those added common law rights were not included on the ESTTA cover sheet. The Board, however, sided with opposer, holding that identification of the applications for the STERLING marks was enough to notify WIPO's International Bureau of its common law rights that are coterminous with those of its identified applications. Sterling Computers Corporation v. International Business Machines Corporation, 2023 USPQ2d 1050 (TTAB 2023) [precedential] (Order by Judge Jennifer L. Elgin).

Under the Madrid Protocol Treaty, the USPTO is obligated to notify the International Bureau (IB) of WIPO of either (1) a refusal based on the filing of an opposition, or (2) the possibility that an opposition may be filed, within 18 months of the filing of a request for extension of protection under Section 66(a). The USPTO provides the IB with the required information regarding an opposition by forwarding a copy of the ESTTA cover sheet completed by the opposer when an opposition is filed. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959 (1960) (TTAB 2011).

Under the Trademark Act and applicable rules, the grounds for the opposition are limited to those stated on the ESTTA cover sheet, regardless of the claims made in the notice of opposition itself. Moreover, additional grounds may not be added under any circumstances. "Thus, an opposer is not permitted to amend its pleading to include 'common law rights not previously identified on the ESTTA cover sheet.'" Destileria Serralles, Inc. v. K.K. Donq Co., 125 USPQ2d 1463, 1466-67, n. 11 (TTAB 2017) (granting motion to strike evidence and denying construed cross-motion to amend likelihood of confusion claim to assert common law rights in a mark for “rum cakes, chocolates and bar services” as beyond the scope of IB notification where pleaded registration only for “rum”).

Opposer argued that the listing of its pending used-based applications for its STERLING marks on the ESTTA cover sheet satisfied the requirement of Trademark Rules 2.104(c) and 2.107(b) that the IB be notified of opposer's common law rights in these marks. The Board agreed, noting that, unlike in Destileria, here the added common law rights are "coterminous with the services and dates of use recited in the use-based applications identified on the ESTTA cover sheet."

The Board noted that, on the ESTTA form, if a pleaded mark is the subject of a registration, the registration number may be entered in one text box, and if a mark is the subject of a pending application, the serial number may be entered in another box. In each case, the relevant information is automatically retrieved from the USPTO database. The form states: "If the asserted mark is not the subject of a U.S. Registration or pending application," then the mark should be entered in a third box.

The Board holds that identification of a use-based application or registration under Trademark Act Section 1(a) on the ESTTA cover sheet as grounds for an opposition against a Section 66(a) application based on likelihood of confusion claim is sufficient to satisfy the requirement to notify the IB of plaintiff’s reliance on common law rights that are coterminous with that pleaded use-based application or registration under Trademark Rules 2.104(c) and 2.107(b).

Therefore, the Board denied IBM's motion to strike the added allegations regarding opposer's common law rights in the STERLING marks.

Read comments and post your comment here.

TTABlogger comment: IBM's Section 66(a) application was based on an original filing in Mauritius. Now, why do you think it filed first in Mauritius? (Flag of Mauritius shown below).

Text Copyright John L. Welch 2023.