Tuesday, April 05, 2005

TTAB Denies Paper Extension Request Re Section 66(a) Application: ESTTA Required

In its infancy, the TTABlog reminded readers (here) that the Rules concerning oppositions to Madrid requests for extension of protection (a/k/a Section 66(a) applications) differ in some important respects from those applicable in "non-Madrid" oppositions. See Welch and Lamport Hammitte, "TTAB Practice and the Madrid Rule Changes," Intellectual Property Today (February 2004). One difference is that requests for extension of time to oppose Section 66(a) applications must be filed electronically via ESTTA, the TTAB's electronic filing system. See Trademark Rule 2.102(a)(2).

Unfortunately for Sara Lee Corporation, it failed to comply with that Rule when it filed by mail an extension request regarding a Section 66(a) application owned by the German company, Börlind, maker of ANNEMARIE BÖRLIND brand cosmetics. Consequently, in a ruling deemed citable, the Board denied the request for extension of time. In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).

The Börlind application (for the curved, S-shaped mark shown on the packaging) will now proceed to registration. Sara Lee may, the Board pointed out, petition to cancel any resulting registration.

There are several curious aspects to the Board's deeming this ruling "citable." First, why is this ruling significant enough to be citable? Rule 2.102(a)(2) could not be clearer, and the Board's application of the Rule was straightforward. The opinion does include a nice explanation as to why the Rule was adopted. In sum:

"Because of the strict time frame in which the USPTO must notify the IB of the filing of an opposition, it would be virtually impossible to assure potential opposers that their rights would be preserved if the Board accepted paper filing of either extensions of time to oppose or notices of opposition against Section 66(a) applications."

That explanation, however, was unnecessary to the ruling and hardly merits the "citable" designation. Perhaps the TTAB and the Trademark Reporter should revive the old series of articles called "Tips from the TTAB" that used to provide useful discussions of similar issues of TTAB law and practice. That would seem to be an appropriate vehicle for this type of commentary.

Second, the opinion does not identify as author any of the judges of the TTAB, but states that the ruling was made by "David Mermelstein, Interlocutory Attorney." It seems to this writer that a citable Board ruling should be issued in the name of one of more of the Board's Administrative Trademark Judges, or in the name of the Board as a whole. Can the ruling of an Interlocutory Attorney have precedential effect?

I hesitate to complain when the Board issues a citable decision -- it doesn't happen all that often. But does this ruling really add anything of significance to existing law? I don't think so. I suggest that the Board deemed it "citable" merely to send a "wake-up" call to the TTAB bar regarding the Madrid rule changes.

Text ©John L. Welch 2005. All Rights Reserved.


Post a Comment

<< Home