Monday, April 11, 2005

TTAB Panel Requires Electronic Filing While Dismissing Stoller "DARKSTAR" Opposition

The TTAB is moving inexorably toward mandatory electronic filing. Last fall’'s Madrid rule changes gave the Board the opportunity to introduce various provisions requiring (e.g., here) or facilitating filing via ESTTA. In a recent ruling in a Leo Stoller opposition, it took another step in the ESTTA direction by requiring that the parties file all subsequent papers electronically. Stoller v. Northern Telepresence Corp., Opposition No. 91162195 (February 11, 2005) [not citable]. One small step for a Board panel, one giant leap toward ESTTA?

In an order granting Northern's motion to dismiss Stoller's opposition as a nullity (more below), the Board exercised its "inherent authority to manage the cases on its docket" in order to "simplify matters" and "avoid unnecessary effort by the parties and undue delay." It ruled that it would "consider only those papers filed herein via the ESTTA system." Thus, for example, any request for reconsideration or notice of appeal would have to be filed electronically.

The genesis of that ruling, and the basis for dismissal, was Opposer Stoller's bumbling attempt to file a request for an extension of time to oppose Northern's application to register the mark DARKSTAR for infrared night vision systems. Stoller filed three different paper requests for a 90-day extension of time to oppose. The first was unsigned, bore a typed February 25, 2003 mailing date, and arrived at the TTAB more than one month after the deadline for opposition. When the Board allowed Stoller time to submit a signed copy of the first request, he submitted a signed paper having an even later mailing date. A third, signed request accompanied the Notice of Opposition and bore the same mailing date as the first.

The Board noted the "glaring discrepancies" among the three papers:

"Put simply, the record does not support a conclusion that an extension request bearing a signed certificate of mailing was filed on or before the statutory deadline of February 27, 2003. Thus, potential opposer missed the statutory deadline to file an opposition."

Of course, Mr. Stoller has filed an appeal from the Board's dismissal (Appeal No. 05-1320, docketed April 5, 2005). And he still has the remedy of a petition for cancellation should Northern’'s application ever ripen into a registration.

After perusing this Board decision, TTABlog readers will agree that mandatory electronic filing is the way to go. We love you, ESTTA!

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


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