Tuesday, October 25, 2005

Grrrreat! TTAB Dismisses Madrid Opposition: PTO Failed to Provide Timely Notice to WIPO

The Board was "constrained" to dismiss an opposition brought against a Section 66(a) application (a Madrid request for extension of protection) because the USPTO failed to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. Kellogg North America Co. v. Provea, Opposition No. 91166663 (October 21, 2005) [not citable].

Applicant Provea, a Swiss company, owns a Section 66(a) application with a filing date of December 25, 2003, by which it seeks to register the mark TONO INTERNATIONAL in the design form shown above, for a "full line of clothing; underwear; footwear; headwear." Kellogg opposed on likelihood of confusion and dilution grounds, based on its ownership and use of various TONY THE TIGER marks, including the mark shown below for clothing. (Kellogg alleged that in Mexico, it uses the name TONO in place of TONY). Provea's mark was published for opposition on May 24, 2005, and on June 23, 2005, Kellogg requested and obtained a 90-day extension of time to oppose.

The United States,upon its accession to the Madrid Protocol, amended the Trademark Act in order to comply with Article 5(2)(c) of the Protocol:
  • Section 68(c)(1) of the Trademark Act, in pertinent part, requires that, within 18 months after the date on which the IB transmits to the PTO a request for extension, the PTO must transmit to the IB: (A) a notification of refusal based on examination; (B) a notification of refusal based on the filing of an opposition; or (C) a notification of the possibility that an opposition may be filed after the end of the 18-month period.

  • Section 68(c)(2) states that, if the notice of part (C) above has been sent, a 7-month period is provided from the start of the opposition period, for notification of refusal based on the filing of an opposition.

  • Section 68(c)(4) says that if an appropriate notification as specified above is not sent within the applicable time period, the request for extension of protection shall not be refused.
Here, the opposition was filed on September 21, 2005, and on the next day the TTAB promptly sent to the IB an appropriate notice that an opposition had been filed. [Note that the dismissal order erroneously states the date of the TTAB notice to be October 13, 2005]. However, the USPTO "had not timely transmitted to the IB the notice required by Trademark Act Section 68(c)(1)(C)." [That notice was apparently due on or before June 25, 2005, 18 months after the filing date].

On October 3, 2005, the IB transmitted to the USPTO a "notice of irregularity" in response to the TTAB's notice, pointing out that the opposition may not be maintained because the IB had not received the requisite notice under Article 5(2)(c)(i) of the Protocol. The IB further noted that this irregularity was not correctable.

Consequently, the TTAB could not entertain the opposition, and it dismissed the proceeding without prejudice (noting that the opposer "is not barred from filing a petition for cancellation following issuance of the certificate of protection").

TTABlog comment: For a discussion of Article 5(2)(c) of the Madrid Protocol and its corresponding Trademark Act provisions, see the article that I co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes."

As a substantive matter, this ruling may have little impact, since Kellogg may petition to cancel the certificate of protection when it issues. Of course, Kellogg will have gone to some unnecessary expense in preparing and filing its futile opposition. Perhaps the PTO should waive the filing fee if and when Kellogg files a petition for cancellation.

One wonders how many other Madrid oppositions are going to run into this problem? I am aware of four additional oppositions that were dismissed on October 21st due to the PTO's failure to send the required notice of possible opposition.

It would be wise, if one is considering filing an opposition to a Section 66(a) application that is more than 18 months old, to check TARR to see whether the PTO has timely sent the required Section 68(c)(1)(C) notice to the IB. If it hasn't, then it appears that the filing of a notice of opposition would be futile.

Perhaps a PTO announcement will be forthcoming regarding the scope of this apparent problem, and its solution.

Text Copyright John L. Welch 2005.


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