Friday, November 21, 2008

Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal

Opposer Schott AG shot itself in the AG when it failed to serve its notices of opposition on Applicant L'Wren Scott, as required by Rule 2.101. The Board granted Applicant's motion to dismiss and denied Schott's cross-motion for leave to amend its notices of opposition and to serve the notices. Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB 2008) [precedential].

Opposer Schott timely filed its oppositions by first-class mail. The oppositions were instituted, but Applicant moved to dismiss for failure to comply with the service requirements of Rule 2.101. Neither notice included a certificate of service. [See footnote 3: had Opposer filed electronically via ESTTA, it would have had to confirm that it had forwarded copies of the notices to Applicant.] Counsel for Applicant submitted a declaration stating that he never received either notice and was not aware of any attempt to serve the papers. The Board agreed that Schott clearly failed to satisfy the requirements of the Rule.

Schott argued that the purpose of this Rule is to facilitate early settlement discussions, not to prevent timely-filed oppositions. The Board agreed that service by the Opposer may have the effect of aiding settlement, but the primary purpose of the Rule is "increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be instituted automatically by the ESTTA system."

Schott also urged that FRCP 15 is usually applied liberally to permit amendment of pleadings, particularly prior to answer. The Board pointed out, however, that a notice of opposition may be amended as of right only if the original notice of opposition was properly served. Here, the oppositions were a nullity, and there are no proper notices to amend.

The Board therefore dismissed each of the oppositions.

Text Copyright John L. Welch 2008.


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