Monday, March 30, 2009

Precedential No. 10: Irked TTAB Sanctions Counsel for Filing Untenable Motion to Dismiss

Okay, readers, here's the question: an opposition is filed against two applications belonging to your client. While the opposition is pending, the PTO inadvertently issues a registration on one of the applications. What do you do? Would you file a motion for partial dismissal of the opposition as to the application that inadvertently issued to registration? The attorney for Aqua Gen AS filed such a motion, and the Board was not pleased. Schering-Plough Animal Health Corporation v. Aqua Gen AS, 90 USPQ2d 1184 (TTAB 2009) [precedential].

The Board pointed out that the inadvertent issuance of the registration "cannot, under any reasonable view, provide applicant with a ground for seeking dismissal. In such situations, the proper action by a party is to inform the Board promptly, by phone or in writing, of the inadvertent issuance of the registration so that the Board may request the appropriate action by the Director without requesting dismissal of the case." [Emphasis in original].

So the Director of the USPTO cancelled the registration and returned the application to pending status. But the Board wasn't done with Applicant's counsel:

By filing an untenable motion to dismiss when the application was the subject of a pending opposition and therefore simply inadvertently matured into a registration, counsel for applicant unnecessarily delayed this proceeding, and increased the litigation costs to both parties. Further, the Board’s resources were wasted by having to rule on this unnecessary motion. Counsel for applicant is reminded of his obligations pursuant to Fed. R. Civ. P. 11, that when filing a motion, he is certifying that all claims and other legal contentions asserted therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law, and are not made for purposes of harassment or delay.

The filing of a motion to dismiss in this instance represents a misunderstanding of Board practice and procedure. Under the circumstances presented herein, and to more closely manage the prosecution and defense of this proceeding, counsel for applicant and his co-counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion in this matter.

Having taken counsel to the TTAB sanction woodshed (sometimes known as the "Stoller Building"), the Board resumed the proceeding and re-set discovery and trial dates.

TTABlog comment: Was counsel's transgression so egregious, or so common, that this ruling deserves "precedential" status?

Text Copyright John L. Welch 2009.


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