Thursday, December 30, 2010

Precedential No. 47: TTAB Dismisses Opposition for Lack of Standing, Finds No Excusable Neglect Warranting Re-Opening of Case

Pro se Opposer Prakash Melwani was shown a quick exit by the TTAB in his opposition to registration of the mark ROYALSILK for "nonwoven medical gowns and non-woven surgical drapes." Melwani asserted that he mistakenly thought the case was suspended when Applicant Allegiance included in its answer a motion to strike one of his claims, and so he submitted no evidence or testimony during his trial period. The Board granted Applicant's Rule 2.132(a) motion to dismiss for failure to prosecute, denying Melwani's motion to re-open the case. Prakash Melwani v. Allegiance Corporation, 97 USPQd 1537 (TTAB 2010) [precedential].

Melwani pleaded ownership of three registrations for the mark ROYAL SILK for clothing and other goods, and alleged likelihood of confusion, deceptive misdescriptiveness, dilution, fraud, and "bad faith." Allegiance admitted in its answer that its goods are not made of silk and that the marks of the parties are similar. It embedded in its answer a motion to strike the "bad faith" claim.

Nearly a year later, after Melwani had done nothing since the filing of the answer, and after his testimony period had closed, Applicant moved to dismiss in view of Melwani's failure to take any trial testimony or offer any evidence.

Melwani asserted that he believed proceedings were suspended pending resolution of Applicant's motion to strike. He asked that the Board re-open the entire proceeding. Furthermore, he argued that there was sufficient evidence of record in view of Applicant's admissions and the fact that he identified his registrations on the TTAB form when he filed the notice of opposition electronically. Moreover, said Melwani, Allegiance had conducted a search in connection with a response to an office action during prosecution of the opposed application, and therefore Allegiance was "aware" of his registrations.

Opposer's failure to properly submit his registrations: The Board ruled that it is not enough for a plaintiff to identify his registrations on the TTAB electronic filing form. Although Rule 2.122 has been liberalized, the plaintiff must still submit appropriate documentation with its initial pleading in order to get its pleaded registrations of record. The rules do not contemplate "the mere inputting of a registration number when prompted by ESTTA." Opposer must electronically attach copies of the database printouts or otherwise comply with the rule.

The fact that completion of the ESTTA filing form results in the creation of electronic records in the Board's TTABVUE system, and that such records contain links to information on a pleaded registration, is for administrative ease and it is insufficient to make the pleaded registrations of record.

Therefore, Melwani could not rely on his registrations to support of his claims or to fend off the Rule 2.132 motion to dismiss.

TTABlog comment: Gotcha, Mr. Melwani! Does it make any sense that a plaintiff has to enter into the TTAB form the numbers of his pleaded registrations, and then has to supply the Board with printouts from the PTO's own database? No! I cannot understand why entering the numbers isn't enough. I call it "Catch 2.122."

The Motion to Re-Open: Good luck with that! The Board applied the Supreme Court's four-factor Pioneer test to determine whether Melwani had established excusable neglect. As usual, the Board said no.

Precedent says that the most important factor is "the reason for the delay." Here, Melwani's reason for inaction - his belief that the proceedings were suspended - was not reasonable. Melwani did not file papers in opposition to the motion or question the Board's failure to issue a suspension order. [The Board noted that it could easily overlook a motion that is embedded in the answer rather than presented as a separate filing.] In short, Melwani could have done something. He should have checked that status of the motion as well as the status of the proceeding.

The Board concluded that Melwani's reasons for inaction did not amount to excusable neglect that would justify a re-opening the case.

Other possible evidence: All that was left of Melwani's case was/were: the admissions in Applicant's answer and the matters of record in the file of the opposed application.

Allegiance did not admit that Melwani owned his pleaded registrations, nor did it admit the current status thereof. As to the search conducted by Allegiance, there was nothing to show that it uncovered Melwani's registrations, and in any case that would not excuse Melwani from establishing standing.

And so the Board ruled that Melwani "doe not have standing in this proceeding." And even if he had standing, the admissions by Applicant fell short of proving priority or likelihood of confusion, fraud, or deceptive misdescriptiveness.

And so the Board dismissed the opposition.

The Board observed, in footnote 19, that "if opposer had attached proper copies of his registrations as exhibits to the notice of opposition, making them of record, the Board might have been able to determine both standing and likelihood of confusion, based on a comparison of the marks and goods listed in the registrations and the application involved herein. However, the record still would be insufficient to determine opposer's other claims." [Ouch! - ed/].

TTABlog further comment: Suppose Melwani were to seek review of the Board's decision by way of a civil action under 15 U.S.C. Section 1071(b)? Since additional evidence is allowed in such a proceeding, could he then readily remedy his lack of standing by submitting his registrations into evidence in the district court?

Text Copyright John L. Welch 2010.


At 12:08 PM, Anonymous Dailey Pike said...

"Catch 2.122"

That's a funny line.

Read your blog every day.

A question.

Are exhibits submitted with a Notice of Opposition or Answer to the Notice considered as evidence by the TTAB?

Or must one submit those same exhibits during the testiomony period?

At 2:26 PM, Blogger John L. Welch said...

Exhibits submitted with a Notice of Opposition or an Answer are not considered as in evidence by the TTAB, with the exception of copies of pleaded registrations submitted in compliance with Rule 2.122 (status and title copies or TEAS printouts).

Also, note that the complete file history of an opposed application in an opposition, or a challenged registration in a cancellation, is automatically of record.


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