Wednesday, October 03, 2012

Precedential No. 32: Board Finds Service of Notice of Opposition Flawed but Adequate

The Board denied Applicant's motion seeking dismissal of this opposition due to lack of proper service of the Notice of Opposition. The Board found that Opposer complied with the applicable rule when it served the Notice by certified mail, albeit five days after filing the Notice, and that the error made by Opposer on the ESTTA cover sheet saying that service had been made by fax or email was harmless. Although Opposer should have notified the Board when the Notice was returned as undeliverable, Applicant's attorney was in fact aware of the Notice via an email sent to Applicant four days after the filing, and so no harm was suffered by Applicant in not receiving the mailed copy. Musical Directions v. Norman W. McHugh, 104 U.S.P.Q. 1157 (TTAB 2012) [precedential].

The certificate of service submitted by Opposer with its Notice of Opposition, filed on May 25, 2012, indicated that Opposer served a copy of the Notice by fax or email. Applicant asserted that he did not consent to service by fax or email and never received a copy of the Notice. Because Opposer did not serve the Notice by one of the other means of service specified in Rule 2.119, proper service was not timely effectuated and the opposition should be dismissed.

Opposer stated that it did serve the Notice on May 30, 2012 (prior to the deadline for filing the opposition) by first-class mail, and as proof it submitted a certified mailing receipt listing Applicant's correspondence address of record. The service copy of the Notice was, however, returned as undeliverable.

Opposer also emailed a copy of the Notice to Applicant on May 29, 2012, and six days later it received a response from an attorney for Applicant, who asked for a telephone conference with Opposer regarding the opposition.

Applicant countered that the email message did not include any information as to when the opposition was filed, that he never received the copy served by first-class mail, and that Opposer, knowing the copy was not received, was obligated by Rule 2.101(b) to take additional steps to effectuate service by notifying the Board that the mailed copy had not been delivered.

The Board observed that Rule 2.119 does not require that Opposer provide proof of receipt of the Notice of Opposition, but only proof of service. The certified mailing receipt sufficed to show Opposer's compliance with that Rule. The fact that the copy was returned as undeliverable does not negate Opposer's compliance with the Rule. In addition, the Board noted that under Rule 2.101(b), Opposer was required to inform the Board of the non-delivery. However, under the circumstances here, Opposer's failure to do so was not significant.

Because Applicant's (former) counsel received the Notice of Opposition by email, the Board found no harm to Applicant arising from the non-delivery of the mailed copy. Although the certificate of service on the ESTTA cover sheet stated that service was made by fax or email, and such means of service would not have been proper, the improper wording on the ESTTA cover sheet "does not nullify opposer's compliance with the Board's service requirements inasmuch as opposer has submitted a copy of the certified mailing receipt."

Moreover, although Opposer effectuated proper service by first-class mail five days after it filed its opposition, its service on May 30th was timely because the deadline date was May 31st. However, the effective date of the notice of opposition must be amended to May 30, 2012 to correspond with the date of proper service.

TTABlog comment: Practitioners all too frequently have trouble with the TTAB service requirements. I think this confusion arises because (1) prior to 2007 the Board served the initial pleading on the defendant, and (2) the Board now sends out a scheduling order as soon as the initial pleading is filed, including sending a copy to the defendant, perhaps leading some to believe that service is not required.

Text Copyright John L. Welch 2012.


At 2:11 PM, Anonymous Anonymous said...

So what would have happened if the attorney had not found out about the filing or emailed them and there was a default? Would he have been better off not to tell them they screwed up?

I find that many practitioners serve the Notice of Opposition on the Applicant, not the attorney of record.

For cancellations I find Petitioners serve the Petition on the Registrant even if there is a Domestic Representative. (How many people appoint a Domestic Rep? I think it makes sense for this reason alone.)

We also use the firm address "care of" for the Applicant's address to catch these service "errors" and also have all that scam junk mail sent to us.

In some cases I think the improper service is intentional by the Opposer, hoping for a default because they know an attorney is more likely to respond. In other cases it appears to be a new associate (it seems service of pleading papers is something that larger firms let new associates handle.)

In any case, the case law at TTAB suggests that the Board does not care and they find a way to let people get away with not following the rules. That does not happen in USDC.

Is that a good thing or a bad thing?

I think it is a bad thing. How many instances of default have occurred because of this error? I suspect more than just a few. So if you do things wrong you can get away with it.


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