Monday, August 17, 2015

Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of TIme

Jennifer Wehrman filed for and was granted a 30-day extension of time within which to oppose registration of the mark HMX for motor oil. During that 30-day period Warren Distribution, Inc. (WDI) filed a Notice of Opposition, claiming the benefit of the extension of time obtained by Wehrman. Applicant Royal Purple filed a motion to dismiss the opposition, contending that WDI was not the same entity that obtained the extension of time. WDI argued that Ms. Wehrman was in privity with it, and further that she was misidentified by mistake, and therefore the opposition was timely filed under Rule. 2.102(b). The Board disagreed, and it dismissed the opposition without prejudice for lack of subject matter jurisdiction. Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667 (TTAB 2015) [precedential].

Rule 2.102(b) sets forth two disjunctive conditions under with an oppose may claim the benefit of an extension of time granted to another named entity: privity and identification by mistake.

Privity: WDI asserted that Wehrman and WDE were in privity because Wehrman was its employee, she was authorized to filed the extension request, she intended to file it on behalf of WDI, and she used her business address, email address, and phone number in the request. The Board, however, pointed out that it has long been held that privity does not exist between a person and a corporation merely because the person is employed by the corporation.Wehrman was not an owner or a manager "so identified in interest" with WDI "that [s]he represents the same legal right."

Mistake: "'Misidentified through mistake,' as used in Trademark Rule 2.102(b), means a mistake in the form of the potential opposer's name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named."

WDI argued that a mistake was made because Wehrman had an "innocent misconception" when she filed the extension request: she intended to file the request on behalf of WDI, but instead innocently entered her own name. However, the Board noted, WDI failed to address the fact that Wehrman identified herself as "an individual citizen of [the] United States."

Rule 2.102(b) requires that the potential opposer be identified "with reasonable certainty." Ms. Wehrman identified herself with certainty, but not WDI. She made no mention of WDI in the extension request, even in her business address. "The request clearly identified Wehrman, an individual, who is a different existing legal entity from WDI, a Nebraska corporation."

The Board distinguished this case from Custom Computer Services, Inc.v. Paychex Props., Inc., 67 USPQ2d 1638 (Fed. Cir. 2003), in which a party identified as "Custom Computer Services, Inc., formerly known as The People Payroll" filed and obtain two extensions of time to oppose. The opposition was filed by a party called "The Payroll People, Inc.," but the Board instituted the proceeding naming Custom Computer Services, Inc. as the opposer, and it refused to allow an amendment naming "The Payroll People, Inc." as the opposer. The CAFC, reversing the Board, found that although privity was not established, a mistake was made with the meaning of Rule 2.102(b):

It is not the case that the entity named in the extensions is a "different existing legal entity. *** [T]here never has been an entity named "Custom Computer Services, Inc., formerly known as The People Payroll." There is an entity named "Custom Computer Services, Inc.," but it was never formerly known as "The Payroll People." Instead, we have here a mistake in the form of one entity's name, i.e., Payroll People, a mistake consistent with the PTO's definition of mistake. To be sure, the mistake that occurred here was an incorrect belief that a corporate name had changed. However, that was a mistake as to the form of the correct entity, not an attempt to substitute one entity in the place of a different existing legal entity.

Here, Wehrman and WDI are two independent existing legal entities. Wehrman identified herself by her own name and as "an individual citizen of [the] United States," with no reference to WDI.

The Board concluded that WDI was not entitled to claim the benefit of the extension of time obtained by Wehrman. Accordingly it granted applicant's motion to dismiss without prejudice for lack of subject matter jurisdiction.

Read comments and post your comment here.

TTABlog comment: "Ms. Wehrman, Ms. Jennifer Wehram, please report to the president's office!" Oh well, presumably WDI can file a petition for cancellation if and when the opposed application proceeds to registration.

Text Copyright John L. Welch 2015.


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