Precedential No. 15: TTAB Dismisses Opposition to Section 66(a) Application: Nonownership Claim Unavailable
The Board has re-designated as precedential its April 2001 decision dismissing an opposition to registration of the mark SPINTIRES for computer games and software. Opposer Saber Interactive alleged only one claim: nonownership. However, the opposed application was based on a request for extension of protection under the Madrid Protocol (Section 66(a)), and nonownership is not an available ground for opposition against an application not based on actual use. Saber Interactive Incorporated v. Oovee Ltd, 2022 U.S.P.Q.2d 514 (T.T.A.B. 2022).
Applicant Oovee moved for summary judgment on the ground that Saber was not entitled to a statutory cause of action. The Board put that motion aside, exercising its discretion to review Saber's claims to determine their sufficiency.
In opposing a Section 66(a) application, an opposer's claims must be listed on the ESTTA filing form. Trademark Rule 2.104(c), 37 C.F.R. § 2.104(c); see also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1963 (TTAB 2011). The opposition may not be amended to add an entirely new claim. Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b); see also O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010).
The only claim Opposer Saber included on the ESTTA form and in its pleading was nonownership under Section 1 of the Trademark Act. However, Board precedent holds that "[o]wnership of a mark arises through use of the mark.” Therefore, a claim based on lack of ownership is not available when the application is not based on use of the mark in commerce. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, *5 (TTAB 2020) (application based on intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b)); see also Norris v. PAVE, 2019 USPQ2d 370880 (TTAB 2019).
An application under Section 66(a) is not based on use, but rather on an international registration owned by the applicant and a bona fide intent to use. Therefore, a claim based on lack of ownership is not available against Applicant Ovee's Section 66(a) application.
And so, the opposition was dismissed with prejudice.
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TTABlogger comment: This ruling should have claim preclusion effect if Saber files a petition for cancellation.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 6/13/2022
2 comments
2 Comments:
What if the Lack of Ownership claim is based on the fact that the Applicant was not entitled to use the mark when the application was filed, therefore it was not the person with a bona fide intent to use the mark. As such, Applicant is the wrongful owner. I note that Section 66(a) is not stated in the rule reproduced below, but shouldn't this principal be followed?
In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C. §1051(b), §1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(3)(A), 1051(b)(3)(B), 1126(d)(2), 1126(e). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) , (holding an intent-to-use application filed by an individual void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband), aff’d, 232 F.3d 907 (Fed. Cir. 2000) .
That's what the Board said in the HOLE-IN-ONE and NORRIS v PAVE cases:
As the Board recently held in Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 *4 (TTAB 2019), a claim that an applicant was not the rightful "owner" of the mark at the time of filing "is not available when the application, as originally filed, is not based on use of the mark in commerce."
The Board observed, however, that "Petitioner could have asserted that Respondent did not have a right to file his intent-to-use application based on a lack of a bona fide intent to use the mark in commerce as of the filing date of the intent-to-use application."
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