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  • Since November 1, 2007, Trademark Rule 2.101(a) requires that a notice of opposition must include proof of service on the applicant, or her attorney or domestic representative of record.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Amended Trademark Rule 2.101(a), effective November 1, 2007, states that a notice of opposition "must include proof of service on the applicant, or her attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119" (emphasis added).2
  • Discussion of current and previous methods of serving a notice of opposition.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • FOOTNOTE 2: "The USPTO published a notice of final rulemaking in the Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By this notice, various rules governing Trademark Trial and Appeal Board inter partes proceedings were amended. Certain amendments had an effective date of August 31, 2007, while most had an effective date of November 1, 2007. Prior to November 1, 2007, an opposer was not required to serve its notice of opposition upon its adversary. Instead, until that effective date, the opposer was able, under Trademark Rule 2.104(a), to simply file its notice of opposition, and any exhibits thereto, in duplicate form with the Board. Upon receipt, the Board would then forward the duplicate or service copy of the notice of opposition, and any exhibits thereto, directly to the applicant along with an order instituting proceedings."
  • Case Finding: Opposer failed to satisfy service requirement where no proof of service certificate include with the filed notice of opposition.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Thus, because the rules now require that the opposer include a proof of service certificate with the notice of opposition and that opposer serve the notice of opposition by forwarding a copy thereof to the applicant, opposer has clearly failed to satisfy the service requirements in both cases. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008).
  • The requirement that Plaintiffs are to serve copies of their complaints is to foster efficient commencement of proceedings.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • While the Board recognizes the importance of early settlement negotiations between parties, and while early initiation of settlement talks is promoted by the entire package of amended rules, the purpose behind the particular amendment that shifted to plaintiffs the responsibility to send copies of their complaints to defendants was to foster efficient commencement of proceedings.
  • The primary purpose of the amended service rules is increased efficiency.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Nonetheless, the primary purpose of the amended service rules was increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be instituted automatically by the ESTTA system.
  • Case Finding: Appeals to equity and policy cannot substitute for failure to comply with a clear rule.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Opposer's appeals to equity and policy cannot substitute for failure to comply with a clear rule, applicable to all opposers for many months prior to the filing of the involved notices of opposition.
  • Opposer cannot cure its failure to properly serve the original notices of opposition by filing amended notices.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • However, opposer cannot, by filing amended notices, cure its failure to properly serve the original notices of opposition.
  • A notice of opposition can be amended as of right only if the original notice of opposition was proper.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • A notice of opposition can be amended as of right only if the original notice of opposition was proper.
  • Failure to properly serve a notice of opposition results in the case being dismissed as a nullity.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • If this case were an opposition proceeding, and October 9, 2008 had been the deadline for filing a notice of opposition, proof of subsequent service of the notice on defendant or its counsel would be insufficient and the case would have to be dismissed as a nullity. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) and In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm'r 1995).
  • Case Finding: Because the original notices of opposition did not include proof of service and were not properly served in a timely manner, each of the oppositions must be dismissed as a nullity.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Because the original notices of opposition did not include proof of service and were not properly served in a timely manner, each of the oppositions must be dismissed as a nullity. There are, therefore, no operative notices of opposition to amend.
  • Board cancellation and opposition proceedings are not exactly parallel to federal district court trademark infringement proceedings inasmuch as there are no alleged infringers and frequently no use by the applicants in Board proceedings.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Board cancellation and opposition proceedings are not exactly parallel to federal district court trademark infringement proceedings inasmuch as there are no alleged infringers and frequently no use by the applicants in Board proceedings.
  • Burden of Proof: Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution. See Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); and Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
  • Where Oppisition is dismissed, the Opposer may file a petition to cancel if and when the marks register.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008).
      • Opposer is not without recourse, as it may file a petition to cancel if and when the marks in the involved applications register. See Section 14 of the Trademark Act, 15 U.S.C. § 1064.
  • To prevail in this opposition proceeding, opposer must establish its standing to oppose and at least one statutory ground of opposition to registration of the mark.
    • The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010)
      • To prevail in this opposition proceeding, opposer must establish its standing to oppose and at least one statutory ground of opposition to registration of the mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
  • Any allegations which relate to false designation of origin or deception should be omitted from an amended notice of opposition as these allegations relate to § 43(a), 15 U.S.C. § 1125(a), claims which are outside the TTAB's jurisdiction.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • FOOTNOTE 8 "Any allegations which relate to false designation of origin or deception, i.e., "[applicant's mark] is deceptively similar to Fiat's Marks so as to cause deception as to the origin of Applicant's goods bearing the Opposed mark" should be omitted from an amended notice of opposition as these allegations relate to § 43(a), 15 U.S.C. § 1125(a), claims which are outside the Board's jurisdiction. Person's, 14 USPQ2d at 1481."
  • Statutory basis for amending an opposition to a Madrid application.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • "Section 68(c)(3) states that, following the filing of an opposition to a Madrid application, and the Director's notification to the International Bureau of "all grounds" for the refusal of an extension of protection based on the opposition, no further grounds for refusal may be transmitted:
        If a notification of refusal of a request for extension of protection is transmitted under paragraph (1) or (2), no grounds for refusal of such request other than those set forth in such notification may be transmitted to the International Bureau by the Director after the expiration of the time periods set forth in paragraph (1) or (2), as the case may be.
        See also Trademark Act 13(a) ("An opposition may be amended under such conditions as may be prescribed by the Director.")."
  • The Trademark Act permits opposition on the basis of prior use of a common-law trademark.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • While opposer has not proved ownership of a trademark registration, the Trademark Act permits opposition on the basis of prior use of "a mark or trade name previously used in the United States by another and not abandoned," Trademark Act 2(d), i.e. ownership of a common-law trademark right.
  • An opposition to an application based on section 66(a) of the Act must be filed through ESTTA.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • FOOTNOTE 2 "Trademark Rule 2.101(b)(2) provides, "An opposition to an application based on section 66(a) of the Act must be filed through ESTTA.""
  • The Trademark Act requires consideration under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • In the opposition, the issue of priority has been removed by virtue of TxDOT's submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer's registration, regardless of whether the opposer is the prior user.
  • If opposer does so, the burden of proof shifts to applicant to prove by a preponderance of the evidence that the mark has acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • If opposer does so, the burden of proof shifts to applicant to prove by a preponderance of the evidence that the mark has acquired distinctiveness. Id.
  • Opposer carries the burden to prove that it has some prior trademark right and that applicant's mark is likely to cause confusion with that trademark.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • In a likelihood of confusion case under Trademark Act 2(d), this burden requires an opposer to prove that it has some prior trademark right and that applicant's mark is likely to cause confusion with that trademark.
  • In an opposition, the opposer bears the burden of proving by a preponderance of the evidence a substantive ground for refusal to register the subject trademark.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • In an opposition, the opposer bears the burden of proving by a preponderance of the evidence a substantive ground for refusal to register the subject trademark.
  • Opposer must demonstrate its standing to pursue this opposition, i.e., that it has a reasonable belief that it would be damaged by registration of applicant's mark.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Opposer must demonstrate its standing to pursue this opposition, i.e., that it has a reasonable belief that it would be damaged by registration of applicant's mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Any final determination made by the Board is appealable to Federal district court, including to the district in which the civil action between the parties took place.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Moreover, any final determination made by the Board is appealable to Federal district court, including to the district in which the civil action between the parties took place. See Trademark Act 21(b); Trademark Rule 2.145(c); and TBMP 901 (2d ed. rev. 2004).
  • It may be incumbent upon the TTAB to give deference to the determinations of the court, including the remedy entered therein, and consider the terms of the permanent injunction.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Thus, in this case, it is incumbent upon the Board to give deference to the determinations of the court, including the remedy entered therein, and consider the terms of the permanent injunction. As a result, we find that applicant is precluded from registering his mark.
  • In an opposition proceeding, opposer has the initial burden to present prima facie evidence or argument upon which we could reasonably conclude that applicant's mark has not acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • In an opposition proceeding, opposer has the initial burden to present prima facie evidence or argument upon which we could reasonably conclude that applicant's mark has not acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008 (Fed. Cir. 1988).
  • Because unregistered marks are not entitled to the presumptions established by statute, it is opposer's burden to demonstrate that it owns a trademark, which was used prior to applicant's mark, and not abandoned.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • But because unregistered marks are not entitled to the presumptions established by statute, see Trademark Act 7(b)-(c), it is opposer's burden to demonstrate that it owns a trademark, which was used prior to applicant's mark, and not abandoned. See Trademark Act 2(d).
  • Applicant's motion to dismiss is granted and the opposition is dismissed as a nullity. The opposition fee will be returned in due course. Opposer should note that its remedy in this matter lies in a petition to cancel."
    • Vibe Records, Inc. v. Vibe Media Group LLC, Opposition No. 91176345 (TTAB 2008)
      • In view thereof, applicant's motion to dismiss is granted and the opposition is dismissed as a nullity.4 4 FOOTNOTE 4 "The opposition fee will be returned in due course. See TBMP section 119.03. Opposer should note that its remedy in this matter lies in a petition to cancel."
  • Standing will usually be found in an opposition based on likelihood of confusion when the opposer establishes its registration or use of a trademark, which right might be plausibly harmed by registration of applicant's mark.
    • Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009)
      • Standing will usually be found in an opposition based on likelihood of confusion when the opposer establishes its registration or use of a trademark, which right might be plausibly harmed by registration of applicant's mark.
  • The policy reason for suspending opposition proceedings pending a court case is that the decisions made in the Federal district court is typically binding upon the TTAB, while the decision of the TTAB is not binding upon the court.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • As the parties are aware, this opposition proceeding was suspended pending disposition of the court case. The policy reason for this is that, to the extent that a civil action in a Federal district court involves issues in common with those in a proceeding before the Board, the decision of the Federal district court is typically binding upon the Board, while the decision of the Board is not binding upon the court. See TBMP 510.02(a) (2d ed. rev. 2004).
  • In an opposition proceeding, if the deadline for filing a notice of opposition had passed, proof of subsequent service of the notice on defendant or its counsel would be insufficient and the case would be dismissed as a nullity.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • If this case were an opposition proceeding, and October 9, 2008 had been the deadline for filing a notice of opposition, proof of subsequent service of the notice on defendant or its counsel would be insufficient and the case would have to be dismissed as a nullity. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) and In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm'r 1995).
  • The filing date of an opposition is the date of receipt in the Office of the opposition together with the required fee. On August 31, 2007, Trademark Rule 2.101(d)(4) was amended to also require proof of service of a copy of the notice of opposition on the applicant. The amended rule is only applicable to Board proceedings commenced on or after that date."
    • Vibe Records, Inc. v. Vibe Media Group LLC, Opposition No. 91176345 (TTAB 2008)
      • The filing date of an opposition is the date of receipt in the Office of the opposition together with the required fee. See Trademark Rule 2.101(d)(4).1 FOOTNOTE 1 "On August 31, 2007, Trademark Rule 2.101(d)(4) was amended to also require proof of service of a copy of the notice of opposition on the applicant. The amended rule is only applicable to Board proceedings commenced on or after that date."
  • Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations: Correspondence to be filed with the TTAB, except notices of ex parte appeal.
    • Vibe Records, Inc. v. Vibe Media Group LLC, Opposition No. 91176345 (TTAB 2008)
      • We cannot, however, give effect to the March 14, 2007 facsimile date as the filing date for the notice of opposition because such filings may not be made by facsimile. See Trademark Rule 2.195(d)(3) ("Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations: Correspondence to be filed with the Trademark Trial and Appeal Board, except notices of ex parte appeal").
  • Because a facsimile filing of a notice of opposition is not acceptable in any circumstances under the Trademark Rules, the facsimile filing can be given no effect.
    • Vibe Records, Inc. v. Vibe Media Group LLC, Opposition No. 91176345 (TTAB 2008)
      • Moreover, it was not appropriate under the Trademark Rules to accord any filing date to the facsimile transmission, although apparently the paper was routed to the USPTO mailroom which processed the paper and affixed a March 15, 2008 mailing date stamp label to it. However, because a facsimile filing of a notice of opposition is not acceptable in any circumstances under the Trademark Rules, the facsimile filing can be given no effect.
  • Pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action, except that, once filed, the opposition may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • "Pursuant to its authority, the USPTO has promulgated Trademark Rule 2.107(b), which provides:
        Pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, once filed, the opposition may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition."
  • Case Fiding" Although applicant mentions opposer's registrations in its brief, it does not clearly admit that the title of any such registrations is in opposer or that the registrations are currently valid and subsisting. Thus, this is not a situation where the TTAB can say that applicant has admitted that the pleaded registrations are owned by opposer and are currently valid and subsisting.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • As noted above, opposer failed to submit admissible evidence of its trademark registrations, and we accordingly dismiss opposer's claims that registration of applicant's mark will lead to a likelihood of confusion with opposer's pleaded registrations.15 FOOTNOTE 15 "Although applicant mentions opposer's registrations in its brief, it does not clearly admit that the title of any such registrations is in opposer or that the registrations are currently valid and subsisting. Thus, this is not a situation where we can say that applicant has admitted that the pleaded registrations are owned by opposer and are currently valid and subsisting."
  • Opposer was required by rule to file the initial notice of opposition by ESTTA. When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition. The ESTTA form stating the grounds, providing proof of service, and other information, is considered part of the ESTTA-filed notice of opposition. While opposer's use of ESTTA for filing an amended opposition was voluntary, using ESTTA for filing an amended notice of opposition does not prompt the filer to list grounds in an amended notice of opposition.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • FOOTNOTE 4 "As noted, opposer was required by rule to file the initial notice of opposition by ESTTA. When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition. The ESTTA form stating the grounds, providing proof of service, and other information, is considered part of the ESTTA-filed notice of opposition. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005). While opposer's use of ESTTA for filing an amended opposition was voluntary, using ESTTA for filing an amended notice of opposition does not prompt the filer to list grounds in an amended notice of opposition.
  • Even if properly made of record, Internet printouts would only be probative of what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. Thus, while this evidence shows that such a website exists, it is not evidence that opposer is using its mark on any goods or services displayed or discussed on the site.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Unfortunately for opposer, there is very little record evidence of its common-law trademarks and no evidence of its priority of use. While some evidence of the content of opposer's website is properly of record (only because of applicant's reliance on it), we consider such material only for what it shows on its face, and not for the truth of any matters asserted therein. Sports Auth. Mich. Inc. v. PC Auth. Inc., 63 USPQ2d 1782, 1798 (TTAB 2001); TBMP 704.08 ("Even if properly made of record, however, ... Internet printouts[] would only be probative of what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters."). Thus, while this evidence shows that such a website exists, it is not evidence that opposer is using its mark on any goods or services displayed or discussed on the site.
The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91156452 (TTAB 2010) O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010) Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010) The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009) Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 (TTAB 2009) Schott AG v. L'Wren Scott, Opposition No. 91184239, 91184245 (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) Grand Total
Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) 2
PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) 1
Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 3
In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm'r 1995) 1
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) 1
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 1
King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) 1
Grand Total 1 1 1 2 2 1 1 1 2 12
No Statutes Listed.