The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
Wolfson P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Mailed: July 30, 2009
Opposition No. 91187963
Chocoladefabriken Lindt &
Sprungli AG
v.
Karlo Flores
Before Hairston, Kuhlke and Ritchie,
Administrative Trademark Judges
By the Board:
Chocoladefabriken Lindt & Sprungli AG (“opposer”)
has filed an opposition to the registration of the mark 73%
INTENSE DARK, filed by Karlo Flores (“applicant”) for
“chocolate; chocolate bars,”1 on the ground that the mark so
resembles opposer’s previously used mark INTENSE DARK for
“candy and chocolate products” as to be likely, when applied
to applicant’s goods, to cause confusion among prospective
purchasers.
On December 10, 2008, opposer filed its notice of
opposition and mailed a copy thereof to applicant’s address
1
Serial No. 77258474, filed August 17, 2007.
Opposition No. 91187963
via first class mail.2 On January 20, 2009, applicant filed
an answer denying the salient allegations in the notice of
opposition and asserting as an affirmative defense that
opposer “failed to comply with 37 C.F.R. § 2.101(a) in that
opposer failed to service (sic) applicant’s attorney at the
correspondence address of record in the Office.” On January
26, 2009, opposer mailed a copy of the notice of opposition
to applicant’s attorney’s address.
On February 18, 2009, approximately one month after
filing its answer, applicant filed a motion to dismiss the
opposition. The motion has been fully briefed.
Although we look to Trademark Rule 2.101 to determine
the requirements for proper service and whether service of
process in an opposition proceeding has been properly
completed, we look to Fed. R. Civ. P. 12(b), made applicable
to this proceeding by Trademark Rule 2.116(a), for the
procedure by which a party may raise the defense of
insufficient service of process under Fed. R. Civ. P.
12(b)(5).
Federal Rule 12(b) allows the affirmative defense of
insufficient service to be presented by motion. Any such
motion must be timely filed to be effective. To be
considered timely, a motion to dismiss for insufficient
2
Opposer filed the notice of opposition via the Board’s
Electronic System for Trademark Trials and Appeals [“ESTTA”].
2
Opposition No. 91187963
service of process should be filed prior to, or concurrently
with, the defendant’s answer.
Applicant’s motion to dismiss, filed one month after
its answer, is therefore untimely.
Nonetheless, inasmuch as opposer has not objected to
the timeliness of the motion we consider applicant’s motion
on the merits. Cf., Wellcome Foundation Ltd. v. Merck &
Co., 46 USPQ2d 1478 (TTAB 1998)(timeliness requirement
waived by petitioner’s failure to object to the motion on
timeliness grounds).
Trademark Rule 2.101 provides as follows (emphasis
added):
(a) An opposition proceeding is commenced by filing in
the Office a timely notice of opposition with the
required fee. The notice must include proof of service
on the applicant, or its attorney or domestic
representative of record, at the correspondence address
of record in the Office, as detailed in §§ 2.101(b) and
2.119.
(b) Any person who believes that he, she or it would be
damaged by the registration of a mark on the Principal
Register may file an opposition addressed to the
Trademark Trial and Appeal Board and must serve a copy of
the opposition, including any exhibits, on the attorney
of record for the applicant or, if there is no attorney,
on the applicant or on the applicant’s domestic
representative, if one has been appointed, at the
correspondence address of record in the Office. The
opposer must include with the opposition proof of service
pursuant to § 2.119 at the correspondence address of
record in the Office.
Under this procedure, an opposition is commenced only
when two conditions are fulfilled: (1) opposer makes
sufficient efforts to serve the notice of opposition and (2)
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Opposition No. 91187963
the Board is notified of the service at the time the notice
of opposition is filed. See Springfield Inc. v. XD, 86
USPQ2d 1063 (TTAB 2008)(opposer notified Board of service
via ESTTA filing but failed to serve a copy of the notice on
applicant at any time during the proceeding; case dismissed
as nullity); Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB
2008)(opposer failed to include a certificate of service
with the notices of opposition, filed via first class mail,
and did not dispute its failure to actually forward service
copies to applicant; case dismissed as nullity).
In this case, the second service condition,
notification to the Board, has been met. By utilizing ESTTA
to file its notice of opposition, opposer was assured that
the notice of opposition would contain a certificate of
service attesting to service. “[A]ny plaintiff who files
through ESTTA is viewed by the Board as having included
proof of service with its pleading.” Schott AG, 88 USPQ2d
at 1863 fn. 3.3
The issue to be decided in this case concerns the first
condition, namely, whether opposer’s failure to serve the
complaint on applicant’s “correspondence address of record,”
3
Of course, a potential opposer must complete the ESTTA filing
process to be accorded a valid filing date. See Vibe Records,
Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008). The
filing date of an opposition is the date of receipt in the Office
of the opposition, with proof of service, together with the
required fee. See Trademark Rule 2.101(d)(4).
4
Opposition No. 91187963
as that phrase is used in Trademark Rule 2.101(a), nullifies
the opposition. The Notice of Final Rulemaking published in
the Federal Register on August 1, 2007, 72 F.R. 42242, at
42243, clarifies how a potential opposer may determine that
address: “Whether a plaintiff should serve the owner
directly, an attorney, or a domestic representative depends
on what Office records provide as the correspondence
address. To determine the correspondence address of record
for an applicant or registrant, the plaintiff must check the
Trademark Applications and Registrations Retrieval (TARR)
system at the following web address: http://tarr.uspto.gov.”4
There is no dispute that opposer initially served
applicant at its business address of record, and not at
applicant’s “correspondence address,” which in this case is
applicant’s attorney’s address. Immediately upon being
served with a copy of applicant’s answer and affirmative
defenses, opposer served the complaint on applicant at its
“correspondence address,” i.e., at its attorney’s address.
However, this service was not effected until after the
opposition period had closed.
4
The ESTTA-generated certificate of service reads: “The
undersigned hereby certifies that a copy of this paper has been
served upon all parties at their address record [sic] by First
Class Mail on this date.” The fact that the certificate refers
to “address record” and not “correspondence address of record”
does not lessen a plaintiff’s obligations under the Rule.
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Opposition No. 91187963
Applicant is incorrect that opposer’s failure to serve
a copy of the notice of opposition on applicant’s
correspondence address of record during the time the
opposition period was open mandates dismissal of the
opposition as a nullity. Opposer’s action in this case is
sufficient to comply with Trademark Rule 2.101. In the
recent case of The Equine Touch Foundation, Inc. v.
Equinology Inc., ___ USPQ2d ___ Cancellation No. 92050044
(TTAB 2/10/2009,) the Board accepted as sufficient service
to commence a cancellation proceeding, service on
respondent’s counsel rather than, as required, on respondent
itself.5 Trademark Rule 2.111.6 Similarly here, we hold
that opposer’s service on applicant itself is sufficient to
commence the proceeding.
Just as the Board in The Equine Touch Foundation
recognized that there is a distinction between a complete
lack of actual service and defective but curable actual
5
Recognizing that although “it was incorrect for petitioner to
serve the petition on counsel for respondent, rather than on
respondent,” the Board noted that “counsel for respondent has
filed an answer and it is clear that respondent will be
represented by counsel in this proceeding. Under these
circumstances, therefore, petitioner need not forward a service
copy directly to respondent.”
6
The requirements of Rule 2.111 parallel, for cancellation
actions, those requirements of Trademark Rule 2.101 for
oppositions. However, in a cancellation action, service is to be
made on respondent directly, and not on an attorney or authorized
representative who may have been previously authorized to act on
behalf of respondent during prosecution of its application prior
to the date of registration of the mark.
6
Opposition No. 91187963
service, so too do we recognize this distinction. The
purpose of service in a Board proceeding is to provide
notice of the action. Since applicant responded with an
answer and a motion to dismiss, opposer’s service was
clearly sufficient to provide notice to the defendant.
Opposer here timely served applicant directly; its error was
only that service was not made at applicant’s correspondence
address of record. Upon learning of its error, opposer
moved promptly to cure the technical deficiency of service
by sending a copy of the complaint to applicant’s counsel.
Under the circumstances, the opposition may go forward on
the pleadings of record. Opposer need not re-serve a copy
of the complaint on applicant’s counsel.7
Accordingly, applicant’s motion to dismiss is denied.
Trial dates, including conferencing, disclosure dates and
the close of discovery, are reset as indicated below.
Deadline for Discovery Conference 8/10/09
Discovery Opens 8/10/09
Initial Disclosures Due 9/9/09
Expert Disclosures Due 1/7/10
Discovery Closes 2/6/10
Plaintiff's Pretrial Disclosures Due 3/23/10
Plaintiff's 30-day Trial Period Ends 5/7/10
7
We do not intend by this order to suggest that an applicant who
may receive a notice of opposition is under any obligation to
alert its counsel that its application has been opposed.
Thus, if an applicant attests that it failed to file a timely
answer because it believed that its counsel had received service,
and its counsel attests that it never got a copy of the
complaint, such an explanation would suffice to discharge a
notice of default.
7
Opposition No. 91187963
Defendant's Pretrial Disclosures Due 5/22/10
Defendant's 30-day Trial Period Ends 7/6/10
Plaintiff's Rebuttal Disclosures Due 7/21/10
Plaintiff's 15-day Rebuttal Period Ends 8/20/10
IN EACH INSTANCE, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.
8