# Chocolade-fabriken Lindt & Sprungli AG

> Trademark Trial and Appeal Board · July 30, 2009

URL: https://www.frixlaw.com/law-library/cases/11282782

## Case

- **Court:** Trademark Trial and Appeal Board
- **Decided:** July 30, 2009
- **Precedential status:** Published
- **Opinion:** Opinion by By the Board
- **Judges:** Hairston, Kuhlke, Ritchie [Opinion "By the Board" (Wolfson)]
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

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## Opinion text

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)

3
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.

5
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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11282782. Public record. Not legal advice.