The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
This Decision is a Trademark Trial and Appeal Board
P.O. Box 1451
Precedent of the TTAB Alexandria, VA 22313-1451
jk Mailed: September 3, 2014
Opposition No. 91214145
Birlinn Limited
v.
Angus Stewart
Before Bucher, Mermelstein and Greenbaum,
Administrative Trademark Judges.
By the Board:
Applicant Angus Stewart moved to dismiss this proceeding because the notice of
opposition, as well as the requests for extension of time to oppose that preceded it, were
signed by a foreign attorney who is not authorized to practice before the USPTO. As
explained below, we defer our ruling on the motion to give the Opposer, Birlinn
Limited, an opportunity to cure this defect. We also require the parties to provide us
with additional information concerning a foreign proceeding which may have a bearing
on this case and thus counsel suspension of this proceeding.
Background
Before instituting this opposition proceeding, two extensions of time were filed on
behalf of Opposer by:
Opposition No. 91214145
FAO Shona Tennant
Associate
Anderson Strathern LLP
1 Rutland Court
Edinburgh, EH3 8EY
UNITED KINGDOM
The Board’s ESTTA system1 automatically granted both requests. Thus, neither
request was examined by Board personnel. The same individual then used ESTTA to
timely file a notice of opposition. The Board, again automatically through ESTTA,
instituted this opposition.
Applicant’s motion to dismiss, and the parties’ arguments
Applicant filed a motion to dismiss the notice of opposition for insufficient service
pursuant to Fed. R. Civ. P. 12(b)(5),2 on the ground that neither the extension requests
nor the notice of opposition were filed and served by a person entitled to practice before
the USPTO pursuant to Patent and Trademark Rules 11.14(a), (b) or (c). Applicant
further argues that the defect is not curable, and, therefore, the opposition should be
dismissed as a nullity.
Opposer’s current counsel of record is an attorney authorized to practice before the
USPTO, and she concurrently filed (1) an entry of appearance, (2) a brief contesting the
motion, and (3) an amended notice of opposition. The allegations in the amended notice
1 ESTTA is the Electronic System for Trademark Trials and Appeals, the Board’s electronic
filing system. See TBMP § 102.03 (2014).
2 Fed. R. Civ. P. 12(b)(5) is applicable to Board proceedings by operation of Trademark Rule
2.116(a). However, as we determine, the circumstances underlying Applicant’s motion to
dismiss do not present the issue of insufficient service.
The Board has given no consideration to the materials beyond the pleadings that Applicant
submitted with his motion, or that Opposer submitted with its brief.
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Opposition No. 91214145
of opposition are the same as in the original notice of opposition. The only differences
are who signed it and the certificate of service.
In its brief, Opposer confirms that Shona Tennant is not authorized to represent
others before the USPTO,3 but maintains that this defect in the filing of the original
notice of opposition is curable, and was in fact cured by the filing and service of the
amended notice of opposition. Opposer relies on TBMP § 114.06 (2014), which provides:
If it comes to the attention of the Board that an individual who is not
entitled, under 37 CFR § 11.14(a), 37 CFR § 11.14 (b), 37 CFR § 11.14 (c) or
37 CFR § 11.14 (d), to practice before the Office in trademark cases, is
attempting to represent a client in a Board proceeding, the Board will notify
the individual that he or she is not entitled to do so. If the individual signs
and files a submission on behalf of a client to a Board proceeding, the
submission will not be considered unless a new copy thereof, signed by the
party or by an authorized representative who is entitled to practice before the
Office in trademark cases, is filed.
Opposer also argues that Applicant has suffered no prejudice.
In response, Applicant argues that the amended notice of opposition is untimely and
that, accordingly, there is no operative notice of opposition to amend or to cure.
Analysis
This motion is not governed by Fed. R. Civ. P. 12(b)(5), which provides for a defense
based on insufficient service of process. Neither the Patent and Trademark Rules nor
the Trademark Rules of Practice require that service of a notice of opposition be effected
or attested to by an individual authorized to practice under Patent and Trademark Rule
11.14. Notwithstanding the manner in which Applicant captioned and argued his
motion, it does not in fact present the issue of whether service of the original notice of
3 The Board will send a copy of this order to Ms. Tennant in order to provide notification.
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Opposition No. 91214145
opposition was insufficient.4 The service of the notice in this case was consistent with
the requirement set forth in Trademark Rule 2.101(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.
As we see it, the only issues posed by Applicant’s motion to dismiss are whether the
two requests for an extension of time to oppose, and the original notice of opposition,
were signed in conformity with the Trademark Rules of Practice, and if they were not,
whether and when the rules allow Opposer to cure the defect in the signature of these
papers. These issues more properly are governed by Fed. R. Civ. P. 12(b)(6).
For requests for an extension of time to file a notice of opposition, Trademark Rule
2.102(a) provides, in relevant part:
Any person who believes that he, she or it would be damaged by the
registration of a mark on the Principal Register may file in the Office a
written request, addressed to the Trademark Trial and Appeal Board, to
extend the time for filing an opposition. The written request need not be
verified, but must be signed by the potential opposer or by the potential
opposer’s attorney, as specified in § 11.1 of this chapter, or authorized
representative, as specified in § 11.14(b) of this chapter. (emphasis added).
Similarly, for notices of opposition, Trademark Rule 2.101(b) provides, in relevant
part:
The opposition need not be verified, but must be signed by the opposer or the
opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized
representative, as specified in § 11.14(b) of this chapter.5
4 The parties do not dispute that the notice of opposition was served on Applicant’s counsel
of record as indicated in the application, Sheryl De Luca of the United States law firm
Nixon & Vanderhye PC.
5 See also 37 CFR § 2.17(a), which states:
4
Opposition No. 91214145
So we must determine whether Ms. Tennant is either an attorney or authorized
representative under 37 CFR §§ 11.1 and 11.14(b). Turning to Patent and Trademark
Rule 11.1, an attorney is defined therein as follows:
Attorney or lawyer means an individual who is a member in good standing of
the highest court of any State, including an individual who is in good
standing of the highest court of one State and not under an order of any court
or Federal agency suspending, enjoining, restraining, disbarring or otherwise
restricting the attorney from practice before the bar of another State or
Federal agency. A non-lawyer means a person who is not an attorney or
lawyer.
Rule 11.14(b) provides:
(b) Non-lawyers. Individuals who are not attorneys are not recognized to
practice before the Office in trademark and other non-patent matters, except
that individuals not attorneys who were recognized to practice before the
Office in trademark matters under this chapter prior to January 1, 1957, will
be recognized as agents to continue practice before the Office in trademark
matters. Except as provided in the preceding sentence, registration as a
patent agent does not itself entitle an individual to practice before the Office
in trademark matters.
Opposer does not contend that Ms. Tennant qualifies as either an “attorney” under Rule
11.1 or as an “authorized representative” under Rule 2.102(a) and 11.14(b).6 Thus, the
extensions of time and the notice of opposition were not properly signed.
We now turn to the question of whether this defect can be cured, and if so, how.
Although Trademark Rules 2.102(a) and 2.101(b) set forth, respectively, the signature
Recognition for representation.
(a) Authority to practice in trademark cases. Only an individual qualified to practice
under § 11.14 of this chapter may represent an applicant, registrant, or party to a
proceeding before the Office in a trademark case.
6 Nevertheless, nothing in the record indicates (nor does Applicant argue) that Ms. Tennant
was, in fact, unauthorized to act on Opposer’s behalf or that she was in fact unauthorized to
file requests for extensions of time or a notice of opposition.
5
Opposition No. 91214145
requirements for requests for extension of time and notices of opposition, these rules do
not provide that filings failing to satisfy these signature requirements are, for that
reason alone, null and void. We find Trademark Rule 2.119(e), which provides a means
by which a party can cure the defect of a lack of a signature, and which is applicable to
every filing in a Board inter partes proceeding, to be instructive. It provides:
Every paper filed in an inter partes proceeding, and every request for an
extension of time to file an opposition, must be signed by the party filing it, or
by the party’s attorney or other authorized representative, but an unsigned
paper will not be refused consideration if a signed copy is submitted to the
Patent and Trademark Office within the time limit set in the notification of
this defect by the Office.
(emphasis added).7 We see no reason why the opportunity to cure provided under
Trademark Rule 2.119(e) should not also apply to a filed paper that was signed by a
person not authorized to practice before the USPTO.
Nor do we agree with Applicant that the filings that were not properly signed were
incurable because the time for filing each of them has expired. Trademark Rule 2.119(e)
does not require that a filing party cure a signature defect in a filed paper within the
time that the party still has, or was originally allowed, to file the paper. It requires only
that the party must re-file the properly signed copy “within the time limit set in the
notification of this defect by the Office.” To read into Rule 2.119(e) an additional
requirement that any signature defect must be cured within the time remaining, if any,
7 The Board has affirmatively stated: “While a request for an extension of time to oppose
must be signed, an unsigned paper request will not be refused consideration if a signed copy
is submitted to the Office within the time limit set in the written notification of this defect
by the Board.” See TBMP § 203.03 (2014).
6
Opposition No. 91214145
to file the paper, would represent a significant change in the substance of the rule, one
we do not believe we are authorized to make.
Even though the filing of the amended notice of opposition signed by Opposer’s
current counsel operated to cure the defect in the original notice of opposition and
makes the amended pleading the operative pleading in this proceeding, we note that
Rule 2.119(e) also applies, in mandatory terms, to requests for extension of time to
oppose. Inasmuch as the record does not include properly-signed copies of the two
requests for an extension of time to oppose, Opposer is allowed until twenty days from
the mailing date of this order to file8 properly-signed copies of these extension requests.
If Opposer fails to submit properly-signed extensions of time to oppose within the time
allowed, this proceeding may be dismissed. Accordingly, our ruling on Applicant’s
motion to dismiss is deferred.
We emphasize the narrowness of our holding here. Our decision is not a
determination that the Board recognizes a person who is unauthorized to practice
before the USPTO, or that the USPTO will accept papers filed by such a person in the
condition in which they were filed. Nor does this ruling address a situation where a
person unauthorized to practice before the USPTO has knowingly engaged in
unauthorized practice before the USPTO. We reserve ruling on such a situation if and
when it arises in a future case. Our ruling is limited to the issues presented, namely,
8 Opposer should not file its properly-signed requests for an extension of time to oppose
using the ESTTA form “Request for Extension of Time to File an Opposition.” The
automated system will not permit the filing of an extension after the close of the opposition
period, as extended. Rather, Opposer may file the requests by regular mail or, preferably,
it may file them in this proceeding via ESTTA using the “File Documents in a Board
Proceeding” option, not the extension form.
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Opposition No. 91214145
whether the signatory defect in a paper that must be signed by the potential Opposer or
by the potential Opposer’s attorney, as specified in § 11.1, but was signed by a person
not properly qualified, can, in circumstances where there is no evidence of intentional
misconduct, be cured, and if so, whether it can be cured after the deadline for filing the
paper. We find that, under the circumstances, Trademark Rule 2.119(e) provides for a
defect of this type to be cured.
Response required regarding potential suspension
Trademark Rule 2.117(a) provides:
Whenever it shall come to the attention of the Trademark Trial and Appeal
Board that a party or parties to a pending case are engaged in a civil action
or another Board proceeding which may have a bearing on the case,
proceedings before the Board may be suspended until termination of the civil
action or the other Board proceeding.
Opposer refers to a related proceeding in its notice of opposition as follows: “Birlinn has
submitted an application for invalidation to the UKIPO. Currently the parties are
producing evidence in relation to the same.” The Board may suspend a proceeding
pending final determination of a foreign action between the parties. See Marie Claire
Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792, 1793-94 (TTAB 1993).
In view of this information, Opposer must, within twenty days from the mailing date
of this order, file and serve a notice which sets forth the status of the referenced
litigation, including a copy of the pleadings, so that the Board may ascertain whether
the final determination in the UKIPO proceeding may have a bearing on the issues
8
Opposition No. 91214145
before the Board.9 See TBMP § 510 (2014). Applicant may respond, if desired, to such
notice within ten days from the date Opposer serves such notice.
Proceedings otherwise remain suspended.
cc: FAO Shona Tennant
Associate
Anderson Strathern LLP
1 Rutland Court
Edinburgh, EH3 8EY
UNITED KINGDOM
9 The pleadings need not be certified copies. Opposer may submit clean, legible photocopies.
9