Opposition against Section 66(a) application limited to grounds on ESTTA form

United States of America
In CSC Holding LLC v SAS Optimhome (Opposition 91199973, August 12 2011), the Trademark Trial and Appeal Board (TTAB) has held that the grounds for opposition against a Section 66(a) application (Madrid application) are limited to those specifically designated on the required ESTTA form, regardless of whether different and/or additional grounds are included in the explanatory pleading attached to the ESTTA form. 

A Section 66(a) application requests an extension of protection of an international registration to the United States. ESTTA is the Electronic System for Trademark Trials and Appeals, a web-based application for filing papers electronically with the TTAB. The ESTTA electronic form collects all of the necessary information needed for an opposition and automatically sends a notice to the International Bureau of the World Intellectual Property Organisation of the opposition filing. The ESTTA system does not send the attached explanatory pleading to the International Bureau. Therefore, if any required information appears in the attached pleading but not on the ESTTA electronic form, it will not be included in the notice to the International Bureau and will not be considered for purposes of the opposition.
In filing the opposition, the opponent must complete the electronic ESTTA form and attach a "pleading, ie, a short and plain statement showing that the filer is entitled to relief" (see TBMP § 110.09(c)(1)). Once the ESTTA form is filed and the opposition instituted:

"[T]he USPTO must so notify the International Bureau of the World Intellectual Property Organisation, informing it of certain information required under US law implementing the Madrid Protocol. This notice must be sent within strict time limits, and any USPTO failure to fully and timely notify the International Bureau may result in the opposition being limited by the information sent or dismissed in its entirety."
The Trademark Rules of Practice specifically state that oppositions against a Madrid application, once filed, may not be amended to add new grounds for the opposition (see Rules 2.102(b)(2) and 2.107(b)). The reasoning behind this is the strict time limits for notifying the International Bureau of the filing of an opposition against a Madrid application - "within seven months after the beginning of, or one month after the end of, the opposition period” (see Section 68(c)(2) of the Trademark Act). 
To ensure timely and accurate communication between the USPTO and the International Bureau, the ESTTA form clearly states the following regarding the opposition of a Madrid application:
  • an opponent may select as many grounds for the opposition as are applicable;
  • the opponent may not amend the opposition to add additional grounds during the course of the proceeding;
  • the opposition grounds designated on the ESTTA form govern in the event of a discrepancy between the form and the explanatory pleading; and
  • the TTAB will not consider any ground of opposition not checked on the form.
In the present case, the opponent opposed an application for the mark OPTIMHOME for real-estate related services in Class 36 of the Nice Classification. The opponent designated a claim of priority and likelihood of confusion on the ESTTA electronic form. However, the opponent designated two additional grounds in its attached explanatory pleading - namely, a lack of good-faith intent to use the mark in commerce and fraud. 

Relying on its recent decision in Hunt Control Sys Inc v Koninklijke Philips Elec NV (for further details please see "TTAB applies Madrid Protocol to limit scope of opposition"), the TTAB limited the opposition to the single claim designated in the ESTTA form and refused to consider the additional grounds listed in the pleading. The TTAB also noted that the opponent was precluded from filing a new notice of opposition against the OPTIMHOME application because the time allowed to file an opposition had expired. If the opponent had filed to notice with time remaining in the opposition period rather than on the last day, it could have filed a new opposition with a fuller statement of its grounds.
Emily Brown, King & Spalding LLC, Atlanta

Get unlimited access to all WTR content