Service of opposition to applicant's business address acceptable, says TTAB

In Chocoladefabriken Lindt & Sprungli AG v Flores (Opposition 91187963, July 30 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has held that the opponent's service of its notice of opposition on the applicant at his business address, rather than at the address of record, was acceptable.

On August 1 2007 the US Patent and Trademark Office (USPTO) amended the rules governing the procedure by which parties litigate inter partes proceedings before the TTAB.

Since the 2007 amendments, litigants before the TTAB have had to adapt to procedural rules more akin to the rules of procedure that govern litigants before US federal courts. For example, prior to the 2007 amendments, the rules required only that the plaintiff file the notice of opposition or petition for cancellation with the TTAB. The TTAB then essentially effected service itself by forwarding a copy of the notice of opposition or petition for cancellation to the defendant. Thus, a plaintiff needed only file the notice of opposition or petition for cancellation, together with the required fee, with the TTAB to commence the proceedings. However, under the amended rules, the plaintiff must now effect service itself, concurrently with the filing of the notice of opposition or petition for cancellation with the TTAB, and must provide proof of such service to the TTAB in order for the proceedings to be commenced.

Moreover, the rules specify which of the defendant’s addresses a plaintiff must use when attempting to effect service. For example, a plaintiff filing a notice of opposition must serve a copy of the notice on the attorney of record for the applicant, or, if there is no attorney of record, the applicant or the applicant’s domestic representative, at the correspondence address of record in the USPTO (Trademark Rule 2.101). Because the period of time in which a plaintiff may oppose an application is very limited, it is critical that the plaintiff establish proper service of the notice of opposition prior to the expiration of the opposition period.

In the present case, the TTAB addressed the issue of “whether [the opponent]'s failure to serve the complaint on the applicant's 'correspondence address of record', as that phrase is used in [the rules], nullifies the opposition”. Opponent Chocoladefabriken Lindt & Sprungli AG had served its notice of opposition by mailing it to the applicant’s business address, rather than to the correspondence address of record, which happened to be the address of his attorney. The applicant served an answer and alleged an affirmative defence of insufficient service. Shortly thereafter, Lindt mailed a copy of the notice of opposition to the address of record of the applicant’s attorneys. The applicant then moved to dismiss the opposition for improper service. Because Lindt did not object to the timeliness of the motion to dismiss, the TTAB considered its merits.

Lindt did not dispute that it had initially served the notice of opposition on the applicant at his business address, and not at his correspondence address. Nevertheless, the TTAB declined to elevate form over substance and held that Lindt’s actions were “sufficient to comply with Trademark Rule 2.101”. The TTAB noted that there is a “distinction between a complete lack of actual services and defective but curable actual service” and stated that “[t]he purpose of service in a [TTAB] proceedings is to provide notice of the action”. Because the applicant clearly had notice of the action - he filed a timely answer - and because Lindt promptly cured the technical deficiency of service, the TTAB denied the applicant’s motion to dismiss and permitted the opposition to go forward.

Laura Miller, Kilpatrick Stockton LLP, Atlanta