309.02(c)(1)    Service of Opposition on Applicant

37 CFR § 2.101 Filing an opposition.

  • (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. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. 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. Electronic signatures pursuant to § 2.193(c) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.
  • (d)
    • (4) The filing date of an opposition is the date of receipt in the Office of the notice of opposition, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198.

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 of a copy of the opposition "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." [ Note 1.]

When an opposer files its notice of opposition with the Board, the opposer must concurrently serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant at the attorney’s correspondence address of record in the Office. [ Note 2.] If there is no attorney, then service must be made on the applicant at its address of record, unless applicant has appointed a domestic representative in the involved application,in which case service must be made on the domestic representative. The requirement that an opposer serve the notice of opposition on the applicant directly recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [ Note 3.]

To determine the correspondence address of record for an applicant or registrant, the potential opposer must check the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [ Note 4.] The TSDR display of information includes an active link to assignment information, and this link should also be checked. [ Note 5.] The complaint need only be served at the address shown as applicant’s correspondence address of record,that is, applicant’s attorney’s, or its designated domestic representative’s record address or applicant’s own record address.

It is in opposer’s interest to have the real party in interest apprised of the existence of the Board proceeding, so that any judgment eventually obtained will be binding on the correct party. If opposer has any doubt as to the identity or address of the real party in interest, opposer may serve additional copies of the notice of opposition on any address opposer may have reason to believe is more current than the address for applicant that is listed in Office records, or on any person who may have an ownership interest in the relevant application.

The manner of service is provided for in 37 CFR § 2.119. The parties may agree to use electronic transmission (e.g., facsimile or email) to communicate with each other and to meet their service obligations. When such an agreement is made, the best practice is to reduce the agreement to writing. If the parties have communicated prior to the filing of the notice of opposition, and the applicant has agreed to accept service of the complaint by electronic transmission,opposer may serve the notice of opposition by the agreed upon means. [ Note 6.] Authorization by an applicant, given to the Office during prosecution, to allow the Office to communicate with applicant by email, does not by itself enable opposer to serve the notice of opposition by email.

Where an applicant is represented by an attorney in the Office records, if opposer makes sufficient efforts to timely serve and file the notice of opposition but improperly serves applicant directly, the opposition will not be dismissed as a nullity if (1) the notice of opposition is timely filed and includes a certificate of service and (2) the notice of opposition was timely served on applicant. [ Note 7.] The Board may, however, require that opposer re-serve the applicant at its attorney’s address, if the attorney has not received notice of the proceeding through other means. [ Note 8.] On the other hand, the Board will not institute a proceeding where there is no proof of service, even though there may have been actual service [ Note 9.], or where there is no actual service even though there may have been proof of service. [ Note 10.] Proof of service assumes actual service on applicant or its attorney or domestic representative and is meaningless in the absence of actual service in accordance with the statements contained in the proof of service. [ Note 11.]

The notice of opposition may be filed using ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. By utilizing ESTTA to file its notice of opposition, a potential opposer is assured that the notice of opposition will contain a certificate of service attesting to service, because a plaintiff cannot complete the ESTTA filing process unless it confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record. [ Note 12.] "Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading." [ Note 13.]Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date, and must make actual service. The mere appearance of the certificate of service on the notice of opposition does not by itself effect service, however; opposer must still make actual service of the complaint on applicant to comply with its service obligation. [ Note 14.]

If a service copy is returned to opposer as undeliverable, opposer must notify the Board, in writing, within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [ Note 15.]Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [ Note 16.]While opposer is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any applicant the opposer is unable to serve, if opposer knows of any new address information for the applicant, opposer must report the address to the Board. In any case in which opposer notifies the Board that a service copy sent to an applicant was returned or not delivered, including any case in which the notification includes a new address for the applicant discovered by or reported to opposer, the Board will effect service. [ Note 17.]

The filing date of the notice of opposition is the date of receipt in the Office of the notice, with proof of service and the required fee. [ Note 18.] However, if the notice of opposition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service (USPS) in accordance with 37 CFR § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS[ Note 19.], unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 20.] The Certificate of Mailing procedure described in 37 CFR § 2.197  and the"Priority Mail Express® procedure described in 37 CFR § 2.198  are available for the filing of a notice of opposition. [ Note 21.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [ Note 22.]

For information on filing fees, see TBMP § 308.

NOTES:

 1.   37 CFR § 2.101(b). See also Musical Directions v. McHugh, 104 USPQ2d 1157, 1159 (TTAB 2012) (opposer required to provide proof of service, not proof of receipt; return of complaint as undeliverable does not negate opposer’s compliance with the service requirement).

 2.   37 CFR § 2.101(b).

 3.   See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).

 4.   Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 5.   See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 6.   See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007). See also Musical Directions v. McHugh, 104 USPQ2d 1157, 1159 (TTAB 2012) (service by fax or email improper where parties did not previously agree to these service methods).

 7.   See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009)(timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).

 8.   See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009).

 9.   See Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863-64 (TTAB 2008)(opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; opposer cannot cure its failure to properly serve the original notices of opposition by filing amended notices and actually serving the amended notices; cases dismissed as nullities).

 10.   See Springfield Inc. v XD, 86 USPQ2d 1063, 1064 (TTAB 2008) (notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity); Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863-64 (TTAB 2008) (opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; cases dismissed as nullities). Cf. Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009) (timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).

 11.   See Springfield Inc. v XD, 86 USPQ2d 1063, 1064 (TTAB 2008) (notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity).

 12.   See Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008).

 13.   The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009).

 14.   See Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863 (TTAB 2008); Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008).

 15.   See 37 CFR § 2.101(b); Musical Directions v. McHugh, 104 USPQ2d 1157, 1159 n.3 (TTAB 2012) (opposer should have notified Board that service copy of complaint was returned as undeliverable even though the address was correct and opposer knew applicant was aware of opposition).

 16.   Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 17.   Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 18.   See 37 CFR § 2.101(d)(4). Cf. Musical Directions v. McHugh, 104 USPQ2d 1157, 1160 (TTAB 2012) (effective date of institution amended to date of actual service by first-class mail, which was made during an existing extension of time to oppose).

 19.   See 37 CFR § 2.198(a)(1).

 20.   See 37 CFR § 2.198(a)(2).

 21.   See 37 CFR § 2.197(a)  and 37 CFR § 2.198(a).

 22.   37 CFR § 2.195(d)(3); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).