206.03    Misidentification of Potential Opposer

A request for a further extension, or an opposition, filed in a different name will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was misidentified through mistake. [ Note 1.] The phrase "misidentified through mistake," as used in 37 C.F.R. § 2.102(b), means a mistake in the form of the potential opposer’s name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named. [ Note 2.]

The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts upon which the claim of misidentification through mistake is based. The showing must be submitted with the request or opposition. ESTTA will prompt the filer to provide an explanation. In the rare instance that the rules permit the filing to be made in paper form, the Board will issue an order requesting an explanation of the discrepancy.

NOTES:

 1.   See 37 C.F.R. § 2.102(b); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993).

 2.   Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (no misidentification through mistake between employee who filed extension request as individual and employer who filed notice of opposition); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error resulting in identification of different legal entity was not a "mistake" within the meaning of the rule); TMEP § 803.06 (Applicant May Not be Changed).

Cf. Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505, 506 (TTAB 1974) (motion to substitute granted where opposition was mistakenly filed in name of original owner and original owner assigned mark to opposer nunc pro tunc); Davidson v. Instantype, Inc., 165 USPQ 269, 271 (TTAB 1970) (leave to amend to substitute proper party granted where opposition was filed in name of the individual rather than in the name of the corporation); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (where succession occurred prior to filing of opposition, erroneous identification of opposer as a partner in a firm which no longer existed was not fatal); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (sole owner substituted for partnership where original plaintiff identified as partnership composed of that individual, since originally named plaintiff was not actually in existence when opposition was filed and even if it were, as a partner, he is a successor to the partnership).

Cf. also In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); In re Atlanta Blue Print Co., 19 USPQ2d 1078, 1079 (Comm’r 1990) (permitted to amend name of registrant in Trademark Act §§ 8 and 15, 15 U.S.C. §§ 1058 and 1065, declaration where trade name was inadvertently substituted for corporate name); In re Techsonic Industries, Inc., 216 USPQ 619, 620 (TTAB 1982) (allowed to correct application where applicant was identified by only a portion of its earlier used name and earlier name had already been supplanted by new name at time application was filed, but at all times was one single entity); Argo & Co. v. Springer, 198 USPQ 626, 634 (TTAB 1978) (Board granted applicant’s motion to change its name from corporation which was defectively incorporated to individuals who were true owners of mark at time of filing); In re Eucryl, Ltd., 193 USPQ 377, 378 (TTAB 1976) (exclusive U.S. distributor is owner only if it has agreement with manufacturer providing for right to apply; since distributor had no right to apply, despite its being a sister company and thus related to manufacturer, subsequent assignment to manufacturer did not cure defect); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (defendant can be substituted when originally named party was not in existence at time of filing complaint); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613, 614 (Comm’r 1974) (deletion of "company" permissible).