303.05(c)    Misidentification of Opposer

If the name of the opposer, in an opposition filed during an extension of time to oppose, differs from the name of the party to which the extension was granted, the opposition 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 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.] See TBMP § 512.04.

The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts on which the claim of misidentification through mistake is based, and must be submitted with the opposition. ESTTA will prompt the filer to provide an explanation.

For information concerning the misidentification of a potential opposer during an extension of time to oppose, see TBMP § 206.03.

For information concerning motions for substitution of party plaintiff on grounds of misidentification, see TBMP § 512.04.

NOTES:

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

 2.   See 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) (individual employee who filed extension request a different legal entity than employer who filed notice of opposition and, thus, cannot be considered identified through mistake); 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).

Cf. William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) (motion to substitute party that acquired mark from opposer prior to commencement of proceeding granted where opposition had been mistakenly filed in name of original owner); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition).

Cf. also TMEP §803.06 and TMEP § 1201.02(c); Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1640 (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); Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (substitution allowed where, after opposition instituted, court determined that attempted incorporation of applicant was legally defective; three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark).