McDonald's Corporationv.Cambrige Overseas Development Inc.

Trademark Trial and Appeal Board

Mar 22, 2013

No. 91208437 (T.T.A.B. Mar. 22, 2013)

Mailed: March 22, 2013

Opposition No. 91208437

McDonald's Corporation

v.

Cambrige Overseas Development
Inc.

George C. Pologeorgis,
Interlocutory Attorney:
Cambridge Overseas Development Inc. (“applicant”) seeks to
register the mark MACVISION, as illustrated below, for “LED
light bulb and LED desk lamp” in International Class 11.1

McDonald’s Corporation (“opposer”) has opposed the
registration of applicant’s MACVISION mark on the ground of
priority and likelihood of confusion based upon its alleged
prior common-law use and ownership of registrations for a
family of “Mc” and “Mac” marks used in connection with,
inter alia, restaurant services and sandwiches for

1 Application Serial No. 85439342, filed on October 5, 2011, based
upon an allegation of use in commerce under Section 1(a) of the
Trademark Act, claiming November 3, 2011, as both the date of first
use and the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS DECISION IS A
PRECEDENT OF THE TTAB
Opposition No. 91208437

2

consumption on or off premises. Opposer has also asserted
a claim of dilution as a ground for opposition.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.2
On January 9, 2013, the parties filed a stipulation to
accept service by e-mail but retain the five additional days
afforded under Trademark Rule 2.119(c) to file and/or serve any
responsive documents that would be provided if the original
filing was served by first-class mail.
Trademark Rule 2.119(b)(6) provides that service of papers
may be made by electronic transmission when mutually agreed upon
by the parties.
Inasmuch as the parties have stipulated to service by e-
mail, they may not take advantage of the five additional days
for service provided under Trademark Rule 2.119(c). See
Miscellaneous Changes to Trademark Trial and Appeal Board Rules,
72 Fed. Reg. 42242, 42250 (August 1, 2007) (“As for agreed use
by parties of e-mail or fax for forwarding of service copies,
the Office confirms that § 2.119(c) would not apply to service
by electronic transmission (email or fax) under §
2.119(b)(6).”).

2 Applicant’s counsel’s appearance filed on December 18, 2012 is
noted. Board records have been updated accordingly.

Opposition No. 91208437

3

Trademark Rule 2.119(c) provides, in relevant part, that
“[w]henever a party is required to take some action within a
prescribed period after the service of a paper upon the party by
another party and the paper is served by first-class mail,
‘Express Mail,’ or overnight courier, 5 days shall be added to
the prescribed period.” Accordingly, parties to a Board
proceeding may avail themselves of the additional five days for
service afforded under Trademark Rule 2.119(c) only if the
original filing to which a response is required was served by
first-class mail, Express Mail or by overnight courier. By
stipulating to accept service by e-mail but retain the five
additional days for service provided under Trademark Rule
2.119(c), the parties have impermissibly circumvented the
provisions of this rule.
Moreover, such a stipulation would violate the provisions
in Trademark Rule 2.127 which state that the time for filing
reply briefs and motions under Fed. R. Civ. P. Rule 56(d) will
not be extended.3 Specifically, if the parties have agreed to

3 Trademark Rule 2.127(a) specifically provides that “[t]he time for
filing a reply brief will not be extended.” Similarly, Trademark
Rule 2.127(e) (1) provides that the time for filing a reply brief
in support of a motion for summary judgment “will not be extended.”
Trademark Rule 2.127(e) (1) also provides that “[t]he time for
filing a motion under Rule [56(d)] will not be extended.” [Please
note: Former subdivision (f) of Fed. R. Civ. P. 56 has been
carried forward by the 2010 amendments to the Federal Rules of
Civil Procedure as subdivision (d). Consequently, the reference to
Fed. R. Civ. P. 56(f) in Trademark Rule 2.127(e)(1) is to be read
as a reference to present Fed. R. Civ. P. 56(d).]
Opposition No. 91208437

4

service by e-mail but also retain the five additional days
provided under Trademark Rule 2.119(c), they have essentially
agreed to an automatic extension of time to file a reply brief
or a motion under Rule 56(d), an extension which is prohibited
by Trademark Rule 2.127.
In view thereof, the parties’ stipulation to accept service
by e-mail but retain the additional five days provided under
Trademark Rule 2.119(c) when service is not by e-mail cannot be
approved.
As an alternative, the parties may stipulate to accept
service by first-class mail but also to serve simultaneously a
courtesy e-mail copy of any filing in this proceeding. By way
of such a stipulation, the parties may then take advantage of
the five additional days for service provided under Trademark
Rule 2.119(c) without violating the provisions therein.
Trial dates remain as set forth in the Board’s December 14,
2012 institution order.