Schott AGv.L'Wren Scott

Trademark Trial and Appeal Board

Nov 13, 2008

No. 91184245 (T.T.A.B. Nov. 13, 2008)

Brown
Mailed: November 13, 2008

Opposition No. 91184239
Opposition No. 91184245

Schott AG

v.

L’Wren Scott

Before Seeherman, Rogers and Taylor, Administrative
Trademark Judges.

By the Board:

These proceedings now come before the Board for
consideration of 1) applicant’s motions (both filed June
30, 2008) to dismiss Opposition Nos. 91184239 and 91184245
for opposer’s failure to comply with the service
requirements of Trademark Rule 2.101; 2) opposer’s related
cross-motions (both filed July 15, 2008) to amend its
notices of opposition in the involved proceedings; and 3)
applicant’s motion to consolidate proceedings.1

1 Opposition Nos. 91184239 and 91184245 have not been formally
consolidated. Nevertheless, since the parties are the same and
the issues currently before the Board are identical in both
cases, the Board has decided to issue this single order in both
Opposition Nos. 91184239 and 91184245.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91184239 and 91184245
2
By way of background, the marks in application Serial
Nos. 78935193 and 78899698 were published for opposition on
April 15, 2008. Shortly thereafter, requests for
extensions of time to oppose those applications were timely
filed and approved. As extended, the last day of the
opposition period for both applications was June 14, 2008.
On May 14, 2008 and May 21, 2008, opposer filed, via first
class mail, notices of opposition against the respective
applications along with the requisite fees. Proceedings
were subsequently instituted as Opposition Nos. 91184239
and 91184245.
For the reasons set forth below, applicant’s motions
to dismiss the respective oppositions for opposer’s failure
to comply with the service requirements of Trademark Rule
2.101 are hereby granted, and both oppositions are
dismissed as a nullity. Accordingly, applicant’s motion to
consolidate and opposer’s cross-motions to amend its two
notices of opposition are moot.
Turning then to applicant’s motions to dismiss,
applicant asserts that opposer did not comply with the
service requirements detailed in Trademark Rules 2.101(a)
and 2.101(d)(4) when the notices of opposition were filed
with the Board. Accordingly, applicant contends that the
oppositions should be dismissed.
Opposition No. 91184239 and 91184245
3
Amended Trademark Rule 2.101(a), effective November 1,
2007, states that a notice of opposition “must include
proof of service on the applicant, or her attorney or
domestic representative of record, at the correspondence
address of record in the Office, as detailed in §§ 2.101(b)
and 2.119” (emphasis added).2 However, neither notice of
opposition contains a proof of service. Moreover, counsel
for applicant, Mr. Lewis F. Gould, stated in a declaration
attached to applicant’s motion to dismiss that he “did not
receive a copy” of either notice of opposition and was
“personally aware of no attempts by [o]pposer to effect
service of process on me or our firm, Duane Morris LLP.”

2 The USPTO published a notice of final rulemaking in the Federal
Register on August 1, 2007, at 72 Fed. Reg. 42242. By this
notice, various rules governing Trademark Trial and Appeal Board
inter partes proceedings were amended. Certain amendments had an
effective date of August 31, 2007, while most had an effective
date of November 1, 2007. Prior to November 1, 2007, an opposer
was not required to serve its notice of opposition upon its
adversary. Instead, until that effective date, the opposer was
able, under Trademark Rule 2.104(a), to simply file its notice of
opposition, and any exhibits thereto, in duplicate form with the
Board. Upon receipt, the Board would then forward the duplicate
or service copy of the notice of opposition, and any exhibits
thereto, directly to the applicant along with an order
instituting proceedings.

The final rule and a chart summarizing the affected rules, their
changes, and effective dates, are viewable on the USPTO website
at these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

Opposition No. 91184239 and 91184245
4
Further, opposer does not dispute the absence of a
proof of service certificate or its failure to actually
forward a service copy of either notice of opposition upon
filing, and therefore has conceded that it did not comply
with the service requirements for proceedings commenced on
or after November 1, 2007. Thus, because the rules now
require that the opposer include a proof of service
certificate with the notice of opposition3 and that opposer
serve the notice of opposition by forwarding a copy thereof
to the applicant, opposer has clearly failed to satisfy the
service requirements in both cases. See Springfield Inc.
v. XD, 86 USPQ2d 1063 (TTAB 2008).
In its responses to the motions to dismiss, opposer
relies on comments made in the Notice of Final Rulemaking,
and argues that the primary purpose of the recently adopted
service requirements is to “assist the parties in

3 In this case, opposer filed its two notices of opposition by
mail. Thus, its only opportunity to provide the requisite proof
of service at the time of filing was to include certification of
service with the notices of opposition. We point out that if a
plaintiff files its complaint through the Board’s ESTTA online
filing system, it cannot complete the process unless it confirms
that it has forwarded a service copy of its complaint to all
parties at their addresses of record. 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. Therefore, any plaintiff who files
through ESTTA is viewed by the Board as having included proof of
service with its pleading. Actual forwarding of the service
copy, however, is the responsibility of the filer, as the ESTTA
system does not effect service for the filer.

Opposition No. 91184239 and 91184245
5
settlement discussions, not to prevent timely filed
oppositions” (Response, p. 1). Opposer also argues that
under the typically liberal application of Fed. R. Civ. P.
15, opposer should be afforded an opportunity to amend its
notices of opposition in order to properly serve applicant.
While the Board recognizes the importance of early
settlement negotiations between parties, and while early
initiation of settlement talks is promoted by the entire
package of amended rules, the purpose behind the particular
amendment that shifted to plaintiffs the responsibility to
send copies of their complaints to defendants was to foster
efficient commencement of proceedings. For example, by
requiring service of a notice of opposition or petition to
cancel directly on a defendant, the Board determined that
proceedings were likely to begin more efficiently, because
parties often are already in direct communication with one
another prior to a plaintiff’s filing of a complaint with
the Board. Indeed, the comments opposer cites to in its
responsive brief and cross-motion to amend, in their
entirety, read as follows (emphasis added):
Under the practice envisioned by the
proposed rules, the initiation of a Board
proceeding would become more efficient,
because a plaintiff would be able to serve
its copies directly on defendants. Use of a
direct service approach recognizes that
plaintiffs and defendants often are in
Opposition No. 91184239 and 91184245
6
contact prior to a plaintiff’s filing of its
complaint or claim, and also recognizes that
continuation of such direct communication is
vital both for promoting settlement of
claims and for ensuring cooperation and
procedural efficiency in the early stages of
a proceeding.

The efficient commencement of a proceeding can
facilitate early settlement discussions because the
defendant will immediately know more about the claims which
need to be settled. Nonetheless, the primary purpose of
the amended service rules was increased efficiency,
particularly in an era when many Board proceedings filed
through the ESTTA system can be instituted automatically by
the ESTTA system.
Further, the Notice of Final Rulemaking, in addition
to its publication in the Federal Register and the Official
Gazette of the U.S. Patent and Trademark Office, has been
posted on the USPTO web site since August 2007, i.e., nine
months prior to opposer’s filing of its notices of
opposition. Opposer’s appeals to equity and policy cannot
substitute for failure to comply with a clear rule,
applicable to all opposers for many months prior to the
filing of the involved notices of opposition.
Opposer also seeks to cure its failure to comply with
the rule for service of notices of opposition by attempting
to amend its notices of opposition to include “proof of
Opposition No. 91184239 and 91184245
7
service” and to actually serve the amended notices.
Opposer relies on the fact that no answers have been served
in the oppositions to assert that it is entitled to amend
its notices of opposition as a matter of right. See Fed.
R. Civ. P. 15. However, opposer cannot, by filing amended
notices, cure its failure to properly serve the original
notices of opposition. A notice of opposition can be
amended as of right only if the original notice of
opposition was proper. Because the original notices of
opposition did not include proof of service and were not
properly served in a timely manner, each of the oppositions
must be dismissed as a nullity. There are, therefore, no
operative notices of opposition to amend. Moreover, the
amended notices of opposition cannot be used as a
substitute for the original notices of opposition because,
while they bear proof of service, the amended notices of
opposition were not filed within the opposition period, as
extended.
Since neither of the oppositions filed by opposer
should have been instituted, applicant’s motions to dismiss
for failure of opposer to comply with the service
requirements are granted and each of the oppositions is
hereby dismissed as a nullity. Furthermore, as previously
indicated, opposer’s motions to amend its notices of
Opposition No. 91184239 and 91184245
8
opposition, and applicant’s motion to consolidate are
denied as moot.
Application Serial Nos. 78899698 and 78935193 will be
forwarded for issuance of notices of allowance in due
course, and opposer’s filing fee will be refunded.4

4 Opposer is not without recourse, as it may file a petition to
cancel if and when the marks in the involved applications
register. See Section 14 of the Trademark Act, 15 U.S.C. § 1064.