Warren Distribution, Inc.v.Royal Purple, LLC

Trademark Trial and Appeal Board

Aug 10, 2015

No. 91214792 (T.T.A.B. Aug. 10, 2015)

coggins Mailed: August 10, 2015

Opposition No. 91214792
Warren Distribution, Inc.
v.
Royal Purple, LLC

Before Kuhlke, Bergsman, and Greenbaum,
Administrative Trademark Judges

By the Board:

Now before the Board is Royal Purple, LLC’s (“Applicant”) motion to
dismiss the Notice of Opposition for lack of subject-matter jurisdiction under
Fed. R. Civ. P. 12(b)(1) and Trademark Rule 2.102(b), 37 CFR § 2.102(b). The
motion is fully briefed.
Background
Subject application Serial No. 85973222 was published for opposition on
December 3, 2013. On December 31, 2013, Jennifer Wehrman (“Wehrman”)
filed a thirty-day Request for an Extension of Time to Oppose the subject
application in her own name and identified herself as “an individual citizen of
[the] United States”. The request was granted, allowing Wehrman until
February 1, 2014, in which to file either an opposition or a request for further
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500

THIS DECISION IS A
PRECEDENT OF THE TTAB
Opposition No. 91214792

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extension. See Trademark Act § 13(a), 15 U.S.C. § 1063(a); Trademark Rule
2.102, 37 CFR § 2.102. On January 31, 2014, within the extension period
granted to Wehrman, Warren Distribution, Inc. (“WDI”) filed a Notice of
Opposition identifying WDI — not Wehrman — as the opposer and claiming
the benefit of the extension of time granted to Wehrman. The opposition was
instituted five days later and assigned Opposition No. 91214792.
Motion to Dismiss
By way of the motion, Applicant argues that WDI is not the same entity to
whom the extension of time to oppose was granted. In response, WDI argues
that it is in privity with Wehrman, and that Wehrman was misidentified
through mistake in the Request for an Extension of Time to Oppose.
Trademark Rule 2.102(b) provides that:
A written request to extend the time for filing an opposition
must identify the potential opposer with reasonable certainty.
Any opposition filed during an extension of time should be in the
name of the person to whom the extension was granted. An
opposition may be accepted if the person in whose name the
extension was requested was misidentified through mistake or if
the opposition is filed in the name of a person in privity with the
person who requested and was granted the extension of time.

In view of this rule, an opposition filed by a party other than the one to
whom an extension of time to oppose was granted will not be rejected on that
basis if it is shown to the satisfaction of the Board that either (1) the other
party is in privity with the party granted the extension, or (2) the party in
whose name the extension was requested was misidentified through mistake.
See Custom Computer Servs., Inc. v. Paychex Props., Inc., 337 F.3d 1334, 67
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USPQ2d 1638, 1640 (Fed. Cir. 2003) (“[Trademark Rule] 2.102(b) plainly sets
forth two disjunctive conditions under which an opposer may claim the
benefit of an extension granted to another named entity — privity and
misidentification by mistake — and the PTO’s interpretation recognizes those
conditions as being disjunctive.”). See also TBMP §§ 206.01 and 303.05(c)
(2015).
Privity
“What constitutes ‘privity’ varies, depending on the purpose for which
privity is asserted.” Shamrock Techs. Inc. v. Med. Sterilization Inc., 903 F.2d
789, 14 USPQ2d 1728, 1732 (Fed. Cir. 1990). In trademarks, the concept of
privity generally includes, inter alia, the relationship of successive owners of
a mark (e.g., assignor and assignee, or survivor of a merger) and the
relationship shared by “related companies” within the meaning of Sections 5
and 45 of the Trademark Act, 15 U.S.C. §§ 1055 and 1127. See Int’l Nutrition
Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1495 (Fed.
Cir. 2000). See also Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083, 1085
(TTAB 2013).
WDI argues that Wehrman and WDI are in privity because Wehrman was
an employee of WDI; Wehrman was authorized to file the extension on behalf
of WDI; Wehrman acted on behalf of WDI; Wehrman intended to file the
extension on behalf of WDI; and Wehrman identified herself as acting on
WDI’s behalf by use of her business address, business email address, and
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business phone number. In support of its arguments, WDI cites to, inter alia,
Davidson v. Instantype, Inc., 165 USPQ 269 (TTAB 1970), and Harrison v.
Deere & Co., 533 Fed. App’x 644 (7th Cir. 2013). WDI does not argue that
Wehrman has any ownership or managerial interest in WDI, or that
Wehrman and WDI are successive owners of a mark; instead, WDI argues
that privity is established through Wehrman’s employment.
It has long been recognized that privity does not exist between a person
and a corporation merely because the person is employed by the corporation.
See, e.g., Nat’l Cash Register Co. v. Remington Arms Co., 283 F. 196, 202 (D.
Del. 1922), aff'd, 286 F. 367 (3d Cir. 1923); and Babcock & Wilcox Co. v.
Toledo Boiler Works Co., 170 F. 81, 85 (6th Cir. 1909). More recently, the
United States Court of Appeals for the Federal Circuit, our primary
reviewing court, held that “[m]ere employment is insufficient to establish
privity.” Dane Indus., Inc. v. Ameritek Indus., LLC, 15 Fed. App’x 894, 899
(Fed. Cir. 2005). As Applicant correctly states in its reply brief in support of
the motion, WDI’s reliance on Davidson v. Instantype, Inc. and Harrison v.
Deere & Co. is misplaced. See Brief in Opp., pp. 3-6 (7 TTABVUE 4-7), and
Reply, pp. 3-4 (unnumbered) (8 TTABVUE 4-5). While Davidson involved the
filing of an opposition in the name of an individual rather than in the name of
the corporation, the named individual was more than a mere employee — he
was also an owner of the corporation. Harrison, which was not about
intellectual property rights, involved eight managers of a corporation with
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interests closely aligned to their corporation, performing an investigation as
agents of the corporation, operating within the scope of their employment,
and exercising their managerial responsibility to prevent workplace violence
and financial liabilities for the corporation. Moreover, the managers’ duties
were relevant to the underlying cause of action. Unlike the situation in
Davidson, Wehrman is not an owner of WDI; and unlike in Harrison,
Wehrman is not alleged to be a manager “so identified in interest with” WDI
“that [s]he represents the same legal right.”1 Harrison, 533 Fed. App’x at 649
(citing Jackson v. Callon Publ’g. Inc., 826 N.E.2d 413, 428 (Ill. 2005)).
Mistake
“Misidentified through mistake,” as used in Trademark Rule 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. See Custom Computer Servs.,
supra, 67 USPQ2d 1638; and Cass Logistics Inc. v. McKesson Corp., 27
USPQ2d 1075 (TTAB 1993).
WDI argues that Wehrman was misidentified through mistake because
she had an “innocent misconception” when filing the Request for an

1 Even if Wehrman had been alleged to be a manager of WDI, mere management,
like mere employment, would not by itself establish privity; whether privity exists is
determined on a case-by-case basis. Harrison, 533 Fed. App’x at 649 (citing Agolf,
LLC v. Vill. of Arlington Heights, 946 N.E.2d 1123, 1132 (Ill. 2011)). See also, e.g.,
St. Jude Med. S.C., Inc. v. Cormier, 745 F.3d 325, 328 (8th Cir. 2014); Brooks v.
Arthur, 626 F.3d 194, 200 (4th Cir. 2010); U.S. v. Garan, 12 F.3d 858, 860 n.2 (9th
Cir. 1993). WDI’s brief in opposition is curiously silent as to Wehrman’s position,
title, and scope of employment with WDI; she is identified only as “an employee.”
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Extension of Time to Oppose; that is, Wehrman intended to file the request
on behalf of WDI, but she innocently entered her own name instead of WDI’s
name. WDI’s brief in opposition is conspicuously silent about Wehrman’s
further identifying herself as “an individual citizen of [the] United States.”
The statement of Wehrman’s status as an individual citizen cannot be
overlooked.
As noted above, Trademark Rule 2.102(b) requires that a request for an
extension of time to file an opposition “must identify the potential opposer
with reasonable certainty.” Wehrman’s placement of her own name and filing
status as an individual on the Request for an Extension of Time to Oppose
identified Wehrman with certainty; it cannot be said to have identified WDI
with any certainty. In fact, it did not identify WDI at all — there is no
reference anywhere to WDI’s name or corporate entity, even in the statement
of Wehrman’s business address. The request clearly identified Wehrman, an
individual, who is a different existing legal entity from WDI, a Nebraska
corporation. Cf. TMEP §§ 803.03(a) (individual identified as an entity in
trademark application) and 803.03(c) (corporation identified as entity in
trademark application) (July 2015).
This case is unlike Custom Computer Servs., supra, in which a party
identified as “Custom Computer Services, Inc., formerly known as The
Payroll People” filed, and was granted, two requests to extend the time to
oppose an application. Thereafter, a party identified as “The Payroll People,
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Inc.” (“TPPI”) filed a Notice of Opposition, but the Board instituted the
proceeding naming Custom Computer Services, Inc. (“CCSI”) as the opposer.2
The applicant therein moved to dismiss the opposition for TPPI’s failure to
file a timely opposition, and TPPI cross-moved to amend the Notice of
Opposition to name TPPI as the party plaintiff on the ground of
misidentification through mistake. The Board granted the applicant’s motion
to dismiss and denied TPPI’s motion for leave to amend on the basis that
TPPI failed to demonstrate the requisite privity with CCSI. On appeal, the
Federal Circuit reversed the Board, finding that, while substantial evidence
supported a finding of a lack of privity, a mistake was made within the
meaning of Trademark Rule 2.102(b). The court reasoned that:
It is not the case that the entity named in the extensions is a
“different existing legal entity.” Cass Logistics, 27 USPQ2d at
1077 (emphasis added). The PTO’s reliance on Cass Logistics is
thus unsound, as there were two independent existing legal
entities involved in that case. Here, there never has been an
entity named “Custom Computer Services, Inc., formerly known
as The Payroll People.” There is an entity presently named
“Custom Computer Services, Inc.,” but it was never formerly
known as “The Payroll People.” Instead, we have here a mistake
in the form of one entity’s name, i.e., Payroll People, a mistake
consistent with the PTO’s definition of a mistake. To be sure,
the mistake that occurred here was an incorrect belief that a
corporate name had changed. However, that was a mistake as to
the form of the correct entity, not an attempt to substitute one
entity in the place of a different existing legal entity.

2 Due to an error in the law firm’s database, TPPI’s attorney mistakenly thought
that TPPI had changed its name to CCSI; however, CCSI, which was also a client of
the same law firm, was a separate entity owned by one of TPPI’s founders. See
Custom Computer Servs., 67 USPQ2d at 1639.
Opposition No. 91214792

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The circumstances presented in this case are dissimilar to Custom
Computer Services. Wehrman and WDI are two independent existing legal
entities. Wehrman identified herself by her own name and as “an individual
citizen of [the] United States.” There was no reference to WDI (or to any
other entity) or any mistake in the form of Wehrman’s name or entity as
listed on the Request for an Extension of Time to Oppose.
Conclusion
The December 31, 2013 Request for an Extension of Time to Oppose
identifies Wehrman as the potential opposer. WDI has not been shown to be
in privity with Wehrman or to have been misidentified through mistake. In
view thereof, WDI cannot claim the benefit of the extension of time granted
to Wehrman. Moreover, WDI did not file its own request for an extension of
time to oppose, or a timely notice of opposition within the original opposition
period. Accordingly, Applicant’s motion to dismiss is granted. The Notice of
Opposition is dismissed without prejudice for lack of subject-matter
jurisdiction, and the filing fee will be refunded to WDI in due course.3

3 Where a party does not commence an opposition proceeding, its remedy may lie
with the filing of a petition for cancellation after the subject application has matured
into a registration. See, e.g., TBMP § 306.04 (“Late Opposition”).