Springfield, Inc.v.XD

Trademark Trial and Appeal Board

Feb 7, 2008

No. 91180596 (T.T.A.B. Feb. 7, 2008)

Greenbaum Mailed: February 7, 2008

Opposition No. 91180596

Springfield, Inc.

v.

XD

Before Sams, Chief Administrative Trademark Judge, and
Rogers and Mermelstein, Administrative Trademark Judges.

By the Board:

This case comes up on opposer’s motion (filed November
26, 2007) to file an amended notice of opposition. For the
reasons discussed below, the motion is denied, and the
opposition is dismissed as a nullity.1
As background, on November 7, 2007, the last day of the
opposition period, as extended, opposer filed, via the
Board's Electronic System for Trademark Trials and Appeals
(ESTTA), a notice of opposition against involved application
Serial No. 77064833. Opposer checked the applicable box on
the ESTTA form to indicate that it had effected service on

1 That is to say, the opposition should never have been
instituted. Opposer’s filing fee will be refunded in due course.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS DISPOSITION IS A
PRECEDENT OF THE TTAB
2
applicant, absent which ESTTA would not have allowed opposer
to complete the electronic filing process that resulted in
institution of this proceeding. However, opposer states in
the current motion that it did not, in fact, comply with the
service requirements set forth in Trademark Rules 2.101(a)
and 2.101(d)(4), in that it did not serve a copy of the
notice of opposition on applicant.2 Opposer seeks to remedy
this oversight by amending the notice of opposition to
indicate that it served a copy of the notice of opposition
on applicant on November 26, 2007.
Trademark Rule 2.101(a) states that (emphasis added):
An opposition proceeding is commenced by
filing in the Office a timely notice of opposition
with the required fee. The notice must include
proof of service on the applicant, or its attorney
or domestic representative of record, at the
correspondence address of record in the Office, as
detailed in §§ 2.101(b) and 2.119.

Trademark Rule 2.101(d)(4) provides that (emphasis
added):
The filing date of an opposition is the date
of receipt in the Office of the notice of
opposition, with proof of service on the
applicant, or its attorney or domestic
representative of record, if one has been
appointed, at the correspondence address of record
in the Office, and the required fee, unless the
notice is filed in accordance with § 2.198.

2 Trademark Rules 2.111(a) and 2.111(c)(4) contain parallel
provisions relating to petitions to cancel.

3
The proof of service requirement assumes actual service
on applicant, or its attorney or domestic representative of
record, if any. Proof of service is meaningless in the
absence of actual service in accordance with the statements
contained in the proof of service. The requirement of the
rules is for proof of service, not a promise to make service
at some time in the future. In the instant case, as
discussed above, the notice of opposition included proof of
service, but there was no actual service on applicant.
Thus, opposer did not comply with the service requirement of
the rules. Accordingly, opposer’s notice of opposition
should not have received a filing date, and this proceeding
should not have been instituted.3
Application Serial No. 77064833 will be forwarded for
issuance of a notice of allowance.4

3 As a corollary, the Board will not institute an opposition or
cancellation where there is no proof of service, even though
there may have been actual service.

4 Opposer is not without recourse, as it may file a petition to
cancel if and when the mark in the involved application
registers.