Jacques Moret, Inc.v.Speedo Holdings B.V.

Trademark Trial and Appeal Board

Mar 12, 2012

No. 92054121 (T.T.A.B. Mar. 12, 2012)

jk Mailed: March 12, 2012

Cancellation No. 92054121

Jacques Moret, Inc.

v.

Speedo Holdings B.V.

Before Wellington, Lykos and Shaw,
Administrative Trademark Judges.

By the Board:
This proceeding is before the Board for consideration
of Speedo Holdings B.V.’s (“respondent”) motion (filed July
26, 2011) to dismiss the petition for cancellation pursuant
to Fed. R. Civ. P. 12(b)(5) for insufficient service of
process. The motion has been fully briefed.
Background
Respondent, organized under the laws of the Netherlands
and located in Amsterdam, owns a registration for the mark
SPEEDRY for various clothing goods in International Class
25.1 The USPTO records indicate that, at the time the
petition was filed, the correspondence address of record for
respondent was in the Netherlands, and that respondent never
designated a domestic representative. While not required,

1 Registration No. 3513161, registered October 7, 2008.
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
Cancellation No. 92054121

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foreign domiciled applicants and registrants are encouraged
by the USPTO to appoint domestic representatives upon whom
notices or process in proceedings affecting the mark may be
served. See Trademark Act § 1(e); Trademark Rule
2.24(a)(1). See also TMEP §§ 811, 1013 (8th ed. 2011).
On June 16, 2011, Jacques Moret, Inc. (“petitioner”)
filed a petition for cancellation of said registration, via
the Board’s ESTTA system,2 asserting claims of priority and
likelihood of confusion pursuant to Trademark Act § 2(d), 15
U.S.C. § 1052(d), and misrepresentation of the source of the
goods under Trademark Act § 14(3), 15 U.S.C. § 1064(3).
Petitioner asserts ownership of a registration, and a
pending application, for the mark SPEED DRI for various
clothing goods in International Class 25.3 Counsel for
petitioner affixed his electronic signature to the
certificate of service on the ESTTA cover sheet, which
reads: “The undersigned hereby certifies that a copy of this
paper has been served upon all parties, at their address
[of] record by First Class Mail on this date.” In its brief
opposing respondent’s motion, petitioner’s counsel admits
that he did not serve respondent at its correspondence

2 ESTTA is the acronym for Electronic System for Trademark Trials
and Appeals, the Board’s electronic filing system. Parties are
strongly encouraged to file submissions to the Board via ESTTA.
See TBMP § 110.09 (3d ed. 2011).
3 Registration No. 2414630, registered December 19, 2000; first
renewal November 20, 2010. Application Serial No. 85174754,
filed November 11, 2010.
Cancellation No. 92054121

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address of record, which, as noted above, is in the
Netherlands. Instead, petitioner served Brad D. Rose of the
law firm Pryor Cashman LLP, an attorney who was never
respondent’s counsel of record, but who responded in writing
to a cease and desist letter that petitioner’s counsel had
sent to the counsel of record listed for respondent during
ex parte examination, Brian R. McGinley of the law firm
Sonnenschein, Nath & Rosenthal LLP. In that response, Mr.
Rose identified himself as “new counsel to Speedo Holdings
B.V.”
In lieu of filing an answer, respondent, by way of a
motion filed by an attorney from a third law firm, J.
Allison Strickland of Fross, Zelnick, Lehrman & Zissu, P.C.,
moved to dismiss this proceeding pursuant to Fed. R. Civ. P.
12(b)(5), asserting that the proceeding was not properly
instituted because petitioner failed to comply with the
service requirements of Trademark Rules 2.111(a) and (b).
Specifically, respondent argues that it never received a
service copy of the petition at its address of record in the
Netherlands, and that Trademark Rule 2.111 does not provide
for service on an attorney for respondent unless the
attorney is reflected in the Office records as domestic
representative for respondent.4

4 Where the Office records for a registration indicate an
attorney of record, service on that attorney would comply with
Trademark Rules 2.111 (a) and (b) only if the Office records
Cancellation No. 92054121

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In its response and “Cross Motion to Accept Belated
Service on the Director and Reset the Cancellation Filing
Date,” petitioner states that it “should have served the
Director in accordance with 37 CFR [§] 2.24(a)(2)”
(petitioner’s brief, p. 1), and that upon learning of its
error, it “served a copy of the Petition to Cancel on the
Director with a new certificate of service” (petitioner’s
brief, p. 2). Petitioner concurrently filed a copy of the
petition for cancellation with a certificate of service
dated July 27, 2011, indicating service by first class mail
on:
Director of the United States Patent
and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450.

Petitioner requests that the filing date of the petition “be
reset to July 27, 2011, the date of service on the Director”
(petitioner’s brief, p. 2). Petitioner’s response is
supported by a declaration of its counsel.
Analysis
ESTTA requires a petitioner to affirmatively represent
to the Board that it has served a copy of the petition for
cancellation on respondent, and to select the method by

indicate that the attorney is also designated as domestic
representative. In such a situation, it is appropriate to serve
the attorney in his capacity as domestic representative. This
would not be service on an attorney of record, but rather service
on a domestic representative, who happens to also be an attorney.
Cancellation No. 92054121

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which the petitioner serves respondent; thus any petitioner
who files through ESTTA will be viewed by the Board as
having included proof of service with the pleading because a
statement confirming service appears on the ESTTA-generated
filing form as part of the complaint. However, the
recitation of service on the complaint does not by itself
effect service; petitioner must still make actual service of
the complaint on respondent to comply with its service
obligation. See TBMP § 309.02(c)(2) (3d ed. 2011).
Trademark Rules 2.111(a) and (b) govern the service of
a petition for cancellation, and provide, in part:
(a) A cancellation proceeding is commenced by filing in
the Office a timely petition for cancellation with the
required fee. The petition must include proof of
service on the owner of record for the registration, or
the owner’s domestic representative of record, at the
correspondence address of record in the Office, as
detailed in §§ 2.111(b) and 2.119.

(b) … Petitioner must serve a copy of the petition,
including any exhibits, on the owner of record for the
registration, or on the owner’s domestic representative
of record, if one has been appointed, at the
correspondence address of record in the Office. The
petitioner must include with the petition for
cancellation proof of service, pursuant to § 2.119, on
the owner of record, or on the owner’s domestic
representative of record, if one has been appointed, at
the correspondence address of record in the Office….
(emphasis added).

Thus, the rules require a petitioner to serve a copy of
the petition for cancellation either on the owner of record
for the registration at the correspondence address of record
in the Office for the owner, or, if the Office records for
Cancellation No. 92054121

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the registration indicate that a domestic representative has
been appointed, on the domestic representative at the
correspondence address of record in the Office for the
domestic representative. To determine the correspondence
address of the owner of record, or of the domestic
representative, a petitioner may consult the Office’s
Trademark Status and Document Retrieval (TSDR) system.5 See
Miscellaneous Changes to Trademark Trial and Appeal Board
Rules, 72 Fed. Reg. 42242-43 (August 1, 2007) (“To determine
the correspondence address of record for an applicant or
registrant, the plaintiff must check the … [TARR, now TSDR]
system….”); TBMP § 309.02(c)(2) (3d ed. 2011). As the Board
has further clarified, the petition need only be served at
the current owner’s or domestic representative’s address of
record displayed on the TARR [now TSDR] website, including
any relevant assignment information for the owner, such as
information from the “View Assignment” or “Assignment” link.
See TBMP § 309.02(c)(2) (3d ed. 2011). Where the Office
records for a registration indicate the existence of an
attorney of record, but said attorney is not also designated
as domestic representative for the registration, service of
a petition for cancellation on said attorney is

5 The Office has replaced the TARR system with the Trademark
Status and Document Retrieval (TSDR) system. TSDR integrates the
former TARR and Trademark Document Retrieval (TDR) systems into
one database.
Cancellation No. 92054121

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insufficient. Service of a petition for cancellation on an
attorney who represented the registrant during ex parte
prosecution, or who represented or represents the registrant
with respect to other matters, is insufficient unless the
attorney is also listed in the Office records for the
registration as the domestic representative.
Attesting to proof of service of an ESTTA filing without
actually effecting service in accordance with the rules is
insufficient to commence the proceeding. See Springfield Inc.
v. XD, 86 USPQ2d 1063, 1064 (TTAB 2008). As noted above, a
cancellation is not properly commenced if a copy of the
petition, with any exhibits, is not served on the owner of
record, or its domestic representative, at the correspondence
address of record for the owner or domestic representative.
See Trademark Rule 2.111(a).
Here, the USPTO TARR/TSDR records indicate that
respondent, Speedo Holdings B.V., is, and was at the time
petitioner filed the petition for cancellation,6 the owner
of record for Registration No. 3513161, and that respondent
did not designate a domestic representative. Accordingly,
to satisfy the service requirements, petitioner was
obligated to serve, concurrently with filing its petition
for cancellation with the Board, a copy thereof on Speedo

6 No assignment records are associated with the registration.
Cancellation No. 92054121

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Holdings B.V. at its correspondence address of record in the
Netherlands.
Petitioner’s service on Brad D. Rose of Pryor Cashman
LLP, an attorney who was never counsel of record, nor
appointed domestic representative, was insufficient. While
petitioner’s communications with Mr. Rose may have led
petitioner to conclude that it could serve the petition on
Mr. Rose, that was not the case. The applicable rules still
required service on respondent. Under these circumstances,
any service on Mr. Rose would, at best, be characterized as
service of a courtesy copy of the petition.7
The importance of serving either respondent at its
address of record, or the domestic representative at its
address of record, as required by Trademark Rules 2.111(a)
and (b), is underscored in situations where, as here, a
petitioner, at the time of filing its petition, has
correspondence information for respondent that is not
reflected in the Office’s records (e.g., TSDR records differ
from communication received from respondent or from a person
indicating he or she is or may be representing respondent).

7 While the Board encourages service of courtesy copies in
appropriate circumstances, such a copy does not substitute for
proper service in compliance with the applicable rules. See
Miscellaneous Changes to Trademark Trial and Appeal Board Rules,
72 Fed. Reg. at 42243 (“a plaintiff may wish to serve a courtesy
copy on any party at any address the plaintiff may have reason to
believe is more current than the address for that party listed in
the Office records”) (emphasis added).
Cancellation No. 92054121

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To be absolutely clear, Trademark Rules 2.111(a) and (b)
require that the cancellation petitioner must serve the
owner of record for the registration at its address of
record, or the appointed domestic representative at its
address of record. A petitioner may forward a courtesy copy
to an attorney who it believes is representing respondent.8
See TBMP § 309.02(c)(2) (3d ed. 2011).
Finally, there is no authority to support petitioner’s
claim that serving the Director under Trademark Rule
2.24(a)(2) satisfied its service obligation. The case on
which petitioner relies, Equine Touch Foundation Inc. v.
Equinology Inc., 91 USPQ2d 1943 (TTAB 2009), neither
provides for such procedure, nor provides support for
petitioner’s position. Trademark Rule 2.24, which is
entitled “Designation and Revocation of Domestic
Representative by Foreign Applicant” and appears under the
heading “Application for Registration” in 37 CFR Part 2,

8 Plaintiffs should note, however, that the duration of a power
of attorney filed in connection with ex parte prosecution is
considered limited. Specifically, a power of attorney filed
under Trademark Rule 2.17(g)(1) while an application is pending
is construed by the USPTO to end when the mark registers, when
ownership changes or when the application is abandoned. See also
Miscellaneous Changes to Trademark Trial and Appeal Board Rules,
72 Fed. Reg. at 42243 (“A plaintiff filing a petition for
cancellation must serve the owner of the registration… [and] is
not expected to serve any attorney who may have represented the
registrant before the Office in the prosecution of the
application….”). Similarly, under Trademark Rule 2.17(g)(2), a
power of attorney filed after registration ends when the mark is
cancelled or expired, or when ownership changes, and one filed in
connection with a post-registration affidavit is deemed to end
upon acceptance or final rejection of that filing.
Cancellation No. 92054121

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governs service of notices or process in applications during
ex parte prosecution, and does not govern service of
complaints or other papers in cancellation proceedings.
In summary, petitioner failed to effect service, as
required by Trademark Rules 2.111(a) and (b). In view of
these findings, respondent’s motion to dismiss pursuant to
Fed. R. Civ. P. 12(b)(5) is granted.
However, inasmuch as it filed the motion to dismiss,
the firm of Fross, Zelnick, Lehrman & Zissu, P.C. is now
recognized as counsel of record for respondent in this
proceeding. See Trademark Rules 2.17(b) and 2.17(c); TBMP §
114.03 (3d ed. 2011). Accordingly, notwithstanding our
finding that petitioner’s two prior attempts to serve its
complaint were defective, under the facts and history of
this particular case, we recognize that respondent is
clearly on notice of this proceeding.9 The date of
institution of this proceeding will be amended to July 28,
2011. See Trademark Rule 2.113(a).
In view thereof, proceedings are resumed, and
respondent is allowed until thirty (30) days from the
mailing date of this order in which to file its answer. All
subsequent conferencing, disclosure, discovery and trial

9 In particular, we note that petitioner served respondent’s
current counsel, the firm of Fross, Zelnick, Lehrman & Zissu,
P.C., on July 28, 2011, with a copy of the petition for
cancellation as an exhibit to the declaration in support of
petitioner’s brief in opposition to the motion to dismiss.
Cancellation No. 92054121

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dates are reset as indicated below. Inasmuch as the filing
of a motion to dismiss based solely on the issue of service
occasioned delay in this proceeding, the Board expects
respondent to answer within the time allowed, and expects
the parties to proceed without delay to hold the required
settlement and discovery planning conference.
Conferencing, disclosure, discovery and trial dates are
reset as follows:
Deadline for Discovery
Conference 5/25/2012
Discovery Opens 5/25/2012
Initial Disclosures Due 6/24/2012
Expert Disclosures Due 10/22/2012
Discovery Closes 11/21/2012
Plaintiff's Pretrial Disclosures
Due 1/5/2013
Plaintiff's 30-day Trial Period
Ends 2/19/2013
Defendant's Pretrial Disclosures
Due 3/6/2013
Defendant's 30-day Trial Period
Ends 4/20/2013
Plaintiff's Rebuttal Disclosures
Due 5/5/2013
Plaintiff's 15-day Rebuttal
Period Ends 6/4/2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
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Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.