Musical Directionsv.Norman W. McHugh

Trademark Trial and Appeal Board

Sep 21, 2012

No. 91205312 (T.T.A.B. Sep. 21, 2012)

GCP Mailed: September 21, 2012

Opposition No. 91205312

Musical Directions

v.

Norman W. McHugh

Before Seeherman, Taylor, and Lykos,
Administrative Trademark Judges.

By the Board:
Norman W. McHugh (“applicant”) seeks to register the mark
SUNDAE SERMON in standard characters for “organizing community
festivals featuring music and art exhibitions” in
International Class 41.1
On May 25, 2012, Musical Directions (“opposer”) filed a
notice of opposition against applicant’s involved application.
The notice of opposition was filed by utilizing the Board’s
Electronic System for Trademark Trials and Appeals (“ESTTA”)
filing system and includes an ESTTA filing cover page
(entitled “Notice of Opposition”) which identifies the

1 Application Serial No. 85391069, filed on August 5, 2011, based
on Section 1(a) of the Trademark Act, claiming January 23, 2010
as the date of first use and June 22, 2011 as 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. 91205312

2

following grounds for opposition: (1) deceptiveness under
Section 2(a) of the Trademark Act, (2) priority and likelihood
of confusion under Section 2(d) of the Trademark Act, (3)
fraud, and (4) a claim that applicant was not the rightful
owner of the mark at the time of the filing of the involved
application. Attached to the cover page is a pleading which
sets forth allegations regarding the claim that applicant is
not the rightful owner of the mark.
Answer to the notice of opposition was due by July 4,
2012. Inasmuch as no answer was filed by the due date, nor
did applicant file a timely motion to extend his time to
answer, the Board issued a default notice on July 13, 2012.
This case now comes before the Board for consideration of
(1) applicant’s motion (filed August 11, 2012) to dismiss for
failure to effectuate proper service of the notice of
opposition upon applicant, and (2) applicant’s response to the
Board’s July 13, 2012 default notice.
We first turn to applicant’s motion to dismiss. In
support thereof, applicant contends that the certificate of
service of opposer’s notice of opposition, as downloaded by
applicant from the TTABVUE database, “indicates that Opposer
served a copy of the filing via facsimile or email (by
agreement only) on May 25, 2012.” (emphasis in original).
Applicant maintains that he neither consented to electronic
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service, nor did he actually receive service from opposer by
facsimile, email or any other means. In fact, applicant
contends that he had absolutely no contact with opposer about
this matter prior to the filing of the notice of opposition.
Because applicant never agreed to service by electronic
transmission, applicant argues that opposer was obligated to
serve its notice of opposition by one of the other means for
service specified in Trademark Rule 2.119. Since opposer did
not effect service through one of these other means, and did
not claim to have done so in a proper certificate of service,
applicant argues that opposer did not effectuate proper
service and that this proceeding should not have been
instituted. Applicant further argues that, since the deadline
for filing a notice of opposition has now expired, opposer
cannot cure its failure to serve applicant by now providing
service by first-class mail or any other appropriate means
under Trademark Rule 2.119 and, therefore, this proceeding
should be dismissed.
In further support of his motion, applicant relies on the
Board’s decision in Springfield, Inc. v. XD, 86 USPQ2d 1063
(TTAB 2008), wherein the Board denied opposer’s motion to file
an amended notice of opposition and dismissed the opposition
as a nullity inasmuch as, despite having indicated that it
served a copy of its notice of opposition, opposer admitted
Opposition No. 91205312

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that it never provided actual service upon applicant.
Applicant contends that, like the Springfield case, since
opposer did not effectuate proper service of the notice of
opposition, this opposition should be similarly dismissed.
In response, opposer maintains that it did serve its
notice of opposition, accompanied by a letter from opposer’s
counsel, upon applicant by certified first-class mail on
May 30, 2012, a date prior to the deadline for filing and
serving a notice of opposition in regard to the subject
application.2 See Exhibit C of opposer’s response.
Concurrently with its response, opposer submitted a copy of
the certified mailing receipt of its May 30, 2012 service at
applicant’s correspondence address of record at the time of
such service. See Exhibit D of opposer’s response. Opposer
further states that applicant’s service copy of the notice of
opposition served by certified first-class mail was returned
as undeliverable by the U.S. Postal Service to opposer on June
4, 2012, notwithstanding the fact that the service copy was
addressed to applicant at his correspondence address of
record.

2 Opposer also notes that the initial deadline for filing a notice
of opposition to the registration of applicant’s involved mark
was May 31, 2012, and that it secured an extension of time to
oppose up to, and including, June 30, 2012. Grant of the
extension is confirmed by Office records.

Opposition No. 91205312

5

In addition to service by certified first-class mail,
opposer asserts that applicant was forwarded a copy of the
notice of opposition by email on May 29, 2012. Opposer
submitted a copy of this email in its response. See Exhibit F
of opposer’s response. Additionally, opposer maintains that
six days after service by email, a response to the email came
from an attorney named Vivian Kimi Tozaki, who claimed that
she represents applicant, and who wanted to arrange a
telephone conference with opposer regarding the opposition.
See Exhibit G of opposer’s response. Opposer further
maintains that applicant was copied on Ms. Tozaki’s response.
Id.
In view of the foregoing, opposer argues that applicant
was duly and properly served with the notice of opposition
under Board rules and procedure, both by certified first-class
mail and by electronic means, prior to the expiration of time
to oppose registration of applicant’s mark and, therefore,
applicant’s motion to dismiss should be denied.
In reply, applicant argues that, even if opposer did
serve its notice of opposition by email, the parties did not
agree to service by electronic means, and such service was
nonetheless improper because it was effectuated four days
after the filing date of the notice of opposition.
Additionally, applicant maintains that the only attachment
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forwarded to applicant by email was the one page copy of the
notice of opposition, with no certificate of service or other
information regarding the date on which the opposition was
filed. Further, applicant contends that he never received the
service copy of the notice of opposition served by first-class
mail and, because opposer knew that applicant did not receive
such service copy, opposer was obligated pursuant to Trademark
Rule 2.101(b) to take additional steps to effectuate service
by notifying the Board of the returned mail service copy of
the notice of opposition. In view of the foregoing, applicant
maintains that he has demonstrated that he was not properly
served under Board rules and, therefore, the notice of
opposition should be dismissed as a nullity.
Trademark Rule 2.101(b) reads in relevant part as
follows:
Any person who believes that he, she or it would be
damaged by the registration of a mark on the Principal
Register may file an opposition addressed to the
Trademark Trial and Appeal Board and must serve a copy
of the opposition, including any exhibits, on the
attorney of record for the applicant or, if there is
no attorney, on the applicant or on the applicant’s
domestic representative, if one has been appointed, at
the correspondence address of record in the Office.
The opposer must include with the opposition proof of
service pursuant to § 2.119 at the correspondence
address of record in the Office.

The Board notes that the foregoing rule does not
require an opposer to provide proof of receipt of a notice
Opposition No. 91205312

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of opposition, but only proof of service thereof. The
Board finds that the copy of the certified mailing receipt
provided by opposer provides such proof of service required
under Board rules and therefore we further find that
opposer complied with the Board’s service requirements as
of May 30, 2012. The fact that opposer’s service copy of
its notice of opposition served by first-class mail was
returned as undeliverable by the U.S. Postal Service does
not negate opposer’s compliance with the service
requirements of the applicable rule.3
Although applicant did not in fact receive the copy of
the notice of opposition sent through the Postal Service,
we find no harm to applicant under the circumstances
inasmuch as applicant clearly knew about the notice of
opposition and its contents since applicant’s apparent
former counsel, Ms. Vivian Kimi Tozaki, contacted opposer

3 Under Trademark Rule 2.101(b), opposer was required to inform
the Board that its service copy of its notice of opposition was
returned as undeliverable within ten days of receiving the
returned copy. In this particular case, it is unclear why the
notice of opposition was returned as undeliverable since
applicant’s address of record was correct. Even though opposer
knew that applicant was aware of the opposition, opposer
nonetheless should have notified the Board regarding its receipt
of the undeliverable service copy. However, given the
circumstances of this case, opposer’s failure to do so does not
alter our opinion herein.

Opposition No. 91205312

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on applicant’s behalf to arrange a telephone conference
regarding this opposition proceeding.
We recognize that the certificate of service contained
in the ESTTA cover sheet of the notice of opposition and
the service by first-class mail do not match. The
certificate states that service was effectuated by fax or
email and there is no indication that applicant had agreed
to service by email or fax. Therefore, such means of
service would not be proper.4 Nevertheless we find that the
incorrect wording of the certificate of service does not
nullify opposer’s compliance with the Board’s service
requirements inasmuch as opposer has submitted a copy of
the certified mailing receipt of the service copy of its
notice of opposition, showing that the copy was served by
first-class mail on May 30, 2012, within the opposition
period. The parties are advised that until such time as
the parties agree, in writing, that service may be
effectuated by email or fax, all papers that are required
to be served must be served in compliance with Trademark
Rule 2.119.

4 If opposer intended for the service of the notice of opposition
by email to be a courtesy copy, it was incorrect for opposer to
state in the ESTTA cover sheet that service was completed by
email or fax.
Opposition No. 91205312

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Moreover, as noted above, opposer did not effectuate
proper service by first-class mail upon applicant until May
30, 2012, notwithstanding the fact that opposer filed its
notice of opposition on May 25, 2012. Since opposer
secured an extension of time to oppose until June 30, 2012,
its service of the notice of opposition by first-class mail
on May 30, 2012 is timely; however, the effective
institution date of the notice of opposition must be
amended to May 30, 2012, to correspond to the date of
proper service of the notice of opposition. Cf. The Equine
Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943
(TTAB 2009)(the date of institution was reset to coincide
with the actual service date).
In view of the foregoing, applicant’s motion to dismiss
for failure to effectuate proper service is DENIED.
As a final matter, the Board, in its discretion, has sua
sponte reviewed opposer’s pleading and finds that its asserted
claims of priority and likelihood of confusion, deceptiveness
and fraud are insufficiently pleaded. Indeed, the complaint
is devoid of any allegations that support the aforementioned
claims. The only claim sufficiently asserted in opposer’s
complaint is that applicant was not the rightful owner of the
mark at the time of the filing of the application.
Opposition No. 91205312

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In view thereof, opposer is allowed until twenty (20)
days from the mailing date of this order in which to file and
serve an amended notice of opposition which properly sets
forth claims of priority and likelihood of confusion,
deceptiveness, and fraud, or whichever of these claims, if
any, may be properly asserted based on the circumstances of
the case, failing which these claims will be dismissed with
prejudice and the opposition will move forward only on the
claim of applicant’s lack of ownership.5
In turn, applicant is allowed until twenty (20) days from
the date on the certificate of service of opposer’s amended
pleading in which to file and serve his answer or otherwise
respond to the amended notice of opposition. In the event
opposer does not file an amended pleading pursuant to this
order, then applicant is allowed twenty (20) days from when
opposer’s amended pleading would have been due in which to
file his answer to opposer’s original notice of opposition, as
discussed herein.
Trial Schedule
Proceedings herein are resumed. Trial dates are reset as
follows:

5 In light of this order, the Board’s July 13, 2012 default notice
is hereby set aside and applicant’s response thereto filed on
August 10, 2012 is deemed moot.

Opposition No. 91205312

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Deadline for Discovery
Conference 11/23/2012
Discovery Opens 11/23/2012
Initial Disclosures Due 12/23/2012
Expert Disclosures Due 4/22/2013
Discovery Closes 5/22/2013
Plaintiff's Pretrial
Disclosures Due 7/6/2013
Plaintiff's 30-day Trial Period
Ends 8/20/2013
Defendant's Pretrial
Disclosures Due 9/4/2013
Defendant's 30-day Trial Period
Ends 10/19/2013
Plaintiff's Rebuttal
Disclosures Due 11/3/2013
Plaintiff's 15-day Rebuttal
Period Ends 12/3/2013

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.
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.