The Equine Touch Foundation, Inc.v.Equinology

Trademark Trial and Appeal Board

Feb 10, 2009

No. 92050044 (T.T.A.B. Feb. 10, 2009)

Mailed: February 10, 2009

Cancellation No. 92050044
The Equine Touch Foundation,
Inc.

v.
Equinology, Inc.
Cindy B. Greenbaum, Managing Interlocutory Attorney:
On October 9, 2008, petitioner used the Board’s
electronic filing system (“ESTTA”), to file a petition to
cancel Registration No. 2883802, indicating through an
appropriate designation on the ESTTA filing form that
service of the petition had been made upon its adversary on
the same day. Petitioner asserts that the mark in the
registration is merely descriptive and unregistrable under
Section 2(e)(1) of the Trademark Act.1
The Board instituted proceedings on October 10, 2008,
and respondent, through counsel, timely filed an answer on
November 17, 2008.

1 The registration, for the mark EQUINE BODY WORKER for
“providing courses of instruction and educational testing in the
field of equine massage, anatomy, and exercise physiology” in
International Class 41, issued on September 14, 2004.
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
Cancellation No. 92050044
2
In a letter dated October 9, 2008, counsel for
petitioner informed the Board that he had not, in fact,
served the petition upon respondent because counsel
interpreted the Trademark Trial and Appeal Board’s Manual
of Procedure (“TBMP”) “as excusing the petitioner from
making service” and that “the TTAB will make service.”2
Counsel for petitioner subsequently realized his error, and
on October 16, 2008, sent a letter to counsel for
respondent enclosing a service copy of the petition.3 The
following day, petitioner filed a motion to amend the

2 Counsel requested clarification if he had misinterpreted the
TBMP. Because counsel appears to have been uncertain about
interpretation of the manual and his service obligations, it
clearly would have been better to clarify the proper practice
prior to rather than after filing the petition. Additionally,
parties are reminded to read the TBMP in conjunction with any
statutory, regulatory, or judicial changes which have occurred
since the last revision.

3 Petitioner filed a copy of this letter with the Board. The
Board notes that it was incorrect for petitioner to serve the
petition on counsel for respondent, rather than on respondent,
i.e., the owner of the registration. A petition is to be served
on the owner of the registration or its domestic representative,
if one has been appointed, at the correspondence address of
record for the owner or domestic representative, if any. See
Trademark Rule 2.111(b). Nonetheless, as previously noted,
counsel for respondent has filed an answer and it is clear that
respondent will be represented by counsel in this proceeding.
Under these circumstances, therefore, petitioner need not forward
a service copy directly to respondent. The Board also notes,
however, that in the ESTTA cover sheet for the answer, counsel
for respondent has listed respondent’s address, rather than
counsel’s own address, as the correspondence address for
respondent. If counsel intends to represent respondent
throughout the remainder of this proceeding, counsel should file
a change of correspondence address to list himself and his
address as the address for correspondence from the Board and
future service copies from petitioner.

Cancellation No. 92050044
3
petition “to state that service was made,” via first class
mail, on “October 16, 2008,” and to amend the petition’s
proof of service accordingly.
Amended Trademark Rule 2.111(a), effective November 1,
2007, states that a petition to cancel “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” (emphasis added).4 While
respondent did not file a motion to dismiss this case as a
nullity, it is obvious to the Board that petitioner did not
satisfy the service requirements detailed in Trademark
Rules 2.111(a), 2.111(b) and 2.111(c)(4) on October 9,
2008, because petitioner did not actually serve the

4 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, a
petitioner was not required to serve its petition to cancel upon
its adversary. Instead, in cases commenced prior to November 1,
2007, a petitioner was able, under Trademark Rule 2.112(a), to
simply file its petition to cancel, and any exhibits thereto, in
duplicate form with the Board. Upon receipt, the Board would
then forward the duplicate or service copy of the petition to
cancel, and any exhibits thereto, directly to the owner of the
registration along with an order instituting proceedings, in
accordance with Trademark Rule 2.113. Both of these rules have
been amended. 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

Cancellation No. 92050044
4
petition on that date.5 Petitioner does not dispute this
point. Thus, although the Board accorded the petition an
October 9, 2008 “filing date” based on petitioner’s ESTTA
filing, petitioner clearly is not entitled to such a filing
date because it failed to comply with its service
obligations on that date.
If this case were an opposition proceeding, and
October 9, 2008 had been the deadline for filing a notice
of opposition, proof of subsequent service of the notice on
defendant or its counsel would be insufficient and the case
would have to be dismissed as a nullity. See Springfield
Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) and In re Sasson
Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995).6
However, unlike a notice of opposition wherein an opposer

5 The parties should bear in mind that a plaintiff who files its
complaint through ESTTA 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
a complaint 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 ESTTA does not effect service for the filer.

6 The time for filing a notice of opposition is statutory and
cannot be waived by the Board; and the filing date for a notice
of opposition is dependent on, among other things, forwarding of
a service copy and inclusion of proof of service when the
opposition is filed. Thus, if opposer’s service of a notice of
opposition, or its submission of proof of service, occurs after
the close of the opposition period, including any granted
extensions, the filing date would fall outside the opposition
period and the Board would refuse the opposition as untimely.
Cancellation No. 92050044
5
cannot remedy a failure to comply with the service
requirements if the remedy is provided after the close of
the opposition period, as originally set or as extended, a
petition to cancel a registration issued on the Principal
Register on a claim that the mark is merely descriptive may
be filed at any time within five years from the date of the
registration of the mark. Since the mark in this case
registered on September 14, 2004, petitioner has until the
fifth anniversary of the date of the registration, namely,
September 14, 2009, to properly file a petition to cancel
asserting a claim of descriptiveness.
Inasmuch as petitioner acted promptly to cure its
acknowledged failure of service, and given the fact that
this petition would not be time-barred as of the date of
actual compliance with the service requirement, petitioner
cured the defective filing by its amendment of the proof of
service. Therefore, the Board will not dismiss this
petition as a nullity but instead will accord the petition
a new filing date of October 17, 2008, which is the date of
such amendment.
Finally, the Board notes that on November 17, 2008,
petitioner filed several items “in support of” its petition
to cancel. However, evidentiary matters should not be
pleaded in or with a complaint or filed at any time other
Cancellation No. 92050044
6
than the petitioner’s assigned time for submitting
evidence, i.e., its assigned testimony period. Moreover,
with the exception of a plaintiff’s pleaded registrations,
which may be filed along with the petition to cancel or
notice of opposition, documents and other exhibits may be
made of record only during the testimony period of the
offering party in the following two ways: (1) they may be
introduced by a witness during the course of a deposition,
and (2) they may be submitted pursuant to a notice of
reliance filed with the Board if they meet the requirements
of Trademark Rule 2.120 or 2.122. See generally, TBMP
Chapter 700 (2nd ed. rev. 2004).7 In view thereof,
petitioner’s November 17, 2008 submission will not be given
any further consideration.
Dates, including the deadline for the discovery and
settlement planning conference, are reset as follows:
Deadline for Discovery Conference 3/12/2009
Discovery Opens 3/12/2009
Initial Disclosures Due 4/11/2009
Expert Disclosures Due 8/9/2009
Discovery Closes 9/8/2009
Plaintiff's Pretrial Disclosures 10/23/2009
Plaintiff's 30-day Trial Period Ends 12/7/2009
Defendant's Pretrial Disclosures 12/22/2009
Defendant's 30-day Trial Period Ends 2/5/2010

7 Documents of any type which may not be submitted with a Notice of
Reliance may nonetheless be introduced during a party’s testimony
period without the need of introduction by a witness, if the parties
stipulate to entry of the documents. In such circumstances, the
stipulation must be made of record prior to or with the submission of
documents. The Board encourages stipulations that ease the
introduction of evidence.
Cancellation No. 92050044
7
Plaintiff's Rebuttal Disclosures 2/20/2010
Plaintiff's 15-day Rebuttal Period Ends 3/22/2010

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. See 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.
Board’s Standard Protective Order:

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final
rule and chart, this change will not affect any case in
which any protective order has already been approved or
imposed by the Board. Further, as explained in the final
rule, parties are free to agree to a substitute protective
order or to supplement or amend the standard order even
after August 31, 2007, subject to Board approval. The
standard protective order can be viewed using the following
web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm