Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
LOTUS DEVELOPMENT CORPORATION
v.
NARADA PRODUCTIONS, INC.
Opposition No. 83,330
September 4, 1991
*1 Filed: October 25, 1990
Attorney for Petitioner
Juerg Zundel
Narada Productions, Inc.
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
On Petition to the Commissioner
DECISION
Narada Productions, Inc.
[Narada] has petitioned the Commissioner for review of an action of the
Trademark Trial and Appeal Board. Specifically, petitioner challenges the
Board's institution of Opposition No. 83,330 as improper. Review of the
petition is undertaken pursuant to Trademark Rule 2.146(a)(3), 37 C.F.R. § 2.146(a)(3).
FACTS
Narada's mark, NARADA
LOTUS and design, was published for opposition in the Official Gazette on
Tuesday, May 16, 1989. On June 14, 1989, under a certificate of mailing in
accordance with Rule 1.8, 37 C.F.R. §
1.8, Lotus Development Corporation [Lotus] timely mailed a request for
an extension of time to file a Notice of Opposition. The request sought "a
30-day extension ... that is an extension to July 17, 1989." Following its
receipt in the Office's mail room, this extension request was misdirected to
another part of the Patent and Trademark Office and was not forwarded to the
Trademark Trial and Appeal Board.
On July 17, 1989, in accordance with proper
mailing procedures, Lotus mailed a second extension request. This request
sought "an additional 30-day extension of time ... that is an extension to
August 16, 1989." On August 15, 1989, again in accordance with proper
mailing procedures, Lotus mailed a third extension request, which sought
"a 30-day extension ... that is an extension to September 15, 1989."
Finally, on September 14, 1989, also in accordance with proper mailing
procedures, Lotus filed its Notice of Opposition.
At least in part because
of the misdirection of the initial extension request, a registration was
inadvertently permitted to issue to Narada on August 8, 1989, despite the above
referenced filings. On September 25, 1989, the Board received from Lotus a copy
of the misdirected initial extension request along with a request that Narada's
inadvertently issued registration be cancelled. A few days later, the original
of the misdirected extension request finally arrived at the Board.
On June 25, 1990, the
Board forwarded the file for the inadvertently issued registration to the
Office of the Assistant Commissioner for Trademarks for cancellation. The
registration was cancelled and Narada's application was restored to pending
status so that the Board could institute the Opposition proceeding here in
issue. On August 31, 1990, the Board instituted the Opposition. The instant
petition was timely filed on October 25, 1990.
In its petition to the Commissioner, Narada has argued that the
Opposition proceeding in issue was improperly instituted by the Board. Narada
has asked for both reconsideration of the Commissioner's order cancelling the
inadvertently issued registration and review of the Board's institution of the
Opposition. In its response to the petition, Lotus has argued that its various
extension requests were timely and that its Notice of Opposition was also
timely. Lotus asserts that the Commissioner and the Board have recognized these
"facts" by, respectively, cancelling the registration as
inadvertently issued and instituting the Opposition proceeding. Though for
reasons entirely different than those argued by Narada, the petition must be
granted and the Board's institution of the Opposition proceeding must be
vacated.
1. Rules and Policies Governing Extension Requests
*2 Under Trademark
Act Section 13, 15 U.S.C. § 1063, an
initial request for an extension of time to file an opposition must be filed
within the 30-day period immediately following publication of the mark for
opposition. The statute empowers the Commissioner to grant further extensions
"for good cause when requested priorto the expiration of an
extension." Trademark Rule 2.102(c),
37 C.F.R. § 2.102(c), provides further
detail on the filing of extension requests. The following points which bear on
the case at hand can be gleaned from a review of the rule:
1. An extension request
must be filed "before expiration of thirty days from the date of publication
or within any extension of time previously granted" and "should
specify the period of extension desired."
2. The first extension
"for not more than thirty days will be granted upon request" and
subsequent extensions "may be granted by the Board for good cause."
3. Extensions
"aggregating more than 120 days from the date of publication ... will not
be granted except upon (1) a written consent or stipulation signed by the
applicant or its authorized representative, or (2) a written request by the
potential opposer or its authorized representative stating that the applicant
or its authorized representative has consented to the request, and including
proof of service on the applicant or its authorized representative, or (3) a
showing of extraordinary circumstances, it being considered that a potential
opposer has an adequate alternative remedy by a petition for
cancellation."
2. The Extension Requests Here in Issue
The 30-day opposition period following
publication of Narada's mark ended on June 15, 1989. As noted in the previous
discussion of the facts, the initial extension request filed by Lotus, though
misdirected following receipt, was timely mailed before this deadline. This
initial request sought an extension of 30 days through July 17, 1989. A 30-day
extension running from the close of the opposition period would have run from
June 16, 1989 through July 15, 1989, not July 17, 1989. Thus, Lotus requested a
30-day extension through a date 32 days after the close of the opposition period.
Under Rule 2.102(c),
Lotus had a right to a 30-day extension of time without any requirement that it
assert the existence of "good cause" for granting the extension. On
the other hand, it was not entitled to receive an extension of more than 30
days except upon a showing of good cause for granting the longer extension. The
initial extension request did not assert good cause for granting an extension
of more than 30 days, and thus, Lotus was only entitled to an extension of 30
days.
Lotus may have framed its
request in the manner it did because a 30-day extension would have expired on
Saturday, July 15. However, issues regarding the effective beginning and ending
dates of extensions, and issues regarding the timely filing of extension
requests are distinct matters. Lotus was not entitled to request a 32-day
extension, absent a showing of good cause, simply because a 30-day extension
would have expired on a weekend. Rather, it was entitled to a 30-day extension and, under Rule
1.7, 37 C.F.R. § 1.7 would have been
permitted to mail a subsequent extension request in accordance with Rule 1.8 as
late as the following Monday, July 17, 1989. However, the beginning date of any
such subsequent extension would have been calculated to run from Sunday, July
16, 1989, rather than from the day of mailing of the request.
*3 While the
second extension request filed by Lotus was timely mailed on July 17, the
mistake in calculating the initial extension "threw off" the
calculation of the second and third 30-day extension periods. Thus, Lotus
ultimately calculated that its third 30-day extension allowed it until Friday,
September 15, 1989 to file its Notice of Opposition. The notice was then mailed
in accordance with Rule 1.8 on September 14, 1989.
In fact, Rule 2.102(c)
states that extensions of time aggregating more than 120 days from the date of
publication will not be granted except under certain specified conditions,
e.g., with the applicant's written consent or under a showing of extraordinary
circumstances. In re Software Development Systems Inc., 17 U.S.P.Q.2d 1094
(Comm'r Pats.1990); In re Societe Des Produits Nestle S.A., 17 U.S.P.Q.2d 1093
(Comm'r Pats.1990).
In this case, the 120-day
period following publication ended on September 13, 1989. Lotus did not meet
the requirements for receiving an extension beyond this date. The Board's
approval of extension requests aggregating more than 120 days from the date of
publication was therefore in error and must be reversed. As a consequence, the Notice of Opposition
mailed on September 14, 1989, 121 days after publication, must be rejected.
It is unfortunate that
the misdirection of the initial extension request prevented the Board from
addressing this situation following its original submission; it is similarly
unfortunate that the Board did not address the situation when the third
extension request was filed. However, the Office has no obligation to inform
parties of errors in papers to allow for their timely correction or refiling.
See In re Holland American Wafer Co., 222 USPQ 273 (Fed.Cir.1984). Finally, it
is regrettable this situation was not noted when the Notice of Opposition was
filed 121 days after publication. Nonetheless, the institution of the
Opposition must be vacated.
Contrary to the position
argued by counsel for Lotus, the earlier cancellation of the registration as
inadvertently issued does not constitute an affirmance that all of the
extension requests here in issue, as well as the Notice of Opposition, were
timely filed. Rather, the registration was cancelled simply because it was
inadvertently issued at a point in time (during the second extension) when it
should not have. While the Board's institution of the Opposition proceeding may
be taken as an indication that it found the extension requests and Notice of
Opposition timely, the Board's actions have been shown to be in error.
The petition is granted.
The Board's institution of Opposition No. 83,330 is hereby vacated. While the
earlier cancellation of the inadvertently issued registration was proper,
Narada may elect to have that registration certificate returned to it. The
Office's computerized data bases would then be updated to indicate the
re-issuance of the registration. Otherwise, Narada may choose to have the application
file returned to the Publication and Issue section for re- issuance of a new
registration. Narada must indicate its choice within 30 days of the date of
this decision. Lotus may, if it so desires, pursue relief through a
cancellation proceeding after a registration issues.
23 U.S.P.Q.2d 1310
END OF DOCUMENT