Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK APPLICATION OF SOFTWARE
DEVELOPMENT SYSTEMS, INC.
Serial No. 710,869
October 5, 1989
*1 Petition Filed: March 29, 1989
For: CROSSCODE
Filed: February 12, 1988
Attorney for Petitioner
Barth X. deRosa
Watson, Cole, Grindle & Watson
Attorney for Applicant
Sachnoff Weaver & Rubenstein, Ltd.
Jeffrey M. Samuels
Assistant Commissioner for Trademarks
On petition
On-Line Software International,
Inc. has petitioned the Commissioner pursuant to 37 C.F.R. § 2.148 to suspend a portion of Trademark Rule
2.102(c)(2) and to accept the consent for extension of time to oppose as filed
on March 3, 1989.
The above-identified mark
was published for opposition on November 8, 1988. Petitioner filed three timely
requests for extensions of time to oppose; the period for opposition was,
consequently, extended to March 8, 1989. On March 3, 1989 petitioner filed
another request for a thirty day extension for filing a notice of opposition
which indicated that counsel for applicant had agreed to an extension of time.
In a letter dated March 22, 1989 the Attorney-Examiner at the Trademark Trial
and Appeal Board notified petitioner that the request could not be granted
because the circumstances recited in the request are not deemed to be
extraordinary in nature, and because there is no indication that applicant was served a copy of the request for
extension of time. This petition followed.
Counsel for petitioner
states, in an unverified statement, that the request for extension of time to
oppose was made with the telephonic consent of applicant's attorney, however,
due to inadvertence or distraction, a proof of service was not provided nor did
counsel for applicant receive a copy of the consent.
The Commissioner will
exercise supervisory authority under Trademark Rule 2.146(a)(3) to vacate an
action of the Trademark Trial and Appeal Board only where the Board has
committed a clear error or abuse of discretion. Riko Enterprises, Inc. v.
Lindley, 198 USPQ 480 (Comm'r Pats.1977).
Trademark Rule 2.102(c)
provides, in part:
(E)xtensions of time to
file an opposition aggregating more than 120 days from the date of publication
of the application 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.
The Trademark Trial and Appeal Board
determined that the circumstances recited in the request did not constitute an
extraordinary situation as set out in Rule 2.102(c)(3). No abuse of discretion
by the Board has been found, and the Commissioner will not substitute his
judgment for that of the Board in evaluating the recited circumstances.
*2 Trademark Rule
2.148 provides that the Commissioner may suspend a rule that is not a
requirement of the statute in an extraordinary situation, when justice requires
and no other party would be injured thereby.
Pursuant to 37 C.F.R.
§ 1.248, papers filed in the Patent and
Trademark Office which are required to be served shall contain proof of
service. Proof of service shall include the date and manner of service and may
be made by: (1) An acknowledgement of service by or on behalf of the person
served or (2) a statement signed by the attorney or agent containing the
required information.
No proof of service
accompanied petitioner's request for extension of time to oppose. The Trademark
Trial and Appeal Board acted properly by denying the request without proof of
service. The petitioner's failure because of inadvertence or distraction to
include proof of service on the applicant's authorized representative does not
constitute an extraordinary situation such that a requirement of Trademark Rule
2.102(c)(2) should be waived.
The petition is denied.
The application file will be forwarded to the Trademark Trial and Appeal Board
for action consistent with this decision.