Board Rules “All Is Not Lost.” Sometimes Defective Filings By Unqualified Agents Can Be Cured

Author: Julia Anne Matheson

In its September 3, 2014 precedential decision in Birlinn Limited v. Angus Stewart, the Board held that the filing of extensions of time to oppose and a notice of opposition by a party not authorized to practice before the TTAB did not necessitate the dismissal of the action.

The Trademark Trial and Appeal Board’s Manual of Procedure (the “TBMP”) includes specific provisions detailing who is qualified to practice before the Board. See, e.g., Sections 114.01 – 06. Where the Board becomes aware of filings by an unauthorized individual, Section 114.06 requires the Board to notify the filer of the defect, and to require the filing be resubmitted by an authorized party or attorney/agent.

In Birlinn, Applicant filed a Rule 12(b)(5) motion seeking dismissal of an opposition where the two extension requests and subsequent notice of opposition were filed by a foreign attorney not authorized to practice before the Board. Opposer, in response to the motion to dismiss, file an amended notice of opposition and an opposition to the motion using an authorized U.S. attorney. Applicant argued that the amended opposition was untimely and therefore the action should be dismissed.

The Board noted TBMP Rules 2.102(a) and 2.101(b), which address who may file extension requests and oppositions, do not specify that filings that are not properly signed are null and void. And, indeed, Rule 2.119(e) allows a party to cure the defect of a lack of signature for any inter partes filing with the Board, suggesting that the same leniency should likewise apply where a paper is filed by a person not authorized to practice before the USPTO. The Board also noted that Rule 2.119(e) does not require that the signature defect be cured within the original time limit for filing, but rather only within the time limit specified in the subsequent notification of defect.

Noting that the Opposer had filed an amended notice of opposition through a proper representative, but had not filed amended extension requests, the Board gave Opposer twenty days to do so. In issuing its ruling the Board noted the absence of any evidence of intentional misconduct, but emphasized that its ruling was limited to the particular facts.

While limited to its facts, the decision reflects the Board’s leniency in allowing for the correction of minor technical defects in pleadings where intentional misconduct is absent.


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