TTAB Dismisses Notice of Opposition Filed By Employer When Only Employee Obtained Extension Of Time

In a precedential decision, the TTAB granted a motion to dismiss a notice of opposition filed by an employer because only the employee had obtained an extension of time to oppose.  The case is Warren Distribution, Inc. v. Royal Purple, LLC (Opposition No. 91214792, Aug. 10, 2015).

Jennifer Wehrman requested an extension of time to oppose Royal Purple’s trademark application, identifying herself as “an individual citizen of [the] United States.”  Within the extension period, Wehrman’s employer, Warren Distribution, Inc. (“WDI”), filed a notice of opposition identifying itself, instead of Wehrman, as the opposer.  Royal Purple filed a motion to dismiss for lack of subject matter jurisdiction, arguing that WDI was not the entity to whom the extension was granted.

Under Trademark Rule 2.102(b), an opposition filed by a party other than the one who received an extension of time is permissible if the opposer can show that either: (1) it is in privity with the party granted the extension; or (2) the party who requested the extension was inadvertently misidentified.

WDI argued that it was in privity with Wehrman because: (1) Wehrman was an employee of WDI and was authorized to file the extension on WDI’s behalf; (2) she acted on behalf of WDI; (3) she intended to file the extension on behalf of WDI; and (4) she identified herself as acting on WDI’s behalf by using her business address, email address, and phone number on the extension request.  The Board rejected these arguments, citing century-old precedent holding that employment by itself is insufficient to establish privity.

WDI also argued that Wehrman was identified by mistake.  The Board did not find this argument persuasive because the extension request identified Wehrman as an individual citizen.  This was not a situation where the mistake was in the form of the potential opposer’s name or its entity type, but rather a situation where the extension request identified a completely different legal entity.

The Board therefore dismissed the opposition without prejudice for lack of subject matter jurisdiction.  The Board noted that WDI might have a remedy by filing a petition for cancellation after the issuance of Royal Purple’s registration.

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