Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CASS LOGISTICS INC.
MCKESSON CORPORATION DBA MCKESSON TRANSPORTATION SYSTEMS
Opposition No. 87,549
April 27, 1993
Before Sams, Rice and Simms
By the Board:
J.D. Sams, J.E. Rice and R.L. Simms
This case now comes up on applicant's motion, filed November 2, 1992, to dismiss the opposition. Applicant urges, essentially, that the Board has no jurisdiction to consider the opposition, because it was not timely filed. [FN1] Opposer filed a brief in response to the motion on November 19, 1992 and applicant filed a reply thereto.
As background for this matter, on December 11, 1991, a party identified as "Public Safety Equipment, Inc." (hereinafter "Public") filed a timely request for an extension of time to oppose the application involved in this proceeding. The Board granted the extension of time. [FN2] On January 14, 1992, a party identified as "Cass Logistics, Inc." (hereinafter "Cass") filed a second request for an extension of time to oppose.
The Board, in a letter mailed February 21, 1992, noted the difference in the identities of the parties who filed the respective extension requests, and allowed the potential opposer until March 23, 1992, to explain the discrepancy. The Board, citing Trademark Rule 2.102(b), indicated that, if the potential opposer had been misidentified through mistake, or if a relationship existed between Cass and Public, the request for an extension of time would be given further consideration.
In response to the Board's March 23, 1992 letter, counsel for Cass asserted that Cass was "misidentified through an inadvertent mistake as Public Safety Equipment, Inc." in the original extension request and that Cass is the owner of Registration No. 1,630,687 for the mark upon which potential opposer intends to rely in the opposition. Counsel for Cass explained further that:
Counsel for ... Cass Logistics, Inc., also represents Public Safety Equipment, Inc., on an unrelated matter. The misidentification of the potential opposer as Public Safety Equipment, Inc. resulted from a word processing error, in that another pleading involving Public Safety Equipment, Inc. was used as a model for the Request for Extension of Time in the instant proceeding. Public Safety Equipment, Inc. was inadvertently left on the revised pleading in lieu of Cass Logistics, Inc.
On the basis of this explanation, the Board, in a letter mailed April 28, 1992, granted the January 14, 1992 extension request. In the interim, Cass filed two additional extension requests, which the Board also granted. Prior to the expiration of the last of those extensions, Cass filed a notice of opposition.
The Board, in a notice to the parties advising them of the institution of this proceeding, allowed applicant time to file an answer to the notice of opposition. Applicant filed a timely answer, and the Board issued a trial order setting discovery and trial dates.
We turn, then, to applicant's motion to dismiss. By its motion, applicant requests that the Board dismiss the opposition on the ground that Cass failed either to file a proper notice of opposition within 30 days of publication of the mark or to request properly an extension of time to oppose. Applicant contends that the misidentification of potential opposer as Public was not a "mistake," within the meaning of Trademark Rule 2.102(b), and that, because there is no claim that Public and Cass are related or in any way in privity, the Board has no jurisdiction to entertain the opposition.
*2 In its brief in opposition to the motion, opposer asserts, among other things, that the initial extension request was filed "on behalf of" Cass; that the Board's approval of the first extension request in which Cass was misidentified was proper; that Cass complied with the statutory requirement by filing a first request for extension within 30 days of the publication of the subject mark; that neither Section 13 of the Trademark Act nor Trademark Rule 2.102 limits the Commissioner's discretionary authority (as exercised by the Board) to approve extensions of time; that neither the statute nor the rule limits the type of "mistake" that may be rectified by subsequent explanation; that Rule 2.102 permits the correction of a name far beyond a minor variation in the form of an omission or an addition; that applicant has not been prejudiced by the acceptance of Cass's various requests and notice of opposition; that dismissal of the opposition at this point will result in unnecessary expense to both parties; and that granting this motion will force Cass to resort to a cancellation proceeding, which will make no substantive difference but will merely delay and increase the expense of the outcome of this conflict.
In its reply, applicant asserts that opposer's subjective intent to file the first request on behalf of Cass does not excuse the mistake; that opposer has cited no authority permitting substitution of a completely unrelated party as the "real party in interest" in an opposition; and that Cass will not be unfairly prejudiced were this opposition to be dismissed, because it is still early in the proceeding and Cass still has the option to petition to cancel the registration that will be issued to applicant.
Trademark Rule 2.102(b) provides, in relevant part:
Any opposition filed during an extension of time should be in the name of the person to whom the extension was granted, but an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time. (Emphasis added).
Opposer has not attempted to assert that Public and Cass are related entities or in any way in privity. In fact, opposer has stated that Public and Cass are two separate unrelated legal entities. Therefore, the sole question before us is whether the misidentification of Public is a type of mistake contemplated by Rule 2.102(b), such that the Board may entertain the opposition filed by Cass.
The term "mistake", within the context of the rule, means a mistake in the form of the potential opposer's name or its entity type. The term "mistake" does not encompass the recitation of a different existing legal entity that is not in privity with the party that should have been named. See TMEP section 1503.04(d). Arbrook, Inc. v. La Citrique Belge Naamloze Vennootschap, 184 USPQ 505 (TTAB 1974); Cf.: Davidson v. Instantype, Inc., 165 USPQ 269 (TTAB 1970); Pyco, Inc. v. Pico Corp., 165 USPQ 221 (TTAB 1969); and Raker Paint Factory v. United Lacquer Mfg. Corp., 141 USPQ 407 (TTAB 1964). Cf. also: In re Atlantic Blue Print Co., 19 USPQ2d 1078 (Comm'r.1990): In re Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982); In re Cooper, 209 USPQ 670 (Comm'r.1980); Argo & Co., Inc. v. Springer, 198 USPQ 626 (TTAB 1978); In re Eucryl Ltd., 193 USPQ 377 (TTAB 1978); and U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613 (Comm'r.1974).
*3 An extension of time to oppose is a personal privilege, inuring only to the benefit of the party to which it was granted or a party shown to be in privity therewith. A party cannot claim the benefit of an extension granted to another (unrelated) party. This is so even in those cases where the two parties, although not in privity with one another, share the same objection to the issuance of a registration to applicant. [FN3] See In re Cooper, supra.
Under the circumstances, the Board erred in granting Cass's requests for extensions of time to oppose, and Cass's notice of opposition was, therefore, not timely filed. Applicant's motion to dismiss is granted, because the Board has no jurisdiction to entertain it. The opposition is dismissed without prejudice to Cass's right to file a petition for cancellation, if otherwise appropriate.
Members, Trademark Trial and Appeal Board
FN1. The motion was filed as one for "summary judgment," but the Board is treating it as a motion to dismiss for lack of jurisdiction.
FN2. Trademark Rule 2.102(c) (as amended, effective February 27, 1983, by a final rule noticed published in the Federal Register on January 27, 1983 at 48 FR 3972) embodies a delegation of authority from the Commissioner to the Board to grant, ex parte, extensions of time to oppose. That, in a given case, the Board has exercised this delegated ex parte authority by granting an extension of time to oppose does not preclude an applicant from later raising, in an inter partes opposition proceeding, the correctness of that exercise of delegated authority. And the appropriate means for raising such an issue is a motion to dismiss the opposition for lack of jurisdiction.
FN3. Opposer argues, pursuant to Fed.R.Civ.P. 17(a), that Cass is the real party in interest and that, therefore, the substitution of Cass as opposer in this proceeding should be permitted. The purpose of requiring actions to be prosecuted in the name of the real party in interest is for the benefit and protection of the defendant, to enable the defendant to present its defenses against the proper party. Here opposer seeks to invoke Rule 17(a) for its own benefit, to circumvent the statutory time frame for filing a proper notice of opposition.