On December 19, 2014, in Prosper Business Development Corp. v. International Business Machines, Corp., the Trademark Trial and Appeal Board (TTAB) issued a precedential decision granting opposer Prosper Business Development Corp.'s motions to file second and third amended notices of opposition to IBM's application seeking to extend protection of an international registration under the Madrid Protocol as implemented under Section 66(a) of the Lanham Act (15 U.S.C. § 1141f(a) (Madrid Protocol or Section 66(a)). The TTAB ruled that Prosper could amend its notice of opposition to assert any grounds it included in the electronic form that accompanied its initial notice.

IBM owns an international registration for the mark BIGINSIGHTS and sought to extend its protection of this registration to the US in International Classes 9, 35 and 42 under the Madrid Protocol. After IBM's mark was published for opposition, Prosper opposed IBM's registration of the mark through the USPTO's Electronic System for Trademark Trials and Appeals (ESTTA). The opposition consisted of:

Under 15 U.S.C. § 1141h(b)-(c), the grounds for the opposition contained in the electronic form were forwarded to the World Intellectual Property Organization's International Bureau (IB), which administers Madrid Protocol applications.

In the ESTTA opposition form, Prosper opposed registration of IBM's mark for all classes of goods and services in the application based on:

In its electronic opposition form, Prosper did not specify which claim or claims pertained to which international classes.

However, in the pleading that the TTAB requires be attached to the electronic form (Trademark Trial and Appeal Board Manual of Procedure § 110.09(c)(1)), Prosper pleaded:

Before IBM filed an answer, Prosper filed a first amended notice of opposition in which it maintained its opposition to registration of IBM's mark in all three classes, but based this opposition solely on Section 2(d). Later the same day, Prosper filed a second amended notice of opposition. The second amended notice provided additional details beyond the first amended notice, and was also:

Because IBM had not yet answered, the TTAB accepted Prosper's first amended notice as the operative complaint. However, the TTAB determined that the second amended notice was not properly before it because Prosper had neither obtained IBM's written consent nor filed a motion for leave to file a second amended complaint.

As a result, Prosper filed a motion for leave to file its second amended notice of opposition. It then moved to file a third amended notice of opposition that was identical to the proposed second amended notice except for Prosper's allegation of different dates of first use.

In response to Prosper's motions to amend, IBM argued that Prosper was improperly attempting to add Section 2(d) claims against IBM's application in International Classes 9 and 42. Prosper replied that its second amended notice only amplified or clarified its properly-pleaded grounds for opposition.

In its decision, the TTAB explained that in Section 66(a) oppositions, which are filed through ESTTA, the electronic form requires the opposer to enter the information necessary for the TTAB to institute the proceeding. The form must include the grounds for opposition. Once the form is completed, the ESTTA system automatically transmits the completed form, including the stated grounds for opposition, to the IB.

The grounds for opposition are also required to be explained in an attached pleading. However, the automated system does not send a copy of this pleading to the IB.

After transmission to the IB, the party opposing a Section 66(a) application may not amend its opposition to add:

Therefore, because in oppositions to Section 66(a) applications the IB is notified of the grounds of the opposition by the contents of the ESTTA electronic opposition form and not the actual pleading, the ESTTA electronic opposition form, not the pleading, controls the scope of permissible amendments to the claims in these oppositions.

Having so noted, the TTAB ruled that, because Prosper's notice of opposition, as transmitted to the IB, listed Sections 2(d) and 43(c) as grounds for opposition, and were not limited to specific classes, Prosper could properly seek to amend its opposition to any of those classes. The TTAB further noted its general policy of liberally granting leave to amend pleadings at any stage when justice so requires, unless entry of the proposed amendment would:

Because IBM identified neither prejudice it would suffer from Prosper's amendment nor any violation of settled law, the TTAB granted Prosper's motion to file a second amended notice of opposition.

The TTAB also granted Prosper's motion to file a third amended notice of opposition, though IBM argued that the motion was untimely because the Board had suspended consideration of any new motions while it reviewed Prosper's earlier motion. The TTAB concluded the motion to file the third amended notice was relevant to the proceeding because it only amended Prosper's alleged dates of first use, and was otherwise identical to the proposed second amended notice.

This TTAB decision makes clear that, for oppositions to Madrid Protocol Section 66(a) applications, it is solely the grounds for opposition set out in an ESTTA opposition form that: