TTAB: Stipulation for E-mail Service Cannot Retain First-Class Mail Service Response Time | Practical Law

TTAB: Stipulation for E-mail Service Cannot Retain First-Class Mail Service Response Time | Practical Law

The Trademark Trial and Appeal Board (TTAB) rejected a proposed stipulation that would have allowed the parties to an opposition proceeding to accept service by e-mail but retain the five additional days afforded under Trademark Rule 2.119(c) to file and/or serve any responsive documents that would be provided if the original filing was served by first-class mail.

TTAB: Stipulation for E-mail Service Cannot Retain First-Class Mail Service Response Time

by PLC Intellectual Property & Technology
Published on 08 Apr 2013 • USA (National/Federal)
The Trademark Trial and Appeal Board (TTAB) rejected a proposed stipulation that would have allowed the parties to an opposition proceeding to accept service by e-mail but retain the five additional days afforded under Trademark Rule 2.119(c) to file and/or serve any responsive documents that would be provided if the original filing was served by first-class mail.
In this opposition proceeding before the Trademark Trial and Appeal Board (TTAB), the parties, McDonald’s Corp. and Cambrige Overseas Development Inc., filed a stipulation to accept service by e-mail but retain the five additional days afforded under Trademark Rule 2.119(c) to file and/or serve any responsive documents that would be provided if the original filing was served by first-class mail.
In its precedential decision, mailed March 28, 2013, the TTAB rejected this stipulation holding that if parties have stipulated to service by e-mail, they may not also take advantage of the five additional days for service provided under Trademark Rule 2.119(c). In reaching its decision the TTAB:
  • Cited USPTO comments to the 2007 final rule implementing various changes to the Trademark Rules of Practice.
  • Noted that by stipulating to accept service by e-mail but retain the five additional days for service provided under Trademark Rule 2.119(c), the parties impermissibly circumvented Rule 2.119(c) because parties may avail themselves of the additional five days for service afforded under Rule 2.119(c) only if the original filing to which a response is required was served by first-class mail, Express Mail or by overnight courier.
  • Found that the proposed stipulation would violate Trademark Rule 2.127 which provides that the time for filing reply briefs and motions under Federal Rule of Civil Procedure 56(d) will not be extended.
The TTAB suggested an alternative stipulation that would be accepted, where the parties stipulate to accept service by first-class mail but also to serve simultaneously a courtesy e-mail copy of any filing.