RISKING RIGHTS: Trademark Trial and Appeal Board Issues Ruling Regarding Defective Extensions and Notice of Opposition filed by Individuals Not Properly Qualified To Do So

In the recently decided case of Birlinn Limited v. Angus Stewart (TTAB Sept. 3, 2014), the Trademark Trial and Appeal Board (Board) issued a narrow holding that allowed an opposer to cure otherwise defective extensions and notice of opposition.

The Applicant, Angus Stewart, moved to dismiss the proceeding because the extension requests and notice of opposition were filed by a foreign attorney who was not authorized to practice before the U.S. Patent and Trademark Office (USPTO). The Board noted that the extensions and notice of opposition were filed by an individual who did not qualify as an “attorney” under Patent and Trademark Rule 11.1 or an “authorized representative” under Trademark Rules 2.101(b) and Rule 2.102(a) and Patent and Trademark Rule 11.14(b). The ultimate question was whether the defects could be cured.

The Board provided the opposer with an opportunity to cure the defects by submitting properly-signed extensions of time to oppose. An amended Notice of Opposition had already been filed by U.S. counsel. However, the Board cautioned that the holding was narrow and that if a person who is not authorized to practice before the USPTO has “knowingly engaged in unauthorized practice before the USPTO”, the outcome may very well be different.

The case has been designated as a precedent of the Trademark Trial and Appeal Board and will be a published decision. In light of this decision, it is questionable as to whether, in the future, foreign counsel will be able to realistically aver that he/she did not know that such acts constituted unauthorized practice before the USPTO. Even if cure is possible, it will be costly to defend against a motion to dismiss based on an assertion that the individual knowingly engaged in unauthorized practice.