Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SOCIETE DES PRODUITS NESTLE, S.A., SUBSTITUTED FOR NESTLE ITALIANA
S.P.A., BY MERGER WITH P. SASSO & FIGLI S.P.A.
BASSO FEDELE & FIGLI, SOCIETA A RESPONSABILITA LIMITATA
Opposition No. 81,098
July 27, 1992
Before Sams, Rice and Quinn
By the Board:
J.D. Sams, J.E. Rice and T.J. Quinn
This case now comes up on opposer's motion for substitution of the party plaintiff, and on opposer's motion to suspend proceedings and to hold applicant's application abandoned (both motions filed May 15, 1992).
We turn first to opposer's motion for substitution. Opposer filed a photocopy of the assignment of opposer's rights in its pleaded trademark to Societe des Produits Nestle, S.A. Accordingly, and inasmuch as applicant has not objected thereto, opposer's motion for substitution is granted, and Societe des Produits Nestle, S.A. is hereby substituted as the party plaintiff. See Fed.R.Civ.P. 25(c) and Trademark Rules 2.127(a) and 2.186.
The Board notes that the substituted party opposer filed a new power of attorney and appointment of a domestic representative. In accordance therewith, correspondence in connection with this proceeding will be addressed to the attorney appointed by the substituted party opposer.
We turn now to opposer's motion to suspend and to hold applicant's involved application (Serial No. 73/686,355) abandoned. Opposer essentially argues that the application involved herein must be deemed abandoned by operation of law, because applicant failed to make a timely response to an Office action during the ex parte prosecution of the application. Specifically, opposer contends that the Trademark Examining Attorney mailed a first Office action in application Serial No. 73/686,355 on January 5, 1988 and that, under Section 12(b) of the Trademark Act and Trademark Rule 2.65(a), a response was due on or before July 5, 1988. Applicant's response to the January 5, 1988 Office action was filed August 5, 1988, with a cover letter from applicant's attorney asking the Trademark Examining Attorney's indulgence for applicant's delay in responding. The Trademark Examining Attorney sent a second Office action on September 27, 1988, without comment as to the lateness of applicant's response. Opposer requests that the application be held abandoned and the opposition be dismissed without prejudice.
Applicant argues that opposer lacks standing to challenge the ex parte prosecution of an application; that the Trademark Examining Attorney is allowed discretion to reconsider a holding of abandonment; and that it is judicially wasteful to hold applicant's application abandoned when applicant will reapply, and the parties will be back before the Board.
Section 12(b) of the Trademark Act of 1946 and Trademark Rules 2.62 and 2.65(a) are clear that an applicant has six months to respond to an Office action, and failure to do so in a timely manner results in the abandonment of the application as a matter of law. It is not within the jurisdiction of the Trademark Examining Attorney, or even the Commissioner, to waive any provision of the Trademark Act. We have no way of knowing whether the Trademark Examining Attorney noticed that applicant's August 5, 1988 response was late. In any event, applicant's application Serial No. 73/686,355 became abandoned on July 5, 1988 for failure of applicant to respond within six months to the January 5, 1988 Office action. See In re Sooner Life Insurance Company, 207 USPQ 948 at 952 (TTAB 1980). See also TBMP Section 1112.02.
*2 An application abandoned prior to the filing of an opposition is not subject to opposition. Where, as here, a prior abandonment for failure to make a timely response is discovered during the course of an opposition, the opposition is moot unless the applicant files a petition to revive under Trademark Rule 2.66, and the petition is granted. [FN1]
Opposer's motion is granted to the extent that application Serial No. 73/686,355 is deemed abandoned as of July 5, 1988; applicant is allowed thirty days from the mailing date hereof in which to file a petition to revive, if it so desires, and to advise the Board as to whether such a petition has been filed; and proceedings herein are otherwise suspended. If a petition to revive is filed, proceedings herein will remain suspended pending determination of the petition. If no petition is filed, or if a petition is filed but denied, the opposition will be dismissed without prejudice.
Members, Trademark Trial and Appeal Board
FN1. If a prior abandonment for failure to make a timely response is discovered at a time reasonably contemporaneous with the filing of a notice of opposition, the opposition will not be instituted, and the opposition fee will be refunded. In the instant case, the opposition has been pending for nearly three years, and, at the time when opposer filed its motion to suspend and to hold the application abandoned, opposer's testimony period was about to commence.