The Board has re-designated as precedential its April 2001 decision dismissing an opposition to registration of the mark SPINTIRES for computer games and software. Opposer Saber Interactive alleged only one claim: nonownership. However, the opposed application was based on a request for extension of protection under the Madrid Protocol (Section 66(a)), and nonownership is not an available ground for opposition against an application not based on actual use. Saber Interactive Incorporated v. Oovee Ltd, Opposition No. 91248894 (April 2, 2021) (re-designated as precedential, June 1, 2022).

1201592a.jpg

Applicant Oovee moved for summary judgment on the ground that Saber was not entitled to a statutory cause of action. The Board put that motion aside, exercising its discretion to review Saber's claims to determine their sufficiency.

In opposing a Section 66(a) application, an opposer's claims must be listed on the ESTTA filing form. Trademark Rule 2.104(c), 37 C.F.R. § 2.104(c); see also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1963 (TTAB 2011). The opposition may not be amended to add an entirely new claim. Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b); see also O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010).

The only claim Opposer Saber included on the ESTTA form and in its pleading was nonownership under Section 1 of the Trademark Act. However, Board precedent holds that "[o]wnership of a mark arises through use of the mark." Therefore, a claim based on lack of ownership is not available when the application is not based on use of the mark in commerce. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, *5 (TTAB 2020) (application based on intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b)); see also Norris v. PAVE, 2019 USPQ2d 370880 (TTAB 2019).

An application under Section 66(a) is not based on use, but rather on an international registration owned by the applicant and a bona fide intent to use. Therefore, a claim based on lack of ownership is not available against Applicant Ovee's Section 66(a) application.

And so, the opposition was dismissed with prejudice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.