IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Dean Garten, Serial No.. 77774835

Opposition No.. 91 194453

Mark: Fhigelbauer

Published in Official Gazette

on December 1, 2009
Applicant,

FILED VIA ESTTA

MOTION TO DISMISS FOR LACK OF SERVICE

AND SUPPORTING BRIEF

I, John Wilson, Applicant, respectfully move the Board pursuant to 37 C.F.R $2.119 and

Fed. R. Civ. P. 12(bX5), to dismiss the Notice of Opposition filed by Harold Dean Garten ("Mr.

Garten" or "Opposer") for lack of service. The grounds for this Motion to Dismiss are as

follows:

1. The record of the application states that the mark (Ser. No.77774835) was

published for opposition on December 1,2009, and that the opposition period, as last extended,

expired on March 31, 2010. Thus, the time for filing an opposition or further request for

extension of time to oppose appears to have expired on March 31,2010. Section 13 of the

Lanham Act and Trademark Rule 2.102(c).

 Z. Under the Trademark Trial and Appeal Board ("TTAB" or the "Board")

opposition and cancellation rules effective as of November 1. 2007, "A11 plaintiffs, including

concurrent use applicants, bear the same service obligations. Specifically' they must serve

copies by one of the methods provided in Trademark Rule 2.119,37 CFR 2.119."

3 . The Notice of Opposition filed on March 31, 2010 falsely states that Mr. Harold

Dean Garten "hereby certifies that a copy of this paper has been served upon all parties, at their

address record by Facsimile or email (by agreement only) on this date." The above statement is

false, and the Opposer failed to serve, in any way, a copy of the filed opposition as stated" and,

therefore, failed to comply with the service of process requirement (see accompanying

certification ("Wilson Cert.") attached as Exhibit "A"). Since the opposition period expired on

March 31" 2Ol0 (as extended), Opposer cannot remedy its oversight. Accordingly, this

opposition should be dismissed as a nullity.

4. S 2.119 Service and signing of papers (b), (6) Electronic transmission when

mutually agreed upon by the parties. No agreement between Applicant and Opposer has been

made to accept electronic transmission of service.

5. This case is similar to Springfield, Inc. v. XD,2008 TTAB Lexis 5;86 USPQ 2d

1063 (TTAB 2008). There, opposer filed a notice of opposition but did not serve a copy on

applicant. Opposer attempted to remedy its oversight by amending the notice of opposition to

indicate that it served a copy of the notice on applicant 19 days after the last day of the

opposition period (as extended). The board held that the opposer did not comply with the service

requirement. "Accordingly, opposer's notice of opposition should not have received a filing

date, and this proceeding should not have been instituted." (Sprirtgfield, Id). The board

dismissed the opposition as a nullity and forwarded the application for issuance of a notice of
allowance. Similarly, here" Opposer failed to comply with the service requirement within the

opposition period, which expired March 37,2070 (as extended). Attached as Exhibit "8" is the

Board's December 31, 2009 order approving the request to extend time to oppose. The order

also states that "the new rules require an opposer to provide proof of service of the notice of

opposition upon the applicant at the time the notice of opposition is filed . . . A notice of

opposition (or petition of cancellation) filed without a certificate of service will not be

instituted." Because the Opposer failed to serve Applicant with notice, and because Opposer

falsely claims that it did properly serve Applicant, the Board should thus dismiss this opposition

as a nullity and forward Mr. Wilson's application (Ser. No.77774835) for issuance of allowance.

This case is also similar to Schott AG v. L'Wren Scott, 88 USPQ2d 1862 (TTAB

2008) [precedential]. "Thus, because the rules now require that the opposer . . . serve the notice

of opposition by forwarding a copy thereof to the applicant, opposer has clearly failed to

satisfy the service requirements . . ." Thereflore, "because the original notice[s] of opposition

.. . [wasl not properly served in a timely manner. . . the opposition[s] must be dismissed as

a nullity." (PRECEDENT OF THE TTAB Schott AG v. L'W'ren Scott)

WHEREFORE, I, Applicant, John Wilson" respectfully request that this opposition be

dismissed and application Serial No.77774835 be forwarded for issuance of allowance.

Respectfully,

Dated. Apr1|20,2010
 CERTIFICATE OF SERVICE

I, John Wilson, Applicant, herby certify that I caused a copy of the foregoing MOTION

TO DISMISS FOR LACK OF SERVICE AND SUPPORTING BRIEF, together with exhibits,

to be served by certified, first-class mail addressed upon Opposer:

Mr. Harold Dean Garten

684 Archwood Avenue
Breq CA 92821

this 20th day of April,2010.

V
John Wilson
Applicant

4
 EXHIBIT 56A''

CERTIFICATION OF JOHN WILSON, APPLICANT

I, John Wilson, Applicant, hereby certify that I have not received service of Opposition to

Oppose from Harold Dean Garten as required by the Trademark Trial and Appeal Board

opposition and cancellation rules effective as of November 1, 2007 (Trademark Rule 2.II9,37

cFR 2.11e).

As of today, April 20,2010,I am unaware of any proper attempts by Opposer to effect

service of process on me, John Wilson, Applicant.

I certify under penalty of perjury under 28 U.S.C. $ 1746 that the foregoing is true and

correct.

Dated: April20, 2010

EXHIBIT 55B''
 UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Mr. Harold D Garten

684 Archwood Ave

Brea, CA 92821

Mailed: December 31, 2009

Serial No.: 77774835

ESTTA TRACKING NO: ESTTA324872

The request to extend time to oppose is granted until

1/30/2010 on behalf of potential opposer Mr.HaroldDGarten

Please do not hesitate to contact the Trademark Trial and

Appeal Board at (571)272-8500 if you have any questions
relating to this extension.

New Developments at the Trademark Trial and Appeal Board

TTAB forms for electronic filing of extensions of time to

oppose, notices of opposition, petition for cancellation, notice
of ex parte appeal, and inter partes filings are now available
at http://estta.uspto.gov. Images of TTAB proceeding files can
be viewed using TTABVue at http://ttabvue.uspto.gov.

TRADEMARK TRIAL AND APPEAL BOARD RULE CHANGES

The USPTO has issued new rules pertaining to TTAB

proceedings. Parties are urged to familiarize themselves
with the new rules.

Among other changes, for any notice of opposition filed on

or after November 1, 2007, the new rules require an opposer
to provide proof of service of the notice of opposition
upon the applicant at the time the notice of opposition is
filed. Trademark Rule 2.101. (Parallel amendments to
Trademark Rule 2.111 require a petitioner to include proof
of service of the petition for cancellation.) Service may
be made by any of the means set out in Trademark Rule
2.119(b). A certificate of service is adequate proof of
service; service by a process server is not necessary. A
notice of opposition (or petition for cancellation) filed
without a certificate of service will not be instituted.

The notice of final rulemaking and a chart summarizing the

changes contained in the notice are available for viewing
on the TTAB web page:

www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf