"The trouble with being punctual is that there`s nobody there to appreciate it." Franklin Pierce Jones may have said this, but my friends probably feel the same way. Timing does matter, though. This is most recently illustrated in the trademark context by 3PMC LLC v Huggins, Opp. No. 91219982 (TTAB Jul. 24, 2015). Had the applicant filed just a day later, or the opposer a day earlier, the outcome would have been different.
Huggins' application published for opposition on September 2, 2014. On December 31, 2014, 3PMC filed a notice of opposition with the TTAB. That same day, Huggins filed an express abandonment of the application with the PTO. Initially, the TTAB entered judgment against Huggins because he had abandoned the application after an opposition proceeding began without the opposer's consent. Huggins then moved the TTAB for relief from judgment arguing that his express abandonment preceded the 3PMC's filing of the notice of opposition so the opposition should have been dismissed.
Ultimately, the TTAB granted Huggins' motion and affirmed its earlier precedent, saying the TTAB will not take cognizance of fractions of a day. In other words, filings that occur on the same day are generally deemed to have occurred at the same time. Although the rule had been established in the age of paper filings and these filings were performed electronically, abiding by the rule still makes sense. The electronic filings are made in two systems (abandonment through TEAS and notice of opposition through ESTTA). Processing is not always automatic; sometimes manual processing is required. Furthermore, the systems are not updated instantaneously, so even though it seems the notice of abandonment had been filed first, the TTAB's electronic filing system did not necessarily have the benefit of that information right away. In reaching its decision, the TTAB considered, but remained unpersuaded by 3PMC's arguments that the equities favored allowing the original decision to stand. The TTAB did, at least, refund the 3PMC's fee.
In the end, the TTAB dismissed the opposition without prejudice. This seems like the most just decision, especially in light of the difficulty in determining which event occurred first in the parallel electronic filing systems. Also, the prejudice the applicant would suffer had the TTAB adhered to its original decision seems greater than the prejudice claimed by 3PMC. While 3PMC may face disputes with Huggins down the road and have to monitor Huggins' actions more closely, had the TTAB adhered to its original decision, Huggins would have received an unfavorable judgment with prejudice based on actions he appeared to take without any knowledge that 3PMC was filing the notice of opposition.
Charles Dickens admonished "never do tomorrow what you can do today. Procrastination is the thief of time." In light of this case, trademark attorneys may want to take this to heart if they receive instructions to abandon an application or file a notice of opposition during the opposition period.