TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
Third Edition 1st Rev. June 2012
Chapter 300 PLEADINGS
(See all of Chapter 300 at NoticeOfOpposition.com)
TBMP 311 Form and Content of Answer
TBMP 311.02 Substance of Answer
TBMP 311.02(b) Affirmative Defenses
TBMP 311.03 Reply to Answer Should Not be Filed
TBMP 311 Form and Content of Answer
TBMP 311.01 Format for Answer
37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
(1) A paper submission must be printed in at least 11-
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
(b) Submissions may be made to the Trademark Trial and Appeal Board electronically
via the Internet where the rules in this part or Board practice permit, according
to the parameters established by the Board and published on the web site of the Office.
Text in an electronic submission must be in at least 11-
(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.
An answer to a notice of opposition or petition to cancel corresponds to an answer to a complaint in a court proceeding. [Note 1.]
The form of an answer must meet the general requirements for submissions to the Board
set forth in 37 CFR § 2.126. See TBMP § 106.03. If an answer is filed electronically
through ESTTA, the text in the electronic submission must be in at least 11-
A party may no longer make submissions in CD-
NOTES:
1. See 37 CFR § 2.116(c).
2. See 37 CFR § 2.126(b).
3. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b).
TBMP 311.01(a) Format for Answer
An answer need not follow a particular format, as long as the answer meets the requirements for the particular type of submission to the Board (37 CFR § 2.126(a) for paper and 37 CFR § 2.126(b) for electronic filings through ESTTA), and otherwise includes the necessary information. The format for an answer is similar to a complaint and should include the following information:
An answer should bear at its top the heading “IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD,” followed by the name of the proceeding (e.g., “ABC Corporation v. XYZ Company”), the proceeding number (e.g., “Opposition No. 91156789” or “Cancellation No. 92042567”), and a title describing the nature of the paper (e.g., “ANSWER,” “ANSWER AND COUNTERCLAIM,” etc.). Cf. TBMP § 309.02(a).
Substance of answer: The answer must contain admissions and/or denials of the allegations in the complaint and may include any defenses to those allegations. See TBMP § 311.02.
Signature: The answer must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for defendant, defendant (if defendant is an individual), partner of defendant (if defendant is a partnership), officer of defendant identified by title (if defendant is a corporation), etc. See TBMP § 311.01(b).
TBMP 311.01(b) Signature of Answer
An answer need not be verified, but it must be signed. Electronic signatures pursuant to 37 CFR § 2.193(c) are required for answers submitted electronically via ESTTA. The signature may be made by the defendant or by the defendant's attorney or other authorized representative. [Note 1.] See TBMP § 106.02.
The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [Note 2.] Thus, a defendant’s (or its attorney’s or other authorized representative’s) electronic signature on the ESTTA filing form serves as its signature for the entire answer being filed, even when there is no signature on any attachment to the filing form. [Note 3.]
If a defendant signing for itself is an individual, the individual must make the signature. If defendants are joint applicants of the involved mark, each defendant must sign a combined, single answer. [Note 4.] If a defendant signing for itself is a partnership, a partner must make the signature. If a defendant signing for itself is a corporation, association, or similar juristic entity, the signature must be made by an individual who is an officer of defendant and who is authorized to represent it. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as defendant, if defendant is an individual; as counsel for defendant; as a partner of defendant, if defendant is a partnership; as an officer of defendant identified by title, if defendant is a corporation; etc.).
Although an answer must be signed, an unsigned answer will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [Note 5.] See TBMP § 106.02.
NOTES:
1. See 37 CFR § 2.119(e).
2. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board.”). See also Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (“[T]he ESTTA generated filing form … is considered part of the plaintiff's initial pleading”).
3. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005).
4. Cf. TMEP § 712 (a response to an Office action by joint applicants who are not represented by an attorney must be signed by each of the applicants, since they are individual parties and not a single entity).
5. See 37 CFR § 2.119(e).
TBMP 311.01(c) Filing and Service of Answer
One copy of the answer, and any exhibits thereto, must be filed with the Board. Another copy of the answer, with any exhibits thereto, must be served by the defendant upon the attorney for the plaintiff, or on the plaintiff if there is no attorney. The answer must bear proof (e.g., a certificate of service, consisting of a statement signed by the filing party, or by its attorney or other authorized representative, clearly stating the date and manner in which service was made) that such service has been made before the paper will be considered by the Board. [Note 1.] See TBMP § 113.
For information on the time for filing an answer, see TBMP § 310.03.
NOTES: 1. See 37 CFR § 2.119(a).
TBMP 311.02 Substance of Answer
37 CFR § 2.106(b)(1) An answer shall state in short and plain terms the applicant's defenses to each claim asserted and shall admit or deny the averments upon which the opposer relies. If the applicant is without knowledge or information sufficient to form a belief as to the truth of an averment, applicant shall so state and this will have the effect of a denial. Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall be followed. A reply to an affirmative defense need not be filed. When a defense attacks the validity of a registration pleaded in the opposition, paragraph (b)(2) of this section shall govern. A pleaded registration is a registration identified by number and date of issuance in an original notice of opposition or in any amendment thereto made under Rule 15, Federal Rules of Civil Procedure.
37 CFR § 2.106(b)(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.
(ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
37 CFR § 2.114(b)(1) An answer shall state in short and plain terms the respondent's defenses to each claim asserted and shall admit or deny the averments upon which the petitioner relies. If the respondent is without knowledge or information sufficient to form a belief as to the truth of an averment, respondent shall so state and this will have the effect of a denial. Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall be followed. A reply to an affirmative defense need not be filed. When a defense attacks the validity of a registration pleaded in the petition, paragraph (b)(2) of this section shall govern. A pleaded registration is a registration identified by number and date of issuance in an original petition for cancellation or in any amendment thereto made under Rule 15, Federal Rules of Civil Procedure.
(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.
(ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
37 CFR § 2.133(d) A plaintiff's pleaded registration will not be restricted in the absence of a counterclaim to cancel the registration in whole or in part, except that a counterclaim need not be filed if the registration is the subject of another proceeding between the same parties or anyone in privity therewith.
TBMP 311.02(a) Admissions and Denials
The defendant should not argue the merits of the allegations in a complaint but rather should state, as to each of the allegations contained in the complaint, that the allegation is either admitted or denied. [Note 1.] If the defendant does not have sufficient information to admit or deny an allegation, the defendant may so state, and this statement will have the effect of a denial as to that allegation. If the complaint consists of numbered paragraphs setting forth the basis of plaintiff’s claim of damage, the defendant's admissions or denials should be made in numbered paragraphs corresponding to the numbered paragraphs in the complaint.
A denial of an allegation should fairly meet the substance of the allegation denied, and may take any of the forms described in Fed. R. Civ. P. 8(b). [Note 2.] An answer that fails to deny a portion of an allegation may be deemed admitted as to that portion. See Fed. R. Civ. P. 8(b)(6). Thus, if a defendant intends in good faith to deny only a part or a qualification of an allegation, the defendant should admit so much of the allegation as is true and material and should deny only the remainder. If a defendant intends in good faith to controvert all of the allegations contained in a complaint, including the jurisdictional grounds, the defendant may do so by general denial, subject to the obligations set forth in Fed. R. Civ. P. 11 (for a discussion of Fed. R. Civ. P. 11 in relation to pleadings, see TBMP § 318). If a defendant does not intend in good faith to controvert all of the allegations contained in a complaint, the defendant may make its denials as specific denials of designated allegations or paragraphs, or may generally deny all the allegations except those designated allegations or paragraphs which are expressly admitted. [Note 3.]
In the absence of a general denial of the allegations in a complaint, admissions or denials should be made in numbered paragraphs corresponding to the numbered paragraphs in the complaint.
NOTES:
1. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); Fed. R. Civ. P. 8(b); Hewlett-
2. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1). See also, Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982) (regarding equivocal admissions or denials).
3. See Fed. R. Civ. P. 8(b)(3) and 8(b)(4).
TBMP 311.02(b) Affirmative Defenses [More on Affirmative Defenses]
An answer may also include a short and plain statement of any defenses, including affirmative defenses that the defendant may have to the claim or claims asserted by the plaintiff. [Note 1.] Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration (Morehouse) defense, prior judgment, or any other matter constituting an avoidance or affirmative defense. [Note 2.] Such defenses may also include a pleading that defendant is at least entitled to a registration with a particular restriction (described in the pleading in sufficient detail to give plaintiff fair notice of the basis for the defense) [Note 3], except that geographic restrictions will be considered and determined by the Board only in the context of a concurrent use registration proceeding. [Note 4.] See TBMP Chapter 1100. Cf. TBMP § 514. A request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, must be made by way of motion under 37 CFR § 2.133 although the ground may also be raised as an affirmative defense in the answer (as originally filed, as amended or as deemed amended), by way of an allegation that sets forth the proposed restriction in detail and alleges that the restriction will avoid a likelihood of confusion and that plaintiff is not using the mark on the products or services being excluded from the registration. [Note 5.] See TBMP § 309.03(b). If the defendant offers to amend its identification of goods or services in its originally filed answer, because the Board does not typically review the answer at the pleading stage, the defendant should also file a motion with the Board in order to bring the matter to the Board’s attention for consideration. Pleading a restriction in the answer as originally filed, however, serves the purpose of putting plaintiff on early notice of the proposed restriction.
Equitable defenses may not be available against certain grounds for opposition or cancellation or under certain circumstances. For example, the availability of laches and acquiescence is severely limited in opposition and cancellation proceedings. In Board opposition proceedings, these defenses start to run from the time of knowledge of the application for registration (that is, from the time the mark is published for opposition), not from the time of knowledge of use. In Board cancellation proceedings, these defenses start to run from the date of registration, in the absence of actual knowledge before the close of the opposition period. [Note 6.] Moreover, for public policy reasons, the defenses of laches and acquiescence may not be available against claims such as genericness, descriptiveness, fraud, abandonment and functionality, and further, may not apply in a case of likelihood of confusion if it is determined in the case that confusion is inevitable. [Note 7.]
Similarly, the “prior registration” or Morehouse defense, an equitable defense in the nature of laches or acquiescence, [Note 8], is not available in all cases. [Note 9.] In addition, the Morehouse defense will not be applied where defendant's prior registration is on the Supplemental Register, or if the prior registration did not issue until after commencement of the proceeding in which it is asserted as a basis for this defense, or if plaintiff has petitioned to cancel the prior registration. [Note 10.]
Please Note: The “fair use” defense of Trademark Act § 33(b)(4), 15 U.S.C. § 1115(b)(4), is a defense available to a defendant in a federal action charged with infringement of a registered mark, [Note 11], and has no applicability in inter partes proceedings before the Board, which involve only the issue of registrability of a mark. [Note 12.] Further, the “noncommercial use” exception of Trademark Act § 43(c)(3)(C), 15 U.S.C. § 1125(c)(3)(C), does not apply in a Board proceeding involving a mark sought to be registered as a trademark or service mark, because an applicant seeking registration is necessarily relying on a claim of use of its mark, or intended use of its mark, in commerce. [Note 13.]
The elements of a defense should be stated simply, concisely, and directly. [Note 14.] However, the pleading should include enough detail to give the plaintiff fair notice of the basis for the defense. [Note 15.] When one of the special matters listed in Fed. R. Civ. P. 9 (including, inter alia, capacity, fraud, and judgment) is pleaded, the provisions of Fed. R. Civ. P. 9 governing the pleading of that special matter should be followed. [Note 16.]
A defendant may state as many separate defenses as it has, regardless of consistency; a defendant may also set forth two or more statements of a defense alternately or hypothetically, either in one count or in separate counts. [Note 17.] For example, an applicant whose application for registration has been opposed under Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground of opposer's alleged prior use of its mark, coupled with an allegation of likelihood of confusion, might deny that there is any likelihood of confusion with respect to its mark and goods as set forth in the application. At the same time, the applicant might plead alternatively that it actually uses its mark only on a specific type (identified in the pleading) of the goods covered by the broad identification in its application; that there is no likelihood of confusion with respect to applicant's actual goods; and that even if the Board ultimately finds that opposer is entitled to judgment with respect to applicant's goods as broadly identified, applicant would be entitled to a registration of its mark with a restricted identification reflecting the actual nature of its goods. [Note 18.] See TBMP § 309.03(d) and TBMP § 514.
When two or more statements are made in the alternative, the sufficiency of each
is determined independently; the fact that one of them may be insufficient does not
mean that the other(s) is (are) also insufficient. [Note 19.] Evidentiary matters
(such as, for example, lists of third-
The Board will not entertain a defense that attacks the validity of a registration pleaded by a plaintiff unless the defendant timely files a counterclaim or a separate petition to cancel the registration. [Note 21.] See TBMP § 313. Moreover, a defense which seeks to restrict a plaintiff's pleaded registration as, for example, by limiting the goods or services therein, or by deleting some of the goods or services, will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [Note 22.] See also TBMP § 309.03(d) (regarding claims for partial cancellation under Trademark Act § 18, 15 U.S.C. § 1068) and TBMP § 313 (regarding counterclaims). Geographic restrictions will be considered and determined by the Board only within the context of a concurrent use proceeding. [Note 23.] For further information on concurrent use proceedings, see TBMP Chapter 1100.
Although 37 CFR § 2.106(b)(2)(ii) and 37 CFR § 2.114(b)(2)(ii) specifically permit a defense attacking the validity of a plaintiff's pleaded registration to be raised either as a counterclaim or as a separate petition to cancel, the better practice is to raise the defense as a counterclaim. [Note 24.] If the defense is raised as a separate petition to cancel, however, the petition itself and any covering letter filed therewith should include a reference to the original proceeding. [Note 25.] See also TBMP § 313.
When a defense is raised by way of a counterclaim, it should not also be pleaded as an affirmative defense, because the pleading of it as an affirmative defense is unnecessary and redundant. [Note 26.]
NOTES:
1. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); Fed. R. Civ. P. 8(b).
2. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1). See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.4 (TTAB 2009) (affirmative defenses waived if not maintained in party’s trial brief); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283 (TTAB 2008) (comparison of marks for purposes of determining whether marks are essentially the same under the Morehouse doctrine); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995) (Fed. R. Civ. P. 12(b) permits a defendant to assert in the answer the “defense” of failure to state a claim upon which relief can be granted).
See, e.g., with respect to estoppel, Bausch & Lomb Inc. v. Karl Storz GmbH & Co.
KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (contractual and equitable estoppel); Tea Board
of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.6 (TTAB 2006) (licensee
estoppel); Freeman v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002)
(licensee estoppel); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d
1699, 1702 (TTAB 2002) (licensee estoppel); and M-
See, e.g., with respect to “Morehouse” defense, Morehouse Manufacturing Corp. v.
J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969) (that defendant already
owns a substantially similar registered mark for substantially similar goods and/or
services such that the second registration (or second registration sought) causes
no added injury to the plaintiff). See also O-
See, e.g., with respect to prior judgment, Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008) (claim of trademark invalidity, made before Board in cancellation proceeding, amounted to collateral attack on court’s judgment rendered in first action); International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492 (Fed. Cir. 2000) (res judicata); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000), (res judicata, claim preclusion); Boston Chicken Inc. v. Boston Pizza International, Inc., 53 USPQ2d 1053 (TTAB 1999) (judicial estoppel); and Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318 (TTAB 1990) (claim preclusion, issue preclusion). Cf. Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) (Board erred in dismissing opposition on res judicata and collateral estoppel grounds where issues and transactional facts arising from prior district court infringement litigation differed from those in opposition proceeding); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (res judicata argument fails because marks at issue in prior proceedings were different); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500 (TTAB 2007) (neither claim nor issue preclusion apply where parties are not the same).
See, e.g., with respect to laches, Bridgestone/Firestone Research Inc. v. Automobile
Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001). See
also National Cable Television Association, Inc. v. American Cinema Editors, Inc.,
937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) (laches runs from the time action
could be taken against the acquisition of trademark rights which flow from registration
of mark); Land O' Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1959 (TTAB 2008) (where
laches defense based on failure to object to an expired registration, asserted period
of delay begins on issue date of prior registration and ends with its expiration);
Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008)
(no evidence that opposer knew of applicant’s use of its mark in the U.S.); Herbaceuticals
Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1575 n.3 TTAB 2008) (laches is unavailable
as an affirmative defense against a claim of fraud); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1116 (TTAB 2007) (respondent’s expansion into new product lines excused
petitioner’s delay in filing cancellation; laches defense unavailable); Christian
Broadcasting Network Inc. v. ABS-
See, e.g., with respect to other defenses, Diaz v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (Board has subject matter jurisdiction to entertain affirmative defense of priority pursuant to Article 7 of the Pan American Convention); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881 (TTAB 2006) (that certification mark has lost its significance as an indication of geographic source). Cf. e.g., Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006) (“family” of marks argument rejected); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 n.4 (TTAB 2008) (unclean hands defense unavailable); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 n. 10 (TTAB 2007) (defense of unclean hands, even if established, does not deprive petitioner of standing); and Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001) (defendant not entitled to rely on asserted ownership of “family” of marks as defense to Trademark Act § 2(d), 15 U.S.C. § 1052(d) claim).
3. See 37 CFR § 2.133(a). Cf. 37 CFR § 2.133(b) and 37 CFR § 2.133(c).
4. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c). See also, Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 1816 (TTAB 1990).
5. See 37 CFR § 2.133(a) and 37 CFR § 2.133(b). See also Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060 (TTAB 2010) (partial cancellation on the ground that portion of the mark is a generic term unavailable where the registration sought to be cancelled is more than five years old.); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (same; motion to strike claim granted); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954 (TTAB 2009) (Board encourages parties to seek Trademark Act § 18, 15 U.S.C. § 1068 restriction of cited registrations); ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (proposed restriction must be stated with precision); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1898 (TTAB 2006) (applicant’s offer to amend its identification of goods given no further consideration because it would not overcome the likelihood of confusion); British Seagull Ltd. v Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994) (Board had no duty to address defendant's offer to amend in final brief where defendant failed to file a motion or include as affirmative defense in pleading); Personnel Data Systems Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1865 (TTAB 1991) (mere request by respondent in its trial brief to have its identification of goods amended rejected where petitioner was not put on notice before petitioner presented its case); and Flow Technology Inc. v. Picciano, 18 USPQ2d 1970, 1972 (TTAB 1991) (applicant's argument on summary judgment that parties' channels of trade were different not persuasive where applicant's claim of entitlement to narrower range of goods was not put in issue by motion or amendment to its pleading). Cf. Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1846 (TTAB 2008) (amendment in Trademark Act § 8, 15 U.S.C. § 1058 affidavit filed during pendency of cancellation proceeding granted as unconsented motion to amend).
6. See National Cable Television Association v. American Cinema Editors Inc., 937
F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); Coach House Restaurant Inc. v.
Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1404-
7. See Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1575 n.3 (TTAB
2008) (laches is unavailable as an affirmative defense against a claim of fraud);
Christian Broadcasting Network Inc. v. ABS-
8. Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989).
9. See Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (doctrine of foreign equivalents does not apply with respect to Morehouse analysis); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (Morehouse defense is unavailable where issue is abandonment, descriptiveness, or fraud); and Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986) (Morehouse defense inapplicable where opposition based on claims of ornamentation and fraud).
10. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738
(TTAB 2001). See also TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313-
11. See, e.g., KP Permanent Make-
13. American Express Marketing & Development Corp. v. Gilad Development Corp., 94 USPQ2d 1294, 1298 (TTAB 2010).
14. See Fed. R. Civ. P. 8(d)(1).
15. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009) (Trademark Act § 18, 15 U.S.C. § 1068 claim or defense must be specific enough to provide fair notice to adverse party of restriction being sought); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (attempt to tack use of mark alleged to be legally equivalent to mark at issue is denied because adverse party not put on notice in pleading that owner of mark would attempt to prove priority through tacking); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should include enough detail to give fair notice of claim); and Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999) (primary purpose of pleadings “is to give fair notice of the claims or defenses asserted”); Cf. Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1864 (TTAB 2007) (bald allegations of misrepresentation of source did not provide fair notice); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (where applicant not given fair notice of opposer’s reliance on registration that issued after filing of complaint, unpleaded registration given no consideration); and McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985) (bald allegations in the language of the statute, did not provide fair notice of basis of petitioner's Trademark Act § 2(a), 15 U.S.C. § 1052(a) claim).
16. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537 (TTAB 2009); Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009).
17. See Fed. R. Civ. P. 8(d)(2). Cf. Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696,
1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by
pleading likelihood of confusion hypothetically notwithstanding the inconsistency
of that pleading with its position in the opposition that the marks are not confusingly
similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading
construed as hypothetical pleading of likelihood of confusion which is appropriate
where petitioner's standing is based on its inability to secure a registration, albeit
it is the senior user, because the subject registration has been cited as a reference
by the examining attorney). Cf. also Taffy's of Cleveland, Inc. v. Taffy's, Inc.,
189 USPQ 154, 156-
18. Cf. 37 CFR § 2.133(b).
19. See Fed. R. Civ. P. 8(d)(2).
20. See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959).
21. See 37 CFR § 2.106(b) and 37 CFR § 2.114(b); Nasalok Coating Corp. v. Nylok Corp.,
522 F.3d 1320, 86 USPQ2d 1369, 1373 n.3 (Fed. Cir. 2008); Food Specialty Co. v. Standard
Products Co., 406 F.2d 1397, 161 USPQ 46, 46 (CCPA 1969); Gillette Co. v. “42” Products
Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) (allegedly admitted periods
of nonuse by opposer disregarded in absence of counterclaim to cancel registration);
Contour Chair-
22. See 37 CFR § 2.133(d); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1287 (TTAB 1998) (applicant’s request raised in reply brief for a restriction of opposer’s registration [beyond applicant's initial counterclaim to restrict] was untimely as it should have been raised by promptly moving to amend).
23. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c). See also Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815 (TTAB 1990).
24. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).
25. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).
26. See Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990); Continental
Gummi-
TBMP 311.02(c) Unpleaded Affirmative Defenses
Except as provided in Fed. R. Civ. P. 12(b) and 12(h)(2) (which allow a defendant to raise certain specified defenses by motion), an unpleaded defense cannot be relied upon by the defendant unless the defendant's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter. [Note 1.]
For additional information concerning unpleaded matters, see TBMP § 314.
NOTES:
1. See Fed. R. Civ. P. 8(b), 8(c), and 12(b); Trademark Act § 19, 15 U.S.C. § 1069.
See also H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (the reason
for requiring an affirmative defense to be pleaded is to give the plaintiff notice
of the defense and an opportunity to respond; defense of tacking must be pleaded
to put opposer on notice of new matter that applicant is placing at issue); Diaz
v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (answer
deemed amended to assert applicant’s priority over opposer pursuant to Article 7
of the Pan American Convention); Barbara's Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1290 (TTAB 2007) (applicant’s affirmative defense deemed to have been tried by the
implied consent of the parties); Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense that opposer lacks proprietary rights
in its common law mark raised for first time in final brief was neither pleaded nor
tried); United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 341 (TTAB
1984) (laches is an affirmative defense which must be specifically pleaded); Trans
Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748, 754 (TTAB 1978) (defense
of laches, which was raised by applicant in its final brief, was not pleaded in answer
but was tried by implied consent of opposer); United States Mineral Products Co.
v. GAF Corp., 197 USPQ 301, 304 n.5 (TTAB 1977) (the equitable defenses set forth
in Trademark Act § 19, 15 U.S.C. § 1069 are affirmative defenses which must be affirmatively
pleaded and in this case were neither pleaded nor tried); Copperweld Corp. v. Astralloy-
TBMP 311.02(d) Other Affirmative Pleadings -
An answer may include affirmative assertions that, although they may not rise to the level of an affirmative defense, nevertheless state the reasons for, and thus amplify, the defendant's denial of one or more of the allegations in the complaint. These amplifications of denials, whether referred to as “affirmative defenses,” “avoidances,” “affirmative pleadings,” or “arguments,” are permitted by the Board because they serve to give the plaintiff fuller notice of the position which the defendant plans to take in defense of its right to registration. [Note 1.]
NOTES:
1. See Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 (TTAB 2009) (applicant’s “affirmative defenses” for the most part amplified its denials of opposer’s allegations regarding likelihood of confusion); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1697 n.5 (TTAB 1987) (allegations under heading “affirmative defenses” were in the nature of arguments in support of denial of claim rather than true affirmative defenses and were treated as such); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.3 (TTAB 1986) (same); Textron, Inc. v. Gillette Co., 180 USPQ 152, 153 (TTAB 1973) (objection to certain paragraphs of answer as verbose and argumentative not well taken); and McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959) (allegation that registered mark is weak does not constitute a collateral attack on validity of opposer's registrations). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1572 (TTAB 1988).
TBMP 311.03 Reply to Answer Should Not be Filed
Although 37 CFR § 2.106(b) and 37 CFR § 2.114(b) require that an answer to a counterclaim be filed, within the time designated by the Board, they specifically provide that a reply to an affirmative defense need not be filed. [Note 1.] Similarly, Fed. R. Civ. P. 7(a) provides that there shall be a complaint and an answer and a reply to a counterclaim denominated as such; that certain other specified pleadings, not relevant to Board proceedings (and not including a reply to an answer), shall be allowed; but that “[o]nly these pleadings are allowed,” except that the court may order a reply to an answer. Thus, while a plaintiff must file an answer to a counterclaim, a reply to an answer need not, and should not, be filed. NOTES: 1. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.106(b)(2)(iii), and 37 CFR § 2.114(b)(1) and 37 CFR § 2.114(b) (2)(iii).
Thus, while a plaintiff must file an answer to a counterclaim, a reply to an answer need not, and should not, be filed.
NOTES:
1. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.106(b)(2)(iii), and 37 CFR § 2.114(b)(1) and 37 CFR § 2.114(b) (2)(iii).
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