Form and Content of Oppositions and Petitions to Cancel and the ESTTA

The Trademark Trial and Appeal Board (TTAB) uses an electronic filing system called ESTTA (Electronic System for Trademark Trials and Appeals) that is referenced repeatedly in TBMP 309 below.  Some things that are good to know about ESTTA:

Here’s more from estta.uspto.gov:



TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

June 2014

Chapter 300 PLEADINGS

(See all of Chapter 300 at NoticeOfOpposition.com)


TMBP 309 Form and Content of Oppositions and Petitions to Cancel


TMBP 309.01 In General

37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the

registration of a mark on the Principal Register may file an opposition addressed to the

Trademark Trial and Appeal Board and must serve a copy of the opposition, including any

exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.

(1) An opposition to an application based on section 1 or 44 of the Act must be filed either on paper or through ESTTA.

(2) An opposition to an application based on section 66(a) of the Act must be filed through

ESTTA.


37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. Petitioner must serve a copy of the petition, including any exhibits, on the owner of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. The petitioner must include with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days of receipt of the returned copy. The petition for cancellation need not be verified, but must be signed by the petitioner or the petitioner’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for petitions submitted electronically via ESTTA….


37 CFR § 2.116(c) The opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.


37 CFR § 2.119(e) Every paper filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party's attorney or other authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office.


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-point type and double-spaced, with text on one side only of each sheet;

(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.

* * * *

37 CFR § 2.126(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-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.

* * * *


Submissions may be made to the Board on paper or filed electronically via ESTTA, as permitted by the rules or Board practice. Submissions made by CD-ROM are no longer accepted. [Note 1.] As required by 37 CFR § 2.101(b), an opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA, and an opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126, must be filed either on paper or through ESTTA. [Note 2.] A petition for cancellation must be filed either on paper or through ESTTA. [Note 3.] The notice of opposition, or petition to cancel, corresponds to the complaint in a court proceeding. [Note 4.] For purposes of simplicity, the term “complaint” is often used hereafter in this section to refer to a notice of opposition or a petition to cancel.


NOTES:

1. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42247 (August 1, 2007).


2. See 37 CFR § 2.101(b)(1) and 37 CFR § 2.101(b)(2).


3. See 37 CFR § 2.111(a) and 37 CFR § 2.111(b).


4. 37 CFR § 2.116(c).


TMBP 309.02 Form of Complaint

The form of a complaint must meet the general requirements for submissions to the Board as set forth in 37 CFR § 2.126. See TBMP § 106.03. If a complaint is filed electronically through ESTTA, the text in the electronic submission must be in at least 11-point type and doublespaced, and any exhibits pertaining to the electronic submission must be made electronically as an attachment to the complaint. [Note 1.]


While an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA, a petition for cancellation, or an opposition against a Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126, application, may be filed either through ESTTA or on paper. [Note 2.] If the complaint is filed on paper, the submission, including any exhibits, may not be stapled or bound or have any extruding tabs or other such devices, and must otherwise comply with the requirements of 37 CFR § 2.126(a).


NOTES:

1. See 37 CFR § 2.126(b).


2. See 37 CFR § 2.101(b); 37 CFR § 2.111(a) and 37 CFR § 2.111(b).


TMBP 309.02(a) Format for Complaint

Using ESTTA, a person can complete and submit a notice of opposition or petition for cancellation over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a filing. Alternatively, the notice of opposition or petition to cancel ESTTA form (docket) “cover sheet” may be created using ESTTA and the completed form may then be printed out for mailing to the Board with the notice of opposition or petition to cancel. The Board views the ESTTA filing form and the attached pleading as comprising a single document or paper being filed with the Board. [Note 1.] Parties are encouraged to use ESTTA to commence the proceeding and for general filing purposes. Upon filing, the filer will receive an e-mail acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information. After the proceeding is instituted, whenever a party submits a filing via ESTTA, the ESTTA cover sheet is automatically “pre-populated” with the party’s name as that party is listed in TTABVUE (the Board's database of electronic proceeding files). The electronic files of the Board are accessible on the Internet via TTABVUE, although confidential filings will not be made available for public viewing. See TBMP § 108, TBMP § 120.02 and TBMP § 121.


An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"). Such essential information includes: 1) the specific goods and/or services in the application which are being opposed; 2) the ground(s) for the opposition; and 3) the application or registration number(s) for any mark owned by opposer and cited as a basis for the opposition. [Note 2.] Only the information provided on the ESTTA form is sent to WIPO. [Note 3.]


A complaint filed on paper need not follow a particular format, as long as it meets the requirements of 37 CFR § 2.126(a) for paper submissions and includes the necessary information. The complaint should include the following information:


Heading: The complaint should bear at its top the heading “IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD.”


Identification of subject application or registration: The heading should be followed by information identifying the application or registration that is the subject of the complaint with the wording “Serial No.______” for an opposition or “Registration No.______” for a petition to cancel.


Name of proceeding: The application or registration number should be followed by the name of the proceeding (i.e., “ABC Corporation v. XYZ Company”) and the wording “Opposition No. ______” or “Cancellation No. ______.”


Title of Paper: The title should describe the nature of the paper (i.e., “Notice of Opposition”

or “Petition to Cancel”).


Plaintiff information: The complaint should also include plaintiff's name, entity type (i.e., individual, partnership, corporation, association, etc.), and business address; the names of the partners, if the plaintiff is a partnership, or the state or country of incorporation, if the plaintiff is a corporation.


Registrant information in petition to cancel: A petition to cancel should indicate the name and correspondence address of the current owner of record of the registration. [Note 4.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [Note 5.] The TSDR display of information includes a tab for "status," a tab for "documents" and a link to "View Assignments." The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2).


Substance of complaint: The complaint must also include a pleading of the substance (i.e., standing and grounds) of the complaint. See TBMP § 309.03.


Signature: The complaint must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).


NOTES:

1. See 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 CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); 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”).

2. See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011).

3. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).

4. See 37 CFR § 2.112(a) and 37 CFR § 2.112(b). See also Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153, 1155 (N.D. Cal. 1996) (the proper defendant in suit for cancellation of a registration is the owner of that registration, not an exclusive licensee).

5. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


TMBP 309.02(b) Signature of Complaint

The complaint need not be verified, but it must be signed by the plaintiff or by the plaintiff's attorney, as specified in 37 CFR § 10.1(c), or other authorized representative, as specified in 37 CFR § 11.14(b). [Note 1.] See TBMP § 106.02. Electronic signatures pursuant to 37 CFR § 2.193(c) are required for complaints submitted electronically via ESTTA. [Note 2.] The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [Note 3.] Thus, a plaintiff’s electronic signature on the ESTTA filing form serves as its signature for the entire complaint being filed, including in the absence of a signature on any attachment to the filing form. [Note 4.]


If an attorney signs the complaint, it need not be accompanied by a written power of attorney, but if a written power of attorney is filed, the plaintiff must sign it. If a plaintiff signing for itself is a partnership, the signature must be made by a partner. If a plaintiff signing for itself is a corporation or similar juristic entity, the signature must be made by an officer of the plaintiff who has authority to sign for the plaintiff and whose title is given. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as plaintiff, if plaintiff is an individual; as counsel for plaintiff; as a partner of plaintiff, if plaintiff is a partnership; as an officer of plaintiff identified by title, if plaintiff is a corporation; etc.). Although a complaint must be signed, an unsigned complaint 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.


However, Trademark Act § 14, 15 U.S.C. § 1064, limits, after a specified five-year period, the grounds on which certain Principal Register registrations may be cancelled. [Note 6.] See TBMP § 307.02(a). If an unsigned petition to cancel such a registration is filed prior to the expiration of the five-year period, but a signed copy thereof is not filed until after the expiration of the period, the petition can be entertained by the Board only to the extent that it pleads a ground for cancellation permitted after the expiration of the five-year period. [Note 7.] Cf. TBMP § 308.02(b). Although whenever it comes to the Board's attention, the Board makes every effort to notify petitioners of unsigned complaints before the expiration of any applicable statutory deadline, so that the informality may be corrected prior to the deadline, the Board has no obligation to do so, and cannot assume the burden of discovering filing errors within any specified time. [Note 8.]


NOTES:

1. See 37 CFR § 2.101(b) and 37 CFR § 2.111(b). See also Media Online Inc. v. El Clasificado, Inc. 88 USPQ2d 1285, 1286 n.3 (TTAB 2008).


2. See 37 CFR § 2.101(b) and 37 CFR § 2.111(b).


3. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (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”).


4. PPG Industries Inc., 73 USPQ2d 1926, 1928 (TTAB 2005).


5. See 37 CFR § 2.119(e).


6. See Trademark Act § 14, 15 U.S.C. § 1064; 37 CFR § 2.111(b).


7. Cf. e.g., cases involving former requirement for verification, Williamson-Dickie Manufacturing Co. v. Mann Overall Company, 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (the filing date of a petition to cancel is the date of receipt in the USPTO of the verified petition and filing fee); Texas Instruments Inc. v. Conklin Instrument Corp., 161 USPQ 740, 741 (TTAB 1969) (unverified petition timely filed but ineffective; verified substitute petition untimely). Cf. also In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm'r 1992) (timely payment of filing fee for statement of use is statutory and cannot be waived).


8. Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding rejection of renewal application); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm'r 1992) (regarding rejection of statement of use); and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm'r 1966) (regarding insufficient filing fee for patent application).


TMBP 309.02(c) Service of Complaint

A Board proceeding commences when an opposer or petitioner files its complaint with the Board, together with the required fee and proof of service, and has concurrently served a copy of its complaint (notice of opposition or petition to cancel), including any exhibits, on the owner of record (or, when applicable, on the attorney or domestic representative) designated in the involved application or registration, or in assignment records regarding the application or registration, at the correspondence address of record in the Office. [Note 1.] The requirement that an opposer or petitioner serve the complaint on the defendant directly recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 2.]


For information on service of the opposition on applicant, see TBMP § 309.02(c)(1). For information on service of the petition to cancel on respondent, see TBMP § 309.02(c)(2). For information on service of copies of an application for concurrent use registration, see TBMP § 1106.04.


NOTES:

1. See 37 CFR § 2.101(a) and 37 CFR § 2.111(a). See also Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).


2. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).


TMBP 309.02(c)(1) Service of Opposition on Applicant

37 CFR § 2.101 Filing an opposition.

(a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119.


(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board and must serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.


(d)(4) The filing date of an opposition is the date of receipt in the Office of the notice of opposition, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198.


An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service of a copy of the opposition “on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office.” [Note 1.]


When an opposer files its notice of opposition with the Board, the opposer must concurrently serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant at the attorney’s correspondence address of record in the Office. [Note 2.] If there is no attorney, then service must be made on the applicant at its address of record, unless applicant has appointed a domestic representative in the involved application, in which case service must be made on the domestic representative. The requirement that an opposer serve the notice of opposition on the applicant directly recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 3.]


To determine the correspondence address of record for an applicant or registrant, the potential opposer must check the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [Note 4.] The TSDR display of information includes an active link to assignment information, and this link should also be checked. [Note 5.] The complaint need only be served at the address shown as applicant’s correspondence address of record, that is, applicant’s attorney’s, or its designated domestic representative’s record address or applicant’s own record address.


It is in opposer’s interest to have the real party in interest apprised of the existence of the Board proceeding, so that any judgment eventually obtained will be binding on the correct party. If opposer has any doubt as to the identity or address of the real party in interest, opposer may serve additional copies of the notice of opposition on any address opposer may have reason to believe is more current than the address for applicant that is listed in Office records, or on any person who may have an ownership interest in the relevant application.


The manner of service is provided for in 37 CFR § 2.119. The parties may agree to use electronic transmission (e.g., facsimile or e-mail) to communicate with each other and to meet their service obligations. When such an agreement is made, the best practice is to reduce the agreement to writing. If the parties have communicated prior to the filing of the notice of opposition, and the applicant has agreed to accept service of the complaint by electronic transmission, opposer may serve the notice of opposition by the agreed upon means. [Note 6.] Authorization by an applicant, given to the Office during prosecution, to allow the Office to communicate with applicant by e-mail, does not by itself enable opposer to serve the notice of opposition by e-mail.


Where an applicant is represented by an attorney in the Office records, if opposer makes sufficient efforts to timely serve and file the notice of opposition but improperly serves applicant directly, the opposition will not be dismissed as a nullity if (1) the notice of opposition is timely filed and includes a certificate of service and (2) the notice of opposition was timely served on applicant. [Note 7.] The Board may, however, require that opposer reserve the applicant at its attorney’s address, if the attorney has not received notice of the proceeding through other means. [Note 8.] On the other hand, the Board will not institute a proceeding where there is no proof of service, even though there may have been actual service [Note 9], or where there is no actual service even though there may have been proof of service. [Note 10.] Proof of service assumes actual service on applicant or its attorney or domestic representative and is meaningless in the absence of actual service in accordance with the statements contained in the proof of service. [Note 11.]


The notice of opposition may be filed using ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. By utilizing ESTTA to file its notice of opposition, a potential opposer is assured that the notice of opposition will contain a certificate of service attesting to service, because a plaintiff cannot complete the ESTTA filing process unless it confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record. [Note 12.] “Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading.” [Note 13.] Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date, and must make actual service. The mere appearance of the certificate of service on the notice of opposition does not by itself effect service, however; opposer must still make actual service of the complaint on applicant to comply with its service obligation. [Note 14.]


If a service copy is returned to opposer as undeliverable, opposer must notify the Board within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [Note 15.] Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [Note 16.] While opposer is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any applicant the opposer is unable to serve, if opposer knows of any new address information for the applicant, opposer must report the address to the Board. In any case in which opposer notifies the Board that a service copy sent to an applicant was returned or not delivered, including any case in which the notification includes a new address for the applicant discovered by or reported to opposer, the Board will effect service. [Note 17.]


The filing date of the notice of opposition is the date of receipt in the Office of the notice, with proof of service and the required fee. [Note 18.] However, if the notice of opposition is filed by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) in accordance with 37 CFR § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS [Note 19], unless the “date in” date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [Note 20.] The Certificate of Mailing procedure described in 37 CFR § 2.197 and the “Express Mail” procedure described in 37 CFR § 2.198 are available for the filing of a notice of opposition. [Note 21.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [Note 22.]


For information on filing fees, see TBMP § 308.


NOTES:

1. 37 CFR § 2.201(b).


2. 37 CFR § 2.101(b).


3. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).


4. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


5. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


6. See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007).


7. See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009) (timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).


8. See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009).


9. See Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863-64 (TTAB 2008) (opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; opposer cannot cure its failure to properly serve the original notices of opposition by filing amended notices and actually serving the amended notices; cases dismissed as nullities).


10. See Springfield Inc. v XD, 86 USPQ2d 1063, 1064 (TTAB 2008) (notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity); Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863-64 (TTAB 2008) (opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; cases dismissed as nullities). Cf. Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009) (timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).


11. See Springfield Inc. v XD, 86 USPQ2d 1063, 1064 (TTAB 2008)(notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity).


12. See Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008).


13. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944, n.5 (TTAB 2009).


14. See Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863 (TTAB 2008); Vibe Records, Inc.

v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008).


15. See 37 CFR § 2.101(b).


16. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


17. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


18. See 37 CFR § 2.101(d)(4).


19. See 37 CFR § 2.198 (a)(1).


20. See 37 CFR § 2.198(a)(2).


21. See 37 CFR § 2.197(a) and 37 CFR § 2.198(a).


22. 37 CFR § 2.195(d)(3); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280,

1283 (TTAB 2008) (untimely opposition dismissed as a nullity).


TMBP 309.02(c)(2) Service of Petition on Respondent

37 CFR § 2.111 Filing petition for cancellation.

(a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee. The petition must include proof of service on the owner of record for the registration, or the owner’s domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.111(b) and 2.119.

(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. Petitioner must serve a copy of the petition, including any exhibits, on the owner of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. The petitioner must include with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days of receipt of the returned copy.


A cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [Note 1.] The petition must include proof of service of a copy of the petition, including any exhibits, on the owner of record for the registration at the owner’s address of record, [Note 2] or, if the owner has designated a domestic representative which is of record, the petition to cancel must be served on the domestic representative at the correspondence address of record in the Office. [Note 3.] When petitioner files its petition to cancel with the Board, the petitioner must concurrently serve a copy of the petition, including any exhibits, on the owner of record for the registration at the owner’s address of record in the Office, unless a domestic representative has been designated in the involved registration or in assignment records regarding the registration, in which case, the domestic representative should be served. The requirement that a petitioner serve the petition to cancel on a respondent recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 4.] The Board does not serve a copy of the petition to cancel on the owner of the registration. Instead, the petitioner is responsible for serving a copy of the petition to cancel on the owner of record for the registration at the owner’s address of record, or the owner’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. [Note 5.] To determine the address of the owner of record of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system, accessible through http://tsdr.uspto.gov/. [Note 6.] The TSDR display of information includes an active tab to assignment information. [Note 7] The petitioner may consult the assignment database to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint must be served on the correspondence address of the assignee. The complaint need only be served at the address shown as the owner of record’s address of record displayed on the TSDR website, including any relevant information from the assignment link. [Note 8.] Although petitioner is not required to serve a copy of the petition to cancel on any address other than the address listed in the TSDR system, if the petitioner has any doubt as to the identity or address of the real party  in interest, the petitioner may also serve an additional copy of the petition to cancel on any  party believed to have an ownership interest in the relevant registration (e.g., an assignee or survivor of merger that had not recorded the document of transfer in the Office’s Assignment Branch but was known to the petitioner) at the correspondence address known to the petitioner. It is generally in a plaintiff’s interest to have the real party in interest apprised of the existence

of the Board proceeding, so that any judgment eventually obtained will be binding on the correct party.[Note 9.]


The manner of service is provided for in 37 CFR § 2.119. The parties may agree to use electronic transmission (e.g., facsimile or e-mail) to communicate with each other and to meet their service obligations. When such an agreement is made, the best practice is to reduce the agreement to writing. If the parties have communicated prior to the filing of the petition to cancel, and respondent has agreed to accept service of the complaint by electronic transmission, petitioner may serve the petition to cancel by electronic transmission, e.g., facsimile or e-mail. [Note 14.]


The petition to cancel may be filed using ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. By using ESTTA, a petitioner affirmatively represents to the Board that it has served a copy of the petition to cancel on respondent; thus any petitioner who files its petition to cancel through ESTTA will be viewed by the Board as having included proof of service with the pleading [Note 15], because a statement confirming service appears on the ESTTA-generated filing form as part of the complaint. [Note 16.] The appearance of the proof of service on the complaint does not by itself effect service however; petitioner must still make actual service of the complaint on respondent to comply with its service obligation.


If a service copy is returned to petitioner as undeliverable, petitioner must notify the Board within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [Note 17.] Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [Note 18.] While petitioner is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any respondent the petitioner is unable to serve, if petitioner knows of any new address information for the respondent, petitioner must report the address to the Board. In any case in which petitioner notifies the Board that a service copy sent to a respondent was returned or not delivered, including any case in which the notification includes a new address for the respondent discovered by or reported to petitioner, the Board will effect service. [Note 19.]


The filing date of the petition is the date of receipt in the Office of the petition, with proof of service and the required fee. However, if the petition is filed by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) in accordance with 37 CFR § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS. [Note 20], unless the “date in” date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [Note 21.] The Certificate of Mailing procedure described in 37 CFR § 2.197 and the “Express Mail” procedure described in 37 CFR § 2.198 are available for the filing of a petition to cancel. [Note 22.]


NOTES:

1. See 37 CFR § 2.111(a).


2. See 37 CFR § 2.111(a).


3. See 37 CFR § 2.111(b).


4. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).


5. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).


6. Miscellaneous Changes to Trademark Trial and Appeal Board Rules 72 Fed. Reg. 42242, 42243 (August 1, 2007).



7. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


8. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


9. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


10. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


11. See The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 (TTAB 2009) ((petitioner allowed to remedy its failure to comply with the service requirements of 37 CFR §§ 2.111(a), 2.111(b) and 2.111(c)(4) by proof of subsequent service of the petition to cancel on respondent; since counsel for respondent filed an answer and was clearly representing respondent, petitioner need not send additional copy of petition to respondent.).


12. See Trademark Act § 14, 15 U.S.C. § 1064.


13. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.3 (TTAB 2009) (although service of petition to cancel on counsel for registrant was improper, since counsel for registrant filed an answer and was representing registrant, petitioner did not have to reserve registrant at its address of record.)


14. See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007).


15. See Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1214 (TTAB 2012) (ESTTA requires petitioner to affirmatively represent it has served a copy of the petition to cancel on respondent); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (where opposer filed notice of opposition by mail, its only opportunity to show proof of service at the time of filing was to include a certificate of service with the notice; having failed to include proof of service with its complaint, opposer could not meet the requirement set forth in 37 CFR § 2.101(b), but use of the Board’s ESTTA online filing system prevents the process from being completed unless opposer confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record).


16. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009) (“Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading.”).


17. See 37 CFR § 2.101(b).


18. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


19. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).


20. See, e.g., Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) (“Attesting to proof of service of an ESTTA filing without actually effecting service in accordance with the rules is insufficient to commence the proceeding.”).


21. See 37 CFR § 2.198(a)(1).


22. See 37 CFR § 2.198(a)(2).


23. See 37 CFR § 2.197(a) and 37 CFR § 2.198(a).



TMBP 309.03 Substance of Complaint

15 U.S.C. § 1068 [Trademark Act § 18] In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, ....


37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.


37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may filed an opposition addressed to the Trademark Trial and Appeal Board…. The opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for Opposition.


37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...


37 CFR § 2.112(a) The petition for cancellation must set forth a short and plain statement showing why the petitioner believes he, she or it is or will be damaged by the registration, state the grounds for cancellation, and indicate, to the best of petitioner's knowledge, the name and address of the current owner of the registration.


37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration Proceeding.


TMBP 309.03(a) In General

TMBP 309.03(a)(1) Scope of Opposition and Petition to Cancel

In an opposition, the registration sought by an applicant may be opposed in whole, or in part. Similarly, a petitioner may seek to cancel a registration in whole, or in part. [Note 1.] See TBMP § 309.03(d). However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use registration proceeding. [Note 2.] See TBMP Chapter 1100. The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.


An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. Because ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"), the scope of the goods and services being opposed are limited to those identified in the ESTTA-generated form. [Note 3.] For the same reason, and because only the information on the ESTTA generated form is forwarded, automatically without review, to WIPO, the grounds for a notice of opposition are limited to those selected and reflected on the ESTTA-generated cover form regardless of what any accompanying notice of opposition asserts. [Note 4.]


The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.


NOTES:

1. See Trademark Act § 18, 15 U.S.C. § 1068.


2. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c).


3. See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011) ("… with respect to Section 66(a) applications, all oppositions must be confined to the opposed goods identified … on the ESTTA-generated opposition forms.").


4. CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011).


TMBP 309.03(a)(2) Elements of Complaint – In General

A notice of opposition must include (1) a short and plain statement of the reason(s) why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer's standing to maintain the proceeding -- see TBMP § 303.03 and TBMP § 309.03(b)), and (2) a short and plain statement of one or more grounds for opposition. [Note 1.]


Similarly, a petition to cancel must include (1) a short and plain statement of the reason(s) why petitioner believes it is or will be damaged by the registration sought to be cancelled (i.e., petitioner's standing to maintain the proceeding -- see TBMP § 303.03 and TBMP § 309.03(b)) and (2) a short and plain statement of the ground(s) for cancellation. [Note 2.]


A pleading should include enough detail to give the defendant fair notice of the basis for each claim. [Note 3]. The elements of each claim should be stated simply, concisely, and directly, and taken together “state a claim to relief that is plausible on its face.” [Note 4.] See TBMP § 503.02.


All averments should be made in numbered paragraphs, the contents of each of which should be limited as far as practicable to a statement of a single set of circumstances. [Note 5.] Each claim founded upon a separate transaction or occurrence should be stated in a separate count whenever a separation would facilitate the clear presentation of the matters pleaded. [Note 6.] A paragraph may be referred to by number in all succeeding paragraphs, and statements in the complaint may be adopted by reference in a different part of the complaint. [Note 7.]


A plaintiff may state as many separate claims as it has, regardless of consistency; a plaintiff may also set forth two or more statements of a claim alternatively or hypothetically, either in one count or in separate counts. [Note 8.]


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 9.]


Evidentiary matters (such as, for example, lists of publications or articles in which a term sought to be registered by an applicant is alleged to be used descriptively) should not be pleaded in a complaint. They are matters for proof, not for pleading. [Note 10.]


Factual allegations made in the pleadings are not evidence of the matters alleged except insofar as they might be deemed to be admissions against interest. [Note 11.]


In inter partes proceedings before the Board, as in civil cases before the United States district courts, all pleadings are so construed as to do justice. [Note 12.]


For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and J. THOMAS MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (2014), for oppositions and cancellations, respectively. For a discussion of the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP § 307.01 and TBMP § 307.02 and J. THOMAS MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (2014).


NOTES:

1. See 37 CFR § 2.104(a); Young v. AGB Corp. 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (standing and grounds are distinct inquiries; allegation of “economic damage” while relevant to standing does not constitute a ground); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allegation of priority without direct or hypothetical pleading of likelihood of confusion is insufficient pleading of Trademark Act § 2(d), 15 U.S.C. § 1052(d)). Cf. Fed. R. Civ. P. 8(a).


2. See 37 CFR § 2.112(a); Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Order of Job's Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Cf. Fed. R. Civ. P. 8(a).


3. See Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007). See also Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1471 (TTAB 1993), recon. denied, 36 USPQ2d 1328, 1330 (TTAB 1994) (although pleading need not allege particular “magic words,” pleading of mere descriptiveness in this case could not be logically interpreted as asserting that applicant is not the owner of the mark); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (petitioner's Trademark Act § 2(a), 15 U.S.C. § 1052(a) allegations were merely conclusory and unsupported by factual averments).


4. Ashcroft v. Iqbal, 556 U.S. 662 (2009), quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007); Fed. R. Civ. P. 8(a).


5. See Fed. R. Civ. P. 10(b); Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 1974) (while paragraphs were numbered, none of the paragraphs were limited to a statement of a single set of circumstances).

6. See Fed. R. Civ. P. 10(b); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 (TTAB 2010) (“claims must be separately stated . . . . We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground;” motion to amend application filed under Madrid Protocol denied).


7. See Fed. R. Civ. P. 10(b) and (c).


8. See Fed. R. Civ. P. 8(d)(2) and (3); 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, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its / mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as basis for standing).


9. See Fed. R. Civ. P. 8(d)(2).


10. See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (if evidentiary facts are pleaded, and they aid in giving a full understanding of the complaint as a whole, they need not be stricken).


11. See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1755 (TTAB 2009)(allegations in defendant’s application are not facts and must be proven at trial); Baseball America Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the pleadings are not evidence of the matters alleged, except insofar as they might be deemed to be admissions against interest). Cf. Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (opposer’s attempt to make registrations of record by attaching to its notice of opposition printouts from the Office’s electronic database records showing the current status and title of its registrations would have been sufficient under current version of 37 CFR § 2.122(d)(1)).


12. See 37 CFR § 2.116(a); Fed. R. Civ. P. 8(e); The Scotch Whiskey Association v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991).


TMBP 309.03(b) Standing

Any person who believes it is or will be damaged by registration of a mark has standing to file a complaint. [Note 1.] See TBMP § 303. At the pleading stage, all that is required is that a plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis” for its belief that it would suffer some kind of damage if the mark is registered. [Note 2.] See also TBMP § 303.06 regarding pleading of standing by joint plaintiffs. To plead a “real interest,” plaintiff must allege a “direct and personal stake” in the outcome of the proceeding. [Note 3.] The allegations in support of plaintiff's belief of damage must have a reasonable basis “in fact.” [Note 4.]


Allegations in support of standing which may be sufficient for pleading purposes must later be affirmatively proved by the plaintiff at trial (or on summary judgment). [Note 5.] However, there is no requirement that actual damage be pleaded or proved, or that plaintiff show a personal interest in the proceeding different or “beyond that of the general public” [Note 6], in order to establish standing or to prevail in an opposition or cancellation proceeding. See TBMP § 303.03.


A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves): A claim of likelihood of confusion that is not wholly without merit [Note 7], including claims based upon current ownership of a valid and subsisting registration [Note 8] or prior use of a confusingly similar mark. [Note 9.]. A registration on the Supplemental Register may be sufficient to establish standing [Note 10];


Plaintiff has been refused registration of its mark because of defendant’s registration, or has been advised that it will be refused registration when defendant’s application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant’s registration [Note 11];


Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of defendant’s registration [Note 12];


Plaintiff belongs to class of potential purchasers it alleges are disparaged or brought into contempt or disrepute by defendant’s mark [Note 13];


Defendant has relied on its ownership of its application or registration in another proceeding between the parties, or defendant has asserted a likelihood of confusion in another proceeding between the parties involving the same marks. [Note 14].


A counterclaimant's standing to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [Note 15.] See also TBMP § 313.03.


A plaintiff need not assert proprietary rights in a term in order to have standing. [Note 16.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its standing by alleging that it is engaged in the sale of the same or related products or services (or that the product or service in question is within the normal expansion of plaintiff's business) and that the plaintiff has an interest in using the term descriptively in its business. (That is, plaintiff may plead that it is a competitor.) [Note 17.]


If a plaintiff can show standing on one ground, it has the right to assert any other grounds in an opposition or cancellation proceeding. [Note 18.]


NOTES:

1. See Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063 and 15 U.S.C. § 1064.


2. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987) on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (trade association has standing to maintain opposition); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (allegations that term is an appellation of origin for Cuban cigars owned by plaintiff and that plaintiff will be damaged by continued registration of designation is sufficient to allege plaintiff's real interest in the case for standing); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011) (in view of arguable similarities in the marks and relatedness of the goods, opposer has shown a reasonable belief of damage and that it has a real interest in the case); Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (plaintiff does not have to prove claims or actual damage to establish standing); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n. 8 (TTAB 2009) (licensees have standing to oppose); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing based on parties’ agreement); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (standing based on showing of commercial interest in the mark); Association pour la Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (standing established where (1) individual named in the mark died in 1985, (2) representative is the granddaughter of the named individual and one of the heirs, (3) representative is a member of the petitioner committee and the purpose of the committee is to defend the rights and the work of the named individual, and (4) petitioners claim that the mark at issue falsely suggests a connection with the named individual).


Cf. Doyle v. Al Johnson's Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1782-83 (TTAB 2010) (even assuming petitioner has a "real interest" and "personal stake" in taking photographs of goats on a roof, there is no allegation that respondent's mark prevents petitioner from doing so or how his interest in taking such photographs relates to respondent's services).


3. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875-76 (TTAB 2011) (Cuban entity has sufficiently alleged standing where claims do not require assertion of a property interest, a specific license to cancel the registration was issued by the U.S. State Department to plaintiff, and standing may be rooted in enforceable rights despite the existence of an embargo); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (Cuban entity has standing although it does not and cannot engage in any business in the United States due to the embargo on Cuban goods).


4. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (stating that the belief of damage alleged by plaintiff must be more than a subjective belief) (citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972)). See also Doyle v. Al Johnson's Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1783 (TTAB 2010) (petitioner's alleged belief that he would be damaged by respondent's registrations is not reasonable).


5. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1029 (Fed. Cir. 1999) citing Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also, e.g., Stephen Slesinger Inc., v. Disney Enterprises Inc., 98 USPQ2d 1890, 1895 n.15 (TTAB 2011) (no standing in Board proceeding where district court decided plaintiff lacked an ownership interest in the marks), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (opposer established valid ground for grant of summary judgment in its favor; opposer allowed time to prove its standing); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (failure to prove standing); and Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (at final decision, inquiry is not whether pleading of standing is sufficient but whether allegations have been proven).


6. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (“The crux of the matter is not how many others share one's belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue”). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Blackhorse v. Pro-Football, Inc., 98 USPQ2d 1633, 1638 (TTAB 2011) (no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in the proceeding); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (plaintiff has shown that it is not a mere intermeddler).


7. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries Inc. v. Ralston Purina Co.,670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (plaintiff may show standing based on common law rights in mark that is distinctive, inherently or otherwise); Bausch & Lomb Incorporated v. Karl Storz GmbH & Co KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing established by introduction of parties’ agreement); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (standing established by properly making pleaded registrations of record); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB 2008) (standing based on ownership of prior registration not voided by allegation, even if true, that mark is generic); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1502 (TTAB 2008) (standing established by testimony as to prior use); Schering-Plough HealthCare Products Inc. v. IngJing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007) (standing based on ownership of pleaded registrations); Chicago Bears Football Club Inc. v. 12TH Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007) (exclusive licensee has standing); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (standing based on common law use of mark); Barbara's Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (standing established by properly making pleaded registration of record and asserting non-frivolous likelihood of confusion claim); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1964 (TTAB 2007) (cancellation petitioner’s standing based on prior common law use of elements contained in defendant’s registered marks); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993); The Nestle Company Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1087 (TTAB 1987); Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (allegation of likelihood of confusion accepted as proper allegation of petitioner's standing with respect to pleaded grounds of fraud and abandonment).


8. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co.,670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (prior registration but not priority in use); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (pleaded registrations of record); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (standing established because pleaded registrations are of record on a motion for involuntary dismissal); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (pleaded registrations of record); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1301 (TTAB 2010) (pleaded registrations made of record); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (pleaded registration made of record); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (pleaded registrations properly made of record); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (pleaded registration made of record); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008) (standing established by making of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1721 (TTAB 2008) (opposer alleged ownership of application that issued during proceeding and introduced a certified copy of subsequent registration at trial showing current status and title in opposer’s name); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (pleaded registrations made of record); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.10 (TTAB 2007) (opposer’s allegations of ownership of pleaded registrations insufficient to prove standing); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (pleaded registrations made of record; cancelled registration has no probative value); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (pleaded registrations made of record); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleaded registrations made of record); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (pleaded registrations made of record); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (parties stipulated to status and title of opposer’s pleaded registrations and applications); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (pleaded registration of record by virtue of the counterclaim brought by applicant); DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220, 1225 (TTAB 2005); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005)(status and title copies of pleaded registrations made of record).


9. For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and J. THOMAS MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (2014), for oppositions and cancellations, respectively. For a discussion of the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP § 307.01 and TBMP § 307.02 and J. THOMAS MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (2014).


10. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012) (opposer’s Supplemental Registration sufficient to establish opposer’s real interest in proceeding).


11. See Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (standing adequately alleged by allegation that petitioner’s intent-to-use application has been refused based on respondent’s registrations); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner's pending application refused registration based on respondent's registration); Kallamni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012) (evidence of record showing petitioner's pending application refused registration based on respondent's registration); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142 (TTAB 2011) (Office action refusing registration to plaintiff based on defendant's registration made of record); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action suspending plaintiff's pending application pending possible refusal based on alleged likelihood of confusion with defendant's registration made of record); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009); Hiraga v. Arena, 90 USPQ2d 1102, 1106-7 (TTAB 2009); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (opposer received permission from the U.S. Dept. of Treasury to file an application and such application is suspended); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Cf. Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff’s standing).


12. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).


13. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1024 (Fed. Cir. 1999); McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212, 1214 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008).


14. See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel registration that has been asserted, even defensively, in a civil action); and M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).


15. See Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013) (standing assessed at time the counterclaim is filed and Board’s dismissal of the main claim does not render counterclaim moot); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1236 n.3 (TTAB 2007) (respondent in a cancellation proceeding has standing by virtue of its ownership of involved registration).


16. See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (“This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant's mark”).


17. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) (petitioner established and respondent admitted that petitioner is a competitor using the term at issue as part of its domain name), aff’d unpub’d, No. 2014-1031 (Fed. Cir. 2014), aff’d unpub’d, No. 2014-1031 (Fed. Cir. 2014); Miller v. Miller, 105 USPQ2d 1615, 1618-19 (TTAB 2013) (opposer established it has a commercial interest in using MILLER LAW GROUP); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (promoter or manufacturer of goods labeled with the same indication of geographic origin where plaintiff does not have a pending application, is not using the term in the United States, and is not required to being using the term at all); Kistner Concrete Products Inc. v. Contech Arch Technologies, Inc. 97 USPQ2d 1912, 1918 (TTAB 2011) (competitor in industry has a real interest in cancelling registration for product configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors and retailer of the goods in the applications have demonstrated a real interest in preventing registration of the proposed marks); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1787 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); SaintGobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007) (standing to oppose registration of mark for single color for coated abrasives established by opposer’s evidence of use of various colors on coated abrasives); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007) (standing based on opposer’s privity relationship with company that has competitive right to use mark descriptively); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (commercial interest in allegedly descriptive term); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999) (standing where opposer a competitor in the industry, a direct competitor of applicant, and one who used the mark at issue on or in connection with its product); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). Cf. 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).


18. See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co., Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983) (averments of priority, likelihood of confusion and damage resulting therefrom accepted to show petitioner’s standing with respect to pleaded grounds of fraud and abandonment despite unavailability of likelihood of confusion claim under Trademark Act § 2(d), 15 U.S.C. § 1052(d) because registration more than five years old).


TMBP 309.03(c) Grounds

In addition to standing, a plaintiff must also plead (and later prove) a statutory ground or grounds for opposition or cancellation. [Note 1.] See TBMP § 303.06 regarding pleading of grounds by joint plaintiffs. A plaintiff may raise any available statutory ground for opposition or cancellation that negates the defendant's right to registration. [Note 2.] See TBMP § 102.01 and cases cited therein. Grounds for petitions to cancel a Principal Register registration that is more than 5 years old are more limited and are specified in Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. § 1064(3) and 15 U.S.C. § 1064(5). See TBMP § 307.01.


In pleading the grounds for opposition or cancellation, citation to a section of the statute, although encouraged and often helpful in clarifying the nature of a set of allegations in a pleading, may not be sufficient to plead a claim under that section or place a defendant on proper notice of the extent of the claim. For example, although the Trademark Act provides that dilution under Trademark Act § 43(c), 15 U.S.C. § 1125 may be asserted as a claim in a Board proceeding, mere reference to that section of the Trademark Act is insufficient to plead a dilution claim, as proper pleading of the claim also requires an allegation that the plaintiff's mark was famous prior to the earliest date on which the defendant can rely for purposes of priority. [Note 3.]


A plaintiff cannot rely upon an unpleaded claim unless the plaintiff's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter. [Note 4.] See also TBMP § 314. In cases brought under Trademark Act § 2(d), 15 U.S.C. § 1052(d) the plaintiff must specifically plead any registrations on which it is relying and may not rely at trial on unpleaded registrations. [Note 5.] For information regarding express or implied consent to the trial of an unpleaded issue, see TBMP § 507.03(b).


Examples of available grounds for opposition and for cancellation are listed below. Please Note: The grounds identified in examples (2) (as to de jure functional marks), (3), (12) through (14), (17), and (21) are available for cancellation of a Principal Register registration over five years old. This list is exemplary, not exhaustive.


(1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant's mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive. [Note 6.]


(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant's mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, [Note 7] or that defendant's mark is primarily geographically descriptive [Note 8] or primarily geographically deceptively misdescriptive of them [Note 9]; or that defendant's mark is primarily merely a surname [Note 10]; or that defendant’s mark comprises any matter that, as a whole, is de jure functional; or if not de jure functional, that the product design has not acquired distinctiveness. [Note 11.]


(3) Trademark Act § 2(a), 15 U.S.C. § 1052(a): For example, that defendant's mark is geographically deceptive, [Note 12] that defendant's mark disparages members of a particular group, [Note 13] that defendant's mark consists of or comprises immoral, deceptive, or scandalous matter, [Note 14] that defendant's mark falsely suggests a connection with plaintiff's name or identity [Note 15], or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996. [Note 16.]


(4) That there was no bona fide use of defendant's mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a). [Note 17.]


(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). [Note 18.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [Note 19.]


(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon. [Note 20.]


(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. [Note 21.]


(8) That defendant's mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant's goods, [Note 22] or that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness. [Note 23.]


(9) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark. [Note 24.]


(10) That defendant's mark represents multiple marks in a single application (or registration) (“phantom mark”). [Note 25.]


(11) That defendant's mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [Note 26]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [Note 27.]


(12) That defendant's mark consists of or comprises the name of a particular living individual without the individual's consent. [Note 28.]


(13) That defendant's product design is generic. [Note 29.]


(14) That defendant's mark would dilute the distinctive quality of plaintiff's famous mark. [Note 30.]


(15) That defendant has used its mark so as to misrepresent the source of its goods or services. [Note 31.]


(16) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered. [Note 32.]


(17) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [Note 33.]


(18) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 (“Pan American Convention”), 46 Stat. 2907. [Note 34.]


(19) That defendant’s application is barred from registration by claim or issue preclusion. [Note 35.] See also TBMP § 311.02(b).


(20) That defendant's mark is the title of a single creative work and not considered a trademark. [Note 36.]


(21) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is "the flag or coat of arms or other insignia of the United States, or of any State or municipality" is prohibited. [Note 37.]


(22) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e). [Note 38.]


(23) That the intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060. [Note 39.]


The following is a brief discussion of the elements of a claim of likelihood of confusion, the most frequently encountered issue in Board inter partes proceedings.


Pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), plaintiff must assert, and then prove at trial, that defendant’s mark, as applied to its goods or services, so resembles plaintiff's previously used or registered mark or its previously used trade name as to be likely to cause confusion, mistake, or deception.


A. Priority

A plaintiff must plead (and later prove) priority of use. [Note 40.] In order to properly assert priority, a plaintiff must allege facts showing proprietary rights in its pleaded mark that are prior to defendant's rights in the challenged mark. [Note 40.] Such rights may be shown by, for example, ownership of an application with a filing date (or a registration with an underlying application filing date) prior to any date of first use on which defendant can rely; [Note 42] prior trademark or service mark use; [Note 43] or prior use analogous to trademark or service mark use. [Note 44.]


However, priority is not in issue in an opposition where opposer pleads (and later proves) that it owns a registration for its pleaded mark, [Note 45] provided that there is no counterclaim or separate petition to cancel the pleaded registration, or any counterclaim or separate petition to cancel the pleaded registration by the applicant is ultimately dismissed and the registration remains uncancelled. [Note 46.]


A plaintiff may be permitted to assert the proprietary rights or registration(s) of a third-party as a basis for a Trademark Act § 2(d), 15 U.S.C. § 1052(d) ground if plaintiff can show a legitimate interest in preventing confusion between the pleaded mark(s) and the defendant's mark. [Note 47.]


B. Likelihood of Confusion

The evidentiary factors the Board considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). These factors include the similarity of the marks, the relatedness of the goods and/or services, the channels of trade and classes of purchasers for the goods and/or services, the number and nature of similar marks in use on similar goods, the nature and extent of any actual confusion, and the fame of the prior mark. [Note 48.] The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases. [Note 49.]


Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead likelihood of confusion directly or hypothetically. [Note 50.] A hypothetical pleading may consist of assertions that if, as the trademark examining attorney (or the defendant) contends, plaintiff's mark so resembles defendant's mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then plaintiff will be damaged by the registration of defendant's mark. [Note 51.] Of course, in order to state a claim upon which relief can be granted, a hypothetical pleading of likelihood of confusion must be coupled with a pleading of one or more grounds for opposition or cancellation, such as, that defendant's mark has been abandoned; that plaintiff has priority of use (here, the hypothetical pleading of likelihood of confusion serves both as a pleading of plaintiff's standing and as part of the pleading of a ground under Trademark Act § 2(d), 15 U.S.C. § 1052(d)); etc. Thus, a plaintiff wishing to plead likelihood of confusion hypothetically in a proceeding based upon Trademark Act § 2(d), 15 U.S.C. § 1052(d) might assert, for example, that if, as the trademark examining attorney (or the defendant) contends, plaintiff's mark so resembles defendant's mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then the registration sought by defendant should be refused (or defendant's registration should be cancelled) because plaintiff has priority of use. [Note 52.]


Reverse Confusion: “Reverse confusion” does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion. [Note 53.]


NOTES:

1. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998). See, also, Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (if plaintiff can show standing on one ground, has right to assert any other grounds); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1396 n.1 (TTAB 2009) (grounds for opposition not pursued at trial or otherwise argued by opposer in its brief deemed waived).


2. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (Board does not have authority to determine whether a party has engaged in criminal or civil wrongdoings), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008); Flash & Partners S.p.A. v. I.E. Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) (ex parte examination issues do not form a basis for cancellation); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (parties’ agreement prohibits applicant’s use of its mark); Carano v. Vina Concha y Toro S.A., 67 USPQ2d 1149, 1152 (TTAB 2003) (Board has no jurisdiction to determine copyright infringement claim but may determine some limited copyright issues as necessary to determine questions of trademark registration); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996) (Board lacks authority to determine claim that Congress may not lawfully regulate registrant’s activities); Estate of Birov. Bic Corp., 18 USPQ2d 1382, 1386 (TTAB 1991); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 910 n.10 (TTAB 1984) (Board cannot decline to consider an issue because it is ex parte in nature).


Cf. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (“economic damage” is not a ground for opposition although it is relevant to issue of opposer's standing); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1591 (TTAB 2009) (Paris Convention does not provide independent cause of action); Franpovi SA v. Wessin, 89 USPQ2d 1637, 1640 (TTAB 2009) (potential plaintiff cannot exercise rights established by Santiago Convention because it cannot fulfill condition of application to the Inter American Bureau as set forth in Convention); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (asserted error by examining attorney is not a proper ground for opposition); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.3 (TTAB 2006) (Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) does not provide separate cause of action or defense); Saint-Gobain Abrasives Inc. v. Unova Industrial Automation Systems Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (whether description of the mark is adequate is an examination issue and fails to state a proper ground for opposition); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1157-58 (TTAB 2003) (no authority for assertion of unclean hands as a ground for opposition); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702 (TTAB 2002) (laches and acquiescence are affirmative defenses, not grounds for opposition); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (opposer's failure to submit copy of the foreign registration, which was the basis for issuance of opposer's pleaded registration, was an examination error and did not constitute a ground for counterclaim); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n.39 (TTAB 1994) (equitable defenses are not grounds for opposition); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the specimens, per se, does not constitute grounds for cancellation; the proper ground for cancellation is that the term has not been used as a mark); Century 21 Real Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (“it is not the adequacy of the specimens, but the underlying question of service mark usage which would constitute a proper ground for opposition”).


3. See Trademark Act § 43(c), 15 U.S.C. § 1125(c); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show that mark became famous before applicant’s use of challenged mark), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-1060 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer's mark at issue is famous); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2000) (must alleged when mark became famous).


4. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB 2007).


5. See, e.g., B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007) (“In its brief, opposer listed a seventh registration, but it was not pleaded and a copy was not made of record by notice of reliance (NOR) or through testimony, so it has not been considered”); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1919-20 (TTAB 2006). Cf. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1583 n.3 (TTAB 2008) (“The notice of reliance also includes status and title copies of several registrations which were not pleaded in the notice of opposition. Because applicant has not objected to opposer's reliance on the unpleaded registrations, and moreover has, in effect, treated them as of record in his brief, we deem opposer's pleading amended to assert the registrations under Fed. R. Civ. P. 15(b)”).


6. See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). See also First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (claim of prior intrastate use); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents inapplicable but likelihood of confusion found); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (earliest date respondent may rely upon is the filing date of its underlying application in absence of evidence of earlier use; petitioner must show earlier common law use in absence of registration); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (dissimilarity of marks controlling issue in likelihood of confusion analysis); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393 (TTAB 2007); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (although opposer failed to make its registrations of record, its burden is to demonstrate that it owns a trademark, which was used prior to applicant’s mark, and not abandoned); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (family of marks); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (determination of likelihood of confusion based on an analysis of all facts in evidence); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (several factors considered); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624 (TTAB 2007) (design marks compared); Miss Universe L.P., v. Community Marketing, Inc., 82 USPQ2d 1562, 1566 (TTAB 2007) (“Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors)”); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007) (doubt resolved in favor of prior user).


7. See Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1). See also, e.g., The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722-23 (Fed. Cir. 2001)  (deceptive misdescriptiveness) and Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 1922-23 (TTAB 2002) (mere descriptiveness). Regarding claims under Trademark Act § 2(f), 15 U.S.C. § 1052(f), see Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (in cancellation proceeding, presumption of validity of registration under Trademark Act § 2(f) includes presumption of acquired distinctiveness, and party seeking cancellation must overcome this presumption by preponderance of evidence; “burden” to prove that mark has acquired distinctiveness shifts to registrant only after plaintiff establishes prima facie case that mark has not acquired distinctiveness); Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (in opposing a claim under Trademark Act § 2(f), opposer has initial burden of challenging or rebutting applicant’s evidence of distinctiveness); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ultimate burden of persuasion under Trademark Act § 2(f) rests with applicant); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1768 (TTAB 2007) (mere descriptiveness; whether claim under Trademark Act § 2(f) is sufficient).


8. See Trademark Act § 2(e)(2), 15 U.S.C. § 1052(e)(2). See also, e.g., Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1504 (TTAB 2008) (whether mark is descriptive and/or primarily geographically descriptive, applicant has shown acquired distinctiveness); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994).


9. See Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) (the test for determining whether a mark is geographically deceptive under Trademark Act § 2(a), 15 U.S.C. § 1052(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3)); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1781-82 (Fed. Cir. 2001) (describing § 2(e)(3) analysis); Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1090-91 (TTAB 2012) (reopened for the limited purpose of having the parties address whether a significant portion of the relevant consumers would be materially influenced to purchase the goods by the geographic meaning of the mark), on remand from, 729 F.Supp.2d 246, 98 USPQ2d 1078 (D.D.C. 2010) (remanding on third factor of the test for determining whether a mark is primarily geographically deceptively misdescriptive); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (primarily geographically deceptively misdescriptive sufficiently pled); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 (TTAB 2011) (mark would be perceived as a misspelling of geographic location and found primarily geographically deceptively misdescriptive for the goods); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790-91 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term); In re Wada, 48 USPQ2d 1689, 1690-91 (TTAB 1998), aff'd, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).


10. See Trademark Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). See also, e.g., Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391-92 (TTAB 1979); Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971). Cf. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1174-75 (Fed. Cir. 2005) (“Section 44 applications are subject to the section 2 bars to registration, of which the surname rule is one.”); In re Piano Factory Group Inc., 85 USPQ2d 1522, 1526-27 (TTAB 2007) (surname plus “& SONS” refused as “primarily a surname”).


11. See Trademark Act § 2(e)(5), 15 U.S.C. § 1052(e)(5); TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995). See also, e.g., Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-Norwich Products Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA) for factors considered in determining functionality; Doyle v. Al Johnson's Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1783-84 (TTAB 2012) (petitioner failed to relate claim of functionality of goats on a roof to respondent's restaurant and gift shop services); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1918-19 (TTAB 2011) (registration on Supplemental Register for a precast concrete bridge unit); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (product configuration); and M-5 Steel Mfg, Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) (product design for roof vents). Cf. ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 97 USPQ2d 1048, 1056-58 (Fed. Cir. 2010) (same legal principles apply to a determination of functionality whether on the Principal Register or Supplemental Register); Duramax Marine, LLC v. R.W. Fernstrum & Company, 80 USPQ2d 1780, 1794 (TTAB 2006) (prohibition on the registration of functional marks does not extend to registration of twodimensional design mark for custom manufacturing services).


12. See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894, 1898 (TTAB 1992) (mark's geographic deceptiveness must be established as of the time the registration issues). Cf. Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (Board declines to consider geographically deceptive claim under Trademark Act § 2(a), 15 U.S.C. § 1052(a)); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term under the ambit of Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3) rather than Trademark Act § 2(a), 15 U.S.C. § 1052(a) (“The amended Lanham Act gives geographically deceptively misdescriptive marks the same treatment as geographically deceptive marks under § 1052(a).”) (citing In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003)); K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration).


13. See, e.g., In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (disparage religious affiliation); In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB 2008) (disparage religious affiliation); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (disparage professional baseball team); In re Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006) (disparage Native Americans); McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006); aff’d unpub’d, 240 Fed.Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S.1109 (2008) (while individual male citizen sufficiently alleged a “real interest” in the proceedings, he failed to properly allege “belief of damage,” as he does not inherently possess an immutable trait directly implicated by the mark or allege that others share his belief of damage); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (women in general and African American women in particular); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (members of plaintiff's Order and Italian-Americans in general); and Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1740-48 (TTAB 1999), rev’d, 284 F. Supp. 2d 96, 125, 68 USPQ2d 1225, 1248 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009) (cancellation action brought by Native Americans on grounds of disparagement barred by laches).


14. See, e.g., In re Fox, 702 F.3d 633, 639-40, 105 USPQ2d 1247, 1251-52 (Fed. Cir. 2012) (word mark that created a double entendre was unregistrable where a substantial composite of the general public would recognize that one meaning was vulgar); In re Luxuria s.r.o., 100 USPQ2d 1146 (TTAB 2011) (design configuration of a bottle in the shape of a hand with the middle finger extended upwards found to be vulgar and thus unregistrable as scandalous or immoral); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (deceptiveness); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581, 1588 (TTAB 2008) (scandalous or immoral); In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) (use of dictionary evidence to determine whether mark is scandalous); In re Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (analyzing scandalous in terms of “vulgarity”). See also Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) (standing to oppose on Trademark Act § 2(a), 15 U.S.C. § 1052(a) scandalousness grounds); In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (deception involving geographical mark); In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (scandalous mark); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (design mark scandalous); In re Old Glory Condom Corp., 26 USPQ2d 1216, 1220 (TTAB 1993) (design mark not scandalous). Cf. McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212, 1214 (TTAB 2006), aff’d unpub’d, 240 Fed.Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008) (authority of Trademark Act § 2(a), 15 U.S.C. § 1052(a) does not extend to goods or services that may be viewed as scandalous or immoral in nature).


15. See, e.g., University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988); Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985).


16. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (certification mark recognized as a geographical indication). Cf. In re Spirits International N.V., 86 USPQ2d 1078, 1080 n.2 (TTAB 2008) (refusal based on “deceptiveness” provision of Trademark Act § 2(a), 15 U.S.C. § 1052(a) and not that the mark is a geographical indication); In re Wada, 48 USPQ2d 1689, 1692 n.7 (TTAB 1998) (disclaimer of geographical indication cannot obviate a Trademark Act § 2(a), 15 U.S.C. § 1052(a) refusal).


17. See, e.g., Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676-77 (Fed. Cir. 2012) (software that is merely a conduit through which online retail services are rendered is not “in use in commerce” in association with software); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986); Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1769 (TTAB 1994) (“use in commerce” involves the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark), aff'd unpub'd, 108 F.3d 1392 (Fed. Cir. 1997); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (respondent's mark not in use in commerce at time of filing of his use-based application); Nutrasweet Company v. K & S Foods Inc., 4 USPQ2d 1964 (TTAB 1987); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542, 558 (TTAB 1983); Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543 (TTAB 1983). Cf. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 (TTAB 2007) (opposer’s nonuse claim dismissed as moot upon Board’s acceptance of applicant’s amendment of the filing basis of its application from Trademark Act § 1(a) to 1(b), 15 U.S.C. § 1051(a) to (b)); CarX Service Systems, Inc. v. Exxon Corp., 215 USPQ 345, 351 (TTAB 1982) (plaintiff must plead and prove that there was no use prior to filing date; mere claim that dates of use are incorrect does not state a claim of action).


18. See, e.g., L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012) (lack of a bona fide intent to use found where there was no documentary evidence, affirmative statement that no documents exist, no industry experience, no development or business plan, vague allusions to using the mark through licensing or outsourcing, and applicant’s demonstrated pattern of filing intent-to-use applications for disparate goods under the well-know and famous marks of others); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548-49 (TTAB 2011) (lack of a bona fide intent to use found where there was no documentary evidence, an affirmative statement that no such documents exist, and no other evidence to explain lack of documentary evidence); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1304-05 (TTAB 2010) (lack of a bona fide intent to use; no documentary evidence; record devoid of any other evidence of intended use); Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (lack of bona fide intent to use); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (lack of bona fide intent to use); Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993). Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1197 (TTAB 2011) (capacity to market and manufacture the goods, and identified goods consistent with a nature extension of current product line, rebut the lack of documentary evidence), appeal dismissed as moot, slip op. 2012-1260 (Fed. Cir. 2012); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and /or manufacture goods, having produced them in the past under different marks, rebuts claim that applicant lacked bona fide intent to use).


19. See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010).


20. See, e.g., In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986); General Food Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 825 (TTAB 1983), aff'd unpub'd, slip. op. 84- 517 (Fed. Cir. 1984).


21. See, e.g., Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d 1262 (TTAB 2008); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 1993); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990); Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf., e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) (where opposer was asserting that applicant's mark is a descriptive term which cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the term as a mark) recon. den., 36 USPQ2d 1328 (TTAB 1994).


22. See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.1994), In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, (Fed. Cir.1985); Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998); Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff'd, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975).


23. See Trademark Act § 1, Trademark Act § 2 and Trademark Act § 45, 15 U.S.C. § 1051, 15 U.S.C. § 1052 and 15 U.S.C. § 1127; Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393 (TTAB 2009) (“chirp” sound). Cf. In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (registration on the Principal Register of the sound emitted by applicant's product in its normal course of operation only available on a showing of acquired distinctiveness).


24. See, e.g., Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1309 n.12 (Fed. Cir. 2009) (registration on Supplemental Register never becomes immune from threat of invalidation on grounds that mark was not used prior to filing date); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., 29 USPQ2d 1146, 1160 (TTAB 1993) (allegation that slogan was used as mere advertising and not as a trademark); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989).


25. See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812-1813 (Fed. Cir. 2001); In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998), aff'd, 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).


26. Trademark Act § 45, 15 U.SC. § 1127. See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d,133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (more than three years of nonuse, commencing with filing date for majority of the identified goods, and no evidence rebutting prima facie showing); Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998). Cf. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) (plaintiff could not prove priority because it abandoned mark with no intent to resume use prior to use by defendant); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (plaintiff must allege ultimate facts pertaining to the alleged abandonment). See also Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1550-52 (TTAB 2012) (claim of abandonment is available with respect to a claim against a 66(a) registration, which is a registered extension of protection under 15 U.S.C. § 1141f(a)).


27. Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (failure to police third party use of marks); Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d 1262 (TTAB 2008) (use of marks pursuant to implied license inures to benefit of licensor); Tea Board of India v. The Republic of Tea, Inc. 80 USPQ2d 1881 (TTAB 2006); Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff’d mem., 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).


28. See Trademark Act § 2(c), 15 U.S.C. § 1052(c). See also Chester L. Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1909 (TTAB 2005), aff’d slip. op. 2007-1364 (Fed. Cir. Dec. 7, 2007); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (plaintiff must establish that the “name,” as used on the goods or services, points uniquely to plaintiff as a “particular living individual”); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994) (party asserting Trademark Act § 2(c), 15 U.S.C. § 1052(c) ground must have cognizable or proprietary right in the name). Cf. Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (Trademark Act § 2(c), 15 U.S.C. § 1052(c) does not apply to family surnames).


29. See Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009); Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (the term “generic name” as used in Trademark Act § 14(3), 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration).


30. See Trademark Act § 13(a) and Trademark Act § 14, 15 U.S.C. § 1063(a) and 15 U.S.C. § 1064; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Trademark Act § 43(c), 15 U.S.C. § 1125(c); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012) (full analysis of factors finding dilution by blurring); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1191-97 (TTAB 2011) (same), appeal dismissed as moot, slip op. 2012-1260 (Fed. Cir. 2012); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1886-90 (TTAB 2011) (same); Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) (same); National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) (commodity promotion slogan dilution by blurring); Coach Services, Inc. v. Triumph Learning LLC; 96 USPQ2d 1600 (TTAB 2010) (dilution by blurring and tarnishment), aff'd-in-part, rev'd-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show that mark became famous before applicant’s use of challenged mark), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-60 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer's mark at issue is famous); Moseley v. V Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62 USPQ2d 1857 (TTAB 2002), aff'd, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003). But see Fiat Group Automobiles, S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1113 (TTAB 2010) (the “well known mark” doctrine does not constitute a basis for pleading dilution in the United States, absent a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source thereof is anonymous and even if the products or services are not available in the United States).


31. See Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) (motion to dismiss misrepresentation of source claim denied); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleading of misrepresentation of source must be supported by allegations of blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner); The E.E. Dickinson Co. v. The T.N. Dickinson Company, 221 USPQ 713 (TTAB 1984) (petitioner allowed to go forward on claim of misrepresentation of source).


32. See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1758 (TTAB 2009) (mistaken belief that registration of mark in foreign country permits use of symbol); Barbara's Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1290 (TTAB 2007) (allegation that opposer has misused federal registration symbol construed “as a species of the equitable affirmative defense of unclean hands”); Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1846 n.3 (TTAB 2008). Cf. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976) (raised as affirmative defense).


33. See Fed. R. Civ. P. 9(b); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537 (TTAB 2009). See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) (“[P]leadings on information and belief require an allegation that the necessary information lies within the defendant's control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are based”) (citing Kowal v. MCI Communications Corp., 16 F.3d 1271, 1279 n.3 (D.C. Cir. 1994)); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with particularity); Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) (fraud requires a willful intent to deceive); G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (a finding of fraud as to one class in a multiple-class registration does not require cancellation of all classes in a registration); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1509 (TTAB 2008) (false claim of use of mark); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (same). Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009) (improperly pleaded fraud claim cannot be basis for summary judgment); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1762 (TTAB 2008) (timely proactive corrective action taken with respect to pleaded registrations raises rebuttable presumption that opposer did not intend to commit fraud); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (rebuttable presumption that opposer lacked willful intent to deceive Office arises when registrant amended identification of goods during ex parte prosecution); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud not found where statement identifying goods in application, although inartfully worded, was not false). Please Note: The Federal Circuit’s decision in In re Bose, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009), clarified that fraud in a Board proceeding may not be based merely on a finding that a party “knew or should have known” that it was not using its mark on all of the goods or services recited in an application. Accordingly, consideration of the holdings in cases involving fraud in a goods/services use statement pre-Bose should be reviewed under the standard for fraud as set forth in Bose and cases following Bose, and not as set forth in the line of Board cases following the “knew or should have known” standard set forth in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).


34. See British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000). Cf. 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).


35. See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) (opposition not barred by claim or issue preclusion); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) (claim preclusion doctrine did not bar petition to cancel); Stephen Slesinger Inc., v. Disney Enterprises Inc., 98 USPQ2d 1890 (TTAB 2011) (ownership of the marks at issue established in court proceeding; defendant entitled to summary judgment based on issue preclusion), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106 (TTAB 2011) (claim preclusion barred petitions to cancel against two registrations but not a third registration; "defendant preclusion" does not apply to facts of case and further discussed in contrast to "plaintiff preclusion"); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1398 (TTAB 2009) (finding in prior Board proceeding that mark failed to function with respect to “two-way radios” entitled opposer to judgment with respect to those goods under principles of issue preclusion). Cf. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008) (cancellation petition barred by doctrine of “defendant preclusion”). See also Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249 (TTAB 2011) (no claim preclusion based on district court's determination because civil action focused on respective uses and rights to use while Board proceeding focused on right to registration; issue preclusion based on district court determination found; no claim preclusion based on abandonments in related opposition because trademark owner allowed to make decision on which oppositions to defend).


36. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142-44 (TTAB 2011).


37. See, e.g., In re City of Houston, 101 USPQ2d 1534 (TTAB 2012); In re District of Columbia, 101 USPQ2d 1588 (TTAB 2012).


38. Kallamni. v. Khan, 101 USPQ2d 1864 (TTAB 2012).


39. Trademark Act § 2(d), 15 U.S.C. § 1052(d). See West Florida Seafood, Inc., v. Jet Restaurants, Inc., 31 F.2d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (in determining whether a party has established prior use, Board should look at the evidence as a whole); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1195 (TTAB 2012) (failure to prove priority at common law for goods not covered by pleaded registrations of record); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (failure to prove priority by preponderance of the evidence); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1287 (TTAB 2008) (respondent not precluded from moving for judgment on the pleadings on the issue of priority, despite its failure to assert priority as an affirmative defense, because priority is a required element of petitioner’s Trademark Act § 2(d), 15 U.S.C. § 1052 claim); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (priority established by proof of prior use).


40. See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628, 1632 (Fed. Cir. 1988); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (applicant may rely without further proof upon the filing date of its application as a “constructive use” date for purposes of priority); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1852 (TTAB 2008) (priority based on acquisition of acquired distinctiveness of merely descriptive mark); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1722 (TTAB 2008) (underlying application for registration predates filing date of applicant’s application); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008) (respondent may rely on filing date of registration at issue as constructive date of first use, predating petitioner’s claim of date of first use as verified in its petition); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (oral testimony, even of a single witness, if sufficiently probative, may be sufficient to prove priority); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (priority based on prior use and pleaded registrations); L. & J.G. Stickley, Inc. v. Ronald C. Cosser, 81 USPQ2d 1956 (TTAB 2007); Fram Trak Industries Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996); Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549 (TTAB 1994); Jimlar Corporation v. The Army and Air Force Exchange Service, 24 USPQ2d 1216 (TTAB 1992); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134 (TTAB 1992) (priority of acquired distinctiveness); Rolex Watch U.S.A., Inc. v. Madison Watch Co., Inc., 211 USPQ 352 (TTAB 1981) (proprietary right is a right residing in owner of mark and those in privity).


Cf. Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB 2012) (reliance solely on a Supplemental Registration insufficient to establish proprietary rights); Stephen Slesinger Inc., v. Disney Enterprises Inc , 98 USPQ2d 1890, 1896 n.17 (TTAB 2011) (plaintiff cannot establish priority because it cannot prove ownership of some prior right in view of the district court's finding that plaintiff transferred all its rights to defendant), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012); Diaz v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (in view of decision in applicant’s favor on issue of priority, opposer cannot as a matter of law prevail on likelihood of confusion claim); CDS Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572, 1580 (TTAB 2006) (in a concurrent use proceeding, after the jurisdictional requirement has been met, Board must then consider the issue of likelihood of confusion); Aktieselskabet af 21 November 2001 v. Fame Jeans, Inc., 77 USPQ2d 1861, 1864 (TTAB 2006), motion granted, 511 F.Supp.2d 1 (D.D.C. 2007), aff’d in part and rev’d in part, 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008) (priority of trademark rights in the United States depends solely upon priority of use in U.S., and not on priority of use anywhere in the world; opposer must rely upon filing date of its Trademark Act § 44, 15 U.S.C. § 1126 application for its use date).


41. See Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011) (opposer may rely on its earlier- filed intent-touse application filing date as a constructive use date for purposes of priority; any judgment is contingent upon registration of opposer's application); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (priority established by making pleaded registrations of record); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (where both petitioner and respondent are owners of registrations, petitioner must prove priority of use; may rely on filing date of application for registration); Kohler C. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (respondent may rely on the filing date of the application underlying its registration in establishing priority, in absence of allegation or proof of date of first use earlier than this date); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (priority established by introduction of status and title copy of registration during testimony deposition); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1339 (TTAB 2006) (plaintiff may rely on plaintiff’s application filing dates, subject to issuance of the registrations, for purposes of priority); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (owner of an intent-to-use application may rely on its application filing date as a constructive use date for purposes of priority); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991).


42. See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (insufficient record evidence of prior use); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (in absence of pleaded registration, petitioner must show prior common law use); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (petitioner’s use of mark prior to respondent’s first use); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1284 (TTAB 2008) (opposer’s use, while not large, was sufficient to constitute more than token use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (opposer must show use prior to applicant’s priority date; licensing by itself without sales is not use of the mark); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) (pleading of reliance on analogous use established priority); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (interstate or intrastate commerce is sufficient); Jimlar Corporation v. The Army and Air Force Exchange Service, 24 USPQ2d 1216, 1221 (TTAB 1992). Cf. NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718, 1727 (TTAB 2003) (use of mark on collateral promotional items in connection with its service did not give rise to a claim of priority based solely on use of the mark on collateral products).


43. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996) (must show that the activities claimed to constitute analogous use have had “substantial impact” on the purchasing public); West Florida Seafood, Inc., v. Jet Restaurants, Inc. 31 F.2d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994) (use in advertising); Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993) (trade name use); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991) (trade name use); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) (analogous use may be asserted against an intent-to-use application); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1965 (TTAB 2007) (use in intrastate commerce may be asserted by plaintiff); Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993) (priority of use against ITU application may be established with prior use analogous to trademark use); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (owner of ITU application may rely on prior use analogous to trademark use). Cf. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1218 (TTAB 2007) (opposer failed to acquire rights through analogous trademark use).


44. See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); (“Board must consider existing registrations of subsequent-user opposers because ... [Trademark Act § 2(d), 15 U.S.C. § 1052(d) provides that] an applicant can register, unless his mark is likely to cause confusion with a mark 'registered in the Patent Office or * * * previously used * * *'...”); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012) (there can be no priority dispute when an opposer properly introduces its registrations into the record and there is no counterclaim); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (priority not at issue for the goods and services recited in the pleaded registrations of record); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (priority not at issue on a motion for involuntary dismissal where pleaded registrations were made of record with notice of opposition); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (priority not at issue as to the marks and goods covered by the pleaded registrations, which are of record); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (had opposer properly introduced its pleaded registrations, priority would have been removed as an issue to be proved); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (pleaded registrations show current ownership and that each is valid and subsisting; priority is not an issue); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (opposer must properly introduce its pleaded registrations into the record so that priority will not be an issue); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007) (having submitted status and title copies of its pleaded registrations, opposer not required to prove acquired distinctiveness of marks); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) (where petitioner fails to properly make its pleaded registration of record it must rely on common law rights for purposes of likelihood of confusion analysis), aff’d unpub, 208 Fed. Appx. 886, 887 (Fed. Cir. Dec. 6, 2006); DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220, 1225 (TTAB 2005); SCOA Industries, Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975), appeal dismissed, 189 USPQ 15 (CCPA 1976); and Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998).


See also Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254-55 (TTAB 2012) (priority not at issue in opposition where pleaded registration of record resides on Supplemental Register).


Cf. regarding cancellation proceedings, Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1219-20 (TTAB 2011) (where respondent did not introduce evidence of earlier use, petitioner's priority established based on the filing date of the underlying application which matured into its pleaded registration); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB 2008); Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (in a cancellation proceeding the registrations of each party offset each other and petitioner must, in the first instance, establish prior rights); and American Standard Inc. v. AQM Corp., 208 USPQ 840, 841 (TTAB 1980) (priority must be proven in cancellation proceeding).


45. See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need not be shown by an opposer relying on a registered mark unless the applicant counterclaims for cancellation”); Contour Chair-Lounge Co., Inc. v. The Englander Company, Inc., 324 F.2d 186, 139 USPQ 285, 286 (CCPA 1963) (as long as a registration relied on by an opposer remains uncancelled, it will be treated as valid and entitled to all statutory presumptions; having dismissed petition to cancel pleaded registrations, and since no appeal was taken, Board was obligated to treat opposer's registrations as valid and as though no such petition had been filed); Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 49 USPQ2d 1313, 1315 (Comm'r Pat. 1998) (“prior use need not be shown by an opposer relying on a registration of its pleaded mark for its pleaded goods or services unless the applicant counterclaims for cancellation”). See also 37 CFR § 2.106(b)(2)(ii) (attack on registration must be made by counterclaim or separate claim); Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (better practice is to raise defense as a counterclaim); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 n.1 (TTAB 2007) (applicant’s arguments in its brief that opposer’s marks are functional, non-distinctive, and lack source-indicating significance constitute an impermissible collateral attack on opposer’s pleaded registrations, which arguments cannot be considered in the absence of a counterclaim for cancellation). Cf. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (petition or counterclaim to restrict the scope of goods in registration under Trademark Act § 18, 15 U.S.C. § 1068 was not a collateral attack on the validity of that registration).


Please Note: In cases where a plaintiff has relied on its ownership of a pleaded registration, any counterclaim or petition to cancel that registration is normally decided before the issues in the underlying opposition. See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1328 (TTAB 1992); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1272 (TTAB 1992).


46. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev'd, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (interest of trade association found sufficient); Association pour la Defense et la Promotion de l'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (petitioner committee’s right derived through inheritance found sufficient); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996) (petitioners failed to allege that they, or anyone else, possessed proprietary rights in the term); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (fraternal organization has standing); Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549, 1552 (TTAB 1994) (no legitimate interest in preventing confusion alleged).


47. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (to determine whether the marks are similar for purposes of assessing the likelihood of confusion, the Board will consider the appearance, sound, connotation and commercial impression of each mark); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (the nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).


See also Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1194 (TTAB 2012) (likelihood of confusion found based on evidence relevant to factors bearing on issue for certain classes of goods but not for one class of goods); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents not applied where both marks were Spanish words); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) (no likelihood of confusion found upon consideration of relevant factors); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008) (the Board will not take judicial notice that items of outerwear and undergarments are related items for purposes of determining whether parties’ goods are related); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007) (unnecessary to prove likelihood of confusion with respect to all goods set forth in application); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (fame); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (test for determining likelihood of confusion with respect to certification mark based on comparison of the mark as applied to the goods of the certification mark users); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) aff’d unpub’d, 208 Fed. Appx. 886, 887 (Fed. Cir. Dec. 6, 2006) (several factors considered); DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220, 1228 (TTAB 2005) (whether adoption of mark was in bad faith); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004) (likelihood of confusion in pharmaceutical context); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052-53 (TTAB 1992) (family-of-marks).


48. See Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (Board did not err in basing its decision on dissimilarity of marks alone); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004) (“Neither we nor the board, however, need consider every du Pont factor”); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Kellogg Co. v. Pack’em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (dissimilarity of marks dispositive); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (key considerations are similarities between the marks and goods recited in both parties’ registrations); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001).


49. See Fed. R. Civ. P. 8(d)(2).


50. See John T. Clark Company v. Colgate-Palmolive Company, 176 USPQ 93 (TTAB 1972); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971). Cf. Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Lia Jene Inc. v. Vitabath, Inc, 162 USPQ 469, 470 (TTAB 1969) (representations made by petitioner in attempting to overcome reference to secure its own registration cannot estop petitioner from taking a different position in proceeding to cancel such registration).


51. See 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, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as its basis for standing).


52. See Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1175 n.18 (TTAB 2011); American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989).


TMBP 309.03(d) Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation)

15 U.S.C. § 1068 [Trademark Act § 18] In such proceedings the Director may refuse to register opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings....


37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...


37 CFR § 2.133(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the involved application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.


37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.


37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.


Under Trademark Act § 18, 15 U.S.C. § 1068, the Board has the authority to cancel registrations in whole or in part, to restrict the goods or services identified in an application or registration, or to “otherwise restrict or rectify...the registration of a registered mark.” [Note 1.] (However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use proceeding). [Note 2.] For information concerning concurrent use proceedings, see TBMP Chapter 1100.



Relief under Trademark Act § 18, 15 U.S.C. § 1068, may be sought separately and apart from, or in addition to, any other ground. [Note 3.] A claim under Trademark Act § 18, 15 U.S.C. § 1068, is in the nature of an equitable remedy and does not require pleading and proof of specific grounds for cancellation or opposition, such as abandonment. [Note 4.]


Please Note: A claim in which the plaintiff seeks to delete specific items on the grounds that the defendant is no longer using, and has no intent to resume use of its mark on those goods or services, is not a claim under Trademark Act § 18, 15 U.S.C § 1068 but is essentially a “straightforward” pleading of abandonment. [Note 5.]


A claim to restrict or limit the goods or services under Trademark Act § 18, 15 U.S.C. § 1068. A plaintiff may seek to partially cancel a registration, or partially oppose registration only as to specific items in the identification of goods or services, or only to the extent of restricting the goods or services in a particular manner in terms of type, use, customers, trade channels, etc. [Note 6.] In such case, essentially a plaintiff is seeking either to delete specific items or limit the identification in some way. For example, a plaintiff may seek to restrict or modify the goods or services in a particular manner, that is, by the addition of wording that identifies the goods or services with greater particularity in terms of type, use, channels of trade, etc.


However, the Board will not permit an action to restrict or modify the goods or services in this manner where such a claim is divorced from the question of likelihood of confusion. [Note 7.] Thus, a party seeking to restrict an opponent's broadly worded identification of goods or services, in a case involving likelihood of confusion, must plead and prove that (i) the entry of a proposed restriction to the goods or services in its opponent's application or registration will avoid a finding of likelihood of confusion and (ii) the opponent is not using its mark on those goods or services that will be effectively excluded from the application or registration if the proposed restriction is entered. [Note 8.]


In considering a restriction of a registration, the Board will look to the nature of the use made by registrant as of the time the restriction is sought, not as of the time registration was sought. [Note 9.] A petition to partially cancel a registration by restricting the goods or services in a particular manner in terms of type, use, channels of trade, etc., in order to avoid a likelihood of confusion can be made against registrations over 5 years old as well as those less than 5 years old. [Note 10.] This is so because such a claim is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration. [Note 11.]


A claim to restrict or rectify with respect to the register the registration. A petition to restrict or clarify the description of a mark in a registration would fall under the provision giving the Board authority to “restrict or rectify” the register. [Note 12.] As in the case of a petition to restrict goods or services, a proper pleading to restrict the description of a mark could include allegations that, for example, the description of the mark in the registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would avoid a finding of a likelihood of confusion. [Note 13.]


That same provision, along with the authority to “register the mark...for the person...entitled thereto,” allows the Board to correct, respectively, a registration or application to identify the true owner, if such correction is warranted. [Note 14.]


Similarly, under this provision, a plaintiff may seek relief in the nature of entry of a disclaimer of an assertedly generic term forming only a portion of the mark, provided that the registration is less than five years old. [Note 15.]


As in the case of any other claim, a claim for partial opposition or partial cancellation ordinarily should be asserted prior to trial in order to give the defendant fair notice thereof. [Note 16] See also TBMP § 309.03, TBMP § 314 and TBMP § 507. In addition, the claim must be specific in nature so that the defendant has fair notice of the specific restriction being sought. [Note 17.] Any claim that is not pleaded in the complaint, as originally filed or as amended (or deemed amended) pursuant to Fed. R. Civ. P. 15(a) or 15(b), will not be entertained by the Board. [Note 18.] See also TBMP § 309.03, TBMP § 314 and TBMP § 507.


A defense which seeks to restrict a plaintiff's pleaded registration will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [Note 19.] See TBMP § 309.03(c), TBMP § 311.01(c) and TBMP § 313.01.


For information on a request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 311.02(b); TBMP § 507 and TBMP § 514. For information on asserting a counterclaim to partially cancel a registration, see TBMP § 313.01.


For information concerning the extent of default for failure to file an answer to a claim for partial opposition or cancellation, see TBMP § 312.01.


NOTES:

1. Trademark Act § 18, 15 U.S.C. § 1068. See also 37 CFR § 2.111(b) and 37 CFR § 2.133(b); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (Board has equitable power to restrict the goods and services under Section 18); Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998); and Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1354 (TTAB 2007) (proposed amendment denied); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1156 (TTAB 2003) (opposition based on applicant's alleged misconduct and unclean hands in its dealing with the U.S. Customs Service fails to constitute a claim that is cognizable under Trademark Act § 18, 15 U.S.C. § 1068).


2. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 1816 (TTAB 1990). Cf. Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting their geographic scope denied).


3. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1829 (TTAB 2013) (Section 18 relief may be sought in the alternative); Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010); Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); Eurostar, Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1995).


4. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (“…a claim for partial cancellation by restriction or modification of the goods or services listed in a plaintiff's pleaded registration is an equitable remedy under Section 18 of the Trademark Act, not tied to a ground to cancel.”).


5. Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer's registration goods specifically listed therein, such as “open reel audio tape,” on the grounds that opposer was no longer using and had no intent to resume use of its mark on such goods, it was proper to plead abandonment and applicant did not need to plead that a finding of likelihood of confusion will be avoided by the restriction it sought). See also Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192, 1195 & n.9 (TTAB 1996) (respondent's counterclaim alleging that respondent may have prior use of the mark in the trade channels sought to be excluded in petitioner's registration, was legally insufficient pleading of either likelihood of confusion or abandonment because likelihood of confusion is not available ground for cancellation of registration over five years old and because counterclaim lacked pleading of allegation that petitioner had not, as of the filing date of the counterclaim, commenced using its mark in connection with the goods for which counterclaimant sought to have deleted from registration).


6. See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); and Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954 (TTAB 2009) (amendment denied).


7. See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (“the Board will not exercise its authority under Section 18 to permit an action for partial cancellation by restriction or modification of the goods listed in an application or registration where such a claim is divorced from the question of likelihood of confusion.”); Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994) (discretion to limit a registration will only be exercised when such partial cancellation or restriction will avoid the finding of likelihood of confusion). Cf. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB) (a defendant may assert an affirmative defense by moving to restrict its own goods and/or services in order to avoid any likelihood of confusion alleged by plaintiff). Please Note: To the extent that cases decided prior to Eurostar permitted a restriction petition in the absence of a pleading that the restriction sought will avoid a likelihood of confusion, and to the extent that those cases required the pleading and proof of a separate ground of nonuse or abandonment, those cases were expressly overruled by Eurostar.]


8. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG 34 USPQ2d 1266, 1271 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (applicant's attempt to restrict opposer's registration for computer programs to “computer programs except computer programs for maintenance management” was rejected as it did not serve to avoid likelihood of confusion since proposed restriction failed to delineate different users or different channels of trade).


9. See Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996).


10. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994).


11. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially cancel pleaded registration to restrict scope of goods therein did not preclude opposer's reliance on pleaded registration to establish priority in the opposition).


12. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998).


13. See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479-80 (TTAB 1998).


14. See 8440 LLC v. Midnight Oil Company, 59 USPQ2d 1541, 1541 (TTAB 2001) (where the record showed that plaintiff, rather than defendant, was the true owner of the marks in the challenged application and registration and where the parties filed a joint motion that registration be issued in the name of plaintiff and that the register be rectified to show plaintiff as the owner of the existing registration, Board exercised authority under Trademark Act § 18, and granted motion). See also Chapman v. Mill Valley Cotton, 17 USPQ2d 1414, 1415 (TTAB 1990).


15. See Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (petitioner, seeking entry of a disclaimer of a purportedly generic term that formed a portion of a mark that is not generic in its entirety, and that resided on the Principal Register for more than five years, failed to state a claim upon which relief may be granted); Kellogg Co. v. Pack'em Enterprises, Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (counterclaim plaintiff seeking, in the alternative, that an amendment be entered to disclaim a purportedly descriptive portion of an asserted mark registered for less than five years stated a claim upon which relief may be granted).


16. See Penguin Books Ltd. v. Eberhard., 48 USPQ2d 1280, 1287 (TTAB 1998) (restriction proposed for first time in reply brief untimely); Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 n.10 (TTAB 1990) (petitioner's request to restrict channels of trade for respondent's goods denied when raised at end of rebuttal period). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (applicant’s proposed restriction to application denied; Board will only exercise this authority where the issue of restriction has been raised in either the pleadings or by motion or has been tried by the parties, and the possible restriction has been stated with precision).


17. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994) (party that seeks to restrict a registration or application should state with as much precision as possible the restriction it seeks, so that the issue is properly framed for trial); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1749 (TTAB 1992) (counterclaim failed to specify the least restrictive language applicant would accept); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1218 (TTAB 1990) (counterclaim that opposer's registration should be amended “to accurately describe the services” was vague); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985).


18. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (petitioner's request to restrict channels of trade for respondent's goods denied when raised at end of rebuttal period).


19. 37 CFR § 2.106(b)(2)(ii).


TMBP 309.04 Defects in Complaint That May Affect Institution of Proceeding

No proceeding will be instituted, and any submitted filing fee will be refunded in the following circumstances:


(1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 CFR § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified through mistake. See TBMP § 303.05.


(2) If an opposition or a petition for cancellation in paper form is filed prematurely (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board's action). See TBMP § 306.03 and TBMP § 307.03. Please Note: ESTTA, the Board’s electronic filing system, does not permit a party to file a notice of opposition prior to the opposition period or a petition to cancel prior to registration of the mark.


(3) If an opposition is filed in paper form after the time for opposing has expired; or is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed. See TBMP § 218, TBMP § 306.04, TBMP § 308 and TBMP § 309.02(b). Please Note: ESTTA, the U.S. Patent and Trademark Office’s electronic filing system, does not permit a plaintiff to file a notice of opposition after the expiration of the opposition period or without payment of the required fee. [Note 1.]


(4) If a party files an opposition in paper form but misidentifies the application serial number, and it is clear from the notice of opposition that another serial number was intended, should it come to the Board’s attention as the Board is manually instituting the opposition that a notice of allowance has issued with respect to the intended serial number or that the mark has been registered, the proceeding will not be instituted and the filing fee will be refunded.


(5) Where an opposition is filed through ESTTA and the applicant has not supplied its e-mail address in the application; the Board will then attempt to manually institute the opposition, and should the Board note the issuance of the notice of allowance or registration, the proceeding will not be instituted and the filing fee will be refunded.


Proceedings will be instituted and the filing fee charged in the following circumstances:

(1) If a party files a petition for cancellation in paper form against a Principal Register registration that is more than five years old, but does not allege any ground upon which such a registration can be cancelled (see Trademark Act § 14, 15 U.S.C. § 1064), the cancellation will still be instituted. (The insufficiency of pleaded claims must be raised by motion, such as under Fed. R. Civ. P. 12; they may also be addressed during a discovery conference conducted with Board participation.) Any fee submitted with the petition will not be refunded. Please Note: when a plaintiff uses ESTTA to file a notice of opposition or petition to cancel, ESTTA presents a checklist of available grounds and prompts the filer to select grounds for opposition or cancellation. [Note 2.] Failure to select or include any grounds will halt the filing process. For a petition to cancel, if the involved registration is more than five years old, ESTTA will present a listing of available grounds under Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. §§ 14(3) and (5), and will not allow a party to select other (unavailable) grounds.


(2) If a petition for cancellation is filed in paper form with respect to a registration which, at the time of the filing of the petition, was not a “live” registration (e.g., the time for filing an affidavit of use under Trademark Act § 8, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot. Any fee submitted with the petition for cancellation will not be refunded. Please Note: The ESTTA filing system prompts the user to input the registration number of the mark for which cancellation is sought. If the registration is not “live,” ESTTA will halt the process. ESTTA will also refuse to continue an opposition filing process if the potential opposer inputs a serial number for a mark that has not yet been published for opposition or for which the opposition period has expired.


(3) If a party files an opposition or a petition for cancellation in paper form, and immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, the proceeding will be instituted, and no refund will be made. However, if there is a defect in the opposition or petition for cancellation which precludes institution, no proceeding will be instituted, and any submitted fee will be refunded.


(4) If a party files an opposition or a petition for cancellation but misidentifies the application serial number or registration number, and the proceeding is instituted against the incorrect serial or registration number, the filing fee will not be refunded. [Note 3.] See TBMP § 306.01. When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather than vacated, so as to maintain the integrity of the proceeding numbers. If the opposition or cancellation was filed on paper, the Board will retain all papers. If the proceeding was instituted through ESTTA, the electronic file record for the erroneous opposition or cancellation will be retained in TTABVUE.


NOTES:

1. See Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008)(where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA “Validate” screen is inoperative; opposition dismissed as a nullity).


2. See O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 n.4 (TTAB 2010) (“When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition”).


3. See 37 CFR § 2.194(b)(1); Yahoo! Inc., v. Loufrani, 70 UPSQ2d 1735, 1736 (TTAB 2004).

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