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:


 TBMP 106.03    Form of Submissions

37 CFR § 2.126  Form of submissions to the Trademark Trial and Appeal Board.

(a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.

(1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.

(2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.

(b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. 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.

(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.


The rules now require that all submissions must be made to the Board via the Internet through ESTTA, subject to certain limited exceptions permitting submissions to be made on paper. Any permitted paper submission must be accompanied by a showing that ESTTA is unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. [ Note 1.] However, because ESTTA currently does not accept multimedia files, the Board will continue its current practice of accepting the submission of physical DVDs or CDs as exhibits in inter partes proceedings for the limited purpose of allowing parties to submit multimedia evidence, such as commercials. [ Note 2.]


The requirements for electronic submissions over the Internet can be found in 37 CFR § 2.126(a). Submissions over the Internet are made through ESTTA which is available on the USPTO website. [ Note 3.] Using ESTTA, a person can complete and submit forms, with attachments and/or exhibits, to the Board over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a form. Available forms and instructions can be found at: http://estta.uspto.gov. For more information regarding ESTTA, see TBMP § 110.


The Board requires use of ESTTA for the filing of all submissions in Board proceedings. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. The Board will provide general assistance to ESTTA filers but cannot guarantee that any problem will be resolved prior to a deadline. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper using another accepted filing method (e.g., certificate of mailing and Priority Mail Express® procedures). See TBMP § 111.02, et seq. (Certificates of Mailing), and TBMP §111.01, et seq. (Priority Mail Express®). Any paper filing must be accompanied by a showing that ESTTA is unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee.


The requirement for use of ESTTA under all circumstances for the filing of either extensions of time to oppose or notices of opposition against Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), further enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization ("WIPO") of oppositions against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied. Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted. [ Note 4.]


Filers may call the Board with questions about filing at (571) 272-8500 or (800) 786-9199 (toll free). Alternatively, filers may send non-urgent email inquiries to ESTTA@uspto.gov, and include a description of the problem, the ESTTA tracking number and Board proceeding number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. The email address is for technical ESTTA questions only. Documents will not be accepted for filing by email.


The requirements for paper submissions, when permitted, are set out in 37 CFR §2.126(b). A paper submission must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed in at least 11-point type and double-spaced, with the text on one side only of each sheet. If a paper submission contains dividers, the dividers may not contain tabs or any devices that extend beyond the edges of the paper, and must be on the same size and weight paper as the submission.

In addition, a paper submission must not be stapled or bound. This is important because all paper submissions are scanned electronically into the Board’s electronic information system and removing staples or binding prior to scanning is difficult and time-consuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in jammed scanning equipment and increasing the possibility that pages will become lost or disordered during scanning. [ Note 5.] These are additional reasons why the Board requires all submissions to be made via ESTTA.


Any paper document filed with the Board must be either the original or a legible copy thereof, on good quality paper. [ Note 6.] Extra copies of a document should not be submitted. [ Note 7.]


Exhibits pertaining to an electronic submission must be filed electronically through ESTTA as an attachment to the submission and conform to the requirements for electronic submissions, except when a party needs to submit a multimedia exhibit on CD or DVD. [ Note 8.] When making a submission of an exhibit on CD or DVD, parties are advised to include in the accompanying ESTTA filing a ‘‘placeholder’’ exhibit page to indicate the CD or DVD exhibit, and to mail the CD or DVD to the Board. See TBMP § 110.02(c) regarding size limitations. Exhibits to a submission are also subject to the requirements of 37 CFR § 2.126. Exhibits pertaining to a paper submission, where permitted, must be filed on paper and must comply with the requirements for a paper submission. [ Note 9.]


As with any paper submission, paper exhibits may not contain tabs, dividers or any such devices that extend beyond the edges of the paper, and moreover, may not be stapled or bound. However, it is acceptable to use binder clips or rubber bands, or similar devices that would allow for easy separation of the papers for scanning.


Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise reproduced so that an appropriate digitized or paper image of the exhibits can be filed with the Board in lieu of the originals. Exhibits consisting of videotapes or audiotapes of commercials, demonstrations, etc., may not be filed electronically.


The requirements for confidential submissions are specified in 37 CFR § 2.126(c). To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted for the public record. [ Note 10.] Confidential materials must be filed through ESTTA using the "CONFIDENTIAL" option. See TBMP § 120.02 and TBMP § 412.04 for information on filing confidential materials.


The Board, in its discretion, may refuse to enter and consider submissions which are not in compliance with 37 CFR § 2.126.


Format of submissions. Apart from the identification, signature, and form requirements referred to above, there is no particular format that submissions to the Board must follow. Nor does the Office have printed forms for any documents filed in Board proceedings. Where possible, parties are encouraged to include a citation to the TTABVUE entry and page number, e.g., 1 TTABVUE 2.


NOTES:


 1.   37 CFR § 2.126(b); see also 37 CFR §2.101(b)(2), 37 CFR §2.102(a)(2), 37 CFR §2.106(b)(1), 37 CFR §2.111(c)(2), and 37 CFR §2.114(b)(1).


 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). See also Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not, by agreement, override Trademark Rule 2.126 provisions for form of submissions; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM).


 3.   37 CFR § 2.2(g); 37 CFR § 2.126(a).


 4.   In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2021 (TTAB 2005).


 5.   See also RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT; 68 Fed. Reg. 55748, 55760 (September 26, 2003).


 6.   See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) ("the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).


 7.   DeLorme Publishing Co. v. Eartha’s Inc., 60 USPQ2d 1222, 1222 n.1 (TTAB 2000) (papers should be filed in single copies only unless otherwise required by rule); ITC Entertainment Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (unnecessary copies and attachments to motions resulted in undue delay and a waste of Board resources); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 n.1 (TTAB 1994).


 8.   37 CFR § 2.126(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69966 (October 7, 2016).


 9.   37 CFR § 2.126(b).


 10.   37 CFR § 2.126(c).



TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

January 2017

Chapter 300 PLEADINGS


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. ...

(1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.

(2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.

(3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.

* * * *

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 § 2.111(c)(1)  A petition to cancel a registration must be filed through ESTTA.

37 CFR § 2111(c)(2)  In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.

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 submission 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 submission will not be refused consideration if a signed copy is submitted to the 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 must be made to the Trademark Trial and Appeal Board via ESTTA.

(1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.

(2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.

(b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. 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.

(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.

* * * *

* * * *

Submissions, including oppositions and petitions to cancel, must be made to the Board electronically via ESTTA. [ Note 1.] An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not under any circumstances be filed in paper form [ Note 2.], but if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, 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, may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 3.] Similarly, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, a petition to cancel against a § 1 or § 44 registration or a § 66(a) registered extension of protection may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.]

The notice of opposition, or petition to cancel, corresponds to the complaint in a court proceeding. [ Note 5.] 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); 37 CFR §2.101(b)(1); 37 CFR §2.101(b)(3); 37 CFR § 2.111(c)(1).


 2.   See 37 CFR § 2.101(b)(3). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Section 66(a) application must be filed through ESTTA); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same).


 3.   See 37 CFR § 2.101(b)(2).


 4.   37 CFR § 2.111(c)(2).


 5.   See 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. When the complaint is filed electronically through ESTTA, the text in the electronic submission must be in at least 11-point type and double-spaced, and any exhibits pertaining to the electronic submission must be made electronically as an attachment to the complaint and be clear and legible. [ Note 1.]


An opposition against a Trademark Act § 1, Trademark Act § 44, and Trademark Act § 66(a), 15 U.S.C. § 1051  or 15 U.S.C. § 1126, or 15 U.S.C. § 1141f(a)  application must be filed electronically through ESTTA. [ Note 2.] Similarly, a petition for cancellation,must be filed electronically through ESTTA. [ Note 3.] In the rare instances when a complaint is filed on paper, the submission, including any exhibits, must be in at least 11-point type and double-spaced, 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(b).


NOTES:

 1.   See 37 CFR § 2.126(a)(1)  and 37 CFR § 2.126(a)(2).

 2.   See 37 CFR § 2.101(b)(1); 37 CFR § 2.101(b)(3).

 3.   37 CFR § 2.111(c)(1).


TMBP 309.02(a) Format for Complaint

Parties are required to use ESTTA to commence the proceeding and for general filing purposes. [ Note 1.] 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. In the rare circumstances that a filing through ESTTA cannot be accomplished, see 37 CFR § 2.101(b)(2)  and 37 CFR § 2.111(c)(2), the ESTTA form (docket) "cover sheet" created using ESTTA may be completed and then be printed out for mailing to the Board along with the notice of opposition or petition to cancel, accompanied by the requirements for such a paper filing. [ Note 2.] If filed on paper, the certificate of mailing by first-class mail procedure described in 37 CFR § 2.197  and the Priority Mail Express® procedure described in 37 CFR § 2.198  are both available. Please Note: Oppositions against § 66(a) applications cannot be filed on paper under any circumstances.


The Board views the ESTTA filing form and the attached pleading as comprising a single document or paper being filed with the Board. [ Note 3.] Upon filing via ESTTA, the filer will receive an email 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 an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA. [ Note 4.] 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 5.] Only the information provided on the ESTTA form is sent to WIPO. [ Note 6.]


With oppositions to applications that have other filing bases and with petitions to cancel, in the rare circumstances that they are filed on paper, (accompanied by a Petition to the Director and the required fee), they need not follow a particular format, but must meet the requirements of 37 CFR § 2.126(b)  for paper submissions and include the necessary information.


The complaint (which in ESTTA is the attachment) 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 and the current email address(es) of the current owner of record of the registration. [ Note 7.] 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 8.] 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, and the assignment has been recorded, 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). Plaintiffs are encouraged to provide information about a new owner, which may not be in the Office’s TSDR database, even if there is a domestic representative. [ Note 9.] Also, plaintiffs are encouraged to provide current contact information for attorneys, or in the case of registrations under § 66(a) of the Act, current contact information for the designated representative for the international registration, which may not be in the Office’s TSDR database. [ Note 10.] Providing such information facilitates the Board’s location and service of the proper parties in order to avoid defaults that may subsequently be set aside and thus prolong the process. [ Note 11.]


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.   37 CFR § 2.101(b)(1); 37 CFR § 2.111(c)(1); 37 CFR § 2.126(a).

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

 3.   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"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (The ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   37 CFR § 2.101(b)(3).

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

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

 7.   See 37 CFR § 2.112(a). 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).

 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 OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 10.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 11.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).


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 § 11.1, or other authorized representative, as specified in 37 CFR § 11.14(b). [ Note 1.] See TBMP § 106.02 and TBMP § 114.06. 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 or improperly signed complaint will not be refused consideration for that reason 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). Cf. Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 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 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"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (The ESTTA cover sheet is considered part of the complete opposition pleading).

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

 5.   See 37 CFR § 2.119(e); Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 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 Co., 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. [ Note 1.]

Service of the complaint is provided by the Board in conjunction with the notice of institution. [ 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).

 2.   See 37 CFR § 2.105(a)  and 37 CFR § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding Record.").


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

37 CFR § 2.105  Notification to parties of opposition proceeding(s).

(a) When an opposition in proper form (see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, number of the proceeding, and the application(s) involved; and the notice shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service of the notice of opposition to the applicant.

37 CFR § 2.101(e)  The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

37 CFR § 2.119  Service and signing.

(a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.

An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. [ Note 1.]

When an opposer files its notice of opposition with the Board, the opposition, including any exhibits, need not be served by the opposer on the defendant. Rather, the Board effects service of the complaint on the defendant. The Board provides notice to the defendant of the opposition proceeding by providing, in the notice of institution, a web link or web address to access the electronic proceeding record, and this constitutes service of the notice of opposition. [ Note 2.] Applicants will receive notification of the Board proceeding by email if Applicant authorized email communication with the Office. [ Note 3.]

As a reminder, 37 CFR § 2.18(b)(1)  requires applicants and parties to proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.

The filing date of the notice of opposition is the date of electronic receipt in the Office of the notice and the required fee. [ Note 4.] However, in the rare circumstance that a notice of opposition is filed on paper, and the paper filing is permitted by the Director, on petition, if the notice of opposition is filed by the "Priority Mail Express® 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 5.], 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 6.] The Certificate of Mailing procedure described in 37 CFR § 2.197  and the"Priority Mail Express® procedure described in 37 CFR § 2.198  are available for the filing of a notice of opposition on paper. [ Note 7.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [ Note 8.]

For information on filing fees see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.


NOTES:

 1.   37 CFR § 2.101(a).

 2.   37 CFR § 2.105(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding Record.").

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).

 4.   See 37 CFR § 2.101(e).

 5.   See 37 CFR § 2.198(a)(1).

 6.   See 37 CFR § 2.198(a)(2).

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

 8.   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.

37 CFR § 2.113  Notification of cancellation proceeding.

(a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.

37 CFR § 2.119  Service and signing.

(a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.

* * * *

A cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [ Note 1.]


When petitioner files its petition to cancel with the Board, the petitioner need not serve a copy of the petition on the owner of record for the registration at the owner’s address of record in the Office. Rather, the Board effects service of the complaint on defendant in a cancellation proceeding. The Board provides notice to the defendant of the cancellation proceeding by providing, in the notice of institution, a web address to access the electronic proceeding record, and this constitutes service of the petition to cancel. [ Note 2.] Presently, in cancellation proceedings, the Board will serve defendants by U.S. mail, pending system enhancements to facilitate email service at a later date. [ Note 3.]


Please Note: With respect to a registered extension of protection under Trademark Act § 66(a), 15 U.S.C. § 1141f, while the Board will effect service on the owner of the registration, see 37 CFR. § 2.113(b), the Board will endeavor to forward a courtesy copy of the notice to the international registration holder’s designated representative which will include a web link or web address to access the electronic proceeding record. [ Note 4.]


As a reminder, 37 CFR § 2.18(b)(1)  requires registrants and parties to proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.


The filing date of the petition is the date of electronic receipt in the Office of the petition and the required fee. [ Note 5.] However, in the rare circumstance that a petition to cancel is filed on paper and the paper filing is permitted by the Director on petition, if the petition is filed by the "Priority Mail Express® 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 6.], unless the "date in" date cannot be determined, in which case the date the petition is received in the Office is considered the filing date of the petition to cancel. [ Note 7.] The Certificate of Mailing procedure described in 37 CFR § 2.197  and the"Priority Mail Express®" procedure described in 37 CFR § 2.198  are available for the filing of a petition to cancel. [ Note 8.]


For information on filing fees, see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.


NOTES:

 1.   See 37 CFR § 2.111(a).

 2.   See 37 CFR § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.").

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016).

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 5.   37 CFR § 2.111 (e).

 6.   See 37 CFR § 2.198(a)(1).

 7.   See 37 CFR § 2.198(a)(2).

 8.   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.

* * * *

37 CFR § 2.104(a)  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 ground for cancellation, and indicate, to the best of petitioner’s knowledge, the name and address, and a current email address(es), 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.


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 cover sheet. [ Note 3.] For the same reason, and because only the information on the ESTTA-generated cover sheet is forwarded to WIPO automatically without review, the grounds for a notice of opposition are limited to those selected and reflected on the ESTTA-generated cover sheet 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.   37 CFR § 2.104(c). 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."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016).

 4.   37 CFR § 2.104(c); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011). See also Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (ESTTA form controls scope of permissible amendments to claims against § 66(a) application, because opposer did not limit grounds to any particular class on ESTTA form, opposer may seek leave to amend the attached pleading to assert those grounds against all three classes even though original attached pleading did not); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016).


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 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (2016), 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 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (2016).


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 Johnson v. City of Shelby, 574 U.S. ___, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007). See also Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1562 (TTAB 2011) (opposer’s assertion of use on "their related components" in connection with "lighting control panels and electrical light dimmers" provided fair notice to applicant of the scope of opposer’s asserted goods at common law); 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.   Johnson v. City of Shelby, 574 U.S. ___, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); 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). See also 5 C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 1219 (2016) ("The federal rules effectively abolish the restrictive theory of the pleadings doctrine, making it clear that it is unnecessary to set out a legal theory for the plaintiff’s claim for relief.").

 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); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1874 (TTAB 2011).


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.   Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); 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 L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB2009) (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. NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1033 (TTAB 2013) ("The fact that the word ‘Huck’ may be used in respondent’s written materials that happen also to bear respondent’s registered mark [XBOX 360], a mark not remotely similar to the word ‘Huck,’ does not establish a basis upon which to allege standing to cancel the registration of the subject mark."); 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.   Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d1023, 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 USPQ2d1023, 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 USPQ2d1023, 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), cert den. 134 S. Ct. 125 (2013); 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. Ing-Jing 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 Co. 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 Manufacturing 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.   See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (intrastate use by foreign opposer); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1395 (TTAB 2016) (opposer’s trade name use; admissions by applicant that opposer is direct competitor); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1565 (TTAB 2011) (prior use established by testimony and conceded by applicant); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8 (TTAB 2009) (use of mark established by testimony sufficient to show reasonable belief of damage even though use "purportedly based on a license which has not been clearly established in evidence"); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing established by showing of common law rights); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (prior use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (past use and present licensing); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use).

 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 Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); 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. denied,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 Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

 15.   See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) ("Applicant has standing based on opposers’ assertion of their marks and registrations against applicant in their notice of opposition."); 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. 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); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951-52 (TTAB 2014) (opposer established it is a manufacturer of the same or related goods as applicant and applicant did not contest opposer’s standing), vacated on other grounds and remanded, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); 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, 565 F. App’x 900 (Fed. Cir. 2014), (mem.); 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); Saint-Gobain 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. 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).


Electronic filing through ESTTA requires an opposer or petitioner to select relevant grounds for opposition or cancellation, with the required accompanying statement supporting and explaining the grounds. See 37 CFR § 2.104(a)  and 37 CFR § 2.112(a).


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 functional. [ 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.], that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness, or that defendant’s mark, consisting of trade dress, product design or packaging, 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. Trademark Act § 2(c), 15 U.S.C. § 1052(c). [ 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.]

(24) That the mark is generic. [ Note 40.] A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic. [ Note 41.]


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.


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 Women’s 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. denied, 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 Biro v. 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); on final decision, 110 USPQ2d 1623 (TTAB 2014), aff’d in part and rev’d in part on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016) (affirming TTAB); 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., United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) ("When an opposer pleads ownership of the underlying applications in the notice of opposition, the opposer may make the registrations which issue during the opposition of record without having to amend the notice of opposition to assert reliance on the registrations"); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1424 n.14 (TTAB 2014) (opposer may not rely on registrations that were unpleaded, the underlying applications were unpleaded and opposer did not assert that the pleadings should be amended); 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 Manufacturing 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., 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) Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1764-1767 (TTAB 2013) (burden on petitioner to rebut presumption that mark registered under Section 2(f) has acquired distinctiveness), aff’d , 565 F. App’x 900 (Fed. Cir. 2014) (mem.); 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). Cf. Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1524-25 (TTAB 2013) (assertion that a registration is not entitled to Section 15 incontestability because of alleged fraud in obtaining and maintaining the registration does not state a valid ground for cancellation of a registration that is more than five years old on the basis that the registered mark is primarily geographically descriptive).


 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., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1165(1995). See also, e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) and 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; AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013) (overall design of product configuration dictated by utilitarian concerns and as a whole is functional); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784 (TTAB 2013) (color black aesthetically functional for packaging for flowers); 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); and M-5 Steel Manufacturing 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 & Co., 80 USPQ2d 1780, 1794 (TTAB 2006) (prohibition on the registration of functional marks does not extend to registration of two-dimensional 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., Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) (disparage Native Americans), aff’d 112 F.Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), on appeal, No. 15-1874 (4th Cir.); 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).


Please Note: In December 2015, the Federal Circuit, in an en banc decision in In re Tam, 808 F.3d 1321, 117 USPQ2d 1001 (Fed. Cir. 2015) (en banc), held that the disparagement provision in § 2(a) is facially unconstitutional under the First Amendment. The U.S. Supreme Court granted a petition for certiorari to review the Federal Circuit’s Tam decision and consider the constitutionality of the disparagement provision. Therefore, the TTAB has suspended action on all ex parte appeals and inter partes proceedings that present issues under the disparagement provision in § 2(a) with the following exception: complaining parties in inter partes proceedings are given the option to dismiss claims based on § 2(a) disparagement without prejudice and to obtain a decision on the merits of their remaining claims. Any suspension of a TTAB matter based on the disparagement provision of § 2(a) will remain in place until the U.S. Supreme Court issues a decision in Tam, after which the USPTO will re-evaluate the need for further suspension.

 

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 L.P. 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).


In December 2015, the Federal Circuit, in an en banc decision in In re Tam, 808 F.3d 1321, 117 USPQ2d 1001 (Fed. Cir. 2015) (en banc), held that the disparagement provision in § 2(a) is facially unconstitutional under the First Amendment. The U.S. Supreme Court granted a petition for certiorari to review the Federal Circuit’s Tam decision and consider the constitutionality of the disparagement provision. Related cases which may be affected by the Court’s decision include In re Brunetti, 2014 LEXIS 328 (TTAB Aug. 1, 2014) (non-precedential), on appeal to the Federal Circuit from the TTAB’s affirmance of a § 2(a) refusal under the scandalousness provision. Therefore, the TTAB has suspended action on all ex parte appeals and inter partes proceedings that present issues under the scandalousness provision in § 2(a) with the following exception: complaining parties in inter partes proceedings are given the option to dismiss claims based on the § 2(a) scandalous provision without prejudice and to obtain a decision on the merits of their remaining claims. Any suspension of a TTAB matter based on the scandalousness provision of § 2(a) will remain in place until the Federal Circuit issues a decision in Brunetti, after which the USPTO will re-evaluate the need for further suspension.


 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 L.P. 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). See also Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1031-32 (TTAB 2015) (insufficiently pled claim where no assertion that public would recognize applicant’s mark as pointing uniquely to opposer).


 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); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929-30 (TTAB 2014) (claim of nonuse at time of filing for § 66(a) application legally insufficient for registration based on § 66(a) because time of nonuse begins from the date of registration); Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086-87 (TTAB 2013) (applicant’s mark not in use in commerce as of the filing date of the use-based application); 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 Co. 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., M.Z. Berger & Co. v Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015) (lack of bona fide intent is a proper statutory grounds on which to challenge a trademark application), affirming 108 USPQ2d 1463, 1471-77 (TTAB 2013) (documentary evidence, testimony and other record evidence do not support applicant’s claimed bona fide intent to use); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008-09 (TTAB 2015) (lack of bona fide intent to use found where no documentary evidence predated application filing date); 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. 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, 1190 (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), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); 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 Foods Corp. v. Ito Yokado Co., 219 USPQ 822, 825 (TTAB 1983), aff’d unpub’d, slip. op. 84-517 (Fed. Cir. 1984).


 21.   See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1304-07 (TTAB 2015) (facts inconsistent with individual former band member’s claim that he was the owner the mark); UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1249 (TTAB 2015) (presumption that a manufacturer is the owner of a disputed mark may be rebutted); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014) (ownership claim determined under accelerated case resolution); Nahshin v. Product Source International LLC, 107 USPQ2d 1257 (TTAB 2013); 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 Products 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).


For product design see Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (product design can never be inherently distinctive and requires showing of acquired distinctiveness); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d at 1839 (product configuration of pipe boot design has not acquired distinctiveness); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (product configuration).


For product packaging see also Two Pesos Inc. v. Taco Cabana Inc., 505 US 763, 23 USPQ2d 1081 (1992) (trade dress packaging may be inherently distinctive); In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (court applies four-part test from Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) to determine if trade dress packaging is inherently distinctive, or requires showing of acquired distinctiveness).


 24.   See, e.g., Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2012 (Fed. Cir. 2015) (service must be offered and actually provided to constitute use in commerce); 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.S.C. § 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); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1676-79 (TTAB 2013) (abandonment of a registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), based on over three years of nonuse where respondent did not use mark with recited services since at least the issuance date of the involved registration and where the nature of the use shown by respondent did not constitute use in commerce); 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., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422 (TTAB 2016) (abandonment found where parent company’s use of the mark cannot inure to the benefit of the subsidiary that owned the mark); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (no abandonment found where it was found that consumers would not view stylistic modifications as a different mark, resulting in the same continuing commercial impression), cert. denied, No. 15-660 (Jan. 25, 2016); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009)(failure to police third party use of marks); 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); Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1032-33 (TTAB 2015) (claim insufficiently pled where no assertion that licensing relationship gave opposer a proprietary right to assert the claim on behalf of third party); 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); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1297 (TTAB 2016) (party alleging dilution by blurring must prove that mark(s) became famous prior to any established, continuous use of Applicant’s involved marks, whether as a trademark or trade name, and not just prior to Applicant’s use in commerce of its challenged marks in connection with the goods identified in involved applications); N.Y Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1509-10 (TTAB 2015) (parody defense will not be considered as part of the assessment of a dilution claim; whether an applicant’s mark is registrable because it is being used in commerce to indicate source is counter to whether such use is noncommercial or fair use); McDonald’s Corp. v. McSweet LLC, 112 USPQ2d 1268, 1286 (TTAB 2014) (dilution also applies to family of marks); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2023-24 (TTAB 2014) (dilution by blurring, opposer may rely on applicant’s filing (constructive use) date to satisfy second prong of test); 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), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); 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 Co., 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), on final decision, 110 USPQ2d 1623 (TTAB 2014) (petition granted on claim of misrepresentation), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016) (affirming TTAB); 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 Co., 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); Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146 (TTAB 2016) (fraud claim based on statements made in application oath dismissed); Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) (claim of fraud sustained); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1928 (TTAB 2014) (failure to state a claim of fraud because statements were not false, not material and no allegation regarding intent, no leave to replead as would be futile); Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522-24 (TTAB 2013) (motion to dismiss denied where fraud claim sufficiently alleged); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy L.P., 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 International, 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); Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 (TTAB 2016) (claim preclusion inapplicable because fraud claim based on different transactional facts, defendant’s motion for summary judgment denied); 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"); NH Beach Pizza LLC v. Cristy's Pizza Inc., 119 USPQ2d 1861, 1863 (TTAB 2016) (issue preclusion may bar re-litigation of a standing determination made in a prior Board proceeding); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411-1413 (TTAB 2015) (claim preclusion bars cancellation proceeding in view of earlier opposition proceeding which was dismissed for failure of plaintiff to submit any evidence in support of its case; and where plaintiff in cancellation concedes it is same as plaintiff in opposition); 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), cert den., 134 S. Ct. 125 (2013). 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), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588 (TTAB 2012), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).


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


 39.   See Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1146-50 (TTAB 2013); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).


 40.   See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 531-32 (Fed. Cir. 1986) (two-step determination of whether a term is generic involves 1) what is the genus of the goods or services at issue and 2) is the term understood by the relevant public primarily to refer to that genus). Accord Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830-31 (Fed. Cir. 2015) (there is only one legal standard for genericness).


 41.   Turtle Wax, Inc. v. Blue Coral, Inc., 2 USPQ2d 1534, 1536 (TTAB 1987).


A.    Priority

A plaintiff must plead (and later prove) priority of use. [ Note 42.] 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 43.]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 44.] prior trademark or service mark use; [ Note 45.] or prior use analogous to trademark or service mark use. [ Note 46.]

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 47.] 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 48.]

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 49.]

NOTES:


 42.   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).


 43.   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 (TTAB1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628, 1632 (Fed. Cir. 1988); Otto Roth & Co. 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 Corp. 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., 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., 98USPQ2d 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) cert den. 134 S. Ct. 125 (2013); 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).


 44.   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-to-use 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).


 45.   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 Corp. 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).


 46.   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).


 47.   See King Candy Co. 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 Manufacturing 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 USPQ840, 841 (TTAB 1980) (priority must be proven in cancellation proceeding).


 48.   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. v. The Englander Co., 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)(3)(ii)  (attack on registration must be made by counterclaim or separate claim); Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1139 (TTAB 2013) (plaintiff must prove priority in cancellation and in oppositions where there is a counterclaim to cancel its pleaded registration); 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).


 49.   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).


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 50.] 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 51.]

Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead likelihood of confusion directly or hypothetically. [ Note 52.] 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 53.] 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 54.]


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 55.]


NOTES:

 50.   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); The North Face Apparel Corp. v. Sanyang Industries, Inc., 116 USPQ2d 1217, 1225 (TTAB 2015) (no context provided for figures in support of fame; burden of proving fame not met); Anheuser-Busch, LLC v. Innvopak Systems Pty. Ltd., 115 USPQ2d 1816, 1820-21 (TTAB 2015) (fame of mark proved, which weighs heavily in likelihood of confusion finding); 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 Manufacturing 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).


 51.   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 duPont 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).


 52.   See Fed. R. Civ. P. 8(d)(2).


 53.   See John T. Clark Co. v. Colgate-Palmolive Co., 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).


 54.   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 Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1150 (TTAB 2013) (Board did not consider hypothetical question of likelihood of confusion sought by senior party); 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).


 55.   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,


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 DAKIndustries 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); DAKIndustries 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 which counterclaimant sought to have deleted from registration).


 6.   See Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1196-97 (TTAB 2014); 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 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). See also Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1699 (TTAB 2014) (sufficient to allege that a feature of the description of the mark renders the description not specific to the mark as actually used and that the proposed amendment of the description to the color actually used would avoid a likelihood of confusion).


 14.   See 8440 LLC v. Midnight Oil Co., 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). But see Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (motion to amend, filed prior to opening of opposer’s testimony period, to add counterclaim to restrict the goods and services identified in opposer’s pleaded registrations granted).


 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)(3)(ii).


TMBP 309.04 Defects in Complaint That May Affect Institution of Proceeding

An opposition or a petition for cancellation must be filed via ESTTA. However, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, an opposition or petition for cancellation may be filed on paper, (except for an opposition against a § 66(a) application) if accompanied by a Petition to the Director under 37 CFR § 2.146 and the required fee. [ Note 1.] Following are circumstances that affect the institution of the proceeding, some of which are specific to paper filings.


No proceeding will be instituted, and any submitted filing fee for the proceeding 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) In the rare circumstance that an opposition or a petition for cancellationin paper form, accompanied by a Petition to the Director and the required fee, and the opposition or petition to cancel is deemed prematurely filed (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 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) In the rare circumstance that an opposition is filed in paper form accompanied by a Petition to the Director and the required fee, and the opposition is filed 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 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 2.]

(4) If a party files an opposition, but the notice of opposition 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) In the rare circumstance that a petition for cancellation is filed in paper form accompanied by a Petition to the Director and the required fee, but the petition to cancel is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the cancellation may not be instituted. [ Note 3.]


No proceeding will be instituted and the filing fee will not be refunded in the following circumstances:

(1) If a party files an opposition or petition for cancellation in paper form without the Petition to the Director and the required fee under37 CFR §2.146, the proceeding will not be instituted and the filing fee will not be refunded.

(2) If a party files an opposition or petition for cancellation in paper form accompanied by the Petition to the Director and the required fee and the required showing in the Petition to the Director is found to be insufficient, the proceeding will not be instituted and the filing fee will not be refunded.

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

(1) In the rare circumstance that a party files a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the Petition to the Director is granted, and the petition to cancel is filed 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. It 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 4.] 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. § 1064(3)  and 15 U.S.C. § 1064(5), and will not allow a party to select other (unavailable) grounds.

(2) In the rare circumstances that a petition for cancellation is filed in paper form, accompanied by a Petition to the Director and the required fee, and at the time of the filing of the petition, the registration sought to be cancelled 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) In the rare circumstances that a party files an opposition or a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the filer 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, in cases where the Petition to the Director to file on paper is granted and there is a defect in the opposition or petition for cancellation which precludes institution, no proceeding will be instituted, and any submitted fee for the opposition or petition to cancel 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 5.] 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 appropriately dispose all physical papers because the papers are scanned shortly after filing and appear in the docket for the instituted, though dismissed, proceeding. If the proceeding was instituted through ESTTA, the electronic file record for the erroneous opposition or cancellation will be retained in TTABVUE.


NOTES:

 1.   37 CFR § 2.101(b)(1); 37 CFR § 2.101(b)(3); 37 CFR § 2.101(b)(2); 37 CFR § 2.101(d); 37 CFR § 2.111(c)(1); 37 CFR § 2.111(c)(2).


 2.   See 37 CFR § 2.101(d); 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). See also Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1908 (TTAB 2014) (Board applies opportunity to cure provision in § 2.119(e) to improperly signed complaint, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office").


 3.   See 37 CFR § 2.111(d).


 4.   37 CFR § 2.104(a)  and 37 CFR § 2.112(a); 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").


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

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