TBMP Version

Navigation

313 Counterclaims

313.01 In General

37 CFR § 2.106(b)(2)

(i) A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.
(ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.
(iv) The times for pleading, discovery, testimony, briefs or oral argument will be reset or extended when necessary, upon motion by a party, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

37 CFR § 2.114(b)(2)

(i) A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.
(ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.
(iv) The times for pleading, discovery, testimony, briefs, or oral argument will be reset or extended when necessary, upon motion by a party, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

The Board cannot entertain an attack upon the validity of a registration pleaded by a plaintiff unless the defendant timely files a counterclaim or a separate petition to cancel the registration. [ Note 1.]

Although 37 CFR § 2.106(b)(2)(ii) and 37 CFR § 2.114(b)(2)(ii) specifically permit a defense attacking the validity of a plaintiff’s pleaded registration to be raised either as a counterclaim or as a separate petition to cancel, the better practice is to raise the defense as a counterclaim. [ Note 2.]If the defense is raised as a separate petition to cancel, however, the petition itself and any covering letter should include a reference to the original proceeding. Further, a defendant that fails to timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. [ Note 3.]See also TBMP § 313.04.

The only type of counterclaim that may be entertained by the Board is a counterclaim for cancellation of a registration owned by an adverse party. [ Note 4.]

As provided in Trademark Act § 18, 15 U.S.C. § 1068, a counterclaim may seek to cancel a registration in whole or in part, or to restrict or rectify with respect to the register the registration in some manner. For example, the counterclaimant may seek to cancel the registration only as to some of the listed goods or services, or only to the extent of restricting the goods or services in a particular manner (described in sufficient detail to give the respondent fair notice thereof). [ Note 5.] See TBMP § 309.03(d). In order to restrict or rectify the register, a counterclaimant may seek to have a description or a disclaimer entered. [ Note 6.] 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 7.] See TBMP Chapter 1100. A counterclaim to partially cancel a registration by deleting some of the goods or services therein or by restricting the manner of use of the goods or services therein, or to restrict or rectify the register as to the registration, in order to avoid a likelihood of confusion is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration or have to be tied to a properly pleaded ground for opposition or cancellation. [ Note 8.]See TBMP § 309.03(b). The counterclaimant must allege that the partial cancellation will avoid a likelihood of confusion, i.e., that it will be commercially significant, and that the registrant does not use the mark on the goods or services for which deletion is being sought. [ Note 9.] On the other hand, a counterclaim to delete goods or services from the registration on the ground that registrant does not use the mark on those goods or services and has no intent to resume use, without regard to likelihood of confusion, is a straightforward abandonment claim and not a claim under Trademark Act § 18, 15 U.S.C. § 1068 and in such case, counterclaimant need not allege that a likelihood of confusion will be avoided through the restriction. [ Note 10.]

A counterclaim is the legal equivalent of a petition to cancel. Thus, the provisions of 37 CFR § 2.111 -37 CFR § 2.115 , governing petitions to cancel, are applicable to counterclaims. [ Note 11.]

In instances where a counterclaim has been filed, the Board will set the time for answer thereto, as well as reset the deadline for the discovery conference, for making initial disclosures, and all subsequent dates. [ Note 12.] See TBMP § 401.01 - TBMP § 401.03. When necessary to enable a party fully to present or meet a counterclaim or separate petition to cancel a registration, the times for pleading, discovery (including conferencing and initial and expert disclosure dates), pretrial disclosures, testimony, briefs and/or oral argument will be reset or extended. A party that believes that such a resetting or extension is necessary should file a motion therefor with the Board. [ Note 13.] See also TBMP § 509, regarding motions to extend.

NOTES:

1. See 37 CFR § 2.106(b)(2)(ii) and 37 CFR § 2.114(b)(2)(ii); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 USPQ 46, 46 (CCPA 1969); Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) (since no counterclaim had been filed, Court disregarded applicant’s claims that opposer had admitted periods of nonuse); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (improper for Board to allow applicant to collaterally attack registration in opposition where, although registration had been directly attacked by applicant in separate petition to cancel, said petition to cancel had been dismissed); Skincode AG v. Skin Concept AG, 109 USPQ2d 1325, 1329 n.5 (TTAB 2013) (absent a counterclaim, applicant’s argument regarding the possible connotation of the Swiss flag is an impermissible collateral attack on opposer’s pleaded registration); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1174 n.17 (TTAB 2011) (plaintiff’s mark is registered without either a disclaimer of the term at issue or a claim of acquired distinctiveness, and there is no counterclaim so Board cannot entertain any attack on the term as being merely descriptive); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 n.1 (TTAB 2007) (applicant’s contentions 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, and cannot be considered absent a counterclaim for cancellation); Drive Trademark Holdings LP v. Inofin , 83 USPQ2d 1433, 1437 (TTAB 2007) (defendant’s argument that plaintiff’s registered marks are descriptive may be considered only in timely counterclaim or separate petition to cancel, but Board will consider defendant’s position to extent it goes to the strength of plaintiff’s mark in view of use of term by others);Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1083 (TTAB 2007) (applicant cannot argue that opposers’ pleaded registrations are functional without counterclaiming or petitioning to cancel the marks on this basis); and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). See also Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 nn.5 and 12 (TTAB 2006) (a showing of descriptiveness or genericness of part of a mark does not constitute a collateral attack on the registration; however arguments directed to show opposer failed to exercise control over logo mark, where only word mark registration was challenged, constitutes impermissible attack on logo mark).

2. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

3. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

4. See UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (scope of applicant’s request, to restrict all of opposer’s registrations, pending applications, and future applications, is in the nature of an injunction and not considered); Pyttronic Industries Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 n.2 (TTAB 1990) (counterclaim to cancel "any registration which might issue in the future from pleaded application" stricken as improper);International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983) (counterclaim to "refuse any application filed by petitioner" was improper).

5. See Trademark Act § 18, 15 U.S.C. § 1068; 37 CFR § 2.111(b) and 37 CFR § 2.133(b).

6. See Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010) (partial cancellation on the ground that portion of the mark is a generic term unavailable where the registration sought to be cancelled is more than 5 years old); Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("a claim for cancellation by restriction or modification …is an equitable remedy …, not tied to a ground to cancel").

7. 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).

8. See Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("a claim for cancellation by restriction or modification …is an equitable remedy …, not tied to a ground to cancel");Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3(TTAB 1995) ("[t]he restriction provisions of Section 18 are in the nature of an equitable remedy").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).

9. See Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1198 (TTAB 2014) (proposed restrictions found not commercially significant because entry thereof would not avoid finding of likelihood of confusion, and "fairness" does not "demand" such restriction); Eurostar Inc. v. "Euro-Star" Reitmoden Gmbh & Co. 34 USPQ2d 1266, 1271 n.3(TTAB 1995). Cf. Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) (successful use of Section 18 as an affirmative defense to a claim of likelihood of confusion in an opposition; amended applications allowed to proceed to registration).

10. See Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437-38 (TTAB 1995) (party may seek partial cancellation of a registration based on a theory of abandonment as to discrete goods and services without the need to resort to Section 18).

11. See 37 CFR § 2.106(b)(2)(iii) and 37 CFR § 2.114(b)(2)(iii).

12. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42255 (August 1, 2007) ("In short, there are many potential triggers that will prompt the Board to reset discovery, disclosure and trial dates").

13. See 37 CFR § 2.106(b)(2)(iv) and 37 CFR § 2.114(b)(2)(iv).

313.02 Fee For Counterclaim

37 CFR § 2.106(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.

37 CFR § 2.114(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.

A counterclaim for cancellation of a plaintiff’s registration is the legal equivalent of a separate petition to cancel. The required filing fee must be paid when a petition to cancel takes the form of a counterclaim, just as it must be paid when a petition to cancel takes the form of a separate proceeding. [ Note 1.] That is, the required fee (see 37 CFR § 2.6 ) must be paid for each party joined as counterclaimant for each class sought to be cancelled in each registration against which the counterclaim is filed. [ Note 2.] Cf. TBMP§ 308.02.

If no fee is submitted with the counterclaim, or the fee is insufficient to pay for one person to counterclaim to cancel the registration in at least one class, the counterclaim will be rejected. If the counterclaim is accompanied by fees sufficient to pay for one person to counterclaim to cancel the registration in at least one class, but less than the required amount because multiple party counterclaimants and/or multiple classes in the registration are involved, the fee(s) submitted will be applied in the manner set forth in 37 CFR § 2.111(c)(3)(ii) -37 CFR § 2.111(c)(3)(iii). The Board, in its notice acknowledging the counterclaim, will identify the parties and classes for which the required fees were submitted.

NOTES:

1. See 37 CFR § 2.106(b)(2)(iii) and 37 CFR § 2.114(b)(2)(iii); Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (payment of fee is necessary to give Board jurisdiction); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1748 (TTAB 1992), summ. judgment granted in part, 26 USPQ2d 1926 (TTAB 1993) (same); Sunway Fruit Products, Inc. v. Productos Caseros, S. A., 130 USPQ 33, 33 (Comm’r 1960) (requirement for fee is statutory and cannot be waived).Cf. Fred Beverages, Inc. v. Fred’s Capital Management Co., 605 F.3d 968, 94USPQ2d 1958, 1960 (Fed. Cir. 2010) (Board’s decision denying petitioner’s motion for leave to amend cancellation petition because petitioner did not pay fee for amendment at time of filing the motion, reversed; case remanded to Board for further consideration of motion to amend.)

2. See 37 CFR § 2.111(c) and 37 CFR § 2.112(b) .

313.03 Form and Substance of Counterclaim; Service of Counterclaim

A counterclaim should be generally similar in form to a petition to cancel (for information concerning the form of a petition to cancel, see TBMP § 309.02. However, a counterclaim filed as part of the counterclaimant’s answer to the adverse party’s complaint necessarily differs somewhat in format from a separate petition to cancel.

Moreover, just as a plaintiff filing a separate petition to cancel must serve a copy thereof on the defendant(s), [ Note 1.], a counterclaimant must serve a copy of the counterclaim (with any exhibits thereto) on every other party to the proceeding, and must make proof of such service before the Board will consider the counterclaim. [ Note 2.]

The pleading of the substance of a counterclaim may also differ somewhat from the pleading of the substance of a separate petition to cancel. For example, a counterclaimant need not plead its standing to assert a counterclaim to cancel a registration pleaded by the plaintiff in its complaint. The counterclaimant’s standing in such a case is inherent in its position as defendant to the complaint. [ Note 3.]

In some instances, the grounds for cancellation available in the case of a counterclaim differ from those available in the case of a petition to cancel that are not in the nature of a counterclaim. Trademark Act § 14, 15 U.S.C. § 1064, limits, after a five-year period, the grounds upon which most Principal Register registrations may be cancelled. If the plaintiff in a proceeding before the Board relies on such a registration and the five-year period has not yet expired when the plaintiff’s complaint is filed, the limitation does not apply to a counterclaim filed by the defendant therein for cancellation of that registration. This is so even if the five-year period has expired by the time the counterclaim is filed. In such cases, the filing of the plaintiff’s complaint tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a counterclaim may be based. [ Note 4.]

The counterclaim plaintiff must identify the particular registrations for which is seeks a cancellation or restriction where more than one registration is asserted. If ESTTA is used to file the counterclaim, the counterclaim may be considered to pertain to the registration or registrations set forth in the ESTTA cover sheet. [ Note 5.]

NOTES:

1. See 37 CFR § 2.111(a) and 37 CFR § 2.119(a).

2. See 37 CFR § 2.119(a).

3. See 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, 1880 (TTAB 1990) (finding of no likelihood of confusion in the opposition did not remove defendant’s standing to counterclaim for abandonment); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded registration on ground of descriptiveness or genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term sought to be cancelled); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 95 (TTAB 1984) (counterclaimant clearly has personal stake in the controversy); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 856 (TTAB 1981) (damage assumed, and with properly pleaded ground is sufficient to place validity of registration in issue); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979).

4. See, e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 522 (CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980) (grounds not limited where petition to cancel registration pleaded in opposition was not filed until after fifth anniversary date of registration, because opposition wherein opposer relied on registration was filed before anniversary date); Humble Oil & Refining Co. v. Sekisui Chemical Co. Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not limited where, although counterclaim to cancel pleaded registration was not properly filed until after fifth anniversary date of registration, opposition wherein opposer relied on said registration was filed before anniversary date); Sunbeam Corp. v. Duro Metal Products Co., 106 USPQ 385, 386 (Comm’r 1955). See also 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION§ 20:67 (4th ed. 2015). Cf. regarding concurrent use proceedings, Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (5-year period tolled where applicant, prior to expiration of 5-year period files a proper concurrent application or an amendment converting an unrestricted application to one seeking concurrent use naming registrant as exception to applicant’s right to exclusive use).

5. UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872-73 (TTAB 2011) (applicant paid two fees for a counterclaim but only indicated one registration, found in the ESTTA cover form, and opposer owns no registration in the class for which applicant seeks a restriction).

313.04 Compulsory Counterclaims

37 CFR § 2.106(b)(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.

37 CFR § 2.114(b)(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith.

Counterclaims for cancellation of pleaded registrations in Board proceedings are governed by 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i) . [ Note 1.] If the defendant knows the grounds for a counterclaim to cancel a pleaded registration when the answer is filed, the counterclaim must be pleaded with or as part of the answer. [ Note 2.] If grounds are learned during the course of the proceeding, through discovery or otherwise, the counterclaim must be pleaded promptly after the grounds therefor are learned. [ Note 3.]

A defendant who fails to timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. In such a case, the separate petition will be dismissed, on motion, on the ground that the substance of the petition constitutes a compulsory counterclaim in another proceeding, and that it was not timely asserted. [ Note 4.]

If a defendant confronted with a motion for summary judgment knows of grounds for a counterclaim that might serve to defeat the motion, the counterclaim should be asserted in response to the motion, even if no answer to the complaint has yet been filed. [ Note 5.]

A plaintiff which fails to plead a registration, and later seeks to rely thereon, will not be heard to contend, if defendant then moves to amend its answer to assert a counterclaim to cancel the registration, or then files a separate petition to cancel the registration, that the counterclaim or separate petition is untimely because it was not pleaded when defendant filed its answer. A plaintiff may not, by failing to plead a registration on which it intends to rely, deprive a defendant of its right to petition to cancel the registration, either by counterclaim or by separate petition, at such time as opposer seeks to rely upon the registration. Even if the defendant knows grounds for cancellation of a plaintiff’s unpleaded registration when the defendant files its answer, the defendant is under no compulsion to seek to cancel the registration unless and until the plaintiff pleads the registration. [ Note 6.]

NOTES:

1. See 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i) . See also TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (although parties referred to the "when justice requires" element of Fed. R. Civ. P. 13(f), counterclaims to cancel pleaded registrations in oppositions are governed by 37 CFR § 2.106(b)(2)(i). But see See’s Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395, 1397 (TTAB 1989) (Board applied Fed. R. Civ. P. 13(f) "when justice requires" standard where grounds for counterclaim filed as a separate petition to cancel were known at time of answer to opposition). Please Note: Effective December 1, 2009, Fed. R. Civ. P. 13(f) was abrogated as being redundant of Fed. R. Civ. P. 15(a)(2). That section still holds that leave should be freely given "when justice so requires."

2. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1314 (TTAB 1989) (since it was unclear from applicant’s submissions to amend whether counterclaim was timely, i.e., whether grounds were known by applicant at time original answer was filed, applicant was allowed time to explain why it was not pleaded with answer); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1224 (TTAB 1987) (motion to amend answer to add additional ground to existing counterclaim denied since such ground was available at time of original answer); Consolidated Foods Corp. v. Big Red, Inc., 231 USPQ 744, 746 (TTAB 1986) (petitioner cannot avoid effect of its failure to timely assert counterclaim at time it filed its answer as defendant in prior opposition since grounds existed and were known to petitioner at that time). But see See’s Candy Shops Inc. v. Campbell Soup Co.,12 USPQ 1395, 1397 (TTAB 1989) (although counterclaim [filed as separate petition to cancel] was premised on facts known by applicant at time it filed its answer in the opposition, Board allowed the petition to go forward, notwithstanding that the petition was filed two weeks after answer was filed in the opposition).

3. See VitalineCorp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1759 (TTAB 2008) (motion to amend answer to assert counterclaim granted); Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1155 (TTAB 2005) (motion to amend answer to assert counterclaim granted);Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1597 (TTAB 1992) (petitioner permitted to brief and present evidence on the issue of whether he had prior knowledge of the facts forming the basis of the newly-asserted counterclaim for cancellation), counterclaim dismissed, 24 USPQ2d 1376 (TTAB 1992); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) (counterclaim pleaded promptly after obtaining the information necessary to assert counterclaim during discovery and before discovery had closed); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221 (TTAB 1987); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984). See also J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (if applicant learns through discovery that grounds exist for counterclaim, applicant may move to amend answer to assert such counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 170 (TTAB 1975) (applicant would not be barred by the dismissal with prejudice of its counterclaim in prior proceeding thirteen years earlier from asserting new counterclaim on same ground, i.e., that registered mark has become common descriptive name of identified goods, provided new counterclaim is based solely on circumstances occurring subsequent to termination of prior proceeding); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974) (same).

4. See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (Trademark Rule requiring the pleading of compulsory counterclaims was "clearly violated" by an assertion of a claim not as a counterclaim in the original proceeding but as a "purportedly new claim in a separate [cancellation] proceeding"); Consolidated Foods Corp.v. Big Red, Inc., 231 USPQ 744, 746 (TTAB 1986) (failure to seasonably assert a compulsory counterclaim in opposition cannot be avoided by filing a petition to cancel).

5. See Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd,22 USPQ2d 1594 (TTAB 1992)summ. judgment granted, 24 USPQ2d 1376 (TTAB 1992).

6. See 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 95-96 (TTAB 1984). See also Notice of Final Rulemaking, 46 Fed. Reg. 6940 (January 22, 1981).

313.05 Permissive Counterclaims

A party may counterclaim to cancel a registration that is owned, but not pleaded, by an adverse party. A counterclaim to cancel a registration owned, but not pleaded, by an adverse party is a permissive counterclaim. [ Note 1.] The filing date of the counterclaim is the date of receipt in the Office of the counterclaim, with proof of service on the owner of record, or on the owner’s domestic representative, if one has been appointed, at the correspondence address of record in the Office, and with the required fee, unless the counterclaim is filed by Priority Mail Express® in accordance with 37 CFR § 2.198. [ Note 2.]

For information on fees for counterclaims, see TBMP § 308.02 and TBMP § 313.02.

NOTES:

1. See Fed. R. Civ. P. 13(b). Cf. 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i) .

2. 37 CFR § 2.111(c)(4).

313.06 Answer to Counterclaim

37 CFR § 2.114(a) If no answer is filed within the time set, the petition may be decided as in case of default.

When a counterclaim (together with proof of service and the required cancellation fee) is filed, the Board prepares an order acknowledging its receipt and allowing the plaintiff (defendant in the counterclaim) a set time, not less than 30 days, within which to file an answer to the counterclaim. [ Note 1.] In practice, the Board usually allows 30 days. See TBMP § 310.03(b) (five-day addition under 37 CFR § 2.119(c) does not apply to deadlines set by Board). A copy of the order is sent to each party to the proceeding, or to each party’s attorney or other authorized representative. The order will also include a trial schedule and briefing dates to accommodate the counterclaim, which will reset or extend, as appropriate,the times for discovery (including conferencing and initial and expert disclosure dates), pretrial disclosures, testimony, briefs and/or oral argument. [ Note 2.]

If no answer to the counterclaim is filed during the time allowed, the counterclaim may be decided as in case of default. [ Note 3.] For information concerning default for failure to answer, see TBMP § 312.

An answer to a counterclaim should be in the same form as an answer to a complaint. For information on the proper form for an answer to a complaint, see TBMP § 311.01.

An answer to a counterclaim, like any other answer, may include a counterclaim for cancellation of a registration owned by the counterclaimant. A defense attacking the validity of any registration pleaded by the counterclaimant is a compulsory counterclaim if grounds for such counterclaim exist at the time the plaintiff’s answer to the defendant’s counterclaim is filed. If the plaintiff knows of grounds for a counterclaim when the plaintiff’s answer to the defendant’s counterclaim is filed, the counterclaim must be pleaded with or as part of the plaintiff’s answer. If, during the course of the proceeding, the plaintiff learns, through discovery or otherwise, that grounds for a counterclaim exist, the counterclaim should be pleaded promptly after the grounds therefor are learned. [ Note 4.] Cf. TBMP § 313.04.

A plaintiff’s counterclaim to cancel a registration owned by the defendant, but not pleaded in the defendant’s counterclaim, is a permissive counterclaim. [ Note 5.] Cf. TBMP § 313.05.

For information on the fee for a counterclaim, see 37 CFR § 2.6(a)(16) and TBMP § 313.02. For information on the form for a counterclaim, see TBMP § 313.03.

NOTES:

1. See 37 CFR § 2.106(b)(2)(iii) and 37 CFR § 2.114(b)(2)(iii) .

2. An example of a trial order for a proceeding with a counterclaim can be found in the Appendix of Forms.

3. See 37 CFR § 2.114(a) and 37 CFR § 2.114(b)(2)(iii).

4. Cf. 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i).

5. Cf. Fed. R. Civ. P. 13(b).