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) .