305.02 Combined Complaint
A party may file, when appropriate, a single pleading combining a notice of opposition to one or more applications, and a petition to cancel one or more registrations, provided that each subject application and registration is owned by the same defendant. [ Note 1.] Such single pleading is referred to as a "combined" opposition and petition to cancel. However, the required fee must be submitted for each party joined as plaintiff, for each class sought to be opposed or cancelled, in each application or registration against which the pleading is filed. [ Note 2.] See TBMP§ 308.05. Further, a combined complaint must be filed on paper; it may not be filed electronically because the Board’s Electronic System for Trademark Trials and Appeals ("ESTTA") currently is not designed to accept a combined complaint. When such a pleading is filed, the Board will set up both an opposition and a cancellation proceeding file, each with its own identifying number, and each marked "Combined with _____" followed by the number of the other proceeding. The opposition is treated as the "parent" case, and both proceeding numbers are placed on all documents relating to the combined proceedings. Cf. TBMP § 511.
A combined notice of opposition and petition to cancel is appropriate if the plaintiff’s claims against each of the defendant’s subject applications, and/or registrations, involve common (i.e., similar) questions of law or fact. [ Note 3.] See TBMP § 511.
Instead of filing a combined complaint, which requires submission by paper, a plaintiff may use ESTTA to file individual pleadings, which will generate separate proceedings, and then, in a separate filing, move to consolidate. For information concerning motions to consolidate proceedings, see TBMP § 511.
NOTES:
1. See, e.g., Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 n.2 (TTAB 1993) (combined opposition and cancellation).
2. Cf. 37 CFR § 2.104(b) and 37 CFR § 2.112(b).
3. See Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 n.2 (TTAB 1993) (defendant who believes marks and issues are sufficiently different such that combined proceeding is not appropriate may file motion to separate proceedings).