311.02(c)    Unpleaded Affirmative Defenses

Except as provided in Fed. R. Civ. P. 12(b) and 12(h)(2) (which allow a defendant to raise certain specified defenses by motion), an unpleaded defense cannot be relied upon by the defendant unless the defendant’s pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter. [ Note 1.]

For additional information concerning unpleaded matters, see TBMP § 314.

NOTES:

 1.   See Fed. R. Civ. P. 8(b), 8(c), and 12(b); Trademark Act § 19, 15 U.S.C. § 1069. See also Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana, Inc., 98 USPQ2d 1921, 1926 (TTAB 2011) (unpleaded affirmative defenses of prior registration defense and tacking not considered), on appeal, No. 1:11-cv-01623-RC (D.D.C.);H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (the reason for requiring an affirmative defense to be pleaded is to give the plaintiff notice of the defense and an opportunity to respond; defense of tacking must be pleaded to put opposer on notice of new matter that applicant is placing at issue); Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (answer deemed amended to assert applicant’s priority over opposer pursuant to Article 7 of the Pan American Convention);Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1290 (TTAB 2007) (applicant’s affirmative defense deemed to have been tried by the implied consent of the parties); Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense that opposer lacks proprietary rights in its common law mark raised for first time in final brief was neither pleaded nor tried); United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 341 (TTAB 1984) (laches is an affirmative defense which must be specifically pleaded); Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748, 754 (TTAB 1978) (defense of laches, which was raised by applicant in its final brief, was not pleaded in answer but was tried by implied consent of opposer); United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 304 n.5 (TTAB 1977) (the equitable defenses set forth in Trademark Act § 19, 15 U.S.C. § 1069 are affirmative defenses which must be affirmatively pleaded and in this case were neither pleaded nor tried); Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585, 590 (TTAB 1977) (laches, while not affirmatively pleaded, was nevertheless tried and briefed by both parties without objection); Hershey Foods Corp. v. Cerreta, 195 USPQ 246, 251 (TTAB 1977) (laches and acquiescence were neither pleaded nor tried); Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156 (TTAB 1975) (laches is affirmative defense that must be pleaded in order to be considered).