311.01    Form of Answer

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

  • (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. 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.
  • (b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the 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(e) must be submitted 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 be submitted.

An answer to a notice of opposition or petition to cancel corresponds to an answer to a complaint in a court proceeding. [ Note 1.]

The form of an answer must meet the general requirements for submissions to the Board set forth in 37 CFR § 2.126. See TBMP § 106.03. If an answer 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 answer. [ Note 2.] If the answer is submitted on paper, the submission, including any exhibits, may not be stapled or bound or have any extruding tabs, and must otherwise comply with the requirements of 37 CFR § 2.126(a)  in order to permit efficient scanning.

A party may no longer make submissions in CD-ROM format that could otherwise be submitted on paper or filed electronically as a digital image through ESTTA. The Board will not return an inappropriately filed CD-ROM to the party which filed it. [ Note 3.]

NOTES:

 1.   See 37 CFR § 2.116(c).

 2.   See 37 CFR § 2.126(b).

 3.   See 37 CFR § 2.126(a)  and 37 CFR § 2.126(b). Cf. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement, exhibits submitted on flash drives and CD-ROM not considered; however, video and audio recordings may be submitted on CD-ROM or DVD), on appeal, No. 14-CV-4463 (D. Minn.).

311.01(a)    Format for Answer

An answer need not follow a particular format, as long as the answer meets the requirements for the particular type of submission to the Board (37 CFR § 2.126(a)   for paper and 37 CFR § 2.126(b)  for electronic filings through ESTTA), and otherwise includes the necessary information. The format for an answer is similar to a complaint and should include the following information:

An answer should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," followed by the name of the proceeding (e.g., "ABC Corporation v. XYZ Company"), the proceeding number (e.g., "Opposition No. 91156789" or "Cancellation No. 92042567"), and a title describing the nature of the paper (e.g., "ANSWER," "ANSWER AND COUNTERCLAIM," etc.). Cf. TBMP § 309.02(a).

Substance of answer: The answer must contain admissions and/or denials of the allegations in the complaint and may include any defenses to those allegations. See TBMP §311.02.

Signature: The answer must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for defendant, defendant (if defendant is an individual), partner of defendant (if defendant is a partnership), officer of defendant identified by title (if defendant is a corporation), etc. See TBMP § 311.01(b).

311.01(b)    Signature of Answer

An answer need not be verified, but it must be signed. Electronic signatures pursuant to 37 CFR § 2.193(c)  are required for answers submitted electronically via ESTTA. The signature may be made by the defendant or by the defendant’s attorney or other authorized representative. [ Note 1.] See TBMP § 106.02.

The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [ Note 2.] Thus, a defendant’s (or its attorney’s or other authorized representative’s) electronic signature on the ESTTA filing form serves as its signature for the entire answer being filed, even when there is no signature on any attachment to the filing form. [ Note 3.]

If a defendant signing for itself is an individual, the individual must make the signature. If defendants are joint applicants of the involved mark, each defendant must sign a combined, single answer. [ Note 4.] If a defendant signing for itself is a partnership, a partner must make the signature. If a defendant signing for itself is a corporation, association, or similar juristic entity, the signature must be made by an individual who is an officer of defendant and who is authorized to represent it. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as defendant, if defendant is an individual; as counsel for defendant; as a partner of defendant, if defendant is a partnership; as an officer of defendant identified by title, if defendant is a corporation; etc.).

Although an answer must be signed, an unsigned answer will not be refused consideration 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.

NOTES:

 1.   See 37 CFR § 2.119(e).

 2.   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 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").

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

 4.   Cf. TMEP § 712.01 (a response to an Office action by joint applicants who are not represented by an attorney must be signed by each of the applicants, since they are individual parties and not a single entity).

 5.   See 37 CFR § 2.119(e).

311.01(c)    Filing and Service of Answer

One copy of the answer, and any exhibits thereto, must be filed with the Board. Another copy of the answer, with any exhibits thereto, must be served by the defendant upon the attorney for the plaintiff, or on the plaintiff if there is no attorney. The answer must bear proof (e.g., a certificate of service, consisting of a statement signed by the filing party, or by its attorney or other authorized representative, clearly stating the date and manner in which service was made) that such service has been made before the paper will be considered by the Board. [ Note 1.] See TBMP § 113.

For information on the time for filing an answer, see TBMP § 310.03.

NOTES:

 1.See   See 37 CFR § 2.119(a).