309.03(a)    In General

309.03(a)(1)    Scope of Opposition and Petition to Cancel

In an opposition, the registration sought by an applicant may be opposed in whole, or in part. Similarly, a petitioner may seek to cancel a registration in whole, or in part. [ Note 1.] 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 2.] See TBMP Chapter 1100.

An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. Because ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"), the scope of the goods and services being opposed are limited to those identified in the ESTTA-generated form. [ Note 3.] For the same reason, and because only the information on the ESTTA-generated form is forwarded, automatically without review, to WIPO, the grounds for a notice of opposition are limited to those selected and reflected on the ESTTA-generated cover form regardless of what any accompanying notice of opposition asserts. [ Note 4.]

The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.

NOTES:

 1.   See Trademark Act § 18, 15 U.S.C. § 1068.

 2.   See 37 CFR § 2.99(h)  and 37 CFR § 2.133(c).

 3.   See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011) ("… with respect to Section 66(a) applications, all oppositions must be confined to the opposed goods identified … on the ESTTA-generated opposition forms.").

 4.   CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011). See also Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (ESTTA form controls scope of permissible amendments to claims against § 66(a) application, because opposer did not limit grounds to any particular class on ESTTA form, opposer may seek leave to amend the attached pleading to assert those grounds against all three classes even though original attached pleading did not).

309.03(a)(2)    Elements of Complaint – In General

A notice of opposition must include (1) a short and plain statement of the reason(s) why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding -- see TBMP § 303.03 and TBMP § 309.03(b)), and (2) a short and plain statement of one or more grounds for opposition. [ Note 1.]

Similarly, a petition to cancel must include (1) a short and plain statement of the reason(s) why petitioner believes it is or will be damaged by the registration sought to be cancelled (i.e., petitioner’s standing to maintain the proceeding -- see TBMP § 303.03 and TBMP § 309.03(b)) and (2) a short and plain statement of the ground(s) for cancellation. [ Note 2.]

A pleading should include enough detail to give the defendant fair notice of the basis for each claim. [ Note 3.] The elements of each claim should be stated simply, concisely, and directly, and taken together "state a claim to relief that is plausible on its face." [ Note 4.] See TBMP § 503.02.

All averments should be made in numbered paragraphs, the contents of each of which should be limited as far as practicable to a statement of a single set of circumstances. [ Note 5.] Each claim founded upon a separate transaction or occurrence should be stated in a separate count whenever a separation would facilitate the clear presentation of the matters pleaded. [ Note 6.] A paragraph may be referred to by number in all succeeding paragraphs, and statements in the complaint may be adopted by reference in a different part of the complaint. [ Note 7.]

A plaintiff may state as many separate claims as it has, regardless of consistency; a plaintiff may also set forth two or more statements of a claim alternatively or hypothetically, either in one count or in separate counts. [ Note 8.]

When two or more statements are made in the alternative, the sufficiency of each is determined independently. The fact that one of them may be insufficient does not mean that the other(s) is (are) also insufficient. [ Note 9.]

Evidentiary matters (such as, for example, lists of publications or articles in which a term sought to be registered by an applicant is alleged to be used descriptively) should not be pleaded in a complaint. They are matters for proof, not for pleading. [ Note 10.]

Factual allegations made in the pleadings are not evidence of the matters alleged except insofar as they might be deemed to be admissions against interest. [ Note 11.]

In inter partes proceedings before the Board, as in civil cases before the United States district courts, all pleadings are so construed as to do justice. [ Note 12.]

For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (2015), for oppositions and cancellations, respectively. For a discussion of the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP § 307.01 and TBMP § 307.02 and 3J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (2015).

NOTES:

 1.   See 37 CFR § 2.104(a); Young v. AGB Corp. 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (standing and grounds are distinct inquiries; allegation of "economic damage" while relevant to standing does not constitute a ground); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allegation of priority without direct or hypothetical pleading of likelihood of confusion is insufficient pleading of Trademark Act § 2(d), 15 U.S.C. § 1052(d)). Cf. Fed. R. Civ. P. 8(a).

 2.   See 37 CFR § 2.112(a); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982); Kelly Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Cf. Fed. R. Civ. P. 8(a).

 3.   See Johnson v. City of Shelby, 574 U.S. ___, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007). See also Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1562 (TTAB 2011) (opposer’s assertion of use on "their related components" in connection with "lighting control panels and electrical light dimmers" provided fair notice to applicant of the scope of opposer’s asserted goods at common law); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice);Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1471 (TTAB 1993), recon. denied, 36 USPQ2d 1328, 1330 (TTAB 1994) (although pleading need not allege particular "magic words," pleading of mere descriptiveness in this case could not be logically interpreted as asserting that applicant is not the owner of the mark); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (petitioner’s Trademark Act § 2(a), 15 U.S.C. § 1052(a) allegations were merely conclusory and unsupported by factual averments).

 4.   Johnson v. City of Shelby, 574 U.S. ___, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); Ashcroft v. Iqbal, 556 U.S. 662(2009),quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007); Fed. R. Civ. P. 8(a). See also5 C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 1219 (2014) ("The federal rules effectively abolish the restrictive theory of the pleadings doctrine, making it clear that it is unnecessary to set out a legal theory for the plaintiff’s claim for relief.").

 5.   See Fed. R. Civ. P. 10(b);Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 1974) (while paragraphs were numbered, none of the paragraphs were limited to a statement of a single set of circumstances).

 6.   See Fed. R. Civ. P. 10(b); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 (TTAB 2010) ("claims must be separately stated . . . . We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground;" motion to amend application filed under Madrid Protocol denied).

 7.   See Fed. R. Civ. P. 10(b) and (c).

 8.   See Fed. R. Civ. P. 8(d)(2) and (3); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion which is appropriate where petitioner’s standing is based on its inability to secure a registration, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its / mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as basis for standing).

 9.   See Fed. R. Civ. P. 8(d)(2).

 10.   See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (if evidentiary facts are pleaded, and they aid in giving a full understanding of the complaint as a whole, they need not be stricken).

 11.   See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1755 (TTAB 2009) (allegations in defendant’s application are not facts and must be proven at trial); Baseball America Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the pleadings are not evidence of the matters alleged, except insofar as they might be deemed to be admissions against interest). Cf. Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (opposer’s attempt to make registrations of record by attaching to its notice of opposition printouts from the Office’s electronic database records showing the current status and title of its registrations would have been sufficient under current version of 37 CFR § 2.122(d)(1)).

 12.   See 37 CFR § 2.116(a); Fed. R. Civ. P. 8(e);The Scotch Whiskey Association v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1874 (TTAB 2011).