305 Consolidated and Combined Complaints
37 CFR § 2.104(b) Oppositions to different applications owned by the same party may be joined in a consolidated opposition when appropriate, but the required fee must be included for each party joined as opposer for each class in which registration is opposed in each application against which the opposition is filed.
37 CFR § 2.112(b) When appropriate, petitions for cancellation of different registrations owned by the same party may be joined in a consolidated petition for cancellation. The required fee must be included for each party joined as a petitioner for each class sought to be cancelled in each registration against which the petition to cancel is filed.
305.01 Consolidated Complaint
When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, different applications owned by the same defendant. However, the required fee must be submitted for each party joined as opposer, for each class in which registration is opposed, in each application against which the opposition is filed. [ Note 1.] See TBMP § 308.05 regarding fees for filing consolidated complaints. When such a pleading is filed, the Board will set up a single opposition file, identified by a single opposition proceeding number, but bearing the number of each application opposed in the consolidated notice of opposition.
Similarly, when appropriate, a party may seek to cancel, in a single (i.e., "consolidated") petition for cancellation, different registrations owned by the same defendant. The required fee must be submitted for each party joined as petitioner, for each class sought to be cancelled, in each registration against which the petition for cancellation is filed. [ Note 2.] See TBMP § 308.05. When such a pleading is filed, the Board will set up a single cancellation file, identified by a single cancellation proceeding number, but bearing the number of each registration sought to be cancelled in the consolidated petition to cancel.
A consolidated notice of opposition, or consolidated 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.]
For information concerning motions to consolidate proceedings, see TBMP § 511.
NOTES:
1. See 37 CFR § 2.104(b).
2. See 37 CFR § 2.112(b).
3. See Fed. R. Civ. P. 42(a); World Hockey Association v. Tudor Metal Products Corp., 185 USPQ 246, 248 (TTAB 1975) (oppositions involving similar marks and similar issues consolidated); Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440, 441 (TTAB 1973) (applicant’s motion to consolidate denied in view of extent of differences in the involved issues); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444, 1445 (TTAB 1987) (joint motion to consolidate granted in view of identity of parties and issues), Federated Department Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262, 263 (TTAB 1985) (consolidation permitted; issues of fact and law substantially similar).
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).