310.03    Setting Time for Filing Answer

310.03(a)    In General

37 CFR § 2.105 Notification to parties of opposition proceeding[s].

  • (a) When an opposition in proper form(see §§ 2.101 and 2.104), with proof of service in accordance with § 2.101(b), has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notification, which shall identify the title and number of the proceeding and the application involved and shall designate a time, not less than thirty days from the mailing date of the notification, within which an answer must be filed. If a party has provided the Office with an email address, the notification may be transmitted via email.

37 CFR § 2.113 Notification to parties of cancellation proceeding.

  • (a) When a petition for cancellation in proper form (see§§ 2.111 and 2.112), with proof of service in accordance with § 2.111(b), has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notification which shall identify the title and number of the proceeding and the registration(s) involved and shall designate a time, not less than thirty days from the mailing date of the notification, within which an answer must be filed. If a party has provided the Office with an email address, the notification may be transmitted via email.

As provided by 37 CFR § 2.105(a)  and 37 CFR § 2.113(a), in part, the Board’s notification of the filing of an opposition or petition to cancel "shall designate a time, not less than thirty days from the mailing date of the notification, within which an answer must be filed." A defendant is under no obligation to file an answer to the complaint in an opposition or cancellation proceeding until it receives the Board’s notification setting the time for filing an answer. [ Note 1.]

It is the general practice of the Board to allow the defendant in an opposition or cancellation proceeding 40 days from the mailing date of the notification in which to file its answer.

For information on the time for filing an answer to a counterclaim, see TBMP § 313.06.

NOTES:

 1.   Cf. Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993).

310.03(b)    Five -Day Addition Under 37 CFR § 2.119(c) Not Applicable to Deadlines Set by Board

As provided by 37 CFR § 2.119(c), in part, "[w]henever a party is required to take some action within a prescribed period after the service of a paper upon the party by another party and the paper is served by first-class mail, "Priority Mail Express®" or overnight courier, 5 days shall be added to the prescribed period." This provision, by its very terms, applies only when a party has to take some action within a prescribed period after the service of a paper on it by another party (and service of the paper was made in one of three specified ways). It does not apply to an action that must be taken by a party within a time set in a communication from the Board [ Note 1.] or when service is effected in other than the three specified ways, such as when the parties have agreed to accept service by email or by facsimile transmission. [ Note 2.]

Thus, when a Board notification allows the defendant 40 days from the mailing date of the notification in which to file an answer to the complaint, the answer is due on or before the 40th day, not on the 45th day. Similarly, when the Board allows a counterclaim defendant 30 days from the mailing date of the Board’s notification in which to file an answer to the counterclaim, the answer is due on or before the 30th day, not on the 35th day. See also TBMP § 801.02 (time for filing briefs).

NOTES:

 1.   See Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1867 n.4 (TTAB 2010) (where due date for opposer’s responses to discovery was set by Board order to fall on a Sunday, the responses were timely served on the following Monday).

 2.   See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42250 (August 1, 2007).

310.03(c)    Extension of Time to File Answer

The time for filing an answer may be extended or reopened by stipulation of the parties, approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 1.] See TBMP § 509.

For cases commenced on or after November 1, 2007, the discovery period does not open until after an answer has been filed, and concurrently with the deadline for the mandatory discovery conference. However, for cases filed before November 1, 2007, the discovery period opens before the answer is due. Regardless,due dates for answers to complaints may not be extended beyond the close of the discovery period. Any motion to extend the time to answer beyond the close of discovery, even if consented, will be denied. Thus, any extension request, which would reset the time to answer beyond the date presently set for the close of discovery, must also include a request for an extension of the discovery period.

Please Note: By using ESTTA to file requests for extension of time to file an answer, parties are ensured that any date selected will not be beyond the close of the discovery period. The ESTTA system will prompt the filer to enter new deadlines in a manner that will generate an appropriate schedule in the proper form and will not allow a party to request an extension date that is later than the close of the discovery period.

NOTES:

 1.   Fed. R. Civ. P. 6(b).