512.04    Misidentification

Fed. R. Civ. P. 15(a) Amendments Before Trial.

  • (1) Amendment as Matter of Course. A party may amend its pleading once as a matter of course within: (A) 21 days after serving it, or (B) if the pleading is one to which a responsive pleading is required, 21 days after service of a responsive pleading or 21 days after service of a motion under Rule. 12(b), (e), or (f), whichever is earlier.
  • (2) Other Amendments. In all other cases, a party may amend its pleading only with the opposing party’s written consent or the court’s leave. The court should freely give leave when justice so requires.

15 U.S.C. § 1063(a)   … An opposition may be amended under such conditions as may be prescribed by the Director.

When the plaintiff in a Board inter partes proceeding misidentifies itself or the mark or registration upon which it relies in the complaint, if the plaintiff can establish to the Board’s satisfaction that this misidentification was merely a non-substantive mistake, the Board may allow amendment of the complaint, pursuant to Fed. R. Civ. P. 15(a), to correct the misidentification and/or to substitute the proper party in interest. [ Note 1.] See TBMP § 303.05(c) (Misidentification of Opposer).

When the plaintiff in a Board inter partes proceeding misidentifies an application or registration number which is the subject of the Board proceeding, and the plaintiff can establish, in a timely manner and to the Board’s satisfaction that this misidentification was a non-substantive mistake, the Board may allow amendment of the complaint (and of the Board proceeding title) to correct the misidentification of the subject application or registration. [ Note 2.] However, if a notice of opposition misidentifies the application number(s) against which the opposition is intended, and the defect is not corrected within the time for filing an opposition against the intended application(s) under Trademark Act §13(a), 15 U.S.C. § 1063(a), this defect cannot be cured. The opposition against the misidentified application will be dismissed and an opposition against the intended application will not be instituted because it would be untimely. [ Note 3.] See also TBMP § 306.04. Similarly, if a petition to cancel misidentifies the registration number against which the cancellation is intended, and the defect is not corrected within the time for petitioning to cancel the intended registration under Trademark Act § 14, 15 U.S.C. § 1064, this defect cannot be cured. The petition to cancel the misidentified registration will be denied and a petition to cancel the intended registration will not be instituted because it would be untimely.

An applicant may correct a defect in identifying itself by name or legal entity in the application where it is a single, continuing commercial entity and was the owner of the mark as of the filing date of the application and that entity in fact filed the application. [ Note 4.] Also, where a merger occurred prior to filing an application, but the pre-merger corporation and owner of the mark has ceased to exist and is identified as the applicant, the corporation that remains after the merger may correct this defect by identifying itself as applicant. [ Note 5.]

NOTES:

 1.   See Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 n.3 (TTAB 1985) (deeming pleadings amended to recite opposer's correct name; Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505, 505-06 (TTAB 1974) (amendment granted to reflect proper party in interest); Lone Star Manufacturing Co. v. Bill Beasley, Inc., 176 USPQ 426, 426 (TTAB 1972) (amendment granted to correct corporate title) , rev’d on other grounds, 498 F.2d 906, 182 USPQ 368 (CCPA 1974); Davidson v. Instantype, Inc., 165 USPQ 269, 270-71 (TTAB 1970) (amendment granted to substitute proper party in interest); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 221-22 (TTAB 1969) (amendment granted to substitute real party in interest; Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 408-09 (TTAB 1964) (amendment granted to substitute proper party; Textron, Inc. v. Gillette Co., 177 USPQ 530, 531-32 (Comm’r 1973) (name of party in interest may be corrected by amendment. Cf. 37 CFR § 2.102(b); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1076-77 (TTAB 1993) (amendment to correct misidentification and substitute proper party in interest not permitted).

 2.   See Accu Personnel Inc. v. Accustaff Inc., 38 USPQ 1443, 1445-46 (TTAB 1996) (applicant’s misidentification of itself as a corporation was harmless mistake); Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (Board allowed substitution of three individuals for a legally defective corporate applicant finding no mistake as to the true owner of the mark but rather only a mistake as to legal form or identity of that owner); Argo & Co. v. Springer, et al., 189 USPQ 581, 582 (TTAB 1976); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613, 614 (Comm’r 1974) (deletion of "company" was correctable mistake).Cf . TMEP § 803.06, TMEP § 1201.02(b), and TMEP § 1201.02(c); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1335-36 (Fed. Cir. 1988) (application filed by individual void where owner was corporation, even though individual was affiliated with corporation).

Compare to the following ex parte decisions involving mistakes as to applications and renewals, e.g., In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991) (correction of application not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); In re Atlanta Blue Print Co., 19 USPQ2d 1078, 1078 (Comm’r 1990)(correction of declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§ 1058 & 1065); In re Techsonic Industries, Inc., 216 USPQ 619, 619-20 (TTAB 1982); In re Eucryl Ltd., 193 USPQ 377, 378 (TTAB 1976).

 3.   Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004).

 4.   Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443, 1444-45 (TTAB 1996) (corporation formed by merger of four separate companies which did not survive the merger, was proper person to file even if corporation did not exist at time of filing).Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1240 (TTAB 2007) (application void ab initio where two separate commercial entities were in existence on application filing date and application was filed in name of wrong entity).

 5.   Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443, 1444-45 (TTAB 1996).