315    Amendment of Pleadings

37 CFR § 2.107 Amendment of pleadings in an opposition proceeding.

  • (a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, after the close of the time period for filing an opposition including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed.
  • (b) Pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, once filed, the opposition may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition.

37 CFR § 2.115 Amendment of pleadings in a cancellation proceeding . Pleadings in a cancellation proceeding may be amended in the same manner and to the same extent as in a civil action in a United States district court.

As a general rule, pleadings in inter partes proceedings before the Board may be amended in the same manner and to the same extent as pleadings in a civil action before a United States district court. [ Note 1.]There is an exception to this rule, however. An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  application may not be amended to add to the stated grounds for opposition. Thus, an opposition may not be amended to add an entirely new claim or to add an additional claimed registration to a previously stated Trademark Act § 2(d), 15 U.S.C. § 1052(d)  ground. [ Note 2.]Also, an opposition against an application filed under Trademark Act § 1, Trademark Act § 44 or Trademark Act § 66(a), 15 U.S.C. § 1051, 15 U.S.C. § 1126  or 15 U.S.C. § 1141f(a)  may not be amended to add to the goods or services subject to opposition. [ Note 3.] Further, with respect to an opposition against a Trademark Act § 66(a) application, the scope of the goods and/or services opposed is limited to those identified in the ESTTA-generated opposition cover form, [ Note 4.], and the scope of the grounds for opposition is limited to those identified in the ESTTA-generated opposition cover form, [ Note 5.]. Other amendments, such as those that would amplify or clarify the grounds for opposition, are not prohibited by this rule. [ Note 6.]

For further information concerning the amendment of pleadings, see Fed. R. Civ. P. 15 and TBMP § 507.

NOTES:

 1.   See Fed. R. Civ. P. 15(a); 37 CFR § 2.107  and 37 CFR § 2.115 .

 2.   See Trademark Act § 68(c)(3), 15 U.S.C. § 1141h; 37 CFR § 2.107(b); Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; 68 Fed. Reg. 55748, specifically, summary of amendments at 55757 (September 26, 2003); O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 (TTAB 2010) (in opposition involving a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)application,motion to amend notice of opposition to add an additional ground denied).

 3.   See 37 CFR § 2.107(a)  and 37 CFR § 2.107(b); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 (TTAB 2007).

 4.   See Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1151 (TTAB 2014) (for § 66(a) application, scope of goods and services subject to opposition controlled by ESTTA-generated electronic opposition form); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011) (same).

 5.   See Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1151 (TTAB 2014) (for § 66(a) application, scope of grounds of opposition controlled by contents of ESTTA-generated electronic opposition form); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011) (same).

 6.   See, e.g., Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (corrective amendment to notice of opposition against § 66(a) application allowed because it was a "minor change"); Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 55748, specifically, summary of amendments at 55757 (September 26, 2003).