310    Notification to Parties of Proceeding and Setting Time to Answer

310.01    Notification to Parties of Proceeding

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.
  • (b) The Board shall forward a copy of the notification to opposer, as follows:
    • (1) If the opposition is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notification to the attorney transmitting the opposition or to the attorney designated in the power of attorney, provided that the person is an "attorney" as defined in §11.1 of this chapter.
    • (2) If opposer is not represented by an attorney in the opposition, but opposer has appointed a domestic representative, the Board will send the notification to the domestic representative, unless opposer designates in writing another correspondence address.
    • (3) If opposer is not represented by an attorney in the opposition, and no domestic representative has been appointed, the Board will send the notification directly to opposer, unless opposer designates in writing another correspondence address.
  • (c) The Board shall forward a copy of the notification to applicant, as follows:
    • (1) If the opposed application contains a clear indication that the application is being prosecuted by an attorney, as defined in §11.1 of this chapter, the Board shall send the documents described in this section to applicant’s attorney.
    • (2) If the opposed application is not being prosecuted by an attorney but a domestic representative has been appointed, the Board will send the documents described in this section to the domestic representative, unless applicant designates in writing another correspondence address.
    • (3) If the opposed application is not being prosecuted by an attorney, and no domestic representative has been appointed, the Board will send the documents described in this section directly to applicant, unless applicant designates in writing another correspondence address.

37 CFR § 2.113 Notification 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.
  • (b) The Board shall forward a copy of the notification to petitioner, as follows:
    • (1) If the petition for cancellation is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notification to the attorney transmitting the petition for cancellation or to the attorney designated in the power of attorney, provided that person is an "attorney" as defined in §11.1 of this chapter.
    • (2) If petitioner is not represented by an attorney in the cancellation proceeding, but petitioner has appointed a domestic representative, the Board will send the notification to the domestic representative, unless petitioner designates in writing another correspondence address.
    • (3) If petitioner is not represented by an attorney in the cancellation proceeding, and no domestic representative has been appointed, the Board will send the notification directly to petitioner, unless petitioner designates in writing another correspondence address.
  • (c) The Board shall forward a copy of the notification to the respondent (see §2.118). The respondent shall be the party shown by the records of the Office to be the current owner of the registration(s) sought to be cancelled, except that the Board, in its discretion, may join or substitute as respondent a party who makes a showing of a current ownership interest in such registration(s)
  • (d) When the party alleged by the petitioner, pursuant to §2.112(a), as the current owner of the registration(s) is not the record owner, a courtesy copy of the petition for cancellation shall be forwarded with a copy of the notification to the alleged current owner. The alleged current owner may file a motion to be joined or substituted as respondent.

When a timely opposition in proper form (See 37 CFR § 2.101  and 37 CFR § 2.104 ), with proof of service in accordance with 37 CFR § 2.101(b)  has been filed, and the required fee has been submitted, the opposition will be instituted. [ Note 1.] The defendant in the opposition is the party shown by the records of the U.S. Patent and Trademark Office to be the current owner of the opposed application, except that the Board, in its discretion, may join or substitute as defendant a party that makes a showing of a current ownership interest in the application. [ Note 2.] See TBMP §512.

When a timely petition to cancel in proper form (See 37 CFR § 2.111(a)  and 37 CFR § 2.112 ), together with proof of service in accordance with 37 CFR § 2.111(b), has been filed and the required fee has been submitted, the cancellation will be instituted. [ Note 3.] The defendant in the cancellation proceeding is the party shown by the records of the Office to be the current owner of the registration sought to be cancelled, except that the Board, in its discretion, may join or substitute as defendant a party which makes a showing of a current ownership interest in the registration. [ Note 4.] See TBMP § 512.

When a timely petition to cancel in proper form is submitted on paper, the Board checks the assignment records of the Office to determine whether there is any recorded assignment of the registration, and if so, the identity of the assignee. After the title search has been completed, the cancellation proceeding is instituted. Cf. TBMP § 124. Please Note: A petition to cancel should indicate the name and correspondence address of the current owner of record of the registration. [ Note 5.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system, accessible through http://tsdr.uspto.gov/. [ Note 6.] The TSDR display of information includes an active link to assignment information; the petitioner may consult this display of information to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(a).

Next, the Board prepares an institution order wherein it notifies the parties of the formal institution of the proceeding. The institution order includes the identification information described in 37 CFR § 2.105(a), for an opposition, or in 37 CFR § 2.113(a), for a cancellation; states that proceedings in the case will be conducted in accordance with the Trademark Rules of Practice, 37 CFR Part 2, and specifies the due date for the filing of defendant’s answer to the complaint. The institution order also sets forth the remaining schedule for the case – deadline for the required discovery conference and for initial and expert disclosures, the opening and closing dates for the discovery period, and assigning each party’s time for pretrial disclosures and for taking testimony. [ Note 7.] Notification from the Board may be sent by email when a party has provided an email address. [ Note 8.]

In any proceeding, when a notice from the Board of the commencement of a proceeding,sent to any respondent or applicant, is returned to the Office undelivered, additional notice may be given by publication in the Official Gazette, available via the Office’s website (http://www.uspto.gov ). [ Note 9.]

One copy of the institution order is sent to the attorney representing the plaintiff[ Note 10.], or, if the plaintiff is representing itself, to the plaintiff itself, unless the plaintiff has designated in writing another correspondence address. [ Note 11.] If the plaintiff is not represented by an attorney, but the plaintiff has appointed a domestic representative, the Board will send the institution order to the domestic representative, unless the plaintiff designates in writing another correspondence address. [ Note 12.]

In an opposition, a second copy of the institution order, together with instructions and an electronic link for viewing the opposition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system, is sent to the attorney or other authorized representative of the applicant, or, if the applicant is representing itself, to the applicant itself. If the applicant is not represented by an attorney but the applicant has appointed a domestic representative, the Board will send the institution order to the domestic representative unless the applicant designates in writing another correspondence address. [ Note 13.] In a cancellation, a second copy of the institution order is sent, together with instructions and an electronic link for viewing the petition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system, to the respondent itself, or to the respondent’s domestic representative, if one is appointed, even if there is an attorney or other authorized representative of record in the application file after the mark has registered. [ Note 14.]

The reason why the institution order is sent to the defendant’s attorney or other authorized representative, if any, in an opposition, but is always sent to the defendant itself in a cancellation, is that any appearance or power of attorney (or designation of other authorized representative) of record in an application file at the time of the commencement of an opposition is considered to be effective for purposes of the proceeding, whereas any representation which may be of record in an application file after the mark has registered at the time of the commencement of a cancellation is not considered to be effective for purposes of the proceeding. Typically, a power of attorney in an application appoints the named attorney "to prosecute this application to register, to transact all business in the Patent and Trademark Office in connection therewith, and to receive the certificate of registration." That is, the power extends only up to the issuance and receipt of a registration. As a practical matter, the representation in an application file usually is, of necessity, current and active, whereas often the attorney or other authorized representative of record in a registration file has not taken any action on behalf of the client registrant for some years, may no longer represent registrant, may not know where registrant is currently located or may no longer be in practice, etc. However, if the Board is unable to locate the registrant for purposes of notifying registrant of the filing of the complaint, and the registration file reflects that an attorney or other authorized representative has appeared therein on registrant’s behalf within the last five years or so, the Board will, if necessary, contact the attorney or other authorized representative and ask for information concerning registrant’s current address. [ Note 15.] In the case of a registered extension of protection to the United States, the Board may contact the designated representative on record with the International Bureau. The Board may also contact petitioner in an attempt to obtain a better address for registrant.

In a cancellation proceeding, if the party identified by the petitioner pursuant to 37 CFR § 2.112(a)  as the current owner of the registration sought to be cancelled is not the record owner thereof, the Board will send to the alleged current owner a courtesy copy of the institution order, together with instructions and an electronic link for viewing the petition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system. If the alleged current owner believes that it is, in fact, the current owner of the registration and wishes to defend the registration against the petition to cancel, it may file a motion, supported by a showing of its current ownership interest in the registration, to be joined or substituted as respondent. [ Note 16.] See TBMP § 512.

NOTES:

 1.   See 37 CFR § 2.105.

 2.   Cf. 37 CFR § 2.113(c).

 3.   37 CFR § 2.113.

 4.   See 37 CFR § 2.113(c)  and 37 CFR § 3.73(b)(1); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976). Cf. Smart Inventions Inc. v. TMB Products LLC, 81 USPQ2d 1383, 1384 (TTAB 2006) (cancellation respondent’s motion to set aside default judgment on ground that it never received actual or constructive notice of proceeding granted under Fed. R. Civ. P. 60(b)(4) where assignment of mark to respondent recorded before proceeding instituted but notification of proceeding sent to prior owner).

 5.   See 37 CFR § 2.112(a)  and 37 CFR § 2.112(b).

 6.   Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 7.   See 37 CFR § 2.120(a); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007). An example of a trial order can be found in the Appendix of Forms.

 8.   37 CFR § 2.105(a).

 9.   See 37 CFR § 2.118; Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243-44 (August 1, 2007).

 10.   37 CFR § 2.105(b)(1); 37 CFR § 2.113(b)(1).

 11.   37 CFR § 2.105(b)(3); 37 CFR § 2.113(b)(3).

 12.   37 CFR § 2.105(b)(2)  and 37 CFR § 2.113(b)(2). See 37 CFR § 2.119(d).

 13.   See 37 CFR § 2.105(c); Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). See also 37 CFR § 2.119(d).

 14.   See 37 CFR § 2.113(c).

 15.   See Notice of Final Rulemaking, 54 Fed. Reg. 34886, 34891 (August 22, 1989). Cf. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007) ("A plaintiff filing a petition for cancellation is not expected to serve any attorney who may have represented the registrant before the Office in the prosecution of the application that resulted in issuance of the registration").

 16.   See 37 CFR § 2.113(d).

310.02    Defendant’s Copy of Institution Order Returned as Undeliverable

37 CFR § 2.118 Undelivered Office notices. When a notice sent by the Office to any registrant or applicant is returned to the Office undelivered, additional notice may be given by publication in the Official Gazette for the period of time prescribed by the Director.

If an applicant in an opposition is not represented by an attorney or other authorized representative, and the applicant’s copy of the notification is returned to the Board as undeliverable, the Board will make all reasonable efforts to locate the applicant. If the Board is unable to locate the applicant, additional notice of the proceeding may be given by publication in the Official Gazette. [ Note 1.] It should be noted, however, that it is the responsibility of an applicant representing itself to keep the Office informed of its current address.

If, in a cancellation or opposition proceeding, the defendant’s copy of the institution order is returned to the Board as undeliverable, or the plaintiff advises the Board that the service copy was returned undeliverable, the Board will make all reasonable efforts to locate the defendant, including inquiring of the plaintiff as to the defendant’s current address. If the Board is unable to locate the defendant after reasonable investigation, or if the plaintiff is unable to furnish respondent’s current address or notifies the Board that the defendant is no longer in business, notice of the filing of the petition to cancel or notice of opposition will be published in the Official Gazette,pursuant to 37 CFR § 2.118. [ Note 2.]

When notice of the filing of an opposition or petition to cancel is published in the Official Gazette, the published notice allows the defendant thirty days from the publication date thereof in which to appear in the proceeding. If the defendant fails to appear within the time allowed, default judgment may be entered against it.

For information concerning the procedure followed by the Board in a concurrent use proceeding when a communication sent by the Board to a specified excepted user is returned as undeliverable, see TBMP § 1106.05.

NOTES:

 1.   37 CFR § 2.118.

 2.   See 37 CFR § 2.118; Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42244 (August 1, 2007); Notice of Final Rulemaking, 54 Fed. Reg. 34886, 34891 (August 22, 1989).

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).