313.06 Answer to Counterclaim
37 CFR § 2.106(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.
37 CFR § 2.114(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated within which an answer to the counterclaim must be filed.
37 CFR § 2.114(a) If no answer is filed within the time set, the petition may be decided as in case of default.
When a counterclaim (together with proof of service and the required cancellation fee) is filed, the Board prepares an order acknowledging its receipt and allowing the plaintiff (defendant in the counterclaim) a set time, not less than 30 days, within which to file an answer to the counterclaim. [ Note 1.] In practice, the Board usually allows 30 days. See TBMP § 310.03(b) (five-day addition under 37 CFR § 2.119(c) does not apply to deadlines set by Board). A copy of the order is sent to each party to the proceeding, or to each party’s attorney or other authorized representative. The order will also include a trial schedule and briefing dates to accommodate the counterclaim, which will reset or extend, as appropriate,the times for discovery (including conferencing and initial and expert disclosure dates), pretrial disclosures, testimony, briefs and/or oral argument. [ Note 2.]
If no answer to the counterclaim is filed during the time allowed, the counterclaim may be decided as in case of default. [ Note 3.] For information concerning default for failure to answer, see TBMP § 312.
An answer to a counterclaim should be in the same form as an answer to a complaint. For information on the proper form for an answer to a complaint, see TBMP § 311.01.
An answer to a counterclaim, like any other answer, may include a counterclaim for cancellation of a registration owned by the counterclaimant. A defense attacking the validity of any registration pleaded by the counterclaimant is a compulsory counterclaim if grounds for such counterclaim exist at the time the plaintiff’s answer to the defendant’s counterclaim is filed. If the plaintiff knows of grounds for a counterclaim when the plaintiff’s answer to the defendant’s counterclaim is filed, the counterclaim must be pleaded with or as part of the plaintiff’s answer. If, during the course of the proceeding, the plaintiff learns, through discovery or otherwise, that grounds for a counterclaim exist, the counterclaim should be pleaded promptly after the grounds therefor are learned. [ Note 4.] Cf. TBMP § 313.04.
A plaintiff’s counterclaim to cancel a registration owned by the defendant, but not pleaded in the defendant’s counterclaim, is a permissive counterclaim. [ Note 5.] Cf. TBMP § 313.05.
For information on the fee for a counterclaim, see 37 CFR § 2.6(a)(16) and TBMP § 313.02. For information on the form for a counterclaim, see TBMP § 313.03.
NOTES:
1. See 37 CFR § 2.106(b)(2)(iii) and 37 CFR § 2.114(b)(2)(iii) .
2. An example of a trial order for a proceeding with a counterclaim can be found in the Appendix of Forms.
3. See 37 CFR § 2.114(a) and 37 CFR § 2.114(b)(2)(iii).
4. Cf. 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i).
5. Cf. Fed. R. Civ. P. 13(b).