309.02(c)(2)    Service of Petition on Respondent

37 CFR § 2.111 Filing petition for cancellation.

  • (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee. The petition must include proof of service on the owner of record for the registration, or the owner’s domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.111(b) and 2.119.
  • (b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. Petitioner must serve a copy of the petition, including any exhibits, on the owner of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. The petitioner must include with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days of receipt of the returned copy.

A cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [ Note 1.] The petition must include proof of service of a copy of the petition, including any exhibits, on the owner of record for the registration at the owner’s address of record, [ Note 2.] or, if the owner has designated a domestic representative which is of record, the petition to cancel must be served on the domestic representative at the correspondence address of record in the Office. [ Note 3.]

When petitioner files its petition to cancel with the Board, the petitioner must concurrently serve a copy of the petition, including any exhibits, on the owner of record for the registration at the owner’s address of record in the Office, unless a domestic representative has been designated in the involved registration or in assignment records regarding the registration, in which case, the domestic representative should be served. The requirement that a petitioner serve the petition to cancel on a respondent recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [ Note 4.]

The Board does not serve a copy of the petition to cancel on the owner of the registration. Instead, the petitioner is responsible for serving a copy of the petition to cancel on the owner of record for the registration at the owner’s address of record, or the owner’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. [ Note 5.] To determine the address of the owner of record 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 tab to assignment information. [ Note 7..] The petitioner may consult the assignment database to determine whether the registration has been assigned. If the registration has been assigned, and the assignment has been recorded, the assignee is considered the owner of record and the complaint must be served on the correspondence address of the assignee. The complaint need only be served at the address shown as the owner of record’s address of record displayed on the TSDR website, including any relevant information from the assignment link. [ Note 8.] Although petitioner is not required to serve a copy of the petition to cancel on any address other than the address listed in the TSDR system, if the petitioner has any doubt as to the identity or address of the real party in interest, the petitioner may also serve an additional copy of the petition to cancel on any party believed to have an ownership interest in the relevant registration (e.g., an assignee or survivor of merger that had not recorded the document of transfer in the Office’s Assignment Branch but was known to the petitioner) at the correspondence address known to the petitioner. It is generally in a plaintiff’s interest to have the real party in interest apprised of the existence of the Board proceeding, so that any judgment eventually obtained will be binding on the correct party. [ Note 9.]

The petitioner need not, and should not, serve any attorney who may have represented the respondent before the Office in the prosecution of the application that resulted in issuance of the registration. [ Note 10.] Moreover, if petitioner serves only said attorney, it has not effected proper service of the petition to cancel. However, if respondent has appointed an attorney to represent it in post-registration trademark matters, and petitioner serves the petition on the attorney appointed for post-registration matters instead of on respondent, petitioner may be excused if its failure to serve a copy of the petition on respondent was due to excusable error, and if petitioner thereafter sends a service copy to respondent and files a motion to amend the proof of service accordingly. In that case, the proceeding will not be dismissed as a nullity, but will be accorded a filing date as of the date of the amended proof of service and will proceed on whatever grounds are then available. [ Note 11.] It should be noted that even if the petition to cancel was originally served within 5 years from the date of the registration of the mark, the grounds for cancellation may be affected if the amended filing date is after the five-year anniversary date of the registration. [ Note 12.] Therefore, even where petitioner may believe respondent is represented by counsel, the better practice is to serve respondent or any appointed domestic representative directly(with an optional, courtesy copy to the attorney believed by the petitioner to be representing respondent), to avoid a potential time bar and since 37 CFR § 2.111(a)  requires the petition to be served on the owner of the registration or its domestic representative, if one has been appointed. [ Note 13.]

The manner of service is provided for in 37 CFR § 2.119. The parties may agree to use electronic transmission (e.g., facsimile or email) to communicate with each other and to meet their service obligations. When such an agreement is made, the best practice is to reduce the agreement to writing. If the parties have communicated prior to the filing of the petition to cancel, and respondent has agreed to accept service of the complaint by electronic transmission, petitioner may serve the petition to cancel by electronic transmission, e.g., facsimile or email. [ Note 14.]

The petition to cancel may be filed using ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. By using ESTTA, a petitioner affirmatively represents to the Board that it has served a copy of the petition to cancel on respondent; thus any petitioner who files its petition to cancel through ESTTA will be viewed by the Board as having included proof of service with the pleading [ Note 15.],because a statement confirming service appears on the ESTTA-generated filing form as part of the complaint. [ Note 16.]The appearance of the proof of service on the complaint does not by itself effect service however; petitioner must still make actual service of the complaint on respondent to comply with its service obligation.

If a service copy is returned to petitioner as undeliverable, petitioner must notify the Board, in writing, within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [ Note 17.] Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [ Note 18.] While petitioner is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any respondent the petitioner is unable to serve, if petitioner knows of any new address information for the respondent, petitioner must report the address to the Board. In any case in which petitioner notifies the Board that a service copy sent to a respondent was returned or not delivered, including any case in which the notification includes a new address for the respondent discovered by or reported to petitioner, the Board will effect service. [ Note 19.]

The filing date of the petition is the date of receipt in the Office of the petition, with proof of service and the required fee. [ Note 20.] However, if the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 CFR § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS. [ Note 21.], unless the "date in" date cannot be determined, in which case the date the petition is received in the Office is considered the filing date of the petition to cancel. [ Note 22.] The Certificate of Mailing procedure described in 37 CFR § 2.197  and the "Priority Mail Express®" procedure described in 37 CFR § 2.198  are available for the filing of a petition to cancel. [ Note 23.]

NOTES:

 1.   See 37 CFR § 2.111(a).

 2.   See 37 CFR § 2.111(a). See also Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) (petition to be served either on the owner or the domestic representative, if appointed).

 3.   See 37 CFR § 2.111(b). See also Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) (petition to be served either on the owner or the domestic representative, if appointed).

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

 5.   See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007); Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) (the rules require petitioner to serve a copy of the petition to cancel either on the owner at the correspondence address of record or a domestic representative, if appointed, at the correspondence address of record).

 6.   Miscellaneous Changes to Trademark Trial and Appeal Board Rules 72 Fed. Reg. 42242, 42243 (August 1, 2007); Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) (plaintiff to consult Office’s TSDR database to determine correspondence address of record).

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

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

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

 10.   See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007); Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1216 n.8 (TTAB 2012) (duration of power of attorney in ex parte prosecution is considered limited).

 11.   See The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 (TTAB 2009)(petitioner allowed to remedy its failure to comply with the service requirements of 37 CFR §§ 2.111(a), 2.111(b) and 2.111(c)(4) by proof of subsequent service of the petition to cancel on respondent; since counsel for respondent filed an answer and was clearly representing respondent, petitioner need not send additional copy of petition to respondent).

 12.   See Trademark Act § 14, 15 U.S.C. § 1064.

 13.   Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1216 (TTAB 2012) (petitioner must serve either the owner of record or the domestic representative, if appointed, at address of record and may forward a courtesy copy to an attorney it believes is representing respondent; motion to dismiss for lack of proper service is granted, but law firm that filed motion is recognized as counsel of record for respondent, respondent is on notice of the proceeding, and proceedings resumed); The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.3 (TTAB 2009) (although service of petition to cancel on counsel for registrant was improper, since counsel for registrant filed an answer and was representing registrant, petitioner did not have to reserve registrant at its address of record).

 14.   See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007).

 15.   See Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1214 (TTAB 2012) (ESTTA requires petitioner to affirmatively represent it has served a copy of the petition to cancel on respondent); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (where opposer filed notice of opposition by mail, its only opportunity to show proof of service at the time of filing was to include a certificate of service with the notice; having failed to include proof of service with its complaint, opposer could not meet the requirement set forth in 37 CFR § 2.101(b), but use of the Board’s ESTTA online filing system prevents the process from being completed unless opposer confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record).

 16.   Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1214 (TTAB 2012) (a statement confirming services appears on the ESTTA-generated filing form as part of the complaint); The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009) ("Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading.").

 17.   See 37 CFR § 2.101(b).

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

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

 20.   See, e.g., Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1215 (TTAB 2012) ("Attesting to proof of service of an ESTTA filing without actually effecting service in accordance with the rules is insufficient to commence the proceeding.").

 21.   See 37 CFR § 2.198(a)(1).

 22.   See 37 CFR § 2.198(a)(2).

 23.See   See 37 CFR § 2.197(a)  and 37 CFR § 2.198(a).