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Title Page - TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) Foreword - United States Patent and Trademark Office Introduction - INTRODUCTION 0100 - GENERAL INFORMATION 101 - Applicable Authority 101.01 - Statute and Rules of Practice 101.02 - Federal Rules 101.03 - Decisional Law 101.04 - Director’s Orders and Notices 101.05 - Trademark Trial and Appeal Board Manual of Procedure 102 - Nature of Board Proceedings 102.01 - Jurisdiction of Board 102.02 - Types of Board Proceedings 102.03 - General Description of Board Proceedings 103 - Location and Address of Board 104 - Business to be Conducted in Writing 105 - Contact With Board Personnel 106 - Identification, Signature, and Form of Submissions 106.01 - Identification of Submissions 106.02 - Signature of Submissions 106.03 - Form of Submissions 107 - How and Where to File Papers and Fees 108 - Filing Receipts 109 - Filing Date 110 - Certificate of Mailing Procedure and Electronic Filing Using ESTTA 110.01 - Certificate of Mailing – In General 110.02 - Requirements for Certificate 110.03 - Suggested Format 110.04 - Location of Certificate 110.05 - Loss of Certificate of Mailing 110.06 - No receipt of Correspondence Bearing Certificate 110.07 - Excluded Filings 110.08 - A Certificate of Mailing or Transmission is Not ... 110.09 - Electronic Filing Using ESTTA 110.09(a) - Plan Ahead 110.09(b) - ESTTA is Mandatory for Some Filings 110.09(c) - Attachments to ESTTA Filings 110.09(c)(1) - In General 110.09(c)(2) - Form of ESTTA Attachments 110.09(c)(3) - Size Limitations 110.09(d) - Service of ESTTA Filings 110.09(e) - Questions About ESTTA Filing 111 - Priority Mail Express® Procedure 111.01 - In General 111.02 - Requirements for Priority Mail Express® 111.03 - Questionable Date of Mailing 112 - Times for Taking Action 113 - Service of Papers 113.01 - Requirement for Service of Papers 113.02 - Requirement for Proof of Service 113.03 - Elements of Certificate of Service 113.04 - Manner of Service 113.05 - Additional Time for Taking Action After Service by Mail 113.06 - A Certificate of Service is Not... 114 - Representation of a Party 114.01 - Party May Represent Itself 114.02 - Selection of Attorney 114.03 - Representation by Attorney 114.04 - Representation by Non-lawyer (i.e., “ Other Authorized Representative ”) 114.05 - Representation by Foreign Attorney or Agent 114.06 - Individual Not Entitled to Represent Others 114.07 - Designation of Domestic Representative 114.08 - Adverse Parties Represented by Same Practitioner 115 - Conduct of Practitioner 115.01 - Applicable Rules 115.02 - Disciplinary Proceedings 115.03 - Petitions to Disqualify 116 - Termination of Representation 116.01 - Revocation of Authority 116.02 - Withdrawal as Representative--In General 116.03 - When Withdrawal is Mandatory 116.04 - When Withdrawal is Permissive 116.05 - Request to Withdraw 117 - Correspondence - With Whom Held 117.01 - In General 117.02 - When There is More Than One Attorney or Other Authorized Representative 117.03 - Continuation of Correspondence With Representative in Application or Registration When Inter Partes Proceeding Commences 117.04 - Continuation of Correspondence with Representative of Potential Opposer After Opposition is Filed 117.05 - Correspondence After Revocation or Withdrawal 117.06 - Correspondence With Foreign Party 117.07 - Change of Address 117.08 - Individual Not Entitled to Represent Others 118 - Payment of Fees 118.01 - Lists of Fees and Charges 118.02 - Fees Payable in Advance 118.03 - Method of Payment--In General 118.04 - Method of Payment--Deposit Accounts 119 - Papers and Fees Generally Not Returnable 119.01 - Fee Refunds--General Rule 119.02 - Papers and Fees--Ex Parte Cases 119.03 - Papers and Fees--Inter Partes Cases 120 - Access to Files 120.01 - Non - confidential Files 120.02 - Confidential Materials 120.03 - Files of Terminated Proceedings 121 - Copying of Files 122 - Certification 122.01 - Court Requirements 122.02 - Certified Copies 123 - Status Information for Applications, Registrations and Board Proceedings 124 - Action by Assignee 0200 - EXTENSIONS OF TIME TO OPPOSE 201 - In General 202 - Time for Filing Request 202.01 - In General 202.02 - Date of Publication of Mark 202.03 - Premature Request 202.04 - Late Request 203 - Form of Request 203.01 - General Considerations 203.01(a) - Paper or Electronic Filings 203.01(b) - Note on Electronic Filing With ESTTA 203.02 - Identifying Information 203.02(a) - In General 203.02(b) - Requirement for Identification of Potential Opposer 203.03 - Signature 203.04 - Service 203.05 - Duplicate Requests 204 - Fee 205 - Mark on Supplemental Register Not Subject to Opposition 206 - Who May File an Extension of Time to Oppose 206.01 - General Rule 206.02 - Request for Further Extension Filed by Privy 206.03 - Misidentification of Potential Opposer 207 - Requirements for Showing of Cause; Extraordinary Circumstances 207.01 - In General 207.02 - Extensions Up to 120 Days From the Date of Publication 207.03 - Extensions Beyond 120 Days From the Date of Publication 208 - Essential Element Omitted 209 - Action by Board on Request 209.01 - Suspension Policy 209.02 - Determination of Extension Expiration Date 210 - Objections to Request 211 - Relief From Action of Board 211.01 - Request for Reconsideration 211.02 - Relief after Institution of Opposition 211.03 - Petition to the Director 212 - Amendment of Application During or After Extension 212.01 - Jurisdiction to Consider Amendment 212.02 - Conditions for Approval of Post-Publication Amendment 212.03 - Form of Amendment 212.04 - Action by Board - Upon Receipt of Amendment 212.05 - Action by Board -- During Consideration of Amendment by TMO 212.06 - Action by Board -- After Consideration of Amendment by TMO 212.07 - Amendment During Opposition 213 - Effect of Restoration of Jurisdiction 214 - Effect of Republication 215 - Effect of Letter of Protest 216 - Inadvertently Issued Registration 217 - Relinquishment of Extension 218 - Abandonment of Application 219 - Amendment to Allege Use; Statement of Use 220 - Inadvertent Issuance of a Notice of Allowance 0300 - PLEADINGS 301 - Types of Board Proceedings 301.01 - In General 301.02 - Mark on Supplemental Register Not Subject to Opposition 301.03 - Mark Filed Under the Madrid Protocol is Subject to Opposition 302 - Commencement of Proceeding 303 - Who May Oppose or Petition to Cancel 303.01 - In General 303.02 - Meaning of the Term “ Person ” 303.03 - Meaning of the Term “Damage” 303.04 - Federal Trade Commission 303.05 - Opposition Filed During Extension of Time to Oppose 303.05(a) - General Rule 303.05(b) - Opposition Filed by Privy 303.05(c) - Misidentification of Opposer 303.05(d) - Misidentification of Applicant or Respondent 303.06 - Joint Opposers or Petitioners 304 - Proceeding Against Multiple Class Application or Registration 305 - Consolidated and Combined Complaints 305.01 - Consolidated Complaint 305.02 - Combined Complaint 306 - Time for Filing Opposition 306.01 - In General 306.02 - Date of Publication of Mark 306.03 - Premature Opposition 306.04 - Late Opposition 307 - Time for Filing Petition to Cancel 307.01 - Petition That May Be Filed At Any Time After Registration 307.02 - Petition That Must Be Filed Within Five Years from the Date of Registration 307.02(a) - In General 307.02(b) - Trademark Act § 14, 15 U.S.C. § 1064, Limitation is Independent of Trademark Act § 15, 15 U.S.C. § 1065, Affidavit 307.02(c) - Factors Affecting the Five-Year Period 307.02(c)(1) - Reliance on Registration By Plaintiff 307.02(c)(2) - Amendment of Registration 307.03 - Premature Petition to Cancel 307.04 - Late Petition to Cancel 308 - Filing Fees 308.01 - Fee for Filing Opposition 308.01(a) - In General 308.01(b) - Insufficient Fee 308.02 - Fee for Filing Petition to Cancel 308.02(a) - In General 308.02(b) - Insufficient Fee 308.02(c) - Petition Filed by Federal Trade Commission 308.02(d) - Fee for Counterclaim 308.03 - Fees for Joint Opposers or Petitioners 308.04 - Fees for Proceeding Against Multiple Class Application or Registration 308.05 - Fees for Consolidated and Combined Complaints 309 - Form and Content of Oppositions and Petitions to Cancel 309.01 - In General 309.02 - Form of Complaint 309.02(a) - Format for Complaint 309.02(b) - Signature of Complaint 309.02(c) - Service of Complaint 309.02(c)(1) - Service of Opposition on Applicant 309.02(c)(2) - Service of Petition on Respondent 309.03 - Substance of Complaint 309.03(a) - In General 309.03(a)(1) - Scope of Opposition and Petition to Cancel 309.03(a)(2) - Elements of Complaint – In General 309.03(b) - Standing 309.03(c) - Grounds A. - Priority B. - Likelihood of Confusion 309.03(d) - Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation) 309.04 - Defects in Complaint That May Affect Institution of Proceeding 310 - Notification to Parties of Proceeding and Setting Time to Answer 310.01 - Notification to Parties of Proceeding 310.02 - Defendant’s Copy of Institution Order Returned as Undeliverable 310.03 - Setting Time for Filing Answer 310.03(a) - In General 310.03(b) - Five -Day Addition Under 37 CFR § 2.119(c) Not Applicable to Deadlines Set by Board 310.03(c) - Extension of Time to File Answer 311 - Form and Content of Answer 311.01 - Form of Answer 311.01(a) - Format for Answer 311.01(b) - Signature of Answer 311.01(c) - Filing and Service of Answer 311.02 - Substance of Answer 311.02(a) - Admissions and Denials 311.02(b) - Affirmative Defenses 311.02(c) - Unpleaded Affirmative Defenses 311.02(d) - Other Affirmative Pleadings - Amplifying Denials 311.03 - Reply to Answer Should Not be Filed 312 - Default 312.01 - In General 312.02 - Setting Aside Notice of Default 312.03 - Setting Aside Default Judgment 313 - Counterclaims 313.01 - In General 313.02 - Fee For Counterclaim 313.03 - Form and Substance of Counterclaim; Service of Counterclaim 313.04 - Compulsory Counterclaims 313.05 - Permissive Counterclaims 313.06 - Answer to Counterclaim 314 - Unpleaded Matters 315 - Amendment of Pleadings 316 - Motions Relating to Pleadings 317 - Exhibits to Pleadings 318 - Fed. R. Civ. P. 11 Applicable 319 - Amendment to Allege Use; Statement of Use 0400 - DISCOVERY 401 - Introduction to Disclosures and Discovery 401.01 - Discovery Conferences 401.02 - Initial Disclosures 401.03 - Expert Disclosures 401.04 - Modification of Disclosure Obligations 401.05 - Form of Disclosures 401.06 - Other Requirements Under the Board’s Disclosure Regime 402 - Scope of Discovery 402.01 - In General 402.02 - Limitations on Right to Discovery and on Electronically Stored Information 403 - Timing of Discovery 403.01 - In General 403.02 - Time for Service of Discovery Requests and Taking of Depositions 403.03 - Time for Service of Discovery Responses 403.04 - Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures 403.05 - Need for Early Initiation of Discovery 403.05(a) - To Allow Time for “Follow-up” Discovery 403.05(b) - To Facilitate Introduction of Produced Documents 404 - Discovery Depositions 404.01 - When Permitted and By Whom 404.02 - Who May be Deposed 404.03 - Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent 404.03(a) - Person Residing in the United States – In General 404.03(a)(1) - Person Residing in the United States – Party 404.03(a)(2) - Person Residing in the United States – Non-party 404.03(b) - Person Residing in a Foreign Country – Party 404.03(c) - Person Residing in a Foreign Country – Non-party 404.03(c)(1) - Willing Non-party 404.03(c)(2) - Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure 404.03(d) - Foreign Person Present Within the United States – Party 404.03(e) - Foreign Person Present Within the United States – Non-party 404.04 - Persons Before Whom Depositions May be Taken 404.05 - Notice of Deposition 404.06 - Taking a Discovery Deposition 404.06(a) - Fed. R. Civ. P. 30(b)(1) Depositions by Oral Examination of a Natural Person 404.06(b) - Fed. R. Civ. P. 30(b)(6) Deposition of a Corporation, Organization, Partnership, Association or Other Juristic Person 404.06(c) - Time for Deposition 404.06(d) - Re-Deposing a Witness 404.07 - Discovery Depositions on Written Questions 404.07(a) - Depositions on Written Questions: Before Whom Taken 404.07(b) - Depositions on Written Questions: When Taken 404.07(c) - Depositions on Written Questions: Place of Deposition 404.07(d) - Depositions on Written Questions: Notice of Deposition 404.07(e) - Depositions on Written Questions: Examination of Witness 404.07(f) - Depositions on Written Questions: Objections 404.07(g) - Depositions on Written Questions: Form of Deposition; Signature 404.07(h) - Depositions on Written Questions: Certification of Deposition 404.07(i) - Depositions on Written Questions: Service, Correction, and Making the Deposition of Record 404.07(j) - Deposition on Written Questions: Utility 404.08 - Discovery Deposition Objections 404.08(a) - Objections to Notice 404.08(b) - Objections as to Disqualification of Officer 404.08(c) - Objections During Deposition 404.09 - Discovery Depositions Compared to Testimony Depositions 405 - Interrogatories 405.01 - When Permitted and By Whom 405.02 - Scope 405.03 - Limit on Number 405.03(a) - Description of Limit 405.03(b) - Application of Limit: Sets of Interrogatories 405.03(c) - Application of Limit: Multiple Marks, Etc. 405.03(d) - Application of Limit: Counting Interrogatories 405.03(e) - Remedy for Excessive Interrogatories 405.04 - Responses to Interrogatories 405.04(a) - Time for Service of Responses 405.04(b) - Nature of Responses 405.04(c) - Signature of Responses and Authority of Signer 406 - Requests for Production of Documents and Things and Electronically Stored Information 406.01 - When Permitted and By Whom 406.02 - Scope 406.03 - Elements of Request for Production 406.04 - Responses to Requests for Production 406.04(a) - Time for Service of Responses 406.04(b) - Place and Form of Production 406.04(c) - Nature of Responses 407 - Requests for Admissions 407.01 - When Permitted and By Whom 407.02 - Scope and Nature of Requests for Admission 407.03 - Responses to Requests for Admission 407.03(a) - Time for Service of Responses 407.03(b) - Nature of Responses 407.03(c) - Signature of Responses 407.04 - Effect of Admission 408 - Duties to Cooperate, Search Records, Supplement 408.01 - Duty to Cooperate 408.01(a) - Obligation to Conduct Discovery Conference 408.01(b) - Obligation to Make Initial and Expert Testimony Disclosures 408.01(c) - Duty to Cooperate With Regard to Written Discovery and Disclosures 408.02 - Duty to Search Records 408.03 - Duty to Supplement Disclosures and Discovery Responses 409 - Filing Discovery Requests, Discovery Responses, and Disclosures With Board 410 - Asserting Objections to Requests for Discovery, Motions Attacking Requests for Discovery, and Disclosures 411 - Remedy for Failure to Provide Disclosures or Discovery 411.01 - Initial and Expert Testimony Disclosures 411.02 - Interrogatories or Requests for Production 411.03 - Requests for Admission 411.04 - Discovery Depositions 411.05 - Sanctions Related to Disclosures and Discovery 412 - Protective Orders 412.01 - In General – Board Standard Protective Order 412.01(a) - Proper Designation of Confidential Matter 412.01(b) - Challenging the Designation of Confidential Matter 412.01(c) - Over-designation: Improper designation of confidential filings with the Board 412.02 - Modification of Board’s Standard Protective Order Governing the Exchange of Confidential, Highly Confidential and Trade Secret/Commercially Sensitive Information 412.02(a) - Modification of Board’s Standard Protective Order Upon Stipulation 412.02(b) - Pro Se Litigants and In-House Legal Counsel 412.02(c) - In Camera Inspection 412.02(d) - Contents of Protective Order 412.03 - Duration of Protective Order 412.04 - Filing Confidential Materials With Board 412.05 - Handling of Confidential Materials By the Board 412.06 - Protective Orders Limiting Discovery 412.06(a) - Depositions 412.06(b) - Other Discovery 413 - Telephone and Pretrial Conferences 413.01 - Telephone Conferences for Motions Relating to Discovery 413.02 - Pretrial Conferences 414 - Selected Discovery Guidelines 0500 - STIPULATIONS AND MOTIONS 501 - Stipulations 501.01 - In General 501.02 - Filing Stipulations 501.03 - Form of Stipulations 502 - Motions - In General 502.01 - Available Motions 502.02 - Form of Motions and Briefs on Motions 502.02(a) - Form of Motions 502.02(b) - Briefs on Motions 502.02(c) - Confidential Information 502.03 - Oral Hearings on Motions 502.04 - Determination of Motions 502.05 - Attorneys’ Fees, etc., on Motions 502.06 - Telephone and Pretrial Conferences 502.06(a) - Telephone Conferences 502.06(b) - Pretrial Conferences 502.07 - Fed. R. Civ. P. 11 Applicable 503 - Motion to Dismiss for Failure to State a Claim 503.01 - Time for Filing 503.02 - Nature of Motion 503.03 - Leave to Amend Defective Pleading 503.04 - Matters Outside the Pleading Submitted on Motion to Dismiss 504 - Motion for Judgment on the Pleadings 504.01 - Time for Filing 504.02 - Nature of Motion 504.03 - Matters Outside the Pleadings Submitted on Motion for Judgment on Pleadings 505 - Motion for a More Definite Statement 505.01 - Nature of Motion 505.02 - Time for Filing 505.03 - Failure to Obey Order for More Definite Statement 506 - Motion to Strike Matter From Pleading 506.01 - Nature of Motion 506.02 - Time for Filing 506.03 - Exhibits Attached to Pleadings 507 - Motion to Amend Pleading 507.01 - In General 507.02 - Amendments – General Rule – Fed. R. Civ. P. 15(a) 507.02(a) - Timing of Motion to Amend Pleading – In General 507.02(b) - Timing of Motion to Amend to Add Counterclaim 507.03 - Amendments to Conform to the Evidence - Fed. R. Civ. P. 15(b) 507.03(a) - During Trial After Objection to Trial Evidence 507.03(b) - To Add Issues Tried by Express or Implied Consent 508 - Motion for Default Judgment for Failure to Answer 509 - Motion to Extend Time; Motion to Reopen Time 509.01 - Nature of Motions 509.01(a) - Motions to Extend Time 509.01(b) - Motions to Reopen Time 509.01(b)(1) - In General 509.01(b)(2) - To Introduce Newly Discovered Evidence 509.02 - Form and Determination of Motions to Extend or Reopen 510 - Motion to Suspend; Motion to Resume 510.01 - In General 510.02 - Suspension Pending Outcome of Another Proceeding; Resumption 510.02(a) - Suspension 510.02(b) - Resumption 510.03 - Suspension for Other Reasons; Resumption 510.03(a) - Suspension 510.03(b) - Resumption 511 - Motion to Consolidate 512 - Motion to Join or Substitute 512.01 - Assignment of Mark 512.02 - Change of Name 512.03 - Issuance of Registration to Assignee, or in New Name 512.04 - Misidentification 513 - Motion to Withdraw as Representative; Petition to Disqualify 513.01 - Motion to Withdraw as Representative 513.02 - Petition to Disqualify 514 - Motion to Amend Application or Registration 514.01 - In General 514.02 - Amendment With Consent 514.03 - Amendment Without Consent 514.04 - Amendment to Allege Use; Statement of Use 515 - Motion to Remand Application to Examining Attorney 516 - Motion to Divide Application or Registration 517 - Motion to Strike Brief on Motion 518 - Motion for Reconsideration of Decision on Motion 519 - Motion for Leave to Serve Additional Interrogatories 520 - Motion to Take Foreign Deposition Orally 521 - Motion to Quash Notice of Deposition 522 - Motion for Order re Manner or Place of Document Production 523 - Motion to Compel Disclosure or Discovery 523.01 - In General 523.02 - Special Requirements for Motion 523.03 - Time for Filing Motion 523.04 - Failure to File Motion to Compel 524 - Motion to Test Sufficiency of Response to Requests for Admission 524.01 - In General 524.02 - Special Requirements for Motion 524.03 - Time for Filing Motion 524.04 - Failure to File Motion 525 - Motion to Withdraw or Amend Admission 526 - Motion for a Protective Order 527 - Motion for Sanctions 527.01 - Motion for Discovery Sanctions 527.01(a) - For Failure to Comply With Board Discovery Order 527.01(b) - If Party Says It Will Not Respond to Discovery Request or Make Required Disclosures 527.01(c) - Untimely Response to Discovery Requests 527.01(d) - In the Case of Requests for Admission 527.01(e) - Estoppel Sanction 527.01(f) - Motions in Limine 527.02 - Motion for Fed. R. Civ. P. 11 Sanctions 527.03 - Inherent Authority to Sanction 528 - Motion For Summary Judgment and Accelerated Case Resolution (ACR) 528.01 - General Nature of Motion 528.02 - Time For Filing Motion 528.03 - Suspension Pending Determination of Motion 528.04 - Miscaptioned Motion 528.05 - Summary Judgment Evidence 528.05(a) 528.05(a)(1) - In General 528.05(a)(2) - Accelerated Case Resolution (ACR) 528.05(b) - Affidavits and Accompanying Exhibits 528.05(c) - Discovery Responses and Disclosures 528.05(d) - Registrations 528.05(e) - Printed Publications and Official Records 528.05(f) - Testimony from Another Proceeding 528.06 - Request For Discovery to Respond to Summary Judgment 528.07 - Unpleaded Issue 528.07(a) - Not Basis for Entering Summary Judgment 528.07(b) - Not Defense Against Summary Judgment 528.08 - Entry of Summary Judgment in Favor of Nonmoving Party 529 - Motion to Offer Discovery Deposition of Self or Nonparty 530 - Motion to Use Testimony From Another Proceeding 531 - Motion That Deposition Upon Written Questions Be Taken Orally 532 - Motion to Strike Notice of Reliance 533 - Motion to Strike Trial Testimony Deposition 533.01 - On Ground of Untimeliness 533.02 - On Other Grounds 533.02(a) - On Ground of Improper or Inadequate Notice 533.02(b) - On Ground of Failure to Disclose Witness in Expert or Pretrial Disclosures 533.03 - When Motion to Strike Should Not Be Filed 534 - Motion For Judgment For Plaintiff’s Failure to Prove Case 534.01 - In General 534.02 - Motion For Judgment Under 37 CFR § 2.132(a) 534.03 - Motion For Judgment Under 37 CFR § 2.132(b) 534.04 - Motion Under Fed. R. Civ. P. 41(b) or Fed. R. Civ. P. 50(a) Not Available 535 - Motion For Order to Show Cause Under 37 CFR § 2.134(b) 536 - Motion For Order to Show Cause Under 37 CFR § 2.128(a)(3) 537 - Motion For Leave to Exceed Page Limit For Brief On Case 538 - Motion For Leave to File Amicus Brief 539 - Motion to Strike Brief On Case 540 - Motion For Augmented Panel Hearing 541 - Motion to Change Oral Hearing Date; For Additional Time 541.01 - Motion to Change Oral Hearing Date 541.02 - Motion For Additional Time For Oral Argument 542 - Motion For Leave to Record Oral Hearing 543 - Motion For Reconsideration of Final Decision 544 - Motion For Relief From Final Judgment 0600 - WITHDRAWAL; SETTLEMENT 601 - Withdrawal by Opposition or Cancellation Plaintiff 601.01 - Withdrawal by Opposer 601.02 - Withdrawal by Petitioner 601.03 - Effect of Motion for Judgment 602 - Withdrawal by Opposition or Cancellation Defendant 602.01 - Withdrawal by Applicant 602.02 - Withdrawal by Respondent 602.02(a) - Surrender or Voluntary Cancellation of Registration 602.02(b) - Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70 603 - Withdrawal by Interference or Concurrent Use Applicant 604 - Consent to Judgment 605 - Settlement 605.01 - In General 605.02 - Suspension for Settlement Negotiations 605.03 - Settlement Agreements 605.03(a) - In General 605.03(b) - With Amendment of Subject Application or Registration 605.03(c) - With Amendment of Plaintiff’s Pending Application 605.03(d) - Breach of Settlement Agreement 605.03(e) - Effect of Judgment Based Upon Agreement 605.03(f) - Consent Orders 606 - Effect on Counterclaim 0700 - TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 701 - Time of Trial 702 - Pretrial Disclosures; Manner of Trial; and Introduction of Evidence 702.01 - Pretrial Disclosures 702.02 - Introduction of Evidence 702.03 - Manner of Trial 702.04 - Accelerated Case Resolution 702.04(a) - In General 702.04(b) - ACR using Summary Judgment Briefs 702.04(c) - ACR Conversion - Summary Judgment Briefs 702.04(d) - ACR using Stipulated Record and Trial Briefs 702.04(e) - Utilizing Stipulations in Non-ACR Board cases 702.05 - Overly Large Records 703 - Taking and Introducing Testimony 703.01 - Oral Testimony Depositions 703.01(a) - In General 703.01(b) - Form of Testimony 703.01(c) - Time for Taking Testimony 703.01(d) - Time and Place of Deposition 703.01(e) - Notice of Deposition 703.01(f) - Securing Attendance of Unwilling Adverse Party or Non-party 703.01(f)(1) - In General 703.01(f)(2) - Unwilling Witness Residing in United States 703.01(f)(3) - Unwilling Witness Residing in Foreign Country 703.01(g) - Persons Before Whom Depositions May be Taken 703.01(h) - Examination of Witnesses 703.01(i) - Form of Deposition and Exhibits 703.01(j) - Signature of Deposition by Witness 703.01(k) - Certification and Filing of Deposition 703.01(l) - Testimony Deposition Must be Filed 703.01(m) - Service of Deposition 703.01(n) - Correction of Errors in Deposition 703.01(o) - Objections to Testimony Depositions 703.01(p) - Confidential or Trade Secret Material 703.02 - Testimony Depositions on Written Questions 703.02(a) - Depositions on Written Questions: When Available 703.02(b) - Depositions on Written Questions: Before Whom Taken 703.02(c) - Depositions on Written Questions: When Taken 703.02(d) - Depositions on Written Questions: Place of Deposition 703.02(e) - Depositions on Written Questions: Notice of Deposition 703.02(f) - Depositions on Written Questions: Securing Attendance of Unwilling Witness 703.02(g) - Depositions on Written Questions: Examination of Witness 703.02(h) - Depositions on Written Questions: Form, Signature and Certification of Deposition 703.02(i) - Depositions on Written Questions: Service, Correction and Filing of Deposition 703.02(j) - Testimony Depositions on Written Questions Must be Filed 703.02(k) - Depositions on Written Questions: Objections to Deposition 703.02(l) - Depositions on Written Questions: Confidential or Trade Secret Material 703.02(m) - Depositions on Written Questions: Utility 704 - Introducing Other Evidence 704.01 - In General 704.02 - Notice of Reliance – Generally 704.03 - Applications and Registrations 704.03(a) - Subject of Proceeding 704.03(b) - Not Subject of Proceeding – In General 704.03(b)(1) - Registration Not Subject of Proceeding 704.03(b)(1)(A) - Registration Owned by Party 704.03(b)(1)(B) - Third-Party Registration 704.03(b)(2) - Application Not Subject of Proceeding 704.04 - Statements and Things in Application or Registration 704.05 - Exhibits to Pleadings or Briefs 704.05(a) - Exhibits to Pleadings 704.05(b) - Exhibits to Briefs 704.06 - Statements in Pleadings or Briefs 704.06(a) - Statements in Pleadings 704.06(b) - Statements in Briefs 704.07 - Official Records 704.08 - Printed Publications 704.08(a) - Traditional Printed Publications 704.08(b) - Internet Materials 704.08(c) - Other Printed Materials 704.09 - Discovery Depositions 704.10 - Interrogatory Answers; Admissions 704.11 - Produced Documents 704.12 - Judicial Notice 704.12(a) - Kind of Fact That May be Judicially Noticed 704.12(b) - When Taken 704.12(c) - Opportunity to be Heard 704.12(d) - Time of Taking Notice 704.13 - Testimony From Another Proceeding 704.14 - Initial Disclosures and Disclosed Documents 705 - Stipulated Evidence and Accelerated Case Resolution (ACR) 706 - Noncomplying Evidence 707 - Objections to Evidence 707.01 - In General 707.02 - Objections to Notices of Reliance 707.02(a) - In General 707.02(b) - On Procedural Grounds 707.02(b)(1) - On Ground of Untimeliness 707.02(b)(2) - On Other Procedural Grounds 707.02(c) - On Substantive Grounds 707.03 - Objections to Trial Testimony Depositions 707.03(a) - In General 707.03(b) - On Procedural Grounds 707.03(b)(1) - On Ground of Untimeliness 707.03(b)(2) - On Ground of Improper or Inadequate Notice 707.03(b)(3) - On Ground of Failure to Disclose 707.03(c) - On Other Procedural Grounds and on Substantive Grounds 707.03(d) - Refusal to Answer Deposition Question 707.04 - Waiver of Objection 0800 - BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 801 - Briefs on the Case 801.01 - In General 801.02 - Time for Filing 801.02(a) - Plaintiff's Main Brief 801.02(b) - Defendant's Main Brief 801.02(c) - Plaintiff's Reply Brief 801.02(d) - Reply Brief for Defendant Not Permitted 801.02(e) - Special Situations 801.03 - Form and Contents of Brief 801.04 - Amicus Briefs 801.05 - Motion to Strike Brief on Case 802 - Oral Hearing 802.01 - In General 802.02 - Request for Oral Hearing 802.03 - Time and Place of Hearing 802.04 - Before Whom Held 802.05 - Length of Oral Argument 802.06 - Audio Recording and Video Recording 802.07 - Visual Aids, etc. 802.08 - Nature of Hearing 803 - Final Decision 804 - Request for Rehearing, Reconsideration, or Modification of Final Decision 805 - Final Decision Remand to Examining Attorney 806 - Termination of Proceeding 807 - Status of Application After Proceeding 0900 - REVIEW OF DECISION OF BOARD 901 - Appeals--In General 901.01 - Avenues Of Appeal 901.02 - What May Be Appealed 901.02(a) - Final Decision Versus Interlocutory Decision 901.02(b) - Judgment Subject To Establishment Of Constructive Use 901.03 - Motions For Relief From Final Judgment During Appeal 902 - Appeal To Court Of Appeals For The Federal Circuit 902.01 - Notice Of Appeal 902.02 - Time For Filing Notice Of Appeal, Cross-Appeal 902.03 - Appeal To Federal Circuit Waives Appeal By Civil Action 902.04 - Notice Of Election To Have Review By Civil Action 902.05 - Information Concerning Times Specified In 37 CFR § 2.145 902.06 - Certified List 902.07 - Appeal Briefs, Appendix, Etc. 902.08 - Special Provisions for Ex Parte Cases 903 - Review By Civil Action 903.01 - Notice Of Civil Action 903.02 - Parties To And Service Of Civil Action 903.03 - Place Of Civil Action 903.04 - Time For Filing Civil Action, Cross-Action 903.05 - Information Concerning Times Specified In 37 CFR § 2.145 903.06 - Civil Action Precluded By Appeal To Federal Circuit 903.07 - Special Provisions For Ex Parte Cases 904 - Access To Record During Appeal 904.01 - Access During Appeal To Federal Circuit 904.02 - Access During Review By Civil Action 905 - Petition To The Director 906 - Standards Of Review Of Board Decisions 906.01 - Appeal To Federal Circuit Or Review By Civil Action 906.02 - Petition To Director 1000 - INTERFERENCES 1001 - In General 1002 - Declaration of Interference 1003 - Institution of Interference 1004 - Issues in Interference 1005 - Burden of Proof 1006 - Addition of Party 1007 - Conduct of Proceeding 1100 - CONCURRENT USE PROCEEDINGS 1101 - In General 1101.01 - Nature of Proceeding 1101.02 - Context for USPTO Determination of Concurrent Rights 1102 - Generation of Proceeding 1102.01 - Means of Generation 1102.02 - Bases for Concurrent Registration – Board Determination; Court Determination 1103 - Requirements for Concurrent Use Application 1103.01 - Application Based on Board Determination 1103.01(a) - Application Must Assert Use in Commerce 1103.01(b) - Jurisdictional Requirement 1103.01(c) - Application Must Meet Requirements Applicable to Non-Restricted Application 1103.01(d) - Application Must Identify Nature and Extent of Restriction Sought 1103.01(d)(1) - In General 1103.01(d)(2) - Geographic Restrictions 1103.01(d)(3) - Mode of Use Restrictions 1103.01(e) - Application Must Identify Excepted Users and Their Asserted Rights 1103.01(f) - Other Requirements 1103.02 - Application Based on Prior Board Decision 1103.03 - Application Based on Court Determination 1104 - Parties to Proceeding; Involved Applications, Registrations 1105 - Applications and Registrations Not Subject to Proceeding 1106 - Commencement of Proceeding 1106.01 - Marking of Concurrent Use Application 1106.02 - Publication of Concurrent Use Application; Opposition Period 1106.03 - Preparing the Record for the Involved Application and Registration Files 1106.04 - Preparing Concurrent Use Notices 1106.05 - Locating Excepted Users 1107 - Answer; Default 1108 - Issue in Concurrent Use Proceeding; Burden of Proof 1109 - Conduct of Proceeding 1109.01 - Sample Trial Schedules - Cases Commenced On or After November 1, 2007 1110 - Settlement Providing for Concurrent Registration 1111 - Effect of Abandonment of Involved Application 1112 - Effect of Adverse Decision in Opposition or Cancellation 1113 - “Conversion ” of Opposition or Cancellation Proceeding to Concurrent Use Proceeding 1113.01 - Conversion of Opposition Proceeding 1113.02 - Conversion of Cancellation Proceeding 1114 - Alteration of Restrictions on Concurrent Registration 1200 - EX PARTE APPEALS 1201 - Propriety of Appeal 1201.01 - Readiness of Case for Appeal 1201.02 - Premature Final 1201.03 - Premature Appeal 1201.04 - Compliance With Requirements Not Subject of Appeal 1201.05 - Appeal versus Petition 1202 - Filing an Appeal 1202.01 - In General 1202.02 - Time for Appeal 1202.03 - Notice of Appeal 1202.04 - Appeal Fee 1202.05 - Multiple Class Applications 1203 - Appeal Briefs 1203.01 - Form of Brief 1203.02 - Time for Filing Brief 1203.02(a) - Applicant’s Main Brief 1203.02(b) - Trademark Examining Attorney’s Brief 1203.02(c) - Applicant’s Reply Brief 1203.02(d) - Extension of Time for Filing Brief 1203.02(e) - Material Submitted with Briefs 1203.02(f) - Cases Which May Be Cited 1203.02(g) - Waiver of Claim or Requirement in Brief 1204 - Effect of Request for Reconsideration of Final Action 1205 - Amendment of Application During Appeal 1205.01 - In General 1205.02 - Request to Divide 1205.02(a) - Request to Divide When Notice of Appeal is Submitted Electronically 1205.02(b) - Request to Divide When Notice of Appeal is Submitted on Paper 1206 - Amendment to Allege Use; Statement of Use 1206.01 - Amendment to Allege Use 1206.02 - Statement of Use 1207 - Submission of Evidence During Appeal 1207.01 - General Rule — Evidence Submitted After Appeal Untimely 1207.02 - Request to Remand for Additional Evidence 1207.03 - Evidence Considered Due to Actions of Nonoffering Party 1207.04 - Evidence Filed with Timely Request for Reconsideration 1207.05 - Submission of Evidence upon Remand for New Refusal 1207.06 - Letter of Protest Evidence 1208 - Treatment of Evidence 1208.01 - Evidence from NEXIS Database or Publications 1208.02 - Cited Registrations and Third-Party Registrations 1208.03 - Internet Material 1208.04 - Judicial Notice 1208.05 - Applicant’s Own Materials 1209 - Remand 1209.01 - Upon Board’s Own Initiative 1209.02 - Upon Request by Trademark Examining Attorney 1209.03 - Upon Granted Letter of Protest 1209.04 - Upon Request by Applicant 1210 - Approval for Publication During Appeal 1211 - Abandonment During Appeal 1212 - Cancellation or Assignment of Cited Registration 1213 - Suspension of Appeal 1214 - Consolidation 1215 - Alternative Positions 1216 - Oral Hearing 1217 - Final Decision 1218 - Reopening (Amendment, Etc. After Final Decision) 1219 - Review of Final Decision 1219.01 - By Request for Reconsideration 1219.02 - By Appeal Attachment A - APPENDIX OF FORMS Attachment B - APLHABETICAL LIST OF CASES Attachment C - INDEX TO CHANGES TBMP - Subject Matter Index A - Subject Matter Index B - Subject Matter Index C - Subject Matter Index D - Subject Matter Index E - Subject Matter Index F - Subject Matter Index G - Subject Matter Index H - Subject Matter Index I - Subject Matter Index J - Subject Matter Index L - Subject Matter Index M - Subject Matter Index N - Subject Matter Index O - Subject Matter Index P - Subject Matter Index Q - Subject Matter Index R - Subject Matter Index S - Subject Matter Index T - Subject Matter Index U - Subject Matter Index V - Subject Matter Index W - Subject Matter Index

507.02(b) Timing of Motion to Amend to Add Counterclaim

The timing of a motion for leave to amend is particularly important in the case of a motion for leave to amend to assert a counterclaim for cancellation of one or more of the plaintiff’s pleaded registrations. Counterclaims to cancel pleaded registrations in Board proceedings are governed by 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i). [ Note 1.] As provided therein, if grounds for the counterclaim are known to the defendant when its answer to the complaint is filed, the counterclaim should be pleaded with or as part of the answer. If, during the proceeding, the defendant learns of grounds for a counterclaim to cancel a registration pleaded by the plaintiff, the counterclaim should be pleaded promptly after the grounds therefor are learned. [ Note 2.] TBMP § 313.04 (Compulsory Counterclaims).

NOTES:

1. 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (although parties referred to the "when justice requires" element of Fed. R. Civ. P. 13(f), counterclaims to cancel pleaded registrations in oppositions are governed by 37 CFR § 2.106(b)(2)(i)). Cf. See’s Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395, 1397 (TTAB 1989) (applied Fed. R. Civ. P. 13(f) "when justice requires" standard where grounds for counterclaim were known at time of answer). Please Note: Fed. R. Civ. P. 13(f) was abrogated in 2009.

2. 37 CFR § 2.106(b)(2)(i) and 37 CFR § 2.114(b)(2)(i); Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (asserting claim as separate petition to cancel rather than counterclaim does not obviate timeliness requirements of 37 CFR § 2.114(b)(2)(i)); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1759 (TTAB 2008); Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005) ("we must determine whether applicant knew of the grounds at the time it filed its answers and, if not, whether applicant filed its counterclaims promptly upon learning of those grounds"); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1033 (TTAB 1996); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1596 (TTAB 1992) (filing of an answer is not a condition precedent to operation of 37 CFR § 2.106(b)(2)(i) where grounds are learned during course of proceeding), summary judgment granted, 24 USPQ2d 1376 (TTAB 1992); Marshall Field & Co. v. Mrs. Field’s Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) (counterclaim was pleaded promptly after defendant obtained information through discovery concerning possible fraud).