528.07 Unpleaded Issue
528.07(a) Not Basis for Entering Summary Judgment
A party may not obtain summary judgment on an issue that has not been pleaded. [ Note 1.] Moreover, at the summary judgment stage of a proceeding before the Board, there has not yet been a trial of any issue, whether pleaded or unpleaded, and therefore the requirements of Fed. R. Civ. P. 15(b) for an amendment to conform the pleadings to the evidence cannot have been met. [ Note 2.]
Generally, a party that seeks summary judgment on an unpleaded issue may simultaneously move to amend its pleading to assert the matter. [ Note 3.] Alternatively, if the parties, in briefing a summary judgment motion, have treated an unpleaded issue on its merits, and the nonmoving party has not objected to the motion on the ground that it is based on an unpleaded issue, the Board may deem the pleadings to have been amended, by agreement of the parties, to allege the matter. [ Note 4.] For purposes of determining the summary judgment motion, the Board will deem such new allegations to be denied if no amended answer is accepted and of record at the time. However, an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f (a) application may not be amended (or deemed amended) to assert an entirely new claim or to rely on an additional registration in support of an existing Trademark Act § 2(d), 15 U.S.C. § 1052 claim. [ Note 5.] There are other limitations on amendments to a notice of opposition against a § 66(a) application. See TBMP § 314 and TBMP § 507.01.
NOTES:
1. See Fed. R. Civ. P. 56(a); Asian and Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1528 n.3 (TTAB 2008); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1438 n.12 (TTAB 2007); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 n.3 (TTAB 2007); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 n.8 (TTAB 1991); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 628 (TTAB 1986); Consolidated Foods Corp. v. Berkshire Handkerchief Co., 229 USPQ 619, 621 (TTAB 1986).
2. See, e.g., Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc.,47 USPQ2d 1635, 1635 (TTAB 1998) (attempt to amend pleadings under Fed. R. Civ. P. 15(b) denied since there had not yet been a trial, but allowed time to move to amend under Fed. R. Civ. P. 15(a)).
3. See Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 n.3 (TTAB 2007); Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1766 n.4 (TTAB 2007) (Board sua sponte allowed movant time to amend pleading to assert matter raised at summary judgment); Vaughn Russell Candy Co. v. Cookies in Bloom Inc.,47 USPQ2d 1635, 1635 (TTAB 1998) (allowed time to file motion to amend pleading to add new grounds and to renew summary judgment motion); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993) (motion to amend, filed after summary judgment on unpleaded issue had been denied, was granted); Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242 n.4 (TTAB 1989) (motion to amend to add new ground, filed simultaneously with motion for summary judgment, granted and allegations in new ground deemed denied).
4. See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (pleading deemed amended where nonmoving party did not object to motion as seeking judgment on unpleaded claim), aff'd mem., 108 F.3d 1392 (Fed. Cir. 1997); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 81 n.3 (TTAB 1984) (pleading deemed amended where nonmoving party did not object to motion on unpleaded claim and treated it on its merits). Cf. Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 n.5 (TTAB 1995) (not permitted where nonmoving party objected to inclusion of unpleaded grounds even though party responded to motion on unpleaded grounds on merits).
5. See 37 CFR § 2.107(b).See RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT, 68 Fed. Reg. 55748, 55757 (September 26, 2003) Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151 (TTAB 2014) (opposition against § 66(a) application, once filed, cannot be amended to add grounds for opposition or to add the goods or services subject to opposition beyond those to which the IB has been notified); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011) (scope of grounds against a § 66(a) application governed by ESTTA cover sheet not by supporting pleading); O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329-30 (TTAB 2010) (cannot amend notice of opposition to add a claim against a § 66(a) application).
528.07(b) Not Defense Against Summary Judgment
A party may not defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact as to an unpleaded claim or defense. [ Note 1.]
However, a party which seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, may move to amend its pleading to allege the matter. [ Note 2.] Alternatively, if a party seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, and the party moving for summary judgment treats the unpleaded matter on its merits, and does not object thereto on the ground that the matter is unpleaded, the Board may deem the pleadings to have been amended, by agreement of the parties, to allege the matter. Cf. TBMP § 528.07(a). However, an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application, may not be amended (or deemed amended) to assert a new ground for opposition. [ Note 3.] See TBMP § 314 and TBMP § 507.01.
NOTES:
1. See Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477 (TTAB 1992) (may not assert unpleaded Morehouse defense);Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB 1992) (no consideration given to three unpleaded grounds asserted by opposer in response to applicant’s motion for summary judgment).
2. See United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993).
3. See 37 CFR § 2.107(b).