313.05 Permissive Counterclaims
A party may counterclaim to cancel a registration that is owned, but not pleaded, by an adverse party. A counterclaim to cancel a registration owned, but not pleaded, by an adverse party is a permissive counterclaim. [ Note 1.] The filing date of the counterclaim is the date of electronic receipt in the Office of the counterclaim with the required fee. [ Note 2.] A counterclaim must be filed through ESTTA. [ Note 3.] In the rare instance that a paper filing is permitted by the Director, on petition, the filing date of a counterclaim will be determined in accordance with 37 C.F.R. § 2.195 – 37 C.F.R. § 2.198. [ Note 4.] A counterclaimant must serve a copy of the counterclaim (with any exhibits thereto) on every other party to the proceeding, and must make proof of such service before the Board will consider the counterclaim. [ Note 5.] TBMP § 313.03.
For information on fees for counterclaims, see TBMP § 308.02 and TBMP § 313.02.
NOTES:
1. See Fed. R. Civ. P. 13(b). Cf. 37 C.F.R. § 2.106(b)(3)(i) and 37 C.F.R. § 2.114(b)(3)(i).
2. See 37 C.F.R. § 2.111(e).
3. See 37 C.F.R. § 2.111(c)(1) and 37 C.F.R. § 2.114(b)(1).
4. See 37 C.F.R. § 2.111(e).
5. See 37 C.F.R. § 2.119(a).