310    Notification to Parties of Proceeding and Setting Time to Answer

310.01    Notification to Parties of Proceeding

37 C.F.R. § 2.105  Notification to parties of opposition proceeding(s).

  • (a) When an opposition in proper form(see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, number of the proceeding, and the application(s) involved; and the notice shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service of the notice of opposition to the applicant.
  • (b) The Board shall forward a copy of the notice to opposer, as follows:
    • (1) If the opposition is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notice to the attorney transmitting the opposition or to the attorney designated in the power of attorney, provided that the person is an "attorney" as defined in §11.1 of this chapter, at the email or correspondence address for the attorney..
    • (2) If opposer is not represented by an attorney in the opposition, but opposer has appointed a domestic representative, the Board will send the notice to the domestic representative, at the email or correspondence address of record for the domestic representative, unless opposer designates in writing another correspondence address.
    • (3) If opposer is not represented by an attorney in the opposition, and no domestic representative has been appointed, the Board will send the notice directly to opposer, at the email or correspondence address of record for opposer, unless opposer designates in writing another correspondence address.
  • (c) The Board shall forward a copy of the notice to applicant, as follows:
    • (1) If the opposed application contains a clear indication that the application is being prosecuted by an attorney, as defined in §11.1 of this chapter, the Board shall send the notice described in this section to applicant’s attorney at the email or correspondence address of record for the attorney.
    • (2) If the opposed application is not being prosecuted by an attorney but a domestic representative has been appointed, the Board will send the notice described in this section to the domestic representative, at the email or correspondence address of record for the domestic representative, unless applicant designates in writing another correspondence address.
    • (3) If the opposed application is not being prosecuted by an attorney, and no domestic representative has been appointed, the Board will send the notice described in this section directly to applicant, at the email or correspondence address of record for the applicant, unless applicant designates in writing another correspondence address.

37 C.F.R. § 2.113  Notification of cancellation proceeding.

  • (a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.
  • (b) The Board shall forward a copy of the notice to petitioner, as follows:
    • (1) If the petition for cancellation is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notice to the attorney transmitting the petition for cancellation or to the attorney designated in the power of attorney, provided that person is an "attorney" as defined in §11.1 of this chapter, to the attorney’s email or correspondence address of record for the attorney.
    • (2) If petitioner is not represented by an attorney in the cancellation proceeding, but petitioner has appointed a domestic representative, the Board will send the notice to the domestic representative, at the email or correspondence address of record for the domestic representative, unless petitioner designates in writing another correspondence address.
    • (3) If petitioner is not represented by an attorney in the cancellation proceeding, and no domestic representative has been appointed, the Board will send the notice directly to petitioner, at the email or correspondence address of record for petitioner, unless petitioner designates in writing another correspondence address.
  • (c)
    • (1) The Board shall forward a copy of the notice to the party shown by the records of the Office to be the current owner of the registration(s) sought to be cancelled at the email or address of record for the current owner, except that the Board, in its discretion, may join or substitute as respondent a party who makes a showing of a current ownership interest in such registration(s).
    • (2) If the respondent has appointed a domestic representative, and such appointment is reflected in the Office’s records, the Board will send the notice only to the domestic representative at the email or correspondence address of record for the domestic representative.
  • (d) When the party alleged by the petitioner, pursuant to §2.112(a), as the current owner of the registration(s) is not the record owner, a courtesy copy of the notice with a web link or web address to access the electronic proceeding record shall be forwarded to the alleged current owner. The alleged current owner may file a motion to be joined or substituted as respondent.

37 C.F.R. § 2.119 Service and signing.

  • (a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.

    * * * *

A notice of opposition must be filed through ESTTA (see 37 C.F.R. § 2.101(b)(1) ). When a timely opposition in proper form (See 37 C.F.R. § 2.101  and 37 C.F.R. § 2.104 ), has been filed, the required fee(s) have been submitted, and the opposition has been determined to be timely and complete, the opposition will be instituted. [ Note 1.] The defendant in the opposition is the party shown by the records of the United States Patent and Trademark Office to be the current owner of the opposed application, except that the Board, in its discretion, may join or substitute as defendant a party that makes a showing of a current ownership interest in the application. [ Note 2.] See TBMP § 512.

When a timely petition to cancel in proper form (See 37 C.F.R. § 2.111(a)  and 37 C.F.R. § 2.112 ) has been filed and the required fee has been submitted, the cancellation will be instituted. [ Note 3.] The defendant in the cancellation proceeding is the party shown by the records of the Office to be the current owner of the registration sought to be cancelled, except that the Board, in its discretion, may join or substitute as defendant a party which makes a showing of a current ownership interest in the registration. [ Note 4.] See TBMP § 512.

A petition for cancellation must be filed through ESTTA (see 37 C.F.R. § 2.111(c)(1) ). However, when a timely petition to cancel in proper form is submitted on paper, accompanied by the Petition to the Director and the requisite fee, (see 37 C.F.R. § 2.111(c)(2) ), and the paper filing is permitted by the Director, on petition, the Board checks the assignment records of the Office to determine whether there is any recorded assignment of the registration, and if so, the identity of the assignee. After the title search has been completed, the cancellation proceeding is instituted. Cf. TBMP § 124. Please Note: A petition to cancel should indicate the name, address, and email address of the current owner of record of the registration. [ Note 5.] To determine the correspondence address of the owner of the registration in the Office’s TSDR system, the petitioner may access TSDR through http://tsdr.uspto.gov/. [ Note 6.] The TSDR display of information includes an active link to assignment information; the petitioner may consult this display of information to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(a). Plaintiffs are encouraged to provide information about a new owner, which may not be reflected in the Office’s TSDR database, even if there is a domestic representative. [ Note 7.] Also, plaintiffs are encouraged to provide current contact information for attorneys, or in the case of registrations under § 66(a) of the Act, current contact information for the designated representative for the international registration, which may not be in the Office’s TSDR database. [ Note 8.] Providing such information facilitates the Board’s location and service of the proper parties in order to avoid defaults that may subsequently be set aside and thus prolong the process. [ Note 9.]

Next, the Board prepares an institution order wherein it notifies the parties of the formal institution of the proceeding. The institution order includes the identification information described in 37 C.F.R. § 2.105(a), for an opposition, or in 37 C.F.R. § 2.113(a), for a cancellation; states that proceedings in the case will be conducted in accordance with the Trademark Rules of Practice, 37 C.F.R. Part 2, and specifies the due date for the filing of defendant’s answer to the complaint. The institution order also sets forth the remaining schedule for the case – deadline for the required discovery conference and for initial and expert disclosures, the opening and closing dates for the discovery period, and assigning each party’s time for pretrial disclosures and for taking testimony. [ Note 10.] The Board will send notification of the proceeding to the email or correspondence address of the parties. [ Note 11.] With regard to cancellations, presently, the Board will send notification to defendants by U.S. mail, pending system enhancements to facilitate email service. [ Note 12.] The notice, which will include a web link or web address to access the electronic proceeding record in TTABVUE, the Board’s electronic docket information and file database, constitutes service of the opposition or petition for cancellation on defendant. [ Note 13.]

As a reminder, 37 C.F.R. § 2.18(b)(1)  requires applicants and registrants and parties to Board proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.

In any proceeding, when a notice from the Board of the commencement of a proceeding, sent to any defendant (respondent or applicant) in electronic or paper form, is returned to the Office undelivered, additional notice may be given by publication in the Official Gazette, available via the Office’s website (http://www.uspto.gov ). [ Note 14.]

The Board sends the institution order to the attorney representing the plaintiff [ Note 15.], or, if the plaintiff is representing itself, to the plaintiff itself, unless the plaintiff has designated in writing another correspondence address. [ Note 16.] If the plaintiff is not represented by an attorney, but the plaintiff has appointed a domestic representative, the Board will send the institution order to the domestic representative, unless the plaintiff designates in writing another correspondence address. [ Note 17.]

In an opposition, the Board sends the institution order, together with instructions and a web link or web address for viewing the opposition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system, to the attorney or other authorized representative of the applicant, or, if the applicant is representing itself, to the applicant itself. If the applicant is not represented by an attorney but the applicant has appointed a domestic representative, the Board will send the institution order to the domestic representative unless the applicant designates in writing another correspondence address. [ Note 18.] In a cancellation, the institution order is sent, together with instructions and a web link or web address for viewing the petition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system, to the respondent itself, or to the respondent’s domestic representative, if one is appointed, even if there is an attorney or other authorized representative of record in the application file after the mark has registered. [ Note 19.]

The reason why the institution order is sent to the defendant’s attorney or other authorized representative, if any, in an opposition, but is always sent to the defendant itself in a cancellation, is that any appearance or power of attorney (or designation of other authorized representative) of record in an application file at the time of the commencement of an opposition is considered to be effective for purposes of the proceeding, whereas any representation which may be of record in an application file after the mark has registered at the time of the commencement of a cancellation is not considered to be effective for purposes of the proceeding. Typically, a power of attorney in an application appoints the named attorney "to prosecute this application to register, to transact all business in the Patent and Trademark Office in connection therewith, and to receive the certificate of registration." That is, the power extends only up to the issuance and receipt of a registration. As a practical matter, the representation in an application file usually is, of necessity, current and active, whereas often the attorney or other authorized representative of record in a registration file has not taken any action on behalf of the client registrant for some years, may no longer represent registrant, may not know where registrant is currently located or may no longer be in practice, etc. However, if the Board is unable to locate the registrant for purposes of notifying registrant of the filing of the petition for cancellation, and the registration file reflects that an attorney or other authorized representative has appeared therein on registrant’s behalf within the last five years or so, the Board will, if necessary, contact the attorney or other authorized representative and ask for information concerning registrant’s current address. [ Note 20.] In the case of a registered extension of protection to the United States, the Board may contact the designated representative on record with the International Bureau. The Board may also contact petitioner in an attempt to obtain a better address for registrant.

In a cancellation proceeding, if the party identified by the petitioner pursuant to 37 C.F.R. § 2.112(a)  as the current owner of the registration sought to be cancelled is not the record owner thereof, the Board will send to the alleged current owner a courtesy copy of the institution order, together with instructions and a web link or web address for viewing the petition and any exhibits thereto in the electronic file for the proceeding via the Board’s TTABVUE system. If the alleged current owner believes that it is, in fact, the current owner of the registration and wishes to defend the registration against the petition to cancel, it may file a motion, supported by a showing of its current ownership interest in the registration, to be joined or substituted as respondent. [ Note 21.] See TBMP § 512.

NOTES:

 1.   See 37 C.F.R. § 2.105(a).

 2.   Cf. 37 C.F.R. § 2.113(c)(1). See e.g., Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1188 n.1 (TTAB 2012) (joinder of party defendant in opposition due to assignment); Liberty & Co. v. Liberty Trouser Co., 216 USPQ 65, 66 n.1 (TTAB 1982) (substitution of party defendant in opposition as reflected in assignment records in the Office).

 3.   37 C.F.R. § 2.113(a).

 4.   See 37 C.F.R. § 2.113(c)(1)  and 37 C.F.R. § 3.73(b)(1); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976). Cf. Smart Inventions Inc. v. TMB Products LLC, 81 USPQ2d 1383, 1384 (TTAB 2006) (cancellation respondent’s motion to set aside default judgment on ground that it never received actual or constructive notice of proceeding granted under Fed. R. Civ. P. 60(b)(4) where assignment of mark to respondent recorded before proceeding instituted but notification of proceeding sent to prior owner).

 5.   See 37 C.F.R. § 2.112(a). 

 6.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42243 (August 1, 2007).

 7.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 10.   See 37 C.F.R. § 2.120(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42243 (August 1, 2007). An example of a trial order can be found in the Appendix of Forms.

 11.   37 C.F.R. § 2.105(b)  and 37 C.F.R. § 2.105(c); and 37 C.F.R. § 2.113(b)  and 37 C.F.R. § 2 .113(c); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).

 12.   37 C.F.R. § 2.113(b)  and 37 C.F.R. § 2.113(c); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 13.   37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a).

 14.   See 37 C.F.R. § 2.118; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42243-44 (August 1, 2007)); NOTICE OF FINAL RULEMAKING, 54 Fed. Reg. 34886, 34891 (August 22, 1989).

 15.   37 C.F.R. § 2.105(b)(1); 37 C.F.R. § 2.113(b)(1).

 16.   37 C.F.R. § 2.105(b)(3); 37 C.F.R. § 2.113(b)(3).

 17.   37 C.F.R. § 2.105(b)(2)  and 37 C.F.R. § 2.113(b)(2). See 37 C.F.R. § 2.119(d).

 18.   See 37 C.F.R. § 2.105(c); Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). See also 37 C.F.R. § 2.119(d).

 19.   See 37 C.F.R. § 2.113(c).

 20.   See Notice of Final Rulemaking, 54 Fed. Reg. 34886, 34891 (August 22, 1989). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19297 (to be codified at 37 C.F.R. pt. 2 (proposed April 4, 2016)) ("The Board would continue its practice of using other appropriate and available means to contact a party to ensure the real party in interest is notified of the proceeding.").

 21.   See 37 C.F.R. § 2.113(d).

310.02    Defendant’s Copy of Institution Order Returned as Undeliverable

37 C.F.R. § 2.118  Undelivered Office notices. When a notice sent by the Office to any registrant or applicant is returned to the Office undelivered, including notification to the Office of non-delivery in paper or electronic form, additional notice may be given by publication in the Official Gazette.

If an applicant in an opposition is not represented by an attorney or other authorized representative, and the applicant’s copy of the notice of institution is returned to the Board as undeliverable, including notification of non-delivery in paper or electronic form, the Board will make all reasonable efforts to locate the applicant. If the Board is unable to locate the applicant, additional notice of the proceeding may be given by publication in the Official Gazette. [ Note 1.] It should be noted, however, that it is the responsibility of an applicant representing itself to keep the Office informed of its current address.

If, in a cancellation proceeding, the defendant’s copy of the notice of institution is returned to the Board as undeliverable, including notification of non-delivery in paper or electronic form, the Board will make all reasonable efforts to locate the defendant, including inquiring of the plaintiff as to the defendant’s current address and email address(es). If the Board is unable to locate the defendant after reasonable investigation, or if the plaintiff is unable to furnish respondent’s current address and/or email address(es) or notifies the Board that the defendant is no longer in business, notice of the filing of the petition to cancel will be published in the Official Gazette, pursuant to 37 C.F.R. § 2.118. [ Note 2.]

When notice of the filing of an opposition or petition to cancel is published in the Official Gazette, the published notice allows the defendant thirty days from the publication date thereof in which to appear in the proceeding. If the defendant fails to appear within the time allowed, default judgment may be entered against it.

For information concerning the procedure followed by the Board in a concurrent use proceeding when a communication sent by the Board to a specified excepted user is returned as undeliverable, see TBMP § 1106.05.

NOTES:

 1.   37 C.F.R. § 2.118; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42248 (August 1, 2007).

 2.   See 37 C.F.R. § 2.118.

310.03    Setting Time for Filing Answer

310.03(a)    In General

37 C.F.R. § 2.105  Notification to parties of opposition proceeding(s).

  • (a) When an opposition in proper form (see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, the number of the proceeding, and the application(s) involved; and the notice shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a Web link or Web address to access the electronic proceeding record, constitutes service of the notice of opposition to the applicant.

    * * * *

37 C.F.R. § 2.113  Notification of cancellation proceeding.

  • (a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a web link or web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.

    * * * *

As provided by 37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a), in part, the Board’s notice of institution of the filing of an opposition or petition to cancel "shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed." A defendant is under no obligation to file an answer to the complaint in an opposition or cancellation proceeding until it receives the Board’s notice of institution setting the time for filing an answer. [ Note 1.]

It is the general practice of the Board to allow the defendant in an opposition or cancellation proceeding 40 days from the mailing date of the notice of institution in which to file its answer.

For information on the time for filing an answer to a counterclaim, see TBMP § 313.06.

NOTES:

 1.   Cf. Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993).

310.03(b)    [Removed and Reserved]

310.03(c)    Extension of Time to File Answer

37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.

  • (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
  • (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form.
  • * * * *

The time for filing an answer may be extended or reopened by stipulation of the parties, approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 1.] See TBMP § 509.

The discovery period does not open until after an answer has been filed, and concurrently with the deadline for the mandatory discovery conference.

Please Note: Extensions of time to file an answer are to be filed via ESTTA unless ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. [ Note 2.] The ESTTA system will prompt the filer to enter new deadlines in a manner that will generate an appropriate schedule in the proper form.

NOTES:

 1.   Fed. R. Civ. P. 6(b).

 2.   37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b).