313.06    Answer to Counterclaim

37 C.F.R. § 2.106(b)(3)(iii)  The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed.

37 C.F.R. § 2.106(b)(3)(iv) The times for pleading, discovery, testimony, briefs or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

37 C.F.R. § 2.106(a) If no answer is filed within the time initially set, or as may later be reset by the Board, the opposition may be decided as in case of default.

37 C.F.R. § 2.114(b)(3)(iii)  The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed. Such response period may be reset as necessary by the Board, for a time period to be determined by the Board.

37 C.F.R. § 2.114(b)(3)(iv)  The times for pleading, discovery, testimony, briefs, or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

37 C.F.R. § 2.114(a)  If no answer is filed within the time initially set, or as may later be reset by the Board, the petition may be decided as in case of default.

When a counterclaim (together with proof of service and the required cancellation fee) is electronically filed, the Board prepares an order acknowledging its receipt and allowing the plaintiff (defendant in the counterclaim) a set time, not less than 30 days, within which to file an answer to the counterclaim. [ Note 1.] In practice, the Board usually allows 30 days. A copy of the order setting the time to answer the counterclaim is sent to each party to the proceeding, or to each party’s attorney or other authorized representative. The order will also include a trial schedule and briefing dates to accommodate the counterclaim, which will reset or extend, as appropriate, the times for discovery (including conferencing and initial and expert disclosure dates), pretrial disclosures, testimony, briefs and/or oral argument. [ Note 2.]

If no answer to the counterclaim is filed during the time allowed, the counterclaim may be decided as in case of default. [ Note 3.] For information concerning default for failure to answer, see TBMP § 312.

An answer to a counterclaim should be in the same form as an answer to a complaint. For information on the proper form for an answer to a complaint, see TBMP § 311.01.

An answer to a counterclaim, like any other answer, may include a counterclaim for cancellation of a registration owned by the counterclaimant. A defense attacking the validity of any registration pleaded by the counterclaimant is a compulsory counterclaim if grounds for such counterclaim exist at the time the plaintiff’s answer to the defendant’s counterclaim is filed. If the plaintiff knows of grounds for a counterclaim when the plaintiff’s answer to the defendant’s counterclaim is filed, the counterclaim must be pleaded with or as part of the plaintiff’s answer. If, during the course of the proceeding, the plaintiff learns, through discovery or otherwise, that grounds for a counterclaim exist, the counterclaim should be pleaded promptly after the grounds therefor are learned. [ Note 4.] Cf. TBMP § 313.04.

A plaintiff’s counterclaim to cancel a registration owned by the defendant, but not pleaded in the defendant’s counterclaim, is a permissive counterclaim. [ Note 5.] Cf. TBMP § 313.05.

For information on the fee for a counterclaim, see 37 C.F.R. § 2.6(a)(16)  and TBMP § 313.02. For information on the form for a counterclaim, see TBMP § 313.03.

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(3)(iii)  and 37 C.F.R. § 2.114(b)(3)(iii).

 2.   See 37 C.F.R. § 2.106(b)(3)(iv)  and 37 C.F.R. § 2.114(b)(3)(iv). An example of a trial order for a proceeding with a counterclaim can be found in the Appendix of Forms.

 3.   See 37 C.F.R. § 2.106(a) and 37 C.F.R. § 2.114(a).

 4.   Cf. 37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(i).

 5.   Cf. Fed. R. Civ. P. 13(b).