507.02    Amendments – General Rule – Fed. R. Civ. P. 15(a)

Pursuant to Fed. R. Civ. P. 15(a), a party to an inter partes proceeding before the Board may amend its pleading once as a matter of course within 21 days after serving it. If the pleading is one to which a responsive pleading is required, the pleading may be amended once as a matter of course at any time within 21 days after the responsive pleading is served, or 21 days after service of a motion under Rule 12(b), (e), or (f), whichever is earlier. [ Note 1.] As a practical matter, because the time to answer set by the Board’s institution order is greater than 21 days, a plaintiff may amend its complaint once as a matter of course beyond the initial 21 days from serving it until the defendant files either an answer or a Rule 12(b), (e) or (f) motion. If proceedings are suspended during this period and later resumed with the time to answer reset, a plaintiff may amend its complaint once as a matter of course until the defendant files an answer or a Rule 12(b), (e) or (f) motion. An amendment filed as a matter of course need not be accompanied by a motion for leave to amend, although it should be captioned as an amended pleading. [ Note 2.]

Thereafter, a party may amend its pleading only by written consent of every adverse party or by leave of the Board; and leave must be freely given when justice so requires. [ Note 3.] In view thereof, the Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. [ Note 4.] This is so even when a plaintiff seeks to amend its complaint to plead a claim other than those stated in the original complaint, [ Note 5.], including a claim based on a registration issued to or acquired by plaintiff after the filing date of the original complaint. [ Note 6.] However, the plaintiff in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application (i.e., a Madrid Protocol application) may not amend the pleading to add an entirely new claim, seek to rely on an additional registration in support of an existing Trademark Act § 2(d), 15 U.S.C. § 1052(d)  claim, or after the time for filing an opposition has expired, add a joint opposer or goods or services to the proceeding. [ Note 7.] See TBMP § 507.01 for a further discussion on limitation to amendments in a notice of opposition against a Madrid application.

A proposed amendment need not set forth a new claim or defense; a proposed amendment may serve simply to amplify allegations already included in the moving party’s pleading. [ Note 8.] However, where the moving party seeks to add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. [ Note 9.] Cf. TBMP § 503.03 (Leave to Amend Defective Pleading). On the other hand, whether or not the moving party can actually prove the allegation(s) sought to be added to a pleading is a matter to be determined after the introduction of evidence at trial or in connection with a proper motion for summary judgment, and the nonmoving party should not argue against granting the moving party leave to amend merely because the nonmoving party believes the moving party will not be able to prove the additional claim or allegations at trial. [ Note 10.]

Generally, an amended pleading, if allowed, will supersede any prior pleadings, particularly an amended pleading that is complete in itself and does not adopt or make any reference to the earlier pleadings. [ Note 11.]

NOTES:

 1.   Fed. R. Civ. P. 15(a).

 2.   Fed. R. Civ. P. 15(a).

 3.   Fed. R. Civ. P. 15(a). See also Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) ("Trademark Rule 2.115, 37 C.F.R. § 2.115, and Fed. R. Civ. P. 15(a) encourage the Board to look favorably on motions to amend pleadings, stating that ‘leave shall be freely given when justice so requires.’").

 4.   Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend); Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) ("In deciding whether to grant leave to amend, the Board may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings."); ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1300 (TTAB 2012); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1759 (TTAB 2008); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) ("the Board does not grant such leave [to amend the pleading] when entry of the proposed amendment would be prejudicial to the right of the adverse party"); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1786 (TTAB 2006); Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1799 (TTAB 2001); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1383 (TTAB 1991); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240, 1242 (Comm’r 1990); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990); Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732, 1733-34 (TTAB 1990); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); See’s Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395, 1397 (TTAB 1989); Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, 39-40 (TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986).

 5.   Ashland Licensing & Intellectual Prop. LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125 (TTAB 2016) (petition to cancel filed when the subject registration is less than five years old tolls the five-year bar set forth in Trademark Act Section 14, 15 U.S.C. § 1064, for the purpose amending the petition to add new claims.); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007) (fraud claim added); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1738, 1785-86 (TTAB 2006) (new claim asserts that the requirements of Trademark Act § 44 had been violated); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000). See also Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, 39-40 (TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 858-59 (TTAB 1986); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 430-31 (TTAB 1985); Gemini Engine Co. v. Solar Turbines Inc., 225 USPQ 620, 621 n.3 (TTAB 1985). But see Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend).

 6.   Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1867 (Fed. Cir. 1991) (amendment to add later-acquired registration to tack on prior owner’s use); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 (TTAB 1990) (notice of opposition amended during testimony period to add claim of ownership of newly issued registration); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Cudahy Co. v. August Packing Co., 206 USPQ 759, 759-60 nn. 2-3 (TTAB 1979); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240, 1241-43 (Comm’r 1990) (opposer’s motion to amend to join party and claim ownership of registration granted). But see UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (if a party pleads a pending application in the notice of opposition, it may make the resulting registration of record at trial without having to amend its pleading to assert reliance on the registration).

 7.   37 C.F.R. § 2.107(b). See Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151-52 (TTAB 2014) (because opposer identified Sections 2(d) and 43(c) as grounds for opposition in the ESTTA electronic opposition form, opposer is limited to those grounds for opposition against Madrid application; however, because those grounds were not limited in the form to any particular class or classes, opposer may seek leave to amend to assert those grounds against all of the three international classes in the involved application).

 8.   Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ 539, 541 (TTAB 1973) (allegations amplified). Cf. ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1301 (TTAB 2012) (proposed alleged failure to function as a mark is a new ground, not an amplification of the existing ground that the mark is merely descriptive).

 9.   Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1785 (Fed. Cir. 1990) (motion to amend to restrict goods would serve no purpose); Embarcadero Technologies, Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (because proposed claims are untimely and futile, the motion for leave to amend denied); The North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1221-22 (TTAB 2015) (motion for leave to amend answer to add affirmative defense that if the Board should find applicant not entitled to registration of the opposed mark with respect to some but not all goods or services listed in applications, then Applicant should be allowed to amend applications to conform to Board’s findings denied for failure to identify goods or services to be deleted); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 (TTAB 2007); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 62 USPQ2d 1857, 1858 (TTAB 2002) (amendment denied because Board has no jurisdiction to decide issues arising under state dilution laws), aff’d, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702-03 (TTAB 2002) (proposed amended pleading of abandonment insufficient and leave to amend denied as futile where opposer asserted applicant’s lack of exclusive rights in the mark but failed to include allegation that mark had lost all capacity to act as a source indicator for applicant’s goods); Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead allowed); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541-42 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving to amend); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (motion to add counterclaim denied where mere allegation that opposer did not submit copy of foreign registration at time of examination is insufficient to state claim); Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (opposers could not prevail on res judicata claim as a matter of law); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 (TTAB 1993) (claim of lack of bona fide intent to use found legally sufficient); CBS Inc. v. Mercandante, 23 USPQ2d 1784, 1786-87 (TTAB 1992) (opposer’s attempt to amend answer to add counterclaim denied as inconsistent with notice of opposition).

 10.   Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992); Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989).

 11.   Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1858 (Fed. Cir. 2000) (citing, inter alia, Kelley v. Crosfield Catalysts, 135 F.3d 1202 (7th Cir. 1998)). See, e.g., Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 n.10 (TTAB 2000).

507.02(a)    Timing of Motion to Amend Pleading – In General

The timing of a motion for leave to amend under Fed. R. Civ. P. 15(a) plays a large role in the Board’s determination of whether the adverse party would be prejudiced by allowance of the proposed amendment. [ Note 1.] A long and unexplained delay in filing a motion to amend a pleading (when there is no question of newly discovered evidence) may render the amendment untimely. [ Note 2.]

In order to avoid any prejudice to the adverse party when a motion for leave to amend under Fed. R. Civ. P. 15(a) is granted, the Board may, in its discretion, reopen the discovery period to allow the adverse party to take discovery on the matters raised in the amended pleading. [ Note 3.] Exercise of such discretion to reopen discovery, however, may not be necessary when the proposed additional claim or allegation concerns a subject on which the nonmoving party can be expected to have relevant information in hand. This is especially true when the factual basis for the motion to amend was obtained by the moving party through discovery taken from the nonmoving party.

NOTES:

 1.   Ashland Licensing & Intellectual Prop. LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125 (TTAB 2016) (motion to amend petition granted where delay in filing motion was due to multiple intervening suspensions and, when not actually suspended, reason to believe proceedings would be suspended); Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (motion for leave to amend to file second amended notice of opposition granted where case was in pleading stage and nonmoving party could point to no specific prejudice in allowing the amendment); ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1301 (TTAB 2012) (motion for leave to amend counterclaim denied on the bases of undue delay and prejudice to counterclaim defendant where brought after counterclaim plaintiff’s pretrial disclosures were served, months after summary judgment motions involving the counterclaim, and months after settlement discussions ceased); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud denied; petitioner unduly delayed in adding claims which were based on facts within petitioner’s knowledge at time petition to cancel was filed); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) (opposer unduly delayed in filing motion for leave to amend during testimony period); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002) (motion denied where although discovery still open, movant provided no explanation for two-year delay in seeking to add new claim); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541 (TTAB 2001) (motion to amend opposition denied where it was filed eight months after filing of notice of opposition, with no explanation for the delay, and appeared to be based on facts within opposer’s knowledge at the time opposition was filed); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703-04 (TTAB 2000) (no undue delay because motion to add claim of dilution was promptly filed after such claim became available, albeit over two years after commencement of proceeding); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286-87 (TTAB 1998) (request raised for the first time in reply brief on counterclaim to further restrict pleaded registration denied since opposer had no notice of this issue); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C., Inc., 41 USPQ2d 1030, 1033 (TTAB 1996) (motion to add claim of fraud denied where petitioner was fully aware of all the facts it needed to add such claim over three years before filing motion to amend); Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1206-07 (TTAB 1993) (motion filed after close of discovery to assert claim of res judicata based on a judgment entered in another case after the filing of opposition permitted since applicant was afforded adequate notice and no further discovery would be necessary); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505-06 (TTAB 1993) (no undue delay in view of pending motion for summary judgment and discovery was still open when motion was filed); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993) (proceeding still in pretrial stage and discovery had been extended); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992) (motion to amend filed prior to opening of petitioner’s testimony period permitted); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990) (opposer’s motion to amend its pleading during its testimony period granted in the interests of justice and judicial economy and since any prejudice could be mitigated by reopening discovery solely for applicant); Marshall Field & Co. v. Mrs. Field’s Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) ("concept of ‘undue delay’ is inextricably linked with the concept of prejudice to the nonmoving party"); Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732, 1733-34 (TTAB 1990) (proceeding still in the discovery stage and no undue prejudice shown).

 2.   Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud denied; petitioner unduly delayed in adding claims which were based on facts within petitioner’s knowledge at time petition to cancel was filed); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) (opposer unduly delayed in filing motion for leave to amend during testimony period); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1786 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim was learned during discovery); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002) (motion denied where although discovery still open, movant provided no explanation for two-year delay in seeking to add new claim); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984) (plaintiff should plead any registrations it wishes to introduce as soon as possible after the omission, or newly issued registration, comes to plaintiff’s attention).

 3.   Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2008) ("the only way the Board could avoid prejudice to applicant would be by reopening the trial phase of this proceeding so that applicant could submit evidence addressing this ground [whether applicant had a bona fide intent to use its mark]"); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703-04 (TTAB 2000) (reopened for limited purpose of conducting discovery on new claim); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990) (reopened solely for applicant’s benefit); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 431 (TTAB 1985) (applicant to advise whether it would need additional discovery).

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

Counterclaims to cancel pleaded registrations in Board proceedings are governed by 37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(i). As provided therein, a defense attacking the validity of a pleaded registration is a compulsory counterclaim if the grounds for the counterclaim exist at the time the answer is filed or are learned during the course of the proceeding. [ Note 1.] A motion for leave to amend an answer to assert a counterclaim is governed by Fed. R. Civ. P. 15(a). [ Note 2.] 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 3.] TBMP § 313.04 (Compulsory Counterclaims).

NOTES:

 1.   Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1175-80 (TTAB 2017) (motions to amend to assert a compulsory counterclaim should be examined in combination with Fed. R. Civ. P. 15(a), overruling TBC Corp. v. Grand Prix, 12 USPQ2d 1311 (TTAB 1989), Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005), and other precedent to the extent they interpreted 37 C.F.R §2.106  or 37 C.F.R §2.114(b)(3)(1)  as barring an amendment to add a compulsory counterclaim unless such motion is based on newly-acquired evidence).

 2.   37 C.F.R §2.106(b)(3)(1)  and 37 C.F.R §2.114(b)(3)(i); Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1177 (TTAB 2017).

 3.   Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1180 (TTAB 2017) ("[W]hile our rules require application of the liberal standard for amendment set out in the Federal Rules, it is important to emphasize that all claims, including counterclaims and defenses, should be pleaded promptly, and that an unexplained delay in filing a motion to amend a pleading may result in a finding that the amendment is untimely."). Please note: motions to amend to assert compulsory counterclaims decided prior to Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175 (TTAB 2017) may have been decided under a more stringent standard which no longer may be controlling.37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(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 C.F.R. § 2.114(b)(2)(i)) redesignated § 2.114(b)(3)(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 C.F.R. § 2.106(b)(2)(i), redesignated § 2.106(b)(3)(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).