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).