301    Types of Inter Partes Board Proceedings

301.01    In General

The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings. See TBMP § 102.

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, under Trademark Act § 12(a), 15 U.S.C. § 1062(a), in the Official Gazette of the USPTO. [ Note 1.]

A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark on the Principal or the Supplemental Register. "Any person who believes that he would be damaged by the registration of a mark" may, upon payment of the prescribed fee, file a petition to cancel thereto, but the petition to cancel may only be filed after the issuance of the registration. [ Note 2.]

An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. [ Note 3.] The proceeding is declared by the Office only on petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. [ Note 4.] See TBMP § 1002.

A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Board, ordinarily as to the geographic scope of the applicant’s mark or the goods and/or services on or in connection with which the mark is used. [ Note 5.] See TBMP § 1101.01.

NOTES:

 1.   See Trademark Act § 13, 15 U.S.C. § 1063. See also Trademark Act § 68(a)(2), 15 U.S.C. § 1141h(a)(2)  (an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is subject to opposition under Trademark Act § 13, 15 U.S.C. § 1063).

 2.   See Trademark Act § 14, 15 U.S.C. § 1064; Trademark Act § 24, 15 U.S.C. § 1092.

 3.   See Trademark Act § 16, 15 U.S.C. § 1066; Trademark Act § 18, 15 U.S.C. § 1068.

 4.   See Trademark Act § 16, 15 U.S.C. § 1066.

 5.   See Trademark Act § 2(d),15 U.S.C. § 1052(d); Trademark Act § 17,15 U.S.C. § 1067; Trademark Act § 18, 15 U.S.C. § 1068; 37 C.F.R. § 2.42, 37 C.F.R. § 2.73, 37 C.F.R. § 2.99; The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 n.9 (TTAB 1995).

301.02    Mark on Supplemental Register Not Subject to Opposition

Trademark Act § 24, 15 U.S.C. § 1092  Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. . . .

Although the mark in an application for registration on the Principal Register is published for, and subject to, opposition, the mark in an application for registration on the Supplemental Register is not. [ Note 1.] See also TBMP § 205.

Accordingly, the Board must reject any opposition filed with respect to the mark in an application for registration on the Supplemental Register. ESTTA does not permit a party to file a notice of opposition against an application for registration on the Supplemental Register. In the rare circumstance that an opposition against such an application is filed in paper form, the opposition papers will not be returned to the person who filed them but any opposition fee submitted will be refunded. The fee for the required petition to the Director to file on paper will not be refunded. The remedy of the would-be opposer lies in the electronic filing of a petition to cancel the registration of the mark, once the registration has issued. [ Note 2.]

NOTES:

 1.   See Trademark Act § 12(a), 15 U.S.C. § 1062(a); Trademark Act § 13(a), 15 U.S.C. § 1063(a); Trademark Act § 24, 15 U.S.C. § 1092.

 2.   See Trademark Act § 24, 15 U.S.C. § 1092.

301.03    Mark Filed Under the Madrid Protocol is Subject to Opposition

15 U.S.C. § 1141h(a)(2)  [Trademark Act § 68(a)(2)] Subject to the provisions of subsection (c) of this section, a request for extension of protection under this title shall be subject to opposition under section 1063 of this title.

A request for extension of protection of an international registration to the United States, filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  ("the Madrid Protocol"), is examined as an application for registration on the Principal Register. Thus, an application whose filing basis is Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is subject to opposition under Trademark Act § 13, 15 U.S.C. § 1063.

302    Commencement of Proceeding

37 C.F.R. § 2.101(a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.

37 C.F.R. § 2.111(a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.

37 C.F.R. § 2.116(b)  The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.

37 C.F.R. § 2.116(c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.

An opposition proceeding is commenced by the timely filing of a notice of opposition, together with the required fee, in the USPTO. [ Note 1.]

Similarly, a cancellation proceeding is commenced by the timely filing of a petition for cancellation, together with the required fee, in the USPTO. [ Note 2.]

The notice of opposition, or the petition for cancellation, and the answer thereto correspond to the complaint and answer in a court proceeding. [ Note 3.] The opposer in an opposition proceeding, or the petitioner in a cancellation proceeding, is in the position of plaintiff, and the applicant in an opposition proceeding, or the respondent in a cancellation proceeding, is in the position of defendant. [ Note 4.]

An interference proceeding commences when the Board mails a notice of interference to each of the parties to the proceeding. For further information concerning interference proceedings, see TBMP Chapter 1000.

A concurrent use proceeding commences when the Board mails a notice of the proceeding to each of the parties thereto, as described in 37 C.F.R. § 2.99(c)  and 37 C.F.R. § 2.99(d)(1). For further information concerning concurrent use proceedings, see TBMP Chapter 1100.

Electronic filing via ESTTA is required for the filing of a notice of opposition or a petition for cancellation. [ Note 5.]

NOTES:

 1.   37 C.F.R. § 2.101(a). See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) ("An opposition proceeding is initiated by a simple statement, comparable to the filing of a complaint"); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity). Cf. Fed. R. Civ. P. 3.

 2.   37 C.F.R. § 2.111(a).

 3.   37 C.F.R. § 2.116(c).

 4.   37 C.F.R. § 2.116(b). See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).

 5.   37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.111(c)(1).

302.01    Mandatory Electronic Filing

37 C.F.R § 2.101 Filing an opposition.

• (b)(1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
• (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
• (3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.

37 C.F.R. § 2.106  Answer.

• (b)
  • (1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
  

37 C.F.R. § 2.111  Filing petition for cancellation.

• (c)
  • (1) A petition to cancel a registration must be filed through ESTTA.
  • (2)(i) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.
  

37 C.F.R. § 2.114  Answer.

• (b)
  • (1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
  

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. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered.

  * * * *

  

An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA and may not under any circumstances be filed in paper form. [ Note 1.] An opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126, must be filed electronically through ESTTA. [ Note 2.] A petition for cancellation must be filed electronically through ESTTA. [ Note 3.] For information regarding the electronic filing requirements for extensions of time to oppose, see TBMP § 203.01.

Although an opposition against a § 66(a) application must always be filed electronically in ESTTA, and may not under any circumstances be filed in paper form, in the rare instance that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against a § 1 or § 44 application or a petition for cancellation against a § 1, § 44 or § 66(a) registration (or registered extension of protection) may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.] For more information on filing oppositions and cancellations, see TBMP § 306 and TBMP § 307.

An answer to a notice of opposition or petition for cancellation must be filed through ESTTA. [ Note 5.] In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form accompanied by a Petition to the Director and the requisite fee. [ Note 6.] For more information on filing and serving an answer see TBMP § 311.01.

A paper-filed notice of opposition, petition to cancel, or answers thereto, which are not accompanied by a Petition to the Director and the required fee, will not be considered. [ Note 7.] Whether a paper filing of a notice of opposition, petition to cancel or answers thereto (accompanied by the required petition and fee) is permitted depends on whether a sufficient showing in the petition has been made based on the facts provided. [ Note 8.] Petitions to the Director to file on paper are subject to 37 C.F.R §2.146, including the requirement for verified facts under 37 C.F.R §2.146(c)(1). [ Note 9.] A supported petition would include an affidavit or declaration and any other available evidence to support the assertion of technical problems with ESTTA (e.g., screen print showing an ESTTA error message, a reference number from a telephone call to the TTAB regarding ESTTA unavailability), or to support the assertion of extraordinary circumstances. When submitting a Petition to the Director with the paper-filed notice of opposition, petition to cancel, or answer, the filer should send these papers in the same envelope. If a Petition to the Director has been filed through TEAS, the paper filing should include a prominent statement regarding the TEAS filing of the Petition to the Director. Fees for a paper-filed notice of opposition or petition to cancel may be paid by check, money order, credit card (using the credit card payment form) or a USPTO deposit account. See "Methods of Payment," available at https://www.uspto.gov/trademarks/trademark-fee-information. If paying by check or money order or credit card, separate checks, or money orders, or credit card forms for the Petition to the Director and the opposition or cancellation filing fee should be provided in the same envelope; written directions to deduct the fees from a deposit account should provide instructions separately for payment of fees for the Petition to the Director, and for the appropriate filing fees for the notice of opposition or petition to cancel. While all paper-filed notices of opposition and petitions to cancel and answers must be accompanied by a petition and the requisite fee, when the filing is the result of technical difficulties with ESTTA, the filer may concurrently request that the fee be waived and reimbursed.

In addition, general submissions to the Board must be filed via ESTTA. [ Note 10.] Eastern Time controls the timeliness of filing dates. [ Note 11.] In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. No fee is required. All submissions in paper form must include a written explanation of the technical problems or extraordinary circumstances encountered by the filer. [ Note 12.] Such explanations must include the specific facts underlying the inability to file by ESTTA, rather than a mere conclusory statement that technical problems or extraordinary circumstances prevented the use of ESTTA. [ Note 13.] The precise impact of ESTTA technical problems varies depending on specific facts. [ Note 14.] The exception for extraordinary circumstances may apply to situations where no USPTO technical problems exist, but the filer experiences an extraordinary situation making ESTTA unavailable to the filer, which might, in appropriate situations, include certain types of technical problems at the filer’s location or with the filer’s systems. [ Note 15.] Whether such circumstances are extraordinary will be determined on a case by case basis. In either situation, the Board will review the explanation accompanying the paper filing in its consideration of the filing, and explanations that do not meet the technical problems or extraordinary circumstances showing will not be considered. [ Note 16.]

Please Note: In the case of general submissions filed on paper, accompanied by the required explanation, parties should consider any such paper filing accepted unless the Board indicates otherwise. Thus, for any filing to which the opposing party would respond, for purposes of the response deadline, the opposing party should proceed as if the paper submission were accepted at the time of its filing and respond accordingly. [ Note 17.]

For additional information on filing via ESTTA see TBMP § 110.

NOTES:

 1.   37 C.F.R. § 2.101(b)(3). Cf. In re Börlind Gesellschaft für Kosmetische Erzeugnisse GmbH, 73 USPQ2d 2019, 2020 (TTAB 2005) (former 37 C.F.R. § 2.102(a)(2) (now 37 C.F.R. § 2.102(a)(1)) requires ESTTA filing of extensions of time to oppose Trademark Act § 66(a) applications).

 2.   37 C.F.R. § 2.101(b)(1).

 3.   37 C.F.R. § 2.111(c)(1).

 4.   37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.101(b)(2); and 37 C.F.R. § 2.111(c)(2).

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

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

 7.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1905 (TTAB 2017) (among the deficiencies, filing was not accompanied by a Petition to the Director or by the required fee).

 8.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).

 9.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016). See DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1905 (TTAB 2017) ("A Petition to the Director requires a petition fee, the necessary showing, and verification of statements supporting the petition.").

 10.   See 37 C.F.R. § 2.126(a).

 11.   See 37 C.F.R §2.195(a). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 19296, 19296 (Notice of Proposed Rulemaking April 4, 2016) (describing ongoing practice of using Eastern Time to determine the timeliness of ESTTA filing dates).

 12.   See 37 C.F.R. § 2.126(b).

 13.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).

 14.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).

 15.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966-67 (October 7, 2016).

 16.   37 C.F.R. § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).

 17.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).

303    Who May Oppose or Petition to Cancel

303.01    In General

Trademark Act § 13(a), 15 U.S.C. § 1063(a)  Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.

* * * *

Trademark Act § 14, 15 U.S.C. § 1064   A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905.

* * * *

Trademark Act § 24, 15 U.S.C. § 1092  Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--

• (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
• (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration. ...

Trademark Act § 45, 15 U.S.C. § 1127   In the construction of this chapter, unless the contrary is plainly apparent from the context--

* * * *

Person, Juristic Person. The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any non-governmental entity.

* * * *

37 C.F.R. § 2.2(b) Entity as used in this part includes both natural and juristic persons.

37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. …

37 C.F.R. § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...

303.02    Meaning of the Term "Person"

The term "person," as used in the Trademark Act, includes both natural and juristic persons. [ Note 1.] A juristic person is a "firm, corporation, union, association, or other organization capable of suing and being sued in a court of law." [ Note 2.]

If an operating division of a corporation is not itself incorporated or is not otherwise a legal entity which can sue and be sued, it does not have legal standing to own a mark or to file an application for registration, an opposition, or a petition for cancellation. [ Note 3.] See TMEP § 1201.02(d) ("An operating division’s use is considered to be use by the applicant…."). In such a case, the application, opposition, or petition for cancellation should be filed in the name of the corporation of which the division is a part. If an opposition or a petition for cancellation is filed in the name of a division, and there is no indication that the division is incorporated, where the issue is presented in connection with a discovery conference or a motion, the Board may inquire as to whether the division is incorporated or is otherwise a legal entity that can sue and be sued. If the opposer or petitioner responds in the negative, the opposition or petition for cancellation will go forward in the name of the corporation of which the division is a part. [ Note 4.] See TMEP § 1201.02(d).

The term "person" as used in the Trademark Act also includes the United States, any agency and instrumentality thereof, or any individual, firm or corporation which acts for the United States and with the authorization and consent of the United States, as well as any state, any instrumentality of a state, and any officer or employee of a state or instrumentality of a state acting in his or her official capacity. [ Note 5.]

NOTES:

 1.   Trademark Act § 45, 15 U.S.C. § 1127. Cf. 37 C.F.R. § 2.2(b).

 2.   Trademark Act § 45, 15 U.S.C. § 1127. See Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1475 (Fed. Cir. 1992) (a "person" may be a corporation or other entity); Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 720-21 (CCPA 1969) (a corporation is a "person" within the meaning of Trademark Act § 45, 15 U.S.C. § 1127, and can base an opposition on Trademark Act § 2(a), 15 U.S.C. § 1052(a)); Aruba v. Excelsior Inc., 5 USPQ2d 1685, 1686 n.2 (TTAB 1987) (Commonwealth of Aruba is a "person" within the meaning of Trademark Act §§ 13 and 45, 15 U.S.C. §§ 1063 and 1127); U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254, 1257 (TTAB 1987) (U.S. Navy is a juristic person within the meaning of Trademark Act § 45, 15 U.S.C. § 1127); Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 410 n.6 (TTAB 1986) (Alabama Board of Trustees, a corporate body, may be considered either a "person" or an "institution" within the meaning of Trademark Act § 2(a), 15 U.S.C. § 1052(a)); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 754 n.2 (TTAB 1985) (corporations as well as individuals are "persons" for purposes of Trademark Act § 2(a),15 U.S.C. § 1052(a)); In re Mohawk Air Services Inc., 196 USPQ 851, 855 (TTAB 1977) (a government agency is a juristic person and as such may file an application for registration, an opposition, or a petition for cancellation).

 3.   See In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986).

 4.   Cf. In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986) (because applicant was merely a division, Board noted that should it ultimately prevail, "this defect may be corrected by an amendment supported by a verification or declaration by the real applicant").

 5.   Trademark Act § 45, 15 U.S.C. § 1127.

303.03    Meaning of the Term "Damage"

The term "damage," as used in Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063  and 15 U.S.C. § 1064, concerns specifically a party’s entitlement to a statutory cause of action (previously referred to as "standing") to file an opposition or a petition to cancel, respectively. [ Note 1.] A party may establish its entitlement to oppose or to petition to cancel by showing (1) that it is within the zone of interests protected by the statute (i.e., has a "real interest" in the outcome of the proceeding) and (2) damage proximately caused by registration (i.e., a reasonable basis for its belief in damage). [ Note 2.] See TBMP § 309.03(b). To plead an interest within the "zone of interests" a plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. There is no requirement that a plaintiff show a personal interest in the proceeding different from or "beyond that of the general public" in order to establish its entitlement to a statutory cause of action. [ Note 3.] There is also no requirement that actual damage be pleaded or proved in order to establish an entitlement to a statutory cause of action or to prevail in an opposition or cancellation proceeding. [ Note 4.] However, the allegations in support of plaintiff’s belief of damage must have a "reasonable basis in fact." [ Note 5.]

For a discussion of entitlement to a statutory cause of action, see TBMP § 309.03(b).

NOTES:

 1.   See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020),cert. denied, 142 S. Ct. 82 (2021); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 n.2 (Fed. Cir. 1999) (construing standing requirements of Trademark Act § 13, 15 U.S.C. § 1063, regarding oppositions and Trademark Act § 14, 15 U.S.C. § 1064 regarding cancellations consistently); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 n.34 (TTAB 2020); Major League Soccer, LLC v. F.C. International Milano S.p.A., 2020 USPQ2d 11488, at *5 n.18 (TTAB 2020); Spanishtown Enterprises., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *1-2 (TTAB 2020).

 2.   See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).

 3.   Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092; 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) ("The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue"). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709, at *17-18 (TTAB 2021) (entitlement to a statutory cause of action based on registrations of pleaded marks in other countries, the reputation for such marks in the United States, and the sale of products by third party importers), appeal docketed, No. 21-2209 (Fed. Cir. Aug. 9, 2021).

 4.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1052 (Fed. Cir. 1983); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976); Universal Oil Products Co. v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972).

See also Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1062 (TTAB 2010) ("no requirement that any actual damage be pled or proved to establish standing"); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (plaintiff does not have to prove claims or ‘actual damage’ to establish standing); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1384 (TTAB 1991); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990); Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976 (TTAB 1988); Aruba v. Excelsior Inc., 5 USPQ2d 1685, 1686 (TTAB 1987); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1077 (TTAB 1987); BRT Holdings Inc. v. Homeway, Inc., 4 USPQ2d 1952, 1956 (TTAB 1987); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 801 (TTAB 1984); Davco Inc. v. Chicago Rawhide Manufacturing Co., 224 USPQ 245, 246 (TTAB 1984).

 5.   Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972) and stating that the belief of damage alleged by plaintiff must be more than a subjective belief); McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1215 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. July 11, 2007), cert. denied, 552 U.S. 1109 (2008).

303.04    Federal Trade Commission

Trademark Act § 14, 15 U.S.C. § 1064  Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required.

The proviso at the end of Trademark Act § 14, 15 U.S.C. § 1064, provides statutory standing for the Federal Trade Commission to cancel a registration on the Principal Register on the grounds specified in paragraphs (3) and (5) of the section. [ Note 1.]

For information concerning the grounds for cancellation specified in paragraphs (3) and (5) of Trademark Act § 14, 15 U.S.C. § 1064, see TBMP § 307.01.

NOTES:

 1.   See Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641, 647 (CCPA 1979); Federal Trade Commission v. Formica Corp., 200 USPQ 182, 191 (TTAB 1978).

303.05    Opposition Filed During Extension of Time to Oppose

37 C.F.R. § 2.102(a)  Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition.

* * * *

37 C.F.R. § 2.102(b)  A request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time must be in the name of the person to whom the extension was granted, except that an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.

303.05(a)    General Rule

An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. [ Note 1.] For this reason, an opposition filed during an extension of time to oppose ordinarily must be filed in the name of the party to which the extension was granted. [ Note 2.] Cf. TBMP § 206.02. An opposition filed in a different name will be accepted only if the opposition is filed by a person in privity with the person granted the extension of time or if the person that requested the extension was misidentified through mistake. [ Note 3.]

NOTES:

 1.   See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (a party cannot claim the benefit of an extension granted to another, unrelated party).

 2.   See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities share same objection is not a basis for finding privity).

 3.   See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may claim the benefit of an extension granted to another named entity").

303.05(b)    Opposition Filed by Privy

A party in privity with a potential opposer may step into the potential opposer’s shoes and file a notice of opposition or may join with the potential opposer as a joint opposer. [ Note 1.] Thus, an opposition filed during an extension of time to oppose may be filed by a party other than the party to which the extension was granted, if it is shown to the satisfaction of the Board that the differing party is in privity with the party granted the extension. [ Note 2.] Cf. TBMP § 206.02.

The "showing" of privity should be in the form of a recitation of the facts on which the claim of privity is based, and must be submitted with the opposition. When a party filing an opposition differs from the name of the party identified in the extension of time to oppose, ESTTA will prompt the filer to provide an explanation.

If the opposition is filed both in the name of the party granted the previous extension and in the name of one or more differing parties, an explanation will be requested as to each differing party, and the opposition will not be accepted as to any differing party that fails to make a satisfactory showing of privity. ESTTA will prompt the filer to provide an explanation.

Once a timely notice of opposition has been filed, and the time for opposing has expired, the right to pursue the filed case is a right individual to the timely filer. While this right may be transferred to another party, as by an assignment of the mark with the associated goodwill, it may not be shared. [ Note 3.]

For information concerning the meaning of the term "privity," see TBMP § 206.02.

NOTES:

 1.   See 37 C.F.R. § 2.102(b); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee, as party in privity with opposer, could have joined opposer in filing opposition during extension of time to oppose; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980).

 2.   See 37 C.F.R. § 2.102(b); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1669-70 (TTAB 2015) (individual employee that filed extension request not in privity with employer who filed notice of opposition); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee considered to be in privity with licensor; however, having failed to join opposer in filing opposition during extension of time to oppose, licensee may not be joined after opposition is filed). Cf. In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (fact that two entities are using marks similar to that for which application has been made and that both have been named defendants in civil actions brought by the owner of the mark in question is not a basis for finding privity); In re Spang Industries, 225 USPQ 888, 888 (Comm’r Pats. 1985) (attorney/client relationship does not invest the attorney with same right or interest as his client).

 3.   See SDT, Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (opposer’s licensee, having failed to join opposer in filing opposition during extension of time to oppose, cannot be joined after opposition is filed); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980) (extension of time granted to opposer does not inure to the benefit of unrelated third party, despite its sharing of a common interest with opposer vis-à-vis applicant’s mark). Cf. Leading Jewelers Guild, Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1901 n.1(TTAB 2007) (substitution allowed following assignment); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition); Raker Paint Factory v. United Lacquer Manufacturing Corp., 141 USPQ 407, 409 (TTAB 1964) (motion to amend complaint to substitute sole owner of company as real party in interest for opposer company granted); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (substitution of opposer allowed where notice of opposition named non-existing entity that had transferred rights to opposer prior to filing of opposition). See also Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office).

303.05(c)    Misidentification of Opposer

If the name of the opposer, in an opposition filed during an extension of time to oppose, differs from the name of the party to which the extension was granted, the opposition will not be rejected on that ground if it is shown to the satisfaction of the Board that the party in whose name the extension was requested was "misidentified through mistake." [ Note 1.]

The phrase "misidentified through mistake," as used in 37 C.F.R. § 2.102(b), means a mistake in the form of the opposer’s name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named. [ Note 2.] See TBMP § 512.04.

The "showing" submitted in support of a claim of misidentification through mistake should be in the form of a recitation of the facts on which the claim of misidentification through mistake is based, and must be submitted with the opposition. ESTTA will prompt the filer to provide an explanation.

For information concerning the misidentification of a potential opposer during an extension of time to oppose, see TBMP § 206.03.

For information concerning motions for substitution of party plaintiff on grounds of misidentification, see TBMP § 512.04.

NOTES:

 1.   37 C.F.R. § 2.102(b). See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993).

 2.   See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition); Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (individual employee who filed extension request a different legal entity than employer who filed notice of opposition and, thus, cannot be considered identified through mistake); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error resulting in identification of different legal entity was not a "mistake" within the meaning of the rule).

Cf. William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) (motion to substitute party that acquired mark from opposer prior to commencement of proceeding granted where opposition had been mistakenly filed in name of original owner); Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1032 (TTAB 1988) (president/sole shareholder is in privity with opposer corporation and may be substituted as "real party in interest" during opposition).

Cf. also TMEP §803.06 and TMEP § 1201.02(c); Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988) (trademark application was fatally defective because applicant was not the owner of the mark, having transferred it from himself to a corporation between the time that he executed the application and the date it was received in the Office); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1640 (TTAB 1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation which was one member of the joint venture); Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise); Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (substitution allowed where, after opposition instituted, court determined that attempted incorporation of applicant was legally defective; three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark).

303.05(d)    Misidentification of Applicant or Respondent

If a notice of opposition is filed against a mark where the applicant has been inadvertently misidentified in the application, the opposition will nevertheless be instituted and the real party in interest may be substituted for the named defendant during the opposition proceeding. [ Note 1.] Likewise, where a petition to cancel is filed against a registrant that has been inadvertently misidentified in the registration, the real party in interest may be substituted for the named defendant.

For information regarding applicant’s ability to correct a defect in the name or legal entity in the application, see TBMP § 512.04 and TMEP § 1201.02(c).

NOTES:

 1.   See Fed. R. Civ. P. 17(a); 37 C.F.R. § 2.116. See also Argo & Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (three individuals who owned mark as tenants in common substituted for corporation initially named as owner of mark where, after opposition instituted, court in related civil proceeding determined that attempted incorporation of applicant was legally defective). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) (application void ab initio where two separate commercial entities were in existence on application filing date and application was filed in name of wrong entity); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (application filed by corporation which was not the owner of the mark void ab initio); Societe Civile des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6 USPQ2d 1205, 1210 (TTAB 1988) (foreign manufacturer, not exclusive United States distributor, owns mark in absence of agreement between them providing otherwise).

303.06    Joint Opposers or Petitioners

Two or more parties may file a notice of opposition or a petition for cancellation jointly. However, the required fee must be submitted for each party joined as opposer or petitioner for each class in the application for which registration is opposed or for each class in the registration for which cancellation is sought. See TBMP § 308. [ Note 1.] For information concerning the filing of an opposition by two or more parties jointly where the notice of opposition is filed during an extension of time obtained by only one of the parties, see TBMP § 303.05.

Please Note: In ESTTA, all parties must be identified during the filing process in order for the proper fees to be charged for each party opposer or petitioner.

When parties file jointly, the notice of opposition or petition for cancellation must name each party joined as plaintiff. In addition, the notice of opposition or petition for cancellation should include allegations concerning the entitlement to a statutory cause of action (previously referred to as "standing") of each party plaintiff and the ground or grounds for opposition or cancellation. See TBMP § 309.03(b) and TBMP § 309.03(c) for a discussion of entitlement to a statutory cause of action and grounds for oppositions and cancellations. If the case is ultimately determined on the merits, rather than by default, withdrawal, stipulation, etc., any joint plaintiff whose entitlement to a statutory cause of action has not been proved cannot prevail, even though a ground for opposition or cancellation has been proved. [ Note 2.]

On the other hand, the fact that two or more parties may have an interest in a mark to be pleaded in a notice of opposition, or a petition for cancellation, does not mean that each such party must be joined as opposer, or petitioner. Joint filing is elective, not mandatory. [ Note 3.]

NOTES:

 1.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009) (second petitioner not added as party plaintiff due to failure to pay additional fee); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994) (licensee was not permitted to join as co-opposer after notice of opposition was filed, but even if permitted, would have had to submit fee). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("With opposers, regardless of the basis of the opposition application, the opposers identified in the ESTTA cover sheet determine the fees paid through ESTTA. Any additional opposers named only in the accompanying statement, for whom no fees have been paid, will not be part of the proceeding, regardless of the filing basis of the opposed application.").

 2.   See General Mills, Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1594 n.12 (TTAB 2011) ("Where there are multiple plaintiffs, each plaintiff must prove its standing and, in the case of likelihood of confusion and dilution claims, prior use."), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (of three joint opposers, owner of registration and its licensee as user of marks had real interest in proceeding, but opposer who only held software copyright had no standing and was given no further consideration). See also Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (Board found that one of the two opposers did not prove standing).

 3.   See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1627 (TTAB 1992) (respondent’s motion to dismiss and its alternative motion to join petitioner’s parent as owner of pleaded registrations and real party in interest denied since issue concerned what rights petitioner has in pleaded marks vis-à-vis respondent, not anyone else). See also Sun Valley Company Inc. v. Sun Valley Manufacturing Co., 167 USPQ 304, 310 (TTAB 1970) ("It is illogical to require that all parties that could possibly be injured by a registration be joined as parties to a cancellation or opposition proceeding before any one party can seek relief from the registration of a mark. This position is contrary to the specific provisions of Sections 13 and 14 of the Statute which provide that ‘any person’ who believes that he is or would be damaged by the registration of a mark is a proper party to file an opposition or a petition to cancel.").

304    Proceeding Against Multiple Class Application or Registration

When a notice of opposition is filed with respect to an application which contains goods and/or services in multiple classes [ Note 1.] or a petition for cancellation is filed with respect to a registration which contains goods and/or services in multiple classes, the class or classes opposed, or sought to be cancelled, should be specified in the plaintiff’s pleading. In addition, the required opposition or cancellation fee must be submitted for each party joined as plaintiff for each class sought to be opposed or cancelled. [ Note 2.] See TBMP § 308.04. If there are insufficient fees accompanying the complaint to pay in full for each named opposer or petitioner for each class opposed or for which cancellation is sought, the proceeding will not be instituted in ESTTA and the transaction will not be completed. If filed on paper, the proceeding may not be instituted. [ Note 3.] The institution notice will identify the parties and classes for which the required fees were submitted. See TBMP § 308 for information on filing fees. For information about dividing a multi-class application where not all classes are opposed, or dividing an application where not all goods in the opposed class(es) are opposed, see TBMP § 516. [ Note 4.]

NOTES:

 1.   See 37 C.F.R. § 2.86.

 2.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 3.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 4.   See also TMEP § 1110 et. seq. Cf. TMEP § 1403.03.

305    Consolidated and Combined Complaints

37 C.F.R. § 2.104(b) Oppositions to different applications owned by the same party may be joined in a consolidated opposition when appropriate, but the required fee must be included for each party joined as opposer for each class in which registration is opposed in each application against which the opposition is filed.

37 C.F.R. § 2.112(b) When appropriate, petitions for cancellation of different registrations owned by the same party may be joined in a consolidated petition for cancellation. The required fee must be included for each party joined as a petitioner for each class sought to be cancelled in each registration against which the petition for cancellation has been filed.

305.01    Consolidated Complaint

When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, different applications owned by the same defendant. However, the required fee must be submitted for each party joined as opposer, for each class in which registration is opposed, in each application against which the opposition is filed. [ Note 1.] See TBMP § 308.05 regarding fees for filing consolidated complaints. When such a pleading is filed, the Board will set up a single opposition file, identified by a single opposition proceeding number, but bearing the number of each application opposed in the consolidated notice of opposition.

Similarly, when appropriate, a party may seek to cancel, in a single (i.e., "consolidated") petition for cancellation, different registrations owned by the same defendant. The required fee must be submitted for each party joined as petitioner, for each class sought to be cancelled, in each registration against which the petition for cancellation is filed. [ Note 2.] See TBMP § 308.05. When such a pleading is filed, the Board will set up a single cancellation file, identified by a single cancellation proceeding number, but bearing the number of each registration sought to be cancelled in the consolidated petition to cancel.

A consolidated notice of opposition, or consolidated petition to cancel, is appropriate if the plaintiff’s claims against each of the defendant’s subject applications, and/or registrations, involve common (i.e., similar) questions of law or fact. [ Note 3.]

For information concerning motions to consolidate proceedings, see TBMP § 511.

NOTES:

 1.   See 37 C.F.R. § 2.104(b).

 2.   See 37 C.F.R. § 2.112(b).

 3.   See Fed. R. Civ. P. 42(a); One Jeanswear Group Inc. v. YogaGlo, Inc., 127 USPQ2d 1793, 1795 (TTAB 2018) (motion to consolidate granted; oppositions involved the same parties, similar marks and likelihood of confusion claims); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444, 1445 (TTAB 1987) (joint motion to consolidate granted in view of identity of parties and issues); Federated Department Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262, 263 (TTAB 1985) (consolidation permitted; issues of fact and law substantially similar); World Hockey Association v. Tudor Metal Products Corp., 185 USPQ 246, 248 (TTAB 1975) (oppositions involving similar marks and similar issues consolidated); Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440, 441 (TTAB 1973) (applicant’s motion to consolidate denied in view of extent of differences in the involved issues).

305.02    No Combined Complaint

A party may not file a single pleading combining a notice of opposition to one or more applications, and a petition to cancel one or more registrations owned by the same defendant. [ Note 1.]

Filing by ESTTA is required, and no ESTTA form exists for such a combined complaint. [ Note 2.] However, to achieve a comparable result a filer may move for consolidation after the proceedings have been instituted in a separate, subsequent filing. For information concerning motions to consolidate proceedings, see TBMP § 511. Once consolidated, the opposition is treated as the "parent" case, and both proceeding numbers are placed on all documents relating to the combined proceedings. Cf. TBMP § 511.

NOTES:

 1.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).

 2.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016) ("… no exception to the requirement to file by ESTTA will be made for a combined filing, and prior case law allowing for this type of combined notice of opposition and petition for cancellation is superseded by the mandatory online filing requirement.").

306    Time for Filing Opposition

306.01    In General

Trademark Act § 12(a), 15 U.S.C. § 1062(a)  Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office....

Trademark Act § 13(a), 15 U.S.C. § 1063(a)   Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition... .

37 C.F.R. § 2.101  Filing an opposition.

• (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.

  * * * *

  
• (b)
  • (1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
  • (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
  • (3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
  
• (c) The opposition must be filed within thirty days after publication (§2.80) of the application being opposed or within an extension of time (§2.102) for filing an opposition.

  * * * *

  
• (e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

An opposition to the registration of a mark on the Principal Register must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official Gazette for opposition, or within an extension of time to oppose granted to the opposer or its privy. [ Note 1.] See TBMP § 303.

An opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126   must be filed electronically via ESTTA. [ Note 2.] In the rare circumstance that an opposition is filed on paper, accompanied by the Petition to the Director and the required fee, the certificate of mailing by first-class mail procedure described in 37 C.F.R. § 2.197  and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are both available. Please Note: The institution of a timely paper-filed opposition will occur only if the Petition to the Director is granted and the opposition does not have any other defects. See TBMP § 309.04. Facsimile transmission is not available. [ Note 3.] See TBMP § 111.02.

An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  must be filed electronically via ESTTA and may not be filed on paper under any circumstances. [ Note 4.] See TBMP § 203.01.

The filing date of an opposition is the date of electronic receipt in the Office of the opposition and the required fee. [ Note 5.] In the rare instance that a paper filing is permitted, the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, and 37 C.F.R. § 2.197  unless the notice is filed in accordance with 37 C.F.R. § 2.198  (Filing of correspondence by Priority Mail Express®). [ Note 6.] If the notice is filed in accordance with 37 C.F.R. § 2.198, the filing date of an opposition will be the date of deposit with the United States Postal Service ("USPS"), i.e., the date shown by the "date in" date on the Priority Mail Express® label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 7.]

After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed or to add a joint opposer. [ Note 8.] Nor may an opposition, once instituted, be amended to correct a misidentified serial number associated with the application sought to be opposed. [ Note 9.] The Board may, however, be able to correct serial number misidentification errors that are brought to its attention by the opposer, in the very rare instances that the opposition has not yet been instituted and time remains in the opposition period. Generally, a would-be opposer’s remedy is to seek to cancel the mark once the application has matured to registration by filing a petition to cancel in ESTTA, or (if time remains in the opposition period) to file a new opposition through ESTTA, including payment of the filing fee therefor, which correctly identifies the application sought to be opposed. If an opposition is instituted against an incorrect serial number, and the mistake cannot be corrected, the Board will not refund the opposition fee.

Parties using the ESTTA filing system will not face late opposition and other timing errors. The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published or that has been abandoned, or where the statutory time period for filing an opposition has passed. The ESTTA system also prompts the would-be opposer, once the user identifies the serial number of the application sought to be opposed, to verify that it has correctly identified the serial number associated with the application. See TBMP § 306.04. In addition, as long as the ESTTA filing process is completed, a potential opposer is assured that its filing will be accorded a valid filing date. [ Note 10.]

For information on opposition filing fees, see TBMP § 308. For information on how to file an opposition, see TBMP § 309. For information on service of the notice of opposition by the Trademark Trial and Appeal Board, see TBMP § 309.02(c).

For information concerning the effect of such matters as restoration of jurisdiction, republication, amendment, letter of protest, petition to the Director, abandonment, or the inadvertent issuance of a registration, on the filing of an opposition or a request to extend time to oppose, see generally, TBMP Chapter 200.

NOTES:

 1.   Trademark Act § 13(a), 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102(b)  and 37 C.F.R. § 2.102(c); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

 2.   See 37 C.F.R. § 2.101(b)(1).

 3.   See 37 C.F.R § 2.195(c). See also Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (opposition improperly filed by facsimile not entitled to a filing date).

 4.   37 C.F.R. § 2.101(b)(3). Cf. In re Börlind Gesellschaft für Kosmetische Erzeugnisse GmbH, 73 USPQ2d 2019, 2020 (TTAB 2005) (former 37 C.F.R. § 2.102(a)(2) (now 37 C.F.R. § 2.102(a)(1)) requires ESTTA filing of extensions of time to oppose Trademark Act § 66(a) applications).

 5.   See 37 C.F.R. § 2.101(e).

 6.   37 C.F.R. § 2.101(e). See DFC Expo LLC v. Coyle, 121 USPQ2d 1903 (TTAB 2017) (among the deficiencies, filing, received after the deadline, was not accompanied a certificate of mailing); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).

 7.   See 37 C.F.R § 2.198(b).

 8.   See 37 C.F.R. § 2.107(a); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 (TTAB 2007).

 9.   See Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735, 1736 (TTAB 2004) (opposition listing the incorrect serial number of the application dismissed as a nullity). Cf. Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 60 USPQ2d 1703, 1704 (Comm’r 2000) (Board directed to terminate opposition that misidentified serial number associated with application; registration will not be cancelled); and In re Merck & Co. Inc., 24 USPQ2d 1317, 1318 (Comm’r 1992) (application misidentified in request for extension of time).

 10.   37 C.F.R. § 2.101(e); Chocoladefabriken Lindt & Sprungli AG v. Flores, 91 USPQ2d 1698, 1699 n.3 (TTAB 2009) ("Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date") (citingVibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282 (TTAB 2008) (the official filing date of an ESTTA filing is the date time-stamped when the ESTTA filing and required fee are received on the USPTO server)).

306.02    Date of Publication of Mark

The date of publication of a mark is the issue date of the issue of the Official Gazette in which the mark appears, pursuant to Trademark Act § 12(a), 15 U.S.C. § 1062(a), for purposes of opposition. The Official Gazette is available in electronic form at http://www.uspto.gov/.

306.03    Premature Opposition

Trademark Act § 13(a), 15 U.S.C. § 1063(a), requires that an opposition to the registration of a mark on the Principal Register be filed within a specified time after the publication of the mark in the Official Gazette.

The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published.

In the rare instance that a party files an opposition on paper and it has been permitted by the Director, on petition, but the filing date is prior to the publication of the mark sought to be opposed, the opposition is premature, and will be rejected by the Board, even if the mark has been published by the time of the Board’s action. No proceeding will be instituted, and any submitted opposition fee will be refunded. Cf. TBMP § 119.03 and TBMP § 202.03.

306.04    Late Opposition

Because the timeliness requirements of Trademark Act § 13(a), 15 U.S.C. § 1063(a), for the filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can they be waived by the Board or by the Director on petition. [ Note 1.]

Parties using the ESTTA filing system will not face late opposition and other timing errors. The ESTTA system will not permit a would-be opposer to file an opposition against an application that has not yet been published or that has been abandoned, or where the statutory time period for filing the opposition has passed. Accordingly, ESTTA will reject an attempt to electronically file an opposition after the expiration of the would-be opposer’s time for opposing.

In the rare instance that a party files an opposition on paper and it has been permitted by the Director, on petition, an opposition that has been filed after the expiration of the would-be opposer’s time for opposing must be denied by the Board as late. The opposition will not be instituted, and any submitted opposition fee will be refunded. The fee for the petition to the Director will not be refunded. In either circumstance, the would-be opposer’s remedy lies in the filing of a petition for cancellation, pursuant to Trademark Act § 14, 15 U.S.C. § 1064  when and if a registration is issued. [ Note 2.]

For information concerning the effect of fee and signature requirements on the timing of an opposition, see TBMP § 308.02(b) and TBMP § 309.02(b), respectively.

NOTES:

 1.   See The Equine Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943,1945 n.6 (TTAB 2009) ("The time for filing a notice of opposition is statutory and cannot be waived by the Board"); In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (waiver of now amended United States Patent and Trademark Office Rule 1.8 regarding certificates of mailing would effectively waive Trademark Act § 13, 15 U.S.C. § 1063 and, in any event, the fact that potential opposer did not retain executed hard copies of documents filed with Office and cannot prove document was timely is not an extraordinary circumstance justifying a waiver of Rule 1.8); In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r 1994); In re Cooper, 209 USPQ 670, 671 (Comm’r 1980). Please Note: In 2003, Trademark Rule 1.8 was replaced by 37 C.F.R. § 2.197, which is now the applicable rule regarding certificates of mailing.

 2.   See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 n.10 (TTAB 2007).

307    Time for Filing Petition to Cancel

Trademark Act § 14, 15 U.S.C. § 1064  A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of confusion of dilution by blurring or dilution by tarnishment under section 1125(c) of this title,by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

• (1) Within five years from the date of the registration of the mark under this chapter.
• (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
• (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 or this title of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
• (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
• (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies.
• (6) At any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some of the goods or services recited in the registration:
• Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied. Nothing in paragraph (6) shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 1126(e) or 1141f of this title shall not be cancelled pursuant to paragraph (6) if the registrant demonstrates that any nonuse is due to special circumstances that excuse such nonuse.

  * * * *

  

Trademark Act § 24, 15 U.S.C. § 1092  Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--

• (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
• (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.

  The Director shall refer such application to the Trademark Trial and Appeal Board which shall give notice thereof to the registrant. If it is found after a hearing before the Board that the registrant is not entitled to registration, or that the mark has been abandoned, the registration shall be cancelled by the Director. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c).

  

37 C.F.R. § 2.111 Filing petition for cancellation.

• (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.
• (b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. The petition for cancellation need not be verified, but must be signed by the petitioner or the petitioner’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for petitions submitted electronically via ESTTA. The petition for cancellation may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905 which have not been published under section 12(c) of the Act, or on any ground specified in section 14(3) or (5) of the Act, or at any time after the three-year period following the date of registration on the ground specified in section 14(6) of the Act. In all other cases, including nonuse claims not specified in section 14(6), the petition for cancellation and the required fee must be filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act.
• * * * *
• (e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.

307.01    Petition That May Be Filed at Any Time After Registration

A petition to cancel a registration may be filed at any time in the case of a registration issued on the Supplemental Register under the Act of 1946, 15 U.S.C. § 1051  et. seq., or under the Act of 1920. A petition to cancel may also be filed at any time in the case of a registration issued under the Act of 1881 or the Act of 1905 which has not been published under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 1.]

In addition, a petition to cancel any registration may be filed at any time on any ground specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3)  or 15 U.S.C. § 1064(5). [ Note 2.]

As permitted by Trademark Act § 14(3), 15 U.S.C. § 1064(3), a petition to cancel may be filed at any time on grounds that, for example, the mark has been abandoned; the registration was obtained by fraud; the mark is generic; the mark is geographically deceptive, [ Note 3.], the mark falsely suggests a connection with a person’s name or identity, [ Note 4.], the mark comprises matter that, as a whole, is functional [ Note 5.], or the mark comprises the flag of the United States [ Note 6.], or the name of a living individual without the individual’s consent. [ Note 7.] See also TBMP § 307.04.

The filing date of the petition is the date of electronic receipt in the Office of the petition, with the required fee. [ Note 8.] In the rare instance that a paper filing is permitted by the Director, on petition, the filing date of the petition will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, and 37 C.F.R. § 2.197, unless the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. § 2.198. [ Note 9.] If the petition is filed in accordance with 37 C.F.R. § 2.198, the filing date of a petition will be the date of deposit with the USPS, i.e., the date shown by the "date in" date on the "Priority Mail Express®" label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date of receipt in the Office is considered the filing date of the petition. [ Note 10.]

For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c).

For information on filing fees, see TBMP § 308. For information on service of the petition for cancellation, see TBMP § 309.02(c).

NOTES:

 1.   See Trademark Act § 14, 15 U.S.C. § 1064  and Trademark Act § 24, 15 U.S.C. § 1092; 37 C.F.R. § 2.111(b).

 2.   See Trademark Act § 14, 15 U.S.C. § 1064  and Trademark Act § 24, 15 U.S.C. § 1092; 37 C.F.R. § 2.111(b).

 3.   See, e.g., K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540 (TTAB 2001) (geographic deceptiveness ground available for registration over five years old); Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1898 (TTAB 1992) ("[I]f the registrant fails to perform actions which are within his control, e.g., he abandons his mark or uses his mark so as to misrepresent the source of the goods or allows the mark to become, or promotes it as, the generic name for the goods, his registration can be cancelled because he has, in effect, participated in its destruction."). Cf. Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1524-25 (TTAB 2013) (registration over five years old may not be challenged on a ground that is available only when the registration is less than five years old); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (ownership of mark not available ground for registration over five years old); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (registration over five years old may not be challenged on ground that mark is geographically descriptive under Trademark Act § 2(e)(2), 15 U.S.C. § 1052(e)(2)).

 4.   See Trademark Act § 2(a), 15 U.S.C. § 1052(a). See also Sentry Chemical Company v. Pennwalt Corp., 212 USPQ 25 (TTAB 1980) (Section 2(a) claims available for registration over five years old).

Section 2(a)’s clause concerning marks that may disparage or bring into contempt or disrepute was held to be unconstitutional by the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017), and no longer provides a basis to petition to cancel a registration.

Section 2(a)’s clause concerning immoral or scandalous matter was held to be unconstitutional by the U.S. Supreme Court in Iancu v. Brunetti, 139 S. Ct. 782, 2019 USPQ2d 232043 (2019), and no longer provides a basis to petition to cancel a registration.

 5.   See Trademark Act § 2(e)(5), 15 U.S.C. § 1052(e)(5)  See, e.g., In re MK Diamond Products, Inc., 2020 USPQ2d 10882 (TTAB 2020) (applicant’s configuration mark comprised of a saw blade design found functional).

 6.   See Trademark Act § 2(b), 15 U.S.C. § 1052(b).

 7.   See Trademark Act § 2(c), 15 U.S.C. § 1052(c).

 8.   See 37 C.F.R. § 2.111(e).

 9.   See 37 C.F.R. § 2.111(e).

 10.   See 37 C.F.R § 2.198(b).

307.02    Petition That Must Be Filed Within Five Years from the Date of Registration

307.02(a)    In General

A petition to cancel a registration issued on the Principal Register under the Act of 1946, on a ground not specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6) (for registrations over three years from the date of registration), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), 15 U.S.C. § 1064(6), must be filed within five years from the date of the registration of the mark. [ Note 1.] Similarly, a petition to cancel a registration issued on the Principal Register under the Act of 1881 or the Act of 1905, and published under the provisions of Trademark Act § 12(c), 15 U.S.C. § 1062(c)  on a ground not specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6) (for registrations over three years from the date of registration). 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064(6), must be filed within five years from the date of publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 2.]

Although a petition to cancel filed after the expiration of the five-year period, in the case of such a Principal Register registration, must recite one of the grounds specified in Trademark Act § 14(3), 14(5), or 14(6)15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064(6). a petition to cancel filed prior to the expiration of the five-year period may be based on any ground which could have prevented registration initially. [ Note 3.] The grounds for cancellation which are thus available in the case of a petition filed within the five-year period, but not thereafter, include: all of the grounds specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C §1065(3), 15 U.S.C §1064(5), 15 U.S.C. § 1064(6)  as well as likelihood of confusion under Trademark Act § 2(d), 15 U.S.C. § 1052(d), [ Note 4.]; certain grounds specified in Trademark Act § 2(e), 15 U.S.C. § 1052(e)  (including a claim that respondent’s mark is merely descriptive or deceptively misdescriptive, 15 U.S.C § 1052(e)(1), that respondent’s mark is geographically descriptive, 15 U.S.C § 1052(e)(2), or geographically deceptively misdescriptive, 15 U.S.C § 1052(e)(3), or that respondent’s mark is primarily merely a surname, 15 U.S.C § 1052(e)(4) ), [ Note 5.]; the ground that respondent is not the owner of the registered mark; and the ground that there was no bona fide use of respondent’s mark in commerce to support the original registration.

For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c). For a discussion of entitlement to a statutory cause of action to file a petition to cancel or a notice of opposition, see TBMP § 309.03(b).

As stated above, a petitioner may not seek to cancel a Principal Register registration over five years old on the ground of likelihood of confusion. [ Note 6.] However, under Trademark Act § 18, 15 U.S.C. § 1068, a petitioner may seek to partially cancel a registration over five years old by restricting the goods or services therein in order to avoid a likelihood of confusion. For a discussion of a petition to partially cancel a registration under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 309.03(d).

Note that a petitioner may not seek to cancel a Principal Register registration over five years old on the ground that it is generic, where the genericness claim is made only as to a portion of the mark and not the entire mark. However, the alleged generic nature of the portion of the mark may have a bearing on the likelihood of confusion analysis. [ Note 7.]

The five-year period specified in Trademark Act § 14(1), 15 U.S.C. § 1064(1), (i.e., "Within five years from the date of the registration of the mark under this Act") includes the fifth anniversary date of the registration. [ Note 8.] Cf. TMEP § 1604.04 and TMEP § 1606.03. Similarly, the five-year period specified in Trademark Act § 14(2), 15 U.S.C. § 1064(2), ("Within five years from the date of publication under Section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905"), includes the fifth anniversary date of the publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 9.]

The filing date of the petition is the date of electronic receipt in the Office of the petition, with the required fee. [ Note 10.] In the rare instance that a paper filing is permitted by the Director, on petition, the Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198  are available. [ Note 11.] If the paper filing of the petition to cancel has been permitted by way of Petition to the Director, the filing date of the petition will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, and 37 C.F.R. § 2.197  unless the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. § 2.198. [ Note 12.] If the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. § 2.198, then the filing date of the petition is the date the petition was deposited with the USPS i.e., the date shown by the "date in" date on the "Priority Mail Express®" label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the petition. [ Note 13.]

For information on filing fees, see TBMP § 308.

To further the USPTO's goal of maintaining the accuracy and integrity of the U.S. Trademark Register, the Board recently undertook a two-year pilot program to explore procedures for expediting certain cancellation proceedings that are limited to claims of abandonment or nonuse (or both) where the parties voluntary stipulate to one or more of the TTAB’s Accelerated Case Resolution (ACR) options. See TBMP § 528.05(a)(2) and TBMP § 702.04. Under the pilot, the Board, on an ongoing basis, identified eligible newly-filed cancellation proceedings that may benefit by some form of the Board's existing ACR procedures. [ Note 14.] The Board identified cases that commenced between March 2, 2018 and February 28, 2020.

Information about how the pilot was conducted, and the results and trends identified, can be found at https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board/expedited-cancellation-pilot-program.

NOTES:

 1.   See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (claim under Trademark Act § 2(d), 15 U.S.C. § 1052(d), is time-barred under Trademark Act § 14(3), 15 U.S.C. § 1064(3)); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1913 (TTAB 2007) (same); Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (the filing date of the petition is the operative date in determining whether the cancellation is time barred, not the date that the notice of the proceeding is mailed to the parties). Cf. British-American Tobacco Co. Limited v. Philip Morris Inc., 55 USPQ2d 1585, 1590 (TTAB 2000) (Trademark Act § 14, 15 U.S.C. § 1064 does not limit Board’s authority to entertain an action under Article 8 of the Pan American Convention against a registration over five years old).

 2.   See Trademark Act § 14(1), 15 U.S.C. § 1064(1)  and Trademark Act § 14(2), 15 U.S.C. § 1064(2); 37 C.F.R. § 2.111(b).

 3.   See Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 142 (Fed. Cir. 1986); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); and Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).

 4.   See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007) (Trademark Act § 2(d), 15 U.S.C. § 1052(d) not a legitimate basis for petition to cancel a registered mark where the registration is more than five years old). Cf. Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (claim of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).

 5.   See The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1945 (TTAB 2009) (petition to cancel a registration on the Principal Register on a claim that the mark is descriptive may be filed at any time within five years of the date of registration); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100, 1108-07 (TTAB 1997) (descriptiveness ground considered because petition to cancel filed before five year anniversary of registration). Cf. Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1061(TTAB 2010) (registration more than five years old may not be cancelled based on claim that a portion of the mark is generic term); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (same; motion to strike claim granted).

 6.   See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007).

 7.   See Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (petitioner cannot seek to cancel a mark more than five years old on the ground that a portion of the mark is a generic name, and the purportedly generic term has not been disclaimed); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (decision to strike counterclaim as time-barred does not affect respondent’s ability to argue that a portion of the mark is generic and should be accorded less weight in a likelihood of confusion analysis).

 8.   See Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990) (fifth-year anniversary falling on a weekend or holiday).

 9.   Cf. Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990);TMEP § 1604.04 and TMEP § 1606.03.

 10.   See 37 C.F.R. § 2.111(e).

 11.   See 37 C.F.R. § 2.111(e), 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).

 12.   See 37 C.F.R. § 2.111(e).

 13.   See 37 C.F.R § 2.198(b).

 14.   Wirecard AG v. Striatum Ventures B.V., 2020 U.S.P.Q.2d 10086 (TTAB 2020) (case decided under expedited cancellation pilot using ACR procedures); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018) (same).

307.02(b)    Trademark Act § 14, 15 U.S.C. § 1064, Limitation is Independent of Trademark Act § 15, 15 U.S.C. § 1065, Affidavit

The five-year time limit specified in Trademark Act § 14, 15 U.S.C. § 1064, barring certain attacks on a Principal Register registration, "is not dependent on the filing of a declaration under Section 15 which provides incontestable rights of use to a limited extent (15 U.S.C. § 1065 )." [ Note 1.]

NOTES:

 1.   Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1392 n.5 (Fed. Cir. 1990) (emphasis in original). See also Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990); Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1311 (TTAB 1990) (concept of incontestability of a registration is irrelevant to a cancellation proceeding under Trademark Act § 14, 15 U.S.C. § 1064).

307.02(c)    Factors Affecting the Five-Year Period

307.02(c)(1)    Reliance on Registration by Plaintiff

If an opposer relies on a Principal Register registration of its pleaded mark, and the five-year period as to the pleaded registration has not yet expired when the opposition is filed, the limitation does not apply to any counterclaim to cancel such pleaded registration filed in response to the notice of opposition. This is so even if the five-year period has expired by the time the counterclaim is filed. In such cases, the filing of the opposition tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a counterclaim may be based. [ Note 1.]

Similarly, the limitation would not apply to a counterclaim to cancel such a Principal Register registration relied on by the petitioner in a cancellation proceeding, if the five-year period had not yet expired with respect to the registration at the time of the filing of the petition to cancel.

NOTES:

 1.   See, e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 522 (CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980) (grounds not limited where petition to cancel registration pleaded in opposition was not filed until after fifth anniversary date of registration, because opposition wherein opposer relied on registration was filed before anniversary date); Humble Oil & Refining Co. v. Sekisui Chemical Co. Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not limited where, although counterclaim to cancel pleaded registration was not properly filed until after fifth anniversary date of registration, opposition wherein opposer relied on said registration was filed before anniversary date); Sunbeam Corp. v. Duro Metal Products Co., 106 USPQ 385, 386 (Comm’r 1955). See also 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:67 (5th ed. March 2022 update). Cf. regarding concurrent use proceedings, Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (five-year period tolled where applicant, prior to expiration of five-year period, files a proper concurrent application or an amendment converting an unrestricted application to one seeking concurrent use naming registrant as exception to applicant’s right to exclusive use).

307.02(c)(2)    Amendment of Registration

When a Principal Register registration has been amended, the registration is subject to attack under Trademark Act § 14, 15 U.S.C. § 1064, to the extent that the amendment of the registration has in any way enlarged registrant’s rights, as though the registration had issued on the date of the amendment. That is, even though the Trademark Act § 14, 15 U.S.C. § 1064  five-year period following issuance of the registration, or publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c), may have expired, if a petition to cancel the registration is filed within the five years following the amendment of the registration, the petition is not limited to Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5)  , or 15 U.S.C. § 1064(6)  grounds, to the extent that the amendment has in any way enlarged the registrant’s rights. Rather, during the five years after the amendment, "the modified registration, not having been in existence for 5 years, may be challenged in a cancellation proceeding as long as petitioner states grounds [not limited to Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064  grounds] for the cancellation indicating how he believes he is or will be damaged by the modified registration." [ Note 1.] A registration that has been amended, however, may not be challenged for nonuse under Trademark Act § 14(6), 15 U.S.C. § 1064(6), until three years from the date of the amendment. See TBMP §307.03.

NOTES:

 1.   Stanspec Co. v. American Chain & Cable Co., 531 F.2d 563, 189 USPQ 420, 423 (CCPA 1976). See Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, 824-25 (TTAB 1984) (counterclaim would be proper where defendant pleads that the amendment to the mark in the subject registration resulted in a mark materially different from originally registered mark, representing enlargement of rights conferred by original certificate of registration; that defendant used its mark prior to opposer’s first use of amended mark; and that confusion with amended mark is likely).

307.02(c)(3)    Amendment of Petition for Cancellation

If a petitioner files a cancellation against a registration and the five-year period has not yet expired when the cancellation is filed, the five-year time limit specified in Trademark Act § 14, 15 U.S.C. § 1064, does not bar any claims that may be raised by an amended pleading, subject to the provisions of Fed. R. Civ. P 15(a). This is so even if the five-year period has expired by the time an amended petition for cancellation is filed. In such cases, the filing of the cancellation tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a cancellation may be based. [ Note 1.] See TBMP § 507 regarding motions to amend the pleadings.

NOTES:

 1.   See Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1128-30 (TTAB 2016) (the commencement of a cancellation proceeding prior to the fifth-year anniversary of the registration tolls Trademark Act Section 14 for the purpose of petitioner adding claims against the registration during the pendency of the Board proceeding).

307.03    Petition to Cancel for Nonuse

Trademark Act § 14(6), 15 U.S.C. § 1064(6), provides for the filing of a petition to cancel a registration on the ground that the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. A petitioner may not assert such nonuse claim against a registration until three years after the registration date, but may assert the claim at any time thereafter, including against a registration over five years old. A registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), or Trademark Act § 66(a), 15 U.S.C. § 1141f, may not be cancelled pursuant to Trademark Act § 14(6) if the registrant demonstrates that nonuse is due to special circumstances that excuse such nonuse. [ Note 1.]

The ground for cancellation based on nonuse under Trademark Act § 14(6), 15 U.S.C. § 1064(6), is independent of the procedures for ex parte reexamination and expungement. Termination of an ex parte expungement or reexamination proceeding in favor of a registrant does not bar future nonuse cancellation actions with respect to the registration. [ Note 2.]

The ground for cancellation based on nonuse under Trademark Act § 14(6), 15 U.S.C. § 1064(6), also is independent of other claims for opposition and cancellation based on nonuse, which are not affected by the three-year limitation. [ Note 3.]

For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c)(1).

NOTES

 1.   CHANGES TO IMPLEMENT PROVISIONS OF THE TRADEMARK MODERNIZATION ACT OF 2020, 86 Fed. Reg. 64300, 64316 (November 17, 2021); 37 C.F.R. § 2.111(b). See also 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:63 (5th ed. March 2022 update).

 2.   CHANGES TO IMPLEMENT PROVISIONS OF THE TRADEMARK MODERNIZATION ACT OF 2020, 86 Fed. Reg. 64300, 64306 (November 17, 2021); 37 C.F.R. § 2.111(b). For information on expungement and reexamination proceedings, see the USPTO’s web page at https://www.uspto.gov/trademarks/laws/2020-modernization-act.

 3.   CHANGES TO IMPLEMENT PROVISIONS OF THE TRADEMARK MODERNIZATION ACT OF 2020, 86 Fed. Reg. 64300, 64320 (November 17, 2021); 37 C.F.R. § 2.111(b).

307.04    Premature Petition to Cancel

Trademark Act § 14 and Trademark Act § 24, 15 U.S.C. § 1064  and 15 U.S.C. § 1092, provide for the filing of a petition to cancel "a registration of a mark." Until a registration actually issues, there is no registration to cancel.

Thus, a petition to cancel a pending application prior to the issuance of the registration is premature, and cannot be filed through ESTTA. In the rare instance of a petition to cancel filed on paper that reflects a filing date prior to the issuance of registration, the petition will be rejected by the Board, even if the registration has issued by the time of the Board’s action. The petition to cancel filed on paper will not be instituted, and any submitted fee for the petition to cancel will be refunded. In either circumstance, petitioner’s remedy lies in the electronic filing of a new petition to cancel after the registration has issued.

307.05    Late Petition to Cancel

A petition to cancel a registration issued on the Principal Register under the Act of 1946 on a ground not specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064(6), must be filed (with the required fee) within five years from the date of the registration of the mark. Similarly, a petition to cancel a registration issued on the Principal Register under the Act of 1881 or the Act of 1905, and published under the provisions of Trademark Act § 12(c) (of the Trademark Act § of 1946), 15 U.S.C. § 1062(c), on a ground not specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3)  or 15 U.S.C. § 1064(5), or 15 U.S.C. § 1064(6)  must be filed within five years from the date of publication under Trademark Act § 12(c),15 U.S.C. § 1062(c).

If a party attempts to electronically file a petition to cancel one of these Principal Register registrations after the expiration of the five-year period and does not select in ESTTA one or more of the grounds specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3)  or 15 U.S.C. § 1064(5), or 15 U.S.C §1064, the petition is late, and ESTTA will not institute the cancellation. In the rare instance that a petition to cancel has been filed on paper and after the expiration of the five-year period and does not plead one or more of the grounds specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5). or 15 U.S.C. § 1064(6)  the petition is late, and will be rejected by the Board. The petition to cancel will not be instituted, and only any submitted filing fee for the petition to cancel will be refunded. However, the rejection of the petition is without prejudice to petitioner’s right to electronically file, at any time thereafter, a new petition to cancel the registration, and to plead therein one or more of the grounds specified in Trademark Act § 14(3), Trademark Act § 14(5), or Trademark Act § 14(6), 15 U.S.C. § 1064(3)  or 15 U.S.C. § 1064(5)15 U.S.C. §1064.

For information concerning the effect of fee and signature requirements on the timing of a petition to cancel, see TBMP § 308.02(b) and TBMP § 309.02(b).

308    Filing Fees

308.01    Fee for Filing Opposition

308.01(a)    In General

Trademark Act § 13(a), 15 U.S.C. § 1063(a)  Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office....

37 C.F.R. § 2.101 

• (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.
• * * * *
• (c) . . . . The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
• (d) An otherwise timely opposition cannot be filed via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition. A paper opposition that is not accompanied by the required fee sufficient to pay in full for each named party opposer for each class in the application for which registration is opposed may not be instituted. If time remains in the opposition period as originally set or as extended by the Board, the potential opposer may resubmit the opposition with the required fee.

  * * * *

  

The rules governing opposition fees are specified in 37 C.F.R. § 2.101(c) -37 C.F.R. § 2.101(d). The amount of the required filing fee is specified in 37 C.F.R. § 2.6(a)(17). The required fee must be submitted with the opposition. The filing date of an opposition (and, hence, the date of commencement of the opposition proceeding) is the date of electronic receipt in the Office of both the opposition with the required fee. [ Note 1.] In the rare instance of a permitted filing of a paper notice of opposition (granted by a Petition to the Director), the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, 37 C.F.R. § 2.197  and 37 C.F.R. § 2.198. [ Note 2.] See TBMP § 309.

The required fee must be submitted for each party joined as opposer for each class opposed, [ Note 3.] and if fewer than the total number of classes in the application are opposed, the classes opposed should be specified. See TBMP § 304. [ Note 4.]

For information on how to pay fees, see 37 C.F.R. § 2.206 -37 C.F.R. § 2.208, and TBMP § 118. For information on fee refunds, see 37 C.F.R. § 2.209, and TBMP § 119.

NOTES:

 1.   See 37 C.F.R. § 2.101(e). See also Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).

 2.   See 37 C.F.R. § 2.101(e).

 3.   See 37 C.F.R. § 2.101(c)  and 37 C.F.R. § 2.101(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("With opposers, regardless of the basis of the opposition application, the opposers identified in the ESTTA cover sheet determine the fees paid through ESTTA. Any additional opposers named only in the accompanying statement, for whom no fees have been paid, will not be part of the proceeding, regardless of the filing basis of the opposed application.").

 4.   See 37 C.F.R. § 2.101(d).

308.01(b)    Insufficient Fee

An otherwise timely opposition will not be accepted via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay, in full, for each named party opposer to oppose the registration of a mark in each class specified in the opposition. [ Note 1.]

A notice of opposition against an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA and may not under any circumstances be filed in paper form. [ Note 2.] See TBMP § 309.

A notice of opposition against an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126, must be filed electronically through ESTTA. [ Note 3.] In rare circumstances, an opposition may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.] See TBMP § 309. Absent the required fee, the opposition may not be instituted. [ Note 5.]

The institution notice will identify the parties and classes for which the required fees were submitted. See TBMP § 310.

The responsibility for filing proper fees rests with the party filing the fees.

NOTES:

 1.   See 37 C.F.R. § 2.101(d); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).

 2.   See 37 C.F.R. § 2.101(b)(3).

 3.   See 37 C.F.R. § 2.101(b)(1).

 4.   See 37 C.F.R. § 2.101(b)(2).

 5.   See 37 C.F.R. § 2.101(d). See also DFC Expo LLC v. Coyle, 121 USPQ2d 1903, 1904-05 (TTAB 2017) (among the deficiencies, filing was not accompanied by the required fee).

308.02    Fee for Filing Petition to Cancel

308.02(a)    In General

Trademark Act § 14, 15 U.S.C. § 1064  A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905....

* * * *

Trademark Act § 24, 15 U.S.C. § 1092   Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged by the registration of a mark on the supplemental register--

• (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
• (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.

  * * * *

  

37 C.F.R. § 2.111(d) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration(s) for which cancellation is sought (see § 2.6). A petition cannot be filed via ESTTA unless the petition is accompanied by a fee that is sufficient to pay in full for each named petitioner to seek cancellation of the registration(s) in each class specified in the petition. A petition filed in paper form that is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought may not be instituted.

(e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.

The rules governing cancellation fees are specified in 37 C.F.R. § 2.111(d). The amount of the required fee is specified in 37 C.F.R. § 2.6(a)(16). The required fee for a petition to cancel must be submitted with the petition; the effective filing date of a petition to cancel (and, hence, the date of commencement of the cancellation proceeding) is the date of electronic receipt in the Office of both the petition to cancel and the required fee. [ Note 1.] See TBMP § 308.02(b). In the rare instance when an otherwise timely paper filing of a petition to cancel, accompanied by the required fees, has been permitted on Petition to the Director, the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, 37 C.F.R. § 2.197, and 37 C.F.R. § 2.198. [ Note 2.]

The required fee must be submitted for each party joined as petitioner for each class sought to be cancelled, and if cancellation is sought for fewer than the total number of classes in the registration, the classes sought to be cancelled should be specified. [ Note 3.] See TBMP § 304.

For information on how to pay fees, see 37 C.F.R. § 2.206 -37 C.F.R. § 2.208, and TBMP § 118. For information on fee refunds, see 37 C.F.R. § 2.209, and TBMP § 119.

NOTES:

 1.   See 37 C.F.R. § 2.111(a), 37 C.F.R. § 2.111(d), and 37 C.F.R. § 2.111(e); Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966). Cf. Fred Beverages, Inc. v. Fred’s Capital Management Co., 605 F.3d 968, 94 USPQ2d 1958, 1960 (Fed. Cir. 2010) (Board’s decision denying petitioner’s motion for leave to amend cancellation petition, for failure to submit fee for amendment at time of filing the motion, reversed; case remanded to Board for further consideration of motion to amend).

 2.   See 37 C.F.R. § 2.111(e).

 3.   See 37 C.F.R. § 2.111(d).

308.02(b)    Insufficient Fee

A petition for cancellation must be filed electronically through ESTTA. [ Note 1.] See TBMP § 309.

An otherwise timely petition for cancellation will not be accepted via ESTTA unless the petition to cancel is accompanied by a fee that is sufficient to pay in full for each named party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation. [ Note 2.]

In those rare instances where an otherwise timely petition to cancel has been filed on paper, and such filing is not accompanied by any fee, or a sufficient fee to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the petition to cancel will be rejected and the Board will not institute a proceeding. [ Note 3.]

Except to the extent that the five-year period of Trademark Act § 14(3), 15 U.S.C. § 1064(3)  or Trademark Act § 14(5), 15 U.S.C. § 1064(5), or the three-year period of Trademark Act § 14(6), 15 U.S.C §1064(6)  is applicable in a particular case, there is no time limit for the filing of a petition to cancel an issued registration. Thus, if the petition is rejected for failure to submit a fee, or a fee that is sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the rejection of the petition is without prejudice to petitioner’s right to electronically file, at any time thereafter, a new petition to cancel provided that the five-year period, if applicable, has not expired, or, if expired, that the petition recites a ground permitted after the expiration of the three or five-year period. [ Note 4.]

The responsibility for filing proper fees rests with the party filing the fees. [ Note 5.]

NOTES:

 1.   See 37 C.F.R. § 2.111(c)(1). Board practice does not permit the filing of a petition for cancellation on CD-ROM. See 37 C.F.R. § 2.126; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42247 (August 1, 2007).

 2.   See 37 C.F.R. § 2.111(d). Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).

 3.   See 37 C.F.R. § 2.111(d).

 4.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (defective renewal application must be corrected and refiled within statutory time period); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

 5.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding defective renewal application); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

308.02(c)    Petition Filed by Federal Trade Commission

There is no fee for a petition filed by the Federal Trade Commission to cancel a registration on the Principal Register. [ Note 1.] Cf. TBMP § 303.04.

NOTES:

 1.   See Trademark Act § 14, 15 U.S.C. § 1064.

308.02(d)    Fee for Counterclaim

For information concerning fees for counterclaims, see TBMP § 313.02.

308.03    Fees for Joint Opposers or Petitioners

Two or more parties may file an opposition, or a petition for cancellation, jointly. However, the required fee must be submitted for each party joined as opposer, or petitioner, for each class in the application for which registration is opposed, or for each class in the registration for which cancellation is sought. [ Note 1.] See TBMP § 308.03. See also TBMP § 303. Oppositions and petitions filed through ESTTA must be accompanied by the proper fees for each party in the position of plaintiff, for each class in each application opposed or registration sought to be cancelled. [ Note 2.] See TBMP § 308.03. If all party plaintiffs are identified during the ESTTA filing process, the electronic filing system calculates the proper fees and will not institute the proceeding until the appropriate fees have been paid. [ Note 3.] In rare circumstances where an opposition or petition to cancel is filed on paper by Petition to the Director, the opposition or cancellation may not be instituted if insufficient fees have been provided to pay in full for each named party plaintiff for each class in the application sought to be opposed, or for each party plaintiff for each class in the registration sought to be cancelled. [ Note 4.]

NOTES:

 1.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

 2.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 3.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d). Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (where only one opposer was identified during the filing process, only one was charged; second named opposer not considered party to proceeding); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009) (second petitioner not added as party plaintiff due to failure to pay additional fee). Cf. Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).

 4.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

308.04    Fees for Proceeding Against Multiple Class Application or Registration

The required opposition or cancellation fee must be submitted for each party joined as plaintiff for each class sought to be opposed or cancelled. [ Note 1.] See TBMP §308.04. See also TBMP § 304. Oppositions and petitions filed through ESTTA must be accompanied by the proper fees for each party in the position of plaintiff, for each class in each application opposed or registration sought to be cancelled. [ Note 2.] See TBMP §308.04. In the rare circumstances where an opposition or petition to cancel is filed on paper by the Petition to the Director, the opposition or cancellation may not be instituted if insufficient fees have been provided to pay in full for each named party plaintiff for each class in the application sought to be opposed, or for each party plaintiff for each class in the registration sought to be cancelled. [ Note 3.]

NOTES:

 1.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 2.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

 3.   See 37 C.F.R. § 2.101(d)  and 37 C.F.R. § 2.111(d).

308.05    Fees for Consolidated and Combined Complaints

When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, different applications owned by the same defendant. However, the required fee must be submitted for each party joined as opposer for each class in which registration is opposed in each application against which the opposition is filed. [ Note 1.] See TBMP § 305 and TBMP §308.05.

Similarly, when appropriate, a party may seek to cancel, in a single (i.e., "consolidated") petition for cancellation, different registrations owned by the same defendant. Again, the required fee must be submitted for each party joined as petitioner, for each class sought to be cancelled, in each registration against which the petition for cancellation is filed. [ Note 2.] See TBMP § 305 and TBMP §308.05.

A party may not file a single pleading combining a notice of opposition to one or more applications, and a petition to cancel one or more registrations, even when each subject application and registration is owned by the same defendant. See TBMP § 305.02. Filing by ESTTA is required, and no ESTTA form exists for such a combined complaint. [ Note 3.] However, to achieve a comparable result a filer may separately electronically file a notice of opposition and a petition for cancellation and simultaneously request consolidation. [ Note 4.] It is recommended to file the request for consolidation in a separate submission in ESTTA.

See TBMP § 305 for more information on consolidated and combined complaints and filing in ESTTA. For information concerning motions to consolidate proceedings, see TBMP § 511.

NOTES:

 1.   See 37 C.F.R. § 2.104(b).

 2.   See 37 C.F.R. § 2.112(b).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016). ("[No] exception to the requirement to file by ESTTA will be made for a combined filing, and prior case law allowing for this type of combined notice of opposition and petition for cancellation is superseded by the mandatory online filing requirement.").

 4.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016).

309    Form and Content of Oppositions and Petitions to Cancel

309.01    In General

37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. ...

• (1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.
• (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
• (3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
• * * * *

37 C.F.R. § 2.111(b)  Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

* * * *

37 C.F.R. § 2.111(c)(1) A petition to cancel a registration must be filed through ESTTA.

37 C.F.R. § 2111(c)(2)  In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.

37 C.F.R. § 2.116(c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.

37 C.F.R. § 2.119(e) Every submission filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned submission will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the notification of this defect by the Office.

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.
  • (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
  • (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
  
• (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. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
  • (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
  • (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
  • (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
  • (4) A paper submission must not be stapled or bound;
  • (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
  • (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
  
• (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
• * * * *

Submissions, including oppositions and petitions to cancel, must be made to the Board electronically via ESTTA. [ Note 1.] An opposition to an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not under any circumstances be filed in paper form [ Note 2.], but if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, an opposition to an application based on Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126, may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 3.] Similarly, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, a petition to cancel against a § 1 or § 44 registration or a § 66(a) registered extension of protection may be filed on paper, accompanied by a Petition to the Director and the required fee. [ Note 4.]

The notice of opposition, or petition to cancel, corresponds to the complaint in a court proceeding. [ Note 5.] For purposes of simplicity, the term "complaint" is often used hereafter in this section to refer to a notice of opposition or a petition to cancel.

NOTES:

 1.   See 37 C.F.R. § 2.126(a); 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.111(c)(1).

 2.   See 37 C.F.R. § 2.101(b)(3). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Section 66(a) application must be filed through ESTTA); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same).

 3.   See 37 C.F.R. § 2.101(b)(2).

 4.   37 C.F.R. § 2.111(c)(2).

 5.   See 37 C.F.R. § 2.116(c).

309.02    Form of Complaint

The form of a complaint must meet the general requirements for submissions to the Board as set forth in 37 C.F.R. § 2.126. See TBMP § 106.03. When the complaint is filed electronically through ESTTA, the text in the electronic submission must be in at least 11-point type and double-spaced, and any exhibits pertaining to the electronic submission must be made electronically as an attachment to the complaint and be clear and legible. [ Note 1.]

An opposition against an application filed pursuant to Trademark Act § 1, 15 U.S.C. § 1051, Trademark Act § 44, 15 U.S.C §1126  or Trademark Act § 66(a), 15 U.S.C §1141f  must be filed electronically through ESTTA. [ Note 2.] Similarly, a petition for cancellation, must be filed electronically through ESTTA. [ Note 3.] In the rare instances when a complaint is filed on paper, the submission, including any exhibits, must be in at least 11-point type and double-spaced, may not be stapled or bound or have any extruding tabs or other such devices, and must otherwise comply with the requirements of 37 C.F.R. § 2.126(b).

NOTES:

 1.   See 37 C.F.R. § 2.126(a)(1); 37 C.F.R. § 2.126(a)(2).

 2.   See 37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3).

 3.   37 C.F.R. § 2.111(c)(1).

309.02(a)    Format for Complaint

Parties are required to use ESTTA to commence the proceeding and for general filing purposes. [ Note 1.] Using ESTTA, a person can complete and submit a notice of opposition or petition for cancellation over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a filing. In the rare circumstances that a filing through ESTTA cannot be accomplished, see 37 C.F.R. § 2.101(b)(2)  and 37 C.F.R. § 2.111(c)(2), the ESTTA form (docket) "cover sheet" created using ESTTA may be completed and then be printed out for mailing to the Board along with the notice of opposition or petition to cancel, accompanied by the requirements for such a paper filing. [ Note 2.] If filed on paper, the certificate of mailing by first-class mail procedure described in 37 C.F.R. § 2.197  and the Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are both available. Please Note: Oppositions against § 66(a) applications cannot be filed on paper under any circumstances.

The Board views the ESTTA filing form and the attached pleading as comprising a single document or paper being filed with the Board. [ Note 3.] Upon filing via ESTTA, the filer will receive an email acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information. After the proceeding is instituted, whenever a party submits a filing via ESTTA, the ESTTA cover sheet is automatically "pre-populated" with the party’s name as that party is listed in TTABVUE . The electronic files of the Board are accessible on the Internet via TTABVUE, although confidential filings will not be made available for public viewing. See TBMP § 108, TBMP § 120.02 and TBMP § 121.

An opposition against an application based on Trademark Act § 66(a), 15 U.S.C. § 1141f(a), must be filed electronically through ESTTA. [ Note 4.] ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"). Such essential information includes: 1) the specific goods and/or services in the application which are being opposed; 2) the ground(s) for the opposition; 3) the application or registration number(s) for any mark owned and relied upon by opposer; and 4) any prior common law rights in a mark(s) relied upon by opposer and associated goods or services. [ Note 5.] Only the information provided on the ESTTA form is sent to WIPO. [ Note 6.]

Complaints in oppositions to applications that have other filing bases and petitions to cancel, in the rare circumstances that they are filed on paper, (accompanied by a Petition to the Director and the required fee), need not follow a particular format, but must meet the requirements of 37 C.F.R. § 2.126(b)  for paper submissions and include the necessary information.

The complaint (which in ESTTA is the attachment) typically includes the following information:

Heading: The complaint should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD."

Identification of subject application or registration: The heading should be followed by information identifying the application or registration that is the subject of the complaint with the wording "Serial No.______" for an opposition or "Registration No.______" for a petition to cancel.

Name of proceeding: The application or registration number should be followed by the name of the proceeding (i.e., "ABC Corporation v. XYZ Company") and the wording "Opposition No. ______" or "Cancellation No. ______."

Title of Paper: The title should describe the nature of the paper (i.e., "Notice of Opposition" or "Petition to Cancel").

Plaintiff information: The complaint should also include plaintiff’s name, entity type (i.e., individual, partnership, corporation, association, etc.), and business address; the names of the partners, if the plaintiff is a partnership, or the state or country of incorporation, if the plaintiff is a corporation.

Registrant information in petition to cancel:A petition to cancel should indicate the name and correspondence address and the current email address(es) of the current owner of record of the registration. [ Note 7.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [ Note 8.] The TSDR display of information includes owner information and information on recorded assignments. The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, and the assignment has been recorded, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2). Plaintiffs are encouraged to provide information about a new owner, which may not be in the Office’s TSDR database, even if there is a domestic representative. Also, plaintiffs are encouraged to provide current contact information for attorneys, or in the case of registrations under Trademark Act § 66(a) , current contact information for the designated representative for the international registration, which may not be in the Office’s TSDR database. 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.]

Substance of complaint: The complaint must also include a pleading of the substance (i.e., entitlement to a statutory cause of action and grounds) of the complaint. See TBMP § 309.03.

Signature: The complaint must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).

NOTES:

 1.   37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.111(c)(1); 37 C.F.R. § 2.126(a).

 2.   37 C.F.R. § 2.101(b)(2)  and 37 C.F.R. § 2.111(c)(2).

 3.   See PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) ("Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board"). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) ("[T]he ESTTA generated filing form … is considered part of the plaintiff’s initial pleading"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   37 C.F.R. § 2.101(b)(3).

 5.   See Destileria Serralles, Inc. v. Kabushiki Kaisha Donq, 125 USPQ2d 1463, 1466-67 (TTAB 2017) (ESTTA filing system permits a plaintiff relying on common law marks to identify them); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011).

 6.   See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).

 7.   See 37 C.F.R. § 2.112(a). See also Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153, 1155 (N.D. Cal. 1996) (the proper defendant in suit for cancellation of a registration is the owner of that registration, not an exclusive licensee).

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

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

309.02(b)    Signature of Complaint

The complaint need not be verified, but it must be signed by the plaintiff or by the plaintiff’s attorney, as specified in 37 C.F.R. § 11.1, or other authorized representative, as specified in 37 C.F.R. § 11.14(b). [ Note 1.] See TBMP § 106.02 and TBMP § 114.06. Electronic signatures pursuant to 37 C.F.R. § 2.193(c)  are required for complaints submitted electronically via ESTTA. [ Note 2.] The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [ Note 3.] Thus, a plaintiff’s electronic signature on the ESTTA filing form serves as its signature for the entire complaint being filed, including in the absence of a signature on any attachment to the filing form. [ Note 4.]

If an attorney signs the complaint, it need not be accompanied by a written power of attorney, but if a written power of attorney is filed, the plaintiff must sign it. If a plaintiff signing for itself is a partnership, the signature must be made by a partner. If a plaintiff signing for itself is a corporation or similar juristic entity, the signature must be made by an officer of the plaintiff who has authority to sign for the plaintiff and whose title is given. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as plaintiff, if plaintiff is an individual; as counsel for plaintiff; as a partner of plaintiff, if plaintiff is a partnership; as an officer of plaintiff identified by title, if plaintiff is a corporation; etc.).

Although a complaint must be signed, an unsigned or improperly signed complaint will not be refused consideration for that reason if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 5.] See TBMP § 106.02.

However, Trademark Act § 14, 15 U.S.C. § 1064, limits, after a specified five-year period, the grounds on which certain Principal Register registrations may be cancelled. [ Note 6.] See TBMP § 307.02(a). If an unsigned petition to cancel such a registration is filed prior to the expiration of the five-year period, but a signed copy thereof is not filed until after the expiration of the period, the petition can be entertained by the Board only to the extent that it pleads a ground for cancellation permitted after the expiration of the five-year period. [ Note 7.] Cf. TBMP § 308.02(b). Although whenever it comes to the Board’s attention, the Board makes every effort to notify petitioners of unsigned complaints before the expiration of any applicable statutory deadline, so that the informality may be corrected prior to the deadline, the Board has no obligation to do so, and cannot assume the burden of discovering filing errors within any specified time. [ Note 8.]

NOTES:

 1.   See 37 C.F.R. § 2.101(b)  and 37 C.F.R. § 2.111(b). See also Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285, 1286 n.3 (TTAB 2008). Cf. Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 2.   See 37 C.F.R. § 2.101(b)  and 37 C.F.R. § 2.111(b).

 3.   PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005) ("Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board.").See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) ("[T]he ESTTA generated filing form … is considered part of the plaintiff’s initial pleading."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005).

 5.   See 37 C.F.R. § 2.119(e); Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (signatory not authorized under Trademark Rules, Board applies opportunity to cure provision in § 2.119(e) to improperly signed papers).

 6.   See Trademark Act § 14, 15 U.S.C. § 1064; 37 C.F.R. § 2.111(b).

 7.   Cf., e.g., cases involving former requirement for verification, Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (the filing date of a petition to cancel is the date of receipt in the USPTO of the verified petition and filing fee); Texas Instruments Inc. v. Conklin Instrument Corp., 161 USPQ 740, 741 (TTAB 1969) (unverified petition timely filed but ineffective; verified substitute petition untimely). Cf. also In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992) (timely payment of filing fee for statement of use is statutory and cannot be waived).

 8.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding rejection of renewal application); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992) (regarding rejection of statement of use); and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

309.02(c)    Service of Complaint

A Board proceeding commences when an opposer or petitioner files its complaint with the Board, together with the required fee. [ Note 1.]

Service of the complaint is provided by the Board in conjunction with the notice of institution. [ Note 2.]

For information on service of the opposition on applicant, see TBMP § 309.02(c)(1). For information on service of the petition to cancel on respondent, see TBMP § 309.02(c)(2). For information on service of copies of an application for concurrent use registration, see TBMP § 1106.04.

NOTES:

 1.   See 37 C.F.R. § 2.101(a)  and 37 C.F.R. § 2.111(a).

 2.   See 37 C.F.R. § 2.105(a)  and 37 C.F.R. § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.").

309.02(c)(1)    Service of Opposition on Applicant

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.

37 C.F.R. § 2.101(e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.

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.

An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. [ Note 1.]

When an opposer files its notice of opposition with the Board, the opposition, including any exhibits, need not be served by the opposer on the defendant. Rather, the Board effects service of the complaint on the defendant. The Board provides notice to the defendant of the opposition proceeding by providing, in the notice of institution, a web link or web address to access the electronic proceeding record, and this constitutes service of the notice of opposition. [ Note 2.] Applicants will receive notification of the Board proceeding by email. [ Note 3.]

As a reminder, 37 C.F.R § 2.18(c)  requires applicants and parties to 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.

The filing date of the notice of opposition is the date of electronic receipt in the Office of the notice and the required fee. [ Note 4.] However, in the rare circumstance that a notice of opposition is filed on paper, and the paper filing is permitted by the Director, on petition, if the notice of opposition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service (USPS) in accordance with 37 C.F.R. § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS [ Note 5.], unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 6.] The Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express® procedure described in 37 C.F.R. § 2.198  are available for the filing of a notice of opposition on paper. [ Note 7.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [ Note 8.]

For information on filing fees see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.

NOTES:

 1.   37 C.F.R. § 2.101(a).

 2.   37 C.F.R. § 2.105(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding Record.").

 3.   See, e.g., MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69953 (October 7, 2016) ("notice of the opposition will be sent to the ‘‘email or correspondence address’’ of the appropriate recipient").

 4.   See 37 C.F.R. § 2.101(e).

 5.   See 37 C.F.R § 2.198(a).

 6.   See 37 C.F.R § 2.198(b).

 7.   See 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).

 8.   37 C.F.R §2.195 (c); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).

309.02(c)(2)    Service of Petition on Respondent

37 C.F.R. § 2.111 Filing petition for cancellation.

• (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.

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.

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 cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [ Note 1.]

When petitioner files its petition to cancel with the Board, the petitioner need not serve a copy of the petition on the owner of record for the registration at the owner’s address of record in the Office. Rather, the Board effects service of the complaint on defendant in a cancellation proceeding. The Board provides notice to the defendant of the cancellation proceeding by providing, in the notice of institution, a web address to access the electronic proceeding record, and this constitutes service of the petition to cancel. [ Note 2.] In view of system enhancements to facilitate email service, the Board now serves defendants by email unless there is no email address of record for the defendant, in which case service is by U.S. mail. [ Note 3.]

Please Note: With respect to a registered extension of protection under Trademark Act § 66(a), 15 U.S.C. § 1141f, while the Board will effect service on the owner of the registration, see 37 C.F.R. § 2.113(b), the Board will endeavor to forward a courtesy copy of the notice to the international registration holder’s designated representative which will include a web link or web address to access the electronic proceeding record. [ Note 4.]

As a reminder, 37 C.F.R § 2.18(c)  requires registrants and parties to 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.

The filing date of the petition is the date of electronic receipt in the Office of the petition and the required fee. [ Note 5.] However, in the rare circumstance that a petition to cancel is filed on paper and the paper filing is permitted by the Director on petition, if the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service in accordance with 37 C.F.R. § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS, [ Note 6.], unless the "date in" date cannot be determined, in which case the date the petition is received in the Office is considered the filing date of the petition to cancel. [ Note 7.] The Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198  are available for the filing of a petition to cancel. [ Note 8.]

For information on filing fees, see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.

NOTES:

 1.   See 37 C.F.R. § 2.111(a).

 2.   See 37 C.F.R. § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.").

 3.   See, e.g., MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016) ("[I]n cancellation proceedings, the Board intends to serve by U.S. mail, pending system enhancements to facilitate email service at a later date.").

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

 5.   37 C.F.R. § 2.111 (e).

 6.   See 37 C.F.R § 2.198(a).

 7.   See 37 C.F.R § 2.198(b).

 8.   See 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).

309.03    Substance of Complaint

Trademark Act § 18, 15 U.S.C. § 1068  In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part. ...

37 C.F.R. § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.

37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may filed an opposition addressed to the Trademark Trial and Appeal Board.

* * * *

37 C.F.R. § 2.104(a) The opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for opposition.

* * * *

37 C.F.R. § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.

* * * *

37 C.F.R. § 2.112(a) The petition for cancellation must set forth a short and plain statement showing why the petitioner believes he, she or it is or will be damaged by the registration, state the ground for cancellation, and indicate, to the best of petitioner’s knowledge, the name and address, and a current email address(es), of the current owner of the registration.

* * * *

37 C.F.R. § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.

309.03(a)    In General

309.03(a)(1)    Scope of Opposition and Petition to Cancel

In an opposition, the registration sought by an applicant may be opposed in whole, or in part. Similarly, a petitioner may seek to cancel a registration in whole, or in part. [ Note 1.] See TBMP § 309.03(d). However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use registration proceeding. [ Note 2.] See TBMP Chapter 1100.

An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. Because ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"), the scope of the goods and services being opposed are limited to those identified in the ESTTA-generated cover sheet. [ Note 3.] For the same reason, and because only the information on the ESTTA-generated cover sheet is forwarded to WIPO automatically without review, the grounds for a notice of opposition are limited to those selected and reflected on the ESTTA-generated cover sheet regardless of what any accompanying notice of opposition asserts. [ Note 4.]

The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.

NOTES:

 1.   See Trademark Act § 18, 15 U.S.C. § 1068.

 2.   See 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c).

 3.   37 C.F.R. § 2.104(c). See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011) ("… with respect to Section 66(a) applications, all oppositions must be confined to the opposed goods identified … on the ESTTA-generated opposition forms."); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016).

 4.   37 C.F.R. § 2.104(c); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011). See also Destileria Serralles, Inc. v. Kabushiki Kaisha Donq, 125 USPQ2d 1463, 1466-67 (TTAB 2017) (opposer could not amend notice of opposition against § 66(a) application to add common law trademark rights not previously identified on the ESTTA cover sheet; ESTTA filing system permits an opposer relying on common law marks to identify them); Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (ESTTA form controls scope of permissible amendments to claims against § 66(a) application, because opposer did not limit grounds to any particular class on ESTTA form, opposer may seek leave to amend the attached pleading to assert those grounds against all three classes even though original attached pleading did not); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016).

309.03(a)(2)    Elements of Complaint – In General

A notice of opposition must include (1) a short and plain statement of the reason(s) why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s entitlement to a statutory cause of action -- see TBMP § 303.03 and TBMP § 309.03(b)), and (2) a short and plain statement of one or more grounds for opposition. [ Note 1.]

Similarly, a petition to cancel must include (1) a short and plain statement of the reason(s) why petitioner believes it is or will be damaged by the registration sought to be cancelled (i.e., petitioner’s entitlement to a statutory cause of action -- see TBMP § 303.03 and TBMP § 309.03(b)) and (2) a short and plain statement of the ground(s) for cancellation. [ Note 2.]

A pleading should include enough detail to give the defendant fair notice of the basis for each claim. [ Note 3.] The elements of each claim should be stated simply, concisely, and directly, and taken together "state a claim to relief that is plausible on its face." [ Note 4.] See TBMP § 503.02.

All averments should be made in numbered paragraphs, the contents of each of which should be limited as far as practicable to a statement of a single set of circumstances. [ Note 5.] Each claim founded upon a separate transaction or occurrence should be stated in a separate count whenever a separation would facilitate the clear presentation of the matters pleaded. [ Note 6.] A paragraph may be referred to by number in all succeeding paragraphs, and statements in the complaint may be adopted by reference in a different part of the complaint. [ Note 7.]

A plaintiff may state as many separate claims as it has, regardless of consistency; a plaintiff may also set forth two or more statements of a claim alternatively or hypothetically, either in one count or in separate counts. [ Note 8.]

When two or more statements are made in the alternative, the sufficiency of each is determined independently. The fact that one of them may be insufficient does not mean that the other(s) is (are) also insufficient. [ Note 9.]

Evidentiary matters (such as, for example, lists of publications or articles in which a term sought to be registered by an applicant is alleged to be used descriptively) should not be pleaded in a complaint. They are matters for proof, not for pleading. [ Note 10.]

Factual allegations made in the pleadings are not evidence of the matters alleged except insofar as they might be deemed to be admissions against interest. [ Note 11.]

In inter partes proceedings before the Board, as in civil cases before the United States district courts, all pleadings are so construed as to do justice. [ Note 12.]

For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (5th ed. March 2022 update), for oppositions and cancellations, respectively. For a discussion of the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP § 307.01 and TBMP § 307.02 and 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (5th ed. March 2022 update).

NOTES:

 1.   See 37 C.F.R. § 2.104(a); Young v. AGB Corp. 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (standing and grounds are distinct inquiries; allegation of "economic damage" while relevant to standing does not constitute a ground); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allegation of priority without direct or hypothetical pleading of likelihood of confusion is insufficient pleading of Trademark Act § 2(d), 15 U.S.C. § 1052(d)). Cf. Fed. R. Civ. P. 8(a).

 2.   See 37 C.F.R. § 2.112(a); Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982); DrDisabilityQuotes.com, LLC v. Krugh, 2021 USPQ2d 262, at *5 (TTAB 2021) (setting forth standard for pleading, including pleading fraud "with particularity"); Kelly Services Inc. v. Greene’s Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Cf. Fed. R. Civ. P. 8(a).

 3.   See Johnson v. City of Shelby, 574 U.S. 10, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). See also Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1349 (TTAB 2017) (likelihood of confusion claim based on the claimant’s use of two marks conjointly must be pleaded clearly enough to provide fair notice of the claim to the defendant); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1562 (TTAB 2011) (opposer’s assertion of use on "their related components" in connection with "lighting control panels and electrical light dimmers" provided fair notice to applicant of the scope of opposer’s asserted goods at common law); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1471 (TTAB 1993), recon. denied, 36 USPQ2d 1328, 1330 (TTAB 1994) (although pleading need not allege particular "magic words," pleading of mere descriptiveness in this case could not be logically interpreted as asserting that applicant is not the owner of the mark); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (petitioner’s Trademark Act § 2(a), 15 U.S.C. § 1052(a) allegations were merely conclusory and unsupported by factual averments).

 4.   Johnson v. City of Shelby, 574 U.S. 10, 135 S. Ct. 346, 347 (2014) (per curiam) (plaintiff’s "[h]aving informed the city of the factual basis for their complaint, they were required to do no more to stave off threshold dismissal for want of an adequate statement of their claim"); Ashcroft v. Iqbal, 556 U.S. 662 (2009),quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007); Fed. R. Civ. P. 8(a). See also Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1016 (TTAB 2018) (Board follows federal notice pleading standard which includes the requirement that the complaint "state a claim to relief that is plausible on its face"); 5 C. WRIGHT, A. MILLER & M. KANE, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1219 (4th ed. October 2021 update) ("The federal rules effectively abolished the restrictive theory of the pleadings doctrine, making it clear that it is unnecessary to set out a legal theory for the plaintiff’s claim for relief.").

 5.   See Fed. R. Civ. P. 10(b); Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 1974) (while paragraphs were numbered, none of the paragraphs were limited to a statement of a single set of circumstances).

 6.   See Fed. R. Civ. P. 10(b); Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1107 n.9 (2016) (where opposer set forth a single set of broad allegations regarding pleaded marks and registrations, Board directed opposer, if amended notices of opposition were filed, to set forth each pleaded mark and registration in a separate paragraph so that Applicant could separately admit or deny the allegations with respect to each mark and registration); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 (TTAB 2010) ("claims must be separately stated . . . . We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground;" motion to amend application filed under Madrid Protocol denied).

 7.   See Fed. R. Civ. P. 10(b) and (c).

 8.   See Fed. R. Civ. P. 8(d)(2) and (3); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion which is appropriate where petitioner’s standing is based on its inability to secure a registration, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as basis for standing).

 9.   See Fed. R. Civ. P. 8(d)(2).

 10.   See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (if evidentiary facts are pleaded, and they aid in giving a full understanding of the complaint as a whole, they need not be stricken).

 11.   See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1755 (TTAB 2009) (allegations in defendant’s application are not facts and must be proven at trial); Baseball America Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the pleadings are not evidence of the matters alleged, except insofar as they might be deemed to be admissions against interest). Cf. Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (opposer’s attempt to make registrations of record by attaching to its notice of opposition printouts from the Office’s electronic database records showing the current status and title of its registrations would have been sufficient under current version of 37 C.F.R. § 2.122(d)(1)).

 12.   See 37 C.F.R. § 2.116(a); Fed. R. Civ. P. 8(e); The Scotch Whiskey Association v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1874 (TTAB 2011).

309.03(b)    Entitlement to a Statutory Cause of Action

Any person who believes it is or will be damaged by registration of a mark has an entitlement to a statutory cause of action (previously referred to as "standing") to file a complaint. [ Note 1.] See TBMP § 303 In 2020, the U.S. Court of Appeals for the Federal Circuit adopted the framework set forth by the U.S. Supreme Court in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061 (2014). Lexmark established two requirements for determining whether a party is entitled to bring or maintain a statutory cause of action: a party must demonstrate (i) an interest falling within the zone of interests protected by the statute, and (ii) proximate causation. Despite the change in nomenclature, prior Federal Circuit and Board decisions interpreting Sections 13 and 14 of the Trademark Act, 15 U.S.C. § 1063 and 15 U.S.C § 1064, remain equally applicable. [ Note 2.] There is no meaningful, substantive difference between the analytical frameworks in the Board’s prior "standing" case law, under which a plaintiff must show a real interest in the proceeding and a reasonable basis for its belief in damage [ Note 3.], and the current "entitlement" case law, under which a plaintiff must show an interest falling within the zone of interests protected by statute and damage proximately caused by registration. [ Note 4.] In other words, demonstrating a real interest in opposing or cancelling a registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the registration of a mark demonstrates damage proximately caused by registration of the mark. [ Note 5.].

Please Note:: Although there has been a change in nomenclature, use of the term "standing" may appear interchangeably with the wording "an entitlement to a statutory cause of action" in parentheticals to case citations throughout the manual. Notwithstanding, parties should refer to the issue in submissions filed in Board proceedings as "entitlement to a statutory cause of action."

At the pleading stage, all that is required is that a plaintiff allege facts sufficient to show it has an interest within the zone of interests protected by statute, i.e., a "real interest" and damage proximately caused by registration, i.e., a "reasonable basis" for its belief that it would suffer some kind of damage if the mark is registered. [ Note 6.] See also TBMP § 303.06 regarding pleading of an entitlement to a statutory cause of action by joint plaintiffs. To plead a zone of interest protected by statute, referred to in prior case law as a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. [ Note 7.] The allegations in support of plaintiff’s belief of damage proximately caused by registration must have a reasonable basis "in fact." [ Note 8.]

Allegations in support of an entitlement to a statutory cause of action which may be sufficient for pleading purposes must later be affirmatively proved by the plaintiff at trial (or on summary judgment). [ Note 9.] However, there is no requirement that actual damage be pleaded or proved, or that plaintiff show a personal interest in the proceeding different or "beyond that of the general public" [ Note 10.], in order to establish an entitlement to a statutory cause of action or to prevail in an opposition or cancellation proceeding. See TBMP § 303.03.

An interest falling within the zone of interests protected by statute and damage proximately caused by the registration of a mark may be found, for example, where plaintiff pleads (and later proves):

A claim of likelihood of confusion that is not wholly without merit [ Note 11.], including claims based upon current ownership of a valid and subsisting registration [ Note 12.] or prior use of a confusingly similar mark. [ Note 13.] A registration on the Supplemental Register may be sufficient to establish an entitlement to a statutory cause of action [ Note 14.];

Plaintiff has been refused registration of its mark because of defendant’s registration, or has been advised that it will be refused registration when defendant’s application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant’s registration [ Note 15.];

Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of defendant’s registration [ Note 16.];

Defendant has relied on its ownership of its application or registration in another proceeding between the parties, or defendant has asserted a likelihood of confusion in another proceeding between the parties involving the same marks. [ Note 17.]

A counterclaimant’s entitlement to a statutory cause of action to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [ Note 18.] See also TBMP § 313.03.

A plaintiff need not assert proprietary rights in a term in order to have an entitlement to a statutory cause of action. [ Note 19.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its entitlement to a statutory cause of action by alleging that it is engaged in the sale of the same or related products or services (or that the product or service in question is within the normal expansion of plaintiff’s business) and that the plaintiff has an interest in using the term descriptively in its business. (That is, plaintiff may plead that it is a competitor.) [ Note 20.] Allegations that plaintiff is a competitor may be made in connection with other claims as well. [ Note 21.]

If a plaintiff can show an entitlement to a statutory cause of action on one ground, it has the right to assert any other grounds in an opposition or cancellation proceeding. [ Note 22.]

NOTES:

 1.   See Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063  and 15 U.S.C. § 1064.

 2.   See, e.g., Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671(2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 n.34 (TTAB 2020); Major League Soccer, LLC v. F.C. International Milano S.p.A., 2020 USPQ2d 11488, at *5 n.18 (TTAB 2020); Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *1-2 (TTAB 2020). But see Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 2021 USPQ2d 1069, at *3 (Fed. Cir. 2021) (when a decision of an administrative agency is appealed in federal court, the appellant also must satisfy the requirements of Article III standing).

 3.   Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014).

 4.   Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4-8 (Fed. Cir. 2020)., cert denied, 141 S. Ct. 2671 (2021).

 5.   Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020) (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *7 (Fed. Cir. 2020)).

 6.   Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020) ("we discern no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana."), cert denied, 141 S. Ct. 2671 (2021). See also Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987) on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (trade association has standing to maintain opposition); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984).

Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *3-4 (TTAB 2019) (plaintiff’s endeavors and the relationship between the parties establish plaintiff’s reals interest and reasonable basis for belief of damage); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (allegations that term is an appellation of origin for Cuban cigars owned by plaintiff and that plaintiff will be damaged by continued registration of designation is sufficient to allege plaintiff’s real interest in the case for standing); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011) (in view of arguable similarities in the marks and relatedness of the goods, opposer has shown a reasonable belief of damage and that it has a real interest in the case); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (plaintiff does not have to prove claims or actual damage to establish standing); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8 (TTAB 2009) (licensees have standing to oppose); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing based on parties’ agreement); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (standing based on showing of commercial interest in the mark); Association pour la Defense et la Promotion de L’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (standing established where (1) individual named in the mark died in 1985, (2) representative is the granddaughter of the named individual and one of the heirs, (3) representative is a member of the petitioner committee and the purpose of the committee is to defend the rights and the work of the named individual, and (4) petitioners claim that the mark at issue falsely suggests a connection with the named individual).

Cf. NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1033 (TTAB 2013) ("The fact that the word ‘Huck’ may be used in respondent’s written materials that happen also to bear respondent’s registered mark [XBOX 360], a mark not remotely similar to the word ‘Huck,’ does not establish a basis upon which to allege standing to cancel the registration of the subject mark."); Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1782-83 (TTAB 2010) (even assuming petitioner has a "real interest" and "personal stake" in taking photographs of goats on a roof, there is no allegation that respondent’s mark prevents petitioner from doing so or how his interest in taking such photographs relates to respondent’s services).

 7.   Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *5-6 (TTAB 2019) (personal stake where plaintiff is named after family and owned by a family member using the mark for keyboard instruments), aff'd 11 F.4th 1363. 2021 USPQ2d 913 (Fed. Cir. 2021); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875-76 (TTAB 2011) (Cuban entity has sufficiently alleged standing where claims do not require assertion of a property interest, a specific license to cancel the registration was issued by the U.S. State Department to plaintiff, and standing may be rooted in enforceable rights despite the existence of an embargo); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (Cuban entity has standing although it does not and cannot engage in any business in the United States due to the embargo on Cuban goods).

 8.   Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (stating that the belief of damage alleged by plaintiff must be more than a subjective belief) (citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972)). See also Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1783 (TTAB 2010) (petitioner’s alleged belief that he would be damaged by respondent’s registrations is not reasonable).

 9.   See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1029 (Fed. Cir. 1999) (citing Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982)). See also, e.g., Philanthropist.com, Inc. v. General Conference Corp. of Seventh-day Adventists, 2021 USPQ2d 643, at *16 (TTAB 2021) (petitioner did not maintain a reasonable belief in damage following conclusion of proceeding brought by respondent under the Uniform Domain Name Resolution Procedure (UDRP)), appeal docketed, No. 21-2208 (Fed. Cir. Aug. 6, 2021); Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388 (TTAB 2020) (summary judgment denied because of the existence of a genuine dispute of material fact as to plaintiff’s entitlement to a statutory cause of action); Stephen Slesinger Inc. v. Disney Enterprises Inc., 98 USPQ2d 1890, 1895 n.15 (TTAB 2011) (no standing in Board proceeding where district court decided plaintiff lacked an ownership interest in the marks), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert den. 134 S. Ct. 125 (2013); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (opposer established valid ground for grant of summary judgment in its favor; opposer allowed time to prove its standing); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (failure to prove standing); and Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (at final decision, inquiry is not whether pleading of standing is sufficient but whether allegations have been proven).

 10.   See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) ("The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue."). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Blackhorse v. Pro-Football, Inc., 98 USPQ2d 1633, 1638 (TTAB 2011) (no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in the proceeding); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (plaintiff has shown that it is not a mere intermeddler).

 11.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (plaintiff may show standing based on common law rights in mark that is distinctive, inherently or otherwise); Bausch & Lomb Incorporated v. Karl Storz GmbH & Co KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing established by introduction of parties’ agreement); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (standing established by properly making pleaded registrations of record); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB 2008) (standing based on ownership of prior registration not voided by allegation, even if true, that mark is generic); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1502 (TTAB 2008) (standing established by testimony as to prior use); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007) (standing based on ownership of pleaded registrations); Chicago Bears Football Club Inc. v. 12TH Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007) (exclusive licensee has standing); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (standing based on common law use of mark); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (standing established by properly making pleaded registration of record and asserting non-frivolous likelihood of confusion claim); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1964 (TTAB 2007) (cancellation petitioner’s standing based on prior common law use of elements contained in defendant’s registered marks); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993); The Nestle Co. Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1087 (TTAB 1987); Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (allegation of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).

 12.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (prior registration but not priority in use); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *4 (TTAB 2019) (pleaded registration made of record); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (same); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (same); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (standing established because pleaded registrations are of record on a motion for involuntary dismissal); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (pleaded registrations of record); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1301 (TTAB 2010) (same); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (same); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (same); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (same); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008) (standing established by making of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1721 (TTAB 2008) (opposer alleged ownership of application that issued during proceeding and introduced a certified copy of subsequent registration at trial showing current status and title in opposer’s name); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (pleaded registrations made of record); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.10 (TTAB 2007) (opposer’s allegations of ownership of pleaded registrations insufficient to prove standing); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (pleaded registrations made of record; cancelled registration has no probative value); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (pleaded registrations made of record); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleaded registrations made of record); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (pleaded registrations made of record); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (parties stipulated to status and title of opposer’s pleaded registrations and applications); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (pleaded registration of record by virtue of the counterclaim brought by applicant); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1225 (TTAB 2005); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005) (status and title copies of pleaded registrations made of record).

 13.   See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (intrastate use by foreign opposer); AT&T Mobility LLC v. Mark Thomann, 2020 USPQ2d 53785, at *11 (TTAB 2020) (opposer’s standing confirmed by proof of its corporate relationship to entity using the mark as part of its trade name); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *4 (TTAB 2019) (standing also established by testimony with exhibits of earlier use of confusingly similar mark); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1395 (TTAB 2016) (opposer’s trade name use; admissions by applicant that opposer is direct competitor); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1565 (TTAB 2011) (prior use established by testimony and conceded by applicant); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8 (TTAB 2009) (use of mark established by testimony sufficient to show reasonable belief of damage even though use "purportedly based on a license which has not been clearly established in evidence"); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing established by showing of common law rights); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (prior use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (past use and present licensing); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use).

 14.   See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012) (opposer’s Supplemental Registration sufficient to establish opposer’s real interest in proceeding).

 15.   See Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *3 (TTAB 2020) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039-40 (TTAB 2018) (opposer’s standing established through applicant’s concessions and admissions that opposer’s pending application would be refused registration should applicant’s application register); Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (same); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Kallamni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142 (TTAB 2011) (Office action refusing registration to plaintiff based on defendant’s registration made of record); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action suspending plaintiff’s pending application pending possible refusal based on alleged likelihood of confusion with defendant’s registration made of record); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009); Hiraga v. Arena, 90 USPQ2d 1102, 1106-7 (TTAB 2009); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (opposer’s application was suspended, and opposer, a Cuban entity, submitted a letter confirming permission from the U.S. Dept. of Treasury to file an opposition); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Cf. Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff’s standing).

 16.   See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

 17.   See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel registration that has been asserted, even defensively, in a civil action); and M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

 18.   See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) ("Applicant has standing based on opposers’ assertion of their marks and registrations against applicant in their notice of opposition."); Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013) (standing assessed at time the counterclaim is filed and Board’s dismissal of the main claim does not render counterclaim moot); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1236 n.3 (TTAB 2007) (respondent in a cancellation proceeding has standing by virtue of its ownership of involved registration).

 19.   See Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 2021 USPQ2d 913, at *10 (Fed. Cir. 2021) ("A party asserting a false association bar to registration under section 2(a) need not have proprietary rights to a name as long as the party has a reasonable belief that it will be or is being damaged by the false suggestion of a connection between a person and the challenged mark."); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3-4 (Fed. Cir.) 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987),on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) ("This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant’s mark").

 20.   See Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Otto Roth & Co. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979).

University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *13, *15 (TTAB 2021) (opposer demonstrated entitlement to a statutory cause of action by establishing that it has a present or prospective interest in using the term 40-0); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *4-5 (TTAB 2019) (standing established because parties are competitors in the power saw blade industry), civil action filed, No. 1:20-CV-00902 (D. Del. July 2, 2020) (transferred from M.D.N.C.); Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901, at *2 (TTAB 2019) (standing established because parties are competitors in arranging automobile racing events); Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1201 (TTAB 2018) (standing established because parties are competitors in the light truck industry), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (standing established by plaintiff showing that it is engaged in the manufacture or sale of the same or related goods and that the product in question is one which could be produced in the normal expansion of plaintiff’s business); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1487 (TTAB 2017) (opposer’s status as competitor establishes standing to oppose registration of product configuration); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1848 (TTAB 2017) (opposer established that it is a competitor of Applicant and that it received a cease and desist letter from applicant); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951-52 (TTAB 2014) (opposer established it is a manufacturer of the same or related goods as applicant and applicant did not contest opposer’s standing), vacated on other grounds and remanded, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) (petitioner established and respondent admitted that petitioner is a competitor using the term at issue as part of its domain name), aff’d, 565 F. App’x 900 (Fed. Cir. 2014), (mem.); Miller v. Miller, 105 USPQ2d 1615, 1618-19 (TTAB 2013) (opposer established it has a commercial interest in using MILLER LAW GROUP as a competitor and based on cease and desist letter showing business interests affected); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (promoter or manufacturer of goods labeled with the same indication of geographic origin where plaintiff does not have a pending application, is not using the term in the United States, and is not required to being using the term at all); Kistner Concrete Products Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (competitor in industry has a real interest in cancelling registration for product configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors and retailer of the goods in the applications have demonstrated a real interest in preventing registration of the proposed marks); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1787 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007) (standing to oppose registration of mark for single color for coated abrasives established by opposer’s evidence of use of various colors on coated abrasives); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007) (standing based on opposer’s privity relationship with company that has competitive right to use mark descriptively); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (commercial interest in allegedly descriptive term); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999) (standing where opposer a competitor in the industry, a direct competitor of applicant, and one who used the mark at issue on or in connection with its product); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984).

Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 n.10 (TTAB 2007) (defense of unclean hands, even if established, does not deprive petitioner of standing).

 21.   See, e.g., M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 U.S.P.Q.2d 149090, at *4 (TTAB 2019) (standing to assert a § 2(c) claim may be established by facts that plaintiff is a competitor and has a present or prospective right to use the name).

 22.   See Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *3 (TTAB 2020) (once standing shown on one ground, plaintiff has right to assert any other ground in proceeding); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of functionality, it can assert any other grounds, including abandonment); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established based on surname claim sufficient to establish standing for any other ground); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1481 (TTAB 2017) (opposer established its standing as to genericness ground of certification mark and was entitled to assert any other ground); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), (citing Liberty Trouser Co. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983)).

309.03(c)    Grounds

309.03(c)(1)    In General

In addition to an entitlement to a statutory cause of action, a plaintiff must also plead (and later prove) a statutory ground or grounds for opposition or cancellation. [ Note 1.] See TBMP § 303.06 regarding pleading of grounds by joint plaintiffs. A plaintiff may raise any available statutory ground for opposition or cancellation that negates the defendant’s right to registration. [ Note 2.] See TBMP § 102.01 and cases cited therein. Grounds for petitions to cancel a Principal Register registration that is more than 5 years old are more limited and are specified in Trademark Act § 14(3), 15 U.S.C §1064(3), and Trademark Act § 14(5), 15 U.S.C. § 1064(5). The nonuse ground provided in Trademark Act § 14(6), 15 U.S.C. § 1064  is not available until any time after the three-year period following the date of registration. See TBMP § 307.01.

In pleading the grounds for opposition or cancellation, citation to a section of the statute, although encouraged and often helpful in clarifying the nature of a set of allegations in a pleading, may not be sufficient to plead a claim under that section or place a defendant on proper notice of the extent of the claim. For example, although the Trademark Act provides that dilution under Trademark Act § 43(c), 15 U.S.C. § 1125(c), may be asserted as a claim in a Board proceeding, mere reference to that section of the Trademark Act is insufficient to plead a dilution claim, as proper pleading of the claim also requires an allegation that the plaintiff’s mark was famous prior to the earliest date on which the defendant can rely for purposes of priority. [ Note 3.]

A plaintiff cannot rely upon an unpleaded claim unless the plaintiff’s pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter. [ Note 4.] See also TBMP § 314. In cases brought under Trademark Act § 2(d), 15 U.S.C. § 1052(d), the plaintiff must specifically plead any registrations on which it is relying and may not rely at trial on unpleaded registrations. [ Note 5.] For information regarding express or implied consent to the trial of an unpleaded issue, see TBMP § 507.03(b).

Electronic filing through ESTTA requires an opposer or petitioner to select relevant grounds for opposition or cancellation, with the required accompanying statement supporting and explaining the grounds. See 37 C.F.R. § 2.104(a)  and 37 C.F.R. § 2.112(a).

Examples of available grounds for opposition and for cancellation are listed below. Please Note: The grounds identified in examples (2) (as to de jure functional marks), (3), (12) through (14), (17), and (21) are available for cancellation of a Principal Register registration over five years old. This list is exemplary, not exhaustive.

• (1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive. [ Note 6.]
• (2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, [ Note 7.] or that defendant’s mark is primarily geographically descriptive [ Note 8.] or primarily geographically deceptively misdescriptive of them [ Note 9.]; or that defendant’s mark is primarily merely a surname [ Note 10.]; or that defendant’s mark comprises any matter that, as a whole, is functional. [ Note 11.]
• (3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant’s mark is geographically deceptive, [ Note 12.] that defendant’s mark falsely suggests a connection with plaintiff’s name or identity [ Note 13.], or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996. [ Note 14.]
• (4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use. [ Note 15.]
• (5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). [ Note 16.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [ Note 17.]
• (6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon. [ Note 18.]
• (7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. [ Note 19.]
• (8) That defendant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant’s goods. [ Note 20.]
• (9) That defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness. [ Note 21.]
• (10) That defendant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness. [ Note 22.]
• (11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark (i.e. "failure to function" as a mark). [ Note 23.]
• (12) That defendant’s mark represents multiple marks in a single application (or registration) ("phantom mark"). [ Note 24.]
• (13) That defendant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [ Note 25.]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [ Note 26.]
• (14) That defendant’s mark consists of or comprises the name of a particular living individual without the individual’s consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c). [ Note 27.]
• (15) That defendant’s product design is generic. [ Note 28.]
• (16) That defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark. [ Note 29.]
• (17) That defendant has used its mark so as to misrepresent the source of its goods or services. [ Note 30.]
• (18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered. [ Note 31.]
• (19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [ Note 32.]
• (20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 ("Pan American Convention"), 46 Stat. 2907. [ Note 33.]
• (21) That defendant’s application is barred from registration by claim or issue preclusion. [ Note 34.] See also TBMP § 311.02(b).
• (22) That defendant’s mark is the title of a single creative work and not considered a trademark. [ Note 35.]
• (23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is "the flag or coat of arms or other insignia of the United States, or of any State or municipality" is prohibited. [ Note 36.]
• (24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e). [ Note 37.]
• (25) That defendant's intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060. [ Note 38.]
• (26) That defendant's mark is generic. [ Note 39.] A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic. [ Note 40.]
• (27) That defendant's mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law. [ Note 41.]
• (28) That defendant in a cancellation proceeding has never used the mark in commerce on or in connection with some or all of the goods or services recited in the registration. [ Note 42.]

NOTES:

 1.   See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998). See also Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (if plaintiff can show standing on one ground, has right to assert any other grounds); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1396 n.1 (TTAB 2009) (grounds for opposition not pursued at trial or otherwise argued by opposer in its brief deemed waived).

 2.   See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (Board does not have authority to determine whether a party has engaged in criminal or civil wrongdoings), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008); Flash & Partners S.p.A. v. I.E. Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) (ex parte examination issues do not form a basis for cancellation); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (parties’ agreement prohibits applicant’s use of its mark); Carano v. Vina Concha y Toro S.A., 67 USPQ2d 1149, 1152 (TTAB 2003) (Board has no jurisdiction to determine copyright infringement claim but may determine some limited copyright issues as necessary to determine questions of trademark registration); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996) (Board lacks authority to determine claim that Congress may not lawfully regulate registrant’s activities); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 (TTAB 1991); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 910 n.10 (TTAB 1984) (Board cannot decline to consider an issue because it is ex parte in nature).

Cf. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) ("economic damage" is not a ground for opposition although it is relevant to issue of opposer’s standing); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1591 (TTAB 2009) (Paris Convention does not provide independent cause of action); on final decision, 110 USPQ2d 1623 (TTAB 2014), aff’d in part and rev’d in part on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp.3d 1477 (E.D. Va. 2018), appeal filed, No. 18-2232 (4th Cir. Oct. 19, 2018); UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1244(TTAB 2015) (laches and acquiescence are affirmative defenses that may be raised by a defendant, not claims asserted by the plaintiff); Franpovi SA v. Wessin, 89 USPQ2d 1637, 1640 (TTAB 2009) (potential plaintiff cannot exercise rights established by Santiago Convention because it cannot fulfill condition of application to the Inter American Bureau as set forth in Convention); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (asserted error by examining attorney is not a proper ground for opposition); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.3 (TTAB 2006) (Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs") does not provide separate cause of action or defense); Saint-Gobain Abrasives Inc. v. Unova Industrial Automation Systems Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (whether description of the mark is adequate is an examination issue and fails to state a proper ground for opposition); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1157-58 (TTAB 2003) (no authority for assertion of unclean hands as a ground for opposition); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702 (TTAB 2002) (laches and acquiescence are affirmative defenses, not grounds for opposition); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (opposer’s failure to submit copy of the foreign registration, which was the basis for issuance of opposer’s pleaded registration, was an examination error and did not constitute a ground for counterclaim); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n.39 (TTAB 1994) (equitable defenses are not grounds for opposition); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the specimens, per se, does not constitute grounds for cancellation; the proper ground for cancellation is that the term has not been used as a mark); Century 21 Real Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) ("it is not the adequacy of the specimens, but the underlying question of service mark usage which would constitute a proper ground for opposition").

 3.   See Trademark Act § 43(c), 15 U.S.C. § 1125(c); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1292 (TTAB 2016) (party alleging fame must show that mark became famous prior to any established, continuous use of defendant’s involved mark as a trademark or tradename, and not merely prior to use in association with the specific goods or services set forth in a defendant’s subject application or registration);Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show that mark became famous before applicant’s use of challenged mark), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-1060 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer’s mark at issue is famous); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2000) (must allege when mark became famous).

 4.   See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB 2007).

 5.   See, e.g., United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) ("When an opposer pleads ownership of the underlying applications in the notice of opposition, the opposer may make the registrations which issue during the opposition of record without having to amend the notice of opposition to assert reliance on the registrations"); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1424 n.14 (TTAB 2014) (opposer may not rely on registrations that were unpleaded, the underlying applications were unpleaded and opposer did not assert that the pleadings should be amended); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007) ("In its brief, opposer listed a seventh registration, but it was not pleaded and a copy was not made of record by notice of reliance (NOR) or through testimony, so it has not been considered"); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1919-20 (TTAB 2006). Cf. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1583 n.3 (TTAB 2008) ("The notice of reliance also includes status and title copies of several registrations which were not pleaded in the notice of opposition. Because applicant has not objected to opposer’s reliance on the unpleaded registrations, and moreover has, in effect, treated them as of record in his brief, we deem opposer’s pleading amended to assert the registrations under Fed. R. Civ. P. 15(b)").

 6.   See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).

See also Omaha Steaks International, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1691-95 (Fed. Cir. 2018) (Board improperly broadened analysis of third-party use to encompass third-party marks on clearly dissimilar goods and improperly discounted certain evidence of fame); First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (claim of prior intrastate use); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914 (TTAB 2020) (likelihood of confusion claim sustained, in part, dismissed, in part); Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) (likelihood of confusion claim dismissed); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596 (TTAB 2020) (likelihood of confusion claim sustained as to identified goods notwithstanding that plaintiff did not demonstrate family of marks); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400 (TTAB 2020) (likelihood of confusion claim dismissed for failure to prove priority of use), appeal filed, No. 3:20-CV-0040 (E.D. Va, June 5, 2020); Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153 (TTAB 2020) (likelihood of confusion claim sustained); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *8-9 (TTAB 2019) (Board declined to apply doctrine of foreign equivalents to given names and found marks dissimilar); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1040 (TTAB 2016) (dismissing opposition; third party evidence demonstrates weakness of mark); Wise F&I, LLC; et al. v. Allstate Insurance Co., 120 USPQ2d 1103, 1109 (TTAB 2016) (family of marks may have different owners if there is unity of control); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents inapplicable but likelihood of confusion found); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (earliest date respondent may rely upon is the filing date of its underlying application in absence of evidence of earlier use; petitioner must show earlier common law use in absence of registration); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (dissimilarity of marks controlling issue in likelihood of confusion analysis); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393 (TTAB 2007); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (although opposer failed to make its registrations of record, its burden is to demonstrate that it owns a trademark, which was used prior to applicant’s mark, and not abandoned); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (family of marks); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (determination of likelihood of confusion based on an analysis of all facts in evidence); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (several factors considered); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624 (TTAB 2007) (design marks compared); Miss Universe L.P., v. Community Marketing, Inc., 82 USPQ2d 1562, 1566 (TTAB 2007) ("Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors)"); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007) (doubt resolved in favor of prior user).

 7.   See Trademark Act § 2(e)(1), 15 U.S.C. § 1052 (e)(1). See also, e.g., The Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722-23 (Fed. Cir. 2001) (deceptive misdescriptiveness); City of London Distillery, Ltd. v. Hayman Group Ltd., 2020 USPQ2d 11487 (TTAB 2020) (mere descriptiveness); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914 (TTAB 2020) (mere descriptiveness claim dismissed); Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 1922-23 (TTAB 2002) (mere descriptiveness).

Regarding claims under Trademark Act § 2(f), 15 U.S.C. § 1052(f), see Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (clarifying and identifying six factors for determining whether a mark has acquired secondary meaning); Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 USPQ2d 1370, 1377-79 (Fed. Cir. 2018) (explaining burdens of opposer and applicant in connection with Trademark Act § 2(f) claim; substantial evidence supports finding marks lack acquired distinctiveness); Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ.2d 1739, 1743 (Fed. Cir. 2018) (whether the surname had acquired distinctiveness); Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (in cancellation proceeding, presumption of validity of registration under Trademark Act § 2(f) includes presumption of acquired distinctiveness, and party seeking cancellation must overcome this presumption by preponderance of evidence; "burden" to prove that mark has acquired distinctiveness shifts to registrant only after plaintiff establishes prima facie case that mark has not acquired distinctiveness); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (in opposing a claim under Trademark Act § 2(f), opposer has initial burden of challenging or rebutting applicant’s evidence of distinctiveness); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1764-1767 (TTAB 2013) (burden on petitioner to rebut presumption that mark registered under Section 2(f) has acquired distinctiveness), aff’d , 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ultimate burden of persuasion under Trademark Act § 2(f) rests with applicant); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1768 (TTAB 2007) (mere descriptiveness; whether claim under Trademark Act § 2(f) is sufficient).

 8.   See Trademark Act § 2(e)(2), 15 U.S.C. § 1052 (e)(2). See also, e.g., Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 USPQ2d 48324, *12-13 (TTAB 2020) (applicant did not meet burden of showing acquired distinctiveness, and term is primarily geographically descriptive); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1504 (TTAB 2008) (whether mark is descriptive and/or primarily geographically descriptive, applicant has shown acquired distinctiveness); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994). Cf. Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1524-25 (TTAB 2013) (assertion that a registration is not entitled to Section 15 incontestability because of alleged fraud in obtaining and maintaining the registration does not state a valid ground for cancellation of a registration that is more than five years old on the basis that the registered mark is primarily geographically descriptive).

 9.   See Trademark Act § 2(e)(3), 15 U.S.C. § 1052 (e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) (the test for determining whether a mark is geographically deceptive under Trademark Act § 2(a), 15 U.S.C. § 1052(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3)); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1781-82 (Fed. Cir. 2001) (describing § 2(e)(3) analysis); Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1090-91 (TTAB 2012) (reopened for the limited purpose of having the parties address whether a significant portion of the relevant consumers would be materially influenced to purchase the goods by the geographic meaning of the mark), on remand from, 729 F. Supp. 2d 246, 98 USPQ2d 1078 (D.D.C. 2010) (remanding on third factor of the test for determining whether a mark is primarily geographically deceptively misdescriptive); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (primarily geographically deceptively misdescriptive sufficiently pleaded); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790-91 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term).

 10.   See Trademark Act § 2(e)(4), 15 U.S.C. § 1052 (e)(4). See also, e.g., Miller v. Miller, 105 USPQ2d 1615. 1620 (TTAB 2013 (MILLER LAW GROUP primarily merely a surename; no acquired distinctiveness); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391-92 (TTAB 1979); Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971). Cf. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1174-75 (Fed. Cir. 2005) ("Section 44 applications are subject to the section 2 bars to registration, of which the surname rule is one."); In re tapio GmbH, 2020 USPQ2d 11387 (TTAB 2020); In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB 2016); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1283 (TTAB 2016); In re Adlon Brand GmbH, 120 USPQ2d 1717, 1725 (TTAB 2016); In re Piano Factory Group Inc., 85 USPQ2d 1522, 1526-27 (TTAB 2007) (surname plus "& SONS" refused as "primarily a surname"). See also Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ.2d 1739, 1743 (Fed. Cir. 2018) (whether the surname had acquired distinctiveness).

 11.   See Trademark Act § 2(e)(5), 15 U.S.C. § 1052 (e)(5); TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995). See also, e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) and Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), (citing In re Morton-Norwich Products Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA) for factors considered in determining functionality); McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559, at *65 (TTAB 2021) (design of gun barrel de jure functional based on evidence of utility patent and manufacturing process); Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1210-11 (TTAB 2018) (product design, pattern for truck lights, not functional; prima facie case of aesthetic functionality not established), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013) (overall design of product configuration dictated by utilitarian concerns and as a whole is functional); Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1783-84 (TTAB 2012) (petitioner failed to relate claim of functionality of goats on a roof to respondent’s restaurant and gift shop services); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1918-19 (TTAB 2011) (registration on Supplemental Register for a precast concrete bridge unit); and M-5 Steel Manufacturing Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001) (product design for roof vents). Cf. ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 97 USPQ2d 1048, 1056-58 (Fed. Cir. 2010) (same legal principles apply to a determination of functionality whether on the Principal Register or Supplemental Register); Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1794 (TTAB 2006) (prohibition on the registration of functional marks does not extend to registration of two-dimensional design mark for custom manufacturing services).

 12.   See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894, 1898 (TTAB 1992) (mark’s geographic deceptiveness must be established as of the time the registration issues). Cf. Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (Board declines to consider geographically deceptive claim under Trademark Act § 2(a), 15 U.S.C. § 1052(a)); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term under the ambit of Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3) rather than Trademark Act § 2(a), 15 U.S.C. § 1052(a) ("The amended Lanham Act gives geographically deceptively misdescriptive marks the same treatment as geographically deceptive marks under § 1052(a).") (citing In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003)); K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration).

 13.   See, e.g., Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 2021 USPQ2d 913, at *11 (Fed. Cir. 2021) (affirming Board decision finding a false suggestion of a connection; explaining difference between Section 2(a) and Section 2(d) claims and four-factor test for Section 2(a) claims); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983); U.S. Olympic Committee v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164, at *33 (TTAB 2021 (claim of false suggestion of a connection fails as plaintiff cannot show the mark points uniquely and unmistakably to it); The Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *7 (TTAB 2019) (same), appeal dismissed, No. 20-1068 (Fed. Cir. Nov. 13, 2019); Boston Red Sox Baseball Club L.P. v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (false suggestion of a connection found); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436-37 (TTAB 1996) (motion to dismiss false suggestion of a connection claim granted); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (disparagement of opposer found under 2(a)); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (denying motion for summary judgment on false suggestion of connection claim). See also Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1031-32 (TTAB 2015) (insufficiently pleaded claim where no assertion that public would recognize applicant’s mark as pointing uniquely to opposer).

 14.   See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (certification mark recognized as a geographical indication). Cf. In re Spirits International N.V., 86 USPQ2d 1078, 1080 n.2 (TTAB 2008) (refusal based on "deceptiveness" provision of Trademark Act § 2(a), 15 U.S.C. § 1052(a) and not that the mark is a geographical indication); In re Wada, 48 USPQ2d 1689, 1692 n.7 (TTAB 1998) (disclaimer of geographical indication cannot obviate a Trademark Act § 2(a), 15 U.S.C. § 1052(a) refusal).

 15.   See, e.g., Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676-77 (Fed. Cir. 2012) (software that is merely a conduit through which online retail services are rendered is not "in use in commerce" in association with software); Aycock Engineering Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009) (registration of a mark that does not meet the use requirement is void ab initio); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 143 (Fed. Cir. 1986) ("An initial commercial transaction is sufficient to support the validity of a registration so long as the initial transaction is not a sham transaction and is followed by a continuing effort or intent to engage in commercial use."); Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985) (shipment to owner of mark by manufacturer, advertising in the nature of form letter solicitation to retailers, and subsequent sales insufficient to constitute use in commerce for applicant); Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722, 723 (CCPA 1978) (because applicant did not use the mark in commerce in association with the goods at the time it filed the application, its application was void); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1769 (TTAB 1994) ("use in commerce" involves the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark), aff’d unpub’d, 108 F.3d 1392 (Fed. Cir. 1997).

For TTAB cases, see, e.g., NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, at *29-30 (TTAB 2021) (respondent failed to demonstrate, through clear and convincing evidence, use of mark prior to the claimed date of first use as a successor-in-interest); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1051-1055 (TTAB 2017) (claim of nonuse at time of filing statement of use); Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1131 (TTAB 2016) (any legally sufficient nonuse claim must plead that Respondent failed to use its mark in commerce by the expiration of the time for filing a statement of use in each application); Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1524 (TTAB 2016) (where applicant filed an "insurance extension," sufficient pleading of nonuse is that Respondent did not use the mark with the goods in the registration within the time for filing its statement of use as extended); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1044-46 (TTAB 2014) (application void ab initio for nonuse in connection with services); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929-30 (TTAB 2014) (claim of nonuse at time of filing for § 66(a) application legally insufficient for registration based on § 66(a) because time of nonuse begins from the date of registration); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676-78 (TTAB 2013) (internal use of mark by applicant did not constitute use in commerce); Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086-87 (TTAB 2013) (applicant’s mark not in use in commerce as of the filing date of the use-based application); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012) (respondent’s mark not in use in commerce at time of filing of his use-based application); Nutrasweet Co. v. K & S Foods Inc., 4 USPQ2d 1964, 1966 (TTAB 1987) (single shipment of the product from one corporate officer to another was an intracompany transaction done solely for the purpose of qualifying for registration, and was a sham; no use in commerce prior to filing date of application found); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542, 550 (TTAB 1983) (nonuse in commerce based on experimental shipment not available ground for registration over five years old); Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543-45 (TTAB 1983) (opposer’s construction and golf club services for a vacation home residential community not inherently incapable of use in commerce).

See also Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006) (explaining the distinction between nonuse on some or all of the goods or services; application not treated as void in connection with a claim asserting nonuse as to some of the goods or services).

But see Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016) (reversing Board decision that respondent failed to use its mark in commerce prior to obtaining registration).

Cf. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 (TTAB 2007) (opposer’s nonuse claim dismissed as moot upon Board’s acceptance of applicant’s amendment of the filing basis of its application from Trademark Act § 1(a) to 1(b), 15 U.S.C. § 1051(a) to (b)); CarX Service Systems, Inc. v. Exxon Corp., 215 USPQ 345, 351 (TTAB 1982) (plaintiff must plead and prove that there was no use prior to filing date; mere claim that dates of use are incorrect does not state a claim of action).

 16.   See, e.g., M.Z. Berger & Co. v Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015) (lack of bona fide intent is a proper statutory grounds on which to challenge a trademark application), aff'g 108 USPQ2d 1463, 1471-77 (TTAB 2013) (documentary evidence, testimony and other record evidence do not support applicant’s claimed bona fide intent to use); Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 121 USPQ2d 1357, 1369-70 (6th Cir. 2017) (applying Board precedential decisions and affirming district court determination that applicant lacked a bona fide intent to use its mark as to some, but not all the goods listed in its applications, but vacating the judgment to the extent that applicant’s applications were voided in their entirety); Monster Energy Co. v. Tom & Martha LLC, 2021 USPQ2d 1197, at *12 (TTAB 2021) (if lack of bona fide intent is found as to some, but not all, goods or services, the former is subject to deletion from the application, but absent proof of fraud, the application or relevant class would not be considered void in its entirety); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *10 (TTAB 2020) (underlying application void ab initio where individual registrant, at the time application was filed, lacked a bona fide intent to use the mark alone); A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *6 (TTAB 2019) (lack of a bona fide intent to use found where only document not sufficiently contemporaneous with filing of application); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008-09 (TTAB 2015) (lack of bona fide intent to use found where no documentary evidence predated application filing date); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012) (lack of a bona fide intent to use found where there was no documentary evidence, affirmative statement that no documents exist, no industry experience, no development or business plan, vague allusions to using the mark through licensing or outsourcing, and applicant’s demonstrated pattern of filing intent-to-use applications for disparate goods under the well-known and famous marks of others); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548-49 (TTAB 2011) (lack of a bona fide intent to use found where there was no documentary evidence, an affirmative statement that no such documents exist, and no other evidence to explain lack of documentary evidence); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1304-05 (TTAB 2010) (lack of a bona fide intent to use; no documentary evidence; record devoid of any other evidence of intended use); Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (lack of bona fide intent to use); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (lack of bona fide intent to use); Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).

Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1190 (TTAB 2011) (capacity to market and manufacture the goods, and identified goods consistent with a nature extension of current product line, rebut the lack of documentary evidence), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and /or manufacture goods, having produced them in the past under different marks, rebuts claim that applicant lacked bona fide intent to use).

 17.   See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010).

 18.   See, e.g., General Foods Corp. v. Ito Yokado Co., 219 USPQ 822, 825 (TTAB 1983), aff’d unpub’d, slip. op. 84-517 (Fed. Cir. 1984). See also In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986).

 19.   See, e.g.,Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) (nonownership claim dismissed; oral intra-family license with informal control sufficient to qualify licensee as related company); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1304-07 (TTAB 2015) (facts inconsistent with individual former band member’s claim that he was the owner the mark); UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1249 (TTAB 2015) (presumption that a manufacturer is the owner of a disputed mark may be rebutted); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014) (ownership claim determined under accelerated case resolution); Nahshin v. Product Source International LLC, 107 USPQ2d 1257 (TTAB 2013); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 1993); Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf., e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) (where opposer was asserting that applicant’s mark is a descriptive term which cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the term as a mark) recon. den., 36 USPQ2d 1328 (TTAB 1994).

See also Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *5 (TTAB 2019) (lack of ownership not an available claim against an intent to use application); Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (ownership claim not available ground for registration over five years old).

 20.   See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.1994), In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, (Fed. Cir. 1985); Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998); Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff’d, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975).

 21.   See Trademark Act § 1, Trademark Act § 2 and Trademark Act § 45, 15 U.S.C. § 1051, 15 U.S.C. § 1052  and 15 U.S.C. § 1127; Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393 (TTAB 2009) ("chirp" sound). Cf. In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (registration on the Principal Register of the sound emitted by applicant’s product in its normal course of operation only available on a showing of acquired distinctiveness).

 22.   For product design see Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (product design can never be inherently distinctive and requires showing of acquired distinctiveness); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1839 (TTAB 2013) (product configuration of pipe boot design has not acquired distinctiveness); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (product configuration). Cf. In re MK Diamond Products, Inc., 2020 USPQ2d 10882 (TTAB 2020) (product configuration of a saw blade found non-distinctive and not having acquired distinctiveness).

For product packaging see Two Pesos Inc. v. Taco Cabana Inc., 505 US 763, 23 USPQ2d 1081 (1992) (trade dress packaging may be inherently distinctive); In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (court applies four-part test from Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) to determine if trade dress packaging is inherently distinctive, or requires showing of acquired distinctiveness).

 23.   See, e.g., University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *33 (TTAB 2021) (40-0 fails to function as a mark because it is merely informational); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC fails to function as a mark). Cf. In re Maugus Manufacturing, Inc,, 2021 USPQ2d 1100 (TTAB 2021) (DRINK MORE BEER fails to function as a mark because it is seen as an example of how wording would appear on goods); In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020) (TEAM JESUS fails to function as a mark); In re Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (GOD BLESS THE USA fails to function as a mark); In re Vox Populi Registry Ltd., 2020 USPQ2d 11289 (TTAB 2020) (designation .SUCKS fails to function as a mark; found to be merely a generic top-level domain ("gTLD")), aff;d 2002USPQ2d 115 (Fed. Cir. 2022); In re Mayweather Promotions, LLC, 2020 USPQ2d 11298 (TTAB 2020) (proposed mark TEXAS LOVE fails to function as a mark because it constitutes a widely used concept or sentiment); In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (TTAB 2020) (the proposed mark .CAM incapable of functioning as a mark for some of the identified services).

See also Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2012 (Fed. Cir. 2015) (service must be offered and actually provided to constitute use in commerce); Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1309 n.12 (Fed. Cir. 2009) (registration on Supplemental Register never becomes immune from threat of invalidation on grounds that mark was not used prior to filing date); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., 29 USPQ2d 1146, 1160 (TTAB 1993) (allegation that slogan was used as mere advertising and not as a trademark); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989).

 24.   See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812-13 (Fed. Cir. 2001); In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998), aff’d, 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).

 25.   Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *16-17 (TTAB 2020) (plaintiff failed to prove abandonment of defendant’s mark because defendant was able to demonstrate that it maintained an intent to resume use of its mark throughout the period of nonuse); Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1020 (TTAB 2018) (discussing pleading requirements for a legally sufficient claim of abandonment); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1676-79 (TTAB 2013) (abandonment of a registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), based on over three years of nonuse where respondent did not use mark with recited services since at least the issuance date of the involved registration and where the nature of the use shown by respondent did not constitute use in commerce); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (more than three years of nonuse, commencing with filing date for majority of the identified goods, and no evidence rebutting prima facie showing); Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998).

Cf. Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *9 (TTAB 2020) (prima facie showing of abandonment rebutted by fact showing registrant’s intent to commence use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) (plaintiff could not prove priority because it abandoned mark with no intent to resume use prior to use by defendant); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (plaintiff must allege ultimate facts pertaining to the alleged abandonment).

See also Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1550-52 (TTAB 2012) (claim of abandonment is available with respect to a claim against a § 66(a) registration, which is a registered extension of protection under 15 U.S.C. § 1141f(a)).

 26.   Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422 (TTAB 2016) (abandonment found where parent company’s use of the mark cannot inure to the benefit of the subsidiary that owned the mark); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (no abandonment found where it was found that consumers would not view stylistic modifications as a different mark, resulting in the same continuing commercial impression), cert. denied, No. 15-660 (Jan. 25, 2016); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (failure to police third party use of marks); Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006); Woodstock’s Enterprises Inc. v. Woodstock’s Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff’d mem., 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).

 27.   See Trademark Act § 2(c), 15 U.S.C. § 1052(c). See also M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 U.S.P.Q.2d 149090, at *7 (TTAB 2019) (right to preclude registration expired upon death of "particular living individual" who was no longer living at the time of trial); Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1909 (TTAB 2005), aff’d, slip. op. 2007-1364 (Fed. Cir. Dec. 7, 2007); Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1032-33 (TTAB 2015) (claim insufficiently pleaded where no assertion that licensing relationship gave opposer a proprietary right to assert the claim on behalf of third party); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (plaintiff must establish that the "name," as used on the goods or services, points uniquely to plaintiff as a "particular living individual"); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994) (party asserting Trademark Act § 2(c), 15 U.S.C. § 1052(c) ground must have cognizable or proprietary right in the name). Cf. Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (Trademark Act § 2(c), 15 U.S.C. § 1052(c) does not apply to family surnames).

But see In re Elster, 26 F.4th 1328, 2022 USPQ2d 195, at *10 (Fed. Cir. 2022) (application of § 2(c) to refuse registration of mark TRUMP TOO SMALL is unconstitutional because "the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice").

 28.   See Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (the term "generic name" as used in Trademark Act § 14(3), 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009).

 29.   See Trademark Act § 13(a) and Trademark Act § 14, 15 U.S.C. § 1063(a)  and 15 U.S.C. § 1064; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Trademark Act § 43(c), 15 U.S.C. § 1125(c); Spotify AB v. U.S. Software, Inc., 2022 USPQ2d 37, at *37 (TTAB 2022) (full analysis of factors of dilution by blurring; finding "exceedingly famous" mark SPOTIFY likely to be diluted by POTIFY); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB 2018) (full analysis of factors of dilution by blurring); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1297 (TTAB 2016) (party alleging dilution by blurring must prove that mark(s) became famous prior to any established, continuous use of Applicant’s involved marks, whether as a trademark or trade name, and not just prior to Applicant’s use in commerce of its challenged marks in connection with the goods identified in involved applications); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1509-10 (TTAB 2015) (parody defense will not be considered as part of the assessment of a dilution claim; whether an applicant’s mark is registrable because it is being used in commerce to indicate source is counter to whether such use is noncommercial or fair use); McDonald’s Corp. v. McSweet LLC, 112 USPQ2d 1268, 1286 (TTAB 2014) (dilution also applies to family of marks); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2023-24 (TTAB 2014) (dilution by blurring, opposer may rely on applicant’s filing (constructive use) date to satisfy second prong of test); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012) (full analysis of factors finding dilution by blurring); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1191-97 (TTAB 2011) (same), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1886-90 (TTAB 2011) (same); Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) (same); National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (TTAB 2010) (commodity promotion slogan dilution by blurring); Coach Services, Inc. v. Triumph Learning LLC; 96 USPQ2d 1600 (TTAB 2010) (dilution by blurring and tarnishment), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show that mark became famous before applicant’s use of challenged mark), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-60 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer’s mark at issue is famous); Moseley v. V Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62 USPQ2d 1857 (TTAB 2002), aff’d, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).

But see Fiat Group Automobiles, S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1113 (TTAB 2010) (the "well known mark" doctrine does not constitute a basis for pleading dilution in the United States, absent a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source thereof is anonymous and even if the products or services are not available in the United States).

 30.   See Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709, at *51-52 (TTAB 2021) (not necessary for petitioner to establish prior use in the United States to prevail on misrepresentation of source claim; claim may be based on reputation in the United States, which is not recognition of the "famous marks" doctrine), appeal docketed, No. 21-2209 (Fed. Cir. Aug. 9, 2021); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) (motion to dismiss misrepresentation of source claim denied), on final decision, 110 USPQ2d 1623 (TTAB 2014) (petition granted on claim of misrepresentation), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp.3d 1477 (E.D. Va. 2018), appeal filed, No. 18-2232 (4th Cir. Oct. 19, 2018); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleading of misrepresentation of source must be supported by allegations of blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner); The E.E. Dickinson Co. v. The T.N. Dickinson Co., 221 USPQ 713 (TTAB 1984) (petitioner allowed to go forward on claim of misrepresentation of source).

 31.   See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1758 (TTAB 2009) (mistaken belief that registration of mark in foreign country permits use of symbol); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1290 (TTAB 2007) (allegation that opposer has misused federal registration symbol construed "as a species of the equitable affirmative defense of unclean hands"); Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1846 n.3 (TTAB 2008). Cf. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976) (raised as affirmative defense).

 32.   See Fed. R. Civ. P. 9(b); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 2021 USPQ2d 1115, at *5 (Fed. Cir. 2021) (party need not establish secondary meaning of its own uses of mark that is merely a surname, or privity with other users of the mark, for those uses to be counted in determining falsity of claim of substantially exclusive use under § 2(f)); DrDisabilityQuotes.com, LLC v. Krugh, 2021 USPQ2d 262, at *5 (TTAB 2021) (voluntary claim of acquired distinctiveness under § 2(f) is material to examination and can be challenged in a fraud claim); University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253,at *21-22 (TTAB 2021) (misunderstanding requirements for use-based application is not proof of intent to deceive USPTO); Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001, at *13 (TTAB 2021) ("reckless disregard" satisfies the requisite intent for fraud claims), appeal docketed, No. 22-1212 (Fed. Cir. Dec. 2, 2021); Freki Corp. v. Pinnacle Entertainment, Inc., 126 USPQ2d 1697, 1703 (TTAB 2018) (fraud claim insufficiently pleaded); Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146 (TTAB 2016) (fraud claim based on statements made in application oath dismissed); Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) (claim of fraud sustained); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1928 (TTAB 2014) (failure to state a claim of fraud because statements were not false, not material and no allegation regarding intent, no leave to replead as would be futile); Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522-24 (TTAB 2013) (motion to dismiss denied where fraud claim sufficiently alleged); Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold LLC, 95 USPQ2d 1185, 1187 (TTAB 2010) (motion to dismiss denied where fraud claim sufficiently pleaded); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537 (TTAB 2009).

See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) ("[P]leadings on information and belief require an allegation that the necessary information lies within the defendant’s control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are based") (citing Kowal v. MCI Communications Corp., 16 F.3d 1271, 1279 n.3 (D.C. Cir. 1994)); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with particularity); Bart Schwartz International Textiles, Ltd. v. The Federal Trade Commission, 289 F.2d 665, 129 USPQ 258, 260 (CCPA 1961) ("[T]he obligation which the Lanham Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly misleading statements in the verified declaration forming a part of the application for registration."); Smith International, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) (fraud requires a willful intent to deceive); G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (a finding of fraud as to one class in a multiple-class registration does not require cancellation of all classes in a registration); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1509 (TTAB 2008) (false claim of use of mark); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (same).

Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009) (improperly pleaded fraud claim cannot be basis for summary judgment); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1762 (TTAB 2008) (timely proactive corrective action taken with respect to pleaded registrations raises rebuttable presumption that opposer did not intend to commit fraud); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (rebuttable presumption that opposer lacked willful intent to deceive Office arises when registrant amended identification of goods during ex parte prosecution); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud not found where statement identifying goods in application, although inartfully worded, was not false).

Please Note: The Federal Circuit’s decision in In re Bose, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009), clarified that fraud in a Board proceeding may not be based merely on a finding that a party "knew or should have known" that it was not using its mark on all of the goods or services recited in an application. Additionally, the Board’s decision in Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001 (TTAB 2021), appeal docketed, No. 22-1212 (Fed. Cir. Dec. 2, 2021), held that "reckless disregard" satisfies the requisite intent for fraud claims. Accordingly, consideration of the holdings in cases involving fraud in a goods/services use statement pre-Bose and Chuttershould be reviewed under the standard for fraud as set forth in those cases, and not as set forth in the line of Board cases following the "knew or should have known" standard set forth in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).

 33.   See British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000). Cf. Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (Board has subject matter jurisdiction to entertain affirmative defense of priority pursuant to Article 7 of the Pan American Convention).

 34.   See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) (opposition not barred by claim or issue preclusion); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) (claim preclusion doctrine did not bar petition to cancel); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106 (TTAB 2011) (claim preclusion barred petitions to cancel against two registrations but not a third registration; "defendant preclusion" does not apply to facts of case and further discussed in contrast to "plaintiff preclusion"); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1398 (TTAB 2009) (finding in prior Board proceeding that mark failed to function with respect to "two-way radios" entitled opposer to judgment with respect to those goods under principles of issue preclusion). Cf. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008) (cancellation petition barred by doctrine of "defendant preclusion"); NH Beach Pizza LLC v. Cristy's Pizza Inc., 119 USPQ2d 1861, 1863 (TTAB 2016) (issue preclusion may bar re-litigation of a standing determination made in a prior Board proceeding); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411-13 (TTAB 2015) (claim preclusion bars cancellation proceeding in view of earlier opposition proceeding which was dismissed for failure of plaintiff to submit any evidence in support of its case; and where plaintiff in cancellation concedes it is same as plaintiff in opposition); Stephen Slesinger Inc. v. Disney Enterprises Inc., 98 USPQ2d 1890 (TTAB 2011) (ownership of the marks at issue established in court proceeding; defendant entitled to summary judgment based on issue preclusion), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert denied, 134 S. Ct. 125 (2013). See also Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 (TTAB 2016) (claim preclusion inapplicable because fraud claim based on different transactional facts, defendant’s motion for summary judgment denied);Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249 (TTAB 2011) (no claim preclusion based on district court’s determination because civil action focused on respective uses and rights to use while Board proceeding focused on right to registration; issue preclusion based on district court determination found; no claim preclusion based on abandonments in related opposition because trademark owner allowed to make decision on which oppositions to defend).

 35.   See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142-44 (TTAB 2011).

 36.   Cf. In re Alabama Tourism Department, 2020 USPQ2d 10485 (TTAB 2020); In re City of Houston, 101 USPQ2d 1534 (TTAB 2012), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588 (TTAB 2012), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).

 37.   Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012).

 38.   See Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1146-50 (TTAB 2013); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).

 39.   See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 531-32 (Fed. Cir. 1986) (two-step determination of whether a term is generic involves 1) what is the genus of the goods or services at issue and 2) is the term understood by the relevant public primarily to refer to that genus). Accord Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (explaining determinations to be made under second Marvin Ginn factor); Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1379 (Fed. Cir. 2018) (incorrect application of first Marvin Ginn factor); Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830-31 (Fed. Cir. 2015) (there is only one legal standard for genericness).

See also International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) (proposed mark GRUYERE found generic for identified goods), aff'd F. Supp.3d 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22-1041 (4th Cir. Jan. 11, 2022); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *17-18 (TTAB 2020) (color red is generic as used on saw blades), civil action filed, No. 1:20-CV-000902 (D. Del. July 2, 2020) (transferred from M.D.N.C.).

But see USPTO v. Booking.com B.V., 591 U.S. ___, 140 S.Ct. 2298, 2020 USPQ2d 10729 (2020) (BOOKING.COM not generic for online hotel reservation services); Luxco, Inc. v. Consejo Reglador del Tequila, A.C., 121 USPQ2d 1477, 1497 (TTAB 2017) (opposition dismissed for failure to prove that TEQUILA is generic as a certification mark for spirits distilled from agave plant).

 40.   Turtle Wax, Inc. v. Blue Coral, Inc., 2 USPQ2d 1534, 1536 (TTAB 1987) (generic designations precluded from Supplemental Register).

 41.   See, e.g., Stawski v. Lawson, 129 USPQ2d 1036, 1048-53 (TTAB 2018) (whether concurrent use applicant had lawful use in commerce within the meaning of the concurrent use proviso of Section 2(d)), appeal dismissed, No. 19-1617 (Fed. Cir. Dec 19, 2019). Cf. In re Stanley Brothers Social Enterprises LLC, 2020 USPQ2d 10658, at *15 (TTAB 2020) (finding applicant’s proposed mark’s use in commerce for the goods identified a per se violation of the Food, Drug & Cosmetics Act (FDCA) because Applicant’s goods contain cannabidiol (CBD), an extract of the cannabis plant, regulated under the FDCA as a drug); In re JJ206, LLC, 120 USPQ2d 1568, 1570 (TTAB 2016) (finding applicant’s use and intended use of the applied for marks on marijuana vaporizers unlawful because the goods constitute illegal drug paraphernalia under the Controlled Substances Act).

 42.   Trademark Act § 14(6), 15 U.S.C. § 1064(6). See TBMP §307.03.

309.03(c)(2)    Priority and Likelihood of Confusion

The following is a brief discussion of the elements of a claim of likelihood of confusion, the most frequently encountered issue in Board inter partes proceedings.

Pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), plaintiff must assert, and then prove at trial, that defendant’s mark, as applied to its goods or services, so resembles plaintiff’s previously used or registered mark or its previously used trade name as to be likely to cause confusion, mistake, or deception.

A.    Priority

A plaintiff must plead (and later prove) priority of use. [ Note 1.] In order to properly assert priority, a plaintiff must allege facts showing proprietary rights in its pleaded mark that are prior to defendant’s rights in the challenged mark. [ Note 2.] Such rights may be shown by, for example, ownership of an application with a filing date (or a registration with an underlying application filing date) prior to any date of first use on which defendant can rely; [ Note 3.] prior trademark or service mark use; [ Note 4.] or prior use analogous to trademark or service mark use. [ Note 5.]

However, priority is not in issue in an opposition where opposer pleads (and later proves) that it owns a registration for its pleaded mark, [ Note 6.] provided that there is no counterclaim or separate petition to cancel the pleaded registration, or any counterclaim or separate petition to cancel the pleaded registration by the applicant is ultimately dismissed and the registration remains uncancelled. [ Note 7.]

A plaintiff may be permitted to assert the proprietary rights or registration(s) of a third-party as a basis for a Trademark Act § 2(d), 15 U.S.C. § 1052(d), ground if plaintiff can show a legitimate interest in preventing confusion between the pleaded mark(s) and the defendant’s mark. [ Note 8.]

NOTES:

 1.   Trademark Act § 2(d), 15 U.S.C. § 1052(d). See West Florida Seafood, Inc., v. Jet Restaurants, Inc., 31 F.2d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (in determining whether a party has established prior use, Board should look at the evidence as a whole); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400 (TTAB 2020) (failed to prove priority of use), civil action filed, No. 3:20-CV-00400 (E.D.Va. June 5, 2020); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1607 (TTAB 2018) (continuous use not required for priority, the question is "whether the mark or trade name has been ‘previously used in the United States by another and not abandoned"); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1483 (TTAB 2017) (failure to prove priority due to abandonment); Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180 & 1199 (TTAB 2017) (same); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1195 (TTAB 2012) (failure to prove priority at common law for goods not covered by pleaded registrations of record); Giersch v. Scripps, 90 USPQ2d 1020, 1023 (TTAB 2009) (petitioner established common law rights of distinctive mark); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (failure to prove priority by preponderance of the evidence); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1287 (TTAB 2008) (respondent not precluded from moving for judgment on the pleadings on the issue of priority, despite its failure to assert priority as an affirmative defense, because priority is a required element of petitioner’s claim); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (priority established by proof of prior use).

 2.   See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628, 1632 (Fed. Cir. 1988); Otto Roth & Co. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979); Milano S.p.A., 2020 USPQ2d 11488, at *7 (TTAB 2020) (no allegations of prior proprietary rights in a mark owned by opposer); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (applicant may rely without further proof upon the filing date of its application as a "constructive use" date for purposes of priority); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1852 (TTAB 2008) (priority based on acquisition of acquired distinctiveness of merely descriptive mark); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1722 (TTAB 2008) (underlying application for registration predates filing date of applicant’s application); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008) (respondent may rely on filing date of registration at issue as constructive date of first use, predating petitioner’s claim of date of first use as verified in its petition); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (oral testimony, even of a single witness, if sufficiently probative, may be sufficient to prove priority); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (priority based on prior use and pleaded registrations); L. & J.G. Stickley, Inc. v. Ronald C. Cosser, 81 USPQ2d 1956 (TTAB 2007); Fram Trak Industries Inc. v. WireTracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996); Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549 (TTAB 1994); Jimlar Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216 (TTAB 1992); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134 (TTAB 1992) (priority of acquired distinctiveness); Rolex Watch U.S.A., Inc. v. Madison Watch Co., 211 USPQ 352 (TTAB 1981) (proprietary right is a right residing in owner of mark and those in privity).

Cf. Stawski v. Lawson, 129 USPQ2d 1036, 1039 & 1052-53 (TTAB 2018) (concurrent use applicant could not meet the jurisdictional requirement of lawful use in commerce prior to defendant’s application filing date), appeal dismissed, No. 19-1617 (Fed. Cir. Dec. 19. 2019); Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB 2012) (reliance solely on a Supplemental Registration insufficient to establish proprietary rights); Stephen Slesinger Inc., v. Disney Enterprises Inc., 98USPQ2d 1890, 1896 n.17 (TTAB 2011) (plaintiff cannot establish priority because it cannot prove ownership of some prior right in view of the district court’s finding that plaintiff transferred all its rights to defendant), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012) cert den. 134 S. Ct. 125 (2013); Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (in view of decision in applicant’s favor on issue of priority, opposer cannot as a matter of law prevail on likelihood of confusion claim); CDS Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572, 1580 (TTAB 2006) (in a concurrent use proceeding, after the jurisdictional requirement has been met, Board must then consider the issue of likelihood of confusion); Aktieselskabet af 21 November 2001 v. Fame Jeans, Inc., 77 USPQ2d 1861, 1864 (TTAB 2006), motion granted,511 F. Supp. 2d 1 (D.D.C. 2007), aff’d in part and rev’d in part,525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008) (priority of trademark rights in the United States depends solely upon priority of use in U.S., and not on priority of use anywhere in the world; opposer must rely upon filing date of its Trademark Act § 44, 15 U.S.C. § 1126 application for its use date).

 3.   See Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011) (opposer may rely on its earlier- filed intent-to-use application filing date as a constructive use date for purposes of priority; any judgment is contingent upon registration of opposer’s application); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (priority established by making pleaded registrations of record); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (where both petitioner and respondent are owners of registrations, petitioner must prove priority of use; may rely on filing date of application for registration); Kohler C. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (respondent may rely on the filing date of the application underlying its registration in establishing priority, in absence of allegation or proof of date of first use earlier than this date); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (priority established by introduction of status and title copy of registration during testimony deposition); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1339 (TTAB 2006) (plaintiff may rely on plaintiff’s application filing dates, subject to issuance of the registrations, for purposes of priority); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (owner of an intent-to-use application may rely on its application filing date as a constructive use date for purposes of priority); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991).

 4.   See Sun Hee Jung v. Magic Snow, LLC, 124 USPQ2d 1041, 1044 (TTAB 2017) (insufficient pleading of priority based on recognition, rather than use, in the United States as well as United States-Korea Free Trade Agreement); Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017) (licensee cannot rely on her licensor’s use to prove priority); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (insufficient record evidence of prior use); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (in absence of pleaded registration, petitioner must show prior common law use); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (petitioner’s use of mark prior to respondent’s first use); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1284-85 (TTAB 2008) (opposer’s use, while not large, was sufficient to constitute more than token use; applicant cannot establish priority in the United States based on the fact that applicant’s mark is well-known in other countries); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (opposer must show use prior to applicant’s priority date; licensing by itself without sales is not use of the mark); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) (pleading of reliance on analogous use established priority); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (interstate or intrastate commerce is sufficient); Jimlar Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216, 1221 (TTAB 1992). Cf. NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718, 1727 (TTAB 2003) (use of mark on collateral promotional items in connection with its service did not give rise to a claim of priority based solely on use of the mark on collateral products).

 5.   See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996) (must show that the activities claimed to constitute analogous use have had "substantial impact" on the purchasing public); West Florida Seafood, Inc., v. Jet Restaurants, Inc., 31 F.2d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994) (use in advertising); Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993) (trade name use); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991) same); Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1142 (TTAB 2013) (reliance on priority through analogous use must be pleaded); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) (analogous use may be asserted against an intent-to-use application); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1965 (TTAB 2007) (use in intrastate commerce may be asserted by plaintiff); Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993) (priority of use against ITU application may be established with prior use analogous to trademark use); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (owner of ITU application may rely on prior use analogous to trademark use). Cf. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1218 (TTAB 2007) (opposer failed to acquire rights through analogous trademark use).

 6.   See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) ("Board must consider existing registrations of subsequent-user opposers because ... [Trademark Act § 2(d), 15 U.S.C. § 1052(d) provides that] an applicant can register, unless his mark is likely to cause confusion with a mark ‘registered in the Patent Office or ... previously used ..."); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012) (there can be no priority dispute when an opposer properly introduces its registrations into the record and there is no counterclaim); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (priority not at issue for the goods and services recited in the pleaded registrations of record); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (priority not at issue on a motion for involuntary dismissal where pleaded registrations were made of record with notice of opposition); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (priority not at issue as to the marks and goods covered by the pleaded registrations, which are of record); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (had opposer properly introduced its pleaded registrations, priority would have been removed as an issue to be proved); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (pleaded registrations show current ownership and that each is valid and subsisting; priority is not an issue); Demon International LC v. Lynch, 86 USPQ2d 1058, 1060 (TTAB 2008) (opposer must properly introduce its pleaded registrations into the record so that priority will not be an issue); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007) (having submitted status and title copies of its pleaded registrations, opposer not required to prove acquired distinctiveness of marks); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) (where petitioner fails to properly make its pleaded registration of record it must rely on common law rights for purposes of likelihood of confusion analysis), aff’d unpub, 208 Fed. Appx. 886, 887 (Fed. Cir. Dec. 6, 2006); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1225 (TTAB 2005); SCOA Industries, Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975), appeal dismissed, 189 USPQ 15 (CCPA 1976); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998).

See alsoOtter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254-55 (TTAB 2012) (priority not at issue in opposition where pleaded registration of record resides on Supplemental Register).

Cf. regarding cancellation proceedings, Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1219-20 (TTAB 2011) (where respondent did not introduce evidence of earlier use, petitioner’s priority established based on the filing date of the underlying application which matured into its pleaded registration); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB 2008); Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (in a cancellation proceeding the registrations of each party offset each other and petitioner must, in the first instance, establish prior rights); American Standard Inc. v. AQM Corp., 208 USPQ840, 841 (TTAB 1980) (priority must be proven in cancellation proceeding).

 7.   See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) ("prior use need not be shown by an opposer relying on a registered mark unless the applicant counterclaims for cancellation"); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 286 (CCPA 1963) (as long as a registration relied on by an opposer remains uncancelled, it will be treated as valid and entitled to all statutory presumptions; having dismissed petition to cancel pleaded registrations, and since no appeal was taken, Board was obligated to treat opposer’s registrations as valid and as though no such petition had been filed); Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 49 USPQ2d 1313, 1315 (Comm’r Pat. 1998) ("prior use need not be shown by an opposer relying on a registration of its pleaded mark for its pleaded goods or services unless the applicant counterclaims for cancellation"). See also 37 C.F.R. § 2.106(b)(3)(ii)  (attack on registration must be made by counterclaim or separate claim); Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1139 (TTAB 2013) (plaintiff must prove priority in cancellation and in oppositions where there is a counterclaim to cancel its pleaded registration); Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (better practice is to raise defense as a counterclaim); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 n.1 (TTAB 2007) (applicant’s arguments in its brief that opposer’s marks are functional, non-distinctive, and lack source-indicating significance constitute an impermissible collateral attack on opposer’s pleaded registrations, which arguments cannot be considered in the absence of a counterclaim for cancellation). Cf. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (petition or counterclaim to restrict the scope of goods in registration under Trademark Act § 18, 15 U.S.C. § 1068 was not a collateral attack on the validity of that registration).

Please Note: In cases where a plaintiff has relied on its ownership of a pleaded registration, any counterclaim or petition to cancel that registration may be decided before the issues in the underlying opposition, at the discretion of the Board. See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1328 (TTAB 1992); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1272 (TTAB 1992); but see Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013) (Board properly retained jurisdiction to decide applicant’s counterclaim after finding no likelihood of confusion since "[s]tanding is assessed at the time the counterclaim is filed").

 8.   See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (interest of trade association found sufficient); Association pour la Defense et la Promotion de l’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1841 (TTAB 2007) (petitioner committee’s right derived through inheritance found sufficient); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996) (petitioners failed to allege that they, or anyone else, possessed proprietary rights in the term); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (fraternal organization has standing); Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549, 1552 (TTAB 1994) (no legitimate interest in preventing confusion alleged).

B.    Likelihood of Confusion

The evidentiary factors the Board considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). These factors include the similarity of the marks, the relatedness of the goods and/or services, the channels of trade and classes of purchasers for the goods and/or services, the number and nature of similar marks in use on similar goods, the nature and extent of any actual confusion, and the fame of the prior mark. [ Note 1.] The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases. [ Note 2.]

Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead likelihood of confusion directly or hypothetically. [ Note 3.] A hypothetical pleading may consist of assertions that if, as the trademark examining attorney (or the defendant) contends, plaintiff’s mark so resembles defendant’s mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then plaintiff will be damaged by the registration of defendant’s mark. [ Note 4.] Of course, in order to state a claim upon which relief can be granted, a hypothetical pleading of likelihood of confusion must be coupled with a pleading of one or more grounds for opposition or cancellation, such as, that defendant’s mark has been abandoned; that plaintiff has priority of use (here, the hypothetical pleading of likelihood of confusion serves both as a pleading of plaintiff’s standing and as part of the pleading of a ground under Trademark Act § 2(d), 15 U.S.C. § 1052(d) ); etc. Thus, a plaintiff wishing to plead likelihood of confusion hypothetically in a proceeding based upon § 2(d) might assert, for example, that if, as the trademark examining attorney (or the defendant) contends, plaintiff’s mark so resembles defendant’s mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then the registration sought by defendant should be refused (or defendant’s registration should be cancelled) because plaintiff has priority of use. [ Note 5.]

Reverse Confusion:"Reverse confusion" does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion. [ Note 6.]

NOTES:

 1.   See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See, e.g., Omaha Steaks International, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690-91 (Fed. Cir. 2018) (Board erred in consideration of the fifth and sixth du Pont factors which affected analysis of the first du Pont factor); Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En, 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (to determine whether the marks are similar for purposes of assessing the likelihood of confusion, the Board will consider the appearance, sound, connotation and commercial impression of each mark); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (the nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration); The North Face Apparel Corp. v. Sanyang Industries, Inc., 116 USPQ2d 1217, 1225 (TTAB 2015) (no context provided for figures in support of fame; burden of proving fame not met); Anheuser-Busch, LLC v. Innvopak Systems Pty. Ltd., 115 USPQ2d 1816, 1820-21 (TTAB 2015) (fame of mark proved, which weighs heavily in likelihood of confusion finding); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).

See also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800-01 (Fed. Cir. 2018) (substantial evidence supported likelihood of confusion finding based on the similarity of the marks, the goods and the trade channels which were the only relevant factors); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1194 (TTAB 2012) (likelihood of confusion found based on evidence relevant to factors bearing on issue for certain classes of goods but not for one class of goods); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents not applied where both marks were Spanish words); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) (no likelihood of confusion found upon consideration of relevant factors); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008) (the Board will not take judicial notice that items of outerwear and undergarments are related items for purposes of determining whether parties’ goods are related); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007) (unnecessary to prove likelihood of confusion with respect to all goods set forth in application); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (fame); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (test for determining likelihood of confusion with respect to certification mark based on comparison of the mark as applied to the goods of the certification mark users); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) aff’d unpub’d, 208 Fed. Appx. 886, 887 (Fed. Cir. 2006) (several factors considered); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1228 (TTAB 2005) (whether adoption of mark was in bad faith); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004) (likelihood of confusion in pharmaceutical context); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052-53 (TTAB 1992) (family-of-marks).

 2.   See Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (Board did not err in basing its decision on dissimilarity of marks alone); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004) ("Neither we nor the board, however, need consider every duPont factor"); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Kellogg Co. v. Pack’em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (dissimilarity of marks dispositive); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (key considerations are similarities between the marks and goods recited in both parties’ registrations); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001).

 3.   See Fed. R. Civ. P. 8(d)(2).

 4.   See John T. Clark Co. v. Colgate-Palmolive Co., 176 USPQ 93 (TTAB 1972); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971). Cf. Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Lia Jene Inc. v. Vitabath, Inc., 162 USPQ 469, 470 (TTAB 1969) (representations made by petitioner in attempting to overcome reference to secure its own registration cannot estop petitioner from taking a different position in proceeding to cancel such registration).

 5.   See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion which is appropriate where petitioner’s standing is based on its inability to secure a registration, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1150 (TTAB 2013) (Board did not consider hypothetical question of likelihood of confusion sought by senior party); Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as its basis for standing).

 6.   See Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1175 n.18 (TTAB 2011); American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989). See also Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *49 (TTAB 2021) (reverse confusion found where respondent’s presence in the marketplace is considerably greater than that of petitioner).

309.03(d)    Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation)

Trademark Act § 18, 15 U.S.C. § 1068  In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings....

37 C.F.R. § 2.111(b)  Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...

37 C.F.R. § 2.133(b)  If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the involved application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.

37 C.F.R. § 2.99(h)  The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.

37 C.F.R. § 2.133(c)  Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.

Under Trademark Act § 18, 15 U.S.C. § 1068, the Board has the authority to cancel registrations in whole or in part, to restrict the goods or services identified in an application or registration, or to "otherwise restrict or rectify...the registration of a registered mark." [ Note 1.] However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use proceeding. [ Note 2.] For information concerning concurrent use proceedings, see TBMP Chapter 1100.

Relief under § 18 may be sought separately and apart from, or in addition to, any other ground. [ Note 3.] A claim under § 18 is in the nature of an equitable remedy and does not require pleading and proof of specific grounds for cancellation or opposition, such as abandonment. [ Note 4.]

Please Note:A claim in which the plaintiff seeks to delete specific items on the grounds that the defendant is no longer using, and has no intent to resume use of its mark on those goods or services, is not a claim under § 18 but is essentially a "straightforward" pleading of abandonment. [ Note 5.]

A claim to restrict or limit the goods or services under Trademark Act § 18, 15 U.S.C. § 1068. A plaintiff may seek to partially cancel a registration, or partially oppose registration only as to specific items in the identification of goods or services, or only to the extent of restricting the goods or services in a particular manner in terms of type, use, customers, trade channels, etc. [ Note 6.] In such case, essentially a plaintiff is seeking either to delete specific items or limit the identification in some way. For example, a plaintiff may seek to restrict or modify the goods or services in a particular manner, that is, by the addition of wording that identifies the goods or services with greater particularity in terms of type, use, channels of trade, etc.

However, the Board will not permit an action to restrict or modify the goods or services in this manner where such a claim is divorced from the question of likelihood of confusion. [ Note 7.] Thus, a party seeking to restrict an opponent’s broadly worded identification of goods or services, in a case involving likelihood of confusion, must plead and prove that (i) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion and (ii) the opponent is not using its mark on those goods or services that will be effectively excluded from the application or registration if the proposed restriction is entered. [ Note 8.]

In considering a restriction of a registration, the Board will look to the nature of the use made by registrant as of the time the restriction is sought, not as of the time registration was sought. [ Note 9.]

A petition to partially cancel a registration by restricting the goods or services in a particular manner in terms of type, use, channels of trade, etc., in order to avoid a likelihood of confusion can be made against registrations over five years old as well as those less than five years old. [ Note 10.] This is so because such a claim is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration. [ Note 11.]

A claim to restrict or rectify with respect to the register the registration. A petition to restrict or clarify the description of a mark in a registration would fall under the provision giving the Board authority to "restrict or rectify" the register. [ Note 12.] As in the case of a petition to restrict goods or services, a proper pleading to restrict the description of a mark could include allegations that, for example, the description of the mark in the registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would avoid a finding of a likelihood of confusion. [ Note 13.]

That same provision, along with the authority to "register the mark...for the person...entitled thereto," allows the Board to correct, respectively, a registration or application to identify the true owner, if such correction is warranted. [ Note 14.]

Similarly, under this provision, a plaintiff may seek relief in the nature of entry of a disclaimer of an assertedly generic term forming only a portion of the mark, provided that the registration is less than five years old. [ Note 15.]

As in the case of any other claim, a claim for partial opposition or partial cancellation ordinarily should be asserted prior to trial in order to give the defendant fair notice thereof. [ Note 16.] In addition, the claim must be specific in nature so that the defendant has fair notice of the specific restriction being sought. [ Note 17.] Any claim that is not pleaded in the complaint, as originally filed or as amended (or deemed amended) pursuant to Fed. R. Civ. P. 15(a) or 15(b), will not be entertained by the Board. [ Note 18.] See also TBMP § 309.03, TBMP § 314 and TBMP § 507.

A defense which seeks to restrict a plaintiff’s pleaded registration will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [ Note 19.] See TBMP § 309.03(c), TBMP § 311.01(c) and TBMP § 313.01.

For information on a request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 311.02(b); TBMP § 507 and TBMP § 514. For information on asserting a counterclaim to partially cancel a registration, see TBMP § 313.01.

For information concerning the extent of default for failure to file an answer to a claim for partial opposition or cancellation, see TBMP § 312.01.

NOTES:

 1.   Trademark Act § 18, 15 U.S.C. § 1068. See also 37 C.F.R. § 2.111(b)  and 37 C.F.R. § 2.133 (b); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (Board has equitable power to restrict the goods and services under Section 18); Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998); and Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1354 (TTAB 2007) (proposed amendment denied); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1156 (TTAB 2003) (opposition based on applicant’s alleged misconduct and unclean hands in its dealing with the U.S. Customs Service fails to constitute a claim that is cognizable under Trademark Act § 18, 15 U.S.C. § 1068).

 2.   See 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990). Cf. Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting their geographic scope denied).

 3.   Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1829 (TTAB 2013) (Section 18 relief may be sought in the alternative); Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010); Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1995).

 4.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("…a claim for partial cancellation by restriction or modification of the goods or services listed in a plaintiff’s pleaded registration is an equitable remedy under Section 18 of the Trademark Act, not tied to a ground to cancel.").

 5.   Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer’s registration goods specifically listed therein, such as "open reel audio tape," on the grounds that opposer was no longer using and had no intent to resume use of its mark on such goods, it was proper to plead abandonment and applicant did not need to plead that a finding of likelihood of confusion will be avoided by the restriction it sought). See also Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192, 1195 & n.9 (TTAB 1996) (respondent’s counterclaim alleging that respondent may have prior use of the mark in the trade channels sought to be excluded in petitioner’s registration, was legally insufficient pleading of either likelihood of confusion or abandonment because likelihood of confusion is not available ground for cancellation of registration over five years old and because counterclaim lacked pleading of allegation that petitioner had not, as of the filing date of the counterclaim, commenced using its mark in connection with the goods which counterclaimant sought to have deleted from registration).

 6.   See Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1196-97 (TTAB 2014); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); and Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Cf. IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954 (TTAB 2009) (amendment denied).

 7.   See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("the Board will not exercise its authority under Section 18 to permit an action for partial cancellation by restriction or modification of the goods listed in an application or registration where such a claim is divorced from the question of likelihood of confusion."); Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994) (discretion to limit a registration will only be exercised when such partial cancellation or restriction will avoid the finding of likelihood of confusion). Cf. Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB) (a defendant may assert an affirmative defense by moving to restrict its own goods and/or services in order to avoid any likelihood of confusion alleged by plaintiff).

Please Note: To the extent that cases decided prior to Eurostar permitted a restriction in the absence of a pleading that the restriction sought will avoid a likelihood of confusion, and to the extent that those cases required the pleading and proof of a separate ground of nonuse or abandonment, those cases were expressly overruled by Eurostar.

 8.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (applicant’s attempt to restrict opposer’s registration for computer programs to "computer programs except computer programs for maintenance management" was rejected as it did not serve to avoid likelihood of confusion since proposed restriction failed to delineate different users or different channels of trade).

 9.   See Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996).

 10.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994).

 11.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1994). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially cancel pleaded registration to restrict scope of goods therein did not preclude opposer’s reliance on pleaded registration to establish priority in the opposition).

 12.   See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998).

 13.   See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479-80 (TTAB 1998). See also Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1699 (TTAB 2014) (sufficient to allege that a feature of the description of the mark renders the description not specific to the mark as actually used and that the proposed amendment of the description to the color actually used would avoid a likelihood of confusion).

 14.   See Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018) (under Trademark Act § 18, the Board may, upon motion of any party before it, amend the ownership of an application in order to give effect to a district court judgment ordering transfer of a trademark application); 8440 LLC v. Midnight Oil Co., 59 USPQ2d 1541, 1541 (TTAB 2001) (where the record showed that plaintiff, rather than defendant, was the true owner of the marks in the challenged application and registration and where the parties filed a joint motion that registration be issued in the name of plaintiff and that the register be rectified to show plaintiff as the owner of the existing registration, Board exercised authority under Trademark Act § 18, and granted motion). See also Chapman v. Mill Valley Cotton, 17 USPQ2d 1414, 1415 (TTAB 1990) (Section 18 is broad enough to authorize the Board to amend ownership of the registration upon request of the parties).

 15.   See Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (petitioner, seeking entry of a disclaimer of a purportedly generic term that formed a portion of a mark that is not generic in its entirety, and that resided on the Principal Register for more than five years, failed to state a claim upon which relief may be granted); Kellogg Co. v. Pack’em Enterprises, Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (counterclaim plaintiff seeking, in the alternative, that an amendment be entered to disclaim a purportedly descriptive portion of an asserted mark registered for less than five years stated a claim upon which relief may be granted).

 16.   See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1287 (TTAB 1998) (restriction proposed for first time in reply brief untimely); Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 n.10 (TTAB 1990) (petitioner’s request to restrict channels of trade for respondent’s goods denied when raised at end of rebuttal period). Cf. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (applicant’s proposed restriction to application denied; Board will only exercise this authority where the issue of restriction has been raised in either the pleadings or by motion or has been tried by the parties, and the possible restriction has been stated with precision). But see Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (motion to amend, filed prior to opening of opposer’s testimony period, to add counterclaim to restrict the goods and services identified in opposer’s pleaded registrations granted).

 17.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994) (party that seeks to restrict a registration or application should state with as much precision as possible the restriction it seeks, so that the issue is properly framed for trial); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1749 (TTAB 1992) (counterclaim failed to specify the least restrictive language applicant would accept); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1218 (TTAB 1990) (counterclaim that opposer’s registration should be amended "to accurately describe the services" was vague); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985).

 18.   See Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1272 (TTAB 1994); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (petitioner’s request to restrict channels of trade for respondent’s goods denied when raised at end of rebuttal period).

 19.   37 C.F.R. § 2.106(b)(3)(ii).

309.04    Defects in Complaint That May Affect Institution of Proceeding

An opposition or a petition for cancellation must be filed via ESTTA. However, if ESTTA is unavailable due to technical problems, or due to extraordinary circumstances, an opposition or petition for cancellation may be filed on paper, (except for an opposition against a § 66(a) application) if accompanied by a Petition to the Director under 37 C.F.R. § 2.146 and the required fee. [ Note 1.] Following are circumstances that affect the institution of the proceeding, some of which are specific to paper filings.

No proceeding will be instituted, and any submitted filing fee for the proceeding will be refunded in the following circumstances:

• (1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 C.F.R. § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified through mistake. See TBMP § 303.05.
• (2) In the rare circumstance that an opposition or a petition for cancellationin paper form, accompanied by a Petition to the Director and the required fee, and the opposition or petition to cancel is deemed prematurely filed (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board’s action). See TBMP § 306.03 and TBMP § 307.03. Please Note: ESTTA does not permit a party to file a notice of opposition prior to the opposition period or a petition to cancel prior to registration of the mark.
• (3) In the rare circumstance that an opposition is filed in paper form accompanied by a Petition to the Director and the required fee, and the opposition is filed after the time for opposing has expired; or is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed. See TBMP § 218, TBMP § 306.04, TBMP § 308 and TBMP § 309.02(b). Please Note: ESTTA does not permit a plaintiff to file a notice of opposition after the expiration of the opposition period or without payment of the required fee. [ Note 2.]
• (4) If a party files an opposition, but the notice of opposition misidentifies the application serial number, and it is clear from the notice of opposition that another serial number was intended, should it come to the Board’s attention as the Board is manually instituting the opposition that a notice of allowance has issued with respect to the intended serial number or that the mark has been registered, the proceeding will not be instituted and the filing fee will be refunded. Please Note: because almost all oppositions are instituted electronically by ESTTA with no prior review by the Board, a misidentified application number will no longer come to the Board’s attention.
• (5) In the rare circumstance that a petition for cancellation is filed in paper form accompanied by a Petition to the Director and the required fee, but the petition to cancel is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the cancellation may not be instituted. [ Note 3.]

No proceeding will be instituted and the filing fee will not be refunded in the following circumstances:

• (1) If a party files an opposition or petition for cancellation in paper form without the Petition to the Director and the required fee under37 C.F.R. § 2.146, the proceeding will not be instituted and the filing fee will not be refunded.
• (2) If a party files an opposition or petition for cancellation in paper form accompanied by the Petition to the Director and the required fee and the required showing in the Petition to the Director is found to be insufficient, the proceeding will not be instituted and the filing fee will not be refunded.

Proceedings will be instituted and the filing fee charged in the following circumstances:

• (1) In the rare circumstance that a party files a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the Petition to the Director is granted, and the petition to cancel is filed against a Principal Register registration that is more than five years old, but does not allege any ground upon which such a registration can be cancelled (see Trademark Act § 14, 15 U.S.C. § 1064 ), the cancellation will still be instituted. (The insufficiency of pleaded claims must be raised by motion, such as under Fed. R. Civ. P. 12. It may also be addressed during a discovery conference conducted with Board participation.) Any fee submitted with the petition will not be refunded. Please Note: when a plaintiff uses ESTTA to file a notice of opposition or petition to cancel, ESTTA presents a checklist of available grounds and prompts the filer to select grounds for opposition or cancellation. [ Note 4.] Failure to select or include any grounds will halt the filing process. For a petition to cancel, if the involved registration is more than five years old, ESTTA will present a listing of available grounds under Trademark Act § 14(3), Trademark Act § 14(5), and Trademark Act § 14(6), 15 U.S.C. § 1064(3), 15 U.S.C. § 1064(5), 15 U.S.C §1064(6), and will not allow a party to select other (unavailable) grounds.
• (2) In the rare circumstances that a petition for cancellation is filed in paper form, accompanied by a Petition to the Director and the required fee, and at the time of the filing of the petition, the registration sought to be cancelled was not a "live" registration (e.g., the time for filing an affidavit of use under Trademark Act § 8, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot. Any fee submitted with the petition for cancellation will not be refunded. Please Note: The ESTTA filing system prompts the user to input the registration number of the mark for which cancellation is sought. If the registration is not "live," ESTTA will halt the process. ESTTA will also refuse to continue an opposition filing process if the potential opposer inputs a serial number for a mark that has not yet been published for opposition or for which the opposition period has expired.
• (3) In the rare circumstances that a party files an opposition or a petition for cancellation in paper form, accompanied by a Petition to the Director and the required fee, and the filer immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, the proceeding will be instituted, and no refund will be made. However, in cases where the Petition to the Director to file on paper is granted and there is a defect in the opposition or petition for cancellation which precludes institution, no proceeding will be instituted, and any submitted fee for the opposition or petition to cancel will be refunded.
• (4) If a party files an opposition or a petition for cancellation but misidentifies the application serial number or registration number, and the proceeding is instituted against the incorrect serial or registration number, the filing fee will not be refunded. [ Note 5.] See TBMP § 306.01.

When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather than vacated, so as to maintain the integrity of the proceeding numbers. If the opposition or cancellation was filed on paper, the Board will appropriately dispose of all physical papers because the papers are scanned shortly after filing and appear in the electronic docket for the instituted, though dismissed, proceeding. If the proceeding was instituted through ESTTA, the electronic file record for the erroneous opposition or cancellation will be retained in TTABVUE.

NOTES:

 1.   37 C.F.R. § 2.101(b)(1); 37 C.F.R. § 2.101(b)(3); 37 C.F.R. § 2.101(b)(2); 37 C.F.R. § 2.101(d); 37 C.F.R. § 2.111(c)(1); 37 C.F.R. § 2.111(c)(2).

 2.   See 37 C.F.R. § 2.101(d); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity). See also Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1908 (TTAB 2014) (Board applies opportunity to cure provision in § 2.119(e) to improperly signed complaint, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office").

 3.   See 37 C.F.R. § 2.111(d).

 4.   37 C.F.R. § 2.104(a)  and 37 C.F.R. § 2.112(a); See O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 n.4 (TTAB 2010) ("When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition").

 5.   See 37 C.F.R. § 2.194(b)(1); Yahoo! Inc., v. Loufrani, 70 UPSQ2d 1735, 1736 (TTAB 2004).

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 USPTO 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 USPTO 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 Trademark Act § 66(a), 15 U.S.C §1141f, 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, assigning each party’s time for pretrial disclosures and for taking testimony, and the briefing periods. [ 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, the Board will send notification to defendants by email where an email address is of record for registrant and by U.S. mail where there is no email address of record for registrant. [ 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(c)  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 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.

A foreign-domiciled party, whether plaintiff or defendant, is required to obtain U.S. counsel. [ Note 21.]

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 22.] 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.   37 C.F.R. § 2.11(a).

 22.   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).

311    Form and Content of Answer

311.01    Form of Answer

37 C.F.R. § 2.116 Federal Rules of Civil Procedure.

• (c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.