313.02    Fee for Counterclaim

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

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

37 C.F.R. § 2.111(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).

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A counterclaim for cancellation of a plaintiff’s registration is the legal equivalent of a separate petition to cancel. The required filing fee must be paid when a petition to cancel takes the form of a counterclaim, just as it must be paid when a petition to cancel takes the form of a separate proceeding. [ Note 1.] That is, the required fee (see 37 C.F.R. § 2.6 ) must be paid for each party joined as counterclaimant for each class sought to be cancelled in each registration against which the counterclaim is filed. [ Note 2.] Cf. TBMP§ 308.02.

A counterclaim must be filed via ESTTA, which requires the petition to cancel to include a fee sufficient to pay in full for each named petitioner and for each class sought to be cancelled in the registration, as specified in the petition. [ Note 3.] In the rare instances that a counterclaim petition to cancel is submitted in paper form, if no fee is submitted with the counterclaim, or the fee is insufficient to pay in full for each named petitioner and for each class in the registrations for which cancellation is sought, the counterclaim may not be instituted. [ Note 4.]

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(3)(iii); 37 C.F.R. § 2.114(b)(3)(iii); and 37 C.F.R. § 2.111(d); Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (payment of fee is necessary to give Board jurisdiction); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1748 (TTAB 1992), summ. judgment granted in part, 26 USPQ2d 1926 (TTAB 1993) (same); Sunway Fruit Products, Inc. v. Productos Caseros, S. A, 130 USPQ 33, 33 (Comm’r 1960) (requirement for fee is statutory and cannot be waived). 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 because petitioner did not pay 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(d)  and 37 C.F.R. § 2.112(b) .

 3.   See 37 C.F.R. § 2.111(d)  and 37 C.F.R. § 2.112(b) .

 4.   See 37 C.F.R. § 2.111(d)  and 37 C.F.R. § 2.112(b) .