503.03    Leave to Amend Defective Pleading

A plaintiff may amend its complaint within 21 days after service of a motion under Fed. R. Civ. P. 12(b)(6) or with the written consent of every adverse party, or by leave of the Board, which is freely given when justice so requires. [ Note 1.] See TBMP § 507.02 for further information about the timing for amending a pleading in Board proceedings. Thus, plaintiffs to proceedings before the Board ordinarily can, and often do, respond to a motion to dismiss by filing, inter alia, an amended complaint. If a timely amended complaint is submitted, the original motion to dismiss normally will be moot. [ Note 2.]

If no amended complaint is submitted in response to a motion to dismiss for failure to state a claim upon which relief can be granted, and the Board finds, upon determination of the motion, that the complaint fails to state a claim upon which relief can be granted, the Board generally will allow the plaintiff an opportunity to file an amended pleading. [ Note 3.]

However, in appropriate cases, that is, where justice does not require that leave to amend be given, the Board, in its discretion, may refuse to allow an opportunity, or a further opportunity, for amendment. [ Note 4.] See TBMP § 507.02 (regarding motions to amend pleadings).

NOTES:

 1.   See Fed. R. Civ. P. 15(a); see, e.g., Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1521 (TTAB 2013).

 2.   Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1926 (TTAB 2014) (finding first motion to dismiss moot in view of filing of amended pleading; considering amended pleading filed in response to second motion to dismiss); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1537 (TTAB 2007) (considering amended pleading, filed in response to motion to dismiss, in connection with the motion to dismiss).

 3.   Wise F&I, LLC, et al. v. Allstate Insurance Co., 120 USPQ2d 1103, 1110 (TTAB 2016) (allowed time to cure defective pleading);Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1208 (TTAB 1997) (allowed time to perfect fraud claim); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993) ("the Board freely grants leave to amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be insufficient, particularly where challenged pleading is the initial pleading"); Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allowed time to file an amended opposition setting forth a statutory ground). See also Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) ("Although it is the general practice of the Board to allow a party an opportunity to correct a defective pleading, in the instant case leave to amend the pleading would serve no useful purpose"), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).

 4.   Fed. R. Civ. P. 15(a)(2); Major League Soccer, L.L.C. v. F.C. Internazionale Milano S.p.A., 2020 USPQ2d 11488, at *7 (TTAB 2020) (Board did not grant leave to replead opposer’s Trademark Act § 2(d) claim due to futility where opposer twice failed to plead prior proprietary rights or a legitimate interest in preventing a likelihood of confusion);Lacteos de Honduras S.A. v. Industrias Sula, S. De R.L. de C.V., 2020 USPQ2d 10087, at *7 (TTAB 2020) (motion to dismiss counterclaim based on Article 8 of the Pan-American Convention granted with no leave to amend due to futility of any proposed amendment to pleading); Sun Hee Jung v. Magic Snow, LLC, 124 USPQ2d 1041, 1044 (TTAB 2017) (Board did not grant leave to replead opposer’s Trademark Act § 2(d) claim due to futility where opposer twice failed to plead prior use); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929 n.10 (TTAB 2014) (Board did not grant leave to replead fraud claim due to futility and lack of plausibility based on recited facts); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1590-91 (TTAB 2009) (because petitioner twice failed to properly allege prior use, petitioner’s Trademark Act § 2(d) claim was dismissed with prejudice); Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (amendment would be futile because opposers cannot prevail on claim as a matter of law); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (plaintiff had already been allowed two opportunities to perfect its pleading, therefore, the Board did not find that it was in the interests of justice to grant plaintiff an additional opportunity to amend the complaint); Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) (amendment would serve no useful purpose), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). Cf. Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving to amend); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067, 1069 (TTAB 1987) (motion to amend to add claim or defense which is legally insufficient will be denied); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 859 (TTAB 1986) (entry of amendment would serve no useful purpose where opposer’s Section 2(a) pleading fails to state a claim).