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.").