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.").