507    Motion to Amend Pleading

507.01    In General

Fed. R. Civ. P. 15.

  • (a) Amendments Before Trial.
    • (1) Amending as a Matter of Course. A party may amend its pleading once as a matter of course within:
      • (A) 21 days after serving it, or
      • (B) if the pleading is one to which a responsive pleading is required, 21 days after service of a responsive pleading or 21 days after service of a motion under Rule 12(b), (e), or (f), whichever is earlier.
    • (2) Other Amendments. In all other cases, a party may amend its pleading only with the opposing party’s written consent or the court’s leave. The court should freely give leave when justice so requires.
    • (3) Time to Respond. Unless the court orders otherwise, any required response to an amended pleading must be made within the time remaining to respond to the original pleading or within 14 days after service of the amended pleading, whichever is later.
  • (b) Amendments During and After Trial.
    • (1) Based on an Objection at Trial. If, at trial, a party objects that evidence is not within the issues raised in the pleadings, the court may permit the pleadings to be amended. The court should freely permit an amendment when doing so will aid in presenting the merits and the objecting party fails to satisfy the court that the evidence would prejudice that party’s action or defense on the merits. The court may grant a continuance to enable the objecting party to meet the evidence.
    • (2) For Issues Tried by Consent. When an issue not raised by the pleadings is tried by the parties’ express or implied consent, it must be treated in all respects as if raised in the pleadings. A party may move – at any time, even after judgment – to amend the pleadings to conform them to the evidence and to raise an unpleaded issue. But failure to amend does not affect the result of the trial of that issue.

      …

  • (d) Supplemental Pleadings. On motion and reasonable notice, the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence, or event that happened after the date of the pleading to be supplemented. The court may permit supplementation even though the original pleading is defective in stating a claim or defense. The court may order that the opposing party plead to the supplemental pleading within a specified time.

37 C.F.R. § 2.107  Amendment of pleadings in an opposition proceeding.

  • (a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, 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.
  • (b) Pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, once filed, the opposition may not be amended to add grounds for opposition or goods or services beyond those identified in the notice of opposition, or to add a joint opposer. The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement.

37 C.F.R. § 2.115  Amendment of pleadings in a cancellation proceeding. Pleadings in a cancellation proceeding may be amended in the same manner and to the same extent as in a civil action in a United States district court.

The primary purpose of pleadings, under the Federal Rules of Civil Procedure, is to give fair notice of the claims or defenses asserted. [ Note 1.] See TBMP § 309.03(a) (Substance of Complaint - In General), TBMP § 311.02 (Substance of Answer), TBMP § 506.01 (Nature of Motion to Strike Matter from Pleading), and cases cited in the foregoing sections. The Board will not entertain claims or defenses that are not asserted in the pleadings as originally filed, or as amended or deemed amended. See TBMP § 314 (Unpleaded Matters).

Amendments to pleadings in inter partes proceedings before the Board are governed by Fed. R. Civ. P. 15. [ Note 2.] Amendments in general are governed by Fed. R. Civ. P. 15(a). Amendments to conform the pleadings to trial evidence are governed by Fed. R. Civ. P. 15(b).

As a general rule, pleadings in an inter partes proceeding before the Board may be amended in the same manner and to the same extent as in a civil action in a United States district court. There are some exceptions to this rule: (1) after the close of the time for filing an opposition, the notice of opposition may not be amended to add to the goods or services opposed or to add a joint opposer [ Note 3.]; (2) an opposition against an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), may not be amended to add a new ground for opposition, goods or services opposed, or a joint opposer [ Note 4.]; (3) the scope of the opposed goods and services for an opposition against an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is limited to the goods and services listed in the ESTTA cover sheet [ Note 5.]; (4) the scope of the grounds for an opposition against an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is limited to the grounds set out in the ESTTA cover sheet, notwithstanding what is set forth in the supporting pleading, [ Note 6.]; and (5) the named opposers for an opposition against an application filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), is limited to those opposers set out in the ESTTA cover sheet [ Note 7.]. Thus, an opposition against a Trademark Act § 66(a) application may not be amended to add an entirely new claim; a claim based on an additional registration in support of an existing Trademark Act § 2(d), 15 U.S.C. § 1052(d)  claim; a joint opposer; or additional goods and services. [ Note 8.] Other amendments, such as those that would amplify or clarify the grounds for opposition, are not prohibited by this rule. [ Note 9.]

A signed copy of the proposed amended pleading should accompany a motion for leave to amend a pleading.

The Board recommends submission of a red-lined copy showing the proposed changes along with a clean copy of the proposed amended pleading.

NOTES:

 1.   See Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007) ("... under the notice pleading rules applicable to this proceeding opposer is only required to state a valid claim.").

 2.   37 C.F.R. § 2.107, 37 C.F.R. § 2.115, and 37 C.F.R. § 2.116(a).

 3.   37 C.F.R. § 2.107(a). See also Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436 (TTAB 2007).

 4.   37 C.F.R. § 2.107(b). See also O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1330 (TTAB 2010).

 5.   See Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151-52 (TTAB 2014); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011), rev’d on other grounds, No. 11-3684 (D.N.J. Aug. 29, 2017).

 6.   See Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151-52 (TTAB 2014); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011). Cf. Destileria Serralles, Inc. v. Kabushiki Kaisha Donq, 125 USPQ2d 1463, 1467-68 (TTAB 2017) (granting motion to strike evidence related to opposer’s purported common law rights insofar as they were not identified in the ESTTA cover sheet), appeal voluntarily dismissed, No. 18-1608 (Fed. Cir. Aug. 10, 2018).

 7.   37 C.F.R. § 2.107(b). Cf. Prosper Business Development Corp. v. International Business Machines Corp., 113 USPQ2d 1148, 1151-52 (TTAB 2014) (USPTO must notify International Bureau of certain required information found in Rule 17 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (as in force on Jan. 1, 2013), which includes, inter alia, name of opponent).

 8.   37 C.F.R. § 2.107(b).

 9.   RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT, 68 Fed. Reg. 55748, 55757 (September 26, 2003).

507.02    Amendments – General Rule – Fed. R. Civ. P. 15(a)

Pursuant to Fed. R. Civ. P. 15(a), a party to an inter partes proceeding before the Board may amend its pleading once as a matter of course within 21 days after serving it. If the pleading is one to which a responsive pleading is required, the pleading may be amended once as a matter of course at any time within 21 days after the responsive pleading is served, or 21 days after service of a motion under Rule 12(b), (e), or (f), whichever is earlier. [ Note 1.] As a practical matter, because the time to answer set by the Board’s institution order is greater than 21 days, a plaintiff may amend its complaint once as a matter of course beyond the initial 21 days from serving it until the defendant files either an answer or a Rule 12(b), (e) or (f) motion. If proceedings are suspended during this period and later resumed with the time to answer reset, a plaintiff may amend its complaint once as a matter of course until the defendant files an answer or a Rule 12(b), (e) or (f) motion. An amendment filed as a matter of course need not be accompanied by a motion for leave to amend, although it should be captioned as an amended pleading. [ Note 2.]

Thereafter, a party may amend its pleading only by written consent of every adverse party or by leave of the Board; and leave must be freely given when justice so requires. [ Note 3.] In view thereof, the Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. [ Note 4.] This is so even when a plaintiff seeks to amend its complaint to plead a claim other than those stated in the original complaint, [ Note 5.], including a claim based on a registration issued to or acquired by plaintiff after the filing date of the original complaint. [ Note 6.] However, the plaintiff in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application (i.e., a Madrid Protocol application) may not amend the pleading to add an entirely new claim, seek to rely on an additional registration in support of an existing Trademark Act § 2(d), 15 U.S.C. § 1052(d)  claim, or after the time for filing an opposition has expired, add a joint opposer or goods or services to the proceeding. [ Note 7.] See TBMP § 507.01 for a further discussion on limitation to amendments in a notice of opposition against a Madrid application.

A proposed amendment need not set forth a new claim or defense; a proposed amendment may serve simply to amplify allegations already included in the moving party’s pleading. [ Note 8.] However, where the moving party seeks to add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. [ Note 9.] Cf. TBMP § 503.03 (Leave to Amend Defective Pleading). On the other hand, whether or not the moving party can actually prove the allegation(s) sought to be added to a pleading is a matter to be determined after the introduction of evidence at trial or in connection with a proper motion for summary judgment, and the nonmoving party should not argue against granting the moving party leave to amend merely because the nonmoving party believes the moving party will not be able to prove the additional claim or allegations at trial. [ Note 10.]

Generally, an amended pleading, if allowed, will supersede any prior pleadings, particularly an amended pleading that is complete in itself and does not adopt or make any reference to the earlier pleadings. [ Note 11.]

NOTES:

 1.   Fed. R. Civ. P. 15(a).

 2.   Fed. R. Civ. P. 15(a).

 3.   Fed. R. Civ. P. 15(a). See also Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) ("Trademark Rule 2.115, 37 C.F.R. § 2.115, and Fed. R. Civ. P. 15(a) encourage the Board to look favorably on motions to amend pleadings, stating that ‘leave shall be freely given when justice so requires.’").

 4.   Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54, at *4-10 (TTAB 2022) (motion to amend to amplify allegations concerning prior common law rights and add allegations of ownership of applications filed after proceeding commenced); Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 USPQ2d 785, at *11-14 (TTAB 2021) (amendment to plead prior use and registration of a mark as an additional basis for its Section 2(d) claim where discovery had not yet opened); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend); Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) ("In deciding whether to grant leave to amend, the Board may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings."); ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1300 (TTAB 2012); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1759 (TTAB 2008); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) ("the Board does not grant such leave [to amend the pleading] when entry of the proposed amendment would be prejudicial to the right of the adverse party"); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1786 (TTAB 2006); Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1799 (TTAB 2001); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1383 (TTAB 1991); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240, 1242 (Comm’r 1990); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990); Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732, 1733-34 (TTAB 1990); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); See’s Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395, 1397 (TTAB 1989); Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, 39-40 (TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986).

 5.   Ashland Licensing & Intellectual Prop. LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1128 (TTAB 2016) (petition to cancel filed when the subject registration is less than five years old tolls the five-year bar set forth in Trademark Act Section 14, 15 U.S.C. § 1064, for the purpose amending the petition to add new claims.); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007) (fraud claim added); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1738, 1785-86 (TTAB 2006) (new claim asserts that the requirements of Trademark Act § 44 had been violated); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000). See also Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, 39-40 (TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 858-59 (TTAB 1986); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 430-31 (TTAB 1985); Gemini Engine Co. v. Solar Turbines Inc., 225 USPQ 620, 621 n.3 (TTAB 1985). But see Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend).

 6.   Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1867 (Fed. Cir. 1991) (amendment to add later-acquired registration to tack on prior owner’s use); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 (TTAB 1990) (notice of opposition amended during testimony period to add claim of ownership of newly issued registration); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); Cudahy Co. v. August Packing Co., 206 USPQ 759, 759-60 nn. 2-3 (TTAB 1979); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240, 1241-43 (Comm’r 1990) (opposer’s motion to amend to join party and claim ownership of registration granted). But see UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (if a party pleads a pending application in the notice of opposition, it may make the resulting registration of record at trial without having to amend its pleading to assert reliance on the registration).

 7.   37 C.F.R. § 2.107(b). See Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151-52 (TTAB 2014) (because opposer identified Sections 2(d) and 43(c) as grounds for opposition in the ESTTA electronic opposition form, opposer is limited to those grounds for opposition against Madrid application; however, because those grounds were not limited in the form to any particular class or classes, opposer may seek leave to amend to assert those grounds against all of the three international classes in the involved application).

 8.Topco   Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54, at *7-8 (TTAB 2022) (motion to amend to amplify allegations concerning prior common law rights); Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ 539, 541 (TTAB 1973) (allegations amplified). Cf. ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1301 (TTAB 2012) (proposed alleged failure to function as a mark is a new ground, not an amplification of the existing ground that the mark is merely descriptive).

 9.   Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1785 (Fed. Cir. 1990) (motion to amend to restrict goods would serve no purpose); Embarcadero Technologies, Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (because proposed claims are untimely and futile, the motion for leave to amend denied); The North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1221-22 (TTAB 2015) (motion for leave to amend answer to add affirmative defense that if the Board should find applicant not entitled to registration of the opposed mark with respect to some but not all goods or services listed in applications, then Applicant should be allowed to amend applications to conform to Board’s findings denied for failure to identify goods or services to be deleted); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 (TTAB 2007); Hurley International L.L.C. v. Volta, 82 USPQ2d 1339, 1341 (TTAB 2007); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 62 USPQ2d 1857, 1858 (TTAB 2002) (amendment denied because Board has no jurisdiction to decide issues arising under state dilution laws), aff’d, 330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003), cert. denied, 124 S. Ct. 958 (2003); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702-03 (TTAB 2002) (proposed amended pleading of abandonment insufficient and leave to amend denied as futile where opposer asserted applicant’s lack of exclusive rights in the mark but failed to include allegation that mark had lost all capacity to act as a source indicator for applicant’s goods); Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead allowed); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541-42 (TTAB 2001) (where proposed pleading of dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving to amend); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (motion to add counterclaim denied where mere allegation that opposer did not submit copy of foreign registration at time of examination is insufficient to state claim); Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (opposers could not prevail on res judicata claim as a matter of law); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506-07 (TTAB 1993) (claim of lack of bona fide intent to use found legally sufficient); CBS Inc. v. Mercandante, 23 USPQ2d 1784, 1786-87 (TTAB 1992) (opposer’s attempt to amend answer to add counterclaim denied as inconsistent with notice of opposition).

 10.   Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992); Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989).

 11.   Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1858 (Fed. Cir. 2000) (citing, inter alia, Kelley v. Crosfield Catalysts, 135 F.3d 1202 (7th Cir. 1998)). See, e.g., Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 n.10 (TTAB 2000).

507.02(a)    Timing of Motion to Amend Pleading – In General

The timing of a motion for leave to amend under Fed. R. Civ. P. 15(a) plays a large role in the Board’s determination of whether the adverse party would be prejudiced by allowance of the proposed amendment. [ Note 1.] A long and unexplained delay in filing a motion to amend a pleading (when there is no question of newly discovered evidence) may render the amendment untimely. [ Note 2.]

In order to avoid any prejudice to the adverse party when a motion for leave to amend under Fed. R. Civ. P. 15(a) is granted, the Board may, in its discretion, reopen the discovery period to allow the adverse party to take discovery on the matters raised in the amended pleading. [ Note 3.] Exercise of such discretion to reopen discovery, however, may not be necessary when the proposed additional claim or allegation concerns a subject on which the nonmoving party can be expected to have relevant information in hand. This is especially true when the factual basis for the motion to amend was obtained by the moving party through discovery taken from the nonmoving party.

NOTES:

 1.   Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54, at *4-10 (TTAB 2022) (motion to amend to amplify allegations concerning prior common law rights and add allegations of ownership of applications filed after proceeding commenced); Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 USPQ2d 785, at *11-14 (TTAB 2021) (no undue delay in seeking to amend to plead prior use and registration of a mark as an additional basis for its Section 2(d) claim); Ashland Licensing & Intellectual Prop. LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1130-31 (TTAB 2016) (motion to amend petition granted where delay in filing motion was due to multiple intervening suspensions and, when not actually suspended, reason to believe proceedings would be suspended); Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1152 (TTAB 2014) (motion for leave to amend to file second amended notice of opposition granted where case was in pleading stage and nonmoving party could point to no specific prejudice in allowing the amendment); ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1301 (TTAB 2012) (motion for leave to amend counterclaim denied on the bases of undue delay and prejudice to counterclaim defendant where brought after counterclaim plaintiff’s pretrial disclosures were served, months after summary judgment motions involving the counterclaim, and months after settlement discussions ceased); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud denied; petitioner unduly delayed in adding claims which were based on facts within petitioner’s knowledge at time petition to cancel was filed); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) (opposer unduly delayed in filing motion for leave to amend during testimony period); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002) (motion denied where although discovery still open, movant provided no explanation for two-year delay in seeking to add new claim); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541 (TTAB 2001) (motion to amend opposition denied where it was filed eight months after filing of notice of opposition, with no explanation for the delay, and appeared to be based on facts within opposer’s knowledge at the time opposition was filed); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703-04 (TTAB 2000) (no undue delay because motion to add claim of dilution was promptly filed after such claim became available, albeit over two years after commencement of proceeding); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286-87 (TTAB 1998) (request raised for the first time in reply brief on counterclaim to further restrict pleaded registration denied since opposer had no notice of this issue), appeal dismissed, 178 F.3d 1306 (Fed. Cir. 1998); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C., Inc., 41 USPQ2d 1030, 1033 (TTAB 1996) (motion to add claim of fraud denied where petitioner was fully aware of all the facts it needed to add such claim over three years before filing motion to amend); Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1206-07 (TTAB 1993) (motion filed after close of discovery to assert claim of res judicata based on a judgment entered in another case after the filing of opposition permitted since applicant was afforded adequate notice and no further discovery would be necessary); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505-06 (TTAB 1993) (no undue delay in view of pending motion for summary judgment and discovery was still open when motion was filed); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993) (proceeding still in pretrial stage and discovery had been extended); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992) (motion to amend filed prior to opening of petitioner’s testimony period permitted); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990) (opposer’s motion to amend its pleading during its testimony period granted in the interests of justice and judicial economy and since any prejudice could be mitigated by reopening discovery solely for applicant); Marshall Field & Co. v. Mrs. Field’s Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) ("concept of ‘undue delay’ is inextricably linked with the concept of prejudice to the nonmoving party"); Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732, 1733-34 (TTAB 1990) (proceeding still in the discovery stage and no undue prejudice shown).

 2.   Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1286 (TTAB 2008) (motion for leave to amend to add claims of descriptiveness and fraud denied; petitioner unduly delayed in adding claims which were based on facts within petitioner’s knowledge at time petition to cancel was filed); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2007) (opposer unduly delayed in filing motion for leave to amend during testimony period); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1786 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim was learned during discovery); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002) (motion denied where although discovery still open, movant provided no explanation for two-year delay in seeking to add new claim); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984) (plaintiff should plead any registrations it wishes to introduce as soon as possible after the omission, or newly issued registration, comes to plaintiff’s attention).

 3.   Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1486 (TTAB 2008) ("the only way the Board could avoid prejudice to applicant would be by reopening the trial phase of this proceeding so that applicant could submit evidence addressing this ground [whether applicant had a bona fide intent to use its mark]"); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703-04 (TTAB 2000) (reopened for limited purpose of conducting discovery on new claim); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990) (reopened solely for applicant’s benefit); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 431 (TTAB 1985) (applicant to advise whether it would need additional discovery).

507.02(b)    Timing of Motion to Amend to Add Counterclaim

Counterclaims to cancel pleaded registrations in Board proceedings are governed by 37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(i). As provided therein, a defense attacking the validity of a pleaded registration is a compulsory counterclaim if the grounds for the counterclaim exist at the time the answer is filed or are learned during the course of the proceeding. [ Note 1.] A motion for leave to amend an answer to assert a counterclaim is governed by Fed. R. Civ. P. 15(a). [ Note 2.] If, during the proceeding, the defendant learns of grounds for a counterclaim to cancel a registration pleaded by the plaintiff, the counterclaim should be pleaded promptly after the grounds therefor are learned. [ Note 3.] TBMP § 313.04 (Compulsory Counterclaims).

NOTES:

 1.   Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1175-80 (TTAB 2017) (motions to amend to assert a compulsory counterclaim should be examined in combination with Fed. R. Civ. P. 15(a), overruling TBC Corp. v. Grand Prix, 12 USPQ2d 1311 (TTAB 1989), Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005), and other precedent to the extent they interpreted 37 C.F.R § 2.106  or 37 C.F.R § 2.114(b)(3)(1)  as barring an amendment to add a compulsory counterclaim unless such motion is based on newly-acquired evidence).

 2.   37 C.F.R § 2.106(b)(3)(1)  and 37 C.F.R § 2.114(b)(3)(i); Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1177 (TTAB 2017).

 3.   Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175, 1180 (TTAB 2017) ("[W]hile our rules require application of the liberal standard for amendment set out in the Federal Rules, it is important to emphasize that all claims, including counterclaims and defenses, should be pleaded promptly, and that an unexplained delay in filing a motion to amend a pleading may result in a finding that the amendment is untimely.").

Please Note: motions to amend to assert compulsory counterclaims decided prior to Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175 (TTAB 2017) may have been decided under a more stringent standard which no longer may be controlling. 37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(i); Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (asserting claim as separate petition to cancel rather than counterclaim does not obviate timeliness requirements of 37 C.F.R. § 2.114(b)(2)(i)) redesignated § 2.114(b)(3)(i); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1759 (TTAB 2008); Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1154 (TTAB 2005) ("we must determine whether applicant knew of the grounds at the time it filed its answers and, if not, whether applicant filed its counterclaims promptly upon learning of those grounds"); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1033 (TTAB 1996); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1596 (TTAB 1992) (filing of an answer is not a condition precedent to operation of 37 C.F.R. § 2.106(b)(2)(i), redesignated § 2.106(b)(3)(i) where grounds are learned during course of proceeding), summary judgment granted, 24 USPQ2d 1376 (TTAB 1992); Marshall Field & Co. v. Mrs. Field’s Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) (counterclaim was pleaded promptly after defendant obtained information through discovery concerning possible fraud).

507.03    Amendments to Conform to the Evidence - Fed. R. Civ. P. 15(b)

Fed. R. Civ. P. 15(b) Amendments During and After Trial.

(1) Based on an Objection at Trial. If, at trial, a party objects that evidence is not within the issues raised in the pleadings, the court may permit the pleadings to be amended. The court should freely permit an amendment when doing so will aid in presenting the merits and the objecting party fails to satisfy the court that the evidence would prejudice that party’s action or defense on the merits. The court may grant a continuance to enable the objecting party to meet the evidence.

(2) For Issues Tried by Consent. When an issue not raised by the pleadings is tried by the parties’ express or implied consent, it must be treated in all respects as if raised in the pleadings. A party may move — at any time, even after judgment — to amend the pleadings to conform them to the evidence and to raise an unpleaded issue. But failure to amend does not affect the result of the trial of that issue.

507.03(a)    During Trial After Objection to Trial Evidence

If evidence is objected to at trial on the ground that it is not within the issues raised by the pleadings, the Board, upon motion, may allow the pleadings to be amended (except as prohibited by 37 C.F.R. § 2.107 ) and will do so freely when the presentation of the merits of the case will be served thereby and the objecting party fails to satisfy the Board that the admission of such evidence would prejudice it in maintaining its action or defense upon the merits. [ Note 1.] See TBMP § 315 (Amendment of Pleadings). See also TBMP § 507.01 regarding amendment of pleadings in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  application.

The motion for leave to amend should be filed promptly by the party offering the evidence after the objection is made by an adverse party. If the motion is granted, the Board may extend the objecting party’s testimony period, or reopen discovery for that party, if necessary, to enable the objecting party to meet the evidence that was the subject of the objection. [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 15(b); Ercona Corp. v. JENAer Glaswerk Schott & Gen., 182 USPQ 573, 574 (TTAB 1974).

 2.   Fed. R. Civ. P. 15(b). Cf. Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 431 (TTAB 1985); Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434, 435 (TTAB 1975); American Optical Corp. v. American Olean Tile Co., 168 USPQ 471, 473 (TTAB 1971).

507.03(b)    To Add Issues Tried by Express or Implied Consent

When issues not raised by the pleadings are tried by the express or implied consent of the parties, unless prohibited by 37 C.F.R. § 2.107, the Board will treat them in all respects as if they had been raised in the pleadings. [ Note 1.] See TBMP § 315 and TBMP § 507.01 regarding amendment of pleadings in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  application. Any amendment of the pleadings necessary to cause them to conform to the evidence and to raise the unpleaded issues may be made upon motion of any party at any time, even after judgment, but failure to so amend will not affect the result of the trial of these issues. [ Note 2.]

Implied consent to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. [ Note 3.] Fairness dictates whether an issue has been tried by consent – there must be an absence of doubt that the nonmoving party is aware that the issue is being tried. [ Note 4.]

Inasmuch as the Board does not read trial testimony or examine other trial evidence prior to final hearing, it is the practice of the Board, when confronted with a Fed. R. Civ. P. 15(b) motion to amend the pleadings to include an issue assertedly tried by express or implied consent, to defer determination of the motion until final hearing. [ Note 5.] Cf. TBMP § 502.01 (Available Motions).

NOTES:

 1.   See e.g., Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (prior to opening of the testimony period, leave to amend granted to add counterclaim to partially cancel registrations on basis of abandonment; parties briefed the counterclaim as a Section 18 restriction, and at oral hearing, party expressly consented to trying counterclaim in that manner; Board deemed pleadings amended under Fed. R. Civ. P. 15(b)(2)); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1306 (TTAB 2014) (nonownership claim tried by implied consent under Fed. R. Civ. P. 15(b)(2)); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828-29 (TTAB 2013) (answer deemed amended to include a Section 18 affirmative defense); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009).

 2.   Fed. R. Civ. P. 15(b); Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185, 187 (Fed. Cir. 1984) (motion to amend to add abandonment submitted after filing of trial briefs denied because the issue had not been tried); Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1650, 1655-56 (TTAB 2010) (Board deemed unpleaded affirmative defense of tacking by prior use of an unpleaded mark to have been tried by implied consent pursuant to Fed. R. Civ. P. 15(b)), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1399 (TTAB 2009) (although opposer did not plead issue preclusion as a ground for opposition, because applicant did not object to opposer’s assertion of that ground in its brief and, in fact, addressed the issue in its brief, the Board deemed the pleadings to be amended pursuant to Fed. R. Civ. P. 15(b)); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1223 (TTAB 2005) (opposer introduced into evidence two unpleaded registrations and applicant did not object and treated them as of record, therefore, the Board deemed the pleading amended pursuant to Fed. R. Civ. P. 15(b)); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (opposition deemed amended to include opposer’s claim of ownership of previously unpleaded registrations where opposer filed notice of reliance on those registrations at trial and applicant did not object thereto); Linville v. Rivard, 41 USPQ2d 1731, 1735 n.10 (TTAB 1996) (certain abandonment issues while not pleaded were clearly tried by the parties and argued in their trial briefs), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501, 1504 (TTAB 1993) (functionality was tried by implied consent, such consent having been given by defendant prior to trial).

 3.   Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872 n.3 (TTAB 2011) (although opposer did not properly plead its fame for purposes of dilution, the Board deemed the dilution claim amended by implied consent); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1924-27 (TTAB 2011) (1. petitioner’s rights in unpleaded marks tried by implied consent, and Board deemed pleadings to be amended to conform to the evidence, where plaintiff stated the relevance of the submissions under notices of reliance, emphasized its intention to rely on such marks through testimony, and where respondent did not object to the testimony at the time, was afforded an opportunity to cross-examine, and raised an untimely objection; and 2. unpleaded tacking and prior registration defense were not tried by implied consent where petitioner not fully appraised of respondent’s reliance on use and registration of another mark), aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016), aff’d, 743 F. App’x. 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138-39 (TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-21 (TTAB 2008) (opposer objected to the testimony and argument regarding applicant’s use of an unpleaded mark and therefore applicant’s priority based on the use of that mark was not tried by implied consent), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (where opposer, during trial, filed notice of reliance on seven unpleaded registrations and where applicant did not object thereto, Board found parties had tried by implied consent, any issues arising from those registrations); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998) (applicant did not object to testimony but was not fairly apprised that evidence, which also related to existing claim, was being offered in support of unpleaded claim);Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1471 n.11 (TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994) (party was not fairly apprised that evidence used for a pleaded claim of descriptiveness was also being offered in support of unpleaded Trademark Act § 2(d) claim); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ 2d 1501, 1504 (TTAB 1993) (defendant raised no objection to evidence on unpleaded issue but was fairly apprised of its purpose).

 4.   Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1107 (TTAB 2016) ("A plaintiff must plead ownership of a family of marks in its complaint in order to rely on the marks as a family as a basis for sustaining the opposition at trial or in a motion for summary judgment."); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (petitioner’s "family of marks" claim, raised for the first time in its brief not considered because it was neither pleaded nor tried by the parties), aff’d, 188 F. Supp.3d 22, (D.D.C. 2016), aff’d, 743 F. App’x. 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB 2010) (applicant was not aware opposer intended to rely on registration to prove likelihood of confusion until opposer filed rebuttal notice of reliance); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).

 5.   Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998) (consistent with its practice, the Board deferred ruling on the motion until final hearing); Devries v. NCC Corp., 227 USPQ 705, 708 n.7 (TTAB 1985); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 861-62 (TTAB 1981); New York State Office of Parks and Recreation v. Atlas Souvenir & Gift Co., 207 USPQ 954, 956, 959 (TTAB 1980); Plus Products v. Redken Laboratories, Inc., 199 USPQ 111, 117 (TTAB 1978).

507.04    Supplemental Pleadings - Fed. R. Civ. P. 15(d)

Fed. R. Civ. P. 15(d) Supplemental Pleadings. On motion and reasonable notice, the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence, or event that happened after the date of the pleading to be supplemented. The court may permit supplementation even though the original pleading is defective in stating a claim or defense. The court may order that the opposing party plead to the supplemental pleading within a specified time.

In determining whether to grant leave to supplement a pleading under Fed. R. Civ. P. 15(d), tribunals, including the Board, use the same analysis utilized in deciding whether to grant leave to amend under Fed. R. Civ. P. 15(a). [ Note 1.] See TBMP § 507.02.

NOTES:

 1.   Topco Holdings, Inc. v. Hand 2 Hand Industries, LLC, 2022 USPQ2d 54, at *9-10 (TTAB 2022) (allowing opposer to supplement its pleading to allege ownership of applications filed after commencement of proceeding).