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).