313.03    Form and Substance of Counterclaim; Service of Counterclaim

37 C.F.R. § 2.119 Service and signing.

  • (a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties.
  • * * * *

A counterclaim should be generally similar in form to a petition to cancel (for information concerning the form of a petition to cancel, see TBMP § 309.02). However, a counterclaim filed as part of the counterclaimant’s answer to the adverse party’s complaint necessarily differs somewhat in format from a separate petition to cancel.

A counterclaimant must serve a copy of the counterclaim (with any exhibits thereto) on every other party to the proceeding, and must make proof of such service before the Board will consider the counterclaim. [ Note 1.]

The pleading of the substance of a counterclaim may also differ somewhat from the pleading of the substance of a separate petition to cancel. For example, a counterclaimant need not plead its entitlement to a statutory cause of action (previously referred to as "standing") to assert a counterclaim to cancel a registration pleaded by the plaintiff in its complaint. The counterclaimant’s entitlement to a statutory cause of action in such a case is inherent in its position as defendant to the complaint. [ Note 2.]

In some instances, the grounds for cancellation available in the case of a counterclaim differ from those available in the case of a petition to cancel that are not in the nature of a counterclaim. Trademark Act § 14, 15 U.S.C. § 1064, limits, after a five-year period, the grounds upon which most Principal Register registrations may be cancelled. If the plaintiff in a proceeding before the Board relies on such a registration and the five-year period has not yet expired when the plaintiff’s complaint is filed, the limitation does not apply to a counterclaim filed by the defendant therein for cancellation of that registration. This is so even if the five-year period has expired by the time the counterclaim is filed. In such cases, the filing of the plaintiff’s complaint tolls, during the pendency of the proceeding, the running of the five-year period for purposes of determining the grounds on which a counterclaim may be based. [ Note 3.]

The counterclaim plaintiff must identify the particular registrations for which it seeks a cancellation or restriction where more than one registration is asserted. If the petition to cancel does not identify the registration(s) when filing in ESTTA, the Board may look to the ESTTA cover sheet to determine the registration(s) sought to be cancelled. [ Note 4.]

NOTES:

 1.   See 37 C.F.R. § 2.119(a).

 2.   See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1880 (TTAB 1990) (finding of no likelihood of confusion in the opposition did not remove defendant’s standing to counterclaim for abandonment); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded registration on ground of descriptiveness or genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term sought to be cancelled); M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 95 (TTAB 1984) (counterclaimant clearly has personal stake in the controversy); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 856 (TTAB 1981) (damage assumed, and with properly pleaded ground is sufficient to place validity of registration in issue); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979).

 3.   See, e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 522 (CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980) (grounds not limited where petition to cancel registration pleaded in opposition was not filed until after fifth anniversary date of registration, because opposition wherein opposer relied on registration was filed before anniversary date); Humble Oil & Refining Co. v. Sekisui Chemical Co. Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not limited where, although counterclaim to cancel pleaded registration was not properly filed until after fifth anniversary date of registration, opposition wherein opposer relied on said registration was filed before anniversary date); Sunbeam Corp. v. Duro Metal Products Co., 106 USPQ 385, 386 (Comm’r 1955). See also 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:67 (5th ed. March 2022 update). Cf.Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1128, 1130 (TTAB 2016) (the commencement of a cancellation proceeding prior to the fifth-year anniversary of the registration tolls Trademark Act Section 14 for the purpose of petitioner adding claims against the registration during the pendency of the Board proceeding); regarding concurrent use proceedings, Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (five-year period tolled where applicant, prior to expiration of five-year period files a proper concurrent application or an amendment converting an unrestricted application to one seeking concurrent use naming registrant as exception to applicant’s right to exclusive use).

 4.   UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872-73 (TTAB 2011) (applicant paid two fees for a counterclaim but did not identify the registrations in the attached counterclaim, only indicating on the ESTTA cover sheet one registration, the Board found that the counterclaim pertained to only one registration based on the ESTTA cover sheet).