313.01    In General

37 C.F.R. § 2.106(b)(3) 

  • (i) A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the applicant must promptly inform the Board, in the context of the opposition proceeding, of the filing of the other proceeding.
  • (ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
  • (iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed.
  • (iv) The times for pleading, discovery, testimony, briefs or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

37 C.F.R. § 2.114(b)(3) 

  • (i) A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the party in position of respondent and counterclaim plaintiff must promptly inform the Board, in the context of the primary cancellation proceeding, of the filing of the other proceeding.
  • (ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
  • (iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed. Such response period may be reset as necessary by the Board, for a time period to be determined by the Board.
  • (iv) The times for pleading, discovery, testimony, briefs, or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.

The Board cannot entertain an attack upon the validity of a registration pleaded by a plaintiff unless the defendant timely files a counterclaim or a separate petition to cancel the registration. [ Note 1.]

Although 37 C.F.R. § 2.106(b)(3)(ii)  and 37 C.F.R. § 2.114(b)(3)(ii)  specifically permit a defense attacking the validity of a plaintiff’s pleaded registration to be raised either as a counterclaim or as a separate petition to cancel, the better practice is to raise the defense as a counterclaim. [ Note 2.] If the defense is raised as a separate petition to cancel, however, the petition itself and any cover letter should include a reference to the original proceeding. Further, a defendant that fails to timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. [ Note 3.] See also TBMP § 313.04.

The only type of counterclaim that may be entertained by the Board is a counterclaim for cancellation of a registration owned by an adverse party. [ Note 4.]

As provided in Trademark Act § 18, 15 U.S.C. § 1068, a counterclaim may seek to cancel a registration in whole or in part, or to restrict or rectify with respect to the register the registration in some manner. For example, the counterclaimant may seek to cancel the registration only as to some of the listed goods or services, or only to the extent of restricting the goods or services in a particular manner (described in sufficient detail to give the respondent fair notice thereof). [ Note 5.] See TBMP § 309.03(d). In order to restrict or rectify the register, a counterclaimant may seek to have a description or a disclaimer entered. [ Note 6.] See TBMP § 309.03(d). However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use registration proceeding. [ Note 7.] See TBMP Chapter 1100. A counterclaim to partially cancel a registration by deleting some of the goods or services therein, or by restricting the manner of use of the goods or services therein, or to restrict or rectify the register as to the registration in order to avoid a likelihood of confusion, is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration or have to be tied to a properly pleaded ground for opposition or cancellation. [ Note 8.] See TBMP § 309.03(d). The counterclaimant must allege that the partial cancellation will avoid a likelihood of confusion, i.e., that it will be commercially significant, and that the registrant does not use the mark on the goods or services for which deletion is being sought. [ Note 9.] On the other hand, a counterclaim to delete goods or services from the registration on the ground that registrant does not use the mark on those goods or services and has no intent to resume use, without regard to likelihood of confusion, is a straightforward abandonment claim and not a claim under Trademark Act § 18, 15 U.S.C. § 1068, and in such case, counterclaimant need not allege that a likelihood of confusion will be avoided through the restriction. [ Note 10.]

A counterclaim is the legal equivalent of a petition to cancel. Thus, the provisions of 37 C.F.R. § 2.111  - 37 C.F.R. § 2.115 , governing petitions to cancel, are applicable to counterclaims, including filing the counterclaim electronically through ESTTA. [ Note 11.] Because it is not an initial pleading commencing the proceeding, in the rare instance that a counterclaim is filed in paper, accompanied by a showing that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a Petition to the Director is not required.

In instances where a counterclaim has been filed, the Board will set the time for answer thereto, as well as reset the deadline for the discovery conference, for making initial disclosures, and all subsequent dates. [ Note 12.] See TBMP § 401.01 - TBMP § 401.03. When necessary to enable a party fully to present or meet a counterclaim or separate petition to cancel a registration, the times for pleading, discovery (including conferencing and initial and expert disclosure dates), pretrial disclosures, testimony, briefs and/or oral argument will be reset or extended. A party that believes that such a resetting or extension is necessary should file a motion therefor with the Board; however, the Board may reset such deadlines as it may deem necessary. [ Note 13.] See also TBMP § 509, regarding motions to extend.

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(3)(ii)  and 37 C.F.R. § 2.114(b)(3)(ii); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 USPQ 46, 46 (CCPA 1969); Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) (since no counterclaim had been filed, Court disregarded applicant’s claims that opposer had admitted periods of nonuse); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (improper for Board to allow applicant to collaterally attack registration in opposition where, although registration had been directly attacked by applicant in separate petition to cancel, said petition to cancel had been dismissed); Skincode AG v. Skin Concept AG, 109 USPQ2d 1325, 1329 n.5 (TTAB 2013) (absent a counterclaim, applicant’s argument regarding the possible connotation of the Swiss flag is an impermissible collateral attack on opposer’s pleaded registration); Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1174 n.17 (TTAB 2011) (plaintiff’s mark is registered without either a disclaimer of the term at issue or a claim of acquired distinctiveness, and there is no counterclaim so Board cannot entertain any attack on the term as being merely descriptive); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 n.1 (TTAB 2007) (applicant’s contentions in its brief that opposer’s marks are functional, non-distinctive, and lack source-indicating significance constitute an impermissible collateral attack on opposer’s pleaded registrations, and cannot be considered absent a counterclaim for cancellation); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007) (defendant’s argument that plaintiff’s registered marks are descriptive may be considered only in timely counterclaim or separate petition to cancel, but Board will consider defendant’s position to extent it goes to the strength of plaintiff’s mark in view of use of term by others); Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1083 (TTAB 2007) (applicant cannot argue that opposers’ pleaded registrations are functional without counterclaiming or petitioning to cancel the marks on this basis); and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). See also Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 nn.5 and 12 (TTAB 2006) (a showing of descriptiveness or genericness of part of a mark does not constitute a collateral attack on the registration; however arguments directed to show opposer failed to exercise control over logo mark, where only word mark registration was challenged, constitutes impermissible attack on logo mark).

 2.   See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

 3.   See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

 4.   See UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (scope of applicant’s request, to restrict all of opposer’s registrations, pending applications, and future applications, is in the nature of an injunction and not considered); Pyttronic Industries Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 n.2 (TTAB 1990) (counterclaim to cancel "any registration which might issue in the future from pleaded application" stricken as improper); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983) (counterclaim to "refuse any application filed by petitioner" was improper).

 5.   See Trademark Act § 18, 15 U.S.C. § 1068; 37 C.F.R. § 2.111(b)  and 37 C.F.R. § 2.133(b).

 6.   See Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (partial cancellation on the ground that portion of the mark is a generic term unavailable where the registration sought to be cancelled is more than 5 years old); Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("a claim for cancellation by restriction or modification …is an equitable remedy …, not tied to a ground to cancel").

 7.   See 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990).

 8.   See Dak Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) ("a claim for cancellation by restriction or modification …is an equitable remedy …, not tied to a ground to cancel"); Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 n.3 (TTAB 1995) ("[t]he restriction provisions of Section 18 are in the nature of an equitable remedy"). See also, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially cancel pleaded registration to restrict scope of goods therein did not preclude opposer’s reliance on pleaded registration to establish priority in the opposition).

 9.   See Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1198 (TTAB 2014) (proposed restrictions found not commercially significant because entry thereof would not avoid finding of likelihood of confusion, and "fairness" does not "demand" such restriction); Eurostar Inc. v. "Euro-Star" Reitmoden Gmbh & Co., 34 USPQ2d 1266, 1271 n.3 (TTAB 1995). Cf. Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) (successful use of Section 18 as an affirmative defense to a claim of likelihood of confusion in an opposition; amended applications allowed to proceed to registration).

 10.   See Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437-38 (TTAB 1995) (party may seek partial cancellation of a registration based on a theory of abandonment as to discrete goods and services without the need to resort to Section 18).

 11.   See 37 C.F.R. § 2.106(b)(3)(iii)  and 37 C.F.R. § 2.114(b)(3)(iii); 37 C.F.R. § 2.111(c).

 12.   See 37 C.F.R. § 2.106(b)(3)(iii)  and 37 C.F.R. § 2.114(b)(3)(iii). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42255 (August 1, 2007) ("In short, there are many potential triggers that will prompt the Board to reset discovery, disclosure and trial dates").

 13.   See 37 C.F.R. § 2.106(b)(3)(iv)  and 37 C.F.R. § 2.114(b)(3)(iv).