314    Unpleaded Matters

A plaintiff may not rely on an unpleaded claim. The plaintiff’s pleading must be amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter. [ Note 1.]

In the case of an opposition against an application under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), however, the opposition cannot be amended (or deemed amended) to assert any new claim. [ Note 2.] See TBMP § 315 and TBMP § 507.

Except as provided in Fed. R. Civ. P. 12(b) and (h)(2) (which allow a defendant to raise certain specified defenses by motion), a defendant may not rely on an unpleaded defense unless the defendant’s pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter. [ Note 3.]

If, after the filing of its pleading, a party learns, through discovery or otherwise, of information which would serve as the basis for an additional claim (in the case of a plaintiff), or defense or counterclaim (in the case of a defendant), the party should move promptly to amend its pleading to assert the additional matter, to the extent such amendment would not be prohibited by 37 C.F.R. § 2.107, which prohibits amendment of an opposition brought against applications filed under Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051  or 15 U.S.C. § 1126, to add to the goods or services opposed or to add a joint opposer (see 37 C.F.R. § 2.107(a) ) and prohibits amendment of an opposition brought against applications filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), to add to the grounds for opposition or to add to the goods or services subject to opposition or to add a joint opposer (see 37 C.F.R. § 2.107(b) ). [ Note 4.] See TBMP § 315 andTBMP § 507.01 for further information about limitations on amending notices of oppositions brought against applications filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a).

A party may not obtain summary judgment on an unpleaded claim or defense, nor may a party defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact as to an unpleaded claim or defense. [ Note 5.] However, a party that seeks to obtain, or to defend against, summary judgment on the basis of an unpleaded claim or defense may, unless prohibited by 37 C.F.R. § 2.107, move to amend its pleading to assert the matter. [ Note 6.] See TBMP § 315 and TBMP § 528.07.

A plaintiff which pleads ownership of an application in its complaint does not have to amend its pleading to assert the resultant registration, so long as it issues before the plaintiff’s testimony period closes. [ Note 7.] The pleading of an application is viewed as providing sufficient notice to the defendant of the plaintiff’s intention to rely on any registration that issues from the pleaded application. [ Note 8.]

NOTES:

 1.   See P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801, 804 (CCPA 1978) (registrant did not have fair notice that petitioner was attempting to establish a two-year period of nonuse extending beyond two-year period alleged in petition); Freki Corp. v. Pinnacle Entertainment, Inc., 126 USPQ2d 1697, 1702 (TTAB 2018) (lack of fair notice of a claim of nonuse on some of the identified services when not pled as a separate ground); UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1244 (TTAB 2015) (unpleaded allegations relating to fraud, acquiescence and laches will not be heard); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.3 (TTAB 2009) (unpleaded claim of dilution not considered); Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1415 (TTAB 2008) (unpleaded claims were not tried by express or implied consent of the parties such that pleadings could be treated as amended pursuant to Fed. R. Civ. P. 15(b)); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB 2007) (raising claim for first time in plaintiff’s brief is manifestly untimely; belated fraud claim given no further consideration); Micro Motion, Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998) (motion to amend opposition filed with final brief denied where pleaded issue was genericness and applicant was not on notice of unpleaded issue of mere descriptiveness so that applicant could have put on defense of acquired distinctiveness); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1471 n.11 (TTAB 1993) (only ground pleaded and tried was descriptiveness, not likelihood of confusion); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1439-40 (TTAB 1993) (issue of abandonment argued in final brief was neither pleaded nor tried); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 (TTAB 1993) (only mark pleaded by opposer and tried was registered design mark and applicant had no notice that opposer intended to rely on use of unregistered word mark appearing on opposer’s packaging); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1139 (TTAB 1992) (to have valid Trademark Act § 2(d), 15 U.S.C. § 1052(d) claim in this case opposer was advised to amend pleading to state that its pleaded mark is merely descriptive and had acquired distinctiveness prior to any establishment by applicant of acquired distinctiveness of applicant’s mark).

Cf. ChaCha Search Inc. v. Grape Technology Group Inc., 105 USPQ2d 1298, 1302 (TTAB 2012) (counterclaim plaintiff may not seek or obtain judgment on proposed new claims because motion to amend counterclaim denied).

But see NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, at *14-15 (TTAB 2021) (claim tried by implied consent based on parties’ ACR stipulation).

 2.   See 37 C.F.R. § 2.107(b); O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010) (in opposition involving a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application, motion to amend notice of opposition to add an additional ground denied).

 3.   See Fed. R. Civ. P. 8(b), 8(c), and 12(b); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1926 (TTAB 2011) (unpleaded affirmative defenses of prior registration defense and tacking not considered), aff’d, 188 F. Supp. 3d 222 (D.D.C. 2016), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1842 (TTAB 1995) (applicant allowed time to amend pleading to allege acquisition of secondary meaning as an affirmative defense in the answer); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1139 (TTAB 1992) (in defending against Trademark Act § 2(d), 15U.S.C. § 1052(d) claim where opposer’s unregistered mark is merely descriptive, applicant was advised to amend pleading to affirmatively assert priority of acquired distinctiveness); Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense raised for first time in final brief that opposer lacks proprietary rights in its common law mark was neither pleaded nor tried); United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 341 (TTAB 1984) (respondent who failed to plead affirmative defense of laches in answer cannot be heard to argue the defense in response to motion for summary judgment).

 4.   See 37 C.F.R. § 2.107(a)  and 37 C.F.R. § 2.107(b); Fed. R. Civ. P. 15(a); Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1769 (TTAB 2015) (motion to amend answer to include affirmative defense of claim preclusion denied as futile because the mark involved in the prior opposition creates a different commercial impression than the mark involved in the instant proceeding); Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152, 1155 (TTAB 2005) (motion to amend answer to assert counterclaim granted); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1440 (TTAB 1993) (noting that plaintiff failed to promptly move to amend petition to cancel to set forth abandonment claim); Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748, 754 (TTAB 1978) (affirmative defense should be pleaded when answer filed, or when information is ascertained at a subsequent date through discovery or the like, so as to provide fair notice); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (if information is learned during discovery to support a counterclaim, then pleading should be amended to assert a counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 170-71 (TTAB 1975) (applicant would not be precluded by dismissal with prejudice of counterclaim in civil action from asserting a new counterclaim on the same ground in the Board proceeding); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974) (if applicant determines through discovery grounds exist for affirmative defense or counterclaim, it may move to amend its answer to assert the defense or counterclaim). See also 37 C.F.R. § 2.106(b)(2)(i)  and 37 C.F.R. § 2.114(b)(2)(i).

 5.   See, e.g., Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016) (no consideration given to applicant’s unpleaded prior registration defense in connection with motion for summary judgment); Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1769 (TTAB 2015) (where motion to amend pleading to add defense of claim preclusion denied as futile, motion for summary judgment on such defense denied as moot); American Express Marketing & Development Corp. v. Gilad Development Corp., 94 USPQ2d 1294, 1296 (TTAB 2010) ("defendant may not obtain summary judgment on an unasserted defense . . . summary judgment is not appropriate on an unpleaded issue."); Consolidated Foods Corp. v. Berkshire Handkerchief Co., 229 USPQ 619, 621 (TTAB 1986) ("Generally, only pleaded issues may be the basis for grant of summary judgment.").

 6.   See, e.g., American Express Marketing & Development Corp. v. Gilad Development Corp., 94 USPQ2d 1294, 1297 (TTAB 2010) ("the Board will not hesitate to deny any motion for summary judgment on an unpleaded claim or defense unless the motion for summary judgment is accompanied by an appropriate motion to amend or is withdrawn and refiled with such a motion to amend"); Karsten Manufacturing Corp. v. Editoy AG, 79 USPQ2d 1783, 1785-86 (TTAB 2006) (Board entertained a renewed motion for summary judgment where opposer corrected the problem of seeking summary judgment on an unpleaded ground by withdrawing the motion for summary judgment, moving to amend its pleading and then refiling the motion for summary judgment); Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242 n.4 (TTAB 1989) (motion to amend to add new ground, filed simultaneously with motion for summary judgment, granted, and allegations in new ground deemed denied); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (opposer’s pleading deemed amended where nonmoving party did not object to summary judgment motion as seeking judgment on unpleaded claim), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (non-precedential).

Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009) (summary judgment deemed moot due to improperly pleaded claim which was the basis for the motion, leave to amend granted); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1528 n.3 (TTAB 2008) (opposer’s attempt in reply brief to informally amend notice of opposition to add a claim not allowed; unpleaded claim on summary judgment not considered); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007) (unpleaded registrations asserted for first time in opposer’s cross-motion for summary judgment and objected to by applicant not considered; cross-motion denied and opposer granted leave to include them in notice of opposition);Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (where applicant not given fair notice of opposer’s reliance on registration that issued after filing of complaint, and applicant objected to opposer’s reliance on such registration in its brief, unpleaded registration given no consideration).But see Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 n.3 (TTAB 2007) (after filing of a motion for summary judgment on unpleaded claim of prior trade name use, Board sua sponte granted petitioner time to amend petition to cancel to add the claim so that it could be considered on summary judgment).

 7.   See Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (pleaded application matured into registration prior to close of opposer’s testimony period); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 (TTAB 2009).

 8.   See United Global Media Group., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (opposer that pleads ownership of the underlying applications in the notice of opposition may make the registrations which issue during the opposition of record without having to amend the notice of opposition to assert reliance on the registrations); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (opposer that pleads ownership of application would have to make any subsequently issued registration of record but would not have to amend notice of opposition prior to doing so); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1920 (TTAB 2006) (opposer filed notice of reliance of status and title copy of registration issuing from pleaded application); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1223 n. 6 (TTAB 2005) (to the extent necessary, holding opposer’s pleading amended to include an allegation of ownership of a registration which was pleaded as an application in the notice of opposition); M & T Chemicals Inc. v. Stepan Chemical Co., 150 USPQ 570, 571 (TTAB 1966) (during trial period opposer noticed under the applicable rule that its pleaded application matured into a registration).