528.07(b) Not Defense Against Summary Judgment
A party may not 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 1.]
However, a party that seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, may move to amend its pleading to allege the matter. [ Note 2.] Alternatively, if a party seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, and the party moving for summary judgment treats the unpleaded matter on its merits, and does not object thereto on the ground that the matter is unpleaded, the Board may deem the pleadings to have been amended, by agreement of the parties, to allege the matter. Cf. TBMP § 528.07(a). However, an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application, may not be amended (or deemed amended) to assert a new ground for opposition. [ Note 3.] See TBMP § 314 and TBMP § 507.01.
NOTES:
1. See Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477 (TTAB 1992) (may not assert unpleaded Morehouse defense); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB 1992) (no consideration given to three unpleaded grounds asserted by opposer in response to applicant’s motion for summary judgment).
2. See United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993).
3. See 37 C.F.R. § 2.107(b).