309.02(c)(2)    Service of Petition on Respondent

37 C.F.R. § 2.111 Filing petition for cancellation.

  • (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.

37 C.F.R. § 2.113  Notification of cancellation proceeding.

  • (a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a Web link or Web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.

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 cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [ Note 1.]

When petitioner files its petition to cancel with the Board, the petitioner need not serve a copy of the petition on the owner of record for the registration at the owner’s address of record in the Office. Rather, the Board effects service of the complaint on defendant in a cancellation proceeding. The Board provides notice to the defendant of the cancellation proceeding by providing, in the notice of institution, a web address to access the electronic proceeding record, and this constitutes service of the petition to cancel. [ Note 2.] In view of system enhancements to facilitate email service, the Board now serves defendants by email unless there is no email address of record for the defendant, in which case service is by U.S. mail. [ Note 3.]

Please Note: With respect to a registered extension of protection under Trademark Act § 66(a), 15 U.S.C. § 1141f, while the Board will effect service on the owner of the registration, see 37 C.F.R. § 2.113(b), the Board will endeavor to forward a courtesy copy of the notice to the international registration holder’s designated representative which will include a web link or web address to access the electronic proceeding record. [ Note 4.]

As a reminder, 37 C.F.R § 2.18(c)  requires registrants and parties to proceedings to promptly notify the Office of any change in physical address or email address. In addition, parties are reminded of the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.

The filing date of the petition is the date of electronic receipt in the Office of the petition and the required fee. [ Note 5.] However, in the rare circumstance that a petition to cancel is filed on paper and the paper filing is permitted by the Director on petition, if the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service in accordance with 37 C.F.R. § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS, [ Note 6.], unless the "date in" date cannot be determined, in which case the date the petition is received in the Office is considered the filing date of the petition to cancel. [ Note 7.] The Certificate of Mailing procedure described in 37 C.F.R. § 2.197  and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198  are available for the filing of a petition to cancel. [ Note 8.]

For information on filing fees, see TBMP § 308. For information on the service of other filings submitted to the Board, see TBMP § 110.03 and TBMP § 113.01.

NOTES:

 1.   See 37 C.F.R. § 2.111(a).

 2.   See 37 C.F.R. § 2.113(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) ("[T]he notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.").

 3.   See, e.g., MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016) ("[I]n cancellation proceedings, the Board intends to serve by U.S. mail, pending system enhancements to facilitate email service at a later date.").

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69958 (October 7, 2016).

 5.   37 C.F.R. § 2.111 (e).

 6.   See 37 C.F.R § 2.198(a).

 7.   See 37 C.F.R § 2.198(b).

 8.   See 37 C.F.R. § 2.197(a)  and 37 C.F.R. § 2.198(a).