507.03    Amendments to Conform to the Evidence - Fed. R. Civ. P. 15(b)

Fed. R. Civ. P. 15(b) Amendments During and After Trial.

(1) Based on an Objection at Trial. If, at trial, a party objects that evidence is not within the issues raised in the pleadings, the court may permit the pleadings to be amended. The court should freely permit an amendment when doing so will aid in presenting the merits and the objecting party fails to satisfy the court that the evidence would prejudice that party’s action or defense on the merits. The court may grant a continuance to enable the objecting party to meet the evidence.

(2) For Issues Tried by Consent. When an issue not raised by the pleadings is tried by the parties’ express or implied consent, it must be treated in all respects as if raised in the pleadings. A party may move — at any time, even after judgment — to amend the pleadings to conform them to the evidence and to raise an unpleaded issue. But failure to amend does not affect the result of the trial of that issue.

507.03(a)    During Trial After Objection to Trial Evidence

If evidence is objected to at trial on the ground that it is not within the issues raised by the pleadings, the Board, upon motion, may allow the pleadings to be amended (except as prohibited by 37 C.F.R. § 2.107 ) and will do so freely when the presentation of the merits of the case will be served thereby and the objecting party fails to satisfy the Board that the admission of such evidence would prejudice it in maintaining its action or defense upon the merits. [ Note 1.] See TBMP § 315 (Amendment of Pleadings). See also TBMP § 507.01 regarding amendment of pleadings in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  application.

The motion for leave to amend should be filed promptly by the party offering the evidence after the objection is made by an adverse party. If the motion is granted, the Board may extend the objecting party’s testimony period, or reopen discovery for that party, if necessary, to enable the objecting party to meet the evidence that was the subject of the objection. [ Note 2.]

NOTES:

 1.   Fed. R. Civ. P. 15(b); Ercona Corp. v. JENAer Glaswerk Schott & Gen., 182 USPQ 573, 574 (TTAB 1974).

 2.   Fed. R. Civ. P. 15(b). Cf. Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 431 (TTAB 1985); Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434, 435 (TTAB 1975); American Optical Corp. v. American Olean Tile Co., 168 USPQ 471, 473 (TTAB 1971).

507.03(b)    To Add Issues Tried by Express or Implied Consent

When issues not raised by the pleadings are tried by the express or implied consent of the parties, unless prohibited by 37 C.F.R. § 2.107, the Board will treat them in all respects as if they had been raised in the pleadings. [ Note 1.] See TBMP § 315 and TBMP § 507.01 regarding amendment of pleadings in an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  application. Any amendment of the pleadings necessary to cause them to conform to the evidence and to raise the unpleaded issues may be made upon motion of any party at any time, even after judgment, but failure to so amend will not affect the result of the trial of these issues. [ Note 2.]

Implied consent to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. [ Note 3.] Fairness dictates whether an issue has been tried by consent – there must be an absence of doubt that the nonmoving party is aware that the issue is being tried. [ Note 4.]

Inasmuch as the Board does not read trial testimony or examine other trial evidence prior to final hearing, it is the practice of the Board, when confronted with a Fed. R. Civ. P. 15(b) motion to amend the pleadings to include an issue assertedly tried by express or implied consent, to defer determination of the motion until final hearing. [ Note 5.] Cf. TBMP § 502.01 (Available Motions).

NOTES:

 1.   See e.g., Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (prior to opening of the testimony period, leave to amend granted to add counterclaim to partially cancel registrations on basis of abandonment; parties briefed the counterclaim as a Section 18 restriction, and at oral hearing, party expressly consented to trying counterclaim in that manner; Board deemed pleadings amended under Fed. R. Civ. P. 15(b)(2)); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1306 (TTAB 2014) (nonownership claim tried by implied consent under Fed. R. Civ. P. 15(b)(2)); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828-29 (TTAB 2013) (answer deemed amended to include a Section 18 affirmative defense); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009).

 2.   Fed. R. Civ. P. 15(b); Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185, 187 (Fed. Cir. 1984) (motion to amend to add abandonment submitted after filing of trial briefs denied because the issue had not been tried); Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1650, 1655-56 (TTAB 2010) (Board deemed unpleaded affirmative defense of tacking by prior use of an unpleaded mark to have been tried by implied consent pursuant to Fed. R. Civ. P. 15(b)), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1399 (TTAB 2009) (although opposer did not plead issue preclusion as a ground for opposition, because applicant did not object to opposer’s assertion of that ground in its brief and, in fact, addressed the issue in its brief, the Board deemed the pleadings to be amended pursuant to Fed. R. Civ. P. 15(b)); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1223 (TTAB 2005) (opposer introduced into evidence two unpleaded registrations and applicant did not object and treated them as of record, therefore, the Board deemed the pleading amended pursuant to Fed. R. Civ. P. 15(b)); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (opposition deemed amended to include opposer’s claim of ownership of previously unpleaded registrations where opposer filed notice of reliance on those registrations at trial and applicant did not object thereto); Linville v. Rivard, 41 USPQ2d 1731, 1735 n.10 (TTAB 1996) (certain abandonment issues while not pleaded were clearly tried by the parties and argued in their trial briefs), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501, 1504 (TTAB 1993) (functionality was tried by implied consent, such consent having been given by defendant prior to trial).

 3.   Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1414-15 (TTAB 2016) (motion to amend petition after close of trial denied where defendant did not know or agree that the newly asserted claim was being tried, and where plaintiff unduly delayed in moving to amend); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1872 n.3 (TTAB 2011) (although opposer did not properly plead its fame for purposes of dilution, the Board deemed the dilution claim amended by implied consent); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1924-27 (TTAB 2011) (1. petitioner’s rights in unpleaded marks tried by implied consent, and Board deemed pleadings to be amended to conform to the evidence, where plaintiff stated the relevance of the submissions under notices of reliance, emphasized its intention to rely on such marks through testimony, and where respondent did not object to the testimony at the time, was afforded an opportunity to cross-examine, and raised an untimely objection; and 2. unpleaded tacking and prior registration defense were not tried by implied consent where petitioner not fully appraised of respondent’s reliance on use and registration of another mark), aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016), aff’d, 743 F. App’x. 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138-39 (TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-21 (TTAB 2008) (opposer objected to the testimony and argument regarding applicant’s use of an unpleaded mark and therefore applicant’s priority based on the use of that mark was not tried by implied consent), on appeal, No. 1:11-cv-01623-RC (D.D.C.); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (where opposer, during trial, filed notice of reliance on seven unpleaded registrations and where applicant did not object thereto, Board found parties had tried by implied consent, any issues arising from those registrations); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998) (applicant did not object to testimony but was not fairly apprised that evidence, which also related to existing claim, was being offered in support of unpleaded claim);Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464, 1471 n.11 (TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994) (party was not fairly apprised that evidence used for a pleaded claim of descriptiveness was also being offered in support of unpleaded Trademark Act § 2(d) claim); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ 2d 1501, 1504 (TTAB 1993) (defendant raised no objection to evidence on unpleaded issue but was fairly apprised of its purpose).

 4.   Wise F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1107 (TTAB 2016) ("A plaintiff must plead ownership of a family of marks in its complaint in order to rely on the marks as a family as a basis for sustaining the opposition at trial or in a motion for summary judgment."); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (petitioner’s "family of marks" claim, raised for the first time in its brief not considered because it was neither pleaded nor tried by the parties), aff’d, 188 F. Supp.3d 22, (D.D.C. 2016), aff’d, 743 F. App’x. 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB 2010) (applicant was not aware opposer intended to rely on registration to prove likelihood of confusion until opposer filed rebuttal notice of reliance); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).

 5.   Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998) (consistent with its practice, the Board deferred ruling on the motion until final hearing); Devries v. NCC Corp., 227 USPQ 705, 708 n.7 (TTAB 1985); Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 861-62 (TTAB 1981); New York State Office of Parks and Recreation v. Atlas Souvenir & Gift Co., 207 USPQ 954, 956, 959 (TTAB 1980); Plus Products v. Redken Laboratories, Inc., 199 USPQ 111, 117 (TTAB 1978).