309.02(c) Service of Complaint
A Board proceeding commences when an opposer or petitioner files its complaint with the Board, together with the required fee. [ Note 1.]
Service of the complaint is provided by the Board in conjunction with the notice of institution. [ Note 2.]
For information on service of the opposition on applicant, see TBMP § 309.02(c)(1). For information on service of the petition to cancel on respondent, see TBMP § 309.02(c)(2). For information on service of copies of an application for concurrent use registration, see TBMP § 1106.04.
NOTES:
1. See 37 C.F.R. § 2.101(a) and 37 C.F.R. § 2.111(a).
2. See 37 C.F.R. § 2.105(a) and 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.").
309.02(c)(1) Service of Opposition on Applicant
37 C.F.R. § 2.105 Notification to parties of opposition proceeding(s).
- (a) When an opposition in proper form (see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, number of the proceeding, and the application(s) involved; and the notice 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 of the notice of opposition to the applicant.
37 C.F.R. § 2.101(e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.
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.
An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. [ Note 1.]
When an opposer files its notice of opposition with the Board, the opposition, including any exhibits, need not be served by the opposer on the defendant. Rather, the Board effects service of the complaint on the defendant. The Board provides notice to the defendant of the opposition proceeding by providing, in the notice of institution, a web link or web address to access the electronic proceeding record, and this constitutes service of the notice of opposition. [ Note 2.] Applicants will receive notification of the Board proceeding by email. [ Note 3.]
As a reminder, 37 C.F.R § 2.18(c) requires applicants 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 notice of opposition is the date of electronic receipt in the Office of the notice and the required fee. [ Note 4.] However, in the rare circumstance that a notice of opposition is filed on paper, and the paper filing is permitted by the Director, on petition, if the notice of opposition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service (USPS) in accordance with 37 C.F.R. § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS [ Note 5.], unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [ Note 6.] 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 notice of opposition on paper. [ Note 7.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [ 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:
2. 37 C.F.R. § 2.105(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, 69953 (October 7, 2016) ("notice of the opposition will be sent to the ‘‘email or correspondence address’’ of the appropriate recipient").
4. See 37 C.F.R. § 2.101(e).
5. See 37 C.F.R § 2.198(a).
6. See 37 C.F.R § 2.198(b).
7. See 37 C.F.R. § 2.197(a) and 37 C.F.R. § 2.198(a).
8. 37 C.F.R §2.195 (c); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1283 (TTAB 2008) (untimely opposition dismissed as a nullity).
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).
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).