                   CHAPTER 300  PLEADINGS


301  Commencement of Proceeding

302  Mark on Supplemental Register Not Subject to Opposition

303  Who May Oppose or Petition to Cancel

304  Joint Opposers or Petitioners

305  Proceeding Against Multiple Class Application or
     Registration

306  Consolidated and Combined Complaints

307  Time for Filing Opposition

308  Time for Filing Petition to Cancel

309  Fee for Filing Opposition

310  Fee for Filing Petition to Cancel

311  Scope of Opposition and Petition to Cancel

312  Form of Opposition and Petition to Cancel

313  Exhibits to Pleadings

314  FRCP 11 Applicable

315  Notification of Proceeding

316  Time for Filing Answer

317  Default

318  Form of Answer

319  Counterclaims

320  Reply to Answer Should Not be Filed

321  Unpleaded Matters

322  Amendment of Pleadings

323  Motions Relating to Pleadings

324  Amendment to Allege Use; Statement of Use



301  Commencement of Proceeding

37 CFR 2.101(a) An opposition proceeding is commenced by
the filing of an opposition in the Patent and Trademark
Office.

37 CFR 2.111(a) A cancellation proceeding is commenced by
the timely filing of a petition for cancellation, together
with the required fee, in the Patent and Trademark Office.

37 CFR 2.116(b) The opposer in an opposition proceeding or
the petitioner in a cancellation proceeding shall be in the
position of plaintiff, and the applicant in an opposition
proceeding or the respondent in a cancellation proceeding
shall be in the position of defendant.  A party that is a
junior party in an interference proceeding or in a
concurrent use registration proceeding shall be in the
position of plaintiff against every party that is senior,
and the party that is a senior party in an interference
proceeding or in a concurrent use registration proceeding
shall be a defendant against every party that is junior.

37 CFR 2.116(c) The opposition or the petition for
cancellation and the answer correspond to the complaint and
answer in a court proceeding.

An opposition proceeding is commenced by the timely filing
of a notice of opposition in the PTO.  See 37 CFR 2.101(a).
See also Yamaha International Corp. v. Hoshino Gakki Co.,
840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).  Cf.
FRCP 3.  Similarly, a cancellation proceeding is commenced
by the timely filing of a petition for cancellation,
together with the required fee, in the PTO.  See 37 CFR
2.111(a).

The notice of opposition, or the petition for cancellation,
and the answer thereto correspond to the complaint and
answer in a court proceeding.  See 37 CFR 2.116(c).  The
opposer in an opposition proceeding, or the petitioner in a
cancellation proceeding, is in the position of plaintiff,
and the applicant in an opposition proceeding, or the
respondent in a cancellation proceeding, is in the position
of defendant.  See 37 CFR 2.116(b).  See also Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1004 (Fed. Cir. 1988).

An interference proceeding commences when the Board mails a
notice of interference to each of the parties to the
proceeding, as described in 37 CFR 2.93.  Similarly, a
concurrent use proceeding commences when the Board mails a
notice of the proceeding to each of the parties thereto, as
described in 37 CFR 2.99(c) and 2.99(d)(1).  For further
information concerning interference and concurrent use
proceedings, see TBMP chapters 1000 and 1100, respectively.



302  Mark on Supplemental Register Not Subject to Opposition

Although the mark in an application for registration on the
Principal Register is published for, and subject to,
opposition, the mark in an application for registration on
the Supplemental Register is not.  See Sections 12(a),
13(a), and 24 of the Act, 15 U.S.C. 1062(a), 1063(a), and
1092.  See also TBMP 205.

Accordingly, the Board must reject any opposition filed with
respect to the mark in an application for registration on
the Supplemental Register.  The opposition papers will be
returned to the person who filed them, and any opposition
fee submitted will be refunded.  The remedy of the would-be
opposer lies in the filing of a petition to cancel the
registration of the mark, once the registration has issued.
See Section 24 of the Act, 15 U.S.C. 1092.



303  Who May Oppose or Petition to Cancel

303.01  In General

15 U.S.C. 1063(a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the
grounds therefor, within thirty days after the publication
under subsection (a) of section 12 of this Act of the mark
sought to be registered. ...

15 U.S.C. 1064 A petition to cancel a registration of a
mark, stating the grounds relied upon, may, upon payment of
the prescribed fee, be filed as follows by any person who
believes that he is or will be damaged by the registration
of a mark on the principal register established by this Act,
or under the Act of March 3, 1881, or the Act of February
20, 1905....

15 U.S.C. 1092 Marks for the supplemental register shall
not be published for or be subject to opposition, but shall
be published on registration in the Official Gazette of the
Patent and Trademark Office.  Whenever any person believes
that he is or will be damaged by the registration of a mark
on this register he may at any time, upon payment of the
prescribed fee and the filing of a petition stating the
ground therefor, apply to the Commissioner to cancel such
registration. ...

15 U.S.C. 1127 In the construction of this Act, unless the
contrary is plainly apparent from the context-

*     *     *

Person; Juristic Person. The term "person" and any other
word or term used to designate the applicant or other
entitled to a benefit or privilege or rendered liable under
the provisions of this Act includes a juristic person as
well as a natural person.  The term "juristic person"
includes a firm, corporation, union, association, or other
organization capable of suing and being sued in a court of
law.

*     *     *

37 CFR 2.2(b) Entity as used in this part includes both
natural and juristic persons.

37 CFR 2.101(b) Any entity which believes that it would be
damaged by the registration of a mark on the Principal
Register may oppose the same by filing an opposition, which
should be addressed to the Trademark Trial and Appeal Board.
...

37 CFR 2.111(b) Any entity which believes that it is or
will be damaged by a registration may file a petition, which
should be addressed to the Trademark Trial and Appeal Board,
to cancel the registration in whole or in part. ...



303.02  Meaning of the Term "Person"

The term "person," as used in the Act, includes both natural
and juristic persons.  See Section 45 of the Act, 15 U.S.C.
1127.  Cf. 37 CFR 2.2(b).  A juristic person is a "firm,
corporation, union, association, or other organization
capable of suing and being sued in a court of law."  See
Section 45 of the Act, 15 U.S.C. 1127.  See also Opryland
USA Inc. v. The Great American Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992) [a "person" may be a
corporation or other entity]; Morehouse Manufacturing Corp.
v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA
1969) [commercial corporation, being a "person" within the
meaning of Section 45 of the Act, can base opposition on
Section 2(a) of the Act, 15 U.S.C. 1052(a)]; Aruba v.
Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987) [Commonwealth of
Aruba is a "person" within the meaning of Sections 13 and 45
of the Act]; U.S. Navy v. United States Manufacturing Co., 2
USPQ2d 1254 (TTAB 1987) [U.S. Navy is a juristic person
within the meaning of Section 45 of the Act]; The Board of
Trustees of the University of Alabama v. BAMA-Werke Curt
Baumann, 231 USPQ 408 (TTAB 1986) [Alabama Board of
Trustees, a corporate body, may be considered either a
"person" or an "institution" within the meaning of Section
2(a) of the Act]; Consolidated Natural Gas Co. v. CNG Fuel
Systems, Ltd., 228 USPQ 752 (TTAB 1985) [corporations as
well as individuals are "persons" for purposes of Section
2(a) of the Act]; and In re Mohawk Air Services Inc., 196
USPQ 851 (TTAB 1977) [a government agency is a juristic
person and as such may file an application for registration,
an opposition, or a petition for cancellation].

If an operating division of a corporation is not itself
incorporated or is not otherwise a legal entity which can
sue and be sued, it does not have legal standing to own a
mark or to file an application for registration, an
opposition, or a petition for cancellation.  See In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986), and
TMEP 1201.02(d).  In such a case, the application,
opposition, or petition for cancellation should be filed in
the name of the corporation of which the division is a part.
If an opposition, or a petition for cancellation, is filed
in the name of a division, and there is no indication that
the division is incorporated, the Board will make written
inquiry as to whether the division is incorporated or is
otherwise a legal entity which can sue and be sued.  If the
opposer, or petitioner, responds in the negative, the
opposition, or petition for cancellation, will go forward in
the name of the corporation of which the division is a part.
Cf. In re Cambridge Digital Systems, supra, and TMEP
1201.02(d).



303.03  Meaning of the Term "Damage"

The term "damage," as used in Sections 13 and 14 of the Act,
15 U.S.C. 1063 and 1064, relates only to a party's
standing to file an opposition or a petition to cancel,
respectively.  A party may establish its standing to oppose
or to petition to cancel by showing that it has a "real
interest" in the case, that is, a personal interest in the
outcome of the proceeding beyond that of the general public.
There is no requirement that actual damage be pleaded and
proved in order to establish standing or to prevail in an
opposition or cancellation proceeding.  See Books on Tape
Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed.
Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on
remand, 5 USPQ2d 1622 (TTAB 1987), rev'd, 853 F.2d 888, 7
USPQ2d 1628 (Fed. Cir. 1988); International Order of Job's
Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017
(Fed. Cir. 1984); Rosso & Mastracco, Inc. v. Giant Food
Inc., 720 F.2d 1263, 219 USPQ 1050 (Fed. Cir. 1983); Selva &
Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ
641 (Fed. Cir. 1983); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976); American Vitamin Products
Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992); Estate
of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991); Hartwell
Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990); Ipco Corp. v.
Blessings Corp., 5 USPQ2d 1974 (TTAB 1988); Aruba v.
Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987); Bankamerica Corp.
v. Invest America, 5 USPQ2d 1076 (TTAB 1987); BRT Holdings
Inc. v. Homeway, Inc., 4 USPQ2d 1952 (TTAB 1987); American
Speech-Language-Hearing Ass'n v. National Hearing Aid
Society, 224 USPQ 798 (TTAB 1984); and Davco Inc. v. Chicago
Rawhide Mfg. Co., 224 USPQ 245 (TTAB 1984).



303.04  Federal Trade Commission

The proviso at the end of Section 14 of the Act, 15 U.S.C.
1064, specifically states that the Federal Trade Commission
may apply to cancel, on the grounds specified in paragraphs
(3) and (5) of the section, any mark registered on the
Principal Register established by the Act.  See also Formica
Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641 (CCPA 1979),
and Federal Trade Commission v. Formica Corp., 200 USPQ 182
(TTAB 1978).  For a listing of the grounds for cancellation
specified in paragraphs (3) and (5) of Section 14 of the
Act, see TBMP 308.01.



303.05  Opposition Filed During Extension of Time to Oppose

37 CFR 2.102(b) The written request to extend the time for
filing an opposition must identify the potential opposer
with reasonable certainty.  Any opposition filed during an
extension of time should be in the name of the person to
whom the extension was granted, but an opposition may be
accepted if the person in whose name the extension was
requested was misidentified through mistake or if the
opposition is filed in the name of a person in privity with
the person who requested and was granted the extension of
time.

303.05(a)  General Rule

An extension of time to oppose is a personal privilege which
inures only to the benefit of the party to which it was
granted and those in privity with that party.  For this
reason, an opposition filed during an extension of time to
oppose ordinarily must be filed in the name of the party to
which the extension was granted.  See 37 CFR 2.102(b); TMEP
1503.04; SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707
(TTAB 1994); and In re Cooper, 209 USPQ 670 (Comm'r 1980).
Cf. TBMP 206.02.

303.05(b)  Opposition Filed by Privy

An opposition filed during an extension of time to oppose,
by a party other than the party to which the extension was
granted, will not be rejected on that ground if it is shown
to the satisfaction of the Board that the differing party is
in privity with the party granted the extension.  See 37 CFR
2.102(b); TMEP 1503.04; SDT Inc. v. Patterson Dental Co.,
30 USPQ2d 1707 (TTAB 1994); and In re Cooper, 209 USPQ 670
(Comm'r 1980).  Cf. TBMP 206.02.

The "showing" should be in the form of a recitation of the
facts upon which the claim of privity is based, and must be
submitted either with the opposition, or during the time
allowed by the Board in its letter requesting an explanation
of the discrepancy.  If the opposition is filed both in the
name of the party granted the previous extension and in the
name of one or more differing parties, an explanation will
be requested as to each differing party, and the opposition
will not be accepted as to any differing party which fails
to make a satisfactory showing of privity.

For information concerning the meaning of the term
"privity," see TBMP 206.02.



303.05(c)  Misidentification

If the name of the opposer, in an opposition filed during an
extension of time to oppose, differs from the name of the
party to which the extension was granted, the opposition
will not be rejected on that ground if it is shown to the
satisfaction of the Board that the party in whose name the
extension was requested was misidentified through mistake.
See 37 CFR 2.102(b), and Cass Logistics Inc. v. McKesson
Corp., 27 USPQ2d 1075 (TTAB 1993).  The phrase
"misidentification by mistake," as used in 37 CFR 2.102(b),
means a mistake in the form of the opposer's name or its
entity type, not the naming of a different existing legal
entity that is not in privity with the party that should
have been named.  See Cass Logistics Inc. v. McKesson Corp.,
supra.  See also TMEP 1503.04.  Cf. Arbrook, Inc. v. La
Citrique Belge, Naamloze Vennootschap, 184 USPQ 505 (TTAB
1974); Davidson v. Instantype, Inc., 165 USPQ 269 (TTAB
1970); Pyco, Inc. v. Pico Corp., 165 USPQ 221 (TTAB 1969);
Raker Paint Factory v. United Lacquer Mfg. Corp., 141 USPQ
407 (TTAB 1964); and TBMP 512.04.  Cf. also TMEP 802.06
and 802.07; In re Tong Yang Cement Corp., 19 USPQ2d 1689
(TTAB 1991); In re Atlanta Blue Print Co., 19 USPQ2d 1078
(Comm'r 1990); In re Techsonic Industries, Inc., 216 USPQ
619 (TTAB 1982); Argo & Co. v. Springer, 198 USPQ 626 (TTAB
1978); In re Eucryl, Ltd., 193 USPQ 377 (TTAB 1976); Argo &
Co. v. Springer, 189 USPQ 581 (TTAB 1976); and U.S. Pioneer
Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613
(Comm'r 1974).

The "showing" submitted in support of a claim of
misidentification by mistake should be in the form of a
recitation of the facts upon which the claim of
misidentification by mistake is based, and must be submitted
either with the opposition, or during the time allowed by
the Board in its letter requesting an explanation of the
discrepancy.



304  Joint Opposers or Petitioners

An opposition, or a petition for cancellation, may be filed
by two or more parties jointly.  However, the required fee
must be submitted for each party joined as opposer, or
petitioner, for each class in the application for which
registration is opposed, or for each class in the
registration for which cancellation is sought.  See 37 CFR
2.101(d)(1) and 2.111(c)(1); SDT Inc. v. Patterson Dental
Co., 30 USPQ2d 1707 (TTAB 1994); and TBMP 309 and 310.

When parties file jointly, the notice of opposition, or
petition for cancellation, must name each party joined as
plaintiff.  In addition, the notice of opposition, or
petition for cancellation, should include allegations
concerning the standing of each party plaintiff, and the
ground or grounds for opposition or cancellation.  If the
case is ultimately determined on the merits, rather than by
default, withdrawal, stipulation, etc., any joint plaintiff
whose standing has not been proved cannot prevail therein,
even though a ground for opposition or cancellation has been
proved.  See Chemical New York Corp. v. Conmar Form Systems,
Inc., 1 USPQ2d 1139 (TTAB 1986).

On the other hand, the fact that two or more parties may
have an interest in a mark to be pleaded in a notice of
opposition, or a petition for cancellation, does not mean
that each such party must be joined as opposer, or
petitioner.  Joint filing is elective, not mandatory.  See
Avia Group International Inc. v. Faraut, 25 USPQ2d 1625
(TTAB 1992).



305  Proceeding Against Multiple Class Application or
Registration

When an opposition is filed with respect to an application
which contains goods and/or services in multiple classes
(see 37 CFR 2.86(b)), or a petition for cancellation is
filed with respect to a registration which contains goods
and/or services in multiple classes, the class or classes
opposed, or sought to be cancelled, should be specified in
the plaintiff's pleading.  In addition, the required
opposition or cancellation fee must be submitted for each
party joined as plaintiff for each class sought to be
opposed or cancelled.  See 37 CFR 2.101(d) and 2.111(c),
and TBMP 309 and 310.



306  Consolidated and Combined Complaints

37 CFR 2.104(b) Oppositions to different applications owned
by the same party may be joined in a consolidated opposition
when appropriate, but the required fee must be included for
each party joined as opposer for each class in which
registration is opposed in each application against which
the opposition is filed.

37 CFR 2.112(b) Petitions to cancel different registrations
owned by the same party may be joined in a consolidated
petition when appropriate, but the required fee must be
included for each party joined as petitioner for each class
sought to be cancelled in each registration against which
the petition to cancel is filed.

When appropriate, a party may oppose, in a single (i.e.,
"consolidated") notice of opposition, different applications
owned by the same defendant.  However, the required fee must
be submitted for each party joined as opposer, for each
class in which registration is opposed, in each application
against which the opposition is filed.  See 37 CFR
2.104(b).  When such a pleading is filed, the Board sets up
a single opposition file, identified by a single opposition
proceeding number, but bearing on its front, in the place
where the number of the opposed application is written, the
number of each application opposed in the consolidated
notice of opposition.

Similarly, when appropriate, a party may seek to cancel, in
a single ("consolidated") petition for cancellation,
different registrations owned by the same defendant.  Again,
the required fee must be submitted for each party joined as
petitioner, for each class sought to be cancelled, in each
registration against which the petition for cancellation is
filed.  See 37 CFR 2.112(b).  When such a pleading is
filed, the Board sets up a single cancellation file,
identified by a single cancellation proceeding number, but
bearing on its front the number of each registration sought
to be cancelled in the consolidated petition to cancel.

In addition, a party may file, when appropriate, a single
pleading combining a notice of opposition to one or more
applications, and a petition to cancel one or more
registrations, provided that each subject application and
registration is owned by the same defendant.  See Nabisco
Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993).
However, the required fee must be submitted for each party
joined as plaintiff, for each class sought to be opposed or
cancelled, in each application or registration against which
the pleading is filed.  Cf. 37 CFR 2.104(b) and 2.112(b).
When such a pleading (referred to as a "combined" opposition
and petition to cancel) is filed, the Board sets up both an
opposition and a cancellation proceeding file, each with its
own identifying number, and each marked "Combined with
_____" followed by the number of the other proceeding.  The
opposition is treated as the "parent" case, and both
proceeding numbers are placed on all papers relating to the
combined proceedings.  Cf. TBMP 511.

A consolidated notice of opposition, or petition to cancel,
or a combined notice of opposition and petition to cancel,
is appropriate if the plaintiff's claims against each of the
defendant's subject applications, and/or registrations,
involve common (i.e., similar) questions of law or fact.
See Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB
1993).  Cf. FRCP 42(a); TBMP 511; World Hockey Ass'n v.
Tudor Metal Products Corp., 185 USPQ 246 (TTAB 1975); and
Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440 (TTAB 1973).
Cf. also Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444,
1445 (TTAB 1987), and Federated Department Stores, Inc. v.
Gold Circle Insurance Co., 226 USPQ 262, 263 (TTAB 1985).



307  Time for Filing Opposition

307.01  In General

15 U.S.C. 1062(a) Upon the filing of an application for
registration and payment of the prescribed fee, the
Commissioner shall refer the application to the examiner in
charge of the registration of marks who shall cause an
examination to be made and, if on such examination it shall
appear that the applicant is entitled to registration, or
would be entitled to registration upon the acceptance of the
statement of use required by section 1(d) of this Act, the
Commissioner shall cause the mark to be published in the
Official Gazette of the Patent and Trademark Office....

15 U.S.C. 1063(a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the
grounds therefor, within thirty days after the publication
under subsection (a) of section 12 of this Act of the mark
sought to be registered.  Upon written request prior to the
expiration of the thirty-day period, the time for filing
opposition shall be extended for an additional thirty days,
and further extensions of time for filing opposition may be
granted by the Commissioner for good cause when requested
prior to the expiration of an extension.  The Commissioner
shall notify the applicant of each extension of the time for
filing opposition. ...

37 CFR 2.101(c) The opposition must be filed within thirty
days after publication (2.80) of the application being
opposed or within an extension of time (2.102) for filing
an opposition.

An opposition to the registration of a mark upon the
Principal Register must be filed prior to the expiration of
the thirty-day period after publication of the mark in the
Official Gazette for opposition, or within an extension of
time to oppose granted to the opposer or its privy.  See
Section 13(a) of the Act, 15 U.S.C. 1063(a); 37 CFR
2.102(b) and (c); SDT Inc. v. Patterson Dental Co., 30
USPQ2d 1707 (TTAB 1994); and In re Cooper, 209 USPQ 670
(Comm'r 1980).  Cf. TBMP chapter 200.

The certificate of mailing by first-class mail procedure
described in 37 CFR 1.8 and the certificate of "Express
Mail" procedure described in 37 CFR 1.10 are both available
for the filing of a notice of opposition; the certificate of
transmission procedure described in 37 CFR 1.8 is not.  See
37 CFR 1.8(a) and 1.10(a).



307.02  Date of Publication of Mark

Normally, the date of publication of a mark is the cover
date of the issue of the Official Gazette in which the mark
is published, pursuant to Section 12(a) of the Act, 15
U.S.C. 1062(a), for purposes of opposition.

However, when an issue of the Official Gazette is mailed
late (see TBMP 202.03), the date of publication of the
marks published therein for opposition is considered by the
Commissioner to be the date on which the Official Gazette
was mailed, and the thirty-day opposition period is
considered by the Commissioner to run from the Official
Gazette mailing date, rather than from its cover date.
Applicants and potential opposers are notified of the late
mailing, and of the consequent change in both the
publication date and the opposition period expiration date,
by a Commissioner's Notice published in a subsequent issue
of the Official Gazette.  Cf. In re BPJ Enterprises Ltd., 7
USPQ2d 1375, at fn.1 (Comm'r 1988).



307.03  Premature Opposition

Section 13 of the Act, 15 U.S.C. 1063(a), requires that an
opposition to the registration of a mark upon the Principal
Register be filed within a specified time after the
publication of the mark in the Official Gazette.

Thus, any opposition filed prior to the publication, in the
Official Register, of the mark sought to be opposed is
premature, and will be rejected by the Board, even if the
mark has been published by the time of the Board's action.
No proceeding will be instituted; rather, the opposition
papers will be returned, and any submitted opposition fee
will be refunded.  Cf. TBMP 119.03 and 202.04.



307.04  Late Opposition

Because the timeliness requirements of Section 13(a) of the
Act, 15 U.S.C. 1063(a), for the filing of an opposition are
statutory, they cannot be waived by stipulation of the
parties, nor can they be waived by the Commissioner upon
petition.  See In re Cooper, 209 USPQ 670 (Comm'r 1980).

Accordingly, an opposition filed after the expiration of the
would-be opposer's time for opposing must be rejected by the
Board as late.  No proceeding will be instituted; rather,
the opposition papers will be returned, and any submitted
opposition fee will be refunded.  The would-be opposer's
remedy lies in the filing of a petition for cancellation,
pursuant to Section 14 of the Act, 15 U.S.C. 1064, when and
if a registration is issued.



307.05  Effect of Suspension of Extension Time

The Board sometimes suspends the running of an extension of
time to oppose pending consideration by the Examining
Attorney of an amendment to the applicant's subject
application (see TBMP 212.04), or pending determination of
a letter of protest filed by the potential opposer, with
respect to applicant's subject application, during the
thirty days after publication for opposition (see TBMP
215).

However, the suspension of the running of the extension in
these situations is solely for the benefit of the potential
opposer, that is, to preserve potential opposer's time for
opposing until potential opposer has been notified of the
disposition of the amendment, or letter of protest, and has
had adequate time thereafter to file an opposition.  See
TBMP 212.04.

If, notwithstanding the Board's letter suspending the
running of the extension, an opposition is filed prior to
the expiration of the extension as originally set, the
opposition will not be rejected by the Board as having been
filed during the suspension.  Rather, opposer will be deemed
to have waived the suspension of the running of its
extension, and the opposition will be deemed timely (except
that if, prior to the filing of the opposition, the
Commissioner restored jurisdiction over the subject
application to the Examining Attorney, the opposition cannot
be entertained by the Board--see TBMP 213, 215, 307.06,
and 307.07).  If, after being informed of the outcome of the
request to amend or letter of protest, opposer is no longer
interested in opposing, opposer may request that the
opposition not be instituted (or, if already instituted,
that the institution be vacated), and that the opposition
fee be refunded.  See TBMP 212.04.



307.06  Effect of Restoration of Jurisdiction

When an Examining Attorney's request for jurisdiction is
granted by the Commissioner during the thirty days after
publication of the involved mark for opposition, or during
an extension of time to oppose the involved application, the
application is no longer subject to the filing of a new
opposition, and the restoration of jurisdiction serves to
stay the running of the potential opposer's extension of
time for opposing.

Any opposition filed after the restoration of jurisdiction
will be rejected by the Board.  No proceeding will be
instituted; the opposition papers will be returned to the
opposer; and any submitted opposition fee will be refunded.
See TBMP 213.  However, in those cases where (1)
jurisdiction is restored during the thirty days after
publication of the mark for opposition, and (2) the
Examining Attorney subsequently approves the application,
the mark will be republished in order to afford potential
opposers a full opposition period.  In those cases where (1)
jurisdiction is restored during an extension of time to
oppose, (2) the Examining Attorney subsequently approves the
application, and (3) the mark is not republished, the Board
will reset potential opposer's time for filing an
opposition.  See TBMP 213.

Any opposition filed prior to the restoration of
jurisdiction will be accepted by the Board, and the Board
will suspend proceedings in the opposition pending
completion of the ex parte examination.  See 37 CFR 2.130.



307.07  Effect of Letter of Protest

The filing of a letter of protest (see TMEP 1116; In re BPJ
Enterprises Ltd., 7 USPQ2d 1375 (Comm'r 1988); and In re
Pohn, 3 USPQ2d 1700 (Comm'r 1987)) does not serve to stay
the time for filing an opposition to the subject mark.  See
TBMP 215.  If a letter of protest is filed after
publication, and a potential opposer wishes to preserve its
time to oppose pending determination of the letter of
protest, it must obtain an extension (or extensions, as
necessary) of its time to oppose.  For information
concerning the handling of requests for extension of time to
oppose when there is a pending letter of protest, see TBMP
5215.

An opposition may be filed while a letter of protest is
pending.  However, if a letter of protest is granted, and
jurisdiction over the application is restored to the
Examining Attorney, no opposition may be filed thereafter;
the application is no longer subject to the filing of a new
opposition.  See TBMP 307.06.  If an opposition is filed
after restoration of jurisdiction, no proceeding will be
instituted; the opposition papers will be returned to the
opposer; and any submitted opposition fee will be refunded.



307.08  Effect of Petition to the Commissioner

If an applicant or potential opposer is dissatisfied with an
action of the Board relating to a request for an extension
of time to oppose, it may file a petition to the
Commissioner for review of the action in question.  See 37
CFR 2.146 and TBMP 211.02.  However, the filing of a
petition from the denial, or from the granting, of a request
for an extension of time to oppose does not relieve the
potential opposer of the responsibility of filing an
opposition, or a request for a further extension of time to
oppose, prior to the expiration of the extension which is
the subject of the petition.  See TBMP 211.02.  Cf. 37 CFR
2.89(g) and 2.146(g).

Any opposition, or request for a further extension of time
to oppose, filed by the involved potential opposer during
the pendency of the petition to the Commissioner, will be
held by the Board for appropriate action after determination
of the petition.  If a petition from the granting of a
request for an extension of time to oppose is granted, any
opposition or request for further extension of time to
oppose filed during or after the extension period in
question will be rejected by the Board as untimely.  See
TBMP 211.02.  No proceeding will be instituted; the
opposition papers will be returned to the opposer; and any
submitted opposition fee will be refunded.



307.09  Effect of Republication

If a mark is republished by order of the Examining Attorney,
any opposition filed during the original thirty-day
opposition period, or within a granted extension thereof, is
considered by the Board to be timely.  See TBMP 214.  If
the change reflected in the republication is one which might
have an effect upon the opposition, the Board will notify
opposer and applicant, in writing, of the republication, and
of the reason therefor; explain that the opposition will be
determined on the basis of applicant's correct (or amended)
mark, goods or services, disclaimer status, etc.; and allow
opposer time to indicate whether it wishes to proceed with
the opposition on that basis, or to have its opposition fee
refunded, and the opposition not instituted.

However, once the Board learns that a mark which is the
subject of a request for an extension of time to oppose has
been or will be republished by order of the Examining
Attorney, no further extension of the original opposition
period will be granted; rather, a potential opposer's time
for opposing will recommence with the republication of
applicant's mark.

When a mark is republished solely by mistake, the
application may not properly be subjected to another
opposition period.  Accordingly, when it comes to the
attention of the Board that an application has been
republished by mistake, the Board will not entertain any
opposition or request for an extension of time to oppose
filed in response to the republication.  An opposition filed
in response to the inadvertent republication will be
returned to the opposer; no proceeding will be instituted;
and any submitted opposition fee will be refunded.  See TBMP
214.



307.10  Effect of Inadvertent Issuance of Registration

Sometimes a registration is issued, inadvertently, from an
application which, at the time of such issuance, is the
subject of a timely opposition, or an unexpired extension of
time to oppose.  See TBMP 216.

The Board is without authority, within the context of an
opposition proceeding, to cancel an inadvertently issued
registration and restore it to application status.  Rather,
it is the Commissioner who has such authority, and the
Commissioner exercises this authority with caution.  See In
re Trademark Registration of Mc Lachlan Touch Inc., 6 USPQ2d
1395 (Comm'r 1987).

Accordingly, when it comes to the attention of the Board
that a registration has issued inadvertently from an
application which is the subject of a timely opposition, the
Board will forward the registration file to the Commissioner
for such action as the Commissioner deems appropriate.  The
Commissioner, in turn, may either cancel the registration as
inadvertently issued, and restore it to application status,
or decline to do so.

When a registration issues inadvertently during a timely
opposition, the Commissioner normally will cancel the
registration as inadvertently issued, and restore it to
application status.  However, if the opposition has already
been finally determined in applicant's favor when the
inadvertent issuance is discovered, applicant may either
keep the registration, or request that it be cancelled as
inadvertently issued, restored to application status, and
then reissued.

For information concerning the inadvertent issuance of a
registration during an unexpired extension of time to
oppose, see TBMP 216.



307.11  Effect of Abandonment of Application

An application which has been abandoned is no longer subject
to the filing of a new opposition.  Any opposition filed on
or after the filing date of the abandonment will be returned
by the Board to the opposer; no proceeding will be
instituted; and any submitted opposition fee will be
refunded.  See Societe des Produits Nestle S.A. v. Basso
Fedele & Figli, 24 USPQ2d 1079 (TTAB 1992), and In re First
National Bank of Boston, 199 USPQ 296 (TTAB 1978).  Cf. TBMP
218 and 602.01.

If it comes to the attention of the Board, after the filing
of an opposition, that the opposed application was
abandoned, prior to its publication for opposition, for
failure of the applicant to respond to an Office action
issued by the Trademark Examining Attorney, the Board will
advise the parties that the application is not subject to
opposition unless applicant files a petition to revive under
37 CFR 2.66, and the petition is granted.  If a prior
abandonment for failure to timely respond comes to the
attention of the Board at a time reasonably contemporaneous
with the filing of the opposition, and the application is
not revived, the opposition will not be instituted; the
opposition papers will be returned to the opposer; and any
submitted opposition fee will be refunded.  If the prior
abandonment comes to the attention of the Board at a later
stage in the opposition, and the application is not revived,
the opposition will be dismissed without prejudice.  See
Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24
USPQ2d 1079 (TTAB 1992).

After the commencement of an opposition, if applicant files
an express abandonment of its application or mark without
the written consent of every adverse party to the
proceeding, judgment will be entered against the applicant.
See 37 CFR 2.135.  However, if an applicant files an
abandonment after the commencement of an opposition, but
before applicant has been notified thereof by the Board,
applicant will be given an opportunity to obtain the written
consent of every adverse party, or to withdraw the
abandonment and litigate the proceeding, failing which
judgment will be entered against applicant.  See In re First
National Bank of Boston, 199 USPQ 296 (TTAB 1978).  Cf. TBMP
218 and 602.01.

If an opposition and an unconsented abandonment of the
opposed application are filed on the same day, the
abandonment (unless specifically made with prejudice) is
without prejudice to applicant; the opposition will be
returned to the opposer; no proceeding will be instituted;
and any submitted opposition fee will be refunded.  See In
re First National Bank of Boston, 199 USPQ 296 (TTAB 1978).
Cf. TBMP 218 and 307.11.

For further information concerning abandonment of an opposed
application during the opposition, see TBMP 602.01.



308  Time for Filing Petition to Cancel

15 U.S.C. 1064 A petition to cancel a registration of a
mark, stating the grounds relied upon, may, upon payment of
the prescribed fee, be filed as follows by any person who
believes that he is or will be damaged by the registration
of a mark on the principal register established by this Act,
or under the Act of March 3, 1881, or the Act of February
20, 1905:
     (1) Within five years from the date of the registration
of the mark under this Act.
     (2) Within five years from the date of publication
under section 12(c) hereof of a mark registered under the
Act of March 3, 1881, or the Act of February 20, 1905.
     (3) At any time if the registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned,
or its registration was obtained fraudulently or contrary to
the provisions of section 4 of subsection (a), (b), or (c)
of section 2 for a registration under this Act, or contrary
to similar prohibitory provisions of such prior Acts for a
registration under such Acts, or if the registered mark is
being used by, or with the permission of, the registrant so
as to misrepresent the source of the goods or services on or
in connection with which the mark is used.  If the
registered mark becomes the generic name for less than all
of the goods or services for which it is registered, a
petition to cancel the registration for only those goods or
services may be filed.  A registered mark shall not be
deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a
unique product or service.  The primary significance of the
registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the
registered mark has become the generic name of goods or
services on or in connection with which it has been used.
     (4) At any time if the mark is registered under the Act
of March 3, 1881, or the Act of February 20, 1905, and has
not been published under the provisions of subsection (c) of
section 12 of this Act.
     (5) At any time in the case of a certification mark on
the ground that the registrant (A) does not control, or is
not able legitimately to exercise control over, the use of
such mark, or (B) engages in the production or marketing of
any goods or services to which the certification mark is
applied, or (C) permits the use of the cetification mark for
purposes other than to certify, or (D) discriminately
refuses to certify or to continue to certify the goods or
services of any person who maintains the standards or
conditions which such mark certifies:
     Provided, That the Federal Trade Commission may apply
to cancel on the grounds specified in paragraphs (3) and (5)
of this section any mark registered on the principal
register established by this Act, and the prescribed fee
shall not be required.

15 U.S.C. 1092 Marks for the supplemental register shall
not be published for or be subject to opposition, but shall
be published on registration in the Official Gazette of the
Patent and Trademark Office.  Whenever any person believes
that he is or will be damaged by the registration of a mark
on this register he may at any time, upon payment of the
prescribed fee and the filing of a petition stating the
ground therefor, apply to the Commissioner to cancel such
registration.  The Commissioner shall refer such application
to the Trademark Trial and Appeal Board which shall give
notice thereof to the registrant.  If it is found after a
hearing before the Board that the registrant is not entitled
to registration, or that the mark has been abandoned, the
registration shall be cancelled by the Commissioner.
However, no final judgment shall be entered in favor of an
applicant under section 1(b) before the mark is registered,
if such applicant cannot prevail without establishing
constructive use pursuant to section 7(c).

37 CFR 2.111(b) Any entity which believes that it is or
will be damaged by a registration may file a petition, which
should be addressed to the Trademark Trial and Appeal Board,
to cancel the registration in whole or in part.  The
petition need not be verified, and may be signed by the
petitioner or the petitioner's attorney or other authorized
representative.  The petition may be filed at any time in
the case of registrations on the Supplemental Register or
under the Act of 1920, or registrations under the Act of
1881 or the Act of 1905 which have not been published under
section 12(c) of the Act, or on any ground specified in
section 14(c) or (e) of the Act.  In all other cases the
petition and the required fee must be filed within five
years from the date of registration of the mark under the
Act or from the date of publication under section 12(c) of
the Act.



308.01  Petition That May Be Filed At Any Time After
Registration

A petition to cancel a registration may be filed at any time
in the case of a registration issued on the Supplemental
Register under the Act of 1946, 15 U.S.C. 1051 et seq., or
under the Act of 1920, or a registration issued under the
Act of 1881 or the Act of 1905 which has not been published
under Section 12(c) of the Act of 1946, 15 U.S.C. 1062(c).
See Sections 14 and 24 of the Act, 15 U.S.C. 1064 and
1092, and 37 CFR 2.111(b).

In addition, a petition to cancel any registration may be
filed at any time on any ground specified in Section 14(3)
or 14(5) of the Act, 15 U.S.C. 1064(3) or 1064(5).  See
Sections 14 and 24 of the Act, 15 U.S.C. 1064 and 1092,
and 37 CFR 2.111(b).  See also Imperial Tobacco Ltd. v.
Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir.
1990), and Western Worldwide Enterprises Group Inc. v.
Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990).



308.02  Petition That Must Be Filed Within Certain Time

308.02(a)  In General

A petition to cancel a registration issued on the Principal
Register under the Act of 1946, on a ground not specified in
Sections 14(3) or 14(5) of the Act, must be filed within
five years from the date of the registration of the mark.
Similarly, a petition to cancel a registration issued on the
Principal Register under the Act of 1881 or the Act of 1905,
and published under the provisions of Section 12(c) of the
Act of 1946, on a ground not specified in Section 14(3) or
14(5) of the Act, must be filed within five years from the
date of publication under Section 12(c).  See Sections 14(1)
and 14(2) of the Act, 15 U.S.C. 1064(1) and 1064(2), and
37 CFR 2.111(b).

Although a petition to cancel filed after the expiration of
the five-year period, in the case of such a Principal
Register registration, must recite one of the grounds
specified in Section 14(3) or 14(5) of the Act, a petition
to cancel filed prior to the expiration of the five-year
period may be based upon any ground which could have
prevented registration initially.  See Person's Co. v.
Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990);
International Mobile Machines Corp. v. International
Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142
(Fed. Cir. 1986); International Order of Job's Daughters v.
Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir.
1984); and Kellogg Co. v. Pack'Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).

The grounds for cancellation which are thus available in
these cases for a petition filed within the five-year
period, but not thereafter, include, for example (this list
is exemplary, not exhaustive):

     (1) Section 2(d) of the Act, 15 U.S.C. 1052(d) (i.e.,
that respondent's mark so resembles a mark registered in the
PTO, or a mark or trade name previously used in the United
States by another and not abandoned, as to be likely, when
used on or in connection with the goods or services of the
respondent, to cause confusion, or to cause mistake, or to
deceive).  See Opryland USA Inc. v. The Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992);
Person's Co. v. Christman, supra; Strang Corp. v. Stouffer
Corp., 16 USPQ2d 1309 (TTAB 1990); and Liberty Trouser Co.
v. Liberty & Co., 222 USPQ 357 (TTAB 1983).

     (2) The grounds specified in Section 2(e) of the Act,
15 U.S.C. 1052(e) (i.e., that respondent's mark, when used
on or in connection with the goods or services of the
respondent, is merely descriptive or deceptively
misdescriptive of them, or is primarily geographically
descriptive of them, except as indications of regional
origin may be registrable under Section 4 of the Act, 15
U.S.C. 1054, or is primarily geographically deceptively
misdescriptive of them; and that respondent's mark is
primarily merely a surname).  See Kellogg Co. v. Pack'Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Allied Mills,
Inc. v. Kal Kan Foods, Inc., 203 USPQ 390 (TTAB 1979); and
Food Specialty Co. v. Carnation Co., 170 USPQ 522 (TTAB
1971).

     (3) That respondent's design does not function as a
trademark, but rather is an essentially functional
configuration.  See Shakespeare Co. v. Silstar Corp. of
America Inc., 9 F.3d 1091, 28 USPQ2d 1765 (4th Cir. 1993),
and International Order of Job's Daughters v. Lindeburg and
Co., 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984).

     (4) That there was no bona fide use of respondent's
mark in commerce prior to the filing of the application for
its registration.  See International Mobile Machines Corp.
v. International Telephone and Telegraph Corp., 800 F.2d
1118, 231 USPQ 142 (Fed. Cir. 1986); Pennwalt Corp. v.
Sentry Chemical Co., 219 USPQ 542 (TTAB 1983); and
Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537
(TTAB 1983).

     (5) That respondent's mark is a mere background design
which does not function as a mark separate and apart from
the words displayed thereon.  See General Foods Corp. v. Ito
Yokado Co., Ltd., 219 USPQ 822 (TTAB 1983).

     (6) That respondent is not (and was not, at the time of
the filing of its application for registration) the rightful
owner of the registered mark.  See Treadwell's Drifters Inc.
v. Marshak, 18 USPQ2d 1318 (TTAB 1990), and Kemin
Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327
(TTAB 1976).

     (7) That respondent's mark, consisting of a particular
color combination applied to its goods, is ornamental and
has not become distinctive as an indication of the source of
respondent's goods.  See Kassnar Imports v. Plastilite
Corp., 180 USPQ 156 (TTAB 1973), aff'd, 508 F.2d 824, 184
USPQ 348 (CCPA 1975).

The five-year period specified in Section 14(1) (i.e.,
"Within five years from the date of the registration of the
mark under this Act") includes the fifth anniversary date of
the registration.  See Strang Corp. v. Stouffer Corp., 16
USPQ2d 1309 (TTAB 1990).  Cf. TMEP 1603.03 and 1605.01.
Similarly, the five-year period specified in Section 14(2)
("Within five years from the date of publication under
section 12(c) hereof of a mark registered under the Act of
March 3, 1881, or the Act of February 20, 1905"), includes
the fifth anniversary date of the publication under Section
12(c).  Cf. Strang Corp. v. Stouffer Corp., supra, and TMEP
1603.03 and 1605.01.

The certificate of mailing by "Express Mail" procedure
described in 37 CFR 1.10 is available for the filing of a
petition to cancel, but the certificate of mailing or
transmission procedure described in 37 CFR 1.8 is not.  See
37 CFR 1.8(a) and 1.10(a).



308.02(b)  Sec. 14 Limitation Is Independent of Sec. 15
Affidavit

The Section 14 limitation, after expiration of the five-year
period, of the grounds upon which the specified types of
Principal Register registrations may be attacked, "is not
dependent on the filing of a declaration under Section 15
which provides incontestable rights of use to a limited
extent (15 U.S.C. 1065)."  (emphasis in original)  See
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390 (Fed. Cir. 1990).  See also Western Worldwide
Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137
(TTAB 1990), and Strang Corp. v. Stouffer Corp., 16 USPQ2d
1309 (TTAB 1990).

308.02(c)  Factors Affecting the Five-Year Period

308.02(c)(1)  Reliance on Registration By Plaintiff

Section 14 of the Act, 15 U.S.C. 1064, limits, after a five-
year period, the grounds upon which a Principal Register
registration issued under the Act of 1946, 15 U.S.C. 1051
et seq., or issued under certain prior acts and published
under Section 12(c) of the Act of 1946, 15 U.S.C. 1062(c),
may be cancelled.  The five-year period runs from the date
of the registration of the mark, for a registration issued
on the Principal Register under the Act of 1946; and from
the date of publication under Section 12(c) of the Act, for
registrations issued on the Principal Register under the
specified prior acts and published under Section 12(c) of
the Act of 1946.  See Section 14 of the Act.

However, if an opposer relies upon such a Principal Register
registration of its pleaded mark, and the five-year period
has not yet expired when the opposition is filed, the
limitation does not apply to any counterclaim filed therein
for cancellation of that registration.  This is so even if
the five-year period has expired by the time the
counterclaim is filed.  In such cases, the filing of the
opposition tolls, during the pendency of the proceeding, the
running of the five-year period for purposes of determining
the grounds upon which a counterclaim may be based.  See
Williamson-Dickie Manufacturing Co. v. Mann Overall Company,
359 F.2d 450, 149 USPQ 518 (CCPA 1966); Arman's Systems,
Inc. v. Armand's Subway, Inc., 215 USPQ 1048 (TTAB 1982);
UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861
(TTAB 1980); Humble Oil & Refining Co. v. Sekisui Chemical
Company Ltd. of Japan, 165 USPQ 597 (TTAB 1970); and Sunbeam
Corp. v. Duro Metal Products Co., 106 USPQ 385 (Comm'r
1955).  See also J. Thomas McCarthy, Trademarks and Unfair
Competition, 20:17(C), at pages 1064-1065 (2d ed. 1984).

Similarly, the limitation would not apply to a counterclaim
to cancel such a Principal Register registration relied upon
by the petitioner in a cancellation proceeding, if the five-
year period had not yet expired with respect to the
registration at the time of the filing of the petition to
cancel.



308.02(c)(2)  Amendment of Registration

Section 14 of the Act, 15 U.S.C. 1064, limits, after a
specified five-year period, the grounds upon which a
Principal Register registration issued under the Act of
1946, 15 U.S.C. 1051 et seq., or issued under certain prior
acts and published under Section 12(c) of the Act of 1946,
15 U.S.C. 1062(c), may be cancelled.  See Section 14 of the
Act.

Ordinarily, the five-year period runs from the date of the
registration of the mark, for a registration issued on the
Principal Register under the Act of 1946; and from the date
of publication under Section 12(c) of the Act, for
registrations issued on the Principal Register under the
specified prior acts and published under Section 12(c) of
the Act of 1946.  See Section 14 of the Act, 15 U.S.C.
1064.

However, when such a Principal Register registration has
been amended, the registration is subject to attack under
Section 14 of the Act, to the extent that the amendment of
the registration has in any way enlarged registrant's
rights, as though the registration had issued on the date of
the amendment.  That is, even though the Section 14 five-
year period following issuance of the registration, or
publication under Section 12(c), may have expired, if a
petition to cancel the registration is filed within the five
years following the amendment of the registration, the
petition is not limited to Section 14(3) or 14(5) grounds,
to the extent that the amendment has in any way enlarged the
registrant's rights.  Rather, during the five years after
the amendment, "the modified registration may be challenged
in a cancellation proceeding as long as petitioner states
grounds" (not limited to Section 14(3) or 14(5) grounds)
"for the cancellation indicating how he believes he is or
will be damaged by the modified registration."  See Stanspec
Co. v. American Chain & Cable Company, Inc., 531 F.2d 563,
189 USPQ 420, 423 (CCPA 1976).  See also Continental Gummi-
Werke AG v. Continental Seal Corp., 222 USPQ 822 (TTAB
1984).



308.03  Premature Petition to Cancel

Sections 14 and 24 of the Act, 15 U.S.C. 1064 and 1092,
provide for the filing of a petition to cancel "a
registration of a mark."  Until a registration actually
issues, there is no registration.

Thus, if a petition to cancel a registration is filed prior
to the issuance of the registration, it is premature, and
will be rejected by the Board, even if the registration has
issued by the time of the Board's action.  No proceeding
will be instituted; rather, the petition papers will be
returned, and any submitted petition fee will be refunded.
Petitioner's remedy lies in the filing of a new petition to
cancel after the registration has issued.



308.04  Late Petition to Cancel

A petition to cancel a registration issued on the Principal
Register under the Act of 1946, on a ground not specified in
Section 14(3) or 14(5) of the Act, must be filed within five
years from the date of the registration of the mark.
Similarly, a petition to cancel a registration issued on the
Principal Register under the Act of 1881 or the Act of 1905,
and published under the provisions of Section 12(c) of the
Act of 1946, on a ground not specified in Section 14(3) or
14(5) of the Act, must be filed within five years from the
date of publication under Section 12(c).  See Section 14 of
the Act, 15 U.S.C. 1064, and 37 CFR 2.111(b).

If a petition to cancel one of these Principal Register
registrations is filed after the expiration of the five-year
period, and does not plead one or more of the grounds
specified in Section 14(3) or 14(5) of the Act, the petition
is late, and will be rejected by the Board.  No proceeding
will be instituted; rather, the petition papers will be
returned, and any submitted petition fee will be refunded.
However, the rejection of the petition is without prejudice
to petitioner's right to file, at any time thereafter, a new
petition to cancel the registration, and to plead therein
one or more of the grounds specified in Section 14(3) or
14(5).



309  Fee for Filing Opposition

309.01  In General

15 U.S.C. 1063(a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office....

37 CFR 2.101(d)(1) The opposition must be accompanied by
the required fee for each party joined as opposer for each
class in the application for which registration is opposed
(see 2.6(1)).  If no fee, or a fee insufficient to pay for
one person to oppose the registration of a mark in at least
one class, is submitted within thirty days after publication
of the mark to be opposed or within an extension of time for
filing an opposition, the opposition will not be refused if
the required fee(s) is submitted to the Patent and Trademark
Office within the time limit set in the notification of this
defect by the Office.

(2) If the fees submitted are sufficient to pay for one
person to oppose registration in at least one class but are
insufficient for an opposition against all of the classes in
the application, and the particular class or classes against
which the opposition is filed are not specified, the Office
will issue a written notice allowing opposer until a set
time in which to submit the required fee(s) or to specify
the class or classes opposed.  If the required fee(s) is not
submitted, or the specification made, within the time set in
the notice, the opposition will be presumed to be against
the class or classes in ascending order, beginning with the
lowest numbered class and including the number of classes in
the application for which the fees submitted are sufficient
to pay the fee due for each class.

(3) If persons are joined as party opposers, and the fees
submitted are sufficient to pay for one person to oppose
registration in at least one class but are insufficient for
each named party opposer, the Office will issue a written
notice allowing the named party opposers until a set time in
which to submit the required fee(s) or to specify the
opposer(s) to which the submitted fees apply.  If the
required fee(s) is not submitted, or the specification made,
within the time set in the notice, the first named party
will be presumed to be the party opposer and additional
parties will be deemed to be party opposers to the extent
that the fees submitted are sufficient to pay the fee due
for each party opposer.  If persons are joined as party
opposers against the registration of a mark in more than one
class, the fees submitted are insufficient, and no
specification of opposers and classes is made within the
time set in the written notice issued by the Office, the
fees submitted will be applied first on behalf of the first-
named opposer against as many of the classes in the
application as the submitted fees are sufficient to pay, and
any excess will be applied on behalf of the second-named
party to the opposition against the classes in the
application in ascending order.

The rules governing opposition fees are specified in 37 CFR
2.101(d)(1)-(d)(3).  The amount of the required fee is
specified in 37 CFR 2.6(a)(17).  For information concerning
how to pay fees, see 37 CFR 1.22-1.25, and TBMP 118.  For
information concerning fee refunds, see 37 CFR 1.26, and
TBMP 119.



309.02  Insufficient Fee

The required fee for filing an opposition should be
submitted with the opposition.  However, if no fee, or an
insufficient fee, is submitted within thirty days after
publication of the mark to be opposed, or within an
extension of time to oppose, the defect may be cured as
specified in 37 CFR 2.101(d)(1)-(d)(3).



310  Fee for Filing Petition to Cancel

310.01  In General

15 U.S.C. 1064 A petition to cancel a registration of a
mark, stating the grounds relied upon, may, upon payment of
the prescribed fee, be filed as follows by any person who
believes that he is or will be damaged by the registration
of a mark on the principal register established by this Act,
or under the Act of March 3, 1881, or the Act of February
20, 1905....

15 U.S.C. 1092 Marks for the supplemental register shall
not be published for or be subject to opposition, but shall
be published on registration in the Official Gazette of the
Patent and Trademark Office.  Whenever any person believes
that he is or will be damaged by the registration of a mark
on this register he may at any time, upon payment of the
prescribed fee and the filing of a petition stating the
ground therefor, apply to the Commissioner to cancel such
registration. ...

37 CFR 2.111(c)(1) The petition must be accompanied by the
required fee for each class in the registration for which
cancellation is sought (see 2.6(1) and 2.85(e)).  If the
fees submitted are insufficient for a cancellation against
all of the classes in the registration, and the particular
class or classes against which the cancellation is filed are
not specified, the Office will issue a written notice
allowing petitioner until a set time in which to submit the
required fee(s) (provided that the five-year period, if
applicable, has not expired) or to specify the class or
classes sought to be cancelled.  If the required fee(s) is
not submitted, or the specification made, within the time
set in the notice, the cancellation will be presumed to be
against the class or classes in ascending order, beginning
with the lowest numbered class, and including the number of
classes in the registration for which the fees submitted are
sufficient to pay the fee due for each class.

(2) If persons are joined as party petitioners, each must
submit a fee for each class for which cancellation is
sought.  If the fees submitted are insufficient for each
named party petitioner, the Office will issue a written
notice allowing the named party petitioners until a set time
in which to submit the required fee(s) (provided that the
five-year period, if applicable, has not expired) or to
specify the petitioner(s) to which the submitted fees apply.
If the required fee(s) is not submitted, or the
specification made, within the time set in the notice, the
first named party will be presumed to be the party
petitioner and additional parties will be deemed to be party
petitioners to the extent that the fees submitted are
sufficient to pay the fee due for each party petitioner.  If
persons are joined as party petitioners against a
registration sought to be cancelled in more than one class,
the fees submitted are insufficient, and no specification of
parties and classes is made within the time set in the
written notice issued by the Office, the fees submitted will
be applied first on behalf of the first-named petitioner
against as many of the classes in the registration as the
submitted fees are sufficient to pay, and any excess will be
applied on behalf of the second-named party to the petition
against the classes in the registration in ascending order.

(3) The filing date of the petition is the date of receipt
in the Patent and Trademark Office of the petition together
with the required fee.  If the amount of the fee filed with
the petition is sufficient to pay for at least one person to
petition to cancel one class of goods or services but is
less than the required amount because multiple party
petitioners and/or multiple classes in the registration for
which cancellation is sought are involved, and the required
additional amount of the fee is filed within the time limit
set in the notification of the defect by the Office, the
filing date of the petition with respect to the additional
party petitioners and/or classes is the date of receipt in
the Patent and Trademark Office of the additional fees.

The rules governing cancellation fees are specified in 37
CFR 2.111(c)(1)-(c)(3).  The amount of the required fee is
specified in 37 CFR 2.6(a)(16).  The required fee for a
petition to cancel must be submitted with the petition; the
effective filing date of a petition to cancel (and, hence,
the date of commencement of the cancellation proceeding) is
the date of receipt in the PTO of both the petition to
cancel and the required fee.  See 37 CFR 2.111(a),
2.111(c)(1), and 2.111(c)(3); Williamson-Dickie
Manufacturing Co. v. Mann Overall Company, 359 F.2d 450, 149
USPQ 518 (CCPA 1966); and TBMP 310.04.

For information concerning how to pay fees, see 37 CFR
1.22-1.25, and TBMP 118.  For information concerning fee
refunds, see 37 CFR 1.26, and TBMP 119.



310.02  Fee for Counterclaim

A counterclaim for cancellation of a plaintiff's
registration is the legal equivalent of a separate petition
to cancel.  The required filing fee must be paid when a
petition to cancel takes the form of a counterclaim, just as
it must be paid when a petition to cancel takes the form of
a separate proceeding.  See 37 CFR 2.106(b)(2)(iii) and
2.114(b)(2)(iii); Williamson-Dickie Manufacturing Co. v.
Mann Overall Company, 359 F.2d 450, 149 USPQ 518 (CCPA
1966); Sunway Fruit Products, Inc. v. Productos Caseros, S.
A., 130 USPQ 33 (Comm'r 1960); Jet-Pak, Inc. v. United
States Plywood Corp., 125 USPQ 491 (Comm'r 1960); Jet-Pak,
Inc. v. United States Plywood Corp., 124 USPQ 385 (TTAB
1960); and McCormick & Co. v. Hygrade Food Products Corp.,
124 USPQ 16 (TTAB 1959).



310.03  Petition Filed by Federal Trade Commission

There is no fee for a petition filed by the Federal Trade
Commission to cancel a registration on the Principal
Register.  See Section 14 of the Act, 15 U.S.C. 1064.  Cf.
TBMP 303.04.



310.04  Insufficient Fee

The required fee for a petition to cancel must be submitted
with the petition.  See 37 CFR 2.111(c)(1).  The filing
date of a petition to cancel is the date of receipt in the
PTO of the petition and the required fee.  See 37 CFR
2.111(c)(3), and Williamson-Dickie Manufacturing Co. v.
Mann Overall Company, 359 F.2d 450, 149 USPQ 518 (CCPA
1966).  Moreover, Section 14 of the Act, 15 U.S.C. 1064,
limits, after a specified five-year period, the grounds upon
which a Principal Register registration issued under the Act
of 1946, 15 U.S.C. 1051 et seq., or issued under certain
prior acts and published under Section 12(c) of the Act of
1946, 15 U.S.C. 1062(c), may be cancelled.  See Section 14
of the Act, and TBMP 308.02(a).  If a petition to cancel
such a registration is submitted to the PTO prior to the
expiration of the five-year period, but the required fee is
not submitted until after the expiration thereof, the filing
date of the petition is the date of receipt in the PTO of
the required fee, and the petition can be entertained by the
Board only to the extent that it pleads a ground for
cancellation permitted after expiration of the five-year
period.  See Section 14 of the Act; Williamson-Dickie
Manufacturing Co. v. Mann Overall Company, supra; and TBMP
308.04.

Except to the extent that the five-year period of Section 14
is applicable in a particular case, there is no time limit
for the filing of a petition to cancel an issued
registration.  Thus, if no fee, or an insufficient fee, is
submitted with a petition to cancel, the defect may be cured
as specified in 37 CFR 2.111(c)(1)-(c)(3), provided that
the five-year period, if applicable, has not expired, or, if
expired, that the petition recites a ground permitted after
the expiration of the five-year period.  The petition will
not be rejected (except to the extent that it is barred by
the five-year limit) if the required fee is submitted to the
PTO within the time limit set in the Board's written
notification of the defect.

The responsibility for filing proper documents and fees
rests with the party filing them.  Although the Board makes
every effort to notify plaintiffs of insufficiencies in fees
before the expiration of any applicable statutory deadline,
so that the insufficiencies may be corrected prior to the
deadline, the Board has no obligation to do so, and cannot
assume the burden of discovering filing errors within any
specified time.  Cf. In re Holland America Wafer Co., 737
F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984), and In re
Application Papers Filed November 12, 1965, 152 USPQ 194
(Comm'r 1966).

311  Scope of Opposition and Petition to Cancel

15 U.S.C. 1068 In such proceedings the Commissioner may
refuse to register the opposed mark, may cancel the
registration, in whole or in part, may modify the
application or registration by limiting the goods or
services specified therein, may otherwise restrict or
rectify with respect to the register the registration of a
registered mark, may refuse to register any or all of
several interfering marks, or may register the mark or marks
for the person or persons entitled thereto, as the rights of
the parties hereunder may be established in the
proceedings....

37 CFR 2.111(b) Any entity which believes that it is or
will be damaged by a registration may file a petition, which
should be addressed to the Trademark Trial and Appeal Board,
to cancel the registration in whole or in part. ...

37 CFR 2.133(b) If, in an inter partes proceeding, the
Trademark Trial and Appeal Board finds that a party whose
application or registration is the subject of the proceeding
is not entitled to registration in the absence of a
specified restriction to the involved application or
registration, the Trademark Trial and Appeal Board will
allow the party time in which to file a request that the
application or registration be amended to conform to the
findings of the Trademark Trial and Appeal Board, failing
which judgment will be entered against the party.

37 CFR 2.99(h) The Trademark Trial and Appeal Board will
consider and determine concurrent use rights only in the
context of a concurrent use registration proceeding.

37 CFR 2.133(c) Geographic limitations will be considered
and determined by the Trademark Trial and Appeal Board only
in the context of a concurrent use registration proceeding.

The Board is an administrative tribunal which is empowered
to determine only the right to register; it may not
determine the right to use, or broader questions of
infringement or unfair competition.  See TBMP 102.01.
Thus, a plaintiff in a proceeding before the Board can
attack only the defendant's right to register.

In an opposition, the registration sought by an applicant
may be opposed in whole, or in part.  In the latter case,
the opposer may oppose registration only, for example, as to
some of the goods or services listed in the application, or
only in the absence of a particular restriction (described
in sufficient detail to give the applicant fair notice
thereof) to the goods or services.  See Section 18 of the
Act, 15 U.S.C. 1068; 37 CFR 2.133(b); Eurostar, Inc. v.
"Euro-Star" Reitmoden GmbH & Co. KG, Spezialfabrik Fur
Reitbekleidung, 34 USPQ2d 1266 (TTAB 1994), and Pegasus
Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040 (TTAB
1985).  Cf. 37 CFR 2.111(b).

Similarly, a petitioner may seek to cancel a registration in
whole, or in part.  In the latter case, the petitioner may
seek to cancel the registration only, for example, as to
some of the goods or services listed therein, or only to the
extent of restricting the goods or services in a particular
manner (described in sufficient detail to give the
respondent fair notice thereof).  See Section 18 of the Act,
15 U.S.C. 1068; 37 CFR 2.111(b) and 2.133(b); and
Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG,
Spezialfabrik Fur Reitbekleidung, 34 USPQ2d 1266 (TTAB
1994).

However, geographic limitations will be considered and
determined by the Board only within the context of a
concurrent use registration proceeding.  See 37 CFR
2.99(h) and 2.133(c), and Snuffer & Watkins Management
Inc. v. Snuffy's Inc., 17 USPQ2d 1815 (TTAB 1990).

As in the case of any other claim, a claim for partial
opposition, or partial cancellation, ordinarily should be
asserted prior to trial in order to give the defendant fair
notice thereof; any claim which is not pleaded in the
complaint, as originally filed or as amended (or deemed
amended) pursuant to FRCP 15(a) or 15(b), will not be
entertained by the Board.  See Eurostar, Inc. v. "Euro-Star"
Reitmoden GmbH & Co. KG, Spezialfabrik Fur Reitbekleidung,
34 USPQ2d 1266 (TTAB 1994), and Reflange v. R-Con
International, 17 USPQ2d 1125 (TTAB 1990).  See also TBMP
312.03, 321, and 507.



312  Form of Opposition and Petition to Cancel

312.01  In General

37 CFR 2.101(b) Any entity which believes that it would be
damaged by the registration of a mark on the Principal
Register may oppose the same by filing an opposition, which
should be addressed to the Trademark Trial and Appeal Board.
The opposition need not be verified, and may be signed by
the opposer or the opposer's attorney or other authorized
representative.

37 CFR 2.111(b) Any entity which believes that it is or
will be damaged by a registration may file a petition, which
should be addressed to the Trademark Trial and Appeal Board,
to cancel the registration in whole or in part.  The
petition need not be verified, and may be signed by the
petitioner or the petitioner's

37 CFR 2.116(c) The opposition or the petition for
cancellation and the answer correspond to the complaint and
answer in a court proceeding.

37 CFR 2.119(e) Every paper filed in an inter partes
proceeding, and every request for an extension of time to
file an opposition, must be signed by the party filing it,
or by the party's attorney or other authorized
representative, but an unsigned paper will not be refused
consideration if a signed copy is submitted to the Patent
and Trademark Office within the time limit set in the
notification of this defect by the Office.

The notice of opposition, or petition to cancel, corresponds
to the complaint in a court proceeding.  See 37 CFR
2.116(c).  For purposes of simplicity, the term "complaint"
is often used hereafter to refer to a notice of opposition
or a petition to cancel.

The complaint should bear at its top the heading "IN THE
UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
TRADEMARK TRIAL AND APPEAL BOARD," followed by information
identifying the application or registration which is the
subject of the complaint, the name of the proceeding (i.e.,
"ABC Corporation v. XYZ Company"), the wording "Opposition
No. ______" or "Cancellation No. ______" (the Board will
insert, in the blank space, the number assigned to the
proceeding), and a title describing the nature of the paper
(i.e., "Notice of Opposition" or "Petition to Cancel").  The
complaint should also include plaintiff's name, entity type
(i.e., individual, partnership, corporation, association,
etc.), and business address; the names of the partners, if
the plaintiff is a partnership, or the state or country of
incorporation, if the plaintiff is a corporation; a pleading
of the substance (i.e., standing and grounds) of the
complaint; a signature; and a description of the capacity in
which the signing individual signs.

In addition, a petition to cancel should indicate, to the
best of petitioner's knowledge, the name and address of the
current owner of the registration.  See 37 CFR 2.112(a).
Petitioner may comply with this requirement simply by
furnishing the Board with whatever information it has
concerning the name and address of the current owner of the
registration; a special investigation made solely for
purposes of complying with the rule is not necessary.  The
purpose of the requirement is to provide the Board with
whatever information petitioner may have concerning the name
and address of the current owner of the registration, so
that the Board can notify that party of the filing of the
petition.  Cf. TBMP 315.01 and 315.02.  If petitioner has
no information concerning the name and address of the
current owner of the registration, petitioner may simply use
the name and address of registrant stated on the
registration certificate.

The complaint need not be verified, and it may be signed by
the plaintiff or by the plaintiff's attorney or other
authorized representative.  See 37 CFR 2.101(b) and
2.111(b), and TBMP 106.02.  If a plaintiff signing for
itself is a partnership, the signature must be made by a
partner.  If a plaintiff signing for itself is a corporation
or similar juristic entity, the signature must be made by an
officer of the plaintiff who has authority to sign for the
plaintiff and whose title is given.  The signature should be
accompanied by a description of the capacity in which the
signing individual signs (i.e., as plaintiff, if plaintiff
is an individual; as counsel for plaintiff; as a partner of
plaintiff, if plaintiff is a partnership; as an officer of
plaintiff identified by title, if plaintiff is a
corporation; etc.).

Although a complaint must be signed, an unsigned complaint
will not be refused consideration if a signed copy is
submitted to the PTO within the time limit set in the
Board's letter notifying plaintiff of this defect.  See 37
CFR 2.119(e) and TBMP 106.02.  However, Section 14 of the
Act, 15 U.S.C. 1064, limits, after a specified five-year
period, the grounds upon which certain Principal Register
registrations may be cancelled.  See Section 14 of the Act;
37 CFR 2.111(b); and TBMP 308.02(a).  If an unsigned
petition to cancel such a registration is filed prior to the
expiration of the five-year period, but a signed copy
thereof is not filed until after the expiration of the
period, the petition can be entertained by the Board only to
the extent that it pleads a ground for cancellation
permitted after the expiration of the five-year period.  Cf.
Williamson-Dickie Manufacturing Co. v. Mann Overall Company,
359 F.2d 450, 149 USPQ 518 (CCPA 1966); Texas Instruments
Inc. v. Conklin Instrument Corp., 161 USPQ 740 (TTAB 1969);
TBMP section 310.04; and Saul Lefkowitz and Janet E. Rice,
Adversary Proceedings Before the Trademark Trial and Appeal
Board, 75 Trademark Rep. 323, 329 (1985).  Although the
Board makes every effort to notify petitioners of unsigned
complaints before the expiration of any applicable statutory
deadline, so that the informality may be corrected prior to
the deadline, the Board has no obligation to do so, and
cannot assume the burden of discovering filing errors within
any specified time.  Cf. In re Holland American Wafer Co.,
737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984); In re L.R.
Sport Inc., 25 USPQ2d 1533 (Comm'r 1992); and In re
Application Papers Filed November 12, 1965, 152 USPQ 194
(Comm'r 1966).

The complaint, and any exhibits thereto, must be filed in
duplicate.  See 37 CFR 2.104(a) and 2.112(a).  The
complaint need not be served by the plaintiff upon the
defendent.  .  Rather, the duplicate copy of the complaint,
and any exhibits thereto, will be forwarded to the defendant
by the Board itself.  See 37 CFR 2.105, 2.113, and
2.119(a).

While a complaint must be filed "in duplicate," there is no
requirement that one of the duplicates filed be the
original.  The duplicates may consist either of the original
and one copy, or of two copies.  However, all copies must be
legible, and on good quality paper.  See TBMP 106.03.

The Board prefers that complaints be submitted in
typewritten or printed form, double spaced.  A complaint may
be submitted on either legal or letter-size paper.  However,
letter-size paper (the size preferred by many Federal
district courts) is recommended.  See TBMP 106.03.



312.02  Suggested Formats for Complaints

The PTO has no printed form for use in filing a notice of
opposition or petition for cancellation.  However, as an aid
to litigants, the PTO has prepared suggested formats for these 
complaints.  A complaint need not follow the suggested
format, as long as it includes the necessary information.



312.02(a)  Suggested Format for Notice of Opposition

The suggested format for a notice of opposition is shown
below:

               Format for Notice of Opposition

         IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
           BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No...................
Filed..............................................................
For the mark.......................................................
Published in the Official Gazette .................................
                                               (Date)
..............................
      (Name of opposer)
              v.
..............................
      (Name of applicant)

Opposition No. ...............
 (To be inserted by Patent & Trademark Office)

                      NOTICE OF OPPOSITION
   (State opposer's name, address, and entity information)(1)

...................................................................
  (Name of individual as opposer, and business trade name, if any)
...................................................................
                       (Business address)
OR.................................................................
                (Name of partnership as opposer)
...................................................................
                      (Names of partners)
...................................................................
                (Business address of partnership)
OR.................................................................
                 (Name of corporation as opposer)
...................................................................
               (State or country of incorporation)
...................................................................
                (Business address of corporation)

     The above-identified opposer believes that it/he/she
will be damaged by registration of the mark shown in the
above-identified application, and hereby opposes the
same.(2)
     The grounds for opposition are as follows:(3)


By....................................
            (Signature)(4)
......................................
 (Identification of person signing)(5)


                          FOOTNOTES
(1)  If opposer is an individual, state the opposer's name,
business trade name, if any, and business address.  If
opposer is a partnership, state the name of the partnership,
the names of the partners, and the business address of the
partnership.  If opposer is a corporation, state the name of
the corporation, the state (or country, if opposer is a
foreign corporation) of incorporation, and the business
address of the corporation.  If opposer is an association or
other similar type of juristic entity, state the information
required for a corporation, changing the term "corporation"
throughout to an appropriate designation.
(2)  The required fee must be submitted for each party
joined as opposer for each class opposed, and if fewer than
the total number of classes in the application are opposed,
the classes opposed should be specified.
(3)  Set forth a short and plain statement here showing why
the opposer believes it/he/she would be damaged by the
registration of the opposed mark, and state the grounds for
opposing.
(4)  The opposition need not be verified, and may be signed
by the opposer or by the opposer's attorney or other
authorized representative.  If an opposer signing for itself
is a partnership, the signature must be made by a partner;
if an opposer signing for itself is a corporation or similar
juristic entity, the signature must be made by an officer of
the corporation or other juristic entity who has authority
to sign for the entity and whose title is given.
(5)  State the capacity in which the signing individual
signs, e.g., attorney for opposer, opposer (if opposer is an
individual), partner of opposer (if opposer is a
partnership), officer of opposer identified by title (if
opposer is a corporation), etc.

                 REPRESENTATION INFORMATION
     If the opposer is not domiciled in the United States,
and is not represented by an attorney or other authorized
representative located in the United States, a domestic
representative must be designated.
     If the opposer wishes to furnish a power of attorney,
it may do so, but an attorney at law is not required to
furnish a power.



312.02(b)  Suggested Format for Petition to Cancel

The suggested format for a petition to cancel is shown
below:

                Format for Petition to Cancel

        IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
           BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark Registration No.......................
For the mark.....................................................
Date registered..................................................

................................
      (Name of petitioner)
              v.
................................
      (Name of registrant)

Cancellation No. ...............
 (To be inserted by Patent & Trademark Office)

                        PETITION TO CANCEL
          (State petitioner's name, address, and entity
                          information)(1)

...................................................................
(Name of individual as petitioner, and business trade name, if any)
...................................................................
                        (Business address)
OR.................................................................
                (Name of partnership as petitioner)
...................................................................
                        (Names of partners)
...................................................................
                 (Business address of partnership)
OR.................................................................
                (Name of corporation as petitioner)
...................................................................
                (State or country of incorporation)
...................................................................
                 (Business address of corporation)

     To the best of petitioner's knowledge, the name and
address of the current owner of the registration
are................................................................
...................................................................
     The above-identified petitioner believes that it/he/she
will be damaged by the above-identified registration, and
hereby petitions to cancel the same.(2)
     The grounds for cancellation are as follows:(3)


By.....................................
            (Signature)(4)
.......................................
 (Identification of person signing)(5)


                          FOOTNOTES
(1)  If petitioner is an individual, state the petitioner's
name, business trade name, if any, and business address.  If
petitioner is a partnership, state the name of the
partnership, the names of the partners, and the business
address of the partnership.  If petitioner is a corporation,
state the name of the corporation, the state (or country, if
petitioner is a foreign corporation) of incorporation, and
the business address of the corporation.  If petitioner is
an association or other similar type of juristic entity,
state the information required for a corporation, changing
the term "corporation" throughout to an appropriate
designation.
(2)  The required fee must be submitted for each party
joined as petitioner for each class sought to be cancelled,
and if cancellation is sought for fewer than the total
number of classes in the registration, the classes sought to
be cancelled should be specified.
(3)  Set forth a short and plain statement here showing why
the petitioner believes it/he/she would be damaged by the
registration, and state the grounds for cancellation.
(4)  The petition need not be verified, and may be signed by
the petitioner or by the petitioner's attorney or other
authorized representative.  If a petitioner signing for
itself is a partnership, the signature must be made by a
partner; if a petitioner signing for itself is a corporation
or similar juristic entity, the signature must be made by an
officer of the corporation or other juristic entity who has
authority to sign for the entity and whose title is given.
(5)  State the capacity in which the signing individual
signs, e.g., attorney for petitioner, petitioner (if
petitioner is an  individual), partner of petitioner (if
petitioner is a partnership), officer of petitioner
identified by title (if petitioner is a corporation), etc.

                 REPRESENTATION INFORMATION
     If the petitioner is not domiciled in the United
States, and is not represented by an attorney or other
authorized representative located in the United States, a
domestic representative must be designated.
     If the petitioner wishes to furnish a power of
attorney, it may do so, but an attorney at law is not
required to furnish a power.



312.03  Pleading Substance of Complaint

37 CFR 2.104(a) The opposition must set forth a short and
plain statement showing why the opposer believes it would be
damaged by the registration of the opposed mark and state
the grounds for opposition. ...

37 CFR 2.112(a) The petition to cancel must set forth a
short and plain statement showing why the petitioner
believes it is or will be damaged by the registration, state
the grounds for cancellation, and indicate, to the best of
petitioner's knowledge, the name and address of the current
owner of the registration. ...

A notice of opposition must include (1) a short and plain
statement of the reason(s) why opposer believes it would be
damaged by the registration of the opposed mark (i.e.,
opposer's standing to maintain the proceeding (see TBMP
303.03)), and (2) a short and plain statement of one or
more grounds for opposition.  See 37 CFR 2.104(a);
Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228
USPQ 752 (TTAB 1985); and Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154
(TTAB 1985).  Cf. FRCP 8(a).  The grounds upon which an
application for registration of a mark may be opposed
include (but are not limited to) all of the grounds listed
in TBMP 308.01 and 308.02(a) as grounds for cancellation.
For a further discussion of the grounds for opposition, see
J. Thomas McCarthy, Trademarks and Unfair Competition,
20.03-20.07 (3rd ed. 1994).
Similarly, a petition to cancel must include (1) a short and
plain statement of the reason(s) why petitioner believes it
is or will be damaged by the registration sought to be
cancelled (i.e., petitioner's standing to maintain the
proceeding (see TBMP 303.03)), and (2) a short and plain
statement of one or more grounds for cancellation.  See 37
CFR 2.112(a); Person's Co. v. Christman, 900 F.2d 1565, 14
USPQ2d 1477 (Fed. Cir. 1990); International Order of Job's
Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017
(Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Kelly Services
Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB
1992); and American Vitamin Products Inc. v. DowBrands Inc.,
22 USPQ2d 1313 (TTAB 1992).  Cf. FRCP 8(a).  For a
discussion of the grounds upon which the registration of a
mark may be cancelled, see TBMP 308.01 and 308.02(a).  See
also J. Thomas McCarthy, Trademarks and Unfair Competition,
20.14-20.15 (3rd ed. 1994).

The elements of a claim should be stated simply, concisely,
and directly.  See FRCP 8(e)(1).  However, the pleading
should include enough detail to give the defendant fair
notice of the basis for each claim.  See McDonnell Douglas
Corp. v. National Data Corp., 228 USPQ 45 (TTAB 1985).  See
also Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570
(TTAB 1988), and Beth A. Chapman, TIPS FROM THE TTAB:
Amending Pleadings:  The Right Stuff, 81 Trademark Rep. 302
(1991).

All averments should be made in numbered paragraphs, the
contents of each of which should be limited as far as
practicable to a statement of a single set of circumstances.
See FRCP 10(b), and Isle of Aloe, Inc. v. Aloe Creme
Laboratories, Inc., 180 USPQ 794 (TTAB 1974).  Each claim
founded upon a separate transaction or occurrence should be
stated in a separate count whenever a separation would
facilitate the clear presentation of the matters pleaded.
See FRCP 10(b).  A paragraph may be referred to by number in
all succeeding paragraphs, and statements in the complaint
may be adopted by reference in a different part of the
complaint.  See FRCP 10(b) and (c).

A plaintiff may state as many separate claims as it has,
regardless of consistency; a plaintiff may also set forth
two or more statements of a claim alternately or
hypothetically, either in one count or in separate counts.
See FRCP 8(e)(2); PacTel Teletrac v. T.A.B. Systems, 32
USPQ2d 1668 (TTAB 1994); Humana Inc. v. Humanomics Inc., 3
USPQ2d 1696 (TTAB 1987); Home Juice Co. v. Runglin Cos., 231
USPQ 897 (TTAB 1986); Taffy's of Cleveland, Inc. v. Taffy's,
Inc., 189 USPQ 154 (TTAB 1975); John T. Clark Co. v. Colgate-
Palmolive Co., 176 USPQ 93 (TTAB 1972); Rimmel, Ltd. v.
Romel Cosmetics, Inc., 172 USPQ 186 (TTAB 1971); and Revco,
D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48 (TTAB 1971).

A plaintiff may plead likelihood of confusion hypothetically
by asserting, for example, that if, as the Trademark
Examining Attorney (or the defendant) contends, plaintiff's
mark so resembles defendant's mark as to be likely, when
applied to the goods and/or services of the plaintiff, to
cause confusion, then plaintiff will be damaged by the
registration of defendant's mark (i.e., has standing to
maintain the proceeding--see TBMP 303.03).  See Revco,
D.S., Inc. v. Armour-Dial, Inc., supra.  Of course, in order
to state a claim upon which relief can be granted, a
hypothetical pleading of likelihood of confusion must be
coupled with a pleading of one or more grounds for oppostion
or cancellation, such as, that defendant's mark has been
abandoned; that plaintiff has priority of use (here, the
hypothetical pleading of likelihood of confusion serves both
as a pleading of plaintiff's standing and as part of the
pleading of a ground under Section 2(d) of the Act, 15
U.S.C. 1052(d)); etc.  Thus, a plaintiff wishing to plead
likelihood of confusion hypothetically in a proceeding based
upon Section 2(d) might assert, for example, that if, as the
Trademark Examining Attorney (or the defendant) contends,
plaintiff's mark so resembles defendant's mark as to be
likely, when applied to the goods and/or services of the
plaintiff, to cause confusion, then the registration sought
by defendant should be refused (or defendant's registration
should be cancelled) because plaintiff has priority of use.

When two or more statements are made in the alternative, the
sufficiency of each is determined independently; the fact
that one of them may be insufficient does not mean that the
other(s) is (are) also insufficient.  See FRCP 8(e)(2).

Evidentiary matters (such as, for example, lists of
publications or articles in which a term sought to be
registered by an applicant is alleged to be used
descriptively) should not be pleaded in a complaint.  They
are matters for proof, not for pleading.  See McCormick &
Co. v. Hygrade Food Products Corp., 124 USPQ 16 (TTAB 1959).

In inter partes proceedings before the Board, as in civil
cases before the United States district courts, all
pleadings are so construed as to do substantial justice.
See 37 CFR 2.116(a); FRCP 8(f); and Scotch Whiskey Ass'n v.
United States Distilled Products Co., 952 F.2d 1317, 21
USPQ2d 1145 (Fed. Cir. 1991).



313  Exhibits to Pleadings

37 CFR 2.122(c) Exhibits to pleadings.  Except as provided
in paragraph (d)(1) of this section, an exhibit attached to
a pleading is not evidence on behalf of the party to whose
pleading the exhibit is attached unless identified and
introduced in evidence as an exhibit during the period for
the taking of testimony.

37 CFR 2.122(d) Registrations.  (1) A registration of the
opposer or petitioner pleaded in an opposition or petition
to cancel will be received in evidence and made part of the
record if the opposition or petition is accompanied by two
copies of the registration prepared and issued by the Patent
and Trademark Office showing both the current status of and
current title to the registration. ...

A plaintiff or defendant may attach exhibits to its pleading
if it so desires.  However, with one exception, exhibits
attached to a pleading are not evidence on behalf of the
party to whose pleading they are attached unless they are
thereafter, during the time for taking testimony, properly
identified and introduced in evidence as exhibits.  See 37
CFR 2.122(c); Republic Steel Co. v. M.P.H. Manufacturing
Corp., 312 F.2d 940, 136 USPQ 447 (CCPA 1963); Home Juice
Co. v. Runglin Companies Inc., 231 USPQ 897 (TTAB 1986);
Intersat Corp. v. International Telecommunications Satellite
Organization, 226 USPQ 154 (TTAB 1985); Syosset
Laboratories, Inc. v. TI Pharmaceuticals, 216 USPQ 330 (TTAB
1982); Cities Service Co. v. WMF of America, Inc., 199 USPQ
493 (TTAB 1978); A-1-A Corp. v. The Gillette Co., 199 USPQ
118 (TTAB 1978); and Permatex Co. v. California Tube
Products, Inc., 175 USPQ 764 (TTAB 1972).

The one exception to the foregoing rule is a current status
and title copy, prepared by the Patent and Trademark Office,
of a plaintiff's pleaded registration.  When a plaintiff
submits such a status and title copy of its pleaded
registration as an exhibit to its complaint, the
registration will be received in evidence and made part of
the record without any further action by plaintiff.  See 37
CFR 2.122(c) and 2.122(d)(1), and TBMP 703.02(a).



314  FRCP 11 Applicable

Rule 11 of the Federal Rules of Civil Procedure provides, in
part, as follows:

     (b) Representations to Court.
     By presenting to the court (whether by signing, filing,
     submitting, or later advocating) a pleading, written motion,
     or other paper, an attorney or unrepresented party is
     certifying that to the best of the person's knowledge,
     information, and belief, formed after an inquiry reasonable
     under the circumstances,--
          (1) it is not being presented for any improper purpose,
          such as to harass or to cause unnecessary delay or
          needless increase in the cost of litigation;
          (2) the claims, defenses, and other legal contentions
          therein are warranted by existing law or by a
          nonfrivolous argument for the extension,
          modification, or reversal of existing law or the
          establishment of new law;
          (3) the allegations and other factual contentions have
          evidentiary support or, if specifically so identified,
          are likely to have evidentiary support after a
          reasonable opportunity for further investigation or
          discovery; and
          (4) the denials of factual contentions are warranted
          on the evidence or, if specifically so identified, are
          reasonably based on a lack of information or belief.

     (c) Sanctions.
     If, after notice and a reasonable opportunity to respond, the
     court determines that subdivision (b) has been violated, the
     court may, subject to the conditions stated below, impose an
     appropriate sanction upon the attorneys, law firms, or parties
     that have violated subdivision (b) or are responsible for the
     violation.

The quoted provisions are applicable to pleadings, motions,
and other papers filed in inter partes proceedings before
the Board.  See TBMP 529.01, and authorities cited therein.

For information concerning the imposition of FRCP 11
sanctions by the Board, see TBMP 529.01.



315  Notification of Proceeding

315.01  In General

37 CFR 2.105 Notification of opposition proceeding[s].
When an opposition in proper form has been filed and the
correct fee(s) have been submitted, a notification shall be
prepared by the Trademark Trial and Appeal Board, which
shall identify the title and number of the proceeding and
the application involved and shall designate a time, not
less than thirty days from the mailing date of the
notification, within which an answer must be filed.  A copy
of the notification shall be forwarded to the attorney or
other authorized representative of the opposer, if any, or
to the opposer.  The duplicate copy of the opposition and
exhibits shall be forwarded with a copy of the notification
to the attorney or other authorized representative of the
applicant, if any, or to the applicant.

37 CFR 2.113 Notification of cancellation proceeding.
When a petition for cancellation has been filed in proper
form (see 2.111 and 2.112), a notification shall be
prepared by the Trademark Trial and Appeal Board, which
shall identify the title and number of the proceeding and
the registration or registrations involved and shall
designate a time, not less than thirty days from the mailing
date of the notification, within which an answer must be
filed.  A copy of the notification shall be forwarded to the
attorney or other authorized representative of the
petitioner, if any, or to the petitioner.  The duplicate
copy of the petition for cancellation and exhibits shall be
forwarded with a copy of the notification to the respondent
(see 2.118), who shall be the party shown by the records of
the Patent and Trademark Office to be the current owner of
the registration or registrations sought to be cancelled,
except that the Board, in its discretion, may join or
substitute as respondent a party who makes a showing of a
current ownership interest in such registration or
registrations.  When the party identified by the petitioner,
pursuant to 2.112(a), as the current owner of the
registration or registrations is not the record owner
thereof, a courtesy copy of the petition for cancellation
shall be forwarded with a copy of the notification to the
alleged current owner, which may file a motion to be joined
or substituted as respondent.  If the petition is found to
be defective as to form, the party filing the petition shall
be so advised and allowed a reasonable time for correcting
the informality.

When a timely opposition in proper form has been filed, and
the required fee has been submitted, the Board obtains the
file of the opposed application and sets up an opposition
proceeding file (see TBMP 120.01).  See 37 CFR 2.105.  The
defendant in the opposition is the party shown by the
records of the PTO to be the current owner of the opposed
application, except that the Board, in its discretion, may
join or substitute as defendant a party which makes a
showing of a current ownership interest in the application.
See TBMP 512.  Cf. 37 CFR 2.113.

When a timely petition to cancel in proper form, together
with the required fee, has been filed (see 2.111(a) and
2.113), the Board obtains the file of the registration
sought to be cancelled and checks the assignment records of
the PTO to determine whether there is any recorded
assignment of the registration, and, if so, the identity of
the assignee.  After the title search has been completed,
the cancellation proceeding file is set up.  See TBMP
120.01.  The defendant in the cancellation proceeding is
the party shown by the records of the PTO to be the current
owner of the registration sought to be cancelled, except
that the Board, in its discretion, may join or substitute as
defendant a party which makes a showing of a current
ownership interest in the registration.  See 37 CFR 2.113,
and Gold Eagle Products Co. v. National Dynamics Corp., 193
USPQ 109 (TTAB 1976).  Cf. TBMP 512.

Next, the Board prepares a letter wherein it, inter alia,
notifies the defendant of the filing of the complaint, and
notifies both parties of the formal institution of the
proceeding.  The notification letter includes the
identification information described in 37 CFR 2.105, for
an opposition, or in 37 CFR 2.113, for a cancellation;
states that proceedings in the case will be conducted in
accordance with the Trademark Rules of Practice; and
specifies the due date for the filing of defendant's answer
to the complaint.

One copy of the notification letter is mailed to the
attorney or other authorized representative of the
plaintiff, or, if the plaintiff is representing itself, to
the plaintiff itself.  In an opposition, a second copy of
the letter is mailed, together with a copy of the notice of
opposition and any exhibits thereto, to the attorney or
other authorized representative of the applicant, or, if the
applicant is representing itself, to the applicant itself.
See 37 CFR 2.105, and Nabisco Brands Inc. v. Keebler Co.,
28 USPQ2d 1237 (TTAB 1993).  In a cancellation, a second
copy of the notification letter is mailed, together with a
copy of the petition to cancel and any exhibits thereto, to
the respondent itself (even if there is an attorney or other
authorized representative of record in the registration).
See 37 CFR 2.113.

The reason why the complaint and notification letter are
sent to the defendant's attorney or other authorized
representative, if any, in an opposition, but are always
sent to the defendant itself in a cancellation, is that any
appearance or power of attorney (or designation of other
authorized representative) of record in an application file
at the time of the commencement of an opposition is
considered to be effective for purposes of the proceeding,
whereas any representation which may be of record in a
registration file at the time of the commencement of a
cancellation is not considered to be effective for purposes
of the proceeding.  Typically, a power of attorney in an
application appoints the named attorney "to prosecute this
application to register, to transact all business in the
Patent and Trademark Office in connection therewith, and to
receive the certificate of registration."  That is, the
power extends only up to the issuance and receipt of a
registration.  As a practical matter, the representation in
an application file usually is, of necessity, current and
active, whereas often the attorney or other authorized
representative of record in a registration has not taken any
action on behalf of the registrant for some years, no longer
represents registrant, does not know where registrant is
currently located, is no longer in practice, etc.  However,
if the Board is unable to locate the registrant for purposes
of serving a copy of the complaint and notification letter
upon it, and there is of record in the registration an
attorney or other authorized representative who has appeared
therein on registrant's behalf within the last five years or
so, the Board will, if necessary, contact the attorney or
other authorized representative and ask for information
concerning registrant's current address.  See the notice of
final rulemaking published in the Federal Register on August
22, 1989 at 54 FR 34886, 34891, and in the Official Gazette
of September 12, 1989 at 1106 TMOG 26, 30.

In a cancellation proceeding, if the party identified by the
petitioner, pursuant to 37 CFR 2.112(a), as the current
owner of the registration sought to be cancelled is not the
record owner thereof, the Board will send a courtesy copy of
the notification letter, together with a copy of the
petition to cancel and any exhibits thereto, to the alleged
current owner.  If the alleged current owner believes that
it is, in fact, the current owner of the registration, and
wishes to defend the registration against the petition to
cancel, it may file a motion, supported by a showing of its
current ownership interest in the registration, to be joined
or substituted as respondent.  See 37 CFR 2.113 and TBMP
512.



315.02  Defendant's Copy of Complaint Returned as
Undeliverable

If the applicant in an opposition is not represented by an
attorney or other authorized representative, and the
applicant's copies of the notice of opposition and
notification letter are returned to the Board as
undeliverable, the Board will make all reasonable efforts to
locate the applicant.  However, it is the responsibility of
an applicant representing itself to keep the PTO informed of
its current address.  If the applicant fails to do so, and
the Board is unable to locate the applicant, the Board will
continue to send correspondence relating to the opposition
to applicant's last-known address, and when applicant fails
to file an answer to the notice of opposition, the
opposition may be decided as in case of default.

If, in a cancellation proceeding, the respondent's copies of
the petition to cancel and notification letter are returned
to the Board as undeliverable, the Board will send a letter
to the petitioner asking the petitioner for information
concerning respondent's current address.  If the petitioner
files a response indicating that the respondent is no longer
in business, notice of the filing of the petition to cancel
will be published in the Official Gazette, pursuant to 37
CFR 2.118.  If the petitioner fails to file a response to
the Board's letter, or files a response indicating that it
is unable to furnish respondent's current address, the Board
will make all reasonable efforts to locate the respondent.
See the notice of final rulemaking published in the Federal
Register on August 22, 1989 at 54 FR 34886, 34891, and in
the Official Gazette of September 12, 1989 at 1106 TMOG 26,
30.  If the Board is unable to locate the respondent after
reasonable investigation, notice of the filing of the
petition to cancel will be published in the Official
Gazette.  See 37 CFR 2.118.

When notice of the filing of a petition to cancel is
published in the Official Gazette, the published notice
allows the respondent thirty days from the publication date
thereof in which to appear in the cancellation proceeding.
If respondent fails to appear within the time allowed,
default judgement may be entered against respondent.

For information concerning the procedure followed by the
Board in a concurrent use proceeding when a communication
sent by the Board to a specified excepted user is returned
as undeliverable, see TBMP 1105.



316  Time for Filing Answer

316.01  In General

Rules 2.105 and 2.113, 37 CFR 2.105 and 2.113, provide, in
part, that the Board's letter notifying a defendant of the
filing of an opposition or petition to cancel "shall
designate a time, not less than thirty days from the mailing
date of the notification, within which an answer must be
filed."  A defendant is under no obligation to file an
answer to the complaint in an opposition or cancellation
proceeding until it receives the Board's notification letter
setting the time for filing an answer.  See Nabisco Brands
Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993).  It is the
general practice of the Board to allow the defendant in an
opposition or cancellation proceeding 40 days from the
mailing date of the notification letter in which to file its
answer.

When a timely counterclaim for cancellation is filed, the
time for filing an answer thereto is designated in a letter
prepared by the Board.  Rules 2.106(b)(2)(iii) and
2.114(b)(2)(iii), 37 CFR 2.106(b)(2)(iii) and
2.114(b)(2)(iii), provide, in part, that the time allowed
will be "not less than thirty days."  It is the general
practice of the Board to allow the counterclaim defendant 30
days from the mailing date of the Board's letter in which to
file an answer to the counterclaim.



316.02  Rule 2.119(c) 5-Day Addition Not Applicable to
Deadlines Set by                          Board

Rule 2.119(c), 37 CFR 2.119(c), provides, in part, that
"[w]henever a party is required to take some action within a
prescribed period after the service of a paper upon the
party by another party and the paper is served by first-
class mail, "Express Mail" or overnight courier, 5 days
shall be added to the prescribed period."  This provision,
by its very terms, applies only when a party has to take
some action within a prescribed period after the service of
a paper upon it by another party (and service of the paper
was made in one of three specified ways).  It does not apply
to an action which must be taken by a party within a time
set in a communication from the Board.

Thus, when a Board letter notifying a defendant of the
filing of an opposition or petition to cancel allows the
defendant 40 days from the mailing date of the notification
letter in which to file an answer to the complaint, the
answer is due on or before the 40th day, not on the 45th
day.  Similarly, when the Board allows a counterclaim
defendant 30 days from the mailing date of the Board's
letter in which to file an answer to the counterclaim, the
answer is due on or before the 30th day, not on the 35th
day.



316.03  Extension of Time to File Answer

The time for filing an answer may be extended or reopened by
stipulation of the parties approved by the Board, or upon
motion granted by the Board, or by order of the Board.  See
FRCP 6(b), and TBMP 509.



317  Default

317.01  In General

37 CFR 2.106(a) If no answer is filed within the time set,
the opposition may be decided as in case of default.

37 CFR 2.114(a) If no answer is filed within the time set,
the petition may be decided as in case of default.

If a defendant fails to file an answer to a complaint during
the time allowed therefor, the Board may issue a notice of
default.  The notice states that no answer has been filed;
enters notice of default under FRCP 55(a); and allows the
defendant 20 days from the mailing date of the notice in
which to show cause why default judgment should not be
entered against it.  If the defendant fails to file a
response to the notice, or files a response which does not
show good cause, default judgment may be entered against it.
See 37 CFR 2.106(a) and 2.114(a); FRCP 55(a), 55(b) and
55(c); Paolo's Associates Limited Partnership v. Paolo Bodo,
21 USPQ2d 1899 (Comm'r 1990); Djeredjian v. Kashi Co., 21
USPQ2d 1613 (TTAB 1991); Regatta Sport Ltd. v. Telux-Pioneer
Inc., 20 USPQ2d 1154 (TTAB 1991); and Identicon Corp. v.
Williams, 195 USPQ 447 (Comm'r 1977).  Cf. TBMP 508.

The issue of whether default judgment should be entered
against a defendant, for failure to file a timely answer to
the complaint, may also be raised by means other than the
Board's issuance of a notice of default.  For example, the
plaintiff, realizing that the defendant is in default, may
file a motion for default judgment (in which case the motion
may serve as a substitute for the Board's issuance of a
notice of default); or the defendant itself, realizing that
it is in default, may file a motion asking that its late-
filed answer be accepted.  However the issue is raised, the
standard for determining whether default judgment should be
entered against the defendant for its failure to file a
timely answer to the complaint is the FRCP 55(c) standard,
that is, whether the defendant has shown good cause why
default judgment should not be entered against it.  See
Paolo's Associates Limited Partnership v. Paolo Bodo, 21
USPQ2d 1899 (Comm'r 1990), and Fred Hayman Beverly Hills,
Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556 (TTAB 1991).

When a defendant which has not yet filed an answer to a
complaint files a response to a notice of default, or to a
motion for default judgment, the answer normally should be
submitted with the response.  However, in some cases it may
not be necessary for the defendant to submit its answer with
the response.  Examples include cases where the defendant
has not received the copies of the complaint and
notification letter sent to it by the Board, or where the
parties have settled the case or agreed to an extension of
the defendant's time to file an answer.



317.02  Setting Aside Notice of Default

If a defendant which has failed to file a timely answer to
the complaint responds to a notice of default by filing a
satisfactory showing of good cause why default judgment
should not be entered against it, the Board will set aside
the notice of default.  See FRCP 55(c).  Similarly, if the
defendant files such a showing in response to a motion by
the plaintiff for default judgment, or in support of its own
motion asking that its late-filed answer be accepted,
default judgment will not be entered against it.

Good cause why default judgment should not be entered
against a defendant, for failure to file a timely answer to
the complaint, is usually found when the defendant shows
that (1) the delay in filing an answer was not the result of
willful conduct or gross neglect on the part of the
defendant, (2) the plaintiff will not be substantially
prejudiced by the delay, and (3) the defendant has a
meritorious defense to the action.

The determination of whether default judgment should be
entered against a party lies within the sound discretion of
the Board.  In exercising that discretion, the Board must be
mindful of the fact that it is the policy of the law to
decide cases on their merits.  Accordingly, the Board is
very reluctant to enter a default judgment for failure to
file a timely answer, and tends to resolve any doubt on the
matter in favor of the defendant.  Nevertheless, entry of
default judgment may be necessary in some cases.

See  Paolo's Associates Limited Partnership v. Paolo Bodo,
21 USPQ2d 1899 (Comm'r 1990); Fred Hayman Beverly Hills,
Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556 (TTAB 1991);
Thrifty Corp. v. Bomax Enterprises, 228 USPQ 62 (TTAB 1985);
Amaturo Group, Inc. v. Greater Media, Inc., 201 USPQ 617
(Comm'r 1978); and Identicon Corp. v. Williams, 195 USPQ 447
(Comm'r 1977).  See also Grinnell Corp. v. Grinnell Concrete
Pavingstones Inc., 14 USPQ2d 2065 (TTAB 1990).  Cf. Hewlett-
Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710
(Fed. Cir. 1991); Unicut Corp. v. Unicut, Inc., 222 USPQ 341
(TTAB 1984); Fort Howard Paper Co. v. Kimberly-Clark Corp.,
216 USPQ 617 (TTAB 1982); and Regent Baby Products Corp. v.
Dundee Mills, Inc., 199 USPQ 571 (TTAB 1978).



317.03  Setting Aside Default Judgment

The standard for setting aside default judgment is stricter
than the standard for setting aside a notice of default.

A notice of default may be set aside upon a showing of good
cause.  See FRCP 55(c).  However, once default judgment has
actually been entered against a defendant pursuant to FRCP
55(b), the judgment may be set aside only in accordance with
FRCP 60(b), which governs motions for relief from final
judgment.  See FRCP 55(c), and 6 Moore's Federal Practice,
55.10 (2d ed. 1985).  See also Waifersong Ltd. Inc. v.
Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632 (6th
Cir. 1992).  For information concerning motions under FRCP
60(b) for relief from final judgment, see TBMP 545.

The factors considered in determining a motion to set aside
notice of default are also considered in determining a
motion for relief from a default judgment entered pursuant
to FRCP 55.  Compare, for example, Paolo's Associates
Limited Partnership v. Paolo Bodo, 21 USPQ2d 1899 (Comm'r
1990), and Fred Hayman Beverly Hills, Inc. v. Jacques
Bernier, Inc., 21 USPQ2d 1556 (TTAB 1991) (both of which
involved the question whether default judgment should be
entered against defendant), with Djeredjian v. Kashi Co., 21
USPQ2d 1613 (TTAB 1991), and Regatta Sport Ltd. v. Telux-
Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991) (both of which
involved the question whether defendant should be granted
relief from a default judgment).  See also Wright, Miller &
Kane, Federal Practice and Procedure:  Civil 2d 2692
(1983), at pages 470-471, and Waifersong Ltd. Inc. v.
Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632 (6th
Cir. 1992).

However, the showing submitted by the defendant is likely to
be viewed with less leniency when defendant seeks relief
from default judgment than when defendant seeks to show
cause why default judgment should not be entered against it.
See Wright, Miller & Kane, Federal Practice and Procedure:
Civil 2d 2692 (1983), at pages 471-472, and Waifersong Ltd.
Inc. v. Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632
(6th Cir. 1992).

Nevertheless, because default judgments for failure to
timely answer the complaint are not favored by the law, a
motion under FRCP 55(c) and 60(b) seeking relief from such a
judgment is generally treated with more liberality by the
Board than are other motions under FRCP 60(b) for relief
from other types of judgments.  Compare, for example,
Djeredjian v. Kashi Co., 21 USPQ2d 1613 (TTAB 1991), and
Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154
(TTAB 1991) with Syosset Laboratories, Inc. v. TI
Pharmaceuticals, 216 USPQ 330 (TTAB 1982); Marriott Corp. v.
Pappy's Enterprises, Inc., 192 USPQ 735 (TTAB 1976); and
Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB 1974),
aff'd, 510 F.2d 963, 184 USPQ 744 (CCPA 1975).  See also
Wright, Miller & Kane, Federal Practice and Procedure:
Civil 2d 2693 (1983), at pages 480-485.



318  Form of Answer

318.01  In General

An answer to a notice of opposition or petition to cancel
corresponds to an answer to a complaint in a court
proceeding.  See 37 CFR 2.116(c).

An answer should bear at its top the heading "IN THE UNITED
STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
TRIAL AND APPEAL BOARD," followed by the name (e.g., "ABC
Corporation v. XYZ Company") of the proceeding, the
proceeding number (e.g., "Opposition No. 56,789" or
Cancellation No. 12,345"), and a title describing the nature
of the paper (e.g., "ANSWER," "ANSWER AND COUNTERCLAIM,"
etc.).

An answer need not be verified, but it must be signed.  The
signature may be made by the defendant or by the defendant's
attorney or other authorized representative.  See 37 CFR
2.119(e), and TBMP 106.02.  If a defendant signing for
itself is an individual, the signature must be made by the
individual.  If a defendant signing for itself is a
partnership, the signature must be made by a partner.  If a
defendant signing for itself is a corporation or
association, the signature must be made by an individual who
is an officer of defendant and who is authorized to
represent it.  The signature should be accompanied by a
description of the capacity in which the signing individual
signs (i.e., as defendant, if defendant is an individual; as
counsel for defendant; as a partner of defendant, if
defendant is a partnership; as an officer of defendant
identified by title, if defendant is a corporation; etc.).

Although an answer must be signed, an unsigned answer will
not be refused consideration if a signed copy is submitted
to the PTO within the time limit set in the Board's letter
notifying the defendant of this defect.  See 37 CFR
2.119(e), and TBMP 106.02.

The Board prefers that answers be submitted in typewritten
or printed form, double spaced.  An answer may be submitted
on either legal or letter-sized paper.  However, letter-size
paper (the size preferred by many Federal district courts)
is recommended.  See TBMP 106.03.

One copy of the answer, and any exhibits thereto, must be
filed in the PTO.  Another copy of the answer, with any
exhibits thereto, should be served by the defendant upon the
plaintiff, and the answer should bear proof (e.g., a
certificate of service, consisting of a statement signed by
the filing party, or by its attorney or other authorized
representative, clearly stating the date and manner in which
service was made) that such service has been made.  See 37
CFR 2.119(a), and TBMP 113.



318.02  Pleading Substance of Answer

37 CFR 2.106(b)(1) An answer shall state in short and plain
terms the applicant's defenses to each claim asserted and
shall admit or deny the averments upon which the opposer
relies.  If the applicant is without knowledge or
information sufficient to form a belief as to the truth of
an averment, applicant shall so state and this will have the
effect of a denial.  Denials may take any of the forms
specified in Rule 8(b) of the Federal Rules of Civil
Procedure.  An answer may contain any defense, including the
affirmative defenses of unclean hands, laches, estoppel,
acquiescence, fraud, mistake, prior judgment, or any other
matter constituting an avoidance or affirmative defense.
When pleading special matters, the Federal Rules of Civil
Procedure shall be followed.  A reply to an affirmative
defense need not be filed.  When a defense attacks the
validity of a registration pleaded in the opposition,
paragraph (b)(2) of this section shall govern.  A pleaded
registration is a registration identified by number and date
of issuance in an original notice of opposition or in any
amendment thereto made under Rule 15, Federal Rules of Civil
Procedure.

(2)(i) A defense attacking the validity of any one or more
of the registrations pleaded in the opposition shall be a
compulsory counterclaim if grounds for such counterclaim
exist at the time when the answer is filed.  If grounds for
a counterclaim are known to the applicant when the answer to
the opposition is filed, the counterclaim shall be pleaded
with or as part of the answer.  If grounds for a
counterclaim are learned during the course of the opposition
proceeding, the counterclaim shall be pleaded promptly after
the grounds therefor are learned.  A counterclaim need not
be filed if it is the subject of another proceeding between
the same parties or anyone in privity therewith.

(ii) An attack on the validity of a registration pleaded by
an opposer will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.

37 CFR 2.114(b)(1) An answer shall state in short and plain
terms the respondent's defenses to each claim asserted and
shall admit or deny the averments upon which the petitioner
relies.  If the respondent is without knowledge or
information sufficient to form a belief as to the truth of
an averment, respondent shall so state and this will have
the effect of a denial.  Denials may take any of the forms
specified in Rule 8(b) of the Federal Rules of Civil
Procedure.  An answer may contain any defense, including the
affirmative defenses of unclean hands, laches, estoppel,
acquiescence, fraud, mistake, prior judgment, or any other
matter constituting an avoidance or affirmative defense.
When pleading special matters, the Federal Rules of Civil
Procedure shall be followed.  A reply to an affirmative
defense need not be filed.  When a defense attacks the
validity of a registration pleaded in the petition,
paragraph (b)(2) of this section shall govern.  A pleaded
registration is a registration identified by number and date
of issuance in an original petition for cancellation or in
any amendment thereto made under Rule 15, Federal Rules of
Civil Procedure.

(2)(i) A defense attacking the validity of any one or more
of the registrations pleaded in the petition shall be a
compulsory counterclaim if grounds for such counterclaim
exist at the time when the answer is filed.  If grounds for
a counterclaim are known to respondent when the answer to
the petition is filed, the counterclaim shall be pleaded
with or as part of the answer.  If grounds for a
counterclaim are learned during the course of the
cancellation proceeding, the counterclaim shall be pleaded
promptly after the grounds therefor are learned.  A
counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in
privity therewith.

(ii) An attack on the validity of a registration pleaded by
a petitioner will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.

37 CFR 2.133(d) A plaintiff's pleaded registration will not
be restricted in the absence of a counterclaim to cancel the
registration in whole or in part, except that a counterclaim
need not be filed if the registration is the subject of
another proceeding between the same parties or anyone in
privity therewith.



318.02(a)  Admissions and Denials

In its answer, a defendant should admit or deny each of the
allegations contained in the complaint.  If the defendant is
without knowledge or information sufficient to form a belief
as to the truth of an allegation, it should so state, and
this statement will have the effect of a denial.  See 37 CFR
2.106(b)(1) and 2.114(b)(1); FRCP 8(b); Hewlett-Packard
Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710 (Fed.
Cir. 1991); and Thrifty Corp. v. Bomax Enterprises, 228 USPQ
62 (TTAB 1985).

A denial of an allegation should fairly meet the substance
of the allegation denied, and may take any of the forms
described in FRCP 8(b).  See 37 CFR 2.106(b)(1) and
2.114(b)(1).  Thus, if a defendant intends in good faith to
deny only a part or a qualification of an allegation, the
defendant should admit so much of the allegation as is true
and material and should deny only the remainder.  If a
defendant intends in good faith to controvert all of the
allegations contained in a complaint, the defendant may do
so by general denial, subject to the obligations set forth
in FRCP 11 (for a discussion of FRCP 11 in relation to
pleadings, see TBMP 314).  If a defendant does not intend
in good faith to controvert all of the allegations contained
in a complaint, the defendant may make its denials as
specific denials of designated allegations or paragraphs, or
may generally deny all the allegations except those
designated allegations or paragraphs which are expressly
admitted.

In the absence of a general denial of some or all of the
allegations in a complaint, admissions or denials should be
made in numbered paragraphs corresponding to the numbered
paragraphs in the complaint.

If any allegation in a complaint is not denied in the
defendant's answer thereto, the allegation may be deemed
admitted.  See FRCP 8(d).



318.02(b)  Defenses

An answer should include a short and plain statement of any
defenses which the defendant may have to the claim or claims
asserted by the plaintiff.  See 37 CFR 2.106(b)(1) and
2.114(b)(1), and FRCP 8(b).  These defenses may include
unclean hands, laches, estoppel, acquiescence, fraud,
mistake, prior judgment, or any other matter constituting an
avoidance or affirmative defense.  See 37 CFR 2.106(b)(1)
and 2.114(b)(1).  They may also include a pleading that
defendant is at least entitled to a registration with a
particular restriction (described in the pleading in
sufficient detail to give plaintiff fair notice of the basis
for the defense); except that geographic restrictions will
be considered and determined by the Board only in the
context of a concurrent use registration proceeding.  Cf. 37
CFR 2.133(b) and 2.133(c); Brunswick Corp. v. British
Seagull Ltd.,     F.2d     , 32 USPQ2d 1120 (Fed. Cir.
1994); Personnel Data Systems Inc. v. Parameter Driven
Software Inc., 20 USPQ2d 1863 (TTAB 1991); and Flow
Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991).
See also Snuffer & Watkins Management Inc. v. Snuffy's Inc.,
17 USPQ2d 1815 (TTAB 1990).  Cf. TBMP 514.  When one of the
special matters listed in FRCP 9 (including, inter alia,
capacity, fraud, and judgment) is pleaded, the provisions of
FRCP 9 governing the pleading of that special matter should
be followed.  See 37 CFR 2.106(b)(1) and 2.114(b)(1).

A defense which attacks the validity of a registration
pleaded by a plaintiff will not be entertained unless the
defendant timely files a counterclaim or a separate petition
to cancel the registration.  See  37 CFR 2.106(b) and
2.114(b); Food Specialty Co. v. Standard Products Co., 406
F.2d 1397, 161 USQP 46 (CCPA 1969); Gillette Co. v. "42"
Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101 (CCPA
1968); Contour Chair-Lounge Co. v. Englander Co., 324 F.2d
186, 139 USPQ 285 (CCPA 1963); Giant Food, Inc. v. Standard
Terry Mills, Inc., 229 USPQ 955 (TTAB 1986); Clorox Co. v.
State Chemical Manufacturing Co., 197 USPQ 840 (TTAB 1977);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).  See also TBMP 319.

Although Rules 2.106(b)(2)(ii) and 2.114(b)(2)(ii), 37 CFR
2.106(b)(2)(ii) and 2.114(b)(2)(ii), specifically permit a
defense attacking the validity of a plaintiff's pleaded
registration to be raised either as a counterclaim or as a
separate petition to cancel, the better practice is to raise
the defense as a counterclaim.  See Vitaline Corp. v.
General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir.
1989).  If the defense is raised as a separate petition to
cancel, however, the petition itself and any covering letter
filed therewith should include a reference to the original
proceeding.

A defendant's request to restrict a plaintiff's pleaded
registration, as, for example, by limiting the goods or
services therein, or by deleting some of the goods or
services, will not be entertained in the absence of a timely
counterclaim, or separate petition, to cancel the
registration in whole or in part.  See 37 CFR 2.133(d).
Geographic restrictions will be considered and determined by
the Board only within the context of a concurrent use
registration proceeding.  See 37 CFR 2.99(h) and 2.133(c).
See also Snuffer & Watkins Management Inc. v. Snuffy's Inc.,
17 USPQ2d 1815 (TTAB 1990).

When a defense is raised by way of a counterclaim, it should
not also be pleaded as an affirmative defense, because the
pleading of it as an affirmative defense is unnecessary and
redundant.  See Space Base Inc. v. Stadis Corp., 17 USPQ2d
1216 (TTAB 1990); Continental Gummi-Werke AG v. Continental
Seal Corp., 222 USPQ 822 (TTAB 1984); and W. R. Grace & Co.
v. Arizona Feeds, 195 USPQ 670 (Comm'r 1977).

The elements of a defense should be stated simply,
concisely, and directly.  See FRCP 8(e)(1).  However, the
pleading should include enough detail to give the plaintiff
fair notice of the basis for the defense.  Cf. McDonnell
Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB
1985).

A defendant may state as many separate defenses as it has,
regardless of consistency; a defendant may also set forth
two or more statements of a defense alternately or
hypothetically, either in one count or in separate counts.
See FRCP 8(e)(2).  Cf. Humana Inc. v. Humanomics Inc., 3
USPQ2d 1696 (TTAB 1987); Home Juice Co. v. Runglin Cos., 231
USPQ 897 (TTAB 1986); Taffy's of Cleveland, Inc. v. Taffy's,
Inc., 189 USPQ 154 (TTAB 1975); John T. Clark Co. v. Colgate-
Palmolive Co., 176 USPQ 93 (TTAB 1972); Rimmel, Ltd. v.
Romel Cosmetics, Inc., 172 USPQ 186 (TTAB 1971); and Revco,
D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48 (TTAB 1971).

For example, an applicant whose application for registration
has been opposed under Section 2(d) of the Act, 15 U.S.C.
1052(d), on the ground of opposer's alleged prior use of
its mark, coupled with an allegation of likelihood of
confusion, might deny that there is any likelihood of
confusion with respect to its mark and goods as set forth in
the application.  At the same time, the applicant might
plead alternatively that it actually uses its mark only on a
specific type (identified in the pleading) of the goods
covered by the broad identification in its application; that
there is no likelihood of confusion with respect to
applicant's actual goods; and that even if the Board
ultimately finds that opposer is entitled to judgment with
respect to applicant's goods as broadly identified,
applicant would be entitled to a registration of its mark
with a restricted identification reflecting the actual
nature of its goods.  Cf. 37 CFR 2.133(b), and TBMP 514.

When two or more statements are made in the alternative, the
sufficiency of each is determined independently; the fact
that one of them may be insufficient does not mean that the
other(s) is(are) also insufficient.  See FRCP 8(e)(2).

Evidentiary matters (such as, for example, lists of third-
party registrations upon which defendant intends to rely)
should not be pleaded in an answer.  They are matters for
proof, not for pleading.  See McCormick & Co. v. Hygrade
Food Products Corp., 124 USPQ 16 (TTAB 1959).



318.02(c)  Other Affirmative Pleadings

An answer may include affirmative assertions which, although
they may not rise to the level of an affirmative defense,
nevertheless state the reasons for, and thus amplify, the
defendant's denial of one or more of the allegations in the
complaint.  These amplifications of denials, whether
referred to as "affirmative defenses," "avoidances,"
"affirmative pleadings," or "arguments," are permitted by
the Board because they serve to give the plaintiff fuller
notice of the position which the defendant plans to take in
defense of its right to registration.  See Humana Inc. v.
Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987); Maytag Co. v.
Luskin's, Inc., 228 USPQ 747 (TTAB 1986); Textron, Inc. v.
Gillette Co., 180 USPQ 152 (TTAB 1973); and McCormick & Co.
v. Hygrade Food Products Corp., 124 USPQ 16 (TTAB 1959).
Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570
(TTAB 1988).



319  Counterclaims

319.01  In General

37 CFR 2.106(b)(2)(i) A defense attacking the validity of
any one or more of the registrations pleaded in the
opposition shall be a compulsory counterclaim if grounds for
such counterclaim exist at the time when the answer is
filed.  If grounds for a counterclaim are known to the
applicant when the answer to the opposition is filed, the
counterclaim shall be pleaded with or as part of the answer.
If grounds for a counterclaim are learned during the course
of the opposition proceeding, the counterclaim shall be
pleaded promptly after the grounds therefor are learned.  A
counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in
privity therewith.

(ii) An attack on the validity of a registration pleaded by
an opposer will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.

(iii) The provisions of 2.111 through 2.115, inclusive,
shall be applicable to counterclaims.  A time, not less than
thirty days, will be designated within which an answer to
the counterclaim must be filed.

(iv) The times for pleading, discovery, testimony, briefs or
oral argument will be reset or extended when necessary, upon
motion by a party, to enable a party fully to present or
meet a counterclaim or separate petition for cancellation of
a registration.

37 CFR 2.114(b)(2)(i) A defense attacking the validity of
any one or more of the registrations pleaded in the petition
shall be a compulsory counterclaim if grounds for such
counterclaim exist at the time when the answer is filed.  If
grounds for a counterclaim are known to respondent when the
answer to the petition is filed, the counterclaim shall be
pleaded with or as part of the answer.  If grounds for a
counterclaim are learned during the course of the
cancellation proceeding, the counterclaim shall be pleaded
promptly after the grounds therefor are learned.  A
counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in
privity therewith.

(ii) An attack on the validity of a registration pleaded by
a petitioner will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.

(iii) The provisions of 2.111 through 2.115, inclusive,
shall be applicable to counterclaims.  A time, not less than
thirty days, will be designated within which an answer to
the counterclaim must be filed.

(iv) The times for pleading, discovery, testimony, briefs,
or oral argument will be reset or extended when necessary,
upon motion by a party, to enable a party fully to present
or meet a counterclaim or separate petition for cancellation
of a registration.

An attack upon the validity of a registration pleaded by a
plaintiff cannot be entertained by the Board unless the
defendant timely files a counterclaim or a separate petition
to cancel the registration.  See 37 CFR 2.106(b)(2)(ii)
and 2.114(b)(2)(ii); Food Specialty Co. v. Standard Products
Co., 406 F.2d 1397, 161 USPQ 46 (CCPA 1969); Gillette Co. v.
"42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101 (CCPA
1968); Contour Chair-Lounge Co. v. Englander Co., 324 F.2d
186, 139 USPQ 285 (CCPA 1963); Giant Food, Inc. v. Standard
Terry Mills, Inc., 229 USPQ 955 (TTAB 1986); Clorox Co. v.
State Chemical Manufacturing Co., 197 USPQ 840 (TTAB 1977);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).

Although Rules 2.106(b)(2)(ii) and 2.114(b)(2)(ii)
specifically permit a defense attacking the validity of a
plaintiff's pleaded registration to be raised either as a
counterclaim or as a separate petition to cancel, the better
practice is to raise the defense as a counterclaim.  See
Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13
USPQ2d 1172 (Fed. Cir. 1989).  If the defense is raised as a
separate petition to cancel, however, the petition itself
and any covering letter filed therewith should include a
reference to the original proceeding.  Further, a defendant
which fails to timely plead a compulsory counterclaim cannot
avoid the effect of its failure by thereafter asserting the
counterclaim grounds in a separate petition to cancel.  See
TBMP 319.04, and cases cited therein.

The only type of counterclaim which may be entertained by
the Board is a counterclaim for cancellation of a
registration owned by an adverse party.  See Pyttronic
Industries Inc. v. Terk Technologies Corp., 16 USPQ2d 2055
(TTAB 1990), and International Telephone and Telegraph Corp.
v. International Mobile Machines Corp., 218 USPQ 1024 (TTAB
1983).

A counterclaim may seek to cancel a registration in whole,
or in part.  In the latter case, the counterclaimant may
seek to cancel the registration only, for example, as to
some of the goods or services listed therein, or only to the
extent of restricting the goods or services in a particular
manner (described in sufficient detail to give the
respondent fair notice thereof).  See Section 18 of the Act,
15 U.S.C. 1068; 37 CFR 2.111(b) and 2.133(b); and TBMP
311, and cases cited therein.  However, geographic
limitations will be considered and determined by the Board
only within the context of a concurrent use registration
proceeding.  See 37 CFR 2.99(h) and 2.133(c), and Snuffer
& Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815
(TTAB 1990).

A counterclaim is the legal equivalent of a petition to
cancel.  Thus, the provisions of Rules 2.111 through 2.115,
37 CFR 2.111 through 2.115, governing petitions to cancel,
are applicable to counterclaims.  See 37 CFR
2.106(b)(2)(iii) and 2.114(b)(2)(iii).

When necessary to enable a party fully to present or meet a
counterclaim or separate petition to cancel a registration,
the times for pleading, discovery, testimony, briefs and/or
oral argument will be reset or extended.  A party which
believes that such a resetting or extension is necessary
should file a motion therefor with the Board.  See 37 CFR
2.106(b)(2)(iv) and 2.114(b)(2)(iv).



319.02  Fee For Counterclaim

37 CFR 2.106(b)(2)(iii) The provisions of 2.111 through
2.115, inclusive, shall be applicable to counterclaims.  A
time, not less than thirty days, will be designated within
which an answer to the counterclaim must be filed.

37 CFR 2.114(b)(2)(iii) The provisions of 2.111 through
2.115, inclusive, shall be applicable to counterclaims.  A
time, not less than thirty days, will be designated within
which an answer to the counterclaim must be filed.

The required filing fee must be paid when a petition to
cancel takes the form of a counterclaim, just as it must be
paid when a petition to cancel takes the form of a separate
proceeding.  See 37 CFR 2.106(b)(2)(iii) and
2.114(b)(2)(iii); Williamson-Dickie Manufacturing Co. v.
Mann Overall Company, 359 F.2d 450, 149 USPQ 518 (CCPA
1966); Aries Systems Corp. v. World Book Inc., 23 USPQ2d
1742 (TTAB 1992), summ. judgment granted, in part, 26 USPQ2d
1926 (TTAB 1993); Sunway Fruit Products, Inc. v. Productos
Caseros, S. A., 130 USPQ 33 (Comm'r 1960); Jet-Pak, Inc. v.
United States Plywood Corp., 125 USPQ 491 (Comm'r 1960); Jet-
Pak, Inc. v. United States Plywood Corp., 124 USPQ 385 (TTAB
1960); and McCormick & Co. v. Hygrade Food Products Corp.,
124 USPQ 16 (TTAB 1959).  That is, the required fee (see 37
CFR 2.6(l)) must be paid for each party joined as
counterclaimant for each class sought to be cancelled in
each registration against which the counterclaim is filed.
See 37 CFR  2.111(c) and 2.112(b).  Cf. TBMP 310.



319.03  Form of Counterclaim

A counterclaim should be generally similar in form to a
petition to cancel (for information concerning the form of a
petition to cancel, see TBMP 312).  However, a counterclaim
filed as part of the counterclaimant's answer to the adverse
party's complaint necessarily differs somewhat in format
from a separate petition to cancel.

Moreover, a plaintiff filing a separate petition to cancel
must file the petition (and any exhibits thereto) in
duplicate, and need not serve a copy thereof upon the
defendant(s).  See 37 CFR 2.112(a) and 2.119(a), and TBMP
312.01.  A counterclaimant, on the other hand, need file
only one copy of its counterclaim (and any exhibits thereto)
with the Board, but must serve a copy thereof (with any
exhibits thereto) upon every other party to the proceeding,
and must make proof of such service before the counterclaim
will be considered by the Board.  See 37 CFR 2.119(a).

The pleading of the substance of a counterclaim may also
differ somewhat from the pleading of the substance of a
separate petition to cancel.  For example, a counterclaimant
need not plead its standing to assert a counterclaim to
cancel a registration pleaded by the plaintiff in its
complaint.  The counterclaimant's standing in such a case is
inherent in its position as defendant to the complaint.  See
Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB
1993); Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16
USPQ2d 1597 (TTAB 1990); Syntex (U.S.A.) Inc. v. E.R. Squibb
& Sons Inc., 14 USPQ2d 1879 (TTAB 1990); Bankamerica Corp.
v. Invest America, 5 USPQ2d 1076 (TTAB 1987); M. Aron Corp.
v. Remington Products, Inc., 222 USPQ 93 (TTAB 1984); Marcal
Paper Mills, Inc. v. American Can Co., 212 USPQ 852 (TTAB
1981); and General Mills, Inc. v. Nature's Way Products,
Inc., 202 USPQ 840 (TTAB 1979).  Cf. Domino's Pizza Inc. v.
Little Caesar Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988),
and Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857 (TTAB
1986).

In some instances, the grounds for cancellation available in
the case of a counterclaim differ from those available in
the case of a petition to cancel which is not in the nature
of a counterclaim.  Section 14 of the Act, 15 U.S.C. 1064,
limits, after a five-year period, the grounds upon which
most Principal Register registrations may be cancelled.  If
the plaintiff in a proceeding before the Board relies upon
such a registration, and the five-year period has not yet
expired when the plaintiff's complaint is filed, the
limitation does not apply to a counterclaim filed by the
defendant therein for cancellation of that registration.
This is so even if the five-year period has expired by the
time the counterclaim is filed.  In such cases, the filing
of the plaintiff's complaint tolls, during the pendency of
the proceeding, the running of the five-year period for
purposes of determining the grounds upon which a
counterclaim may be based.  See Williamson-Dickie
Manufacturing Co. v. Mann Overall Company, 359 F.2d 450, 149
USPQ 518 (CCPA 1966); Arman's Systems, Inc. v. Armand's
Subway, Inc., 215 USPQ 1048 (TTAB 1982); UMC Industries,
Inc. v. UMC Electronics Co., 207 USPQ 861 (TTAB 1980);
Humble Oil & Refining Co. v. Sekisui Chemical Company Ltd.
of Japan, 165 USPQ 597 (TTAB 1970); Sunbeam Corp. v. Duro
Metal Products Co., 106 USPQ 385 (Comm'r 1955); and TBMP
308.02(c)(1).  See also J. Thomas McCarthy, Trademarks and
Unfair Competition, 20:17[3] (3rd ed. 1994).



319.04  Compulsory Counterclaims

37 CFR 2.106(b)(2)(i) A defense attacking the validity of
any one or more of the registrations pleaded in the
opposition shall be a compulsory counterclaim if grounds for
such counterclaim exist at the time when the answer is
filed.  If grounds for a counterclaim are known to the
applicant when the answer to the opposition is filed, the
counterclaim shall be pleaded with or as part of the answer.
If grounds for a counterclaim are learned during the course
of the opposition proceeding, the counterclaim shall be
pleaded promptly after the grounds therefor are learned.  A
counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in
privity therewith.

37 CFR 2.114(b)(2)(i) A defense attacking the validity of
any one or more of the registrations pleaded in the petition
shall be a compulsory counterclaim if grounds for such
counterclaim exist at the time when the answer is filed.  If
grounds for a counterclaim are known to respondent when the
answer to the petition is filed, the counterclaim shall be
pleaded with or as part of the answer.  If grounds for a
counterclaim are learned during the course of the
cancellation proceeding, the counterclaim shall be pleaded
promptly after the grounds therefor are learned.  A
counterclaim need not be filed if it is the subject of
another proceeding between the same parties or anyone in
privity therewith.

See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13
USPQ2d 1172 (Fed. Cir. 1989); Libertyville Saddle Shop Inc.
v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992),
summ. judgment granted, 24 USPQ2d 1376 (TTAB 1992); See's
Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395 (TTAB
1989); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB
1989); Marshall Field & Co. v. Mrs. Fields Cookies, 11
USPQ2d 1355 (TTAB 1989); S & L Acquisition Co. v. Helene
Arpels Inc., 9 USPQ2d 1221 (TTAB 1987);  Consolidated Foods
Corp. v. Big Red, Inc., 231 USPQ 744 (TTAB 1986); and M.
Aron Corp. v. Remington Products, Inc., 222 USPQ 93 (TTAB
1984).  See also FRCP 15(a); J. B. Williams Co. v. Pepsodent
G.m.b.H., 188 USPQ 577 (TTAB 1975); Johnson & Johnson v.
Rexall Drug Co., 186 USPQ 167 (TTAB 1975); Neville Chemical
Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974); and Beth A.
Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The Right
Stuff, 81 Trademark Rep. 302 (1991).

A defendant which fails to timely plead a compulsory
counterclaim cannot avoid the effect of its failure by
thereafter asserting the counterclaim grounds in a separate
petition to cancel.  In such a case, the separate petition
will be dismissed, upon motion, on the ground that the
substance of the petition constitutes a compulsory
counterclaim in another proceeding, and that it was not
timely asserted.  See Vitaline Corp. v. General Mills Inc.,
891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989), and
Consolidated Foods Corp. v. Big Red, Inc., 231 USPQ 744
(TTAB 1986).

If a defendant confronted with a motion for summary judgment
knows of grounds for a counterclaim which might serve to
defeat the motion, the counterclaim should be asserted in
response to the motion, even if no answer to the complaint
has yet been filed.  See Libertyville Saddle Shop Inc. v. E.
Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992), summ.
judgment granted, 24 USPQ2d 1376 (TTAB 1992).

A plaintiff which fails to plead a registration, and later
seeks to rely thereon, will not be heard to contend, if
defendant then moves to amend its answer to assert a
counterclaim to cancel the registration, or then files a
separate petition to cancel the registration, that the
counterclaim or separate petition is untimely because it was
not pleaded when defendant filed its answer.  A plaintiff
may not, by failing to plead a registration upon which it
intends to rely, deprive a defendant of its right to
petition to cancel the registration, either by counterclaim
or by separate petition, at such time as opposer seeks to
rely upon the registration.  Even if grounds for
cancellation of a plaintiff's unpleaded registration are
known to the defendant when the defendant files its answer,
the defendant is under no compulsion to seek to cancel the
registration unless and until the registration is pleaded by
the plaintiff.  See 37 CFR 2.106(b)(2)(i) and
2.114(b)(2)(i), and M. Aron Corp. v. Remington Products,
Inc., 222 USPQ 93 (TTAB 1984).  See also Notice of Final
Rulemaking published in the Federal Register of January 22,
1981 at 46 FR 6940.



319.05  Permissive Counterclaims

A party may counterclaim to cancel a registration which is
owned, but not pleaded, by an adverse party.  A counterclaim
to cancel a registration owned, but not pleaded, by an
adverse party is a permissive counterclaim.  See FRCP 13(b).
Cf.  37 CFR 2.106(b)(2)(i) and 2.114(b)(2)(i).



319.06  Answer to Counterclaim

37 CFR 2.106(b)(2)(iii) The provisions of 2.111 through
2.115, inclusive, shall be applicable to counterclaims.  A
time, not less than thirty days, will be designated within
which an answer to the counterclaim must be filed.

37 CFR 2.114(b)(2)(iii) The provisions of 2.111 through
2.115, inclusive, shall be applicable to counterclaims.  A
time, not less than thirty days, will be designated within
which an answer to the counterclaim must be filed.

37 CFR 2.114(a) If no answer is filed within the time set,
the petition may be decided as in case of default.

When a counterclaim (together with the required cancellation
fee) is filed, the Board prepares a letter acknowledging
receipt thereof and allowing the plaintiff (defendant to the
counterclaim) until a set time, not less than 30 days, in
which to file an answer to the counterclaim.  See 37 CFR
2.106(b)(2)(iii) and 2.114(b)(2)(iii).  In practice, the
time allowed by the Board is usually 30 days.  A copy of the
letter is sent to each party to the proceeding, or to each
party's attorney or other authorized representative.

If no answer to the counterclaim is filed during the time
allowed therefor, the counterclaim may be decided as in case
of default.  See 37 CFR 2.114(a) and 2.114(b)(2)(iii).
For information concerning default, see TBMP 317.

An answer to a counterclaim should be in the same form as an
answer to a complaint.  For information concerning the
proper form for an answer to a complaint, see TBMP 318.

An answer to a counterclaim, like any other answer, may
include a counterclaim for cancellation of a registration
owned by the counterclaimant.  A defense attacking the
validity of any registration pleaded in the counterclaim is
a compulsory counterclaim if grounds for such counterclaim
exist at the time when the plaintiff's answer to the
defendant's counterclaim is filed.  If grounds for a
counterclaim are known to the plaintiff when the plaintiff's
answer to the defendant's counterclaim is filed, the
counterclaim must be pleaded with or as part of the
plaintiff's answer.  If, during the course of the
proceeding, the plaintiff learns, through discovery or
otherwise, that grounds for a counterclaim exist, the
counterclaim should be pleaded promptly after the grounds
therefor are learned.  Cf. 37 CFR 2.106(b)(2)(i) and
2.114(b)(2)(i), and TBMP 319.04.

A plaintiff's counterclaim to cancel a registration owned by
the defendant, but not pleaded in the defendant's
counterclaim, is a permissive counterclaim.  Cf. FRCP 13(b),
and TBMP 319.05.

For information concerning the fee for a counterclaim, see
37 CFR 2.6(a)(16) and  TBMP 310.  For information
concerning the form for a counterclaim, see TBMP 319.03.



320  Reply to Answer Should Not be Filed

Although Rules 2.106(b) and 2.114(b) require that an answer
to a counterclaim be filed, within the time designated
therefor by the Board, they specifically provide that a
reply to an affirmative defense need not be filed.  See 37
CFR 2.106(b)(1) and (2)(iii), and 2.114(b)(1) and
(2)(iii).  Similarly, FRCP 7(a) provides that there shall be
a complaint and an answer and a reply to a counterclaim
denominated as such; that certain other specified pleadings,
not relevant to Board proceedings (and not including a reply
to an answer) shall be allowed; but that "[n]o other
pleading shall be allowed, except that the court may order a
reply to an answer."

Thus, while a plaintiff must file an answer to a
counterclaim, a reply to an answer need not, and should not,
be filed.



321  Unpleaded Matters

An unpleaded claim cannot be relied upon by a plaintiff
unless the plaintiff's pleading is amended (or deemed
amended), pursuant to FRCP 15(a) or (b), to assert the
matter.  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 (CCPA 1978); Levi Strauss & Co.
v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993);
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); Riceland Foods Inc.
v. Pacific Eastern Trading Corp., 26 USPQ2d 1883 (TTAB
1993); Perma Ceram Enterprises Inc. v. Preco Industries
Ltd., 23 USPQ2d 1134 (TTAB 1992); Reflange Inc. v. R-Con
International, 17 USPQ2d 1125 (TTAB 1990); United States
Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815 (TTAB 1986);
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955
(TTAB 1986); Alliance Manufacturing Co. v. ABH Diversified
Products, Inc., 226 USPQ 348 (TTAB 1985); Long John
Silver's, Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982);
Standard Brands Inc. v. Peters, 191 USPQ 168 (TTAB 1975);
Dap, Inc. v. Litton Industries, Inc., 185 USPQ 177 (TTAB
1975); and CCI Corp. v. Continental Communications, Inc.,
184 USPQ 445 (TTAB 1974).

Similarly, except as provided in FRCP 12(b) and (h)(2)
(which allow a defendant to raise certain specified defenses
by motion), an unpleaded defense cannot be relied upon by
the defendant unless the defendant's pleading is amended (or
deemed amended), pursuant to FRCP 15(a) or 15(b), to assert
the matter.  See FRCP 8(b), 8(c), and 12(b); Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991);
U.S. Olympic Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB
1984); Trans Union Corp. v. Trans Leasing International,
Inc., 200 USPQ 748 (TTAB 1978); United States Mineral
Products Co. v. GAF Corp., 197 USPQ 301 (TTAB 1977);
Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585
(TTAB 1977); Hershey Foods Corp. v. Cerreta, 195 USPQ 246
(TTAB 1977); and Taffy's of Cleveland, Inc. v. Taffy's,
Inc., 189 USPQ 154 (TTAB 1975).

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.  See FRCP 15(a);
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); Trans Union Corp. v.
Trans Leasing International, Inc., 200 USPQ 748 (TTAB 1978);
J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB
1975); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167
(TTAB 1975); and Neville Chemical Co. v. Lubrizol Corp., 183
USPQ 184 (TTAB 1974).  See also 37 CFR 2.106(b)(2)(i) and
2.114(b)(2)(i).

A party may not obtain summary judgment on an unpleaded
issue, nor may a party defend against a motion for summary
judgment by asserting the existence of genuine issues of
material fact as to an unpleaded claim or defense.  However,
a party which seeks to obtain, or to defend against, summary
judgment on the basis of an unpleaded issue may move to
amend its pleading to assert the issue.  See TBMP 528.07,
and cases cited therein.



322  Amendment of Pleadings

37 CFR 2.107 Amendment of pleadings in an opposition
proceeding.
Pleadings in an opposition proceeding may be amended in the
same manner and to the same extent as in a civil action in a
United States district court.

37 CFR 2.115 Amendment of pleadings in a cancellation
proceeding.
Pleadings in a cancellation proceeding may be amended in the
same manner and to the same extent as in a civil action in a
United States district court.

Pleadings in inter partes proceedings before the Board may
be amended in the same manner and to the same extent as
pleadings in a civil action before a United States district
court.  See 37 CFR 2.107 and 2.115.  For further
information concerning the amendment of pleadings, see FRCP
15, and TBMP 507.  See also Beth A. Chapman, TIPS FROM THE
TTAB:  Amending Pleadings:  The Right Stuff, 81 Trademark
Rep. 302 (1991).



323  Motions Relating to Pleadings

In opposition and cancellation proceedings, there is a wide
range of motions relating to pleadings, including motions to
dismiss, for a more definite statement, to strike, for
judgment on the pleadings, to amend pleadings, etc.  For
information concerning these motions, see TBMP chapter 500.



324  Amendment to Allege Use; Statement of Use

For information concerning the handling of an amendment to
allege use, or a statement of use, filed during an
opposition proceeding in an intent-to-use application which
is the subject of the opposition, see TBMP 219.
