As stated in section 1501 Appeal to Trademark Trial and Appeal Board of the Trademark Manual of Examination Procedure:

15 U.S.C. §1070. An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.

37 C.F.R. §2.141. Ex parte appeals from the Examiner of Trademarks. Every applicant for the registration of a mark may, upon final refusal by the Examiner of Trademarks, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken. An appeal which includes insufficient fees to cover all classes in the application should specify the particular class or classes in which appeal is taken. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.

An appeal from an examining attorney's action is taken to the Trademark Trial and Appeal Board, not to a court. An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken. 15 U.S.C. §1070; 37 C.F.R. §2.142(a). See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §1202.03.

The Trademark Act gives applicants a right to appeal to the Trademark Trial and Appeal Board after a final action by an examining attorney. 15 U.S.C. §1070. Under 37 C.F.R. §2.141, a second refusal on the same grounds or a repeated requirement is considered final action for purposes of appeal. Appeal from a first refusal or requirement, however, is premature.

The applicant must file the notice of appeal and appeal fee within six months from the mailing date of the final refusal. 37 C.F.R. §2.142(a); TBMP §1202.02. To expedite processing, the Office strongly recommends that applicants file notices of appeal through the Electronic System for Trademark Trials and Appeals ("ESTTA") at http://estta.uspto.gov. If filing on paper, the applicant may use a certificate of mailing or transmission to avoid lateness. See 37 C.F.R. §§2.197 and 2.198, and TMEP §§305.02, 305.03 and 306.05 et seq. regarding certificate of mailing, certificate of transmission and "Express Mail" procedures. If the applicant does not timely file a notice of appeal and appeal fee, the application is abandoned. 15 U.S.C. §1062(b). If the applicant's failure to file a proper notice of appeal was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66 (see TMEP §§1714 et seq.). Note: The unintentional delay standard of 37 C.F.R. §2.66 does not apply to applications that were abandoned due to incomplete response after final (e.g., a request for reconsideration that is not accompanied by a notice of appeal). See TMEP §§715.03 et seq. regarding requests for reconsideration, and TMEP §1714.01(f)(ii) regarding situations where the unintentional delay standard does not apply.

The applicant must file an appeal brief within 60 days of the date of the appeal, or the Board may dismiss the appeal. 37 C.F.R. §2.142(b)(1). See In re Live Earth Products Inc., 49 USPQ2d 1063 (TTAB 1998). If the appeal is dismissed, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. Applicant may also file a motion to accept a late-filed brief when the time for filing the brief has expired but the Board has not yet issued an order dismissing the appeal. If the Board denies the motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to review the Board's action. The Director will reverse the Board's action only if the Board clearly erred or abused its discretion. An applicant should not file a petition to the Director until it has first filed a request/motion to accept the late-filed brief with the Board, and the Board has denied the request/motion. TBMP §1203.02(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66 when an appeal is dismissed for failure to file a brief. TMEP §1714.01(f)(ii).

The date of appeal for purposes of calculating the due date of the appeal brief is the date on which the notice of appeal and filing fee is received by the Office. If the applicant has also filed a request for reconsideration under 37 C.F.R. §2.142, the Board will acknowledge receipt of the appeal and request, suspend further proceedings (including applicant's time for filing its appeal brief), and remand the application to the examining attorney. See TBMP §§1203.02(a) and 1204 for further information.

The applicant's brief may not exceed twenty-five double-spaced pages in length, and should meet the requirements of 37 C.F.R. §2.126. 37 C.F.R. §2.142(b)(2); TBMP §1203.01. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant's 29-page brief).

In appropriate circumstances, the Board may remand the application to the examining attorney. See TBMP §§1209 et seq. regarding remand during an appeal. See also TMEP §1504.05.

See, generally, 37 C.F.R. §§2.142 and 2.144 and TBMP Chapter 1200 for further information about ex parte appeals to the Trademark Trial and Appeal Board, and 15 U.S.C. §1071, 37 C.F.R. §2.145 and TBMP Chapter 900 regarding appeal to a court from the decision of the Trademark Trial and Appeal Board.

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  • Under the "reasoned decision making" doctrine, a federal agency must treat like cases alike, and may not casually ignore its own past decisions. Those prior decisions are not forever binding on the agency, but any inconsistency between the prior decisions and its present decision must be rationally explained.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • In addition to its arguments under Section 2(d), applicant relies heavily on the administrative law doctrine of "reasoned decision making" in support of its claim to entitlement of the registration it seeks. Under this doctrine, applicant contends, a federal agency must treat like cases alike, and may not casually ignore its own past decisions. Those prior decisions are not forever binding on the agency, but any inconsistency between the prior decisions and its present decision must be rationally explained. In support of this argument, applicant cites Atchison, Topeka & Santa Fe Railway Co. et al. v. Wichita Board of Trade et al., 412 U.S. 800; 93 S.Ct. 2367, 37 L.Ed.2d 350 (1973); Ricardo Davila-Bardales v. Immigration and Naturalization Service, 27 F.3d 1 (1st Cir. 1994); Internal Revenue Service v. Federal Labor Relations Authority, 963 F.2d 429 (D.C. Cir. 1992); Hall v. McLaughlin, 864 F.2d 868 (D.C. Cir. 1989); and Shaw's Supermarkets, Inc. v. National Labor Relations Board, 884 F.2d 34 (1st Cir. 1989).
  • Instead of the "reasoned decision making" doctrine, the TTAB adheres to the longstanding, well-settled precedent which holds that the TTAB is not bound by prior decisions of Trademark Examining Attorneys, and that each case must be decided on its own merits and on the basis of its own record, in accordance with relevant statutory, regulatory and decisional authority.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • We have carefully considered applicant's arguments on this issue and the cases cited by applicant in support thereof, but we are not persuaded that the doctrine of "reasoned decision making" precludes our affirmance of the Trademark Examining Attorney's Section 2(d) refusal in this case. First, the Office's 1933 decision to register the mark applicant now seeks to register is not the type of previous agency precedential decision that triggers the "reasoned decision making" doctrine. Applicant cites no authority for his argument to the contrary. The cases applicant has cited all involved an agency's failure to adhere to its settled "policies," "norms," "rules," "standards" or "methods of analysis," as established in its prior adjudicated, non-summarily decided precedential cases. Indeed, in Ricardo Davila-Bardales v. Immigration and Naturalization Service, supra, the Court explained the "reasoned decision making" doctrine as follows: "Though the law does not require that all officials of a large agency "react similarly or interpret regulations identically" in every case, it does prohibit an agency from adopting significantly inconsistent policies that result in the creation of "conflicting lines of precedent governing the identical situation." … … the prospect of a government agency treating virtually identical legal issues differently in different cases, without any semblance of a plausible explanation, raises precisely the kinds of concerns about arbitrary agency action that the consistency doctrine addresses (at least where the earlier decisions were not summary in nature, but, rather, contained fully reasoned explications of why a certain view of the law is correct)." 27 F.3d at 5 (emphasis added; internal citations omitted).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • In all of the cases cited by applicant, the prior agency decisions with which the complained-of agency decisions were alleged to be inconsistent were fully adjudicated decisions made by the agency's Administrative Law Judges or equivalent policy-making and adjudicative personnel. None of the cases cited by applicant involved an alleged inconsistency between the agency's complained-of decision and a prior agency decision which was isolated, summary, non-adjudicatory, and non-precedential, such as the Office's issuance of the 1933 registration relied on by applicant in this case. For this reason, we find the "reasoned decision making" doctrine and cases cited by applicant to be inapposite to the present case. Instead, we shall adhere to the longstanding, well-settled precedent governing our proceedings, which holds that the Board is not bound by prior decisions of Trademark Examining Attorneys, and that each case must be decided on its own merits and on the basis of its own record, in accordance with relevant statutory, regulatory and decisional authority. See, e.g., In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Cooper, 117 USPQ 396 (CCPA 1958)("…the decision of this case in accordance with sound law is not governed by possibly erroneous past decisions by the Patent Office); In re Perez, 21 USPQ2d 1075 (TTAB 1991)(§2(d) refusal based on prior conflicting registration affirmed, despite fact that the conflicting registration had not been cited as bar to applicant's previous registration (now expired) of same mark for same goods; Board not bound by decisions of prior Examining Attorneys); In re BankAmerica Corporation, 231 USPQ 873, 876 (TTAB 1986)("Section 20 of the Trademark Act, 15 USC §1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not and should not be delegated by the adoption of conclusions reached by Examining Attorneys on different records"); and In re National Retail Hardware Association, 219 USPQ 851, 854 (TTAB 1983)("As in Cooper, we do not here have sufficient facts before us on which to evaluate whether the previous action of the Examiner which resulted in issuance of the previous registration was or was not erroneous. Nevertheless, as Cooper held, it is sufficient that the facts now before us and the application to them of sound law persuade us that the mark does not meet the requirements for registration set forth in Sections 2(d) and 2(e)(1) of the statute").
  • The record in an application should be complete prior to the filing of an appeal.
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • Trademark Rule 2.142(d) provides that the record in an application should be complete prior to the filing of an appeal.
  • All evidence and arguments should be made of record prior to briefing.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007)
      • It is poor examination practice not to make all the evidence and arguments of record during examination, before the briefing stage. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 n.4 (TTAB 2006) ("The preferable procedure would have been, of course, for the definitions and arguments in connection therewith to have been submitted during examination."). Nonetheless, the Board normally will consider all arguments set forth by an applicant or examining attorney in an appeal brief; and we note that an applicant has the option of filing a reply brief to object to an examining attorney's late-raised argument.
  • A trademark application involved in an opposition proceeding may not be substantly amended absent consent of the other party and approval of the Board, or upon motion.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • An application involved in an opposition proceeding may not be amended in substance except with the consent of the other party and the approval of the Board, or except upon motion. Trademark Rule 2.133(a).7
  • An amendment to the description of goods and services is often permitted, even if opposer objects, if the proposed amendment serves to limit the identification of goods and services and if the applicant consents to the entry of judgment on the question of likelihood of confusion with respect to the broader identification of goods and services.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • While the Board will generally defer determination of a timely filed (i.e., pre-trial) unconsented motion to amend in substance until final decision, or until the case is decided upon summary judgment, in practice, an acceptable amendment to the identification of goods or recitation of services often may be permitted, even where an opposer objects, if the proposed amendment serves to limit the identification of goods or recitation of services and if the applicant consents to the entry of judgment on the question of likelihood of confusion between opposer's and applicant's marks with respect to the broader identification of goods or recitation of services. See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 963 (TTAB 1986); International Harvester Company v. International Telephone and Telegraph Corporation, 208 USPQ 940, 941 (TTAB 1980); and TBMP §514.03 (2d ed. rev. 2004).
  • To avoid red judicata, the applicant seeking to amend the identification of goods and services must set forth adequate reasons for the amendment.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • If the applicant wishes to avoid the possibility of a res judicata effect of the entry of judgment, an applicant seeking to amend its identification of goods or recitation of services must set forth adequate reasons for the amendment. See Giant Food, Inc. v. Standard Terry Mills, Inc., supra; and International Harvester Company v. International Telephone and Telegraph Corporation, supra.
  • Regarding adequate reasons for amending the description of goods and services for avoiding a res judicata effect.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • That is, an applicant must make a prima facie showing that the proposed amendment serves to change the nature and character of the goods and services or to restrict their channels of trade and customers in such a manner that a substantially different issue for trial has been introduced from the issue presented by the opposition against the application based on the original identification of goods and services. Id.
  • When amending goods and services, any specimen of records must support the amendment and applicant must introduce evidence to prove use of the mark on remaining goods and services prior to the relevant date.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • Further, where required to support the basis of the application, any specimens of record must support the goods or services remaining after the amendment is entered, and the applicant must introduce evidence during its testimony period to prove use of its mark on those remaining goods or services prior to the relevant date as determined by the basis of the application. In the case of a use-based application, as here, the relevant date is the filing date of such application. Id. See also Trademark Act §1(a).
  • An unconsented motion to amend an application should be made prior to trial
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • Finally, an unconsented motion to amend an application ordinarily should be made prior to trial, in order to give the other party or parties fair notice thereof. See International Harvester Company v. International Telephone and Telegraph Corporation, supra.
  • After the deadline for filing an opposition, the opposition cannot be amended to add opposed goods or services.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007)
      • After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed. Trademark Rule 2.107.
  • The Board can limit or modify the goods and services during an opposition where the issue of restriction has been raised by pleading or motion.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Applicant is correct that Section 18 of the Lanham Act authorizes this Board to limit, or otherwise modify, the goods or services in a registration or application during an opposition proceeding. 15 U.S.C. § 1068; Trademark Rule 2.133(b), 37 CFR 2.133(b). However, as argued by opposer, we will only exercise this authority where the issue of restriction has been raised in either the pleadings or by motion (or if it is clear that the issue has been tried, such that the pleadings can be deemed to be amended pursuant to FRCP 15(b)), and the possible restriction has been stated with precision such that the issue is properly framed for trial. See Aries Sys. Corp. v. World Book Inc., 23 USPQ2d 1742, 1748 (TTAB 1992); Personnel Data Sys., Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1865 (TTAB 1991); and Space Base, Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990).
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Opposer was never put on notice of a possible restriction or "limitation" either before or during the trial period, and applicant has failed to state with precision how the application should be restricted. Accordingly, to the extent that applicant's remarks may be construed as a request for a Section 18 restriction, this request is denied.
  • A registration will be deemed to have been issued inadvertently if it issues despite a notice of opposition or a request for extension of time to oppose being timely and properly filed.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • A registration will be deemed to have been issued inadvertently if it issues despite a notice of opposition or a request for extension of time to oppose being timely and properly filed. See Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703 (Comm'r 2000).
  • A party is to inform the Trademark Trial and Appeal Board promptly of the inadvertent issuance of a registration.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • In such situations, the proper action by a party is to inform the Board promptly, by phone or in writing, of the inadvertent issuance of the registration so that the Board may request the appropriate action by the Director without requesting dismissal of the case.
  • Counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion.
    • Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009).
      • The filing of a motion to dismiss in this instance represents a misunderstanding of Board practice and procedure. Under the circumstances presented herein, and to more closely manage the prosecution and defense of this proceeding, counsel for applicant and his co-counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion in this matter. See generally TBMP Section 527.03 (2d ed. rev. 2004) and authorities cited therein; see also Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000) ("Board possesses the inherent authority to control the disposition of cases on its docket"); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 n.23 (TTAB 2002) (Board prohibited opposer from filing any further motions to compel without prior Board permission).
  • Assuming no prejudice, the Notice of Opposition may be amended to add a diluiton claim.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001)
      • "A notice of opposition or petition for cancellation filed before enactment of the Trademark Amendments Act may, assuming no prejudice to the defending applicant or registrant, be amended to add a claim of dilution, so long as the involved application or registration was filed on or after January 16, 1996." Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2000); Boral Ltd. V. FMC Corp., 59 USPQ2d 1701, 1703 (TTAB 2000).
  • Leave to amend pleadings must be freely given when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007)
      • Leave to amend pleadings must be freely given when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party. See Fed. R. Civ. P. 15(a); TBMP Section 507.02 (2d ed. rev. 2004) and cases cited therein. Where the moving party seeks to add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. See Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Thus, in deciding opposer's motion for leave to amend, the Board must consider whether there is undue prejudice to applicants and whether the amendment is legally sufficient. See, e.g., Cool-Ray, Inc. v. Eye Care, Inc. 183 USPQ 618, 621 (TTAB 1974).
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • Under Fed. R. Civ. P. 15(a), leave to amend pleadings shall be freely given when justice so requires. The Board liberally grants leave to amend pleadings at any stage of the proceeding when justice requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. See, for example, Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993).
  • The Board should deny a motion to amend which seeks to add a legally insufficient or useless new claim.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • However, where the moving party seeks to add a new claim, and the proposed pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally will deny the motion for leave to amend. See e.g. Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002); see also TBMP § 507.02 and cases cited therein.
  • The Board has jurisdiction over proposed amendments to registrations before the Board.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007)
      • Where a registration is involved in a proceeding before the Board, it is the Board that has jurisdiction to determine the propriety of any proposed amendments to the registration. See Trademark Rule 2.133(a) and TBMP Section 514.01 (2d ed. rev. 2004). Thus, the amendment should not have been filed with the Post Registration section, and the fact that the Post Registration section mistakenly acted on the amendment does not preempt the Board's authority to determine the issue of fraud with respect to the original identification of the goods. Under the circumstances, the amendment will be given no effect.
  • It is improper for applicant to argue functionality without counterclaiming or petitioning to cancel applicant's marks.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • We have several problems with applicant's argument. First, to the extent that applicant is arguing that opposers' registered trademarks are functional, we note that it is improper to raise this defense without counterclaiming or petitioning to cancel the marks on this basis. Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) ("[T]his is an opposition only and in an opposition, this court has always held that the validity of the opposer's registrations are not open to [collateral] attack"); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970) ("As long as the registration relied upon … remains uncanceled, it is treated as valid and entitled to the statutory presumptions"). In this case, opposers own or are licensed to use the registered marks CHICAGO BEARS and BEARS.
  • Evidence of widespread merchandising by independent entities can lead to a finding that the trademark is functionally aesthetic and not a trademark.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Second, this case is not similar to International Order of Job's Daughters on which applicant relies. In that case: "The TTAB gave preclusive effect to the Ninth Circuit's determination that the Job's Daughters name and emblem were merely "functional aesthetic components of the product, not trademarks," primarily as a result of the widespread merchandising of Job's Daughters jewelry by many American retail jewelers (including Lindeburg) who are independent of Job's Daughters." International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1018-19 (Fed. Cir. 1984), discussing International Order of Job's Daughters v. Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981). Here, applicant has not shown that there has been widespread merchandising of the BEARS club marks by independent entities.
  • No trademark right to register marks similar to existing marks to show support or hostility toward the underlying mark holder.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Also, we reject applicant's argument because it apparently would allow others to register marks that are similar to registered marks in order to show support or hostility to a sports team. American case law simply does not recognize such a right.
  • That fact that a mark, in and of itself, is popular does not render the mark aesthetically functional.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • "In light of the above, and assuming for the sake of argument that aesthetic functionality is a valid basis for opposing registration, we concur with applicant that the marks at issue are not aesthetically functional as used in connection with clothing. While, especially in the case of apparel imprinted with designs featuring "Bucky Badger," it is undisputed that many purchasers buy such garments because they find "Bucky" to be "cute" or otherwise appealing and do not care about the particular quality of the goods or whether the University sponsors or endorses them, these facts are legally immaterial. That is to say, the fact that consumers buy a T-shirt, sweatshirt or other garment because they like and want the particular "Bucky Badger," "Bucky on W" or "WISCONSIN BADGERS" design imprinted thereon does not render such designs aesthetically functional. Taken to its logical conclusion, opposers' argument would eliminate trademark protection and registrability for any popular and commercially successful design which is imprinted on clothing, irrespective of whether the design additionally is source-indicative to at least some consumers." University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1406 (TTAB 1994)(footnote omitted).
  • Parties should avoid submitting duplicative and unnecessary materials to the Board.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Before we reach the merits of this case, an initial comment is in order. We note that opposer has submitted with its brief an appendix consisting of a nearly six-inch stack of documents, which are duplicates of essentially all of the depositions, exhibits and documents already made of record by the parties at trial. Although the Board infers that such appendix was included with the intent of aiding the Board in its review of the case and/or supporting the assertions and arguments contained in opposer's brief, in actuality the appendix merely adds unnecessarily to the size of the record, which the Board must review in its entirety in any event. See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022 (TTAB 1998), wherein the Board stated:
        "The Board notes that the parties' attorneys have filed unnecessary copies of motions and briefs and unnecessary attachments to motions and briefs. The stack of such papers is nearly a foot high and weighs in excess of 15 pounds. Apart from the natural resources wasted on these filings, and the unnecessary and no doubt significant expense to the parties attributable to organizing and copying these papers, the Board has wasted precious time sorting through the case files to determine what documents must be retained and which may be ignored as unnecessary."
  • References in the brief to evidence should be to the location of the evidence in the record and not its location in an appendix.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Thus, references in the brief to particular pieces of evidence should be to the location of the evidence in the actual record, not to its location in an appendix. Opposer should forego such "appendix" practice in any future cases before the Board.
  • Mistaken belief that opposing counsel would agree to an extension of time does not excuse the duty to adhere to appropriate deadlines.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • Counsel for respondent's mistaken belief that counsel for petitioners would simply agree to another extension request does not absolve respondent from its duty to adhere to the appropriate deadlines in this case. See PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860 (TTAB 2002) (petitioner's mistaken belief that the parties' agreement to extend petitioner's time to respond to discovery requests also extended the testimony periods does not constitute excusable neglect).
  • The Board may permit withdrawal or amendment of admissions where the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • We now turn to respondent's motion to withdraw its effective admissions and to substitute responses. Under Rule 36(b), the Board may permit withdrawal or amendment of admissions where "the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits."
  • Withdrawal of admissions is at the discretion of the court.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • Consistent with the language contained in the rule, "withdrawal is at the discretion of the court." In re Fisherman's Wharf Fillet, Inc., 83 F. Supp.2d 651 (E.D.Va. 1999).
  • The decision to allow a party to withdraw an admission is an equitable decisions.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • "[T]he decision to allow a party to withdraw its admission is quintessentially an equitable one, balancing the rights to a full trial on the merits, including the presentation of all relevant evidence, with the necessity of justified reliance by parties on pretrial procedures and finality as to issues deemed no longer in dispute." McClanahan v. Aetna Life Ins. Co., 144 F.R.D. 316, 320 (W.D.Va. 1992) (citing Branch Banking & Trust Co. v. Deutz-Allis Corp., 120 F.R.D. 655, 658 (E.D.N.C. 1988)).
  • Test for withdrawal or amendment of admissions: first prong.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • Thus, the test for withdrawal or amendment of admissions is based on two prongs. The first prong of the test is satisfied "when upholding the admissions would practically eliminate any presentation of the merits of the case." Hadley v. United States, 45 F.3d 1345, 1348 (9th Cir. 1995).
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • In other words, the proposed withdrawal or amendments must "facilitate the development of the case in reaching the truth." Farr Man & Co., Inc. v. M/V Rozita, 903 F.2d 871, 876 (1st Cir. 1990). See Banos v. City of Chicago, 398 F.3d 889 (7th Cir. 2005) (holding that a court may permit a party to rescind admissions when doing so better serves the presentation of the merits of the case); Atakpa v. Perimeter OB-GYN Associates, P.C., 912 F.Supp. 1566 (N.D.Ga. 1994) (finding that prohibiting the proposed amendments would impede the trier of fact from reaching the truth).
  • Test for withdrawal or amendment of admissions: second prong.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • Under the second prong, the court must examine "whether withdrawal [or amendment] will prejudice the party that has obtained the admissions." McClanahan, 144 F.R.D. at 320.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • As contemplated under Rule 36(b), "‘prejudice' is not simply that the party who initially obtained the admission will now have to convince the fact finder of its truth, but rather, relates to the special difficulties a party may face caused by the sudden need to obtain evidence upon withdrawal or amendment of admission." Kerry Steel, Inc. v. Paragon Industries, Inc., 106 F.3d 147 (6th Cir. 1997). See also Davis v. Noufal, 142 F.R.D. 258 (D.D.C. 1992) (holding that the burden of addressing the merits does not establish "prejudice").
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • The "special difficulties" include the "unavailability of key witnesses in light of the delay." Sonoda v. Cabrera, 255 F.3d 1035 (9th Cir. 2001).
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • "Mere inconvenience" does not constitute "prejudice." Hadley v. U.S., 45 F.3d 1345 (9th Cir. 1995).
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • The test is whether that party is now any less able to obtain the evidence required to prove the matter which was admitted than it would have been at the time the admission was made. Rabil v. Swafford, 128 F.R.D. 1, 2 (D.D.C. 1989).
  • Potential prejudice of an amended admission can be mitigated by extending the discovery period.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • The case is therefore in the pre-trial stage, and any potential prejudice can be mitigated by extending the discovery period as necessary to permit petitioners to take any additional follow-up discovery based on respondent's amended admissions. See Johnston Pump/General Valve, Inc. v. Chromalloy American Corporation, 13 USPQ2d 1719 (TTAB 1989); see also Hadley, supra, at 1348 (courts are more likely to find prejudice when the motion for withdrawal is made in the middle of trial).
  • Reliance in a motion on a to-be-amended admission does not constitute prejudice.
    • Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007)
      • While the Board recognizes that petitioners relied on the admissions in filing their motion for summary judgment, such reliance does not rise to the level of "prejudice" as contemplated under Rule 36(b). See FDIC v. Prusia, 18 F.3d 637 (8th Cir. 1994) (holding that the "mere fact that a party may have prepared a summary judgment motion in reliance on an opposing party's erroneous admission does not constitute ‘prejudice' such as will preclude grant of a motion to withdraw admissions).
  • Apart from a motion to compel discovery, there is no meet and confer requirement prior to filing a motion for discovery sanctions.
    • HighBeam Marketing, LLC v. Highbeam Research, LLC, Opposition No. 91162372, (TTAB 2008)
      • In addition, opposer's contention that neither the Board nor applicant warned opposer that it "faced possible sanctions in the future" is untenable and incorrect. Unlike a motion to compel discovery, there is no requirement that a party make a good faith effort to resolve the parties' dispute prior to filing a motion for entry of discovery sanctions. See Trademark Rule 2.120(g) TBMP Section 527 (2d ed. rev. 2004). Under Trademark Rule 2.120(g)(1), if a party fails to comply with a Board order compelling discovery, the Board may order appropriate sanctions as defined in that rule and in Fed. R. Civ. P. 37(b)(2), including entry of judgment. See MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477 (TTAB 2000); TBMP Section 527.01(a) (2d ed. rev. 2004).
  • Appropriate discovery sanctions.
    • HighBeam Marketing, LLC v. Highbeam Research, LLC, Opposition No. 91162372, (TTAB 2008)
      • The sanctions which may be entered by the Board pursuant to Rule 2.120(g)(1) include striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. See TBMP Section 527.01(a) (2d ed. rev. 2004).
  • Failure for a party to attend a properly noticed deposition may result in entry of a discovery sanction.
    • HighBeam Marketing, LLC v. Highbeam Research, LLC, Opposition No. 91162372, (TTAB 2008)
      • Under Trademark Rule 2.120(g)(2), if a party witness fails to attend a discovery deposition after receiving proper notice, and such party or the party's attorney or other authorized representative informs the party seeking discovery that no such attendance will take place, the Board may enter sanctions against that party. The sanctions available to the Board in such circumstances are identical to those that the Board may enter under Trademark Rule 2.120(g)(1). See TBMP Section 527.02(b) (2d ed. rev. 2004).
  • Prior allowance of trademark registrations does not bind the Board or Federal court.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • In any event, regardless of what these third-party registrations, or the records in the registrations, may show, and even to the extent the marks in these third-party registrations "have some characteristics similar to [applicant's application], the PTO's allowance of such prior registrations does not bind the Board or this court." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • We hasten to add that the third-party registrations, even if considered, would not compel a different result in this case. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)["Even if prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court."].
  • Each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application.
    • In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007)
      • It is well settled that each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application. See Nett Designs Inc., supra; and In re Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB 1977). See also In re First Draft, Inc., 76 USPQ2d 1183, 1188 (TTAB 2005) ("even proof that various examining attorneys have registered a particular type of mark in the past does not establish that there is an Office practice holding such marks are generally registrable.").
  • Pleadings must be examined in their entirety and their allegations constured liberally.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007)
      • The pleading must be examined in its entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains any allegations, which, if proved, would entitle plaintiff to the relief sought. McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006).
  • Each likelihood of confusion case is decided on its own merits. Other cases may be looked to for guidance, but they do not present hard and fast rules for a finding of confusion.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • However, as has been frequently stated, each trademark case must be decided on its own merits. While we may look to other cases for guidance, these cases do not present hard and fast rules as to when confusion is likely and when it is not. Thus, there is no general rule that television programs and products are related goods and services despite the fact that likelihood of confusion has been found in some cases involving marks used for a television series and for goods. It is still opposer's burden to show that its goods are related to the applicant's services.
  • Extensions of time are liberally granted for "good cause" and the moving party bears the burden of showing it was diligent in meeting its obligations.
    • National Football League, NFL Properties LLC v. DNH Management, LLC, Opposition No. 91176569, (TTAB 2008)
      • The appropriate standard for allowing an extension of a prescribed period prior to the expiration of the term is "good cause." See Fed. R. Civ. P. 6(b) and Trademark Trial and Appeal Board Manual of Procedure ("TBMP") § 509 (2d ed. rev. 2004) and cases cited therein. Generally, the Board is liberal in granting extensions of time before the period to act has elapsed so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused. The moving party, however, retains the burden of persuading the Board that it was diligent in meeting its responsibilities and should therefore be awarded additional time. See Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147 (TTAB 1985).
  • A motion for extension of time should be denied where the moving party waited until the last day of discovery to serve requests and deposition notices.
    • National Football League, NFL Properties LLC v. DNH Management, LLC, Opposition No. 91176569, (TTAB 2008)
      • When, as in this case, a party does not serve written discovery requests until the final day of discovery and did not attempt to depose its adversary during the prescribed discovery period, a motion to extend discovery will ordinarily be denied. See Leumme, Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999).
  • A party should move forward with discovery where the opposing party does not entertain settlement discussions.
    • National Football League, NFL Properties LLC v. DNH Management, LLC, Opposition No. 91176569, (TTAB 2008)
      • In light of their numerous unsuccessful attempts to reach applicant through various forms of communication as well as applicant's lack of interest in discussing resolution, opposers knew or should have known that settlement or even legitimate talk of settlement was highly unlikely. In these circumstances, opposers could not have reasonably concluded that they need not move forward and serve requests for discovery. See Instruments SA, Inc. v. ASI Instruments, Inc., 53 USPQ2d 1925 (TTAB 1999).
  • Absent a stipulation between the parties, discovery depositions must be noticed and taken within the period for discovery.
    • National Football League, NFL Properties LLC v. DNH Management, LLC, Opposition No. 91176569, (TTAB 2008)
      • Opposers noticed, on the last day of discovery, a discovery deposition under Federal Rule 30(b)(6), seeking designation by applicant of a witness for a deposition to take place on January 17, 2008, after the close of discovery. By rule and absent stipulation between the parties –- and there was no such stipulation -- discovery depositions must be both noticed and taken during the prescribed discovery period as originally set or reset. See Trademark Rule 2.120(a), TBMP § 404.01 (2d ed. rev. 2004) and authorities cited therein. See Rhone-Poulenc v. Gulf Oil, 198 USPQ 172 (TTAB 1978) (deposition noticed during discovery but scheduled after discovery closed was untimely).
  • The record in an application should be complete prior to filing an appeal and subsequently filed evidence should not be given consideration.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • Trademark Rule 2.142(d) provides that the record in an application should be complete prior to the filing of an appeal. Additional evidence filed after appeal normally will be given no consideration. TBMP §1207.01 (2d ed. rev. 2004). In view of the foregoing, the examining attorney's objection is sustained, and the third-party registrations submitted with applicant's appeal brief have not been considered in reaching our determination.
  • Even though a trademark application was not part of the record, the Board considered the registration because it was cited in applicant's argument and implicitly considered by the examiner during examination.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007)
      • We first address some evidentiary points. With its appeal brief applicant has submitted a copy of a registration for another 1st U.S.A. mark which it asserts it owns. Normally such evidence would be viewed as untimely and would not be considered. See Trademark Rule 2.142(d), which provides that the record in the application should be complete as of the filing of the appeal. However, applicant has referenced this registration in connection with its argument of lack of actual confusion, in each of its filings, beginning with its response to the first Office action. Further, the Examining Attorney has addressed applicant's argument regarding the lack of any evidence of actual confusion in both his denial of the request for reconsideration and in his appeal brief. Although he has not specifically referred to applicant's prior registration, a fair reading of his statements is that he has considered it because it is the main point of applicant's argument.3 Accordingly, we deem the Examining Attorney to have treated this registration as being of record, and we have therefore considered it.
        FOOTNOTE 3 Needless to say, the Examining Attorney never raised any objection with respect to consideration of the registration.
  • Board considered improperly listed registrations because the examining attorney failed to advise the applicant of the error, where there was time for applicant to correct the error.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • With its response to the first Office action applicant listed the particulars of three third-party applications/registrations. This is not the proper way to make such applications and registrations of record. See In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998). However, because the Examining Attorney did not advise applicant that the listing was insufficient at a point where applicant could have corrected the error, the application and registrations are deemed to have been stipulated into the record, to the extent that the specific data provided by applicant has been considered. See TBMP §1208.02.
  • Board did not considered improperly submitted trademark registrations where applicant would not have been able to timely correct the error during examination.
    • In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007).
      • Applicant also submitted, with its request for reconsideration, a listing of approximately 65 marks taken from the USPTO TESS database for marks containing the words "FIRST" or "1ST" or "USA." This listing is, as noted, insufficient to make the applications and registrations of record. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). Nor can we deem the Examining Attorney to have waived any objection to this document by failing to advise applicant of the insufficiency, since at the point that applicant filed the list it no longer had an opportunity to add to the record of the application.
  • Board will not consider a main brief that exceeds the statutory page limit where the party did not seek prior approval by the Board to exceed the page limit.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • We also note that applicant filed a main brief that is 29 pages long in violation of the 25-page limit for appeal briefs set forth in Trademark Rule 2.142(b)(2). The rule clearly states that "[w]ithout prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary." See also TBMP §1203.01 (2d ed. rev. 2004). Applicant did not request leave of the Board to file a brief that exceeds the page limit. Accordingly, applicant's main brief has not been considered.
  • The fact that there was not a statement in the Office action that the Section 2(d) refusal was made under the "clear error" standard does not excuse applicant for its failure to follow the proper procedure in seeking review.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • The fact that there was not a statement in the Office action that the Section 2(d) refusal was made under the "clear error" standard does not excuse applicant for its failure to follow the proper procedure in seeking review.4 Given the procedural posture of the application, it should have been obvious to applicant that the examining attorney made the Section 2(d) refusal under the "clear error" standard. See TMEP § 1109.08 (4th ed. 2005) ["The Office will not issue any refusal under § 2(d) in the examination of the statement of use unless the failure to issue the refusal constitutes a clear error."].
        FOOTNOTE 4 "Because the Trademark Rules of Practice do not provide an express deadline to cover the present situation, applicant was required to file any petition within two months of the date of mailing of the Office action wherein the Section 2(d) refusal was first raised. Trademark Rule 2.146(d). See also TMEP § 1705.04 (4th ed. 2005)."
  • Where an application is objected to, but the applicant is unsure if the examiner applied the "clear error" standard, the applicant should file a timely petition after issuance of the final refusal.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • In any event, the Board has in the past stated that questions involving the applicability of the "clear error" standard are the subject matter of a petition to the Director, and are not proper for consideration by way of an appeal to the Board. In the case of In re Sambado & Son Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997), the Board stated: "[T]he question of whether the clear error standard was properly applied is a procedural one arising out of examination practice. The Examination Organization makes the determination of "clear error," which determination ultimately is properly reviewable on petition to the Commissioner. The Board's determination on appeal is to be limited to the correctness of the underlying substantive refusal to register. The Board will not second guess the Examining Organization's procedural determination, that is, the latter's application of the "clear error" standard. As noted, the application of the "clear error" standard is, in this context, a procedural decision (one that answers the question, "Should a new refusal be made and defended by the Examining Attorney""). ***** We recognize that this leaves applicant without an answer to the question of whether, in this case, the Examining Attorney properly applied the "clear error" standard. However, applicant itself did not take advantage of the proper procedure for review of the "clear error" determination. As noted above, applicant's petition was dismissed as premature, having been taken from a nonfinal action. Thus, the proper procedure would have been for applicant to file a petition after issuance of the final refusal. Applicant failed to do so, and the Board will not, on this appeal, review the Examining Attorney's application of the "clear error" standard."
  • Review of the "clear error" standard.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • In addition, TMEP § 1109.08 (4th ed. 2005) provides that the Board, on appeal, "will review only the correctness of the underlying substantive refusal of registration. The Board will not second-guess the application of the ‘clear error' standard. The question of whether the examining attorney properly applied the ‘clear error' standard is reviewable on petition under 37 C.F.R. §2.146."
  • A finding that the allegations in the amended counterclaim do not set forth a basis for a claim that opposer lacked a bona fide intent to use the mark in commerce, does not necessarily preclude applicant from amending its counterclaim, as appropriate and if warranted by the facts, to include allegations that sufficiently set forth a claim that opposer lacked a bona fide intent to use its mark, separate and apart from the declaration and drawing issues.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • FOOTNOTE 6 "Our finding, that the allegations in the amended counterclaim do not set forth a basis for a claim that opposer lacked a bona fide intent to use the mark in commerce, does not preclude applicant from amending its counterclaim, as appropriate and if warranted by the facts, to include allegations that sufficiently set forth a claim that opposer lacked a bona fide intent to use its mark, separate and apart from the declaration and drawing issues. See, e.g., Fiat Group Autos. S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1115-16 (TTAB 2010).
  • A notice of opposition can be amended as of right only if the original notice of opposition was proper.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • A notice of opposition can be amended as of right only if the original notice of opposition was proper.
  • A notice of opposition must include proof of service on the applicant, or her attorney or domestic representative of record, at the correspondence address of record in the Office. (Trademark Rule 2.101(a))
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • Amended Trademark Rule 2.101(a), effective November 1, 2007, states that a notice of opposition "must include proof of service on the applicant, or her attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119" (emphasis added).2
  • Appeals to equity and policy cannot substitute for failure to comply with a clear rule.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • Opposer's appeals to equity and policy cannot substitute for failure to comply with a clear rule, applicable to all opposers for many months prior to the filing of the involved notices of opposition.
  • Briefs on motions must be double spaced and in at least 11-point type.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 3 "In addition, briefs on motions must be double spaced and in at least 11-point type. See Trademark Rules 2.126(a)(1) and (b)."
  • By requiring service of a notice of opposition or petition to cancel directly on a defendant, the TTAB determined that proceedings were likely to begin more efficiently, because parties often are already in direct communication with one another prior to a plaintiff's filing of a complaint with the TTAB.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • For example, by requiring service of a notice of opposition or petition to cancel directly on a defendant, the Board determined that proceedings were likely to begin more efficiently, because parties often are already in direct communication with one another prior to a plaintiff's filing of a complaint with the Board.
  • Case Finding: Applicant's wait of multiple months before filing its motion for leave to amend, the delay, while substantial, is not prejudicial to opposer, inasmuch as these consolidated proceedings are still in the discovery stage and opposer could be afforded time in which to take discovery on the newly asserted defense if it chooses to do so.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • While applicant waited until approximately ten months after the filing of its answer in Opposition No. 91183362 and until approximately five months after the filing of its answer in Opposition No. 91186156 before filing its motion for leave to amend, the delay, while substantial, is not prejudicial to opposer, inasmuch as these consolidated proceedings are still in the discovery stage and opposer could be afforded time in which to take discovery on the newly asserted defense if it chooses to do so.
  • Case Finding: Because the original notices of opposition did not include proof of service and were not properly served in a timely manner, each of the oppositions must be dismissed as a nullity.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • Because the original notices of opposition did not include proof of service and were not properly served in a timely manner, each of the oppositions must be dismissed as a nullity. There are, therefore, no operative notices of opposition to amend. Moreover, the amended notices of opposition cannot be used as a substitute for the original notices of opposition because, while they bear proof of service, the amended notices of opposition were not filed within the opposition period, as extended.
  • Case Finding: Oposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice for exceeding page limitations.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Accordingly, we find that both parties' briefs on their respective summary judgment motions violate the Board rule regarding page limitations for briefs on motions. In consequence thereof, opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice.
  • Case Finding: Because the rules now require that the opposer include a proof of service certificate with the notice of opposition and that opposer serve the notice of opposition by forwarding a copy thereof to the applicant, opposer has clearly failed to satisfy the service requirements in both cases.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • Thus, because the rules now require that the opposer include a proof of service certificate with the notice of opposition3 and that opposer serve the notice of opposition by forwarding a copy thereof to the applicant, opposer has clearly failed to satisfy the service requirements in both cases. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008).
  • Case Finding: In view of the withdrawal of opposer's counsel, and in accordance with standard TTAB practice, proceedings herein are suspended, and opposer is allowed until thirty (30) days from the mailing date of this order to appoint new counsel, or to file a paper stating that opposer chooses to represent itself.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • In view of the withdrawal of opposer's counsel, and in accordance with standard Board practice, proceedings herein are suspended, and opposer is allowed until thirty (30) days from the mailing date of this order to appoint new counsel, or to file a paper stating that opposer chooses to represent itself.
  • Case Finding: Insofar as applicant filed its motion to amend its answers months after it filed its original answers in each respective opposition proceeding, applicant may amend its answers only by written consent of opposer or by leave of the TTAB.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Insofar as applicant filed its motion to amend its answers months after it filed its original answers in each respective opposition proceeding, applicant may amend its answers only by written consent of opposer or by leave of the Board. Fed. Civ. P. 15(a); TBMP § 507.02(a) (2d ed. rev. 2004).
  • Case Finding: The request to withdraw as counsel is in compliance with the requirements of Trademark Rule 2.19(b) and Patent and Trademark Rule 10.40, and is accordingly granted.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • The request to withdraw as counsel is in compliance with the requirements of Trademark Rule 2.19(b) and Patent and Trademark Rule 10.40, and is accordingly granted.
  • Case Finding: The rule with regard to page limits applies to the situation presented here, where the combined response and cross-motion are filed as a single brief and pertain to the same issues raised in the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Thus, the rule with regard to page limits applies to the situation presented here, where the combined response and cross-motion are filed as a single brief and pertain to the same issues raised in the original motion.
  • Case Finding: The TTAB found that applicant had not acted in bad faith nor abused its amendment privileges since this is the first time applicant sought to amend its pleadings.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Moreover, we find that applicant has not acted in bad faith nor has applicant abused its amendment privileges since this is the first time applicant has sought to amend its pleadings. The only significant question before us is whether applicant's proposed amendment is futile.
  • Case Finding: To the extent that applicant has conceded the fame of opposer's mark, applicant will be considered to have only conceded the type of fame relevant to a likelihood of confusion analysis.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Thus, to the extent opposer is correct in its allegation that applicant has conceded the fame of opposer's MOTOWN mark, applicant will be considered to have only conceded the type of fame relevant to a likelihood of confusion analysis.8 FOOTNOTE 8 "Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (contrasts fame for likelihood of confusion analysis and for dilution analysis)."
  • Discussion of ACR.
    • Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., Cancellation No. 92050101 (TTAB 2010)
      • "FOOTNOTE 4 ""Parties may confirm an agreement to proceed by ACR either by informing the Board interlocutory attorney assigned to the proceeding during a telephone conference or by filing a stipulation. In proceedings where there are pending motions or outstanding matters that do not necessarily go to the merits of the claims or issues to be resolved by ACR, the parties opting to use the ACR procedure must either address the status of the motions or matters in their stipulation, or conference with the interlocutory attorney in order to clarify the particular claims issues that are in dispute and which are being submitted to the Board for resolution by ACR.
        In general, the Board encourages parties to consider use of ACR and parties are required to discuss the possibility in their initial settlement and discovery planning conference. To promote discussion of ACR in that conference, or during any subsequent discussions about the use of ACR, the Board has posted Frequently Asked Questions (FAQs) and other material about ACR on its web page, to illustrate the flexibility of the process and various approaches to ACR that have been utilized in other cases. See: http://www.uspto.gov/trademarks/process/appeal/index.jsp"""
  • If opposer files no response, the TTAB may issue an order to show cause why default judgment should not be entered against opposer based on opposer's apparent loss of interest in the case.
    • University Games Corporation v. 20Q.net Inc., Opposition Nos. 91168142 91170668 (TTAB 2008)
      • If opposer files no response, the Board may issue an order to show cause why default judgment should not be entered against opposer based on opposer's apparent loss of interest in the case.
  • If the original motion and crossmotion involve different issues, the brief in support of the cross-motion will not count against the page limit applicable to the response to the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 2 "It should be noted that if the original motion and crossmotion involve different issues, the brief in support of the cross-motion will not count against the page limit applicable to the response to the original motion. For example, if the initial motion for summary judgment is on the plaintiff's pleaded ground of priority and likelihood of confusion, but the cross-motion seeks summary judgment on a counterclaim for cancellation of the plaintiff's pleaded registration on the ground of abandonment, the defendant could permissibly file a brief in opposition to the original motion and a brief in support of the cross-motion, and because they would not be addressing the same issue, each could be 25 pages, whether the briefs were filed separately or combined."
  • In deciding whether to grant leave to amend, a tribunal may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In deciding whether to grant leave to amend, a tribunal may consider undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has previously amended its pleadings. See Foman v. Davis, 371 U.S. 178, 182 (1962).
  • In listing only one claim in its question presented, the TTAB may consider opposer to have waived its other previously stated claim(s).
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • In its main brief (pp. 14-15), opposer lists the only question presented as whether there exists a likelihood of confusion, and we therefore consider opposer to have waived its dilution claim.
  • Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. (Trademark Rule 2.127(a))
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Trademark Rule 2.127(a), which was recently amended to codify the Board's policy stated in Saint-Gobain v. Minnesota Mining and Manufacturing Company, 66 USPQ2d 1220 (TTAB 2005) ("Saint-Gobain"), concerning page limitations for briefs on motions, provides in relevant part: "Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary." FOOTNOTE 1 "The rule does not require briefs on motions to include a table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. However, if any of the above are included, they are counted as part of the stated page limit. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 F.R. 42242, 42256 (August 1, 2007) (comments on briefing of motions)."
  • One cannot subvert the page limit requirement by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Similarly, one cannot subvert the limit by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue. C.f. Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB 2000) (respondent improperly attempted to circumvent the page limitation set forth in Trademark Rule 2.127(a) by "dissect[ing] what is a single motion to compel into two motions separately addressing the interrogatories and document requests in order to file briefs totaling 50 pages").
  • Opposer cannot, by filing amended notices, cure its failure to properly serve the original notices of opposition.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • Opposer also seeks to cure its failure to comply with the rule for service of notices of opposition by attempting to amend its notices of opposition to include "proof of service" and to actually serve the amended notices. Opposer relies on the fact that no answers have been served in the oppositions to assert that it is entitled to amend its notices of opposition as a matter of right. See Fed. R. Civ. P. 15. However, opposer cannot, by filing amended notices, cure its failure to properly serve the original notices of opposition.
  • Ordinarily, motions filed subsequent to an outstanding potentially dispositive motion which are not related thereto will not be considered.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Opposer filed its motion for summary judgment before applicant filed his motion for sanctions. Ordinarily, motions filed subsequent to an outstanding potentially dispositive motion which are not related thereto will not be considered.
  • Prior to November 1, 2007, an opposer was not required to serve its notice of opposition upon its adversary and was able to simply file its notice of opposition in duplicate form with the TTAB who would then forward the duplicate, or service copy, directly to the applicant along with an order instituting proceedings.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • FOOTNOTE 2 "The USPTO published a notice of final rulemaking in the Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By this notice, various rules governing Trademark Trial and Appeal Board inter partes proceedings were amended. Certain amendments had an effective date of August 31, 2007, while most had an effective date of November 1, 2007. Prior to November 1, 2007, an opposer was not required to serve its notice of opposition upon its adversary. Instead, until that effective date, the opposer was able, under Trademark Rule 2.104(a), to simply file its notice of opposition, and any exhibits thereto, in duplicate form with the Board. Upon receipt, the Board would then forward the duplicate or service copy of the notice of opposition, and any exhibits thereto, directly to the applicant along with an order instituting proceedings."
  • The efficient commencement of a proceeding can facilitate early settlement discussions because the defendant will immediately know more about the claims which need to be settled. Nonetheless, the primary purpose of the amended service rules was increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be instituted automatically by the ESTTA system.
    • Schott AG v. L'Wren Scott, Opposition No. 91184239 and 91184245 (TTAB 2008)
      • The efficient commencement of a proceeding can facilitate early settlement discussions because the defendant will immediately know more about the claims which need to be settled. Nonetheless, the primary purpose of the amended service rules was increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be instituted automatically by the ESTTA system.
  • The page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues. In other words, one cannot subvert the page limitation for a brief by filing a combined brief in opposition and cross-motion, when both portions of the combined filing address the same issue raised by the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • The page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues. In other words, one cannot subvert the page limitation for a brief by filing a combined brief in opposition and cross-motion, when both portions of the combined filing address the same issue raised by the original motion.
  • The page limitation for briefs (intended to prevent the filing of unduly long briefs and consequent unnecessary burdens on the TTAB) cannot be waived by action, inaction or consent of the parties.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Although we note that neither party objected to the excessive length of its adversary's brief, the page limitation for briefs on motions is intended to prevent the filing of unduly long briefs and consequent unnecessary burdens on the Board. The page limitation on briefs cannot be waived by action, inaction or consent of the parties. See Saint-Gobain, supra.
  • The TTAB liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • The Board liberally grants leave to amend pleadings at any stage of a proceeding when justice so requires, unless entry of the proposed amendment would violate settled law or be prejudicial to the rights of the adverse party or parties. Id. See also American Optical Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971).
  • Case Finding: Summary judgment and cross-motion for summary judgment denied, without prejudice, for exceeding page length.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Accordingly, we find that both parties' briefs on their respective summary judgment motions violate the Board rule regarding page limitations for briefs on motions. In consequence thereof, opposer's motion for summary judgment and applicant's cross-motion for summary judgment are denied, without prejudice.4
  • Case Finding: Opposer's request to reopen proceedings denied.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • After careful consideration of the Pioneer factors and the relevant circumstances in this case, the Board finds that opposer's reasons for not actively participating in this case fail to establish excusable neglect so as to warrant a reopening of this case. Although the first and fourth Pioneer factors do not weigh against opposer, the second and third factors weigh heavily against opposer.
        Accordingly, opposer's request to reopen proceedings is denied.
  • Requirements for a petition to cancel.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • Amended Trademark Rule 2.111(a), effective November 1, 2007, states that a petition to cancel "must include proof of service on the owner of record for the registration, or the owner's domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.111(b) and 2.119" (emphasis added).
  • Submission of duplicative papers is a waste of time and resources, and it is a burden upon the Board.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Applicant attached evidence to its brief. To the extent that it is the same as evidence previously submitted, it is already of record as part of the application file, and its submission was unnecessary. See ITC Entertainment Group Ltd. v. Nintendo of America, Inc., 45 USPQ2d 2021, 2022-2023 (TTAB 1998) (submission of duplicative papers is a waste of time and resources, and it is a burden upon the Board).
  • Internet materials may not be appropriate for introduction under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Applicant has also submitted, as Exhibit C to its notice of reliance, what appear to be a number of pages of search summary results for a search of the term "LifeZone" from the Ask.com and Dogpile web sites, as well as nine pages from several websites. However, internet materials of this type are not appropriate for introduction under a notice of reliance. Paris Glove, 84 USPQ2d at 1858-59.
  • Discussion of methods for providing submissions in response to final Office action.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Applicant is incorrect in its statement that it did not have an opportunity to provide its submissions in response to the examining attorney's final Office action. Applicant could have filed a request for reconsideration with its notice of appeal, or at any time within six months of the date of issuance of the final refusal of registration. See TBMP Section 1204 (2d ed. Rev. 2004). In addition, even after the time for requesting reconsideration had passed, applicant could have, in lieu of filing its brief, filed a request to suspend the appeal and remand the application file for consideration of new evidence. See TBMP Section 1207.02. It is of no significance that the types of evidence applicant submitted may be considered related to, or from "the same or similar sources" as, the evidence previously submitted by the examining attorney.2 That only illustrates why it would not have been difficult for applicant to gather this evidence at an earlier time and submit it with a request for reconsideration or remand. Finally, we deny applicant's alternative request for remand, for failure to show good cause for a remand so late in the appeal. In re Zanova Inc., supra, 59 USPQ2d at 1302.
  • Case Finding: Improper to think remand was required and that the appeal could go forward, with the examining attorney considering the newly submitted evidence in her responsive brief.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • Applicant stated in its brief that it did not believe that remand was required and that the appeal could go forward, with the examining attorney considering the newly submitted evidence in her responsive brief. What applicant proposes is contrary to normal practice; in effect, applicant would treat briefing as merely a continuation of examination.2
  • Parties may not couch a surreply as a new motion in order to avoid the prohibition on surreplies.
    • Guthy-Renker Corporation v. Michael Boyd, Opposition No. 91182999 (TTAB 2008)
      • Applicant's cross-motion to dismiss is essentially a surreply, which is not permitted, and, therefore, it has not been considered. TBMP § 502.02(b) (2d ed. rev. 2004). Parties may not couch a surreply as a new motion in order to avoid the prohibition on surreplies.
  • Applying the Pioneer case, discussion of possible examples of measurable prejudice to applicant should the Board reopen a proceeding.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Applying Pioneer to this case, there does not appear to be any measurable prejudice to applicant should the Board reopen the proceeding. Applicant has made no showing of lost evidence or unavailable witnesses. Applicant will bear no greater cost in defending this matter than it would have if opposer had properly presented its case. See HGK Industries, Inc. v. Perma-Pipe, Inc., 49 USPQ2d 1156 (TTAB 1998). Nor has applicant shown that it has borne any costs which would be duplicated if reopening was granted.
  • An appeal may be taken only after the examining attorney has issued a final refusal or a second refusal on the same ground.
    • In re Vicki Roberts, Serial No. 76649075 (TTAB 2008)
      • As a preliminary matter, we note that an appeal may be taken only after the examining attorney has issued a final refusal or a second refusal on the same ground. See Trademark Rule 2.141. See also TBMP §1201 (2d ed. rev. 2004), and the authorities cited therein.
  • As discussed in the Notice of Final Rulemaking, this description need not be extensive, although it should report any agreements to limit use of these discovery devices, allow for participation in depositions by telephone, and the like.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • As discussed in the Notice of Final Rulemaking, this description need not be extensive, although it should report any agreements to limit use of these discovery devices, allow for participation in depositions by telephone, and the like.
  • Considerations of proof or procedural efficiency are only relevant if the amendment is otherwise allowed under Trademark Act §68(c)(3) and Trademark Rule 2.107.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • As for opposer's contention that the amendment would not delay this proceeding inasmuch as all relevant information to support applicant's bona fide intent to use is within applicant's possession and control, the Trademark Act provisions implementing the Madrid Protocol and Trademark Rule 2.107(b) prevail, and considerations of proof or procedural efficiency are only relevant if the amendment is otherwise allowed under Trademark Act §68(c)(3) and Trademark Rule 2.107.
  • A title and status copy of a trademark registration may be submitted with a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • As noted, applicant submitted a notice of reliance. Exhibit A is a title and status copy of Registration No. 1753895,12 which is admissible.
  • An issue might be tried by implied consent where the non-offering party raised no objection to the introduction of evidence on the issue and in its brief treated the evidence as being of record, or discussed the issue in its brief as though it were part of the pleading.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • As noted, the Board has found that an issue was tried by implied consent where the non-offering party raised no objection to the introduction of evidence on the issue and in its brief treated the evidence as being of record, or discussed the issue in its brief as though it were part of the pleading. This situation often arises when a plaintiff relies during trial on a registration that it had not previously pleaded. See, for example, Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1583, n. 3 (TTAB 2008) ("The notice of reliance also includes status and title copies of several registrations which were not pleaded in the notice of opposition. Because applicant has not objected to opposer's reliance on the unpleaded registrations, and moreover has, in effect, treated them as of record in his brief, we deem opposer's pleading amended to assert the registrations under Fed.R.Civ.P. 15(b)").
  • The policy reason for suspending opposition proceedings pending a court case is that the decisions made in the Federal district court is typically binding upon the TTAB, while the decision of the TTAB is not binding upon the court.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • As the parties are aware, this opposition proceeding was suspended pending disposition of the court case. The policy reason for this is that, to the extent that a civil action in a Federal district court involves issues in common with those in a proceeding before the Board, the decision of the Federal district court is typically binding upon the Board, while the decision of the Board is not binding upon the court. See TBMP §510.02(a) (2d ed. rev. 2004).
  • Where opposer is not moving to amend pursuant to Fed.R.Civ.P. 15(a), there may be no issue with respect to whether opposer's motion to amend was timely raised.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Because opposer is not moving to amend pursuant to Fed.R.Civ.P. 15(a), there is no issue with respect to whether opposer's motion to amend was timely raised, or whether the three-plus months from the January 2, 2008 testimony deposition until the motion to amend was filed on April 24, 2008 constituted an undue delay that was prejudicial to applicant.
  • Both parties bear the responsibility for following the trial schedule as ordered.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Both parties bear the responsibility for following the trial schedule as ordered unless and until the Board issues a suspension order or otherwise resets the trial date.
  • Exhibits or attachments to briefs are of little or no use in a TTAB proceeding.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Both parties submitted briefs with extensive evidentiary attachments. Exhibits or attachments to briefs are of little or no use in a Board proceeding. The Board sets trial periods during which the parties may submit evidence by filing notices of reliance or by taking testimony. Evidence submitted outside of the trial periods - including that attached to briefs - is untimely, and will not be considered. See TRADEMARK BOARD MANUAL OF PROCEDURE ("TBMP") § 704.05(b) (2d ed. rev. 2004)(and cases cited therein).
  • Evidence which was timely filed during the parties' trial periods need not and should not be resubmitted.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Conversely, evidence which was timely filed during the parties' trial periods need not and should not be resubmitted.4 See ITC Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998).
  • Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit A is a "[p]rintout of Life Zone's Website." Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance. Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).
  • Where, in its own notice of reliance, applicant stated that it would rely on the documents submitted by opposer, the TTAB may treat those exhibits as having been stipulated to be part of the record, although they will not be considered for the truth of the matters asserted therein.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit A is a "[p]rintout of Life Zone's Website." Web pages which are not the equivalent of printed publications are not admissible under a notice of reliance. Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1858-59 (TTAB 2007); Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). Nonetheless, in its own notice of reliance, applicant stated that it would rely on the documents submitted by opposer as Exhibits A, J, and M. Accordingly, we treat those exhibits as having been stipulated to be part of the record, although they will not be considered for the truth of the matters asserted therein.
  • Recently created marketing material may not be submitted by way of a notice of reliance because they are not printed publications; there is no indication of whether or when they were published, and in what publication.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit D to applicant's notice of reliance comprises several pages of "[a]pplicant's recently created marketing material." These documents may not be submitted by way of a notice of reliance because they are not printed publications; there is no indication of whether or when they were published, and in what publication.
  • Applicant's responses to opposer's interrogatories, is admissible.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibit L, applicant's responses to opposer's interrogatories, is admissible. Trademark Rule 2.120(j)(3)(i).
  • Exhibits attached to a brief that were not made of record during examination, are untimely, and will not be considered.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Exhibits attached to a brief that were not made of record during examination (or, in this case, during examination on remand), are untimely, and will not be considered. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §1203.02 and §1207.01 (2d ed. rev. 2004). In view thereof, these exhibits have not been considered.
  • Discussion of various materials which, on their face, do not appear to be "printed publications" and may not be submitted under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Exhibits B (opposer's brochure), C (materials used by opposer in radio ads and radio interviews), D (examples of opposer's periodic newsletters - without indication that they were circulated), and E (materials used by opposer in seminars and conferences showing topics of discussion), do not appear on their face to be "printed publications," and are therefore inappropriate for submission under a notice of reliance.7 See Hunter Publ'g Co. v. Caulfield Publ'g Ltd. 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (while subject matter may be of interest to the general public, such materials are not necessarily in general circulation).
  • Fed.R.Civ.P. 15(b) provides, in pertinent part, that when issues not raised by the pleadings are tried by the express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Fed.R.Civ.P. 15(b) provides, in pertinent part, that when issues not raised by the pleadings are tried by the express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings.
  • Implied consent to the trial of an unpleaded issue can be found only where the nonffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Fed.R.Civ.P. 15(b) provides, in pertinent part, that when issues not raised by the pleadings are tried by the express or implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings. It is clear from applicant's opposition to the motion to amend that applicant did not expressly consent to the trial of the issue of fraud. As for whether there was implied consent, implied consent to the trial of an unpleaded issue can be found only where the nonffering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. TBMP Section 507.03(b) (2d ed. revised 2004).
  • A testimonial deposition is admissible, but may be unnecessary to submit it under a notice of reliance
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Finally, applicant submitted the testimonial deposition of Mr. Randy Moser, identified as the "founder and owner" of applicant. Mr. Moser's testimony is admissible, although it was unnecessary to submit it under a notice of reliance. See Trademark Rule 2.123 (taking and filing trial testimony).
  • A plaintiff may not present its case-in-chief in rebuttal merely because the defendant denies that the plaintiff has made its case during its case-in-chief.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Finally, even if Ms. Henderson's testimony had been offered to rebut "admissible assertions regarding Life Zone's business practices and corporate structure," the testimony went well beyond what would have been necessary to correct Mr. Moser's alleged misstatements. A plaintiff may not present its case-in-chief in rebuttal merely because the defendant denies that the plaintiff has made its case during its case-in-chief.
  • Submission of a previous TTAB Order may be unnecessary where it is already part of the record
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Finally, submission of Exhibit Q, the Board's order of April 19, 2007,11 was unnecessary as it is already part of the record, although it is not considered evidence of anything other than the course of this case.
  • It is typically opposer who bears the burden of proof and come forward with admissible evidence during its case-in-chief.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • First, it is opposer which bears the burden of proof in this proceeding. That generally includes the burden of proving what registrations or common-law trademarks it owns, the goods and services on or in connection with which it uses its mark, its channels of trade, its classes of customers, and any other information necessary to prevail. In other words, it was incumbent upon opposer to come forward with admissible evidence of these matters during its case-in-chief.
  • A request for remand should be filed by a separate paper, appropriately captioned "Request for Remand," rather than by a request buried within a brief
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • First, we point out that a request for remand should be filed by a separate paper, appropriately captioned "Request for Remand," rather than by a request buried within a paragraph in the middle of a brief. The Board does not read appeal briefs prior to final decision, and therefore a request that is included within a brief will normally not be noted.
  • A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses.
    • Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, Cancellation No. 92048667 (TTAB 2009)
      • FOOTNOTE 1 "A party need not, through its mandatory initial disclosures, identify particular individuals as prospective trial witnesses, per se, but must identify "each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses." See Fed. R. Civ. P. 26(a)(1), made applicable to this proceeding by Trademark Rule 2.116(a). Individuals identified through initial disclosures therefore could reasonably be viewed as possible witnesses."
  • Once an answer has been filed, the Board generally will not approve a motion or stipulation to extend the deadline for a settlement and discovery planning conference absent a sufficient showing of good cause.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • FOOTNOTE 1 "Once an answer has been filed, the Board generally will not approve a motion or stipulation to extend the deadline for a settlement and discovery planning conference absent a sufficient showing of good cause. Miscellaneous Changes to Trademark Trial and Appeal Board Rules (Final Rule), 72 Fed. Reg. 42242, 42245 (August 1, 2007). The Board is unlikely to find good cause when such a request is based on the parties' desire to engage in settlement discussions. Id."
  • The rule does not require briefs on motions to include a table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. However, if any of the above are included, they are counted as part of the stated page limit.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 1 "The rule does not require briefs on motions to include a table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. However, if any of the above are included, they are counted as part of the stated page limit. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 F.R. 42242, 42256 (August 1, 2007) (comments on briefing of motions)."
  • The better practice, in a situation where the basis for a new ground becomes evident during a deposition, is to file a motion to amend pursuant to Fed.R.Civ.P. 15(a), rather than to rely on answers adduced during cross-examination to show that an unpleaded issue was tried by consent.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • FOOTNOTE 13 "The better practice, in a situation where the basis for a new ground becomes evident during a testimony deposition, is to file a motion to amend the pleadings pursuant to Fed.R.Civ.P. 15(a), rather than to rely on answers adduced during cross-examination to show that an unpleaded issue was tried by consent. Such a motion, however, must be filed as soon as the basis therefor is known in order to be considered timely."
  • It is expected that motions embody or be accompanied by a brief.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • FOOTNOTE 15 "It is expected that motions embody or be accompanied by a brief. Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). When a party embeds a motion in another filing, particularly a filing which is not routinely reviewed by Board personnel at the time of filing and which may be entered into the docket electronically, such motion does not come to the attention of the Board for docketing and determination. Cf., Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.2 (TTAB 2007) ("Applicant did not separately caption her motion to amend the filing basis of her application. Although there is no prohibition on incorporating a motion into a brief in response to a motion, the better practice is either to file such motion as a separate submission or, at a minimum, to caption separately any such motion.")."
  • Any party easily may check on the status of a TTAB proceeding using the TTABVUE database or calling the TTAB.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • FOOTNOTE 17 "Any party easily may check on the status of a Board proceeding using the TTABVUE database, available at http://ttabuve.uspto.gov/. A party may also call the Board during business hours to inquire as to the status of a Board proceeding."
  • It may be better to clarify the proper practice prior to rather than after filing a petition.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 2 "Counsel requested clarification if he had misinterpreted the TBMP. Because counsel appears to have been uncertain about interpretation of the manual and his service obligations, it clearly would have been better to clarify the proper practice prior to rather than after filing the petition. Additionally, parties are reminded to read the TBMP in conjunction with any statutory, regulatory, or judicial changes which have occurred since the last revision."
  • If the original motion and cross-motion involve different issues, the brief in support of the cross-motion will not count against the page limit applicable to the response to the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 2 "It should be noted that if the original motion and cross-motion involve different issues, the brief in support of the cross-motion will not count against the page limit applicable to the response to the original motion. For example, if the initial motion for summary judgment is on the plaintiff's pleaded ground of priority and likelihood of confusion, but the cross-motion seeks summary judgment on a counterclaim for cancellation of the plaintiff's pleaded registration on the ground of abandonment, the defendant could permissibly file a brief in opposition to the original motion and a brief in support of the cross-motion, and because they would not be addressing the same issue, each could be 25 pages, whether the briefs were filed separately or combined."
  • The occasions when a valid request for remand is submitted very late in the appeal process, such as after main briefs have been filed, and the Board allows the applicant and the examining attorney to include evidence with supplemental briefs are very rare.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • FOOTNOTE 2 "We recognize that there are occasions when a valid request for remand is submitted very late in the appeal process, such as after main briefs have been filed, and the Board allows the applicant and the examining attorney to include evidence with supplemental briefs. That situation is very rare, however."
  • Since timely served discovery responses might not arrive until after the deadline, the receiving party typically should wait a reasonable period of time beyond the required date of service before making any motion alleging a failure to serve.
    • MySpace, Inc. v. Donnell Mitchell, Opposition No. 91181141 and Cancellation No. 92048120 (TTAB 2009)
      • FOOTNOTE 2 "When the Board orders discovery responses to be provided by a particular date, that means they must be served (i.e., put into the mail) by the responding party by that date. Since timely served discovery responses might not arrive until after the deadline, the receiving party typically should wait a reasonable period of time beyond the required date of service before making any motion alleging a failure to serve. In this case, however, the subsequent briefs filed by the parties make clear that plaintiff's motion for sanctions was not premature."
  • Written stipulations to extend the period for responding to discovery requests need only be filed with the TTAB when the extension may interfere with the orderly completion of discovery or the opening of trial.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • FOOTNOTE 2 "Written stipulations to extend the period for responding to discovery requests need only be filed with the Board when the extension may interfere with the orderly completion of discovery or the opening of trial. See Fed. R. Civ. P. 29."
  • When cases are cited in a brief, the case citation should include a citation to The United States Patent Quarterly if the case has appeared in that publication.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • FOOTNOTE 2 "In his briefs applicant has not provided the case cites to United States Patent Quarterly for the federal court cases he has cited. "When cases are cited in a brief, the case citation should include a citation to The United States Patent Quarterly (USPQ), if the case has appeared in that publication." TBMP § 801.03 (2d ed., revised 2004)."
  • Submission of evidence with a reply brief may be untimely and normall not considered; however, at oral argument the examining attorney stated that she had no objection to this material, and therefore we have treated it as being of record.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • FOOTNOTE 2 "With his reply brief applicant submitted pages from the guidelines for listings in "urban dictionary," www.urbandictionary.com, the source of the definition of the phrase "in da hizza houze" submitted by the examining attorney. Applicant's submission is untimely and would normally not be considered. If applicant had wished to raise questions about the probative value of the examining attorney's evidence from this source he should have submitted the guidelines during the course of prosecution. (Although the dictionary definition was made of record by the examining attorney with the final Office action, applicant could have submitted the additional webpages with a request for reconsideration.) However, at oral argument the examining attorney stated that she had no objection to this material, and therefore we have treated it as being of record."
  • Briefs on motions must be double spaced and in at least 11-point type.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • FOOTNOTE 3 "In addition, briefs on motions must be double spaced and in at least 11-point type. See Trademark Rules 2.126(a)(1) and (b)."
  • A petition is to be served on the owner of the registration or its domestic representative, if one has been appointed, at the correspondence address of record for the owner or domestic representative, if any.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 3 "Petitioner filed a copy of this letter with the Board. The Board notes that it was incorrect for petitioner to serve the petition on counsel for respondent, rather than on respondent, i.e., the owner of the registration. A petition is to be served on the owner of the registration or its domestic representative, if one has been appointed, at the correspondence address of record for the owner or domestic representative, if any. See Trademark Rule 2.111(b). Nonetheless, as previously noted, counsel for respondent has filed an answer and it is clear that respondent will be represented by counsel in this proceeding. Under these circumstances, therefore, petitioner need not forward a service copy directly to respondent."
  • Case Finding: Where applicant has not objected to opposer's reliance on the unpleaded registrations, and has, in effect, treated them as of record in his brief, the TTAB may deem opposer's pleading amended to assert the registrations under Fed. R. Civ. P. 15(b).
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • FOOTNOTE 3 "The notice of reliance also includes status and title copies of several registrations which were not pleaded in the notice of opposition. Because applicant has not objected to opposer's reliance on the unpleaded registrations, and moreover has, in effect, treated them as of record in his brief, we deem opposer's pleading amended to assert the registrations under Fed. R. Civ. P. 15(b). We add, however, that whether or not these registrations are considered, the result in this case would be the same."
  • Parties before the Board are required to conduct their business with decorum and courtesy.
    • MySpace, Inc. v. Donnell Mitchell, Opposition No. 91181141 and Cancellation No. 92048120 (TTAB 2009)
      • FOOTNOTE 4 "As defendant was advised in the Board's January 21, 2009 order, "parties before the Board are required to conduct their business with decorum and courtesy." Trademark Rule 2.192."
  • Parties to TTAB cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief is a courtesy or a convenience to the Board. It is neither.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 4 "Parties to Board cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief (and citing to the attachments, rather than to the original testimony or notices of reliance) is a courtesy or a convenience to the Board. It is neither. When considering a case for final disposition, the entire record is readily available to the panel. Because we must determine whether such attachments are properly of record, Trademark Rule 2.123(l), citation to the attachment requires examination of the attachment and then an attempt to locate the same evidence in the record developed during trial, requiring more time and effort than would have been necessary if citations were directly to the trial record."
  • Discussion of new rules effective November 1, 2007.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 4 "The USPTO published a notice of final rulemaking in the Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By this notice, various rules governing Trademark Trial and Appeal Board inter partes proceedings were amended. Certain amendments had an effective date of August 31, 2007, while most had an effective date of November 1, 2007. Prior to November 1, 2007, a petitioner was not required to serve its petition to cancel upon its adversary. Instead, in cases commenced prior to November 1, 2007, a petitioner was able, under Trademark Rule 2.112(a), to simply file its petition to cancel, and any exhibits thereto, in duplicate form with the Board. Upon receipt, the Board would then forward the duplicate or service copy of the petition to cancel, and any exhibits thereto, directly to the owner of the registration along with an order instituting proceedings, in accordance with Trademark Rule 2.113. Both of these rules have been amended. The final rule and a chart summarizing the affected rules, their changes, and effective dates, are viewable on the USPTO website at these web addresses: http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf"
  • A printed publications are generally books and periodicals available to the general public and usually only admissible for what it shows on its face.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 5 ""Printed publications" are generally defined as "books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding...." TBMP § 704.08 (2d ed. rev. 2004) (and cases cited therein). It should further be noted that a printed publication is only admissible for what it shows on its face; unless it falls within an exception to the hearsay rule it will not be considered to prove the truth of any matter stated in the publication. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007)."
  • Discussion of filing a complaint via ESTTA.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 5 "The parties should bear in mind that a plaintiff who files its complaint through ESTTA cannot complete the process unless it confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record. Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff's initial pleading. Therefore, any plaintiff who files a complaint through ESTTA is viewed by the Board as having included proof of service with its pleading. Actual forwarding of the service copy, however, is the responsibility of the filer, as ESTTA does not effect service for the filer."
  • The time for filing a notice of opposition is statutory and cannot be waived by the Board; and the filing date for a notice of opposition is dependent on, among other things, forwarding of a service copy and inclusion of proof of service when the opposition is filed.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • FOOTNOTE 6 "The time for filing a notice of opposition is statutory and cannot be waived by the Board; and the filing date for a notice of opposition is dependent on, among other things, forwarding of a service copy and inclusion of proof of service when the opposition is filed. Thus, if opposer's service of a notice of opposition, or its submission of proof of service, occurs after the close of the opposition period, including any granted extensions, the filing date would fall outside the opposition period and the Board would refuse the opposition as untimely."
  • Case Finding: A brochure was not deemed a publication because it was not in general circulation.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • FOOTNOTE 7 "Exhibit B is described in the notice of reliance as a "[b]rochure from Life Zone used to provide background information." While this document may be a publication in the broad sense of the word, it does not appear to be a work of general circulation of the type which would be found in libraries, and is thus not a "printed publication" within the meaning of Trademark Rule 2.122(e)."
  • Only an order of the Board formally suspending proceedings can suspend a case.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • He did not file papers in opposition to the motion, or question the fact that the Board did not issue an order suspending proceedings pending disposition of the motion to strike. Cf. Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1136 (TTAB 2010) (only an order of the Board formally suspending proceedings can suspend a case.)
  • The TTAB will generally treat an unopposed motion as conceded.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • If opposer expected a ruling on the motion to strike, he easily could have moved the matter forward toward resolution by filing a response and/or requesting suspension until the matter was resolved.16 FOOTNOTE 16 "Further, because the Board will generally treat an unopposed motion as conceded, see Trademark Rule 2.127(a), the fact that the Board did not grant the motion after opposer's time to respond to it had passed should have alerted opposer to the fact that the Board was not aware of the motion."
  • Discussion of materials which may be submitted under a notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • In a Board proceeding, certain materials may be introduced by filing them, accompanied by a notice of reliance. However, the categories of materials which may be submitted under a notice of reliance are limited, consisting only of an adverse party's discovery deposition, answer to an interrogatory, or admission to a request for admission, Trademark Rule 2.120(j)(3)(i); printed publications;5 and official records, Trademark Rule 2.122(e).
  • If a party wonders whether the TTAB has considered a motion, they should check the status of a motion as well as the status of the proceeding.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In addition, given the passage of time, opposer earlier should have checked on the status of the motion to strike as well as the status of the proceeding.17 See Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1703 (TTAB 2002).
  • It is well established that even if some prior registrations have some characteristics similar to the applicant's, the USPTO's allowance of such prior registrations does not bind the TTAB.
    • In re Primo Water Corporation, Serial No. 78684820 (TTAB 2008)
      • In any event, it is well established that even if some prior registrations have some characteristics similar to the applicant's, the USPTO's allowance of such prior registrations does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
  • Submissions included with a reply brief are usually not considered by the TTAB because such submissions effectively shielded the material from review and response by the Examining Attorney.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • In contrast, we deny applicant's request that we consider the manifestly untimely submissions included with its reply brief. See Trademark Rule 2.142(d), In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) ("Applicant relies for support for this example on an entry in an online encyclopedia, which it submitted with its reply brief. The submission is untimely and therefore is not properly of record. 37 CFR §2.142(d)."), and In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001) ("By attempting to introduce evidence with its reply brief, applicant has effectively shielded this material from review and response by the Examining Attorney.").
  • One cannot subvert the page limitation for a brief by filing a combined brief in opposition and cross-motion, when both portions of the combined filing address the same issue raised by the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • In other words, one cannot subvert the page limitation for a brief by filing a combined brief in opposition and cross-motion, when both portions of the combined filing address the same issue raised by the original motion.
  • In Pioneer, the Supreme Court set forth four factors to be considered when determining whether a party's neglect of a matter is excusable.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380, 395 (1993), the Supreme Court set forth four factors to be considered, within the context of all the relevant circumstances, to determine whether a party's neglect of a matter is excusable. Those factors are: (1) the danger of prejudice to the non-moving party; (2) the length of delay and its potential impact on judicial proceedings; (3) the reason for the delay, including whether it was within the reasonable control of the moving party; and, (4) whether the moving party has acted in good faith.
  • The Third Pioneer factor may be considered the most important factor in a particular case when determining excusable neglect.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In subsequent applications of this test by the Circuit Courts of Appeal, several courts have stated that the third factor may be considered the most important factor in a particular case. See Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582, 1586 at fn.7 (TTAB 1997).
  • A symbol between the forward slash marks, "/s/," followed by a name may qualify as a signature.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • In this case, applicant used a symbol between the forward slash marks, "/s/," followed by his name. This qualifies as a signature under the Rule. See also PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) (". when a paper is filed via ESTTA, it must be signed in conformance with Rule 2.193(c)(1)(iii). As a practical matter, ESTTA will allow the filing party to complete the submission process only after the required electronic signature has been entered.").
  • When wondering whether the TTAB is aware of a pending motion, each party is equally obligated to contact the TTAB to determine the status of the motion and of the case.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • In this case, when no suspension order was issued and the motion was not decided, each party was equally obligated to contact the Board to determine the status of the motion and of the case.
  • The TTAB will not enter judgment on an unpleaded claim.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • In view of our decision on the motion to amend the pleading, opposer's motion for summary judgment on the claim that applicant lacked a bona fide intent to use the mark is moot. The Board will not enter judgment on an unpleaded claim. American Express Marketing & Development Corp. v. Gilad Development Corporation, supra at 1296.
  • Case Finding: In view of the examining attorney's second refusal to register the subject designation under Trademark Act Sections 1, 2, 3 and 45, the instant appeal is not premature but clearly is timely.
    • In re Vicki Roberts, Serial No. 76649075 (TTAB 2008)
      • In view of the examining attorney's second refusal to register the subject designation under Trademark Act Sections 1, 2, 3 and 45, the instant appeal is not premature but clearly is timely. See, for example, In re Spirits International, 86 USPQ2d 1078 (TTAB 2008).
  • Case Finding: Where defendant has not responded to discovery requests and failed to comply with conditions set forth in a TTAB order, the motion for entry of judgment against defendant as a sanction was granted.
    • MySpace, Inc. v. Donnell Mitchell, Opposition No. 91181141 and Cancellation No. 92048120 (TTAB 2009)
      • Inasmuch as it appears that defendant has not responded to the discovery requests and has otherwise failed to comply with other conditions set forth in the Board's January 21, 2009 order, the motion for entry of judgment against defendant as a sanction is hereby granted.
  • Discussion of whether an issued was tried by consent during a deposition.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Inasmuch as opposer points only to Mr. Wu's testimony deposition as evidencing that the issue was tried by consent, the consent should be clearly shown from the deposition questions and responses. Opposer's counsel's statement at the conclusion of this line of testimony that he was putting applicant on notice that he was going to move to amend the pleading cannot, after the fact, show that an issue was tried.
  • Inasmuch as petitioner acted promptly to cure its acknowledged failure of service, and given the fact that this petition would not be time-barred as of the date of actual compliance with the service requirement, petitioner cured the defective filing by its amendment of the proof of service.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • Inasmuch as petitioner acted promptly to cure its acknowledged failure of service, and given the fact that this petition would not be time-barred as of the date of actual compliance with the service requirement, petitioner cured the defective filing by its amendment of the proof of service. Therefore, the Board will not dismiss this petition as a nullity but instead will accord the petition a new filing date of October 17, 2008, which is the date of such amendment.
  • Unless the action is a nonfinal action, the applicant may not submit additional evidence, even in response to evidence submitted by the examining attorney.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • It appears that applicant is asserting that because the examining attorney submitted evidence as part of the Office action denying applicant's request for reconsideration, applicant is entitled to submit evidence in response. That is not correct. See TBMP § 1204 (2d ed. rev. 2004): "If the examining attorney, upon consideration of a request for reconsideration (made with or without new evidence), does not find the request persuasive, and issues a new final or nonfinal action, the examining attorney may submit therewith new evidence directed to the issue(s) for which reconsideration is sought. Unless the action is a nonfinal action, the applicant may not submit additional evidence, even in response to evidence submitted by the examining attorney. (emphasis added)"
  • It is axiomatic that rebuttal testimony may be used only to rebut evidence offered by the defendant.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • It is axiomatic that rebuttal testimony may be used only to rebut evidence offered by the defendant. Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629 (TTAB 2007)(rebuttal evidence proffered because defendant would not concede issues during cross-examination stricken).
  • Case Finding: Applicant has not supported its request for remand by a showing of good cause as to why it could not have previously submitted the third-party registrations.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • More importantly, applicant has not supported its request for remand by a showing of good cause. See TBMP § 1207.02. Applicant has not provided a valid reason why it could not have submitted the third-party registrations it seeks to make of record (to show that consumers can distinguish marks based on the presence or absence of an RX symbol) during the prosecution of its application.
  • Any final determination made by the TTAB is appealable to Federal district court, including to the district in which the civil action between the parties took place.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Moreover, any final determination made by the Board is appealable to Federal district court, including to the district in which the civil action between the parties took place. See Trademark Act §21(b); Trademark Rule 2.145(c); and TBMP §901 (2d ed. rev. 2004).
  • Each party is equally obligated to ensure that a discovery conference takes place by the assigned deadline.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Moreover, each party is equally obligated to ensure that a discovery conference takes place by the assigned deadline. See Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed. R. Civ. P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); and Influance, Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.2 (TTAB 2008) (holding discovery conference is a mutual obligation).
  • An Internet search summary has little or no probative value.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Moreover, even if considered, the search summary has little or no probative value. In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1933 (Fed. Cir. 2007). Most results on these hit lists provide only a few words surrounding the term LifeZone, and some do not seem to include the term at all, so there is little or no context to the excerpts.
  • Applicant's responses to opposer's request for production of documents may not normally be submitted by notice of reliance.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • On the other hand, applicant's responses to opposer's request for production of documents - Exhibits M (applicant's production of documents) and N (applicant's responses to opposer's requests for production) - may not normally be submitted by notice of reliance, Trademark Rule 2.120(j)(3)(ii), and are therefore inadmissible under our rules. Nonetheless, because applicant has noted its reliance on Exhibit M, we consider the admission of that exhibit to have been stipulated.
  • An admission to a request for admission is admissible via a notice of reliance, but not a denial.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • On the other hand, Exhibits O and P, applicant's responses to opposer's requests for admission, are not. Trademark Rule 2.120(j)(3)(i) permits submission under a notice of reliance of "an admission to a request for admission." (emphasis added.) In this case, applicant denied each of opposer's requests for admission, and opposer's denials are not admissible.10 FOOTNOTE 10 "Moreover, unlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P. 36(b).
        While applicant's responses to opposer's interrogatories are admissible, they yield little useful information. Nevertheless, we will give them whatever probative value they may have.
  • Because the record of TTAB proceedings must be open to the public, only truly confidential material should be marked as such.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • Opposer and applicant have filed trial briefs.9 FOOTNOTE 9 "Opposer marked certain paragraphs of its brief as "confidential," although the statements made in these paragraphs do not appear to be confidential. For example, on page 8, a "confidential" paragraph merely states the numbers of the exhibits that refer to expenditures for advertising and publicity. Although the exhibits themselves are confidential, the numbers of the exhibits are not. Further, the only evidence that has been submitted under seal is certain exhibits to the Kaplan testimony; none of the actual testimony of Mr. Kaplan was marked confidential. Because the record of Board proceedings must be open to the public, only truly confidential material should be marked as such. See TBMP §120.02. Accordingly, opposer is allowed thirty days to submit a redacted brief in which only information that is truly confidential is deleted, failing which the original brief will become part of the public record."
  • Under the pleading rules followed by the courts and the TTAB, claims must be separately stated.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • Opposer argues that the claim that applicant lacks a bona fide intent to use was an element of its original fraud claim, and that the proposed amendment is a permissible clarification of an existing ground. See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 55,748, 55,757 (Sept. 26, 2003) ("An opposer may make amendments to grounds asserted in the notice of opposition, for example, for clarification."). We are not persuaded by this argument. The initial pleading sets out quite clearly that fraud was alleged as the ground for opposition. The pleading of fraud sets out the basis for the fraud, i.e., that applicant falsely stated that it had a bona fide intent to use its mark on all of the goods and services listed in the application. However, we will not contort opposer's pleading to construe the allegations in Paragraph 13 as setting forth two separate grounds of both a claim of fraud and a claim that applicant lacked a bona fide intent to use the mark on all the listed goods and services at the time the application was filed. Under the pleading rules followed by the courts and the Board, claims must be separately stated. Fed. R. Civ. P. 10(b).\
  • Opposer's evidence of its pending trademark application, and evidence that the application has been suspended pending resolution of the subject application demonstrate that opposer has a reasonable belief that it would be damaged by registration of applicant's mark, thus establishing its standing.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Opposer's evidence of its pending trademark application, and evidence that the application has been suspended pending resolution of the subject application demonstrate that opposer has a reasonable belief that it would be damaged by registration of applicant's mark, thus establishing its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • Parties must inform the TTAB, by stipulation or motion, any time they agree to modify their obligations regarding disclosures and discovery. Such modifications are subject to TTAB approval.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • Parties must inform the Board, by stipulation or motion, any time they agree to modify their obligations under the rules governing disclosures and discovery, as well as when they agree to modify deadlines or schedules that involve disclosures, discovery,2 trial or briefing. Such modifications are subject to Board approval. See Fed. R. Civ. P. 29, and Trademark Rule 2.116.
  • The TTAB will not take as true any allegations contradicting facts in Office records.
    • Compagnie Gervais Danone v. Precision Formulations, LLC, Opposition No. 91179589 & 91184174 (TTAB 2009)
      • Precision's allegation that Danone filed an intent-to-use application on May 22, 2007 is not well-pleaded. Therefore, the Board is under no obligation to accept such allegation as true. The Board will not take as true any allegations contradicting facts in Office records.
  • The requisite showing for reopening an expired period is that of excusable neglect.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Pursuant to Fed. R. Civ. P. 6(b)(1)(B), the requisite showing for reopening an expired period is that of excusable neglect.
  • The TTAB has discretion to deem the pleadings amended to conform to the evidence in accordance with Federal Rule of Civil Procedure, Rule 15(b).
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • Respondent has argued in its trial brief that petitioner has abandoned any common-law rights that petitioner may have had in the mark DESIGNED2SELL, first by discontinuing use, and second by selling his business. Respondent did not raise the defense of abandonment in its answer. However, petitioner did not object on that ground in his reply brief, and instead addressed the merits of the defense. The Board has discretion to deem the pleadings amended to conform to the evidence in accordance with Federal Rule of Civil Procedure, Rule 15(b).
  • Discussion regarding opposer's not well taken argument that its rebuttal testimony was necessary to rebut the allegedly incorrect or opinion testimony.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Second, opposer argues that its rebuttal testimony was necessary to rebut the allegedly incorrect opinions and suppositions about opposer's business made by Mr. Moser in testimony. To the extent Mr. Moser's testimony offered mere opinions or suppositions about applicant's business (as opposed to facts of which he had first-hand knowledge), or offered opinions on the merits of this case, we have given it no weight. The Board must consider the admissible evidence and draw its own conclusions. While such testimony may be objectionable, it did not provide opposer with an opportunity to resuscitate its case by presenting essential evidence during rebuttal. Instead, the appropriate remedy is to request that the Board disregard any hearsay testimony, or that which is based on supposition or unsupported opinion, which we have done.
  • One cannot subvert the limit by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Similarly, one cannot subvert the limit by filing both a brief in opposition and a separate brief in support of a cross-motion, when both address the same issue. C.f. Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB 2000) (respondent improperly attempted to circumvent the page limitation set forth in Trademark Rule 2.127(a) by "dissect[ing] what is a single motion to compel into two motions separately addressing the interrogatories and document requests in order to file briefs totaling 50 pages").
  • Absent any statement from the parties, the Board will presume the parties plan to utilize traditional discovery devices.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • The Board's preference notwithstanding, in this case, in the absence of any statement from the parties other than that they waive their reciprocal obligations to make initial disclosures, the Board will presume the parties plan to utilize traditional discovery devices, as permitted by the Trademark Rules and Federal Rules of Civil Procedure.
  • The entire application file, including any evidence therein submitted by the applicant, becomes part of the record in an opposition proceeding without any action by the parties.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The entire application file, including any evidence therein submitted by the applicant, becomes part of the record in an opposition proceeding without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). See also Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).
  • . It is not the TTAB's practice, in most cases, to review pleadings for sufficiency or for the inclusion of embedded motions or requests.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • The motion to strike, although separately captioned, was embedded in applicant's answer at page 8 of 13, rather than presented as a separate filing and, therefore, could be easily overlooked by the Board. It is not the Board's practice, in most cases,14 to review pleadings for sufficiency or for the inclusion of embedded motions or requests.15
  • The page limitation for a brief in response to a motion applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • The page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues.
  • The page limitation on briefs cannot be waived by action, inaction or consent of the parties.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • The page limitation on briefs cannot be waived by action, inaction or consent of the parties. See Saint-Gobain, supra.3
  • When faced with a potential issued tried by consent during a deposition, the better practice would have been for counsel to object to the questioning on the ground that issue was not a pleaded issue.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The present situation is somewhat different, in that applicant's counsel did not specifically object to opposer's line of questions on the basis that they were irrelevant because the issue of fraud had not been pleaded. However, in viewing this entire line of cross-examination, it appears to us that as soon as it became clear to applicant's counsel what the import of opposer's questions were, applicant's counsel began interposing objections. As a result, we cannot say that applicant consented to the issue of fraud being tried.12 FOOTNOTE 12 "The better practice would have been for applicant's counsel to have objected to the line of questioning on the ground that fraud was not a pleaded issue."
  • The question of whether an issue was tried by consent is basically one of fairness.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The question of whether an issue was tried by consent is basically one of fairness. The non-moving party must be aware that the issue is being tried, and therefore there should be no doubt on this matter. This is especially true if the issue is purportedly tried solely through the plaintiff's cross-examination of the defendant's witness, since the plaintiff had the opportunity through its pleading to advise the defendant of the grounds it wished to pursue, and also had the opportunity, if new grounds came to its attention, to file a motion to amend the pleading under Fed.R.Civ.P. 15(a). Because there is a question as to whether applicant was aware that Mr. Wu's testimony on cross-examination was to be the entire evidence on the issue of fraud, we cannot conclude that the ground of fraud was tried by consent. Accordingly, we deny the motion to amend.13
  • While the parties may agree to present testimony by affidavit or declaration, absent such a stipulation, testimony in a TTAB proceeding must be presented by way of a testimonial deposition, allowing the opposing party an opportunity for cross-examination of the witness.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • These statements may not be considered because they do not constitute any of the materials which may be submitted under a notice of reliance. Further, to the extent they are being offered to prove the truth of the matters asserted therein, they are hearsay. Fed. R. Evid. 801(c). While the parties may agree to present testimony by affidavit or declaration, absent such a stipulation (and there is no such stipulation of record), testimony in a Board proceeding must be presented by way of a testimonial deposition, allowing the opposing party an opportunity for cross-examination of the witness. Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003); see generally, Trademark Rule 2.123(a)-(b).
  • Case Finding: The TTAB considered applicant's amendment to seek registration of the alleged mark under the provisions of Section 2(f) to be in the alternative because it was filed after the examining attorney requested a remand of the application to consider a new issue.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Third, in view of applicant's alternative amendment to the application to seek registration of the alleged mark as a whole under the provisions of Section 2(f), thereby conceding (for the purpose of applicant's alternative argument in support of registration) that the alleged mark as a whole is not inherently distinctive,7.FOOTNOTE 7" We note that applicant did not expressly state that it was arguing that the alleged mark had acquired distinctiveness in the alternative. However, we consider applicant's amendment to seek registration of the alleged mark under the provisions of Section 2(f) to be in the alternative because it was filed after the examining attorney requested a remand of the application to consider a new issue."
  • It is incumbent upon the TTAB to give deference to the determinations of the court, including the remedy entered therein, and consider the terms of the permanent injunction.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Thus, in this case, it is incumbent upon the Board to give deference to the determinations of the court, including the remedy entered therein, and consider the terms of the permanent injunction. As a result, we find that applicant is precluded from registering his mark.
  • Case Finding: Opposer's belief that proceedings were suspended because he was not contacted by applicant to schedule the conference was not reasonable in the absence of a suspension order.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • Thus, opposer's belief that proceedings were suspended because he was not contacted by applicant to schedule the conference was not reasonable in the absence of a suspension order. See, e.g., Super Bakery Inc. v. Benedict, supra.
  • Case Finding: The rule with regard to page limits applies to the situation presented here, where the combined response and cross-motion are filed as a single brief and pertain to the same issues raised in the original motion.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Thus, the rule with regard to page limits applies to the situation presented here, where the combined response and cross-motion are filed as a single brief and pertain to the same issues raised in the original motion.2
  • While exhibits to briefs are not explicitly prohibited by the Trademark Rules, the TTAB will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence.
    • Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008)
      • Thus, while exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence.
  • With the possible exception of a cross-motion, all new motions should be separately filed and briefed, to ensure they receive the proper attention.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • To be clear, a party should not embed a motion in another filing, with the possible exception of a cross-motion that may be included in a response to an existing motion. That is, all new motions should be separately filed and briefed, to ensure they receive the proper attention.
  • To the extent attached evidence had not previously been submitted it is untimely and may not be considered by the TTAB.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • To the extent attached evidence had not previously been submitted it is untimely and has not been considered.
  • The TTAB will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground.
    • O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010)
      • To the extent that opposer contends that the requirement about notification of grounds for Madrid applicants was satisfied because of the allegations in the original notice of opposition, we find this argument unpersuasive. Although the particular basis for opposer's claim of fraud in this case was the allegation that applicant falsely stated it had a bona fide intent to use its mark on all of its identified goods and services, applicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. Fraud was the ground that applicant defended against in its motion for judgment on the pleadings, and the ground upon which judgment for applicant was entered by the Board in its April 2, 2010 order. We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground.
  • Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary.
    • Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008)
      • Trademark Rule 2.127(a), which was recently amended to codify the Board's policy stated in Saint-Gobain v. Minnesota Mining and Manufacturing Company, 66 USPQ2d 1220 (TTAB 2005) ("Saint-Gobain"), concerning page limitations for briefs on motions, provides in relevant part: "Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary.1"
  • The record in the application should be complete prior to the filing of an appeal, and that the TTAB will ordinarily not consider additional evidence after the appeal is filed.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Trademark Rule 2.142(d) provides that the record in the application should be complete prior to the filing of an appeal, and that the Board will ordinarily not consider additional evidence after the appeal is filed. Accordingly, given applicant's untimely submission of Exhibits A, B and C with his supplemental appeal briefs, the examining attorney's objection is sustained, and we have not considered this evidence in making our decision.
  • Trademark Rule regarding electronic signatures.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Trademark Rule 2.193(c)(1)(iii) provides as follows:
        "Where an electronically transmitted trademark filing is permitted or required, the person who signs the filing must either:
        (A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; or (B) Sign the verified statement using some other form of electronic signature specified by the Director."
  • Parties may modify the discovery and trial schedule, including the deadline for making initial disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • Trademark Rules 2.120(a)(2) and 2.120(a)(3), as amended, allow parties to modify the discovery and trial schedule, including the deadline for making initial disclosures, if the parties file, and the Board approves, a stipulation or motion to that effect.1
  • Discussion of previous registrations and whether they show a history of allowing registration of marks similar to the one at issue.
    • In re Primo Water Corporation, Serial No. 78684820 (TTAB 2008)
      • We do not consider three registrations to show a USPTO "history of allowing registration of trademarks in which unspecified indicia is contained within the description of the trademark but not included within the drawing or claimed trademark." Applicant's brief, p. 5. Further, Registration No. 1917692 (which has been cancelled) issued in 1995, prior to the Board's decision in International Flavors in 1998, see 47 USPQ2d 1314, and prior to the Federal Circuit's decision in 1999. In fact, the Board recognized in its decision that the Trademark Examining Operation had taken contrary positions on the registrability of marks which contain phantom elements. Thus, it cannot be said that there was a consistent policy up to that point.
  • When the parties file a stipulation, motion, or notice regarding waiver of initial disclosures, the Board strongly prefers the parties to include a description of the parties' alternate plans for discovery.
    • Boston Red Sox Baseball Club Limited Partnership v. Harry F. Chaveriat III, Opposition No. 91182083 (TTAB 2008)
      • When the parties file a stipulation, motion, or notice regarding waiver of initial disclosures, the Board strongly prefers the parties to include a description of the parties' alternate plans for discovery, even if such plans merely provide for use of traditional discovery devices such as depositions, interrogatories, requests for production or inspection, and requests for admission.
  • A party is not entitled to a filing date where that party did not satisfy the service requirements.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • While respondent did not file a motion to dismiss this case as a nullity, it is obvious to the Board that petitioner did not satisfy the service requirements detailed in Trademark Rules 2.111(a), 2.111(b) and 2.111(c)(4) on October 9, 2008, because petitioner did not actually serve the petition on that date.5 Petitioner does not dispute this point. Thus, although the Board accorded the petition an October 9, 2008 "filing date" based on petitioner's ESTTA filing, petitioner clearly is not entitled to such a filing date because it failed to comply with its service obligations on that date.
  • Case Finding: While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion is timely under Trademark Rule 2.127(e)(1).
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion is timely under Trademark Rule 2.127(e)(1).
  • The record in the application should be complete prior to the filing of an appeal. Filing evidence with an appeal brief is clearly untimely.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • With its brief applicant has submitted new evidence, to which the examining attorney has objected. The objection is well taken. Trademark Rule 2.142(d) provides that the record in the application should be complete prior to the filing of an appeal. Filing evidence with an appeal brief is clearly untimely.
Dating DNA, LLC v. Imagini Holdings, Ltd., Opposition No. 91185884 and 91191912 (TTAB 2010) American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010) Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010) In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010) O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., Opposition No. 91190886 (TTAB 2010) Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010) Schering-Plough Animal Health Corporation v. Aqua Gen AS, Opposition No. 91176641 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) HighBeam Marketing, LLC v. Highbeam Research, LLC, Opposition No. 91162372, (TTAB 2008) National Football League, NFL Properties LLC v. DNH Management, LLC, Opposition No. 91176569, (TTAB 2008) Cooper Technologies Company v. Denier Electric Co., Inc., Cancellation No. 92048042 (TTAB 2008) Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008) M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959 & 92046056, (TTAB 2008) Schott AG v. L'Wren Scott, Opposition No. 91184239 and  91184245 (TTAB 2008) Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008) In re Primo Water Corporation, Serial No. 78684820 (TTAB 2008) In re Vicki Roberts, Serial No. 76649075 (TTAB 2008) Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (TTAB 2008) Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007) Gerald David Giersch, Jr. and Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576, (TTAB 2007) Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007) In re 1st USA Realty Professionals, Inc., Serial No. 78553715, (TTAB 2007) In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) In re Spirits of New Merced, LLC, Serial No. 78710805, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Grand Total
Fiat Group Autos. S.p.A. v. ISM Inc., 94 USPQ2d 1111 (TTAB 2010) 1
American Express Marketing & Development Corp. v. Gilad Development Corporation, 94 USPQ2d 1294 (TTAB 2010) 1
Super Bakery Inc. v. Benedict, 96 USPQ2d 1134 (TTAB 2010) 1
Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009) 1
Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759 (TTAB 2009) 1
Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) 1
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) 1
In re Spirits International, 86 USPQ2d 1078 (TTAB 2008) 1
Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701 (TTAB 2008) 1
Influance, Inc. v. Zuker, 88 USPQ2d 1859 (TTAB 2008) 1
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)  1
Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) 1
In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) 1
Paris Glove of Can. Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) 1
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715 (TTAB 2007) 1
In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) 1
McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006) 1
Banos v. City of Chicago, 398 F.3d 889 (7th Cir. 2005) 1
In re First Draft Inc., 76 USPQ2d 1183 (TTAB 2005) 1
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 1
Saint-Gobain v. Minnesota Mining and Manufacturing Company, 66 USPQ2d 1220 (TTAB 2005) 1
PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) 1
Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003) 1
In re Ruffin Gaming, LLC, 66 USPQ2d 1924 (TTAB 2002) 1
Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002) 1
PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860 (TTAB 2002) 1
International Finance Corp. v. Bravo Co., 64 USPQ2d 1597 (TTAB 2002) 1
Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701 (TTAB 2002) 1
Sonoda v. Cabrera, 255 F.3d 1035 (9th Cir. 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 3
In re Zanova Inc., 59 USPQ2d 1300 (TTAB 2001) 1
Boral Ltd. V. FMC Corp., 59 USPQ2d 1701 (TTAB 2000) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 59 USPQ2d 1477 (TTAB 2000) 1
Polaris Industries v. DC Comics, 59 USPQ2d 1798 (TTAB 2000) 1
Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703 (Comm'r 2000) 1
Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067 (TTAB 2000) 1
Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095 (TTAB 2000) 1
In re Fisherman's Wharf Fillet Inc., 83 F. Supp.2d 651 (E.D.Va. 1999) 1
Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925 (TTAB 1999) 1
Leumme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758 (TTAB 1999) 1
In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999) 1
In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998) 1
Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) 1
ITC Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021 (TTAB 1998) 3
In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998) 1
HGK Industries, Inc. v. Perma-Pipe, Inc., 49 USPQ2d 1156 (TTAB 1998) 1
In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997) 1
Kerry Steel Inc. v. Paragon Industries Inc., 106 F.3d 147 (6th Cir. 1997) 1
Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997) 1
Hadley v. U.S., 45 F.3d 1345 (9th Cir. 1995) 1
Atakpa v. Perimeter OB-GYN Associates, P.C., 912 F.Supp. 1566 (N.D.Ga. 1994) 1
FDIC v. Prusia, 18 F.3d 637 (8th Cir. 1994) 1
Ricardo Davila-Bardales v. Immigration and Naturalization Service, 27 F.3d 1 (1st Cir. 1994) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) 2
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) 2
United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993) 1
Pioneer Investment Services Company v. Brunswick Associates Limited Partnership, 507 U.S. 380 (1993) 1
Aries Sys. Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB 1992) 1
Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992) 1
Davis v. Noufal, 142 F.R.D. 258 (D.D.C. 1992) 1
Internal Revenue Service v. Federal Labor Relations Authority, 963 F.2d 429 (D.C. Cir. 1992) 1
McClanahan v. Aetna Life Ins. Co., 144 F.R.D. 316 (W.D.Va. 1992) 1
In re Perez, 21 USPQ2d 1075 (TTAB 1991) 1
Personnel Data Sys. Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863 (TTAB 1991) 1
Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991) 2
Farr Man & Co. Inc. v. M/V Rozita, 903 F.2d 871 (1st Cir. 1990) 1
Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 1
Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) 1
Hall v. McLaughlin, 864 F.2d 868 (D.C. Cir. 1989) 1
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) 2
Johnston Pump/General Valve Inc. v. Chromalloy American Corporation, 13 USPQ2d 1719 (TTAB 1989) 1
Rabil v. Swafford, 128 F.R.D. 1, 2 (D.D.C. 1989) 1
Shaw's Supermarkets Inc. v. National Labor Relations Board, 884 F.2d 34 (1st Cir. 1989) 1
See's Candy Shops Inc. v. Campbell Soup Co. (12 USPQ2d 1395 (TTAB 1989) 1
Branch Banking & Trust Co. v. Deutz-Allis Corp., 120 F.R.D. 655 (E.D.N.C. 1988) 1
Giant Food Inc. v. Standard Terry Mills Inc., 229 USPQ 955 (TTAB 1986) 1
Hunter Publishing Co. v. Caulfield Publishing, Ltd., 1 USPQ2d 1996 (TTAB 1986) 1
In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986) 1
Sunkist Growers Inc. v. Benjamin Ansehl Company, 229 USPQ 147 (TTAB 1985) 1
International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984) 1
In re National Retail Hardware Association, 219 USPQ 851 (TTAB 1983) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 1
International Order of Job's Daughters v. Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981) 1
International Harvester Company v. International Telephone and Telegraph Corporation, 208 USPQ 940 (TTAB 1980) 1
Rhone-Poulenc v. Gulf Oil, 198 USPQ 172 (TTAB 1978) 1
Cool-Ray Inc. v. Eye Care Inc. 183 USPQ 618 (TTAB 1974) 1
Atchison, Topeka & Santa Fe Railway Co. et al. v. Wichita Board of Trade et al., 412 U.S. 800 93 S.Ct. 2367, 37 L.Ed.2d 350 (1973) 1
American Optical Corporation v. Autotrol Corporation, 175 USPQ 725 (TTAB 1972) 1
Cosmetically Yours Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515 (CCPA 1970) 1
Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285 (CCPA 1963) 1
Foman v. Davis, 371 U.S. 178 (1962) 1
In re Cooper, 117 USPQ 396 (CCPA 1958) 1
Grand Total 5 2 1 1 1 10 3 1 2 1 1 4 2 1 3 1 1 2 1 9 2 17 2 2 1 1 2 1 1 3 5 1 10 2 102

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1062. Publication

  1. (a) Examination and publication
    Upon the filing of an application for registration and payment of the prescribed fee, the Director 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 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office: Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 1066 of this title the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.
  2. (b) Refusal of registration; amendment of application; abandonment
    If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reasons therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
  3. (c) Republication of marks registered under prior acts
    A registrant of a mark registered under the provisions of the Act of March 3, 1881, or the Act of February 20, 1905, may, at any time prior to the expiration of the registration thereof, upon the payment of the prescribed fee file with the Director an affidavit setting forth those goods stated in the registration on which said mark is in use in commerce and that the registrant claims the benefits of this chapter for said mark. The Director shall publish notice thereof with a reproduction of said mark in the Official Gazette, and notify the registrant of such publication and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of this title. Marks published under this subsection shall not be subject to the provisions of section 1063 of this title.

 

 

Sec. 1068. Action of Director in interference, opposition, and proceedings for concurrent use registration or for cancellation

In such proceedings the Director 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 under this chapter may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 1052 of this title. However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title.

 

 

Sec. 1070. Appeals to Trademark Trial and Appeal Board from decisions of examiners

An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.

 

 

C.F.R. Sec. 2.126. Form of submissions to the Trademark Trial and Appeal Board.

  1. (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
    1. (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
    2. (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
    3. (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
    4. (4) A paper submission must not be stapled or bound;
    5. (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in §2.123(g)(2);
    6. (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
  2. (b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the Web site of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.
  3. (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to §2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.

 

 

C.F.R. Sec. 2.141. Ex parte appeals from action of trademark examining attorney.

  1. (a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken, within six months of the date of issuance of the final action. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.
  2. (b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed. If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.

 

 

C.F.R. Sec. 2.142. Time and manner of ex parte appeals.

  1. (a) Any appeal filed under the provisions of §2.141 must be filed within six months from the date of the final refusal or the date of the action from which the appeal is taken. An appeal is taken by filing a notice of appeal in written form, as prescribed in §2.126, and paying the appeal fee.
  2. (b)
    1. (1) The brief of appellant shall be filed within sixty days from the date of appeal. If the brief is not filed within the time allowed, the appeal may be dismissed. The examiner shall, within sixty days after the brief of appellant is sent to the examiner, file with the Trademark Trial and Appeal Board a written brief answering the brief of appellant and shall mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examiner.
    2. (2) Briefs must be submitted in written form and must meet the requirements prescribed in §2.126. Each brief shall contain an alphabetical index of cited cases. Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary.
  3. (c) All requirements made by the examiner and not the subject of appeal shall be complied with prior to the filing of an appeal.
  4. (d) The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner may request the Board to suspend the appeal and to remand the application for further examination.
  5. (e)
    1. (1) If the appellant desires an oral hearing, a request should be made by a separate notice filed not later than ten days after the due date for a reply brief. Oral argument will be heard by at least three Administrative Trademark Judges of the Trademark Trial and Appeal Board at the time specified in the notice of hearing, which may be reset if the Board is prevented from hearing the argument at the specified time or, so far as is convenient and proper, to meet the wish of the appellant or the appellant's attorney or other authorized representative.
    2. (2) If the appellant requests an oral argument, the examiner who issued the refusal of registration or the requirement from which the appeal is taken, or in lieu thereof another examiner from the same examining division as designated by the supervisory attorney thereof, shall present an oral argument. If no request for an oral hearing is made by the appellant, the appeal will be decided on the record and briefs.
    3. (3) Oral argument will be limited to twenty minutes by the appellant and ten minutes by the examiner. The appellant may reserve part of the time allowed for oral argument to present a rebuttal argument.
  6. (f)
    1. (1) If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examiner for further examination to be completed within thirty days.
    2. (2) If the further examination does not result in an additional ground for refusal of registration, the examiner shall promptly return the application to the Board, for resumption of the appeal, with a written statement that further examination did not result in an additional ground for refusal of registration.
    3. (3) If the further examination does result in an additional ground for refusal of registration, the examiner and appellant shall proceed as provided by §§2.61, 2.62, 2.63 and 2.64. If the ground for refusal is made final, the examiner shall return the application to the Board, which shall thereupon issue an order allowing the appellant sixty days from the date of the order to file a supplemental brief limited to the additional ground for the refusal of registration. If the supplemental brief is not filed by the appellant within the time allowed, the appeal may be dismissed.
    4. (4) If the supplemental brief of the appellant is filed, the examiner shall, within sixty days after the supplemental brief of the appellant is sent to the examiner, file with the Board a written brief answering the supplemental brief of appellant and shall mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examiner.
    5. (5) If an oral hearing on the appeal had been requested prior to the remand of the application but not yet held, an oral hearing will be set and heard as provided in paragraph (e) of this section. If an oral hearing had been held prior to the remand or had not been previously requested by the appellant, an oral hearing may be requested by the appellant by a separate notice filed not later than ten days after the due date for a reply brief on the additional ground for refusal of registration. If the appellant files a request for an oral hearing, one will be set and heard as provided in paragraph (e) of this section.
    6. (6) If, during an appeal from a refusal of registration, it appears to the examiner that an issue not involved in the appeal may render the mark of the appellant unregistrable, the examiner may, by written request, ask the Board to suspend the appeal and to remand the application to the examiner for further examination. If the request is granted, the examiner and appellant shall proceed as provided by §§2.61, 2.62, 2.63 and 2.64. After the additional ground for refusal of registration has been withdrawn or made final, the examiner shall return the application to the Board, which shall resume proceedings in the appeal and take further appropriate action with respect thereto.
  7. (g) An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated.

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