No summary, proceed to other tabs.

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • A long delay in filing a motion for leave to amend may render the amendment untimely.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • A long delay in filing a motion for leave to amend may render the amendment untimely. See International Finance Company v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002).
  • A motion for leave to amend should be filed as soon as any ground for such amendment becomes apparent.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • A motion for leave to amend should be filed as soon as any ground for such amendment, e.g., newly discovered evidence, becomes apparent.
  • Any party who delays filing a motion for leave to amend its pleading and, in so delaying, causes prejudice to its adversary, is acting contrary to the spirit of Rule 15(a) and risks denial of that motion.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Any party who delays filing a motion for leave to amend its pleading and, in so delaying, causes prejudice to its adversary, is acting contrary to the spirit of Rule 15(a) and risks denial of that motion. See Wright, Miller and Kane, Federal Practice and Procedure: Civil 2d, Section 1488 (1990); Chapman, Tips from the TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Reporter 302, 307 (1991).
  • Case Finding: Priority is an issue in the case simply by virtue of petitioner's pleading of its Section 2(d) claim.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Contrary to petitioner's contention, it cannot claim to be unfairly surprised by the motion for judgment on the pleadings, so that amendment of the pleadings would then be appropriate. Priority is an issue in the case simply by virtue of petitioner's pleading of its Section 2(d) claim. As discussed more fully below, in this particular case, respondent relies solely on the filing date of its application in moving for judgment on the pleadings. It therefore logically follows that there can be no unfair surprise to petitioner with regard to respondent's motion for judgment on the issue of priority, as respondent's ability to rely on its filing date is settled law and the date itself is apparent from the face of respondent's registration.
  • TTAB may find undue delay in filing of motion where new claims appear to be based on facts within petitioner's knowledge at the time the petition to cancel was filed.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • In this instance, we find that petitioner unduly delayed in filing its motion. The new claims appear to be based on facts within petitioner's knowledge at the time the petition to cancel was filed. See Trek Bicycle Corporation v. StyleTrek Limited, 64 USPQ2d 1540 (TTAB 2001) ("Trek Bicycle") (motion for leave to amend filed prior to close of discovery but based on facts known to opposer prior to institution of the case denied due to unexplained delay).
  • Consultation of dictionary, viewing of respondent's web site are examples of actions which could quite easily have been undertaken prior to filing of the petition to cancel, or by any prompt investigation conducted immediately thereafter.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Indeed, in support of its descriptiveness and fraud claims, petitioner appears to have consulted dictionary definitions and accessed respondent's web site, actions which could quite easily have been undertaken prior to filing of the petition to cancel, or by any prompt investigation conducted immediately thereafter.
  • Case Finding Petitioner waited over seven months, however, and until after respondent's motion for judgment before filing the motion for leave to amend its pleading to add the two additional claims.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Petitioner waited over seven months, however, and until after respondent's motion for judgment before filing the motion for leave to amend its pleading to add the two additional claims.
  • It is incumbent upon petitioner to identify all claims promptly in order to provide respondent with proper notice. Otherwise, allowing piecemeal prosecution of this case would unfairly prejudice respondent by increasing the time, effort, and money that respondent would be required to expend to defend against petitioner's challenge to its registration.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • The Board also finds that respondent would suffer prejudice if petitioner is permitted to add the claims at this juncture. In this particular instance, petitioner did not claim that it learned of these newly asserted claims through discovery or was otherwise unable to learn about these new claims prior to or shortly after filing its first complaint. Petitioner therefore had ample time to file a motion for leave to amend its pleading at an earlier stage in the proceeding. It is incumbent upon petitioner to identify all claims promptly in order to provide respondent with proper notice. Otherwise, allowing piecemeal prosecution of this case would unfairly prejudice respondent by increasing the time, effort, and money that respondent would be required to expend to defend against petitioner's challenge to its registration.
  • Where the parties are engaged in settlement discussions, the parties should file a stipulation or consented motion to suspend proceedings to allow for additional time to pursue settlement talks.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • The only explanation petitioner offers for its delay is that the parties were engaged in settlement discussions, and that it was surprised by respondent's reliance on the "affirmative defense" of priority not pleaded in its answer but purportedly raised as an issue for the first time in this case in respondent's motion for judgment on the pleadings. However, the parties never filed a stipulation or consented motion to suspend proceedings to allow for additional time to pursue settlement talks. Thus, petitioner could not reasonably have concluded that it need not concurrently shoulder its responsibility for moving the case forward and for preparing all possible claims for trial.
  • The timing of the motion for leave to amend is a major factor in determining whether respondent would be prejudiced by allowance of the proposed amendment.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • The timing of the motion for leave to amend is a major factor in determining whether respondent would be prejudiced by allowance of the proposed amendment. See TBMP § 507.02 (2d ed. rev. 2004) and cases cited therein.
  • Under Fed. R. Civ. P. 15(a), the TTAB 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.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Under Fed. R. Civ. P. 15(a), leave to amend pleadings shall be freely given when justice so requires. Consistent therewith, 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); and United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993).
No Statutes Listed

Click to view the entire TTAB Opinion (PDF format).