TRADEMARK TRIAL 

AND 

APPEAL BOARD 

MANUAL OF 

PROCEDURE 

(TBMP) 

Second Edition 

June 2003 

Revision 1 

March 2004 

United States Patent and Trademark Office 
PREFACE TO THE SECOND EDITION 

When we issued the first edition of the Trademark Trial and Appeal Board Manual 

of Procedure (TBMP) in 1995, we expressed the hope that it would serve as a 

comprehensive and ready resource for practitioners. That has proved to be so, if we 

can judge by the enthusiastic reception the TBMP has received. With this second 

edition, we hope to make a good thing better. 

This edition of the TBMP reflects changes in TTAB practice resulting from 

statutory changes and new rules promulgated since 1995 and, in particular, from 

the changes made in many of the TTAB rules in 1998. We have revised the format 

of the manual to add a comprehensive table of contents for each chapter. We have 

shifted case citations to footnotes to make the text easier to read and have enhanced 

case citations to include parenthetical explanations of the significance of the cited 

cases. We have added appendices with additional case law citations. We have 

reorganized some of the chapters to help users locate relevant information more 

quickly and have expanded some sections to explain TTAB practice more clearly or 

to reflect changes in practice. 

This edition of the manual reflects also the Office’s commitment to electronic 

government. We will not publish this edition of the TBMP in paper form but will 

make it available only on line at the TTAB web page of the USPTO web site. By 

using electronic technology, we can update the manual more quickly and, we hope, 

enhance its ultimate value to practitioners. 

Special thanks to TTAB Interlocutory Attorney Linda Skoro and Administrative 

Trademark Judge Terry Holtzman, whose countless hours of work and applied 

creativity have made this edition of the TBMP not a mere update of the first edition 

but, in many respects, a new and even more useful guide to TTAB practice. 

 

J. David Sams 

 Chief Administrative Trademark Judge 

 Trademark Trial and Appeal Board 

 May 1, 2003 
 INTRODUCTION 

The purpose of this manual is to provide practitioners with basic information generally 

useful for litigating cases before the Trademark Trial and Appeal Board. The manual 

does not modify, amend, or serve as a substitute for any existing statutes, rules, or 

decisional law and is not binding upon the Board, its reviewing tribunals, the Director, or 

the USPTO. Cf., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989). 

Rather, the manual describes current practice and procedure under the applicable 

authority, as of the date the manual is issued. 

The manual is devoted primarily to opposition and cancellation proceedings, the two 

most common types of inter partes proceedings before the Board. Nonetheless, the 

manual includes a chapter of general information useful for all proceedings and chapters 

on interference proceedings, concurrent use proceedings, and ex parte appeals to the 

Board. 

The manual will be updated periodically. In particular, after implementation of the 

Madrid Protocol, the Board will update the manual to reflect the resulting changes in 

Board practice. 

The Board welcomes suggestions for improving the content of the manual. Suggestions 

and comments should be addressed as follows: 

 Commissioner for Trademarks 

 Attention: Chief Administrative Trademark Judge 

 2900 Crystal Drive 

 Arlington, Virginia 22202-3514 

The title of the manual is abbreviated as "TBMP". A citation to a section of the manual 

may be written as "TBMP § _____" (e.g. "TBMP § 110.01," "TBMP § 113.06," etc.). 
TABLE OF CONTENTS 

CHAPTER 100 

GENERAL INFORMATION 

101 APPLICABLE AUTHORITY________________________________________ 1

101.01 STATUTE AND RULES OF PRACTICE__________________________________ 1 

101.02 FEDERAL RULES ________________________________________________ 1 

101.03 DECISIONAL LAW _______________________________________________ 2 

101.04 DIRECTOR’S ORDERS AND NOTICES _________________________________ 3 

102 NATURE OF BOARD PROCEEDINGS _______________________________ 3

102.01 JURISDICTION OF BOARD _________________________________________ 3 

102.02 TYPES OF BOARD PROCEEDINGS ____________________________________ 4 

102.03 GENERAL DESCRIPTION OF BOARD PROCEEDINGS ______________________ 6 

103 LOCATION AND ADDRESS OF BOARD _____________________________ 7

104 BUSINESS TO BE CONDUCTED IN WRITING _______________________ 7

105 CONTACT WITH BOARD PERSONNEL _____________________________ 7

106 IDENTIFICATION, SIGNATURE, AND FORM OF SUBMISSIONS ______ 8

106.01 IDENTIFICATION OF SUBMISSIONS___________________________________ 8 

106.02 SIGNATURE OF SUBMISSIONS ______________________________________ 8 

106.03 FORM OF SUBMISSIONS __________________________________________ 12 

107 HOW AND WHERE TO FILE PAPERS AND FEES ___________________ 16

108 FILING RECEIPTS _______________________________________________ 19

109 FILING DATE ___________________________________________________ 20

110 CERTIFICATE OF MAILING OR TRANSMISSION PROCEDURE _____ 22

110.01 IN GENERAL __________________________________________________ 22 

110.02 REQUIREMENTS FOR CERTIFICATE _________________________________ 24 

110.03 SUGGESTED FORMAT ___________________________________________ 26 

110.04 LOCATION OF CERTIFICATE ______________________________________ 27 

110.05 LOSS OF CERTIFICATE OF MAILING_________________________________ 28 

110.06 NONRECEIPT OF CORRESPONDENCE BEARING CERTIFICATE______________ 28 

110.07 EXCLUDED FILINGS_____________________________________________ 29 

110.08 A CERTIFICATE OF MAILING OR TRANSMISSION IS NOT ... _______________ 29 

111 "EXPRESS MAIL" PROCEDURE __________________________________ 30

111.01 IN GENERAL __________________________________________________ 30 

111.02 REQUIREMENTS FOR “EXPRESS MAIL”______________________________ 32 

111.03 QUESTIONABLE DATE OF MAILING_________________________________ 32 

112 TIMES FOR TAKING ACTION ____________________________________ 33

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113 SERVICE OF PAPERS ____________________________________________ 34

113.01 REQUIREMENT FOR SERVICE OF PAPERS _____________________________ 34 

113.02 REQUIREMENT FOR PROOF OF SERVICE______________________________ 35 

113.03 ELEMENTS OF CERTIFICATE OF SERVICE_____________________________ 35 

113.04 MANNER OF SERVICE ___________________________________________ 36 

113.05 ADDITIONAL TIME FOR TAKING ACTION AFTER SERVICE BY MAIL ________ 37 

113.06 A CERTIFICATE OF SERVICE IS NOT... _______________________________ 38 

114 REPRESENTATION OF A PARTY _________________________________ 38

114.01 PARTY MAY REPRESENT ITSELF ___________________________________ 39 

114.02 SELECTION OF ATTORNEY________________________________________ 39 

114.03 REPRESENTATION BY ATTORNEY __________________________________ 39 

114.04 REPRESENTATION BY NON-LAWYER (I.E., "OTHER AUTHORIZED 

REPRESENTATIVE") ___________________________________________________ 41 

114.05 REPRESENTATION BY FOREIGN ATTORNEY OR AGENT __________________ 41 

114.06 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS ___________________ 42 

114.07 DESIGNATION OF DOMESTIC REPRESENTATIVE _______________________ 42 

114.08 ADVERSE PARTIES REPRESENTED BY SAME PRACTITIONER ______________ 44 

115 CONDUCT OF PRACTITIONER ___________________________________ 45

115.01 APPLICABLE RULES ____________________________________________ 45 

115.02 DISCIPLINARY PROCEEDINGS _____________________________________ 45 

115.03 PETITIONS TO DISQUALIFY _______________________________________ 47 

116 TERMINATION OF REPRESENTATION ___________________________ 48

116.01 REVOCATION OF AUTHORITY _____________________________________ 48 

116.02 WITHDRAWAL AS REPRESENTATIVE--IN GENERAL_____________________ 48 

116.03 WHEN WITHDRAWAL IS MANDATORY ______________________________ 50 

116.04 WHEN WITHDRAWAL IS PERMISSIVE _______________________________ 50 

116.05 REQUEST TO WITHDRAW ________________________________________ 50 

117 CORRESPONDENCE - WITH WHOM HELD ________________________ 50

117.01 IN GENERAL __________________________________________________ 51 

117.02 WHEN THERE IS MORE THAN ONE ATTORNEY OR OTHER AUTHORIZED ____ 52 

REPRESENTATIVE_____________________________________________________ 52 

117.03 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE IN APPLICATION 

OR ________________________________________________________________ 54 

REGISTRATION WHEN INTER PARTES PROCEEDING COMMENCES ________________ 54 

117.04 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE OF POTENTIAL 

OPPOSER ___________________________________________________________ 55 

AFTER OPPOSITION IS FILED ____________________________________________ 55 

117.05 CORRESPONDENCE AFTER REVOCATION OR WITHDRAWAL ______________ 56 

117.06 CORRESPONDENCE WITH FOREIGN PARTY ___________________________ 56 

117.07 CHANGE OF ADDRESS ___________________________________________ 56 

117.08 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS ___________________ 57 

118 PAYMENT OF FEES______________________________________________ 57

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118.01 LISTS OF FEES AND CHARGES _____________________________________ 57 

118.02 FEES PAYABLE IN ADVANCE______________________________________ 57 

118.03 METHOD OF PAYMENT--IN GENERAL _______________________________ 58 

118.04 METHOD OF PAYMENT--DEPOSIT ACCOUNTS _________________________ 59 

119 PAPERS AND FEES GENERALLY NOT RETURNABLE ______________ 59

119.01 FEE REFUNDS--GENERAL RULE ___________________________________ 59 

119.02 PAPERS AND FEES--EX PARTE CASES _______________________________ 60 

119.03 PAPERS AND FEES--INTER PARTES CASES____________________________ 61 

120 ACCESS TO FILES _______________________________________________ 62

120.01 NONCONFIDENTIAL FILES ________________________________________ 62 

120.02 CONFIDENTIAL MATERIALS_______________________________________ 63 

120.03 FILES OF TERMINATED PROCEEDINGS_______________________________ 64 

121 COPYING OF FILES _____________________________________________ 65

122 CERTIFICATION ________________________________________________ 66

122.01 COURT REQUIREMENTS _________________________________________ 66 

122.02 CERTIFIED COPIES______________________________________________ 66 

123 STATUS INFORMATION FOR APPLICATIONS, REGISTRATIONS AND 

BOARD PROCEEDINGS ______________________________________________ 66

124 ACTION BY ASSIGNEE___________________________________________ 67

CHAPTER 200 

EXTENSIONS OF TIME TO OPPOSE

201 IN GENERAL ____________________________________________________ 68

202 TIME FOR FILING REQUEST_____________________________________ 70

202.01 IN GENERAL __________________________________________________ 70 

202.02 DATE OF PUBLICATION OF MARK __________________________________ 73 

202.03 PREMATURE REQUEST __________________________________________ 73 

202.04 LATE REQUEST ________________________________________________ 73 

203 FORM OF REQUEST _____________________________________________ 74

203.01 IN GENERAL __________________________________________________ 74 

203.02 IDENTIFYING INFORMATION ______________________________________ 76 

203.02(a) In General _______________________________________________ 76

203.02(b) Requirement for Identification of Potential Opposer ______________ 76

203.03 SIGNATURE ___________________________________________________ 77 

203.04 SERVICE _____________________________________________________ 78 

203.05 DUPLICATE REQUESTS __________________________________________ 79 

204 FEE_____________________________________________________________ 79

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205 MARK ON SUPPLEMENTAL REGISTER NOT SUBJECT TO 

OPPOSITION ________________________________________________________ 79

206 WHO MAY FILE AN EXTENSION OF TIME TO OPPOSE ____________ 80

206.01 GENERAL RULE________________________________________________ 80 

206.02 REQUEST FOR FURTHER EXTENSION FILED BY PRIVY___________________ 81 

206.03 MISIDENTIFICATION OF POTENTIAL OPPOSER_________________________ 82 

207 REQUIREMENTS FOR SHOWING OF CAUSE; EXTRAORDINARY 

CIRCUMSTANCES ___________________________________________________ 83

207.01 IN GENERAL __________________________________________________ 84 

207.02 EXTENSIONS UP TO 120 DAYS FROM THE DATE OF PUBLICATION _________ 84 

207.03 EXTENSIONS BEYOND 120 DAYS FROM THE DATE OF PUBLICATION _______ 85 

208 ESSENTIAL ELEMENT OMITTED_________________________________ 87

209 ACTION BY BOARD ON REQUEST ________________________________ 88

209.01 SUSPENSION POLICY ____________________________________________ 88 

209.02 DETERMINATION OF EXTENSION EXPIRATION DATE____________________ 88 

210 OBJECTIONS TO REQUEST ______________________________________ 89

211 RELIEF FROM ACTION OF BOARD _______________________________ 90

211.01 REQUEST FOR RECONSIDERATION__________________________________ 90 

211.02 RELIEF AFTER INSTITUTION OF OPPOSITION __________________________ 91 

211.03 PETITION TO THE DIRECTOR ______________________________________ 91 

212 AMENDMENT OF APPLICATION DURING OR AFTER EXTENSION__ 93

212.01 JURISDICTION TO CONSIDER AMENDMENT ___________________________ 93 

212.02 CONDITIONS FOR EXAMINING ATTORNEY APPROVAL OF AMENDMENT _____ 93 

212.03 FORM OF AMENDMENT __________________________________________ 94 

212.04 ACTION BY BOARD -- UPON RECEIPT OF AMENDMENT__________________ 94 

212.05 ACTION BY BOARD -- DURING CONSIDERATION OF AMENDMENT BY EXAMINING

___________________________________________________________________ 96 

ATTORNEY__________________________________________________________ 96 

212.06 ACTION BY BOARD -- AFTER CONSIDERATION OF AMENDMENT BY EXAMINING

___________________________________________________________________ 96 

ATTORNEY__________________________________________________________ 96 

212.07 AMENDMENT DURING OPPOSITION_________________________________ 98 

213 EFFECT OF RESTORATION OF JURISDICTION____________________ 98

214 EFFECT OF REPUBLICATION ___________________________________ 100

215 EFFECT OF LETTER OF PROTEST_______________________________ 101

216 INADVERTENTLY ISSUED REGISTRATION ______________________ 104

217 RELINQUISHMENT OF EXTENSION _____________________________ 105

218 ABANDONMENT OF APPLICATION______________________________ 106

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219 AMENDMENT TO ALLEGE USE; STATEMENT OF USE ____________ 107

220 INADVERTENT ISSUANCE OF A NOTICE OF ALLOWANCE _______ 109

CHAPTER 300 

PLEADINGS 

301 TYPES OF BOARD PROCEEDINGS _______________________________ 110

302 COMMENCEMENT OF PROCEEDING ____________________________ 111

303 WHO MAY OPPOSE OR PETITION TO CANCEL __________________ 112

303.01 IN GENERAL _________________________________________________ 112 

303.02 MEANING OF THE TERM "PERSON" ________________________________ 114 

303.03 MEANING OF THE TERM "DAMAGE" _______________________________ 115 

303.04 FEDERAL TRADE COMMISSION ___________________________________ 115 

303.05 OPPOSITION FILED DURING EXTENSION OF TIME TO OPPOSE ____________ 116 

303.05(a) General Rule ____________________________________________ 116

303.05(b) Opposition Filed by Privy __________________________________ 117

303.05(c) Misidentification of Opposer________________________________ 117

303.06 JOINT OPPOSERS OR PETITIONERS_________________________________ 118 

304 PROCEEDING AGAINST MULTIPLE CLASS APPLICATION OR 

REGISTRATION ____________________________________________________ 119

305 CONSOLIDATED AND COMBINED COMPLAINTS_________________ 119

306 TIME FOR FILING OPPOSITION_________________________________ 121

306.01 IN GENERAL _________________________________________________ 121 

306.02 DATE OF PUBLICATION OF MARK _________________________________ 122 

306.03 PREMATURE OPPOSITION _______________________________________ 122 

306.04 LATE OPPOSITION _____________________________________________ 123 

307 TIME FOR FILING PETITION TO CANCEL _______________________ 123

307.01 PETITION THAT MAY BE FILED AT ANY TIME AFTER REGISTRATION _____ 125 

307.02 PETITION THAT MUST BE FILED WITHIN FIVE YEARS FROM THE DATE OF _ 126 

REGISTRATION______________________________________________________ 126 

307.02(a) In General ______________________________________________ 126

307.02(b) Sec. 14 Limitation Is Independent of Section 15 Affidavit _________ 128

307.02(c) Factors Affecting the Five-Year Period _______________________ 128

307.02(c)(1) Reliance on Registration By Plaintiff _____________________ 128 

307.02(c)(2) Amendment of Registration ____________________________ 129 

307.03 PREMATURE PETITION TO CANCEL ________________________________ 129 

307.04 LATE PETITION TO CANCEL _____________________________________ 130 

308 FILING FEES ___________________________________________________ 130

308.01 FEE FOR FILING OPPOSITION _____________________________________ 130 

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308.01(a) In General ______________________________________________ 130

308.01(b) Insufficient Fee __________________________________________ 132

308.02 FEE FOR FILING PETITION TO CANCEL _____________________________ 133 

308.02(a) In General ______________________________________________ 133

308.02(b) Insufficient Fee __________________________________________ 134

308.02(c) Petition Filed by Federal Trade Commission ___________________ 135

308.02(d) Fee for Counterclaim _____________________________________ 136

308.03 FEES FOR JOINT OPPOSERS OR PETITIONERS _________________________ 136 

308.04 FEES FOR PROCEEDING AGAINST MULTIPLE CLASS APPLICATION OR 

REGISTRATION______________________________________________________ 136 

308.05 FEES FOR CONSOLIDATED AND COMBINED COMPLAINTS _______________ 136 

309 FORM AND CONTENT OF OPPOSITIONS AND PETITIONS TO CANCEL

____________________________________________________________________ 137

309.01 IN GENERAL _________________________________________________ 137 

309.02 FORM OF COMPLAINT __________________________________________ 139 

309.02(a) Format for Complaint _____________________________________ 139

309.02(b) Signature of Complaint ____________________________________ 141

309.02(c) Service of Complaint ______________________________________ 142

309.03 SUBSTANCE OF COMPLAINT _____________________________________ 142 

309.03(a) In General ______________________________________________ 143

309.03(a)(1) Scope of Opposition and Petition to Cancel ________________ 143 

309.03(a)(2) Elements of Complaint – In General _____________________ 143 

309.03(b) Standing________________________________________________ 145

309.03(c) Grounds ________________________________________________ 148

309.03(d) Remedy Under Section 18 (Partial Opposition or Partial _________ 155

Cancellation)_____________________________________________________ 155

309.04 DEFECTS IN COMPLAINT THAT MAY AFFECT INSTITUTION OF PROCEEDING 159 

310 NOTIFICATION TO PARTIES OF PROCEEDING AND SETTING TIME 

TO ANSWER _______________________________________________________ 160

310.01 NOTIFICATION TO PARTIES OF PROCEEDING _________________________ 160 

310.02 DEFENDANT'S COPY OF COMPLAINT RETURNED AS UNDELIVERABLE _____ 164 

310.03 SETTING TIME FOR FILING ANSWER _______________________________ 165 

310.03(a) In General ______________________________________________ 165

310.03(b) Trademark Rule 2.119(c) 5-Day Addition Not Applicable to ______ 166

Deadlines Set by Board_____________________________________________ 166

310.03(c) Extension of Time to File Answer ____________________________ 166

311 FORM AND CONTENT OF ANSWER______________________________ 166

311.01 FORM OF ANSWER ____________________________________________ 166 

311.01(a) Format for Answer _______________________________________ 168

311.01(b) Signature of Answer ______________________________________ 168

311.01(c) Filing and Service of Answer _______________________________ 169

311.02 SUBSTANCE OF ANSWER________________________________________ 169 

311.02(a) Admissions and Denials ___________________________________ 171

311.02(b) Affirmative Defenses ______________________________________ 172

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311.02(c) Unpleaded Affirmative Defenses _____________________________ 176

311.02(d) Other Affirmative Pleadings - Amplifying Denials _______________ 177

311.03 REPLY TO ANSWER SHOULD NOT BE FILED _________________________ 177 

312 DEFAULT ______________________________________________________ 178

312.01 IN GENERAL _________________________________________________ 178 

312.02 SETTING ASIDE NOTICE OF DEFAULT ______________________________ 179 

312.03 SETTING ASIDE DEFAULT JUDGMENT ______________________________ 180 

313 COUNTERCLAIMS______________________________________________ 182

313.01 IN GENERAL _________________________________________________ 182 

313.02 FEE FOR COUNTERCLAIM _______________________________________ 184 

313.03 FORM AND SUBSTANCE OF COUNTERCLAIM; SERVICE OF COUNTERCLAIM _ 185 

313.04 COMPULSORY COUNTERCLAIMS __________________________________ 186 

313.05 PERMISSIVE COUNTERCLAIMS ___________________________________ 188 

313.06 ANSWER TO COUNTERCLAIM ____________________________________ 189 

314 UNPLEADED MATTERS_________________________________________ 190

315 AMENDMENT OF PLEADINGS___________________________________ 191

316 MOTIONS RELATING TO PLEADINGS ___________________________ 192

317 EXHIBITS TO PLEADINGS ______________________________________ 192

318 FED. R. CIV. P. 11 APPLICABLE__________________________________ 193

319 AMENDMENT TO ALLEGE USE; STATEMENT OF USE ____________ 194

CHAPTER 400 

DISCOVERY 

401 IN GENERAL ___________________________________________________ 195

402 SCOPE OF DISCOVERY _________________________________________ 196

402.01 IN GENERAL _________________________________________________ 196 

402.02 LIMITATIONS ON RIGHT TO DISCOVERY ____________________________ 197 

403 TIMING OF DISCOVERY ________________________________________ 199

403.01 IN GENERAL _________________________________________________ 199 

403.02 TIME FOR SERVICE OF DISCOVERY REQUESTS _______________________ 200 

403.03 TIME FOR SERVICE OF DISCOVERY RESPONSES_______________________ 200 

403.04 EXTENSIONS OF DISCOVERY PERIOD AND/OR TIME TO RESPOND TO DISCOVERY

__________________________________________________________________ 201 

REQUESTS _________________________________________________________ 201 

403.05 NEED FOR EARLY INITIATION OF DISCOVERY ________________________ 203 

403.05(a) To Allow Time for "Follow-up" Discovery _____________________ 203

403.05(b) To Facilitate Introduction of Produced Documents ______________ 203

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404 DISCOVERY DEPOSITIONS _____________________________________ 205

404.01 WHEN AND BY WHOM TAKEN ___________________________________ 205 

404.02 WHO MAY BE DEPOSED ________________________________________ 205 

404.03 PLACE OF DEPOSITION; ORAL OR WRITTEN DEPOSITION; SECURING 

ATTENDANCE_______________________________________________________ 206 

OF DEPONENT ______________________________________________________ 206 

404.03(a) Person Residing in the United States – In General_______________ 206

404.03(a)(1) Person Residing in United States – Party __________________ 206 

404.03(a)(2) Person Residing in United States – Nonparty_______________ 206 

404.03(b) Person Residing in a Foreign Country – Party__________________ 208

404.03(c) Person Residing in a Foreign Country – Nonparty_______________ 209

404.03(c)(1) Willing Nonparty ____________________________________ 209 

404.03(c)(2) Unwilling Nonparty __________________________________ 209 

404.03(d) Foreign Person Present Within the United States – Party _________ 213

404.03(e) Foreign Person Present Within the United States – Nonparty ______ 214

404.04 PERSONS BEFORE WHOM DEPOSITIONS MAY BE TAKEN _______________ 215 

404.05 NOTICE OF DEPOSITION ________________________________________ 216 

404.06 TAKING A DISCOVERY DEPOSITION _______________________________ 217 

404.07 DISCOVERY DEPOSITIONS ON WRITTEN QUESTIONS___________________ 218 

404.07(a) Depositions on Written Questions: Before Whom Taken__________ 218

404.07(b) Depositions on Written Questions: When Taken ________________ 218

404.07(c) Depositions on Written Questions: Place of Deposition __________ 219

404.07(d) Depositions on Written Questions: Notice of Deposition _________ 219

404.07(e) Depositions on Written Questions: Examination of Witness _______ 220

404.07(f) Depositions on Written Questions: Objections__________________ 221

404.07(g) Depositions on Written Questions: Form of Deposition; Signature _ 222

404.07(h) Depositions on Written Questions: Certification of Deposition ____ 222

404.07(i) Depositions on Written Questions: Service, Correction, and_______ 223

Making the Deposition of Record _____________________________________ 223

404.07(j) Deposition on Written Questions: Utility ______________________ 223

404.08 DISCOVERY DEPOSITION OBJECTIONS _____________________________ 224 

404.08(a) Objections to Notice ______________________________________ 224

404.08(b) Objections as to Disqualification of Officer ____________________ 224

404.08(c) Objections During Deposition_______________________________ 225

404.09 DISCOVERY DEPOSITIONS COMPARED TO TESTIMONY DEPOSITIONS ______ 226 

405 INTERROGATORIES____________________________________________ 229

405.01 WHEN AND BY WHOM SERVED __________________________________ 229 

405.02 SCOPE ______________________________________________________ 229 

405.03 LIMIT ON NUMBER ____________________________________________ 229 

405.03(a) Description of Limit ______________________________________ 229

405.03(b) Application of Limit: Sets of Interrogatories ___________________ 230

405.03(c) Application of Limit: Multiple Marks, Etc. ____________________ 230

405.03(d) Application of Limit: Counting Interrogatories_________________ 231

405.03(e) Remedy for Excessive Interrogatories_________________________ 233

405.04 RESPONSES TO INTERROGATORIES ________________________________ 235 

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405.04(a) Time for Service of Responses_______________________________ 235

405.04(b) Nature of Responses ______________________________________ 236

405.04(c) Signature of Responses ____________________________________ 237

406 REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS ____ 238

406.01 WHEN AND BY WHOM SERVED __________________________________ 238 

406.02 SCOPE ______________________________________________________ 238 

406.03 ELEMENTS OF REQUEST FOR PRODUCTION; PLACE OF PRODUCTION ______ 239 

406.04 RESPONSES TO REQUESTS FOR PRODUCTION ________________________ 240 

406.04(a) Time for Service of Responses_______________________________ 240

406.04(b) Nature of Responses ______________________________________ 241

407 REQUESTS FOR ADMISSIONS ___________________________________ 241

407.01 WHEN AND BY WHOM SERVED __________________________________ 241 

407.02 SCOPE AND NATURE OF REQUESTS FOR ADMISSION ___________________ 242 

407.03 RESPONSES TO REQUESTS FOR ADMISSION __________________________ 242 

407.03(a) Time for Service of Responses_______________________________ 242

407.03(b) Nature of Responses ______________________________________ 243

407.03(c) Signature of Responses ____________________________________ 244

407.04 EFFECT OF ADMISSION _________________________________________ 244 

408 DUTIES TO COOPERATE, SEARCH RECORDS, SUPPLEMENT _____ 245

408.01 DUTY TO COOPERATE __________________________________________ 245 

408.02 DUTY TO SEARCH RECORDS _____________________________________ 246 

408.03 DUTY TO SUPPLEMENT DISCOVERY RESPONSE_______________________ 246 

409 FILING DISCOVERY REQUESTS AND RESPONSES WITH BOARD __ 247

410 ASSERTING OBJECTIONS TO REQUESTS FOR DISCOVERY; MOTIONS 

ATTACKING _______________________________________________________ 248

REQUESTS FOR DISCOVERY________________________________________ 248

411 REMEDY FOR FAILURE TO PROVIDE DISCOVERY _______________ 249

411.01 INTERROGATORIES OR REQUESTS FOR PRODUCTION___________________ 249 

411.02 REQUESTS FOR ADMISSION ______________________________________ 250 

411.03 DISCOVERY DEPOSITIONS _______________________________________ 250 

411.04 DISCOVERY SANCTIONS ________________________________________ 251 

412 PROTECTIVE ORDERS _________________________________________ 251

412.01 IN GENERAL _________________________________________________ 251 

412.02 PROTECTIVE ORDER REGARDING CONFIDENTIAL AND TRADE SECRET 

INFORMATION ______________________________________________________ 252 

412.02(a) Upon Motion ____________________________________________ 252

412.02(b) Upon Stipulation _________________________________________ 252

412.02(c) In Camera Inspection _____________________________________ 253

412.02(d) Contents of Protective Order _______________________________ 253

412.03 SIGNATURE OF PROTECTIVE ORDER _______________________________ 255 

412.04 FILING CONFIDENTIAL MATERIALS WITH BOARD ____________________ 255 

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412.05 HANDLING OF CONFIDENTIAL MATERIALS BY BOARD _________________ 257 

413 TELEPHONE AND PRE-TRIAL CONFERENCES ___________________ 257

414 SELECTED DISCOVERY GUIDELINES ___________________________ 257

CHAPTER 500 

STIPULATIONS AND MOTIONS 

501 STIPULATIONS_________________________________________________ 265

501.01 IN GENERAL _________________________________________________ 265 

501.02 FILING STIPULATIONS __________________________________________ 265 

501.03 FORM OF STIPULATIONS ________________________________________ 266 

502 MOTIONS--IN GENERAL ________________________________________ 266

502.01 AVAILABLE MOTIONS__________________________________________ 266 

502.02 FORM OF MOTIONS AND BRIEFS ON MOTIONS _______________________ 268 

502.02(a) Form of Motions _________________________________________ 269

502.02(b) Briefs on Motions ________________________________________ 270

502.02(c) Confidential Information___________________________________ 272

502.03 ORAL HEARINGS ON MOTIONS ___________________________________ 273 

502.04 DETERMINATION OF MOTIONS ___________________________________ 273 

502.05 ATTORNEYS' FEES, ETC., ON MOTIONS _____________________________ 274 

502.06 TELEPHONE AND PRE-TRIAL CONFERENCES_________________________ 275 

502.06(a) Telephone Conferences ____________________________________ 275

502.06(b) Pre-trial Conferences _____________________________________ 277

502.07 FED. R. CIV. P. 11 APPLICABLE __________________________________ 278 

503 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM _________ 278

503.01 TIME FOR FILING______________________________________________ 278 

503.02 NATURE OF MOTION ___________________________________________ 279 

503.03 LEAVE TO AMEND DEFECTIVE PLEADING___________________________ 280 

503.04 MATTERS OUTSIDE THE PLEADING SUBMITTED ON MOTION TO DISMISS ___ 281 

504 MOTION FOR JUDGMENT ON THE PLEADINGS __________________ 282

504.01 TIME FOR FILING______________________________________________ 282 

504.02 NATURE OF MOTION ___________________________________________ 282 

504.03 MATTERS OUTSIDE THE PLEADINGS SUBMITTED ON MOTION FOR JUDGMENT ON

__________________________________________________________________ 283 

PLEADINGS ________________________________________________________ 283 

505 MOTION FOR A MORE DEFINITE STATEMENT __________________ 284

505.01 NATURE OF MOTION ___________________________________________ 284 

505.02 TIME FOR FILING______________________________________________ 285 

505.03 FAILURE TO OBEY ORDER FOR MORE DEFINITE STATEMENT ____________ 285 

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506 MOTION TO STRIKE MATTER FROM PLEADING_________________ 285

506.01 NATURE OF MOTION ___________________________________________ 285 

506.02 TIME FOR FILING______________________________________________ 286 

506.03 EXHIBITS ATTACHED TO PLEADINGS ______________________________ 287 

507 MOTION TO AMEND PLEADING ________________________________ 287

507.01 IN GENERAL _________________________________________________ 287 

507.02 AMENDMENTS--GENERAL RULE—FED. R. CIV. P. 15(A)_______________ 289 

507.02(a) Timing of Motion to Amend Pleading – In General ______________ 291

507.02(b) Timing of Motion to Amend to Add Counterclaim _______________ 293

507.03 AMENDMENTS TO CONFORM TO THE EVIDENCE -- FED. R. CIV. P. 15(B)___ 294 

507.03(a) During Trial After Objection to Trial Evidence _________________ 294

507.03(b) To Add Issues Tried by Express or Implied Consent _____________ 294

508 MOTION FOR DEFAULT JUDGMENT FOR FAILURE TO ANSWER _ 295

509 MOTION TO EXTEND TIME; MOTION TO REOPEN TIME _________ 296

509.01 NATURE OF MOTIONS __________________________________________ 298 

509.01(a) Motions to Extend Time____________________________________ 298

509.01(b) Motions to Reopen Time ___________________________________ 300

509.01(b)(1) In General __________________________________________ 300 

509.01(b)(2) To Introduce Newly Discovered Evidence_________________ 302 

509.02 FORM AND DETERMINATION OF MOTIONS TO EXTEND OR REOPEN _______ 303 

510 MOTION TO SUSPEND; MOTION TO RESUME____________________ 305

510.01 IN GENERAL _________________________________________________ 306 

510.02 SUSPENSION PENDING OUTCOME OF ANOTHER PROCEEDING; RESUMPTION 306 

510.02(a) Suspension______________________________________________ 306

510.02(b) Resumption _____________________________________________ 309

510.03 SUSPENSION FOR OTHER REASONS; RESUMPTION ____________________ 309 

510.03(a) Suspension______________________________________________ 309

510.03(b) Resumption _____________________________________________ 313

511 MOTION TO CONSOLIDATE ____________________________________ 314

512 MOTION TO JOIN OR SUBSTITUTE______________________________ 316

512.01 ASSIGNMENT OF MARK_________________________________________ 316 

512.02 CHANGE OF NAME ____________________________________________ 318 

512.03 ISSUANCE OF REGISTRATION TO ASSIGNEE, OR IN NEW NAME___________ 319 

512.04 MISIDENTIFICATION ___________________________________________ 321 

513 MOTION TO WITHDRAW AS REPRESENTATIVE; PETITION TO 

DISQUALIFY _______________________________________________________ 321

513.01 MOTION TO WITHDRAW AS REPRESENTATIVE _______________________ 321 

513.02 PETITION TO DISQUALIFY _______________________________________ 324 

514 MOTION TO AMEND APPLICATION OR REGISTRATION _________ 325

514.01 IN GENERAL _________________________________________________ 325 

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514.02 AMENDMENT WITH CONSENT____________________________________ 327 

514.03 AMENDMENT WITHOUT CONSENT ________________________________ 328 

514.04 AMENDMENT TO ALLEGE USE; STATEMENT OF USE___________________ 330 

515 MOTION TO REMAND APPLICATION TO EXAMINING ATTORNEY 330

516 MOTION TO DIVIDE APPLICATION OR REGISTRATION__________ 332

517 MOTION TO STRIKE BRIEF ON MOTION ________________________ 333

518 MOTION FOR RECONSIDERATION OF DECISION ON MOTION____ 333

519 MOTION FOR LEAVE TO SERVE ADDITIONAL INTERROGATORIES

____________________________________________________________________ 335

520 MOTION TO TAKE FOREIGN DEPOSITION ORALLY _____________ 336

521 MOTION TO QUASH NOTICE OF DEPOSITION ___________________ 337

522 MOTION FOR ORDER RE MANNER OR PLACE OF DOCUMENT 

PRODUCTION ______________________________________________________ 339

523 MOTION TO COMPEL DISCOVERY______________________________ 339

523.01 IN GENERAL _________________________________________________ 339 

523.02 SPECIAL REQUIREMENTS FOR MOTION _____________________________ 341 

523.03 TIME FOR FILING MOTION ______________________________________ 342 

523.04 FAILURE TO FILE MOTION TO COMPEL _____________________________ 343 

524 MOTION TO TEST SUFFICIENCY OF RESPONSE TO ADMISSION 

REQUEST __________________________________________________________ 343

524.01 IN GENERAL _________________________________________________ 343 

524.02 SPECIAL REQUIREMENTS FOR MOTION _____________________________ 344 

524.03 TIME FOR FILING MOTION_______________________________________ 345 

524.04 FAILURE TO FILE MOTION_______________________________________ 345 

525 MOTION TO WITHDRAW OR AMEND ADMISSION _______________ 345

526 MOTION FOR A PROTECTIVE ORDER ___________________________ 346

527 MOTION FOR SANCTIONS ______________________________________ 348

527.01 MOTION FOR DISCOVERY SANCTIONS______________________________ 348 

527.01(a) For Failure to Comply With Board Discovery Order_____________ 348

527.01(b) If Party Says It Will Not Respond to Discovery Request___________ 350

527.01(c) Untimely Response to Discovery Requests _____________________ 351

527.01(d) In the Case of Requests for Admission ________________________ 352

527.01(e) Estoppel Sanction ________________________________________ 352

527.02 MOTION FOR FED. R. CIV. P. 11 SANCTIONS ________________________ 353 

527.03 INHERENT AUTHORITY TO SANCTION ______________________________ 357 

528 MOTION FOR SUMMARY JUDGMENT ___________________________ 358

528.01 GENERAL NATURE OF MOTION___________________________________ 359 

528.02 TIME FOR FILING MOTION ______________________________________ 363 

528.03 SUSPENSION PENDING DETERMINATION OF MOTION __________________ 364 

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528.04 MISCAPTIONED MOTION ________________________________________ 366 

528.05 SUMMARY JUDGMENT EVIDENCE _________________________________ 367 

528.05(a) In General ______________________________________________ 367

528.05(b) Affidavits and Accompanying Exhibits ________________________ 368

528.05(c) Discovery Responses ______________________________________ 370

528.05(d) Registrations ____________________________________________ 370

528.05(e) Printed Publications and Official Records _____________________ 371

528.05(f) Testimony from Another Proceeding __________________________ 373

528.06 REQUEST FOR DISCOVERY TO RESPOND TO SUMMARY JUDGMENT________ 373 

528.07 UNPLEADED ISSUE ____________________________________________ 376 

528.07(a) Not Basis for Entering Summary Judgment ____________________ 376

528.07(b) Not Defense Against Summary Judgment ______________________ 377

528.08 ENTRY OF SUMMARY JUDGMENT IN FAVOR OF NONMOVING PARTY ______ 378 

529 MOTION TO OFFER DISCOVERY DEPOSITION OF SELF OR 

NONPARTY ________________________________________________________ 378

530 MOTION TO USE TESTIMONY FROM ANOTHER PROCEEDING ___ 379

531 MOTION THAT DEPOSITION UPON WRITTEN QUESTIONS BE TAKEN 

ORALLY ___________________________________________________________ 381

532 MOTION TO STRIKE NOTICE OF RELIANCE_____________________ 382

533 MOTION TO STRIKE TRIAL TESTIMONY DEPOSITION ___________ 383

533.01 ON GROUND OF UNTIMELINESS __________________________________ 383 

533.02 ON GROUND OF IMPROPER OR INADEQUATE NOTICE __________________ 384 

533.03 WHEN MOTION TO STRIKE SHOULD NOT BE FILED ___________________ 385 

534 MOTION FOR JUDGMENT FOR PLAINTIFF'S FAILURE TO PROVE 

CASE ______________________________________________________________ 385

534.01 IN GENERAL _________________________________________________ 385 

534.02 MOTION FOR JUDGMENT UNDER TRADEMARK RULE 2.132(A) ___________ 386 

534.03 MOTION FOR JUDGMENT UNDER TRADEMARK RULE 2.132(B) ___________ 389 

534.04 MOTION UNDER FED. R. CIV. P. 41(B) OR 50(A) NOT AVAILABLE _______ 390 

535 MOTION FOR ORDER TO SHOW CAUSE UNDER TRADEMARK RULE 

2.134(B) ____________________________________________________________ 390

536 MOTION FOR ORDER TO SHOW CAUSE UNDER TRADEMARK RULE 

2.128(A)(3) __________________________________________________________ 391

537 MOTION FOR LEAVE TO EXCEED PAGE LIMIT FOR BRIEF ON CASE

____________________________________________________________________ 392

538 MOTION FOR LEAVE TO FILE AMICUS BRIEF ___________________ 394

539 MOTION TO STRIKE BRIEF ON CASE____________________________ 395

540 MOTION FOR AUGMENTED PANEL HEARING ___________________ 396

541 MOTION TO CHANGE ORAL HEARING DATE; FOR ADDITIONAL 

TIME ______________________________________________________________ 397

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541.01 MOTION TO CHANGE ORAL HEARING DATE _________________________ 397 

541.02 MOTION FOR ADDITIONAL TIME FOR ORAL ARGUMENT________________ 398 

542 MOTION FOR LEAVE TO AUDIOTAPE ORAL HEARING___________ 399

543 MOTION FOR RECONSIDERATION OF FINAL DECISION _________ 399

544 MOTION FOR RELIEF FROM FINAL JUDGMENT _________________ 400

CHAPTER 600 

WITHDRAWAL; SETTLEMENT 

601 WITHDRAWAL BY OPPOSITION OR CANCELLATION PLAINTIFF_ 404

601.01 WITHDRAWAL BY OPPOSER _____________________________________ 404 

601.02 WITHDRAWAL BY PETITIONER ___________________________________ 405 

601.03 EFFECT OF MOTION FOR JUDGMENT _______________________________ 406 

602 WITHDRAWAL BY OPPOSITION OR CANCELLATION DEFENDANT 406

602.01 WITHDRAWAL BY APPLICANT____________________________________ 406 

602.02 WITHDRAWAL BY RESPONDENT __________________________________ 410 

602.02(a) Surrender or Voluntary Cancellation of Registration_____________ 410

602.02(b) Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70

________________________________________________________________ 413

603 WITHDRAWAL BY INTERFERENCE OR CONCURRENT USE 

APPLICANT ________________________________________________________ 417

604 CONSENT TO JUDGMENT_______________________________________ 419

605 SETTLEMENT__________________________________________________ 420

605.01 IN GENERAL _________________________________________________ 420 

605.02 SUSPENSION FOR SETTLEMENT NEGOTIATIONS ______________________ 420 

605.03 SETTLEMENT AGREEMENTS _____________________________________ 420 

605.03(a) In General ______________________________________________ 420

605.03(b) With Amendment of Subject Application or Registration __________ 421

605.03(c) With Amendment of Plaintiff's Pending Application______________ 423

605.03(d) Breach of Settlement Agreement _____________________________ 423

605.03(e) Effect of Judgment Based Upon Agreement ____________________ 424

605.03(f) Consent Orders __________________________________________ 424

606 EFFECT ON COUNTERCLAIM___________________________________ 425

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CHAPTER 700 

TRIAL PROCEDURE AND 

INTRODUCTION OF EVIDENCE 

701 TIME OF TRIAL ________________________________________________ 426

702 MANNER OF TRIAL AND INTRODUCTION OF EVIDENCE – IN 

GENERAL__________________________________________________________ 429

703 TAKING AND INTRODUCING TESTIMONY_______________________ 431

703.01 ORAL TESTIMONY DEPOSITIONS__________________________________ 431 

703.01(a) In General ______________________________________________ 431

703.01(b) Form of Testimony _______________________________________ 432

703.01(c) Time for Taking Testimony _________________________________ 434

703.01(d) Time and Place of Deposition _______________________________ 434

703.01(e) Notice of Deposition ______________________________________ 435

703.01(f) Securing Attendance of Unwilling Adverse Party or Nonparty______ 437

703.01(f)(1) In General __________________________________________ 437 

703.01(f)(2) Unwilling Witness Residing in United States_______________ 438 

703.01(f)(3) Unwilling Witness Residing in Foreign Country ____________ 439 

703.01(g) Persons Before Whom Depositions May be Taken _______________ 439

703.01(h) Examination of Witnesses __________________________________ 441

703.01(i) Form of Deposition and Exhibits _____________________________ 444

703.01(j) Signature of Deposition by Witness ___________________________ 447

703.01(k) Certification and Filing of Deposition ________________________ 448

703.01(l) Testimony Deposition Must be Filed __________________________ 450

703.01(m) Service of Deposition _____________________________________ 450

703.01(n) Correction of Errors in Deposition___________________________ 451

703.01(o) Objections to Testimony Depositions _________________________ 453

703.01(p) Confidential or Trade Secret Material ________________________ 453

703.02 TESTIMONY DEPOSITIONS ON WRITTEN QUESTIONS___________________ 454 

703.02(a) Depositions on Written Questions: When Available _____________ 454

703.02(b) Depositions on Written Questions: Before Whom Taken. _________ 455

703.02(c) Depositions on Written Questions: When Taken ________________ 455

703.02(d) Depositions on Written Questions: Place of Deposition __________ 456

703.02(e) Depositions on Written Questions: Notice of Deposition__________ 457

703.02(f) Depositions on Written Questions: Securing Attendance of________ 458

Unwilling Witness _________________________________________________ 458

703.02(g) Depositions on Written Questions: Examination of Witness _______ 458

703.02(h) Depositions on Written Questions: Form, Signature and _________ 460

Certification of Deposition __________________________________________ 460

703.02(i) Depositions on Written Questions: Service, Correction and Filing __ 461

of Deposition_____________________________________________________ 461

703.02(j) Testimony Depositions on Written Questions Must be Filed________ 462

703.02(k) Depositions on Written Questions: Objections to Deposition ______ 462

703.02(l) Depositions on Written Questions: Confidential or Trade Secret ___ 463

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Material_________________________________________________________ 463

703.02(m) Depositions on Written Questions: Utility ____________________ 463

704 INTRODUCING OTHER EVIDENCE ______________________________ 464

704.01 IN GENERAL _________________________________________________ 464 

704.02 NOTICE OF RELIANCE – GENERALLY ______________________________ 464 

704.03 APPLICATIONS AND REGISTRATIONS_______________________________ 464 

704.03(a) Subject of Proceeding _____________________________________ 464

704.03(b) Not Subject of Proceeding – In General _______________________ 465

704.03(b)(1) Registration Not Subject of Proceeding ___________________ 466 

704.03(b)(1)(A) Registration Owned by Party ______________________ 466 

704.03(b)(1)(B) Third-Party Registration __________________________ 473 

704.03(b)(2) Application Not Subject of Proceeding ___________________ 478 

704.04 STATEMENTS AND THINGS IN APPLICATION OR REGISTRATION __________ 479 

704.05 EXHIBITS TO PLEADINGS OR BRIEFS _______________________________ 482 

704.05(a) Exhibits to Pleadings______________________________________ 482

704.05(b) Exhibits to Briefs _________________________________________ 483

704.06 STATEMENTS IN PLEADINGS OR BRIEFS ____________________________ 484 

704.06(a) Statements in Pleadings ___________________________________ 484

704.06(b) Statements in Briefs_______________________________________ 484

704.07 OFFICIAL RECORDS____________________________________________ 485 

704.08 PRINTED PUBLICATIONS ________________________________________ 488 

704.09 DISCOVERY DEPOSITIONS _______________________________________ 493 

704.10 INTERROGATORY ANSWERS; ADMISSIONS __________________________ 497 

704.11 PRODUCED DOCUMENTS________________________________________ 502 

704.12 JUDICIAL NOTICE _____________________________________________ 505 

704.12(a) Kind of Fact That May be Judicially Noticed ___________________ 505

704.12(b) When Taken_____________________________________________ 507

704.12(c) Opportunity to be Heard ___________________________________ 507

704.12(d) Time of Taking Notice _____________________________________ 508

704.13 TESTIMONY FROM ANOTHER PROCEEDING__________________________ 508 

705 STIPULATED EVIDENCE________________________________________ 509

706 NONCOMPLYING EVIDENCE ___________________________________ 510

707 OBJECTIONS TO EVIDENCE ____________________________________ 510

707.01 IN GENERAL _________________________________________________ 510 

707.02 OBJECTIONS TO NOTICES OF RELIANCE ____________________________ 511 

707.02(a) In General ______________________________________________ 511

707.02(b) On Procedural Grounds ___________________________________ 512

707.02(b)(1) On Ground of Untimeliness ____________________________ 513 

707.02(b)(2) On Other Procedural Grounds __________________________ 513 

707.02(c) On Substantive Grounds ___________________________________ 514

707.03 OBJECTIONS TO TRIAL TESTIMONY DEPOSITIONS_____________________ 515 

707.03(a) In General ______________________________________________ 515

707.03(b) On Procedural Grounds ___________________________________ 516

707.03(b)(1) On Ground of Untimeliness ____________________________ 516 

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707.03(b)(2) On Ground of Improper or Inadequate Notice ______________ 516 

707.03(c) On Other Procedural Grounds and on Substantive Grounds _______ 518

707.03(d) Refusal to Answer Deposition Question _______________________ 523

707.04 WAIVER OF OBJECTION_________________________________________ 524 

CHAPTER 800 

BRIEFS ON CASE, ORAL HEARING, 

FINAL DECISION 

801 BRIEFS ON THE CASE __________________________________________ 526

801.01 IN GENERAL _________________________________________________ 526 

801.02 TIME FOR FILING______________________________________________ 526 

801.02(a) Plaintiff's Main Brief______________________________________ 527

801.02(b) Defendant's Main Brief ____________________________________ 527

801.02(c) Plaintiff's Reply Brief _____________________________________ 528

801.02(d) Reply Brief for Defendant Not Permitted ______________________ 528

801.02(e) Special Situations ________________________________________ 528

801.03 FORM AND CONTENTS OF BRIEF __________________________________ 529 

801.04 AMICUS BRIEFS_______________________________________________ 532 

801.05 MOTION TO STRIKE BRIEF ON CASE _______________________________ 532 

802 ORAL HEARING________________________________________________ 533

802.01 IN GENERAL _________________________________________________ 533 

802.02 REQUEST FOR ORAL HEARING ___________________________________ 534 

802.03 TIME AND PLACE OF HEARING ___________________________________ 534 

802.04 BEFORE WHOM HELD __________________________________________ 535 

802.05 LENGTH OF ORAL ARGUMENT ___________________________________ 536 

802.06 AUDIOTAPING AND VIDEOTAPING_________________________________ 537 

802.07 VISUAL AIDS, ETC. ____________________________________________ 537 

802.08 NATURE OF HEARING __________________________________________ 538 

803 FINAL DECISION _______________________________________________ 538

804 REQUEST FOR REHEARING, RECONSIDERATION, OR 

MODIFICATION OF FINAL DECISION _______________________________ 539

805 FINAL DECISION REMAND TO EXAMINING ATTORNEY__________ 539

806 TERMINATION OF PROCEEDING _______________________________ 540

807 STATUS OF APPLICATION AFTER PROCEEDING_________________ 542

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CHAPTER 900 

REVIEW OF DECISION OF BOARD 

901 APPEALS--IN GENERAL ________________________________________ 543

901.01 AVENUES OF APPEAL __________________________________________ 545 

901.02 WHAT MAY BE APPEALED ______________________________________ 546 

901.02(a) Final Decision Versus Interlocutory Decision __________________ 546

901.02(b) Judgment Subject to Establishment of Constructive Use __________ 548

902 APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT ___ 549

902.01 NOTICE OF APPEAL ____________________________________________ 549 

902.02 TIME FOR FILING NOTICE OF APPEAL, CROSS-APPEAL _________________ 551 

902.03 APPEAL TO FEDERAL CIRCUIT WAIVES APPEAL BY CIVIL ACTION________ 554 

902.04 NOTICE OF ELECTION TO HAVE REVIEW BY CIVIL ACTION _____________ 554 

902.05 INFORMATION CONCERNING TIMES SPECIFIED IN 37 CFR § 2.145________ 555 

902.06 CERTIFIED LIST_______________________________________________ 556 

902.07 APPEAL BRIEFS, APPENDIX, ETC. _________________________________ 557 

902.08 SPECIAL PROVISIONS FOR EX PARTE CASES _________________________ 557 

903 APPEAL BY CIVIL ACTION _____________________________________ 558

903.01 NOTICE OF CIVIL ACTION _______________________________________ 558 

903.02 PARTIES TO AND SERVICE OF CIVIL ACTION _________________________ 558 

903.03 PLACE OF CIVIL ACTION ________________________________________ 559 

903.04 TIME FOR FILING CIVIL ACTION, CROSS-ACTION _____________________ 560 

903.05 INFORMATION CONCERNING TIMES SPECIFIED IN 37 CFR § 2.145________ 561 

903.06 CIVIL ACTION PRECLUDED BY APPEAL TO FEDERAL CIRCUIT ___________ 562 

903.07 SPECIAL PROVISIONS FOR EX PARTE CASES _________________________ 562 

904 ACCESS TO RECORD DURING APPEAL __________________________ 563

904.01 ACCESS DURING APPEAL TO FEDERAL CIRCUIT ______________________ 563 

904.02 ACCESS DURING APPEAL BY CIVIL ACTION _________________________ 563 

905 PETITION TO THE DIRECTOR __________________________________ 564

906 STANDARDS OF REVIEW OF BOARD DECISIONS_________________ 567

906.01 APPEAL TO FEDERAL CIRCUIT OR BY CIVIL ACTION___________________ 567 

906.02 PETITION TO DIRECTOR_________________________________________ 569 

CHAPTER 1000 

INTERFERENCES 

1001 IN GENERAL __________________________________________________ 570

1002 DECLARATION OF INTERFERENCE ____________________________ 571

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1003 INSTITUTION OF INTERFERENCE _____________________________ 573

1004 ISSUES IN INTERFERENCE ____________________________________ 575

1005 BURDEN OF PROOF ___________________________________________ 576

1006 ADDITION OF PARTY__________________________________________ 576

1007 CONDUCT OF PROCEEDING ___________________________________ 577

CHAPTER 1100 

CONCURRENT USE PROCEEDINGS

1101 IN GENERAL __________________________________________________ 580

1101.01 NATURE OF PROCEEDING ______________________________________ 581 

1101.02 CONTEXT FOR USPTO DETERMINATION OF CONCURRENT RIGHTS ______ 582 

1102 GENERATION OF PROCEEDING________________________________ 583

1102.01 MEANS OF GENERATION _______________________________________ 583 

1102.02 BASES FOR CONCURRENT REGISTRATION – BOARD DETERMINATION; COURT

__________________________________________________________________ 584 

DETERMINATION ____________________________________________________ 584 

1103 REQUIREMENTS FOR CONCURRENT USE APPLICATION________ 585

1103.01 APPLICATION BASED ON BOARD DETERMINATION ___________________ 588 

1103.01(a) Application Must Assert Use in Commerce____________________ 588

1103.01(b) Jurisdictional Requirement ________________________________ 589

1103.01(c) Application Must Meet Requirements Applicable to Non-Restricted 

Application ______________________________________________________ 590

1103.01(d) Application Must Identify Nature and Extent of Restriction Sought_ 591

1103.01(d)(1) In General _________________________________________ 591 

1103.01(d)(2) Geographic Restrictions ______________________________ 591 

1103.01(d)(3) Mode of Use Restrictions _____________________________ 593 

1103.01(e) Application Must Identify Excepted Users and Their Asserted Rights 594

1103.01(f) Other Requirements ______________________________________ 595

1103.02 APPLICATION BASED ON PRIOR BOARD DECISION ___________________ 596 

1103.03 APPLICATION BASED ON COURT DETERMINATION ___________________ 599 

1104 PARTIES TO PROCEEDING; INVOLVED APPLICATIONS, 

REGISTRATIONS ___________________________________________________ 601

1105 APPLICATIONS AND REGISTRATIONS NOT SUBJECT TO 

PROCEEDING ______________________________________________________ 603

1106 COMMENCEMENT OF PROCEEDING ___________________________ 605

1106.01 MARKING OF CONCURRENT USE APPLICATION _____________________ 605 

1106.02 PUBLICATION OF CONCURRENT USE APPLICATION; OPPOSITION PERIOD__ 606 

1106.03 OBTAINING INCLUDED APPLICATION AND REGISTRATION FILES ________ 607 

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1106.04 PREPARING CONCURRENT USE NOTICES___________________________ 607 

1106.05 LOCATING EXCEPTED USERS ___________________________________ 608 

1107 ANSWER; DEFAULT ___________________________________________ 609

1108 ISSUE IN CONCURRENT USE PROCEEDING; BURDEN OF PROOF 611

1109 CONDUCT OF PROCEEDING ___________________________________ 614

1110 SETTLEMENT PROVIDING FOR CONCURRENT REGISTRATION _ 618

1111 EFFECT OF ABANDONMENT OF INVOLVED APPLICATION______ 618

1112 EFFECT OF ADVERSE DECISION IN OPPOSITION OR 

CANCELLATION ___________________________________________________ 619

1113 "CONVERSION" OF OPPOSITION OR CANCELLATION PROCEEDING 

TO CONCURRENT USE PROCEEDING _______________________________ 619

1113.01 CONVERSION OF OPPOSITION PROCEEDING_________________________ 619 

1113.02 CONVERSION OF CANCELLATION PROCEEDING______________________ 621 

1114 ALTERATION OF RESTRICTIONS ON CONCURRENT REGISTRATION

____________________________________________________________________ 621

CHAPTER 1200 

EX PARTE APPEALS 

1201 PROPRIETY OF APPEAL _______________________________________ 623

1201.01 READINESS OF CASE FOR APPEAL________________________________ 623 

1201.02 PREMATURE FINAL ___________________________________________ 625 

1201.03 PREMATURE APPEAL__________________________________________ 626 

1201.04 COMPLIANCE WITH REQUIREMENTS NOT SUBJECT OF APPEAL _________ 627 

1201.05 APPEAL VERSUS PETITION _____________________________________ 628 

1202 FILING AN APPEAL____________________________________________ 631

1202.01 IN GENERAL ________________________________________________ 631 

1202.02 TIME FOR APPEAL____________________________________________ 632 

1202.03 NOTICE OF APPEAL ___________________________________________ 634 

1202.04 APPEAL FEE ________________________________________________ 635 

1202.05 MULTIPLE CLASS APPLICATIONS ________________________________ 636 

1203 APPEAL BRIEFS_______________________________________________ 637

1203.01 FORM OF BRIEF______________________________________________ 637 

1203.02 TIME FOR FILING BRIEF _______________________________________ 639 

1203.02(a) Applicant's Main Brief ___________________________________ 639

1203.02(b) Trademark Examining Attorney's Brief_______________________ 641

1203.02(c) Applicant's Reply Brief ___________________________________ 643

1203.02(d) Extension of Time for Filing Brief___________________________ 643

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1203.02(e) Material Submitted with Briefs _____________________________ 644

1203.02(f) Cases Which May Be Cited ________________________________ 644

1203.02(g) Waiver of Claim or Requirement in Brief _____________________ 645

1204 EFFECT OF REQUEST FOR RECONSIDERATION OF FINAL ACTION

____________________________________________________________________ 645

1205 AMENDMENT OF APPLICATION DURING APPEAL ______________ 648

1205.01 IN GENERAL ________________________________________________ 648 

1205.02 REQUEST TO DIVIDE __________________________________________ 651 

1206 AMENDMENT TO ALLEGE USE; STATEMENT OF USE ___________ 652

1206.01 AMENDMENT TO ALLEGE USE __________________________________ 652 

1206.02 STATEMENT OF USE __________________________________________ 654 

1207 SUBMISSION OF EVIDENCE DURING APPEAL___________________ 654

1207.01 GENERAL RULE--EVIDENCE SUBMITTED AFTER APPEAL UNTIMELY _____ 654 

1207.02 REQUEST TO REMAND FOR ADDITIONAL EVIDENCE __________________ 655 

1207.03 EVIDENCE CONSIDERED DUE TO ACTIONS OF NONOFFERING PARTY _____ 658 

1207.04 EVIDENCE FILED WITH TIMELY REQUEST FOR RECONSIDERATION ______ 659 

1207.05 SUBMISSION OF EVIDENCE UPON REMAND FOR NEW REFUSAL _________ 659 

1207.06 LETTER OF PROTEST EVIDENCE _________________________________ 660 

1208 TREATMENT OF EVIDENCE ___________________________________ 661

1208.01 EVIDENCE FROM NEXIS DATABASE OR PUBLICATIONS _______________ 663 

1208.02 THIRD-PARTY REGISTRATIONS __________________________________ 664 

1208.03 INTERNET MATERIAL _________________________________________ 665 

1208.04 JUDICIAL NOTICE ____________________________________________ 666 

1209 REMAND______________________________________________________ 667

1209.01 UPON BOARD'S OWN INITIATIVE ________________________________ 667 

1209.02 UPON REQUEST BY TRADEMARK EXAMINING ATTORNEY _____________ 671 

1209.03 UPON GRANTED LETTER OF PROTEST_____________________________ 672 

1209.04 UPON REQUEST BY APPLICANT__________________________________ 673 

1210 APPROVAL FOR PUBLICATION DURING APPEAL _______________ 674

1211 ABANDONMENT DURING APPEAL _____________________________ 674

1212 CANCELLATION OR ASSIGNMENT OF CITED REGISTRATION___ 675

1213 SUSPENSION OF APPEAL ______________________________________ 675

1214 CONSOLIDATION _____________________________________________ 678

1215 ALTERNATIVE POSITIONS ____________________________________ 679

1216 ORAL HEARING_______________________________________________ 680

1217 FINAL DECISION ______________________________________________ 683

1218 REOPENING (AMENDMENT, ETC., AFTER FINAL DECISION) ____ 684

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1219 REVIEW OF FINAL DECISION__________________________________ 686

1219.01 BY REQUEST FOR RECONSIDERATION_____________________________ 686 

1219.02 BY APPEAL _________________________________________________ 687 

APPENDIX OF FORMS 

APPENDIX OF FORMS ______________________________________________ 688

CERTIFICATE OF MAILING SUGGESTED FORMAT ____________________________ 688 

CERTIFICATE OF TRANSMISSION SUGGESTED FORMAT _______________________ 688 

CERTIFICATE OF SERVICE SUGGESTED FORMAT ____________________________ 689 

DESIGNATION OF DOMESTIC REPRESENTATIVE _____________________________ 689 

SAMPLE TRIAL ORDER -- STANDARD_____________________________________ 689 

SAMPLE TRIAL ORDER WITH A COUNTERCLAIM ____________________________ 690 

TERMS OF SUGGESTED PROTECTIVE AGREEMENT UPON STIPULATION ___________ 691 

SAMPLE BRIEFING SCHEDULE FOR A CASE WITH A COUNTERCLAIM ______________ 698 

SAMPLE TRIAL ORDER FOR INTERFERENCE ________________________________ 699 

SAMPLE TRIAL ORDERS FOR CONCURRENT USE ____________________________ 701 

NOTICE OF APPEAL – SUGGESTED FORMAT________________________________ 703 

TABLE OF AUTHORITIES 

TABLE OF AUTHORITIES ___________________________________________ 705

CASES ____________________________________________________________ 705 

STATUTES _________________________________________________________ 742 

RULES ____________________________________________________________ 743 

Federal Rules ____________________________________________________ 743

Federal Circuit Rules ____________________________________________ 743 

Federal Rules of Civil Procedure ___________________________________ 743 

Federal Rules of Evidence ________________________________________ 745 

Trademark Rules__________________________________________________ 746

OTHER AUTHORITIES _________________________________________________ 753 

Articles _________________________________________________________ 753

Treatises ________________________________________________________ 755

Official Publications _______________________________________________ 756

Federal Register ________________________________________________ 756 

Official Gazette_________________________________________________ 756 

Trademark Manual of Examining Procedure __________________________ 757 

Miscellaneous ____________________________________________________ 758

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SUBJECT MATTER INDEX 

SUBJECT MATTER INDEX __________________________________________ 759

xxiii 
Chapter 100 

GENERAL INFORMATION 

 101 Applicable Authority 

101.01 Statute and Rules of Practice 

All proceedings before the Trademark Trial and Appeal Board ("TTAB" or "Board") are 

governed by the Lanham Trademark Act of 1946, as amended, ("Act of 1946" or "Act"), 15 

U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the 

Trademark Rules of Practice), which may be found in Parts 2 and 7 of Title 37 of the Code of 

Federal Regulations ("CFR"); the rules pertaining to assignments in trademark cases, which may 

be found in Parts 3 and 7 of 37 CFR; and the rules relating to representation of others before the 

United States Patent and Trademark Office which may be found in Part 10 of 37 CFR. The 

United States Patent and Trademark Office (“USPTO” or “Office”) rules governing procedure in 

inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of 

Civil Procedure, with modifications due primarily to the administrative nature of Board 

proceedings.1

 

A copy of Title 37 of the CFR may be obtained at a nominal cost from the U.S. Government 

Printing Office. Title 37 of the CFR may also be found on the Internet at the Government 

Printing Office web site at: www.access.gpo.gov/nara/cfr or at the USPTO web site at: 

www.uspto.gov. 

Information regarding proposed and final rule changes to Title 37 is also posted on the Office 

web site at www.uspto.gov. 

101.02 Federal Rules 

Inter partes proceedings before the Board are also governed by the Federal Rules of Civil 

Procedure ("Fed. R. Civ. P."), except as otherwise provided in the Trademark Rules of Practice, 

and "wherever applicable and appropriate";2 and by the Federal Rules of Evidence ("Fed. R. 

Evid.").3

 

 

1

 See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988). 

2

 See 37 CFR § 2.116(a). 

3

 See 37 CFR §§ 2.116(a), 2.120(a), and 2.122(a); Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1753 n.3

(Fed. Cir. 1998); and Cerveceria India Inc. v. Cervecevia Centroamericana, S.A., 10 USPQ2d 1064 (TTAB 1989), 

aff’d, Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989) (In

applying the burden of proof provisions of Fed. R. Evid. 301, the court stated “[t]he Federal Rules of Evidence 

generally apply to TTAB proceedings.”). 

100 - 1 
Chapter 100 

GENERAL INFORMATION

 

There is no provision in the Trademark Rules of Practice concerning the applicability of the 

Federal Rules of Evidence to ex parte appeals before the Board. However, certain of the 

principles embodied in the Federal Rules of Evidence are applied by the Board, in practice, in 

evaluating the probative value of evidence submitted in ex parte cases.4

 

101.03 Decisional Law

Proceedings before the Board are also governed, to a large extent, by precedential decisions in 

prior cases. These decisions include those of the Board itself, as well as the decisions of the 

Court of Appeals for the Federal Circuit (which determines appeals from decisions of the Board); 

the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal 

Circuit); and the Director of The United States Patent and Trademark Office (formerly the 

Commissioner of Patents and Trademarks), who determines petitions seeking review of Board 

actions on procedural matters. 

Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in 

the United States Patent Quarterly ("USPQ"), a periodical publication of The Bureau of National 

Affairs, Inc., Washington, D.C., and may also be found in Reed Elsevier, Inc.'s "LEXIS" legal 

database, and in the Intellectual Property Library of West Publishing Company's WESTLAW 

database. 

Decisions that are designated by the Board "citable as precedent" or "for publication in full" are 

citable as precedent. Decisions which are not so designated, or which are designated for 

publication only in digest form, are not citable authority.5

 A nonprecedential or digest decision 

will, however, be considered in determining issues of claim preclusion, issue preclusion, judicial 

estoppel, law of the case, or the like, provided that (1) a party to the pending Board proceeding, 

or its privy, was also a party to the prior proceeding, and (2) a complete copy of the decision is 

submitted.6

 

4

 See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (articles from general 

and business publications are not hearsay and are probative of descriptive usage); In re Broadway Chicken, Inc., 38

USPQ2d 1559, 1565 (TTAB 1996) (listings from telephone directories and Dun & Bradstreet databases are not

inadmissible hearsay); and In re American Olean Tile Co., 1 USPQ2d 1823, 1824 n.2 (TTAB 1986) (affidavit 

consisting of third-hand report by unidentified person is inadmissible hearsay). See also In re Foundry Products, 

Inc., 193 USPQ 565 (TTAB 1976). For further information concerning the treatment of evidence in Board ex parte 

proceedings, see TBMP § 1208 and authorities cited therein.

 

5

 See In re Polo International, Inc., 51 USPQ2d 1061, 1063 n.3 (TTAB 1999) (non-precedential case disregarded);

In re Catepillar Inc., 43 USPQ2d 1335, 1336 (TTAB 1997) citing General Mills Inc. v. Health Valley Foods, 24 

USPQ2d 1270, 1275 n.9 (TTAB 1992); and In re American Olean Tile Co., supra at 1825 n.3 (published digests do

not indicate the facts on which the determinations were based). See also Marcon, Ltd. v. Merle Norman Cosmetics, 

Inc., 221 USPQ 644, 645 n.4 (TTAB 1984) and Roberts Proprietaries, Inc. v. Rumby International, Inc., 212 USPQ

302, 303 (TTAB 1981). 

 

6

 See General Mills Inc. v. Health Valley Foods, supra. 

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101.04 Director’s Orders and Notices 

Occasionally, the Director of the United States Patent and Trademark Office or another USPTO 

official acting under the Director’s authority, publishes in the Official Gazette an Order or Notice 

relating to a particular Office policy, practice, procedure, or other such matter of interest to the 

public. Some of these Orders and Notices affect practice and procedure before the Trademark 

Trial and Appeal Board. Such notices are also posted on the Office’s web site at 

www.uspto.gov. 

102 Nature of Board Proceedings 

102.01 Jurisdiction of Board 

The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent 

and Trademark Office within the Office of General Counsel. The Board is empowered to 

determine only the right to register.7

 

The Board is not authorized to determine the right to use, nor may it decide broader questions of 

infringement or unfair competition.8

 

7

 See Sections 17, 18, 20, and 24 of the Act of 1946, 15 U.S.C. §§ 1067, 1068, 1070, and 1092. 

8

 See Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 62 USPQ2d 1857, 1858 (TTAB 2002), aff'd, 300

F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003) (no jurisdiction to decide issues arising under state dilution laws);

Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990) (cannot adjudicate unfair

competition issues); Carano v. Vina Concha Y Toro S.A., 67 USPQ2d 1149 (TTAB 2003) (no jurisdiction to

determine copyright infringement; opposer's claim that applicant neither owns nor is entitled to use mark was not 

separable from opposer's copyright claim); Ross v. Analytical Technology Inc., 51 USPQ2d 1269, 1270 n.2 (TTAB 

1999) (no jurisdiction over unfair competition claims); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771

n.5 (TTAB 1994) (no jurisdiction over claims of trademark infringement and unfair competition) aff'd (unpub'd), 

108 F.3d 1392 (Fed. Cir. 1997); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 

1992) (not empowered to render declaratory judgment); Andersen Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ

431, 432 n.5 (TTAB 1985) (may not entertain any claim based on Section 43(a) of the Act, 15 U.S.C. 1125(a));

Electronic Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 163-64 (TTAB 1984) (unfair competition

and Section 43(a) claims are outside the Board's jurisdiction); Hershey Foods Corp. v. Cerreta, 195 USPQ 246, 252 

(TTAB 1977) (determination of whether opposer is guilty of unfair business practices is not within the province of

the Board); Yasutomo & Co. v. Commercial Ball Pen Co., 184 USPQ 60, 61 (TTAB 1974) (no jurisdiction to

address anti-trust issues); and American-International Travel Service, Inc. v. AITS, Inc., 174 USPQ 175, 179 (TTAB 

1972) (no jurisdiction to determine whether opposer violated criminal statute). 

 But see Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1534 (Fed. Cir.

1992) (Board may have erred in stating that it lacked jurisdiction over equitable defenses which were based on

allegations of trademark infringement and unfair competition); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d

1316, 217 USPQ 641, 647 (Fed. Cir. 1983) (regarding Board's authority to consider an agreement, its construction, 

or its validity if necessary to decide the issues properly before it, including the issue of estoppel); and Knickerbocker 

Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417, 423 (CCPA 1972) (Board is not precluded from

passing on the validity of a copyright if it is necessary to do so in the course of the exercise of its statutory

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Similarly, the Board, being an administrative tribunal, has no authority to declare any portion of 

the Act of 1946, or any other act of Congress, unconstitutional.9

 

102.02 Types of Board Proceedings 

The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, 

cancellations, interferences, and concurrent use proceedings.

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a 

registration of a mark on the Principal Register. "Any person who believes that he would be 

damaged by the registration of a mark" may file an opposition thereto, but the opposition may be 

filed only as a timely response to the publication of the mark, under Section 12(a) of the Act, 15 

U.S.C. § 1062(a), in the Official Gazette of the United States Patent and Trademark Office.10 

A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing 

registration of a trademark. A petition for cancellation may only be filed after the issuance of the 

registration. A petition for cancellation may be filed by "any person who believes that he is or 

will be damaged by the registration" of the mark.11 

jurisdiction); M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) (contractual estoppel 

considered); Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1702 (TTAB 2000) (noting that by rule change effective 

August 5, 1999, the 1946 Act was amended to allow parties to bring dilution claims under Section 43(c) in

opposition and cancellation proceedings); and British-American Tobacco Co. v. Philip Morris Inc., 55 USPQ2d

1585, 1589 (TTAB 2000) (a claim under Article 8 of the Pan American Convention is within the jurisdiction of the 

Board since it pertains expressly to the registrability of marks and provides for the cancellation of registrations). 

 See also The Scotch Whiskey Association v. United States Distilled Products Co., 13 USPQ2d 1711, 1715 (TTAB 

1989), recon. denied, 17 USPQ2d 1240, 1243 (TTAB 1990) (Board cannot consider claims of unfair competition

standing alone, but can consider such claims in determining the registrability of a mark, that is, in determining a 

separate, properly pleaded ground for opposition or cancellation), dismissed, 18 USPQ2d 1391, 1394 (TTAB 1991) 

(where petitioner did not plead a separate ground on which to base the petition to cancel, petitioner's claims under 

Articles 10 and 10bis of the Paris Convention could not be considered), rev'd on other grounds, 952 F.2d 1317, 21

USPQ2d 1145 (Fed. Cir. 1991). 

9

 See Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (no authority to declare provisions of the 

Act unconstitutional nor to determine whether Section 2(a) is overbroad or vague), rev'd on other grounds, 284 F. 

Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003) and Zirco Corp. v. American Telephone and Telegraph Co., 21

USPQ2d 1542, 1544 (TTAB 1991) (no jurisdiction to determine whether Section 7(c) of the Act, the constructive 

use provision, violates the commerce clause of the constitution). See also, for example, Capital Speakers Inc. v. 

Capital Speakers Club of Washington, D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996) (no authority to

determine whether private activities rendered to members of private club constitute "commerce"). 

10 See Section 13 of the Act of 1946, 15 U.S.C. § 1063. 

11 See Sections 14 and 24 of the Act of 1946, 15 U.S.C. §§ 1064 and 1092. 

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An interference is a proceeding in which the Board determines which, if any, of the owners of 

conflicting applications (or of one or more applications and one or more registrations which are 

in conflict), is entitled to registration.12 The proceeding is declared by the Office only upon 

petition to the Director showing extraordinary circumstances therefor, that is, that the party who 

filed the petition would be unduly prejudiced without an interference.13 Ordinarily, the 

availability of an opposition or cancellation proceeding is deemed to prevent any undue 

prejudice from the unavailability of an interference proceeding.14 An interference that has been 

declared by the Director is not instituted by the Board until after all of the marks that are to be 

involved in the proceeding have been published in the Official Gazette for opposition.15 

A concurrent use proceeding is a proceeding in which the Board determines whether one or more 

applicants is entitled to a concurrent registration, that is, a registration with conditions and 

limitations, fixed by the Board, as to the mode or place of use of the applicant's mark or the 

goods and/or services on or in connection with which the mark is used (usually, a concurrent 

registration is restricted as to the territory which it covers).16 The proceeding may be generated 

only through the filing of an application for registration as a lawful concurrent user, and is 

instituted by the Board only after each of the one or more involved applications has been 

published for opposition in the Official Gazette, and all oppositions thereto (if any) have been 

withdrawn or dismissed.17 

The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining 

attorney's final refusal to register a mark in an application.18

 

12 See Section 18 of the Act, 15 U.S.C. § 1068. 

 

13 See Section 16 of the Act of 1946, 15 U.S.C. § 1066; 37 CFR § 2.91; and TBMP § 1002 (Declaration of

Interference). 

14 See 37 CFR § 2.91(a). 

15 See TBMP § 1003 (Institution of Interference). For further information concerning interference proceedings, see

TBMP chapter 1000. 

16 See TBMP § 1101.01 and authorities cited therein. 

17 See TBMP §§ 1102.01 (Means of Generation) and 1105 (Applications and Registrations not Subject to

Proceeding), and authorities cited therein. For further information concerning concurrent use proceedings, see 

TBMP chapter 1100. 

18 See Sections 12(b) and 20 of the Trademark Act, 15 U.S.C. §§ 1062(b) and 1070; 37 CFR §§ 2.141 and 2.142; 

and TBMP chapter 1200 (Ex Parte Appeals). See also, e.g., In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB

1994) citing In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986). 

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102.03 General Description of Board Proceedings 

An inter partes proceeding before the Board is similar to a civil action in a Federal district court. 

There are pleadings (at least in an opposition or cancellation proceeding); a wide range of 

possible motions; discovery; and briefs, followed by a decision on the case.19 However, because 

the Board is an administrative tribunal, its rules and procedures necessarily differ in some

respects from those prevailing in the Federal district courts.20 The principal difference is that 

proceedings before the Board are conducted in writing, and the Board's actions in a particular 

case are based upon the written record therein. For example, the Board does not preside at the 

taking of testimony. Rather, all testimony is taken out of the presence of the Board during the 

assigned testimony periods, and the written transcripts thereof, together with any exhibits 

thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need 

never come to the offices of the Board at all, unless the Board requests that the parties meet with 

the Board at its offices for a pre-trial conference pursuant to 37 CFR § 2.120(i)(2), or unless the 

party wishes to argue its case at oral hearing (an oral hearing is held only if requested by a party 

to the proceeding). 

An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving 

only the filing of briefs by the applicant and examining attorney, and, if requested by the 

applicant, an oral hearing. 

The Board includes both interlocutory attorneys and administrative trademark judges (known 

also as Board members). Interlocutory motions, requests, and other matters not actually or 

potentially dispositive of a proceeding may be acted upon by a single Board judge or by a single 

interlocutory attorney to whom such authority has been delegated.21 Decisions on the case, and 

on complex or contested motions that are potentially dispositive of the case, are rendered by a 

panel of at least three Board judges.22 Stipulations or consented (or uncontested) motions to 

dispose of the proceeding in a certain manner may be decided per curiam by the Board. 

 

 

19 See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988)

(USPTO rules governing the procedures are designed to approximate the proceedings in a courtroom trial). 

20 See Yamaha International Corp. v. Hoshino Gakki Co., supra at 1004. See also La Maur, Inc. v. Bagwells

Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976). Cf. TBMP §§ 502.01 (Available Motions) and 702 (Manner

of Trial and Introduction of Evidence). 

21 See 37 CFR § 2.127(c). 

22 See, e.g., 37 CFR §§ 2.129(a) and 2.142(e)(1). 

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103 Location and Address of Board 

The Board is located at 2900 Crystal Drive, Ninth Floor, Arlington, Virginia 22202-3514. The 

mailing address of the Board is Commissioner for Trademarks, 2900 Crystal Drive, Arlington, 

Virginia 22202-3514.23 

104 Business to be Conducted in Writing 

37 CFR § 2.191 All business with the Office should be transacted in writing. The personal 

appearance of applicants or their representatives at the Office is unnecessary. The action of the 

Office will be based exclusively on the written record. No attention will be paid to any alleged 

oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. 

All business with the Board should be transacted in writing. The personal attendance of parties 

or their attorneys or other authorized representatives at the offices of the Board is unnecessary, 

except in the case of a pre-trial conference as provided in 37 CFR § 2.120(i)(2), or upon oral 

argument at final hearing, if a party so desires, as provided in 37 CFR § 2.129. Decisions of the 

Board will be based exclusively on the written record before it.24 

 105 Contact With Board Personnel 

37 CFR § 10.93(b) In an adversary proceeding, including any inter partes proceeding before the 

Office, a practitioner shall not communicate, or cause another to communicate, as to the merits 

of the cause with a judge, official, or Office employee before whom the proceeding is pending, 

except: 

(1) In the course of official proceedings in the cause. 

(2) In writing if the practitioner promptly delivers a copy of the writing to opposing 

counsel or to the adverse party if the adverse party is not represented by a practitioner. 

(3) Orally upon adequate notice to opposing counsel or to the adverse party if the 

adverse party is not represented by a practitioner. 

 (4) As otherwise authorized by law. 

Parties or their attorneys or other authorized representatives may telephone the Board, or come to 

the offices of the Board, to inquire about the status of a case or to ask for procedural information, 

but not to discuss the merits of a case or of any particular issue. The telephone number of the 

23 Mail box designations (BOX TTAB) and fee notations (FEE – NO FEE) are no longer required.

24 Cf. In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm'r 1992) (regarding actions taken by examining 

attorneys); In re Merck & Co., 24 USPQ2d 1317, 1318 n.2 (Comm'r 1992) (regarding oral representation by Board

employee); and In re Investigacion Y Desarrollo de Cosmeticos S.A., 19 USPQ2d 1717 (Comm'r 1991).

 

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Board is (703) 308-9300. If an inquiry involves a particular case, the person making the inquiry 

should be prepared to give the number of the proceeding or application in question. 

 

106 Identification, Signature, and Form of Submissions 

106.01 Identification of Submissions 

A document filed in a proceeding before the Board should bear at its top the heading "IN THE 

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK 

TRIAL AND APPEAL BOARD," followed by the name and number of the inter partes 

proceeding (or, in the case of an ex parte appeal, the application) to which it relates.25 The 

document should also include a title describing its nature, e.g., "Notice of Opposition," 

"Answer," "Motion to Compel," "Brief in Opposition to Respondent's Motion for Summary 

Judgment," "Notice of Reliance." 

Documents filed in an application which is the subject of an inter partes proceeding before the 

Board should be filed with the Board, and should bear at the top of its first page both the 

application serial number, and the inter partes proceeding number and title. Similarly, requests 

under Section 7 of the Act, 15 U.S.C. § 1057, to amend, correct, or surrender a registration which 

is the subject of a Board inter partes proceeding, and any new power of attorney, designation of 

domestic representative, or change of address submitted in connection with such a registration, 

should be filed with the Board, and should bear at the top of its first page both the registration 

number, and the inter partes proceeding number and title.26 

106.02 Signature of Submissions 

37 CFR § 2.119(e) Every paper filed in an inter partes proceeding, and every request for an 

extension of time to file an opposition, must be signed by the party filing it, or by the party's 

attorney or other authorized representative, but an unsigned paper will not be refused 

consideration if a signed copy is submitted to the Patent and Trademark Office within the time 

limit set in the notification of this defect by the Office. 

37 CFR § 10.14(e) No individual other than those specified in paragraphs (a), (b), and (c) of this 

section will be permitted to practice before the Office in trademark cases. Any individual may 

appear in a trademark or other non-patent case in his or her own behalf. Any individual may 

appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or 

association of which he or she is an officer and which he or she is authorized to represent, if 

 

25 Cf. 37 CFR § 2.194.

26 Cf. 37 CFR § 2.194. 

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such firm, corporation, or association is a party to a trademark proceeding pending before the 

Office. 

37 CFR § 10.18(a) For all documents filed in the Office in patent, trademark, and other nonpatent matters, except for correspondence that is required to be signed by the applicant or party, 

each piece of correspondence filed by a practitioner in the Patent and Trademark Office must 

bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this 

chapter. 

 

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any 

paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying 

that- 

(1) All statements made therein of the party's own knowledge are true, all statements 

made therein on information and belief are believed to be true, and all statements made 

therein are made with the knowledge that whoever, in any matter within the jurisdiction 

of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers 

up by any trick, scheme, or device a material fact, or makes any false, fictitious or 

fraudulent statements or representations, or makes or uses any false writing or document 

knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be 

subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this 

paragraph may jeopardize the validity of the application or document, or the validity or 

enforceability of any patent, trademark registration, or certificate resulting therefrom; 

and 

(2) To the best of the party's knowledge, information and belief, formed after an inquiry 

reasonable under the circumstances, that- 

(i) The paper is not being presented for any improper purpose, such as to harass 

someone or to cause unnecessary delay or needless increase in the cost of 

prosecution before the Office; 

(ii) The claims and other legal contentions therein are warranted by existing law 

or by a nonfrivolous argument for the extension, modification, or reversal of 

existing law or the establishment of new law; 

(iii) The allegations and other factual contentions have evidentiary support or, if 

specifically so identified, are likely to have evidentiary support after a reasonable 

opportunity for further investigation or discovery; and 

(iv) The denials of factual contentions are warranted on the evidence, or if 

specifically so identified, are reasonably based on a lack of information or belief. 

 

(c) Violations of paragraph (b)(1) of this section by a practitioner or non-practitioner may 

jeopardize the validity of the application or document, or the validity or enforceability of any 

patent, trademark registration, or certificate resulting therefrom. Violations of any of 

paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to 

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respond, subject to such sanctions as deemed appropriate by the Director, or the Director's 

designee, which may include, but are not limited to, any combination of- 

 (1) Holding certain facts to have been established; 

 (2) Returning papers; 

 (3) Precluding a party from filing a paper, or presenting or contesting an issue; 

 (4) Imposing a monetary sanction; 

 (5) Requiring a terminal disclaimer for the period of the delay; or 

 (6) Terminating the proceedings in the Patent and Trademark Office. 

(d) Any practitioner violating the provisions of this section may also be subject to disciplinary 

action. See § 10.23(c)(15). 

37 CFR § 2.193(c) 

(1) Each piece of correspondence that requires a person's signature, must: 

(i) Be an original, that is, have an original signature personally signed in 

permanent ink by that person; or 

(ii) Be a copy, such as a photocopy or facsimile transmission (§ 2.195(c)), of an 

original. In the event that a copy of the original is filed, the original should be 

retained as evidence of authenticity. If a question of authenticity arises, the Office 

may require submission of the original; or 

(iii) 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. 

 

(2) The presentation to the Office (whether by signing, filing, submitting, or later 

advocating) of any document by a party, whether a practitioner or non-practitioner, 

constitutes a certification under § 10.18(b) of this chapter. Violations of §10.18(b)(2) of 

this chapter by a party, whether a practitioner or non-practitioner, may result in the 

imposition of sanctions under § 10.18(c) of this chapter. Any practitioner violating § 

10.18(b) may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15). 

 

37 CFR § 2.193(d) When a document that is required by statute to be certified must be filed, a 

copy, including a photocopy or facsimile transmission, of the certification is not acceptable. 

Every document filed in an inter partes or ex parte proceeding before the Board, and every 

request for an extension of time to file an opposition, must be signed by the party filing it, or by 

the party's attorney or other authorized representative, as appropriate.27 

27 See 37 CFR §§ 2.193(c); 2.119(e); and 10.18(a). 

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Documents filed through the electronic filing systems available at the Board do not require a 

conventional signature. Electronic signatures pursuant to 37 CFR § 2.193(c)(1)(iii) are required 

for electronic filings.28 The party or its representative enters a “symbol” that has been adopted as 

a signature. The Board will accept any combination of letters, numbers, space and/or

punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.29 

A party may act in its own behalf in a proceeding before the Board, or an attorney or other 

authorized representative may represent the party.

30 When an individual who is a party to a 

Board proceeding elects to act in his or her own behalf, the individual must sign any documents 

that he or she files with the Board. If a party which is a partnership elects to act in its own 

behalf, a partner should sign documents filed by the partnership. If a party which is a 

corporation or association elects to act in its own behalf, documents filed by the corporation or 

an officer thereof who is authorized to sign for the corporation or association should sign for that 

corporation or association.31 

If a document is filed on behalf of a party by the party's attorney or other authorized 

representative, it must bear the signature of, and be signed by, that attorney or other 

representative, unless it is a document required to be signed by the party. An attorney or other 

authorized representative who signs a document, and then files it with the Board on behalf of a 

party, should remember that his or her signature to the document constitutes a certification of the 

elements specified in 37 CFR § 10.18(b), and that a knowing violation of the provisions of that 

rule by an attorney or other authorized representative will leave him or her open to disciplinary 

action.32 

It is not appropriate for one person to sign a document for another person, as, for example, "John 

Smith, for John Doe" or "John Doe, by John Smith."33

28 See 37 CFR §§ 2.102(a) and 2.111(b). 

29 See 37 CFR § 2.193(c)(1)(ii). See also TMEP § 804.05. 

30 See 37 CFR § 10.14 and TBMP § 114 (Representation of a Party). Cf. 37 CFR § 2.11. 

 

31 See 37 CFR § 10.14(e). 

32 See 37 CFR § 10.18. Cf. Fed. R. Civ. P. 11 and TBMP § 527.02 (regarding motions for Rule 11 sanctions). See

also, for example, The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1100 n.9 (TTAB 1996) (accuracy in factual 

representations is expected). For information concerning the meaning of the designation "other authorized 

representative," see TBMP § 114.04. 

33 See 37 CFR §§ 2.119(e) and 10.18(a). See also Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 

(TTAB 2003) (response to motion to suspend signed by person on behalf of practitioner is inappropriate);

Cerveceria India Inc. v. Cerveceria Centroamericana, S.A., 10 USPQ2d 1064, 1067 (TTAB 1989) (Section 8

declaration signed by someone other than named person, while perhaps unacceptable, does not constitute fraud), 

aff'd Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989)

100 - 11 
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A document filed in a proceeding before the Board should include the name, in typed or printed 

form, of the person who signed; a description of the capacity in which he or she signed (e.g., as 

the individual who is a party, if the filing party is an individual; as a corporate officer, if the 

filing party is a corporation; as the filing party's attorney); and his or her business address and 

telephone number. The inclusion of the signing person's address and phone number on the paper 

itself is vital because mail sent to the Office is opened in the Mail Room, and ordinarily the 

envelopes are discarded there before the mail is sent on to its ultimate destination within the 

Office. Thus, the Board rarely sees the return addresses on the mailing envelopes of papers filed 

in Board proceedings. 

In accordance with 37 CFR § 2.193(c) either the original of the signed document, or a legible 

copy thereof, may be filed with the Board. If a paper copy is filed, the original should be 

retained as evidence of authenticity. If a question as to the authenticity of a filed copy arises, the 

Office may require submission of the original.34 

Notwithstanding the requirement that a document filed before the Board be signed, an unsigned 

document will not be refused consideration if a signed copy is submitted to the Board within the 

time limit set in the notification of this defect by the Board.35 

106.03 Form of Submissions 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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) A paper submission must be printed in at least 11-point type and double-spaced, 

with the text on one side only of each sheet; 

(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.5 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) 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) A paper submission must not be stapled or bound; 

and In re Cowan, 18 USPQ2d 1407, 1409 (Comm'r 1990) (Section 8 declaration in name of sole proprietor, but

signed for him by his attorney, not acceptable). 

34 See 37 CFR § 2.193(c)(1)(ii). For information concerning fax copies, see TBMP § 107.

35 See 37 CFR § 2.119(e). 

 

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(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a 

paper or CD-ROM submission. 

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the 

rules in this part or Board practice permit. A CD-ROM submission must identify the parties and 

case number and contain a list that clearly identifies the documents and exhibits contained 

thereon. This information must appear in the data contained in the CD-ROM itself, on a label 

affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission 

must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be 

accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied 

by a transmittal letter on paper that identifies the parties, the case number and the contents of 

the CD-ROM. 

(c) 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. 

(d) 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. 

Submissions may be made to the Board on paper, CD-ROM, or electronically over the Internet, 

as permitted by the rules or Board practice. For example, the rules provide that an opposition 

against a Section 1 or 44 application, or a request for extension of time to oppose a Section 1 or 

44 application, may either be filed on paper or through ESTTA, but that an opposition against a 

66(a) application, or a request for extension of time to oppose a 66(a) application, may only be 

filed through ESTTA.36 The rules do not permit the filing of any extension of time to oppose or 

any notice of opposition on CD-ROM. Similarly, Board practice does not permit the filing of 

any petition for cancellation on CD-ROM. A petition for cancellation must be filed either on 

paper or through ESTTA. 

36 See 37 CFR § 2.101(b) regarding the filing of oppositions, and § 2.102(a) regarding the filing of extensions of 

time to oppose. 

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Trademark Rule 2.126 also specifies the requirements for each form of submission to the Board,

including a confidential submission. The requirements for paper submissions are set out in part 

(a) of 37 CFR § 2.126. A paper submission must be 8 to 8.5 inches wide and 11 to 11.69 inches 

long, and printed in at least 11-point type and double-spaced, with the text on one side only of 

each sheet. If a paper submission contains dividers, the dividers may not contain tabs or any 

devices that extend beyond the edges of the paper, and must be on the same size and weight 

paper as the submission. 

In addition, a paper submission must not be stapled or bound. This is important because all 

paper submissions are scanned electronically into the Board's electronic information system and 

removing staples or binding prior to scanning is difficult and time-consuming, especially where 

papers have been bound by machine. Moreover, disassembling stapled or bound papers can 

damage pages, resulting in misdeeds to the scanning equipment and increasing the likelihood that 

pages will become disordered during scanning.37 

A paper filed with the Board may be either the original or a legible copy thereof, on good quality 

paper.38 Extra copies of a paper should not be submitted.39 

CD-ROM submissions are governed by part (b) of 37 CFR § 2.126, and the requirements for 

electronic submissions over the Internet can be found in part (c) of 37 CFR § 2.126. 

Submissions over the Internet are made through the Board's electronic filing system, ESTTA 

(Electronic System for Trademark Trials and Appeals) which is available on the USPTO web 

site.40 Using ESTTA, a person can complete and submit forms, with attachments and/or exhibits, 

to the Board over the Internet, making an official filing online. ESTTA gives step-by-step 

instructions for properly completing a form.

41 Available forms and instructions can be found at: 

http://estta.uspto.gov. The Board’s electronic filing system is also available to the public in the 

Trademark Library Search Room. 

Exhibits to a submission are also subject to the requirements of 37 CFR § 2.126. Exhibits 

pertaining to a paper submission must be filed on paper or CD-ROM and must comply with the 

 

37 See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, 

published in the Federal Register on September 26, 2003 at 68 FR 55748 at 55760. 

38 See 37 CFR § 2.193(c) and, with respect to fax copies, TBMP § 107. 

39 See DeLorme Publishing Co. v. Eartha's Inc., 60 USPQ2d 1222, 1222 n.1 (TTAB 2000) (papers should be filed

in single copies only unless otherwise required by rule); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 

45 USPQ2d 2021, 2022-23 (TTAB 1998) (unnecessary copies and attachments to motions resulted in undue delay 

and a waste of Board resources); and SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 n.1 (TTAB 1994). 

40 See 37 CFR § 2.2(g). 

41 See 37 CFR § 2.126(c). 

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requirements for a paper or CD-ROM submission.42 Exhibits pertaining to an electronic 

submission must be filed electronically as an attachment to the submission and conform to the 

requirements for electronic submissions.43

As with any paper submission, paper exhibits may not contain tabs, dividers or any such devices 

that extend beyond the edges of the paper, and moreover, may not be stapled or bound. 

However, it is acceptable to use binder clips or rubber bands, or similar devices that would allow 

for easy separation of the papers for scanning. 

Exhibits that are large, bulky, valuable, or breakable may be photographed or otherwise 

reproduced so that an appropriate paper or digitized image of the exhibits can be filed with the 

Board in lieu of the originals. Exhibits consisting of videotapes or audiotapes of commercials, 

demonstrations, etc., may be transferred to an appropriate electronic format for submission to the 

Board. 

The requirements for confidential submissions are specified in part (d) of 37 CFR § 2.126. To be 

handled as confidential, and kept out of the public record, submissions to the Board that are 

confidential must be filed 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 also be submitted.44 Confidential materials filed in 

the absence of a protective order are not regarded as confidential and will not be kept 

confidential by the Board.45 

The Board, in its discretion, may refuse to enter and consider submissions filed in violation of 

37 CFR 2.126. 

Format of submissions. Apart from the identification, signature, and form requirements referred 

to above, there is no particular format that submissions to the Board must follow. Nor does the 

Office have printed forms for any documents filed in Board proceedings.46 As an aid to litigants, 

however, suggested formats for certain types of documents filed in Board proceedings can be 

found in the Appendix of Forms to this manual as well as in the section where the particular type 

of document is discussed. These include a notice of appeal to the Board, designation of domestic 

42 See 37 CFR § 2.126(a)(6).

43 See 37 CFR § 2.126(c). 

44 See 37 CFR § 2.126(d). See also TBMP § 120.02 (Confidential Materials). 

45 See TBMP § 120.02. 

46 See 37 CFR § 2.126. 

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representative, certificate of mailing or certificate of transmission under 37 CFR § 2.197, and a 

certificate of service. 

107 How and Where to File Papers and Fees 

37 CFR § 2.195 Receipt of trademark correspondence. 

(a) Date of receipt and Express Mail date of deposit.

Trademark correspondence received in the Office is given a filing date as of the date of receipt 

except as follows: 

(1) The Office is not open for the filing of correspondence on any day that is a Saturday, 

Sunday, or Federal holiday within the District of Columbia. Except for correspondence 

transmitted electronically under paragraph (a)(2) of this section or transmitted by 

facsimile under paragraph (a)(3) of this section, no correspondence is received in the 

Office on Saturdays, Sundays, or Federal holidays within the District of Columbia. 

(2) Trademark-related correspondence transmitted electronically will be given a filing 

date as of the date on which the Office receives the transmission. 

(3) Correspondence transmitted by facsimile will be given a filing date as of the date on 

which the complete transmission is received in the Office unless that date is a Saturday, 

Sunday, or Federal holiday within the District of Columbia, in which case the filing date 

will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday

within the District of Columbia. 

(4) Correspondence filed in accordance with § 2.198 will be given a filing date as of the 

date of deposit as “Express Mail” with the United States Postal Service. 

(b) Correspondence delivered by hand.

In addition to being mailed, correspondence may be delivered by hand during hours the Office is 

open to receive correspondence. 

(c) Facsimile transmission.

Except in the cases enumerated in paragraph (d) of this section, correspondence, including 

authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date 

accorded to the correspondence will be the date on which the complete transmission is received 

in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of 

Columbia. See § 2.196. To facilitate proper processing, each transmission session should be 

limited to correspondence to be filed in a single application, registration or proceeding before 

the Office. The application serial number, registration number, or proceeding number should be 

entered as a part of the sender's identification on a facsimile cover sheet. 

(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of 

receipt, in the following situations: 

(1) Applications for registration of marks; 

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(2) Drawings submitted under § 2.51, § 2.52, § 2.72 or § 2.173; 

(3) Correspondence to be filed with the Trademark Trial and Appeal Board, except 

notices of ex parte appeal; and 

(4) Requests for cancellation or amendment of a registration under Section 7(e) of the 

Trademark Act; and certificates of registration surrendered for cancellation or 

amendment under Section 7(e) of the Trademark Act. 

(e) Interruptions in U.S. Postal Service.

If interruptions or emergencies in the United States Postal Service which have been so 

designated by the Director occur, the Office will consider as filed on a particular date in the 

Office any correspondence which is: 

 (1) Promptly filed after the ending of the designated interruption or emergency; and 

(2) Accompanied by a statement indicating that such correspondence would have been 

filed on that particular date if it were not for the designated interruption or emergency in 

the United States Postal Service. 

An increasing number of documents can be filed with the Office through its web site at 

www.uspto.gov. For those documents that are being delivered to the Office, the specific 

requirements are set out below. 

Documents relating to proceedings before the Board, and not accompanied by a fee, may be 

filed during regular office hours by hand delivery or by courier service to the Board at 2900 

Crystal Drive, South Tower Building, Ninth Floor, Arlington, Virginia 22202-3514; or at the 

Intake Processing Unit at 2900 Crystal Drive, South Tower Building, Arlington, Virginia 22202-

3514; or at the Customers' Window at 2011 S. Clark Place, Crystal Plaza Building 2, First Floor, 

Arlington, Virginia 22202; or (by courier delivery only) to the Patent and Trademark Office Mail 

Room (Correspondence and Mail Division) at 2011 S. Clark Place, Crystal Plaza Building 2, 

First Floor, Arlington, Virginia 22202 (delivery of documents intended for the Board to one of 

the Crystal Plaza Building 2 locations is NOT recommended, because documents delivered to 

these locations, rather than to one of the South Tower Building locations, may take considerably 

longer to reach the Board). Such papers may also be filed by depositing them in the mail 

addressed to the Board's mailing address (Commissioner for Trademarks, 2900 Crystal Drive, 

Arlington, Virginia 22202-3514). 

 

Documents relating to proceedings before the Board, and accompanied by fees may be filed by 

mailing them to the Board's mailing address, i.e., Commissioner for Trademarks, 2900 Crystal 

Drive, Arlington, Virginia 22202-3514. Papers with fees may also be filed during regular 

business hours by hand delivery to the Finance Window at 2900 Crystal Drive, South Tower 

Building, Arlington, Virginia 22202-3514 (where the fee will be "received" or "posted"

immediately and the paper then forwarded to the Intake Processing Unit on the same floor); or to 

the Customers' Window on the first floor at 2011 S. Clark Place, Crystal Plaza Building 2, 

Arlington, Virginia 22202; (delivery of papers intended for the Board to the Crystal Plaza 

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Building is NOT recommended, because papers delivered to this location, rather than to one of 

the South Tower Building locations, may take considerably longer to reach the Board). 

Fee papers filed in person must be filed at one of the locations identified above because the 

Board does not have the mechanism to process financial transactions. 

With the exception of the notice of ex parte appeal to the Board, or in the absence of a specific 

request by the Board, documents to be filed with the Board may not be filed by facsimile 

transmission ("fax").47 If documents other than the notice of appeal in an ex parte appeal are 

filed with the Board by fax transmission, they will not receive a filing date. 

However, the Board will accept, and give filing dates to, documents that had been faxed to, for 

example, local counsel, when the fax copies are, in turn, hand delivered to the Board, or are sent 

to the Board by mail or courier service. In addition, the Board may request that a party send by 

fax transmission a copy of a document that has already been filed in the Office by one of the 

acceptable methods described above, such as by mail, but which document has not yet been 

received by the Board and/or entered in the proceeding file for which it is intended. The Board 

may make such a request when, for example, (1) a Board attorney needs a copy of the document 

in order to make an immediate ruling, by telephone conference, on a motion, or (2) the Board 

needs to see a copy of a document that was assuredly filed in the Office, but which the Board 

does not have or cannot locate. When the Board requests that a copy of a document be sent to 

the Board by fax transmission, the name of the Board employee making the request must appear 

on the cover sheet of the transmission, so that the Board staff member receiving the transmission 

will know that the transmission is authorized, and can immediately give the paper to the 

employee who requested it. If the name of the requesting Board employee does not appear on 

the cover sheet, the staff member receiving the transmission will presume that the transmission is 

unauthorized, and the paper will be disregarded. 

When a fax transmission is authorized, the requirements of 37 CFR § 2.195(c) should be met. In 

addition, it is recommended that the fax cover sheet specify the number of pages being 

transmitted, and the name, address, fax number, and telephone number of the transmitting party, 

as well as the proceeding number to which the document pertains. 

A document transmitted by fax must be legible. The document that is used as the original for the 

fax transmission should be retained by the sender as evidence of the content of the 

transmission.

48 

47 See 37 CFR § 2.195(c)(3). 

48 See 37 CFR § 2.193(c). 

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Correspondence filed by fax transmission should be transmitted to the fax number of the USPTO 

location for which it is intended. Transmission of correspondence to the fax number of the 

wrong USPTO location will cause delay in matching the correspondence with the file to which it 

pertains. The Board itself has several different fax numbers. The Board fax number to be used 

for a notice of ex parte appeal to the Board is (703) 308-9333. In those cases where the Board 

requests that a party send a copy of some other paper by fax transmission, the party will be 

provided with the appropriate fax number. 

The Board's fax machines are attended between the business hours of 8:30 a.m. and 5:00 p.m., 

Eastern Standard Time, Monday through Friday, excluding holidays. Normally, the machines 

may be accessed 24 hours a day. However, there may be times when reception is not possible 

because of equipment failure or maintenance requirements. Accordingly, persons transmitting 

correspondence to the Board by fax should be cautious about relying on the availability of this 

service near time deadlines, such as the end of the six-month period for filing a notice of appeal 

in an ex parte appeal to the Board.49 

For information on how to pay fees, see TBMP § 118. 

108 Filing Receipts 

When a document (with or without a fee) intended for the Board is filed in the Office, it is 

possible to obtain a receipt evidencing the date of such filing. In the case of a document sent by 

mail, a receipt may be obtained by submitting with the document a stamped, self-addressed 

postcard with sufficient information to identify clearly the document , the party in whose behalf 

the paper is being filed, and the proceeding or application in connection with which the 

document is being filed. When the Office receives the document and the postcard, it will datestamp both of them and mail the postcard back. 

Correspondence transmitted electronically through ESTTA is stamped with the date and time the 

Office receives the transmission or, if a fee is required, the date and time the payment process is 

completed.50 Eastern time controls the filing date. Once a request is transmitted electronically, 

the system immediately provides the sender with an e-mail acknowledgement of receipt. 

If a document intended for the Board is delivered by hand or by courier service to the offices of 

the Board, or to the Intake Processing Unit at 2900 Crystal Drive, South Tower Building, Third 

Floor, Arlington, Virginia 22202-3514, or to the Finance Window on the same floor of that 

building, the receipt may take the form of a postcard bearing appropriate identifying information, 

or a duplicate copy of the document, or a duplicate copy of the transmittal letter with appropriate 

identifying information. The receipt and the document will be date-stamped and the receipt will 

49 Cf. TMEP § 306.02. 

50 See 37 CFR § 2.195(a) and instructions for filing via ESTTA on the USPTO web site. 

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be handed back to the person who delivered the paper. If a paper is delivered by hand or by 

courier service to the Customers' Window at 2011 S. Clark Place, Crystal Plaza Building 2, 

Room 1B03, Arlington, Virginia 22202, the receipt may be in the form of a postcard, or, 

alternatively, a handwritten receipt will be furnished. If a document is delivered by courier 

service to the U.S. Patent and Trademark Office Mail Room (Correspondence and Mail 

Division) at 2011 S. Clark Place, Crystal Plaza Building 2, Room 1A-01, Arlington, Virginia 

22202, the postcard receipt must be used. 

When a document is submitted to the Board by fax transmission, the Board will not formally 

acknowledge receipt of the document. However, the Board fax machine usually will confirm to 

the sending unit that the transmission is complete. Parties are reminded that, with the exception 

of the notice of ex parte appeal to the Board. or unless otherwise specifically authorized by the 

Board, documents intended for the Board may not be filed by fax transmission.51 

109 Filing Date 

37 CFR § 2.195 Receipt of trademark correspondence. 

(a) Date of receipt and Express Mail date of deposit. Trademark correspondence received in the 

Office is given a filing date as of the date of receipt except as follows: 

(1) The Office is not open for the filing of correspondence on any day that is a Saturday, 

Sunday, or Federal holiday within the District of Columbia. Except for correspondence 

transmitted electronically under paragraph (a)(2) of this section or transmitted by 

facsimile under paragraph (a)(3) of this section, no correspondence is received in the 

Office on Saturdays, Sundays, or Federal holidays within the District of Columbia. 

(2) Trademark-related correspondence transmitted electronically will be given a filing 

date as of the date on which the Office receives the transmission. 

(3) Correspondence transmitted by facsimile will be given a filing date as of the date on 

which the complete transmission is received in the Office unless that date is a Saturday, 

Sunday, or Federal holiday within the District of Columbia, in which case the filing date 

will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within 

the District of Columbia. 

(4) Correspondence filed in accordance with § 2.198 will be given a filing date as of the 

date of deposit as "Express Mail" with the United States Postal Service. 

(b) Correspondence delivered by hand. In addition to being mailed, correspondence may be 

delivered by hand during hours the Office is open to receive correspondence. 

 

(c) Facsimile transmission. Except in the cases enumerated in paragraph (d) of this section, 

correspondence, including authorizations to charge a deposit account, may be transmitted by 

facsimile. The receipt date accorded to the correspondence will be the date on which the 

51 See 37 CFR § 2.195(c)(3). See also TBMP § 107 (How and Where to File Papers and Fees). 

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complete transmission is received in the Office, unless that date is a Saturday, Sunday, or 

Federal holiday within the District of Columbia. See §2.196. To facilitate proper processing, 

each transmission session should be limited to correspondence to be filed in a single application, 

registration or proceeding before the Office. The application serial number, registration number,

proceeding number should be entered as a part of the sender's identification on a facsimile cover 

sheet. 

(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of 

receipt, in the following situations: 

(1) Applications for registration of marks; 

(2) Drawings submitted under § 2.51, § 2.52, § 2.72 or § 2.173; 

(3) Correspondence to be filed with the Trademark Trial and Appeal Board, except 

notices of ex parte appeal; and 

(4) Requests for cancellation or amendment of a registration under section 7(e) of the 

Trademark Act, and certificates of registration surrendered for cancellation or 

amendment under section 7(e) of the Trademark Act. 

(e) Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States 

Postal Service which have been so designated by the Director occur, the Office will consider as 

filed on a particular date in the Office any correspondence which is: 

 (1) Promptly filed after the ending of the designated interruption or emergency; and 

(2) Accompanied by a statement indicating that such correspondence would have been 

filed on that particular date if it were not for the designated interruption or emergency in 

the United States Postal Service. 

Correspondence transmitted electronically through ESTTA is stamped with the date and time the 

Office receives the transmission or, if a fee is required, the date and time the payment process is 

completed.52 Eastern time controls the filing date. Once a request is transmitted electronically, 

the system immediately provides the sender with an e-mail acknowledgement of receipt. 

Mailed or hand-delivered correspondence is stamped with the date of receipt in the Office (i.e., 

the "filing" date) unless the correspondence is filed by the "Express Mail" procedure provided in 

37 CFR § 2.198.53 The "date of receipt" of correspondence mailed to the Office is the date 

stamped by the Post Office on the mailbags in which the correspondence is delivered to the 

Office.54

52 See 37 CFR § 2.195(a) and instructions for filing via ESTTA on the USPTO web site. 

53 See 37 CFR § 2.195(a). 

54 See 37 CFR § 2.195(b); In re Amethyst Investment Group, 37 USPQ2d 1735 (Comm'r 1995); and In re Klein, 6 

USPQ2d 1528, 1536 (Dep't Comm. 1986), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434

(D.D.C. 1988), aff’d, 866 F.2d 912, 9 USPQ2d 1558 (Fed. Cir. 1989). 

100 - 21 
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When correspondence intended for the Board is filed by the "Express Mail Post Office to 

Addressee" service of the United States Postal Service the document will be stamped with the 

"date in" as the date of receipt (unless the "date in" is a Saturday, Sunday, or Federal holiday 

within the District of Columbia). If the deposit date cannot be determined, the correspondence 

will be stamped with the date of actual receipt.

55 

 

If correspondence which is permitted to be filed by fax transmission to the Board is filed by that 

method with a certificate of transmission in accordance with 37 CFR § 2.197(a), the transmission 

date specified in the certificate of transmission is used for purposes of determining the timeliness 

of the correspondence.56 The date of receipt of the transmission, as described in 37 CFR § 

2.195(a)(3), is used for all other purposes.57 

When correspondence intended for the Board is filed by first-class mail with a certificate of 

mailing, in accordance with the procedure described in 37 CFR § 2.197(a), it is stamped with the 

date of receipt of the correspondence in the Office, i.e., the date on the mail bags in which the 

correspondence is delivered to the Office. The mailing date specified in the certificate of mailing 

is used for purposes of determining the timeliness of the correspondence. The date of receipt is 

used for all other purposes.58 

 

110 Certificate of Mailing or Transmission Procedure 

110.01 In General 

37 CFR § 2.197 Certificate of mailing or transmission.

(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required 

to be filed in the Office within a set period of time will be considered as being timely filed if the 

procedure described in this section is followed. The actual date of receipt will be used for all 

other purposes. 

(1) Correspondence will be considered as being timely filed if: 

(i) The correspondence is mailed or transmitted prior to expiration of the set 

period of time by being: 

55 See 37 CFR §§ 2.195 and 2.198. See 37 CFR § 2.198 regarding procedures for petitioning the Director for any

filing date discrepancy. 

56 See 37 CFR § 2.197(a). For further information concerning correspondence that may be filed by fax 

transmission to the Board, see TBMP § 107.

57 See 37 CFR § 2.197(a). For further information concerning correspondence that may be filed by fax 

transmission to the Board, see TBMP § 107.

58 See 37 CFR §§ 1.6(a) and 1.8(a). For information concerning the date stamped by the USPTO on

correspondence when interruptions or emergencies occur in the United States Postal Service, see 37 CFR § 1.6(e). 

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(A) Addressed as set out in § 2.190 and deposited with the U.S. Postal 

Service with sufficient postage as first class mail; or 

(B) Transmitted by facsimile to the Office in accordance with § 2.195(c); 

and 

(ii) The correspondence includes a certificate for each piece of correspondence 

stating the date of deposit or transmission. The person signing the certificate 

should have reasonable basis to expect that the correspondence would be mailed 

or transmitted on or before the date indicated. 

(2) The procedure described in paragraph (a)(1) of this section does not apply to the 

filing of a trademark application. 

(b) In the event that correspondence is considered timely filed by being mailed or transmitted in

accordance with paragraph (a) of this section, but not received in the Office, and an application 

is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or 

decided with prejudice, the correspondence will be considered timely if the party who forwarded 

such correspondence: 

(1) Informs the Office of the previous mailing or transmission of the correspondence 

within two months after becoming aware that the Office has no evidence of receipt of the 

correspondence; 

(2) Supplies an additional copy of the previously mailed or transmitted correspondence 

and certificate; and 

(3) Includes a statement which attests on a personal knowledge basis or to the 

satisfaction of the Director to the previous timely mailing or transmission. If the 

correspondence was sent by facsimile transmission, a copy of the sending unit's report 

confirming transmission may be used to support this statement. 

(c) The Office may require additional evidence to determine whether the correspondence was 

timely filed.

Except in certain instances, specified in 37 CFR § 2.197(a), as amplified by 37 CFR § 2.195(c), 

correspondence required to be filed within a set period of time will be considered as being timely 

filed, even though the correspondence is not received by the Office until after the expiration of 

the set period, if, prior to the expiration of the set period, (1) the correspondence is mailed to the 

Office by first-class mail, with the proper address, or (for correspondence which is permitted to 

be filed by fax) is transmitted to the Office by fax, in accordance with 37 CFR § 2.195(c), and 

(2) includes a certificate of mailing or transmission which meets the requirements specified in 37 

CFR § 2.197(a).59 

59 See 37 CFR § 2.197(a) and In re LS Bedding, 16 USPQ2d 1451, 1452-53 (Comm'r 1990) (certificate of mailing

procedure is used to determine timeliness, while the actual receipt date is used for all other purposes, such as an 

application filing date). See also Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1734

n.2 (TTAB 2001) (no certificate of mailing).

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In effect, the certificate of mailing or transmission procedure permits certain types of 

correspondence, as specified in 37 CFR §§ 2.197(a) and 2.195(c), to be sent to the Office by 

first-class mail, or by fax transmission, even on the due date for the correspondence and still be 

considered timely, notwithstanding the fact that the mailed correspondence will not be received 

in the Office until after the due date, or that the fax transmission may not, because of equipment 

failure or maintenance requirements, be completed until the next day.60 

However, the Office, in its discretion, may require additional evidence to determine if

correspondence which bears a certificate of mailing or a certificate of transmission was timely 

filed, i.e., was mailed or transmitted on the date stated in the certificate.61 

The certificate of mailing procedure applies to the filing of all types of correspondence in Board 

proceedings. 

 

The certificate of transmission procedure is available in Board proceedings only for the filing of 

a notice of ex parte appeal to the Board.62 

 

110.02 Requirements for Certificate 

37 CFR § 2.190 Addresses for trademark correspondence with the United States Patent and 

Trademark Office. 

(a) Trademark correspondence -- in general

All trademark-related documents filed on paper, except documents sent to the Assignment 

Services Division for recordation and requests for copies of trademark documents, should be 

addressed to: 

 Commissioner for Trademarks 

 2900 Crystal Drive 

 Arlington, Virginia 22202-3514 

 

(b) Electronic trademark documents. An applicant may transmit a trademark document 

through TEAS, at http://www.uspto.gov. 

 

60 See Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1759 n.1 (TTAB 1999) (motion to extend filed by a 

certificate of mailing dated next business day was timely). 

61 See 37 CFR § 2.197(c); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293 (TTAB 1997) (where prima 

facie proof of certificate of mailing is rebutted by other evidence, person signing certificate must submit an affidavit

specifying the date of actual deposit); and In re Klein, 6 USPQ2d 1547, 1551-52 (Comm'r 1987), aff'd sub nom. 

Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff'd 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir.

1989). 

62 See 37 CFR §§ 2.195(c) and 2.197(a), and TBMP § 107 (How and Where to File Papers and Fees). 

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(c) Trademark Assignments. Requests to record documents in the Assignment Services 

Division may be filed through the Office’s web site, at http://www.uspto.gov. Paper documents 

and cover sheets to be recorded in the Assignment Services Division should be addressed to: 

Mail Stop Assignment Recordation Services 

Director of the United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, Virginia 22313-1450 

See § 3.27 of this chapter. 

(d) Requests for copies of trademark documents. Copies of trademark documents can be 

ordered through the Office’s web site at www.uspto.gov. Paper requests for certified or 

uncertified copies of trademark documents should be addressed to: 

Mail Stop Document Services 

Director of the United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, Virginia 22313-1450 

The requirements for filing trademark-related documents (except for trademark-related 

documents sent to the Assignment Services Division for recordation and requests for certified 

copies of trademark application and registration documents) by the certificate of mailing or 

transmission procedure are as follows:63

1. Prior to the expiration of the set period, the correspondence must be either (i) 

deposited with the U.S. Postal Service, with sufficient postage as first-class mail, 

addressed to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 

22202-3514, or (ii) (for correspondence which is permitted to be filed by fax) transmitted 

to the Office by fax, in the manner described in 37 CFR § 2.195(c); and 

2. Each piece of correspondence must include a certificate which states the date of 

deposit or transmission, and is signed (separate and apart from any signature for the piece 

of correspondence itself) by a person who has a reasonable basis to expect that the 

correspondence will be mailed or transmitted on or before the date indicated. 

Trademark-related documents sent to the Assignment Services Division for recordation should 

be addressed to: Mail Stop Assignment Recordation Services, Director of the United States 

Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. If a certificate of 

mailing is used on such correspondence, it should specify that address. 

 

63 See 37 CFR § 2.197(a). 

 

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Requests for copies (certified or uncertified) of trademark documents pertaining to applications 

and registrations are handled by the Certification Division, Office of Public Records. The 

address for all such requests mailed to the Office is: Mail Stop Document Services, Director of 

the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-

1450.64 

The Assignment Services Division of the Office of Public Records also has an electronic 

trademark assignment recording form on the Office web site. The system is called ETAS 

(Electronic Trademark Assignment System) and allows customers to create and submit a 

Trademark Assignment Recordation Coversheet by completing on-line web forms and attaching 

the supporting legal documentation. The form and additional information can be accessed by 

going to www.uspto.gov, going to “Trademarks” and then “File Assignment Documents Online.” 

The certificate of mailing procedure may not be used for mail sent to the United States Patent 

and Trademark Office from a foreign country, because U.S. Postal Service first-class mail 

services are not available in foreign countries. 

A certificate of mailing or a certificate of transmission should be clearly labeled as such and 

should include a reference to the proceeding number to which it pertains, the date of 

transmission, and the signature of the person attesting that the document is being transmitted on a 

certain date. When possible, the certificate should appear on the paper being transmitted, rather 

than on a separate sheet of paper. 

110.03 Suggested Format 

Shown below is a suggested format for a certificate of mailing, under 37 CFR § 2.197, for 

trademark-related mail (except for trademark-related documents sent to the Assignment Services 

Division for recordation and requests for certified copies of trademark application and 

registration documents) 

 Certificate of Mailing

 

I hereby certify that this correspondence 

is being deposited with the United States 

Postal Service with sufficient postage as 

First-class mail in an envelope addressed to: 

Commissioner for Trademarks 

2900 Crystal Drive 

64 See 37 CFR § 2.190(d). 

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Arlington, Virginia 22202-3514 

on ___________ _________________ 

 Date Signature 

_________________________________ 

Typed or printed name of 

person signing certificate 

Shown below is a suggested format for a certificate of transmission under 37 CFR § 2.197: 

 Certificate of Transmission

I hereby certify that this correspondence 

is being facsimile transmitted to the

United States Patent and Trademark 

Office 

on ___________ _________________ 

 Date Signature 

_________________________________ 

Typed or printed name of 

person signing certificate 

110.04 Location of Certificate 

If one of the simple certificate of mailing or certificate of transmission formats shown in TBMP 

§ 110.03 is used, it may be applied by rubber stamp to the first page of the correspondence, if 

feasible. Otherwise, it should be stamped or typed in its entirety on the last page of the 

correspondence to which it pertains. If the certificate is typed, and there is not enough room on 

the last page to type the certificate in its entirety, it should at least be started on the last page, so 

that only part of it continues over to another page. The simple certificate of mailing or certificate 

of transmission format should never be used by itself on a separate page at the end of the 

correspondence. If it is, and the page becomes detached from the rest of the submission, there 

will be no way of determining the identity of the correspondence to which it relates, and the 

benefit of the certificate will be lost. 

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In some cases, there may not be room for a certificate of mailing or a certificate of transmission 

on a piece of correspondence. In such a case, the certificate may be typed on a separate sheet of 

paper securely attached to the correspondence. 

However, the simple certificate formats shown in TBMP § 110.03 are not appropriate for use on 

a separate sheet of paper. Rather, a certificate placed on a separate sheet of paper must include 

additional information, namely, a description of the nature of the correspondence to which it 

pertains, as well as the identity of the application, registration, or Office proceeding in 

connection with which the correspondence is being filed. If there is any doubt concerning the 

identity of the correspondence to which a certificate of mailing or certificate of transmission on a 

separate sheet pertains, the certificate will not be accepted. 

 

110.05 Loss of Certificate of Mailing 

If a certificate of mailing is typed on a separate sheet of paper attached to a piece of 

correspondence, and the certificate becomes detached, after the correspondence is filed in the 

Office, and does not contain identifying information sufficient to enable the Office to associate 

the certificate with the appropriate piece of correspondence, the Office will accept, as evidence 

that the certificate was filed with the specified correspondence, a postcard receipt (see TBMP § 

108) which identifies the separate certificate of mailing sheet and the correspondence to which it 

was attached; accompanied by a copy of the certificate of mailing sheet as originally mailed. 

110.06 Nonreceipt of Correspondence Bearing Certificate 

In the event that correspondence intended for the USPTO is timely filed with an appropriate 

certificate of mailing or certificate of transmission, pursuant to 37 CFR § 2.197, but is not 

received in the Office, and there is a resulting Office action, in a proceeding or an application, 

which is adverse to the submitting party, the correspondence will be considered timely if the 

party which submitted it (1) informs the Office of the previous mailing or facsimile transmission 

of the correspondence promptly after becoming aware that the Office has no evidence of receipt 

of the correspondence, (2) supplies an additional copy of the previously mailed or transmitted 

correspondence and certificate, and (3) includes a statement attesting, on a personal knowledge 

basis or to the satisfaction of the Director, to the previous timely mailing or transmission. The 

statement must be verified if it is made by a person other than a practitioner, as defined in 37 

CFR § 10.1(r). If the correspondence was appropriate for filing by fax transmission, a copy of 

the sending fax machine's report confirming transmission may be used to support the statement.65 

If the document is not one authorized to be filed by facsimile transmission, the document will not 

be accepted.

65 See 37 CFR § 2.197(b). 

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For lost or misplaced correspondence intended for the Board, the evidence required by 37 CFR § 

2.197(b) should be submitted to the Board for consideration. If the requirements of 37 CFR § 

2.197(b) cannot be met, the only alternative is a petition to the Director. 

110.07 Excluded Filings 

The certificate of mailing procedure is not applicable to the filing of a trademark application. 

The certificate of mailing procedure is applicable to all types of filings in Board proceedings, 

including a notice of opposition; a petition to cancel; a request for an extension of time to 

oppose; a notice of appeal to the Board from a final refusal of registration; a notice of appeal to 

the Court of Appeals for the Federal Circuit from a decision of the Board; and a notice of 

election (in an inter partes proceeding) to proceed by civil action under Section 21(a)(1) of the 

Act of 1946, 15 U.S.C. § 1071(a)(1), in response to another party's appeal to the Court of 

Appeals for the Federal Circuit. 

At present, the certificate of transmission procedure is not applicable to any correspondence 

intended for the Board, except for the notice of appeal in an ex parte appeal to the Board.66 

110.08 A Certificate of Mailing or Transmission is Not ... 

As is evident from the requirements for a certificate of mailing, specified in 37 CFR § 2.197(a), 

the certificate of mailing procedure is not the same as mailing by certified mail. Correspondence 

sent to the Board by certified mail, and not in compliance with the 37 CFR § 2.197(a) 

requirements for a certificate of mailing, will be stamped with the date of receipt of the 

correspondence in the Office, and that date will be used for all purposes, including the timeliness 

of the filing of the correspondence.67 

 

Further, a certificate of mailing or certificate of transmission is not the equivalent of a certificate 

of service. A certificate of mailing or certificate of transmission indicates when correspondence 

was sent to the Office pursuant to the provisions of 37 CFR § 2.197(a). The mailing date recited 

in a certificate of mailing, or the transmission date recited in a certificate of transmission, is used 

for purposes of determining the timeliness of the filing of the correspondence bearing the 

certificate. A certificate of service, on the other hand, indicates the date when a copy of the 

correspondence was served (by hand delivery, first-class mail, "Express Mail," or overnight 

courier) upon another party. A certificate of service cannot be used to prove the timeliness of 

the filing of the correspondence.68

66 See 37 CFR § 2.195(d). See also TBMP § 107 (How and Where to File Papers and Fees). 

67 See 37 CFR §§ 2.195 and 2.197. 

 

68 See TBMP § 113 for information concerning a certificate of service. 

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111 "Express Mail" Procedure 

111.01 In General 

37 CFR § 2.198 Filing of correspondence by "Express Mail." 

(a)(1) Except for documents listed in paragraphs (a)(1)(i) and (ii) of this section, any 

correspondence received by the Office that was delivered by the "Express Mail Post Office to 

Addressee" service of the United States Postal Service (USPS) will be considered filed with the 

Office on the date of deposit with the USPS. The Express Mail procedure does not apply to: 

(i) Applications for registration of marks; 

(ii) Amendments to allege use under section 1(c) of the Act; 

(iii) Statements of use under section 1(d) of the Act; 

(iv) Requests for extension of time to file a statement of use under section 1(d) 

of the Act; 

(v) Affidavits of continued use under section 8 of the Act; 

(vi) Renewal requests under section 9 of the Act; and 

(vii) Requests to change or correct addresses. 

 

(2) The date of deposit with the USPS is shown by the "date-in" on the "Express Mail" 

label or other official USPS notation. If the USPS deposit date cannot be determined, the 

correspondence will be accorded the date of receipt in the Office as the filing date. 

(b) Correspondence should be deposited directly with an employee of the USPS to ensure that 

the person depositing the correspondence receives a legible copy of the "Express Mail" mailing 

label with the "date-in" clearly marked. Persons dealing indirectly with the employees of the 

USPS (such as by deposit in an "Express Mail" drop box) do so at the risk of not receiving a 

copy of the "Express Mail" mailing label with the desired "date-in" clearly marked. The paper(s)

or fee(s) that constitute the correspondence should also include the "Express Mail" mailing label 

number thereon. See paragraphs (c), (d) and (e) of this section. 

(c) Any person filing correspondence under this section that was received by the Office and 

delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show 

that there is a discrepancy between the filing date accorded by the Office to the correspondence 

and the date of deposit as shown by the "date-in" on the "Express Mail" mailing label or other 

official USPS notation, may petition the Director to accord the correspondence a filing date as 

of the "date-in" on the "Express Mail" mailing label or other official USPS notation, provided 

that: 

(1) The petition is filed within two months after the person becomes aware that the Office 

has accorded, or will accord, a filing date other than the USPS deposit date; 

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s)

that constitute the correspondence prior to the original mailing; and 

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(3) The petition includes a true copy of the "Express Mail" mailing label showing the 

"date-in," and of any other official notation by the USPS relied upon to show the date of 

deposit. 

(d) Any person filing correspondence under this section that was received by the Office and 

delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show 

that the "date-in" on the "Express Mail" mailing label or other official notation entered by the 

USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the

correspondence a filing date as of the date the correspondence is shown to have been deposited 

with the USPS, provided that: 

(1) The petition is filed within two months after the person becomes aware that the Office 

has accorded, or will accord, a filing date based upon an incorrect entry by the USPS; 

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s)

that constitute the correspondence prior to the original mailing; and 

(3) The petition includes a showing that establishes, to the satisfaction of the Director,

that the correspondence was deposited in the "Express Mail Post Office to Addressee" 

service prior to the last scheduled pickup on the requested filing date. Any showing 

pursuant to this paragraph must be corroborated by evidence from the USPS or evidence 

that came into being within one business day of the deposit after the correspondence in 

the "Express Mail Post Office to Addressee" service of the USPS. 

(e) If correspondence is properly addressed to the Office pursuant to § 2.1990 and deposited 

with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS, 

but not received by the Office, the party who mailed the correspondence may petition the 

Director to consider such correspondence filed in the Office on the USPS deposit date, provided 

that: 

(1) The petition is filed within two months after the person becomes aware that the Office 

has no evidence of receipt of the correspondence; 

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s)

prior to the original mailing; 

(3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the 

number of the "Express Mail" mailing label thereon, a copy of any returned postcard 

receipt, a copy of the "Express Mail" mailing label showing the "date-in," a copy of any 

other official notation by the USPS relied upon to show the date of deposit, and, if the 

requested filing date is a date other than the "date-in" on the "Express Mail" mailing 

label or other official notation entered by the USPS, a showing pursuant to paragraph 

(d)(3) of this section that the correspondence was deposited in the "Express Mail Post 

Office to addressee" service prior to the last scheduled pickup on the requested filing 

date; and 

(4) The petition includes a statement that establishes, to the satisfaction of the Director,

the original deposit of the correspondence and that the copies of the correspondence, the 

copy of the "Express Mail" mailing label, the copy of any returned postcard receipt, and 

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any official notation entered by the USPS are true copies of the originally mailed 

correspondence, original "Express Mail" mailing label, returned postcard receipt, and 

official notation entered by the USPS. 

(f) The Office may require additional evidence to determine whether the correspondence was 

deposited as "Express Mail" with the USPS on the date in question. 

Certain papers or fees to be filed in the Office, including any paper or fee intended for the Board, 

can be filed utilizing the "Express Mail Post Office to Addressee" service (not the "Express Mail 

Post Office to Post Office" service) of the United States Postal Service, and be considered as 

having been filed in the Office on the date of deposit with the USPS.69 

In effect, the "Express Mail" procedure permits all types of correspondence intended for the 

Board to be sent by the "Express Mail Post Office to Addressee" service even on the due date for 

the correspondence and still be considered timely, notwithstanding the fact that the mailed 

correspondence may not be received by the Board until after the due date. This filing procedure 

applies only to the “Express Mail” of the United States Postal Service, not any third-party carrier 

that offers overnight delivery.70 

111.02 Requirements for “Express Mail” 

Trademark Rule 12.198(b) provides that prior to the original mailing, the “Express Mail” mailing 

label number should be placed on correspondence filed under Rule 2.198. The number of the 

mailing label should be placed on each separate submission and each fee transmitted, either 

directly on the document or on a separate paper firmly and securely attached to the document. 

A party that wishes to send mail to the Board by the "Express Mail" service of the U.S. Postal 

Service should be careful to use the "Express Mail Post Office to Addressee" service, rather than 

the "Express Mail Post Office to Post Office" service. 

111.03 Questionable Date of Mailing 

If the “date-in” appearing on the “Express Mail” label is illegible, the filing date will be the 

actual receipt date by the Office. If there is a discrepancy between the filing date assigned by the 

Office and the date of deposit, the person who filed the correspondence may petition the Director 

69 See 37 CFR § 2.198(a)(1) and TMEP § 305.03 for “Express Mail” procedures for the Trademark Examining 

Operation.

70 See In re Pacesetter Group, Inc., 45 USPQ2d 1703, 1704 (Comm’r 1994). 

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to accord the “date-in” date by providing the evidence set forth in 37 CFR §§ 2.198(c), (d) and 

(e).71 

 112 Times for Taking Action 

37 CFR § 2.196 Expiration on Saturday, Sunday or Federal holiday

Whenever periods of time are specified in this part in days, calendar days are intended. When 

the day, or the last day fixed by statute or regulation by or under this part for taking any action 

or paying any fee in the Office falls on a Saturday, Sunday or Federal holiday within the District 

of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a 

Saturday, Sunday or a Federal holiday. 

For example, if, as set by the Board, an answer to a complaint falls due on a Saturday, Sunday, or 

Federal holiday within the District of Columbia, an answer filed on the next business day will be 

considered timely. If, as set by the Board, the close of discovery falls on a Saturday, Sunday, or 

Federal holiday within the District of Columbia, written requests for discovery (i.e., 

interrogatories, requests for production of documents, and requests for admission) may be 

served, and discovery depositions may be taken, on the next business day. Similarly, if, as set by 

the Board, the close of a testimony period falls on a Saturday, Sunday, or Federal holiday within 

the District of Columbia, testimony depositions may be taken, and other evidence may be 

offered, on the next business day.72 

If, because of some unscheduled event, such as adverse weather conditions, the Office is 

officially closed by Executive Order of the President or by the Office of Personnel Management 

for an entire day, that day will be regarded by the Office as a federal holiday within the District 

of Columbia. Any action due to be taken, or fee due to be paid, on that day, will be considered 

timely if the action is taken, or the fee paid, on the next succeeding business day on which the 

Office is open. If, because of an unscheduled event, the Office is closed for part of a business 

day, but is open for business for some part of the day between 8:30 a.m. and 5:00 p.m., any 

action due to be taken, or fee due to be paid, on that day remains due on that day.73 Notification 

of any change in this policy, given the particular circumstances of an unscheduled event, will be 

posted on the Office web site at www.uspto.gov.74 

71 For further information on petition procedures, see Section 305.03(h) of the TMEP. 

72 See, for example, Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990) (when the five-year

anniversary date of a registration falls on a weekend or holiday, petition filed on next business day is considered to 

have been filed within five years from the issue date). 

73 See "Filing of Papers During Unscheduled Closings of the Patent and Trademark Office," 1076 TMOG 6 (March

10, 1987).

74 See, for example, "Notifications Related to Security Issues and Emergencies - Emergency Closure – September 

11, 2001" posted on the USPTO web site. 

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 113 Service of Papers 

37 CFR § 2.119 Service and signing of papers.

(a) Every paper filed in the Patent and Trademark Office in inter partes cases, including notice 

of appeal, must be served upon the other parties except the notice of interference (§ 2.93), the 

notification of opposition (§ 2.105), the petition for cancellation (§ 2.113), and the notice of a 

concurrent use proceeding (§ 2.99), which are mailed by the Patent and Trademark Office. 

Proof of such service must be made before the paper will be considered by the Office. A 

statement signed by the attorney or other authorized representative, attached to or appearing on 

the original paper when filed, clearly stating the date and manner in which service was made 

will be accepted as prima facie proof of service. 

(b) Service of papers must be on the attorney or other authorized representative of the party if 

there be such or on the party if there is no attorney or other authorized representative, and may 

be made in any of the following ways: 

 (1) By delivering a copy of the paper to the person served; 

(2) By leaving a copy at the usual place of business of the person served, with someone in 

the person's employment; 

(3) When the person served has no usual place of business, by leaving a copy at the 

person's residence, with a member of the person's family over 14 years of age and of 

discretion;

(4) Transmission by the "Express Mail Post Office to Addressee" service of the United

States Postal Service or by first-class mail, which may also be certified or registered; 

 (5) Transmission by overnight courier. 

Whenever it shall be satisfactorily shown to the Director that none of the above modes of 

obtaining service or serving the paper is practicable, service may be by notice published 

in the Official Gazette. 

(c) When service is made by first-class mail, "Express Mail," or overnight courier, the date of 

mailing or of delivery to the overnight courier will be considered the date of service. Whenever 

a party is required to take some action within a prescribed period after the service of a paper 

upon the party by another party and the paper is served by first-class mail, "Express Mail," or 

overnight courier, 5 days shall be added to the prescribed period. 

* * * * 

113.01 Requirement for Service of Papers 

Every document filed in an inter partes proceeding before the Board, including a notice of appeal 

from a decision of the Board, must be served by the filing party upon every other party to the 

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proceeding. The only exceptions to this rule are the notice of opposition and petition for 

cancellation, which are sent by the Board to the defendant or defendants.75 

The requirement for service applies not only to documents filed in an inter partes proceeding 

before the Board, but also to documents filed in an application or registration which is the 

subject of such a proceeding, if the documents could have an effect on the inter partes 

proceeding. For example, a request to amend or correct an application or registration which is 

the subject of an inter partes proceeding; an abandonment of the application; or a voluntary 

surrender of the registration, must all be served by the defendant upon every other party to the 

proceeding.

113.02 Requirement for Proof of Service 

When a party to an inter partes proceeding before the Board files a document required by 37 

CFR § 2.119(a), to be served upon every other party to the proceeding, proof that the required 

service has been made ordinarily must be submitted before the filing will be considered by the 

Board. Occasionally, in order to expedite matters, and when the interests of the other party or 

parties would be served thereby, the Board itself will serve, along with an action of the Board 

relating thereto, a copy of a document that does not include the required proof of service. For 

example, if an applicant in an opposition files an abandonment of its involved application 

without the written consent thereto of the opposer, and the abandonment does not include proof 

of service upon the opposer, the Board does not send out an action stating that the abandonment 

will not be considered until proof of service has been submitted. Rather, the Board itself mails a 

copy of the abandonment to the opposer, along with a copy of an action by the Board entering 

judgment in popover's favor pursuant to 37 CFR § 2.135 (which provides, in part, that after the 

commencement of an opposition, if the applicant files a written abandonment of its application 

or mark without the written consent of every adverse party to the proceeding, judgment shall be 

entered against the applicant).

76 

113.03 Elements of Certificate of Service 

The Board will accept, as prima facie proof that a party filing a document in a Board inter partes 

proceeding has served a copy of the document upon every other party to the proceeding, a 

statement signed by the filing party, or by its attorney or other authorized representative, clearly 

stating the date and manner in which service was made. The statement should also specify the 

name of each party or person upon whom service was made, and the address. The statement 

75 See 37 CFR § 2.119(a). 

76 See also, for example, Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1212 

n.3 (TTAB 2001) (unserved copy of objection to further extensions of time to oppose filed prior to institution of 

proceeding forwarded to opposer). 

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must appear on, or be securely attached to, the document being filed. If the statement is on a 

separate sheet attached to the filing, it should clearly identify the submission and proceeding to 

which it relates.77 

Suggested Format 

Shown below is a suggested format for a certificate of service: 

I hereby certify that a true and complete copy of the 

foregoing (insert title of submission) has been served on 

(insert name of opposing counsel or party) by mailing 

said copy on (insert date of mailing), via First Class Mail, 

postage prepaid (or insert other appropriate method of 

delivery) to: (set out name and address of opposing 

counsel or party). 

113.04 Manner of Service 

When a party to an inter partes proceeding before the Board files a document required by 37 

CFR § 2.119(a), to be served upon every other party to the proceeding, service may be made in 

any of the ways specified in 37 CFR § 2.119(b). They are: (1) by hand delivering a copy of the 

submission to the person being served; (2) by leaving a copy of the submission at the usual place 

of business of the person being served, with someone in the person's employment; (3) when the 

person being served has no usual place of business, by leaving a copy of the submission at the 

person's address, with a member of the person's family over 14 years of age and of discretion; (4) 

transmission by the "Express Mail Post Office to Addressee" service of the United States Postal 

Service or by first-class mail, which may also be certified or registered; and (5) transmission by 

overnight courier. In addition, whenever it is satisfactorily shown to the Director that none of the 

specified modes of service is practicable, service may be made by notice published in the Official 

Gazette of the USPTO. 

When service is made by mail, pursuant to 37 CFR § 2.119(b)(4), the Board considers the 

mailing date of the paper to be the date when the paper is deposited with the United States Postal 

Service, i.e., the date when custody of the paper passes to the Postal Service. As provided in 37 

CFR § 2.119(a), the Board ordinarily accepts, as prima facie proof of the date of mailing, the 

statement signed by the filing party, or by its attorney or other authorized representative, as to the 

date and manner of service. However, where the prima facie proof of the certificate of service is 

rebutted by other evidence, and the paper would be timely served if mailed on the date specified 

in the certificate of service, but untimely served if not mailed until the date indicated by the 

 

77 See 37 CFR § 2.119(a). 

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rebutting evidence, the Board may request that the person who signed the certificate of service 

submit an affidavit specifying the date when the paper was actually deposited with the United 

States Postal Service. 

A party filing a document in a Board inter partes proceeding may always, as a courtesy, send a 

copy to an adverse party by telephonic facsimile transmission ("fax"). However, transmission of 

the document by fax does not constitute "service" thereof under the provisions of 37 CFR § 

2.119. 

Notwithstanding the fax transmission, the paper must still be served upon the adverse party by 

one of the methods specified in 37 CFR § 2.119(b), and the date of service of the paper upon the 

adverse party is the date when service is made by one of those specified methods. 

113.05 Additional Time for Taking Action After Service by Mail 

Whenever a party to an inter partes proceeding before the Board is required to take some action 

within a prescribed period of time after the service of a paper upon that party by another party to 

the proceeding, and the paper is served by first-class mail, "Express Mail," or overnight courier, 

the time for taking action is enlarged by 5 days.78 

For example, if one party to a proceeding serves, upon another party to the proceeding, a motion 

to compel discovery, and service of the motion is made by first-class mail, "Express Mail," or 

overnight courier, the served party's time for filing a response to the motion will be 20 days from

the date of service of the motion, that is, from the date of mailing or of delivery to the overnight 

courier. Because the service was made by first-class mail, "Express Mail," or overnight courier, 

5 days are added to the 15-day period prescribed in 37 CFR § 2.127(a) for filing a response to a 

motion. 

Trademark Rule 2.119(c), 37 CFR § 2.119(c), applies only when a party has to take some action 

within a prescribed period after the service of a paper upon it by another party, and service of the 

paper was made in one of three specified ways. It does not apply to an action that must be taken 

by a party within a time set in a communication from the Board. Thus, for example, when a 

Board action notifying a defendant of the filing of an opposition or petition to cancel allows the 

defendant 40 days from the date of the notification in which to file an answer to the complaint, 

the answer is due on or before the 40th day, not on the 45th day. 

78 See 37 CFR § 2.119(c). 

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113.06 A Certificate of Service is Not... 

A certificate of service is not the equivalent of a certificate of mailing or transmission for any 

purpose.

79 

114 Representation of a Party 

37 CFR § 10.14 Individuals who may practice before the Office in trademark and other nonpatent cases.

(a) Attorneys. Any individual who is an attorney may represent others before the Office in 

trademark and other non-patent cases. An attorney is not required to apply for registration or 

recognition to practice before the Office in trademark and other non-patent cases. 

(b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the 

Office in trademark and other non-patent cases, except that individuals not attorneys who were 

recognized to practice before the Office in trademark cases under this chapter prior to Jan. 1, 

1957, will be recognized as agents to continue practice before the Office in trademark cases. 

(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall 

prove to the satisfaction of the Director that he or she is registered or in good standing before 

the patent or trademark office of the country in which he or she resides and practices, may be 

recognized for the limited purpose of representing parties located in such country before the 

Office in the presentation and prosecution of trademark cases, provided: the patent or 

trademark office of such country allows substantially reciprocal privileges to those permitted to 

practice in trademark cases before the United States Patent and Trademark Office. Recognition 

under this paragraph shall continue only during the period that the conditions specified in this 

paragraph obtain. 

(d) Recognition of any individual under this section shall not be construed as sanctioning or 

authorizing the performance of any act regarded in the jurisdiction where performed as the 

unauthorized practice of law. 

(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be 

permitted to practice before the Office in trademark cases. Any individual may appear in a 

trademark or other non-patent case in his or her own behalf. Any individual may appear in a 

trademark case for (1) a firm of which he or she is a member or (2) a corporation or association 

of which he or she is an officer and which he or she is authorized to represent, if such firm, 

corporation, or association is a party to a trademark proceeding pending before the Office. 

79 Cf. TBMP § 110.08 (A Certificate of Mailing or Transmission is Not...).

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114.01 Party May Represent Itself 

A party may represent itself in an ex parte or inter partes proceeding before the Board, or the 

party may be represented by an attorney or other authorized representative.80 

If a partnership which is a party to a Board proceeding elects to represent itself, the partnership 

may act through an individual who is a partner. If a party electing to represent itself is a 

corporation or an association, the party may act through any individual who is an officer of the 

party and who is authorized to represent it.81 

However, because the governing practices and procedures in proceedings before the Board are 

quite technical and highly specialized, it is strongly recommended that an attorney familiar with 

trademark law represent a party. 

114.02 Selection of Attorney 

The Board cannot aid a party in the selection of an attorney, nor does the Office maintain a 

register or list of trademark attorneys.82 

114.03 Representation by Attorney 

Any attorney, as that term is defined in 37 CFR § 10.1(c) [i.e., "an individual who is a member in 

good standing of the bar of any United States court or the highest court of any state"], is eligible 

to represent others before the Office in trademark cases, including proceedings before the Board, 

and in other non-patent cases. Such an attorney is not required to apply to the Office for 

registration or recognition to practice before the Office in trademark and other non-patent 

cases.83 

An attorney, as defined in 37 CFR § 10.1(c), will be accepted as a representative of a party in a 

proceeding before the Board if the attorney (1) signs a document that is filed with the Office on 

80 See 37 CFR § 10.14(e). 

 

81 See 37 CFR § 10.14(e). 

82 See 37 CFR § 2.11. 

83 See 37 CFR §§ 10.1(c) and 10.14(a), and Weiffenbach v. Klempay, 29 USPQ2d 2027, 2031 (Dep't Comm. 1993). 

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behalf of the party and satisfactorily identifies himself or herself as an attorney,84 (2) appears in 

person, or (3) files a written power of attorney signed by the party the attorney represents.85

When representation has been established by the filing of a paper, a new notice of appearance is 

sufficient to change the attorney of record. However, if representation has been established by 

the filing of a power of attorney, and thereafter another attorney or other authorized 

representative appears on behalf of the party, a new power of attorney is required to change the 

attorney of record.86

When an attorney, as defined in 37 CFR § 10.1(c), acting in a representative capacity signs a 

paper or appears in person in a proceeding before the Board, his or her personal signature or 

appearance constitutes, inter alia, a representation to the Office that, under the provisions of 37 

CFR § 10.14 (which specifies the types of individuals who may practice before the Office in 

trademark and other non-patent cases) and the laws of the jurisdiction where the attorney is 

licensed to practice that he or she is authorized to represent the particular party in whose behalf 

he or she acts. If there is some question as to whether an individual who makes such an 

appearance is authorized to act in a representative capacity, further proof of his or her authority 

may be required.87 

If a formal power of attorney is filed in a proceeding before the Board, it should state the name

and address of the individual or individuals to whom the power is granted, identify the party 

granting the power, indicate the power being granted (e.g., "to represent Opposer in this 

proceeding, with full power of substitution and revocation, and to transact all business in the 

United States Patent and Trademark Office in connection therewith”), and be signed by the party 

granting the power. The Office requires that a power of attorney specify the names of one or 

more individuals. A power that specifies both the names of one or more individuals and the 

name of a firm will be regarded as a power to the individual(s).88 A power that specifies only the 

name of a firm will be regarded not as a power to the firm but rather simply as a designation of

an address to which correspondence is to be sent.89 

84 See Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1613 n.1 (TTAB 1991) (appearance made by filing motion on

behalf of respondent).

85 See 37 CFR § 2.17(c).

86 For information concerning termination of representation, see TBMP §§ 116 and 513. 

87 See 37 CFR § 2.17(a). 

88 See, e.g., HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998) (other named attorneys 

appointed by petitioner were authorized to represent petitioner and assume responsibility for the case). 

89 See TMEP § 602.01 and TBMP § 117 (Correspondence – With Whom Held). 

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114.04 Representation by Non-lawyer (i.e., "Other Authorized Representative") 

The only non-lawyers permitted to represent others in trademark cases before the Office, 

including proceedings before the Board, are those who were recognized to practice before the 

Office in trademark cases under Chapter 1 of 37 CFR prior to January 1, 1957.90 Before such a 

representative may take any action of any kind in a proceeding before the Board, however, the 

representative must file in the proceeding a written authorization from the party that he or she 

represents, or from another person entitled to prosecute the case (e.g., the party's appointed 

attorney of record).91 

114.05 Representation by Foreign Attorney or Agent 

37 CFR § 10.14(c) Foreigners. Any foreign attorney or agent not a resident of the United States 

who shall prove to the satisfaction of the Director that he or she is registered or in good standing 

before the patent or trademark office of the country in which he or she resides and practices, 

may be recognized for the limited purpose of representing parties located in such country before 

the Office in the presentation and prosecution of trademark cases, provided: the patent or 

trademark office of such country allows substantially reciprocal privileges to those permitted to 

practice in trademark cases before the United States Patent and Trademark Office. Recognition 

under this paragraph shall continue only during the period that the conditions specified in this 

paragraph obtain. 

Under certain conditions, specified in 37 CFR § 10.14(c), a foreign attorney or agent who is not a 

resident of the United States may be recognized for the limited purpose of representing, in 

trademark cases before the Office, parties located in the country in which the attorney or agent 

resides or practices. For information on how to meet the specified conditions, contact the 

USPTO's Office of Enrollment and Discipline. When a foreign attorney is recognized to practice 

before the Office, the parties are reminded that the certificate of mailing procedure is not 

available for use on mail that originates in a foreign country. 

Currently, Canada provides substantial reciprocal privileges to attorneys in the United States to 

practice before its trademark office. Therefore, the USPTO’s Office of Enrollment and 

Discipline recognizes Canada as qualifying for the limited exception provided in § 10.14(c) 

permitting the Canadian attorney to represent a Canadian party before the Office. The Office of

Enrollment and Discipline maintains a list of attorneys who are registered or in good standing 

with the Canadian Intellectual Property Office. 

90 See 37 CFR § 10.14(b); Weiffenbach v. Klempay, 29 USPQ2d 2027, 2031 (Dep't Comm. 1993) (patent agent, 

admitted to practice before the Office in patent cases after January 1, 1957, was excluded from practice before the

Office); and Weiffenbach v. Frank, 18 USPQ2d 1397, 1400 (Comm'r 1991) (patent agent engaged in unauthorized

representation). 

91 See 37 CFR § 2.17(b). 

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However, the certificate of mailing procedure is not available for use on mail that originates in 

Canada, as it is not deposited in the United States mail as required by the certification. 

114.06 Individual Not Entitled to Represent Others 

An individual who is not entitled, under 37 CFR § 10.14(a), (b), or (c), to practice before the 

Office in trademark cases, will not be permitted to represent a party in a proceeding before the 

Board.92 

 

If it comes to the attention of the Board that an individual who is not entitled, under 37 CFR § 

10.14(a), (b), or (c), to practice before the Office in trademark cases, is attempting to represent a 

party in a Board proceeding, the Board will notify the individual that he or she is not entitled to 

do so. If the individual signs and files a paper on behalf of a party to a Board proceeding, the 

paper will not be considered unless a new copy thereof, signed by the party or by an authorized 

representative who is entitled to practice before the Office in trademark cases, is filed. 

Moreover, no Board correspondence intended for the party will be sent to that individual. 

Rather, the Board will send such correspondence to the party itself, or to the party's attorney or 

other authorized representative entitled to practice before the Office in trademark cases.93 

114.07 Designation of Domestic Representative 

37 CFR § 2.24 Designation of representative by foreign applicant.

If an 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 some 

person resident in the United States on whom may be served notices or process in proceedings 

affecting the mark. If the applicant does not file a document designating 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, or if the last person designated cannot be found at the address 

given in the designation, then notices or process in proceedings affecting the mark may be 

served on the Director. The mere designation of a domestic representative does not authorize 

the person designated to prosecute the application unless qualified under paragraph (a), (b) or 

(c) of § 10.14 of this subchapter and authorized under § 2.17(b). 

37 CFR § 2.119(d) If a party to an inter partes proceeding is not domiciled in the United States

and is not represented by an attorney or other authorized representative located in the United 

States, the party may designate by 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 

92 For information concerning who is entitled to practice before the USPTO in trademark cases, see TBMP §§

114.03-114.05. Cf. TMEP § 602. 

93 See 37 CFR § 2.18(d) and TBMP § 117 (Correspondence – With Whom Held). 

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notices or process in the proceeding. If the party has appointed a domestic representative, 

official communications of the United States Patent and Trademark Office will be addressed to 

the domestic representative unless the proceeding is being prosecuted by an attorney at law or 

other qualified person duly authorized under § 10.14(c) of this subchapter. If the party has not 

appointed a domestic representative and the proceeding is not being prosecuted by an attorney 

at law or other qualified person, the Office will send correspondence directly to the party, unless

the party designates in writing another address to which correspondence is to be sent. The mere 

designation of a domestic representative does not authorize the person designated to prosecute 

the proceeding unless qualified under § 10.14(a), or qualified under § 10.14(b) and authorized 

under § 2.17(b). 

Shown below is a suggested format for the designation of a domestic representative (the 

suggested format should appear below information identifying the proceeding in connection with 

which it is filed): 

Designation of Domestic Representative

(Name of Domestic Representative), whose postal 

 address is ______________________________ 

 ______________________________________, 

is hereby designated (Name of Designating Party)'s

representative upon whom notice or process in this 

proceeding may be served. 

 __________________________ 

 (Signature of Designating Party) 

 __________________________ 

 (Identification of Person Signing) 

 __________________________ 

 (Date of Signature) 

Once a party has appointed a domestic representative, all correspondence in the case will be sent 

to the domestic representative, unless the party is represented by an attorney or other authorized 

representative located in the United States, or by a foreign attorney or agent duly qualified under 

37 CFR § 10.14(c).94 

If the party has not appointed a domestic representative and the proceeding is not being 

prosecuted by an attorney at law or other qualified person, the Office will send correspondence 

directly to the party, unless the party designates in writing another address to which 

correspondence is to be sent.95 

 

94 See TBMP § 117.06 (Correspondence with Foreign Party).

95 See 37 CFR § 2.119(d). 

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114.08 Adverse Parties Represented by Same Practitioner 

37 CFR § 10.66 Refusing to accept or continue employment if the interests of another client 

may impair the independent professional judgment of the practitioner. 

(a) A practitioner shall decline proffered employment if the exercise of the practitioner's 

independent professional judgment in behalf of a client will be or is likely to be adversely 

affected by the acceptance of the proffered employment, or if it would be likely to involve the 

practitioner in representing differing interests, except to the extent permitted under paragraph 

(c) of this section. 

(b) A practitioner shall not continue multiple employment if the exercise of the practitioner's 

independent professional judgment in behalf of a client will be or is likely to be adversely 

affected by the practitioner's representation of another client, or if it would be likely to involve 

the practitioner in representing differing interests, except to the extent permitted under

paragraph (c) of this section. 

(c) In the situations covered by paragraphs (a) and (b) of this section a practitioner may 

represent multiple clients if it is obvious that the practitioner can adequately represent the 

interest of each and if each consents to the representation after full disclosure of the possible 

effect of such representation on the exercise of the practitioner's independent professional 

judgment on behalf of each. 

(d) If a practitioner is required to decline employment or to withdraw from employment under a 

Disciplinary Rule, no partner, or associate, or any other practitioner affiliated with the 

practitioner or the practitioner's firm, may accept or continue such employment unless otherwise 

ordered by the Director or Commissioner. 

As a general rule, a practitioner (i.e., attorney or other authorized representative) may not 

represent parties with conflicting interests in proceedings before the Office. That is, a 

practitioner normally may not accept proffered employment, or continue multiple employment, if 

the exercise of the practitioner's independent professional judgment on behalf of one client is 

likely to be adversely affected by the practitioner's representation of another client, or if the 

employment would be likely to involve the practitioner in representing differing interests.96

96 See 37 CFR §§ 10.66(a) and (b) and Gilman Corp. v. Gilman Brothers Co., 20 USPQ2d 1238, 1240 (Comm'r

1991) (petitioner’s former attorney in patent matter not disqualified from representing respondent in trademark

cancellation proceeding); Unico American Corp. v. Unico Banking Group, 223 USPQ 684, 685 (Comm'r 1984) 

(opposer has no right to seek disqualification of applicant’s counsel based on any possible conflict between

applicant and third parties); Sunkist Growers, Inc. v. Benjamin Ansehl Company, 221 USPQ 1077, 1082 (Comm'r

1984) (attorney was disqualified, but law firm was not); Plus Products v. Con-Stan Industries, Inc., 221 USPQ 1071,

1075 (Comm'r 1984) (attorney representing respondent in an opposition disqualified in view of his previous

representation of petitioner in USPTO proceedings and in infringement litigation concerning the same trademark

issues); and Halcon International, Inc. v. Werbow, 228 USPQ 611, 613 (Comm'r 1980) (attorney representing one

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However, a practitioner may represent multiple clients under the particular circumstances 

specified in 37 CFR § 10.66(c). 

If it comes to the attention of the Board that two or more parties whose interests are in conflict 

appear to be represented by the same practitioner, or by different practitioners within the same

firm, each of the parties and their practitioner(s) will be notified by the Board, in writing, of the 

possible conflict of interest. 

It is the responsibility of a practitioner to ensure that there is no violation of the rules cited 

above. If an impermissible conflict exists, a practitioner should take appropriate action 

immediately. A practitioner who fails to do so may be subjected to disciplinary action.97 

115 Conduct of Practitioner 

115.01 Applicable Rules 

The conduct of an attorney or other authorized representative in proceedings before the Board is 

governed by Part 10 of 37 CFR. Part 10 contains both Canons (set out in Rules 10.21, 10.30, 

10.46, 10.56, 10.61, 10.76, 10.83, 10.100, and 10.110) and Disciplinary Rules (set out in Rules 

10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85, 10.87-10.89, 

10.92, 10.93, 10.101-10.103, 10.111, and 10.112). Canons are "statements of axiomatic norms, 

expressing in general terms the standards of professional conduct expected of practitioners in 

their relationships with the public, with the legal system, and with the legal profession," while 

Disciplinary Rules are "mandatory in character and state the minimum level of conduct below 

which no practitioner can fall without being subjected to disciplinary action."98 

115.02 Disciplinary Proceedings 

37 CFR § 2.193 Trademark correspondence and signature requirements. 

(c) * * * * 

(2) The presentation to the Office (whether by signing, filing, submitting, or later 

advocating) of any document by a party, whether a practitioner or non-practitioner, 

constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of 

this chapter by a party, whether a practitioner or non-practitioner, may result in the 

party in a patent interference proceeding disqualified in view of his previous representation of the adverse party in

connection with a process similar to the process involved in the interference). See also Rules 1.7 and 1.9 of the 

American Bar Association's Model Rules of Professional Conduct. 

97 See 37 CFR § 10.20(b). 

98 37 CFR § 10.20. 

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 * * * * 

imposition of sanctions under § 10.18(c) of this chapter. Any practitioner violating § 

10.18(b) may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15). 

37 CFR § 10.18 Signature and certificate for correspondence filed in the Patent and 

Trademark Office. 

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any 

paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying 

that- 

(1) All statements made therein of the party's own knowledge are true, all statements 

made therein on information and belief are believed to be true, and all statements made 

therein are made with the knowledge that whoever, in any matter within the jurisdiction 

of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers 

up by any trick, scheme, or device a material fact, or makes any false, fictitious or 

fraudulent statements or representations, or makes or uses any false writing or document 

knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be 

subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this 

paragraph may jeopardize the validity of the application or document, or the validity or 

enforceability of any patent, trademark registration, or certificate resulting therefrom; 

and 

(2) To the best of the party's knowledge, information and belief, formed after an inquiry 

reasonable under the circumstances, that- 

(i) The paper is not being presented for any improper purpose, such as to harass 

someone or to cause unnecessary delay or needless increase in the cost of 

prosecution before the Office; 

(ii) The claims and other legal contentions therein are warranted by existing law 

or by a nonfrivolous argument for the extension, modification, or reversal of 

existing law or the establishment of new law; 

(iii) The allegations and other factual contentions have evidentiary support or, if 

specifically so identified, are likely to have evidentiary support after a reasonable 

opportunity for further investigation or discovery; and 

(iv) The denials of factual contentions are warranted on the evidence, or if 

specifically so identified, are reasonably based on a lack of information or belief.

37 CFR § 10.130 Reprimand, suspension or exclusion.

(a) The Commissioner may, after notice and opportunity for a hearing, (1) reprimand or (2)

suspend or exclude, either generally or in any particular case, any individual, attorney, or agent 

shown to be incompetent or disreputable, who is guilty of gross misconduct, or who violates a 

Disciplinary Rule. 

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(b) Petitions to disqualify a practitioner in ex parte or inter partes cases in the Office are not 

governed by §§ 10.130 through 10.170 and will be handled on a case-by-case basis under such 

conditions as the Commissioner deems appropriate. 

By rule change effective December 1, 1997, 37 CFR § 2.193(c)(2) was amended to provide that 

by presenting a paper to the Office, the signer makes the certifications set forth in 37 CFR 

§ 10.18(b), and is subject to sanctions under 37 CFR § 10.18(c) for violation of 37 CFR § 

10.18(b)(2), regardless of whether the party is a practitioner or non-practitioner.99

The rules governing disciplinary proceedings are set out in 37 CFR §§ 10.130-10.170. Such a 

proceeding is instituted only under the circumstances specified in 37 CFR §§ 10.131-10.132. 

115.03 Petitions to Disqualify 

37 CFR § 10.130(b) Petitions to disqualify a practitioner in ex parte or inter partes cases in the 

Office are not governed by §§ 10.130 through 10.170 and will be handled on a case-by-case 

basis under such conditions as the Commissioner deems appropriate. 

Petitions to disqualify practitioners representing parties in ex parte or inter partes cases before 

the Board are not disciplinary proceedings and hence are not governed by 37 CFR §§ 10.130-

10.170. Rather, petitions to disqualify are governed by 37 CFR § 10.130(b).100 

When a petition to disqualify is filed in connection with a proceeding pending before the Board, 

the Board immediately issues an action suspending proceedings in the case and advising the 

parties that no additional papers should be filed by the parties until further notice, pending 

consideration of the petition. 

For further information concerning petitions to disqualify, see TBMP § 513.02. 

 

 

99 For examples of cases involving disciplined practitioners, see Klein v. Peterson, 866 F.2d 412, 9 USPQ2d 1558,

1560 (Fed. Cir. 1989) (patent attorney excluded from practice for certificate of mailing violations); Weiffenbach v. 

Logan, 27 USPQ2d 1870, 1875 (Comm'r 1993) (patent attorney suspended from practice before USPTO for five

years for altering an office action in a patent application and engaging in other unethical conduct); and McCandlish 

v. Doe, 22 USPQ2d 1223, 1227 (Comm'r 1992) (patent attorney reprimanded by Commissioner for misrepresenting 

facts and knowingly allowing documents to remain of record which had been withdrawn).

100 For examples of cases involving petitions to disqualify, see the decisions cited in TBMP § 114.08 (Adverse 

Parties Represented by Same Practitioner). 

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116 Termination of Representation 

116.01 Revocation of Authority 

37 CFR § 2.19 Revocation of power of attorney; withdrawal.

(a) Authority to represent an applicant, registrant or a party to a proceeding may be revoked at 

any stage in the proceedings of a case upon notification to the Director; and when it is so 

revoked, the Office will communicate directly with the applicant, registrant or party to the 

proceeding, or with the new attorney or domestic representative if one has been appointed. The 

Office will notify the person affected of the revocation of his or her authorization. 

Authority to represent a party in a proceeding before the Board may be revoked, at any stage of 

the proceeding, by filing a written revocation with the Board. Thereafter, the Board will not 

recognize that person as a representative in the case, or give any consideration to any papers 

which he or she may file therein, unless a new written authorization of that person, signed by the 

party, is filed in the proceeding. 

116.02 Withdrawal as Representative--In General 

37 CFR § 2.19(b) If the requirements of § 10.40 of this chapter are met, an attorney authorized 

to represent an applicant, registrant or party in a trademark case may withdraw upon 

application to and approval by the Director. 

37 CFR § 10.40 Withdrawal from employment.

(a) A practitioner shall not withdraw from employment in a proceeding before the Office without 

permission from the Office (see §§ 1.36 and 2.19 of this subchapter). In any event, a practitioner 

shall not withdraw from employment until the practitioner has taken reasonable steps to avoid 

foreseeable prejudice to the rights of the client, including giving due notice to his or her client, 

allowing time for employment of another practitioner, delivering to the client all papers and 

property to which the client is entitled, and complying with applicable laws and rules. A 

practitioner who withdraws from employment shall refund promptly any part of a fee paid in 

advance that has not been earned. 

(b) Mandatory withdrawal. A practitioner representing a client before the Office shall withdraw 

from employment if: 

(1) The practitioner knows or it is obvious that the client is bringing a legal action, 

commencing a proceeding before the Office, conducting a defense, or asserting a position 

in litigation or any proceeding pending before the Office, or is otherwise having steps

taken for the client, merely for the purpose of harassing or maliciously injuring any 

person; 

(2) The practitioner knows or it is obvious that the practitioner's continued employment 

will result in violation of a Disciplinary Rule; 

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(3) The practitioner's mental or physical condition renders it unreasonably difficult for 

the practitioner to carry out the employment effectively; or

 (4) The practitioner is discharged by the client. 

(c) Permissive withdrawal. If paragraph (b) of this section is not applicable, a practitioner may 

not request permission to withdraw in matters pending before the Office unless such request or 

such withdrawal is because: 

 (1) The petitioner's client: 

(i) Insists upon presenting a claim or defense that is not warranted under existing 

law and cannot be supported by good faith argument for an extension, 

modification, or reversal of existing law; 

(ii) Personally seeks to pursue an illegal course of conduct; 

(iii) Insists that the practitioner pursue a course of conduct that is illegal or that 

is prohibited under a Disciplinary Rule; 

(iv) By other conduct renders it unreasonably difficult for the practitioner to carry 

out the employment effectively; 

(v) Insists, in a matter not pending before a tribunal, that the practitioner engage 

in conduct that is contrary to the judgment and advice of the practitioner but not 

prohibited under the Disciplinary Rule; or 

(vi) Has failed to pay one or more bills rendered by the practitioner for an 

unreasonable period of time or has failed to honor an agreement to pay a retainer 

in advance of the performance of legal services. 

(2) The practitioner's continued employment is likely to result in a violation of a 

Disciplinary Rule; 

(3) The practitioner's inability to work with co-counsel indicates that the best interests of 

the client likely will be served by withdrawal; 

(4) The practitioner's mental or physical condition renders it difficult for the practitioner 

to carry out the employment effectively; 

(5) The practitioner's client knowingly and freely assents to termination of the 

employment; or 

(6) The practitioner believes in good faith, in a proceeding pending before the Office, 

that the Office will find the existence of other good cause for withdrawal.

Under certain circumstances, a practitioner may withdraw from employment as the attorney or 

other authorized representative of a party to a proceeding before the Board. A practitioner who 

wishes to withdraw must file a written request with the Board for permission to do so. The 

practitioner may not withdraw until he or she has complied with the conditions specified in 37 

CFR § 10.40(a). 

 

 

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116.03 When Withdrawal is Mandatory 

Withdrawal from employment as the attorney or other representative of a party to a Board 

proceeding is mandatory under the circumstances specified in 37 CFR § 10.40(b). 

116.04 When Withdrawal is Permissive 

Withdrawal from employment as the attorney or other authorized representative of a party to a 

Board proceeding is permissive under the circumstances specified in 37 CFR § 10.40(c). 

116.05 Request to Withdraw

A practitioner who wishes to withdraw from employment as the attorney or other authorized 

representative of a party to a proceeding before the Board must file a written request with the 

Board for permission to do so. The request to withdraw must be based upon one of the grounds 

for mandatory or permissive withdrawal listed in 37 CFR §§ 10.40(b) and (c). Moreover, the 

practitioner must comply with the requirements of 37 CFR § 10.40(a). See 37 CFR §§ 2.19(b) 

and 10.40.101 

The propriety of a request for permission to withdraw as counsel in an application that is the 

subject of a potential opposition is determined by the Board, and not the examining operation.102 

For further information concerning the requirements for a request to withdraw as 

representative, and the action taken by the Board when such a request is granted, see TBMP § 

513.01. 

117 Correspondence - With Whom Held 

37 CFR § 2.18 Correspondence, with whom held.

(a) If documents are transmitted by an attorney, or a written power of attorney is filed, the Office 

will send correspondence to the attorney transmitting the documents, or to the attorney 

designated in the power of attorney, provided that the attorney is an attorney as defined in 

§10.1(c) of this chapter. 

(b) The Office will not undertake double correspondence. If two or more attorneys appear or 

sign a document, the Office’s reply will be sent to the address already established in the record 

until the applicant, registrant or party, or its duly appointed attorney, requests in writing that 

correspondence be sent to another address. 

101 Cf. In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm'r 1992). 

102 See TBMP § 212.01 (Jurisdiction to Consider Amendment). 

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(c) If an application, registration or proceeding is not being prosecuted by an attorney but a 

domestic representative has been appointed, the Office will send correspondence to the domestic 

representative, unless the applicant, registrant or party designates in writing another 

correspondence address. 

(d) If the application, registration or proceeding is not being prosecuted by an attorney and no 

domestic representative has been appointed, the Office will send correspondence directly to the 

applicant, registrant or party, unless the applicant, registrant or party designates in 

writing another correspondence address. 

37 CFR § 2.24 Designation of representative by foreign applicant.

If an 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 some 

person resident in the United States on whom may be served notices or process in proceedings 

affecting the mark. If the applicant does not file a document designating 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, or if the last person designated cannot be found at the address 

given in the designation, then notices or process in proceedings affecting the mark may be 

served on the Director. The mere designation of a domestic representative does not authorize 

the person designated to prosecute the application unless qualified under paragraph (a), (b) or 

(c) of §10.14 of this subchapter and authorized under §2.17(b). 

37 CFR § 2.119(d) If a party to an inter partes proceeding is not domiciled in the United States

and is not represented by an attorney or other authorized representative located in the United 

States, the party may designate by 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 the proceeding. If the party has appointed a domestic representative, 

official communications of the United States Patent and Trademark Office will be addressed to 

the domestic representative unless the proceeding is being prosecuted by an attorney at law or 

other qualified person duly authorized under § 10.14(c) of this subchapter. If the party has not 

appointed a domestic representative and the proceeding is not being prosecuted by an attorney 

at law or other qualified person, the Office will send correspondence directly to the party, unless

the party designates in writing another address to which correspondence is to be sent. The mere 

designation of a domestic representative does not authorize the person designated to prosecute 

the proceeding unless qualified under § 10.14(a), or qualified under § 10.14(b) and authorized 

under § 2.17(b). 

117.01 In General 

Whenever the Board takes an action in a proceeding before it, the Board sends a copy of the 

action to each party or to the party's attorney or other authorized representative. Such 

correspondence will be sent to the party at the party's address of record in the proceeding, unless 

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an appearance is made on behalf of the party by an attorney (as defined in 37 CFR § 10.1(c)), or 

a written power of attorney is filed, or written authorization of some other person entitled to be 

recognized is filed, or the party designates in writing another address to which correspondence is 

to be sent. If one of these events occurs, correspondence will be sent not to the party's address of 

record, but rather to the attorney who makes the appearance, or to the attorney designated in the 

power of attorney, or to the other person designated in the written authorization, or to the address 

designated by the party for correspondence.103 If there is no attorney of record, but a domestic 

representative has been appointed, correspondence will be sent to the domestic representative, 

unless the party designates in writing another correspondence address. If there is no attorney of 

record and no domestic representative has been appointed, correspondence will be sent directly 

to the party. Correspondence will continue to be sent to such address until the party, or the 

party's attorney or other representative, indicates in writing that correspondence is to be sent to 

another address.104 

The mailing of correspondence in accordance with standard Office mailing procedures creates a 

presumption of receipt of correspondence.105 

117.02 When There is More Than One Attorney or Other Authorized 

 Representative 

If a power of attorney names more than one individual, and does not specify which of them is to 

have primary responsibility for the case and receive correspondence, the name(s) of the 

individual attorney(s) in the signature block of the covering transmittal letter will be used by the 

Board on the proceeding file, on correspondence for the party, and on the final decision of the 

Board, to identify counsel for the party, unless the party or one of the named attorneys requests 

otherwise in writing. If there is no transmittal letter, and no other indication as to which of the 

named attorneys is to have primary responsibility for the case and receive correspondence, the 

name of the first listed attorney will be used by the Board on the proceeding file, on 

correspondence for the party, and on the Board's final decision, unless the party or one of the 

named attorneys requests otherwise in writing. 

The Board ordinarily will not undertake double correspondence, that is, the sending of 

correspondence to two addresses on behalf of a single party. If more than one attorney or other 

authorized representative makes an appearance on behalf of a party, the papers filed by the 

additional attorney(s) or other authorized representative(s) will be accepted, but the Board will 

103 See Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1079 (TTAB 1992) (new power 

of attorney filed); and Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1613 (TTAB 1991) (appearance made by filing

motion in the proceeding).

 

104 See 37 CFR § 2.18(b). 

105 See Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1953 (TTAB 1997).

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send correspondence to only one of them, to be determined according to the circumstances in the 

case.106 

For example, if one attorney or other authorized representative ("A") makes an appearance on 

behalf of a party, and his or her address is thus established in the proceeding file as the 

correspondence address, following which a second attorney or other authorized representative 

("B") makes an appearance on behalf of the party, and files a written request that

correspondence be sent to him or her, the correspondence address in the proceeding file will be 

changed, and future correspondence will be sent to B, rather than A. No requirement will be 

made that B submit authorization, from the party or from A, for the change of correspondence 

address, nor will B be required to serve a copy of the request upon A. If B does not file a written 

request that correspondence be sent to him or her, correspondence will continue to be sent to A. 

If a power of attorney from a party to one attorney ("A") has been filed, and thereafter another 

attorney or other authorized representative ("B") makes an appearance on behalf of the party and 

files a written request that correspondence be sent to him or her, B ordinarily will be required to 

submit authorization, from the party or from A, for the requested change in the correspondence 

address. However, if B's request for change of correspondence address bears proof of service of 

a copy thereof upon both the party and A, and neither files an objection to the request, the 

correspondence address will be changed, and future correspondence will be sent to B, rather than 

to A. 

If a power of attorney from a party to one attorney ("A") has been filed, and thereafter a power of 

attorney from the party to another attorney ("B") is filed, the second power of attorney will be 

construed, even if there is no revocation of the first power, as a written request to change the 

correspondence address from A to B, unless the party or A directs otherwise. Cf. TMEP § 603. 

Likewise, if an attorney makes an appearance on behalf of a party, and thereafter the party files a 

written power of attorney to another attorney, the Board will send subsequent correspondence to 

the appointed attorney. 

If a power of attorney from a party to one attorney ("A") has been filed, and thereafter A files an

"associate power of attorney" to another attorney ("B"), the correspondence address will remain 

unchanged, and the Board will continue to send correspondence to A, unless A or the party 

directs otherwise.107 

If a power of attorney from a party to several attorneys ("A," "B," and "C") in the same firm

("XYZ") has been filed, and thereafter A leaves the firm but does not file a request that all future 

correspondence be sent to him or her, rather than to B and/or C, the Board will continue to send 

106 See 37 CFR § 2.18. 

107 Cf. TMEP § 603. 

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correspondence to B and/or C. If A, after leaving firm XYZ, does file a request that all future 

correspondence be sent to him or her, rather than to B and/or C, the correspondence address will 

be changed as requested. If, however, B and C object, and maintain that it is they, rather than A, 

who continue to represent the party and are entitled to receive correspondence, proceedings in 

the case will be suspended until a designation of correspondence address by the party has been 

submitted. 

If oppositions or petitions for cancellation filed by different opposers or petitioners against the 

same application or registration are consolidated, or if an opposition or petition for cancellation 

is filed by joint opposers or petitioners, and the different plaintiffs are represented by different 

attorneys or other authorized representatives, rather than by the same one(s), the Board, in its 

discretion, may request that the plaintiffs appoint one lead counsel, to whom the Board may send 

correspondence intended for the plaintiffs.108 After the lead counsel has been appointed, the 

Board will send one copy of any forthcoming Board order, decision, or other communication to 

the applicant or its attorney or other authorized representative, and one copy to plaintiffs' lead 

counsel. Lead counsel in turn will be responsible for making and distributing copies of such 

Board correspondence to each plaintiff or its attorney or other authorized representative. In these 

cases, the lead counsel is not substituted for the separate counsel of each plaintiff, but rather is 

responsible for coordinating the conduct of the plaintiffs' cases. A Board action requesting the 

appointment of lead counsel normally includes a detailed explanation of the anticipated duties 

and responsibilities of lead counsel. 

In special circumstances, the Board, in its discretion, may send a particular item of 

correspondence to more than one address on behalf of a single party. However, the Board will 

not send correspondence to more than one address on behalf of a single party on a continuing 

basis. 

117.03 Continuation of Correspondence With Representative in Application or 

 Registration When Inter Partes Proceeding Commences 

In the case of a party whose application is the subject of a Board proceeding, any appearance or 

power of attorney (or designation of other authorized representative) of record in the application 

file at the time of the commencement of the Board proceeding is considered to be effective for 

purposes of the proceeding, and correspondence will be sent initially to that address.109 

Thereafter, the correspondence address may be changed in appropriate circumstances. 

108 Cf. Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436 n.2 (TTAB 1996) (in 

three proceedings where defendant in one case was one of two plaintiff's in the two other cases, and where each 

plaintiff retained separate counsel, Board indicated that it would send correspondence to attorneys for the plaintiff 

which was a party to all three cases unless otherwise advised). 

109 See 37 CFR § 2.105. 

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However, in the case of a party whose registration is the subject of a proceeding before the 

Board, any representation which may be of record in the registration file at the time of the 

commencement of the Board proceeding is not considered to be effective for purposes of the 

Board proceeding. Rather, correspondence is sent to the registrant itself or its domestic 

representative unless and until an attorney makes an appearance in the Board proceeding in the 

registrant's behalf, or a written power of attorney is filed in the proceeding by the registrant, or 

written authorization of some other person entitled to be recognized is filed in the proceeding by 

the registrant, or the registrant designates in writing another address to which correspondence is 

to be sent.110 

Changes of attorney addresses or powers of attorney in registration files are accepted by the 

Office when submitted with post-registration filings, such as those under Sections 7, 8, 9 or 15 of 

the Act, 15 U.S.C. §§ 1057, 1058, 1059 or 1065; as well as in a cancellation or concurrent use 

proceeding before the Board. The attorney representing the registrant is responsible for insuring 

that registrant’s correspondence address is updated. The Office accepts separate written address 

changes for registrants and domestic representatives, but global changes of address (when one 

paper is filed listing all involved registrations) will not be effective in changing the address in 

each file. A single TEAS111 form for recording a change of address, found at 

www.uspto.gov/teas/index.html, can be used to notice a change of address for more than one 

application or registration. The TEAS form can be used to change the correspondence address 

only on applications or registrations that are currently active.112

117.04 Continuation of Correspondence with Representative of Potential Opposer 

 After Opposition is Filed 

When an attorney is appointed in a power of attorney accompanying an opposition, or makes an 

appearance by filing an opposition on behalf of the opposer, the Board will send correspondence 

to that attorney, notwithstanding the fact that another attorney or attorneys may have obtained 

one or more extensions of time to oppose on behalf of the opposer. If, however, a power of 

attorney filed with an opposition names several attorneys, and there is no transmittal letter and no 

other indication as to which of them is to have primary responsibility for the case and receive 

correspondence, but one of the named attorneys obtained an extension of time to oppose, 

correspondence will be sent to that attorney; if none of the named attorneys obtained an 

extension of time to oppose, correspondence will be sent to the first named attorney. Thereafter, 

the correspondence address may be changed in appropriate circumstances. 

110 See 37 CFR §§ 2.18(d) and 2.113. 

111 TEAS is the acronym for Trademark Electronic Application System. See 37 CFR § 7.1. 

112 See TMEP § 603.02(b). 

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117.05 Correspondence After Revocation or Withdrawal 

If the authority of a practitioner (i.e., attorney or other authorized representative) to represent a 

party in a proceeding before the Board is revoked, or the practitioner is granted permission to 

withdraw upon request therefor to the Board, and the party is not represented by any other 

practitioner, correspondence will be sent to the party at its address of record unless another 

practitioner puts in an appearance, or a written appointment of another practitioner is filed, or the 

party designates in writing another address to which correspondence is to be sent. 

117.06 Correspondence With Foreign Party 

If a party to a Board proceeding is not domiciled in the United States and is not represented by 

an attorney or other authorized representative located in the United States, or by a foreign 

attorney or agent duly qualified under 37 CFR § 10.14(c), correspondence will be sent to the 

party's domestic representative, if one has been appointed. If the party has not appointed a 

domestic representative and the proceeding is not being prosecuted by an attorney or other 

qualified person, the Office will send correspondence directly to the party, unless the party 

designates in writing another address to which correspondence is to be sent.113 

117.07 Change of Address 

If a party to a Board proceeding or its attorney or other authorized representative moves, a 

separate written notice of the change of address should be filed with the Board and should 

reference the proceeding number. It is the responsibility of a party to a proceeding before the 

Board to ensure that the Board has the party's current correspondence address. If a party fails to 

notify the Board of a change of address, with the result that the Board is unable to serve 

correspondence on the party, default judgment may be entered against the party. 

A party or its attorney or other authorized representative should not assume that the inclusion of 

a new address on a document directed to another matter, or on the envelope in which a paper is 

filed, is sufficient to notify the Board of a change of address. Mail sent to the Office is opened in 

the USPTO Mail Room, and ordinarily the envelopes are discarded there before the mail is sent 

on to its ultimate destination within the Office. Thus, the Board rarely sees the return addresses 

on the mailing envelopes of papers filed in Board proceedings. Moreover, while it is the normal 

practice of the Board to check the address on newly filed papers and to change its records to 

reflect any noted change of address, the Board has no obligation to do so. The responsibility for 

any failure to receive correspondence due to a change of address of which the Board has not 

been given separate written notice lies with the party or its attorney or other authorized 

representative. 

113 See 37 CFR § 2.119(d). 

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117.08 Individual Not Entitled to Represent Others 

An individual who is not entitled, under 37 CFR § 10.14(a), (b), or (c), to practice before the 

Office in trademark cases, will not be permitted to represent a party in a proceeding before the 

Board, and may not file papers on behalf of the party.114 If it comes to the attention of a Board 

attorney that such an individual is attempting to represent a party in a Board proceeding, the 

Board attorney will bring the matter to the attention of the Chief Administrative Trademark 

Judge, who will coordinate appropriate action with the Office of Enrollment and Discipline. 

Moreover, no Board correspondence intended for the party will be sent to the individual. Rather, 

the Board will send such correspondence to the party itself, or to the party's attorney or other 

authorized representative entitled to practice before the USPTO in trademark cases.115 

118 Payment of Fees 

118.01 Lists of Fees and Charges 

A list of the fees and charges established by the USPTO for trademark cases may be found in 37 

CFR § 2.6, and are usually posted on the USPTO web site at www.uspto.gov. 

A list of fees and charges established by the USPTO for miscellaneous services may be found in 

37 CFR §§ 1.21, as well as on the USPTO web site. 

A list of fees and charges for processing correspondence relating to international applications

and registrations under the Madrid Protocol may be found in 37 CFR § 7.6 as well as on the 

USPTO web site. International fees that may be paid to the International Bureau through the 

Office in connection with international applications and registrations may be found in 37 CFR § 

7.7 as well as on the WIPO web site. 

118.02 Fees Payable in Advance 

37 CFR § 2.206 Trademark Fees payable in advance.

(a) Trademark fees and charges payable to the Office are required to be paid in advance; that is, 

at the time of requesting any action by the Office for which a fee or charge is payable. 

(b) All fees paid to the Office must be itemized in each individual trademark application, or 

registration file, or trademark proceeding, so the purpose for which the fees are paid is clear. 

The Office may return fees that are not itemized as required by this paragraph. 

114 Cf. TMEP § 602.03. 

 

115 See 37 CFR § 2.18. 

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118.03 Method of Payment--In General 

37 CFR § 2.207 Method of payment. 

(a) All payments of money required in Trademark cases, including fees for the processing of 

international trademark applications and registrations that are paid through the Office, shall be 

made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national 

bank note, or United States Postal Service money order. If sent in any other form, the Office may 

delay or cancel the credit until collection is made. Checks and money orders must be made 

payable to the Director of the United States Patent and Trademark Office. (Checks made 

payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments 

from foreign countries must be payable and immediately negotiable in the United States for the 

full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, 

and letters containing money should be registered with the United States Postal Service. 

 

(b) Payments of money required for trademark fees may also be made by credit card. Payment of 

a fee by credit card must specify the amount to be charged to the credit card and such other 

information as is necessary to process the charge, and is subject to collection of the fee. The 

Office will not accept a general authorization to charge fees to a credit card. If credit card 

information is provided on a form or document other than a form provided by the Office for the 

payment of fees by credit card, the Office will not be liable if the credit card number becomes 

public knowledge. 

It is the practice of the Office to routinely accept, as "conditional" payment of a fee, a signed 

uncertified check. If such a check is returned for insufficient funds, the fee remains unpaid, and 

the filing date of the fee will be the filing date of any resubmitted adequate payment.116 An 

unsigned check will be returned to its sender, but the Director has the discretion to accept such a 

check, as "conditional" payment, upon petition showing sufficient cause therefor.117 

The Office cannot accept U.S. Treasury checks that have been issued to the applicant or to 

another party as payment of Office fees. This is true for all refund checks whether issued from

the Office or any other government agency. Office rules require that money orders and checks 

be made payable to the Director of Patents and Trademarks and do not permit the acceptance of 

U.S. Treasury checks endorsed by the applicant in payment of fees. 

Papers accompanied by fees may be filed by delivery to the finance window at 2900 Crystal 

Drive, South Tower Building, Third Floor, Arlington, VA.118 

116 See In re Cantatore, 231 USPQ 742, 744 (Comm'r 1986) (petition to revive was denied because filing fee check 

was returned for insufficient funds). 

117 See Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ 977, 980 (Fed. Cir. 1985), on

remand, In re Dubost, 231 USPQ 887, 889 (Comm'r 1986) (sufficient cause not shown). 

118 For further information concerning how and where to file fees, see TBMP § 107. 

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118.04 Method of Payment--Deposit Accounts 

For the convenience of attorneys and the general public in paying fees and charges to the Office, 

deposit accounts may be established in the Office.119 The Office has an automated financial 

system, the Revenue Accounting and Management (RAM) system, that allows transactions to 

occur over the Internet through the Office web site at www.uspto.gov. Deposit accounts can be 

maintained through the Internet and funds replenished using a credit card. 

The fees for filing an ex parte appeal to the Board, an opposition, and a petition for cancellation, 

may all be charged to a deposit account, provided that the requirements of 37 CFR § 2.208 are 

met. However, the charging of a fee against an account that does not contain sufficient funds to 

cover it cannot be regarded as payment of the fee.120 Thus, the overdrawing of a deposit account 

may result in the loss of a vital date.121 

The Office will not accept ex parte appeals if the notice of appeal is not accompanied by at least 

a $100 fee or specific authorization to charge the deposit account for that fee, as opposed to a 

general authorization which may have been provided when the application was filed. A general 

authorization to charge a deposit account will only be effective upon petition to the Director.

122 

Because the general authorization can only be invoked on petition, the Board itself cannot accept 

the general authorization as a basis for treating the appeal fee as timely submitted. 

 

119 Papers and Fees Generally Not Returnable 

119.01 Fee Refunds--General Rule 

37 CFR § 2.209 Refunds.

(a) The Director may refund any fee paid by mistake or in excess of that required. A change of 

purpose after the payment of a fee, such as when a party desires to withdraw a trademark 

application, appeal or other trademark filing for which the fee was paid, will not entitle a party 

to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a 

refund is specifically requested, and will not notify the payor of such amounts. If a party paying 

a fee or requesting a refund does not provide the banking information necessary for making 

refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office 

that refunds are to be credited to a deposit account, the Director may require such information, 

119 For information concerning the establishment of a deposit account in the USPTO, see 37 CFR § 2.208. 

 

120 See 37 CFR § 2.208(b). 

121 See Notice at 824 TMOG 1200 (February 23, 1966). 

122 See In re Sky is the Ltd., 42 USPQ2d 1799, 1800 (Comm’r Pats. 1996). 

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or use the banking information on the payment instrument to make a refund. Any refund of a fee 

paid by credit card will be by a credit to the credit card account to which the fee was charged. 

(b) Any request for refund must be filed within two years from the date the fee was paid, except 

as otherwise provided in this paragraph. If the Office charges a deposit account by an amount 

other than an amount specifically indicated in an authorization (§ 2.208(b)), any request for 

refund based upon such charge must be filed within two years from the date of the deposit 

account statement indicating such charge, and include a copy of that deposit account statement. 

The time periods set forth in this paragraph are not extendable. 

* * * * 

119.02 Papers and Fees--Ex Parte Cases 

After an application has received a filing date, papers filed in connection therewith, including ex 

parte appeal papers, will not be returned.123 

If a notice of appeal to the Board from an examining attorney's final refusal is late filed, the 

appeal will not be entertained, the application will be abandoned, the notice of appeal will be 

retained in the application file, and any appeal fee submitted therewith will be refunded. If a 

notice of appeal is filed prematurely, the appeal will not be entertained, the notice of appeal will 

be retained in the application file, the application will be returned to the examining attorney for 

further appropriate action, and applicant will be advised that if a timely appeal is subsequently 

filed in the case, any fee submitted with the premature appeal will be applied thereto, or, if no 

timely appeal is filed, applicant may request a refund of any such fee. 

If a final refusal to register is withdrawn by the examining attorney, and the application is 

approved for publication, following which the applicant, not knowing that the application has 

been approved for publication, files a notice of appeal, the appeal will not be instituted, the 

notice of appeal will be retained in the application file, and any appeal fee submitted therewith 

will be refunded. In such a case, the notice of appeal, and appeal fee, are considered to have 

been filed in excess, rather than by change of purpose, since at the time of its filing, the appeal 

was unnecessary. If, however, the examining attorney withdraws the refusal to register, and 

approves the application for publication, after an appeal to the Board has been filed, the appeal 

will be dismissed as moot, and the appeal fee will not be refunded (the appeal having been 

necessary at the time of its filing). 

 

123 See 37 CFR § 2.25. 

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119.03 Papers and Fees--Inter Partes Cases 

After an inter partes proceeding before the Board has been filed, papers and other materials filed 

in connection therewith, normally will not be returned. Exhibits to testimony and confidential 

materials filed under a protective order ordinarily are returned after the conclusion of a 

proceeding, including any appeal period, to the party that filed them.

124 

 

If because of a defect in an opposition or a petition for cancellation filed with the Board, a 

proceeding is not instituted, any submitted fee will be refunded. 

No proceeding will be instituted, and any submitted filing fee will be refunded in the following 

circumstances: 

(1) If an opposition filed during an extension of time to oppose is in the name of 

someone other than the person who obtained the extension, and the opposer is 

unable to show, pursuant to 37 CFR § 2.102(b), that it is in privity with the 

person who obtained the extension, or that the person in whose name the 

extension was requested was misidentified by mistake. 

(2) If an opposition or a petition for cancellation is filed prematurely (i.e., prior 

to publication of the subject mark in the Official Gazette for purposes of 

opposition, or prior to issuance of a registration of the subject mark, 

respectively, even if the registration has issued by the time of the Board's 

action). 

(3) If an opposition is filed after the time for opposing has expired; or, is filed 

unsigned, and a signed copy is not submitted within the time limit set in the 

notification of this defect by the Board; or is filed without the required fee; or if 

the opposed application was abandoned before the opposition was filed.125

Electronic fillings will not be accepted if any of the above-identified conditions exist.

Proceedings will be instituted, and the filing fee charged in the following circumstances: 

(1) If a petition to cancel a Principal Register registration that is more than five 

years old does not allege any ground upon which such a registration can be 

cancelled (see Section 14 of the Act of 1946, 15 U.S.C. § 1064), the cancellation 

will be instituted and the Board will issue an order to show cause why the 

petition should not be dismissed for failure to state a claim. 

124 Cf. TBMP § 806 (Termination of Proceeding). 

125 See TBMP § 218 (Abandonment of Application). 

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(2) If a petition for cancellation is filed with respect to a registration which, at 

the time of the filing of the petition, was not a "live" registration (e.g., the time 

for filing an affidavit of use under Section 8 of the Act of 1946, 15 U.S.C. § 

1058, had expired, and no acceptable affidavit had been filed; the registration 

had already been cancelled as the result of a previous cancellation proceeding), 

the proceeding will be instituted, and then dismissed as moot. 

(3) If a party files an opposition or a petition for cancellation, and immediately 

thereafter changes its mind, and requests that the opposition or petition for 

cancellation not be instituted and that the papers be returned, the request 

ordinarily will be denied, and the proceeding will be instituted, unless there is a 

defect in the opposition or petition for cancellation which precludes institution, 

in which case no proceeding will be instituted, and any submitted fee will be 

refunded. 

When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather

than vacated, so as to maintain the integrity of the proceeding numbers. All documents will be 

retained by the Board. 

 120 Access to Files 

37 CFR § 2.27(d) Except as provided in paragraph (e) of this section, after a mark has been 

registered, or published for opposition, the file of the application and all proceedings relating 

thereto are available for public inspection and copies of the papers may be furnished upon 

paying the fee therefor.

37 CFR § 2.27(e) Anything ordered to be filed under seal pursuant to a protective order issued 

or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving 

an application or a registration shall be kept confidential and shall not be made available for 

public inspection or copying unless otherwise ordered by the court or the Board, or unless the 

party protected by the order voluntarily discloses the matter subject thereto. When possible, 

only confidential portions of filings with the Board shall be filed under seal. 

120.01 Nonconfidential Files 

Except for materials filed under seal pursuant to a protective agreement, the files of applications 

and registrations which are the subject matter of pending proceedings before the Board, all 

pending proceeding files and exhibits thereto, and the files of applications which are the subject 

matter of "potential oppositions," are available for public inspection and copying at the offices of 

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the Board.126 The electronic files of the Board are accessible via the Internet at 

http://ttabvue.uspto.gov. 

An individual who wishes to inspect and/or copy one of the paper files may come to the Board's 

reception desk, where the Board maintains an electronic log of file requests, and ask for the file. 

The individual must identify the file by its number, so that the Board may locate it. If the request 

is logged in before noon, the file is generally available that afternoon. When the individual 

returns, the file will be given to him or her for inspection and/or copying on the premises of the 

Board. Files or portions thereof may not be taken away from the offices of the Board, and a 

person who removes papers from a file for copying at the offices of the Board should always 

return the papers to the file in their proper order. 

To save time, an individual who wishes to inspect a file that is in the possession of the Board 

may call and ask that the file be located. When the file has been located, the Board will call the 

individual back to tell him or her that the file is available. 

Electronic images of Board proceeding files can be viewed using TTABVUE at 

http://ttabvue.uspto.gov. The electronic image files are also available to the public in the 

Trademark Library Search Room. 

For information concerning access to the files of cases that are on appeal from a decision of the 

Board, see TBMP § 904.

120.02 Confidential Materials 

Materials filed with the Board under seal pursuant to a protective order entered by any court or 

by the Board and filed in compliance with TBMP § 412.06, will be kept confidential and will not 

be made available for public inspection or copying unless otherwise ordered by the court or the 

Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. 

These materials may be inspected only by those individuals who are entitled, under the terms of 

the protective order, to have access to the protected information.127 

To be handled as confidential, and kept out of the public record, submissions to the Board that 

are confidential must be filed 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 also be submitted. 128

 

126 See 37 CFR § 2.27. 

127 See 37 CFR §§ 2.27(e); 2.120(f), and 2.125(e); and TBMP §§ 412.02 (Protective Orders Upon Stipulation), 526

(Motion for Protective Order) and 703.01(p) (Confidential or Trade Secret Material). 

128 See 37 CFR § 2.126(d). 

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GENERAL INFORMATION

 

Except for materials filed under seal pursuant to a protective order, the files of applications and 

registrations which are the subject matter of pending proceedings before the Board and all 

pending proceeding files and exhibits thereto are available for public inspection and copying. 

Therefore, only the particular discovery responses, exhibits, deposition transcript pages, or those 

portions of a brief, pleading or motion that disclose confidential information should be filed 

under seal pursuant to a protective order. If a party submits any brief, pleading, motion or other 

such filing containing confidential information under seal, the party must also submit for the 

public record a redacted version of said papers.129 A good practice would be to stamp each page 

as “confidential” of a submission that contains such matter. Confidential materials filed in the 

absence of a protective order will not be kept confidential by the Board.130 

120.03 Files of Terminated Proceedings 

When an inter partes proceeding has been finally determined, i.e., when the proceeding is over, 

the Office takes certain further steps based on the final decision, including those steps necessary 

to give effect to the decision. This process is referred to as the "termination" of the 

proceeding.131 The electronic files of terminated proceedings continue to remain available 

through the electronic databases. 

Pursuant to the National Archives retention schedule, terminated paper inter partes proceeding 

files that result in a final decision by the Board, e.g., motion for summary judgment, motion to 

dismiss, or final decision on the merits, are transferred to a warehouse for 3 years, then to the 

Federal Records Center for 27 years and then to the National Archives for permanent retention. 

All other terminated paper proceedings are transferred to a warehouse for 3 years and then 

transferred to the National Records Center where they remain for 27 years before destruction. 

The paper files of existing registrations are also stored at the warehouse. The paper files of 

cancelled and expired registrations are destroyed two years after the date of cancellation or 

expiration; the paper files of abandoned applications are destroyed two years after the date of 

abandonment. In addition, the paper files of terminated opposition proceedings numbered from

30,000 through 53,999, and of terminated cancellation proceedings numbered from 1 through 

9399, have been destroyed. 

129 See 37 CFR §§ 2.27(d) and (e); and 2.126(d); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445

(TTAB 2000); and Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark 

Rep. 653 (1981). 

 

130 See Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits marked

confidential for thirty days pending receipt of motion for protective order but advised that in absence of such motion 

the exhibits would be placed in the proceeding file), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225

(D.D.C. 2003).

131 See TBMP § 806 (Termination of Proceeding). 

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An individual who wishes to inspect and/or copy a paper file stored by the Office in a warehouse 

may go to the Trademark Search Library and place an order for the file. Within a few days, the 

USPTO will obtain the ordered file from the warehouse, and make it available to the individual 

for inspection and/or copying at the Trademark Search Library. The file may not be removed 

from the premises of the Trademark Search Library.132

 121 Copying of Files 

The Board has, on its office premises, a photocopier that is intended for use by members of the 

public who wish to photocopy files, exhibits, or other materials in the possession of the Board. 

Payment for use of the machine is made by way of a magnetic card, known as a "copy card," 

which may be purchased at, inter alia, the USPTO Finance Window located on the third floor of 

the South Tower Building, 2900 Crystal Drive, Arlington, Virginia, or from a machine located in 

the Trademark Search Library on the second floor of the South Tower Building. The 

photocopier will not operate until such a card has been inserted in it. 

Electronic files can be accessed by the public through the Internet and copies of the documents in 

the electronic files can be downloaded and printed out by the user through TTABVUE. 

Paper files or portions thereof may not be taken away from the offices of the Board, and a person 

who removes papers from a file for copying at the offices of the Board should always return the 

papers to the file in their proper order. 

Alternatively, the USPTO Office of Public Records will furnish photocopies (either certified or 

uncertified) of trademark application and registration files, or of one or more papers therefrom,

or of papers from the files of Board proceedings, upon written request and payment of the fee 

prescribed in 37 CFR § 2.6. The Office will also furnish, upon written request and payment of 

the fee prescribed in 37 CFR § 2.6, printed copies of trademark registrations, certified copies of 

registrations with information as to the current status and title of the registration, and abstracts of 

title to trademark applications and registrations. 

All requests for certified and uncertified copies of trademark documents relating to applications 

or registrations, including copies of papers from the files of Board proceedings, and abstracts of 

title, are handled by the USPTO's Document Services, Office of Public Records. A written 

request (with the required fee) for copies should be addressed to Mail Stop Document Services, 

Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 

22313-1450. The written request, with fee, may also be hand delivered to the Public Service 

Window at 2900 Crystal Drive, South Tower Building, Second Floor, Arlington, Virginia 22202-

3514; or to the Office of Public Records, Crystal Gateway 4, Third Floor, 1213 Jefferson Davie 

Highway, Arlington, Virginia 22202-3513; or to the Attorneys' Window at 2201 S. Clark Place, 

132 See TMEP § 109. 

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GENERAL INFORMATION

Crystal Plaza Building 4, First Floor, Arlington, Virginia 22202. Finally, if the written request 

includes an authorization to charge the required fee to a deposit account, the request may be sent 

by facsimile transmission to (703) 305-8759.133 Orders may also be placed over the Internet 

through the Office homepage at www.uspto.gov. 

122 Certification 

122.01 Court Requirements 

If a copy of a Board proceeding file, or a portion thereof, is needed for use before a district court, 

the court may require a certified copy (which bears a seal). This may be obtained from the 

USPTO Document Services of the Office of Public Records. 

A paper cannot be certified by the Office as being a true copy of a paper filed in a Board 

proceeding unless and until it has, in fact, been filed therein. The paper may be filed at the same

time that the request for certification is made. 

122.02 Certified Copies 

Certified copies, bearing a seal, of Office proceeding files, including Board proceeding files, or 

portions thereof, may be ordered from the USPTO's Document Services, Office of Public 

Records, upon written request and payment of the required fee.134 

123 Status Information for Applications, Registrations and Board 

Proceedings 

The Office maintains a Trademark Status Line which provides access, by push-button telephone, 

to current status, status date (i.e., the date that a record entered its current status), and status 

location information for all active Federal trademark application and registration records 

maintained in the automated Trademark Reporting and Monitoring (TRAM) System.

135 The line 

is available on (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through 

Friday (except for Federal holidays). The Trademark Assistance Center provides general 

information about the registration process and can also answer status questions. The Center can 

be reached at 703-308-9000. Trademark application and registration information can also be 

obtained through the Office web site at www.uspto.gov and through the Trademark Applications 

 

133 See "Notice of a Change in Procedure Regarding Requests for Certification Services," 1165 TMOG 13 (August 

2, 1994). 

134 See TBMP §§ 121 (Copying of Files) and 122.02 (Certified Copies). 

135 See In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm'r 1992). 

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and Registrations Retrieval (TARR) database at http://tarr.uspto.gov. The status of Board 

proceedings and of requests for extensions of time to oppose can be obtained through the Board 

Information Systems Index (BISX) at www.uspto.gov. Electronic images of Board proceeding 

files can be viewed using TTABVUE at http://ttabvue.uspto.gov. The electronic image files are 

also available to the public in the Trademark Library Search Room. 

For further information concerning the Trademark Status Line, see TMEP § 1707.05, and TMEP 

§§ 108 et seq. 

 

124 Action by Assignee 

When a mark which is the subject of a Federal application or registration has been assigned, 

together with the application or registration, in accordance with Section 10 of the Act, 15 U.S.C. 

§ 1060, any action with respect to the application or registration which may or must be taken by 

the applicant or registrant may be taken by the assignee (acting itself, or through its attorney or 

other authorized representative), provided that the assignment has been recorded or that proof of 

the assignment has been submitted.136 Similarly, when a mark which is not the subject of a 

Federal application or registration, but which is owned and pleaded by a plaintiff in a Board inter 

partes proceeding, has been assigned, the assignee may act in the proceeding (either itself, or 

through its attorney or other authorized representative) in place of the assignor, provided that 

proof of the assignment has been submitted in the proceeding.137 

NOTE: Section 10 of the Act, 15 U.S.C. § 1060, and part 3 of 37 CFR are not applicable to 

66(a) applications and registrations.138 Except in limited circumstances, requests to record 

assignments of 66(a) applications and registrations must be filed directly with the International 

Bureau.139 The International Bureau will notify the USPTO of any changes in ownership 

recorded in the International Register. The USPTO will record only those assignments, or other 

documents of title, that have been recorded in the International Register.

140 

 

136 See 37 CFR §§ 3.71 and 3.73(b). See also 37 CFR § 7.22 et seq. regarding assignments of 66(a) applications 

and registrations. 

137 See TBMP § 512.01 (Assignment of Mark).

138 See 37 CFR § 7.22 et seq for information on recording changes to 66(a) applications and registrations. 

139 See Section 72 of the Trademark Act, 15 U.S.C. 1141/; and 37 CFR § 7.22. See also Rules of Practice for 

Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, published in the Federal 

Register on September 26, 2003 at 68 FR 55748, 55751; Exam Guide No. 2-03, Guide to Implementation of Madrid

Protocol in the United States (part V.I) (October 28, 2003); and Exam Guide No. 1-03, Changes Affecting All 

Applications and Registrations (part V.D) (October 30, 2003). 

140 See Exam Guide No. 2-03, supra (parts IV.F and VI.A.1) (October 28, 2003). 

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201 In General 

15 U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a 

mark upon the principal register, including as a result of dilution under section 43(c), may, upon 

payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the 

grounds therefor, within thirty days after the publication under subsection (a) of section 12 of 

this Act of the mark sought to be registered. Upon written request prior to the expiration of the 

thirty-day period, the time for filing opposition shall be extended for an additional thirty days, 

and further extensions of time for filing opposition may be granted by the Director for good 

cause when requested prior to the expiration of an extension. The Director shall notify the 

applicant of each extension of the time for filing opposition. An opposition may be amended 

under such conditions as may be prescribed by the Director. 

37 CFR § 2.101 Filing an opposition.

(a) An opposition proceeding is commenced by the filing of an opposition together with the 

required fee, in the Office. 

(b) Any person who believes that he, she or it would be damaged by the registration of a mark on 

the Principal Register may file an opposition, addressed to the Trademark Trial and Appeal 

Board. The opposition need not be verified, but must be signed by the opposer or the opposer's 

attorney, as specified in § 10.1(c) of this chapter, or other authorized representative, as specified 

in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required 

for oppositions submitted electronically under paragraphs (b)(1) or (2) of this section. 

(1) An opposition to an application based on section 1 or 44 of the Act must be filed 

either on paper or through ESTTA. 

(2) An opposition to an application based on section 55(a) of the Act must be filed 

through ESTTA. 

(c) The opposition must be filed within thirty days after publication (§ 2.80) of the application 

being opposed or within an extension of time (§ 2.102) for filing an opposition. 

* * * * 

37 CFR § 2.102 Extension of time for filing an opposition. 

(a) Any person who believes that he, she or it would be damaged by the registration of a mark on 

the Principal Register may file in the Office a written request addressed to the Trademark Trial 

and Appeal Board to extend the time for filing an opposition. The written request need not be 

verified, but must be signed by the potential opposer or by the potential opposer’s attorney as 

specified in § 10.1(c) of this chapter, or authorized representative, as specified in § 10.14(b) of 

this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for electronically 

filed extension requests. 

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(1) A written request to extend the time for filing an opposition to an application filed

under section 1 or 44 of the Act must be filed either on paper or through ESTTA. 

(2) A written request to extend the time for filing an opposition to an application filed

under section 66(a) of the Act must be filed through ESTTA. 

(b) The written request to extend the time for filing an opposition must identify the potential 

opposer with reasonable certainty. Any opposition filed during an extension of time should be in 

the name of the person to whom the extension was granted. An opposition may be accepted if the 

person in whose name the extension was requested was misidentified through mistake or if the 

opposition is filed in the name of a person in privity with the person who requested and was 

granted the extension of time. 

(c) The time for filing an opposition shall not be extended beyond 180 days from the date of 

publication. Any request to extend the time for filing an opposition must be filed before thirty 

days have expired from the date of publication or before the expiration of a previously granted 

extension of time, as appropriate. 

(c) The time for filing an opposition shall not be extended beyond 180 days from the date of 

publication. Any request to extend the time for filing an opposition must be filed before thirty 

days have expired from the date of publication or before the expiration of a previously granted 

extension of time, as appropriate. Requests to extend the time for filing an opposition must be 

filed as follows: 

(1) A person may file a first request for either a thirty-day extension of time, which will 

be granted upon request, or a ninety-day extension of time, which will be granted only for 

good cause shown. 

(2) If a person was granted a thirty-day extension of time, that person may file a request 

for an additional sixty-day extension of time, which will be granted only for good cause 

shown. 

(3) After receiving one or two extensions of time totaling ninety days, a person may file 

one final request for an extension of time for an additional sixty days. The Board will 

grant this request only upon written consent or stipulation signed by the applicant or its 

authorized representative, or a written request by the potential opposer or its authorized 

representative stating that the applicant or its authorized representative has consented to 

the request, or a showing of extraordinary circumstances. No further extensions of time 

to file an opposition will be granted under any circumstances.

Any person (whether natural or juristic--see TBMP § 303.02) who believes that he, she, or it 

would be damaged by the registration of a mark upon the Principal Register may, upon payment 

of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days 

after the publication of the mark in the Official Gazette for purposes of opposition.1

 

1

 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.101. For further information concerning the 

filing of an opposition, see TBMP chapter 300.

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Similarly, any person who believes that he, she, or it would be damaged by the registration of a 

mark upon the Principal Register may file a written request to extend the time for filing an 

opposition.2

 Requests for extensions of time to oppose are determined by the Board.3 

The time for filing a request for an extension of time to oppose is governed by Section 13(a) of 

the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102(c). Other requirements for a request for 

extension of time to oppose are set forth in 37 CFR § 2.102(a) and (b). Moreover, an extension 

of time to oppose must also meet the general requirements for submissions to the Board specified 

in 37 CFR § 2.126. Each of these requirements is discussed in the sections that follow. 

 

202 Time for Filing Request 

202.01 In General 

U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a 

mark upon the principal register, including as a result of dilution under section 43(c), may, upon 

payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the 

grounds therefor, within thirty days after the publication under subsection (a) of section 12 of 

this Act of the mark sought to be registered. Upon written request prior to the expiration of the 

thirty-day period, the time for filing opposition shall be extended for an additional thirty days, 

and further extensions of time for filing opposition may be granted by the Director for good 

cause when requested prior to the expiration of an extension. The Director shall notify the 

applicant of each extension of the time for filing opposition. An opposition may be amended 

under such conditions as may be prescribed by the Director. 

37 CFR § 2.102(c) The time for filing an opposition shall not be extended beyond 180 days from 

the date of publication. Any request to extend the time for filing an opposition must be filed 

before thirty days have expired from the date of publication or before the expiration of a 

previously granted extension of time, as appropriate. Requests to extend the time for filing an 

opposition must be filed as follows: 

(1) A person may file a first request for either a thirty-day extension of time, which will 

be granted upon request, or a ninety-day extension of time, which will be granted only for 

good cause shown. 

(2) If a person was granted a thirty-day extension of time, that person may file a request 

for an additional sixty-day extension of time, which will be granted only for good cause 

shown. 

2

 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102. 

3

 See 37 CFR § 2.102(a) and Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1075 n.2 (TTAB 1993) 

(Trademark Rule 2.102(c) delegates the authority to the Board to grant, ex parte, extensions of time to oppose). 

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(3) After receiving one or two extensions of time totaling ninety days, a person may file 

one final request for an extension of time for an additional sixty days. The Board will 

grant this request only upon written consent or stipulation signed by the applicant or its 

authorized representative, or a written request by the potential opposer or its authorized 

representative stating that the applicant or its authorized representative has consented to 

the request, or a showing of extraordinary circumstances. No further extensions of time 

to file an opposition will be granted under any circumstances.

A first request for an extension of time to oppose an application for registration of a mark must 

be filed prior to the expiration of the thirty-day period after publication of the mark in the 

Official Gazette, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for purposes of 

opposition. Any request for a further extension of time to oppose must be filed prior to the 

expiration of an extension granted to the requesting party or its privy.4

 

 

The timely filing of documents in the Office requires that the documents actually be received in 

the Office within the set time period unless such documents are filed in accordance with 37 CFR 

§§ 2.197 and 2.198 that provide for filing of papers by certificate of mailing and Express Mail, 

respectively. Documents filed in accordance with these rules are considered as having been filed 

on the date of deposit as first class mail or Express Mail even though the mailed correspondence 

will not be received in the Office until after the due date.5

 The Express Mail filing procedure 

applies only to the “Express Mail” of the United States Postal Service, not any third-party carrier 

that offers overnight delivery.6

 For extension requests filed electronically through ESTTA, all 

time periods are calculated electronically and the filer is immediately informed of the timeliness 

of the filing.7 

In the event that a particular extension request submitted on paper is timely filed with an 

appropriate certificate of mailing, pursuant to 37 CFR § 2.197, but is not received in the Office, 

the correspondence will be considered timely if the party that submitted it supplies an additional 

copy of the previously mailed extension request and certificate, and includes a statement 

attesting to the previous timely mailing. The statement must be verified if it is made by a person 

other than a practitioner, as defined in § 37 CFR 10.1(r).8

 The only evidence accepted by the 

Office to prove deposit of the missing extension request is an exact copy of the disputed 

4

 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102(c). See also In re Cooper, 209 USPQ 670,

671 (Comm'r 1980) (timeliness of extension requests is statutory and cannot be waived). 

5

 See In re Pacesetter Group, Inc., 45 USPQ2d 1703, 1704 (Comm’r 1994) and TBMP § 110.01 (Certificate of

Mailing or Transmission Procedure). 

6

 See In re Pacesetter Group, Inc., supra. 

7

 See TBMP § 109 (Filing Date). 

8

 See 37 CFR § 2.197(b) and TBMP § 110.01 (Certificate of Mailing or Transmission Procedure – In General). 

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document including a copy of the executed original certificate of mailing.9

 A reconstructed 

request and certificate of mailing will not suffice. 

A potential opposer that has filed an extension request on paper should not wait until it has 

received notification from the Board of the grant or denial of the request before filing an 

opposition or a request for a further extension of time to oppose. If a request for an extension of 

time to oppose is granted, the length of the granted extension may be less than that sought in the 

extension request. The extension will run from the expiration of the thirty-day opposition period 

after publication. In the case of a subsequent extension, it will run from the date of expiration of 

the previously granted extension.10 While the Board attempts to notify a potential opposer of the 

grant of an extension request filed on paper before a granted extension expires, particularly when 

the length of the granted extension is less than that requested, the Board is under no obligation to 

do so, and in many cases cannot.11 

No more than three requests to extend the time for filing an opposition, totaling 180 days from

the date of publication, may be filed.12 A potential opposer may file a request for a thirty-day 

extension without a showing of cause, followed by a request for a sixty-day extension for good 

cause.13 Alternatively, the potential opposer may file a single request for a ninety-day extension 

of time for good cause. After one or two granted requests totaling 120 days from the date of 

publication, the potential opposer may request one final extension of time for an additional sixty 

days, but only with the written consent of the applicant or a showing of extraordinary 

circumstances.14

9

 See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (a declaration attesting to the filing and

to the certificate of mailing is not acceptable as evidence of timely filing). 

10 See In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm'r 1990). 

11 See Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm'r 1991) (where 

misdirection of initial extension prevented Board from addressing calculation error in the request) and In re Societe 

Des Produits Nestle S.A., supra (potential opposer was not notified of partial grant of extension request until after 

date had passed). Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (no

statute or regulation imposes obligation on Office to notify parties of defects in sufficient time to allow correction); 

In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm'r 1992) (no obligation to notify of defective statement of use); 

and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm'r 1966) (no obligation to

discover deficiencies within a specified time). 

12 37 CFR § 2.102(c)(3).

13 See 37 CFR § 2.102(c)(2).

14 See 37 CFR § 2.102(c)(3).

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202.02 Date of Publication of Mark

The date of publication of a mark is the issue date of the Official Gazette in which the mark 

appears, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for purposes of opposition. 

202.03 Premature Request 

Section 13(a) of the Act, 15 U.S.C. § 1063(a), provides that an opposition to the registration of a 

mark upon the Principal Register may be filed "within thirty days after" the publication of the 

mark in the Official Gazette, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for 

opposition. Section 13(a) also provides for extensions of this time for filing an opposition under 

certain conditions. Thus, any opposition, and any request for an extension of time to oppose, 

filed before the publication of the mark sought to be opposed, is premature, and the Board will 

reject the opposition even if the mark has been published by the time of the Board's action.15 

202.04 Late Request 

A request for an extension of time to oppose must be filed prior to the expiration of the thirty-day 

period after publication (for opposition) of the mark which is the subject of the request, in the 

case of a first request, or prior to the expiration of an extension granted to the requesting party or 

its privy, in the case of a request for a further extension.16 Because these timeliness requirements 

are statutory, they cannot be waived by stipulation of the parties, nor can the Director upon 

petition waive them.

17 Accordingly, a first request filed after the expiration of the thirty-day 

period following publication of the subject mark, or a request for a further extension filed after 

the expiration of the previous extension granted to the requesting party or its privy, must be 

denied by the Board as late, even if the applicant has consented to the granting of the late filed 

request. 

Moreover, once the time for opposing the registration of a mark has expired, the Office will not 

withhold issuance of the registration while applicant negotiates for settlement with a party that 

failed to timely oppose. This is so even if the applicant itself requests that issuance be withheld. 

15 Cf. TBMP §§ 119.03 (Papers and Fees Generally Not Returnable) and 306.03 (Premature Opposition). 

16 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102(c). See also In re Cooper, 209 USPQ 670

(Comm'r Pats 1980) and TBMP § 206.02 (regarding further extension requests filed by privy). 

17 See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (waiver of Rule 1.8 [2.197]would

effectively waive Section 13 and, in any event, fact that potential opposer did not retain executed hard copies of

documents filed with Office and cannot prove document was timely is not an extraordinary circumstance justifying a 

waiver of Rule 1.8 [now 2.197]); In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r

1994); and In re Cooper, supra at 671. 

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203 Form of Request 

203.01 In General 

37 CFR § 2.102(a) Any person who believes that he, she or it would be damaged by the 

registration of a mark on the Principal Register may file in the Office a written request 

addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition. 

The written request need not be verified, but must be signed by the potential opposer or by the 

potential opposer’s attorney as specified in § 10.1(c) of this chapter, or authorized 

representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 

2.193(c)(1)(iii) are required for electronically filed extension requests. 

(1) A written request to extend the time for filing an opposition to an application filed

under section 1 or 44 of the Act must be filed either on paper or through ESTTA. 

(2) A written request to extend the time for filing an opposition to an application filed

under section 66(a) of the Act must be filed through ESTTA. 

(b) The written request to extend the time for filing an opposition must identify the potential 

opposer with reasonable certainty. Any opposition filed during an extension of time should be in 

the name of the person to whom the extension was granted. An opposition may be accepted if the 

person in whose name the extension was requested was misidentified through mistake or if the 

opposition is filed in the name of a person in privity with the person who requested and was 

granted the extension of time. 

(c) The time for filing an opposition shall not be extended beyond 180 days from the date of 

publication. Any request to extend the time for filing an opposition must be filed before thirty 

days have expired from the date of publication or before the expiration of a previously granted 

extension of time, as appropriate. Requests to extend the time for filing an opposition must be 

filed as follows: 

(1) A person may file a first request for either a thirty-day extension of time, which will 

be granted upon request, or a ninety-day extension of time, which will be granted only for 

good cause shown. 

(2) If a person was granted a thirty-day extension of time, that person may file a request 

for an additional sixty-day extension of time, which will be granted only for good cause 

shown. 

(3) After receiving one or two extensions of time totaling ninety days, a person may file 

one final request for an extension of time for an additional sixty days. The Board will 

grant this request only upon written consent or stipulation signed by the applicant or its 

authorized representative, or a written request by the potential opposer or its authorized 

representative stating that the applicant or its authorized representative has consented to 

the request, or a showing of extraordinary circumstances. No further extensions of time 

to file an opposition will be granted under any circumstances.

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37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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) 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) 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) 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) A paper submission must not be stapled or bound; 

(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a paper or 

CD-ROM submission. 

* * * * 

(c) 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. 

 * * * * 

A request for an extension of time to oppose must be made in writing and must specify the 

period of extension desired.18 

A request for extension of time to oppose a Section 1 or 44 application may either be filed on 

paper or through ESTTA.19 However, a request for extension of time to oppose a 66(a) 

application must be filed through ESTTA.20 The requirements for paper and electronic 

submissions to the Board are specified in 37 CFR § 2.126(a) and (c), respectively. Available 

forms and instructions for electronic filing can be found at www.uspto.gov. 

 

18 See 37 CFR § 2.102. 

19 See 37 CFR § 2.102(a)(1). See also TBMP §§ 106.03 (Form of Submissions) and 107 (How and Where to File

Papers). 

20 See 37 CFR § 2.102(a)(2). See also TBMP § 106.03 (Form of Submissions). 

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No more than three requests to extend the time for filing an opposition, totaling 180 days from

the date of publication, may be filed.21 A potential opposer may file a request for a thirty-day 

extension without a showing of cause, followed by a request for a sixty-day extension for good 

cause, if the first request was granted.22 Alternatively, the potential opposer may file a single 

request for a ninety-day extension of time for good cause.23 After one or two granted requests 

totaling 120 days from the date of publication, the potential opposer may request one final 

extension of time for an additional sixty days only with the written consent of the applicant or a 

showing of extraordinary circumstances.24

203.02 Identifying Information

203.02(a) In General

An extension request filed on paper should bear at its top the heading "IN THE UNITED 

STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK 

TRIAL AND APPEAL BOARD," followed by information identifying the application to 

which the request pertains, namely, the name of the applicant, and the application serial 

number, filing date, mark, and date of publication in the Official Gazette.25 The request 

should also bear an appropriate title describing its nature, such as "Request for Extension 

of Time to Oppose" or "Request for Further Extension of Time to Oppose." 

203.02(b) Requirement for Identification of Potential Opposer 

A request for an extension of time to oppose must identify the potential opposer with 

reasonable certainty.26 If a request for extension of time to oppose fails to identify the 

potential opposer with reasonable certainty, the Board can allow the defect to be 

corrected only if the correction is made prior to the expiration of the time for filing the 

request, that is, before the expiration of the thirty-day opposition period following 

21 37 CFR § 2.102(c)(3).

22 See 37 CFR § 2.102(c). 

23 See 37 CFR § 2.102(c)(1).

24 See 37 CFR § 2.102(c)(3).

25 Cf. 37 CFR § 2.191, and In re Merck & Co., 24 USPQ2d 1317, 1318 (Comm'r 1992) (Board's refusal to institute 

opposition as untimely was proper where potential opposer had misidentified applicant and serial number in its 

extension request). 

26 37 CFR § 2.102(b). 

 

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publication of the subject mark in the case of a first request, or of the previous extension 

in the case of a request for a further extension.27

If a request for a further extension of time to oppose does not specifically name the 

potential opposer, but it is clear from the circumstances that the request is being 

submitted on behalf of the same potential opposer which obtained an earlier extension, 

the request may be construed by the Board as identifying the potential opposer with 

reasonable certainty. However, the better, and safer, practice is to specifically name the 

potential opposer in each request for an extension of time to oppose. 

203.03 Signature 

37 CFR § 2.102(a) Any person who believes that he, she or it would be damaged by the 

registration of a mark on the Principal Register may file in the Office a written request 

addressed to the Trademark Trial and Appeal Board to extend the time for filing an opposition. 

The written request need not be verified, but must be signed by the potential opposer or by the 

potential opposer’s attorney as specified in § 10.1(c) of this chapter, or authorized 

representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 

2.193(c)(1)(iii) are required for electronically filed extension requests. 

 * * * * 

A request for an extension of time to oppose must be signed either by the potential opposer or by 

its attorney, as specified in 37 CFR § 10.1(c) or other authorized representative, as specified in 

37 CFR § 10.14(b).28 A paper request should bear, under the written signature, the name, in 

typed or printed form, of the person signing; a description of the capacity in which he or she 

signs (e.g., as the individual who is the potential opposer, if the potential opposer is an 

individual; as a corporate officer, specifying the particular office held, if the potential opposer is 

a corporation; as potential opposer's attorney; etc.); and his or her business address (to which 

27 See In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm'r 1985) (since extension request failed to identify 

any party except attorney filing request, and since privity does not include attorney/client relationship, subsequent

notice of opposition was untimely). 

 Cf. In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm'r 1991) (inadvertence is not extraordinary 

circumstance to waive rule requiring that statement indicating consent or showing extraordinary circumstances for 

extension over 120 days must be submitted at time extension request is filed, not after the fact); In re Societe Des 

Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm'r 1990) (subsequently obtained consent is not sufficient and

omission, in itself, is not extraordinary circumstance to waive requirement that consent accompany extension 

request); and In re Software Development Systems, Inc., 17 USPQ2d 1094, 1095 (Comm'r 1989) (inadvertent 

oversight does not constitute extraordinary circumstance to waive [former] requirement for proof of service). 

28 See 37 CFR § 2.102(a). See also La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783, 784 (Comm'r 1974) 

(petition filed by applicant denied; extension requests were filed on behalf of potential opposer by its attorney as its 

representative not as another party). 

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correspondence relating to the request will be sent) and telephone number. This information is 

required on the electronic form as well. 

An extension request filed electronically through ESTTA, does not require a conventional 

signature. Instead the party or its representative enters a “symbol” that has been adopted as a 

signature. The Board will accept any combination of letters, numbers, space and/or punctuation 

marks as a valid signature if it is placed between two forward slash (“/”) symbols.29 

While a request for an extension of time to oppose must be signed, an unsigned paper request 

will not be refused consideration if a signed copy is submitted to the Office within the time limit 

set in the written notification of this defect by the Board.30 A extension request filed through 

ESTTA cannot be electronically transmitted to the Office unless all required fields, including the 

signature field, are completed. 

A potential opposer that has submitted an unsigned paper request should not wait until it has 

submitted a signed copy of the request (in response to the Board's written notification of the 

defect), and the Board has acted on the request, before filing an opposition or a request for a 

further extension of time to oppose. If the extension request is ultimately granted, the length of 

the granted extension may be less than that sought in the extension request, and it will run from

the expiration of the thirty-day opposition period after publication, in the case of a first request, 

or from the date of expiration of the previously granted extension, in the case of a subsequent 

request. If no opposition or request for further extension of time to oppose is filed prior to the 

expiration of any extension ultimately granted (after submission of a signed copy of the request) 

to the potential opposer, the time for opposing will be deemed to have expired, and the 

application that was the subject of the request will be sent to issue.31 

203.04 Service 

Trademark Rule 2.119(a), 37 CFR § 2.119(a), requires, in part, that with certain stated 

exceptions, every paper filed in the USPTO in inter partes cases must be served upon the other 

parties, and that proof of such service must be made before the Board will consider the paper. 

Trademark Rule 2.101(a), 37 CFR § 2.101(a), provides that the filing of an opposition in the 

Office commences an opposition proceeding. Inasmuch as a request for an extension of time to 

oppose is a paper filed prior to the commencement of the opposition, it is ex parte, rather than 

inter partes, in nature. Accordingly, the request need not include proof of service upon the 

29 37 CFR § 2.193(c)(1)(iii). See also TMEP § 804.05. 

30 See 37 CFR § 2.119(e) and TBMP § 106.02 (Signature of Submissions).

31 Cf. TBMP § 202.01 (Time for Filing Request). 

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applicant.32 Once the Board has acted upon a request for an extension of time to oppose, the 

Board will send the applicant a copy of the extension request together with the Board's action 

thereon.33 

203.05 Duplicate Requests 

It sometimes happens that duplicate requests for an extension of time to oppose are filed on 

behalf of the same party by two attorneys from the same firm, or from differing firms, or by an 

attorney from a firm and in-house counsel. Attorneys should make every effort to avoid the 

filing of such duplicate requests, which waste the time and resources, both of the Board and the 

attorneys. 

When duplicate requests have been filed and the first request has been granted, the second 

request is given no consideration, and the attorneys are notified in writing of the duplicate filings 

and are requested to take appropriate action to avoid filing duplicate requests in the future. If

requests filed by different attorneys on behalf of the same party are duplicates but for the fact 

that the second request seeks a longer extension than the first, the second request will be granted, 

if otherwise appropriate, but the attorneys will be requested in writing to avoid the filing of

further duplicate requests. 

 204 Fee 

 

There is no fee for filing a request for an extension of time to oppose.34 

205 Mark on Supplemental Register Not Subject to Opposition 

Although the mark in an application for registration on the Principal Register is published for, 

and subject to, opposition, the mark in an application for registration on the Supplemental 

Register is not.35 If it appears after examination of an application to register a mark on the 

Supplemental Register, that applicant is entitled to the registration; a certificate of registration is 

32 See 37 CFR § 2.102(c) and, for example, In re Docrite Inc., 40 USPQ2d 1636, 1638 (Comm’r 1996) (request for 

extension of time aggregating more than 120 days does not have to include proof of service on applicant or

applicant’s attorney when the request includes a statement that applicant has consented to the extension); and La

Maur, Inc. v. Andis Clipper Co., supra. 

33 See Section 13 of the Act, 15 U.S.C. § 1063. 

34 Cf. 37 CFR § 2.6. 

35 See Sections 12(a), 13(a), and 24 of the Act, 15 U.S.C. §§ 1062(a), 1063(a), and 1092, and 37 CFR § 2.82. 

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issued without any publication for opposition.36 Upon issuance of the registration, the mark 

appears in the Official Gazette, not for opposition, but rather to give notice of the registration's 

issuance.37 

Accordingly, the Board must deny any request for an extension of time to oppose the mark in an 

application for registration on the Supplemental Register. The remedy of the would-be opposer 

lies in the filing of a petition to cancel the registration of the mark, once the registration has 

issued.38 

206 Who May File an Extension of Time to Oppose 

37 CFR § 2.102 Extension of time for filing an opposition. 

(a) Any person who believes that he, she or it would be damaged by the registration of a mark 

on the Principal Register may file in the Office a written request addressed to the Trademark 

Trial and Appeal Board to extend the time for filing an opposition. 

 * * * * 

(b) The written request to extend the time for filing an opposition must identify the potential 

opposer with reasonable certainty. Any opposition filed during an extension of time should be in 

the name of the person to whom the extension was granted. An opposition may be accepted if the 

person in whose name the extension was requested was misidentified through mistake or if the 

opposition is filed in the name of a person in privity with the person who requested and was 

granted the extension of time. 

 

206.01 General Rule 

Any person (whether natural or juristic--see TBMP § 303.02) who believes that he, she, or it 

would will be damaged by the registration of a mark upon the Principal Register may, upon 

payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, 

within 30 days after the publication of the mark in the Official Gazette for purposes of 

opposition.39 

36 See Sections 23(b) and 24 of the Act, 15 U.S.C. §§ 1091(b) and 1092, and 37 CFR § 2.82. 

37 See Section 24 of the Act, 15 U.S.C. § 1092; 37 CFR § 2.82; and TMEP § 1502. 

38 See Section 24 of the Act, 15 U.S.C. § 1092. 

39 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.101. For further information concerning the 

filing of an opposition, see TBMP chapter 300, generally, and § 303 regarding who may file an opposition.

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Similarly, any person who believes that he, she, or it would be damaged by the registration of a 

mark upon the Principal Register may file a written request to extend the time for filing an 

opposition.40 Moreover, a request for an extension of time to oppose must identify the potential 

opposer with reasonable certainty.41 

An extension of time to oppose is a personal privilege which inures only to the benefit of the 

party to which it was granted and those in privity with that party.42 For this reason, a request for 

a further extension of time to oppose, or an opposition filed during an extension of time, 

ordinarily must be filed in the name of the party to which the extension was granted.43 A request 

for a further extension, or an opposition, filed in a different name will be accepted if a person in 

privity with the person granted the previous extension files it, or if the person that requested the 

extension was misidentified through mistake.44

206.02 Request for Further Extension Filed by Privy 

A request for a further extension, or an opposition, filed by a different party will not be rejected 

on that ground if it is shown to the satisfaction of the Board that the different party is in privity 

with the party granted the previous extension.45 The "showing" should be in the form of a 

recitation of the facts upon which the claim of privity is based, and must be submitted either with 

the request or opposition, or during the time allowed by the Board in its action requesting an 

explanation of the discrepancy. If the request for a further extension, or the opposition, is filed 

both in the name of the party granted the previous extension and in the name of one or more 

different parties, an explanation will be requested as to each different party, and the request will 

not be granted, or the opposition accepted, as to any different party which fails to make a 

satisfactory showing of privity. 

40 See Section 13(a) of the Act, 15 U.S.C. § 1063(a), and 37 CFR § 2.102. See also TBMP § 203 (Form of

Request). 

41 37 CFR § 2.102(b). For a discussion of this matter, see TBMP § 203.02. 

 

42 See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (a party cannot claim the 

benefit of an extension granted to another, unrelated party). 

43 See 37 CFR § 2.102(b); TMEP § 1503.04; SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 

1994); and In re Cooper, 209 USPQ 670, 671 (Comm'r 1980). Cf. TBMP § 206.02 (Request by Privy)

44 See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. 

Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may 

claim the benefit of an extension granted to another named entity"). 

45 See 37 CFR § 2.102(b); TMEP § 1503.04; SDT Inc. v. Patterson Dental Co., supra (licensee, as party in privity 

with opposer, could have joined opposer in filing opposition during extension of time to oppose); and In re Cooper, 

supra (two unrelated entities that merely share same objection to registration are not in privity). 

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In the field of trademarks, the concept of privity generally includes, inter alia, the relationship of

successive ownership of a mark (e.g., assignor, assignee) and the relationship of "related 

companies" within the meaning of Sections 5 and 45 of the Act, 15 U.S.C. §§ 1055 and 1127.46 

It does not, however, include the attorney/client relationship.47 

If, at the time when a first request for an extension of time to oppose is being prepared, it is not 

clear which of two or more entities will ultimately be the opposer(s), the better practice is to 

name each of them, in that and any subsequent extension request, as a potential opposer, thereby 

avoiding any need for a showing of privity when an opposition or subsequent extension request 

is later filed by one or more of them. 

206.03 Misidentification of Potential Opposer 

A request for a further extension, or an opposition, filed in a different name will not be rejected 

on that ground if it is shown to the satisfaction of the Board that the party in whose name the 

extension was requested was misidentified through mistake.48 The phrase "misidentification by 

mistake," as used in 37 CFR § 2.102(b), means a mistake in the form of the potential opposer's

name or its entity type, not the naming of a different existing legal entity that is not in privity 

with the party that should have been named.49 

46 See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1495 (Fed. Cir.

2000) (discussion of various ‘privity’ relationships). Cf. Rolex Watch U.S.A., Inc. v. Madison Watch Co., Inc., 211

USPQ 352, 358 (TTAB 1981) (regarding right of owner, or one in privity with owner, to maintain opposition or

cancellation based on Section 2(d)); In re Cooper, supra (two unrelated entities that merely share same objection to

registration are not in privity); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB 1975)

(motion to suspend granted in view of privity of applicant with parties in civil action); and F. Jacobson & Sons, Inc.

v. Excelled Sheepskin & Leather Coat Co., 140 USPQ 281, 282 (Comm'r 1963) (parent in privity). But see Tokaido

v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973) (respondent's motion to suspend for civil action

between respondent and third party denied where petitioner as nonexclusive licensee of third party was not in privity 

with third party). 

47 See In re Spang Industries, Inc., 225 USPQ 888 (Comm’r 1985). 

48 See 37 CFR § 2.102(b), Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB 1993). 

49 See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. 

Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition);

and Cass Logistics Inc. v. McKesson Corp., supra (word processing error resulting in identification of different legal 

entity was not a "mistake" within the meaning of the rule). See also TMEP § 1503.04. 

 Cf. Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505, 506 (TTAB 1974) (motion to 

substitute granted where opposition was mistakenly filed in name of original owner); Davidson v. Instantype, Inc., 

165 USPQ 269, 271 (TTAB 1970) (leave to amend to substitute proper party granted where opposition was filed in 

name of the individual rather than in the name of the corporation); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222

(TTAB 1969) (where succession occurred prior to filing of opposition, erroneous identification of opposer as a 

partner in a firm which no longer existed was not fatal); and Raker Paint Factory v. United Lacquer Mfg. Corp., 141 

USPQ 407, 409 (TTAB 1964) (sole owner substituted for partnership where original plaintiff identified as 

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The "showing" submitted in support of a claim of misidentification by mistake should be in the 

form of a recitation of the facts upon which the claim of misidentification by mistake is based, 

and must be submitted either with the request or opposition, or during the time allowed by the 

Board in its letter requesting an explanation of the discrepancy. 

207 Requirements for Showing of Cause; Extraordinary Circumstances 

37 CFR § 2.102(c) The time for filing an opposition shall not be extended beyond 180 days from 

the date of publication. Any request to extend the time for filing an opposition must be filed 

before thirty days have expired from the date of publication or before the expiration of a 

previously granted extension of time, as appropriate. Requests to extend the time for filing an 

opposition must be filed as follows: 

(1) A person may file a first request for either a thirty-day extension of time, which will 

be granted upon request, or a ninety-day extension of time, which will be granted only for 

good cause shown. 

(2) If a person was granted a thirty-day extension of time, that person may file a request 

for an additional sixty-day extension of time, which will be granted only for good cause 

shown. 

(3) After receiving one or two extensions of time totaling ninety days, a person may file 

one final request for an extension of time for an additional sixty days. The Board will 

grant this request only upon written consent or stipulation signed by the applicant or its 

authorized representative, or a written request by the potential opposer or its authorized 

representative stating that the applicant or its authorized representative has consented to 

the request, or a showing of extraordinary circumstances. No further extensions of time 

to file an opposition will be granted under any circumstances. 

 

partnership composed of that individual since originally named plaintiff was not actually in existence when

opposition was filed and even it were, as a partner, he is a successor to the partnership). 

 Cf. also TMEP § 803.06; In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) (correction not

permitted where joint venture owned the mark but the application was filed by a corporation which was one member 

of the joint venture); In re Atlanta Blue Print Co., 19 USPQ2d 1078, 1079 (Comm'r 1990) (permitted to amend

name of registrant in Sections 8 and 15 declaration where trade name was inadvertently substituted for corporate 

name); In re Techsonic Industries, Inc., 216 USPQ 619, 620 (TTAB 1982) (allowed to correct application where 

applicant was identified by only a portion of its earlier used name and earlier name had already been supplanted by

new name at time application was filed, but at all times was one single entity); Argo & Company v. Springer, et al.,

198 USPQ 626, 634 (TTAB 1978) (Board granted applicant's motion to change its name from corporation which

was defectively incorporated to individuals who were true owners of mark at time of filing); In re Eucryl, Ltd., 193 

USPQ 377, 378 (TTAB 1976) (exclusive U.S. distributor is owner only if it has agreement providing for right to

apply; since distributor had no right to apply, subsequent assignment to proper applicant did not cure defect); Argo 

& Co. v. Springer, 189 USPQ 581, 582 (TTAB 1976) (defendant can be substituted when originally named party 

was not in existence at time of filing complaint); and U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 

USPQ 613, 614 (Comm'r 1974) (deletion of "company" permissible). 

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207.01 In General 

The time for filing an opposition will not be extended beyond 180 days from the date of 

publication.50 No more than three requests to extend the time to oppose may be filed. A 

potential opposer may file a first request for a thirty-day extension without a showing of cause,51

followed by a request for a sixty-day extension for good cause.52 Alternatively, the potential 

opposer may file a single request for a ninety-day extension of time for good cause.53 After one 

or two granted requests totaling120 days from the date of publication,54 the potential opposer 

may request one final extension of time for an additional sixty days with the consent of applicant 

or a showing of extraordinary circumstances.55 No further extensions of time to oppose will be

permitted. 

207.02 Extensions Up to 120 Days From the Date of Publication 

A first extension of time to oppose for not more than thirty days will be granted upon written 

request, if the request is otherwise appropriate (e.g., is timely filed, identifies the potential 

opposer with reasonable certainty).56 No showing of cause is required for the first thirty-day 

extension.57 

Following the first thirty-day extension of time to oppose, the Board may grant a further 

extension of time for sixty days provided good cause is shown for the further extension and the 

request is otherwise appropriate (e.g., is timely filed before the first thirty-day extension expires, 

includes a showing of privity, if necessary).58 

50 37 CFR § 2.102(c)(3).

51 See TBMP § 207.02 (Extensions Up to 120 Days from Date of Publication). 

52 See 37 CFR § 2.102(c). See also TBMP § 202 regarding the timing of notification by the Board as to the grant or

denial of an extension request.

53 See 37 CFR § 2.102(c)(1).

54 See TBMP § 207.02 (Extensions Up to 120 Days From Date of Publication). 

55 See 37 CFR § 2.102(c)(3).

56 See, e.g., TBMP §§ 202 (Time for Filing Request) and 206 (Who May File an Extension of Time to Oppose). 

57 See Section 13(a) of the Act, 15 U.S.C. § 1063(a); 37 CFR § 2.102(c); and Lotus Development Corp. v. Narada 

Productions, Inc., 23 USPQ2d 1310, 1312 (Comm'r 1991). 

58 See 37 CFR § 2.102(c), and, e.g., TBMP §§ 202 (Time for Filing Request) and 206 (Who May File an Extension 

of Time to Oppose). See also Lotus Development Corp. v. Narada Productions, Inc., supra. 

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Alternatively, a potential opposer may request a ninety-day extension of time in the first request, 

provided good cause for the extension is shown. If an otherwise proper first extension request 

seeks an extension of ninety days, but does not include a showing of good cause for the time in 

excess of thirty days, the potential opposer will be granted an extension of only thirty days.59 

A showing of good cause for an extension of time to oppose over thirty days must set forth the 

reasons why additional time is needed for filing an opposition. Circumstances that may 

constitute good cause include, applicant's consent to the extension, settlement negotiations 

between the parties, the filing of a letter of protest by the potential opposer,60 an amendment of 

the subject application,61 the filing of a petition to the Director from the grant or denial of a 

previous extension,62 and civil litigation between the parties. The merits of the potential 

opposition are not relevant to the issue of whether good cause exists for the requested extension. 

207.03 Extensions Beyond 120 Days From the Date of Publication 

The time for filing an opposition will not be extended beyond 180 days from the date of 

publication. After one or two granted requests totaling 120 days from the date of publication,63

and prior to the expiration of the previous request, the potential opposer may request one final 

extension of time for an additional sixty days.64 No further extensions of time to file an 

opposition will be granted under any circumstances.65 

The Board will grant this request if the potential opposer submits one of the following: (1) a 

written consent or stipulation signed by the applicant or its authorized representative, or (2) a 

written request by the potential opposer or its authorized representative stating that the applicant 

or its authorized representative has consented to the request,66 or (3) a showing of extraordinary 

59 See Lotus Development Corp. v. Narada Productions, Inc., supra (potential opposer only entitled to extension of

30 days where initial request exceeded thirty days by two days and potential opposer did not assert good cause for 

additional days); Kimberly-Clark Corp. v. Paper Converting Industry, Inc., 21 USPQ2d 1875, 1877 (Comm'r 1991)

(initial request for 60 days with showing of good cause in compliance with the rules). 

60 See TBMP § 215. 

61 See TBMP § 212. 

62 See TBMP § 211.03. 

63 See TBMP § 207.02 (Extensions Up to 120 Days From Date of Publication). 

64 See 37 CFR § 2.102(c)(3).

65 37 CFR § 2.102(c)(3).

66 NOTE: Proof of service of the request on applicant is no longer required. See 37 CFR § 2.102(c), as amended.

See also In re Docrite Inc., 40 USPQ2d 1636, 1638 (Comm’r 1996).

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circumstances.67 Consent must be express, though it may be provided orally, and the extension 

request must state that such consent has been provided. It is not sufficient to indicate in the 

request that the parties are discussing settlement; the request must expressly state that applicant 

has consented to the extension.68 In addition, the statement of consent should appear in the body 

of the request, not merely in the title (e.g. "Consented Request to Extend") of the filing. 

If one of these elements (i.e., the showing of extraordinary circumstances, or applicant's written 

consent, or the statement that applicant has consented) is omitted from an extension request 

based in whole or in part upon the omitted element, the Board can allow the defect to be 

corrected only if the correction is made prior to the expiration of the time for filing the request, 

that is, prior to the expiration of the previous extension.69 

NOTE: The remaining portion of this section applies only to cases where a first request for 

extension of time was filed before November 2, 2003. The rules and Board practice governing 

extensions of time to oppose that were in effect at that time (that is, prior to the November 2, 

2003 rule amendments) will continue to apply to all extension requests filed in that case. 

In cases where the first extension request was filed prior to November 2, 2003, the time for filing 

an opposition may be extended beyond 180 days. However, the time to oppose generally will 

not be extended beyond 360 days from the date of publication pending, for example, the final 

determination of another proceeding between the potential opposer and the applicant, or the 

conclusion of unduly prolonged settlement negotiations, or the filing of a new application, and its 

prosecution to publication or registration by the potential opposer or applicant. 

Moreover, in addition to the requirement for consent or a showing of extraordinary 

circumstances, the Board will not grant an extension of time over 120 days from the date of 

publication unless the potential opposer submits a showing of good cause required for extensions 

of time beyond the first thirty-day extension period. 

67 See 37 CFR § 2.102(c)(3). 

68 See In re Societe Des Produits Nestle S.A., 17 USPQ2d 1093, 1094 (Comm'r 1990) (mere existence of settlement

discussions does not constitute extraordinary circumstances). 

69 See In re Su Wung Chong, 20 USPQ2d 1399, 1400 (Comm'r 1991) (since potential opposer failed to submit 

required showing of extraordinary circumstances with extension request as required by Rule 2.102(c)(3), question

on petition was not whether any such extraordinary circumstances existed at time of request but instead whether 

potential opposer showed extraordinary circumstances existed that prevented compliance with that rule); In re 

Software Development Systems, Inc., 17 USPQ2d 1094, 1095 (Comm'r 1989) (inadvertent failure to provide proof of

service not extraordinary circumstance to waive [former] rule requiring proof of service); and In re Societe Des 

Produits Nestle S.A., supra at 1094 (extraordinary circumstances not shown to waive requirement that showing of

extraordinary circumstances be submitted with extension request and subsequently obtained consent insufficient).

Cf. In re Spang Industries, Inc., 225 USPQ 888, 888 (Comm'r 1985) (identification of potential opposer omitted). 

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If an acceptable showing of extraordinary circumstances is submitted in support of a request for 

an extension running beyond 120 days from the date of publication, the requirement for a 

showing of good cause is satisfied. If a request for an extension running beyond 120 days from

publication is based upon applicant's consent, but includes no recitation of other facts relating to 

good cause, applicant's consent will be construed as good cause for that request, but the potential 

opposer will be advised by the Board, in writing, that any further extension request based upon 

applicant's consent must include also a recitation of circumstances showing good cause for the 

request. 

When a potential opposer files repeated extension requests based upon applicant's consent 

coupled with an assertion that the parties are negotiating for settlement, the Board ordinarily will 

require, for extensions aggregating more than 180 days from the date of publication of 

applicant's mark, that the extension request include also a report on the status of their settlement 

negotiations. In such a case, the Board, in writing, will advise potential opposer that any further 

extension requests made on the basis of consent and settlement negotiations should include a 

summary of the progress of the negotiations. If the subsequent request fails to include this 

summary, the request may be denied. 

As a general rule, the Board will not grant extensions of time to oppose beyond 360 days from

the date of publication, unless settlement has been reached and only needs to be executed. The 

general rule, however, will be applied flexibly and reasonably, depending upon the 

circumstances in a given case. For example, if a foreign party is involved, or if parties are trying 

to settle several cases at once, or if numerous parties are involved, more time may be allowed. 

208 Essential Element Omitted 

If any element (e.g., identification of potential opposer, showing of good cause, showing of 

extraordinary circumstances, applicant's written consent, statement that applicant has consented)

essential to a particular request for extension of time to oppose is omitted from the request, the 

Board can allow the defect to be corrected only if the correction is made prior to the expiration of 

the time for filing the request, that is, prior to the expiration of the thirty-day opposition period 

following publication of the subject mark, in the case of a first request, or prior to the expiration 

of the previous extension, in the case of a request for a further extension.70 

While a request for an extension of time to oppose must be signed, an unsigned paper request 

will not be refused consideration if a signed copy is submitted to the Office within the time limit 

set in the written notification of this defect by the Board.71 Extension requests filed through 

70 See In re Su Wung Chong, supra; (showing of extraordinary circumstances omitted); In re Societe Des Produits 

Nestle S.A., supra; (extraordinary circumstances not shown and subsequently obtained consent untimely); and In re 

Spang Industries, Inc., supra (identification of potential opposer omitted). 

71 See 37 CFR § 2.119(e) and TBMP § 106.02 (Signature of Submissions).

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ESTTA cannot be electronically transmitted to the Office unless all required fields, including the 

signature field, are completed. 

209 Action by Board on Request 

209.01 Suspension Policy 

The Board will not suspend the running of an extension of time to oppose for any reason. A 

potential opposer must either continue to file timely requests for extensions of time, if it wishes 

to preserve its right to oppose, or file the notice of opposition. Once the notice of opposition is 

filed, however, the Board will suspend the opposition under appropriate circumstances.

72

209.02 Determination of Extension Expiration Date 

The extension expiration date stated in an action granting an extension, is the date upon which 

the extension actually expires, even if that date is a Saturday, Sunday, or a Federal holiday 

within the District of Columbia. If the expiration date falls on a Saturday, Sunday, or a Federal 

holiday within the District of Columbia, an opposition, or a request for a further extension, filed 

by the potential opposer on the next succeeding day which is not a Saturday, Sunday, or a 

Federal holiday will be considered timely.73 However, the beginning date for calculating the 

further extension is the actual expiration date of the previous extension, regardless of whether the 

expiration date fell on a weekend or Federal holiday.74 

A potential opposer may file a first request for a thirty-day extension without a showing of 

cause,75 followed by a request for a sixty-day extension for good cause that is filed prior to the 

expiration of the first thirty-day period.76 Alternatively, the potential opposer may file a single 

request for a ninety-day extension of time for good cause.77 After one or two granted requests 

totaling 120 days from the date of publication,78 and prior to the expiration of the previous 

72 See, for example, TBMP §§ 211.03, 212.05, 215, 216 and 510.

73 See 37 CFR § 2.195; Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310, 1312 (Comm'r

1991) (potential opposer miscalculated first 30-day extension request and threw off all subsequent periods); and 

TBMP § 112 (Time for Taking Action). 

74 See Lotus Development Corp. v. Narada Productions, Inc., supra at 1312. 

75 See TBMP 207.02 (Extensions Up to 120 Days From Date of Publication). 

76 See 37 CFR § 2.102(c). See also TBMP § 202 regarding the timing of notification by the Board as to the grant or

denial of a request.

77 See 37 CFR § 2.102(c)(1).

78 See TBMP § 207.02 (Extensions Up to 120 Days From Date of Publication). 

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extension, the potential opposer may file one final extension request for an additional sixty days 

with the consent of applicant or a showing of extraordinary circumstances.

79

If a first request for an extension of time to oppose asks for a time which is longer than thirty 

days (or seeks an extension of "thirty days," but specifies an extension expiration date which is 

later than the expiration date of the requested "thirty days"), and good cause is shown, the 

extension, if granted, will be set to expire in ninety days.80 If good cause for the time beyond 

thirty days has not been shown, the time will be set to expire on the thirtieth day.81 

If a further request for extension of time to oppose (that is, beyond the first thirty-day request) 

asks for a time which is longer or shorter than sixty days (or asks for certain number of days, but 

specifies an extension expiration date which is longer or shorter than the expiration date of the 

requested number of days), and shows good cause, the extension, if granted, will be set to expire 

in sixty days. 

If a further request seeks an extension of time to oppose beyond 120 days from the date of 

publication, but specifies a date which is longer or shorter than the prescribed additional sixty 

day period, the extension, if granted, will be set to expire in sixty days . 

210 Objections to Request 

Since a request for an extension of time to oppose is ex parte in nature, there is no requirement 

that a copy has to be served upon the applicant.82 For the same reason, an applicant is not 

notified of the filing of an extension request before the Board has acted on it. Not until after the

Board has acted on an extension request does the Board send the applicant a copy of the request 

(if there is no proof of service by potential opposer), together with notification of the Board's 

action. 

An applicant may learn of the filing of an extension request, and file objections thereto, before 

applicant receives anything from the Board about the request. This may happen, for example, 

when potential opposer serves a courtesy copy of the request upon applicant. If the Board 

receives objections before it acts upon the request, the Board will consider them. If the 

79 See 37 CFR § 2.102(c)(3).

80 See 37 CFR § 2.102(c); Kimberly-Clark Corp. v. Paper Converting Industry, Inc., 21 USPQ2d 1875, 1877

(Comm'r 1991) (initial request extending beyond thirty days with required showing granted); and TBMP § 207.02 

(Extensions Up to 120 Days From Date of Publication). 

81 Cf. 37 CFR § 2.102(c), and TBMP § 207.02 (Extensions Up to 120 Days From Date of Publication). 

82 See TBMP § 203.04 (Service). 

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objections are received after action on the request, and the request has been granted, the 

objections will be treated as a request for reconsideration. 

An applicant that receives notification from the Board that an extension request has been filed 

and granted may submit objections in the form of a request for reconsideration.83 

Further, an applicant who receives notification from the Board that a request for extension of 

time to oppose has been granted may submit objections to the granting of any further extensions 

of time to the potential opposer. In such a case, the objections will be considered by the Board in 

determining any subsequent request, filed by the potential opposer, for an extension of time to 

oppose. If the Board does not receive objections until after it has granted a subsequent extension 

request, they will be treated as a request for reconsideration of the Board's action. 

Any document objecting to a request for an extension of time to oppose, or to the granting of any 

further extensions of time to oppose, should state clearly the reasons for objection. There is no 

requirement that the document be served upon the potential opposer. If there is no indication 

that service has been made, the Board will send potential opposer a copy of the document 

together with the Board's action on the extension request, or, if the document is treated by the 

Board as a request for reconsideration, with the Board's action on the request for reconsideration. 

211 Relief From Action of Board 

211.01 Request for Reconsideration 

If an applicant or potential opposer is dissatisfied with an action of the Board on a request for an 

extension of time to oppose, it may file a request for reconsideration of the action, stating the 

reasons. The request should be filed promptly after the filing party receives the Board’s action. 

A request for reconsideration of a Board action relating to a request for an extension of time to 

oppose is examined by one of the Board's administrative staff members, who will prepare an 

action granting or denying the request. One copy of the action is entered in the file of the subject 

application, one copy is sent to the applicant, and one copy is sent to the potential opposer. 

There is no requirement that a request for reconsideration be served upon the nonfiling party. If 

there is no indication that service has been made, the Board will send the nonfiling party a copy 

of the request together with that party's copy of the Board's action granting or denying the 

request. 

83 For information concerning a request for reconsideration of an action of the Board relating to a request for 

extension of time to oppose, see TBMP § 211.01. 

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The filing of a request for reconsideration of the denial, or the granting, of a request for an 

extension of time to oppose does not relieve the potential opposer of the responsibility of filing 

an opposition, or a request for a further extension of time to oppose, before the expiration of the 

relevant extension.84 

211.02 Relief after Institution of Opposition 

If an applicant is dissatisfied with an action of the Board on a request for an extension of time to 

oppose and the opposition has been filed and instituted, the applicant may raise the issue by 

means of a motion to dismiss the opposition for lack of jurisdiction.85 

211.03 Petition to the Director 

If an applicant or potential opposer is dissatisfied with an action of the Board on a request for an 

extension of time to oppose, it may file a petition to the Director, pursuant to 37 CFR § 2.146, 

for review of the action in question.86 

The petition to the Director must include a statement of the facts relevant to the petition; the 

points to be reviewed; the action or relief requested; and the requisite fee, as specified in 37 CFR 

§ 2.6. Any brief in support of the petition must be embodied in or accompany the petition. If 

facts are to be proved, the proof must be in the form of affidavits or declarations in accordance 

with 37 CFR § 2.20, and these affidavits or declarations, with any exhibits thereto, must 

accompany the petition.87 

A petition from the grant or denial of a request for an extension of time to oppose must be filed 

within 15 days from the mailing date of the grant or denial of the request.88 A petition from the 

denial of a request must be served on the attorney or other authorized representative of the 

applicant, if any, or on the applicant.89 A petition from the grant of a request must be served on 

84 Cf. 37 CFR § 2.89(g). 

85 See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1075 n.2 and, generally, TBMP § 502 (regarding

motions). See also Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1215 

(TTAB 2001) (motion to dismiss granted where it was found that opposer's allegations of consent and good cause

[i.e., that the parties were engaged in settlement discussions] to extend beyond 120 days were untrue). 

86 See also TMEP § 1704. 

87 See 37 CFR § 2.146(c). 

88 See 37 CFR § 2.146(e)(1).

89 See 37 CFR § 2.146(e)(1).

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the attorney or other authorized representative of the opposer, if any, or on the opposer.90 Proof 

of service of the petition must be made as provided in 37 CFR § 2.119(a).91 The potential 

opposer or the applicant, as the case may be, may file a response within 15 days from the date of 

service of the petition.92 A copy of the response must be served upon the petitioner, with proof 

of service as provided by 37 CFR § 2.119(a). No further document relating to the petition may 

be filed.93 

The filing of a petition by the potential opposer from the denial, or by the applicant from the 

granting, of a request for an extension of time to oppose, does not relieve the potential opposer of 

the responsibility of filing an opposition, or a request for a further extension of time to oppose, 

prior to the expiration of the extension which is the subject of the petition.

94 The filing of a 

petition will constitute good cause for extensions of time to oppose aggregating up to 120 days 

from the date of publication of the mark, but will not constitute extraordinary circumstances 

justifying an extension of time beyond 120 days from publication. 

 

If the petition is resolved unfavorably to opposer during the running of an extension of time, any 

opposition or request for further extension of time to oppose filed during or after the extension 

period in question will be rejected as untimely. 

If opposer files a timely opposition during the pendency of its petition to the Director, the Board 

will institute the opposition. At the same time, the Board will normally suspend the opposition 

pending resolution of the petition. If, along with the notice of opposition, the opposer files a 

motion to suspend the opposition, citing the pending petition as the reason for suspension, the 

Board will institute the opposition, grant the motion to suspend, and state that the opposition is 

suspended pending resolution of the petition to the Director. A copy of the Board's action will 

be sent to both parties and a copy of the notice, along with a copy of the motion to suspend, will 

be sent to the applicant. 

If the decision on the petition is unfavorable to opposer, the opposition will be dismissed as a 

nullity, and the fee will be refunded.

90 See 37 CFR § 2.146(e)(1).

91 See also TBMP §§ 113.03 (Elements of Certificate) and 113.04 (Manner of Service). 

92 See 37 CFR § 2.146(e)(1).

93 See 37 CFR § 2.146(e)(1).

94 See, e.g., In re Docrite Inc., 40 USPQ2d 1636, 1637 n.1 (Comm'r 1996) (citing Trademark Rule 2.146(g) and

stating that filing petition to review denial of request to extend time to oppose does not stay time to file opposition or 

further extensions of time to oppose).

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212 Amendment of Application During or After Extension 

212.01 Jurisdiction to Consider Amendment 

The Board has no jurisdiction over an application unless and until the application becomes 

involved in a Board inter partes proceeding.95 In the absence of an inter partes proceeding, the 

Board has jurisdiction only over matters relating to any requested extension(s) of time to oppose. 

Thus, if, in an application which is the subject of a request for an extension of time to oppose, an 

amendment or other paper (such as a request for republication, a request for reconsideration of a 

refusal to approve an amendment) relating to the application is filed by the applicant, and the 

application is not involved in any Board inter partes proceeding, it is the examining attorney who 

must determine the propriety of the amendment or other paper.96 

However, the Board does determine the propriety of a request filed by an attorney or other 

authorized representative to withdraw as applicant's representative, in an application which is the 

subject of a request for an extension of time to oppose. The Board has jurisdiction to consider 

the request to withdraw as representative in such a case, because applicant's representative of 

record acts in applicant's behalf in matters relating to the requested extension(s) of time to 

oppose. 

Any amendment proposed by an applicant, whether of its own volition or to accommodate a 

concern of a potential opposer must be sent to the Board’s attention, not to the examining 

attorney who approved the mark for publication. The Board will note the amendment and 

transfer the file to the examining attorney. Because the examining attorney eventually will 

consider the amendment, any phone inquiry for discussion of the content of the amendment 

should be directed to the examining attorney. 

212.02 Conditions for Examining Attorney Approval of Amendment 

During the time between the publication of a mark in the Official Gazette for opposition, and the 

printing of a certificate of registration or notice of allowance, an application not involved in an 

inter partes proceeding before the Board may be amended upon request by the applicant, 

provided that the amendment does not necessitate issuance of a refusal or requirement by the 

Examining Attorney. If a refusal or requirement by the Examining Attorney would be needed, 

95 Compare Trademark Rules 2.84 and 2.133.

96 See 37 CFR § 2.84, and In re MCI Communications Corp., 21 USPQ2d 1534 (Comm’r 1991). Cf. Groening v.

Missouri Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r 1999) (mark originally published in wrong class may 

be amended by examining attorney to the correct class and republished in the correct class without either applicant’s 

approval or a restoration of jurisdiction).

 

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the amendment cannot be made unless applicant (1) successfully petitions the Director to restore 

jurisdiction over the application to the Examining Attorney for consideration of the amendment 

and further examination, and (2) is able to satisfy any requirement or overcome any refusal 

asserted in any Office action issued after the restoration of jurisdiction.97 

Examples of the types of amendments which may be made under the conditions described above 

include acceptable amendments to the identification of goods, to the drawing, to add a 

disclaimer, and (in the case of an application under Section 1(a) of the Act, or an application 

under Section 1(b) of the Act in which an acceptable amendment to allege use has been filed, or 

an application under Section 44 or 66(a) of the Act in which an appropriate allegation of use has 

been made), to convert an application for an unrestricted registration to one for concurrent use 

registration.98

An applicant who files an amendment to its application during an extension of time to oppose 

need not have potential opposer's consent thereto. 

 

212.03 Form of Amendment 

An amendment or other paper relating to an application which is the subject of a request for an 

extension of time to oppose should be in the normal form for an amendment or other document 

relating to an application, except that it should be directed to the attention of the Trademark Trial 

and Appeal Board (i.e., Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 

22202-3514). 

212.04 Action by Board -- Upon Receipt of Amendment 

When an amendment relating to an application which is the subject of a request for an extension 

of time to oppose is received by the Board, a Board administrative staff member will issue an 

action acknowledging receipt of the amendment, transferring the application file to the 

examining attorney for consideration of the amendment, and explaining the effect the filing of 

the amendment has on the extension of time to oppose.99 

97 See 37 CFR § 2.84(b) and TMEP §§ 1504.01 and 1505 et seq. 

98 See In re MCI Communications Corp., 21 USPQ2d 1534, 1539 (Comm'r 1991) (disclaimer). Cf. In re Little 

Caesar Enterprises, Inc., 48 USPQ2d 1222 (Comm'r 1998) (regarding request to divide certain items out of a class 

of goods during extension of time to oppose, and petition to waive rule requiring that request to divide be filed

before application is approved for publication) and TMEP § 1505.01 regarding approval of amendments after 

publication. 

99 See, for example, In re MCI Communications Corp., supra (entry of disclaimer as means of settling potential 

opposition). 

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If an amendment is filed during the running of a well taken request for an extension of time, the 

action will acknowledge receipt of the amendment; note that the amendment requires 

consideration by the examining attorney; approve the extension (or if already approved, note that 

potential opposer has been granted an extension of time to oppose until a specified date); indicate 

the application is transferred to the examining attorney for consideration of the amendment; 

instruct the examining attorney to act on the amendment (either by approving it for entry or by 

telephoning the applicant, explaining why the amendment cannot be approved, and placing a 

record of the telephone call in the file), and then return the application to the Board; and indicate 

that after the application has been returned to the Board, further appropriate action will be taken 

with respect to the potential opposition. The action will also advise potential opposer that the 

filing of the amendment does not relieve the potential opposer of the responsibility of filing an 

opposition, or, if appropriate, a further request for extension of time to oppose, prior to the 

expiration of the previous request. 

If an amendment is filed after the expiration of potential opposer's extension of time to oppose, 

and no opposition or request for a further extension of time to oppose has been timely filed, the 

Board's action will acknowledge receipt of the amendment; note that the amendment requires 

consideration by the examining attorney; indicate that potential opposer's extension of time to 

oppose has expired, and that no opposition or request for a further extension of time to oppose 

has been timely filed; forward the application to the examining attorney for consideration of the 

amendment; and state that the examining attorney may treat the amendment in the same manner 

as any amendment after publication100 and need not return the application to the Board after 

consideration of the amendment. 

If an amendment is filed prior to action by the Board on a request for an extension of time to 

oppose, and the request is not granted, the action will acknowledge receipt of the request and the 

amendment; note that the amendment requires consideration by the examining attorney; deny the 

request; forward the application to the examining attorney for consideration of the amendment; 

and state that the examining attorney may treat the amendment in the same manner as any 

amendment after publication101 and need not return the application to the Board after 

consideration of the amendment. 

If an amendment is filed after a request for an extension of time to oppose has been denied by the 

Board, but before the Board has forwarded the application to issue, the action will acknowledge 

receipt of the amendment; note that the amendment requires consideration by the examining 

attorney; indicate that potential opposer's request for an extension of time to oppose has been 

denied; forward the application to the examining attorney for consideration of the amendment; 

and state that the examining attorney may treat the amendment in the same manner as any 

100 TMEP §§ 1504.01 and 1505 et seq.

101 TMEP §§1504.01 and 1505 et seq.

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amendment after publication102 and need not return the application to the Board after 

consideration of the amendment. 

When the Board's action is complete, one copy is entered in the file of the subject application, 

one copy is sent to the applicant, and one copy each of the amendment and letter is sent to the 

potential opposer. The application is then forwarded to the examining attorney for consideration 

of the amendment. 

If an amendment is filed prior to the Board's institution of a timely opposition, the Board will 

institute the opposition, and at the same time suspend the opposition pending consideration of the 

amendment by the examining attorney. 

212.05 Action by Board -- During Consideration of Amendment by Examining 

 Attorney 

The filing of the amendment will be considered good cause for extensions of time to oppose 

aggregating up to 120 days from the date of publication of the mark, but it will not constitute 

extraordinary circumstances justifying an extension of time beyond 120 days from publication. 

If a timely opposition is filed while the amendment is still pending before the examining 

attorney, the Board will institute the opposition, and at the same time the Board will normally 

suspend the opposition pending consideration of the amendment by the examining attorney. If, 

along with the notice of opposition, the opposer files a motion to suspend the opposition, citing 

the pending amendment as the reason for suspension, the Board will institute the opposition, 

grant the motion to suspend, and state that the opposition is suspended pending consideration of 

the amendment by the examining attorney. A copy of the institution order will be sent to both 

parties, and a copy of the notice of opposition and any motion to suspend will be sent to the 

applicant. 

212.06 Action by Board -- After Consideration of Amendment by Examining 

 Attorney 

When an amendment in an application which is the subject of an extension of time to oppose is 

forwarded to the examining attorney for consideration, the examining attorney acts on the 

amendment, either by approving it for entry or by telephoning the applicant, explaining why the 

amendment cannot be approved and placing a record of the telephone call in the file.103 The 

examining attorney then returns the application to the Board (unless the time for opposing 

expired prior to the filing of the amendment). 

102 TMEP §§ 1504.01 and 1505 et seq.

103 See In re MCI Communications Corp., 21 USPQ2d 1534, 1539 (Comm'r 1991) (entry of voluntary disclaimer).

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If the application is returned to the Board during the running of a well taken request for an 

extension of time, a Board administrative staff member will issue an action approving the 

extension (or, if already approved, noting that potential opposer has been granted an extension of 

time to oppose until a specified date); indicating whether or not the amendment was approved; 

and taking further appropriate action relating thereto. 

For example, sometimes a potential opposer, in a request for an extension of time to oppose or in 

a separate document, states that it has agreed not to oppose if applicant's application is amended 

in a certain manner. If the amendment submitted by applicant conforms to the agreement and the 

examining attorney approves it, the Board's action will indicate that the amendment has been 

approved; that potential opposer has agreed not to oppose if the amendment is approved; and that 

the application is accordingly being forwarded to issue. If the amendment was not approved, the 

action will so state, and potential opposer will be advised that it will need to continue to file 

timely requests for extensions of time or file its notice of opposition. 

If there is no statement by potential opposer that it will not oppose if the amendment submitted 

by applicant is approved, the Board's action will state whether the amendment was approved, and 

will advise the potential opposer that it will need to continue to file timely requests for 

extensions of time, or file its notice of opposition. 

Sometimes an examining attorney considering an amendment to an application that is the subject 

of an extension of time to oppose, does not approve the amendment submitted by the applicant, 

but instead makes a different amendment by Examiner's Amendment.104 In such a case, the 

Board, in its action, will so state; specify the amendment made by Examiner's Amendment; and 

advise potential opposer that it will need to continue to file timely requests for extensions of 

time, or file its notice of opposition. 

When the Board's action is complete, one copy is entered in the file of the subject application, 

one copy is sent to the applicant, and one copy is sent to the potential opposer. 

If an opposition was instituted prior to the examining attorney's action on the amendment, and 

the amendment is subsequently approved, the Board will prepare an action notifying the parties 

that the amendment was approved; advising the parties that the opposition will go forward on the 

basis of the application as amended; allowing opposer time to indicate whether it wishes to 

proceed with the opposition on that basis, or to have the opposition dismissed as a nullity and the 

fee refunded; and suspending the opposition (or continuing suspension) pending opposer's

response to the Board's action. If opposer chooses to go forward, proceedings in the opposition 

will be resumed and appropriate dates will be set. If the amendment is not approved, the parties 

will be so advised, and proceedings will be resumed with appropriate dates set. 

104 See TMEP § 707. 

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212.07 Amendment During Opposition 

If an amendment is filed in an application that is the subject of an opposition, the Board has 

jurisdiction over the application and will determine the propriety of the amendment. Once an 

opposition has commenced, the application that is the subject of the opposition may not be 

amended in substance, except with the consent of the other party or parties and the approval of 

the Board, or except upon motion granted by the Board.105 

213 Effect of Restoration of Jurisdiction 

If the Examining Attorney wishes to refuse registration or make a requirement in an application 

that is the subject of a request for an extension of time to oppose, the examining attorney must 

request the Director to restore jurisdiction over the application to the examining attorney for that

purpose.106 If the application is also the subject of an opposition, the examining attorney's

request for jurisdiction must be directed to the Board.107 It should be noted that because an 

application under Section 66(a) of the Act, 15 U.S.C. § 1141f, is time-sensitive, the granting of a 

request to return a 66(a) application to the examination process is unlikely.108 

A request for jurisdiction that is granted during an unexpired extension of time to oppose, does 

not relieve the potential opposer of the responsibility of filing an opposition, or a request for a 

further extension of time to oppose, before the expiration of the previous request. After the 

Board learns that the examining attorney’s jurisdiction has been restored, a Board administrative 

staff member will prepare an action advising potential opposer and applicant thereof and taking 

further appropriate action. Examples are described below. 

If the restoration of jurisdiction occurs during the running of an extension of time to oppose, the 

action will inform the potential opposer and applicant that jurisdiction over the application has 

been restored to the examining attorney; approve the extension of time, if appropriate (or, if 

already approved, note that potential opposer has been granted an extension of time to oppose 

until a specified date); instruct the examining attorney that if the application is subsequently 

approved, and the mark is not republished, the application must be returned to the Board; and 

advise potential opposer that the restoration of jurisdiction does not relieve the potential opposer 

of the responsibility of filing an opposition, or a further request for extension of time to oppose, 

prior to the expiration of the previous request. 

 

105 See 37 CFR § 2.133, and TBMP § 514 (Motion to Amend Application or Registration). 

106 See 37 CFR § 2.84(a); TMEP §§ 1504.01 and 1504.02 and In re Hershey, 6 USPQ2d 1470, 1471 n.2 (TTAB 

1988) (restoration of jurisdiction to examining attorney by [Director] is not subject to review by the Board). 

107 See 37 CFR § 2.130 and TMEP § 1504.02. 

108 Should such a request be granted, the time to file a timely opposition continues to run.

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The restoration of jurisdiction (or the filing of a request for jurisdiction) will constitute good 

cause for extensions of time to oppose aggregating up to 120 days from the date of publication of 

the mark, but will not constitute extraordinary circumstances justifying an extension of time 

beyond 120 days from publication. 

One copy of the Board's action will be entered in the file of the subject application, one copy will 

be sent to the applicant, and one copy each of the Board's action and of the examining attorney's

office action will be mailed to the potential opposer. 

If, during the running of an extension of time, the examining attorney approves the application, 

and the mark is not republished, the Board administrative staff member will issue an action so 

advising the potential opposer and applicant. The action will also approve the extension of time, 

if appropriate (or, if already approved, note that potential opposer has been granted an extension 

of time to oppose until a specified date). If the mark is republished, or if registration is 

ultimately denied, the extension request, if not yet approved, will be moot. No further extension 

of the original opposition period will be granted. Rather, a potential opposer's time for opposing 

will recommence on the date of republication. 

If a timely opposition is filed while the question of registrability is still before the examining 

attorney, the Board will institute the opposition. At the same time, the Board will normally 

suspend proceedings until the registrability of the mark has been finally determined. If, along 

with the notice of opposition, the opposer files a motion to suspend the opposition, citing the 

restoration of jurisdiction as the reason for suspension, the Board will institute the opposition, 

grant the motion to suspend, and indicate that the opposition is suspended pending final 

determination of the registrability of the mark. A copy of the Board's action will be sent to both 

parties and a copy of the notice of opposition, along with a copy of any motion to suspend, will 

be sent to the applicant. 

If the examining attorney subsequently approves the application, and the mark is republished, 

and if the change reflected in the republication is one that might have an effect upon the 

opposition, the Board will issue an action notifying opposer and applicant of the republication, 

and of the reason therefor; explain that the opposition will be determined on the basis of 

applicant's correct (or amended) mark, goods or services, disclaimer status, etc.; and allow 

opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to 

have its opposition fee refunded, and the opposition dismissed as a nullity. If opposer chooses to 

go forward, proceedings in the opposition will be resumed and appropriate dates will be set. 

If registration is ultimately denied, the opposition will not be instituted, or if already instituted, 

will be dismissed as a nullity and the fee refunded. 

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214 Effect of Republication 

The examining attorney may determine that an application filed under Section 1 or 44 of the Act, 

15 U.S.C. §§ 1051 or 1126, that is the subject of a request for an extension of time to oppose 

must be republished. This may happen, for example, when the mark was originally published in

the wrong class; when the goods or services, although properly identified in the application itself, 

were published incorrectly; when a disclaimer was mistakenly included in the original 

publication; or when the application has been amended after publication (but before the filing of 

an opposition), and the amendment is of such nature as to require republication.109 Republication 

may not be available to applications filed under Section 66(a) of the Act, 15 U.S.C. § 1141f, due 

to the time requirements of the Madrid Protocol.110 

If a mark is republished by order of the examining attorney, any opposition filed during the 

original thirty-day opposition period, or within a granted extension thereof, is considered by the 

Board to be timely. If the change reflected in the republication is one that might have an effect 

upon the opposition, the Board will issue an action notifying opposer and applicant of the 

republication, and of the reason therefor; explain that the opposition will be determined on the 

basis of applicant's correct (or amended) mark, goods or services, disclaimer status, etc.; and 

allow opposer time to indicate whether it wishes to proceed with the opposition on that basis, or

to have its opposition fee refunded, and the opposition not instituted. 

However, once the Board learns that a mark that is the subject of a request for an extension of 

time to oppose has been or will be republished by order of the examining attorney, no further 

extension of the original opposition period will be granted. Rather, a potential opposer's time for 

opposing will recommence with the republication of applicant's mark. Thus, if there is a pending 

request for an extension of time to oppose, a Board administrative staff member will issue an 

action notifying potential opposer and applicant of the republication and taking appropriate 

action with respect to the extension request. Normally, the extension request will be deemed 

moot. However, if the extension request was filed within thirty days after the date of

republication, it may be treated as a request for an extension of the new opposition period. 

If there has been an error in the first publication, or the application has been amended thereafter, 

republication is often necessary in order to give potential opposers fair notice of the registration 

sought by applicant. Sometimes, however, a mark that has been published correctly, and has not 

been amended thereafter, is republished not because there is any need for republication, but by 

inadvertence. When there is no need for republication, and a mark is republished solely by 

109 See TMEP § 1505.01. See also, for example, Groening v. Missouri Botanical Garden, 59 USPQ2d 1601, 1603

(Comm’r 1999) (mark originally published in wrong class may be amended by examining attorney to the correct 

class and republished in the correct class without either applicant’s approval or a restoration of jurisdiction). 

110 See Sections 68 and 69 of the Act, 15 U.S.C. §§ 1141h and 1141i. 

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mistake (as, for example, when an application has survived an opposition, and is ready to go to 

issue, but is inadvertently sent to publication rather than to issue), the application may not 

properly be subjected to another opposition period. 

Accordingly, when it comes to the attention of the Board that an application has been 

republished by mistake, the Board will not entertain any opposition or request for an extension of 

time to oppose filed in response to the republication. An opposition filed in response to the 

inadvertent republication will be returned to the opposer, and the opposition fee will be refunded. 

The remedy of a would-be opposer or potential opposer in such a case lies in the filing of a 

petition for cancellation, under Section 14 of the Act, 15 U.S.C. § 1064, after applicant's 

registration has been issued. 

215 Effect of Letter of Protest 

A third party that has knowledge of facts bearing upon the registrability of a mark in a pending 

application may bring such information to the attention of the Office by filing, with the Office of 

the Commissioner for Trademarks, a "letter of protest," that is, a letter that recites the facts and is 

accompanied by supporting evidence.111 The Administrator for Trademark Identifications, 

Classifications and Practice (Administrator) will determine whether the letter of protest should 

be "granted," that is, whether the information should be given to the examining attorney for 

consideration.112 

A letter of protest may be filed either before or after publication of the subject mark for 

opposition. However, a letter of protest filed after publication ordinarily must be filed within 

thirty days after publication in order to be considered timely.113 Moreover, even if the Director 

decides to grant a post-publication letter of protest, the examining attorney cannot consider the 

submitted information unless the Commissioner for Trademarks, upon written request by the 

Administrator, concurs in the decision to grant the letter of protest and restores jurisdiction over 

111 See TMEP § 1715; In re Urbano, 57 USPQ2d 1776, 1778 n.5 (TTAB 1999) (letter of protest provided additional 

information to the examining attorney to maintain a refusal); In re BPJ Enterprises Ltd., 7 USPQ2d 1375, 1379 

(Comm'r 1988) (Director committed clear error by allowing examining attorney to be involved in deciding whether 

the letter of protest was to be granted); and In re Pohn, 3 USPQ2d 1700, 1703 (Comm'r 1987) (guidelines for

timeliness of letter of protest). 

112 See TMEP § 1715. For information concerning the standard applied by the Administrator in determining

whether a letter of protest should be granted, see TMEP § 1715 et seq. 

113 See In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476, 1478 (Comm’r 1994) (letter of protest, filed more 

than a year after publication and accompanied by evidence of descriptiveness which was available 2 months prior to 

publication, was untimely); In re BPJ Enterprises Ltd., supra ( filed 44 days after publication but before timeliness 

standard enunciated); In re Pohn, supra; and TMEP § 1715.03.

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the application to the examining attorney.114 If the application is the subject of an opposition, the 

request for jurisdiction should be directed to the Board.115 

The filing of a letter of protest does not stay the time for filing an opposition to the subject mark, 

regardless of when the letter of protest was filed.

116 If a party that files a letter of protest after 

publication wishes to preserve its right to oppose in the event that the letter of protest is denied, it 

must file a timely request for an extension of time to oppose.117 

If a potential opposer indicates, in a first or a subsequent request for an extension of time to 

oppose, that it has filed a letter of protest (not yet determined by the Administrator) with respect 

to the subject mark (even if filed more than thirty days after publication) such filing will 

constitute good cause for extensions of time to oppose aggregating up to 120 days from the date 

of publication of the mark. However, the filing will not constitute extraordinary circumstances 

justifying an extension of time beyond 120 days from publication. 

The filing by a third party of a letter of protest (not yet determined by the Administrator), with 

respect to a mark that is the subject of a request for an extension of time to oppose, will not be

considered by the Board to constitute good cause for the granting of an extension to the potential 

opposer. 

Following determination of a letter of protest filed with respect to an application that is the 

subject of a request for an extension of time to oppose, the Board will take further appropriate 

action. Examples are described below. 

Often, when the application comes to the Board for further appropriate action, the letter of 

protest has been granted; jurisdiction over the application has been restored to the examining 

attorney; and the examining attorney has issued an Office action asserting a refusal or a 

requirement. If a well-taken request for an extension of time to oppose is running at this time, a 

Board administrative staff member will prepare an action notifying the potential opposer and 

applicant that the letter of protest has been granted; that jurisdiction over the application has been 

restored to the examining attorney; that an Office action has been issued by the examining 

attorney; that the extension request is approved (or, if already approved, that potential opposer 

has been granted an extension of time to oppose until a specified date); that if the application is 

subsequently approved, and the mark is not republished, that the application must be returned to 

the Board; and that the filing of the amendment does not relieve the potential opposer of the 

114 See TMEP § 1715.03. 

115 See 37 CFR § 2.130 and TMEP § 1504.02. 

116 Cf. TMEP § 1715.03(b). 

117 Cf. In re BPJ Enterprises Ltd., supra. 

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responsibility of filing an opposition, or a further request for extension of time to oppose, prior to 

the expiration of the previous request. 

If, during the running of a well taken request for an extension of time, the examining attorney 

ultimately approves the application, and the mark is not republished, the Board administrative 

staff member will issue an action so advising potential opposer and applicant and approving the 

extension of time (or, if already approved, noting that potential opposer has been granted an 

extension of time to oppose until a specified date). If the mark is republished, or if registration is 

ultimately denied, the extension request, if not yet granted, will be moot. No further extension of

the original opposition period will be granted. Rather a potential opposer's time for opposing will 

recommence on the date of republication. 

If, during the running of an extension of time, the letter of protest is denied, the Board will so 

advise potential opposer and applicant and take appropriate action on the extension request. 

One copy of the Board's action will be entered in the file of the subject application, one copy will 

be sent to the applicant, and one copy each of the Board's action and of the examining attorney's

Office action will be sent to the potential opposer. 

If opposer files a timely opposition while its letter of protest is pending (or if the letter of protest 

is granted, while the question of registrability is still before the examining attorney), the Board 

will institute the opposition. At the same time, however, the Board will normally suspend the 

opposition until the letter of protest is decided (or, if the letter of protest has already been 

granted, until the registrability of the mark has been finally determined). If, along with the 

notice of opposition, the opposer files a motion to suspend the opposition, citing the filing of its 

letter of protest (or the restoration of jurisdiction) as the reason for suspension, the Board will 

institute the opposition, grant the motion to suspend, and state that the opposition is suspended 

pending a decision on the letter of protest (or if the letter of protest has already been granted, 

pending final determination of the application before the examining attorney). A copy of the 

Board's letter will be sent to both parties, and a copy of the notice of opposition along with a 

copy of any motion to suspend will be sent to the applicant. 

If the examining attorney subsequently approves the application, and the mark is republished, 

and if the change reflected in the republication is one that might have an effect upon the 

opposition, the Board will issue an action notifying opposer and applicant of the republication. 

The Board will inform them of the reason for republication; explain that the opposition will be 

determined on the basis of applicant's correct (or amended) mark, goods or services, disclaimer 

status, etc.; and allow the opposer time to indicate whether it wishes to proceed with the 

opposition on that basis, or to have its opposition fee refunded and the opposition dismissed as a 

nullity. If opposer chooses to go forward, proceedings in the opposition will be resumed, and 

appropriate dates will be set. 

 

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If registration is ultimately denied, the opposition will not be instituted, or if already instituted, 

will be dismissed as a nullity and the fee refunded. 

216 Inadvertently Issued Registration 

Sometimes a registration is issued, mistakenly, from an application that, at the time of such 

issuance, is the subject of an unexpired extension of time to oppose, or a timely opposition. Such 

a registration is called an "inadvertently issued" registration. 

The Board is without authority, within the context of either an extension of time to oppose, or an 

opposition proceeding, to cancel an inadvertently issued registration and restore it to application 

status. Rather, it is the Director who has such authority, and the Director exercises this authority 

with caution.118 A registration will ordinarily be deemed to have been issued inadvertently if a 

notice of opposition or a request for extension of time to oppose was timely and properly filed 

but inadvertently overlooked by the Board.119 The Director will not find that a registration 

issued inadvertently if (1) the notice of opposition was defective in some manner, and (2) that 

defect prevented the Office from identifying the application in question, and from withholding 

the issuance of a registration.120

Accordingly, when it comes to the attention of the Board that a registration has issued 

inadvertently from an application that is the subject of an unexpired extension of time to oppose, 

the Board will issue an action approving the extension of time, if appropriate (or, if already 

approved, noting that potential opposer has been granted an extension of time to oppose until a 

specified date), and advising potential opposer that if it wishes to preserve its right to oppose 

should the registration be cancelled as inadvertently issued, potential opposer must continue to 

file further timely requests for extensions of time to oppose, or it must file the notice of 

opposition. The Board will then forward the registration file to the Director for such action, as 

the Director deems appropriate. The Director, in turn, may either cancel the registration as 

inadvertently issued, and restore it to application status, or decline to do so. 

The inadvertent issuance of the registration will be considered good cause for extensions of time 

to oppose aggregating up to 120 days from the date of publication of the mark, but it will not 

constitute extraordinary circumstances justifying an extension of time beyond 120 days from

publication. 

118 See In re Trademark Registration of Mc Lachlan Touch Inc., 6 USPQ2d 1395, 1396 (Comm'r 1987). 

119 See Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., 60 USPQ2d 1703, 1704 (Comm'r

2000). 

120 See Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent, Inc., supra at 1704 (where notice of

opposition misidentified the serial number of opposed application, Director declined to cancel registration finding

that error which caused the registration to issue was made by opposer not as result of inadvertent act by the Office). 

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If, during the running of an extension of time, the Director cancels and restores to application 

status a registration that issued inadvertently during an extension of time to oppose, the potential 

opposer and applicant will be informed of the inadvertent issuance of the registration, its 

cancellation by the Director, and the status of the extension request in an action prepared by a 

Board administrative staff member. 

If a registration that issued inadvertently during an extension of time to oppose is not cancelled 

by the Director and restored to application status, any opposition that may have been filed by the 

potential opposer will be returned, and any submitted opposition fee will be refunded. The 

potential opposer’s substantive remedy will, under the statute, be through a petition to cancel the 

registration. 

If a timely opposition is filed while the matter of the registration is pending before the Director, 

the Board will institute the opposition. At the same time, however, the Board will normally 

suspend the opposition until the matter is resolved. If, along with the notice of opposition, the 

opposer files a motion to suspend the opposition, citing the inadvertently issued registration as 

the reason for suspension, the Board will institute the opposition, grant the motion to suspend, 

and state that the opposition is suspended pending a decision on the matter of the registration. A 

copy of the Board's action will be sent to both parties, and a copy of the notice of opposition, will 

be sent to the applicant with a copy of any motion to suspend. 

If the Director cancels and restores the registration to application status, the opposition will be 

resumed and appropriate dates will be set. If the Director declines to cancel the registration, the 

opposition will be dismissed as a nullity and the fee will be refunded. 

If a registration issues inadvertently during a timely opposition, the Director normally will cancel 

the registration as inadvertently issued, and restore it to application status. However, if the 

opposition has already been finally determined in applicant's favor when the inadvertent issuance 

is discovered, applicant may either keep the registration, or request that it be cancelled as 

inadvertently issued, restored to application status, and then reissued. 

217 Relinquishment of Extension 

If a potential opposer whose request for an extension of time to oppose is pending, or whose 

granted extension has not yet expired, files a letter notifying the Board that it will not oppose, the 

Board will immediately forward to issue the application that was the subject of the request or 

extension. 

If a potential opposer that has requested or obtained an extension of time to oppose thereafter 

agrees unconditionally in writing not to oppose, applicant may submit a copy of the agreement to 

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the Board, with an appropriate cover letter bearing proof of service upon potential opposer, and 

the Board will immediately forward the subject application to issue.121 

 218 Abandonment of Application 

If an applicant files an express abandonment of an application that is the subject of a pending or 

granted request for extension of time to oppose, or if a 66(a) application that is the subject of a 

pending or granted request for extension of time to oppose is abandoned by the Office as the 

result of cancellation of the underlying international registration,122 the application stands 

abandoned and any pending request for an extension of time to oppose is moot. An application 

that has been abandoned is no longer subject to the filing of a new opposition. Any opposition 

filed on or after the filing date of the abandonment will be returned by the Board to the opposer, 

and the opposition fee will be refunded.123 

The abandonment of an application that is not the subject of an inter partes proceeding before the 

Board (i.e., an opposition, interference, or concurrent use proceeding) is without prejudice to the 

applicant. It is not necessary that applicant obtain a potential opposer's consent thereto.124 

In contrast, after the commencement of an opposition, interference, or concurrent use 

proceeding, if an applicant files an express abandonment of its application (or if a 66(a) 

application is abandoned by the Office as the result of cancellation of the underlying 

international registration) without the written consent of every adverse party to the proceeding, 

judgment will be entered against the applicant.125 However, if an application is abandoned after 

the commencement of an opposition, interference, or concurrent use proceeding, but before 

applicant has been notified thereof by the Board, the applicant will be given an opportunity to 

obtain the written consent of every adverse party, or to withdraw the abandonment and litigate 

the proceeding, failing which judgment shall be entered against applicant.126 

121 Cf. TBMP § 212.06 (Action by Board—After Consideration of Amendment). 

122 If an international registration is cancelled by the International Bureau for any reason, the IB will notify the 

USPTO and the USPTO will abandon the corresponding 66(a) application. See 37 CFR § 7.30. 

123 See Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1081 n.1 (TTAB 1992) and In

re First National Bank of Boston, 199 USPQ 296, 297 (TTAB 1978) (notice of opposition and abandonment both 

filed on same day; no opposition). Cf. TBMP § 602.01 (Withdrawal by Applicant). 

124 See 37 CFR § 2.68. 

125 See 37 CFR § 2.135. 

126 See In re First National Bank of Boston, supra. Cf. TBMP § 602.01 (Withdrawal by Applicant). 

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An applicant may expressly abandon its application by filing in the Office a written statement of 

abandonment or withdrawal of the application, signed by the applicant or by the applicant's 

attorney or other authorized representative.127 

When an applicant files an express abandonment of an application that is the subject of a pending 

or granted request for extension of time to oppose, or a 66(a) application is abandoned by the 

Office as the result of cancellation of the underlying international registration, a Board 

administrative staff member will prepare a letter acknowledging the abandonment, and notifying

potential opposer that the application is no longer subject to the filing of a new opposition. 

219 Amendment to Allege Use; Statement of Use 

An amendment to allege use under Section 1(c) of the Act, 15 U.S.C. § 1051(c), filed in an 

intent-to-use application (i.e., an application under Section 1(b) of the Act, 15 U.S.C. § 1051(b)) 

after approval for publication, is late-filed.128 Thus, an amendment to allege use filed during an 

extension of time to oppose or during an opposition is late-filed. 

A statement of use under Section 1(d) of the Act, 15 U.S.C. § 1051(d), is premature if it is filed 

in an intent-to-use application prior to the issuance of a notice of allowance under Section 

13(b)(2) of the Act, 15 U.S.C. § 1063(b)(2).129 A notice of allowance is issued in an intent-touse application (for which no amendment to allege use has been timely filed and accepted) only 

after the time for opposing has expired and all oppositions filed have been dismissed.130 Thus, a 

statement of use filed during an extension of time to oppose or during an opposition is 

premature. 

Any late-filed amendment to allege use or premature statement of use will be returned to the 

applicant, and any fee submitted therewith will be refunded.131 

If an intent-to-use application has been published and is under a well taken request for an 

extension of time to oppose when a timely filed amendment to allege use (i.e., an amendment to 

allege use filed prior to approval for publication) is associated with the application, the Board 

will issue an action approving the extension of time (or, if already approved, noting that potential 

127 See 37 CFR § 2.68. 

128 See 37 CFR § 2.76(a); and In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm'r 1992) (amendment to

allege use filed during blackout period denied as untimely). 

129 See Section 1(d)(1) of the Act, 15 U.S.C. § 1051(d)(1), and 37 CFR § 2.88(a).

130 See Section 13(b)(2) of the Act, 15 U.S.C. § 1063(b)(2), and 37 CFR § 2.81(b). 

131 See 37 CFR §§ 2.76(a) and 2.88(a).

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opposer has been granted an extension of time to oppose until a specified date) and advise the 

potential opposer that if it wishes to preserve its right to oppose should the amendment to allege 

use be ultimately withdrawn by the applicant or approved by the examining attorney, the 

potential opposer must continue to file further timely requests for extensions of time to oppose, 

or it must file the notice of opposition. 

The Board will then return the application to the trademark examining attorney for appropriate 

action with respect to the amendment to allege use. The examining attorney, in turn, will process 

the amendment to allege use in the same manner132 as any other timely filed amendment to allege 

use that is not associated with the application file until after publication. In the event that the 

amendment to allege use is ultimately withdrawn by the applicant, or approved by the examining 

attorney, the examining attorney should return the application to the Board (before any scheduled 

republication of applicant's mark) for further appropriate action with respect to the extension of 

time to oppose.133 If the application is abandoned while it is before the examining attorney, the 

Board should be notified. 

The filing of the amendment to allege use will be considered good cause for extensions of time 

to oppose aggregating up to 120 days from the date of publication of the mark, but it will not 

constitute extraordinary circumstances justifying an extension of time beyond 120 days from

publication. 

If an intent-to-use application has already been published, and is the subject of an opposition, 

when a timely filed amendment to allege use (i.e., an amendment to allege use filed prior to 

approval for publication) is associated with the application, the Board normally will suspend the 

opposition and return the application to the trademark examining attorney for appropriate 

action134 with respect to the amendment to allege use. In the event that the amendment to allege 

use is ultimately withdrawn by the applicant, or approved by the examining attorney, the 

examining attorney should return the application to the Board (prior to any scheduled 

republication of applicant's mark) for further appropriate action with respect to the opposition.135 

If the application is abandoned while it is before the examining attorney, the Board should be 

notified. 

 

132 Described in TMEP § 1104.04.

133 See TMEP § 1104.04. 

134 As described in TMEP § 1104.04. 

135 See TMEP § 1104.04. 

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220 Inadvertent Issuance of a Notice of Allowance 

Sometimes a notice of allowance is issued mistakenly in an intent-to-use application that, at the 

time of such issuance, is the subject of an unexpired extension of time to oppose or a timely 

opposition. If a notice of allowance is inadvertently issued in an intent-to-use application which 

is the subject of an unexpired extension of time to oppose or a timely opposition, and a statement 

of use is filed, the notice of allowance will be cancelled (by the Intent To Use Division of the 

Office of Trademark Services) as inadvertently issued. The statement of use will be returned, 

and the fee submitted therewith will be refunded. If the inadvertently issued notice of allowance 

has already been cancelled when the Board receives the statement of use, the Board itself will 

return the statement of use and refund the fee submitted therewith. If the inadvertently issued 

notice of allowance has not already been cancelled when the Board receives the statement of use, 

the Intent To Use Division will return the statement of use and refund the fee when it cancels the 

notice of allowance. 

Sometimes a notice of allowance issues between the time an extension request is submitted but 

not yet approved. Additionally, by the time the Board receives the file for action the extension 

requested has expired, and no opposition or further extension requests have been filed. In that 

case, the Board will issue an action acknowledging the extension request; indicating that it was 

well taken but that time has since expired and no opposition or further request has been filed. 

The Board will also indicate that a notice of allowance was inadvertently issued during the 

requested extension period, but since the requested time period has run without subsequent 

action by the potential opposer, the notice of allowance will not be withdrawn. 

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301 Types of Board Proceedings 

The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, 

cancellations, interferences, and concurrent use proceedings.1

 

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a 

registration of a mark on the Principal Register. "Any person who believes that he would be 

damaged by the registration of a mark" may file an opposition thereto, but the opposition may be 

filed only as a timely response to the publication of the mark, under Section 12(a) of the Act, 15 

U.S.C. § 1062(a), in the Official Gazette of the USPTO.2

 

Mark on Supplemental Register Not Subject to Opposition: 

15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register 

shall not be published for or be subject to opposition, but shall be published on 

registration in the Official Gazette of the Patent and Trademark Office. Whenever any 

person believes that he is or will be damaged by the registration of a mark on this 

register, including as a result of dilution under section 43(c), he may at any time, upon 

payment of the prescribed fee and the filing of a petition stating the ground therefor, 

apply to the Director to cancel such registration. ... 

Although the mark in an application for registration on the Principal Register is published 

for, and subject to, opposition, the mark in an application for registration on the 

Supplemental Register is not.3

 

Accordingly, the Board must reject any opposition filed with respect to the mark in an 

application for registration on the Supplemental Register. The opposition papers will be 

returned to the person who filed them, and any opposition fee submitted will be refunded. 

The remedy of the would-be opposer lies in the filing of a petition to cancel the 

registration of the mark, once the registration has issued.4

 

1

 See also TBMP § 102. 

2

 See Section 13 of the Act of 1946, 15 U.S.C. § 1063. See also Section 68(a)(2) of the Act, 15 U.S.C. § 

1141h(2)(a) (an application filed under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f), is subject to

opposition under Section 13 of the Act). 

3

 See Sections 12(a), 13(a), and 24 of the Act, 15 U.S.C. §§ 1062(a), 1063(a), and 1092. See also TBMP § 205 

(Mark on Supplemental Register). 

4

 See Section 24 of the Act, 15 U.S.C. § 1092. 

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A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing 

registration of a trademark. The proceeding may only be filed after the issuance of the 

registration. A petition for cancellation may be filed by "any person who believes that he is or 

will be damaged by the registration" of the mark.5

 

An interference is a proceeding in which the Board determines which, if any, of the owners of 

conflicting applications (or of one or more applications and one or more registrations which are 

in conflict), is entitled to registration.6

 The proceeding is declared by the Office only on petition 

to the Director showing extraordinary circumstances therefor, that is, that the party who filed the 

petition would be unduly prejudiced without an interference.7

 

A concurrent use proceeding is a proceeding in which the Board determines whether one or more 

applicants is entitled to a concurrent registration, that is, a registration with conditions and 

limitations, fixed by the Board, ordinarily as to the geographic scope of the applicant's mark or 

the goods and/or services on or in connection with which the mark is used.8

 

302 Commencement of Proceeding 

37 CFR § 2.101(a) An opposition proceeding is commenced by filing a timely opposition, 

together with the required fee, in the Office in the Office. 

37 CFR § 2.111(a) A cancellation proceeding is commenced by the filing of a timely petition for 

cancellation, together with the required fee, in the Office. 

37 CFR § 2.116(b) The opposer in an opposition proceeding or the petitioner in a cancellation 

proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or 

the respondent in a cancellation proceeding shall be in the position of defendant. A party that is 

a junior party in an interference proceeding or in a concurrent use registration proceeding shall 

be in the position of plaintiff against every party that is senior, and the party that is a senior 

party in an interference proceeding or in a concurrent use registration proceeding shall be a 

defendant against every party that is junior. 

5

 See Sections 14 and 24 of the Act of 1946, 15 U.S.C. §§ 1064 and 1092. 

6

 See Section 18 of the Act, 15 U.S.C. § 1068. 

 

7

 See Section 16 of the Act of 1946, 15 U.S.C. § 1066; 37 CFR § 2.91; and TBMP § 1002 (Declaration of

Interference). 

8

 See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 n.9 (TTAB 1995) and TBMP § 

1101.01 (Nature of Concurrent Use Proceeding) and authorities cited therein. 

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37 CFR § 2.116(c) The opposition or the petition for cancellation and the answer correspond to 

the complaint and answer in a court proceeding.

An opposition proceeding is commenced by the timely filing of a notice of opposition, together 

with the required fee, in the USPTO.9

 Similarly, a cancellation proceeding is commenced by the 

timely filing of a petition for cancellation, together with the required fee, in the USPTO.10 

The notice of opposition, or the petition for cancellation, and the answer thereto correspond to 

the complaint and answer in a court proceeding.11 The opposer in an opposition proceeding, or 

the petitioner in a cancellation proceeding, is in the position of plaintiff, and the applicant in an 

opposition proceeding, or the respondent in a cancellation proceeding, is in the position of 

defendant.12 

An interference proceeding commences when the Board mails a notice of interference to each of 

the parties to the proceeding, as described in 37 CFR § 2.93.13 

 

A concurrent use proceeding commences when the Board mails a notice of the proceeding to 

each of the parties thereto, as described in 37 CFR §§ 2.99(c) and 2.99(d)(1). 

For further information concerning interference and concurrent use proceedings, see TBMP 

chapters 1000 and 1100, respectively. 

303 Who May Oppose or Petition to Cancel 

303.01 In General 

15 U.S.C. § 1063(a) [Section 13(a) of the Trademark Act] Any person who believes that he 

would be damaged by the registration of a mark upon the principal register, including as a result 

of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the 

Patent and Trademark Office, stating the grounds therefor, within thirty days after the 

publication under subsection (a) of section 12 of this Act of the mark sought to be registered. ... 

9

 See 37 CFR § 2.101(a). See also Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d

1001, 1004 (Fed. Cir. 1988). Cf. Fed. R. Civ. P. 3. 

 

10 See 37 CFR § 2.111(a). 

11 See 37 CFR § 2.116(c). 

 

12 See 37 CFR § 2.116(b). See also Yamaha International Corp. v. Hoshino Gakki Co., supra. 

13 See 37 CFR § 2.93. 

 

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15 U.S.C. § 1064 [Section 14 of the Trademark Act] A petition to cancel a registration of a 

mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as 

follows by any person who believes that he is or will be damaged, including as a result of 

dilution under section 43(c), by the registration of a mark on the principal register established 

by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905.... 

15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register shall 

not be published for or be subject to opposition, but shall be published on registration in the 

Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or 

will be damaged by the registration of a mark on this register, including as a result of dilution 

under section 43(c), he may at any time, upon payment of the prescribed fee and the filing of a 

petition stating the ground therefor, apply to the Director to cancel such registration. ... 

15 U.S.C. § 1127 [Section 45 of the Trademark Act: Construction and Definitions] In the 

construction of this Act, unless the contrary is plainly apparent from the context-- 

 * * * * 

Person; Juristic Person. The term "person" and any other word or term used to designate the 

applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this 

Act includes a juristic person as well as a natural person. The term "juristic person" includes a 

firm, corporation, union, association, or other organization capable of suing and being sued in a 

court of law. 

The term "person" also includes the United States, any agency or instrumentality thereof, or any 

individual, firm, or corporation acting for the United States and with the authorization and 

consent of the United States. The United States, any agency or instrumentality thereof, and any 

individual, firm, or corporation acting for the United States and with the authorization and 

consent of the United States, shall be subject to the provisions of this Act in the same manner and 

to the same extent as any non-governmental entity. 

The term “person” also includes any State, any instrumentality of a State, and any officer or 

employee of a State or instrumentality of a State acting in his or her official capacity. Any State, 

and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act 

in the same manner and to the same extent as any non-governmental entity. 

* * * * 

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

37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the 

registration of a mark on the Principal Register may oppose the same by filing an opposition, 

which should be addressed to the Trademark Trial and Appeal Board. ... 

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37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a 

registration may file a petition, addressed to the Trademark Trial and Appeal Board, for 

cancellation of the registration in whole or in part. ... 

303.02 Meaning of the Term "Person" 

The term "person," as used in the Act, includes both natural and juristic persons.14 A juristic 

person is a "firm, corporation, union, association, or other organization capable of suing and 

being sued in a court of law."15 

If an operating division of a corporation is not itself incorporated or is not otherwise a legal 

entity which can sue and be sued, it does not have legal standing to own a mark or to file an 

application for registration, an opposition, or a petition for cancellation.16 In such a case, the 

application, opposition, or petition for cancellation should be filed in the name of the corporation 

of which the division is a part. If an opposition or a petition for cancellation is filed in the name

of a division, and there is no indication that the division is incorporated, the Board will make 

written inquiry as to whether the division is incorporated or is otherwise a legal entity that can 

sue and be sued. If the opposer or petitioner responds in the negative, the opposition or petition 

for cancellation will go forward in the name of the corporation of which the division is a part.17 

The term “person” as used in the Act also includes the United States, any agency and 

instrumentality thereof, or any individual, firm or corporation which acts for the United States 

and with the authorization and consent of the United States, as well as any state, any 

14 See Section 45 of the Act, 15 U.S.C. § 1127. Cf. 37 CFR § 2.2(b). 

 

15 Section 45 of the Act, 15 U.S.C. § 1127. See Opryland USA Inc. v. The Great American Music Show Inc., 970 

F.2d 847, 23 USPQ2d 1471, 1475 (Fed. Cir. 1992) (a "person" may be a corporation or other entity); Morehouse 

Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 720-21 (CCPA 1969) (a corporation, is 

a "person" within the meaning of Section 45 of the Act, and can base an opposition on Section 2(a) of the Act, 15

U.S.C. § 1052(a)); Aruba v. Excelsior Inc., 5 USPQ2d 1685, 1686 n.2 (TTAB 1987) (Commonwealth of Aruba is a 

"person" within the meaning of Sections 13 and 45 of the Act); U.S. Navy v. United States Manufacturing Co., 2 

USPQ2d 1254, 1257 (TTAB 1987) (U.S. Navy is a juristic person within the meaning of Section 45 of the Act); 

Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 410 n.6 (TTAB

1986) (Alabama Board of Trustees, a corporate body, may be considered either a "person" or an "institution" within

the meaning of Section 2(a) of the Act); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 

754 n.2 (TTAB 1985) (corporations as well as individuals are "persons" for purposes of Section 2(a) of the Act); and

In re Mohawk Air Services Inc., 196 USPQ 851, 855 (TTAB 1977) (a government agency is a juristic person and as 

such may file an application for registration, an opposition, or a petition for cancellation). 

16 See In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986), and TMEP § 1201.02(d). 

 

17 Cf. In re Cambridge Digital Systems, supra, and TMEP § 1201.02(d). 

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instrumentality of a state, and any officer or employee of a state or instrumentality of a state 

acting in his or her official capacity.18

303.03 Meaning of the Term "Damage" 

The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, 

concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. 

A party may establish its standing to oppose or to petition to cancel by showing that it has a "real 

interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable 

basis for its belief in damage.19 There is no requirement that actual damage be pleaded and 

proved in order to establish standing or to prevail in an opposition or cancellation proceeding.20 

For a discussion of standing, see TBMP § 309.03(b). 

 

303.04 Federal Trade Commission 

15 U.S.C. § 1064 ...Provided, That the Federal Trade Commission may apply to cancel on the 

grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal 

register established by this Act, and the prescribed fee shall not be required.

18 See Section 45 of the Trademark Act, 15 U.S.C. 1127. 

19 See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and TBMP § 309.03(b)

(Standing).

20 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Books on

Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. 

Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev'd, 

853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); International Order of Job's Daughters v. Lindeburg and Company, 

727 F.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 

USPQ 185 (CCPA 1982); and Universal Oil Products Co. v. Rexall Drug & Chemical Co., 463 F.2d 1122, 1124, 

174 USPQ 458, 459-60 (CCPA 1972); Rosso & Mastracco, Inc. v. Giant food Inc., 720 F.2d 1263, 219 USPQ 1050

(Fed. Cir. 1983); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983);

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1100-01, 192 USPQ 24, 27 (CCPA 1976);

American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313 (TTAB 1992); Estate of Biro v. Bic Corp., 

18 USPQ2d 1382 (TTAB 1991); Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990); Ipco Corp. v. Blessings

Corp., 5 USPQ2d 1974 (TTAB 1988); Aruba v. Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987); Bankamerica Corp. 

v. Invest America, 5 USPQ2d 1076 (TTAB 1987); BRT Holdings Inc. v. Homeway, Inc., 4 USPQ2d 1952 (TTAB 

1987); American Speech-Language-Hearing Ass'n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984); 

and Davco Inc. v. Chicago Rawhide Mfg. Co., 224 USPQ 245 (TTAB 1984). 

 

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The proviso at the end of Section 14 of the Lanham Act, 15 U.S.C. § 1064, provides statutory 

standing for the Federal Trade Commission to cancel a registration on the Principal Register on 

the grounds specified in paragraphs (3) and (5) of the section.21 

For information concerning the grounds for cancellation specified in paragraphs (3) and (5) of 

Section 14 of the Act, see TBMP § 307.01.

303.05 Opposition Filed During Extension of Time to Oppose 

 

37 CFR § 2.102(b) A written request to extend the time for filing an opposition must identify the 

potential opposer with reasonable certainty. Any opposition filed during an extension of time 

should be in the name of the person to whom the extension was granted. An opposition may be 

accepted if the person in whose name the extension was requested was misidentified through 

mistake or if the opposition is filed in the name of a person in privity with the person who 

requested and was granted the extension of time.

303.05(a) General Rule 

An extension of time to oppose is a personal privilege which inures only to the benefit of 

the party to which it was granted and those in privity with that party.

22 For this reason, an 

opposition filed during an extension of time to oppose ordinarily must be filed in the 

name of the party to which the extension was granted.23 An opposition filed in a different 

name will be accepted only if the opposition is filed by a person in privity with the person 

granted the extension of time or if the person that requested the extension was 

misidentified through mistake.24

21 See also Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641, 647 (CCPA 1979), and Federal Trade 

Commission v. Formica Corp., 200 USPQ 182, 191 (TTAB 1978). 

 

22 See Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (a party cannot claim the 

benefit of an extension granted to another, unrelated party). 

23 See 37 CFR § 2.102(b); TMEP § 1503.04; SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 

1994); and In re Cooper, 209 USPQ 670, 671 (Comm'r 1980). Cf. TBMP § 206.02. 

24 See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. 

Cir. 2003) (privity and misidentification by mistake "are two disjunctive conditions under which an opposer may 

claim the benefit of an extension granted to another named entity"). 

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303.05(b) Opposition Filed by Privy 

A party in privity with a potential opposer may step into the potential opposer's shoes and 

file a notice of opposition or may join with the potential opposer as a joint opposer.25 

Thus, an opposition filed during an extension of time to oppose may be filed by a party 

other than the party to which the extension was granted, if it is shown to the satisfaction 

of the Board that the differing party is in privity with the party granted the extension.26 If 

the opposition is filed both in the name of the party granted the previous extension and in 

the name of one or more different parties, an explanation will be requested as to each 

different party, and the opposition will not be accepted as to any different party that fails 

to make a satisfactory showing of privity. 

The "showing" of privity should be in the form of a recitation of the facts on which the 

claim of privity is based, and must be submitted either with the opposition, or during the 

time allowed by the Board in its letter requesting an explanation of the discrepancy. If 

the opposition is filed both in the name of the party granted the previous extension and in 

the name of one or more differing parties, an explanation will be requested as to each 

differing party, and the opposition will not be accepted as to any differing party that fails 

to make a satisfactory showing of privity. 

Once a timely notice of opposition has been filed, and the time for opposing has expired, 

the right to pursue the filed case is a right individual to the timely filer. While this right 

may be transferred to another party, as by an assignment of the mark with the associated 

goodwill, it may not be shared.27 

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

303.05(c) Misidentification of Opposer 

If the name of the opposer, in an opposition filed during an extension of time to oppose, 

differs from the name of the party to which the extension was granted, the opposition will 

not be rejected on that ground if it is shown to the satisfaction of the Board that the party 

in whose name the extension was requested was misidentified through mistake.28 

25 See SDT Inc. v. Patterson Dental Co., supra (licensee, as party in privity with opposer, could have joined opposer 

in filing opposition during extension of time to oppose); Trademark Rule 2.102(b); and In re Cooper, supra. 

26 See 37 CFR § 2.102(b); TMEP § 1503.04; SDT Inc. v. Patterson Dental Co., supra; and In re Cooper, supra 

(fact that two entities share same objection is not a basis for finding privity). Cf. TBMP § 206.02. 

27 SDT, Inc. v. Patterson Dental Co., supra at 1709; and In re Cooper, supra at 671 (licensee, having failed to join 

opposer in filing opposition during extension of time to oppose, may not be joined after opposition is filed). 

28 See 37 CFR § 2.102(b) and Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB 1993). 

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The phrase "misidentification by mistake," as used in 37 CFR § 2.102(b), means a 

mistake in the form of the opposer's name or its entity type, not the naming of a different 

existing legal entity that is not in privity with the party that should have been named.29 

The "showing" submitted in support of a claim of misidentification by mistake should be 

in the form of a recitation of the facts on which the claim of misidentification by mistake 

is based, and must be submitted either with the opposition or during the time allowed by 

the Board in its letter requesting an explanation of the discrepancy. 

303.06 Joint Opposers or Petitioners 

Two or more parties may file an opposition or a petition for cancellation jointly. However, the 

required fee must be submitted for each party joined as opposer or petitioner for each class in the 

application for which registration is opposed or for each class in the registration for which 

cancellation is sought.30 

When parties file jointly, the notice of opposition or petition for cancellation must name each 

party joined as plaintiff. In addition, the notice of opposition or petition for cancellation should 

include allegations concerning the standing of each party plaintiff and the ground or grounds for 

opposition or cancellation.31 If the case is ultimately determined on the merits, rather than by 

29 See Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. 

Cir. 2003) (entity named in extensions was not a "different existing legal entity" from entity that filed opposition)

and Cass Logistics Inc. v. McKesson Corp., supra at 1077 (word processing error resulting in identification of 

different legal entity was not a “mistake” within the meaning of the rule). See also TMEP § 1503.04. 

 Cf. William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870 (TTAB 1994) (motion to substitute party 

that acquired mark from opposer prior to commencement of proceeding granted where opposition had been 

mistakenly filed in name of original owner); Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 

USPQ 505, 506 (TTAB 1974) (motion to substitute granted where opposition was mistakenly filed in name of

original owner); Davidson v. Instantype, Inc., 165 USPQ 269, 271 (TTAB 1970) (leave to amend to substitute 

proper party granted where opposition was filed in name of the individual rather than in the name of the 

corporation); Pyco, Inc. v. Pico Corp., 165 USPQ 221, 222 (TTAB 1969) (where succession occurred prior to filing

of opposition, erroneous identification of opposer as a partner in a firm which no longer existed was not fatal); and

TBMP § 512.04 (Misidentification). Cf. also TMEP §§ 803.03 and 1201.02(c); In re Columbo Inc., 33 USPQ2d

1530, 1531 (Comm’t 1994) (fact that statement of use was signed by officer of true owner was irrelevant where 

statement of use was filed in name of wrong party); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1640 (TTAB 

1991) (correction not permitted where joint venture owned the mark but the application was filed by a corporation

which was one member of the joint venture); and U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 

USPQ 613 (Comm'r 1974) (deletion of "company" was correctable mistake). 

30 See 37 CFR §§ 2.101(d)(1) and 2.111(c)(1); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 

1994) (licensee was not permitted to join as co-opposer after notice of opposition was filed, but even if permitted,

would have had to submit fee); and TBMP § 308 (Filing Fees). For information concerning the filing of an

opposition by two or more parties jointly where the opposition is filed during an extension of time obtained by only 

one of the parties see TBMP § 303.05. 

31 See TBMP § 309.03(b) and (c) for a discussion of standing and grounds for oppositions and cancellations. 

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default, withdrawal, stipulation, etc., any joint plaintiff whose standing has not been proved 

cannot prevail, even though a ground for opposition or cancellation has been proved.32 

On the other hand, the fact that two or more parties may have an interest in a mark to be pleaded 

in a notice of opposition, or a petition for cancellation does not mean that each such party must 

be joined as opposer, or petitioner. Joint filing is elective, not mandatory.33 

304 Proceeding Against Multiple Class Application or Registration 

When an opposition is filed with respect to an application which contains goods and/or services 

in multiple classes (see 37 CFR § 2.86(b)), or a petition for cancellation is filed with respect to a 

registration which contains goods and/or services in multiple classes, the class or classes 

opposed, or sought to be cancelled, should be specified in the plaintiff's pleading. In addition, 

the required opposition or cancellation fee must be submitted for each party joined as plaintiff 

for each class sought to be opposed or cancelled.34 

305 Consolidated and Combined Complaints 

37 CFR § 2.104(b) Oppositions to different applications owned by the same party may be joined 

in a consolidated opposition when appropriate, but the required fee must be included for each 

party joined as opposer for each class in which registration is opposed in each application 

against which the opposition is filed. 

37 CFR § 2.112(b) When appropriate, petitions for cancellation of different registrations owned 

by the same party may be joined in a consolidated petition for cancellation. The required fee 

must be included for each party joined as a petitioner for each class sought to be cancelled in 

each registration against which the petition to cancel is filed. 

When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, 

different applications owned by the same defendant. However, the required fee must be 

32 See Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (of three 

joint opposers, owner of registration and its licensee as user of marks had real interest in proceeding, but opposer

who only held software copyright had no standing and was given no further consideration). See also Boswell v. 

Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (Board found that one of the two opposers did not 

prove standing). 

33 See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1627 (TTAB 1992) (respondent's motion to

dismiss and its alternative motion to join petitioner's parent as owner of pleaded registrations and real party in

interest denied since issue concerned what rights petitioner has in pleaded marks vis a vis defendant, not anyone 

else). 

34 See 37 CFR §§ 2.101(d) and 2.111(c), and TBMP § 308.04.

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submitted for each party joined as opposer, for each class in which registration is opposed, in 

each application against which the opposition is filed.35 When such a pleading is filed, the Board 

sets up a single opposition file, identified by a single opposition proceeding number, but bearing, 

the number of each application opposed in the consolidated notice of opposition. 

Similarly, when appropriate, a party may seek to cancel, in a single ("consolidated") petition for 

cancellation, different registrations owned by the same defendant. Again, the required fee must 

be submitted for each party joined as petitioner, for each class sought to be cancelled, in each 

registration against which the petition for cancellation is filed.36 When such a pleading is filed, 

the Board sets up a single cancellation file, identified by a single cancellation proceeding 

number, but bearing the number of each registration sought to be cancelled in the consolidated 

petition to cancel. 

In addition, a party may file, when appropriate, a single pleading combining a notice of 

opposition to one or more applications, and a petition to cancel one or more registrations, 

provided that each subject application and registration is owned by the same defendant.37 

However, the required fee must be submitted for each party joined as plaintiff, for each class 

sought to be opposed or cancelled, in each application or registration against which the pleading 

is filed.38 When such a pleading (referred to as a "combined" opposition and petition to cancel) 

is filed, the Board sets up both an opposition and a cancellation proceeding file, each with its 

own identifying number, and each marked "Combined with _____" followed by the number of 

the other proceeding. The opposition is treated as the "parent" case, and both proceeding 

numbers are placed on all documents relating to the combined proceedings.39 

A consolidated notice of opposition, or petition to cancel, or a combined notice of opposition and

petition to cancel, is appropriate if the plaintiff's claims against each of the defendant's subject 

applications, and/or registrations, involve common (i.e., similar) questions of law or fact.40 

35 See 37 CFR § 2.104(b) and TBMP § 308.05. 

36 See 37 CFR § 2.112(b) and TBMP § 308.05. 

37 See, e.g., Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 n.2 (TTAB 1993) (combined opposition

and cancellation). 

38 See TBMP § 308 (Filing Fees). Cf. 37 CFR §§ 2.104(b) and 2.112(b). 

 

39 Cf. TBMP § 511. 

40 See Nabisco Brands Inc. v. Keebler Co., supra at 1238 n.2 (defendant who believes marks and issues are 

sufficiently different such that combined proceeding is not appropriate may file motion to separate proceedings). 

Cf. Fed. R. Civ. P. 42(a); TBMP § 511 (motions to consolidate); World Hockey Ass'n v. Tudor Metal Products 

Corp., 185 USPQ 246, 248 (TTAB 1975) (oppositions involving similar marks and similar issues consolidated); and

Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440, 441 (TTAB 1973) (applicant's motion to consolidate denied in

view of extent of differences in the involved issues). Cf. also Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444, 

300 - 120 
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306 Time for Filing Opposition 

306.01 In General 

15 U.S.C. § 1062(a) [Section 12(a) of the Trademark Act] 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 1(d) of 

this Act, the Director shall cause the mark to be published in the Official Gazette of the Patent 

and Trademark Office.... 

15 U.S.C. § 1063(a) [Section 13(a) of the Trademark Act] Any person who believes that he 

would be damaged by the registration of a mark upon the principal register, including as a result 

of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the 

Patent and Trademark Office, stating the grounds therefor, within thirty days after the 

publication under subsection (a) of section 12 of this Act of the mark sought to be registered. 

Upon written request prior to the expiration of the thirty-day period, the time for filing

opposition shall be extended for an additional thirty days, and further extensions of time for 

filing opposition may be granted by the Director for good cause when requested prior to the 

expiration of an extension. The Director shall notify the applicant of each extension of the time 

for filing opposition. ... 

37 CFR § 2.101 Filing an opposition

(a) An opposition proceeding is commenced by filing a timely opposition, together with the 

required fee, in the Office. 

 * * * * 

(c) The opposition must be filed within thirty days after publication (§2.80) of the application 

being opposed or within an extension of time (§2.102) for filing an opposition. 

 * * * * 

(d)(4) The filing date of an opposition is the date of receipt in the Office of the opposition 

together with the required fee. 

1445 (TTAB 1987) (joint motion to consolidate granted in view of identity of parties and issues), and Federated 

Department Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262, 263 (TTAB 1985) (consolidation permitted;

issues of fact and law substantially similar). 

300 - 121 
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An opposition to the registration of a mark on the Principal Register must be filed prior to the 

expiration of the thirty-day period after publication of the mark in the Official Gazette for 

opposition, or within an extension of time to oppose granted to the opposer or its privy.

41 

The certificate of mailing by first-class mail procedure described in 37 CFR § 2.197 and the 

"Express Mail" procedure described in 37 CFR § 2.198 are both available for the filing of a 

notice of opposition; the certificate of (fax) transmission procedure described in 37 CFR § 2.197 

is not.42 

The filing date of an opposition is the date of receipt in the Office of the opposition together with

the required fee.43

For information on opposition filing fees, see TBMP § 308. For information on how to file an 

opposition, see TBMP § 309. 

For information concerning the effect of such matters as restoration of jurisdiction, 

republication, amendment, letter of protest, petition to the Director, abandonment, or the 

inadvertent issuance of a registration, on the filing of an opposition or a request to extend time 

to oppose, see generally, TBMP chapter 200. 

306.02 Date of Publication of Mark 

The date of publication of a mark is the issue date of the issue of the Official Gazette in which 

the mark appears, pursuant to Section 12(a) of the Act, 15 U.S.C. § 1062(a), for purposes of 

opposition. 

306.03 Premature Opposition 

Section 13 of the Act, 15 U.S.C. § 1063(a), requires that an opposition to the registration of a 

mark on the Principal Register be filed within a specified time after the publication of the mark 

in the Official Gazette. 

Thus, any opposition filed prior to the publication of the mark sought to be opposed, is 

premature, and will be rejected by the Board, even if the mark has been published by the time of

41 See Section 13(a) of the Act, 15 U.S.C. § 1063(a); 37 CFR §§ 2.102(b) and (c); SDT Inc. v. Patterson Dental Co., 

30 USPQ2d 1707, 1709 (TTAB 1994); and TBMP § 303 (Who May Oppose or Petition to Cancel). 

42 See 37 CFR §§ 2.197(a) and 2.198(a). See also TBMP §§ 110 (Certificate of Mailing or Transmission) and 111 

(“Express Mail” Procedure). 

43 37 CFR § 2.101(d)(4).

300 - 122 
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the Board's action. No proceeding will be instituted, and any submitted opposition fee will be

refunded.44 

306.04 Late Opposition 

Because the timeliness requirements of Section 13(a) of the Act, 15 U.S.C. § 1063(a), for the 

filing of an opposition are statutory, they cannot be waived by stipulation of the parties, nor can 

they be waived by the Director on petition.45 

Accordingly, an opposition filed after the expiration of the would-be opposer's time for opposing 

must be denied by the Board as late. The opposition will not be instituted, and any submitted 

opposition fee will be refunded. The would-be opposer's remedy lies in the filing of a petition 

for cancellation, pursuant to Section 14 of the Act, 15 U.S.C. § 1064, when and if a registration 

is issued. 

307 Time for Filing Petition to Cancel 

15 U.S.C. § 1064 [Section 14 of the Trademark Act] A petition to cancel a registration of a 

mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as 

follows by any person who believes that he is or will be damaged, including as a result of 

dilution under section 43(a), by the registration of a mark on the principal register established 

by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905: 

(1) Within five years from the date of the registration of the mark under this Act. 

 

(2) Within five years from the date of publication under section 12(c) hereof of a mark 

registered under the Act of March 3, 1881, or the Act of February 20, 1905. 

(3) At any time if the registered mark becomes the generic name for the goods or 

services, or a portion thereof, for which it is registered, or is functional or has been 

abandoned, or its registration was obtained fraudulently or contrary to the provisions of 

section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or 

contrary to similar prohibitory provisions of such prior Acts for a registration under such 

Acts, or if the registered mark is being used by, or with the permission of, the registrant 

so as to misrepresent the source of the goods or services on or in connection with which 

the mark is used. If the registered mark becomes the generic name for less than all of the 

44 Cf. TBMP §§ 119.03 (Papers and Fees) and 202.03 (Premature Request). 

45 See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995) (waiver of Rule 1.8 would effectively 

waive Section 13 and, in any event, fact that potential opposer did not retain executed hard copies of documents

filed with Office and cannot prove document was timely is not an extraordinary circumstance justifying a waiver of 

Rule 1.8); In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477, 1478 (Comm’r 1994); and In re Cooper, 

209 USPQ 670, 671 (Comm'r 1980). 

300 - 123 
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PLEADINGS 

goods or services for which it is registered, a petition to cancel the registration for only 

those goods or services may be filed. A registered mark shall not be deemed to be the 

generic name of goods or services solely because such mark is also used as a name of or 

to identify a unique product or service. The primary significance of the registered mark 

to the relevant public rather than purchaser motivation shall be the test for determining 

whether the registered mark has become the generic name of goods or services on or in 

connection with which it has been used. 

 

(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of 

February 20, 1905, and has not been published under the provisions of subsection (c) of 

section 12 of this Act. 

 

(5) At any time in the case of a certification mark on the ground that the registrant (A) 

does not control, or is not able legitimately to exercise control over, the use of such mark, 

or (B) engages in the production or marketing of any goods or services to which the 

certification mark is applied, or (C) permits the use of the certification mark for purposes 

other than to certify, or (D) discriminately refuses to certify or to continue to certify the 

goods or services of any person who maintains the standards or conditions which such 

mark certifies: 

 

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in 

paragraphs (3) and (5) of this section any mark registered on the principal register established 

by this Act, and the prescribed fee shall not be required. 

15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register shall 

not be published for or be subject to opposition, but shall be published on registration in the 

Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or 

will be damaged by the registration of a mark on this register, including as a result of dilution 

under section 43(c), he may at any time, upon payment of the prescribed fee and the filing of a 

petition stating the ground therefor, apply to the Director to cancel such registration. The 

Director shall refer such application to the Trademark Trial and Appeal Board which shall give 

notice thereof to the registrant. If it is found after a hearing before the Board that the registrant 

is not entitled to registration, or that the mark has been abandoned, the registration shall be 

cancelled by the Director. However, no final judgment shall be entered in favor of an applicant 

under section 1(b) before the mark is registered, if such applicant cannot prevail without 

establishing constructive use pursuant to section 7(c). 

37 CFR § 2.111 Filing petition for cancellation.

(a) A cancellation proceeding is commenced by the filing of a timely petition for cancellation, 

together with the required fee, in the Office. 

300 - 124 
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(b) Any person who believes that he, she or it is or will be damaged by a registration may file a 

petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration 

in whole or in part. The petition for cancellation need not be verified, but must be signed by the 

petitioner or the petitioner's attorney, as specified in § 10.1(c) of this chapter, or other 

authorized representative, as specified in § 10.14(b) of this chapter. ... The petition may be filed 

at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or 

registrations under the Act of 1881 or the Act of 1905 which have not been published under 

section 12(c) of the Act, or on any ground specified in section 14(3) or (5) of the Act. In all other 

cases, the petition for cancellation and the required fee must be filed within five years from the 

date of registration of the mark under the Act or from the date of publication under section 12(c)

of the Act. 

* * * * 

(c)(4) The filing date of a petition for cancellation is the date of receipt in the Office of the 

petition for cancellation together with the required fee. 

307.01 Petition That May Be Filed At Any Time After Registration 

A petition to cancel a registration may be filed at any time in the case of a registration issued on 

the Supplemental Register under the Act of 1946, 15 U.S.C. §1051 et seq., or under the Act of 

1920, or a registration issued under the Act of 1881 or the Act of 1905 which has not been 

published under Section 12(c) of the Act of 1946, 15 U.S.C. § 1062(c).46 

In addition, a petition to cancel any registration may be filed at any time on any ground specified 

in Section 14(3) or 14(5) of the Act, 15 U.S.C. § 1064(3) or 1064(5).47 As permitted by Section 

14(3), a petition to cancel may be filed at any time on grounds that, for example, the mark has 

been abandoned; the registration was obtained by fraud; the mark is generic; the mark is 

geographically deceptive,48 or disparaging, or falsely suggests a connection with a person's name

or identity;

49 the mark comprises matter that, as a whole, is functional;50 or the mark comprises 

46 See Sections 14 and 24 of the Act, 15 U.S.C. §§ 1064 and 1092, and 37 CFR § 2.111(b). 

47 See Sections 14 and 24 of the Act, 15 U.S.C. §§ 1064 and 1092, and 37 CFR § 2.111(b). 

48 See Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). Cf., for example, Western Worldwide Enterprises 

Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (registration over five years old may not be

challenged on ground that mark is geographically descriptive under Section 2(e)(2)). 

 

49 See Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). 

50 See Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5). 

300 - 125 
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PLEADINGS 

 

the flag of the United States51 or the name of a living individual without the individual's

consent.52 

The filing date of the petition is the date of receipt in the Office of the petition with the required 

fee.53 

For additional information on selected grounds for opposition and cancellation, see TBMP § 

309.03(c). 

307.02 Petition That Must Be Filed Within Five Years from the Date of 

 Registration 

307.02(a) In General

A petition to cancel a registration issued on the Principal Register under the Act of 1946, 

on a ground not specified in Section 14(3) or 14(5) of the Act, 15 U.S.C. § 1064(3) or 

1064(5), must be filed within five years from the date of the registration of the mark.54 

Similarly, a petition to cancel a registration issued on the Principal Register under the Act 

of 1881 or the Act of 1905, and published under the provisions of Section 12(c) of the 

Act of 1946, on a ground not specified in Section 14(3) or 14(5) of the Act, must be filed 

within five years from the date of publication under Section 12(c), 15 U.S.C. 1062(c).55 

Although a petition to cancel filed after the expiration of the five-year period, in the case 

of such a Principal Register registration, must recite one of the grounds specified in 

Section 14(3) or 14(5) of the Act, a petition to cancel filed prior to the expiration of the 

five-year period may be based on any ground which could have prevented registration 

initially.56 The grounds for cancellation which are thus available in these cases for a 

51 See Section 2(b) of the Trademark Act, 15 U.S.C. § 1052(b).

52 See Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c). 

53 37 CFR § 2.111(c)(4). For information on filing fees, see TBMP § 308. 

54 See Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (the filing date of the 

petition is the operative date, not the date that the notice of the proceeding is mailed to the parties). Cf. BritishAmerican Tobacco Co. Limited v. Philip Morris Inc., 55 USPQ2d 1585 (TTAB 2000) (Section 14 does not limit 

Board's authority to entertain an action under Article 8 of the Pan American Convention against a registration over 

five years old).

55 See Sections 14(1) and 14(2) of the Act, 15 U.S.C. §§ 1064(1) and 1064(2), and 37 CFR § 2.111(b). 

 

56 See Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Mobile 

Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 142 (Fed. Cir. 

1986); International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1020

300 - 126 
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PLEADINGS 

 

petition filed within the five-year period, but not thereafter, include all of the grounds 

specified in Sections 14(3) and (5) as well as likelihood of confusion under Section 2(d) 

of the Trademark Act, 15 U.S.C. § 1052(d); 57 all of the grounds specified in Section 2(e) 

of the Act, 15 U.S.C. § 1052(e), including a claim that respondent's mark is merely 

descriptive or deceptively misdescriptive, that respondent's mark is geographically 

descriptive or deceptively misdescriptive, or that respondent's mark is primarily merely a 

surname; that respondent is not the owner of the registered mark; and that there was no 

bona fide use of respondent's mark in commerce to support the original registration. 

For additional information on selected grounds for opposition and cancellation, see 

TBMP § 309.03. 

A petitioner may not seek to cancel a Principal Register registration over five years old 

on the ground of likelihood of confusion. However, under Section 18 of the Trademark 

Act, 15 U.S.C. § 1068, a petitioner may seek to partially cancel a registration over five 

years old by restricting the goods or services therein in order to avoid a likelihood of 

confusion. For a discussion of a petition to partially cancel a registration under Section 

18 of the Trademark Act, see TBMP § 309.03(d). 

The five-year period specified in Section 14(1), 15 U.S.C. § 1064(1), (i.e., "Within five 

years from the date of the registration of the mark under this Act") includes the fifth 

anniversary date of the registration.58 Similarly, the five-year period specified in Section 

14(2), 15 U.S.C. § 1064(2), ("Within five years from the date of publication under 

Section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of 

February 20, 1905"), includes the fifth anniversary date of the publication under Section 

12(c).59 

The filing date of the petition is the date of receipt in the Office of the petition with the 

required fee.60 The Certificate of Mailing procedure described in 37 CFR § 2.197 and the 

(Fed. Cir. 1984); and Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990), aff'd, 951

F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). 

 

57 Cf. Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (claim of likelihood of confusion 

accepted as proper allegation of petitioner's standing with respect to pleaded grounds of fraud and abandonment). 

For a discussion of standing to file a petition to cancel or a notice of opposition, see TBMP § 309.03(b). 

58 See Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309 (TTAB 199) (fifth-year anniversary falling on a weekend or

holiday). Cf. TMEP §§ 1605.05 and 1606.03. 

59 Cf. Strang Corp. v. Stouffer Corp., supra, and TMEP §§ 1605.05 and 1606.03.

60 37 CFR § 2.111(c)(4). For information on filing fees, see TBMP § 308. 

300 - 127 
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PLEADINGS 

 

"Express Mail" procedure described in 37 CFR § 2.198 are available for the filing of a 

petition to cancel.61 

 

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

The five-year time limit specified in Section 14, 15 U.S.C. § 1064, barring certain attacks 

on a Principal Register registration, "is not dependent on the filing of a declaration under 

Section 15 which provides incontestable rights of use to a limited extent (15 U.S.C. § 

1065)."62 

307.02(c) Factors Affecting the Five-Year Period 

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

If an opposer relies on a Principal Register registration of its pleaded mark, and 

the five-year period has not yet expired when the opposition is filed, the 

limitation does not apply to any counterclaim filed in response to the petition for 

cancellation of that registration. This is so even if the five-year period has 

expired by the time the counterclaim is filed. In such cases, the filing of the 

opposition tolls, during the pendency of the proceeding, the running of the fiveyear period for purposes of determining the grounds on which a counterclaim

may be based.63 

Similarly, the limitation would not apply to a counterclaim to cancel such a 

Principal Register registration relied on by the petitioner in a cancellation 

61 See 37 CFR §§ 2.197(a) and 2.198(a). 

62 Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1392 n.5 (Fed. Cir. 1990) 

(emphasis in original). See also Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 

1139 (TTAB 1990), and Strang Corp. v. Stouffer Corp., supra at 1311 (concept of incontestability of a registration is 

irrelevant to a cancellation proceeding under Section 14). 

63 See e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Company, 359 F.2d 450, 149 USPQ 518, 522

(CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980); Humble Oil &

Refining Co. v. Sekisui Chemical Company Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not

limited where, although petition to cancel was not properly filed until after fifth anniversary date of registration,

opposition wherein opposer relied on said registration was filed before anniversary date); and Sunbeam Corp. v. 

Duro Metal Products Co., 106 USPQ 385, 386 (Comm'r 1955). See also J. Thomas McCarthy, McCarthy on 

Trademarks and Unfair Competition, § 20:67 (4th ed. 2001). 

 Cf., regarding concurrent use proceedings, Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048,

1050 (TTAB 1982) (5-year period tolled where applicant, prior to expiration of 5-year period files a proper 

concurrent application or an amendment converting an unrestricted application to one seeking concurrent use 

naming registrant as exception to applicant's right to exclusive use). 

300 - 128 
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PLEADINGS 

 

proceeding, if the five-year period had not yet expired with respect to the 

registration at the time of the filing of the petition to cancel. 

307.02(c)(2) Amendment of Registration 

When a Principal Register registration has been amended, the registration is 

subject to attack under Section 14 of the Act, 15 U.S.C. § 1064, to the extent that 

the amendment of the registration has in any way enlarged registrant's rights, as 

though the registration had issued on the date of the amendment. That is, even 

though the Section 14 five-year period following issuance of the registration, or 

publication under Section 12(c), 15 U.S.C. § 1062(c), may have expired, if a 

petition to cancel the registration is filed within the five years following the 

amendment of the registration, the petition is not limited to Section 14(3) or 14(5) 

(15 U.S.C. § 1064(3) or 1064(5)) grounds, to the extent that the amendment has in 

any way enlarged the registrant's rights. Rather, during the five years after the 

amendment, "the modified registration, not having been in existence for five 

years, may be challenged in a cancellation proceeding as long as petitioner states 

grounds [not limited to Section 14(3) or 14(5) grounds] for the cancellation 

indicating how he believes he is or will be damaged by the modified 

registration."64 

307.03 Premature Petition to Cancel 

Sections 14 and 24 of the Act, 15 U.S.C. §§ 1064 and 1092, provide for the filing of a petition to 

cancel "a registration of a mark." Until a registration actually issues, there is no registration. 

Thus, if a petition to cancel a registration is filed prior to the issuance of the registration, it is 

premature, and will be rejected by the Board, even if the registration has issued by the time of the 

Board's action. The petition to cancel will not be instituted, and any submitted petition fee will 

be refunded. Petitioner's remedy lies in the filing of a new petition to cancel after the registration 

has issued. 

64 Stanspec Co. v. American Chain & Cable Company, Inc., 531 F.2d 563, 189 USPQ 420, 423 (CCPA 1976). See

Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, 824-25 (TTAB 1984) (counterclaim

would be proper where defendant pleads that the amendment to the mark in the subject registration resulted in a 

mark materially different from originally registered mark, representing enlargement of rights conferred by original

certificate of registration; that defendant used its mark prior to opposer's first use of amended mark; and that 

confusion with amended mark is likely). 

300 - 129 
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PLEADINGS 

 

307.04 Late Petition to Cancel 

A petition to cancel a registration issued on the Principal Register under the Act of 1946 on a 

ground not specified in Section 14(3) or 14(5) of the Act, 15 U.S.C. § 1064(3) or 1064(5), must 

be filed (with the required fee) within five years from the date of the registration of the mark. 

Similarly, a petition to cancel a registration issued on the Principal Register under the Act of 

1881 or the Act of 1905, and published under the provisions of Section 12(c) of the Act of 1946, 

15 U.S.C. § 1062(c), on a ground not specified in Section 14(3) or 14(5) of the Act, must be filed 

within five years from the date of publication under Section 12(c).65 

If a petition to cancel one of these Principal Register registrations is filed after the expiration of 

the five-year period and does not plead one or more of the grounds specified in Section 14(3) or 

14(5) of the Act, the petition is late, and will be rejected by the Board. The petition to cancel 

will not be instituted, and any submitted petition fee will be refunded. However, the rejection of 

the petition is without prejudice to petitioner's right to file, at any time thereafter, a new petition 

to cancel the registration, and to plead therein one or more of the grounds specified in Section 

14(3) or 14(5). 

For information concerning the effect of signature and fee requirements on the timing of a 

petition to cancel, see TBMP §§ 308.02(b) (Insufficient Fee) and 309.02(b) (Signature of 

Complaint). 

308 Filing Fees 

308.01 Fee for Filing Opposition 

308.01(a) In General

15 U.S.C. § 1063(a) [Section 13(a) of the Trademark Act] Any person who believes that 

he would be damaged by the registration of a mark upon the principal register, including 

as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file 

an opposition in the Patent and Trademark Office.... 

37 CFR § 2.101 Filing an opposition. 

(a) An opposition proceeding is commenced by filing a timely opposition, together with 

the required fee, in the Office.

 * * * * 

65 See Section 14 of the Act, 15 U.S.C. § 1064, and 37 CFR § 2.111(b). 

300 - 130 
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PLEADINGS 

 

(d)(1) The opposition must be accompanied by the required fee for each party joined as 

opposer for each class in the application for which registration is opposed (see § 2.6). 

 (2) An otherwise timely opposition will not be accepted via ESTTA unless the 

opposition is accompanied by a fee that is sufficient to pay in full for each named party 

opposer to oppose the registration of a mark in each class specified in the opposition. 

 (3) If an otherwise timely opposition is submitted on paper, the following is applicable 

if less than all required fees are submitted: 

(i) If the opposition is accompanied by no fee or a fee insufficient to pay for one 

person to oppose the registration of a mark in at least one class, the opposition 

will be refused. 

(ii) If the opposition is accompanied by fees sufficient to pay for one person to 

oppose registration in at least one class, but fees are insufficient to oppose a 

registration in all the classes in the application, and the particular class or 

classes against which the opposition is filed is not specified, the opposition will be 

presumed to be against the class or classes in ascending numerical order, 

including only the number of classes in the application for which sufficient fees 

have been submitted. 

(iii) If persons are joined as party opposers, each must submit a fee for each class 

for which opposition is sought. If the fees submitted are sufficient to pay for one 

person to oppose registration in at least one class, but are insufficient for each 

named party opposer, the first-named party will be presumed to be the party 

opposer. Additional parties will be deemed to be party opposers only to the 

extent that the fees submitted are sufficient to pay the fee due for each party 

opposer. If persons are joined as party opposers against a multiple class 

application, the fees submitted are insufficient, and no specification of opposers 

and classes is made at the time the party is joined, the fees submitted will be 

applied first on behalf of the first-named opposer against as many of the classes 

in the application as the submitted fees are sufficient to pay. Any excess will be 

applied on behalf of the second-named party to the opposition against the classes 

in the application in ascending numerical order. 

The rules governing opposition fees are specified in 37 CFR §§ 2.101(d)(1)-(d)(4). The 

amount of the required filing fee is specified in 37 CFR § 2.6(a)(17). The required fee 

must be submitted with the opposition; the filing date of an opposition (and, hence, the 

date of commencement of the opposition proceeding) is the date of receipt in the Office 

of both the opposition and the required fee.66

66 See 37 CFR § 2.101(a). 

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The required fee must be submitted for each party joined as opposer for each class 

opposed, and if fewer than the total number of classes in the application are opposed, the 

classes opposed should be specified.67

For information on how to pay fees, see 37 CFR §§ 2.206-2.208, and TBMP § 118. For 

information on fee refunds, see 37 CFR § 2.209, and TBMP § 119. 

308.01(b) Insufficient Fee 

A notice of opposition against an application based on Section 66(a) of the Trademark 

Act must be filed electronically through ESTTA.68 An application based on Section 1 or 

44 of the Act must be filed either through ESTTA or on paper.69

An otherwise timely opposition will not be accepted via ESTTA unless the opposition is 

accompanied by a fee that is sufficient to pay, in full, for each named party opposer to 

oppose the registration of a mark in each class specified in the opposition.

70 

If an otherwise timely opposition is submitted on paper, and if the opposition is 

not accompanied by any fee or a sufficient fee to pay for one person to oppose the 

registration of a mark in at least one class, the opposition will be rejected. If the 

opposition is accompanied by fees sufficient to pay for one person to oppose 

registration in at least one class, but less than sufficient to pay for all the opposed 

classes in the application and/or all party opposers, the opposition will be 

instituted and the fee(s) submitted will be applied in the manner set forth in 37 

CFR § 2.101(d)(3)(i)-(iii). The institution notice will identify the parties and 

classes for which the required fees were submitted.71

The responsibility for filing proper fees rests with the party filing them. 

67 See 37 CFR § 2.101(d). 

68 See 37 CFR § 2.101(b)(2) and TBMP § 309 (Form and Content of Oppositions and Petitions to Cancel). 

69 See 37 CFR § 2.101(b)(1) and TBMP § 309 (Form and Content of Oppositions and Petitions to Cancel). 

70 See 37 CFR § 2.101(d)(2).

71 See TBMP § 310 (Notification to Parties of Proceeding). 

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308.02 Fee for Filing Petition to Cancel 

308.02(a) In General

15 U.S.C. § 1064 [Section 14 of the Trademark Act] A petition to cancel a registration 

of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be 

filed as follows by any person who believes that he is or will be damaged, including as a 

result of dilution under section 43(c), by the registration of a mark on the principal 

register established by this Act, or under the Act of March 3, 1881, or the Act of 

February 20, 1905.... 

15 U.S.C. § 1092 [Section 24 of the Trademark Act] Marks for the supplemental register 

shall not be published for or be subject to opposition, but shall be published on 

registration in the Official Gazette of the Patent and Trademark Office. Whenever any 

person believes that he is or will be damaged by the registration of a mark on this 

register, including as a result of dilution under section 43(c), he may at any time, upon 

payment of the prescribed fee and the filing of a petition stating the ground therefor, 

apply to the Director to cancel such registration. ... 

37 CFR § 2.111(c) 

(1) The petition for cancellation must be accompanied by the required fee for each party 

joined as petitioner for each class in the registration for which cancellation is sought (see 

§2.6).

(2) An otherwise timely petition for cancellation will not be accepted via ESTTA unless 

the petition for cancellation is accompanied by a fee that is sufficient to pay in full for 

each named party petitioner to petition for cancellation of the registration of a mark in 

each class specified in the petition for cancellation. 

(3) If an otherwise timely petition for cancellation is submitted on paper, the following is 

applicable if less than all required fees are submitted: 

(i) If the petition for cancellation is accompanied by no fee or a fee insufficient to 

pay for one person to petition for cancellation against at least one class in the 

registration, the petition for cancellation will be refused. 

(ii) If the petition for cancellation is accompanied by fees sufficient to pay for one 

person to petition for cancellation against at least one class in the registration, 

but fees are insufficient for a petition for cancellation against all the classes in the 

registration, and the particular class or classes against which the petition for 

cancellation is filed is not specified, the petition for cancellation will be presumed 

to be against the class or classes in ascending numerical order, including only the 

number of classes in the registration for which sufficient fees have been 

submitted. 

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(iii) If persons are joined as party petitioners, each must submit a fee for each 

class for which cancellation is sought. If the fees submitted are sufficient to pay 

for one person to petition for cancellation of the registration in at least one class 

but are insufficient for each named party petitioner, the first-named party will be 

presumed to be the party petitioner. Additional parties will be deemed to be party 

petitioners only to the extent that the fees submitted are sufficient to pay the fee 

due for each party petitioner. If persons are joined as party petitioners against a 

multiple class registration, the fees submitted are insufficient, and no 

specification of parties and classes is made at the time the party is joined, the fees 

submitted will be applied first on behalf of the first-named petitioner against as 

many of the classes in the registration as the submitted fees are sufficient to pay. 

Any excess will be applied on behalf of the second-named party to the 

cancellation against the classes in the registration in ascending numerical order. 

(4) The filing date of a petition for cancellation is the date of receipt in the Office of the 

petition for cancellation together with the required fee. 

The rules governing cancellation fees are specified in 37 CFR §§ 2.111(c)(1)-(c)(4). The 

amount of the required fee is specified in 37 CFR § 2.6(a)(16). The required fee for a 

petition to cancel must be submitted with the petition; the effective filing date of a 

petition to cancel (and, hence, the date of commencement of the cancellation proceeding) 

is the date of receipt in the Office of both the petition to cancel and the required fee.72 

The required fee must be submitted for each party joined as petitioner for each class 

sought to be cancelled, and if cancellation is sought for fewer than the total number of 

classes in the registration, the classes sought to be cancelled should be specified.73

 

For information on how to pay fees, see 37 CFR §§ 2.206-2.208, and TBMP § 118. For 

Information on fee refunds, see 37 CFR § 2.209, and TBMP § 119.

308.02(b) Insufficient Fee 

A petition for cancellation must be filed either through ESTTA or on paper.74

72 See 37 CFR §§ 2.111(a), 2.111(c)(1), and 2.111(c)(4); Williamson-Dickie Manufacturing Co. v. Mann Overall 

Company, 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966); and TBMP § 308.02(b) (Insufficient Fee). 

73 See 37 CFR § 2.111(c). 

74 See TBMP § 309 (Form and Content of Oppositions and Petitions to Cancel). Board practice does not permit the 

filing of a petition for cancellation on CD-ROM. 

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An otherwise timely petition for cancellation will not be accepted via ESTTA unless the 

petition to cancel is accompanied by a fee that is sufficient to pay in full for each named 

party petitioner to petition for cancellation of the registration of a mark in each class 

specified in the petition for cancellation. 

If an otherwise timely petition for cancellation is submitted on paper, and if the petition is 

not accompanied by any fee, or a sufficient fee to pay for one person to petition to cancel 

the registration in at least one class, the petition will be rejected. If the petition to cancel 

is accompanied by fees sufficient to pay for one person to petition to cancel the 

registration in at least one class, but less than the required amount because multiple party 

petitioners and/or multiple classes in the registration are involved, the cancellation 

proceeding will be instituted, and the fee(s) submitted will be applied in the manner set 

forth in 37 CFR § 2.111(c)(3)(ii)-(iii). The institution notice will identify the parties and 

classes for which the required fees were submitted.75 

Except to the extent that the five-year period of Section 14 is applicable in a particular 

case, there is no time limit for the filing of a petition to cancel an issued registration. 

Thus, if the petition is rejected for failure to submit a fee, or a fee that is sufficient to pay 

for one person to petition to cancel the registration in at least one class, the rejection of

the petition is without prejudice to petitioner's right to file, at any time thereafter, a new 

petition to cancel provided that the five-year period, if applicable, has not expired, or, if 

expired, that the petition recites a ground permitted after the expiration of the five-year 

period.76 

The responsibility for filing proper fees rests with the party filing them.

77 

308.02(c) Petition Filed by Federal Trade Commission 

There is no fee for a petition filed by the Federal Trade Commission to cancel a 

registration on the Principal Register.78 

75 See TBMP § 310 (Notification to Parties of Proceeding). 

76 Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding defective 

renewal application in sufficient time to permit refiling), and In re Application Papers Filed November 12, 1965, 

152 USPQ 194, 195 (Comm'r 1966) (regarding insufficient filing fee for patent application). 

77 Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding defective 

renewal application in sufficient time to permit refiling), and In re Application Papers Filed November 12, 1965, 

152 USPQ 194, 195 (Comm'r 1966) (regarding insufficient filing fee for patent application). 

78 See Section 14 of the Act, 15 U.S.C. § 1064. Cf. TBMP § 303.04 (Federal Trade Commission). 

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308.02(d) Fee for Counterclaim 

For information concerning fees for counterclaims, see TBMP § 313.02. 

308.03 Fees for Joint Opposers or Petitioners 

Two or more parties may file an opposition, or a petition for cancellation, jointly. However, the 

required fee must be submitted for each party joined as opposer, or petitioner, for each class in 

the application for which registration is opposed, or for each class in the registration for which 

cancellation is sought.79 

308.04 Fees for Proceeding Against Multiple Class Application or Registration 

The required opposition or cancellation fee must be submitted for each party joined as plaintiff 

for each class sought to be opposed or cancelled.80 

 

308.05 Fees for Consolidated and Combined Complaints 

When appropriate, a party may oppose, in a single (i.e., "consolidated") notice of opposition, 

different applications owned by the same defendant. However, the required fee must be 

submitted for each party joined as opposer, for each class in which registration is opposed, in 

each application against which the opposition is filed.81 

Similarly, when appropriate, a party may seek to cancel, in a single ("consolidated") petition for 

cancellation, different registrations owned by the same defendant. Again, the required fee must 

be submitted for each party joined as petitioner, for each class sought to be cancelled, in each 

registration against which the petition for cancellation is filed.82 

In addition, a party may file, when appropriate, a single pleading combining a notice of 

opposition to one or more applications, and a petition to cancel one or more registrations, 

79 See 37 CFR §§ 2.101(d)(1) and 2.111(c)(1); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 

1994); and TBMP §§ 308.01 and 308.02 (Filing Fees). See also TBMP § 303 (Who May Oppose or Petition to 

Cancel). 

80 See 37 CFR §§ 2.101(d) and 2.111(c), and TBMP §§ 308.01 (Filing Fee for Opposition) and 308.02 (Filing Fee 

for Cancellation). See also TBMP § 304 (Multiple Classes). 

81 See 37 CFR § 2.104(b). See TBMP §§ 305 (Consolidated Complaints) and 308.01 (Filing Fee for Opposition). 

 

82 See 37 CFR § 2.112(b). See also TBMP §§ 305 and 308.02 (Filing Fee for Cancellation). 

 

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provided that each subject application and registration is owned by the same defendant.83 

However, the required fee must be submitted for each party joined as plaintiff, for each class 

sought to be opposed or cancelled, in each application or registration against which the 

complaint is filed.84 

309 Form and Content of Oppositions and Petitions to Cancel 

309.01 In General 

37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the 

registration of a mark on the Principal Register may file an opposition addressed to the 

Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by 

the opposer or the opposer's attorney, as specified in § 10.1(c) of this chapter, or other 

authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures 

pursuant to § 2.193(c)(1)(iii) are required for oppositions submitted electronically under 

paragraphs (b)(1) or (2) of this section. 

(1) An opposition to an application based on section 1 or 44 of the Act must be filed 

either on paper or through ESTTA. 

(2) An opposition to an application based on section 66(a) of the Act must be filed 

through ESTTA. 

37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a 

registration may file a petition, addressed to the Trademark Trial and Appeal Board, for 

cancellation of the registration in whole or in part. The petition need not be verified, but must be 

signed by the petitioner or the petitioner's attorney, as specified in § 10.1(c) of this chapter, or 

other authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures 

pursuant to §2.193(c)(1)(iii) are required for petitions submitted electronically via ESTTA. ... 

37 CFR § 2.116(c) The opposition or the petition for cancellation and the answer correspond to 

the complaint and answer in a court proceeding.

37 CFR § 2.119(e) Every paper filed in an inter partes proceeding, and every request for an 

extension of time to file an opposition, must be signed by the party filing it, or by the party's 

attorney or other authorized representative, but an unsigned paper will not be refused 

consideration if a signed copy is submitted to the Patent and Trademark Office within the time 

limit set in the notification of this defect by the Office. 

83 See, e.g., Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 n.2 (TTAB 1993) (combined opposition

and cancellation). 

84 Cf. 37 CFR §§ 2.104(b) and 2.112(b). See TBMP § 305 (Consolidated and Combined Complaints). 

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37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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) 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) 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) 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) A paper submission must not be stapled or bound; 

(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a paper or 

CD-ROM submission. 

 * * * * 

(c) 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. 

 * * * * 

Submissions may be made to the Board on paper, CD-ROM, or electronically over the Internet, 

as permitted by the rules or Board practice. As required by 37 CFR § 2.101(b), an opposition to 

an application based on Section 66(a) of the Act, 15 U.S.C. § 1141f, must be filed electronically 

through ESTTA, and an opposition to an application based on Section 1 or 44 of the Trademark 

Act, 15 U.S.C. §§ 1051 or 1126, must be filed either on paper or through ESTTA.85 Moreover, 

Board practice does not permit the filing of a petition for cancellation on CD-ROM.86 A petition 

for cancellation must be filed either on paper or through ESTTA. 

85 See 37 CFR § 2.101(b)(1) and (2).

86 See, e.g., 37 CFR § 2.126(b) ("Submissions may be made to the...Board on CD-ROM where the rules in this part 

or Board practice permit."). 

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The notice of opposition, or petition to cancel, corresponds to the complaint in a court 

proceeding.87 For purposes of simplicity, the term "complaint" is often used hereafter to refer to 

a notice of opposition or a petition to cancel. 

309.02 Form of Complaint 

The form of a complaint must meet the general requirements for submissions to the Board as set 

forth in 37 CFR 2.126.88 If a complaint is filed electronically through ESTTA, the text in the 

electronic submission must be in at least 11-point type and double-spaced, and any exhibits 

pertaining to the electronic submission must be made electronically as an attachment to the 

complaint.89 

While an opposition against a 66(a) application must be filed through ESTTA, a petition for 

cancellation, or an opposition against a Section 1 or 44 application, may be filed either through 

ESTTA or on paper.90 If the complaint is filed on paper, the submission, including any exhibits, 

may not be stapled or bound or have any extruding tabs or other such devices, and must 

otherwise comply with the requirements of 37 CFR § 2.126(a). 

309.02(a) Format for Complaint 

Using ESTTA, a person can complete and submit a notice of opposition or petition for 

cancellation over the Internet, making an official filing online or print out the completed 

form for mailing to the Board. ESTTA gives step-by-step instructions for properly 

completing a form. A complaint filed on paper need not follow a particular format, as 

long as it meets the requirements of 37 CFR § 2.126(a) for paper submissions and 

includes the necessary information. The complaint should include the following 

information: 

Heading: The complaint should bear at its top the heading "IN THE UNITED STATES 

PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND 

APPEAL BOARD." 

Identification of subject application or registration: The heading should be followed 

by information identifying the application or registration that is the subject of the 

87 37 CFR § 2.116(c). 

88 See TBMP § 106.03 (Form of Submissions). 

89 See 37 CFR § 2.126(c). 

90 See 37 CFR § 2.101(b). 

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Signature: The complaint must be signed and include a description of the capacity in 

which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an 

 

complaint with the wording "Serial No.______" for an opposition or "Registration 

No.______" for a petition to cancel. 

Name of proceeding: The application or registration number should be followed by the 

name of the proceeding (i.e., "ABC Corporation v. XYZ Company"), the wording 

"Opposition No. ______" or "Cancellation No. ______" (the Board will insert, in the 

blank space, the number assigned to the proceeding). 

Title of Paper: The title should describe the nature of the paper (i.e., "Notice of 

Opposition" or "Petition to Cancel"). 

Plaintiff information: The complaint should also include plaintiff's name, entity type 

(i.e., individual, partnership, corporation, association, etc.), and business address; the 

names of the partners, if the plaintiff is a partnership, or the state or country of 

incorporation, if the plaintiff is a corporation. 

Registrant information in petition to cancel: A petition to cancel should indicate, to the 

best of petitioner's knowledge, the name and address of the current owner of the 

registration.91 Petitioner may comply with this requirement simply by furnishing the 

Board with whatever information it has concerning the name and address of the current 

owner of the registration; a special investigation made solely for purposes of complying 

with the rule is not necessary. The purpose of the requirement is to provide the Board 

with whatever information petitioner may have concerning the name and address of the 

current owner of the registration, so that the Board can notify that party of the filing of

the petition.92 If petitioner has no information concerning the name and address of the 

current owner of the registration, petitioner may simply use the name and address of 

registrant stated on the registration certificate. 

Substance of complaint: The complaint must also include a pleading of the substance 

(i.e., standing and grounds) of the complaint.93 

91 See 37 CFR § 2.112(a). See also Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153, 1155 (N.D. Cal. 

1996) (the proper defendant in suit for cancellation of a registration is the owner of that registration. not an exclusive 

licensee). 

92 Cf. TBMP §§ 310.01 (Notification to Parties of Proceeding) and 310.02 (Defendant’s Copy of Complaint 

Returned as Undeliverable).

 

93 See TBMP § 309.03 (Substance of Complaint). 

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individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified 

by title (if plaintiff is a corporation), etc.

 

94

309.02(b) Signature of Complaint 

The complaint need not be verified, but it must be signed by the plaintiff or by the 

plaintiff's attorney, as specified in 37 CFR § 10.1(c), or other authorized representative, 

as specified in 37 CFR § 10.14(b).95 Electronic signatures pursuant to 37 CFR § 

2.193(c)(1)(iii) (Trademark correspondence and signature requirements) are required for 

complaints submitted electronically via ESTTA.96 

If an attorney signs the complaint, it need not be accompanied by a written power of 

attorney, but if a written power of attorney is filed, the plaintiff must sign it. If a plaintiff 

signing for itself is a partnership, the signature must be made by a partner. If a plaintiff 

signing for itself is a corporation or similar juristic entity, the signature must be made by 

an officer of the plaintiff who has authority to sign for the plaintiff and whose title is 

given. The signature should be accompanied by a description of the capacity in which 

the signing individual signs (i.e., as plaintiff, if plaintiff is an individual; as counsel for 

plaintiff; as a partner of plaintiff, if plaintiff is a partnership; as an officer of plaintiff 

identified by title, if plaintiff is a corporation; etc.). 

Although a complaint must be signed, an unsigned complaint will not be refused 

consideration if a signed copy is submitted to the Board within the time limit set in the 

notification of this defect by the Board.97 However, Section 14 of the Act, 15 U.S.C. § 

1064, limits, after a specified five-year period, the grounds on which certain Principal 

Register registrations may be cancelled.98 If an unsigned petition to cancel such a 

registration is filed prior to the expiration of the five-year period, but a signed copy 

thereof is not filed until after the expiration of the period, the petition can be entertained 

by the Board only to the extent that it pleads a ground for cancellation permitted after the 

expiration of the five-year period.99 Although the Board makes every effort to notify 

94 See TBMP § 309.02(b) (Signature of Complaint).

95 See 37 CFR §§ 2.101(b) and 2.111(b), and TBMP § 106.02 (Signature of Submissions). 

96 See 37 CFR §§ 2.101(b) and 2.111(b). 

97 See 37 CFR § 2.119(e) and TBMP § 106.02 (Signature of Submissions). 

 

98 See Section 14 of the Act, 15 U.S.C. § 1064; 37 CFR § 2.111(b); and TBMP § 307.02(a) (Petition filed within 5

years). 

 

99 Cf., e.g., cases involving former requirement for verification, Williamson-Dickie Manufacturing Co. v. Mann

Overall Company, 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (the filing date of a petition to cancel is the date 

of receipt in the USPTO of the verified petition and filing fee); Texas Instruments Inc. v. Conklin Instrument Corp., 

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petitioners of unsigned complaints before the expiration of any applicable statutory 

deadline, so that the informality may be corrected prior to the deadline, the Board has no

obligation to do so, and cannot assume the burden of discovering filing errors within any 

specified time.

100 

 

309.02(c) Service of Complaint 

The complaint need not be served by the plaintiff on the defendant. Rather, the 

complaint, and any exhibits thereto, will be forwarded to the defendant by the Board 

itself.

101 

309.03 Substance of Complaint 

15 U.S.C. § 1068 [Section 18 of the Trademark Act] In such proceedings the Director may 

refuse to register the opposed mark, may cancel the registration, in whole or in part, .... 

37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine 

concurrent use rights only in the context of a concurrent use registration proceeding.

37 CFR § 2.104(a) The opposition must set forth a short and plain statement showing why the 

opposer believes he, she or it would be damaged by the registration of the opposed mark and 

state the grounds for opposition. 

37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a 

registration may file a petition, addressed to the Trademark Trial and Appeal Board, for 

cancellation of the registration in whole or in part. ... 

37 CFR § 2.112(a) The petition for cancellation must set forth a short and plain statement 

showing why the petitioner believes he, she or it is or will be damaged by the registration, state 

161 USPQ 740, 741 (TTAB 1969) (unverified petition timely filed but ineffective; verified substitute petition

untimely); TBMP § 308.02(b) (Insufficient Fee); and Saul Lefkowitz and Janet E. Rice, Adversary Proceedings 

Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 329 (1985). Cf. also In re L.R. Sport Inc., 

25 USPQ2d 1533, 1534 (Comm'r 1992) (timely payment of filing fee for statement of use is statutory and cannot be

waived).

100 Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding rejection

of renewal application); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm'r 1992) (regarding rejection of

statement of use); and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm'r 1966)

(regarding insufficient filing fee for patent application). 

101 See 37 CFR §§ 2.105(b) and (c), 2.113(b) and (c), and 2.119(a). See also TBMP § 310 (Notification to Parties of

Proceeding). 

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the grounds for cancellation, and indicate, to the best of petitioner's knowledge, the name and 

address of the current owner of the registration. 

37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark 

Trial and Appeal Board only in the context of a concurrent use registration proceeding. 

309.03(a) In General

309.03(a)(1) Scope of Opposition and Petition to Cancel 

In an opposition, the registration sought by an applicant may be opposed in 

whole, or in part. Similarly, a petitioner may seek to cancel a registration in 

whole, or in part.102 However, geographic limitations will be considered and

determined by the Board only within the context of a concurrent use registration 

proceeding.103

The Board is an administrative tribunal that is empowered to determine only the 

right to register; it may not determine the right to use, or broader questions of 

infringement or unfair competition (-- see TBMP § 102.01). 

309.03(a)(2) Elements of Complaint – In General 

A notice of opposition must include (1) a short and plain statement of the 

reason(s) why opposer believes it would be damaged by the registration of the 

opposed mark (i.e., opposer's standing to maintain the proceeding (see TBMP §§ 

303.03 and 309.03(b)), and (2) a short and plain statement of one or more grounds 

for opposition.104 

Similarly, a petition to cancel must include (1) a short and plain statement of the 

reason(s) why petitioner believes it is or will be damaged by the registration 

sought to be cancelled (i.e., petitioner's standing to maintain the proceeding -- see

102 See Section 18 of the Trademark Act, 15 U.S.C. § 1068. See also TBMP § 309.03(d). 

103 See 37 CFR §§ 2.99(h) and 2.133(c). 

104 See 37 CFR § 2.104(a); Young v. AGB Corp., 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (standing and grounds are 

distinct inquiries; allegation of "economic damage" while relevant to standing does not constitute a ground); 

Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); and Intersat Corp. v.

International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allegation of priority 

without direct or hypothetical pleading of likelihood of confusion is insufficient pleading of Section 2(d) ground). 

Cf. Fed. R. Civ. P. 8(a). 

300 - 143 
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TBMP §§ 303.03 and 309.03(b)) and (2) a short and plain statement of the 

ground(s) for cancellation.105 

The elements of a claim should be stated simply, concisely, and directly.106 

However, the pleading should include enough detail to give the defendant fair 

notice of the basis for each claim.

107 

All averments should be made in numbered paragraphs, the contents of each of 

which should be limited as far as practicable to a statement of a single set of 

circumstances.108 Each claim founded upon a separate transaction or occurrence 

should be stated in a separate count whenever a separation would facilitate the 

clear presentation of the matters pleaded.109 A paragraph may be referred to by 

number in all succeeding paragraphs, and statements in the complaint may be 

adopted by reference in a different part of the complaint.110

105 See 37 CFR § 2.112(a); Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990);

International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. 

Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982); Kelly 

Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992); and American Vitamin Products 

Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Cf. Fed. R. Civ. P. 8(a). 

 For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 20:13 et seq. (4th ed. 2001). For a discussion of

the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP §§ 

307.01 and 307.02. See also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 20:52 et

seq. (4th ed. 2001). 

106 See Fed. R. Civ. P. 8(e)(1). 

107 See McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (petitioner's Section 2(a) 

allegations were merely conclusory and unsupported by factual averments). See also Ohio State University v. Ohio 

University, 51 USPQ2d 1289, 1292 (TTAB 1999) (since purpose of pleadings is to give fair notice of claims Board

may in its discretion decline to strike even objectionable pleadings where their inclusion will not prejudice adverse 

party but rather will provide fuller notice of basis for claim); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28

USPQ2d 1464, 1471 (TTAB 1993), recon. denied, 36 USPQ2d 1328, 1330 (TTAB 1994) (although pleading need 

not allege particular "magic words" pleading of mere descriptiveness in this case could not be logically interpreted 

as asserting that applicant is not the owner of the mark); Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 

1571 (TTAB 1988) (since function of pleadings is to give fair notice of claim, a party is allowed reasonable latitude 

in its statement of its claims); and Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right

Stuff, 81 Trademark Rep. 302 (1991).

108 See Fed. R. Civ. P. 10(b) and Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 

1974) (while paragraphs were numbered, none of the paragraphs were limited to a statement of a single set of

circumstances). 

 

109 See Fed. R. Civ. P. 10(b). 

 

110 See Fed. R. Civ. P. 10(b) and (c). 

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A plaintiff may state as many separate claims as it has, regardless of consistency; 

a plaintiff may also set forth two or more statements of a claim alternatively or 

hypothetically, either in one count or in separate counts.111 

When two or more statements are made in the alternative, the sufficiency of each 

is determined independently; the fact that one of them may be insufficient does 

not mean that the other(s) is (are) also insufficient.112 

Evidentiary matters (such as, for example, lists of publications or articles in which 

a term sought to be registered by an applicant is alleged to be used descriptively) 

should not be pleaded in a complaint. They are matters for proof, not for 

pleading.113 

In inter partes proceedings before the Board, as in civil cases before the United 

States district courts, all pleadings are so construed as to do substantial justice.114 

309.03(b) Standing

Any person who believes it is or will be damaged by registration of a mark has standing 

to file a complaint.115 At the pleading stage, all that is required is that a plaintiff allege 

facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its 

111 See Fed. R. Civ. P. 8(e)(2); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant

could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically

notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not

confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as 

hypothetical pleading of likelihood of confusion which is appropriate where petitioner's standing is based on its 

inability to secure a registration, notwithstanding that it is the senior user, because the subject registration has been 

cited as a reference by the examining attorney). See also, Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154, 

156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent 

were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for 

cancellation); and Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on

ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as basis for 

standing). 

 

112 See Fed. R. Civ. P. 8(e)(2).

113 See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959). Cf. Harsco Corp. v.

Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (if evidentiary facts are pleaded, and they aid in

giving a full understanding of the complaint as a whole, they need not be stricken). 

114 See 37 CFR § 2.116(a); Fed. R. Civ. P. 8(f); and The Scotch Whiskey Association v. United States Distilled 

Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991). 

 

115 See Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, and TBMP § 303 (Who May 

Oppose or Petition). 

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PLEADINGS 

 

belief of damage."116 To plead a "real interest," plaintiff must allege a "direct and 

personal stake" in the outcome of the proceeding.117 The allegations in support of 

plaintiff's belief of damage must have a reasonable basis "in fact."118 

Allegations in support of standing which may be sufficient for pleading purposes must 

later be affirmatively proved by the plaintiff at trial (or on summary judgment).119 

However, there is no requirement that actual damage be pleaded or proved in order to 

establish standing or to prevail in an opposition or cancellation proceeding.120

A real interest in the proceeding and a reasonable belief of damage may be found, for 

example, where plaintiff pleads (and later proves): 

A claim of likelihood of confusion that is not wholly without merit;121

Plaintiff has been refused registration of its mark because of defendant’s 

registration, or has been advised that it will be refused registration when 

defendant’s application matures into a registration, or has a reasonable belief that 

registration of its application will be refused because of defendant’s 

registration;

122

116 Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and Lipton Industries, Inc. v. 

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also Herbko International Inc. v. 

Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002) and International Order of Job’s 

Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984). See, in addition,

TBMP § 303.06 regarding pleading of standing by joint plaintiffs. 

117 Ritchie v. Simpson, supra at 1026. See also Lipton Industries, Inc. v. Ralston Purina Co., supra. 

118 Ritchie v. Simpson, supra at 1027 (citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122,

174 USPQ 458, 459-60 (CCPA 1972) and stating that the belief of damage alleged by plaintiff must be more than a 

subjective belief). 

119 See Ritchie v. Simpson, supra at 1029 citing Lipton Industries, Inc. v. Ralston Purina Co., supra. See also, e.g., 

Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (at final decision, inquiry is not 

whether pleading of standing is sufficient but whether allegations have been proven). 

120 See TBMP § 303.03 (Meaning of “Damage”), and cases cited therein. 

121 See Lipton Industries, supra; Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 

1993); Selva & Sons, Inc. v. Nina Footwear, Inc. , 705 F.2d 1316, 1326, 217 USPQ 641, 648 (Fed. Cir. 1983);

Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); The Nestle Company Inc. v. NashFinch Co., 4 USPQ2d 1085, 1087 (TTAB 1987); and Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358

(TTAB 1983) (allegation of likelihood of confusion accepted as proper allegation of petitioner's standing with 

respect to pleaded grounds of fraud and abandonment). 

122 See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000) and 

Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). 

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Plaintiff has a bona fide intent to use the same mark for related goods, and is 

about to file an intent-to-use application to register the mark, and believes 

registration of the mark will be refused in view of respondent’s registration;

123 

Defendant has relied on its ownership of its application or registration in another 

proceeding between the parties, or defendant has asserted a likelihood of 

confusion in another proceeding between the parties involving the same marks.124 

A counterclaimant's standing to cancel a pleaded registration is inherent in its position as 

defendant in the original proceeding.125 

A plaintiff need not assert proprietary rights in a term in order to have standing.126 For 

example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead 

(and later prove) its standing by alleging that it is engaged in the sale or the same or 

related products or services (or that the product or service in question is within the 

normal expansion of plaintiff's business) and that the plaintiff has an interest in using the 

term descriptively in its business.127 

 

 

123 See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). 

 

124 See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel 

registration that has been asserted, even defensively, in a civil action) and M. Aron Corporation v. Remington

Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

125 See Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura 

Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R.

Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); and Bankamerica Corp. v. Invest America, 5 USPQ2d

1076, 1078 (TTAB 1987); and General Mills, Inc. v. Natures Way Products, 202 USPQ 840, 841 (TTAB 1979) 

(counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). See also

TBMP § 313.03 (Form of Counterclaim). 

126 See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 

2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987); and Jewelers 

Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987) ("This is true

irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant's mark"), on

remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). 

127 See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., supra at 2024; Otto Roth & Co., Inc. v. Universal 

Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 

(CCPA 1979); and Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). 

 

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PLEADINGS 

 

309.03(c) Grounds 

In addition to standing, a plaintiff must also plead (and later prove) a statutory ground or 

grounds for opposition or cancellation.128 A plaintiff may raise any available statutory 

ground for opposition or cancellation that negates the defendant's right to registration.129

Grounds for petitions to cancel a Principal Register registration that is more than 5 years 

old are more limited and are specified in Sections 14(3) and (5) of the Act, 15 U.S.C. §§ 

1064(3) and 1064(5).130

A plaintiff cannot rely upon an unpleaded claim unless the plaintiff's pleading is amended 

(or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter.131 

Examples of available grounds for opposition and for cancellation are listed below. 

[NOTE: The grounds identified in examples 3 and 4, and 12 through 14 are available for 

cancellation of a Principal Register registration over five years old.] This list is 

exemplary, not exhaustive.

128 See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998). See TBMP § 303.06

regarding pleading of grounds by joint plaintiffs. 

 

129 See Young v. AGB Corp., supra at 1754; Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2

USPQ2d 2021, 2023 (Fed. Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 

189 (CCPA 1982); Estate of Biro v. Bic Corp., 18 USPQ2d 1382 , 1386 (TTAB 1991); Marmark Ltd. v. Nutrexpa 

S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); and Crocker National Bank v. Canadian Imperial Bank of Commerce, 

223 USPQ 909, 910 n.10 (TTAB 1984) (Board cannot decline to consider an issue because it is ex parte in nature). 

See also TBMP § 102.01 (Jurisdiction of Board) and cases cited therein. 

 Cf. Young v. AGB Corp., supra at 1755 (Fed. Cir. 1998) ("economic damage" is not a ground for opposition

although it is relevant to issue of opposer's standing); Saint-Gobain Abrasives Inc. v. Unova Industrial Automation 

Systems Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (whether description of the mark is adequate is an examination

issue and fails to state a proper ground for opposition); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki

Kaisha, 66 USPQ2d 1154 (TTAB 2003) (no authority for assertion of unclean hands as a ground for opposition); 

Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702 (TTAB 2002) (laches and 

acquiescence are affirmative defenses, not grounds for opposition); Phonak Holding AG v. ReSound GmbH, 56

USPQ2d 1057 (TTAB 2000) (opposer's failure to submit copy of the foreign registration, which was the basis for

issuance of opposer's pleaded registration, was an examination error and did not constitute a ground for 

counterclaim); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n.39

(TTAB 1994) (equitable defenses are not grounds for opposition); Marshall Field & Co. v. Mrs. Fields Cookies, 11

USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the specimens, per se, does not constitute grounds for 

cancellation; the proper ground for cancellation is that the term has not been used as a mark) and Century 21 Real

Estate Corp. v. Century Life of America, 11 USPQ2d 1355, 2035 (TTAB 1989) ("it is not the adequacy of the 

specimens, but the underlying question of service mark usage which would constitute a proper ground for 

opposition"). 

130 See TBMP § 307.01 (Petition That May be Filed at Any Time). 

131 See TBMP § 314 (Unpleaded Matters).

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PLEADINGS 

(1) Section 2(d) of the Act, 15 U.S.C. § 1052(d): That defendant's mark so resembles a 

mark registered in the Office, or a mark or trade name previously used in the United 

States by another and not abandoned, as to be likely, when used on or in connection with 

the goods or services of the defendant, to cause confusion, or to cause mistake, or to 

deceive.132

 

(2) The grounds specified in Section 2(e) of the Act, 15 U.S.C. § 1052(e); for example, 

that defendant's mark, when used on or in connection with the goods or services of the 

defendant, is merely descriptive or deceptively misdescriptive of them,

133 or that 

defendant's mark is primarily geographically descriptive134 or primarily geographically 

deceptively misdescriptive of them;

135 and that defendant's mark is primarily merely a 

surname.136 

(3) The grounds specified in Section 2(a) of the Act, 15 U.S.C. § 1052(a); for example, 

that defendant's mark is geographically deceptive,137 that defendant's mark disparages 

members of a particular group,138 that defendant's mark consists of or comprises 

132 See, e.g., Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473

(Fed. Cir. 1992) and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). 

133 See Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). See also, e.g., The Hoover Co. v. Royal 

Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) (deceptive misdescriptiveness) and 

Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919 (TTAB 2002) (mere 

descriptiveness). 

134 See Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2). See also, e.g., University Book Store v. 

University of Wisconsin Board of Regents, 33 USPQ 1385 (TTAB 1994). 

135 See Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3). See also In re California Innovations, Inc.,

329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d

1778 (Fed. Cir. 2001); and In re Wada, 48 USPQ2d 1689 (TTAB 1998), aff'd, 194 F.3d 1297, 52 USPQ2d 1539

(Fed. Cir. 1999). 

136 See Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). See also e.g., Michael S. Sachs Inc. v. 

Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545

(TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203

USPQ 390, 391-92 (TTAB 1979); and Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971). 

 

137 See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992)

(mark's geographic deceptiveness must be established as of the time the registration issues). Cf. K-Swiss Inc. v. 

Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own 

actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration). 

138 See, e.g., Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (women in general and African

American women in particular); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 

1999) (members of plaintiff's Order and Italian-Americans in general); and Harjo v. Pro-Football Inc., 284 F. Supp. 

2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (Native Americans). 

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PLEADINGS 

(8) That defendant is not (and was not, at the time of the filing of its application for 

 

scandalous matter,139or that defendant's mark falsely suggests a connection with 

plaintiff's name or identity.140

(4) That defendant's product design is de jure functional, and if not de jure functional, 

that the product design has not acquired distinctiveness.141

(5) That there was no bona fide use of defendant's mark in commerce prior to the filing 

of the use-based application for its registration under Section 1(a) of the Act, 15 U.S.C. § 

1051(a).142

(6) That defendant did not have a bona fide intent to use the mark in connection with the 

identified goods/services as of the filing date of the application.143 

(7) That defendant’s mark is a mere background design that does not function as a mark 

separate and apart from the words displayed thereon.144 

registration) the rightful owner of the registered mark.145 

139 See, e.g., In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) and In re 

Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).

140 See, e.g., Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) and

Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985). 

141 See Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), and, e.g., M-5 Steel Mfg, Inc. v. O'Hagin's

Inc., 61 USPQ2d 1086 (TTAB 2001). See also, e.g., Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61

USPQ2d 1422 (Fed. Cir. 2002). 

142 See, e.g., International Mobile Machines Corp. v. International Telephone and Telegraph Corp.,800 F.2d 1118,

231 USPQ 142 (Fed. Cir. 1986); Paramount Pictures Corp. v. White, 31 USPQ 1768 (TTAB 1994) ("use in

commerce" involves the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a 

right in a mark) aff'd (unpub'd) 108 F.3d 1392 (Fed. Cir. 1997); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ

542, 558 (TTAB 1983); and Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543 (TTAB 1983).

143 See, e.g., Lane Ltd. V. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994) and

Commodore Electonics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993). 

144 See, e.g., General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 825 (TTAB 1983). 

145 See, e.g., Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 

1993); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990); and Kemin Industries, Inc. v. 

Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf., e.g., Levi Strauss & Co. v. R. Josephs Sportswear 

Inc., 28 USPQ2d 1464 (TTAB 1993) (where opposer was asserting that applicant's mark is a descriptive term which

cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the 

term as a mark), recon. den., 36 USPQ2d 1328 (TTAB 1994). 

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PLEADINGS 

(9) That defendant's mark, consisting of a particular color combination applied to its 

 

goods, is ornamental and has not become distinctive as an indication of the source of

defendant's goods.146

(10) That the term for which registration is sought or for which registration has been 

obtained has not been used as a trademark or service mark.147 

(11) That defendant's mark represents multiple marks in a single application (or 

registration) ("phantom mark").148 

(12) That defendant's mark has been abandoned due to nonuse;149 or due to a course of 

conduct that has caused the mark to lose significance as an indication of source.150

(13) That defendant's mark consists of or comprises the name of a particular living 

individual without the individual's consent.151 

(14) That defendant's product design is generic.152

146 See, e.g., Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998) and 

Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff'd, 508 F.2d 824, 184 USPQ 348, 350

(CCPA 1975). 

147 See, e.g., Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., supra (allegation that 

slogan was used as mere advertising and not as a trademark) and Marshall Field & Co. v. Mrs. Fields Cookies, 11 

USPQ2d 1355 (TTAB 1989). 

148 See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See 

also In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998) aff'd 183 F.3d 1361, 51

USPQ2d 1513 (Fed. Cir. 1999). 

149 See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d,133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir.

1998); Imperial Tobacco Ltd. V. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); and Auburn

Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998). 

150 See, e.g., Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff'd 

(unpub'd), Appeal No. 97-1580 (Fed. Cir. Mar. 5, 1998). 

151 See Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c). See also Ross v. Analytical Technology, Inc., 51

USPQ2d 1269 (TTAB 1999) (plaintiff must establish that the "name," as used on the goods or services, points 

uniquely to plaintiff as a "particular living individual") and Ceccato v. Manifattura Lane Gaetano Marzotto & Figli 

S.p.A., 32 USPQ2d 1192 (TTAB 1994) (party asserting Section 2(c) ground must have cognizable or proprietary 

right in the name). 

152 See Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532 (Fed. Cir. 1999) (the

term "generic name" as used in 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration). 

300 - 151 
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PLEADINGS 

 

(15) That defendant's mark would dilute the distinctive quality of plaintiff's famous 

mark.

153 

The following is a brief discussion of the elements of a claim of likelihood of confusion, the 

most frequently encountered issue in Board inter partes proceedings. 

Pursuant to Section 2(d) of the Act, 15 U.S.C. § 1052(d), plaintiff must assert, and then prove at 

trial, that defendant’s mark, as applied to its goods or services, so resembles plaintiff's previously 

used or registered mark or its previously used trade name as to be likely to cause confusion, 

mistake, or deception. 

A. Priority 

A plaintiff must plead (and later prove) priority of use. In order to properly assert 

priority, a plaintiff must allege facts showing proprietary rights in its pleaded mark that 

are prior to defendant's rights in the challenged mark.154 Such rights may be shown by, 

for example, ownership of an application with a filing date (or a registration with an 

153 See Sections 13(a) and 14 of the Trademark Act, as amended, 15 U.S.C. §§ 1063(a) and 1064, as amended, and 

Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Moseley v. Secret Catalogue Inc., 537 US

418, 65 USPQ2d 1801 (2003) and, for example, Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62

USPQ2d 1857 (TTAB 2002), aff'd, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003). 

154 See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); 

Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 

5 USPQ2d 1622 (TTAB1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628, 1632 (Fed. Cir. 1988); Otto Roth & Co., Inc. 

v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201

USPQ 200, 201 (CCPA 1979); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435

(TTAB 1996); Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549 (TTAB 1994): Jimlar Corporation v.

The Army and Air Force Exchange Service, 24 USPQ2d 1216 (TTAB 1992); and Rolex Watch U.S.A., Inc. v. 

Madison Watch Co., Inc., 211 USPQ 352 (TTAB 1981) (proprietary right is a right residing in owner of mark and

those in privity). 

300 - 152 
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PLEADINGS 

rely;

155 prior trademark or service mark use;156 or prior use analogous to trademark or 

service mark use.157 

However, priority is not in issue in an opposition where opposer pleads (and later proves) 

that it owns a registration for its pleaded mark, or 

separate petition to cancel the pleaded registration by the applicant is ultimately 

dismissed and the registration remains uncancelled.159 

 

underlying application filing date) prior to any date of first use on which defendant can

158 provided that any counterclaim

155 See Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840 (TTAB 1995) (owner of an intent-to-use 

application may rely on its application filing date as a constructive use date for purposes of priority); and Zirco 

Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). See also Brewski Beer Co. 

v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (if the underlying application filing date of

petitioner’s pleaded registration was earlier than the filing date of respondent's underlying application, petitioner 

could take its chances and elect to make of record simply a copy of its registration as proof of first use as of the 

filing date of the underlying application); American Standard Inc. v. AQM Corporation, 208 USPQ 840, 842 (TTAB 

1980); and Gor-Ray Limited v. Garay & Co., Inc., 167 USPQ 694 (TTAB 1970) (a cancellation petitioner is entitled 

to rely on the filing date of its pleaded registration as prima facie evidence of its first use of the mark). 

156 See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) 

(interstate or intrastate commerce is sufficient) and Jimlar Corporation v. The Army and Air Force Exchange

Service, 24 USPQ 1216, 1221 (TTAB 1992). 

157 See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996) (must show that 

the activities claimed to constitute analogous use have had "substantial impact" on the purchasing public); 

Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993) (trade name use); 

National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 

1428 (Fed. Cir. 1991) (trade name use); Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519

(TTAB 1993) (priority of use against ITU application may be established with prior use analogous to trademark use)

and Corporate Document Services Inc. v. I.C.E.D. Management Inc., supra (owner of ITU application may rely on

prior use analogous to trademark use). 

158 See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); 

("Board must consider existing registrations of subsequent-user opposers because ... [Section 2(d) provides that] an 

applicant can register, unless his mark is likely to cause confusion with a mark 'registered in the Patent Office or * * 

* previously used * * *'..."); SCOA Industries, Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975), 

appeal dismissed, 189 USPQ 15 (CCPA 1976); and Penguin Books Ltd. V. Eberhard, 48 USPQ2d 1280 (TTAB 

1998). Cf., regarding cancellation proceedings, Brewski Beer Co. v. Brewski Brothers Inc., supra (in a cancellation 

proceeding the registrations of each party offset each other and petitioner must, in the first instance, establish prior 

rights); and American Standard Inc. v. AQM Corp., supra at 841 (priority must be proven in cancellation 

proceeding). 

 

159 See, e.g., Contour Chair-Lounge Co., Inc. v. The Englander Company, Inc., 324 F.2d 186, 139 USPQ 285, 286

(CCPA 1963) (as long as a registration relied on by an opposer remains uncancelled, it will be treated as valid and

entitled to all statutory presumptions; having dismissed petition to cancel pleaded registrations, and since no appeal

was taken, Board was obligated to treat opposer's registrations as valid and as though no such petition had been 

filed). Cf. Penguin Books Ltd. v. Eberhard, supra (petition or counterclaim to restrict the scope of goods in

registration under Section 18 of the Trademark Act was not a collateral attack on the validity of that registration). 

300 - 153 
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A plaintiff may be permitted to assert the proprietary rights or registration(s) of a thirdparty as a basis for a Section 2(d) ground if plaintiff can show a legitimate interest in 

preventing confusion between the pleaded mark(s) and the defendant's mark.160

B. Likelihood of Confusion

The evidentiary factors the Board considers in determining likelihood of confusion are 

set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 

1973). These factors include the similarity of the marks, the relatedness of the goods 

and/or services, the channels of trade and classes of purchasers for the goods and/or 

services, the number and nature of similar marks in use on similar goods, the nature and 

extent of any actual confusion, and the fame of the prior mark.161 The relevance and 

weight to be given the various factors may differ from case to case.162

Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead 

likelihood of confusion directly or hypothetically.163 A hypothetical pleading may 

consist of assertions that if, as the trademark examining attorney (or the defendant) 

contends, plaintiff's mark so resembles defendant's mark as to be likely, when applied to 

the goods and/or services of the plaintiff, to cause confusion, then plaintiff will be 

damaged by the registration of defendant's mark.164 Of course, in order to state a claim

upon which relief can be granted, a hypothetical pleading of likelihood of confusion must 

be coupled with a pleading of one or more grounds for opposition or cancellation, such 

as, that defendant's mark has been abandoned; that plaintiff has priority of use (here, the 

hypothetical pleading of likelihood of confusion serves both as a pleading of plaintiff's 

 Note: In cases where a plaintiff has relied on its ownership of a pleaded registration, any counterclaim or petition

to cancel that registration is normally decided before the issues in the underlying opposition. See, for example, 

Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1328 (TTAB 1992) and General Mills Inc. v. 

Health Valley Foods, 24 USPQ2d 1270, 1272 (TTAB 1992). 

160 See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., supra (interest of trade association found sufficient); 

Internet Inc. v. Corporation for National Research Initiatives, supra (petitioners failed to allege that they, or anyone 

else, possessed proprietary rights in the term); and Holmes Products Corp. v. Duracraft Corp., supra at 1552 (no 

legitimate interest in preventing confusion alleged). 

161 See In re E.I. du Pont de Nemours & Co., supra and, e.g., Time Warner Entertainment Co. v. Jones, 65 USPQ2d 

1650, 1657 (TTAB 2002). 

162 Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1473 (Fed. 

Cir. 1992). See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 

2002) and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001). 

163 See Fed. R. Civ. P. 8(e)(2).

164 See Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971).

 

300 - 154 
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PLEADINGS 

309.03(d) Remedy Under Section 18 (Partial Opposition or Partial 

 

standing and as part of the pleading of a ground under Section 2(d) of the Act, 15 U.S.C. 

§1052(d)); etc. Thus, a plaintiff wishing to plead likelihood of confusion hypothetically 

in a proceeding based upon Section 2(d) might assert, for example, that if, as the 

trademark examining attorney (or the defendant) contends, plaintiff's mark so resembles 

defendant's mark as to be likely, when applied to the goods and/or services of the 

plaintiff, to cause confusion, then the registration sought by defendant should be refused 

(or defendant's registration should be cancelled) because plaintiff has priority of use.165 

 

 Cancellation) 

15 U.S.C. § 1068 [Section 18 of the Trademark Act] 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 hereunder may be established in the proceedings.... 

37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a 

registration may file a petition, addressed to the Trademark Trial and Appeal Board, for 

cancellation of the registration in whole or in part. ... 

37 CFR § 2.133(b) If, in an inter partes proceeding, the Trademark Trial and Appeal 

Board finds that a party whose application or registration is the subject of the proceeding 

is not entitled to registration in the absence of a specified restriction to the involved 

application or registration, the Trademark Trial and Appeal Board will allow the party 

time in which to file a request that the application or registration be amended to conform 

to the findings of the Trademark Trial and Appeal Board, failing which judgment will be 

entered against the party. 

165 See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority

issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that 

pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin 

Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion 

which is appropriate where petitioner's standing is based on its inability to secure a registration, notwithstanding that 

it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See 

also, Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued

before examining attorney that its mark and that of respondent were not confusingly similar does not preclude

petitioner from asserting likelihood of confusion as ground for cancellation); and Revco, D.S., Inc. v. Armour-Dial, 

Inc., supra (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of

likelihood of confusion as its basis for standing). 

300 - 155 
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For example, a plaintiff may seek to partially cancel a registration, or partially oppose 

registration only as to specific items in the identification of goods or services, or only to 

the extent of restricting the goods or services in a particular manner in terms of type, use, 

customers, trade channels, etc.

 

 

37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine 

concurrent use rights only in the context of a concurrent use registration proceeding.

37 CFR § 2.133(c) Geographic limitations will be considered and determined by the 

Trademark Trial and Appeal Board only in the context of a concurrent use registration 

proceeding.

Under Section 18 of the Trademark Act, 15 U.S.C. § 1068, the Board has the authority to 

cancel registrations in whole or in part, to restrict the goods or services identified in an 

application or registration, or to "otherwise restrict or rectify...the registration of a 

registered mark."166 (However, geographic limitations will be considered and determined 

by the Board only within the context of a concurrent use registration proceeding).167

168

A claim in which the plaintiff seeks to delete specific items on the grounds that the 

defendant is no longer using, and has no intent to resume use of its mark on those goods 

or services, is essentially a "straightforward" pleading of abandonment.169 

A claim in which the plaintiff seeks to restrict or modify the goods or services in a 

particular manner, that is, by the addition of wording that identifies the goods or services 

166 See Section 18 of the Trademark Act, 15 U.S.C. § 1068; 37 CFR §§ 2.111(b) and 2.133(b); Wellcome 

Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998); and Eurostar Inc. v. "Euro-Star" 

Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994). Compare Seculus Da Amazonia S/A v. Toyota

Jidosha Kabushiki Kaisha, 66 USPQ2d 1154 (TTAB 2003) (opposition based on applicant's alleged misconduct and

unclean hands in its dealing with the U.S. Customs Service fails to constitute a claim that is cognizable under 

Section 18).

167 See 37 CFR §§ 2.99(h) and 2.133(c), and Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 

1816 (TTAB 1990). 

168 See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) and Eurostar, supra at 

1270. 

 

169 DAK, supra at 1437 (because applicant sought to strike from opposer's registration goods specifically listed 

therein, such as "open reel audio tape" it was proper to plead abandonment and applicant did not need to plead that a 

finding of likelihood of confusion will be avoided by the restriction it sought). See also Milliken & Co. v. Image 

Industries Inc., 39 USPQ2d 1192 (TTAB 1996) (respondent's counterclaim alleging that it may have prior use of the

mark in the trade channels sought to be excluded in petitioner's registration, was legally insufficient pleading of

either likelihood of confusion or abandonment because likelihood of confusion is not available ground for 

cancellation of registration over five years old and because a counterclaim to restrict an identification of goods, as 

opposed to a counterclaim to delete specific identified items, is not a proper claim of abandonment). 

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PLEADINGS 

In considering a restriction of a registration, the Board will look to the nature of the use 

made by registrant as of the time the restriction is sought, not as of the time registration 

was sought.

A petition to partially cancel a registration by restricting the goods or services in a 

particular manner in terms of type, use, channels of trade, etc., in order to avoid a 

likelihood of confusion can be made against registrations over 5 years old as well as 

A petition to restrict or clarify the description of a mark in a registration would fall under 

the provision giving Board authority to "restrict or rectify" the register.

 

with greater particularity in terms of type, use, channels of trade, etc., is in the nature of 

an equitable remedy under Section 18 and does not require pleading and proof of specific 

grounds for cancellation or opposition, such as abandonment.170 However, the Board will 

not permit an action to restrict or modify the goods or services in this manner where such 

a claim is divorced from the question of likelihood of confusion.171 Thus, a party seeking 

to restrict an opponent's broadly worded identification of goods or services, in a case 

involving likelihood of confusion, must plead and prove that (i) the entry of a proposed 

restriction to the goods or services in its opponent's application or registration will avoid 

a finding of likelihood of confusion and (ii) the opponent is not using its mark on those 

goods or services that will be effectively excluded from the application or registration if 

the proposed restriction is entered.172 

173

 

those less than 5 years old.174 Such claim is in the nature of an equitable remedy and does 

not constitute an attack on the validity of a registration.175

176 As in the case 

170 See Eurostar, supra at 1271 & 1271 n.3. See also DAK, supra at 1437. 

 

171 See DAK, supra at 1437 and Eurostar, supra at 1270. [Note: To the extent that cases decided prior to Eurostar

permitted a restriction petition in the absence of a pleading that the restriction sought will avoid a likelihood of

confusion, and to the extent that those cases required the pleading and proof of a separate ground of nonuse or 

abandonment, those cases were expressly overruled by Eurostar.] 

172 See Eurostar, supra at 1270. See also, for example, Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286

(TTAB 1998) (applicant's attempt to restrict opposer's registration for computer programs to "computer programs

except computer programs for maintenance management" was rejected as it did not serve to avoid likelihood of

confusion since proposed restriction failed to delineate different users or different channels of trade). 

173 See Milliken & Co. v. Image Industries Inc., supra. 

174 See Eurostar, supra at 1271 n.3. 

175 See, for example, Penguin Books Ltd. v. Eberhard, supra at 1286 (counterclaim to partially cancel pleaded 

registration to restrict scope of goods therein did not preclude opposer's reliance on pleaded registration to establish 

priority in the opposition). 

176 See Wellcome Foundation Ltd, supra at 1479. 

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PLEADINGS 

of a petition to restrict goods or services, a proper pleading to restrict the description of a 

mark could include allegations that, for example, the description of the mark in the 

registration is ambiguous or overly broad and not specific to the mark actually used by 

the defendant, and that the limitation would avoid a finding of a likelihood of 

confusion.177

That same provision, along with the authority to "register the mark...for the 

person...entitled thereto," allows the Board to correct, respectively, a registration or 

application, to identify the true owner, if such correction is warranted.

As in the case of any other claim, a claim for partial opposition or partial cancellation 

ordinarily should be asserted prior to trial in order to give the defendant fair notice 

thereof. must be specific in nature so that the defendant has fair 

notice of the specific restriction being sought. that is not pleaded in the 

complaint, as originally filed or as amended (or deemed amended) pursuant to Fed. R. 

Civ. P. 15(a) or 15(b), will not be entertained by the Board.181 

 

178

179 In addition, the claim

180 Any claim

A defense which seeks to restrict a plaintiff's pleaded registration will not be entertained 

in the absence of a timely counterclaim, or separate petition, to cancel the registration in 

whole or in part.182 

177 See Wellcome Foundation Ltd., supra at 1479-80. 

178 See 8440 LLC v. Midnight Oil Company, 59 USPQ2d 1541 (TTAB 2001) (where the record showed that 

plaintiff, rather than defendant, was the true owner of the marks in the challenged application and registration and

where the parties filed a joint motion that registration be issued in the name of plaintiff and that the register be

rectified to show plaintiff as the owner of the existing registration, Board exercised authority under Section 18 and 

granted motion). See also Chapman v. Mill Valley Cotton, 17 USPQ2d 1414 (TTAB 1990). 

179 See Penguin Books Ltd., supra (restriction proposed for first time in reply brief untimely); Eurostar, supra; and

Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 n.10 (TTAB 1990) (petitioner's request to restrict 

channels of trade for respondent's goods denied when raised at end of rebuttal period). See also TBMP §§ 309.03

(Substance of Complaint), 314 (Unpleaded Matters) and 507 (Motion to Amend Pleading). 

180 See Eurostar, supra at 1272 (party that seeks to restrict a registration or application should state with as much

precision as possible the restriction it seeks, so that the issue is properly framed for trial); Aries Systems Corp. v. 

World Book Inc., 23 USPQ2d 1742, 1749 (TTAB 1992) (counterclaim failed to specify the least restrictive language 

applicant would accept); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) (counterclaim that 

opposer's registration should be amended "to accurately describe the services" was vague); and Pegasus Petroleum 

Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 (TTAB 1985).

181 See Eurostar, supra, and Reflange Inc. v. R-Con International, supra (petitioner's request to restrict channels of 

trade for respondent's goods denied when raised at end of rebuttal period). See also TBMP §§ 309.03 (Substance of

Complaint), 314 (Unpleaded Matters) and 507 (Motion to Amend Pleading). 

182 See TBMP § 313.01 (Counterclaims). 

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PLEADINGS 

For information concerning the extent of default for failure to file an answer to a claim

for partial opposition or cancellation, see TBMP § 312.01. 

No proceeding will be instituted, and any submitted filing fee will be refunded in the following 

circumstances: 

Proceedings will be instituted and the filing fee charged in the following circumstances: 

(1) If a petition to cancel a Principal Register registration that is more than five 

years old does not allege any ground upon which such a registration can be 

cancelled (see Section 14 of the Act of 1946, 15 U.S.C. § 1064), the cancellation 

will be instituted and the Board will issue an order to show cause why the 

 

For information on a request by defendant to restrict its identification of goods or 

services under Section 18, see TBMP §§ 311.02(b); 507 (Motion to Amend Pleading) and 

514 (Motion to Amend Application or Registration).

309.04 Defects in Complaint That May Affect Institution of Proceeding 

 

(1) If an opposition filed during an extension of time to oppose is in the name of 

someone other than the person who obtained the extension, and the opposer is 

unable to show, pursuant to 37 CFR § 2.102(b), that it is in privity with the 

person who obtained the extension, or that the person in whose name the 

extension was requested was misidentified by mistake.183 

(2) If an opposition or a petition for cancellation is filed prematurely (i.e., prior 

to publication of the subject mark in the Official Gazette for purposes of 

opposition, or prior to issuance of a registration of the subject mark, 

respectively, even if the registration has issued by the time of the Board's 

action).

184 

(3) If an opposition is filed after the time for opposing has expired; or is filed 

unsigned, and a signed copy is not submitted within the time limit set in the 

notification of this defect by the Board; or is filed without the required fee; or if 

the opposed application was abandoned before the opposition was filed.185

183 See TBMP § 303.05 (Opposition filed during Extension of Time to Oppose).

184 See TBMP §§ 306.03 (Premature Opposition) and 307.03 (Premature Petition to Cancel). 

185 See TBMP §§ 218 (Abandonment of Application); 306.04 (Late Opposition); 309.02(b) (Signature of

Complaint); and 308 (Filing Fees). 

300 - 159 
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PLEADINGS 

petition should not be dismissed for failure to state a claim. Any fee submitted 

therewith will not be refunded. 

37 CFR § 2.105 Notification to parties of opposition proceeding[s].

(2) If a petition for cancellation is filed with respect to a registration which, at 

the time of the filing of the petition, was not a "live" registration (e.g., the time 

for filing an affidavit of use under Section 8 of the Act of 1946, 15 U.S.C. § 

1058, had expired, and no acceptable affidavit had been filed; the registration 

had already been cancelled as the result of a previous cancellation proceeding), 

the proceeding will be instituted, and then dismissed as moot. Any fee 

submitted with the petition for cancellation will not be refunded. 

(3) If a party files an opposition or a petition for cancellation, and immediately 

thereafter changes its mind, and requests that the opposition or petition for 

cancellation not be instituted and that the papers be returned, the request 

ordinarily will be denied, and the proceeding will be instituted, unless there is a 

defect in the opposition or petition for cancellation which precludes institution, 

in which case no proceeding will be instituted, and any submitted fee will be 

refunded. 

When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather

than vacated, so as to maintain the integrity of the proceeding numbers. The Board will retain all 

papers. 

310 Notification to Parties of Proceeding and Setting Time to Answer 

310.01 Notification to Parties of Proceeding 

(a) When an opposition in proper form has been filed and the correct fee has been submitted, the 

Trademark Trial and Appeal Board shall prepare a notification, which shall identify the title and 

number of the proceeding and the application involved and shall designate a time, not less than 

thirty days from the mailing date of the notification, within which an answer must be filed. 

(b) The Board shall forward a copy of the notification to opposer, as follows: 

(1) If the opposition is transmitted by an attorney, or a written power of attorney is filed, 

the Board will send the notification to the attorney transmitting the opposition or to the 

attorney designated in the power of attorney, provided that the person is an “attorney” 

as defined in §10.1(c) of this chapter. 

(2) If opposer is not represented by an attorney in the opposition, but opposer has 

appointed a domestic representative, the Board will send the notification to the domestic 

representative, unless opposer designates in writing another correspondence address. 

300 - 160 
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PLEADINGS 

(3) If opposer is not represented by an attorney in the opposition, and no domestic 

representative has been appointed, the Board will send the notification directly to 

opposer, unless opposer designates in writing another correspondence address. 

(c) The Board shall forward a copy of the opposition and any exhibits with a copy of the 

notification to applicant, as follows: 

(a) When a petition for cancellation has been filed in proper form (see §§ 2.111 and 2.112), the 

Trademark Trial and Appeal Board shall prepare a notification which shall identify the title and 

number of the proceeding and the registration(s) involved and shall designate a time, not less 

than thirty days from the mailing date of the notification, within which an answer must be filed. 

(b) The Board shall forward a copy of the notification to petitioner, as follows: 

(3) If petitioner is not represented by an attorney in the cancellation proceeding, and no 

domestic representative has been appointed, the Board will send the notification directly 

to petitioner, unless petitioner designates in writing another correspondence address. 

(c) The Board shall forward a copy of the petition for cancellation and any exhibits with a copy 

of the notification to the respondent (see §2.118). The respondent shall be the party shown by 

the records of the Office to be the current owner of the registration(s) sought to be cancelled, 

except that the Board, in its discretion, may join or substitute as respondent a party who makes a 

showing of a current ownership interest in such registration(s). 

(1) If the opposed application contains a clear indication that the application is being 

prosecuted by an attorney, as defined in §10.1(c) of this chapter, the Board shall send the 

documents described in this section to applicant’s attorney. 

(2) If the opposed application is not being prosecuted by an attorney but a domestic 

representative has been appointed, the Board will send the documents described in this 

section to the domestic representative, unless applicant designates in writing another 

correspondence address. 

(3) If the opposed application is not being prosecuted by an attorney, and no domestic 

representative has been appointed, the Board will send the documents described in this 

section directly to applicant, unless applicant designates in writing another 

correspondence address. 

37 CFR § 2.113 Notification to parties of cancellation proceeding.

(1) If the petition for cancellation is transmitted by an attorney, or a written power of 

attorney is filed, the Board will send the notification to the attorney transmitting the 

petition for cancellation or to the attorney designated in the power of attorney, provided 

that person is an “attorney” as defined in §10.1(c) of this chapter. 

(2) If petitioner is not represented by an attorney in the cancellation proceeding, but 

petitioner has appointed a domestic representative, the Board will send the notification to 

the domestic representative, unless petitioner designates in writing another 

correspondence address. 

300 - 161 
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PLEADINGS 

Next, the Board prepares a notification wherein it notifies the defendant of the filing of the 

complaint and both parties of the formal institution of the proceeding. The notification includes 

the identification information described in 37 CFR § 2.105(a), for an opposition, or in 37 CFR § 

2.113(a), for a cancellation; states that proceedings in the case will be conducted in accordance 

with the Trademark Rules of Practice and specifies the due date for the filing of defendant's

answer to the complaint. The notice also includes a trial order specifying the opening and 

closing dates for the discovery period and assigning each party's time for taking testimony.

 

(d) When the party alleged by the petitioner, pursuant to §2.112(a), as the current owner of the 

registration(s) is not the record owner, a courtesy copy of the petition for cancellation shall be 

forwarded with a copy of the notification to the alleged current owner. The alleged current 

owner may file a motion to be joined or substituted as respondent. 

(e) If the petition for cancellation is found to be defective as to form, the party filing the petition 

for cancellation shall be advised and allowed reasonable time for correcting the informality. 

When a timely opposition in proper form has been filed, and the required fee has been submitted, 

the Board obtains the file of the opposed application and sets up an opposition proceeding file.186 

The defendant in the opposition is the party shown by the records of the USPTO to be the current 

owner of the opposed application, except that the Board, in its discretion, may join or substitute 

as defendant a party that makes a showing of a current ownership interest in the application.187 

When a timely petition to cancel in proper form, together with the required fee, has been filed 

(see 37 CFR §§ 2.111(a) and 2.113(a)), the Board obtains the file of the registration sought to be 

cancelled and checks the assignment records of the Office to determine whether there is any 

recorded assignment of the registration, and, if so, the identity of the assignee. After the title 

search has been completed, the cancellation proceeding file is set up.188 The defendant in the 

cancellation proceeding is the party shown by the records of the Office to be the current owner of 

the registration sought to be cancelled, except that the Board, in its discretion, may join or 

substitute as defendant a party which makes a showing of a current ownership interest in the 

registration.189 

190 

186 See 37 CFR § 2.105. 

 

187 See TBMP § 512 (Motion to Join or Substitute). Cf. 37 CFR § 2.113(c). 

188 Cf. TBMP § 124 (Action by Assignee). 

189 See 37 CFR § 2.113(c), and Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 

1976). Cf. TBMP § 512 (Motion to Join or Substitute). 

190 See 37 CFR § 2.120(a). An example of a trial order can be found in the Appendix of Forms. 

300 - 162 
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PLEADINGS 

 

One copy of the notification is sent to the attorney or other authorized representative of the 

plaintiff, or, if the plaintiff is representing itself, to the plaintiff itself. If the plaintiff is not 

represented by an attorney, but the plaintiff has appointed a domestic representative, the Board 

will send the notification to the domestic representative, unless petitioner designates in writing 

another correspondence address.191 In an opposition, a second copy of the notification is sent, 

together with a copy of the notice of opposition and any exhibits thereto, to the attorney or other 

authorized representative of the applicant, or, if the applicant is representing itself, to the 

applicant itself. If the applicant is not represented by an attorney but the applicant has appointed 

a domestic representative, the Board will send the notification to the domestic representative 

unless the applicant designates in writing another correspondence address.192 In a cancellation, a 

second copy of the notification is sent, together with a copy of the petition to cancel and any 

exhibits thereto, to the respondent itself, or to the respondent's domestic representative if one is 

appointed, even if there is an attorney or other authorized representative of record in the 

application file after the mark has registered.193 

The reason why the complaint and notification are sent to the defendant's attorney or other 

authorized representative, if any, in an opposition, but are always sent to the defendant itself in a 

cancellation, is that any appearance or power of attorney (or designation of other authorized 

representative) of record in an application file at the time of the commencement of an opposition 

is considered to be effective for purposes of the proceeding, whereas any representation which 

may be of record in an application file after the mark has registered at the time of the 

commencement of a cancellation is not considered to be effective for purposes of the proceeding. 

Typically, a power of attorney in an application appoints the named attorney "to prosecute this 

application to register, to transact all business in the Patent and Trademark Office in connection 

therewith, and to receive the certificate of registration." That is, the power extends only up to the 

issuance and receipt of a registration. As a practical matter, the representation in an application 

file usually is, of necessity, current and active, whereas often the attorney or other authorized 

representative of record in a registration file has not taken any action on behalf of the client 

registrant for some years, may no longer represent registrant, may not know where registrant is 

currently located or may no longer be in practice, etc. However, if the Board is unable to locate 

the registrant for purposes of serving a copy of the complaint and notification on it, and the 

registration file reflects that an attorney or other authorized representative has appeared therein 

on registrant's behalf within the last five years or so, the Board will, if necessary, contact the 

191 37 CFR §§ 2.105(b) and 2.113(b). See also 37 CFR § 2.119(d). 

192 See 37 CFR § 2.105(c) and Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). See 

also 37 CFR § 2.119(d). 

193 See 37 CFR § 2.113(c). 

 

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attorney or other authorized representative and ask for information concerning registrant's

current address.194 

In a cancellation proceeding, if the party identified by the petitioner pursuant to 37 CFR § 

2.112(a) as the current owner of the registration sought to be cancelled is not the record owner 

thereof, the Board will send to the alleged current owner a courtesy copy of the notification, 

together with a copy of the petition to cancel and any exhibits thereto. If the alleged current 

owner believes that it is, in fact, the current owner of the registration and wishes to defend the 

registration against the petition to cancel, it may file a motion, supported by a showing of its 

current ownership interest in the registration, to be joined or substituted as respondent.195 

 

310.02 Defendant's Copy of Complaint Returned as Undeliverable 

If an applicant in an opposition is not represented by an attorney or other authorized 

representative, and the applicant's copies of the opposition and notification are returned to the 

Board as undeliverable, the Board will make all reasonable efforts to locate the applicant. It 

should be noted, however, that it is the responsibility of an applicant representing itself to keep 

the Office informed of its current address. If the applicant fails to do so, and the Board is unable 

to locate the applicant, the Board will continue to send correspondence relating to the opposition

to applicant's last-known address, and when applicant fails to file an answer to the notice of 

opposition, the opposition may be decided as in case of default. 

If, in a cancellation proceeding, the respondent's copies of the petition to cancel and notification 

are returned to the Board as undeliverable, the Board will send an inquiry to the petitioner asking 

the petitioner for information concerning respondent's current address. If the petitioner files a 

response indicating that the respondent is no longer in business, notice of the filing of the 

petition to cancel will be published in the Official Gazette, pursuant to 37 CFR § 2.118. If the 

petitioner fails to file a response to the Board’s inquiry, or files a response indicating that it is 

unable to furnish respondent's current address, the Board will make all reasonable efforts to 

locate the respondent.196 If the Board is unable to locate the respondent after reasonable 

investigation, notice of the filing of the petition to cancel will be published in the Official 

Gazette.

197 

 

194 See the Notice of Final Rulemaking published in the Federal Register on August 22, 1989 at 54 FR 34886, 

34891, and in the Official Gazette of September 12, 1989 at 1106 TMOG 26, 30. 

195 See 37 CFR § 2.113(d) and TBMP § 512 (Motion to Join or Substitute). 

196 See the Notice of Final Rulemaking published in the Federal Register on August 22, 1989 at 54 FR 34886, 

34891, and in the Official Gazette of September 12, 1989 at 1106 TMOG 26, 30. 

197 See 37 CFR § 2.118. 

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When notice of the filing of a petition to cancel is published in the Official Gazette, the published 

notice allows the respondent thirty days from the publication date thereof in which to appear in 

the cancellation proceeding. If respondent fails to appear within the time allowed, default 

judgment may be entered against respondent. 

For information concerning the procedure followed by the Board in a concurrent use proceeding 

when a communication sent by the Board to a specified excepted user is returned as 

undeliverable, see TBMP § 1106.05. 

Trademark Rules 2.105(a) and 2.113(a), 37 CFR §§ 2.105(a) and 2.113(a), provide, in 

part, that the Board's notification of the filing of an opposition or petition to cancel "shall 

designate a time, not less than thirty days from the mailing date of the notification, within 

which an answer must be filed." A defendant is under no obligation to file an answer to 

the complaint in an opposition or cancellation proceeding until it receives the Board's 

notification setting the time for filing an answer. eral practice of the Board 

to allow the defendant in an opposition or cancellation proceeding 40 days from the 

mailing date of the notification in which to file its answer. 

 

310.03 Setting Time for Filing Answer 

310.03(a) In General

37 CFR § 2.105 Notification to parties of opposition proceeding[s].

(a) When an opposition in proper form has been filed and the correct fee has been 

submitted, the Trademark Trial and Appeal Board shall prepare a notification, which

shall identify the title and number of the proceeding and the application involved and 

shall designate a time, not less than thirty days from the mailing date of the notification, 

within which an answer must be filed. 

37 CFR § 2.113 Notification to parties of cancellation proceeding.

(a) When a petition for cancellation has been filed in proper form (see §§ 2.111 and 

2.112), the Trademark Trial and Appeal Board shall prepare a notification which shall 

identify the title and number of the proceeding and the registration(s) involved and shall 

designate a time, not less than thirty days from the mailing date of the notification, within 

which an answer must be filed. 

198 It is the gen

For information on the time for filing an answer to a counterclaim, see TBMP § 313.06. 

 

198 See Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). 

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310.03(b) Trademark Rule 2.119(c) 5-Day Addition Not Applicable to 

310.03(c) Extension of Time to File Answer 

 

311.01 Form of Answer 

(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: 

 

 Deadlines Set by Board 

Trademark Rule 2.119(c), 37 CFR § 2.119(c), provides, in part, that "[w]henever a party 

is required to take some action within a prescribed period after the service of a paper on 

the party by another party and the paper is served by first-class mail, 'Express Mail' or 

overnight courier, 5 days shall be added to the prescribed period." This provision, by its 

very terms, applies only when a party has to take some action within a prescribed period 

after the service of a paper on it by another party (and service of the paper was made in 

one of three specified ways). It does not apply to an action that must be taken by a party 

within a time set in a communication from the Board. 

Thus, when a Board notification allows the defendant 40 days from the mailing date of 

the notification in which to file an answer to the complaint, the answer is due on or before 

the 40th day, not on the 45th day. Similarly, when the Board allows a counterclaim

defendant 30 days from the mailing date of the Board's notification in which to file an

answer to the counterclaim, the answer is due on or before the 30th day, not on the 35th 

day. 

The time for filing an answer may be extended or reopened by stipulation of the parties, 

approved by the Board, or on motion granted by the Board, or by order of the Board.199 

However, due dates for answers to complaints may not be extended beyond the close of 

discovery. A motion to extend the time to answer beyond the close of discovery, even if 

consented, will be denied. Thus, any extension request, which would reset the time to 

answer beyond the date presently set for the close of discovery, must also include a 

request for an extension of the discovery period. 

311 Form and Content of Answer 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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; 

199 See Fed. R. Civ. P. 6(b), and TBMP § 509 (Motion to Extend Time). 

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(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; 

The form of an answer must meet the general requirements for submissions to the Board set forth 

in 37 CFR 2.126. d electronically through ESTTA, the text in the electronic 

 

(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) A paper submission must not be stapled or bound; 

(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a paper or 

CD-ROM submission. 

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the 

rules in this part or Board practice permit. A CD-ROM submission must identify the parties and 

case number and contain a list that clearly identifies the documents and exhibits contained 

thereon. This information must appear in the data contained in the CD-ROM itself, on a label 

affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission 

must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be 

accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied 

by a transmittal letter on paper that identifies the parties, the case number and the contents of 

the CD-ROM. 

(c) 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. 

(d) 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. 

An answer to a notice of opposition or petition to cancel corresponds to an answer to a complaint 

in a court proceeding.200 

201 If an answer is file

200 See 37 CFR § 2.116(c). 

201 See TBMP § 106.03 (Form of Submissions). 

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submission must be in at least 11-point type and double-spaced and any exhibits pertaining to the 

electronic submission must be made electronically as an attachment to the complaint.

answer is submitted on paper, the submission, including any exhibits, may not be stapled or 

bound or have any extruding tabs, and must otherwise comply with the requirements of 37 CFR 

§ 2.126(a). Submissions made on CD-ROM are governed by 37 CFR § 2.126(b). 

An answer should bear at its top the heading "IN THE UNITED STATES PATENT 

AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL 

BOARD," followed by the name of the proceeding (e.g., "ABC Corporation v. XYZ 

Company"), the proceeding number (e.g., "Opposition No. 91156789" or Cancellation 

No. 92042567"), and a title describing the nature of the paper (e.g., "ANSWER," 

"ANSWER AND COUNTERCLAIM," etc.).

 

202 If the 

311.01(a) Format for Answer 

An answer need not follow a particular format, as long as the answer meets the 

requirements for the particular type of submission to the Board (Rule § 2.126(a) for 

paper, 2.126(b) for CD-ROM, and 2.126(c) for electronic filings through ESTTA), and 

otherwise includes the necessary information. The format for an answer is similar to a 

complaint and should include the following information: 

203 

Substance of answer: The answer must contain admissions and/or denials of the 

allegations in the complaint and may include any defenses to those allegations.204 

Signature: The answer must be signed and include a description of the capacity in 

which the signing individual signs, e.g., attorney for defendant, defendant (if defendant is 

an individual), partner of defendant (if defendant is a partnership), officer of defendant 

identified by title (if defendant is a corporation), etc.205

311.01(b) Signature of Answer 

An answer need not be verified, but it must be signed. Electronic signatures pursuant to 

37 CFR § 2.193(c)(1)(iii) (Trademark correspondence and signature requirements) are 

required for answers submitted electronically via ESTTA. The signature may be made by 

202 See 37 CFR § 2.126(c). 

203 See, for example, TBMP § 309.02(a) (Format for Complaint). 

204 See TBMP § 311.02 (Substance of Answer).

205 See TBMP § 311.01(b) (Signature of Answer).

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Although an answer must be signed, an unsigned answer will not be refused 

consideration if a signed copy is submitted to the Board within the time limit set in the 

notification of this defect by the Board.

 

For information on the time for filing an answer, see TBMP § 310.03.

311.02 Substance of Answer 

 

the defendant or by the defendant's attorney or other authorized representative.206 If a 

defendant signing for itself is an individual, the individual must make the signature. If a 

defendant signing for itself is a partnership, a partner must make the signature. If a 

defendant signing for itself is a corporation, association, or similar juristic entity, the 

signature must be made by an individual who is an officer of defendant and who is 

authorized to represent it. The signature should be accompanied by a description of the 

capacity in which the signing individual signs (i.e., as defendant, if defendant is an 

individual; as counsel for defendant; as a partner of defendant, if defendant is a 

partnership; as an officer of defendant identified by title, if defendant is a corporation; 

etc.). 

207 

311.01(c) Filing and Service of Answer 

One copy of the answer, and any exhibits thereto, must be filed with the Board. Another 

copy of the answer, with any exhibits thereto, must be served by the defendant upon the 

attorney for the plaintiff, or on the plaintiff if there is no attorney. The answer must bear 

proof (e.g., a certificate of service, consisting of a statement signed by the filing party, or 

by its attorney or other authorized representative, clearly stating the date and manner in 

which service was made) that such service has been made before the paper will be

considered by the Board.208 

37 CFR § 2.106(b)(1) An answer shall state in short and plain terms the applicant's defenses to 

each claim asserted and shall admit or deny the averments upon which the opposer relies. If the 

applicant is without knowledge or information sufficient to form a belief as to the truth of an 

averment, applicant shall so state and this will have the effect of a denial. Denials may take any 

of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may 

contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, 

acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or 

affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall 

206 See 37 CFR § 2.119(e), and TBMP § 106.02 (Signature of Submissions).

 

207 See 37 CFR § 2.119(e), and TBMP § 106.02 (Signature of Submissions).

 

208 See 37 CFR § 2.119(a), and TBMP § 113 (Service of Papers). 

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be followed. A reply to an affirmative defense need not be filed. When a defense attacks the 

validity of a registration pleaded in the opposition, paragraph (b)(2) of this section shall govern. 

A pleaded registration is a registration identified by number and date of issuance in an original 

notice of opposition or in any amendment thereto made under Rule 15, Federal Rules of Civil 

Procedure. 

(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the 

opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time 

when the answer is filed. If grounds for a counterclaim are known to the applicant when the 

answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. 

If grounds for a counterclaim are learned during the course of the opposition proceeding, the 

counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim 

need not be filed if it is the subject of another proceeding between the same parties or anyone in 

privity therewith. 

(ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a 

counterclaim or separate petition is filed to seek the cancellation of such registration. 

37 CFR § 2.114(b)(1) An answer shall state in short and plain terms the respondent's defenses to 

each claim asserted and shall admit or deny the averments upon which the petitioner relies. If 

the respondent is without knowledge or information sufficient to form a belief as to the truth of 

an averment, respondent shall so state and this will have the effect of a denial. Denials may take 

any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may 

contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, 

acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or 

affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall 

be followed. A reply to an affirmative defense need not be filed. When a defense attacks the 

validity of a registration pleaded in the petition, paragraph (b)(2) of this section shall govern. A 

pleaded registration is a registration identified by number and date of issuance in an original 

petition for cancellation or in any amendment thereto made under Rule 15, Federal Rules of 

Civil Procedure. 

(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the 

petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time 

when the answer is filed. If grounds for a counterclaim are known to respondent when the 

answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If 

grounds for a counterclaim are learned during the course of the cancellation proceeding, the 

counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim 

need not be filed if it is the subject of another proceeding between the same parties or anyone in 

privity therewith. 

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37 CFR § 2.133(d) A plaintiff's pleaded registration will not be restricted in the absence of a 

counterclaim to cancel the registration in whole or in part, except that a counterclaim need not 

be filed if the registration is the subject of another proceeding between the same parties or 

anyone in privity therewith. 

 

(ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be

heard unless a counterclaim or separate petition is filed to seek the cancellation of such 

registration.

 

311.02(a) Admissions and Denials 

The defendant should not argue the merits of the allegations in a complaint but rather 

should state, as to each of the allegations contained in the complaint, that the allegation is 

either admitted or denied.209 If the defendant does not have sufficient information to 

admit or deny an allegation, the defendant may so state, and this statement will have the 

effect of a denial as to that allegation. If the complaint consists of numbered paragraphs 

setting forth the basis of plaintiff’s claim of damage, the defendant's admissions or 

denials should be made in numbered paragraphs corresponding to the numbered 

paragraphs in the complaint.

A denial of an allegation should fairly meet the substance of the allegation denied, and 

may take any of the forms described in Fed. R. Civ. P. 8(b).210 An answer that fails to 

deny a portion of an allegation may be deemed admitted as to that portion.211 Thus, if a 

defendant intends in good faith to deny only a part or a qualification of an allegation, the 

defendant should admit so much of the allegation as is true and material and should deny 

only the remainder. If a defendant intends in good faith to controvert all of the 

allegations contained in a complaint, the defendant may do so by general denial, subject 

to the obligations set forth in Fed. R. Civ. P. 11 (for a discussion of Fed. R. Civ. P. 11 in 

relation to pleadings, see TBMP § 318). If a defendant does not intend in good faith to 

controvert all of the allegations contained in a complaint, the defendant may make its 

denials as specific denials of designated allegations or paragraphs, or may generally deny 

209 See 37 CFR §§ 2.106(b)(1) and 2.114(b)(1); Fed. R. Civ. P. 8(b); Hewlett-Packard Co. v. Olympus Corp., 931 

F.2d 1551, 18 USPQ2d 1710, 1713 (Fed. Cir. 1991); Turner Entertainment Co. v. Ken Nelson, 38 USPQ2d 1942 

(TTAB 1996) (applicant's answers were argumentative and nonresponsive and Board was ultimately forced to 

interpret the answer); National Football League v. Jasper Alliance Corporation, 16 USPQ2d 1212 (TTAB 1990)

(applicant's answer was more in the nature of argument than answer); and Thrifty Corp. v. Bomax Enterprises, 228

USPQ 62, 63 (TTAB 1985). 

210 See 37 CFR §§ 2.106(b)(1) and 2.114(b)(1). See also, for example, Lipton Industries, Inc. v. Ralston Purina Co., 

670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982) (regarding equivocal admissions or denials). 

211 See Fed. R. Civ. P. 8(d). 

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all the allegations except those designated allegations or paragraphs which are expressly 

admitted. 

In the absence of a general denial of some or all of the allegations in a complaint, 

admissions or denials should be made in numbered paragraphs corresponding to the 

numbered paragraphs in the complaint. 

311.02(b) Affirmative Defenses 

An answer may also include a short and plain statement of any defenses, including 

affirmative defenses that the defendant may have to the claim or claims asserted by the 

plaintiff.212 Affirmative defenses may include unclean hands, laches, estoppel, 

acquiescence, fraud, mistake, prior registration (Morehouse) defense, prior judgment, or 

any other matter constituting an avoidance or affirmative defense.213 Such defenses may 

also include a pleading that defendant is at least entitled to a registration with a particular 

restriction (described in the pleading in sufficient detail to give plaintiff fair notice of the 

basis for the defense);214 except that geographic restrictions will be considered and 

determined by the Board only in the context of a concurrent use registration 

proceeding.215 A request by defendant to restrict its identification of goods or services 

under Section 18 of the Trademark Act, 15 U.S.C. § 1068, must be made either by way of 

212 See 37 CFR §§ 2.106(b)(1) and 2.114(b)(1), and Fed. R. Civ. P. 8(b). 

213 See 37 CFR §§ 2.106(b)(1) and 2.114(b)(1). See, for example, Order of Sons of Italy in America v. Profumi

Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995) (Fed. R. Civ. P. 12(b) permits a defendant to assert in the 

answer the "defense" of failure to state a claim upon which relief can be granted). 

 See, e.g., with respect to estoppel, Freeman v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002) 

(licensee estoppel); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702 (TTAB 2002) 

(licensee estoppel); and M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) (contractual 

estoppel). 

 See, e.g., with respect to "Morehouse" defense, Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 

F.2d 881, 160 USPQ 715 (CCPA 1969) (that defendant already owns a substantially similar registered mark for

substantially similar goods and/or services such that the second registration (or second registration sought) causes no

added injury to the plaintiff). See also O-M Bread Inc. v. United States Olympic Committee, 65 F.3d 933, 36

USPQ2d 1041 (Fed. Cir. 1995) (Morehouse defense). 

 See, e.g., with respect to prior judgment, International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 

55 USPQ2d 1492 (Fed. Cir. 2000) (res judicata); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d

1854 (Fed. Cir. 2000), (res judicata, claim preclusion); Boston Chicken Inc. v. Boston Pizza International, Inc., 53 

USPQ2d 1053 (TTAB 1999) (judicial estoppel); and Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318 (TTAB 

1990) (claim preclusion, issue preclusion). 

 Cf., e.g., Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001) 

(defendant not entitled to rely on asserted ownership of "family" of marks as defense to Section 2(d) claim). 

214 See 37 CFR § 2.133(a). Cf. 37 CFR §§ 2.133(b) and 2.133(c). 

215 See Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 1816 (TTAB 1990). Cf. TBMP § 

514 (Motion to Amend Application or Registration). 

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an affirmative pleading in the answer (as originally filed, or as amended, or deemed 

amended) or by way of motion under 37 CFR § 2.133, in order to be considered by the 

Board.216 

Equitable defenses may not be available against certain grounds for opposition or

cancellation or under certain circumstances. For example, the availability of laches and 

acquiescence is severely limited in opposition and cancellation proceedings because these 

defenses, in Board proceedings, start to run from the time of knowledge of the application 

for registration (that is, from the time the mark is published for opposition), not from the 

time of knowledge of use.217 Moreover, for public policy reasons, the defenses of laches 

and acquiescence may not be available against claims such as genericness, 

descriptiveness, fraud, abandonment and functionality, and further, may not apply in a 

case of likelihood of confusion if it is determined in the case that confusion is 

inevitable.218

216 See 37 CFR § 2.133(a) and (b). See also British Seagull Ltd. v Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993, 

aff’d, 35 F.3d 1527, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994) (Board had no duty to address defendant's offer to 

amend in final brief where defendant failed to file a motion or include as affirmative defense in pleading); Personnel 

Data Systems Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1865 (TTAB 1991) (mere request by

respondent in its trial brief to have its identification of goods amended rejected where petitioner was not put on

notice before petitioner presented its case); and Flow Technology Inc. v. Picciano, 18 USPQ2d 1970, 1972 (TTAB 

1991) (applicant's argument on summary judgment that parties' channels of trade were different not persuasive 

where applicant's claim of entitlement to narrower range of goods was not put in issue by motion or amendment to

its pleading). 

 

217 See National Cable Television Association v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 

1432 (Fed. Cir. 1991); Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d

1401, 1404-05 (11th Cir. 1991); and Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999). But 

see Aquion Partners L.P. v. Envirogard Ltd., 43 USPQ2d 1371, 1373 (TTAB 1991) (laches defense in an opposition 

may be based on opposer's failure to object to an earlier expired registration of substantially the same mark for 

substantially the same goods). 

218 See Saint-Gobain Abrasives, Inc. v. Unova Industrial Automation Systems, Inc., 66 USPQ2d 1355, 1359 (TTAB 

2003) (it is within the public interest to have certain registrations removed from the register and this interest, quoting 

W. D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313, 316 (TTAB 1965), aff’d, 377 F.2d 1001, 153 

USPQ 749 (CCPA 1967), "cannot be waived by the inaction of any single person or concern no matter how long the 

delay persists."). See also, e.g., Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 

1923 (TTAB 2002) (equitable defenses of laches, acquiescence and estoppel cannot be asserted against claim of 

descriptiveness); Turner v. Hops Grill & Bar Inc., supra at 1313 (laches will not prevent cancellation where it is 

determined that confusion is inevitable); and Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 

1990) (same). 

 Compare Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58

USPQ2d 1460, 1463 (Fed. Cir. 2001) (laches is available defense against Section 2(a) claim of false suggestion of

connection because rights protected under that provision "are not designed primarily to protect the public but to

protect persons and institutions from exploitation of their persona"); Ohio State University v. Ohio University, 51 

USPQ2d 1289, 1294 (TTAB 1999) (estoppel not available against claims of mere descriptiveness or geographic 

descriptiveness); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (laches, acquiescence and 

estoppel can be asserted against Section 2(c) claim that mark comprises name of opposer without his consent in

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PLEADINGS 

Similarly, the "prior registration" or Morehouse defense, an equitable defense in the 

nature of laches or acquiescence, ot available in all cases.220 In addition, the 

Morehouse defense will not be applied where defendant's prior registration is on the 

Supplemental Register, or if the prior registration did not issue until after commencement 

of the proceeding in which it is asserted as basis for this defense, or if plaintiff has 

petitioned to cancel the prior registration.

The elements of a defense should be stated simply, concisely, and directly.

the pleading should include enough detail to give the plaintiff fair notice of the basis for 

the defense.223 When one of the special matters listed in Fed. R. Civ. P. 9 (including, 

inter alia, capacity, fraud, and judgment) is pleaded, the provisions of Fed. R. Civ. P. 9 

governing the pleading of that special matter should be followed.

 

219 is n

221

222 However, 

224 

A defendant may state as many separate defenses as it has, regardless of consistency; a 

defendant may also set forth two or more statements of a defense alternately or 

hypothetically, either in one count or in separate counts.225 For example, an applicant 

view of personal nature of claim with no overriding public interest precluding assertion of equitable defenses); and 

Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318 (TTAB 1990) (equitable defenses can be asserted against

Section 2(a) claim of "false suggestion of a connection"). 

219 TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989). 

220 See TBC Corp. v. Grand Prix Ltd., supra (abandonment, descriptiveness, fraud) and Bausch & Lomb Inc. v. 

Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986) (ornamentation, fraud). 

221 See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001). See also

TBC Corp. v. Grand Prix Ltd., supra at 1313-14 (unavailable where issue is abandonment, descriptiveness or

fraud). 

222 See Fed. R. Civ. P. 8(e)(1). 

223 Cf. McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985) (bald allegations in the 

language of the statute, did not provide fair notice of basis of petitioner's Section 2(a) claim). 

224 See 37 CFR §§ 2.106(b)(1) and 2.114(b)(1).

225 See Fed. R. Civ. P. 8(e)(2). Cf. Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987)

(applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically

notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not

confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as 

hypothetical pleading of likelihood of confusion which is appropriate where petitioner's standing is based on its 

inability to secure a registration, albeit it is the senior user, because the subject registration has been cited as a 

reference by the examining attorney). Cf. also Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154, 156-57

(TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not 

confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); 

and Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of

abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as its basis for standing).

300 - 174 
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PLEADINGS 

When two or more statements are made in the alternative, the sufficiency of each is 

determined independently; the fact that one of them may be insufficient does not mean 

that the other(s) is (are) also insufficient.

Evidentiary matters (such as, for example, lists of third-party registrations on which 

defendant intends to rely) should not be pleaded in an answer. They are matters for 

proof, not for pleading.

 

whose application for registration has been opposed under Section 2(d) of the Act, 15 

U.S.C. § 1052(d), on the ground of opposer's alleged prior use of its mark, coupled with 

an allegation of likelihood of confusion, might deny that there is any likelihood of 

confusion with respect to its mark and goods as set forth in the application. At the same

time, the applicant might plead alternatively that it actually uses its mark only on a 

specific type (identified in the pleading) of the goods covered by the broad identification 

in its application; that there is no likelihood of confusion with respect to applicant's actual 

goods; and that even if the Board ultimately finds that opposer is entitled to judgment 

with respect to applicant's goods as broadly identified, applicant would be entitled to a 

registration of its mark with a restricted identification reflecting the actual nature of its 

goods.226 

227 

228 

The Board will not entertain a defense that attacks the validity of a registration pleaded 

by a plaintiff unless the defendant timely files a counterclaim or a separate petition to 

cancel the registration.229 Moreover, a defense which seeks to restrict a plaintiff's 

pleaded registration as, for example, by limiting the goods or services therein, or by 

deleting some of the goods or services, will not be entertained in the absence of a timely 

counterclaim, or separate petition, to cancel the registration in whole or in part.230

226 Cf. 37 CFR § 2.133(b), and TBMP § 514 (Motion to Amend Application or Registration). 

227 See Fed. R. Civ. P. 8(e)(2).

228 See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959).

229 See 37 CFR §§ 2.106(b) and 2.114(b); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 USPQ

46, 46 (CCPA 1969); Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) 

(allegededly admitted periods of nonuse by opposer disregarded in absence of counterclaim to cancel registration);

Contour Chair-Lounge Co., Inc. v. The Englander Company, Inc., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) 

(improper for Board to allow applicant to collaterally attack registration in opposition where, although registration

had been directly attacked by applicant in separate petition to cancel, said petition had been dismissed); and Giant

Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). See also Clorox Co. v. State Chemical

Manufacturing Co., 197 USPQ 840 (TTAB 1977); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 

1975); and TBMP § 313 (Counterclaims). 

230 See 37 CFR § 2.133(d) and Penguin Books Ltd. V. Eberhard, 48 USPQ2d 1280, 1287 (TTAB 1998) (applicant’s 

request raised in reply brief for a restriction of opposer’s registration [beyond applicant's initial counterclaim to

300 - 175 
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PLEADINGS 

 

 

Geographic restrictions will be considered and determined by the Board only within the 

context of a concurrent use registration proceeding.231 

Although Trademark Rules 2.106(b)(2)(ii) and 2.114(b)(2)(ii), 37 CFR §§2.106(b)(2)(ii) 

and 2.114(b)(2)(ii), specifically permit a defense attacking the validity of a plaintiff's 

pleaded registration to be raised either as a counterclaim or as a separate petition to 

cancel, the better practice is to raise the defense as a counterclaim.

232 If the defense is 

raised as a separate petition to cancel, however, the petition itself and any covering letter 

filed therewith should include a reference to the original proceeding.233 

When a defense is raised by way of a counterclaim, it should not also be pleaded as an 

affirmative defense, because the pleading of it as an affirmative defense is unnecessary 

and redundant.234 

311.02(c) Unpleaded Affirmative Defenses 

Except as provided in Fed. R. Civ. P. 12(b) and 12(h)(2) (which allow a defendant to 

raise certain specified defenses by motion), an unpleaded defense cannot be relied upon 

by the defendant unless the defendant's pleading is amended (or deemed amended), 

pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter.

235

restrict] was untimely as it should have been raised by promptly moving to amend). See also TBMP §§ 309.03(d)

(regarding claims for partial cancellation under Section 18) and 313 (regarding counterclaims). 

231 See 37 CFR §§ 2.99(h) and 2.133(c). See also Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d

1815 (TTAB 1990). 

232 See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989). 

233 See Vitaline Corp. v. General Mills Inc., supra at 1174. See also TBMP § 313 (Counterclaims).

234 See Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990); Continental Gummi-Werke AG v. 

Continental Seal Corp., 222 USPQ 822, 825 (TTAB 1984) (motion to strike affirmative defense predicated on same

facts alleged in counterclaim granted as representing, in effect, a collateral attack on registration); and W. R. Grace 

& Co. v. Arizona Feeds, 195 USPQ 670, 671 (Comm'r 1977) (motion to strike affirmative defense which allegations 

formed basis for counterclaim granted since, although Board did not find that applicant was attempting to 

collaterally attack registration, the affirmative defense was repetitious and unnecessary). 

235 See Fed. R. Civ. P. 8(b), 8(c), and 12(b); and Section 19 of the Trademark Act, 15 U.S.C. § 1069. See also

Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense that opposer

lacks proprietary rights in its common law mark raised for first time in final brief was neither pleaded nor tried); 

United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 341 (TTAB 1984) (laches is an affirmative 

defense which must be specifically pleaded); Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ

748, 754 (TTAB 1978) (defense of laches, which was raised by applicant in its final brief, was not pleaded in answer 

but was tried by implied consent of opposer); United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 

304 n.5 (TTAB 1977) (the equitable defenses set forth in Section 19 of the Trademark Act are affirmative defenses

which must be affirmatively pleaded and in this case were neither pleaded nor tried); Copperweld Corp. v. Astralloy300 - 176 
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PLEADINGS 

 

 

 

For additional information concerning unpleaded matters, see TBMP § 314. 

311.02(d) Other Affirmative Pleadings - Amplifying Denials 

An answer may include affirmative assertions that, although they may not rise to the level 

of an affirmative defense, nevertheless state the reasons for, and thus amplify, the 

defendant's denial of one or more of the allegations in the complaint. These 

amplifications of denials, whether referred to as "affirmative defenses," "avoidances," 

"affirmative pleadings," or "arguments," are permitted by the Board because they serve to 

give the plaintiff fuller notice of the position which the defendant plans to take in defense 

of its right to registration.236 

311.03 Reply to Answer Should Not be Filed 

Although Trademark Rules 2.106(b) and 2.114(b) require that an answer to a counterclaim be 

filed, within the time designated by the Board, they specifically provide that a reply to an 

affirmative defense need not be filed.237 Similarly, Fed. R. Civ. P. 7(a) provides that there shall 

be a complaint and an answer and a reply to a counterclaim denominated as such; that certain 

other specified pleadings, not relevant to Board proceedings (and not including a reply to an 

answer), shall be allowed; but that "[n]o other pleading shall be allowed, except that the court 

may order a reply to an answer." 

Thus, while a plaintiff must file an answer to a counterclaim, a reply to an answer need not, and 

should not, be filed. 

 

 

 

Vulcan Corp., 196 USPQ 585, 590 (TTAB 1977) (laches, while not affirmatively pleaded, was nevertheless tried 

and briefed by both parties without objection); Hershey Foods Corp. v. Cerreta, 195 USPQ 246, 251 (TTAB 1977) 

(laches and acquiescence were neither pleaded nor tried); and Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ

154 (TTAB 1975) (laches is affirmative defense that must be pleaded in order to be considered).

 

236 See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1697 n.5 (TTAB 1987) (allegations under heading

"affirmative defenses" were in the nature of arguments in support of denial of claim rather than true affirmative 

defenses and were treated as such); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.3 (TTAB 1986) (same); 

Textron, Inc. v. Gillette Co., 180 USPQ 152, 153 (TTAB 1973) (objection to certain paragraphs of answer as 

verbose and argumentative not well taken); and McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 

17 (TTAB 1959) (allegation that registered mark is weak does not constitute a collateral attack on validity of

opposer's registrations). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1572 (TTAB 1988). 

237 See 37 CFR §§ 2.106(b)(1) and (2)(iii), and 2.114(b)(1) and (2)(iii). 

300 - 177 
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PLEADINGS 

 312 Default 

 

 

312.01 In General 

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

case of default. 

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

case of default. 

If a defendant fails to file an answer to a complaint during the time allowed therefor, the Board 

may issue a notice of default. The notice states that neither an answer nor any extension of time 

to answer has been filed; that notice of default under Fed. R. Civ. P. 55(a) is entered; and that 

defendant is allowed 20 days from the mailing date of the notice in which to show cause why 

default judgment should not be entered against it. If the defendant fails to file a response to the 

notice, or files a response that does not show good cause, default judgment may be entered 

against it.238 

If the defendant fails to file a response to the notice, or files a response which does not show 

good cause in a case where the plaintiff is seeking to partially cancel a registration or partially 

oppose an application under Section 18 of the Trademark Act, 15 U.S.C. § 1068, default 

judgment will be entered only to the extent that the restriction requested by plaintiff will be 

entered.239

The issue of whether default judgment should be entered against a defendant for failure to file a 

timely answer to the complaint may also be raised by means other than the Board's issuance of a

notice of default. For example, the plaintiff, realizing that the defendant is in default, may file a 

motion for default judgment (in which case the motion may serve as a substitute for the Board's 

issuance of a notice of default); or the defendant itself, realizing that it is in default, may file a 

motion asking that its late-filed answer be accepted.240 However the issue is raised, the standard 

238 See 37 CFR §§ 2.106(a) and 2.114(a); Fed. R. Civ. P. 55(a), 55(b) and 55(c); DeLorme Publishing Co v. 

Eartha’s Inc., 60 USPQ2d 1222, 1224 (TTAB 2000); Paolo's Associates Limited Partnership v. Paolo Bodo, 21 

USPQ2d 1899, 1902-03 (Comm'r 1990) and Identicon Corp. v. Williams, 195 USPQ 447, 449 (Comm'r 1977) Cf.

TBMP § 508 (Motion for Default Judgment). 

239 See Eurostar, Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994) (concurring

opinion at n.4). Compare Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1952 (TTAB 1997) 

(where registrant defaulted in case involving petition to partially cancel registration to delete certain items identified

therein on ground of abandonment and registration was cancelled in its entirety, Board, while noting that it may 

have been error to order cancellation of registration in its entirety, declined to set aside order, finding that default 

was properly entered and therefore not "void" under Fed. R. Civ. P. 60(b)(4)). 

240 See, e.g., DeLorme Publishing Co v. Eartha’s Inc., supra (motion for default judgment); Paolo's Associates 

Limited Partnership v. Paolo Bodo, 21 USPQ2d 1899, 1902-03 (Comm'r 1990) (plaintiff's motion for default 

300 - 178 
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PLEADINGS 

When a defendant who has not yet filed an answer to a complaint files a response to a notice of 

default, or to a motion for default judgment, the late answer normally should be submitted with 

the response. However, in some cases it may not be necessary for the defendant to submit its 

answer with the response. Examples include cases where the defendant has not received the 

copies of the complaint and notification letter sent to it by the Board, or where the parties have 

settled the case or agreed to an extension of the defendant's time to file an answer. 

312.02 Setting Aside Notice of Default 

 

for determining whether default judgment should be entered against the defendant for its failure 

to file a timely answer to the complaint is the Fed. R. Civ. P. 55(c) standard, that is, whether the 

defendant has shown good cause why default judgment should not be entered against it.241 

 

 

If a defendant who has failed to file a timely answer to the complaint responds to a notice of 

default by filing a satisfactory showing of good cause why default judgment should not be 

entered against it, the Board will set aside the notice of default.242 Similarly, if the defendant 

files such a showing in response to a motion by the plaintiff for default judgment, or in support 

of its own motion asking that its late-filed answer be accepted, default judgment will not be 

entered against it. 

Good cause why default judgment should not be entered against a defendant, for failure to file a 

timely answer to the complaint, is usually found when the defendant shows that (1) the delay in 

filing an answer was not the result of willful conduct or gross neglect on the part of the 

defendant, (2) the plaintiff will not be substantially prejudiced by the delay, and (3) the 

defendant has a meritorious defense to the action.243 The showing of a meritorious defense does 

judgment and defendant's motion to accept late answer) and Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, 

Inc., 21 USPQ2d 1556, 1557 (TTAB 1991) (motion to accept late answer filed before notice of default issued). Cf.

TBMP § 508 (Motion for Default Judgment). 

241 See, for example, Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., supra at 1557 (motion to accept late 

answer filed before notice of default issued was treated as response to notice of default). See also DeLorme 

Publishing Co v. Eartha’s Inc., supra at 1224 and Paolo's Associates Limited Partnership v. Paolo Bodo, supra. 

242 See Fed. R. Civ. P. 55(c). 

243 See DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1224 (TTAB 2000) (willful conduct shown

where although applicant may not have intended that proceedings be resolved by default, applicant admittedly

intended not to answer for six months); Paolo's Associates Limited Partnership v. Paolo Bodo, supra at 1903-04 (no 

evidence that failure was willful; costs incurred in preparing and filing motion not sufficient to support finding of 

prejudice); and Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., supra at 1557 (failure to answer due to

inadvertence on part of applicant's counsel; answer had been prepared and reviewed by applicant but counsel

inadvertently failed to file it; nine-day delay would cause minimal prejudice; by submission of answer which was 

not frivolous meritorious defense was shown). Cf., regarding a motion to set aside judgment under Fed. R. Civ. P. 

60(b), Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1615 (TTAB 1991) (the two other factors having been shown,

applicant was allowed time to show meritorious defense by submission of answer).

300 - 179 
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PLEADINGS 

The determination of whether default judgment should be entered against a party lies within the 

sound discretion of the Board. discretion, the Board must be mindful of the 

fact that it is the policy of the law to decide cases on their merits. Accordingly, the Board is very 

reluctant to enter a default judgment for failure to file a timely answer, and tends to resolve any 

doubt on the matter in favor of the defendant. Nevertheless, entry of default judgment may be 

necessary in some cases.

The factors considered in determining a motion to set aside notice of default are also considered 

in determining a motion for relief from a default judgment entered pursuant to Fed. R. Civ. P. 

55. ong the factors to be considered in determining a motion to vacate a default judgment 

 

not require an evaluation of the merits of the case. All that is required is a plausible response to 

the allegations in the complaint.244 

245 In exercising that 

246 

312.03 Setting Aside Default Judgment 

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

notice of default. 

A notice of default may be set aside on a showing of good cause.247 However, once default 

judgment has actually been entered against a defendant pursuant to Fed. R. Civ. P. 55(b), the 

judgment may be set aside only in accordance with Fed. R. Civ. P. 60(b), which governs motions 

for relief from final judgment. The stricter standard reflects public policy favoring finality of 

judgments and termination of litigation.248 

249 Am

244 See DeLorme Publishing Co v. Eartha’s Inc., supra at 1224. 

 

245 See, e.g., Identicon Corp. v. Williams, 195 USPQ 447, 449 (Comm'r 1977) (fact that in response to order to show

cause applicant filed answer but no response to show cause order does not mandate entry of default judgment; 

applicant allowed time to show cause). 

246 See DeLorme Publishing Co v. Eartha’s Inc., supra (although no specific prejudice to opposer, and while 

meritorious defense was shown, Board found applicant's conduct amounted to gross neglect and granted motion for 

default judgment where applicant filed its answer six months late, viewing the notice of opposition as "incomplete," 

instead of filing appropriate motion or taking other appropriate action). 

247 See Fed. R. Civ. P. 55(c) and TBMP § 312.02 (Setting Aside Notice of Default). 

 

248 See Waifersong Ltd. Inc. v. Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632, 1634 (6th Cir. 1992) and

Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1952 (TTAB 1997). 

249 Compare, for example, Paolo's Associates Limited Partnership v. Paolo Bodo, 21 USPQ2d 1899, 1902-03

(Comm'r 1990), and Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556, 1557 (TTAB 

1991) (both of which involved the question whether default judgment should be entered against defendant), with

Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1615 (TTAB 1991), and Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 

300 - 180 
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PLEADINGS 

for failure to answer the complaint are (1) whether the plaintiff will be prejudiced, (2) whether 

the default was willful, and (3) whether the defendant has a meritorious defense to the action.

However, the showing submitted by the defendant is likely to be viewed with less leniency when 

defendant seeks relief from default judgment than when defendant seeks to show cause why 

default judgment should not be entered against it.

 

 

250 

251 

Nevertheless, because default judgments for failure to timely answer the complaint are not 

favored by the law, a motion under Fed. R. Civ. P. 55(c) and 60(b) seeking relief from such a 

judgment is generally treated with more liberality by the Board than are other motions under Fed. 

R. Civ. P. 60(b) for relief from other types of judgments such as default judgments entered 

against plaintiffs for failure to prosecute the case.252

 

For information concerning motions under Fed. R. Civ. P. 60(b) for relief from final judgment, 

see TBMP § 544. 

USPQ2d 1154, 1156 (TTAB 1991) (both involving relief from default judgment). See also Wright, Miller & Kane, 

Federal Practice and Procedure: Civil 3d § 2692 (1998) and Waifersong Ltd. Inc. v. Classic Music Vending, supra. 

250 See Jack Lenor Larsen Inc. v. Chas. O. Larson Co., supra (motion based on alleged failure to receive

correspondence from the Board denied given presumption of receipt of correspondence, passage of 12 years and 

resulting hardship to third parties); Djeredjian v. Kashi Co., supra at 1615 (motion granted pending showing of

meritorious defense where other two elements were established) and Regatta Sport Ltd. v. Telux-Pioneer Inc., supra

(motion granted; respondent's employees had limited knowledge of English and were unaware opposition and 

cancellation were separate proceedings). 

251 See Waifersong Ltd. Inc. v. Classic Music Vending, supra, (while the factors are similar, the methodology for 

considering the factors in deciding motion under 60(b)(1) and the weight to be accorded them differs); Jack Lenor

Larsen Inc. v. Chas. O. Larson Co., supra (a significant factor is the hardship that reopening a judgment may cause 

to others and whether other actions have been taken in reliance on the judgment); and Wright, Miller & Kane, 

Federal Practice and Procedure: Civil 3d § 2692 (1998).

252 Compare, for example, Djeredjian v. Kashi Co., supra and Regatta Sport Ltd. v. Telux-Pioneer Inc., supra (both 

of which involved default judgments for failure to answer) with Syosset Laboratories, Inc. v. TI Pharmaceuticals, 

216 USPQ 330, 332 (TTAB 1982) (motion to set aside judgment against opposer for failure to prosecute denied; 

incompetent attorney); Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735, 736 (TTAB 1976) (motion to set 

aside judgment for failure to prosecute denied; inattention and carelessness not excusable); and Williams v. Five 

Platters, Inc., 181 USPQ 409, 410 (TTAB 1974), aff'd, 510 F.2d 963, 184 USPQ 744 (CCPA 1975) (motion to set 

aside default judgment for failure to respond to motion for summary judgment denied; carelessness and inattention

of counsel). See also Wright, Miller & Kane, Federal Practice and Procedure: Civil 3d § 2693 (1998). 

300 - 181 
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PLEADINGS 

(iv) The times for pleading, discovery, testimony, briefs or oral argument will be reset or

extended when necessary, upon motion by a party, to enable a party fully to present or meet a 

counterclaim or separate petition for cancellation of a registration. 

 313 Counterclaims 

313.01 In General

37 CFR § 2.106(b)(2)(i) A defense attacking the validity of any one or more of the registrations 

pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim 

exist at the time when the answer is filed. If grounds for a counterclaim are known to the 

applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as 

part of the answer. If grounds for a counterclaim are learned during the course of the 

opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor 

are learned. A counterclaim need not be filed if it is the subject of another proceeding between 

the same parties or anyone in privity therewith. 

(ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a 

counterclaim or separate petition is filed to seek the cancellation of such registration. 

(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A 

time, not less than thirty days, will be designated within which an answer to the counterclaim 

must be filed. 

37 CFR § 2.114(b)(2)(i) A defense attacking the validity of any one or more of the registrations 

pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist 

at the time when the answer is filed. If grounds for a counterclaim are known to respondent 

when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the 

answer. If grounds for a counterclaim are learned during the course of the cancellation 

proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. 

A counterclaim need not be filed if it is the subject of another proceeding between the same 

parties or anyone in privity therewith. 

(ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be

heard unless a counterclaim or separate petition is filed to seek the cancellation of such 

registration.

(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A 

time, not less than thirty days, will be designated within which an answer to the counterclaim 

must be filed. 

300 - 182 
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PLEADINGS 

 

(iv) The times for pleading, discovery, testimony, briefs, or oral argument will be reset or

extended when necessary, upon motion by a party, to enable a party fully to present or meet a 

counterclaim or separate petition for cancellation of a registration. 

The Board cannot entertain an attack upon the validity of a registration pleaded by a plaintiff 

unless the defendant timely files a counterclaim or a separate petition to cancel the 

registration.253 

Although Trademark Rules 2.106(b)(2)(ii) and 2.114(b)(2)(ii) specifically permit a defense 

attacking the validity of a plaintiff's pleaded registration to be raised either as a counterclaim or 

as a separate petition to cancel, the better practice is to raise the defense as a counterclaim.

254 If 

the defense is raised as a separate petition to cancel, however, the petition itself and any covering 

letter should include a reference to the original proceeding. Further, a defendant that fails to 

timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter 

asserting the counterclaim grounds in a separate petition to cancel.255 

The only type of counterclaim that may be entertained by the Board is a counterclaim for 

cancellation of a registration owned by an adverse party.256 

As provided in Section 18 of the Trademark Act (15 U.S.C. § 1068) a counterclaim may seek to 

cancel a registration in whole or in part. In the latter case, the counterclaimant may seek to 

cancel the registration only, for example, as to some of the listed goods or services or only to the 

extent of restricting the goods or services in a particular manner (described in sufficient detail to 

253 See 37 CFR §§ 2.106(b)(2)(ii) and 2.114(b)(2)(ii); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 

161 USPQ 46, 46 (CCPA 1969); Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104

(CCPA 1968) (since no counterclaim had been filed, Court disregarded applicant's claims that opposer had admitted

periods of nonuse); Contour Chair-Lounge Co. v. The Englander Company, Inc., 324 F.2d 186, 139 USPQ 285, 287 

(CCPA 1963) (improper for Board to allow applicant to collaterally attack registration in opposition where, although

registration had been directly attacked by applicant in separate petition to cancel, said petition to cancel had been

dismissed); and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986). See also Clorox 

Co. v. State Chemical Manufacturing Co., 197 USPQ 840 (TTAB 1977); and Sealed Air Corp. v. Scott Paper Co., 

190 USPQ 106 (TTAB 1975). 

254 See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989). 

255 See Vitaline Corp. v. General Mills Inc., supra at 1174. See also TBMP § 313.04 (Compulsory Counterclaims), 

and cases cited therein. 

256 See Pyttronic Industries Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 n.2 (TTAB 1990) 

(counterclaim to cancel "any registration which might issue in the future from pleaded application" stricken as 

improper), and International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ

1024, 1026 (TTAB 1983) (counterclaim to "refuse any application filed by petitioner" was improper). 

300 - 183 
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PLEADINGS 

313.02 Fee For Counterclaim 

37 CFR §§ 2.106(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be 

applicable to counterclaims. A time, not less than thirty days, will be designated within which an 

answer to the counterclaim must be filed. 

37 CFR §§ 2.114(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be 

applicable to counterclaims. A time, not less than thirty days, will be designated within which an 

answer to the counterclaim must be filed. 

A counterclaim for cancellation of a plaintiff's registration is the legal equivalent of a separate 

petition to cancel. The required filing fee must be paid when a petition to cancel takes the form

of a counterclaim, just as it must be paid when a petition to cancel takes the form of a separate 

proceeding. see 37 CFR § 2.6) must be paid for each party joined as 

 

give the respondent fair notice thereof).257 However, geographic limitations will be considered 

and determined by the Board only within the context of a concurrent use registration 

proceeding.258 A counterclaim to partially cancel a registration by restricting the manner of use 

of the goods or services therein in order to avoid a likelihood of confusion is in the nature of an 

equitable remedy and does not constitute an attack on the validity of a registration.259 

A counterclaim is the legal equivalent of a petition to cancel. Thus, the provisions of 37 CFR §§ 

2.111 through 2.115, governing petitions to cancel, are applicable to counterclaims.260 

When necessary to enable a party fully to present or meet a counterclaim or separate petition to 

cancel a registration, the times for pleading, discovery, testimony, briefs and/or oral argument 

will be reset or extended. A party that believes that such a resetting or extension is necessary 

should file a motion therefor with the Board.261 

262 That is, the required fee (

257 See Section 18 of the Act, 15 U.S.C. § 1068; 37 CFR §§ 2.111(b) and 2.133(b); and TBMP § 309.03(d) (Remedy 

Under Section 18), and cases cited therein. 

258 See 37 CFR §§ 2.99(h) and 2.133(c), and Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 

1816 (TTAB 1990). 

259 See, e.g., Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially 

cancel pleaded registration to restrict scope of goods therein did not preclude opposer's reliance on pleaded

registration to establish priority in the opposition). 

260 See 37 CFR §§ 2.106(b)(2)(iii) and 2.114(b)(2)(iii). 

 

261 See 37 CFR §§ 2.106(b)(2)(iv) and 2.114(b)(2)(iv). See also TBMP § 509, regarding motions to extend. 

262 See 37 CFR §§ 2.106(b)(2)(iii) and 2.114(b)(2)(iii); Williamson-Dickie Manufacturing Co. v. Mann Overall 

Company, 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966) (payment of fee is necessary to give Board jurisdiction); 

300 - 184 
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PLEADINGS 

counterclaimant for each class sought to be cancelled in each registration against which the 

counterclaim is filed.263 

Moreover, a plaintiff filing a separate petition to cancel need not serve a copy thereof on the 

defendant(s). ant, on the other hand, must serve a copy thereof (with any 

exhibits thereto) on every other party to the proceeding, and must make proof of such service 

before the Board will consider the counterclaim 

The pleading of the substance of a counterclaim may also differ somewhat from the pleading of 

the substance of a separate petition to cancel. For example, a counterclaimant need not plead its 

standing to assert a counterclaim to cancel a registration pleaded by the plaintiff in its complaint. 

The counterclaimant's standing in such a case is inherent in its position as defendant to the 

complaint.266

 

If no fee is submitted with the counterclaim, or the fee is insufficient to pay for one person to 

counterclaim to cancel the registration in at least one class, the counterclaim will be rejected. If 

the counterclaim is accompanied by fees sufficient to pay for one person to counterclaim to 

cancel the registration in at least one class, but less than the required amount because multiple 

party counterclaimants and/or multiple classes in the registration are involved, the fee(s) 

submitted will be applied in the manner set forth in 37 CFR § 2.111(c)(3)(ii)-(iii). The Board, in 

its notice acknowledging the counterclaim, will identify the parties and classes for which the 

required fees were submitted. 

313.03 Form and Substance of Counterclaim; Service of Counterclaim 

A counterclaim should be generally similar in form to a petition to cancel (for information 

concerning the form of a petition to cancel, see TBMP § 309.02). However, a counterclaim filed 

as part of the counterclaimant's answer to the adverse party's complaint necessarily differs 

somewhat in format from a separate petition to cancel. 

264 A counterclaim

.

265

Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1748 (TTAB 1992), summ. judgment granted in part, 26

USPQ2d 1926 (TTAB 1993) (same); and Sunway Fruit Products, Inc. v. Productos Caseros, S. A., 130 USPQ 33, 

33 (Comm'r 1960) (requirement for fee is statutory and cannot be waived). 

263 See 37 CFR §§ 2.111(c) and 2.112(b). Cf. TBMP § 308.02 (Fee for Filing Petition to Cancel). 

264 See 37 CFR §§ 2.112(a) and 2.119(a). 

265 See 37 CFR § 2.119(a). 

266 See Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura 

Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R.

Squibb & Sons Inc., 14 USPQ2d 1879, 1880 (TTAB 1990) (finding of no likelihood of confusion in the opposition 

did not remove defendant's standing to counterclaim for abandonment); Bankamerica Corp. v. Invest America, 5 

USPQ2d 1076, 1078 (TTAB 1987) (defendant seeking to cancel pleaded registration on ground of descriptiveness or

300 - 185 
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PLEADINGS 

37 CFR § 2.114(b)(2)(i) A defense attacking the validity of any one or more of the registrations 

pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist 

at the time when the answer is filed. If grounds for a counterclaim are known to respondent 

when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the 

 

In some instances, the grounds for cancellation available in the case of a counterclaim differ 

from those available in the case of a petition to cancel that are not in the nature of a 

counterclaim. Section 14 of the Act, 15 U.S.C. § 1064, limits, after a five-year period, the 

grounds upon which most Principal Register registrations may be cancelled. If the plaintiff in a 

proceeding before the Board relies on such a registration and the five-year period has not yet 

expired when the plaintiff's complaint is filed, the limitation does not apply to a counterclaim

filed by the defendant therein for cancellation of that registration. This is so even if the five-year 

period has expired by the time the counterclaim is filed. In such cases, the filing of the plaintiff's 

complaint tolls, during the pendency of the proceeding, the running of the five-year period for 

purposes of determining the grounds on which a counterclaim may be based.267 

313.04 Compulsory Counterclaims 

37 CFR § 2.106(b)(2)(i) A defense attacking the validity of any one or more of the registrations 

pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim 

exist at the time when the answer is filed. If grounds for a counterclaim are known to the 

applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as 

part of the answer. If grounds for a counterclaim are learned during the course of the 

opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor 

are learned. A counterclaim need not be filed if it is the subject of another proceeding between 

the same parties or anyone in privity therewith. 

genericness in an opposition based on likelihood of confusion need not allege that it has an interest in using the term

sought to be cancelled); M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 95 (TTAB 1984)

(counterclaimant clearly has personal stake in the controversy); Marcal Paper Mills, Inc. v. American Can Co., 212 

USPQ 852, 856 (TTAB 1981) (damage assumed, and with properly pleaded ground is sufficient to place validity of 

registration in issue); and General Mills, Inc. v. Natures Way Products, 202 USPQ 840, 841 (TTAB 1979). 

267 See, e.g., Williamson-Dickie Manufacturing Co. v. Mann Overall Company, 359 F.2d 450, 149 USPQ 518, 522

(CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861, 862 n.3 (TTAB 1980); Humble Oil &

Refining Co. v. Sekisui Chemical Company Ltd. of Japan, 165 USPQ 597, 598 n.4 (TTAB 1970) (grounds were not

limited where, although petition to cancel was not properly filed until after fifth anniversary date of registration,

opposition wherein opposer relied on said registration was filed before anniversary date); and Sunbeam Corp. v. 

Duro Metal Products Co., 106 USPQ 385, 386 (Comm'r 1955). See also J. Thomas McCarthy, McCarthy on 

Trademarks and Unfair Competition, § 20:67 (4th ed. 2001). 

 Cf., regarding concurrent use proceedings, Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048, 

1050 (TTAB 1982) (5-year period tolled where applicant, prior to expiration of 5-year period files a proper 

concurrent application or an amendment converting an unrestricted application to one seeking concurrent use 

naming registrant as exception to applicant's right to exclusive use). 

300 - 186 
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PLEADINGS 

answer. If grounds for a counterclaim are learned during the course of the cancellation 

proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. 

A counterclaim need not be filed if it is the subject of another proceeding between the same 

parties or anyone in privity therewith. 

Counterclaims for cancellation of pleaded registrations in Board proceedings are governed by 37 

CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i).

counterclaim to cancel a pleaded registration when the answer is filed, the counterclaim must be 

pleaded with or as part of the answer. during the course of the 

proceeding, through discovery or otherwise, the counterclaim must be pleaded promptly after the 

grounds therefore are learned.270

 

268 If the defendant knows the grounds for a 

269 If grounds are learned 

268 See 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i). See also TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 

1313 (TTAB 1989) (although parties referred to the "when justice requires" element of Fed. R. Civ. P. 13(f), 

counterclaims to cancel pleaded registrations in oppositions are governed by Trademark Rule 2.106(b)(2)(i)). But 

see See's Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395 (TTAB 1989) (Board applied 13(f) "when 

justice requires" standard where grounds for counterclaim filed as a separate petition to cancel were known at time

of answer to opposition). 

269 See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989); TBC Corp. v. 

Grand Prix Ltd., supra at 1314 (since it was unclear from applicant's submissions to amend whether counterclaim

was timely, i.e., whether grounds were known by applicant at time original answer was filed, applicant was allowed

time to explain why it was not pleaded with answer); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 

1224 (TTAB 1987) (motion to amend answer to add additional ground to existing counterclaim denied since such 

ground was available at time of original answer); and Consolidated Foods Corp. v. Big Red, Inc., 231 USPQ 744, 

746 (TTAB 1986) (petitioner cannot avoid effect of its failure to timely assert counterclaim at time it filed its answer 

as defendant in prior opposition since grounds existed and were known to petitioner at that time). 

 But see See's Candy Shops Inc. v. Campbell Soup Co., supra (although counterclaim (filed as separate petition to

cancel) was premised on facts known by applicant at time it filed its answer in the opposition, Board allowed the 

petition to go forward, notwithstanding that the petition was filed two weeks after answer was filed in the 

opposition). 

270 See Vitaline supra; Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1597 (TTAB 

1992), summ. judgment granted, 24 USPQ2d 1376 (TTAB 1992); Marshall Field & Co. v. Mrs. Fields Cookies, 11

USPQ2d 1355, 1359 (TTAB 1989) (counterclaim pleaded promptly after obtaining the information necessary to

assert counterclaim during discovery and before discovery had closed); S & L Acquisition Co. v. Helene Arpels Inc.,

9 USPQ2d 1221 (TTAB 1987); and M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 

1984). See also J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (if applicant learns 

through discovery that grounds exist for counterclaim, applicant may move to amend answer to assert such 

counterclaim); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167 (TTAB 1975) (applicant would not be barred 

by the dismissal with prejudice of its counterclaim in prior proceeding thirteen years earlier from asserting new 

counterclaim on same ground, i.e., that registered mark has become common descriptive name of identified goods, 

provided new counterclaim is based solely on circumstances occurring subsequent to termination of prior

proceeding); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974) (same); and Beth A.

Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

300 - 187 
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PLEADINGS 

A party may counterclaim to cancel a registration that is owned, but not pleaded, by an adverse 

party. A counterclaim to cancel a registration owned, but not pleaded, by an adverse party is a 

permissive counterclaim m is the date of receipt in the 

Office of the counterclaim with the required fee.275 

 

A defendant who fails to timely plead a compulsory counterclaim cannot avoid the effect of its 

failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. In such a 

case, the separate petition will be dismissed, on motion, on the ground that the substance of the 

petition constitutes a compulsory counterclaim in another proceeding, and that it was not timely 

asserted.271 

If a defendant confronted with a motion for summary judgment knows of grounds for a 

counterclaim that might serve to defeat the motion, the counterclaim should be asserted in 

response to the motion, even if no answer to the complaint has yet been filed.272 

A plaintiff which fails to plead a registration, and later seeks to rely thereon, will not be heard to 

contend, if defendant then moves to amend its answer to assert a counterclaim to cancel the 

registration, or then files a separate petition to cancel the registration, that the counterclaim or 

separate petition is untimely because it was not pleaded when defendant filed its answer. A 

plaintiff may not, by failing to plead a registration on which it intends to rely, deprive a 

defendant of its right to petition to cancel the registration, either by counterclaim or by separate 

petition, at such time as opposer seeks to rely upon the registration. Even if the defendant knows 

grounds for cancellation of a plaintiff’s unpleaded registration when the defendant files its 

answer, the defendant is under no compulsion to seek to cancel the registration unless and until 

the plaintiff pleads the registration.273 

 

313.05 Permissive Counterclaims 

.

274 The filing date of the counterclai

271 See Vitaline, supra and Consolidated Foods Corp., supra. 

272 See Libertyville Saddle Shop, supra. 

273 See 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i), and M. Aron Corporation v. Remington Products, Inc., 222 

USPQ 93 (TTAB 1984). See also Notice of Final Rulemaking published in the Federal Register of January 22, 

1981 at 46 FR 6940. 

274 See Fed. R. Civ. P. 13(b). Cf. 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i). 

275 37 CFR § 2.111(c)(4). For information on fees for counterclaims, see TBMP §§ 308.02 and 313.02. See also

TBMP § 308.02(b) (Insufficient Fee). 

300 - 188 
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PLEADINGS 

37 CFR § 2.106(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be 

applicable to counterclaims. A time, not less than thirty days, will be designated within which an 

answer to the counterclaim must be filed. 

An answer to a counterclaim should be in the same form as an answer to a complaint. For 

information on the proper form for an answer to a complaint, see TBMP § 310.01. 

 

313.06 Answer to Counterclaim 

37 CFR § 2.114(b)(2)(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be 

applicable to counterclaims. A time, not less than thirty days, will be designated within which an 

answer to the counterclaim must be filed. 

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

case of default. 

When a counterclaim (together with the required cancellation fee) is filed, the Board prepares an 

order acknowledging its receipt and allowing the plaintiff (defendant to the counterclaim) a set 

time, not less than 30 days, within which to file an answer to the counterclaim.

276 In practice, the 

Board usually allows 30 days.277 A copy of the order is sent to each party to the proceeding, or 

to each party's attorney or other authorized representative. The order will also include a trial 

schedule and briefing dates to accommodate the counterclaim.

278

If no answer to the counterclaim is filed during the time allowed, the counterclaim may be 

decided as in case of default.279 

An answer to a counterclaim, like any other answer, may include a counterclaim for cancellation 

of a registration owned by the counterclaimant. A defense attacking the validity of any 

registration pleaded by the counterclaimant is a compulsory counterclaim if grounds for such 

counterclaim exist at the time when the plaintiff's answer to the defendant's counterclaim is filed. 

If the plaintiff knows grounds for a counterclaim when the plaintiff's answer to the defendant's

counterclaim is filed, the counterclaim must be pleaded with or as part of the plaintiff's answer. 

If, during the course of the proceeding, the plaintiff learns, through discovery or otherwise, that 

276 See 37 CFR §§ 2.106(b)(2)(iii) and 2.114(b)(2)(iii). 

277 See TBMP § 310.03(b) (five-day addition under 37 CFR § 2.119(c) does not apply to deadlines set by Board). 

278 An example of a trial order for a proceeding with a counterclaim can be found in the Appendix of Forms. 

279 See 37 CFR §§ 2.114(a) and 2.114(b)(2)(iii). For information concerning default for failure to answer, see

TBMP § 312.

300 - 189 
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PLEADINGS 

A plaintiff's counterclaim to cancel a registration owned by the defendant, but not pleaded in the 

defendant's counterclaim, is a permissive counterclaim

In the case of an opposition against an application under 66(a) of the Act, 15 U.S.C. § 1141f, 

however, the opposition cannot be amended (or deemed amended) to assert any new claim

 

grounds for a counterclaim exist, the counterclaim should be pleaded promptly after the grounds 

therefor are learned.280 

.

281 

For information on the fee for a counterclaim, see 37 CFR § 2.6(a)(16) and TBMP § 313.02. 

For information on the form for a counterclaim, see TBMP § 313.03. 

314 Unpleaded Matters 

A plaintiff may not rely on an unpleaded claim. The plaintiff's pleading must be amended (or 

deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter.282 

.

283 

280 Cf. 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i), and TBMP § 313.04 (Compulsory Counterclaims). 

281 Cf. Fed. R. Civ. P. 13(b), and TBMP § 313.05 (Permissive Counterclaims). 

282 See P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d

328, 196 USPQ 801, 804 (CCPA 1978) (registrant did not have fair notice that petitioner was attempting to establish

a two-year period of nonuse extending beyond two-year period alleged in petition); Levi Strauss & Co. v. R. Josephs 

Sportswear Inc., 28 USPQ2d 1464, 1471 n.11 (TTAB 1993) (only ground pleaded and tried was descriptiveness, not 

likelihood of confusion); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 

1439-40 (TTAB 1993) (issue of abandonment argued in final brief was neither pleaded nor tried); Riceland Foods 

Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 (TTAB 1993) (only mark pleaded by opposer and

tried was registered design mark and applicant had no notice that opposer intended to rely on use of unregistered 

word mark appearing on opposer's packaging); Micro Motion, Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) 

(motion to amend opposition filed with final brief denied where pleaded issue was genericness and applicant was not

on notice of unpleaded issue of mere descriptiveness so that applicant could have put on defense of acquired 

distinctiveness); and Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1139 (TTAB 1992) 

(to have valid 2(d) claim in this case opposer was advised to amend pleading to state that its pleaded mark is merely

descriptive and had acquired distinctiveness prior to any establishment by applicant of acquired distinctiveness of 

applicant's mark). See also Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1128 (TTAB 1990); United 

States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815 (TTAB 1986); Giant Food, Inc. v. Standard Terry Mills, 

Inc., 229 USPQ 955 (TTAB 1986); Alliance Manufacturing Co. v. ABH Diversified Products, Inc., 226 USPQ 348 

(TTAB 1985); Long John Silver's, Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982); Standard Brands Inc. v. 

Peters, 191 USPQ 168 (TTAB 1975); Dap, Inc. v. Litton Industries, Inc., 185 USPQ 177 (TTAB 1975); and CCI 

Corp. v. Continental Communications, Inc., 184 USPQ 445 (TTAB 1974). 

 Cf. The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1723 (Fed. Cir. 2001)

(unpleaded issue will not be addressed for the first time on appeal).

283 See 37 CFR § 2.107(b) and TBMP §§ 315 and 507. 

300 - 190 
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PLEADINGS 

37 CFR § 2.107 Amendment of pleadings in an opposition proceeding. 

(a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of 

the Act may be amended in the same manner and to the same extent as in a civil action in a 

United States district court, except that, after the close of the time period for filing an opposition 

 

Except as provided in Fed. R. Civ. P. 12(b) and (h)(2) (which allow a defendant to raise certain 

specified defenses by motion), the defendant may not rely on an unpleaded defense unless the 

defendant's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 

15(b), to assert the matter.284

If, after the filing of its pleading, a party learns, through discovery or otherwise, of information 

which would serve as the basis for an additional claim (in the case of a plaintiff), or defense or 

counterclaim (in the case of a defendant), the party should move promptly to amend its pleading 

to assert the additional matter, to the extent such amendment would not be prohibited by 37 CFR 

§ 2.107.285 

A party may not obtain summary judgment on an unpleaded issue, nor may a party defend 

against a motion for summary judgment by asserting the existence of genuine issues of material 

fact as to an unpleaded claim or defense. However, a party that seeks to obtain, or to defend 

against, summary judgment on the basis of an unpleaded issue may, unless prohibited by 37 CFR 

§ 2.107, move to amend its pleading to assert the issue.286 

315 Amendment of Pleadings 

284 See Fed. R. Civ. P. 8(b), 8(c), and 12(b); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840 (TTAB 

1995) (applicant allowed time to amend pleading to allege acquisition of secondary meaning as an affirmative 

defense in the answer); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., supra (in defending against 2(d)

claim where opposer's unregistered mark is merely descriptive, applicant was advised to amend pleading to

affirmatively assert priority of acquired distinctiveness); Chicago Corp. v. North American Chicago Corp., 20

USPQ2d 1715, 1717 n.5 (TTAB 1991) (defense raised for first time in final brief that opposer lacks proprietary 

rights in its common law mark was neither pleaded nor tried); and United States Olympic Committee v. Bata Shoe 

Co., 225 USPQ 340, 342 (TTAB 1984). See also Trans Union Corp. v. Trans Leasing International, Inc., 200 

USPQ 748 (TTAB 1978); United States Mineral Products Co. v. GAF Corp., 197 USPQ 301 (TTAB 1977); 

Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585 (TTAB 1977); Hershey Foods Corp. v. Cerreta, 195 

USPQ 246 (TTAB 1977); and Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154 (TTAB 1975). 

 

285 See Fed. R. Civ. P. 15(a); Hilson Research Inc. supra; Trans Union Corp. v. Trans Leasing International, Inc., 

supra; J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB 1975); Johnson & Johnson v. Rexall Drug

Co., 186 USPQ 167 (TTAB 1975); and Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974). See 

also 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i). 

286 See, e.g., Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (opposer's pleading deemed

amended where nonmoving party did not object to summary judgment motion as seeking judgment on unpleaded

claim), aff’d (unpub’d) 1008 F.3d 1392 (Fed. Cir. 1997); and TBMP § 528.07 (Unpleaded Issue), and cases cited

therein. 

300 - 191 
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PLEADINGS 

including any extension of time for filing an opposition, an opposition may not be amended to 

add to the goods or services opposed. 

37 CFR § 2.115 Amendment of pleadings in a cancellation proceeding. 

 317 Exhibits to Pleadings 

37 CFR § 2.122(c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of this section, 

an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the 

exhibit is attached unless identified and introduced in evidence as an exhibit during the period 

for the taking of testimony. 

 

(b) Pleadings in an opposition proceeding against an application filed under section 66(a) of the 

Act may be amended in the same manner and to the same extent as in a civil action in a United 

States district court, except that, once filed, the opposition may not be amended to add to the 

grounds for opposition or to add to the goods or services subject to opposition. 

Pleadings in a cancellation proceeding may be amended in the same manner and to the same 

extent as in a civil action in a United States district court. 

As a general rule, pleadings in inter partes proceedings before the Board may be amended in the 

same manner and to the same extent as pleadings in a civil action before a United States district 

court.287 There is an exception to this rule, however. An opposition against a Section 66(a) 

application may not be amended to add to the stated grounds for opposition. Thus, an opposition 

may not be amended to add an entirely new claim or a claim based on an additional registration 

in support of an existing Section 2(d) claim.

288 Other amendments, such as those that would 

amplify or clarify the grounds for opposition, are not prohibited by this rule.289

316 Motions Relating to Pleadings 

In opposition and cancellation proceedings, there is a wide range of motions relating to 

pleadings, including motions to dismiss, for a more definite statement, to strike, for judgment on 

the pleadings, to amend pleadings, etc. For information concerning these motions, see TBMP 

chapter 500. 

287 See 37 CFR §§ 2.107 and 2.115. For further information concerning the amendment of pleadings, see Fed. R. 

Civ. P. 15, and TBMP § 507. See also Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The

Right Stuff, 81 Trademark Rep. 302 (1991). 

288 See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, 

published in the Federal Register on September 26, 2003 at 68 FR 55748, specifically, summary of amendments at 

55757. 

289 See, for example, Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation

Act; Final Rule, supra. 

300 - 192 
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PLEADINGS 

Exhibits submitted with a pleading must conform to the requirements of 37 CFR 2.126.

 

(1) it is not being presented for any improper purpose, such as to harass or to cause 

unnecessary delay or needless increase in the cost of litigation; 

 

37 CFR § 2.122(d) Registrations. (1) A registration of the opposer or petitioner pleaded in an 

opposition or petition to cancel will be received in evidence and made part of the record if the 

opposition or petition is accompanied by two copies (originals or photocopies) of the 

registration prepared and issued by the Patent and Trademark Office showing both the current 

status of and current title to the registration. ... 

A plaintiff or defendant may attach exhibits to its pleading. However, with one exception, 

exhibits attached to a pleading are not evidence on behalf of the party to whose pleading they are 

attached unless they are thereafter, during the time for taking testimony, properly identified and 

introduced in evidence as exhibits.290 

The one exception to the foregoing rule is a current status and title copy, prepared by the Patent 

and Trademark Office, of a plaintiff's pleaded registration. When a plaintiff submits such a 

status and title copy of its pleaded registration as an exhibit to its complaint, the registration will 

be received in evidence and made part of the record without any further action by plaintiff.291 

292

318 Fed. R. Civ. P. 11 Applicable 

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

(b) Representations to Court. 

By presenting to the court (whether by signing, filing, submitting, or later advocating) a 

pleading, written motion, or other paper, an attorney or unrepresented party is certifying that to 

the best of the person's knowledge, information, and belief, formed after an inquiry reasonable 

under the circumstances,-- 

290 37 CFR § 2.122(c). See Republic Steel Co. v. M.P.H. Manufacturing Corp., 312 F.2d 940, 136 USPQ 447, 448

(CCPA 1963); Hard Rock Café Intl (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000); Home Juice Co. v. 

Runglin Cos., 231 USPQ 897, 898 (TTAB 1986); Intersat Corp. v. International Telecommunications Satellite 

Organization, 226 USPQ 154, 155 n.3 (TTAB 1985); Syosset Laboratories, Inc. v. TI Pharmaceuticals, 216 USPQ

330, 332 (TTAB 1982); Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, 495 n.5 (TTAB 1978); A-1-A

Corp. v. The Gillette Co., 199 USPQ 118, 119 n.2 (TTAB 1978); and Permatex Co. v. California Tube Products, 

Inc., 175 USPQ 764, 765 n.2 (TTAB 1972). 

291 See 37 CFR §§ 2.122(c) and 2.122(d)(1), and TBMP § 704.03(b)(1)(A) (Registration Owned by Party). 

292 See, generally, TBMP § 106.03 (Form of Submissions). 

300 - 193 
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PLEADINGS 

(4) the denials of factual contentions are warranted on the evidence or, if specifically so 

identified, are reasonably based on a lack of information or belief. 

If, after notice and a reasonable opportunity to respond, the court determines that subdivision 

(b) has been violated, the court may, subject to the conditions stated below, impose an 

appropriate sanction upon the attorneys, law firms, or parties that have violated subdivision (b)

or are responsible for the violation.

319 Amendment to Allege Use; Statement of Use 

 

(2) the claims, defenses, and other legal contentions therein are warranted by existing 

law or by a nonfrivolous argument for the extension, modification, or reversal of existing 

law or the establishment of new law; 

(3) the allegations and other factual contentions have evidentiary support or, if 

specifically so identified, are likely to have evidentiary support after a reasonable 

opportunity for further investigation or discovery; and 

(c) Sanctions. 

The quoted provisions are applicable to pleadings, motions, and other papers filed in inter partes 

proceedings before the Board.293 

For information concerning the handling of an amendment to allege use, or a statement of use, 

filed during an opposition proceeding in an intent-to-use application that is the subject of the 

opposition, see TBMP § 219. 

293 See 37 CFR § 2.116(a) and TBMP § 527.02 (Motion for Rule 11 Sanctions), and authorities cited therein. See 

also Central Manufacturing, Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) (the

Board will also consider the conduct of a party relating to the requests to extend time to oppose). 

300 - 194 
Chapter 400 

DISCOVERY 

The conduct of discovery in Board inter partes proceedings is governed by 37 CFR § 2.120. 

Discovery before the Board under 37 CFR § 2.120 is similar in many respects to discovery 

before the Federal district courts under the Federal Rules of Civil Procedure. Ordinarily, the 

discovery provisions of the Federal Rules of Civil Procedure are applicable in Board inter partes 

proceedings, except as otherwise provided in 37 CFR § 2.120. However, the provisions of the 

Federal Rules relating to automatic disclosure and pretrial conferences are not applicable in 

Board proceedings. do not apply: Rules 16(b); 26(a)(1)-

26(a)(4); 26(b)(4); 26(d) first sentence; 26(e)(1); 26(f); 26(g)(1); 30(a)(2)(C); 33(a) last sentence; 

34(b) last sentence of first paragraph; 36(a) last sentence of first paragraph; 37(a)(2)(A); 

37(c)(1); and 37(g).3

 

The differences that exist between the two discovery systems are due primarily to the 

administrative nature of Board proceedings.

 

401 In General 

Through the use of the various discovery devices (i.e., discovery depositions, interrogatories, 

requests for production of documents and things, and requests for admission) available to 

litigants in inter partes proceedings before the Board; a party may ascertain the facts underlying 

its adversary's case. Discovery of these facts may lead to a settlement of the case, may simplify 

the issues, or may reveal a basis for a motion for summary judgment, an additional claim (in the 

case of a plaintiff), or an additional defense or counterclaim (in the case of a defendant). At the 

very least, discovery enables the discovering party to better prepare for trial.1

 

2

 Specifically, the following provisions 

4

 

The Board expects parties (and their attorneys or other authorized representatives) to cooperate 

with one another in the discovery process, and looks with extreme disfavor on those that do not.5

 

 

1

 For a discussion of the purposes served by discovery, see Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 

USPQ 861, 865 (TTAB 1979). See also Bison Corporation v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 

1987) and Smith International, Inc. v. Olin Corp., 201 USPQ 250 (TTAB 1978). 

2

 See 37 CFR § 2.120(a). 

3

 See "Effect of December 1, 1993 Amendments to the Federal Rules of Civil Procedure on Trademark Trial and 

Appeal Board Inter Partes Proceedings," 1159 TMOG 14 (February 1, 1994). See also, for example, Harjo v. ProFootball, Inc., 50 USPQ2d 1705, 1715 (TTAB 1999) (petitioners need not prepare list of trial witnesses and 

documents), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003). 

4

 Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988)

(USPTO rules governing procedure in inter partes proceedings are adapted from the Federal Rules with 

modifications appropriate to the administrative process). 

5 See TBMP § 408.01 (Duty to Cooperate). 

400 - 195 
Chapter 400 

DISCOVERY

 402 Scope of Discovery 

402.01 In General 

The general scope of the discovery that may be obtained in inter partes proceedings before the 

Board is governed by Fed. R. Civ. P. 26(b)(1), which provides, in part, as follows:

Parties may obtain discovery regarding any matter, not privileged, that is 

relevant to the claim or defense of any party, including the existence, description, 

nature, custody, condition, and location of any books, documents, or other 

tangible things and the identity and location of persons having knowledge of any 

discoverable matter. ... Relevant information need not be admissible at the trial if 

the discovery appears reasonably calculated to lead to the discovery of 

admissible evidence. ... 

A party may take discovery not only as to matters specifically raised in the pleadings

as to any matter which might serve as the basis for an additional claim, defense, or 

counterclaim.

Each party has a duty not only to make a good faith effort to satisfy the discovery needs of its 

adversary, but also to make a good faith effort to seek only such discovery as is proper and 

relevant to the specific issues involved in the proceeding.

 

6

,

7

 but also 

8

 

A party may not, by limiting its own discovery and/or presentation of evidence on the case, 

thereby restrict another party's discovery in any way.

9

 

10 

6

 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988)

(admissibility not necessary). See also Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB 1979);

and Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975) (relevancy construed liberally). 

7

 See Varian Associates v. Fairfield-Noble Corp., supra and Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 

USPQ 286, 287 (TTAB 1974) (opposer must answer interrogatories concerning allegations in notice of opposition). 

8

 See J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (information concerning

possible abandonment, if revealed, may provide basis for counterclaim); Johnson & Johnson v. Rexall Drug Co., 

186 USPQ 167, 171 (TTAB 1975) (the mere taking of discovery on matters concerning the validity of a pleaded

registration, under any circumstances, cannot be construed as a collateral attack on the registration); and Neville 

Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974). 

9

 See Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) (scope of discovery limited only by

restrictions in Rule 26(b)(1) of Federal Rules). 

10 Fed. R. Civ. P. 26(g). See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987); Sentrol, Inc. v.

Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 

83 (TTAB 1984); and TBMP § 408.01 (Duty to Cooperate).

400 - 196 
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DISCOVERY

The right to discovery is not unlimited. Even if the discovery sought by a party is relevant, it 

will be limited, or not permitted, where, inter alia, it is unreasonably cumulative or duplicative; 

or is unduly burdensome or obtainable from some other source that is more convenient, less 

burdensome, or less expensive; or "where harm to the person from whom discovery is sought 

outweighs the need of the person seeking discovery of the information."

 

In addition, because the signature of a party or its attorney to a request for discovery constitutes, 

under the provisions of Fed. R. Civ. P. 26(g), a certification by the party or its attorney that, inter 

alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not 

unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request 

for discovery is proper when propounded by the party itself but improper when propounded by 

its adversary.

11 A contention of this nature will be entertained only if it is supported by a 

persuasive showing of reasons why the discovery request is proper when propounded by one 

party but improper when propounded by another.12 

402.02 Limitations on Right to Discovery 

13 

For example, in those cases where complete compliance with a particular request for discovery 

would be unduly burdensome, the Board may permit the responding party to comply by 

providing a representative sampling of the information sought, or some other reduced amount of 

information which is nevertheless sufficient to meet the propounding party's discovery needs.14

11 See Fed. R. Civ. P. 26(g). See also Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069

(TTAB 1990) (petitioner estopped to challenge respondent's interrogatories as excessive in number having served

virtually identical set on respondent); Sentrol, Inc. v. Sentex Systems, Inc., supra (parties served identical discovery 

requests on each other and are constrained to answer each completely). See also Medtronic, Inc. v. Pacesetter 

Systems, Inc., supra (applicant, having served 114 interrogatories, is estopped from challenging opposer's 122 

interrogatories as excessive); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 623 (TTAB 1974); Gastown

Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477 (TTAB 1974); and TBMP § 408.01 (Duty to Cooperate). 

 Cf. Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572 (TTAB 1990) as cited in Miss America 

Pageant v. Petite Productions, Inc., supra at 1069 (no estoppel where opposer served a different, albeit also 

excessive, set of interrogatories on applicant). 

12 See Miss America Pageant v. Petite Productions, Inc., supra at 1069 (Board was persuaded that certain 

interrogatories would be burdensome). 

13 Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696, 1699 (Fed. Cir. 1990) and Fed. R. Civ. P. 

26(b)(2). See also, for example, Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469, 1472 (Fed. 

Cir. 1993) (must first seek discovery from party before burdening nonparty); Katz v. Batavia Marine & Sporting 

Supplies Inc., 984 F.2d 422, 25 USPQ2d 1547, 1549 (Fed. Cir. 1993) (in response to nonparty's prima facie showing 

that discovery was burdensome, party did not meet burden of showing need for information sought), and FMR Corp. 

v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999) (motion for protective order to prohibit deposition of

"very high-level official of a large corporation" granted). 

14 See, for example, British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993), aff'd, 35 F.3d

1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 115 S.Ct. 1426 (1995) (where applicant gave partial answers 

400 - 197 
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DISCOVERY

The Board may refuse to permit the discovery of confidential commercial information, or may 

allow discovery thereof only under an appropriate protective agreement or order. ilarly, 

information protected by the attorney-client privilege is not discoverable unless the privilege has 

been waived;

17 and documents and things prepared in anticipation of litigation or for trial by or 

for another party, or by or for that other party's representative, are discoverable only upon a 

showing that the party seeking discovery has substantial need of the materials in the preparation 

 

In addition, a party will not be permitted to obtain, through a motion to compel, discovery 

broader in scope than that actually sought in the discovery request(s) to which the motion 

pertains.15 

16 Sim

and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify

discovery requests, or otherwise pursue material, objection to evidence introduced by applicant at trial was 

overruled); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) (production of representative 

sample was not appropriate where full production, that is, a total of eleven documents, was clearly not burdensome);

Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147, 148 (TTAB 1985) (representative sample of

invoices from identified calendar quarters is sufficient where there are so many items as to make respondent’s task

unduly burdensome); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (permitted to

identify reasonable number of corporate officers most knowledgeable); Neville Chemical Co. v. Lubrizol Corp., 184 

USPQ 689, 690 (TTAB 1975) (burden of calculating sales and advertising figures in round numbers for six 

categories of goods for each year since 1936 mitigated by limiting sales figures to five most recent years); Van Dyk 

Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (applicant allowed to produce ten representative 

samples of documents pertaining to the marketing of each copy machine or as alternative, may allow opposer's

representative to visit sites where relevant documents are kept); and Mack Trucks, Inc. v. Monroe Auto Equipment 

Co., 181 USPQ 286, 288 (TTAB 1974) (allowed to furnish representative samples of advertisements). 

15 See Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980). 

16 See, for example, Fed. R. Civ. P. 26(c); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1862 (TTAB 

2001) (protective agreement would adequately protect against disclosure of trade secret manufacturing and technical 

information); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 

1988) (unless issue is abandonment or first use, party need not reveal names of its customers, including dealers, it

being sufficient to identify classes of customers and types of businesses); Fisons Ltd. v. Capability Brown Ltd., 

supra (need for names of customers, as in case where issue is abandonment, outweighs justification for protecting 

customer confidentiality); and Neville Chemical Co. v. Lubrizol Corp., supra (protective order must contain 

provision that customer names will be revealed only to applicant's attorneys). See also Sunkist Growers, Inc. v.

Benjamin Ansehl Company, supra; Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975); J.B.

Williams Co. v. Pepsodent G.m.b.H., supra; Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556 (TTAB 

1975); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975); Cool-Ray, Inc. v. Eye 

Care, Inc., 183 USPQ 618 (TTAB 1974) and TBMP § 412 (Protective Orders). 

17 See, for example, Fed. R. Civ. P. 26(b)(5) and Red Wing Co. v. J. M. Smucker Co., supra at 1864 (party making 

claim of privilege must do so expressly and otherwise describe the nature of the withheld information as provided in

Rule 26(b)(5). 

400 - 198 
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DISCOVERY

of its case and that it is unable, without undue hardship, to obtain the substantial equivalent of 

the materials by other means.

403.01 In General 

37 CFR § 2.120(a) ... The Trademark Trial and Appeal Board will specify the opening and 

closing dates for the taking of discovery. The trial order setting these dates will be mailed with 

the notice of institution of the proceeding. The discovery period will be set for a period of 180 

days. The parties may stipulate to a shortening of the discovery period. The discovery period 

may be extended upon stipulation of the parties approved by the Board, or upon motion granted 

by the Board, or by order of the Board. If a motion for an extension is denied, the discovery 

period may remain as originally set or as reset. Discovery depositions must be taken, and 

interrogatories, requests for production of documents and things, and requests for admission 

must be served, on or before the closing date of the discovery period as originally set or as reset. 

...

When a timely opposition or petition to cancel in proper form has been filed, and the required fee 

has been submitted (or at the time described in 37 CFR § 2.92 for an interference and 37 CFR § 

2.99(c) for a concurrent use proceeding); the Board sends out a notice advising the parties of the 

institution of the proceeding.19 The notice includes a trial order setting the opening and closing 

dates for the discovery period and assigning each party's time for taking testimony.20 The date 

set for the close of discovery is 180 days after the opening of discovery. 

 

18 

 403 Timing of Discovery 

The discovery devices, namely, discovery depositions, interrogatories, requests for production of 

documents and things, and requests for admission, are available for use only during the discovery 

period.21 A party has no obligation to respond to an untimely request for discovery. 

18 See, for example, Fed. R. Civ. P. 26(b)(3) and (b)(5); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186

USPQ 207, 208 (TTAB 1975); and Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975). 

See also Miles Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432 (TTAB 1975); Amerace Corp. 

v. USM Corp., 183 USPQ 506 (TTAB 1974); and Goodyear Tire & Rubber Co. v. Uniroyal, Inc., 183 USPQ 372

(TTAB 1974) and TBMP § 412 (Protective Orders).

19 See 37 CFR §§ 2.105 and 2.113; and TBMP §§ 310, 1003 and 1106. 

20 See 37 CFR §§ 2.120(a) and 2.121(a). 

21 See Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (although a specific time period is 

not provided in Rule 34, it is implicit that utilization thereof is limited to the discovery period) and Rhone-Poulenc 

Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978).

400 - 199 
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DISCOVERY

403.02 Time for Service of Discovery Requests 

37 CFR § 2.120(a) ... Discovery depositions must be taken, and interrogatories, requests for 

production of documents and things, and requests for admission must be served, on or before the 

closing date of the discovery period as originally set or as reset. 

 

Interrogatories, requests for production of documents and things, and requests for admission may 

be served on an adversary from the day the discovery period opens through the last day of the 

discovery period, even though the answers thereto will not be due until after the discovery period 

has closed.22 However, discovery depositions must be not only noticed but also taken during the 

discovery period (unless the parties stipulate that the deposition may be taken outside of the 

period).23 

403.03 Time for Service of Discovery Responses 

37 CFR § 2.120(a) ... Responses to interrogatories, requests for production of documents and 

things, and requests for admission must be served within 30 days from the date of service of such 

discovery requests. ... 

Responses to interrogatories, requests for production of documents and things, and requests for 

admission must be served within 30 days after the date of service of the request for discovery.24 

If service of the request for discovery is made by first-class mail, "Express Mail," or overnight 

courier, the date of mailing or of delivery to the overnight courier is considered to be the date of 

service, and five extra days are allowed for responding to the request.25 

Discovery in proceedings before the Board is not governed by any concept of priority of 

discovery or deposition. That is, a party which is the first to serve a request for discovery does 

not thereby gain a right to receive a response to its request before it must respond to its 

adversary's subsequently served request for discovery, and this is so even if its adversary fails to 

respond, or respond completely, to the first party's request for discovery. Rather, a party is under 

an obligation to respond to an adversary's request for discovery during the time allowed therefor 

22 See Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758, 1761 (TTAB 1999). See also Rhone-Poulenc Industries v. 

Gulf Oil Corp., supra; Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606 (TTAB 1974);

AMP Inc. v. Raychem Corp., 179 USPQ 857 (TTAB 1973); and Deere & Co. v. Deerfield Products Corp., 176 

USPQ 422 (TTAB 1973). 

23 See 37 CFR § 2.120(a). See also Smith International, Inc. v. Olin Corp., supra; and Rhone-Poulenc Industries v. 

Gulf Oil Corp., supra. 

24 See 37 CFR § 2.120(a) and Fed. R. Civ. P. 33(b)(3), 34(b), and 36(a). 

25 See 37 CFR § 2.119(c), and TBMP § 113.05. See also Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d

1552 (TTAB 1987). 

400 - 200 
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DISCOVERY

 Requests 

... The time to respond [to interrogatories, requests for production of documents and things, and 

requests for admission] may be extended upon stipulation of the parties, or upon motion granted 

by the Board, or by order of the Board. The resetting of a party’s time to respond to an 

outstanding request for discovery will not result in the automatic rescheduling of the discovery 

 

under the applicable rules, irrespective of the sequence of requests for discovery, or of an 

adversary's failure to respond to a pending request for discovery.26 

A party which fails to respond to a request for discovery during the time allowed therefor, and 

which is unable to show that its failure was the result of excusable neglect, may be found, upon 

motion to compel filed by the propounding party, to have forfeited its right to object to the 

discovery request on its merits.27 Objections going to the merits of a discovery request include 

claims that the information sought by the request is irrelevant, overly broad, unduly vague and 

ambiguous, burdensome and oppressive, or not likely to lead to the discovery of admissible 

evidence.28 In contrast, objections based on claims of privilege or confidentiality or attorney 

work product do not go to the merits of the request, but instead to a characteristic of the 

information sought.29 

403.04 Extensions of Discovery Period and/or Time to Respond to Discovery 

37 CFR § 2.120(a) ... The discovery period may be extended upon stipulation of the parties 

approved by the Board, or upon motion granted by the Board, or by order of the Board. If a 

motion for an extension is denied, the discovery period may remain as originally set or as reset. 

 * * * * 

26 See Fed. R. Civ. P. 26(d); Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1070 (TTAB 

1990) and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986). 

27 See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in

determining whether such forfeiture should be found); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 

449 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to

ascertain that responses were due); and Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) 

(waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). 

See also Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1303 (TTAB 1987) (right to object not waived where 

although discovery responses were late, there was some confusion regarding time to answer); and MacMillan

Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (party seeking discovery is required to make 

good faith effort to determine why no response has been made before coming to Board with motion to compel). 

28 See No Fear Inc. v. Rule, supra at 1554. 

29 See No Fear Inc. v. Rule, supra at 1554 (party will generally not be found to have waived the right to make these 

objections).

400 - 201 
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DISCOVERY

and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties 

approved by the Board, or upon motion granted by the Board, or by order of the Board. 

 

37 CFR § 2.121(a)(1) ... The resetting of the closing date for discovery will result in the 

rescheduling of the testimony periods without action by any party. 

 * * * * 

(d) When parties stipulate to the rescheduling of testimony periods or to the rescheduling of the 

closing date for discovery and the rescheduling of testimony periods, a stipulation presented in 

the form used in a trial order, signed by the parties, or a motion in said form signed by one party 

and including as statement that every other party has agreed thereto, shall be submitted to the 

Board. 

The closing date of the discovery period may be extended by stipulation of the parties approved 

by the Board, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of 

the Board. An extension of the closing date for discovery will result in a corresponding 

extension of the testimony periods without action by any party.30 A stipulation or consented 

motion to extend discovery and trial dates must be filed with the Board and should be presented 

in the form used in a trial order.31

Mere delay in initiating discovery does not constitute good cause for an extension of the 

discovery period.32 Thus, a party which waits until the waning days of the discovery period to 

serve interrogatories, requests for production of documents and things, and/or requests for 

admission will not be heard to complain, when it receives responses thereto after the close of the 

discovery period, that it needs an extension of the discovery period in order to take "follow-up" 

discovery.33 

At the same time, a party which receives discovery requests early in the discovery period may 

not, by delaying its response thereto, or by responding improperly so that its adversary is forced 

to file a motion to compel discovery, rob its adversary of the opportunity to take "follow-up" 

discovery. Such a delay or improper response constitutes good cause for an extension of the 

30 See 37 CFR § 2.121(a)(1). For information concerning stipulations to extend, see TBMP § 501.03. For 

information concerning motions to extend, see TBMP § 509. 

31 See 37 CFR § 2.121(d). 

32 See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (no reason given why discovery was 

not taken during the time allowed); and Janet E. Rice, TIPS FROM THE TTAB: The Timing of Discovery, 68 

Trademark Rep. 581 (1978). 

33 See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1316 n. 4 (TTAB 1992). 

400 - 202 
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DISCOVERY

The time for responding to a request for discovery may be extended or reopened by stipulation of 

the parties, or on motion (pursuant to Fed. R. Civ. P. 6(b)) granted by the Board, or by order of 

the Board. However, an extension of a party's time to respond to an outstanding request for 

discovery will not result in an automatic corresponding extension of the discovery and/or 

testimony periods. on stipulation of the parties approved 

by the Board, or on motion granted by the Board, or by order of the Board. 

 

discovery period. Therefore, the Board will, at the request of the propounding party, extend the 

discovery period (at least for the propounding party) so as to restore that amount of time which 

would have remained in the discovery period had the discovery responses been made in a timely 

and proper fashion.34 

35 Such periods will be rescheduled only 

A stipulation to extend or reopen only the time for responding to a request for discovery (that is, 

not to extend or reopen also the closing date for the discovery period and/or testimony periods) 

does not have to be filed with the Board. However, to avoid any misunderstanding between the 

parties as to the existence and terms of such a stipulation, it is recommended that the stipulation 

be reduced to writing, even if it is not filed with the Board. 

403.05 Need for Early Initiation of Discovery 

403.05(a) To Allow Time for "Follow-up" Discovery 

If a party wishes to have an opportunity to take "follow-up" discovery after it receives 

responses to its initial requests for discovery, it must serve its initial requests early in the 

discovery period, so that when it receives responses thereto, it will have time to prepare 

and serve additional discovery requests prior to the expiration of the discovery period.

36

403.05(b) To Facilitate Introduction of Produced Documents 

37 CFR § 2.120(j)(3)(ii) A party which has obtained documents from another party 

under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of 

record by notice of reliance alone, except to the extent that they are admissible by notice 

of reliance under the provisions of § 2.122(e). 

34 See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990) and Neville Chemical Co. 

v. Lubrizol Corp., 184 USPQ 689 (TTAB 1975). 

35 See 37 CFR §§ 2.120(a) and 2.121(a); and PolyJohn Enterprises Corp. v. 1-800-TOILETS, Inc., 61 USPQ2d

1860, 1861 (TTAB 2002) (mistaken belief that resetting time to respond to discovery also extended discovery and 

testimony periods did not constitute excusable neglect to reopen). 

36 See TBMP § 403.04 (Extensions of Discovery and Time to Respond).

400 - 203 
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37 CFR § 2.122(e) Printed publications and official records. Printed publications, 

such 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, and official records, if the publication or official record 

is competent evidence and relevant to an issue, may be introduced in evidence by filing a 

notice of reliance on the material being offered. The notice shall specify the printed 

publication (including information sufficient to identify the source and the date of the 

publication) or the official record and the pages to be read; indicate generally the 

relevance of the material being offered, and be accompanied by the official record or a 

copy thereof whose authenticity is established under the Federal Rules of Evidence, or by 

the printed publication or a copy of the relevant portion thereof. A copy of an official 

record of the [United States] Patent and Trademark Office need not be certified to be 

offered in evidence. The notice of reliance shall be filed during the testimony period of 

the party that files the notice. 

First, if the discovery period has not yet expired, a party that has obtained documents 

from another party through a request for production of documents may serve on its 

opponent a request for admission of the genuineness of the subject documents, which 

should be attached as exhibits to the request for admission. ony 

period, the propounding party may file a notice of reliance, pursuant to 37 CFR § 

2.120(j)(3)(i), on the request for admission, the exhibits thereto, and its adversary's 

response. 

Second, if the discovery period has not yet expired, the party which obtained the 

documents may make them of record by taking a discovery deposition of its adversary, 

marking the documents as exhibits thereto, and having the witness identify the documents 

during the deposition. The propounding party may then submit the deposition and 

identified exhibits during its testimony period under a notice of reliance. 

 

Documents produced in response to a request for production of documents may not be 

made of record by notice of reliance alone, except to the extent that the documents are 

admissible by notice of reliance as printed publications or official records under 37 CFR 

§ 2.122(e). However, there are a number of different methods by which documents 

produced in response to a request for production of documents that do not qualify for 

submission under Rule 2.122(e) may be made of record.37 Three of the easiest methods 

are available for use only if the request for production of documents is served relatively 

early in the discovery period. 

38 Then, during its testim

37 See TBMP § 704.09 (Discovery Depositions). For a full discussion of making evidence of record in a Board

proceeding, see Chapter 700.

38 See Fed. R. Civ. P. 36(a).

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 404 Discovery Depositions 

404.01 When and By Whom Taken 

 

Third, the request for production of documents may be combined with a notice of the 

taking of the adversary's discovery deposition; that is, the combined request and notice 

may ask that the deponent bring the requested documents to his or her deposition. 

However, a party served with a request for production of documents has 30 days from the 

date of service of the request in which to respond thereto, plus an extra 5 days if service 

of the request was made by first-class mail, "Express Mail," or overnight courier.39 

Moreover, in proceedings before the Board, a discovery deposition must be both noticed 

and taken before the end of the discovery period.40 Thus, a combined notice of deposition 

and request for production of documents normally must be served at least 35 days prior to 

the close of the discovery period. 

Discovery depositions must be both noticed and taken prior to the expiration of the discovery 

period (unless the parties stipulate that the deposition may be taken outside of the period).41 

Discovery depositions generally may be taken by any party. 

404.02 Who May be Deposed 

A discovery deposition generally may be taken of any person, whether or not the person is a 

party, and whether or not the person resides in the United States. However, the Board's 

permission must be obtained under the following circumstances:42 

(1) If the person to be examined is confined in prison; or 

(2) If, without written stipulation of the parties, (i) a proposed deposition would 

result in more than ten depositions being taken by the plaintiffs, or by the 

defendants, or (ii) the person to be examined already has been deposed in the 

case. 

39 See TBMP § 403.03 (Time for Discovery Responses). 

 

40 See TBMP § 403.02 (Time for Discovery Requests). 

41 See Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978); Rhone-Poulenc Industries v. Gulf

Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (it is clear from the language of Fed. R. Civ. P. 30 and 33 that while 

interrogatories need only be "served" during the discovery period, depositions must be "taken" during the discovery

period); and TBMP § 403.02 (Time for Service of Discovery Requests). 

42 See Fed. R. Civ. P. 30(a).

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404.03(a) Person Residing in the United States – In General 

The deposition of a natural person shall be taken in the Federal judicial district where 

the person resides or is regularly employed or at any place on which the parties agree by 

stipulation. ...

404.03(a)(1) Person Residing in United States – Party 

If a proposed deponent residing in the United States is a party, or, at the time set 

for the taking of the deposition, is an officer, director, or managing agent of a 

party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify 

on behalf of a party, the deposition may be taken on notice alone.

... The responsibility rests wholly with the party taking discovery to secure the 

attendance of a proposed deponent other than a party or anyone who, at the time 

set for the taking of the deposition, is an officer, director, or managing agent of a 

 

For information concerning limitations on the right to discovery, see TBMP § 402.02.

 

404.03 Place of Deposition; Oral or Written Deposition; Securing Attendance 

 of Deponent

37 CFR § 2.120(b) Discovery deposition within the United States. 

The discovery deposition of a person shall be taken in the Federal judicial district where 

the person resides or is regularly employed or at any place on which the parties agree by 

stipulation.43 The deposition may be taken either orally, or on written questions in the 

manner described in 37 CFR § 2.124.44 

45 

404.03(a)(2) Person Residing in United States – Nonparty 

37 CFR § 2.120(b) Discovery deposition within the United States. 

43 See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998) (general rule in Federal district court that a 

plaintiff is required to make itself available for examination in district where suit is brought does not apply in Board

proceedings). 

44 See Fed. R. Civ. P. 26(a)(5), 30, and 31. For information on the taking of a discovery deposition on written

questions, see TBMP § 404.07. 

45 See 37 CFR § 2.120(b); Fed. R. Civ. P. 30(b); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 

(TTAB 1976); and Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in

Proceedings Before the Board, 75 Trademark Rep. 296 (1985). For information concerning notices of deposition,

see TBMP § 404.05. For information concerning testimonial depositions of adverse witnesses residing in United

States, see TBMP § 703.01(f)(2).

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party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal 

Rules of Civil Procedure. 

 

If a proposed deponent residing in the United States is not a party, or a person 

who, at the time set for the taking of the deposition, is an officer, director, or 

managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) 

or 31(a)(3) to testify on behalf of a party, the responsibility rests wholly with the 

deposing party to secure the attendance of the proposed deponent. If the 

proposed deponent is not willing to appear voluntarily, the deposing party must 

secure the deponent's attendance by subpoena, pursuant to 35 U.S.C. § 24 and 

Fed. R. Civ. P. 45.47 The subpoena must be issued from the United States district 

court in the Federal judicial district where the deponent resides or is regularly 

employed. 

46

48

If a person named in a subpoena compelling attendance at a discovery deposition 

fails to attend the deposition, or refuses to answer a question propounded at the 

deposition, the deposing party must seek enforcement from the United States 

District Court that issued the subpoena; the Board has no jurisdiction over such 

depositions.49 

46 See 37 CFR § 2.120(b). 

47 See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2048-49 (TTAB 1988) (deposition of former

employee can only be taken by voluntary appearance or by subpoena); Saul Lefkowitz and Janet E. Rice, Adversary 

Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 383-384 (1985); Rany L. 

Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in Proceedings Before the Board, 75

Trademark Rep. 296 (1985); and Fed. R. Civ. P. 30(a)(1) and 45. 

 Cf., regarding testimony depositions, Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 

1990) (testimony deposition on written questions of adverse party); Consolidated Foods Corp. v. Ferro Corp., 189

USPQ 582, 583 (TTAB 1976) (testimony deposition of adverse witness); and TBMP § 703.01(f)(2) (Unwilling 

Witness Residing in U.S.). 

48 See generally cases cited in preceding footnote. 

49 See, for example, Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (motion to quash 

subpoenaed third-party depositions due to scheduling problems denied). See also In re Johnson & Johnson, 59 

F.R.D. 174, 178 USPQ 201 (D.Del. 1973); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318 (TTAB

1971); Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 

supra and Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in Proceedings Before 

the Board, supra. 

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37 CFR § 2.120(c) Discovery deposition in foreign countries. 

However, if the discovery deposition of such a person is taken in a foreign country, it 

must be taken on written questions, in the manner described in 37 CFR § 2.124, unless 

the Board, on motion for good cause, orders, or the parties stipulate, that the deposition 

be taken by oral examination.

For information concerning the procedure for taking discovery depositions on written 

questions, see TBMP § 404.07. For information on a motion to take a foreign deposition 

orally, see TBMP § 520. 

 

404.03(b) Person Residing in a Foreign Country – Party 

(1) The discovery deposition of a natural person residing in a foreign country who is a 

party or who, at the time set for the taking of the deposition, is an officer, director, or 

managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of 

the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the 

manner prescribed by §2.124 unless the Trademark Trial and Appeal Board, upon 

motion for good cause, orders or the parties stipulate, that the deposition be taken by 

oral examination. 

The discovery deposition of a natural person who resides in a foreign country, and who is 

a party, or who, at the time set for the taking of the deposition, is an officer, director, or 

managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 

31(a)(3) to testify on behalf of a party may be taken on notice alone.50 

51 

The Board will not order a natural person residing in a foreign country to come to the 

United States for the taking of his or her discovery deposition.52 

50 See 37 CFR §§ 2.120(c) and 2.124. Compare TBMP § 703.01(g) (Persons Before Whom Depositions May be 

Taken); the testimony deposition of an adverse party, unless obtained voluntarily, may be taken in a foreign country, 

if at all, only by the letter rogatory procedure or by procedures provided under the Hague Convention or other

applicable treaties. 

51 See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); 37 CFR § 2.120(c)(1); and TBMP § 520 

(Motion to Take Foreign Deposition Orally). See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d

1923, 1925 (TTAB 1989) (by motion); Fischer Gesellschaft m.b.H. v. Molnar and Company, Inc., 203 USPQ 861, 

866 (TTAB 1979) (by motion); Jonergin Co. Inc. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm'r 1983) (by 

stipulation); Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal

Board, 75 Trademark Rep. 323, 384 (1985); Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance 

of a Witness in Proceedings Before the Board, 75 Trademark Rep. 296 (1985); and Janet E. Rice, TIPS FROM THE 

TTAB: Recent Changes in the TTAB Discovery Rules, 74 Trademark Rep. 449 (1984). Cf. TBMP § 703.01(b)

(Form of Oral Testimony Depositions). 

 

52 See Jain v. Ramparts Inc., supra at 1431 and Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374

(TTAB 1978) (deposition may only be taken by written questions unless otherwise stipulated, or unless the party is 

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The discovery deposition of a natural person who resides in a foreign country, and 

is not a party, or an officer, director, or managing agent of a party, or a person 

designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of a 

party, but is willing to appear voluntarily to be deposed, may be taken in the same

manner as the discovery deposition of a natural person who resides in a foreign 

country and who is a party, i.e., in the manner described in TBMP § 404.03(b).

404.03(c)(2) Unwilling Nonparty 

 

404.03(c) Person Residing in a Foreign Country – Nonparty 

404.03(c)(1) Willing Nonparty 

53 

There is no certain procedure for obtaining, in an inter partes proceeding before 

the Board, the discovery deposition of a natural person who resides in a foreign 

country, is not a party, or an officer, director, or managing agent of a party, or a 

person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of 

a party, and does not agree to appear voluntarily to be deposed. However, a party 

may be able to obtain the discovery deposition of such a person through the letter 

rogatory procedure, whereby an unwilling nonparty witness in a foreign country 

sometimes may be compelled to respond to questions routed through diplomatic 

channels to an appropriate judicial authority in the foreign country.54 

The term "Letters rogatory" is defined in Black's Law Dictionary (Fifth Edition 

1979) as follows: 

A request by one court of another court in an independent 

jurisdiction, that a witness be examined upon interrogatories 

sent with the request. The medium whereby one country, 

speaking through one of its courts, requests another country, 

acting through its own courts and by methods of court 

procedure peculiar thereto and entirely within the latter's 

present in the U.S.). See also Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364 (E.D. N.Y.

1964); and Louise E. Fruge, TIPS FROM THE TTAB: Depositions Upon Written Questions, 70 Trademark Rep. 253

(1980) and Jonergin Co. Inc. v. Jonergin Vermont Inc., supra. 

53 Cf. 37 CFR §§ 2.120(c) and 2.123(a). 

54 See, in general, Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in

Proceedings Before the Board, 75 Trademark Rep. 296 (1985). Cf. DBMS Consultants Ltd. v. Computer Associates 

International, Inc., 18 FR Serv 3d 33, 131 FRD 367 (D. Mass. 1990) (court granted application for issuance of a 

letter rogatory finding that it would be unjust and inappropriate to require oral examination and that opposing party

has shown no good reason to deny the application). 

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control, to assist the administration of justice in the former 

country. The Signe, D.C.La., 37 F. Supp. 819, 820. 

A formal communication in writing, sent by a court in which 

an action is pending to a court or judge of a foreign country, 

requesting that the testimony of a witness resident within the

jurisdiction of the latter court may be there formally taken 

under its direction and transmitted to the first court for use in 

the pending action. Fed. R. Civ. P. 28. 

This process was also in use, at an early period, between the 

several states of the Union. The request rests entirely upon 

the comity of courts towards each other. 

While the letter rogatory procedure is usually conducted through the judicial 

system, because the proceeding is before an administrative body, the Board in this 

instance would function as the initiating “court” contemplated by the rule. 

A party that wishes to have the Board issue a letter rogatory should file a written 

request therefor with the Board.55 The party must also submit an original and two 

copies of the proposed letter rogatory, and an original and two copies of the 

questions to be propounded to the nonparty witness. If the official language of 

the foreign country is not English, the propounding party must submit an original 

and two copies of the letter rogatory and questions in English, and an original and 

two copies thereof translated into the official language. In addition, the 

propounding party must serve on each adverse party a copy of every paper 

submitted to the Board.56 

If the request is granted, each adverse party will be given an opportunity to submit 

cross-questions, a copy of which must also be served on the propounding party. If 

an adverse party does submit cross questions, the propounding party, in turn, will 

be given an opportunity to submit redirect questions, a copy of which must be 

served on each adverse party.57 As in the case of the initial questions, an original 

and two copies of any cross questions and redirect questions must be submitted to 

the Board; if the official language of the foreign country is not English, an 

original and two copies of the questions in English, and an original and two 

copies thereof translated into the official language, must be submitted. 

55 See Fed. R. Civ. P. 28(b). 

56 See 37 CFR § 2.119(a). Cf. 37 CFR § 2.124(b)(2). 

57 Cf. 37 CFR § 2.124(d)(1).

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After the original and copies of the letter rogatory, and of all of the questions, 

have been submitted to the Board, and the letter rogatory has been approved as to 

form, the letter rogatory will be issued by the Board. The letter rogatory will be

signed by the Chief Administrative Trademark Judge; the signature will be 

authenticated in such a manner at to meet the requirements of the foreign country; 

and the original and one copy of the letter rogatory and accompanying questions 

will be forwarded to the United States Department of State with a transmittal 

letter from the Board (the remaining copy of these papers will be retained in the 

Board proceeding file). In its transmittal letter, the Board will request, pursuant to 

28 U.S.C. § 1781 (which authorizes the Department of State to, inter alia, 

"receive a letter rogatory issued, or request made, by a tribunal in the United 

States, to transmit it to the foreign or international tribunal, officer, or agency to 

whom it is addressed, and to receive and return it after execution"), that the 

Department of State transmit the letter rogatory to the appropriate judicial 

authority in the foreign country, and, after execution, receive it back and return it 

to the Board. Thereafter, the Department of State will transmit the letter rogatory, 

through diplomatic channels, to the appropriate judicial authority in the foreign 

country. 

The party seeking discovery must pay all fees, including authentication, consular, 

and foreign government fees, charged in connection with the letter rogatory 

procedure. The Department of State will require the propounding party to make a 

deposit to cover the consular and foreign government fees. Payment may be 

made by certified check or money order made payable to the American 

Embassy/Consulate [insert the name of the appropriate city, i.e., Paris, Bonn, 

Tokyo, etc.]. Any unused portion of the deposit will be returned to the depositor 

after completion of the letter rogatory process. 

Further information concerning the letter rogatory process may be obtained from

the Office of Citizens Consular Services, Department of State, 2201 C Street 

N.W., Washington, D.C. 20520. 

 

Once the appropriate foreign judicial authority has received the letter rogatory, it 

may or may not be executed. As indicated above, the letter rogatory "rests

entirely upon the comity of courts towards each other." Some countries refuse or 

are reluctant to lend assistance in the taking of a discovery deposition in their 

country through the letter rogatory procedure, and compliance with the procedural 

requirements for a letter rogatory does not ensure that the requested deposition 

will be completed.58 Before a request for issuance of a letter rogatory is filed with 

58 See NOTES OF ADVISORY COMMITTEE ON RULES, Advisory Committee Note of 1963 to Fed. R. Civ. P. 

28(b), and Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2083 (1994). 

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Even in those foreign countries that are not reluctant to execute a letter rogatory, 

the foreign judicial authority may refuse to honor a letter rogatory issued by the 

Board (an administrative tribunal) rather than by a United States district court. 

Further, if the foreign country has a "blocking statute" prohibiting its residents 

from disclosing certain types of information in judicial or administrative 

proceedings outside of the foreign country, a letter rogatory may not be honored if 

the foreign judicial authority believes that disclosure of the information requested 

therein would violate the blocking statute.

 

the Board, the requesting party should examine the law and policy of the involved 

foreign country, and consult with the Office of Citizens Consular Services, 

Department of State, in order to determine whether the country in question is 

likely to honor a letter rogatory, particularly a letter rogatory issued by the Board. 

59 

If a letter rogatory is honored, its probative value may be limited. In executing 

the letter rogatory, the foreign judicial tribunal will follow its customary 

procedures for taking testimony. The fact that these procedures may differ from

those normally followed in proceedings before the Board does not mean that the 

deposition must necessarily be excluded. Rather, any such differences are matters 

to be considered by the Board in determining the probative value of the 

deposition.60 

A party considering the filing of a request for issuance of a letter rogatory should 

bear in mind not only the complexity and uncertain outcome of the procedure, but 

also its time-consuming nature. The entire process, from the filing of the initial 

request for issuance of a letter rogatory, to receipt by the Board either of the 

completed deposition, or of notification that the letter rogatory will not be

honored; will consume months, if not years. During the interim, proceedings in 

the case before the Board most likely will be suspended pending the execution 

and return to the Board of the letter rogatory.61 

The Hague Convention on the Taking of Evidence Abroad in Civil or Commercial 

Matters (commonly known as the "Hague Convention"), opened for signature 

March 18, 1970, 23 U.S.T. 2555, T.I.A.S. No. 7444, prescribes procedures under 

which a judicial authority in one member country may request evidence located in 

59 See Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in Proceedings Before 

the Board, 75 Trademark Rep. 296 (1985). 

60 See Fed. R. Civ. P. 28; NOTES OF ADVISORY COMMITTEE ON RULES, Advisory Committee Note of 1963 to

Fed. R. Civ. P. 28(b); and Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2083 (1994). 

61 Cf. 37 CFR § 2.124(d)(2).

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another. The Convention offers another possible method by which a party to an 

inter partes proceeding before the Board may attempt to obtain the discovery 

deposition of an unwilling nonparty witness residing in a foreign country, if the 

foreign country is a member of the Convention.62 

The Hague Convention provides for the compulsion of evidence (including the 

deposition of an unwilling witness) in a member country pursuant to a "letter of 

request," which is very similar in nature to a letter rogatory. 63 However, the 

Board has been advised by the Department of State that foreign countries are 

more likely to lend assistance in the taking of a discovery deposition if the request 

therefor is made under the more formal letter rogatory procedure. Before filing a 

motion for issuance of a letter of request, the moving party should consult with 

the Office of Citizens Consular Services, Department of State, in order to 

determine whether the foreign country in question is likely to honor a letter of 

request, particularly a letter of request issued by the Board. 

 

404.03(d) Foreign Person Present Within the United States – Party 

37 CFR § 2.120(c)(2) Whenever a foreign party is or will be, during a time set for 

discovery, present within the United States or any territory which is under the control 

and jurisdiction of the United States, such party may be deposed by oral examination 

upon notice by the party seeking discovery. Whenever a foreign party has or will have, 

during a time set for discovery, an officer, director, managing agent, or other person who 

consents to testify on its behalf, present within the United States or any territory which is 

under the control and jurisdiction of the United States, such officer, director, managing 

agent, or other person who consents to testify in its behalf may be deposed by oral 

examination upon notice by the party seeking discovery. The party seeking discovery 

may have one or more officers, directors, managing agents, or other persons who consent 

to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal 

Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken 

62 See, for example, Societe Nationale Industrielle Aerospatiale v. U.S. District Court for the Southern District of

Iowa, 482 U.S. 522 (1987) (although Hague not exclusive discovery procedure, it may apply even if Federal Rules 

of Civil Procedure are available); In re Anschuetz & Co., GmbH, 838 F.2d 1362 (5th Cir. 1988) (U.S. district courts 

have discretion to resolve discovery conflicts between Federal Rules of Civil Procedure and Hague Convention);

Wright, Miller and Marcus, Federal Practice and Procedure: Civil 2d § 2005 (1994); and Rany L. Simms, TIPS 

FROM THE TTAB: Compelling the Attendance of a Witness in Proceedings Before the Board, 75 Trademark Rep.

296 (1985). For general information concerning the Hague Convention, see Double J of Broward Inc. v. Skalony 

Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991) (applicant failed to establish necessity of using Hague

procedures). [NOTE: This case involved the taking of discovery by interrogatories, requests for production of

documents, and requests for admissions, rather than by deposition]. 

63 For information concerning the letter of request procedure under the Hague Convention, see Chapter 1 of the 

Convention. See also Double J of Broward Inc. v. Skalony Sportswear GmbH, supra. 

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in the Federal judicial district where the witness resides or is regularly employed, or, if 

the witness neither resides nor is regularly employed in a Federal judicial district, where 

the witness is at the time of the deposition. This paragraph does not preclude the taking 

of a discovery deposition of a foreign party by any other procedure provided by 

paragraph (c)(1) of this section. 

Whenever a natural person who is a foreign party, or an officer, director, or managing 

agent, of a foreign party, or some other person who consents to testify on a foreign party's 

behalf, is or will be, during a time set for discovery, present within the United States or

any territory which is under the control and jurisdiction of the United States, such party, 

officer, director, managing agent, or other person may be deposed, while in the United 

States, by oral examination on notice pursuant to 37 CFR § 2.120(c)(2).64 Indeed, this 

option was available even before the adoption of 37 CFR § 2.120(c)(2).65 

When the discovery deposition of a foreign party, or an officer, director, managing agent, 

or other person who consents to testify on behalf of a foreign party, is taken in the United 

States by oral examination pursuant to 37 CFR § 2.120(c)(2), the deposition must be 

taken in the Federal judicial district where the witness resides or is regularly employed, 

or, if the witness neither resides nor is regularly employed in a Federal judicial district, 

where the witness is at the time of the deposition.66 

404.03(e) Foreign Person Present Within the United States – Nonparty

If the proposed deponent is a foreign person who is present within the United States but 

the person is not a party to the proceeding and is not willing to appear voluntarily, it may 

be necessary to secure the deponent's attendance, if at all, by the procedures set forth in 

TBMP § 404.03(c). 

64 See also Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal 

Board, 75 Trademark Rep. 323 (1985); Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a

Witness in Proceedings Before the Board, 75 Trademark Rep. 296 (1985); and Janet E. Rice, TIPS FROM THE 

TTAB: Recent Changes in the TTAB Discovery Rules, 74 Trademark Rep. 449 (1984). 

65 See Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372 (TTAB 1978). and Jonergin Co. Inc. v. Jonergin 

Vermont Inc.,222 USPQ 337 (Comm’r 1983).

 

66 See 37 CFR § 2.120(c)(2).

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404.04 Persons Before Whom Depositions May be Taken 

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken 

(a) Within the United States. Within the United States or within a territory or insular

possession subject to the jurisdiction of the United States, deposition shall be taken before an 

officer authorized to administer oaths by the laws of the United States or of the place where the 

examination is held, or before a person appointed by the court in which the action is pending. A 

person so appointed has power to administer oaths and take testimony. The term officer as used 

in Rules 30, 31 and 32 includes a person appointed by the court or designated by the parties 

under Rule 29. 

 

(b) In Foreign Countries. Depositions may be taken in a foreign country (1) pursuant to any 

applicable treaty or convention, or (2) pursuant to a letter of request (whether or not captioned a 

letter rogatory), or (3) on notice before a person authorized to administer oaths in the place 

where the examination is held, either by the law thereof or by the law of the United States, or (4)

before a person commissioned by the court, and a person so commissioned shall have the power 

by virtue of the commission to administer any necessary oath and take testimony. A commission 

or a letter of request shall be issued on application and notice and on terms that are just and 

appropriate. It is not requisite to the issuance of a commission or a letter of request that the 

taking of the deposition in any other manner is impracticable or inconvenient; and both a 

commission and a letter of request may be issued in proper cases. A notice of commission may 

designate the person before whom the deposition is to be taken either by name or descriptive 

title. A letter of request may be addressed "To the Appropriate Authority in [here name the 

country]." When a letter of request or any other device is used pursuant to any applicable treaty 

or convention, it shall be captioned in the form prescribed by that treaty or convention. 

Evidence obtained in response to a letter of request need not be excluded merely because it is not 

a verbatim transcript, because the testimony was not taken under oath, or because of any similar 

departure from the requirements for depositions taken within the United States under these rules. 

(c) Disqualification for Interest. No deposition shall be taken before a person who is a relative 

or employee or attorney or counsel of any of the parties, or is a relative or employee of such 

attorney or counsel, or is financially interested in the action.

Discovery depositions in Board inter partes proceedings may be taken before the persons 

designated by Rule 28 of the Federal Rules of Civil Procedure. 

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of

the United States) a Board proceeding discovery deposition "shall be taken before an officer 

authorized to administer oaths by the laws of the United States or of the place where the 

deposition is held, or before a person appointed by the court in which the action is pending."67 

As a practical matter, Board proceeding depositions taken in the United States are usually taken 

67 See Fed. R. Civ. P. 28(a). 

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before a court reporter that is authorized to administer oaths in the jurisdiction where the 

deposition is taken. 

In a foreign country, a Board proceeding discovery deposition may be taken pursuant to Fed. R. 

Civ. P. 28(b). This means, for example, that a Board proceeding discovery deposition taken of a 

willing witness in a foreign country usually may be taken on notice before a United States 

consular official, or before anyone authorized by the law of the foreign country to administer 

oaths therein. Some countries, however, may prohibit the taking of testimony within their 

boundaries for use in any other country, including the United States, even though the witness is 

willing; or may permit the taking of testimony only if certain procedures are followed.

68 A party 

which wishes to take a deposition in a foreign country should first consult with local counsel in 

the foreign country, and/or with the Office of Citizens Consular Services, Department of State, in 

order to determine whether the taking of the deposition will be permitted by the foreign country, 

and, if so, what procedure must be followed. 

404.05 Notice of Deposition 

Fed. R. Civ. P. 30(b) Notice of Examination: General Requirements; ... 

(1) A party desiring to take the deposition of any person upon oral examination shall give 

reasonable notice in writing to every other party to the action. The notice shall state the time 

and place for taking the deposition and the name and address of each person to be examined, if 

known, and, if the name is not known, a general description sufficient to identify the person or 

the particular class or group to which the person belongs. ... 

37 CFR § 2.124(b)(2) [Depositions upon written questions] A party desiring to take a discovery 

deposition upon written questions shall serve notice thereof upon each adverse party and shall 

file a copy of the notice, but not copies of the questions, with the Board. The notice shall state 

the name and address, if known, of the person whose deposition is to be taken. If the name of the 

person is not known, a general description sufficient to identify him or the particular class or 

group to which he belongs shall be stated in the notice, and the party from whom the discovery 

deposition is to be taken shall designate one or more persons to be deposed in the same manner 

as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure. 

(c) Every notice given under the provisions of paragraph (b) of this section shall be 

accompanied by the name or descriptive title of the officer before whom the deposition is to be 

taken.

In an inter partes proceeding before the Board, the discovery deposition of a natural person who 

is a party, or who, at the time set for the taking of the deposition, is an officer, director, or 

68 See Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2083 (1994). 

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managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to 

testify on behalf of a party may be taken on notice alone. 

Prior to the taking of a discovery deposition on notice alone, the party seeking to take the 

deposition ("the deposing party") must give reasonable notice in writing to every adverse party.69 

The elements to be included in the notice are specified in Fed. R. Civ. P. 30(b)(1), for a 

deposition on oral examination, and in 37 CFR §§ 2.124(b)(2) and 2.124(c), for a deposition on

written questions.70 It is strongly recommended that the deposing party contact the party sought 

to be deposed (or whose officer, director, etc., is sought to be deposed) well in advance of the 

proposed deposition in order to arrange a mutually convenient time for the deposition. The 

deposition must be taken prior to the expiration of the discovery period (unless the parties 

stipulate that the deposition may be taken outside of the period).71 

In noticing the deposition of a corporation, partnership, association, governmental agency, or 

other juristic person, the deposing party may, in lieu of naming a person to be deposed, simply 

name as the deponent the corporation, partnership, association, governmental agency, or other 

juristic person, and describe with reasonable particularity the matters on which examination is 

requested. The named organization must, in turn, designate one or more officers, directors, or 

managing agents, or other persons who consent to testify on its behalf, and may state, for each 

person designated, the matters on which he or she will testify. Each designated person must 

testify not only as to those matters within his or her knowledge, but also as to matters known or 

reasonably available to the organization.72 

For information concerning the procedure for combining a notice of taking a discovery 

deposition with a request for production of documents, see TBMP § 406.01. 

404.06 Taking a Discovery Deposition

The manner of taking a discovery deposition in an inter partes proceeding before the Board is 

very similar to taking a testimony deposition.73 

69 See Fed. R. Civ. P. 30(b)(1), and 37 CFR §§ 2.120(c), 2.124(b)(2), and 2.124(c). Cf. 37 CFR § 2.123(c); Fed. R. 

Civ. P. 31(a)(3); and TBMP § 703.01(e) (Notice of Testimony Deposition). 

70 See also, e.g., Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (subject matter of

deposition to be described with reasonable particularity in the notice). 

71 See TBMP § 403.02 (Time for Service of Discovery Requests). 

 

72 See Fed. R. Civ. P. 30(b)(6) and 31(a)(3), and Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before 

the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 383 (1985). 

73 See Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991). 

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For information concerning the procedure for taking a testimony deposition (including the 

examination of witnesses, the form of a deposition, and the protection of confidential information 

or trade secret material forming part of a deposition transcript or exhibits thereto) see TBMP §§ 

703.01 and 703.02. For a discussion of significant differences between discovery depositions

and testimony depositions, see TBMP § 404.09. For information concerning the procedure for 

taking a discovery deposition on written questions, see TBMP § 404.07. 

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or 

attended by telephone.74 A deposition taken by telephone is regarded as taken in the Federal 

judicial district and at the place where the witness is to answer the questions propounded to him

or her. 

404.07 Discovery Depositions on Written Questions 

Discovery depositions on written questions are taken in the manner prescribed by 37 CFR § 

2.124. 

404.07(a) Depositions on Written Questions: Before Whom Taken 

37 CFR § 2.124(a) A deposition upon written questions may be taken before any person 

before whom depositions may be taken as provided by Rule 28 of the Federal Rules of 

Civil Procedure. 

A deposition on written questions, like a deposition on oral examination, may be taken 

before the persons described in Fed. R. Civ. P. 28.75 

 

404.07(b) Depositions on Written Questions: When Taken 

37 CFR § 2.120(a) ... Discovery depositions must be taken, ...on or before the closing

date of the discovery period as originally set or as reset. 

Discovery depositions must be both noticed and taken during the discovery period.76 

Thus, it is recommended that a party, which desires to take a discovery deposition on 

written questions, initiate the procedure early in its discovery period. 

74 See Fed. R. Civ. P. 30(b)(7), and Hewlett-Packard Co. v. Healthcare Personnel Inc., supra at 1553 (leave to take

telephonic depositions should be liberally granted in appropriate cases current federal practice favors use of

technological benefits). 

75 See 37 CFR § 2.124(a) and TBMP § 404.04 (Persons Before Whom Depositions May be Taken). 

 

76 See 37 CFR § 2.120(a). See also TBMP § 404.01 (When and by Whom Taken). 

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404.07(c) Depositions on Written Questions: Place of Deposition 

For information concerning the place where a discovery deposition on written questions 

is taken, see TBMP § 404.03. 

 

404.07(d) Depositions on Written Questions: Notice of Deposition 

37 CFR § 2.124(b)(2) A party desiring to take a discovery deposition upon written 

questions shall serve notice thereof upon each adverse party and shall file a copy of the 

notice, but not copies of the questions, with the Board. The notice shall state the name 

and address, if known, of the person whose deposition is to be taken. If the name of the 

person is not known, a general description sufficient to identify him or the particular 

class or group to which he belongs shall be stated in the notice, and the party from whom 

the discovery disposition is to be taken shall designate one or more persons to be 

deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil 

Procedure. 

(c) Every notice given under the provisions of paragraph (b) of this section shall be 

accompanied by the name or descriptive title of the officer before whom the deposition is 

to be taken. 

(d)(1) Every notice served on any adverse party under the provisions of paragraph (b) of 

this section shall be accompanied by the written questions to be propounded on behalf of 

the party who proposes to take the deposition. ... 

A party that desires to take a discovery deposition on written questions must serve notice 

thereof on each adverse party and shall file a copy of the notice, but not copies of the 

questions, with the Board.77 

The notice must state the name and address, if known, of the person whose deposition is 

to be taken. If the name of the person is not known, a general description sufficient to 

identify the person is to be provided so the responding party can designate one or more 

persons to be deposed. The notice must also be accompanied by the name or descriptive 

title of the officer before whom the deposition is to be taken, and by the written questions 

to be propounded on behalf of the deposing party.78 

For further information concerning notices of deposition in general, see TBMP § 404.05. 

77 See 37 CFR § 2.124(b)(2).

78 See 37 CFR §§ 2.124(b)(2), 2.124(c), and 2.124(d)(1).

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404.07(e) Depositions on Written Questions: Examination of Witness 

37 CFR § 2.124(d)(1) Every notice served on any adverse party under the provisions of 

paragraph (b) of this section shall be accompanied by the written questions to be 

propounded on behalf of the party who proposes to take the deposition. Within twenty 

days from the date of service of the notice, any adverse party may serve cross questions 

upon the party who proposes to take the deposition; any party who serves cross questions 

shall also serve every other adverse party. Within ten days from the date of service of the 

cross questions, the party who proposes to take the deposition may serve redirect 

questions on every adverse party. Within ten days from the date of service of the redirect 

questions, any party who served cross questions may serve recross questions upon the 

party who proposes to take the deposition; any party who serves recross questions shall 

also serve every other adverse party. Written objections to questions may be served on a 

party propounding questions; any party who objects shall serve a copy of the objections 

on every other adverse party. In response to objections, substitute questions may be 

served on the objecting party within ten days of the date of service of the objections; 

substitute questions shall be served on every other adverse party. 

(2) Upon motion for good cause by any party, or upon its own initiative, the Trademark 

Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) 

of this section. ... 

(e) Within ten days after the last date when questions, objections, or substitute questions 

may be served, the party who proposes to take the deposition shall mail a copy of the 

notice and copies of all the questions to the officer designated in the notice; a copy of the 

notice and of all the questions mailed to the officer shall be served on every adverse 

party. The officer designated in the notice shall take the testimony of the witness in

response to the questions and shall record each answer immediately after the 

corresponding question. The officer shall then certify the transcript and mail the 

transcript and exhibits to the party who took the deposition. 

Within 20 days from the date of service of the notice (25 days, if service of the notice and 

accompanying questions was made by first-class mail, "Express Mail," or overnight

courier,79 any adverse party may serve cross questions on the deposing party. A party 

that serves cross-questions on the deposing party must also serve copies thereof on every 

other adverse party. Within 10 days from the date of service of the cross questions (15 

days, if service of the cross questions was made by first-class mail, "Express Mail," or 

overnight courier), the deposing party may serve redirect questions on every adverse 

party. Within 10 days from the date of service of the redirect questions (15 days, if 

service of the redirect questions was made by first-class mail, "Express Mail," or

79 See 37 CFR § 2.119(c). 

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overnight courier), any party that served cross-questions may serve recross questions on 

the deposing party. A party which serves recross questions on the deposing party must 

also serve copies thereof on every other adverse party.80

Written objections to questions may be served on the party that propounded the 

questions. A party that serves objections on a propounding party must also serve a copy 

of the objections on every other adverse party. In response to objections, substitute 

questions may be served on the objecting party within 10 days from the date of service of 

the objections (15 days, if service of the objections was made by first-class mail, 

"Express Mail," or overnight courier). The substitute questions must also be served on 

every other adverse party.81 

As all discovery depositions must be completed within the discovery period, including 

depositions on written questions, on motion for good cause filed by any party, or on its 

own initiative, the Board may extend any of the time periods specified in 37 CFR § 

2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, 

recross questions, objections, and substitute questions to allow for the orderly completion 

of the depositions on written questions.82 

Within 10 days after the last date when questions, objections, or substitute questions may 

be served, the deposing party must mail a copy of the notice and copies of all the 

questions to the officer designated in the notice. A copy of the notice and of all the 

questions mailed to the officer must also be served on every adverse party. The officer 

designated in the notice shall take the testimony of the witness in response to the 

questions, and shall record each answer immediately after the corresponding question.83 

404.07(f) Depositions on Written Questions: Objections 

37 CFR § 2.124(d)(1) ... Written objections to questions may be served on a party 

propounding questions; any party who objects shall serve a copy of the objections on 

every other adverse party. In response to objections, substitute questions may be served 

on the objecting party within ten days of the date of service of the objections; substitute 

questions shall be served on every other adverse party. 

80 See 37 CFR § 2.124(d)(1). See also Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 

1979). 

81 See 37 CFR § 2.124(d)(1). See also Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 

1990). 

82 See 37 CFR § 2.124(d)(2) regarding suspension of proceedings for testimonial depositions on written questions. 

83 See 37 CFR § 2.124(e). 

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 * * * * 

(g) Objections to questions and answers in depositions upon written questions may be 

considered at final hearing. 

Written objections to questions propounded for a deposition on written questions may be 

served on the party that propounded the questions. Any party that serves written 

objections on a propounding party must also serve a copy of the objections on every other 

adverse party.84 

Objections to questions and answers in depositions on written questions, as in oral 

depositions, generally are considered by the Board (unless waived) at final hearing.85 

For further information concerning the raising of objections to discovery depositions, see

TBMP § 404.08. For information concerning the raising of objections to a notice of 

reliance on a discovery deposition, see TBMP §§ 707.02 and 532. 

404.07(g) Depositions on Written Questions: Form of Deposition; Signature 

37 CFR § 2.124(e) ... The officer designated in the notice shall take the testimony of the 

witness in response to the questions and shall record each answer immediately after the 

corresponding question. 

The officer before whom a deposition on written questions is taken shall record each

answer immediately after the corresponding question.86 

For further information concerning the form of a deposition taken in an inter partes 

proceeding before the Board, see 37 CFR § 2.123(g), and TBMP § 703.01(i). For 

information concerning signature of a deposition taken in an inter partes proceeding 

before the Board, see 37 CFR § 2.123(e)(5), and TBMP § 703.01(j). 

404.07(h) Depositions on Written Questions: Certification of Deposition 

37 CFR § 2.124(e) Within ten days after the last date when questions, objections, or 

substitute questions may be served, the party who proposes to take the deposition shall 

mail a copy of the notice and copies of all the questions to the officer designated in the 

84 See 37 CFR § 2.124(d)(1). See also TBMP § 703.02(k) (Objections to Testimony Depositions on Written

Questions). 

85 See 37 CFR § 2.124(g), and Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) 

(objections based on relevancy deferred until final hearing). 

86 See 37 CFR § 2.124(e). 

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notice; a copy of the notice and of all the questions mailed to the officer shall be served 

on every adverse party. The officer designated in the notice shall take the testimony of

the witness in response to the questions and shall record each answer immediately after 

the corresponding question. The officer shall then certify the transcript and mail the 

transcript and exhibits to the party who took the deposition. 

After the officer designated in the notice of deposition has taken a deposition on written 

questions, the officer must certify the transcript of the deposition. When the transcript 

has been certified, the officer should mail the transcript and exhibits to the party that took 

the deposition.87 

404.07(i) Depositions on Written Questions: Service, Correction, and 

 Making the Deposition of Record 

37 CFR § 2.124(f) The party who took the deposition shall promptly serve a copy of the 

transcript, copies of documentary exhibits, and duplicates or photographs of physical 

exhibits on every adverse party. It is the responsibility of the party who takes the 

deposition to assure that the transcript is correct (see § 2.125(b)). If the deposition is a 

discovery deposition, it may be made of record as provided by § 2.120(j). ... 

The party that took the deposition on written questions must promptly serve a copy of the 

transcript, with exhibits, on every adverse party.88 The party that took the deposition 

must also assure that the transcript is correct.89 

If the discovery deposition is to be made of record, the same procedures provided by 37 

CFR § 2.120(j) are to be followed.90 

 

404.07(j) Deposition on Written Questions: Utility 

A deposition on written questions is a cumbersome, time-consuming procedure. It 

requires that cross questions, redirect questions, recross questions, and objections all be 

framed and served before the questions on direct examination have even been answered. 

87 See 37 CFR § 2.124(e). For further information concerning certification of a deposition taken in an inter partes 

proceeding before the Board, see, for example, 37 CFR § 2.123(f), and TBMP § 703.01(k). 

88 See 37 CFR § 2.124(f). See also TBMP § 703.01(m) regarding service of testimony deposition transcript. 

89 See 37 CFR §§ 2.124(f) and 2.125(b). For information concerning correction of errors in a deposition taken in a

Board inter partes proceeding, see TBMP § 703.01(n).

90 See 37 CFR § 2.124(f). See also, with respect to making a discovery deposition of record, TBMP § 704.09 and 

Fischer Gesellschaft M.b.H. v. Molnar and Co., Inc., 203 USPQ 861 (TTAB 1979). 

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Moreover, it deprives an adverse party of face-to-face confrontation and the opportunity 

to ask follow-up questions based on answers to previous questions.91

Nevertheless, it has some utility. It may be the only means by which a deposition may be 

taken in a foreign country. Moreover, the deposition on written questions is generally 

less expensive than the deposition on oral examination, and is usually more convenient 

for the witness. 

404.08 Discovery Deposition Objections 

404.08(a) Objections to Notice 

Objections to errors and irregularities in a notice of the taking of a discovery deposition 

must be promptly served, in writing, on the party giving the notice; any such objections 

that are not promptly served are waived.92 For information concerning the raising of 

objections to a notice of reliance on a discovery deposition, see TBMP §§ 707.02 and 

532.

 

404.08(b) Objections as to Disqualification of Officer 

An objection to the taking of a discovery deposition because of a disqualification of the 

officer before whom the deposition is to be taken, is waived unless it is made before the 

91 See 37 CFR § 2.124(d)(1); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1926 (TTAB 

1989); and Louise E. Fruge, TIPS FROM THE TTAB: Depositions Upon Written Questions, 70 Trademark Rep. 

253, 253 (1980). See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 

1990), corrected at 19 USPQ2d 1479; Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 

1980); Fischer Gesellschaft m.b.H. v. Molnar & Co., supra at 866; Saul Lefkowitz and Janet E. Rice, Adversary 

Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 397 (1985); and TBMP § 

703.02(m) (Utility of Testimony Depositions on Written Questions). 

92 See Fed. R. Civ. P. 32(d)(1). Compare S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293 (TTAB 1997)

(Board will not rule in advance of deposition as to whether information sought is confidential or otherwise 

objectionable) and Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (objections to

subject matter of deposition may only be raised during, not prior to, the deposition) with Red Wing Co. v. J.M.

Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (objections to subject matter of 30(b)(6) deposition raised prior 

to deposition). 

 Cf., generally, with regard to notice of testimony depositions, 37 CFR § 2.123(j); Of Counsel Inc. v. Strictly of

Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (premature taking of testimony deposition could have

been corrected upon seasonable objection); Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) 

(testimony deposition excluded where notice did not name witness and objection was timely made and consistently 

maintained), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984); and Hamilton Burr Publishing Co. v. 

E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982). 

 

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deposition begins, or as soon thereafter as the disqualification becomes known or could 

be discovered with reasonable diligence.93 

 

404.08(c) Objections During Deposition

Fed. R. Civ. P. 32(d)(3)(A) Objections to the competency of a witness or to the 

competency, relevancy, or materiality of testimony are not waived by failure to make 

them before or during the taking of the deposition, unless the ground of the objection is 

one which might have been obviated or removed if presented at that time. 

(B) Errors and irregularities occurring at the oral examination in the manner of taking 

the deposition, in the form of the questions or answers, in the oath or affirmation, or in 

the conduct of parties, and errors of any kind which might be obviated, removed, or 

cured if promptly presented, are waived unless seasonable objection thereto is made at 

the taking of the deposition. 

Objections to the competency of a witness or to the competency, relevancy, or materiality 

of discovery deposition testimony "are not waived by failure to make them before or 

during the taking of the deposition, unless the ground of the objection is one which might 

have been obviated or removed if presented at that time."94 

In the case of a discovery deposition taken on oral examination, objections to errors and 

irregularities occurring at the deposition in the manner of taking the deposition, in the 

form of the questions or answers, in the oath or affirmation, or in the conduct of the 

parties, and objections to errors of any kind which might be obviated, removed, or cured 

if promptly presented, are waived unless seasonably made at the deposition.95 

For information concerning objections to the form of questions in the case of a discovery 

deposition on written questions, see TBMP § 404.07(f). 

If a party believes that a question propounded at a discovery deposition is improper, it 

may state its objection thereto. Questions objected to ordinarily should be answered 

subject to the objection, but a witness may properly refuse to answer a question asking 

for information which is, for example, privileged or confidential.96 If a witness, having 

93 See Fed. R. Civ. P. 32(d)(2). Cf. 37 CFR § 2.123(j). 

94 See Fed. R. Civ. P. 32(d)(3)(A). Cf. 37 CFR § 2.123(k). 

95 See Fed. R. Civ. P. 32(d)(3)(B). Cf. 37 CFR § 2.123(j). 

96 See 37 CFR § 2.123(e)(4); Fed. R. Civ. P. 26(b), 30(c), and 37(a); Fed. R. Evid. 501; and Wright, Miller & 

Marcus, Federal Practice and Procedure: Civil 2d § 2113 (1994). See also Johnston Pump/General Valve Inc. v. 

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stated an objection to a discovery deposition question, answers the question subject to the 

objection, and the deposition is subsequently made of record in the proceeding pursuant 

to the provisions of 37 CFR §§ 2.120(j)(1), (2), (3)(i), and (4), the propriety of the 

objection will be considered by the Board at final hearing when the objections are 

preserved and raised in the final briefs; that is, the Board will evaluate the testimony in 

light of the stated objection.97

For information concerning the propounding party's options if a witness not only objects 

to, but also refuses to answer, a particular question during a discovery deposition, see 

TBMP § 411.03.98

404.09 Discovery Depositions Compared to Testimony Depositions 

A discovery deposition, like a testimony deposition, may be taken either on oral examination or 

on written questions.99 In fact, the actual taking of a discovery deposition is very similar to the 

taking of a testimony deposition. Nevertheless, there are substantial differences between the 

two, stemming from the differences between the discovery and trial stages of a proceeding. 

Some of the most significant differences are discussed below. A discovery deposition is a broad 

discovery device used by a party to obtain from an adversary information about the adversary's 

case, or to obtain from a nonparty information that may be helpful to the deposing party's case. 

The discovery deposition is taken of the adversary or a nonparty, or an official or employee of 

the adversary or a nonparty. A testimony deposition, on the other hand, is a narrower device 

used by a party to present evidence in support of its own case. During a party's testimony period, 

testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if 

the party is an individual), or of an official or employee of the party, or of some other witness 

testifying (either willingly or under subpoena) on behalf of the party.100 

Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (Board, upon motion to compel, allowed parties 

time to work out protective order under which confidential information would be provided). 

97 See 37 CFR § 2.120(j)(3)(i); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979)

(objections to discovery deposition questions should be preserved and argued in the briefs at final hearing); and

Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974). 

98 See also Neville Chemical Co. v. Lubrizol Corp., supra (if opposer objects to and refuses to answer certain 

deposition questions, applicant may seek subpoena for immediate resolution or file motion to compel answers).

99 See Fed. R. Civ. P. 26(a).

100 See Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB 1979); Smith International, Inc. v. 

Olin Corp., 201 USPQ 250 (TTAB 1978) and Bison Corporation v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB

1987). See also Gary Krugman, TIPS FROM THE TTAB: Testimony Depositions, 70 Trademark Rep. 353 (1980). 

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The discovery deposition may only be taken during the discovery period, which is ongoing for 

all parties at the same time.

101 A party may only take a testimony deposition during the party's 

assigned testimony period; each party has an assigned testimony period, and only the party to 

which a particular testimony period is assigned may take testimony therein.102 

In a discovery deposition, a party may seek information that would be inadmissible at trial, 

provided that the information sought appears reasonably calculated to lead to the discovery of 

admissible evidence.103 In a testimony deposition, a party may properly adduce only evidence 

admissible under the applicable rules of evidence; inadmissibility is a valid ground for 

objection.104 

In both types of depositions, questions objected to ordinarily should be answered subject to the 

objection, but a witness may properly refuse to answer a question asking for information that is, 

for example, privileged or confidential.105 Both types of depositions are taken out of the 

presence of the Board, and if a witness not only objects to, but also refuses to answer a particular 

question, the propounding party may obtain an immediate ruling on the propriety of the objection 

only by adjourning the deposition and applying, under 35 U.S.C. § 24, to the Federal district 

court, in the jurisdiction where the deposition is being taken, for an order compelling the witness 

to answer.106

In the case of a discovery deposition, there is also available to the propounding party the simpler 

and more convenient alternative of completing the deposition and then filing a motion with the 

Board to compel the witness to answer the unanswered question.107 A motion to compel is not 

available, however, in the case of a testimony deposition taken in a proceeding before the Board, 

101 See Smith International, Inc. v. Olin Corp., supra; Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372 

(TTAB 1978); and TBMP § 403.02 (Time for Service of Discovery Requests). 

102 See 37 CFR § 2.121(a)(1).

103 See Fed. R. Civ. P. 26(b)(1).

104 See 37 CFR §§ 2.122(a) and 2.123(k), and TBMP § 533 (motions to strike trial testimony depositions).

105 See 37 CFR § 2.123(e)(4); Fed. R. Civ. P. 26(b)(5), 30(c), and 37(a)(2)(B); Fed. R. Evid. 501; and Wright, 

Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2113 (1994). 

106 See Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Neville Chemical Co. v. Lubrizol Corp., 183 

USPQ 184, 189 (TTAB 1974). See also S. Rudofker's Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499 (TTAB 

1969); and Bordenkircher v. Solis Entrialgo y Cia, S. A., 100 USPQ 268, 276-278 (Comm'r 1953).

107 See 37 CFR § 2.120(e) and Neville Chemical Co. v. Lubrizol Corp., supra. 

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nor is there any other mechanism for obtaining from the Board, prior to final hearing, a ruling on 

the propriety of an objection to a question propounded during a testimony deposition.108 

Accordingly, in those cases where the witness in a testimony deposition refuses to answer a 

particular question, no court action is sought, and the Board finds at final hearing that the 

objection was not well taken, the Board may presume that the answer would have been 

unfavorable to the position of the party whose witness refused to answer, or may find that the 

refusal to answer reduces the probative value of the witness's testimony.109 

A discovery deposition does not form part of the evidentiary record in a case unless a party 

entitled to offer it into evidence files, during the party's testimony period, the deposition together 

with a notice of reliance thereon.110 That is, the offering of a discovery deposition in evidence is 

voluntary, not mandatory.111 Every testimony deposition taken must be filed, and, when filed, 

becomes part of the record; a notice of reliance thereon is not necessary.112 

The discovery deposition of an adverse party may be taken on notice alone.113 However, the 

testimony deposition of an adverse party, unless obtained voluntarily, may only be taken 

pursuant to a subpoena issued by a United States district court.114 

108 See Jain v. Ramparts Inc., 49 USPQ2d 1429 (TTAB 1998) (motion to compel not available) and Ferro Corp. v. 

SCM Corp., supra. (should have applied to district court for order compelling answers). 

109 See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (a refusal to answer, if 

found to be unjustified, may be construed against the objecting party). See also TBMP § 707.03(d) (refusal to

answer testimony deposition question), and authorities cited therein. 

110 See TBMP § 704.09 (introducing discovery depositions into evidence). 

111 See, for example, Fischer Gesellschaft m.b.H. v. Molnar & Co., supra at 867; 37 CFR §§ 2.120(j)(1), (j)(2), and

(j)(3)(i); TBMP § 704.09 (introducing discovery depositions); and Gary Krugman, TIPS FROM THE TTAB: 

Testimony Depositions, 70 Trademark Rep. 353 (1980). 

112 See generally 37 CFR § 2.123, and TBMP § 703.01(l) (Testimony Deposition Must be Filed). 

113 See TBMP § 404.03 (Securing Attendance of Deponent). 

114 See 37 CFR § 2.120(b); Fed. R. Civ. P. 30(b); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 

(TTAB 1976); and TBMP § 703.01(f) (Securing Attendance of Adverse Party or Nonparty). For further 

information concerning differences between discovery and testimony depositions, see Fischer Gesellschaft m.b.H. v. 

Molnar & Co., supra (discovery deposition of nonparty is not admissible as evidence under a notice of reliance 

absent compelling circumstances or consent of the adverse party given the functional and historical differences

between discovery and trial); Smith International, Inc. v. Olin Corp., supra; and Gary Krugman, TIPS FROM THE 

TTAB: Testimony Depositions, supra. 

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 405 Interrogatories 

405.01 When and By Whom Served 

During the discovery period in an inter partes proceeding before the Board, any party may serve 

written interrogatories on any other party.115 Interrogatories may be served on an adversary from

the day discovery opens through the last day of the discovery period, even though the answers 

thereto will not be served until after the discovery period has closed.116 

405.02 Scope 

Interrogatories may seek any information that is discoverable under Fed. R. Civ. P. 26(b)(1).117 

An interrogatory that is otherwise proper is not necessarily objectionable merely because it 

requires a party to give an opinion or contention that relates to fact or the application of law to 

fact.118 

405.03 Limit on Number 

405.03(a) Description of Limit 

37 CFR § 2.120(d)(1) The total number of written interrogatories which a party may 

serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in 

a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark 

Trial and Appeal Board, in its discretion, may allow additional interrogatories upon 

motion therefor showing good cause, or upon stipulation of the parties. A motion for 

leave to serve additional interrogatories must be accompanied by a copy of the 

interrogatories, if any, which have already been served by the moving party, and by a 

copy of the interrogatories proposed to be served. ... 

The total number of interrogatories which a party may serve on another party, in a 

proceeding, may not exceed 75, counting subparts, except that the Board, may allow 

115 See TBMP § 403.01 (Timing of Discovery in General). 

116 See TBMP § 403.02 (Time for Service of Discovery Requests). 

117 See Fed. R. Civ. P. 33(c).

118 See Fed. R. Civ. P. 33(b); and Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d

1671, 1676 (TTAB 1988) (query whether opposer believes marks in question to be confusingly similar must be 

answered even though it requires opposer to draw legal conclusion). See also Gould Inc. v. Sanyo Electric Co., 179

USPQ 313 (TTAB 1973). 

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additional interrogatories on motion therefor showing good cause, or on stipulation of the 

parties.119 

405.03(b) Application of Limit: Sets of Interrogatories 

The numerical limit of 37 CFR § 2.120(d)(1) pertains to the total number of 

interrogatories that one party may serve on another party over the course of an entire 

proceeding, not just per set of interrogatories. Thus, if a party to a proceeding before the 

Board serves, over the course of the proceeding, two or more separate sets of 

interrogatories directed to the same party, the interrogatories in the separate sets would be 

added together for purposes of determining whether the numerical limit specified in the 

rule has been exceeded.120 

Accordingly, a party which is preparing a first set of interrogatories should reserve a 

portion of its allotted 75 interrogatories (counting subparts) to use for follow-up 

discovery, unless it is sure that it will not be serving follow-up interrogatories. 

405.03(c) Application of Limit: Multiple Marks, Etc. 

Trademark Rule 2.120(d)(1) does not provide for extra interrogatories in cases where 

more than one mark is pleaded and/or attacked by the plaintiff (whether in a single 

proceeding, or in consolidated proceedings), because in such cases, the propounding 

party may simply request that each interrogatory be answered with respect to each 

involved mark of the responding party, and the interrogatories will be counted the same 

as if they pertained to only one mark. Similarly, the rule does not provide for extra 

interrogatories in cases where there is a counterclaim, because in a proceeding before the 

Board, the discovery information needed by a party for purposes of litigating the 

plaintiff's claim usually encompasses the information needed by that party for purposes 

of litigating a counterclaim. That is, the mere fact that a proceeding involves multiple 

marks (whether in a single proceeding, or in consolidated proceedings) and/or a 

counterclaim does not mean that a party is entitled to serve 75 interrogatories, counting 

subparts, for each mark, or for each proceeding that has been consolidated, or for both the 

main claim and the counterclaim. Nor does such fact, in and of itself, constitute good 

cause for a motion for leave to serve additional interrogatories. However, a proceeding 

with multiple marks and/or a counterclaim may involve unusually numerous or complex 

119 For information on motions for leave to serve additional interrogatories, see TBMP § 519. 

120 See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1467 (TTAB 1990); and Carla 

Calcagno, TIPS FROM THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), 80 Trademark Rep.

285 (1990). 

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issues, and these are factors that will be considered in determining a motion for leave to 

serve additional interrogatories.121 

405.03(d) Application of Limit: Counting Interrogatories 

In determining whether the number of interrogatories served by one party on another 

exceeds the limit of 37 CFR § 2.120(d)(1), the Board will count each subpart within an 

interrogatory as a separate interrogatory, regardless of whether the subpart is separately 

designated (i.e., separately numbered or lettered).122 

If an interrogatory includes questions set forth as numbered or lettered subparts, each 

separately designated subpart will be counted by the Board as a separate interrogatory. 

The propounding party will, to that extent, be bound by its own numbering system, and 

will not be heard to complain that an interrogatory, although propounded with separately 

designated subparts, should nevertheless be counted as a single interrogatory because the 

interrogatory concerns a single transaction, state of facts, etc., or because the division was 

made for clarification or convenience.123 

On the other hand, if a propounding party sets forth its interrogatories as 75 or fewer 

separately designated questions (counting both separately designated interrogatories and 

separately designated subparts), but the interrogatories actually contain more than 75 

questions, the Board will not be bound by the propounding party's numbering or 

designating system. Rather, the Board will look to the substance of the interrogatories, 

and count each question as a separate interrogatory.124 For example, if two or more 

questions are combined in a single compound interrogatory, and are not set out as 

121 See Carla Calcagno, TIPS FROM THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

122 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic 

Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget 

Distributors' Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990); Brawn of California Inc. v. 

Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990); and Carla Calcagno, TIPS FROM THE TTAB: 

Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

123 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., supra; Pyttronic Industries, Inc. v. Terk Technologies

Corp., supra; and Carla Calcagno, TIPS FROM THE TTAB: Discovery Practice Under Trademark Rule 

2.120(d)(1), supra. 

124 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., supra; and Carla Calcagno, TIPS FROM THE TTAB: 

Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

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separate subparts, the Board will look to the substance of the interrogatory, and count 

each question as a separate interrogatory.125 

If an interrogatory contains both an initial question, and follow-up questions to be 

answered if the first is answered in the affirmative, the initial question and each followup question will be counted as separate interrogatories.126 

Similarly, if an interrogatory begins with a broad introductory clause ("Describe fully the 

facts and circumstances surrounding applicant's first use of the mark XYZ, including:") 

followed by several subparts ("Applicant's date of first use of the mark on the goods 

listed in the application," "Applicant's date of first use of the mark on such goods in 

commerce," etc.), the Board will count the broad introductory clause and each subpart as 

a separate interrogatory, whether or not the subparts are separately designated.127 

If an interrogatory requests information concerning more than one issue, such as 

information concerning both "sales and advertising figures," or both "adoption and use," 

the Board will count each issue on which information is sought as a separate 

interrogatory. In contrast, if an interrogatory requests "all relevant facts and 

circumstances" concerning a single issue, event, or matter; or asks that a particular piece 

of information, such as, for example, annual sales figures under a mark, be given for 

multiple years, and/or for each of the responding party's involved marks, it will be

counted as a single interrogatory.128 

The introductory instructions or preamble to a set of interrogatories will not be counted 

by the Board as interrogatories or subparts for purposes of determining whether the limit 

specified in 37 CFR § 2.120(d)(1) has been exceeded. On the other hand, the Board's 

determination, on a motion to compel, of the adequacy of an interrogatory answer will 

not be governed by the introductory instructions or preamble; the Board is not bound by 

125 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., supra; Kellogg Co. v. Nugget Distributors' 

Cooperative of America, Inc., supra; and Carla Calcagno, TIPS FROM THE TTAB: Discovery Practice Under 

Trademark Rule 2.120(d)(1), supra. 

126 See Kellogg Co. v. Nugget Distributors' Cooperative of America, Inc., supra; and Carla Calcagno, TIPS FROM

THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), supra.

127 Cf. Kellogg Co. v. Nugget Distributors' Cooperative of America, Inc., supra; and Carla Calcagno, TIPS FROM

THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), supra.

128 See Carla Calcagno, TIPS FROM THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), supra;

and Notice of Final Rulemaking, published in the Federal Register on August 22, 1989 at 54 FR 34886 and in the 

Official Gazette of September 12, 1989 at 1106 TMOG 26. 

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37 CFR § 2.120(d)(1) ... If a party upon which interrogatories have been served believes 

that the number of interrogatories served exceed the limitation specified in this 

paragraph, and is not willing to waive this basis for objection, the party shall, within the 

time for (and instead of) serving answers and specific objections to the interrogatories, 

serve a general objection on the ground of their excessive number. If the inquiring party, 

in turn, files a motion to compel discovery, the motion must be accompanied by a copy of 

the set(s) of interrogatories which together are said to exceed the limitation, and must 

otherwise comply with the requirements of paragraph (e) of this section. 

 

the instructions or preamble, and will make its own independent determination of the 

adequacy of the answer, without regard to the instructions or preamble.129 

405.03(e) Remedy for Excessive Interrogatories 

If a party on which interrogatories have been served, in a proceeding before the Board, 

believes that the number of interrogatories served exceeds the limit specified in 37 CFR § 

2.120(d)(1), and wishes to object to the interrogatories on this basis, the party must, 

within the time for (and instead of) serving answers and specific objections to the 

interrogatories, serve a general objection on the ground of their excessive number.130 A 

party should not answer what it considers to be the first seventy-five interrogatories and 

object to the rest as excessive.131 

If a general objection on the ground of excessive number is asserted, and the propounding 

party, in turn, believes that the objection is not well taken, and wishes to obtain an 

adjudication from the Board as to the sufficiency thereof, the propounding party must file 

a motion to compel discovery. The motion must be accompanied by a copy of the set(s) 

of interrogatories which together are said to exceed the limitation, and must otherwise 

comply with the requirements of Trademark Rule 2.120(e), including the requirement 

that a motion to compel be supported by a written statement from the moving party that 

such party or its attorney has made a good faith effort, by conference or correspondence, 

to resolve with the other party or its attorney the issues presented in the motion and has 

129 See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1626 (TTAB 1992) and Carla Calcagno, TIPS

FROM THE TTAB: Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

130 See 37 CFR § 2.120(d)(1) and Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND 

TRADEMARK OFFICE TTAB: The Burden Shifts: Revised Discovery Practice Under Trademark Rule 2.120(d)(1), 

82 Trademark Rep. 89 (1992). 

131 Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572, 1574 (TTAB 1990). 

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been unable to reach agreement.132 It is further recommended that the moving party set 

out its counting method showing that the number of interrogatories does not exceed 

seventy-five.133 

If, on determining a motion to compel filed in response to a general objection to 

interrogatories on the ground of excessive number, the Board finds that the 

interrogatories are excessive in number, and that the propounding party has not 

previously used up its allotted 75 interrogatories, the Board normally will allow the 

propounding party an opportunity to serve a revised set of interrogatories not exceeding 

the numerical limit. The revised set of interrogatories serves as a substitute for the 

excessive set, and thus is deemed timely if the excessive set was timely.134 

However, if the revised set is not served until after the close of the discovery period, the 

scope of the revised set may not exceed the scope of the excessive set, that is, the revised 

set may not seek information not sought in the excessive set.135 

Although there are no limitations on the number of document requests that may be 

served, a party may properly refuse to respond to a document request seeking all 

documents identified or referred to in response to interrogatories if the number of 

interrogatories is believed to be excessive.136 

132 See 37 CFR §§ 2.120(d)(1) and 2.120(e); and Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT 

AND TRADEMARK OFFICE TTAB: The Burden Shifts: Revised Discovery Practice Under Trademark Rule 

2.120(d)(1), supra. 

133 For further information concerning motions to compel discovery, see TBMP § 523. 

134 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 19 USPQ2d 1636, 1637 (TTAB 1990); Pyttronic 

Industries, Inc. v. Terk Technologies Corp., 16 USPQ2d 2055, 2056 (TTAB 1990); Kellogg Co. v. Nugget 

Distributors' Cooperative of America, Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). See also Towers, Perrin, Forster

& Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398 (TTAB 1990); Brawn of California Inc. v. Bonnie 

Sportswear Ltd., supra; and Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK

OFFICE TTAB: The Burden Shifts: Revised Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

 Cf. Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466, 1468 n.6 (TTAB 1990) 

(opposer may seek answers by taking discovery deposition of applicant). 

135 See Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., supra; Kellogg Co. v. Nugget Distributors' 

Cooperative of America, Inc., supra; and Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND 

TRADEMARK OFFICE TTAB: The Burden Shifts: Revised Discovery Practice Under Trademark Rule 2.120(d)(1), 

supra. 

136 See Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., supra at 1399 (refusal to respond to

document requests was proper; petitioner could not respond to document requests without first having to answer 

excessive interrogatories). 

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In those cases where a party which has propounded interrogatories realizes, on receipt of 

a general objection thereto on the ground of excessive number, that the interrogatories 

are, in fact, excessive in number, it is strongly recommended that the parties voluntarily 

agree to the service of a revised set of interrogatories, in the manner normally allowed by 

the Board, instead of bringing their dispute to the Board by motion to compel.137 

[NOTE: Although some of the cases cited in this TBMP section were decided under an 

earlier version of 37 CFR § 2.120(d)(1) governing the procedure for objecting to 

interrogatories on the basis of their excessive number, the decisions are otherwise 

applicable to the issues which may arise under Rule 2.120(d)(1)].138 

405.04 Responses to Interrogatories 

405.04(a) Time for Service of Responses 

Responses to interrogatories must be served within 30 days after the date of service of the 

interrogatories.139 If service of the interrogatories is made by first-class mail, "Express 

Mail," or overnight courier, the date of mailing or of delivery to the overnight courier is 

considered to be the date of service, and five extra days are allowed for responding to the 

interrogatories.140 

A party which fails to respond to interrogatories during the time allowed therefor, and 

which is unable to show that its failure was the result of excusable neglect, may be found, 

on motion to compel filed by the propounding party, to have forfeited its right to object to 

the interrogatories on their merits.141 Objections going to the merits of an interrogatory or 

137 See Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB: The 

Burden Shifts: Revised Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

138 See Helen R. Wendel, TIPS FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB: The 

Burden Shifts: Revised Discovery Practice Under Trademark Rule 2.120(d)(1), supra. 

139 See TBMP § 403.03 (Time for Service of Discovery Responses). 

140 See 37 CFR § 2.119(c), and TBMP §§ 113.05 (Additional Time for Service by Mail) and 403.03 (Time for 

Service of Discovery Responses).

141 See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (stating that the Board has great discretion in

determining whether such forfeiture should be found); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 

449 (TTAB 1979) (excusable neglect not shown where opposer was out of the country and, upon return, failed to

ascertain that responses were due); and Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975) 

(waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). 

See also Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1303 (TTAB 1987) (right to object not waived where 

although discovery responses were late, there was some confusion regarding time to respond); and MacMillan

Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (although party failed to timely respond to 

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other discovery request include claims that the information sought by the request is 

irrelevant, overly broad, unduly vague and ambiguous, burdensome and oppressive, or 

not likely to lead to the discovery of admissible evidence.142 In contrast, objections based 

on claims of privilege or confidentiality or attorney work product do not go to the merits 

of the request, but instead to a characteristic of the information sought.143 

405.04(b) Nature of Responses 

Ordinarily, a party on which interrogatories have been served should respond to them by 

stating, with respect to each interrogatory, either an answer or an objection. If an 

interrogatory is answered, the answer must be made separately and fully, in writing under 

oath. If an interrogatory is objected to, the reasons for objection must be stated in lieu of 

an answer.144 If a responding party believes that the number of interrogatories served 

exceeds the limit specified in 37 CFR § 2.120(d)(1), and wishes to object to the 

interrogatories on this basis, the party must, within the time for (and instead of) serving

answers and specific objections to the interrogatories, serve a general objection on the 

ground of their excessive number.145 

The Board prefers that the responding party reproduce each interrogatory immediately 

preceding the answer or objection thereto.146 

In some cases, the information sought in an interrogatory may be derived or ascertained 

from the business records of the responding party, or from an examination, audit, or 

inspection of those business records (including a compilation, abstract, or summary 

thereof) and the burden of deriving or ascertaining the information is substantially the 

same for the propounding party as for the responding party. In those cases, the 

responding party may answer the interrogatory by itself providing, in its written answer 

to the interrogatory, the information sought. Alternatively, the responding party may 

answer the interrogatory by specifying the records from which the information may be 

derived or ascertained, and affording to the propounding party reasonable opportunity to 

discovery, party seeking such discovery is required to make good faith effort to determine why no response has been

made before filing motion to compel). 

142 See No Fear Inc. v. Rule, supra at 1554. 

143 See No Fear Inc. v. Rule, supra at 1554 (party will generally not be found to have waived the right to make these 

objections). 

144 See Fed. R. Civ. P. 33(b). 

145 See 37 CFR § 2.120(d)(1), and TBMP § 405.03(e) (Remedy for Excessive Interrogatories).

146 See G. Douglas Hohein, TIPS FROM THE TTAB: Potpourri, 71 Trademark Rep. 163 (1981). 

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examine, audit, or inspect the records and to make copies, compilations, abstracts, or 

summaries. If the responding party elects to answer an interrogatory by specifying and 

producing business records, the specification must be in sufficient detail to permit the 

propounding party to locate and identify, as readily as can the responding party, the 

records from which the answer may be ascertained.147 

A responding party cannot simultaneously invoke the option to produce business records 

and claim the protection of a privilege as to the documents.148 

It is generally inappropriate for a party to respond to interrogatories by filing a motion 

attacking them, such as a motion to strike, a motion to suppress, a motion for a protective 

order, etc. Rather, the party ordinarily should respond by answering those interrogatories 

that it believes to be proper and stating its objections to those that it believes to be 

improper.149 

405.04(c) Signature of Responses 

Interrogatories must be answered by the party served. If the party served is a corporation, 

partnership, association, or governmental agency, the interrogatories must be answered 

by an officer or agent, who must furnish whatever information is available to the party 

served.150 

The term "agent" includes an attorney, who may answer even though he has no personal 

knowledge of the facts stated in the answers; the attorney's answers, like an officer's 

answers, must contain the information available to the party served.151 However, an 

attorney who answers interrogatories on behalf of a corporation, partnership, association, 

or governmental agency may thereafter be exposed to additional discovery and possibly 

even disqualification.152 

147 See Fed. R. Civ. P. 33(d); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) (responding party may 

not merely agree to provide access to voluminous records which may contain responsive information); and Jain v. 

Ramparts, Inc., 49 USPQ2d 1429, 1435 (TTAB 1998) (identifying prerequisites for exercising the option to produce 

business records in lieu of answering interrogatories).

148 See Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2178 (1994) and No fear Inc. v. Rule, 

supra. 

149 See TBMP § 410 (Asserting Objections to Discovery). 

150 See Fed. R. Civ. P. 33(a) and (b). 

 

151 See Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663, 1665 (TTAB 1988). 

152 See 37 CFR § 10.63, and Allstate Insurance Co. v. Healthy America Inc., supra. 

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Answers to interrogatories must be signed by the person making them, and objections to 

interrogatories must be signed by the attorney making them.

153 

406 Requests for Production of Documents and Things 

406.01 When and By Whom Served 

During the discovery period in an inter partes proceeding before the Board, any party may serve 

requests for production of documents and things on any other party.154 Requests for production 

may be served from the day discovery opens through the last day of the discovery period, even 

though the answers thereto may not be served until after the discovery period has closed.155 

If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is 

requested that the deponent bring designated documents to the deposition), the requests for 

production must be served at least 35 days prior to the scheduled date of the deposition if service 

of the requests for production is made by first-class mail, "Express Mail," or overnight courier, 

and at least 30 days prior to the deposition if service of the requests for production is made by 

one of the other methods specified in 37 CFR § 2.119(b).156 

If a discovery deposition deponent is a nonparty witness residing in the United States157

production of designated documents by the witness at the deposition may be obtained by means 

of a subpoena duces tecum.158 A subpoena is unnecessary, however, if the nonparty witness is 

willing to produce the documents voluntarily. 

406.02 Scope 

Fed. R. Civ. P. 34(a) Scope. Any party may serve on any other party a request (1) to produce 

and permit the party making the request, or someone acting on the requestor's behalf, to inspect 

153 See Fed. R. Civ. P. 33(b)(2).

154 See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978); and TBMP 

§ 403.01 (Timing of Discovery In General). 

155 See TBMP § 403.02 (Time for Discovery Responses). 

156 See Fed. R. Civ. P. 34(b); 37 CFR § 2.119(c); and TBMP §§ 113.04 (Manner of Service), 113.05 (Additional

Time for Service by Mail), and 403.03 (Time for Service of Discovery Responses). 

157 See TBMP § 404.03(a)(2) (Nonparty Residing in U.S.). 

158 See Fed. R. Civ. P. 45 and 35 U.S.C. § 24.

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and copy, any designated documents (including writings, drawings, graphs, charts, photographs, 

phonorecords, and other data compilations from which information can be obtained, translated, 

if necessary, by the respondent through detection devices into reasonably usable form), or to 

inspect and copy, test, or sample any tangible things which constitute or contain matters within

the scope of Rule 26(b) and which are in the possession, custody or control of the party upon 

whom the request is served; or (2) to permit entry upon designated land or other property in the 

possession or control of the party upon whom the request is served for the purpose of inspection 

and measuring, surveying, photographing, testing, or sampling the property or any designated 

object or operation thereon, within the scope of Rule 26(b).

The scope of a request for production, in an inter partes proceeding before the Board, is governed 

by Fed. R. Civ. P. 34(a), which in turn refers to Fed. R. Civ. P. 26(b).159

Generally, a party does not have an obligation to locate documents that are not in its possession, 

custody or control and produce them during discovery.160 

Because proceedings before the Board involve only the right to register trademarks, the request 

for entry upon land for inspection and other purposes is rarely, if ever, used in Board 

proceedings.

406.03 Elements of Request for Production; Place of Production 

Fed. R. Civ. P. 34(b) Procedure. The request shall set forth, either by individual item or by 

category, the items to be inspected and describe each with reasonable particularity. The request 

shall specify a reasonable time, place, and manner of making the inspection and performing the 

related acts. ... 

37 CFR § 2.120(d)(2) The production of documents and things under the provisions of Rule 34 

of the Federal Rules of Civil Procedure will be made at the place where the documents and 

things are usually kept, or where the parties agree, or where and in the manner which the 

Trademark Trial and Appeal Board, upon motion, orders. 

A request for production must include the elements specified in Fed. R. Civ. P. 34(b), as set forth 

above. 

159 For a discussion of the scope of discovery permitted under Fed. R. Civ. P. 26(b), see TBMP § 402.

160 See Fed. R. Civ. P. 34(c) for discovery of documents in possession of a third party. See also Harjo v. ProFootball Inc., 50 USPQ2d 1705, 1715 (TTAB 1999), rev'd on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225

(D.D.C. 2003).

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The place of production is governed by 37 CFR § 2.120(d)(2).161 However, in Board cases, 

parties often extend each other the courtesy of producing requested documents by copying the 

documents and forwarding them to the requesting party.162 

On motion pursuant to 37 CFR § 2.120(d)(2), the Board may order the place and the manner in 

which the documents are to be produced. The Board may, for example, order that the responding 

party photocopy the documents designated in a request and mail the photocopies to the 

requesting party when the responding party has unreasonably refused to produce documents.163 

406.04 Responses to Requests for Production 

406.04(a) Time for Service of Responses 

Responses to requests for production must be served within 30 days after the date of 

service of the requests.164 If service of the requests is made by first-class mail, "Express 

Mail," or overnight courier, the date of mailing or of delivery to the overnight courier is 

considered to be the date of service, and five extra days are allowed for responding to the 

requests.165 

A party which fails to respond to requests for production during the time allowed 

therefor, and which is unable to show that its failure was the result of excusable neglect,

may be found, on motion to compel filed by the propounding party, to have forfeited its 

right to object to the requests on their merits.166 

161 See also Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1998); Unicut Corp. v. 

Unicut, Inc., 220 USPQ 1013, 1015 (TTAB 1983); Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 

195 (TTAB 1976); and Janet E. Rice, TIPS FROM THE TTAB: Recent Changes in the TTAB Discovery Rules, 74 

Trademark Rep. 449, 451 (1984). 

162 See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000) and Electronic Industries Association v. Potega, 

supra. 

163 See No Fear Inc. v. Rule, supra at 1555 (at the responding party's expense as a discovery sanction); Unicut Corp. 

v. Unicut, Inc., supra (at the requesting party's expense); Saul Lefkowitz and Janet E. Rice, Adversary Proceedings 

Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 385 (1985); and Janet E. Rice, TIPS FROM

THE TTAB: Recent Changes in the TTAB Discovery Rules, supra. Cf. Electronic Industries Association v. Potega, 

supra.

164 See Fed. R. Civ. P. 34(b), 37 CFR § 2.120(a) and TBMP § 403.03 (Time for Service of Responses). 

165 See 37 CFR § 2.119(c) and TBMP §§ 113.05 (Additional Time for Mail) and 403.03 (Time for Responses). 

166 See TBMP §§ 403.03 (Time for Responses) and 405.04(a) (Time for Responses to Interrogatories) and cases 

cited therein. See also No Fear Inc. v. Rule, supra (applicant, having waived its right to object to discovery requests 

on their merits was not entitled to raise objection regarding place of production of documents). 

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406.04(b) Nature of Responses 

A response to a request for production of documents and things must state, with respect 

to each item or category of documents or things requested to be produced, that inspection 

and related activities will be permitted as requested, unless the request is objected to, in 

which case the reasons for objection must be stated.167 If objection is made to only part 

of an item or category, the part must be specified. A party that produces documents for 

inspection must produce them as they are kept in the usual course of business, or must 

organize and label them to correspond with the categories in the request.168 

It is generally inappropriate for a party to respond to requests for production by filing a 

motion attacking them, such as a motion to strike, a motion to suppress or a motion for a 

protective order. Rather, the party ordinarily should respond by indicating, with respect 

to those requests that it believes to be proper, that inspection and related activities will be 

permitted, and by stating reasons for objection with respect to those requests that it 

believes to be improper.169 

 

 407 Requests for Admissions 

407.01 When and By Whom Served 

During the discovery period in an inter partes proceeding before the Board, any party may serve 

written requests for admissions on any other party.170 Like interrogatories and requests for 

production of documents, requests for admission may be served on an adversary from the day the 

discovery period opens through the last day of the discovery period, even though the answers 

thereto will not be due until after the discovery period has closed.171

 

167 See Fed. R. Civ. P. 34(b) and No Fear Inc. v. Rule, supra at 1555 (a proper response requires stating as to each 

request either that there are responsive documents and they will be produced (or withheld on a claim of privilege) or 

stating party has no responsive documents).

168 See Fed. R. Civ. P. 34(b) and No Fear Inc. v. Rule, supra at 1556, citing 8A Wright, Miller & Marcus, Federal 

Practice and Procedure: Civil 2d § 2213 (2d ed. 1994) (party may not simply dump large quantities of documents 

containing responsive as well as unresponsive documents). 

169 See TBMP § 410 (Asserting Objections). 

170 See Fed. R. Civ. P. 36(a) and TBMP § 403.01 (Time of Discovery In General). 

 

171 See TBMP § 403.02 (Time for Requests).

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407.02 Scope and Nature of Requests for Admission 

Fed. R. Civ. P. 36(a) Request for Admission. A party may serve upon any other party a written 

request for the admission, for purposes of the pending action only, of the truth of any matters 

within the scope of Rule 26(b)(1) set forth in the request that relate to statements or opinions of 

fact or of the application of law to fact, including the genuineness of any documents described in 

the request. Copies of documents shall be served with the request unless they have been or are 

otherwise furnished or made available for inspection and copying. ... 

Each matter of which an admission is requested shall be separately set forth. ... 

The scope and nature of requests for admission, in inter partes proceedings before the Board, are 

governed by Fed. R. Civ. P. 36(a), which in turn refers to Fed. R. Civ. P. 26(b)(1).172 

Requests for admission are particularly useful for determining, prior to trial, which facts are not 

in dispute, thereby narrowing the matters that must be tried.173 These requests are also useful as a 

means of facilitating the introduction into evidence of documents produced by an adversary in 

response to a request for production of documents.174 

407.03 Responses to Requests for Admission 

407.03(a) Time for Service of Responses 

Responses to requests for admission must be served within 30 days after the date of 

service of the requests.175 If service of the requests is made by first-class mail, "Express 

Mail," or overnight courier, the date of mailing or of delivery to the overnight courier is 

considered to be the date of service, and five extra days are allowed for responding to the 

requests.176 

If a party on which requests for admission have been served fails to timely respond 

thereto, the requests will stand admitted unless the party is able to show that its failure to 

172 For a discussion of the scope of discovery permitted under Fed. R. Civ. P. 26(b)(1), see TBMP § 402.01. See

also TBMP § 402.02 (Limitations).

173 Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 

Trademark Rep. 323, 385 (1985). 

174 See TBMP § 403.05(b) (Facilitates Introduction). 

175 See TBMP § 403.03 (Time for Service of Responses). 

176 See 37 CFR § 2.119(c), and TBMP §§ 113.05 (Additional Time) and 403.03 (Time for Discovery Responses). 

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timely respond was the result of excusable neglect177 or unless a motion to withdraw or 

amend the admissions is filed pursuant to Fed. R. Civ. P. 36(b) and granted by the 

Board.178 

For information concerning motions pursuant to Fed. R. Civ. P. 36(b) to withdraw or 

amend admissions, see TBMP § 525.

407.03(b) Nature of Responses 

Responses to requests for admission must be made in writing, and should include an 

answer or objection to each matter of which an admission is requested.179 

The Board prefers that the responding party reproduce each request immediately 

preceding the answer or objection thereto.180 

An answer must admit the matter of which an admission is requested; deny the matter; or 

state in detail the reasons why the responding party cannot truthfully admit or deny the 

matter. "A denial shall fairly meet the substance of the requested admission, and when 

good faith requires that a party qualify an answer or deny only a part of the matter of 

which an admission is requested, the party shall specify so much of it as is true and 

qualify or deny the remainder. An answering party may not give lack of information or 

177 See Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2064 n.1 (TTAB 1990) (to the 

extent applicant by its motion sought to be relieved of the untimeliness of its response, motion was not well taken 

because the reasons for failing to timely respond did not constitute excusable neglect). 

 

178 See Fed. R. Civ. P. 6(b) and 36(a); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., supra at 2065 (TTAB 

1990) ("...where failure to timely respond to a request for admission has harsh result, Rule 36(b) provides method 

for obtaining relief."); American Automobile Ass'n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d

1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991) (court may not sua sponte withdraw or ignore admissions without a 

motion to withdraw or amend); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d

1719, 1721 (TTAB 1989) (presentation of merits of case aided by relieving opposer of admission on relevant issue 

and prejudice avoided by allowing applicant limited discovery as to the amended answer; and BankAmerica Corp. v.

International Travelers Cheque Co., 205 USPQ 1233, 1235 (TTAB 1979) (motion to withdraw admissions by

default denied, but to extent admissions are contradicted by evidence, they will not be relied on for purposes of

deciding whether entry of summary judgment is appropriate). See also Questor Corp. v. Dan Robbins & Associates, 

Inc., 199 USPQ 358 (TTAB 1978), aff'd, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979). 

 Cf. Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2 

USPQ2d 1303 (TTAB 1987); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448 (TTAB 1979);

MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979); and Crane Co. v. Shimano Industrial Co., 

184 USPQ 691 (TTAB 1975). 

179 See Fed. R. Civ. P. 36(a).

180 See G. Douglas Hohein, TIPS FROM THE TTAB: Potpourri, 71 Trademark Rep. 163 (1981). 

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Any matter admitted (either expressly, or for failure to timely respond) under Fed. R. Civ. P. 36 

is conclusively established unless the Board, on motion, permits withdrawal or amendment of the 

admission.

 

knowledge as a reason for failure to admit or deny unless the party states that the party 

has made reasonable inquiry and that the information known or readily obtainable by the 

party is insufficient to enable the party to admit or deny."181 

If the responding party objects to a request for admission, the reasons for objection must 

be stated. If a responding party believes that a matter of which an admission has been 

requested presents a genuine issue for trial, the party may not object to the request on that 

ground alone. Rather, the party may deny the matter; alternatively, the party may set 

forth reasons why it cannot admit or deny the matter.182 

It is generally inappropriate for a party to respond to requests for admission by filing a 

motion attacking them, such as a motion to strike, a motion to suppress, a motion for a 

protective order, etc. Rather, the party ordinarily should respond by answering those 

requests that it believes to be proper and stating its reasons for objection to those that it 

believes to be improper.183 

407.03(c) Signature of Responses 

Answers and objections to requests for admission may be signed either by the responding 

party, or by its attorney.184 

407.04 Effect of Admission 

185 

 

For further information concerning motions to withdraw or amend an admission, see TBMP § 

525. 

181 Fed. R. Civ. P. 36(a).

182 See Fed. R. Civ. P. 36(a).

183 See TBMP § 410 (Asserting Objections). 

184 See Fed. R. Civ. P. 36(a).

185 See Fed. R. Civ. P. 36(b). See also American Automobile Ass’n v. AAA Legal Clinic of Jefferson Crooke, P.C.,

930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991) (an admission not withdrawn or amended cannot be rebutted 

by contrary testimony at trial). 

 

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An admission made by a party under Fed. R. Civ. P. 36 is only for the purpose of the pending 

proceeding. It is not an admission for any other purpose, nor may it be used against that party in 

any other proceeding.186 

 

408 Duties to Cooperate, Search Records, Supplement 

408.01 Duty to Cooperate 

The Board expects parties (and their attorneys or other authorized representatives) to cooperate 

with one another in the discovery process, and looks with extreme disfavor on those who do not. 

Each party and its attorney or other authorized representative has a duty not only to make a good 

faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to 

seek only such discovery as is proper and relevant to the issues in the case.187

It should be noted, in this regard, that under the provisions of Fed. R. Civ. P. 26(g)(2), the 

signature of an attorney or party to a discovery request, response, or objection:188 

. . . constitutes a certification that to the best of the signer's knowledge, 

information, and belief, formed after a reasonable inquiry, the request, response, 

or objection is: 

(A) consistent with [the Federal Rules of Civil Procedure] and warranted 

by existing law or a good faith argument for the extension, modification, 

or reversal of existing law; 

(B) not interposed for any improper purpose, such as to harass or to cause 

unnecessary delay or needless increase in the cost of litigation; and

186 See Fed. R. Civ. P. 36(b). 

187 See, for example, Fed. R. Civ. P. 26(g); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13

USPQ2d 1719, 1721 n.4 (TTAB 1989); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10

USPQ2d 1671, 1675 (TTAB 1988) (in view of parties' impasse, Board was burdened with resolving numerous

requests for discovery); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (both parties failed to

cooperate, thus saddling Board with needless motions); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667

(TTAB 1986) (parties must narrow amount of disputed requests to reasonable number); Unicut Corp. v. Unicut, Inc., 

222 USPQ 341, 344 (TTAB 1984) (failure to cooperate in discovery resulted in entry of sanctions); Medtronic, Inc. 

v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (it was clear from number and nature of opposer's 

discovery requests and applicant's blanket objections thereto that neither party was cooperating). See also C. H.

Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506 (TTAB 1980); C. H. Stuart Inc. v. S. S. Sarna, Inc., 212 USPQ

386 (TTAB 1980); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975); Tektronix, Inc. v. Tek

Associates, Inc., 183 USPQ 623 (TTAB 1974); and Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477

(TTAB 1974). 

 Cf. Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696 (Fed. Cir. 1990). 

188 See also Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990). Cf. 37 CFR §

10.18(a); Fed. R. Civ. P. 11; and TBMP § 106.02 (Signature of Submissions). 

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(C) not unreasonable or unduly burdensome or expensive, given the needs 

of the case, the discovery already had in the case, the amount in 

controversy, and the importance of the issues at stake in the litigation. 

Provision is made, in Fed. R. Civ. P. 26(g), for the imposition of appropriate sanctions if a 

certification is made in violation of the rule. 

Because the signature of a party or its attorney to a request for discovery constitutes a 

certification by the party or its attorney that, inter alia, the request is warranted, consistent with 

the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party 

ordinarily will not be heard to contend that a request for discovery is proper when propounded by 

the party itself but improper when propounded by its adversary. A contention of this nature will 

be entertained only if it is supported by a persuasive showing of reasons why the discovery 

request is proper when propounded by one party but improper when propounded by another.189 

 

408.02 Duty to Search Records 

A party served with a request for discovery has a duty to thoroughly search its records for all 

information properly sought in the request, and to provide such information to the requesting 

party within the time allowed for responding to the request. A responding party which, due to an 

incomplete search of its records, provides an incomplete response to a discovery request, may 

not thereafter rely at trial on information from its records which was properly sought in the 

discovery request but was not included in the response thereto (provided that the requesting party 

raises the matter by objecting to the evidence in question) unless the response is supplemented in 

a timely fashion pursuant to Fed. R. Civ. P. 26(e).190 

408.03 Duty to Supplement Discovery Response 

Fed. R. Civ. P. 26(e) Supplementation of ... Responses. A party who has ... responded to a 

request for discovery with a ... response is under a duty to supplement or correct the ... response 

to include information thereafter acquired if ordered by the court or in the following 

circumstances: 

 * * * * 

(2) A party is under a duty seasonably to amend a prior response to an interrogatory, request for 

production, or request for admission if the party learns that the response is in some material 

respect incomplete or incorrect and if the additional or corrective information has not otherwise 

been made known to the other parties during the discovery process or in writing.

189 See, for example, Miss America Pageant v. Petite Productions, Inc., supra at 1069 (Board was persuaded that

certain interrogatories would be unduly burdensome). 

190 See Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987). 

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The duty to supplement discovery responses in proceedings before the Board is governed by Fed. 

R. Civ. P. 26(e)(2).191 Under that rule, a party that has responded to a request for discovery with 

a response is under a duty to supplement or correct the response to include information thereafter 

acquired under the particular circumstances specified in paragraph (e)(2).192 In addition, a duty 

to supplement responses may be imposed by order of the Board.193

 409 Filing Discovery Requests and Responses With Board 

37 CFR § 2.120(j) Use of discovery deposition, answer to interrogatory, or admission. 

 * * * * 

(6) Paragraph (j) of this section will not be interpreted to preclude the reading or the use of a 

discovery deposition, or answer to an interrogatory, or admission as part of the examination or 

cross-examination of any witness during the testimony period of any party. 

 * * * * 

(8) Requests for discovery, responses thereto, and materials or depositions obtained through the 

discovery process should not be filed with the Board except when submitted with a motion 

relating to discovery, or in support of or response to a motion for summary judgment, or under a 

notice of reliance during a party's testimony period. Papers or materials filed in violation of this 

paragraph may be returned by the Board. 

Discovery requests, discovery responses, and materials or depositions obtained through the 

discovery process, should not be filed with the Board except when submitted: 

(1) With a motion relating to discovery [e.g., motion to compel, motion to 

determine the sufficiency of an answer or objection to a request for admission, 

motion for leave to serve additional interrogatories]; 

(2) In support of or in response to a motion for summary judgment; 

(3) Under a notice of reliance during a party's testimony period; or 

(4) As exhibits to a testimony deposition.

191 See 37 CFR § 2.116(a). 

192 See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998).

193 Cf. P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d

328, 196 USPQ 801 (CCPA 1978); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); Andersen 

Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ 431 (TTAB 1985); and JSB International, Inc. v. Auto Sound North, 

Inc., 215 USPQ 60 (TTAB 1982). 

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Authorities and cases regarding the filing of discovery materials with the Board are cited in the 

note below.194

In addition, when a party objects to proffered evidence on the ground that it should have been, 

but was not, provided in response to a request for discovery, a copy of the pertinent discovery 

request(s) and response(s) should be submitted in support of the objection. 

Discovery papers or materials filed with the Board under circumstances other than those 

specified above may be returned to the party that filed them.

195 

410 Asserting Objections to Requests for Discovery; Motions Attacking 

 Requests for Discovery 

The rules governing discovery in proceedings before the Board provide both for the assertion of 

objections to discovery requests believed to be improper, and a means (namely, the motion to 

compel, in the case of discovery depositions, interrogatories, and requests for production; and the 

motion to test the sufficiency of answers or objections, in the case of requests for admission) for 

testing the sufficiency of those objections. It is generally inappropriate for a party to respond to 

a request for discovery by filing a motion attacking it, such as a motion to strike, a motion to 

suppress or a motion for a protective order. Rather, the party ordinarily should respond by 

providing the information sought in those portions of the request that it believes to be proper, and 

stating its objections to those that it believes to be improper.196

194 See 37 CFR §§ 2.120(j)(6) and (j)(8). See also Chicago Corp. v. North American Chicago Corp., 16 USPQ2d

1479, 1480 (TTAB 1990) (regarding combined sets of interrogatories which are subject to a motion relating to 

discovery); Kellogg Co. v. Pack'Em Enterprises, Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990), aff'd, 951 F.2d

330, 21 USPQ2d 1142 (Fed. Cir. 1991) (regarding a motion for summary judgment); Midwest Plastic Fabricators 

Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067, 1070 (TTAB 1987) (respondent again reminded that

discovery materials are not to be filed with the Board except under specified circumstances); and Fischer

Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 865 (TTAB 1979) (filing of a discovery deposition not 

required or desired in the absence of a notice of reliance); and G. Douglas Hohein, TIPS FROM THE TTAB: 

Potpourri, 71 Trademark Rep. 163, 166-167 (1981) (but note that this article was written prior to the rule changes 

noted above).

195 See 37 CFR § 2.120(j)(8).

196 See Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1863 (TTAB 2001) (burden is on the party seeking

the information to establish why it is relevant); Luemme Inc. V. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 

1999) and Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (party must articulate 

objections with particularity). See also Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 

USPQ 127 (TTAB 1976); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ 690 (TTAB 1975);

Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974); Dow Corning Corp. v. Doric Corp., 183

USPQ 126 (TTAB 1974); and Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606 (TTAB 

1974). 

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Further, if a party on which interrogatories have been served in a proceeding before the Board, 

believes that the number of interrogatories served exceeds the limit specified in 37 CFR § 

2.120(d)(1), and wishes to object to the interrogatories on this basis, the responding party must, 

within the time for (and instead of) serving answers and specific objections to the interrogatories, 

serve a general objection on the ground of their excessive number; a motion for a protective 

order is not the proper method for raising the objection of excessive number.197 

Nevertheless, there are some situations in which a party may properly respond to a request for 

discovery by filing a motion attacking it. In cases where, for example, a request for discovery 

constitutes clear harassment, or where a defendant on which a request for discovery has been 

served is not and was not, at the time of the commencement of the proceeding, the real party in 

interest, the party on which the request was served may properly respond to it by filing a motion 

for a protective order that the discovery not be had, or be had only on specified terms and 

conditions.198 

If the discovery sought is a discovery deposition, and the request therefor constitutes harassment, 

there is insufficient notice, etc., the party on which the request was served may file either a 

motion to quash the notice of deposition or a motion for a protective order.199 

 411 Remedy for Failure to Provide Discovery 

411.01 Interrogatories or Requests for Production 

If any party fails to answer any interrogatory, the party seeking discovery may file a motion with 

the Board for an order to compel an answer. Similarly, if any party fails to produce and permit 

the inspection and copying of any document or thing, the party seeking discovery may file a 

motion for an order to compel production and an opportunity to inspect and copy.200 

197 See 37 CFR § 2.120(d)(1); TBMP § 405.03(e) (Remedy for Excessive Interrogatories); and Helen R. Wendel, 

TIPS FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE TTAB: The Burden Shifts: Revised

Discovery Practice Under Trademark Rule 2.120(d)(1), 82 Trademark Rep. 89 (1992). 

198 See, for example, 37 CFR § 2.120(f); Fed. R. Civ. P. 26(c); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 

1764 (TTAB 1999) (protective order against taking deposition of high-level official granted); Gold Eagle Products 

Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted since obligation to

respond to discovery requests rests with assignee); and Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 

2049 (TTAB 1988) (motion to quash one notice to depose person who was no longer an employee and another

notice to depose person with authority to negotiate settlement, granted). 

199 See, for example, FMR Corp. v. Alliant Partners, supra at 1763 (motion for protective order) and Kellogg Co. v. 

New Generation Foods Inc., supra (motion to quash). See also TBMP § 521 (Motion to Quash Notice of

Deposition) and TBMP § 526 (Motion for a Protective Order). 

200 See 37 CFR § 2.120(e). Cf. Fed. R. Civ. P. 37(a)(2)(B). For information concerning motions to compel, see

TBMP § 523.

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411.02 Requests for Admission

If a party on which requests for admission have been served fails to file a timely response 

thereto, the requests will stand admitted unless the party is able to show that its failure to timely 

respond was the result of excusable neglect; or unless a motion to withdraw or amend the 

admissions is filed pursuant to Fed. R. Civ. P. 36(b), and granted by the Board.201 

If a propounding party is dissatisfied with a responding party's answer or objection to a request 

for admission, and wishes to obtain a ruling on the sufficiency thereof, the propounding party 

may file a motion with the Board to determine the sufficiency of the answer or objection.

202 If 

the Board determines that an answer does not comply with the requirements of Fed. R. Civ. P. 

36(a), it may order either that the matter is admitted or that an amended answer be served. If the 

Board determines that an objection is not justified, it will order that an answer be served.203 

411.03 Discovery Depositions 

If a party fails to designate a person pursuant to Fed. R. Civ. P. 30(b)(6) or Fed. R. Civ. P. 

31(a)(3), or if a party or such designated person, or an officer, director or managing agent of a 

party, fails to attend a discovery deposition, or fails to answer any question propounded in a 

discovery deposition, the party seeking discovery may file a motion with the Board for an order 

to compel a designation, or attendance at a deposition, or an answer.204

A discovery deposition is taken out of the presence of the Board, and if a witness objects to, and 

refuses to answer, a particular question, and the propounding party wishes to obtain an 

immediate ruling on the propriety of the objection, it may do so only by adjourning the 

deposition and applying, under 35 U.S.C. § 24, to the Federal district court, in the jurisdiction 

where the deposition is being taken, for an order compelling the witness to answer.205 In the 

absence of a court order compelling an answer, the propounding party's only alternative, if it 

201 See TBMP § 407.03(a) (Time for Responses). For information on motions to withdraw or amend admissions,

see TBMP § 525. 

202 See 37 CFR § 2.120(h), and Fed. R. Civ. P. 36(a).

203 See Fed. R. Civ. P. 36(a). For information on motions to determine the sufficiency of answers or objections to

requests for admission, see TBMP § 524.

204 See 37 CFR § 2.120(e). Cf. Fed. R. Civ. P. 37(a). For information concerning motions to compel, see TBMP § 

523. 

205 See Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974). Cf. Ferro Corp. v. SCM Corp., 

219 USPQ 346, 351 (TTAB 1983) (where a witness refuses to answer a question in a testimony deposition). See 

also S. Rudofker's Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499 (TTAB 1969); and Bordenkircher v. Solis 

Entrialgo y Cia., S. A., 100 USPQ 268, 276-278 (Comm'r 1953). 

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wishes to compel an answer, is to complete the deposition and then file a motion to compel with 

the Board.206 

411.04 Discovery Sanctions 

In inter partes proceedings before the Board, a variety of sanctions may be imposed, in 

appropriate cases, for failure to provide discovery. The sanctions which may be entered by the 

Board include, inter alia, 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; drawing adverse 

inferences against uncooperative party; prohibiting the disobedient party from introducing 

designated matters in evidence; and entering judgment against the disobedient party. However, 

the Board will not hold any person in contempt, or award any expenses, including attorneys' fees, 

to any party.207 

For further information concerning discovery sanctions and when they are available, see TBMP 

§ 527.01. 

 412 Protective Orders 

37 CFR § 2.120(f) Upon motion by a party from whom discovery is sought, and for good cause, 

the Trademark Trial and Appeal Board may make any order which justice requires to protect a 

party from annoyance, embarrassment, oppression, or undue burden or expense, including one 

or more of the types of orders provided by clauses (1) through (8), inclusive, of Rule 26(c) of the 

Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in 

part, the Board may, on such conditions (other than an award of expenses to the party prevailing 

on the motion) as are just, order that any party provide or permit discovery. 

412.01 In General 

On motion, showing good cause, by a party from which discovery is sought, the Board may 

make any order which justice requires to protect a party from annoyance, embarrassment, 

oppression, or undue burden or expense, including one or more of the types of orders described 

in clauses (1) through (8) of Fed. R. Civ. P. 26(c).208 

206 See 37 CFR § 2.120(e), and Neville Chemical Co. v. Lubrizol Corp., supra.

207 See 37 CFR §§ 2.120(g)(1) and (2), and 2.127(f), and TBMP § 502.05 (Attorneys’ Fees). 

 

208 See 37 CFR § 2.120(f). See also TBMP §§ 527.01(a) (sanctions), and 703.01(p) (confidential materials). 

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For further information on motions for protective orders, see TBMP § 410 (Motions Attacking 

Requests for Discovery), TBMP § 412.02 (Protective Order Regarding Confidential and Trade 

Secret Information) and TBMP § 526 (Motion for a Protective Order). 

 

412.02 Protective Order Regarding Confidential and Trade Secret Information 

412.02(a) Upon Motion 

When the Board grants a motion for a protective order with respect to confidential or

trade secret information, it may direct either the disclosing party, or the parties together, 

to prepare an order with terms that are mutually agreeable to them.

209 Other alternatives 

involve accepting a protective order proffered by a party, or ordering parties to adhere to 

Board’s standard protective order.210 If the Board orders that the parties abide by the 

terms of this order, the parties may subsequently agree to modifications or additions, 

subject to Board approval. 

412.02(b) Upon Stipulation 

Parties to proceedings before the Board may, and often do, enter into stipulated protective 

orders, that is, agreements as to specified procedures and restrictions that shall govern the 

disclosure of any confidential or trade secret information.211 The Board has a 

standardized protective order which parties are free to use or modify as appropriate. The 

standardized protective order can be found in the Appendix of Forms in this manual and 

on the USPTO web site at: www.uspto.gov. 

 

If the parties enter into a stipulated protective order, a copy of the executed agreement 

should be filed with the Board so that the Board is on notice that confidential material 

may be filed in connection with the proceeding. The Board will acknowledge receipt of 

the agreement, but the parties should not wait for the Board's acknowledgement to 

conduct themselves in accordance with the terms of their agreement. The terms of the 

agreement are binding as of the date the agreement is signed.212 

209 See, for example, Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 

1989); and Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974). 

210 The standard protective order can be found in the Appendix of Forms in this manual and on the Office web site

at: www.uspto.gov. 

211 See Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 653 

(1981). 

 

212 See TBMP § 412.05 (Signature of Protective Agreement). 

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Only confidential or trade secret information should be filed pursuant to a stipulated 

protective order. Such an order may not be used as a means of circumventing paragraphs 

(d) and (e) of 37 CFR § 2.27, which provide, in essence, that except for matter filed under 

seal pursuant to a protective order issued by a court or by the Board, the file of a 

published application or issued registration, and all proceedings relating thereto, are 

available for public inspection.213

412.02(c) In Camera Inspection

In situations where there is a dispute between the parties to a proceeding as to the 

relevance and/or confidentiality of a document, or portions thereof, sought to be 

discovered, and the Board cannot determine from the arguments of the parties, on motion 

to compel production, whether the document is relevant and/or confidential, the Board 

may request that a copy of the document be submitted to the Board for an in camera 

inspection, after which the document will be returned to the party which submitted it.214 

412.02(d) Contents of Protective Order 

Typically, a protective order dealing with confidential or trade secret information 

contains provisions such as the following: 

(1) A definition of the type of material to be considered confidential or trade secret 

information. 

(2) A description of the manner in which confidential or trade secret information is to be 

handled. 

(3) A requirement that a party claiming confidentiality or trade secret designate the 

information covered by the claim prior to disclosure of the information to the discovering 

party. 

(4) A provision that a party may not designate information as confidential or trade secret 

unless the party has a reasonable basis for believing that the information is, in fact, 

confidential or trade secret in nature.

(5) A provision that information designated by the disclosing party as confidential or

trade secret may not include information which, at or prior to disclosure thereof to the 

213 See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000) and Rany L. Simms, TIPS 

FROM THE TTAB: Stipulated Protective Agreements, supra. 

214 See Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, supra. 

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summaries, and abstracts thereof. 

discovering party, is known to or independently developed by the discovering party; or is 

public knowledge or becomes available to the public without violation of the agreement. 

(6) A provision that information designated by the disclosing party as confidential or

trade secret may not include information that, after the disclosure thereof, is revealed to 

the public by a person having the unrestricted right to do so. 

(7) A provision that information designated by the disclosing party as confidential or 

trade secret may not include information which is acquired by the discovering party from

a third party, which lawfully possesses the information and/or owes no duty of 

nondisclosure to the party providing discovery. 

(8) A specification of the persons to whom confidential or trade secret information may 

be disclosed (e.g., outside counsel; house counsel; counsel's necessary legal and clerical 

personnel). 

(9) A provision that all persons to whom confidential or trade secret information is 

disclosed shall be advised of the existence and terms of the protective order. 

(10) A provision that the discovering party will not disclose or make use of confidential 

or trade secret information provided to it under the order except for purposes of the 

proceeding in which the information is provided.

(11) A means for resolving disputes over whether particular matter constitutes 

confidential or trade secret information. 

(12) A provision that if material designated as confidential or trade secret is made of 

record in the proceeding, it shall be submitted to the Board in a separate sealed envelope 

or other sealed container bearing the proceeding number and name, an indication of the 

general nature of the contents of the container, and, in large letters, the designation 

"CONFIDENTIAL." 

(13) A statement that at the end of the proceeding, each party shall return to the 

disclosing party all confidential information and materials, including all copies, 

The Board’s standardized protective order can be found in the Appendix of Forms in this manual 

and on the USPTO web site at: www.uspto.gov. 

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For additional information concerning the contents of a protective order, see the cases and 

authorities cited in the note below.

215

412.03 Signature of Protective Order 

Stipulated protective orders may be signed either by the parties thereto, or by their attorneys, or 

by both. However, once a proceeding before the Board has been finally determined, the Board 

has no further jurisdiction over the parties thereto. Thus, it may be advisable for both the parties 

and their attorneys to sign a stipulated protective order, so that it is clear that they are all bound 

thereby; that they have created a contract which will survive the proceeding; and that there may 

be a remedy at court for any breach of that contract which occurs after the conclusion of the 

Board proceeding.216 

Imposition of the terms of a protective order by the Board is indicated by signature of a Board 

attorney or Administrative Trademark Judge at the conclusion of the order. 

The terms of the protective order are binding from the date the parties or their attorneys sign the 

order, in standard form or as modified or supplemented, or from the date of imposition by a 

Board attorney or judge. 

412.04 Filing Confidential Materials With Board 

37 CFR § 2.27 Pending trademark application index; access to applications. 

* * * * 

(d) Except as provided in paragraph (e) of this section, after a mark has been registered, or 

published for opposition, the file of the application and all proceedings relating thereto are 

available for public inspection ... 

215 See Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 653 

(1981). See also Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000) (stipulated

protective agreement should include provision that it may be amended without leave of Board); Johnston

Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (in addition to

provisions mandated by Board, protective order may contain other provisions as are agreeable to parties); and

Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (Board required provision that 

information furnished by opposer would be confined to applicant's attorneys). 

216 See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 TTAB 2000) (Board's jurisdiction

would not extend to third-party signatory); and Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 

1555 (TTAB 1987). See also, with respect to violation of a Board protective order after the conclusion of the Board 

proceeding, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698 (9th Cir. 1991) (bringing

confidential business documents into the public record in violation of the Board’s protective order established a 

cause of action in district court). 

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(e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any 

court or by the Trademark Trial and Appeal Board in any proceeding involving an application 

or registration shall be kept confidential and shall not be made available for public inspection or 

copying unless otherwise ordered by the court or the Board, or unless the party protected by the 

order voluntarily discloses the matter subject thereto. When possible, only confidential portions 

of filings with the board shall be filed under seal. 

37 CFR § 2.126(d) [Form of submissions to the Trademark Trial and Appeal Board] 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. 

Except for materials filed under seal pursuant to a protective order, the files of applications and 

registrations which are the subject matter of pending proceedings before the Board and all 

pending proceeding files and exhibits thereto are available for public inspection and copying.217 

Therefore, only the particular discovery responses, exhibits, deposition transcript pages, or those 

portions of a brief, pleading or motion that disclose confidential information should be filed 

under seal pursuant to a protective order. If a party submits any brief, pleading, motion or other 

such filing containing confidential information under seal, the party must also submit for the 

public record a redacted version of said papers.218 

Confidential materials filed in the absence of a protective order are not regarded as confidential 

and are not kept confidential by the Board.219 The mere stamping of “confidential” on 

documents does not operate in lieu of a protective order or agreement. 

In the event that material designated as confidential (including trade secret material) is made of 

record in the proceeding, it must be submitted to the Board in a separate sealed envelope or other 

sealed container prominently marked with the word "CONFIDENTIAL."220 Many attorneys also 

like to attach to the sealed envelope or other sealed container a statement, such as the following: 

217 See, e.g., Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits 

marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the

absence of such motion, the exhibits would be placed in the proceeding file), rev'd on other grounds, 284 F. Supp. 

2d 96, 68 USPQ2d 1225 (D.D.C. 2003). 

218 See 37 CFR §§ 2.27(d) and (e), and 2.126(d); Duke University v. Haggar Clothing Inc., supra at 1445; and Rany

L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 653 (1981).

219 See Harjo v. Pro-Football, Inc., supra (Board agreed to hold exhibits marked confidential for thirty days 

pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits 

would be placed in the proceeding file). 

220 See 37 CFR § 2.126(d). 

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FILED UNDER SEAL SUBJECT TO PROTECTIVE ORDER. 

The materials contained in this envelope have been designated 

confidential, pursuant to a protective order, and are not to be 

disclosed or revealed except to the Trademark Trial and Appeal 

Board and counsel for the parties, or by order of a court. 

The envelope or other container must also bear information identifying the proceeding in 

connection with which it is filed (i.e., the proceeding number and name),221 and an indication of 

the nature of the contents of the container (i.e., "Applicant's Answers to Opposer's Interrogatories 

8 and 19," "Pages 22-26 From the Discovery Deposition of John Doe," "Opposer's Exhibits 3-5 

to the Discovery Deposition of John Smith," etc.). 

 

412.05 Handling of Confidential Materials By Board 

Confidential materials (including trade secret information) filed under seal subject to a protective 

order are stored by the Board in a secure location, and are disclosed only to the Board and to 

those people specified in the protective order as having the right to access.222 After the 

proceeding before the Board has been finally determined, all confidential materials are returned 

to the party that submitted them.

223 

 

413 Telephone and Pre-Trial Conferences 

When appropriate and necessary, a motion relating to discovery may be resolved by telephone 

conference, or by pre-trial conference at the offices of the Board. In either case, the conference 

will involve the parties or their attorneys and an Attorney-Advisor, or a Member, or the Board.224 

 414 Selected Discovery Guidelines 

Listed below are a variety of discovery determinations, with case citations, relating to the 

discoverability of various matters. This list is illustrative, not exhaustive. 

(1) The identification of discovery documents (as opposed to their substance) is not

221 See 37 CFR § 2.126(d). 

222 See Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, supra, and TBMP § 120.02. 

223 For information concerning access to protective order materials during an appeal from the decision of the 

Board, see TBMP § 904. 

224 See 37 CFR § 2.120(i). For further information concerning the resolution of motions by telephone and pre-trial 

conference, see TBMP § 502.06. 

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(2) 

 

privileged or confidential.225 

In those cases where complete compliance with a particular request for discovery would

be unduly burdensome, the Board may permit the responding party to comply by providing a 

representative sampling of the information sought, or some other reduced amount of 

information which is nevertheless sufficient to meet the propounding party's discovery 

needs.226

 

(3) The classes of customers for a party's involved goods or services are discoverable. In

contrast, the names of customers constitute confidential information, and generally are not 

discoverable, even under protective order.227 However, the name of the first customer for a 

party's involved goods or services sold under its involved mark, and, if there is a question of 

abandonment, the names of a minimal number of customers for the period in question, may 

be discoverable under protective order.228 

225 See Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (fact that client

received legal opinions and identity of documents related thereto, not privileged); and Johnson & Johnson v. Rexall

Drug Co., 186 USPQ 167, 171 (TTAB 1975) (objection to interrogatories on ground of privilege or under Rule 

26(b)(3), i.e., material prepared in anticipation of trial, not well taken). 

226 See, for example, Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720-21 (TTAB 1987) (production of

representative sample not appropriate where full production, that is, a total of eleven documents, was clearly not 

burdensome); Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147, 149 (TTAB 1985) (allowed to

provide representative samples of invoices from each calendar quarter); J.B. Williams Co. v. Pepsodent G.m.b.H., 

188 USPQ 577, 579-80 (TTAB 1975) (opposer need not identify dollar value and number of units of product held in

inventory but may indicate only whether it does in fact carry such products in stock); Neville Chemical Co. v. 

Lubrizol Corp., 184 USPQ 689, 689-90 (TTAB 1975) (sales and advertising figures for six different categories of

goods since 1936 limited to five-year period and a statement that there have been sales for the other years); Van Dyk 

Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (production limited to ten representative samples 

of documents pertaining to selection of each type of copy machine); and Mack Trucks, Inc. v. Monroe Auto 

Equipment Co., 181 USPQ 286, 288 (TTAB 1974) (representative samples of advertisements permitted). 

 Compare British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (if opposers believed

the limited information provided by applicant in response to interrogatories was insufficient and that applicant's 

objections on grounds that the interrogatories were unduly broad, burdensome, etc., were unfounded, opposers could 

have moved to compel more complete responses), aff'd, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32

USPQ2d 1120 (Fed. Cir. 1994) and The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc. , 191 

USPQ 468, 471 (TTAB 1976) (if applicant believed documents produced by opposer were not truly representative, 

applicant could have filed motion to compel). 

227 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) 

(need not reveal names of customers including dealers). 

228 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra at 1675 (TTAB 1988); Sunkist 

Growers, Inc. v. Benjamin Ansehl Company, supra (need for customer names does not outweigh possible harm, such

as harassment of customers); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 169 (TTAB 1980) (possible 

harm outweighed where issue is abandonment); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583

(TTAB 1975) (name and address of first customer may be revealed to verify date of first use); and J.B. Williams Co. 

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(4) Information concerning a party's selection and adoption of its involved mark is generally

discoverable (particularly of a defendant).229 

(5) Information concerning a party's first use of its involved mark is discoverable.230 

(6) Search reports are discoverable, but the comments or opinions of attorneys relating

thereto are privileged and not discoverable (unless the privilege is waived).231 

(7) A party need not, in advance of trial, specify in detail the evidence it intends to present,

or identify the witnesses it intends to call, except that the names of expert witnesses intended 

to be called are discoverable.232

v. Pepsodent G.m.b.H., supra at 580 (must identify class of customers who purchase products under mark, but not

names of customers). 

 See also Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556 (TTAB 1975); Miller & Fink Corp. v.

Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618

(TTAB 1974) and American Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB 1974). 

229 See Varian Associates v. Fairfield-Noble Corp., supra (must identify knowledgeable employees); Goodyear Tire 

& Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (whether applicant received opinions

concerning adoption of mark is not privileged and applicant must identify person, date and documents relating

thereto); and Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974)

(identification of persons who suggested use of involved mark on involved goods is not improper). 

 Cf. Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 190 (TTAB 1974) (applicant's request for writings

relating to selection of mark to show what third parties' marks may have been considered and extent to which 

opposer believed its mark conflicted therewith not permitted). 

230 See, for example, Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 195-96 (TTAB 1976) (dates 

petitioner's plants first began production of goods bearing mark are pertinent to claim of priority), and Miller & Fink

Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 496 (TTAB 1975) (must provide name, address and

affiliation of persons to whom service was first rendered). See also Double J of Broward Inc. v. Skalony Sportswear 

GmbH, 21 USPQ2d 1609, 1613 (TTAB 1991) (use or intended use of applicant's mark in commerce with U.S. is 

relevant). 

231 See Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980); Goodyear Tire & Rubber Co. v. 

Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (fact that an opinion concerning trademark validity or possible 

conflicts regarding applicant's adoption and use of mark was given to applicant is not privileged); Miles 

Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432, 434 (TTAB 1975); and Amerace Corp. v.

USM Corp., 183 USPQ 506, 507 (TTAB 1974) (attorney comments on search report or prosecution of application 

are privileged). 

232 See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (interrogatory requesting

that opposer “identify each and every fact, document and witness in support of its pleaded allegations” was 

equivalent to a request for identification of fact witnesses and trial evidence prior to trial, and therefore improper); 

Milliken & Co. v. Image Industries, Inc., 39 USPQ2d 1192, 1197 (TTAB 1996) (need only identify expert

witnesses); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (need not disclose 

entirety of proposed evidence), aff'd, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. 

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(8) A party's plans for expansion may be discoverable under protective order.233

(9) Information concerning a party's awareness of third-party use and/or registration of the

same or similar marks for the same or closely related goods or services as an involved mark, 

is discoverable to the extent that the responding party has actual knowledge thereof (without 

performing an investigation) and that the information appears to be reasonably calculated to 

lead to the discovery of admissible evidence.234 

(10) Information concerning litigation and controversies including settlement and other 

contractual agreements between a responding party and third parties based on the responding

party's involved mark is discoverable.235 However, the only information which must be 

provided with respect to a legal proceeding is the names of the parties thereto, the 

jurisdiction, the proceeding number, the outcome of the proceeding, and the citation of the

decision (if published).236 

(11) A party need not provide discovery with respect to those of its marks and goods and/or 

Cir. 1994); Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2041 (TTAB 1989) (motion

to exclude testimony of witness for failure to identify witness during discovery denied); Polaroid Corp. v. Opto

Specs, Ltd., 181 USPQ 542, 543 (TTAB 1974) (opposer need not describe evidence it will rely on to support 

allegations in opposition); and American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 124 (TTAB 1974). 

233 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) 

(opposer's intent to expand business to include manufactured products similar to applicant's is relevant). 

234 See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1788 (TTAB 2001) (no obligation to

search for third-party uses); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001)

(investigation not necessary); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra (need not 

investigate); and American Society of Oral Surgeons v. American College of Oral & Maxillofacial Surgeons, 201 

USPQ 531, 533 (TTAB 1979) (relevant to show mark is weak). See also Domino's Pizza Inc. v. Little Caesar

Enterprises Inc., 7 USPQ2d 1359, 1363 n.9 (TTAB 1988) (relevant to show purchaser perception of the marks). 

235 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra (licensing agreements and 

arrangements between opposer and third parties and amount of sales thereto are relevant); American Society of Oral 

Surgeons v. American College of Oral & Maxillofacial Surgeons, supra (relevant to show admissions against 

interest, limitations on rights in mark, course of conduct leading to abandonment, that the mark has been carefully 

policed, etc.); Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 197 (TTAB 1976) (settlement

agreements that have avoided litigation may show limitations on party's rights in mark or reveal inconsistent

statements); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 580-81 (TTAB 1975) (identity of all civil and

USPTO proceedings involving mark is not objectionable); and Johnson & Johnson v. Rexall Drug Co., 186 USPQ

167, 172 (TTAB 1975) (contacts with third parties, such as through litigation or agreements, based on pleaded mark

for involved goods, are relevant).

236 See Interbank Card Ass'n v. United States National Bank of Oregon, 197 USPQ 127, 128 (TTAB 1975) (need

not reveal reasons for dismissal of prior opposition against third party) and Johnson & Johnson v. Rexall Drug Co., 

supra at 172 (need not identify all documents pertaining to such litigation). 

400 - 260 
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DISCOVERY

 

services that are not involved in the proceeding and have no relevance thereto. However, the 

information that a party sells the same goods or services as the propounding party, even if

under a different mark, is relevant to the issue of likelihood of confusion.237 

(12) The names and addresses of a party's officers are discoverable. However, if a party has 

a large number of officers, it need only provide the names and addresses of those officers

most knowledgeable of its involved activities.238

(13) Although information concerning a party's foreign use of its involved mark is usually 

irrelevant to the issues in a Board proceeding, and thus not discoverable, exceptions may 

arise where, for example, there is an issue as to whether a party's adoption and use of the 

mark in the United States was made in bad faith for the purpose of forestalling a foreign 

user's expansion into the United States, or where the foreign mark is "famous," albeit not 

used, in the United States.239

237 See TBC Corp. v. Grand Prix Ltd., 16 USPQ2d 1399, 1400 (TTAB 1990) (where goods of parties differ,

determining whether parties market goods of same type is relevant to establishing relationship between goods);

Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra (questions concerning specific goods on 

which opposer uses mark are proper to extent scope of inquiry is limited to those goods identified in application, or

involve goods of type marketed by applicant, or mentioned by opposer during discovery); Sunkist Growers, Inc. v.

Benjamin Ansehl Company, 229 USPQ 147, 149 n.2 (TTAB 1985) (information regarding goods other than those in

involved application and registration is irrelevant ); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 584 

(TTAB 1975); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 190 (TTAB 1979) (applicant’s use of mark

on goods other than those in application irrelevant); American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122

(TTAB 1974) (interrogatory too broad, requiring identity of products having no relevance to opposition ); 

Volkswagenwerk Aktiengesellschaft v. Thermo-Chem Corp., 176 USPQ 493, 493 (TTAB 1973) (applicant need not 

provide information as to its other marks or its other products, or as to whether involved mark is used on other 

products). See also Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other 

grounds, 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (although the goods are not the same, they are of the 

type often made by the same manufacturer), and Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649, 652

(CCPA 1975) (in the absence of any showing that manufacturers never use same mark on the two involved classes 

of goods, the fact that the goods are often made by the same manufacturer, even if under different marks, may be 

relevant). 

 

238 See J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 580 (TTAB 1975) (may identify reasonable 

number of those most knowledgeable of adoption, selection or day-to-day uses of mark); Volkswagenwerk 

Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974); and American Optical Corp. v. 

Exomet, Inc., 181 USPQ 120, 122 (TTAB 1974) (identification of vice-president as most familiar with use held

sufficient). 

239 See, for general rule, Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13

(TTAB 1991) and Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates 

no rights in mark in U.S.). See also Oland's Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ 481, 489 n.7 

(TTAB 1975) (use or promotion of a mark confined to a foreign country, including Canada, is immaterial to

ownership and registration in U.S.), aff'd, Miller Brewing Co. v. Oland's Breweries, 548 F.2d 349, 192 USPQ 266 

(CCPA 1976). 

 See, re possible exceptions, Article 6 bis of the Paris Convention; Person's Co. v. Christman, 900 F.2d 1565, 14

USPQ2d 1477, 1480 (Fed. Cir. 1990) (knowledge of foreign use, in itself, does not preclude good faith adoption and

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DISCOVERY

 

(14) Generally, the names and addresses of the stockholders of a corporate party or other 

entities owned or controlled by the party are irrelevant, and not discoverable, unless there is a 

question as to whether that party and another entity are "related companies" within the

meaning of Section 5 of the Act, 15 U.S.C. § 1055.240

(15) The locations of those places of business where a party manufactures its involved

goods, or conducts its involved services, under its involved mark, are discoverable.241

(16) Information relating to the areas of distribution for a party's involved goods or services 

sold under its involved mark is discoverable.242 

use in U.S.); Double J of Broward Inc. v. Skalony Sportswear GmbH, supra; Mastic Inc. v. Mastic Corp., 230 USPQ

699, 702 (TTAB 1986) (in view of applicant's knowledge of opposer’s claim to mark in foreign countries and of

opposer's intention to enter U.S. market, it appears that applicant intended to preclude opposer from entering U.S. 

market); Adolphe Lafont, S.A. v. S.A.C.S.E. Societa Azioni Confezioni Sportive Ellera, S.p.A., 228 USPQ 589, 595

(TTAB 1985) (presale publicity including providing clothing with mark to competitive skiers insufficient to

popularize mark as identifying source to U.S. purchasers and to create priority rights in the U.S.); Davidoff 

Extension S.A. v. Davidoff International, Inc., 221 USPQ 465, 468 (S.D. Fla. 1983) (foreign corporation with U.S.

registration based on foreign registration had rights in mark superior to individual who attempted to use the name in

the U.S.); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 77-78 (TTAB 

1983) (prior use and advertising in connection with goods marketed in foreign country, whether advertising occurs

inside or outside U.S., creates no prior rights in U.S. against one who adopts similar mark prior to foreigner’s first 

use on goods sold in U.S., unless foreign party’s mark was famous); All England Lawn Tennis Club, Ltd. v. 

Creations Aromatiques, Inc., 220 USPQ 1069, 1072 (TTAB 1983) (opposer acquired rights to famous mark in U.S. 

for competitions held in England prior to adoption of mark by applicant for any goods/services); Canovas v. Venezia

80 S.R.L., 220 USPQ 660, 662 (TTAB 1983) (claim of fame in France and existence of pending U.S. application 

based on foreign registration insufficient to establish that fame extended to U.S.). See also Mother's Restaurants,

Inc. v. Mother's Other Kitchen, Inc., 218 USPQ 1046 (TTAB 1983) and Johnson & Johnson v. Diaz, 339 F. Supp. 

60, 172 USPQ 35 (C.D. Cal. 1971). 

240 See Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (irrelevant unless the other

company has used the mark); Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471, 472

(TTAB 1974) (no bearing on right to register); and American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 122

(TTAB 1974). 

241 See Varian Associates v. Fairfield-Noble Corp., supra (locations of "all places of business" overly broad); and 

American Optical Corp. v. Exomet, Inc., supra. 

242 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) 

(relevant areas of inquiry include number of salesmen, locations of sales representatives who market goods bearing 

the mark, and geographic location of dealers who market and distribute the products under the mark); GeorgiaPacific Corp. v. Great Plains Bag Co., 190 USPQ 193, 196 (TTAB 1976) (petitioner was required to list all states to

which its goods were shipped prior to respondent's claimed first use date and to identify persons who would be

knowledgeable about such matters); J.B. Williams Co. v. Pepsodent G.m.b.H., supra (information regarding 

geographic areas of distribution of goods is relevant to questions of likelihood of confusion and abandonment);

Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 495 (TTAB 1975) (year by year, state by state

break down of numbers of magazines distributed is proper); and Volkswagenwerk Aktiengesellschaft v. MTD 

Products Inc., supra at 473. 

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(17) The identity of any advertising agency engaged by a party to advertise and promote the 

party's involved goods or services under its involved mark is discoverable, as is the identity 

of the advertising agency employees having the most knowledge of such advertising and

promotion.243 

(18) Annual sales and advertising figures, stated in round numbers, for a party's involved 

goods or services sold under its involved mark are proper matters for discovery; if a 

responding party considers such information to be confidential, disclosure may be made

under protective order.244 

(19) Information concerning a defendant's actual knowledge of plaintiff's use of the 

plaintiff's involved mark, including whether defendant has actual knowledge thereof, and, if

so, when and under what circumstances it acquired such knowledge, is discoverable.245

(20) Information concerning the technical expertise of the purchasers of a party's products, is

relevant to the issue of likelihood of confusion and is discoverable.246

(21) A request for discovery is not necessarily objectionable merely because it requires a 

party or a witness to give an opinion or contention that relates to fact or the application of

law to fact.247 

243 See J.B. Williams Co. v. Pepsodent G.m.b.H., supra (may lead to relevant information concerning circumstances 

surrounding selection of mark, distinctiveness of mark, etc.). 

244 See Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147, 149 (TTAB 1985) (relevant to issues of

likelihood of confusion and abandonment; response that these figures have been "substantial" is insufficient); Varian

Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) (sales and advertising expenditures have 

bearing on registrability); J. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (relevant to

issue of abandonment); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (allowed to

provide figures for each of last five years and a statement that there have been sales for the other years); 

Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 181 USPQ 471, 473 (TTAB 1974) (money expended in

advertising to be confined to goods in application); and American Optical Corp. v. Exomet, Inc., 181 USPQ 120, 

123 (TTAB 1974) (required to furnish round figures concerning sales under mark for period of five years as well as 

advertising expenditures relating thereto). 

245 See Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., supra (applicant's knowledge of use by opposer 

or by the public or the trade, is relevant); and American Optical Corp. v. Exomet, Inc., supra (applicant required to 

go through its files to determine when it acquired actual knowledge of opposer’s marks). 

246 Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (the

sophistication of purchasers a factor in assessing the likelihood of confusion). 

247 See Fed. R. Civ. P. 33(c) and 36(a); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra at 

1676; and Gould Inc. v. Sanyo Electric Co., 179 USPQ 313, 314 (TTAB 1973) (question of whether opposer 

believes marks to be confusingly similar is relevant). 

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DISCOVERY

 

(22) The mere taking of discovery on matters concerning the validity of a pleaded 

registration, under any circumstances, is not objectionable on the basis that it constitutes a

collateral attack on the registration.248

248 See Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (party is entitled to take

discovery to determine whether grounds exist for any affirmative defenses or counterclaims) and Neville Chemical

Co. v. Lubrizol Corp., 183 USPQ 184, 187 (TTAB 1974). 

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501 Stipulations 

501.01 In General 

Subject to the approval of the Board, parties may stipulate to a wide variety of matters. For 

example, parties may stipulate to extend or reopen times; that the total number of interrogatories 

which one party may serve upon another party in a proceeding may exceed the limitation 

specified in 37 CFR § 2.120(d)(1); that the production of documents and things under the 

provisions of Fed. R. Civ. P. 34 may be made in a specified place and/or manner;1

 to protective 

agreements;2

 to the facts in the case of any party;

3

 that the testimony of witnesses may be 

submitted in affidavit form;

4

 that a deposition may be taken at a particular place, or in a certain 

manner;5

 that the proceeding shall be ended in a specified way.6

501.02 Filing Stipulations 

37 CFR § 2.121(d) [Assignment of times for taking testimony] When parties stipulate to the 

rescheduling of testimony periods or to the rescheduling of the closing date for discovery and the 

rescheduling of testimony periods, a stipulation presented in the form used in a trial order, 

signed by the parties, or a motion in said form signed by one party and including a statement 

that every other party has agreed thereto, shall be submitted to the Board. 

Stipulations which require action or consideration by the Board, such as stipulations to extend a 

defendant's time to file an answer to the complaint, stipulations to extend trial dates, stipulations 

relating to the form of testimony, stipulations to end a proceeding in a specified way, must be 

filed with the Board.7

 Some other types of stipulations, such as stipulations to extend a party's 

time for responding to a request for discovery, do not necessarily have to be filed with the Board. 

However, even in the case of a stipulation that does not have to be filed, the better practice is to 

reduce the stipulation to writing, in order to avoid any misunderstanding between the parties as 

to the existence and terms thereof. 

1

 See 37 CFR § 2.120(d)(2).

2

 See TBMP § 412.02 (Protective Orders – Upon Stipulation). 

3

 See 37 CFR § 2.123(b). 

4

 See 37 CFR § 2.123(b). 

5

 See 37 CFR § 2.123(b). 

6

 See TBMP § 605.03 (Settlement Agreements). 

7 See, for example, 37 CFR § 2.121(d). 

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STIPULATIONS AND MOTIONS 

 

501.03 Form of Stipulations 

A stipulation may be signed either by the parties, or by their attorneys, or other authorized 

representatives. 

If parties stipulate to extend or reopen a time or times, the stipulation should specify the closing 

date for each rescheduled time. For example, if parties stipulate to extend or reopen a 

defendant's time to file an answer to the complaint, the stipulation should specify the new due 

date for the answer. A stipulation to extend time to file an answer will be approved only if the 

proposed new due date for the answer is prior to the close of the discovery period. The time to 

answer will not be extended beyond the close of the discovery period. Thus, any stipulation, 

which would reset the time to answer beyond the date presently set for the close of discovery, 

must also include a request for an extension of the discovery period. If parties stipulate to extend 

or reopen testimony periods, or the discovery period and testimony periods, the stipulation 

should be submitted in the form used in a trial order, specifying the closing date for each period 

to be reset.8

 

The resetting, whether by stipulation or otherwise, of a party's time to respond to an outstanding 

request for discovery will not result in the automatic rescheduling of the discovery and/or 

testimony periods--such dates will be rescheduled only upon stipulation of the parties being 

approved by the Board, or upon motion granted by the Board, or by order of the Board.9

 

502 Motions--In General 

502.01 Available Motions 

There is a wide range of motions which may be filed in inter partes proceedings before the 

Board. Trademark Rule 2.116(a), 37 CFR § 2.116(a), provides that "[e]xcept as otherwise 

provided, and wherever applicable and appropriate, procedure and practice in inter partes 

proceedings shall be governed by the Federal Rules of Civil Procedure." Thus, many of the 

motions available under the Federal Rules of Civil Procedure are also available in proceedings 

before the Board. 

8

 See 37 CFR § 2.121(d), and Jan Bell Marketing Inc. v. Centennial Jewelers Inc., 19 USPQ2d 1636 (TTAB 1990). 

9

 See 37 CFR §§ 2.120(a) and 2.121(a), and TBMP § 403.04 (Extensions of Discovery Period and/or Time to

Respond to Discovery). 

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However, because the Board is an administrative tribunal, its rules and procedures, and hence the 

motions available in proceedings before it, necessarily differ in some respects from those 

prevailing in the Federal district courts.10 

For example, the Board does not preside at the taking of testimony. Instead, all testimony is 

taken out of the presence of the Board, and the written transcripts thereof, together with any 

exhibits thereto, are then filed with the Board.11 Further, for reasons of administrative economy, 

it is the policy of the Board not to read trial testimony or examine other trial evidence prior to 

final decision.12 For this reason, the Board will defer consideration of substantive objections to 

trial evidence (e.g., on the grounds of hearsay, relevance, or that the evidence constitutes 

improper rebuttal) until final decision.

13 Therefore, except for the motions for involuntary 

dismissal under Trademark Rules 2.132(a) and (b) for failure of the plaintiff to take testimony, 

the Board will not entertain any motion challenging or otherwise relating to the probative value 

or sufficiency of a party's trial evidence.14 Motions that require examination of trial evidence 

prior to final decision, such as those under Fed. R. Civ. P. 41(b) for involuntary dismissal and 

under Fed. R. Civ. P. 50(a) for judgment as a matter of law (formerly known as a motion for 

directed verdict), are not available in Board proceedings.15 

Given the broad range of possible motions which might be filed in an inter partes proceeding 

before the Board, this chapter discusses only the motions which most commonly arise in Board 

proceedings.

10 See TBMP §§ 102.03 (General Description of Board Proceedings) and 702 (Manner of Trial and Introduction of

Evidence). 

11 See 37 CFR § 2.125(c) and TBMP § 702 (Manner of Trial and Introduction of Evidence).

12 See, e.g., M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (Board will not rule on

objections pertaining to admissibility prior to final decision). 

13 See, e.g., Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 

1993) (contested motions to introduce discovery depositions filed with a notice of reliance deferred); Weyerhaeuser 

Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (objection to notice of reliance that the evidence is improper

rebuttal evidence will be deferred) and M-Tek Inc. v. CVP Systems, Inc., supra (motion to strike documents

submitted under a notice of reliance as hearsay and not properly authenticated deferred). See also TBMP § 707 

(Objections to Evidence). 

14 For information concerning these motions see TBMP § 534. 

15 See Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501, 1504 n.2 (TTAB 1993) (directed verdicts not

available); Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718

(TTAB 1985) (to extent motion for summary judgment was intended as one for directed verdict, it is inappropriate); 

Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 61 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 

(Fed. Cir. 1984) (motion for involuntary dismissal under Rule 41(b) unavailable); and Gary D. Krugman, TIPS

FROM THE TTAB: Motions for Judgment After Commencement of Testimony Periods, 73 Trademark Rep. 76

(1983). 

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502.02 Form of Motions and Briefs on Motions 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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) 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) 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) 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) A paper submission must not be stapled or bound; 

(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a paper or 

CD-ROM submission. 

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the 

rules in this part or Board practice permit. A CD-ROM submission must identify the parties and 

case number and contain a list that clearly identifies the documents and exhibits contained 

thereon. This information must appear in the data contained in the CD-ROM itself, on a label 

affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission 

must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be 

accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied 

by a transmittal letter on paper that identifies the parties, the case number and the contents of 

the CD-ROM. 

(c) 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. 

(d) 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. 

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37 CFR § 2.127(a) Every motion must be submitted in written form and must meet the 

requirements prescribed in § 2.126. It shall contain a full statement of the grounds, and shall 

embody or be accompanied by a brief. Except as provided in paragraph (e)(1) of this section, a 

brief in response to a motion shall be filed within fifteen days from the date of service of the 

motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is 

extended by stipulation of the parties approved by the Board, or upon motion granted by the 

Board, or upon order of the Board. If a motion for an extension is denied, the time for 

responding to the motion remains as specified under this section, unless otherwise ordered. The 

Board may, in its discretion, consider a reply brief. Except as provided in paragraph (e)(1) of 

this section, a reply brief, if filed, shall be filed within 15 days from the date of service of the 

brief in response to the motion. The time for filing a reply brief will not be extended. No further 

papers in support of or in opposition to a motion will be considered by the Board. The brief in 

support of a motion and the brief in response to the motion shall not exceed twenty-five pages in 

length, and a reply brief shall not exceed ten pages in length. Exhibits submitted in support of or 

in opposition to a motion shall not be deemed to be part of the brief for purposes of determining 

the length of the brief. When a party fails to file a brief in response to a motion, the Board may 

treat the motion as conceded. An oral hearing will not be held on a motion except on order by 

the Board. 

 * * * * 

(e)(1)... If no motion under Rule 56(f) is filed, a brief in response to the motion for summary 

judgment shall be filed within 30 days from the date of service of the motion unless the time is 

extended by stipulation of the parties approved by the Board, or upon motion granted by the 

Board, or upon order of the Board. ... The Board may, in its discretion, consider a reply brief. A 

reply brief, if filed, shall be filed within 15 days from the date of service of the brief in response 

to the motion. The time for filing a reply brief will not be extended. No further papers in support 

of or in opposition to a motion for summary judgment will be considered by the Board. 

502.02(a) Form of Motions 

Every motion must be submitted in written form and must meet the general requirements 

for submissions to the Board set forth in 37 CFR § 2.126. The requirements for paper 

submissions are specified in Rule 2.126(a), the requirements for submissions made on 

CD-ROM are in 2.126(b), the requirements for electronic submissions over the Internet 

can be found in 2.126(c), and the requirements for confidential submissions are in 

2,126(d). 

In addition, a motion should bear the name and number of the inter partes proceeding in 

connection with which it is being filed, and a title describing the nature of the motion.16 

16 See TBMP § 106.01 (Identification of Submissions). 

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A party who files a motion that does not bear the correct proceeding number, runs the 

risk that the paper will not be associated with the file of the proceeding for which it is 

intended (and hence may never be considered by the Board). 

A motion must be signed by the party filing it, or by the party's attorney or other 

authorized representative. If a motion is unsigned, it will not be refused consideration if

a signed copy is submitted to the Board within the time limit set in the notification of this 

defect by the Board.17 

The certificate of mailing by first-class mail procedure provided under 37 CFR § 2.197, 

and the "Express Mail" procedure provided under 37 CFR § 2.198, are both available for 

the filing of motions.18 

A party should file only one copy of a motion with the Board. Every motion filed with 

the Board must be served upon every other party to the proceeding, and proof of such 

service ordinarily must be made before the motion will be considered by the Board.19 

502.02(b) Briefs on Motions 

Every motion must embody or be accompanied by a brief.20 

Briefs on motions, and any exhibits thereto, must meet the general requirements for 

submissions to the Board set forth in 37 CFR § 2.126.21 In addition, a brief filed on CDROM must be accompanied by a single paper copy of the brief. 22 

Briefs on motions are also subject to page limitations and time requirements.23 Briefs in 

support of and in response to a motion may not exceed 25 pages in length and a reply 

17 See 37 CFR § 2.119(e), and TBMP § 106.02 (Signature of Submissions).

18 See 37 CFR §§ 2.197 and 2.198, and TBMP §§ 110 (Certificate of Mailing or Transmission Procedure) and 111

("Express Mail" Procedure). 

19 See 37 CFR §§ 2.119(a) and 2.119(b), and TBMP § 113 (Service of Papers). 

20 See 37 CFR § 2.127(a). 

21 See TBMP § 106.03 (Form of Submissions). 

22 See 37 CFR 2.126(b). 

23 See 37 CFR § 2.127. 

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brief may not exceed 10 pages.24 Exhibits submitted with the brief are not counted in 

determining the length of the brief.

A brief in response to a motion, except a motion for summary judgment, must be filed 

within 15 days from the date of service of the motion (20 days if service of the motion 

was made by first class mail, "Express Mail," or overnight courier).25 When a motion for 

summary judgment is filed, a brief in response, or a motion for 56(f) discovery under the 

Federal Rules of Civil Procedure, must be filed within 30 days from the date of service of 

the summary judgment motion (35 days if 37 CFR. § 2.119(c) applies).26 The time for 

filing a responsive brief may be extended, but the time for filing, in lieu thereof, a motion 

for 56(f) discovery will not be extended.27 

These time periods for responding to motions shall apply unless another time is specified 

by the Board; or the time is extended by stipulation of the parties approved by the Board 

or by order of the Board on motion for good cause; or the time is reopened by stipulation 

of the parties approved by the Board or by order of the Board on motion showing 

excusable neglect.28 If a motion for an extension of time to respond to a motion is 

denied, the time for responding to the motion remains as specified under 37 CFR § 

2.127(a), unless otherwise ordered.29

The Board may, in its discretion, consider a reply brief in support of a motion.30 A reply 

brief, if filed, including a reply brief for a summary judgment motion, shall be filed 

within 15 days from the date of service of the brief in response to the motion (20 days if 

24 See 37 CFR § 2.127(a). See also Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009

(TTAB 2002) (reply brief was untimely and exceeded page limit) and Estate of Shakur v. Thug Life Clothing Co., 57 

USPQ2d 1095, 1096 (TTAB 2000) (filing of two briefs in an attempt to circumvent page limitation improper). 

25 See 37 CFR § 2.119(c). 

26 See 37 CFR § 2.127(e). See also TBMP § 528.02 for further information regarding the time for filing a motion

for summary judgment. 

27 See TBMP § 528.06 (Request for Discovery to Respond to Summary Judgment). 

28 See Fed. R. Civ. P. 6(b) and TBMP § 509 (Motion to Extend Time; Motion to Reopen Time).

29 See 37 CFR § 2.127(a). 

30 See 37 CFR § 2.127(a). See also, e.g., Seculus da Amazonia S/S v. Toyota Jidosha Kabushiki Kaisha, 66

USPQ2d 1154, n.4 (TTAB 2003) (reply brief considered because it clarified the issues under consideration); Harjo 

v. Pro-Football, Inc., 45 USPQ2d 1789, 1791 (TTAB 1998) (motion to strike reply brief denied); and DAK 

Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1436 n.4 (TTAB 1995). 

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37 CFR § 2.119(c) applies). The time for filing a reply brief will not be extended.31 No 

further papers (including surreply briefs) will be considered by the Board, and any such

papers filed in violation of this rule may be returned to the filing party.32 The filing of 

reply briefs is discouraged, as the Board generally finds that reply briefs have little 

persuasive value and are often a mere reargument of the points made in the main brief.33 

Thus, it remains within the Board’s discretion whether to consider a reply brief.34 

502.02(c) Confidential Information 

Except for materials filed under seal pursuant to a protective order, the files of 

applications and registrations which are the subject matter of pending proceedings before 

the Board and all pending proceeding files and exhibits thereto are available for public 

inspection and copying.35 Therefore, only the particular portion of a motion that 

discloses confidential information should be filed under seal pursuant to a protective 

order. If a party submits a motion containing confidential information under seal, the 

party must also submit for the public record a redacted version of the motion.36 

Confidential information filed in the absence of a protective order is not regarded as 

confidential and will not be kept confidential by the Board.37 To be handled as 

confidential, and kept out of the public record, submissions to the Board must be filed 

under a separate cover. Both the submission and its cover must be marked confidential 

31 See 37 CFR § 2.127(a). See also Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., supra (approval of

consented motion to extend time to file reply brief vacated). 

32 See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000). 

33 See No Fear Inc. v. Rule, supra at 1553 and Johnston Pump/General Valve Inc. v. Chromalloy American Corp.,

13 USPQ2d 1719, 1720 n.3 (TTAB 1989) ("The presentation of one's arguments and authority should be presented

thoroughly in the motion or the opposition brief thereto"). 

34 See No Fear Inc. v. Rule, supra at 1553 (TTAB 2000) (reply brief reviewed, but given no consideration). 

35 See, e.g., Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits 

marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the

absence of such motion, the exhibits would be placed in the proceeding file), rev'd on other grounds, 284 F. Supp. 

2d 96, 68 USPQ2d 1225 (D.D.C. 2003). 

36 See 37 CFR §§ 2.27(d) and (e), and 2.126(d); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445

(TTAB 2000); and Rany L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 

653 (1981). 

37 See Harjo v. Pro-Football, Inc., supra (Board agreed to hold exhibits marked confidential for thirty days pending

receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be 

placed in the proceeding file). 

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502.03 Oral Hearings on Motions 

 

and must identify the case number and the parties. A copy of the submission with the 

confidential portions redacted must also be submitted.38

For further information regarding confidential materials, see TBMP §§ 120.02 and 412. 

An oral hearing is not held on a motion except by order of the Board.39 It is the practice of the 

Board to deny a request for an oral hearing on a motion unless, in the opinion of the Board, an 

oral hearing is necessary to clarify the issue or issues to be decided. Ordinarily, arguments on a 

motion are, and should be, adequately presented in the briefs thereon, and therefore the Board 

rarely grants a request for an oral hearing on a motion.40 

502.04 Determination of Motions 

37 CFR § 2.127(a) ... When a party fails to file a brief in response to a motion, the Board may 

treat the motion as conceded. ... 

37 CFR § 2.127(c) Interlocutory motions, requests, and other matters not actually or potentially 

dispositive of a proceeding may be acted upon by a single Member of the Trademark Trial and 

Appeal Board or by an Attorney-Examiner of the Board to whom authority so to act has been 

delegated. 

Motions fall into three categories: consented, uncontested, and contested. If the nonmoving 

party has consented to a motion, the motion may be filed either as a stipulation with the signature 

of both parties, or as a consented motion in which the moving party states that the nonmoving 

party has given its oral consent thereto (unless written consent is required under the provisions of 

37 CFR §§ 2.106(c), 2.114(c), 2.134(a), or 2.135). Ordinarily, the Board will grant a consented 

motion. 

If the nonmoving party has not given its consent to a motion, but does not file a brief in 

opposition thereto during the time allowed therefor, the Board, in its discretion, may grant the 

38 See 37 CFR § 2.126(d). 

39 See 37 CFR § 2.127(a). 

40 See The Scotch Whiskey Association v. United States Distilled Products Co., 13 USPQ2d 1711 (TTAB 1989), 

recon. denied, 17 USPQ2d 1240 (TTAB 1990), dismissed, 18 USPQ2d 1391 (TTAB 1991) (issues on motion to

dismiss not so extraordinary to warrant an oral hearing), rev'd on other grounds, 952 F.2d 1317, 21 USPQ2d 1145

(Fed. Cir. 1991); and TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989) (exception to usual practice is 

not warranted). Compare Federal Trade Commission v. Formica Corp., 200 USPQ 182 (TTAB 1978) (oral hearing 

on motion allowed in view of importance and novelty of issue).

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motion as conceded.41 However, the Board, in its discretion, may also decline to treat an 

uncontested motion as conceded, and may grant or deny the motion on its merits.42 

If a motion is contested by the nonmoving party, the Board will decide the motion on its merits. 

Interlocutory motions that are not actually or potentially dispositive of a proceeding may be 

acted upon by a single Board administrative trademark judge, or by a single interlocutory 

attorney to whom such authority has been delegated.43 A panel of at least three Board judges 

determines contested motions that are actually or potentially dispositive of a proceeding.44 

Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain 

manner may be determined under the authority of the Board. 

For information concerning the remedies available to a party that is dissatisfied with a decision 

on a motion, see TBMP § 518. See also TBMP § 905. 

When a motion other than a motion to extend has been filed, a party should not presume that the 

Board would automatically reset trial dates when it determines the pending motion. When the 

Board determines a pending motion, and there is no motion to extend trial dates, the Board, in 

the exercise of its discretion, may or may not reset trial dates. A party that wishes to have trial 

dates reset upon the determination of a particular motion should file a motion requesting such 

action, and specifying the dates which it wishes to have reset. 

502.05 Attorneys' Fees, etc., on Motions 

The Board will not hold any person in contempt, or award attorneys' fees, other expenses, or 

damages to any party.45

41 See 37 CFR § 2.127(a). See also Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891

(CCPA 1980) (treating motion for summary judgment as conceded was proper); Central Manufacturing Inc. v. Third

Millennium Technology, Inc., 61 USPQ2d 1210, 1211 (TTAB 2001) (motion to dismiss treated as conceded); and 

Boston Chicken Inc. v. Boston Pizza International Inc., 53 USPQ2d 1053, 1054 (TTAB 1999). 

42 See, e.g., Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018 (TTAB 2003) (motion to suspend

for civil action not treated as conceded where potentially dispositive motion was pending when motion to suspend

was filed); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1854 (TTAB 2000) 

(cross-motion for judgment not treated as conceded in view of its potentially dispositive nature); Hartwell Co. v. 

Shane, 17 USPQ2d 1569 (TTAB 1990) (uncontested motion to dismiss decided on merits) and Western Worldwide 

Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990). 

43 See 37 CFR § 2.127(c), and TBMP § 102.03 (General Description of Board Proceedings). 

44 See TBMP § 102.03 (General Description of Board Proceedings). 

 

45 37 CFR § 2.127(f). See, for example, Central Manufacturing Inc. v. Third Millennium Technology Inc., 61

USPQ2d 1210, 1213 (TTAB 2001) and Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 

(TTAB 2000). See also 37 CFR §§ 2.120(f) and 2.120(g)(1). Note, however, that conduct in violation of the

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502.06 Telephone and Pre-Trial Conferences 

502.06(a) Telephone Conferences 

37 CFR § 2.120(i)(1) Whenever it appears to the Trademark Trial and Appeal Board that 

a motion filed in an inter partes proceeding is of such nature that its resolution by 

correspondence is not practical, the Board may, upon its own initiative or upon request 

made by one or both of the parties, resolve the motion by telephone conference. 

When it appears to the Board that a motion filed in an inter partes proceeding may be 

resolved by a telephone conference call involving the parties or their attorneys and an 

interlocutory attorney, or an administrative trademark judge, of the Board, the Board 

may, upon its own initiative or upon request made by a party, resolve the motion by 

telephone conference.46 Immediately after the resolution of a motion by telephone 

conference, the Board will issue a written order confirming its decision on the motion. 

Board attorneys retain discretion to decide whether a particular matter can be heard or 

disposed of by telephone. There is no formal limit as to the type of matters that can be 

handled through telephone conferences,47 but the Board will not decide by telephone 

conference any motion which is potentially dispositive, that is, a motion which, if

granted, would dispose of a Board proceeding. The telephone conference procedure is 

particularly useful for resolving motions where time is of the essence, such as a motion to 

quash a notice of deposition.

48

Canons and Disciplinary Rules set forth in 37 CFR part 10 may be referred to the Office of Enrollment and 

Discipline for appropriate action. See 37 CFR §§ 10.18(d) and 10.20, et.seq.

46 See 37 CFR § 2.120(i)(1). See also Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1446 (TTAB 

2000); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999); Electronic Industries Association v.

Potega, 50 USPQ2d 1775 (TTAB 1999); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552 

(TTAB 1991); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409 (TTAB 1990); and the Official Gazette

notice entitled Teleconferencing on Cases Before the TTAB (June 20, 2000), 1235 TMOG ___. The notice is posted

on the USPTO home page, and is accessible via www.uspto.gov. under the Official Gazette Notices (item #9 of the 

June 20, 2000 notice). 

47 See, for example, Duke University v. Haggar Clothing Co., supra at 1446 (consented request to stay opposer's

rebuttal testimony period pending ruling on opposer's motion to quash); Electronic Industries Association v. Potega, 

supra (motion to quash and motion for discovery sanctions); Hewlett-Packard Co. v. Healthcare Personnel Inc., 

supra (motion to attend testimony deposition by telephone); and Health-Tex Inc. v. Okabashi (U.S.) Corp., supra

(uncontested motion to extend testimony period and motion for a protective order). 

48 See, for example, Electronic Industries Association v. Potega, supra; Luemme Inc. v. D.B. Plus Inc., supra (to the

extent time was of the essence, party could have contacted the Board and requested that the motion to extend 

discovery be resolved on an expedited basis or by telephone conference); and cases cited in previous note. See also

TBMP § 521 regarding motions to quash a notice of deposition.

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Telephone conferences are not a substitute for stipulated written motions. Parties are 

encouraged to file stipulated motions rather than call the Board for an order that can be

agreed upon without the Board’s involvement.49 Moreover, telephone conferences may 

not be used as a means to supplement a motion or a related brief, and are not an 

opportunity to present oral arguments in support of fully briefed written motions.50

Requesting a telephone conference:51 A party may request a telephone conference from 

the responsible Board attorney before it files the underlying motion. The initial contact 

will be limited to a simple statement of the nature of the issues proposed to be decided by 

telephone conference, with no discussion of the merits. A party served with a written 

motion may request a telephone conference by contacting the responsible Board attorney 

soon after it receives the service copy of the motion. A party may not request a telephone 

conference at or near the end of its time to respond to the motion, so as to avoid or delay 

its response to the motion. 

During the initial contact, the Board attorney will decide whether any party must file a 

motion or brief or written agenda to frame the issues for the conference and will issue

instructions.

When the Board grants a party’s request for a telephone conference, the requesting party 

is responsible for scheduling the conference at a time agreeable to all parties and the 

Board attorney. The party must arrange the conference call. When the Board initiates a 

telephone conference, the Board attorney will schedule the conference. If a response to a 

pending motion has not yet been filed, the non-moving party should be prepared to make 

an oral response to the motion during the telephone conference. Any other instructions 

regarding filing of briefs or serving copies will be provided. To expedite matters, the 

moving party may hand deliver its motion, at the offices of the Board, to the Board 

attorney to whom the case is assigned. Alternatively, the moving party may call the 

Board attorney and request permission to fax a copy of the motion to the Board.52

Denial of a request for a telephone conference is without prejudice on the merits of the 

motion or other matter sought to be heard by telephone. If the request is denied, the 

Board attorney will provide instructions to the party or parties regarding requirements for 

filing the motion or briefs required to have the matter decided on the papers. 

49 See, generally, Official Gazette notice entitled Teleconferencing on Cases Before the TTAB, supra. 

50 Id.

51 Id. 

52 See TBMP § 107 (How and Where to File Papers).

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Conduct of conference.53 The telephone conference will be limited to the issues defined 

by the Board prior to, or at the commencement of, the conference. The Board will not 

record the conference nor may the parties record the contents of the telephone 

conference. The Board attorney may make rulings at the conclusion of the conference or 

may take the parties’ arguments under advisement. If the Board attorney determines 

during the telephone conference that the motion or matter should be decided on the 

written record, the Board attorney may halt the telephone conference and direct the filing 

of a motion or response to a motion, or both. 

Parties must conduct themselves with appropriate decorum. Interruptions are to be 

avoided. The Board attorney conducting the conference generally will signal that a party 

may make an argument or presentation by inviting the party to do so or by inviting a 

response to an argument or presentation made by another. 

Participation.54 Failure to participate in a scheduled telephone conference may result in 

the motion being denied with prejudice or the motion being treated as conceded. 

Issuance of Rulings.55 The Board attorney may make rulings at the conclusion of a 

telephone conference or may take the parties’ arguments under advisement. In every 

instance, after the resolution of a motion or matter by telephone conference, the Board 

attorney will issue a written order containing all rulings. In most instances, the Board’s 

written order will consist of only a brief summary of the issues and the resulting decision; 

generally, the order will not include a recitation of the parties’ arguments. The decision 

will be forwarded to the parties by fax or mail. 

The filing of a request for reconsideration under 37 CFR § 2.127(b) or the filing of a 

petition under 37 CFR § 2.146(e)(2) will not, in the usual case, result in a stay of 

proceedings. Any discovery, trial dates, or other deadlines set by the Board will 

ordinarily remain as set, notwithstanding the request for reconsideration or petition. The 

Board may, however, reset dates, as appropriate, if either a request for reconsideration or 

a petition is granted. 

502.06(b) Pre-trial Conferences 

37 CFR § 2.120(i)(2) Whenever it appears to the Trademark Trial and Appeal Board that 

questions or issues arising during the interlocutory phase of an inter partes proceeding 

53 See, generally, Official Gazette Notice entitled Teleconferencing on Cases Before the TTAB, supra. 

54 Id.

55 Id.

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have become so complex that their resolution by correspondence or telephone conference 

is not practical and that resolution would be likely to be facilitated by a conference in 

person of the parties or their attorneys with a Member or Attorney-Examiner of the 

Board, the Board may, upon its own initiative or upon motion made by one or both of the 

parties, request that the parties or their attorneys, under circumstances which will not 

result in undue hardship for any party, meet with the Board at its offices for a pre-trial 

conference.

Because the pre-trial conference procedure necessarily involves expense for the parties, it 

is rarely used by the Board. However, it may be advantageous in cases where numerous 

complex motions are pending or where attorneys or parties are unable to work out a 

resolution of any of their differences.56 

502.07 Fed. R. Civ. P. 11 Applicable 

For information concerning the applicability of the provisions of Fed. R. Civ. P. 11 to motions 

filed in proceedings before the Board, see TBMP § 527.02. 

503 Motion to Dismiss for Failure to State a Claim 

503.01 Time for Filing 

When the defense of failure to state a claim upon which relief can be granted is raised by means 

of a motion to dismiss, the motion must be filed before, or concurrently with, the movant's

answer.57 When the motion is directed to an amended pleading, it must be filed before, or

concurrently with, the movant's answer to the amended pleading.58

The filing of a motion to dismiss for failure to state a claim upon which relief can be granted 

tolls the time for filing an answer.59 If the motion is filed before the movant's answer, and is 

denied, the Board will reset the time for filing an answer. 

56 See Abraham Bogorad, The Impact of the Amended Rules Upon Discovery Practice Before the Trademark Trial 

and Appeal Board, 66 Trademark Rep. 28, 37 (1976). 

57 See Fed. R. Civ. P. 12(b) and Hollowform Inc. v. Delma Aeh, 180 USPQ 284 (TTAB 1973), aff’d, 515 F.2d 1174, 

185 USPQ 790 (CCPA 1975). Compare Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 n.1 (TTAB 

1998) (untimeliness waived where 12(b)(6) motion filed three weeks after answer, but plaintiff responded to motion 

on the merits). 

58 See William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870 (TTAB 1994). 

 

59 See Hollowform, Inc. v. Delma Aeh, supra (motion for default judgment for failure to answer denied). 

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The defense of failure to state a claim upon which relief can be granted may be raised after an 

answer is filed, provided that it is raised by some means other than a motion to dismiss. For 

example, the defense may be raised, after an answer is filed, by a motion for judgment on the 

pleadings, or by a motion for summary judgment.60 

503.02 Nature of Motion 

A motion to dismiss for failure to state a claim upon which relief can be granted is a test solely of 

the legal sufficiency of a complaint.61 In order to withstand such a motion, a pleading need only 

allege such facts as would, if proved, establish that the plaintiff is entitled to the relief sought, 

that is, that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists 

for denying the registration sought (in the case of an opposition), or for canceling the subject 

registration (in the case of a cancellation proceeding).62 

Therefore, a plaintiff served with a motion to dismiss for failure to state a claim upon which 

relief can be granted need not respond by submitting proofs in support of its pleading. Whether a 

plaintiff can actually prove its allegations is a matter to be determined not upon motion to 

dismiss, but rather at final hearing or upon summary judgment, after the parties have had an 

opportunity to submit evidence in support of their respective positions.

63 

60 See Fed. R. Civ. P. 12(h)(2), and Wright & Miller, Federal Practice and Procedure: Civil 2d §1357 (1990). See

also DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434 (TTAB 1995) and Western Worldwide Enterprises 

Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990) (construed as motion for judgment on the 

pleadings). Compare, Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222

(TTAB 1995) (Rule 12(b)(6) permits defendant to assert in answer "defense" of failure to state a claim thereby 

allowing plaintiff to test sufficiency of defense by moving under 12(f) to strike the defense). 

61 See, for example, Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d

1038, 1041 (Fed. Cir. 1993) (Rule 12(b)(6) challenges the legal theory of the complaint not the sufficiency of the 

evidence that might be adduced); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990); and

Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752 (TTAB 1985). 

62 See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); Lipton Industries, Inc. v. 

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Cineplex Odeon Corp. v. Fred Wehrenberg

Circuit of Theaters, 56 USPQ2d 1538 (TTAB 2000); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d

1460 (TTAB 1992); Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990); Consolidated Natural Gas Co. v. CNG 

Fuel Systems, Ltd., supra; Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ

154 (TTAB 1985); and Springs Industries, Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512 (TTAB

1984). 

 

63 Cf. Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989) (leave to amend pleading granted over objection that there

was no evidence to prove the ground to be added). See also Caron Corp. v. Helena Rubinstein, Inc., 193 USPQ 113 

(TTAB 1976); Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434 (TTAB 1975); and Syndicat de la Parfumerie

Francaise v. Scaglia, 173 USPQ 383 (TTAB 1972). 

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For purposes of determining a motion to dismiss for failure to state a claim upon which relief can 

be granted, all of the plaintiff's well-pleaded allegations must be accepted as true, and the 

complaint must be construed in the light most favorable to the plaintiff.64 Dismissal for 

insufficiency is appropriate only if it appears certain that the plaintiff is entitled to no relief under 

any set of facts that could be proved in support of its claim.

65

Whenever the sufficiency of any complaint has been challenged by a motion to dismiss, it is the 

duty of the Board to examine the complaint 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 the plaintiff to the relief sought.66 

503.03 Leave to Amend Defective Pleading

A plaintiff may amend its complaint once as a matter of course at any time before an answer 

thereto is served, and may amend its complaint thereafter with the written consent of every 

adverse party or by leave of the Board, which is freely given when justice so requires.67 Thus, 

plaintiffs to proceedings before the Board ordinarily can, and often do, respond to a motion to 

dismiss by filing, inter alia, an amended complaint. If the amended complaint corrects the 

defects noted by the defendant in its motion to dismiss, and states a claim upon which relief can 

be granted, the motion to dismiss normally will be moot. 

If no amended complaint is submitted in response to a motion to dismiss for failure to state a 

claim upon which relief can be granted, and the Board finds, upon determination of the motion, 

that the complaint fails to state a claim upon which relief can be granted, the Board generally 

will allow the plaintiff an opportunity to file an amended pleading.68

64 See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999); Young v. AGB Corp., supra; 

and Intellimedia Sports Inc. v. Intellimedia Corp. 43 USPQ2d 1203 (TTAB 1997). See also Advanced

Cardiovascular Systems Inc. v. SciMed Life Systems Inc., supra; and Stanspec Co. v. American Chain & Cable 

Company, Inc., 531 F.2d 563, 189 USPQ 420 (CCPA 1976). 

65 See Young v. AGB Corp., supra; Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., supra; and

Kelly Services Inc. v. Greene's Temporaries Inc., supra.

66 See Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theaters, supra; Intellimedia Sports Inc. v. 

Intellimedia Corp., supra; Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711 (TTAB 1993); and Kelly 

Services Inc. v. Greene's Temporaries Inc., supra. See also Delta Tire Corp. v. Sports Car Club of America, Inc., 

186 USPQ 431 (TTAB 1975) and National Semiconductor Corp. v. Varian Associates, 184 USPQ 62 (TTAB 1974). 

67 See TBMP § 507.02 (Amendments – General Rule – Fed. R. Civ. P. 15(a)). 

 

68 See, for example, Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1208 (TTAB 1997) (allowed 

time to perfect fraud claim); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711 (TTAB 1993) 

(particularly where challenged pleading is the initial pleading); and Intersat Corp. v. International 

Telecommunications Satellite Organization, 226 USPQ 154 (TTAB 1985). See also Pure Gold, Inc. v. Syntex 

(U.S.A.) Inc., 221 USPQ 151 (TTAB 1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). 

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However, in appropriate cases, that is, where justice does not require that leave to amend be 

given, the Board, in its discretion, may refuse to allow an opportunity, or a further opportunity, 

for amendment.69 

503.04 Matters Outside the Pleading Submitted on Motion to Dismiss 

If, on a motion to dismiss for failure to state a claim upon which relief can be granted, matters 

outside the pleading are submitted and not excluded by the Board, the motion will be treated as a 

motion for summary judgment under Fed. R. Civ. P. 56.70 Ordinarily, the parties to the 

proceeding will be notified that the motion to dismiss is being treated as a motion for summary 

judgment, and the responding party will be given reasonable opportunity to present all material 

made pertinent to such a motion by Fed. R. Civ. P. 56.71 

Such notice may be dispensed with as unnecessary, however, where the parties themselves 

clearly have treated a motion to dismiss as a motion for summary judgment, and the nonmoving 

party has responded to the motion on that basis.72 

69 See, for example, Fed. R. Civ. P. 15(a); Institut National des Appellations d'Origine v. Brown-Forman Corp., 47 

USPQ2d 1875, 1896 (TTAB 1998) (amendment would be futile because opposers cannot prevail on claim as a 

matter of law); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB 1985) (plaintiff had 

already been allowed two opportunities to perfect its pleading); and Pure Gold, Inc. v. Syntex (U.S.A.) Inc., supra

(amendment would serve no useful purpose).

 Cf. Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540 (TTAB 2001) (where proposed pleading of dilution

was legally insufficient, leave to re-plead not allowed in view of delay in moving to amend); Midwest Plastic 

Fabricators Inc. v. Underwriters Laboratories Inc., 5 USPQ2d 1067 (TTAB 1987) (motion to amend to add claim

or defense which is legally insufficient will be denied); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ

855 (TTAB 1986) (would serve no useful purpose); and TBMP § 507.02 (regarding motions to amend pleading). 

70 See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ 1478, 1479 n.2 (TTAB 1998) (matters excluded) and

Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436 (TTAB 1996) (matters

excluded). 

71 See, for example, Fed. R. Civ. P. 12(b); Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988

F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ

641, 646 (Fed. Cir. 1983) (Board erred in treating motion to dismiss as a motion for summary judgment without

notifying adverse party); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992), 

summ. judgment granted, 24 UspQ2d 1376 (TTAB 1992); and Wells Fargo & Co. v. Lundeen & Associates, 20 

USPQ2d 1156 (TTAB 1991) (not an appropriate case to treat as summary judgment; extrinsic matters excluded). 

See also Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040 (TTAB 1985); and Exxon Corp. v. National 

Foodline Corp., 196 USPQ 444 (TTAB 1977), aff'd, 579 F.2d 1244, 198 USPQ 407 (CCPA 1978). 

 Cf. Dunkin' Donuts of America Inc. v. Metallurgical Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026 (Fed. 

Cir. 1988) (motion for judgment on the pleadings properly treated as motion for summary judgment).

72 See Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 

1998) (both parties submitted evidentiary materials outside the pleadings). Cf. Selva & Sons, Inc. v. Nina Footwear,

Inc., supra (nonmoving party expected only that sufficiency, not merits of case would be decided). 

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504 Motion for Judgment on the Pleadings 

504.01 Time for Filing 

After the pleadings are closed, but within such time as not to delay the trial, any party to an inter 

partes proceeding before the Board may file a motion for judgment on the pleadings.73 In Board 

inter partes proceedings, the taking of testimony depositions during the assigned testimony 

periods corresponds to the trial in court proceedings, and the trial period commences with the 

opening of the first testimony period.74 Thus, to be timely, a motion for judgment on the 

pleadings must be filed after the pleadings are closed, but prior to the opening of the first 

testimony period, as originally set or as reset.75

When a motion to dismiss for failure to state a claim upon which relief can be granted is filed 

after the answer, but prior to trial, the motion may be construed by the Board as a motion for 

judgment on the pleadings.76

504.02 Nature of Motion 

A motion for judgment on the pleadings is a test solely of the undisputed facts appearing in all 

the pleadings, supplemented by any facts of which the Board will take judicial notice.77 

For purposes of the motion, all well pleaded factual allegations of the nonmoving party must be 

accepted as true, while those allegations of the moving party which have been denied (or which 

73 See Fed. R. Civ. P. 12(c). 

74 See 37 CFR § 2.116(e); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376

(TTAB 1986); and La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234 (Comm'r 1976). 

75 Cf. 37 CFR § 2.127(e)(1); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, supra; Lukens Inc. v. 

Vesper Corp., 1 USPQ2d 1299 (TTAB 1986), aff'd, 831 F.2d 306 (Fed. Cir. 1987); Rainbow Carpet, Inc. v. 

Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718 (TTAB 1985); Buffett v. Chi Chi's, Inc., 226 

USPQ 428 (TTAB 1985); La Maur, Inc. v. Bagwells Enterprises, Inc., supra; Peterson's Ltd. v. Consolidated Cigar 

Corp., 183 USPQ 559 (TTAB 1974); and Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 182 USPQ 572

(Comm'r 1974). 

76 See Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996); DAK 

Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434 (TTAB 1995); and Western Worldwide Enterprises Group

Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990) (since motion based on defense that petition fails to state 

claim, standard for adjudicating motion for judgment on pleading is same as Rule 12(b)(6)). Cf. TBMP § 503.01

(Time for Filing Motion to Dismiss). 

77 See The Scotch Whisky Association v. United States Distilled Products Co., 13 USPQ2d 1711, 1714 n.1 (TTAB 

1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990), dismissed, 18 USPQ2d 1391 (TTAB 1991 ), rev'd on other

grounds, 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991). 

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are taken as denied, pursuant to Fed. R. Civ. P. 8(d), because no responsive pleading thereto is 

required or permitted) are deemed false. Conclusions of law are not taken as admitted.78 All 

reasonable inferences from the pleadings are drawn in favor of the nonmoving party.79 

A judgment on the pleadings may be granted only where, on the facts as deemed admitted, there 

is no genuine issue of material fact to be resolved, and the moving party is entitled to judgment, 

on the substantive merits of the controversy, as a matter of law.80 

A party may not obtain a judgment on the pleadings if the nonmoving party's pleading raises 

issues of fact, which, if proved, would establish the nonmoving party's entitlement to judgment.81 

504.03 Matters Outside the Pleadings Submitted on Motion for Judgment on 

 Pleadings 

If, on a motion for judgment on the pleadings, matters outside the pleading are submitted and not 

excluded by the Board, the motion will be treated as a motion for summary judgment under Fed. 

R. Civ. P. 56.

82 Ordinarily, the parties to the proceeding will be notified that the motion for 

judgment on the pleadings is being treated as a motion for summary judgment, and they will be 

given a reasonable opportunity to present all material made pertinent to such a motion by Fed. R. 

Civ. P. 56.83 

78 See Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992); International

Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983); and

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1367 et seq. (1990). 

79 See Baroid Drilling Fluids Inc. v. Sun Drilling Products, supra; CBS Inc. v. Mercandante, 23 USPQ2d 1784

(TTAB 1992); and Wright & Miller, supra § 1367 et seq. 

80 See Baroid Drilling Fluids Inc. v. Sun Drilling Products, supra; CBS Inc. v. Mercandante, supra; International

Telephone and Telegraph Corp. v. International Mobile Machines Corp., supra; and Wright & Miller, supra § 1367 

et seq. 

81 See Baroid Drilling Fluids Inc. v. Sun Drilling Products, supra and Wright & Miller, supra § 1368 (1990). 

82 See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.2 (TTAB 1998) (matters outside the 

pleading excluded) and DAK Industries Inc. v. Daiichi Kiosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995) (exhibits 

excluded). 

83 See Fed. R. Civ. P. 12(c). Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. 

Cir. 1983) (Board erred in treating motion to dismiss as motion for summary judgment without notifying nonmoving

party); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990); Pegasus 

Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040 (TTAB 1985); International Telephone and Telegraph Corp. 

v. International Mobile Machines Corp., 218 USPQ 1024 (TTAB 1983); and Exxon Corp. v. National Foodline 

Corp., 196 USPQ 444 (TTAB 1977), aff'd, 579 F.2d 1244, 198 USPQ 407 (CCPA 1978). 

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Such notice may be unnecessary, however, in those cases where the parties themselves clearly 

have treated a motion for judgment on the pleadings as a motion for summary judgment, and the 

nonmoving party has responded to the motion on that basis.84 

 

505 Motion for a More Definite Statement 

505.01 Nature of Motion 

If, in an inter partes proceeding before the Board, a pleading to which a responsive pleading must 

be made is so vague or ambiguous that a party cannot reasonably be required to frame a 

responsive pleading, the responding party may move for a more definite statement.85 The motion 

must point out the defects complained of, specify the details which the movant desires to have 

pleaded, and indicate that the movant is unable to frame a responsive pleading without the 

desired information.86 

A motion for a more definite statement is appropriate only in those cases where the pleading 

states a claim upon which relief can be granted, but is so vague or ambiguous that the movant 

cannot make a responsive pleading in good faith or without prejudice to itself.87 If the movant 

believes that the pleading does not state a claim upon which relief can be granted, its proper 

remedy is a motion under Fed. R. Civ. P. 12(b)(6) to dismiss for failure to state a claim upon 

which relief can be granted, not a motion for a more definite statement.88

A motion for a more definite statement may not be used to obtain discovery. The only 

information that a movant may obtain by this motion is that which it needs to make its 

responsive pleading.89 

84 Compare Selva & Sons, Inc. v. Nina Footwear, Inc., supra at 646 (nonmoving party did not expect Rule 12(b)(6) 

motion to be treated as one for summary judgment). 

85 See Fed. R. Civ. P. 12(e), and Wright & Miller, Federal Practice and Procedure: Civil 2d § 1376 (1990). Cf. 

CBS Inc. v. Mercandante, 23 USPQ2d 1784, 1787 n.8 (TTAB 1992) (answer to a counterclaim is not a pleading to

which a responsive pleading is permitted). 

86 See Fed. R. Civ. P. 12(e) and Wright & Miller, supra at § 1378. 

87 See Wright & Miller, supra at § 1376-1377. 

88 See Wright & Miller, supra at § 1376. 

89 See Wright & Miller, supra at § 1376-1377. 

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505.02 Time for Filing 

A motion for a more definite statement, if filed, must be filed within the time for, and before, the

moving party's responsive pleading.90 An extension of time to file a responsive pleading 

automatically extends the time to file a motion for a more definite statement, unless the Board 

orders otherwise. 

505.03 Failure to Obey Order for More Definite Statement 

If the Board, upon motion, issues an order for a more definite statement, and the order is not 

obeyed within the time specified by the Board, the Board may strike the pleading to which the 

motion was directed, or make such order as it deems just.91 

506 Motion to Strike Matter From Pleading 

506.01 Nature of Motion 

Upon motion, or upon its own initiative, the Board may order stricken from a pleading any 

insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.92 The 

Board also has the authority to strike an impermissible or insufficient claim (or portion of a 

claim) from a pleading.93

Motions to strike are not favored, and matter will not be stricken unless it clearly has no bearing 

upon the issues in the case.94 The primary purpose of pleadings, under the Federal Rules of Civil 

Procedure, is to give fair notice of the claims or defenses asserted.95 Thus, the Board, in its 

90 See Fed. R. Civ. P. 12(e).

91 See Fed. R. Civ. P. 12(e).

92 See Fed. R. Civ. P. 12(f). 

93 See Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999) (motion to strike certain

allegations in the counterclaim) and Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d

1137 (TTAB 1990) (motion to strike allegations of geographic descriptiveness asserted against registration over five

years old granted). 

94 See Ohio State University v. Ohio University, supra; Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 

(TTAB 1988); Leon Shaffer Golnick Advertising, Inc. v. William G. Pendill Marketing Co., 177 USPQ 401 (TTAB 

1973); and Wright & Miller, Federal Practice and Procedure: Civil 2d § 1380 (1990). 

95 See TBMP §§ 309.03 (Substance of Complaint) and 311.02 (Substance of Answer); Harsco Corp. v. Electrical 

Sciences Inc., supra; and McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB 1985). See also

Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

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discretion, may decline to strike even objectionable pleadings where their inclusion will not 

prejudice the adverse party, but rather will provide fuller notice of the basis for a claim or 

defense.96 A defense will not be stricken as insufficient if the insufficiency is not clearly 

apparent, or if it raises factual issues that should be determined on the merits.97 

Nevertheless, the Board grants motions to strike in appropriate cases.98

506.02 Time for Filing 

A motion to strike matter from a pleading should be filed within the time for, and before, the 

moving party's responsive pleading.99 If a motion to strike matter from a complaint is filed with 

an answer to the complaint, the motion to strike is construed by the Board as having been filed 

first. 

96 See Ohio State University v. Ohio University, supra at 1294-95; Order of Sons of Italy in America v. Profumi

Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (amplification of applicant's denial of opposer's claims);

Textron, Inc. v. Gillette Co., 180 USPQ 152, 153 (TTAB 1973) (applicant's affirmative defense amplifies denial of

likelihood of confusion); and Harsco Corp. v. Electrical Sciences Inc., supra at 1571 (reasonable latitude permitted

in statement of claims). 

97 See Wright & Miller, supra at § 1381. 

98 See, for example, Ohio State University v. Ohio University, supra at 1292 and 1295 n.16 (estoppel may not be

asserted as a defense against claims of mere descriptiveness or geographic descriptiveness; laches may not be 

maintained against fraud); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, supra (defense stricken

as redundant, that is, as nothing more than a restatement of a denial in the answer and does not add anything to that 

denial); American Vitamin Products, Inc. v. Dow Brands Inc., 22 USPQ2d 1313 (TTAB 1992) (insufficient 

affirmative defenses stricken); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, supra (ground for

cancellation not available for registration over five years old); Harsco Corp. v. Electrical Sciences Inc., supra

(immaterial allegation stricken); Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822 (TTAB 

1984) (affirmative defense stricken because identical to counterclaim ); W. R. Grace & Co. v. Arizona Feeds, 195

USPQ 670 (Comm'r 1977) (affirmative defenses stricken as redundant because same allegations formed basis for 

counterclaim ); Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794 (TTAB 1974) (complaint stricken

for failure to comply with requirement of Rule 10(b) that each numbered paragraph be limited to a single set of

circumstances); Textron, Inc. v. Gillette Co., supra at 154 (allegations in answer which merely reiterated denial of 

likelihood of confusion without adding anything of substance thereto stricken as redundant); Gould Inc. v. Sanyo 

Electric Co., 179 USPQ 313 (TTAB 1973) (affirmative defense attacking validity of plaintiff's pleaded registration 

stricken); S. C. Johnson & Son, Inc. v. GAF Corp., 177 USPQ 720 (TTAB 1973) (affirmative defense of failure to

state a claim upon which relief can be granted stricken since complaint did state such a claim); and McCormick &

Co. v. Hygrade Food Products Corp., 124 USPQ 16 (TTAB 1959) (recital of evidentiary material, namely, list in

defendant's pleading of asserted third-party registrants and users, stricken). 

 Cf. Leon Shaffer Golnick Advertising, Inc. v. William G. Pendill Marketing Co., 177 USPQ 401 (TTAB 1973)

(allegations pertinent to the issues in the case not stricken). 

99 See Fed. R. Civ. P. 12(f) and Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137

(TTAB 1990). 

 

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507.01 In General 

 

If no responsive pleading is required, the motion should be filed within 20 days after service 

upon the moving party of the pleading that is the subject of the motion (25 days, if service of the 

pleading was made by first-class mail, "Express Mail," or overnight courier--see 37 CFR § 

2.119(c)).100 

However, the Board, upon its own initiative, and at any time, may order stricken from a pleading 

any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.101 

Thus, the Board, in its discretion, may entertain an untimely motion to strike matter from a 

pleading.102 

 

506.03 Exhibits Attached to Pleadings 

The Board will not strike exhibits submitted with pleadings since they are clearly contemplated 

by 37 CFR §§ 2.105(c), 2.113(c), and 2.122(c). However, except for status and title copies of a 

plaintiff's pleaded registrations filed by the plaintiff with its complaint pursuant to 37 CFR § 

2.122(d)(1), exhibits attached to pleadings are not evidence on behalf of the party to whose 

pleading they are attached unless they are identified and introduced in evidence as exhibits 

during the testimony period.103

 

507 Motion to Amend Pleading 

Fed. R. Civ. P. 15(a) Amendments. A party may amend the party's pleading once as a matter of 

course at any time before a responsive pleading is served or, if the pleading is one to which no 

responsive pleading is permitted and the action has not been placed upon the trial calendar, the 

party may so amend it at any time within 20 days after it is served. Otherwise a party may amend 

the party's pleading only by leave of court or by written consent of the adverse party; and leave 

shall be freely given when justice so requires. A party shall plead in response to an amended 

pleading within the time remaining for response to the original pleading or within 10 days after 

service of the amended pleading, whichever period may be the longer, unless the court otherwise 

orders. 

100 See Fed. R. Civ. P. 12(f). See also American Vitamin Products, Inc. v. Dow Brands Inc., 22 USPQ2d 1313

(TTAB 1992). 

101 See Fed. R. Civ. P. 12(f). 

102 See Wright & Miller, Federal Practice and Procedure: Civil 2d § 1380 (1990); Order of Sons of Italy in

America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995); American Vitamin Products, Inc. v. 

Dow Brands Inc., supra; and Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, supra. 

103 See 37 CFR § 2.122(c), and TBMP § 317 (Exhibits to Pleadings). 

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(b) Amendments to Conform to the Evidence. When issues not raised by the pleadings are tried 

by express or implied consent of the parties, they shall be treated in all respects as if they had 

been raised in the pleadings. Such amendment of the pleadings as may be necessary to cause 

them to conform to the evidence and to raise these issues may be made upon motion of any party 

at any time, even after judgment; but failure so to amend does not affect the result of the trial of 

these issues. If evidence is objected to at the trial on the ground that it is not within the issues 

made by the pleadings, the court may allow the pleadings to be amended and shall do so freely 

when the presentation of the merits of the action will be subserved thereby and the objecting 

party fails to satisfy the court that the admission of such evidence would prejudice the party in 

maintaining the party's action or defense upon the merits. The court may grant a continuance to 

enable the objecting party to meet such evidence. 

37 CFR § 2.107 Amendment of pleadings in an opposition proceeding. 

(a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of 

the Act may be amended in the same manner and to the same extent as in a civil action in a 

United States district court, except that, 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. 

(b) Pleadings in an opposition proceeding against an application filed under section 66(a) of the 

Act may be amended in the same manner and to the same extent as in a civil action in a United 

States district court, except that, once filed, the opposition may not be amended to add to the 

grounds for opposition or to add to the goods or services subject to opposition. 

37 CFR 2.115 Amendment of pleadings in a cancellation proceeding. Pleadings in a 

cancellation proceeding may be amended in the same manner and to the same extent as in a civil 

action in a United States district court. 

The primary purpose of pleadings, under the Federal Rules of Civil Procedure, is to give fair 

notice of the claims or defenses asserted.104 Claims or defenses that are not asserted in the 

pleadings as originally filed, or as amended or deemed amended, will not be entertained by the 

Board.105 

Amendments to pleadings in inter partes proceedings before the Board are governed by Fed. R. 

Civ. P. 15.106 Amendments in general are governed by Fed. R. Civ. P. 15(a). Amendments to 

conform the pleadings to trial evidence are governed by Fed. R. Civ. P. 15(b).

104 See TBMP §§ 309.03(a) (Substance of Complaint - In General), 311.02 (Substance of Answer), 506.01 (Nature 

of Motion to Strike Matter from Pleading), and cases cited in the foregoing sections. See also Beth A. Chapman,

TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

105 See TBMP § 314 (Unpleaded Matters) and cases cited therein. 

106 See 37 CFR §§ 2.107, 2.115, and 2.116(a). 

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As a general rule, pleadings in an inter partes proceeding before the Board may be amended in 

the same manner and to the same extent as in a civil action in a United States district court. The 

exception to this rule is that an opposition against an application filed under Section 66(a) of the 

Act, 15 U.S.C. § 1141f, may not be amended to add a new ground for opposition.107 Thus, an 

opposition against a Section 66(a) application may not be amended to add an entirely new claim

or a claim based on an additional registration in support of an existing Section 2(d) claim.

108 

Other amendments, such as those that would amplify or clarify the grounds for opposition, are 

not prohibited by this rule.109 

A signed copy of the proposed amended pleading should accompany a motion for leave to 

amend a pleading.110 

 

507.02 Amendments--General Rule—Fed. R. Civ. P. 15(a) 

A party to an inter partes proceeding before the Board may amend its pleading once as a matter 

of course at any time before a responsive pleading is served. If the pleading is one to which no 

responsive pleading is permitted, it may be amended once as a matter of course at any time

within 20 days after it is served.111 An amendment filed as a matter of course need not be 

accompanied by a motion for leave to amend.112 

Thereafter, a party may amend its pleading only by written consent of every adverse party or by 

leave of the Board; leave must be freely given when justice so requires.113 In view thereof, 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.114 This is so even when a plaintiff seeks to amend its 

107 See 37 CFR § 2.107(b). 

108 See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, 

published in the Federal Register on September 26, 2003 at 68 FR 55748, specifically, summary of amendments at 

55757. 

109 See, for example, Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation

Act; Final Rule, supra. 

110 See Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, supra. 

111 See Fed. R. Civ. P. 15(a). 

112 See Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 

(1991). 

113 See Fed. R. Civ. P. 15(a).

 

114 See, for example, Polaris Industries v. DC Comics, 59 USPQ2d 1789 (TTAB 2001); Boral Ltd. v. FMC Corp., 

59 USPQ 1701 (TTAB 2000); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 

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complaint to plead a claim other than those stated in the original complaint,115 including a claim

based on a registration issued to or acquired by plaintiff after the filing date of the original 

complaint.116 However, the plaintiff in an opposition against a 66(a) application may not amend 

the pleading to add an entirely new claim or seek to rely on an additional registration in support 

of an existing Section 2(d) claim.

117

A proposed amendment need not of itself set forth a claim or defense; a proposed amendment 

may serve simply to amplify allegations already included in the moving party's pleading.118 

However, where the moving party seeks to add a new claim or defense, and the proposed 

1993); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993); Space Base Inc. 

v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843

(TTAB 1989); See's Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395 (TTAB 1989); and Beth A.

Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

 See also Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316 (TTAB 1992);

Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240

(Comm'r 1990); Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732 (TTAB 1990); Flatley v. Trump, 

11 USPQ2d 1284 (TTAB 1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986), recon. 

denied, 1 USPQ2d 1304 (TTAB 1986); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855 (TTAB 

1986); Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985); Caron Corp. v. Helena Rubenstein, Inc., 193 USPQ

113 (TTAB 1976); Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434 (TTAB 1975); Cool-Ray, Inc. v. Eye Care, 

Inc., 183 USPQ 618 (TTAB 1974); Mack Trucks, Inc. v. Monroe Auto Equipment Co., 182 USPQ 511 (TTAB 

1974); Johnson & Johnson v. Cenco Medical/Health Supply Corp., 177 USPQ 586 (Comm'r 1973); and American 

Optical Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971). 

115 See, for example, Boral Ltd. v. FMC Corp., supra at 1702. See also Marmark Ltd. v. Nutrexpa S.A., supra; 

Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 

1986); American Hygienic Labs, Inc. v. Tiffany & Co. supra; Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 

USPQ 1040 (TTAB 1985); Buffett v. Chi Chi's, Inc., supra; Gemini Engine Co. v. Solar Turbines Inc., 225 USPQ

620 (TTAB 1985); Mack Trucks, Inc. v. Monroe Auto Equipment Co., supra; and Johnson & Johnson v. Cenco

Medical/Health Supply Corp., supra.

116 See, for example, Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1867 (Fed. Cir. 

1991) (amendment to add later-acquired registration to tack on prior owner's use); Space Base Inc. v. Stadis Corp., 

supra at 1217 (notice of opposition amended during testimony period to add claim of ownership of newly issued

registration); Marmark Ltd. v. Nutrexpa S.A., supra; and Cudahy Co. v. August Packing Co., 206 USPQ 759 (TTAB 

1979); and Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240 (Comm'r 1990) (opposer’s motion to amend to join party

and claim ownership of registration granted). 

117 See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, 

published in the Federal Register on September 26, 2003 at 68 FR 55748, 55757.

118 See Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ 539 (TTAB 1973) (allegations amplified). See also, 

Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732, 1734 (TTAB 1990) (petitioner permitted to add 

allegation concerning respondent's assertion of infringement to support standing). [NOTE: This case was overruled 

by Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994), to the extent it held 

that Section 18 of the trademark Act may be invoked only when tied to a properly pleaded ground for opposition or 

cancellation.] 

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pleading thereof is legally insufficient, or would serve no useful purpose, the Board normally 

will deny the motion for leave to amend.119 On the other hand, whether or not the moving party 

can actually prove the allegation(s) sought to be added to a pleading is a matter to be determined 

after the introduction of evidence at trial or in connection with a proper motion for summary 

judgment.120 

Generally, an amended pleading, if allowed, will supercede any prior pleadings, particularly an 

amended pleading which is complete in itself and does not adopt or make any reference to the 

earlier pleadings.121

507.02(a) Timing of Motion to Amend Pleading – In General 

The timing of a motion for leave to amend under Fed. R. Civ. P. 15(a) plays a large role 

in the Board's determination of whether the adverse party would be prejudiced by 

119 See Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990)

(motion to amend to restrict goods would serve no purpose); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car

Inc., 62 USPQ2d 1857, 1858 (TTAB 2002) (amendment denied because Board has no jurisdiction to decide issues

arising under state dilution laws), aff’d, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003); Leatherwood Scopes 

International Inc. v. Leatherwood, 63 USPQ2d 1699 (TTAB 2002) (proposed amended pleading of abandonment 

insufficient and leave to amend denied as futile where opposer asserted applicant's lack of exclusive rights in the 

mark but failed to include allegation that mark had lost all capacity to act as a source indicator for applicant's 

goods); Polaris Industries v. DC Comics, supra at 1799 (where proposed pleading of dilution was legally 

insufficient, leave to re-plead allowed); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540 (TTAB 2001) (where

proposed pleading of dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving to

amend); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057 (TTAB 2000) (motion to add counterclaim

denied where mere allegation that opposer did not submit copy of foreign registration at time of examination is 

insufficient to state claim); Institut National des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 

1896 (TTAB 1998) (opposers could not prevail on res judicata claim as a matter of law); Commodore Electronics 

Ltd. v. CBM Kabushiki Kaisha, supra at 1506 (claim of lack of bona fide intent to use found legally sufficient); CBS

Inc. v. Mercandante, 23 USPQ2d 1784 (TTAB 1992) (opposer’s attempt to amend answer to add counterclaim

denied as inconsistent with notice of opposition); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories 

Inc., 5 USPQ2d 1067, 1069 (TTAB 1987) (defense of unclean hands insufficient because allegations were either

unclear, non-specific, irrelevant to the defense or merely conclusory; defense of laches not available where ground is

failure to control use of a certification mark); American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 859

(TTAB 1986) (proposed amendment to add 2(d) claim denied as legally insufficient); and W.R. Grace & Co. v.

Arizona Feeds, 195 USPQ 670 (Comm'r 1977). Cf. TBMP § 503.03 (Leave to Amend Defective Pleading). 

120 See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992),

and Flatley v. Trump, 11 USPQ2d 1284, 1286 (TTAB 1989). 

121 See Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1858 (Fed. Cir. 2000) (citing, inter 

alia, Kelley v. Crosfield Catalysts, 135 F.3d 1202 (7th Cir. 1998)) and, e.g., Michael S. Sachs Inc. v. Cordon Art 

B.V., 56 USPQ2d 1132, 1136 n.10 (TTAB 2000). See also Beth A. Chapman, TIPS FROM THE TTAB: Amending 

Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991).

 

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allowance of the proposed amendment.122 A long and unexplained delay in filing a 

motion to amend a pleading (when there is no question of newly discovered evidence) 

may render the amendment untimely.123

122 See International Finance Corporation v. Bravo Co., 64 USPQ2d 1597, 1604 (TTAB 2002) (motion denied 

where although discovery still open, movant provided no explanation for two-year delay in seeking to add new 

claim); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541 (TTAB 2001) (motion to amend opposition

denied where it was filed eight months after filing of notice of opposition, with no explanation for the delay, and 

appeared to be based on facts within opposer’s knowledge at the time opposition was filed); Boral Ltd. v. FMC 

Corp., 59 USPQ2d 1701, 1703-04 (TTAB 2000) (no undue delay because motion to add claim of dilution was 

promptly filed after such claim became available, albeit over two years after commencement of proceeding); 

Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286-87 (TTAB 1998) (request raised for the first time in reply 

brief on counterclaim to further restrict pleaded registration denied since opposer had no notice of this issue);

Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1033 (TTAB 1996) 

(motion to add claim of fraud denied where petitioner was fully aware of all the facts it needed to add such claim

over three years before filing motion to amend); Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d 1205 

(TTAB 1993) (motion filed after close of discovery to assert claim of res judicata based on a judgment entered in

another case after the filing of opposition permitted since applicant was afforded adequate notice and no further 

discovery would be necessary); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 

1993) (no undue delay in view of pending motion for summary judgment and discovery was still open when motion 

was filed); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993) (proceeding still in 

pre-trial stage and discovery had been extended); Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki 

Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992) (motion to amend filed prior to opening of petitioner's testimony

period permitted); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) (opposer's motion to amend its 

pleading during its testimony period granted in the interests of justice and judicial economy and since any prejudice 

could be mitigated by reopening discovery solely for applicant); Marshall Field & Co. v. Mrs. Field's Cookies, 17 

USPQ2d 1652 (TTAB 1990) ("concept of 'undue delay' is inextricably linked with the concept of prejudice to the 

non-moving party"); .Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732 (TTAB 1990) (proceeding

still in the discovery stage and no undue prejudice shown); Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989)

(proceedings still in the discovery stage); Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985) (no substantial

prejudice to applicant by allowance of amendment where proceeding remained in a fairly early stage); Caron Corp. 

v. Helena Rubenstein, Inc., 193 USPQ 113 (TTAB 1976) (neither party had as yet taken testimony); AnheuserBusch, Inc. v. Martinez, 185 USPQ 434 (TTAB 1975) (proceeding was still in the pre-trial stage); Cool-Ray, Inc. v.

Eye Care, Inc., 183 USPQ 618 (TTAB 1974) (trial period had not yet commenced and no prejudice to applicant); 

Mack Trucks, Inc. v. Monroe Auto Equipment Co., 182 USPQ 511 (TTAB 1974) (no testimony had as yet been 

taken); American Optical Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971) (applicant's motion to 

amend its pleading after the close of opposer's testimony period, but before the opening of applicant's testimony

period, permitted); and Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 

Trademark Rep. 302 (1991). 

 Cf. Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989), aff'd,

906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (where plaintiff moved to amend after close of its testimony

period, motion denied as untimely to extent it sought amendment under Rule 15(a)); and Long John Silver's, Inc. v.

Lou Scharf Inc., 213 USPQ 263 (TTAB 1982) (opposer's motion to amend to rely on eight additional marks, shortly

after the close of the discovery period, denied where opposer knew, or should have known, of the existence of the 

marks at the time the opposition was filed, and the discovery period had already been extended several times at

opposer's request).

123 See M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984) (plaintiff should plead

any registrations it wishes to introduce as soon as possible after the omission, or newly issued registration, comes to

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In order to avoid any prejudice to the adverse party when a motion for leave to amend 

under Fed. R. Civ. P. 15(a) is granted, the Board may, in its discretion, reopen the 

discovery period to allow the adverse party to take discovery on the matters raised in the 

amended pleading.124

507.02(b) Timing of Motion to Amend to Add Counterclaim 

The timing of a motion for leave to amend is particularly important in the case of a 

motion for leave to amend to assert a counterclaim for cancellation of one or more of the 

plaintiff's pleaded registrations. Counterclaims to cancel pleaded registrations in Board 

proceedings are governed by 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i).125 As 

provided therein, if grounds for the counterclaim are known to the defendant when its 

answer to the complaint is filed, the counterclaim should be pleaded with or as part of the 

answer. If, during the proceeding, the defendant learns of grounds for a counterclaim to 

cancel a registration pleaded by the plaintiff, the counterclaim should be pleaded 

promptly after the grounds therefor are learned.126 

plaintiff's attention). See also International Finance Corporation v. Bravo Co., supra at 1604 (motion denied where 

although discovery still open, movant provided no explanation for two-year delay in seeking to add new claim). 

124 See Boral Ltd. v. FMC Corp., 59 USPQ2d 1701 (TTAB 2000) (reopened for limited purpose of conducting 

discovery on new claim); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) (reopened solely for 

applicant’s benefit); Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985) (applicant to advise whether it would 

need additional discovery); and Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 

81 Trademark Rep. 302 (1991). 

125 See 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i). See also TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 

1313 (TTAB 1989) (although parties referred to the "when justice requires" element of Fed. R. Civ. P. 13(f), 

counterclaims to cancel pleaded registrations in oppositions are governed by 2.106(b)(2)(i)). But see See's Candy 

Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395, 1397 (TTAB 1989) (applied 13(f) "when justice requires" 

standard where grounds for counterclaim were known at time of answer).

 

126 See 37 CFR §§ 2.106(b)(2)(i) and 2.114(b)(2)(i); TBMP § 313.04 (Compulsory Counterclaims) and cases cited

therein; and Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, supra. See also 

Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (asserting claim as 

separate petition to cancel rather than counterclaim does not obviate timeliness requirements of 2.114(b)(2)(i)); 

Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1033 (TTAB 1996);

Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1596 (TTAB 1992) (filing of an answer is 

not a condition precedent to operation of Trademark Rule 2.106(b)(2)(i) where grounds are learned during course of 

proceeding), sum. Judgment granted, 24 USPQ2d 1376 (TTAB 1992); and Marshall Field & Co. v. Mrs. Field's

Cookies, 17 USPQ2d 1652 (TTAB 1990) (counterclaim was pleaded promptly after defendant obtained information 

through discovery concerning possible fraud). 

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

507.03(a) During Trial After Objection to Trial Evidence 

 

If evidence is objected to at trial on the ground that it is not within the issues raised by the 

pleadings, the Board, upon motion, may allow the pleadings to be amended (except as 

prohibited by 37 CFR § 2.107)127 and will do so freely when the presentation of the 

merits of the case will be subserved thereby and the objecting party fails to satisfy the 

Board that the admission of such evidence would prejudice it in maintaining its action or 

defense upon the merits.128 

The motion for leave to amend should be filed promptly after the objection is made.129 If 

the motion is granted, the Board may extend the objecting party's testimony period, or 

reopen discovery for that party, if necessary, to enable the objecting party to meet the 

evidence which was the subject of the objection.130 

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

When issues not raised by the pleadings are tried by the express or implied consent of the 

parties, unless prohibited by 37 CFR § 2.107,131 the Board will treat them in all respects 

as if they had been raised in the pleadings. Any amendment of the pleadings necessary to 

cause them to conform to the evidence and to raise the unpleaded issues may be made 

upon motion of any party at any time, even after judgment, but failure to so amend will 

not affect the result of the trial of these issues.

132

127 See TBMP § 507.01 regarding amendment of pleadings in an opposition against a 66(a) application. 

128 See Fed. R. Civ. P. 15(b), and Ercona Corp. v. JENAer Glaswerk Schott & Gen., 182 USPQ 573 (TTAB 1974). 

See also TBMP § 315 (Amendment of Pleadings). 

129 See Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 

(1991). 

130 See Fed. R. Civ. P. 15(b). Cf. Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985); Anheuser –Busch, Inc. v.

Martinez, 185 USPQ 434 (TTAB 1975); and American Optical Corp. v. American Olean Tile Co., 168 USPQ 471

(TTAB 1971). 

131 See TBMP §§ 315 and 507.01 regarding amendment of pleadings in an opposition against a 66(a) application.

132 See, for example, Fed. R. Civ. P. 15(b); Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185,

187 (Fed. Cir. 1984) (motion to amend to add abandonment submitted after filing of trial briefs denied because the 

issue had not been tried); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) 

(opposition deemed amended to include opposer's claim of ownership of previously unpleaded registrations where 

opposer filed notice of reliance on those registrations at trial and applicant did not object thereto); Linville v. Rivard,

41 USPQ2d 1731, 1735 n.9 (TTAB 1996) (certain abandonment issues while not pleaded were clearly tried by the 

parties and argued in their trial briefs), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Kasco Corp. v. 

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Implied consent to the trial of an unpleaded issue can be found only where the 

nonoffering party (1) raised no objection to the introduction of evidence on the issue, and 

(2) was fairly apprised that the evidence was being offered in support of the issue.133 

Inasmuch as the Board does not read trial testimony or examine other trial evidence prior 

to final hearing, it is the practice of the Board, when confronted with a Fed. R. Civ. P. 

15(b) motion to amend the pleadings to include an issue assertedly tried by express or 

implied consent, to defer determination of the motion until final hearing.134 

508 Motion for Default Judgment for Failure to Answer 

If a defendant fails to file an answer to a complaint during the time allowed therefor, the Board, 

on its own initiative, may issue a notice of default allowing the defendant 20 days from the 

mailing date of the notice in which to show cause why default judgment should not be entered 

Southern Saw Service Inc., 27 USPQ2d 1501, 1504 (TTAB 1993) (functionality was tried by implied consent, such

consent having been given by defendant prior to trial); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 

USPQ2d 1883, 1884 (TTAB 1993) (no express or implied consent to try certain issues); Reflange Inc. v. R-Con

International, 17 USPQ2d 1125 (TTAB 1990) (permitted to amend answer after trial to add an affirmative defense 

that was in fact tried); Laboratoires du Dr. N.G. Payot Etablissement v. Southwestern Classics Collection Ltd., 3 

USPQ2d 1600 (TTAB 1987) (motion to amend at time of final briefing granted); and Beth A. Chapman, TIPS

FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

 133 See, for example, Time Warner Entertainment Co. v. Jones, supra at 1653 n.2 (where opposer, during trial, filed

notice of reliance on seven unpleaded registrations and where applicant did not object thereto, Board found parties 

had tried by implied consent, any issues arising from those registrations); Micro Motion Inc. v. Danfoss A/S, 49

USPQ2d 1628, 1629 (TTAB 1998) (applicant did not object to testimony but was not fairly apprised that evidence, 

which also related to existing claim, was being offered in support of unpleaded claim); Levi Strauss & Co. v. R.

Josephs Sportswear, Inc., 28 USPQ2d 1464 (TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994) (party 

was not fairly apprised that evidence used for a pleaded claim of descriptiveness was also being offered in support of

unpleaded 2(d) claim); Kasco Corp. v. Southern Saw Service Inc., supra at 1504 (defendant raised no objection to 

evidence on unpleaded issue but was fairly apprised of its purpose); Laboratoires du Dr. N.G. Payot Etablissement

v. Southwestern Classics Collection Ltd.., supra (applicant sufficiently apprised that issue was being litigated where 

applicant's answers to discovery requests on unpleaded issue were made of record by opposer, and where applicant

did not object to the cross-examination on this issue and moreover attempted to clarify a matter related to the issue); 

Devries v. NCC Corp., 227 USPQ 705 (TTAB 1985) (stipulation of evidence relating to chain of title of mark and

registration was insufficient to put respondent on notice of additional claims of lack of ownership); and Beth A. 

Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991). 

134 See Micro Motion Inc. v. Danfoss A/S, supra; Devries v. NCC Corp., supra. See also Marcal Paper Mills, Inc. 

v. American Can Co., 212 USPQ 852 (TTAB 1981); New York State Office of Parks and Recreation v. Atlas 

Souvenir & Gift Co., 207 USPQ 954 (TTAB 1980); Plus Products v. Redken Laboratories, Inc., 199 USPQ 111

(TTAB 1978); and Beth A. Chapman, TIPS FROM THE TTAB: Amending Pleadings: The Right Stuff, supra. Cf. 

TBMP § 502.01 (Available Motions).

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against it. If the defendant fails to file a response to the notice, or files a response that does not 

show good cause, default judgment may be entered against it.135 

The issue of whether default judgment should be entered against a defendant when it fails to file 

a timely answer to the complaint may also be raised by means other than the Board's issuance of 

a notice of default. For example, the plaintiff, realizing that the defendant is in default, may file 

a motion for default judgment (in which case the motion may serve as a substitute for the Board's 

issuance of a notice of default); or the defendant itself, realizing that it is in default, may file a 

motion asking that its late-filed answer be accepted. However the issue is raised, the standard for 

determining whether default judgment should be entered against the defendant, for its failure to 

file a timely answer to the complaint, is the Fed. R. Civ. P. 55(c) standard, which requires that 

the defendant show good cause why default judgment should not be entered against it. 136 

If a plaintiff files a motion for default judgment for failure of the defendant to file a timely 

answer to the complaint, and the defendant fails to file a brief in opposition to the plaintiff's 

motion, default judgment may be entered against defendant.137 

If a defendant files an answer after the due date therefor, but before the issuance by the Board of 

a notice of default, and also files a motion asking that the late-filed answer be accepted, and the 

plaintiff fails to file a brief in opposition to the defendant's motion, the motion may be granted as 

conceded.138 

For further information concerning default judgment for failure of the defendant to file a timely 

answer to the complaint, see TBMP § 312. 

509 Motion to Extend Time; Motion to Reopen Time 

Fed. R. Civ. P. 6(b) Enlargement. When by these rules or by a notice given thereunder or by 

order of court an act is required or allowed to be done at or within a specified time, the court for 

cause shown may at any time in its discretion (1) with or without motion or notice order the 

period enlarged if request therefor is made before the expiration of the period originally 

prescribed or as extended by a previous order, or (2) upon motion made after the expiration of 

the specified period permit the act to be done where the failure to act was the result of excusable 

135 See 37 CFR §§ 2.106(a) and 2.114(a); Fed. R. Civ. P. 55(a) and 55(b) and TBMP § 312 (Default). See also, for

example, DeLorme Publishing Co., Inc. v. Eartha's, Inc. 60 USPQ2d 1222, 1223-24 (TTAB 2000) (good cause not 

shown where failure to answer was based on belief that notice of opposition was "incomplete"). 

136 See TBMP § 312 (Default) and authorities cited therein. 

137 See Fed. R. Civ. P. 55(b) and 55(c), and 37 CFR § 2.127(a).

138 See 37 CFR § 2.127(a), and TBMP § 502.02(b) (Briefs on Motions). 

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neglect; but it may not extend the time for taking any action under Rules ... 60(b) ... except to the 

extent and under the conditions stated in them. 

37 CFR § 2.120(a) [Discovery] In general. ... The Trademark Trial and Appeal Board will 

specify the opening and closing dates for the taking of discovery. The trial order setting these 

dates will be mailed with the notice of institution of the proceeding. The discovery period will be 

set for a period of 180 days. The parties may stipulate to a shortening of the discovery period. 

The discovery period may be extended upon stipulation of the parties approved by the Board, or 

upon motion granted by the Board, or by order of the Board. If a motion for an extension is 

denied, the discovery period may remain as originally set or as reset. Discovery depositions

must be taken, and interrogatories, requests for production of documents and things, and 

requests for admission must be served, on or before the closing date of the discovery period as 

originally set or as reset. Responses to interrogatories, requests for production of documents 

and things, and requests for admission must be served within 30 days from the date of service of 

such discovery requests. The time to respond may be extended upon stipulation of the parties, or 

upon motion granted by the Board, or by order of the Board. The resetting of a party’s time to 

respond to an outstanding request for discovery will not result in the automatic rescheduling of 

the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of

the parties approved by the Board, or upon motion granted by the Board, or by order of the 

Board. 

37 CFR § 2.121(a)(1) [Assignment of times for taking testimony] The Trademark Trial and 

Appeal Board will issue a trial order assigning to each party the time for taking testimony. No 

testimony shall be taken except during the times assigned, unless by stipulation of the parties 

approved by the Board, or, upon motion, by order of the Board. Testimony periods may be 

rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the 

Board, or by order of the Board. If a motion to reschedule testimony periods is denied, the 

testimony periods may remain as set. The resetting of the closing date for discovery will result in 

the rescheduling of the testimony periods without action by any party. 

 * * * * 

(c) A testimony period which is solely for rebuttal will be set for fifteen days. All other testimony 

periods will be set for thirty days. The periods may be extended by stipulation of the parties 

approved by the Trademark Trial and Appeal Board, or upon motion granted by the Board, or by 

order of the Board. If a motion for an extension is denied, the testimony periods may remain as 

set. 

(d) When parties stipulate to the rescheduling of testimony periods or to the rescheduling of the 

closing date for discovery and the rescheduling of testimony periods, a stipulation presented in 

the form used in a trial order, signed by the parties, or a motion in said form signed by one party 

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and including a statement that every other party has agreed thereto, shall be submitted to the 

Board. 

37 CFR § 2.127(a) [Motions] ... If a motion for an extension is denied, the time for responding 

to the motion remains as specified under this section, unless otherwise ordered. 

 

509.01 Nature of Motions 

Pursuant to Fed. R. Civ. P. 6(b), made applicable to Board proceedings by 37 CFR § 2.116(a), a 

party may file a motion for an enlargement of the time in which an act is required or allowed to 

be done.139 If the motion is filed prior to the expiration of the period as originally set or 

previously extended, the motion is a motion to extend, and the moving party need only show 

good cause for the requested extension. If, however, the motion is not filed until after the 

expiration of the period as originally set or previously extended, the motion is a motion to 

reopen, and the moving party must show that its failure to act during the time allowed therefor 

was the result of excusable neglect.140 

509.01(a) Motions to Extend Time 

A motion to extend must set forth with particularity the facts said to constitute good 

cause for the requested extension; mere conclusory allegations lacking in factual detail 

are not sufficient.141 

Moreover, a party moving to extend time must demonstrate that the requested extension 

of time is not necessitated by the party’s own lack of diligence or unreasonable delay in

taking the required action during the time previously allotted therefor.142 The Board will 

139 Compare, however, 37 CFR § 2.127(e)(1) ("The time for filing a motion under [Fed. R. Civ. P.] 56(f) will not be

extended"). 

140 See Fed. R. Civ. P. 6(b). 

141 See, e.g., Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion denied

where party failed to provide detailed information regarding apparent difficulty in identifying and scheduling its

witnesses for testimony and where sparse motion, containing vague reference to possibility of settlement, 

demonstrated no expectation that proceedings would not move forward during any such negotiations); Instruments 

SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (cursory or conclusory allegations that were

denied unequivocally by the nonmovant and were not otherwise supported by the record did not constitute a 

showing of good cause); Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758 (TTAB 1999) (sparse motion contained

insufficient facts on which to find good cause); and Johnston Pump/General Valve Inc. v. Chromalloy American 

Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989) (“The presentation of one’s arguments and authority should be

presented thoroughly in the motion or the opposition brief thereto.”). 

142 See Luemme, Inc. v. D. B. Plus Inc., supra 1760-61 (diligence not shown; discovery requests not served until last 

day of the discovery period); and Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 

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“scrutinize carefully” any motion to extend time, to determine whether the requisite good 

cause has been shown.143 

For further information concerning good cause for a motion to extend, see the cases cited 

in the note below.

144

If a motion to extend the time for taking action is denied, the time for taking such action 

may remain as previously set.145

1851 (TTAB 2000) (applicant’s motion to extend discovery denied when counsel knew of unavailability of witness 

a month before, yet delayed until last day to seek an agreement on an extension of time). 

143 See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 63 FR at 48086 (1998), 1214 TMOG

at 149 (September 29, 1998). See also Luemme, Inc. v. D. B. Plus Inc., supra.

144 Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 

USPQ2d 1383, 1383-84 (TTAB 2001) (the press of other litigation may constitute good cause to extend but alleged 

deficiencies in discovery responses not good cause to extend discovery where timely motion to compel was not

filed); Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 61 USPQ2d 1542, 1543-44 (TTAB 2001)

(petitioner failed to explain how activity of rearranging its laboratory facilities during relevant time period prevented

taking testimony; no detailed information regarding petitioner's apparent difficulty in preparing and submitting its 

evidence or why petitioner waited until the last day of its testimony period to request the extension); SFW Licensing 

Corp. and Shoppers Food Warehouse Corp. v. Di Pardo Packing Limited, 60 USPQ2d 1372 (TTAB 2001)

(attorney’s unwarranted and untimely request for permission to withdraw from representation of party viewed as bad

faith attempt to obtain an extension of time); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., supra 

(while maternity leave may constitute good cause, in this case defendant’s counsel knew that defendant would not 

be able to comply with deadline, yet waited until penultimate day of response period to file unconsented motion to

extend time); Fairline Boats plc v. New Howmar Boats Corp., supra (mere existence of settlement negotiations or

proposals, without more, would not justify delay in proceeding with testimony); Instruments SA Inc. V. ASI 

Instruments, Inc., supra (plaintiff’s claim of ongoing bilateral settlement negotiations was rebutted by defendant, 

and no other reason for plaintiff’s failure to proceed with discovery was shown); Luemme, Inc. v. D.B. Plus Inc., 

supra (plaintiff failed to set forth detailed facts concerning the circumstances -- plaintiff’s allegedly busy travel

schedule -- which necessitated the extension, and record showed that need for extension in fact resulted from

plaintiff’s delay and lack of diligence during previously-set discovery period); Luehrmann v. Kwik Kopy Corp., 2 

USPQ2d 1303 (TTAB 1987) (desire to conduct follow-up discovery is not good cause for extension of discovery 

period where party seeking extension did not serve initial discovery requests until late in discovery period) 

and Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147 (TTAB 1985) (opposer's motion to compel 

having been granted, it was reasonable to allow additional time, albeit less than requested, for opposer to complete 

discovery before proceeding with testimony). 

 See also Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888 (CCPA 1980); Johnston 

Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988); Consolidated

Foods Corp. v. Ferro Corp., 189 USPQ 582 (TTAB 1976); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689 

(TTAB 1975); and Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556 (TTAB 1975). 

145 See, e.g., Trademark Rules 2.120(a) (discovery period); 2.121(a)(1) (testimony period); 2.127(a) (time for 

responding to a motion); and 2.127(e)(1) (time for responding to a summary judgment motion). See also Fairline 

Boats plc v. New Howmar Boats Corp., supra at 1479; Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg.

Co., supra; Luemme Inc. v. D.B. Plus Inc., supra; and Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 

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Where the time for taking required action, as originally set or as previously reset, 

has expired, a party desiring to take the required action must file a motion to 

reopen the time for taking that action. The movant must show that its failure to 

act during the time previously allotted therefor was the result of excusable 

neglect. See Fed. R. Civ. P. 6(b). 

 

While the time for filing a brief in response to a motion for summary judgment may be 

extended, the time for filing, in lieu thereof, a motion for discovery under Fed. R. Civ. P. 

56(f) will not be extended.146 

509.01(b) Motions to Reopen Time 

509.01(b)(1) In General 

The analysis to be used in determining whether a party has shown excusable 

neglect was set forth by the Supreme Court in Pioneer Investment Services 

Company v. Brunswick Associates Ltd. Partnership, 507 U.S. 380 (1993), adopted 

by the Board in Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997). 

These cases hold that the excusable neglect determination must take into account 

all relevant circumstances surrounding the party’s omission or delay, including 

(1) the danger of prejudice to the nonmovant, (2) the length of the delay and its 

potential impact on judicial proceedings, (3) the reason for the delay, including 

whether it was within the reasonable control of the movant, and (4) whether the 

movant acted in good faith.147 

The “prejudice to the nonmovant” contemplated under the first Pioneer factor 

must be more than the mere inconvenience and delay caused by the movant’s 

previous failure to take timely action, and more than the nonmovant’s loss of any 

tactical advantage which it otherwise would enjoy as a result of the movant’s 

delay or omission. Rather, “prejudice to the nonmovant” is prejudice to the 

supra at 1544 (petitioner's testimony period consequently expired where motion to extend testimony period was 

denied and dates were left as originally set). 

 Compare C.H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506, 507(TTAB 1980) (three-day testimony

period for opposer reset “putting opposer in the same position it would have been in had no motion to compel been

filed.”). In addition, see Notice of Final Rulemaking, published in the Federal Register on September 9, 1998 at 63

FR 48081, specifically, comments and responses published in the notice at 48091, 1214 TMOG at 149. 

146 See TBMP § 528.06 (Request for Discovery to Respond to Summary Judgment). 

147 Pioneer Investment Services Company v. Brunswick Associates Ltd. Partnership, supra at 395 and Pumpkin Ltd.

v. The Seed Corps, supra at 1586. See also cases cited throughout this section and in TBMP §§ 534.02 regarding 

motions to dismiss under 37 CFR § 2.132, and 544 regarding motions for relief from final judgment. 

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nonmovant’s ability to litigate the case, e.g., where the movant’s delay has 

resulted in a loss or unavailability of evidence or witnesses which otherwise 

would have been available to the nonmovant.148

It has been held that the third Pioneer factor, i.e., “the reason for the delay, 

including whether it was within the reasonable control of the movant,” may be 

deemed to be the most important of the Pioneer factors in a particular case.149 

Additionally, although many excusable neglect decisions which were issued prior 

to the Board’s 1997 Pumpkin decision may no longer be controlling under the 

somewhat more flexible excusable neglect standard set out in Pioneer and

Pumpkin (e.g., decisions holding that a failure to act due to counsel’s docketing 

errors is, per se, not the result of excusable neglect), they nonetheless may be 

directly relevant to the Board’s analysis under the third Pioneer excusable neglect 

factor.150 

148 See Pumpkin Ltd. v. The Seed Corps, supra at 1587, citing Pratt v. Philbrook, 109 F.3d 18 (1st Cir. 1997) and

Paolo’s Associates Ltd. Partnership v. Bodo, 21 USPQ2d 1899, 1904 (Comm’r 1990). 

149 See Pumpkin Ltd. v. The Seed Corps, supra at n.7 and cases cited therein. See also Baron Philippe de Rothschild

S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1851 (TTAB 2000) (counsel’s press of other business, 

docketing errors and misreading of relevant rule are circumstances wholly within counsel’s control); Gaylord

Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369 (TTAB 2000) (failed to provide specific 

reasons for former counsel's inaction); HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 

1998) (failed to provide evidence linking the reason for the delay with the expiration of movant's testimony period);

and Atlanta-Fulton County Zoo Inc. v. De Palma, 45 USPQ2d 1858 (TTAB 1998) (failure to timely move to extend

testimony period was due to counsel’s oversight and mere existence of settlement negotiations did not justify 

party’s inaction or delay). 

150 See Pumpkin Ltd. v. The Seed Corps., supra at 1586-87 and at n.8. Such pre-Pioneer cases include, e.g.,

Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1712 (Fed. Cir. 1991) (no excusable 

neglect where plaintiff’s counsel unreasonably relied on defendant’s counsel to sign and file plaintiff’s proposed

stipulated motion to extend trial dates); American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313

(TTAB 1992) (defendant’s desire to take follow-up discovery and its uncertainty regarding status of plaintiff’s

pending motion to strike affirmative defenses did not excuse respondent’s neglect in failing to file timely motion to 

extend discovery); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2065 (TTAB 1990) 

(no excusable neglect where defendant’s failure to timely respond to certain discovery requests was due to

defendant’s oversight or lack of care in reading discovery requests); Consolidated Foods Corp. v. Berkshire 

Handkerchief Co., Inc., 229 USPQ 619 (TTAB 1986) (no excusable neglect where defendant’s failure to timely 

respond to summary judgment motion was due to counsel’s press of other litigation); and Coach House Restaurant, 

Inc. v. Coach and Six Restaurants, Inc., 223 USPQ 176 (TTAB 1984) (same). 

 For additional cases involving the excusable neglect standard, see TBMP §§ 534 (Motion for Judgment for 

Plaintiff’s Failure to Prove Case) and 544 (Motion for Relief from Final Judgment). 

 

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A party moving to reopen its time to take required action must set forth with 

particularity the detailed facts upon which its excusable neglect claim is based; 

mere conclusory statements are insufficient.151

In addition, for purposes of making the excusable neglect determination, it is 

irrelevant that the failure to timely take the required action was the result of the 

party’s counsel’s neglect and not the neglect of the party itself. Under our system

of representative litigation, a party must be held accountable for the acts and 

omissions of its chosen counsel.152

509.01(b)(2) To Introduce Newly Discovered Evidence 

If a party files a motion to reopen its testimony period to introduce newly 

discovered evidence, the moving party must show not only that the proposed 

evidence has been newly discovered, but also that the evidence could not have 

been discovered earlier through the exercise of reasonable diligence.153 However, 

even if a sufficient showing of due diligence has been made, the Board will not 

automatically reopen a party’s testimony period for introduction of the new 

evidence. The Board must also consider such factors as the nature and purpose of 

the evidence sought to be brought in, the stage of the proceeding, and prejudice to 

the nonmoving party.154 

151 See Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., supra (no specific reasons for former 

counsel's inaction); HKG Industries Inc. v. Perma-Pipe Inc., supra (no factual details as to the date of counsel’s 

death in relation to plaintiff’s testimony period or as to why other lawyers in deceased counsel’s firm could not have 

assumed responsibility for the case). 

152 Pioneer Investment Services Company v. Brunswick Associates Ltd. Partnership, supra at 396 (citing Link v.

Wabash R. Co., 370 U.S. 626 (1962) and United States v. Boyle, 469 U.S. 241 (1985)); Gaylord Entertainment Co. 

v. Calvin Gilmore Productions Inc., supra; CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d

1300 (TTAB 1999); and Pumpkin Ltd. v. The Seed Corps., supra at 1586. Cf. Netcore Technologies, Inc. v. 

Firstwave Technologies, Inc., ___ USPQ2d ___, 2001 WL 243440 (TTAB 2001) (attorney’s unwarranted and

untimely request to withdraw from representation of party may not be used as subterfuge to obtain a reopening of

time to which the party is not otherwise entitled). 

153 See, for example, Rowell Laboratories, Inc. v. Canada Packers Inc., 215 USPQ 523, 529 n.2 (TTAB 1982)

(improper to attempt to introduce newly discovered evidence by way of rebuttal testimony rather than moving to

reopen testimony period). See also Oxford Pendaflex Corp. v. Roladex Corp., 204 USPQ 249 (TTAB 1979); Wilson

Sporting Goods Co. v. Northwestern Golf Co., 169 USPQ 510 (TTAB 1971); United States Plywood Corp. v.

Modiglass Fibers, Inc., 125 USPQ 144 (TTAB 1960); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ

354 (TTAB 1984); Tektronix, Inc. v. Daktronix, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ

693 (CCPA 1976); and Chemetron Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495 (TTAB 1970). 

154 See Harjo v. Pro-Football, Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (newly discovered evidence was 

cumulative and redundant and did not have significant probative value to justify further delay of case) citing 

Canadian Tire Corp. Ltd. v. Cooper Tire & Rubber Co., 40 USPQ2d 1537, 1539 (Comm’r 1996) (newly discovered 

evidence was hearsay in nature and pertained to unpleaded defense). 

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509.02 Form and Determination of Motions to Extend or Reopen 

If a motion to extend or a motion to reopen is made with the consent of the nonmoving party, the 

motion may be filed either as a stipulation with the signature of both parties, or as a consented 

motion in which the moving party states that the nonmoving party has given its oral consent 

thereto. Ordinarily, a consented motion to extend or reopen will be granted by the Board. 

A consented motion to extend or reopen testimony periods, or the discovery period and 

testimony periods, must be filed with the Board and should be submitted in the form used in a 

trial order, specifying the closing date for each period to be reset.155 If a consented motion to 

extend or reopen testimony periods, or the discovery period and testimony periods, specifies only 

the closing date for the first period to be reset, and the motion is approved, the Board will 

automatically reschedule the subsequent periods as well.156 However, receipt by the parties of 

the Board's action on the motion will be delayed, because the Board will have to prepare an 

action specifying the closing date for each period being rescheduled. 

A stipulation or consented motion to extend time to file an answer will be approved only if the 

proposed new due date for the answer is prior to the close of the discovery period. The time to 

answer will not be extended beyond the close of the discovery period. Thus, any extension 

request, which would reset the time to answer beyond the date presently set for the close of 

discovery, must also include a request for an extension of the discovery period. 

When the Board notes that a consented or stipulated motion to extend time is based on the 

asserted existence of the parties’ settlement negotiations, the Board may suspend proceedings, 

sua sponte, for six months, to enable the parties to concentrate on settlement and to obviate the 

filing of numerous extension requests. Such suspension shall be made subject to either party’s 

right to request resumption of proceedings at any time.157 

When a motion to extend, or a motion to reopen, is filed without the consent of the nonmoving 

party, the Board normally will defer action on the motion until after the expiration of the 

nonmoving party's time to file a brief in opposition to the motion.158 If the nonmoving party fails 

to file a brief in opposition thereto, the Board will normally grant the motion as conceded.159 If

155 See 37 CFR § 2.121(d). 

156 See 37 CFR § 2.121(a). 

 

157 See TBMP § 510.03(a) (Suspension). 

158 Cf. 37 CFR § 2.127(a).

159 See 37 CFR § 2.127(a), and TBMP § 502.02(b) (Briefs on Motions). 

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the nonmoving party contests the motion, the Board will decide the motion on its merits.160

A party has no right to assume that its motion to extend (much less a motion to reopen) made 

without the consent of the adverse party will always be granted automatically.161 Moreover, 

while the Board attempts, where possible, to notify the parties of its decision on an unconsented 

motion to extend, or a motion to reopen, prior to expiration of the enlargement sought, the Board 

is under no obligation to do so, and in many cases cannot.162 Therefore, it is preferable, at least 

where an unconsented motion seeks an extension or a reopening of a testimony period or periods, 

or of the discovery period and testimony periods, that the motion request that the new period or 

periods be set to run from the date of the Board's decision on the motion. However, in the event 

that the motion to extend or reopen time is denied, the time for taking required action may 

remain as previously set.163 

The resetting of the closing date for discovery will result in the automatic rescheduling of the 

testimony periods by the Board. However, the resetting of a party's time to respond to an 

outstanding request for discovery will not result in the automatic rescheduling of the discovery 

and/or testimony periods--such dates will be rescheduled only upon stipulation of the parties 

approved by the Board, or upon motion granted by the Board, or by order of the Board.164 

When a motion other than a motion to extend has been filed, a party should not presume that the 

Board will automatically reset trial dates when it determines the pending motion. When the 

Board determines a pending motion, and there is no motion to extend trial dates, the Board, in 

the exercise of its discretion, may or may not reset trial dates. A party that wishes to have trial 

dates reset upon the determination of a particular motion should file a motion requesting such 

action, and specifying the dates which it wishes to have reset. 

Extensions of time to seek judicial review of a final decision of the Board (whether by way of 

appeal to the Court of Appeals for the Federal Circuit or by way of a civil action) may be granted 

160 See TBMP § 509.01 regarding the standards to be applied in deciding contested motions to extend or reopen 

time. 

161 See Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888 (CCPA 1980) (after granting

numerous extensions of time to respond to motion for summary judgment, last request denied and motion for 

summary judgment granted as conceded). 

162 See Chesebrough-Pond's Inc. v. Faberge, Inc., supra and Luemme, Inc. v. D.B. Plus Inc., 53 USPQ2d 1758

(TTAB 1999) (waiting for Board approval of previous extension request insufficient to justify resetting of dates). 

Cf. TBMP § 202.01 (Time for Filing Request – In General); In re Holland American Wafer Co., 737 F.2d 1015, 222 

USPQ 273 (Fed. Cir. 1984); and In re L.R. Sport Inc., 25 USPQ2d 1533 (Comm'r 1992). 

 

163 See 37 CFR §§ 2.120(a), 2.121(a)(1), 2.121(c), 2.127(a) and 2.127(e)(1). See also Luemme, Inc. v. D. B. Plus 

Inc., supra. 

164 See 37 CFR § 2.121(a). 

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by the Director upon written request, which should be directed to the Office of the Solicitor, not 

the Board.165

510 Motion to Suspend; Motion to Resume 

37 CFR § 2.117 Suspension of proceedings. 

(a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a 

party or parties to a pending case are engaged in a civil action or another Board proceeding 

which may have a bearing on the case, proceedings before the Board may be suspended until 

termination of the civil action or the other Board proceeding.

(b) Whenever there is pending before the Board both a motion to suspend and a motion which is 

potentially dispositive of the case, the potentially dispositive motion may be decided before the 

question of suspension is considered regardless of the order in which the motions were filed. 

(c) Proceedings may also be suspended, for good cause, upon motion or a stipulation of the 

parties approved by the Board. 

37 CFR § 2.120(e)(2) When a party files a motion for an order to compel discovery, the case will 

be suspended by the Trademark Trial and Appeal Board with respect to all matters not germane 

to the motion, and no party should file any paper which is not germane to the motion, except as 

otherwise specified in the Board's suspension order. The filing of a motion to compel shall not 

toll the time for a party to respond to any outstanding discovery requests or to appear for any 

noticed discovery deposition. 

37 CFR § 2.127(d) When any party files a motion to dismiss, or a motion for judgment on the 

pleadings, or a motion for summary judgment, or any other motion which is potentially 

dispositive of a proceeding, the case will be suspended by the [Board] with respect to all matters 

not germane to the motion and no party should file any paper which is not germane to the motion 

except as otherwise specified in the Board's suspension order. If the case is not disposed of as a 

result of the motion, proceedings will be resumed pursuant to an order of the Board when the 

motion is decided. 

37 CFR § 2.146(g) The mere filing of a petition to the Director will not act as a stay in any ... 

inter partes proceeding that is pending before the [Board] ... except when a stay is specifically 

requested and is granted ... . 

37 CFR § 2.124(d)(2) [Depositions upon written questions] ...Upon receipt of written notice 

that one or more testimonial depositions are to be taken upon written questions, the Trademark 

165 See 37 CFR § 2.145(e); Appeals to the Federal Circuit from PTO, 1120 TMOG 22 (November 13, 1990); and 

TBMP §§ 902.02 (Time for Filing Notice of Appeal) and 903.04 (Time for Filing Civil Action). 

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Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for 

the orderly completion of the depositions upon written questions.

510.01 In General 

 

Flowing from the Board's inherent power to schedule disposition of the cases on its docket is the 

power to stay proceedings, which may be exercised by the Board upon its own initiative, upon 

motion, or upon stipulation of the parties approved by the Board.166 Some of the most common 

reasons for suspension are discussed below. 

510.02 Suspension Pending Outcome of Another Proceeding; Resumption 

510.02(a) Suspension 

Whenever it comes to the attention of the Board that a party or parties to a case pending 

before it are involved in a civil action which may have a bearing on the Board case, 

proceedings before the Board may be suspended until final determination of the civil 

action.167 

Most commonly, a request to suspend pending the outcome of another proceeding seeks 

suspension because of a civil action pending between the parties in a Federal district 

court. 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 often binding upon the Board, while the decision of the Board is not binding 

upon the court. 168

166 See 37 CFR § 2.117 and Opticians Ass'n of America v. Independent Opticians of America Inc., 734 F. Supp. 

1171, 14 USPQ2d 2021 (D.N.J. 1990), rev'd on other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990). 

 

167 See 37 CFR § 2.117(a); General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992);

Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975), rev'd on other grounds, 549 F.2d 785, 193

USPQ 149 (CCPA 1977); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125 (TTAB 

1974), petition denied, 181 USPQ 779 (Comm'r 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB 

1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB 1971); and David B. Allen, TIPS FROM 

THE TTAB: Impact of TTAB Decisions in Civil Litigation: The Alphonse-Gaston Act, 74 Trademark Rep. 180 

(1984). 

168 See, for example, Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2d Cir.

1988) (doctrine of primary jurisdiction might be applicable if a district court action involved only the issue of

registrability, but would not be applicable where court action concerns infringement where the interest in prompt

adjudication far outweighs the value of having the views of the PTO); American Bakeries Co. v. Pan-O-Gold Baking

Co., 650 F. Supp. 563, 2 USPQ2d 1208 (D.Minn. 1986) (primary jurisdiction should not be invoked where, inter 

alia, a stay of the district court action is more likely to prolong the dispute than lead to its economical disposition 

and where the district court action includes claims which cannot be raised before the Board); and Toro Co. v.

Hardigg Industries, Inc., supra at 692. 

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Further, pursuant to 37 CFR § 2.117(a), the Board may also, in its discretion, suspend a 

proceeding pending the final determination of another Board proceeding in which the 

parties are involved,169 or a civil action pending between the parties in a state court,

a foreign action between the parties, wherein one party challenges the validity of a 

foreign registration upon which the other party's subject application is based,

another proceeding in which only one of the parties is involved.

 

170 or 

171 or even 

172

Ordinarily, the Board will suspend proceedings in the case before it if the final 

determination of the other proceeding will have a bearing on the issues before the 

Board.173

 Cf. Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844-1845 (TTAB 1995) (district court 

finding concerning priority of use not binding in view of differences in interpretation of Section 7(c) by Board and 

court, and finding regarding priority of secondary meaning not binding because said issue was not involved in the 

Board proceeding); Marc A. Bergsman, TIPS FROM THE TTAB: The Effect of Board Decisions in Civil Actions; 

Claim Preclusion and Issue Preclusion in Board Proceedings, 80 Trademark Rep. 540 (1990); and David B. Allen,

TIPS FROM THE TTAB: Impact of TTAB Decisions in Civil Litigation: The Alphonse-Gaston Act, supra. 

 

169 Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (suspended pending

outcome of ex parte prosecution of opposer's application). 

170 See Mother's Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221 USPQ 394 (Fed. Cir. 1983) (state court 

infringement action); Professional Economics Incorporated v. Professional Economic Services, Inc., 205 USPQ 

368, 376 (TTAB 1979) (decision of state court, although not binding on the Board, was considered persuasive on the 

question of likelihood of confusion); and Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366 (TTAB

1975) (state court action to determine ownership of applicant’s mark and authority of applicant to file application). 

171 See Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993) (opposition 

suspended pending decision of German court on validity of foreign registration which is the basis of the U.S.

application involved in the opposition). 

172 See Argo & Co. v. Carpetsheen Manufacturing, Inc., supra (state court action between applicant and third party 

to determine ownership of applicant’s mark).

173 See 37 CFR § 2.117(a) and, for example, General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ 1933 

(TTAB 1992) (relief sought in Federal district court included an order directing Office to cancel registration 

involved in cancellation proceeding); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125

(TTAB 1974) (decision in civil action for infringement and unfair competition would have bearing on outcome of 

Section 2(d) claim before Board), petition denied, 181 USPQ 779 (Comm'r 1974). See also Tokaido v. Honda 

Associates Inc., 179 USPQ 861 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB

1971); and Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568 (TTAB 1971). 

 But see Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003) (petitioner's motion to 

suspend filed after trial denied as untimely, and in any event, petition was dismissed since petitioner's only proffered 

evidence had been stricken); E.I. du Pont de Nemours & Co. v. G.C. Murphy Co., 199 USPQ 807, 808 n.3 (TTAB 

1978) and Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429 (TTAB 1973) (in each

case, a motion to suspend filed after the conclusion of testimony and briefing periods, when the Board proceeding

was ready for decision, was denied). 

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Suspension of a Board proceeding pending the final determination of another proceeding 

is solely within the discretion of the Board; the court in which a civil action is pending 

has no power to suspend proceedings in a case before the Board,174 nor do parties or their 

attorneys.175 However, if, as sometimes happens, the court before which a civil action is 

pending elects to suspend the civil action to await determination of the Board proceeding 

and the Board is so advised, the Board will go forward with its proceeding.

176 

When a motion to suspend pending the outcome of a civil action is filed, the Board 

normally will require that a copy of the pleadings from the civil action be submitted, so 

that the Board can ascertain whether the final determination of the civil action will have a 

bearing on the issues before the Board.177 This requirement ordinarily is waived if the 

parties stipulate to the suspension. 

The Board does not usually require that an issue be joined (that an answer be filed) in one 

or both proceedings before the Board will consider suspending a Board proceeding 

pending the outcome of another proceeding.178 Such a requirement is made only in those 

cases where there is no stipulation to suspend and it is not possible for the Board to 

ascertain, prior to the filing of an answer in one or both proceedings, whether the final 

determination of the other proceeding will have a bearing on the issues before the Board. 

If there is pending, at the time when the question of suspension of proceedings before the 

Board is raised, a motion which is potentially dispositive of the case, the potentially 

dispositive motion may be decided before the question of suspension is considered.179 

The purpose of this rule is to prevent a party served with a potentially dispositive motion 

from escaping the motion by filing a civil action and then moving to suspend before the 

174 See Opticians Ass'n of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021 

(D.N.J. 1990) (district court has no control over Board docket and no power to stay Board proceedings), rev'd on 

other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990). 

175 See Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568 (TTAB 1971)). 

176 See David B. Allen, TIPS FROM THE TTAB: Impact of TTAB Decisions in Civil Litigation: The AlphonseGaston Act, 74 Trademark Rep. 180 (1984). 

177 See Forest Laboratories Inc. v. G.D. Searle & Co. 52 USPQ2d 1058 (TTAB 1999) and SCOA Industries Inc. v.

Kennedy & Cohen, Inc., 188 USPQ 411 (TTAB 1975), appeal dismissed, 189 USPQ 15 (CCPA 1976). 

 

178 See Other Telephone Co. v. Connecticut National Telephone Co., supra. 

179 See 37 CFR § 2.117(b). See also Boyds Collection Ltd. v. Herrington & Co., supra (motion to strike petitioner's 

notice of reliance, its only evidence in the case, decided before motion to suspend, and granted). 

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Board has decided the potentially dispositive motion.180 However, the Board, in its 

discretion, may elect to suspend without first deciding the potentially dispositive motion. 

 

510.02(b) Resumption 

When a proceeding before the Board has been suspended pending the outcome of another 

proceeding, and that other proceeding has been finally determined, the interested party 

should notify the Board in writing of the disposition of the other proceeding, and 

requesting that further appropriate action be taken in the Board proceeding. Usually, the 

interested party requests, as a result of the decision in the other proceeding, that judgment 

be entered in its behalf on one or more issues in the Board proceeding. A copy of the 

decision in the other proceeding should accompany the notification. Absent any such

notification as to the final determination of the civil action, cases which have been 

suspended pending civil action will remain in a suspended status for two years before the 

Board will issue an order requiring the parties to provide the status of the civil action.

A proceeding is considered to have been finally determined when a decision on the merits 

of the case (i.e., a dispositive ruling that ends litigation on the merits) has been rendered, 

and no appeal has been filed therefrom, or all appeals filed have been decided. 

510.03 Suspension for Other Reasons; Resumption 

510.03(a) Suspension 

The Board suspends proceedings in cases before it for a wide variety of reasons including 

those discussed below. 

Upon motion or upon stipulation. Proceedings may be suspended for good cause upon 

motion or upon stipulation of the parties approved by the Board.181 For example, 

proceedings may be suspended, upon motion or stipulation under 37 CFR § 2.117(c), for 

purposes of settlement negotiations, subject to the right of either party to request 

resumption at any time.

182 In addition, if a motion to extend time indicates that the 

180 See David B. Allen, TIPS FROM THE TTAB: Impact of TTAB Decisions in Civil Litigation: The Alphonse 

Gaston Act, supra. 

 

181 See 37 CFR § 2.117(c). 

 

182 See Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (it may be the safest 

course of action for parties engaged in settlement to file a consented motion or stipulation to suspend proceedings) 

and MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979) (order suspending proceedings for 

settlement vacated once it came to Board's attention that adverse party objected to suspension on such basis). See

also Old Nutfield Brewing Company, Ltd. v. Hudson Valley Brewing Company, Inc., 65 USPQ2d 1701 (TTAB 

500 - 309 
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parties are negotiating for settlement, the Board may, in lieu of granting the requested 

extension, suspend proceedings for a specified time, usually six months, subject to 

resumption by either party at any time.183 The parties may also agree to suspend 

proceedings for consideration of a matter by the examining attorney, including the 

disposition of a party's application before the examining attorney.184

Bankruptcy. The Board will issue an order suspending proceedings if it comes to the 

attention of the Board that the defendant has filed a petition for bankruptcy.185 Under the 

automatic stay provisions of Section 362 of the United States Bankruptcy Code, 11 

U.S.C. § 362, a petition for bankruptcy (filed under Section 301, 302, or 303 of the Code, 

11 U.S.C. § 301, 302, or 303) operates as a stay, inter alia, of the commencement or 

continuation of a judicial, administrative, or other process against the debtor that was or 

could have been commenced before the commencement of the bankruptcy case. 

However, if it is the plaintiff in the Board proceeding, rather than the defendant, which 

has filed a petition for bankruptcy, the automatic stay provisions do not mandate the 

suspension of the Board proceeding unless there is a counterclaim in the Board 

proceeding for cancellation of the plaintiff's registration(s). 

Withdrawal of counsel. If, in a Board proceeding, a party's attorney or other authorized 

representative files a request to withdraw as counsel for the party, and the request is 

granted, the Board will suspend proceedings and allow the party a stated period of time

(usually 30 days) in which to appoint a new attorney or other authorized representative 

(and inform the Board thereof), or to file a paper stating that it desires to represent itself, 

failing which the Board may issue an order to show cause why default judgment should 

not be entered against the party.186 A party may inform the Board of the appointment of 

new counsel either by filing written notification thereof (as, for example, by filing a copy 

2002) (proceedings are not suspended automatically when parties are discussing settlement and a party which fails 

to timely move for extension or suspension of dates on the basis of settlement does so at its own risk). 

183 See TBMP § 509.02 (Form and Determination of Motions to Extend or Reopen). 

184 See, for example, The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995)

(suspended pending consideration of consent agreement by examining attorney). 

185 See, for example, In re Checkers of North America Inc., 23 USPQ2d 1451 (Comm'r 1992) (suspended where 

petitioner’s pleaded registration was the subject of a counterclaim) aff’d sub nom., Checkers Drive-In Restaurants, 

Inc. v. Commissioners of Patents and Trademarks, 51 F.3d 1078, 34 USPQ2d 1574 (D.C. Cir. 1995). 

 

186 See, with respect to withdrawal of counsel, TBMP §§ 116.02-116.05 and 513.01. For information concerning

action by the Board after expiration of the time allowed in the suspension order, see TBMP § 510.03(b)

(Resumption). 

500 - 310 
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of the new appointment), or by having new counsel make an appearance on the party's 

behalf in the proceeding.187 

Potentially dispositive motion. When a party to a Board proceeding files a motion which 

is potentially dispositive of the proceeding, such as a motion to dismiss,188 a motion for 

judgment on the pleadings, or a motion for summary judgment, the case will be

suspended by the Board with respect to all matters not germane to the motion.189

The filing of such a potentially dispositive motion does not, in and of itself, operate to

suspend a case; until the Board issues its suspension order, all times continue to run.190 

However, when issuing its suspension order, the Board ordinarily treats the proceeding as 

if it had been suspended as of the filing date of the potentially dispositive motion.191 On 

a case-by-case basis, the Board may find that the filing of a potentially dispositive motion 

provides a party with good cause for not complying with an otherwise outstanding 

obligation, for example, responding to discovery requests.192

187 See TBMP § 114.03 (Representation by Attorney). See also TBMP §§ 114.04 (Representation by Non-Lawyer)

and 114.05 (Representation by Foreign Attorney). 

188 The filing of a motion to dismiss for failure to state a claim upon which relief can be granted tolls the time for 

filing an answer. See Fed. R. Civ. P. 12(b) and Hollowform Inc. v. Delma Aeh, 180 USPQ 284 (TTAB 1973), aff’d, 

515 F.2d 1174, 185 USPQ 790 (CCPA 1975). 

189 See 37 CFR § 2.127(d); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999)

(suspended pending disposition of motion for discovery sanctions which included request for entry of judgment); 

DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434 (TTAB 1995) (suspended pending disposition of 

motion for judgment on the pleadings); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 n.7 

(TTAB 1985) (suspended pending motion for summary judgment, and subsequent motion to suspend for civil action 

deferred until after decision on summary judgment); and Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 

1985) (cross motion for summary judgment is germane to a pending motion for summary judgment). 

 Cf. SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994) (motion for leave to amend a notice of

opposition is not a potentially dispositive motion which would warrant suspension under 2.127(d)). 

190 See Electronic Industries Association. v. Potega, supra; SDT Inc. v. Patterson Dental Co., supra; and Giant 

Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986). 

191 See Leeds Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002) and Electronic 

Industries Association. v. Potega, supra. 

192 See Leeds Technologies Limited v. Topaz Communications Ltd., supra (time for opposer to serve discovery 

responses reset following decision on opposer's motion for judgment on pleadings).

500 - 311 
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STIPULATIONS AND MOTIONS 

 

Once the Board has suspended proceedings in a case, pending determination of a 

potentially dispositive motion, no party should file any paper that is not germane to the 

motion.193 

Motion to compel. Pursuant to 37 CFR § 2.120(e)(2) (effective October 9, 1998) when a 

party files a motion to compel discovery, the Board will issue an order suspending the 

proceeding with respect to all matters not germane to the motion,194 and no party should 

file any paper which is not germane to the discovery dispute, except as otherwise 

specified in the Board’s suspension order. However, neither the filing of a motion to 

compel nor the Board’s resulting suspension order tolls the time for parties to respond to 

any outstanding discovery requests which had been served prior to the filing of the 

motion to compel, nor does it excuse a party’s appearance at any discovery deposition 

which had been duly noticed prior to the filing of the motion to compel.195 

Petition to the Director. The mere filing of a petition to the Director seeking review of 

an interlocutory decision or order of the Board196 will not act as a stay of the Board 

proceeding pending disposition of the petition. Such a stay must be specifically 

requested of the Board and granted by the Board.197 The decision as to whether to grant 

such a stay is within the Board’s discretion. Until and unless the Board issues a 

suspension order, all times continue to run as previously set or reset by the Board. 

Testimony depositions on written questions. Upon receipt of written notice that one or 

more testimonial depositions are to be taken upon written questions pursuant to 37 CFR § 

2.124, the Board will suspend or reschedule other proceedings in the case to allow for the 

orderly completion of the depositions upon written questions.198 

193 See 37 CFR § 2.127(d); Pegasus Petroleum Corp. v. Mobil Oil Corp., supra (motion to suspend for civil action 

not considered); and Nestle Co. v. Joyva Corp., supra (cross-motion for summary judgment germane to pending 

summary judgment motion). 

194 See also, e.g., Jain v. Ramparts Inc., 49 USPQ2d 1429 (TTAB 1998) (proceedings deemed suspended as of the 

filing of the motion). 

 

195 See 37 CFR § 2.120(e)(2). See also TBMP § 523 regarding motions to compel. 

196 See generally TBMP § 905 (Petition to the Director). 

197 See 37 CFR § 2.146(g). 

198 See 37 CFR § 2.124(d)(2), and TBMP § 703.02(c) (Depositions on Written Questions – When Taken). 

500 - 312 
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STIPULATIONS AND MOTIONS 

 

510.03(b) Resumption 

Settlement negotiations. When proceedings are suspended for purposes of settlement 

negotiations, the Board normally sets a specific period of suspension (up to six months). 

Each party has the right to request resumption at any time during the suspension 

period.199 If no word is heard from either party prior to the expiration of the suspension 

period, the Board resumes proceedings. When resuming proceedings, if the consented 

motion or stipulation to suspend does not specify otherwise, the Board will generally 

issue a new trial order beginning with whatever period was running when the consented 

motion or stipulation to suspend was filed.200 In addition to, or instead of, resetting trial 

dates, the Board may reset the time for the parties to take other appropriate action in the 

case. Until the Board issues an order resuming proceedings and setting new response 

and/or trial dates, proceedings remain suspended, despite the fact that the suspension

period set by the Board has run. 

Matter before the examining attorney. If proceedings have been suspended for 

consideration of a matter by the examining attorney, including the disposition of a party's 

application before the examining attorney, and the matter does not resolve the case, the 

Board will issue an order resuming proceedings, and taking further appropriate action.

201 

Bankruptcy. When the Board has suspended proceedings because a defendant in a Board 

proceeding (or plaintiff whose registration is the subject of a counterclaim) has filed a 

petition for bankruptcy, the Board periodically (normally, every two years) inquires as to 

the status of the bankruptcy case. In order to expedite matters, however, when the 

bankruptcy case has been concluded, or the involved application or registration of the 

bankrupt party has been transferred to some other person, the interested party should 

immediately file a paper notifying the Board thereof. Once the Board has been notified 

of the outcome of the bankruptcy case, and/or of the disposition of the bankrupt's

involved application or registration, the Board will resume proceedings and take further 

appropriate action. 

Withdrawal of counsel. If proceedings have been suspended in order to allow a party,

whose attorney or other authorized representative has withdrawn, a period of time in 

which to either appoint new counsel (and inform the Board thereof) or file a paper stating 

that it desires to represent itself202 and new counsel is appointed (and the Board is 

199 See MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979). 

 

200 See Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 n.3 (TTAB 1999). 

201 See, for example, The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995)

(proceedings to be resumed if consent agreement did not overcome examining attorney's 2(d) refusal). 

202 See TBMP § 510.03(a) (Suspension). 

500 - 313 
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STIPULATIONS AND MOTIONS 

 

informed thereof) during the time allowed, the Board will resume proceedings, and go 

forward with that person representing the party. If, instead, the party files a paper stating 

that it desires to represent itself, the Board will resume proceedings and go forward with 

the party representing itself, but the party may employ a new attorney or other authorized 

representative at any time thereafter. If the party fails, during the time allowed, to either 

appoint new counsel (and inform the Board thereof) or file a paper stating that it desires 

to represent itself, the Board may issue an order noting that the party appears to have lost

interest in the case, and allowing the party time in which to show cause why default 

judgment should not be entered against it.203 If the party, in turn, files a response 

indicating that it has not lost interest in the case, default judgment will not be entered 

against it. If the party fails to file a response to the show cause order, default judgment 

may be entered against it. 

Potentially dispositive motion. When proceedings have been suspended pending 

determination of a potentially dispositive motion, and the determination of the motion 

does not dispose of the case, the Board, in its decision on the motion, will issue an order 

resuming proceedings, and taking further appropriate action.204 

 

511 Motion to Consolidate 

Fed. R. Civ. P. 42 (a) Consolidation. When actions involving a common question of law or fact 

are pending before the court, it may order a joint hearing or trial of any or all the matters in 

issue in the actions; it may order all the actions consolidated; and it may make such orders 

concerning proceedings therein as may tend to avoid unnecessary costs or delay. 

When cases involving common questions of law or fact are pending before the Board, the Board 

may order the consolidation of the cases.205 In determining whether to consolidate proceedings, 

203 See, for example, Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993). 

204 See 37 CFR § 2.127(d) and, for example, Electronic Industries Association v. Potega , 50 USPQ2d 1775, 1776

n.4 (TTAB 1999) (dates reset beginning with the period that was running when the potentially dispositive motion

was filed). 

 

205 See Fed. R. Civ. P. 42(a); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997) (both

proceedings involved the same mark and virtually identical pleadings); Ritchie v. Simpson, 41 USPQ2d 1859 (TTAB 

1996), rev'd on other grounds, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) (cases consolidated despite 

variations in marks and goods); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d

1423 (TTAB 1993) (opposition and cancellation consolidated); Regatta Sport Ltd. v. Telux-Pioneer Inc., 20

USPQ2d 1154 (TTAB 1991); and Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1384 n.3 (TTAB 1991). 

 See also Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); Bigfoot 4x4 Inc. v.

Bear Foot Inc., 5 USPQ2d 1444 (TTAB 1987); Federated Department Stores, Inc. v. Gold Circle Insurance Co.,

226 USPQ 262 (TTAB 1985); and Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 

1981), set aside on other grounds and new decision entered, 217 USPQ 464 (TTAB 1983). 

500 - 314 
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STIPULATIONS AND MOTIONS 

 

the Board will weigh the savings in time, effort, and expense, which may be gained from

consolidation, against any prejudice or inconvenience that may be caused thereby.206 Although 

identity of the parties is another factor considered by the Board in determining whether 

consolidation should be ordered,207 it is not always necessary.208 Consolidation is discretionary 

with the Board, and may be ordered upon motion granted by the Board, or upon stipulation of the 

parties approved by the Board, or upon the Board's own initiative.209 

Generally, the Board will not consider a motion to consolidate until an answer has been filed 

(i.e., until issue has been joined) in each case sought to be consolidated. However, the Board 

may, in its discretion, order cases consolidated prior to joinder of issue.210 

When cases have been ordered consolidated, they may be presented on the same record and 

briefs.211 Papers should only be filed in the "parent" case of the consolidated proceedings unless 

otherwise advised by the Board, but the caption of each paper filed with the Board should 

reference the individual proceeding numbers with the parent case listed first.212 The oldest (i.e., 

first-filed) of the consolidated cases is treated as the "parent" case. 

206 See, for example, Wright & Miller, Federal Practice and Procedure: Civil 2d § 2383 (1999); Lever Brothers

Co. v. Shaklee Corp., 214 USPQ 654 (TTAB 1982) (consolidation denied where one case was just in pleading stage, 

and testimony periods had expired in other); Envirotech Corp. v. Solaron Corp., 211 USPQ 724 (TTAB 1981) 

(consolidation denied as possibly prejudicial to defendant where defendant's involved marks were not all the same); 

World Hockey Ass'n v. Tudor Metal Products Corp., 185 USPQ 246 (TTAB 1975) (consolidation ordered where 

issues were substantially the same and consolidation would be advantageous to both parties); and Izod, Ltd. v. La 

Chemise Lacoste, 178 USPQ 440 (TTAB 1973) (consolidation denied where issues differed). 

207 See Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444 (TTAB 1987)

208 See Wright & Miller, supra at § 2384. 

 

209 See, for example, Wright & Miller, supra at § 2383; 8440 LLC v. Midnight Oil Company, 59 USPQ2d 1541

(TTAB 2001) (opposition and cancellation proceedings consolidated on Board's own initiative); S. Industries Inc. v. 

Lamb-Weston Inc., supra at 1297 (motion); Hilson Research Inc. v. Society for Human Resource Management, 

supra (stipulation); Regatta Sport Ltd. v. Telux-Pioneer Inc., supra (Board's initiative); Helene Curtis Industries Inc. 

v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) (stipulation); Bigfoot 4x4 Inc. v. Bear Foot Inc., supra (joint

motion); Federated Department Stores, Inc. v. Gold Circle Insurance Co., supra (motion); and Plus Products v.

Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 1981), set aside on other grounds and new decision

entered, 217 USPQ 464 (TTAB 1983) (motion). 

210 Cf. 37 CFR §§ 2.104(b) and 2.114(b), and TBMP § 305 (Consolidated and Combined Complaints). 

211 See Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, n.2 (TTAB 1996) and 

Hilson Research Inc. v. Society for Human Resource Management, supra. 

212 See, e.g., S. Industries Inc. v. Lamb-Weston Inc., supra at n.4 and Nabisco Brands Inc. v. Keebler Co., 28

USPQ2d 1237, 1238 n.2 (TTAB 1993). 

 

500 - 315 
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STIPULATIONS AND MOTIONS 

 

When actions by different plaintiffs are consolidated, and the plaintiffs are represented by 

different counsel, the plaintiffs may be required to appoint one lead counsel to supervise and 

coordinate the conduct of the plaintiffs' cases.213 

Consolidated cases do not lose their separate identity because of consolidation. Each proceeding 

retains its separate character and requires entry of a separate judgment.214 Upon consolidation, 

the Board will reset trial dates for the consolidated proceeding, usually by adopting the trial dates

as set in the most recently instituted of the cases being consolidated. 

 

512 Motion to Join or Substitute 

512.01 Assignment of Mark

When there has been an assignment of a mark that is the subject of, or relied upon in, an inter 

partes proceeding before the Board the assignee may be joined or substituted, as may be 

appropriate, upon motion granted by the Board, or upon the Board's own initiative.215 

When a mark that is the subject of a Federal application or registration has been assigned, 

together with the application or registration, in accordance with Section 10 of the Act, 15 U.S.C. 

§ 1060, any action with respect to the application or registration which may or must be taken by 

the applicant or registrant may be taken by the assignee (acting itself, or through its attorney or 

other authorized representative), provided that the assignment has been recorded or that proof of 

the assignment has been submitted.216 

NOTE: Section 10 of the Act, 15 U.S.C. § 1060, and part 3 of 37 CFR are not applicable to 

66(a) applications and registrations.217 Except in limited circumstances,218 requests to record 

assignments of 66(a) applications and registrations must be filed directly with the International 

Bureau.219 The International Bureau will notify the USPTO of any changes in ownership 

213 See TBMP § 117.02 (More than One Attorney). 

214 See Wright & Miller, supra at § 2382 (1999). 

 

215 See, e.g., Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1910 n.1 (TTAB 2000) (assignee 

joined at final decision). 

216 See 37 CFR §§ 3.71 and 3.73(b).

 

217 See 37 CFR § 7.22 et seq. for information on recording changes to 66(a) applications and registrations. 

218 See 37 CFR §§ 7.23 and 7.24. 

219 See Section 72 of the Trademark Act, 15 U.S.C. 1141/ and 37 CFR § 7.22. See also Rules of Practice for 

Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, published in the Federal 

Register on September 26, 2003 at 68 FR 55748, 55751; Exam Guide No. 2-03, Guide to Implementation of Madrid

500 - 316 
Chapter 500 

STIPULATIONS AND MOTIONS 

 

recorded in the International Register. The USPTO will record only those assignments, or other 

documents of title, that have been recorded in the International Register.

220

If the mark in an application or registration which is the subject matter of an inter partes 

proceeding before the Board is assigned, together with the application or registration, the 

assignee may be joined as a party (as a party defendant, in the case of an opposition or

cancellation proceeding; or as a junior or senior party, as the case may be, in an interference or

concurrent use proceeding) upon the filing with the Board of a copy of the assignment. When 

the assignment is recorded in the Assignment Services Division of the USPTO,221 the assignee 

may be substituted as a party if the assignment occurred prior to the commencement of the 

proceeding, or the assignor is no longer in existence, or the plaintiff raises no objections to 

substitution, or the discovery and testimony periods have closed; otherwise, the assignee will be

joined, rather than substituted, to facilitate discovery.222 

If a mark pleaded by a plaintiff is assigned and a copy of the assignment is filed with the Board, 

the assignee ordinarily will be substituted for the originally named party if the assignment 

occurred prior to the commencement of the proceeding, if the discovery and testimony periods 

have closed, if the assignor is no longer in existence, or if the defendant raises no objection to 

substitution. Otherwise, the assignee will be joined, rather than substituted, to facilitate the 

taking of discovery and the introduction of evidence.223 The assignment does not have to be 

Protocol in the United States (part V.I) (October 28, 2003); and Exam Guide No. 1-03, Changes Affecting All 

Applications and Registrations (part V.D) (October 30, 2003). 

220 See Exam Guide No. 2-03, Guide to Implementation of Madrid Protocol in the United States (part IV.F and 

VI.A.1) (October 28, 2003).

221 With respect to 66(a) applications and registrations, the USPTO will record only those assignments, or other 

documents of title, that have been recorded in the International Register. See NOTE to this section regarding 

assignments of 66(a) applications and registrations. 

222 See, for example, 37 CFR §§ 2.113(c) and (d), 3.71 and 3.73(b); Fed. R. Civ. P. 17 and 25; Pro-Cuts v. SchilzPrice Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993); Western Worldwide Enterprises Group Inc. v. Qinqdao 

Brewery, 17 USPQ2d 1137, 1138 n.4 (TTAB 1990) (assignee joined after filing copy of an assignment which

occurred subsequent to commencement of proceeding); and Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 857

n.1 (TTAB 1986) (assignee joined where papers filed by parties indicated registration had been assigned). 

 See also Huffy Corp. v. Geoffrey Inc., 18 USPQ2d 1240 (Comm'r 1990); S & L Acquisition Co. v. Helene Arpels

Inc., 9 USPQ2d 1221 (TTAB 1987); Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ

956 (TTAB 1985); E.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ 713 (TTAB 1984); and Hamilton Burr 

Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802 (TTAB 1982). 

223 See, for example, 37 CFR §§ 2.113(c) and (d), 3.71 and 3.73(b); Fed. R. Civ. P. 17 and 25; 37 CFR § 2.102(b);

TBMP § 303.05(b) (Opposition Filed by Privy); William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870

(TTAB 1994) (substitution of opposer appropriate where assignment occurred prior to commencement); Pro-Cuts v. 

Schilz-Price Enterprises Inc., supra at 1225 (motion to substitute filed during testimony period granted to the extent

that successor was joined); Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079 (TTAB 

1992) (opposer’s motion to substitute granted where copy of assignment was filed and applicant did not object); and

500 - 317 
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STIPULATIONS AND MOTIONS 

If the name of a party to an inter partes proceeding before the Board is changed, the title of the 

Board proceeding may be changed, upon motion or upon the Board's own initiative, to reflect the 

 

recorded with respect to a plaintiff's pleaded application or registration before substitution or 

joinder (whichever is appropriate) is made. However, recordation in the Assignment Services 

Division of the USPTO is advisable because it will aid the assignee in its effort to prove 

ownership of the application or registration at trial.224 

If the mark of an excepted common law user (which is not the owner of an involved application 

or registration) in a concurrent use proceeding, is assigned, the assignee will be joined or 

substituted as party defendant upon notification to the Board of the assignment.225 

Alternatively, if there has been an assignment of a mark that is the subject of, or is relied upon in, 

a proceeding before the Board, and the Board does not order that the assignee be joined or 

substituted in the proceeding, the proceeding may be continued in the name of the assignor.226 

Further, the fact that a third party related to the plaintiff, such as a parent or licensor of the 

plaintiff, may also have an interest in a mark relied on by the plaintiff does not mean that the 

third party must be joined as a party plaintiff.227 

512.02 Change of Name 

Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988) (survivor of merger

substituted at final decision). 

 See also Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984); Electronic Realty 

Associates, Inc. v. Extra Risk Associates, Inc., 217 USPQ 810 (TTAB 1982); Liberty & Co. v. Liberty Trouser Co.,

216 USPQ 65 (TTAB 1982); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109 (TTAB 1976); 

and Aloe Creme Laboratories, Inc. v. Aloe 99, Inc., 188 USPQ 316 (TTAB 1975).

 Compare SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994) (motion to join licensee as "coopposer" denied since right to oppose may be transferred but not shared unless timely opposition is filed) and Cass 

Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB 1993) (substitution of proper party in interest not 

permitted in view of misidentification of original party). 

224 With respect to 66(a) applications and registrations, the USPTO will record only those assignments, or other 

documents of title, that have been recorded in the International Register. See NOTE to this section regarding 

assignments of 66(a) applications and registrations. 

225 See Pro-Cuts v. Schilz-Price Enterprises Inc., supra and Pennsylvania Fashion Factory, Inc. v. Fashion Factory,

Inc., 215 USPQ 1133 (TTAB 1982). 

226 See Fed. R. Civ. P. 25(c), and Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, n.1

(TTAB 1982) (decision will be binding upon the assignee). 

 

227 See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625 (TTAB 1992) (respondent's motion to join

petitioner's licensor as party plaintiff denied). 

500 - 318 
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STIPULATIONS AND MOTIONS 

change of name, provided that appropriate evidence thereof is made of record in the proceeding. 

Such evidence may consist, for example, of a copy of the name change document, or the reel and 

frame numbers at which such document is recorded in the Assignment Services Division of the 

USPTO. ence is made of record in the proceeding, the proceeding may be 

continued in the party's old name

 

228 If no such evid

.

229 

A name change document does not have to be recorded with respect to a defendant's involved 

application or registration, or a plaintiff's pleaded application or registration, in order for the 

Board proceeding title to be changed to reflect the new name. However, recordation is advisable 

because it facilitates proof of ownership of the application or registration, and because filing for 

recordation is one of the 37 CFR § 3.85 requirements for an applicant that desires, if it prevails in 

the proceeding, to have its registration issue in its new name.

230 

512.03 Issuance of Registration to Assignee, or in New Name 

37 CFR § 3.85 Issue of registration to assignee. The certificate of registration may be issued to 

the assignee of the applicant, or in a new name of the applicant, provided that the party files a 

written request in the trademark application by the time the application is being prepared for 

issuance of the certificate of registration, and the appropriate document is recorded in the 

Office. If the assignment or name change document has not been recorded in the Office, then the 

written request must state that the document has been filed for recordation. The address of the 

assignee must be made of record in the application file. 

Even where the assignee of an application which is the subject matter of a Board inter partes 

proceeding has been joined or substituted as a party to the proceeding,231 any registration issued 

228 See, for example, WMA Group Inc. v. Western International Media Corp., 29 USPQ2d 1478 (TTAB 1993);

Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.1 (TTAB 1992) (caption to be

changed if document evidencing of change of name is submitted); NutraSweet Co. v. K & S Foods Inc., 4 USPQ2d

1964 n.2 (TTAB 1987) (although no request to substitute was filed, where the change of name was recorded and

there was no dispute as to facts and circumstances surrounding name change, opposer under new name was 

substituted as plaintiff); and Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984). 

Cf. In re Brittains Tullis Russell Inc., 23 USPQ2d 1457 n.1 (Comm'r 1991) (in petition to Commissioner to accept § 

8 & 15 affidavit, registration file evidenced change of registrant's name and claim of ownership accepted). See also

NOTE to TBMP § 512.01 regarding assignments of 66(a) applications and registrations. 

229 See, for example, Maine Savings Bank v. First Banc Group of Ohio, Inc., 220 USPQ 736 (TTAB 1983) (caption

was not changed to reflect name change where no supporting documents submitted) and National Blank Book Co. v.

Leather Crafted Products, 218 USPQ 827 (TTAB 1983). Cf. Fed. R. Civ. P. 25(c).

230 See TBMP § 512.03 (Issuance of Registration to Assignee, or in New Name) and, for example, Maine Savings 

Bank v. First Banc Group of Ohio, Inc., supra. With respect to 66(a) applications and registrations, the USPTO will 

record only those assignments, or other documents of title, that have been recorded in the International Register. See 

NOTE to TBMP § 512.01 regarding assignments of 66(a) applications and registrations. 

231 See TBMP § 512.01 (Assignment of Mark).

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from the application may issue in the name of the assignor unless the assignee complies with the 

requirements of 37 CFR § 3.85. Specifically, to ensure that the registration will issue in its 

name, the assignee must file a written request in the application (or in the Board proceeding, if 

that proceeding has not yet ended), by the time the application is being prepared for issuance of 

the certificate of registration, that the registration be issued in its name. In addition, an 

appropriate document must be of record in the Assignment Services Division of the USPTO, or 

the written request must state that the document has been filed for recordation. Finally, the 

address of the assignee must be made of record in the application file. 

Similarly, even though the title of an inter partes proceeding before the Board may have been 

changed to reflect a name change of an applicant whose application is the subject of the 

proceeding, any registration issued from the application may issue in the applicant's original 

name unless the applicant complies with the requirements of 37 CFR § 3.85.232 

If an assignment or change of name document is recorded in the Assignment Division well prior 

to the time the subject application is prepared for issuance of a registration, the registration may 

issue in the name of the assignee, or in the new name, even if no 37 CFR § 3.85 request is filed. 

However, the registration may issue in the name of the assignor, or in the old name. The purpose 

of the written request is to call the attention of the USPTO to the assignment, or change of name, 

and thus to ensure that the registration issues in the name of the assignee, or in the new name. 

Accordingly, it is sufficient for the purpose if applicant files a paper referring to the assignment 

or change of name, and the assignment or change of name document has either been recorded, or 

applicant states that the document has been submitted for recording.233

NOTE: Section 10 of the Act, 15 U.S.C. § 1060, and part 3 of 37 CFR are not applicable to 

66(a) applications and registrations.

234 Except in limited circumstances,235 requests to record 

assignments of 66(a) applications and registrations must be filed directly with the International 

Bureau.236 The International Bureau will notify the USPTO of any changes in ownership 

232 See Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1134 n.1 (TTAB 1992). 

233 See 37 CFR § 2.171 for procedures to receive a new certificate of registration on change of ownership or when

ownership with respect to some, but not all, of the goods and/or services has changed. 

234 See 37 CFR § 7.22 et seq. for information on recording changes to 66(a) applications and registrations. 

235 See 37 CFR §§ 7.23 and 7.24. 

236 See Section 72 of the Trademark Act, 15 U.S.C. 1141/ and 37 CFR § 7.22. See also Rules of Practice for 

Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, published in the Federal 

Register on September 26, 2003 at 68 FR 55748, 55751; Exam Guide No. 2-03, Guide to Implementation of Madrid

Protocol in the United States (part V.I) (October 28, 2003); and Exam Guide No. 1-03, Changes Affecting All 

Applications and Registrations (part V.D) (October 30, 2003). 

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513.01 Motion to Withdraw as Representative 

37 CFR § 2.19(b) If the requirements of § 10.40 of this chapter are met, an attorney authorized 

under § 10.14 to represent an applicant, registrant or party in a trademark case may withdraw 

upon application to and approval by the Director. 

 

recorded in the International Register. The USPTO will record only those assignments, or other 

documents of title, that have been recorded in the International Register.

237

512.04 Misidentification 

When it is shown to the satisfaction of the Board that a party in whose name a Board proceeding 

complaint was filed was misidentified therein by mistake, the Board may allow amendment of 

the complaint, pursuant to Fed. R. Civ. P. 15(a), to correct the misidentification and/or to 

substitute the proper party in interest.

238 

When an application or registration is the subject of an inter partes proceeding before the Board, 

and it is shown to the satisfaction of the Board that the applicant was misidentified in the 

application by mistake, the Board may allow amendment of the application or registration (and 

of the Board proceeding title) to correct the misidentification.239 

513 Motion to Withdraw as Representative; Petition to Disqualify 

 

237 See Exam Guide No. 2-03, Guide to Implementation of Madrid Protocol in the United States (parts IV.F and

VI.A.1) (October 28, 2003).

238 See Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 n.3 (TTAB 1985);

Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505 (TTAB 1974); Lone Star

Manufacturing Co. v. Bill Beasley, Inc., 176 USPQ 426 (TTAB 1972), rev'd on other grounds, 498 F.2d 906, 182

USPQ 368 (CCPA 1974); Davidson v. Instantype, Inc., 165 USPQ 269 (TTAB 1970); Pyco, Inc. v. Pico Corp., 165 

USPQ 221 (TTAB 1969); Raker Paint Factory v. United Lacquer Mfg. Corp., 141 USPQ 407 (TTAB 1964); and

Textron, Inc. v. Gillette Co., 177 USPQ 530 (Comm'r 1973). Cf. 37 CFR § 2.102(b); TBMP § 303.05(c) 

(Misidentification of Opposer); and Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB 1993) 

(amendment to correct misidentification and substitute proper party in interest not permitted). 

239 See Accu Personnel Inc. v. Accustaff Inc., 38 USPQ 1443, 1445-46 (TTAB 1996) (applicant's misidentification

of itself as a corporation was harmless mistake): Argo & Co. v. Springer, 198 USPQ 626 (TTAB 1978) (Board

allowed substitution of three individuals for a legally defective corporate applicant finding no mistake as to the true

owner of the mark but rather only a mistake as to legal form or identity of that owner); Argo & Company, Inc. v. 

Springer, et al., 189 USPQ 581 (TTAB 1976); and U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183

USPQ 613 (Comm'r 1974) (deletion of "company" was correctable mistake). 

 Cf. TMEP §§ 802.06 and 802.07; In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991) (correction 

not permitted where joint venture owned the mark but the application was filed by a corporation which was one 

member of the joint venture); In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm'r 1990); In re Techsonic 

Industries, Inc., 216 USPQ 619 (TTAB 1982); and In re Eucryl Ltd., 193 USPQ 377 (TTAB 1976). 

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37 CFR § 10.40 Withdrawal from employment. (a) A practitioner shall not withdraw from 

employment in a proceeding before the Office without permission from the Office (see §§ 1.36 

and 2.19 of this subchapter). In any event, a practitioner shall not withdraw from employment 

until the practitioner has taken reasonable steps to avoid foreseeable prejudice to the rights of

the client, including giving due notice to his or her client, allowing time for employment of 

another practitioner, delivering to the client all papers and property to which the client is 

entitled, and complying with applicable laws and rules. A practitioner who withdraws from 

employment shall refund promptly any part of a fee paid in advance that has not been earned. 

steps taken for the client, merely for the purpose of harassing or maliciously injuring any 

person; 

(2) The practitioner knows or it is obvious that the practitioner's continued employment 

will result in violation of a Disciplinary Rule; 

(3) The practitioner's mental or physical condition renders it unreasonably difficult for 

the practitioner to carry out the employment effectively; or

(4) The practitioner is discharged by the client. 

(c) Permissive withdrawal. If paragraph (b) of this section is not applicable, a practitioner may 

not request permission to withdraw in matters pending before the Office unless such request or 

such withdrawal is because: 

(i) Insists upon presenting a claim or defense that is not warranted under existing 

law and cannot be supported by good faith argument for an extension, 

modification, or reversal of existing law; 

is prohibited under a Disciplinary Rule; 

(b) Mandatory withdrawal. A practitioner representing a client before the Office shall withdraw 

from employment if: 

(1) The practitioner knows or it is obvious that the client is bringing a legal action, 

commencing a proceeding before the Office, conducting a defense, or asserting a position 

in litigation or any proceeding pending before the Office, or is otherwise having 

(1) The petitioner's client: 

(ii) Personally seeks to pursue an illegal course of conduct; 

(iii) Insists that the practitioner pursue a course of conduct that is illegal or that 

(iv) By other conduct renders it unreasonably difficult for the practitioner to 

carry out the employment effectively; 

(v) Insists, in a matter not pending before a tribunal, that the practitioner engage 

in conduct that is contrary to the judgment and advice of the practitioner but not 

prohibited under the Disciplinary Rule; or 

(vi) Has failed to pay one or more bills rendered by the practitioner for an 

unreasonable period of time or has failed to honor an agreement to pay a retainer 

in advance of the performance of legal services. 

(2) The practitioner's continued employment is likely to result in a violation of a 

Disciplinary Rule; 

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STIPULATIONS AND MOTIONS 

(3) The practitioner's inability to work with co-counsel indicates that the best interests of 

(5) The practitioner's client knowingly and freely assents to termination of the 

employment; or 

 

the client likely will be served by withdrawal; 

(4) The practitioner's mental or physical condition renders it difficult for the practitioner 

to carry out the employment effectively; 

(6) The practitioner believes in good faith, in a proceeding pending before the Office, 

that the Office will find the existence of other good cause for withdrawal.

A practitioner who wishes to withdraw from employment as the attorney or other authorized 

representative of a party to a proceeding before the Board must file a request with the Board for 

permission to do so. The request to withdraw must be based upon one of the grounds for 

mandatory or permissive withdrawal listed in 37 CFR §§ 10.40(b) and 10.40(c). 

Moreover, the practitioner must comply with the requirements of 37 CFR § 10.40(a).240 In 

accordance with that rule, a request for permission to withdraw should include (1) a specification 

of the basis for the request; (2) a statement that the practitioner has notified the client of his or 

her desire to withdraw from employment, and has allowed time for employment of another 

practitioner; (3) a statement that all papers and property that relate to the proceeding and to 

which the client is entitled have been delivered to the client; (4) if any part of a fee paid in 

advance has not been earned, a statement that the unearned part has been refunded; and (5) proof 

of service of the request upon the client and upon every other party to the proceeding.241 The 

facts establishing these elements should be set out in detail.242 Moreover, a request to withdraw 

from representation may not be used as a subterfuge to obtain an extension or reopening of time 

that a party would not otherwise be entitled to.243 

240 See 37 CFR §§ 2.19(b) and 10.40; SFW Licensing Corp. and Shoppers Food Warehouse Corp. v. Di Pardo

Packing Limited, 60 USPQ2d 1372 (TTAB 2001) (request to withdraw denied as prejudicial to client where it was 

filed on last day of client’s testimony period, although grounds for withdrawal were known months earlier); Netcore 

Technologies, Inc. v. Firstwave Technologies, Inc., ___ USPQ2d ___, 2001 WL 243440 (TTAB 2001) (attorney’s 

withdrawal request filed in response to Board’s show cause order under Rule § 2.128(a)(3) denied as untimely 

where attorney assertedly had ceased to represent client months earlier). 

 Cf. In re Slack, 54 USPQ2d 1504, 1507 (Comm’r 2000) (request to withdraw during ex parte prosecution 

granted where requirements of 37 CFR § 10.40(a) were satisfied and attorney filed the request within a reasonable 

time after notifying applicant of his intent to withdraw). 

241 See 37 CFR § 10.40. 

242 See SFW Licensing Corp. and Shoppers Food Warehouse Corp. v. Di Pardo Packing Limited, supra and 

Netcore Technologies Inc, v. Firstwave Technologies, Inc., supra. 

243 See SFW Licensing Corp. and Shoppers Food Warehouse Corp. v. Di Pardo Packing Limited, supra and 

Netcore Technologies Inc, v. Firstwave Technologies, Inc., supra. 

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If the request to withdraw is granted, the Board will suspend proceedings and allow the party a 

stated period of time (usually 30 days) in which to appoint a new attorney or other authorized 

representative (and inform the Board thereof), or to file a paper stating that it desires to represent 

itself. If the party fails to take such action, the Board may issue an order to show cause why 

default judgment should not be entered against the party based on the party's apparent loss of 

interest in the case.

For information concerning action by the Board after expiration of the time allowed in the 

suspension order, see TBMP § 510.03(b). For further information concerning withdrawal of 

counsel, see TBMP §§ 116.02-116.05. Cf. TMEP § 602.03(a). 

37 CFR § 10.130(b) Petitions to disqualify a practitioner in ex parte or inter partes cases in the 

Office are not governed by §§ 10.130 through 10.170 and will be handled on a case-by-case 

basis under such conditions as the Commissioner [Director of the United States Patent and 

Trademark Office] deems appropriate. 

If a party to an inter partes proceeding before the Board believes that a practitioner representing 

another party to the proceeding should be disqualified (due, for example, to a conflict of interest, 

or because the practitioner may testify in the proceeding as a witness on behalf of his client), the 

party may file a petition to disqualify the practitioner. 

 

244 

A request for permission to withdraw as counsel in an application that is the subject of a 

potential opposition (i.e., an application as to which a request for extension of time to file an 

opposition is pending) is determined by the Board, not the examining operation, and it should be 

filed with the Board to insure prompt processing.245 

A party may inform the Board of the appointment of new counsel either by filing written 

notification thereof (as, for example, by filing a copy of the new appointment), or by having new 

counsel make an appearance in the party's behalf in the proceeding.246 

513.02 Petition to Disqualify 

Petitions to disqualify are not disciplinary proceedings and hence are not governed by 37 CFR §§ 

10.130-10.170. Rather, petitions to disqualify are governed by 37 CFR § 10.130(b), and are 

determined in the manner specified in that rule. 

244 See Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993). 

245 See TBMP § 212.01 (Jurisdiction to Consider Amendment). 

246 See TBMP § 114.03 (Representation by Attorney). See also TBMP §§ 114.04 (Representation by Non-Lawyer)

and 114.05 (Representation by Foreign Attorney). 

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STIPULATIONS AND MOTIONS 

(c) Geographic limitations will be considered and determined by the Trademark Trial and 

Appeal Board only in the context of a concurrent use registration proceeding.

 

When a petition to disqualify is filed in connection with a proceeding pending before the Board, 

the Board immediately issues an action suspending proceedings in the case and advising the 

parties that no additional papers should be filed by the parties until further notice, pending 

consideration of the petition. After the petition has been determined or dismissed, the Board 

issues an action resuming proceedings in the case, and taking further appropriate action therein. 

Petitions to disqualify in matters before the Board are currently determined by the Chief 

Administrative Trademark Judge under authority delegated by the Director.247 

For examples of cases involving petitions to disqualify, see the decisions cited in TBMP § 

114.08. 

 514 Motion to Amend Application or Registration 

37 CFR § 2.133(a) An application involved in a proceeding may not be amended in substance 

nor may a registration be amended or disclaimed in part, except with the consent of the other 

party or parties and the approval of the Trademark Trial and Appeal Board, or except upon 

motion. 

(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party 

whose application or registration is the subject of the proceeding is not entitled to registration in 

the absence of a specified restriction to the involved application or registration, the Trademark 

Trial and Appeal Board will allow the party time in which to file a request that the application or 

registration be amended to conform to the findings of the Trademark Trial and Appeal Board, 

failing which judgment will be entered against the party. 

514.01 In General 

The amendment of any application or registration which is the subject of an inter partes 

proceeding before the Board is governed by 37 CFR § 2.133. Thus, an application which is the 

subject of a Board inter partes proceeding may not be amended in substance, except with the 

consent of the other party or parties and the approval of the Board, or except upon motion 

247 With respect to disqualification due to an asserted conflict of interest, see TBMP § 114.08, and authorities cited

therein. With respect to disqualification where the attorney is a witness in the case, such as giving testimony on

behalf of the client, see 37 CFR § 10.63; Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 

USPQ2d 1316 (TTAB 1992); Allstate Insurance Co. v. Healthy America Inc., 9 USPQ 2d 1663 (TTAB 1988); and

Little Caesar Enterprises Inc. v. Domino's Pizza Inc., 11 USPQ2d 1233 (Comm'r 1989). Cf. In re Gray, 3 USPQ2d

1558 (TTAB 1987). 

 

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STIPULATIONS AND MOTIONS 

 

granted by the Board.248 Similarly, a registration which is the subject of a Board inter partes 

proceeding may not be amended or disclaimed in part, except with the consent of the other party

or parties and the approval of the Board, or except upon motion.249 

For information regarding amendments to applications that are subject to a pending request for 

an extension of time to oppose see TBMP § 212. For information concerning amendments to 

delete one or more classes from a multiple-class application or registration involved in an inter 

partes proceeding, see TBMP § 602.01.

A proposed amendment to any application or registration which is the subject of an inter partes 

proceeding must also comply with all other applicable rules and statutory provisions. These 

include 37 CFR §§ 2.71-2.75, in the case of a proposed amendment to an application; 37 CFR § 

2.173 and Section 7(e) of the Act, 15 U.S.C. § 1057(e), in the case of a proposed amendment to a 

registration, except a 66(a) registration; and 37 CFR § 7.22 in the case of a 66(a) registration.250 

Thus, for example, a proposed amendment which involves an addition to the identification of 

goods or services, or which materially alters the character of the subject mark, or involves an 

amendment to the mark in a Section 66(a) application or registration,251 will not be approved by 

the Board.252 However, an otherwise appropriate amendment to an application will ordinarily 

not be rejected by the Board solely on the basis that the amendment would require republication 

248 See, e.g., Gallagher’s Restaurants, Inc. v. Gallagher’s Farms, Inc., 3 USPQ2d 1864 (TTAB 1986) (amendment 

to named excepted users in a concurrent use application); Giant Food Inc. v. Standard Terry Mills, Inc., 231 USPQ

626 (TTAB 1986) (amendment to identification of goods); and Greyhound Corporation and Armour and Company

v. Armour Life Insurance Company, 214 USPQ 473 (TTAB 1982) (amendment to dates of use). 

249 See 15 U.S.C. § 1057(e) and 37 CFR § 2.173. 

250 Amendments to 66(a) registrations are not made under Section 7 of the Trademark Act. Requests to record

changes to 66(a) registrations must be filed with the International Bureau. See 37 CFR §§ 7.22 and 7.25. 

Although Trademark Rule 7.25 specifically exempts only a "request for extension of protection" (a 66(a) 

application) from application of certain rules in part 2 of 37 CFR, including Rules 2.172 (surrender for cancellation), 

2.160-2.166 (Section 8 affidavits), and 2.173 (amendment of registrations), it is clear from the nature of the excepted 

provisions that Rule 7.25 is intended to apply to a 66(a) registration as well as a 66(a) application. 

251 The mark in a 66(a) application or registration cannot be amended. See 37 CFR § 2.72 providing only for 

amendments to the mark in Section 1 and 44 applications and the International Bureau’s Guide to the International 

Registration of Marks under the Madrid Agreement and the Madrid Protocol, Para. B.ll.69.02 (2002) at

www.wip.int/madrid/en/guide. See also Rules of Practice for Trademark-Related Filings Under the Madrid Protocol

Implementation Act; Final Rule, published in the Federal Register on September 26, 2003 at 68 FR 55748, 55756.

252 See Section 7(e) of the Act, 15 U.S.C. § 1057; 37 CFR §§ 2.71(b), 2.72, 2.173(a) and 2.173(b); Vaughn Russell 

Candy Co. and Toymax Inc. v. Cookies In Bloom, Inc., 47 USPQ2d 1635 (TTAB 1998) (material alteration); Aries 

Systems Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB 1992), summ. judgment granted in part, 26 USPQ2d

1926 (TTAB 1993) (expansion of scope of goods); Mason Engineering and Design Corp. v. Mateson Chemical

Corporation, 225 USPQ 956 (TTAB 1985) (amendment to dates of use not supported by affidavit or declaration);

and Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, 81 Trademark Rep. 408 (1991). 

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A request to amend an application or registration which is the subject of a Board inter partes 

proceeding should bear at its top both the number of the subject application or registration, and 

the Board proceeding number and title. In addition, the request should include proof of service 

of a copy thereof upon every other party to the proceeding.254 A request to amend an application 

involved in a Board proceeding must be filed with the Board, not with the Trademark Examining 

Operation. Similarly, a request to amend a registration involved in a Board proceeding must be 

filed with the Board, not with the Post Registration Branch or, in the case of a 66(a) registration, 

not with the International Bureau. e to file such a request with the Board will result in 

unnecessary delay and may result in the loss or misplacement of the amendment request. 

 

of the mark. Republication may not be available for applications filed under 66(a) of the Act due 

to the time requirements of the Madrid Protocol.253

255 Failur

When the Board grants a request to amend a registration that is the subject of a Board inter partes 

proceeding, except in the case of a 66(a) registration, the file is forwarded to the Post 

Registration branch of the Office of Trademark Services for entry of the amendment of the 

registration. The action by the Post Registration branch is limited to the ministerial duty of 

ensuring that the authorized change to the registration is made.256 Requests to record changes to 

a 66(a) registration must be filed with the International Bureau.257

514.02 Amendment With Consent 

When a request to amend an application or registration which is the subject of a Board inter 

partes proceeding is made with the consent of the other party or parties, and the proposed 

amendment is in accordance with the applicable rules and statutory provisions, the request 

ordinarily will be approved by the Board. However, if the application or registration is the 

subject of other inter partes proceedings, the consent of the other parties in each of those other 

proceedings must be of record before the amendment may be approved.258 

253 See Sections 68 & 69 of the Trademark Act, 15 U.S.C. 1141h and 1141i. 

254 See 37 CFR § 2.119(a) and TBMP § 113 (Service of Papers). 

 

255 Requests to record amendments to 66(a) registrations are filed with the International Bureau, not with Post 

Registration. See 37 CFR § 7.22 and Rules of Practice for Trademark-Related Filings Under the Madrid Protocol

Implementation Act; Final Rule, published in the Federal Register on September 26, 2003 at 68 FR 55748, 55756. 256 See In re Pamex Foods, Inc., 209 USPQ 275 (Comm'r 1980) (examining operation acted beyond its authority in

denying amendment to registration which Board had already approved). 

257 See 37 CFR § 7.22. 

258 See Vaughn Russell Candy Co. and Toymax Inc. v. Cookies In Bloom, Inc., 47 USPQ2d 1635 (TTAB 1998) (no

consent from opposers in two other oppositions against the application). 

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STIPULATIONS AND MOTIONS 

If a defendant, whose application or registration is the subject of a Board inter partes proceeding, 

wishes to defend by asserting that it is at least entitled to a registration with a particular 

restriction, the defense should be raised either in the defendant's answer to the complaint, or by 

way of a timely motion to amend the application or registration to include the restriction.

 

514.03 Amendment Without Consent 

The Board, in its discretion, may grant a motion to amend an application or registration which is 

the subject of an inter partes proceeding, even if the other party or parties do not consent 

thereto.259 

When a motion to amend an application or registration in substance is made without the consent 

of the other party or parties, it ordinarily should be made prior to trial, in order to give the other 

party or parties fair notice thereof; an unconsented motion to amend which is not made prior to 

trial, and which, if granted, would affect the issues involved in the proceeding, normally will be

denied by the Board unless the matter is tried by express or implied consent of the parties 

pursuant to Fed. R. Civ. P. 15(b).260 

The Board generally will 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.261 

262 The 

259 See 37 CFR § 2.133(a). See also, for example, International Harvester Company v. International Telephone and

Telegraph Corporation, 208 USPQ 940, 941 (TTAB 1980) (where applicant was willing to accept judgment with 

respect to the broader identification of goods) and Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224

(TTAB 1993) (where applicant consented to entry of judgment against itself with respect to a geographically 

unrestricted registration). 

 

260 See, for example, Personnel Data Systems, Inc. v. Parameter Driven Software, Inc., 20 USPQ2d 1863 (TTAB 

1991) (defendant’s motion to restrict identification of goods in involved registration, filed with brief on case, 

denied) Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (same); and International 

Harvester Company v. International Telephone and Telegraph Corporation, supra (amendment to identification

may be permitted if made before trial, if it serves to limit the scope of goods, and if applicant consents to judgment

with respect to the broader identification of goods). See also Louise E. Rooney, TIPS FROM THE TTAB: Rule 

2.133 Today, 81 Trademark Rep. 408 (1991). 

 Cf. Reflange Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990) and TBMP §§ 311 (Form and Content 

of Oppositions and Petitions to Cancel), 314 (Unpleaded Matters), and 507 (Motion to Amend Pleading). 

 

261 See Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) (motion to amend identification of goods

deferred); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552 (TTAB 1987) (motion to amend dates of

use deferred); and Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 n.4 (TTAB 

1985) (same). See also Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, supra. 

262 See 37 CFR §§ 2.133(a) and 2.133(b); Personnel Data Systems Inc. v. Parameter Driven Software Inc., supra; 

Flow Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991); Space Base Inc. v. Stadis Corp., supra; TBMP §

311.02(b) (Affirmative Defenses); and Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, supra. 

500 - 328 
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STIPULATIONS AND MOTIONS 

proposed restriction should be described in defendant's pleading, or in its motion to amend, in 

sufficient detail to give the plaintiff fair notice thereof.263 

 

If the Board ultimately finds that a defendant is not entitled to registration in the absence of a 

restriction that was timely proposed by the defendant, the proposed restriction will be approved 

and entered.264 If a further refinement thereof is found necessary by the Board, and is within the 

scope of the notice given to plaintiff by defendant, or was tried with the express or implied 

consent of plaintiff, defendant will be allowed time in which to file a request that its application 

or registration be amended to conform to the findings of the Board, failing which judgment will 

be entered against the party.265 If, on the other hand, the Board ultimately finds that defendant is 

entitled to registration even without the proposed restriction, defendant will be allowed time to 

indicate whether it still wishes to have the restriction entered.266 

Geographic limitations will be considered and determined by the Board only in the context of a 

concurrent use proceeding.267 Moreover, Section 7(e) of the Act, 15 U.S.C. § 1057(e), and 37 

CFR § 2.173 cannot be used to impose concurrent use restrictions on registrations.268 However, 

an applicant whose geographically unrestricted application is the subject of an opposition 

proceeding may file a motion to amend its application to one for a concurrent use registration, 

with the opposer being recited as the exception to the applicant's right to exclusive use. If the 

proposed amendment is otherwise appropriate, and is made with the consent of the opposer, the 

opposition will be dismissed without prejudice in favor of a concurrent use proceeding. If the 

opposer does not consent to the amendment, the amendment may nevertheless be approved and 

entered, and a concurrent use proceeding instituted, provided that applicant agrees to accept 

263 See Space Base Inc. v. Stadis Corp., supra and TBMP § 311.02(b) (Affirmative Defenses). See also Flow

Technology Inc. v. Picciano, supra. 

264 Requests to record changes to a 66(a) registration must be filed with the International Bureau. See 37 CFR §

7.22. See also Exam Guide No. 2-03, Guide to Implementation of madrid Protocol in the United States, (part IV.N.) 

(October 28, 2003). 

265 See 37 CFR § 2.133(b), and Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, supra. See also

Section 18 of the Act, 15 U.S.C. § 1068. 

266 See Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, supra. 

267 See 37 CFR § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815 (TTAB 1990)

(allegations of abandonment in a particular geographic location is an insufficient pleading); and TBMP § 1101.02 

(Context for USPTO Determination of Concurrent Rights). 

268 See In re Forbo, 4 USPQ2d 1415 (Comm'r 1984) (petition to Commissioner to territorially restrict a registration 

denied) and In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm'r 1987).

 

500 - 329 
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STIPULATIONS AND MOTIONS 

 515 Motion to Remand Application to Examining Attorney 

37 CFR § 2.130 New matter suggested by Examiner of Trademarks. If, while an inter partes 

proceeding involving an application under section 1 or 44 of the Act is pending, facts appear 

which, in the opinion of the trademark examining attorney, render the mark in the application 

unregistrable, the facts should be called to the attention of the Trademark Trial and Appeal 

Board. The Board may suspend the proceeding and refer the application to the trademark 

examining attorney for an ex parte determination of the question of registrability. A copy of the 

trademark examining attorney's final action will be furnished to the parties to the inter partes 

proceeding following the final determination of registrability by the trademark examining 

attorney or the Board on appeal. The Board will consider the application for such further inter 

partes action as may be appropriate. 

 

entry of judgment against itself in the opposition with respect to its request for a geographically 

unrestricted registration.269

 514.04 Amendment to Allege Use; Statement of Use 

For information concerning the handling of an amendment to allege use, or a statement of use, 

filed during an opposition proceeding in an intent-to-use application that is the subject of the 

opposition, see TBMP § 219. 

37 CFR § 2.131 Remand after decision in inter partes proceeding. If, during an inter partes 

proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which 

appear to render the mark unregistrable, but such matter has not been tried under the pleadings 

as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal 

Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in 

lieu of determining the matter in the decision on the proceeding, may remand the application to 

the trademark examining attorney for reexamination in the event the applicant ultimately 

prevails in the inter partes proceeding. Upon remand, the trademark examining attorney shall 

reexamine the application in the light of the reference by the Board. If, upon reexamination, the 

trademark examining attorney finally refuses registration to the applicant, an appeal may be 

taken as provided by §§ 2.141 and 2.142. 

If, during the pendency of an opposition, concurrent use, or interference proceeding involving an 

application under Section 1 or 44 of the Trademark Act, the examining attorney learns of facts 

which, in his or her opinion, render the mark of the involved application unregistrable, the 

examining attorney may file a request that the Board suspend the inter partes proceeding, and 

269 See TBMP § 1113 (“Conversion” of Opposition or Cancellation Proceeding to Concurrent Use Proceeding);

Faces, Inc. v. Face's, Inc., 222 USPQ 918 (TTAB 1983); Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 

Today, 81 Trademark Rep. 408 (1991); and Janet E. Rice, TIPS FROM THE TTAB: Newest TTAB Rule Changes; 

More Tips on Concurrent Use Proceedings, 76 Trademark Rep. 252 (1986). 

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There is no provision under which such a remand may be made upon motion by a party to the 

proceeding. Moreover, a request to amend an application which is the subject of an inter partes 

proceeding before the Board is not remanded to the examining attorney for consideration, but 

rather is considered and determined by the Board.

However, if, during the course of an opposition, concurrent use, or interference proceeding, 

involving an application under Section 1 or 44 of the Act, facts are disclosed which appear to 

render the mark of the involved application unregistrable, and the matter has not been tried under 

the pleadings as filed by the parties or as they might be deemed to be amended pursuant to Fed. 

R. Civ. P. 15(b), the Board, in its decision in the proceeding, may, in addition to determining the 

pleaded matters, include a recommendation that in the event applicant ultimately prevails in the 

inter partes proceeding, the examining attorney reexamine the application in light of the 

disclosed facts. and may be made by the Board upon its own initiative, 

or upon request granted by the Board. Thus, if a party to the proceeding believes that the facts 

disclosed therein appear to render the mark of an involved application unregistrable, but the 

matter was not pleaded or tried by the express or implied consent of the parties pursuant to Fed. 

R. Civ. P. 15(b), the party may request that the Board include, in its decision in the proceeding, a 

37 CFR § 2.131 remand to the examining attorney. The request may be made in the party's brief 

on the case, at oral hearing, or by separate motion. An application under Section 66(a) of the 

Trademark Act may not be remanded under 37 CFR § 2.130 or 2.131.274

 

remand the application to the examining attorney for further ex parte examination.270 An 

application under Section 66(a) of the Act may not be remanded under 37 CFR § 2.130 or 

2.131.271

272 

273 A 37 CFR § 2.131 rem

270 See 37 CFR § 2.130. 

271 See 37 CFR §§ 2.130 and 7.25 ("Sections of part 2 applicable to extension of protection"). 

272 See generally 37 CFR § 2.133(a), and TBMP § 514 (Motion to Amendment Application or Registration). 

273 See, for example, 37 CFR § 2.131; First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1636

n.6 (TTAB 1988) (remand for consideration of evidence regarding applicant’s date of first use); West End Brewing 

Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306, 1309 n.5 (TTAB 1987) (remand for 

determination of status of underlying foreign registration); Floralife, Inc. v. Floraline International Inc., 225 USPQ

683 (TTAB 1984) (remand for consideration of evidence regarding applicant’s use of mark prior to application 

filing date); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012 (TTAB 1984); Color 

Key Corp. v. Color 1 Associates, Inc., 219 USPQ 936 (TTAB 1983); and Antillian Cigar Corp. v. Benedit Cigar

Corp., 218 USPQ 187 (TTAB 1983). 

274 See 37 CFR § 2.131. 

500 - 331 
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516 Motion to Divide Application or Registration 

For further information concerning division of an application, see TMEP § 1110. 

 

An application which is the subject of an inter partes proceeding before the Board may be 

physically divided into two or more separate applications upon motion granted by the Board, and 

payment of the required fee.275 

For example, if an application that is the subject of an opposition includes multiple classes, not 

all of which have been opposed, the applicant may file a motion to divide out the unopposed 

classes. If applicant seeks to divide out an entire class or classes, a fee for dividing the 

application must be submitted for each new application to be created by the division.276 

Similarly, if an application which is the subject of an opposition includes more than one item of 

goods, or more than one service, in a single class, and the opposition is not directed to all of the 

goods or services, the applicant may file a motion to divide out the unopposed goods or services. 

Applicant must submit both a fee for dividing the application, and an application filing fee, for 

each new application to be created by the division.

277 

In both cases, if the motion to divide is granted, the application file is forwarded to the 

ITU/Divisional Unit for processing of the division. After the applications have been divided, 

each new application created by the division will be forwarded to issue or, in the case of an 

intent to use application filed under Section 1(b) of the Act, 15 U.S.C. § 1051(b), for issuance of 

a notice of allowance. The original application will be returned to the Board. 

Any request to divide an application which is the subject of a Board inter partes proceeding will 

be construed by the Board as a motion to divide, and every other party to the proceeding will be 

allowed an opportunity to file a brief in opposition thereto. 

A registration that is the subject of an inter partes proceeding before the Board may be divided 

into two or more separate registrations upon motion granted by the Board, and payment of the 

required fee, when ownership has changed with respect to some, but not all, of the goods and/or 

services.278 

275 See 37 CFR § 2.87. Cf. In re Little Ceasar Enterprises Inc., 48 USPQ2d 1222 (Comm’r 1998) (regarding

request to divide filed during pendency of request to extend time to oppose but prior to commencement of

opposition). 

276 See 37 CFR §§ 2.87(a) and 2.87(b). 

 

277 See 37 CFR §§ 2.87(a) and 2.87(b). 

278 See 37 CFR § 2.171(b). 

500 - 332 
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STIPULATIONS AND MOTIONS 

A request for reconsideration or modification of an order or decision issued on a motion must be 

filed within one month from the date of the order or decision.

petition, waives the time requirement of 37 CFR § 2.127(b), the Board need not consider a 

request for reconsideration or modification filed more than one month from the date of the order 

or decision complained of. plate a second request for reconsideration 

of the same basic issue ay, on its own initiative, reconsider and modify 

one of its orders or decisions if it finds error therein, and the Board may also, in its discretion, 

consider an untimely request for reconsideration or modification.

 

 517 Motion to Strike Brief on Motion 

Specific provision is made in the Trademark Rules of Practice for the filing of a brief in support 

of a motion, a brief in opposition to a motion, and a reply brief in further support of the motion. 

No further papers will be considered regarding the motion and any such papers may be returned 

to the filing party as being filed in violation of the rules.279 

Subject to the provisions of Fed. R. Civ. P. 11, a party is entitled to offer in its brief any 

argument it feels will be to its advantage. Accordingly, when a moving brief, an opposition 

brief, or a reply brief on a motion has been regularly filed, the Board generally will not strike the 

brief, or any portion thereof, upon motion by an adverse party that simply objects to the contents 

thereof. Rather, any objections which an adverse party may have to the contents of such a brief 

will be considered by the Board in its determination of the original motion, and any portions of 

the brief that are found by the Board to be improper will be disregarded. 

However, if a brief in opposition to a motion, or a reply brief in support of the motion, is not 

timely filed, it may be stricken, or given no consideration, by the Board. 

518 Motion for Reconsideration of Decision on Motion 

37 CFR § 2.127(b) Any request for reconsideration or modification of an order or decision 

issued on a motion must be filed within one month from the date thereof. A brief in response 

must be filed within 15 days from the date of the service of the request. 

280 Unless the Director, upon 

281 Nor does the rule contem

.

282 However, the Board m

283 

279 See 37 CFR § 2.127(a). See also TBMP § 502.02(b) (Briefs on Motions). 

280 See 37 CFR § 2.127(b) and Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 

1854 (TTAB 2000). 

 

281 See Avedis Zildjian Co. v. D. H. Baldwin Co., 181 USPQ 736 (Comm'r 1974). 

282 See Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986) and Avedis Zildjian Co. v. D.G. 

Baldwin Co., supra. 

283 See Avedis Zildjian Co. v. D. H. Baldwin Co., supra. 

500 - 333 
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STIPULATIONS AND MOTIONS 

 

Any brief in response to a request for reconsideration or modification of an order or decision 

issued on a motion must be filed within 15 days from the date of service of the request (20 days 

if service of the request was made by first-class mail, "Express Mail," or overnight courier--see

37 CFR § 2.120(c)).284 

When a party upon which a motion has been served fails to file a brief in response, and the Board 

grants the motion as conceded pursuant to 37 CFR § 2.127(a), the nonresponding party cannot 

use a request for reconsideration as a second opportunity to file a brief in opposition to the 

motion.285 

Generally, the premise underlying a motion for reconsideration, modification or clarification 

under 37 CFR § 2.127(b) is that, based on the facts before it and the prevailing authorities, the 

Board erred in reaching the order or decision it issued. Such a motion may not properly be used 

to introduce additional evidence, nor should it be devoted simply to a reargument of the points 

presented in a brief on the original motion. Rather, the motion should be limited to a 

demonstration that based on the facts before it and the applicable law; the Board's ruling is in 

error and requires appropriate change.

286 

An interlocutory motion, request, or other matter which is not actually or potentially dispositive 

of a proceeding, may be acted upon by a single Board administrative trademark judge, or by a 

Board interlocutory attorney to whom authority so to act has been delegated.287 When a single 

Board administrative trademark judge, or a single duly authorized interlocutory attorney, has 

acted upon an interlocutory motion, request, or other matter not actually or potentially 

dispositive of the proceeding, and one or more of the parties is dissatisfied with the action, the 

dissatisfied party or parties may seek review thereof by requesting, under 37 CFR § 2.127(b), the 

same single Board judge, or the same single interlocutory attorney, to reconsider the action, 

and/or by filing a petition to the Director for review of the decision under 37 CFR § 2.146(e)(2) 

(see TBMP § 905). A request that the action of the single Board judge, or single interlocutory 

attorney, be reviewed by one or more (other) administrative trademark judges of the Board is 

improper and will be denied. However, at final hearing, the Board panel to which the case is 

assigned for decision may review an interlocutory ruling and reverse it, if appropriate.288 

284 See 37 CFR § 2.127(b). 

285 See Joy Manufacturing Co. v. Robbins Co., 181 USPQ 408 (TTAB 1974). Cf. General Tire & Rubber Co. v.

Gendelman Rigging & Trucking Inc., 189 USPQ 425 (TTAB 1975). 

286 Cf. TBMP § 543 (Motion for Reconsideration of Final Decision). 

287 See 37 CFR § 2.127(c). See also TBMP § 502.04 (Determination of Motions). 

288 See, for example, Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857, 859 n.13 (TTAB 1986). 

500 - 334 
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STIPULATIONS AND MOTIONS 

37 CFR § 2.120(d)(1) The total number of written interrogatories which a party may serve upon 

another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall 

not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, 

in its discretion, may allow additional interrogatories upon motion therefor showing good cause, 

or upon stipulation of the parties. A motion for leave to serve additional interrogatories must be 

filed and granted prior to the service of the proposed additional interrogatories; and must be 

accompanied by a copy of the interrogatories, if any, which have already been served by the 

moving party, and by a copy of the interrogatories proposed to be served. ... 

Good cause for the service of additional interrogatories will generally be found only where it is 

shown that there is a legitimate need for further discovery by interrogatories. ere fact 

that the additional interrogatories may be relevant and narrowly drawn to a single issue, or that 

they may be easy to answer, is insufficient, in and of itself, to show good cause for the service of 

additional interrogatories

 

519 Motion for Leave to Serve Additional Interrogatories 

A motion under 37 CFR § 2.120(d)(1) for leave to serve additional interrogatories must be filed 

and granted prior to service of the proposed additional interrogatories; and must be accompanied 

both by a copy of any interrogatories which have already been served by the moving party, and 

by a copy of the interrogatories proposed to be served.289 

290 The m

.

291 

For further information concerning good cause for a motion to serve additional interrogatories, 

see TBMP § 405.03(c). For information concerning the interrogatory limit specified in 37 CFR 

§ 2.120(d)(1), see TBMP § 405.03.

289 See 37 CFR § 2.120(d)(1); Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466 (TTAB 

1990); Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398 (TTAB 1990);

Chicago Corp. v. North American Chicago Corp., 16 USPQ2d 1479 (TTAB 1990); Brawn of California Inc. v. 

Bonnie Sportswear Ltd., 15 USPQ2d 1572 (TTAB 1990); Notice of Final Rulemaking, published in the Federal

Register on September 12, 1991 at 56 FR 46376 and in the Official Gazette of October 22, 1991 at 1131 TMOG 54, 

as corrected in the Federal Register of October 23, 1991 at 56 FR 54917; and Helen R. Wendel, TIPS FROM THE 

UNITED STATES PATENT AND TRADEMARK OFFICE TTAB: The Burden Shifts: Revised Discovery Practice 

Under Trademark Rule 2.120(d)(1), 82 Trademark Rep. 89 (1992). 

290 See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., supra. 

291 See Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., supra; Towers, Perrin, Forster & Crosby Inc. v. 

Circle Consulting Group Inc., supra; and Brawn of California Inc. v. Bonnie Sportswear Ltd., supra. 

 

500 - 335 
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STIPULATIONS AND MOTIONS 

 520 Motion to Take Foreign Deposition Orally 

37 CFR § 2.120(c)(1) The discovery deposition of a natural person residing in a foreign country 

who is a party or who, at the time set for the taking of the deposition, is an officer, director, or 

managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the 

Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner 

prescribed by §2.124 unless the Trademark Trial and Appeal Board, upon motion for good 

cause, orders or the parties stipulate, that the deposition be taken by oral examination. 

37 CFR § 2.123(a)(2) A testimonial deposition taken in a foreign country shall be taken by 

deposition upon written questions as provided by §2.124, unless the Board, upon motion for 

good cause, orders that the deposition be taken by oral examination, or the parties so stipulate. 

Ordinarily, the discovery deposition of a natural person who resides in a foreign country, and 

who is a party or who, at the time set for the taking of the deposition, is an officer, director, or 

managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to 

testify on behalf of a party, must, if taken in a foreign country, be taken upon written questions in 

the manner described in 37 CFR § 2.124. ver, the Board will not order a natural person 

residing in a foreign country to come to the United States for the taking of his or her discovery 

deposition.

 

292 Moreo

293 

However, the parties may stipulate, or the Board, upon motion for good cause, may order, that 

the discovery deposition, when taken in a foreign country, be taken by oral examination.294 

Similarly, a testimony deposition taken in a foreign country must be taken by deposition upon 

written questions in the manner described in 37 CFR § 2.124, unless the Board, upon motion for 

good cause, orders, or the parties stipulate, that the deposition be taken by oral examination.295

In determining whether good cause exists for a motion to take a foreign deposition orally, the 

Board weighs the equities, including the advantages of an oral deposition and any financial 

292 See 37 CFR § 2.120(c)(1). See also TBMP § 404.03(b) (Person Residing in a Foreign Country – Party), and 

authorities cited therein. 

293 See Jain v. Ramparts Inc., 49 USPQ2d 1429 (TTAB 1998); and TBMP § 404.03(b) and authorities cited therein. 

294 See 37 CFR § 2.120(c)(1); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923 (TTAB 1989)

(good cause to take oral deposition of witness in England); Jonergin Co. Inc. v. Jonergin Vermont Inc., 222 USPQ

337 (Comm'r 1983) (stipulation to take oral deposition in Canada); and TBMP § 404.03(b). 

 

295 See 37 CFR § 2.123(a)(2). See Jain v. Ramparts, supra at 1431. 

500 - 336 
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521 Motion to Quash Notice of Deposition 

 

hardship that the nonmoving party might suffer if the deposition were taken orally in the foreign 

country.296 

 

A party to an inter partes proceeding before the Board may file a motion, prior to the taking of a 

noticed discovery or testimony deposition, to quash the notice of deposition. Alternatively, in 

the case of a notice of discovery deposition and under appropriate circumstances, the party may 

file a motion for a protective order.297 

A motion to quash may be filed on a variety of grounds. For example, a party may move to 

quash a notice of deposition on the ground that (1) the proposed deposition is untimely;298 or (2) 

constitutes harassment or is without proper basis;299 or (3) in the case of a discovery deposition 

to be taken in the United States, the deposition is not scheduled to be taken in the Federal judicial

district where the proposed deponent resides or is regularly employed;300 or (4) in the case of a 

deposition to be taken in a foreign country, the deposition is scheduled to be taken orally in 

violation of 37 CFR § 2.120(c) or 2.123(a)(2);301 or (5) that the deposing party has noticed 

depositions for more than one place at the same time, or so nearly at the same time that 

reasonable opportunity for travel from one place of examination to another is not available;302 or 

296 See Orion Group Inc. v. Orion Insurance Co. P.L.C., supra at 1925-26 (good cause found in view of

circumstances and since fares to England were not that much greater than fares within the U.S. and no translation 

was required). Cf. Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079 (TTAB 1990)

(applicant would be prejudiced by rebuttal testimony deposition on written questions of opposer’s survey expert who

was present in U.S.), corrected, 19 USPQ2d 1479 (TTAB 1990); and TBMP §§ 521 (Motion to Quash) and 531

(Motion that Deposition upon Written Questions be taken Orally). 

297 See TBMP § 410 (Asserting Objections to Requests for Discovery; Motions Attacking Requests for Discovery). 

298 See S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (notice was reasonable and 

timely; no scheduling conflict with depositions in civil action); Marshall Field & Co. v. Mrs. Field's Cookies, 17 

USPQ2d 1652 (TTAB 1990) (notices of 13 depositions on written questions served eight months after original 

opening of testimony period, but within 10 days of latest extension, were timely); and Rhone-Poulenc Industries v. 

Gulf Oil Corp., 198 USPQ 372 (TTAB 1978) (deposition noticed during discovery but scheduled for date after

discovery closed was untimely). 

299 See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988) (notice to take deposition of 

CEO merely to discuss settlement was baseless as a party is not required to discuss settlement). Compare Gold 

Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109 (TTAB 1976) (written discovery requests directed

to assignor need not be answered where assignment occurred prior to institution of proceeding). 

300 See 37 CFR § 2.120(b). 

301 See Rhone-Poulenc Industries v. Gulf Oil Corp., supra.

302 See 37 CFR § 2.123(c). 

500 - 337 
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STIPULATIONS AND MOTIONS 

A motion to quash a notice of deposition should be filed promptly after the grounds therefor 

become known to the moving party. When time is of the essence, the moving party may 

telephone the Board attorney to whom the case is assigned and ask that the motion be resolved 

by telephone conference call. are fully discussed in TBMP 

§ 502.06(a). 

 

(6) that there was not due (i.e., reasonable) notice of the proposed deposition;303 or (7) that the 

taking of the deposition should be deferred until after determination of a certain motion pending 

before the Board, such as a motion for summary judgment; or (8) that the deposing party 

improperly seeks to force a foreign natural person to come to the United States for the taking of 

his or her deposition;

304 or (9) that a testimony deposition scheduled to be taken upon written 

questions should be taken orally (usually, this motion is titled as a motion that a deposition be 

taken orally).305 

However, the Board has no jurisdiction over nonparty depositions, or adverse witness 

depositions, taken by subpoena, and thus has no authority to quash such subpoenas.306 

307 Telephone conference procedures

303 See 37 CFR §§ 2.123(c); Fed. R. Civ. P. 30(b) and 31(a); and Duke University v. Haggar Clothing Co., 54

USPQ2d 1443, 1444 (TTAB 2000) (whether notice is reasonable depends upon the circumstances of each case; one 

and two-day notices were not reasonable without compelling need for such haste, but three-day notice was 

reasonable). 

 See also, where objection to notice was raised by other means, Electronic Industries Association v. Potega, 50

USPQ2d 1775 (TTAB 1999) (two-day notice unreasonable and failure of opposing counsel to attend was excused); 

Penguin Books Ltd. V. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert

witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make 

witness again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 

hours not sufficient time for applicant to prepare for deposition but opposer allowed time to recall witness for 

purpose of cross-examination and redirect); and Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216

USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable where 

deposition was held a short distance from applicant's attorney's office and where no specific prejudice was shown); 

and TBMP §§ 404.05 (Notice of [Discovery] Deposition) and 703.01(e) (Notice of [Testimony] Deposition). 

304 See TBMP § 404.03(b) (Person Residing in a Foreign Country – Party) and authorities cited therein. Cf. Jain v. 

Ramparts Inc., 49 USPQ 1429 (TTAB 1998) (issue raised by motion to compel).

305 See 37 CFR § 2.123(a)(1); Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079 (TTAB 

1990) (good cause shown for oral deposition), corrected, 19 USPQ2d 1479 (TTAB 1990); and Feed Flavors Inc. v. 

Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980) (good cause shown for oral deposition). 

306 See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (Board has no jurisdiction over

third-party subpoenas), and TBMP §§ 404.03(a)(2) (Person Residing in United States – Nonparty) and 703.01(f)

(Securing Attendance of Unwilling Adverse Party or Nonparty). 

307 See 37 CFR § 2.120(i)(1) and TBMP § 502.06(a) (Telephone Conferences). 

500 - 338 
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STIPULATIONS AND MOTIONS 

In an inter partes proceeding before the Board, the place where documents and things are to be 

produced is governed by 37 CFR § 2.120(d)(2).

 

522 Motion for Order re Manner or Place of Document Production 

 

37 CFR § 2.120(d)(2) The production of documents and things under the provisions of Rule 34 

of the Federal Rules of Civil Procedure will be made at the place where the documents and 

things are usually kept, or where the parties agree, or where and in the manner which the 

Trademark Trial and Appeal Board, upon motion, orders. 

308 

Accordingly, upon motion, the Board, in its discretion, may make any appropriate order 

concerning the place and/or manner of production of documents and things. For example, the 

Board may order that the responding party photocopy the documents designated in a request and 

mail the photocopies to the requesting party, all at the requesting party's expense.309 

523 Motion to Compel Discovery 

523.01 In General 

37 CFR § 2.120(e) Motion for an order to compel discovery. 

(1) If a party fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal 

Rules of Civil Procedure, or if a party, or such designated person, or an officer, director or 

managing agent of a party fails to attend a deposition or fails to answer any question

propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the 

inspection and copying of any document or thing, the party seeking discovery may file a motion 

before the Trademark Trial and Appeal Board for an order to compel a designation, or 

attendance at a deposition, or an answer, or production and an opportunity to inspect and copy. 

... 

(2) When a party files a motion for an order to compel discovery, the case will be suspended by 

the Trademark Trial and Appeal Board with respect to all matters not germane to the motion, 

and no party should file any paper which is not germane to the motion, except as otherwise 

308 See also Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983); Georgia-Pacific Corp. v. Great Plains

Bag Co., 190 USPQ 193 (TTAB 1976) (documents to be produced as part of a discovery deposition would be

produced where they are located); and TBMP § 406.03 (Elements of Request for Production; Place of Production). 

309 See Unicut Corp. v. Unicut, Inc., supra; Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the 

Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 385 (1985); and Janet E. Rice, TIPS FROM THE 

TTAB: Recent Changes in the TTAB Discovery Rules, 74 Trademark Rep. 449, 451 (1984). See also No Fear Inc. v.

Rule, 54 USPQ2d 1551, 1556 (TTAB 2000) (applicant ordered to copy responsive documents and forward them to

opposer at applicant’s expense as discovery sanction) and Jain v. Ramparts Inc., 49 USPQ2d 1429, 1432 (TTAB 

1998). 

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In inter partes proceedings before the Board, a motion to compel discovery procedure is 

available in the event of a failure to provide discovery requested by means of discovery 

depositions, interrogatories, and requests for production of documents and things.

In accordance with 37 CFR § 2.120(e)(2), when a party files a motion to compel discovery, the 

Board will issue an order suspending the proceeding with respect to all matters not germane to 

the motion, and no party should file any paper which is not germane to the discovery dispute, 

except as otherwise specified in the Board’s suspension order. However, neither the filing of a 

motion to compel nor the Board’s resulting suspension order tolls the time for parties to respond 

to any outstanding discovery requests which had been served prior to the filing of the motion to 

compel, nor does it excuse a party’s appearance at any discovery deposition which had been duly 

noticed prior to the filing of the motion to compel.

 

specified in the Board’s suspension order. The filing of a motion to compel shall not toll the time 

for a party to respond to any outstanding discovery requests or to appear for any noticed 

discovery deposition. 

310 

Alternatively, if a witness objects to, and refuses to answer (or answer adequately), a question 

propounded during a discovery deposition, the propounding party may obtain an immediate 

ruling on the propriety of the objection by applying, under 35 U.S.C. § 24, to the Federal district 

court in the jurisdiction where the deposition is being taken, for an order compelling answer.311

312

This rule, in conjunction with 37 CFR §§ 2.120(e)(1) and 2.120(h)(1) which provide, 

respectively, that a motion to compel must be filed prior to the commencement of the first 

testimony period as originally set or as reset and that the period between the end of the discovery 

310 See 37 CFR § 2.120(e). See also TBMP § 411 (Remedy for Failure to Provide Discovery) and, for example, 

Jain v. Ramparts Inc., 49 USPQ2d 1429 (TTAB 1998) (interrogatories and document requests); S. Industries Inc. v. 

Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (discovery deposition); MacMillan Bloedel Ltd. v. ArrowM Corp., 203 USPQ 952 (TTAB 1979) (interrogatories); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ

384 (TTAB 1976) (motion for sanctions treated as motion to compel); Fidelity Prescriptions, Inc. v. Medicine Chest 

Discount Centers, Inc., 191 USPQ 127 (TTAB 1976) (party may file motion to compel if it believes objections to

discovery requests to be improper). In addition, see Spa International, Inc. v. European Health Spa, Inc., 184 

USPQ 747 (TTAB 1975); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615 (TTAB 1974); Neville 

Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974); and Dow Corning Corp. v. Doric Corp., 183 USPQ

126 (TTAB 1974). Cf. Fed. R. Civ. P. 37(a)(2)(B). 

311 See TBMP §§ 404.09 (Discovery Depositions Compared to Testimony Depositions) and 411.03 (Discovery 

Depositions), and authorities cited therein.

 

312 See 37 CFR § 2.120(e)(2). 

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For information concerning the effect of a party's failure to timely respond to interrogatories 

and document requests, see TBMP §§ 403.03 (regarding time for service of discovery 

responses), 405.04(a) (regarding time for service of interrogatory responses), and 406.04(a) 

(regarding time for service of responses to document requests), 523 (regarding motion to compel

discovery) and 524 (regarding motion to test sufficiency of responses to admission requests). 

37 CFR § 2.120(e) Motion for an order to compel discovery. 

 

period and the opening of the first testimony period is increased from thirty to sixty days, is 

designed to ensure that all discovery disputes are resolved prior to the commencement of trial.313 

The motion to compel procedure is not applicable to requests for admission. The procedure to be 

followed in the case of requests for admission is as set forth in 37 CFR § 2.120(h) and Fed. R. 

Civ. P. 36(a).314 

523.02 Special Requirements for Motion

(1) ... The motion shall include a copy of the request for designation or of the relevant portion of 

the discovery deposition; or a copy of the interrogatory with any answer or objection that was 

made; or a copy of the request for production, any proffer of production or objection to 

production in response to the request, and a list and brief description of the documents or things 

that were not produced for inspection and copying. The motion must be supported by a written 

statement from the moving party that such party or the attorney therefor has made a good faith 

effort, by conference or correspondence, to resolve with the other party or the attorney therefor 

the issues presented in the motion and has been unable to reach agreement. If issues raised in 

the motion are subsequently resolved by agreement of the parties, the moving party should 

inform the Board in writing of the issues in the motion which no longer require adjudication. 

A motion to compel must include a copy of the request for discovery and the response thereto, as 

specified in 37 CFR § 2.120(e).315 

In addition, the motion must be supported by a written statement from the moving party that such 

party or its attorney has made a good faith effort, by conference or correspondence, to resolve

313 See Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758 (TTAB 1999) (motions to compel and motions to test the 

sufficiency of responses to requests for admission must be filed prior to the opening of the first testimony period). 

314 See TBMP §§ 411.02 (Requests for Admissions) and 524 (Motion to Test Sufficiency of Response to Admission 

Request). 

315 See also Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127 (TTAB 1976) 

(Board must be able to render a meaningful decision on a motion to compel); Amerace Corp. v. USM Corp., 183 

USPQ 506 (TTAB 1974); and Helene Curtis Industries, Inc. v. John H. Breck, Inc., 183 USPQ 126 (TTAB 1974). 

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with the other party or its attorney the issues presented in the motion, and has been unable to 

reach agreement.

 

 

37 CFR § 2.120(e) Motion for an order to compel discovery. 

 

316 

In the event that issues raised in the motion are subsequently resolved by the parties, the moving 

party should inform the Board in writing of the issues in the motion which no longer require 

determination.317

For information concerning the special requirements for a motion to compel answers to 

interrogatories that are the subject of a general objection on the ground of excessive number, see 

TBMP § 405.03(e). 

523.03 Time for Filing Motion 

(1) ... The motion must be filed prior to the commencement of the first testimony period as 

originally set or as reset. ... 

A motion to compel does not necessarily have to be filed during the discovery period.318 

However, the motion should be filed within a reasonable time after the failure to respond to a 

request for discovery or after service of the response believed to be inadequate and must, in any 

event, be filed before the first testimony period opens.319 Trial schedules include a 60-day period 

between the close of discovery and the opening of the first testimony period to allow time for the 

filing of any necessary discovery motions. 

316 See 37 CFR § 2.120(e); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986) (failed to

submit documentary evidence of good faith effort); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB

1986) (parties must narrow disputed requests for discovery to a reasonable number); Medtronic, Inc. v. Pacesetter 

Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (it was clear from the nature and the number of discovery requests

that no good faith effort had been made); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 450 (TTAB

1979) (good faith effort is required where there has been a complete failure to respond to discovery; telephone call 

to counsel sufficient); and MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (same; a 

statement that discovery has not been responded to is insufficient). See also Ford Motor Co. v. Shelby International,

Inc., 193 USPQ 236 (TTAB 1976); Daimler-Benz Aktiengesellschaft v. Hibner Products Mfg., Inc., 189 USPQ 479

(TTAB 1976); Varian Associates v. Fairfield Nobel Corp., 188 USPQ 581 (TTAB 1975); J.B. Williams Co. v. 

Pepsodent G.m.b.H., 188 USPQ 581 (TTAB 1975); Penthouse International Ltd. v. Dyn Electronics, Inc., 184 

USPQ 117 (TTAB 1974); and Angelica Corp. v. Collins & Aikman Corp., 183 USPQ 378 (TTAB 1974). 

317 See 37 CFR § 2.120(e) and, e.g., Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987) (late responses 

rendered motion to compel, based on complete non-responsiveness, moot). 

318 See Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 617 (TTAB 1974). 

319 See 37 CFR § 2.120(e); and, for example, Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v.

Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001). 

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If a party that served a request for discovery receives a response thereto which it believes to be 

inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter 

be heard to complain about the sufficiency thereof.

524.01 In General 

Fed. R. Civ. P. 36(a) Request for Admission. ... The party who has requested the admissions 

may move to determine the sufficiency of the answers or objections. Unless the court determines 

that an objection is justified, it shall order that an answer be served. If the court determines that 

an answer does not comply with the requirements of this rule, it may order either that the matter 

is admitted or that an amended answer be served. ...

37 CFR § 2.120(h) Request for admissions. 

 

523.04 Failure to File Motion to Compel 

320

524 Motion to Test Sufficiency of Response to Admission Request 

 

 * * * * 

(2) When a party files a motion to determine the sufficiency of an answer or objection to a 

request made by that party for an admission, the case will be suspended by the Trademark Trial 

and Appeal Board with respect to all matters not germane to the motion, and no party should file 

any paper which is not germane to the motion, except as otherwise specified in the Board's 

suspension order. The filing of a motion to determine the sufficiency of an answer or objection 

320 See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (having failed to file 

motion to compel, defendant will not later be heard to complain that interrogatory responses were inadequate); 

Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (objections that discovery requests are, for example, 

ambiguous or burdensome, are not of a nature which would lead propounding party to believe that the requested

information does not exist and party should have filed motion to compel), aff'd, 133 F.3d 1446, 45 USPQ2d 1374

(Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant 

gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file

motion to compel, modify discovery requests, or otherwise pursue material, evidence introduced by applicant at trial

was considered), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Seligman & Latz, Inc. v. Merit Mercantile 

Corp., 222 USPQ 720, 723 (TTAB 1984) (Board will not impose sanction of drawing adverse inferences against 

party based on inconsistent responses to questions asked during discovery deposition without motion to compel 

complete responses and violation of an order compelling answers). See also Societa Per Azioni Chianti Ruffino 

Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383 (TTAB 2001) (any

motion to compel to test alleged deficiencies in responses would be time-barred). In addition, see Volkswagenwerk 

Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979); Procter & Gamble Co. v. Keystone 

Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976); and Comserv Corp. v. Comserv, 179 USPQ 124 (TTAB

1973). Accord TBMP § 524.04 (regarding failure to file motion regarding sufficiency of admission responses). Cf. 

TBMP § 527.01(e) (Estoppel Sanction). 

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If the Board, upon motion to test the sufficiency of a response to a request for admission, 

determines that an answer does not comply with the requirements of Fed. R. Civ. P. 36(a), it may 

order either that the matter is deemed admitted or that an amended answer be served. If the 

Board determines that an objection is not justified, it will order that an answer be served.

(1) ... The motion shall include a copy of the request for admission and any exhibits thereto and 

of the answer or objection. The motion must be supported by a written statement from the 

moving party that such party or the attorney therefor has made a good faith effort, by conference 

or correspondence, to resolve with the other party or the attorney therefor the issues presented 

in the motion and has been unable to reach agreement. If issues raised in the motion are 

subsequently resolved by agreement of the parties, the moving party should inform the Board in 

writing of the issues in the motion which no longer require adjudication.

 

to a request for admission shall not toll the time for a party to respond to any outstanding 

discovery requests or to appear for any noticed discovery deposition. 

If a propounding party is dissatisfied with a responding party's answer or objection to a request 

for admission, and wishes to obtain a ruling on the sufficiency thereof, the propounding party 

may file a motion with the Board to determine the sufficiency of the response.321 

322 

524.02 Special Requirements for Motion

37 CFR § 2.120(h) Request for admissions. 

A motion to determine the sufficiency of a response to a request for admission must include a 

copy of the request for admission (and any exhibits thereto) and of the answer or objection.323 

In addition, the motion must be supported by a written statement from the moving party that such 

party or its attorney has made a good faith effort, by conference or correspondence, to resolve 

with the other party or its attorney the issues presented in the motion, and has been unable to 

reach agreement.324 

321 See 37 CFR § 2.120(h); Fed. R. Civ. P. 36(a); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ

690 (TTAB 1975); and Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697 n.7 (TTAB 1971). Cf.

37 CFR § 2.120(e), and TBMP § 523.01 (Motion to Compel Discovery – In General). 

322 See Fed. R. Civ. P. 36(a).

323 See 37 CFR § 2.120(h). Cf. 37 CFR § 2.120(e). 

324 See 37 CFR § 2.120(h). Cf. 37 CFR § 2.120(e) and TBMP § 523.02 (Special Requirements for Motion), and

cases cited therein. 

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In the event that issues raised in the motion are subsequently resolved by the parties, the moving 

party should inform the Board in writing of the issues in the motion which no longer require 

determination.325 

 

524.03 Time for Filing Motion 

37 CFR § 2.120(h) Request for admissions. 

(1) Any motion by a party to determine the sufficiency of an answer or objection to a request 

made by that party for an admission must be filed prior to the commencement of the first 

testimony period, as originally set or as reset. ... 

(2) When a party files a motion to determine the sufficiency of an answer or objection to a 

request made by that party for an admission, the case will be suspended by the Trademark Trial 

and Appeal Board with respect to all matters not germane to the motion, and no party should file 

any paper which is not germane to the motion, except as otherwise specified in the Board's 

suspension order. The filing of a motion to determine the sufficiency of an answer or objection to 

a request for admission shall not toll the time for a party to respond to any outstanding discovery 

requests or to appear for any noticed discovery deposition. 

A motion to test the sufficiency of a response to a request for admission does not necessarily 

have to be filed during the discovery period, but it should be filed within a reasonable time after 

service of the response believed to be inadequate and, in any event, must be filed prior to the 

commencement of the first testimony period, as originally set or as reset.326 

524.04 Failure to File Motion 

If a party that served a request for admission receives a response thereto which it believes to be 

inadequate, but fails to file a motion to test the sufficiency of the response, it may not thereafter 

be heard to complain about the sufficiency thereof.327 

 525 Motion to Withdraw or Amend Admission 

Fed. R. Civ. P. 36(b) Effect of Admission. Any matter admitted under this rule is conclusively 

established unless the court on motion permits withdrawal or amendment of the admission. ...the 

325 See 37 CFR § 2.120(h). Cf. 37 CFR § 2.120(e). 

326 37 CFR § 2.120(h)(1). Cf. Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615 (TTAB 1974) (motion

to compel timely even if filed after close of discovery) and TBMP § 523.03 (Time for Filing Motion). 

327 See Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971). Cf. TBMP § 523.04 (failure

to file motion to compel), and cases cited therein. Cf. also TBMP § 527.04 (regarding effect of failure to timely 

respond to requests for admission). 

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 526 Motion for a Protective Order 

37 CFR § 2.120(f) Motion for a protective order. Upon motion by a party from whom discovery 

is sought, and for good cause, the Trademark Trial and Appeal Board may make any order 

which justice requires to protect a party from annoyance, embarrassment, oppression, or undue 

 

court may permit withdrawal or amendment when 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. Any admission made by a party under this rule is for the purpose of the pending action 

only and is not an admission for any other purpose nor may it be used against the party in any 

other proceeding.

Any matter admitted under Fed. R. Civ. P. 36 is conclusively established unless the Board, upon 

motion, permits withdrawal or amendment of the admission.328 This applies both to matters 

expressly admitted; and to those deemed admitted for failure to timely respond to a request for 

admission, where there is no persuasive showing that the failure to timely respond was the result 

of excusable neglect.329 

The Board, upon motion, may permit withdrawal or amendment of an admission when the 

presentation of the merits of the proceeding will be subserved thereby, and the propounding 

party fails to satisfy the Board that withdrawal or amendment will prejudice said party in 

maintaining its action or defense on the merits.330 The timing of a motion to withdraw or amend 

an admission plays a significant role in the Board's determination of whether the propounding 

party will be prejudiced by withdrawal or amendment.331 

328 See Fed. R. Civ. P. 36(b), and TBMP § 407.04 (Effect of Admission). 

329 See Fed. R. Civ. P. 6(b) and 36, and TBMP §§ 407.03(a) (Time for Service of Responses) and 407.04 (Effect of

Admission). 

330 See Fed. R. Civ. P. 36(b); Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d 2064, 2065

(TTAB 1990) (amendment permitted where the requested admissions were ambiguous and conclusory and possible 

prejudice avoided by extending discovery period); Johnston Pump/General Valve Inc. v. Chromalloy American 

Corp., 13 USPQ2d 1719, 1721 (TTAB 1989) (presentation of merits of case aided by relieving opposer of admission

on relevant issue and prejudice avoided by allowing applicant limited discovery as to the amended answer); and

BankAmerica Corp. v. International Travelers Cheque Co., 205 USPQ 1233, 1235 (TTAB 1979) (motion to

withdraw admissions by default denied, but to extent admissions are contradicted by evidence, they will not be

relied on for purposes of deciding whether entry of summary judgment is appropriate). See also American 

Automobile Ass'n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th

Cir. 1991) (court may not sua sponte withdraw or ignore admissions without a motion to withdraw or amend). 

331 See Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., supra (propounding party's testimony period had not

yet opened) and Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra (case was still in pre-trial 

stage). Cf. TBMP § 507.02 (Amendments under Fed. R. Civ. P. 15(a)). 

500 - 346 
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burden or expense, including one or more of the types of orders provided by clauses (1) through 

(8), inclusive, of Rule 26(c) of the Federal Rules of Civil Procedure. If the motion for a 

protective order is denied in whole or in part, the Board may, on such conditions (other than an 

award of expenses to the party prevailing on the motion) as are just, order that any party provide 

or permit discovery. 

 

In inter partes proceedings before the Board, motions for a protective order are governed by 37 

CFR § 2.120(f). 

It is generally inappropriate for a party to respond to a request for discovery by filing a motion 

attacking it, such as a motion to strike, or a motion for a protective order. Rather, the party 

ordinarily should respond by providing the information sought in those portions of the request 

that it believes to be proper, and stating its objections to those which it believes to be

improper.332 

Moreover, if a party upon which interrogatories have been served believes that the number of 

interrogatories served exceeds the limitation specified in 37 CFR § 2.120(d)(1), and is not 

willing to waive this basis for objection, the party must, within the time for (and instead of) 

serving answers and specific objections to the interrogatories, or a motion for a protective order, 

serve a general objection on the ground of their excessive number, leaving the inquiring party 

with the burden of filing a motion to compel if it believes that the objection is not well taken.333 

Nevertheless, there are certain situations (such as, for example, when a request for discovery 

constitutes clear harassment, or when a defendant upon which a request for discovery has been 

served is not and was not, at the time of the commencement of the proceeding, the real party in 

interest) in which a party may properly respond to a request for discovery by filing a motion for a 

protective order that the discovery not be had, or be had only on specified terms and 

conditions.334 

Except in those situations, a motion for a protective order ordinarily should be filed in a Board 

proceeding only in response to a motion to compel where, for example, matter sought to be 

332 See TBMP § 410 (Asserting Objections to Requests for Discovery; Motions Attacking Requests for Discovery) 

and cases cited therein. See also Luemme Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999). 

333 See 37 CFR § 2.120(d)(1), and TBMP § 405.03(e) (Remedy for Excessive Interrogatories). 

334 See, for example, 37 CFR § 2.120(f); Fed. R. Civ. P. 26(c); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 

1764 (TTAB 1999) (protective order against taking deposition of high level executive granted); and Gold Eagle 

Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (protective order granted where 

obligation to respond to discovery requests rested with assignee). See also TBMP § 412 (Protective Orders). 

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For further information concerning protective orders, see TBMP § 412. 

 

discovered assertedly constitutes trade secret or confidential information, or cannot be provided 

without undue burden or expense.335 

When the Board grants a request for a protective order with respect to confidential or trade secret 

information, it may direct either the disclosing party, or the parties together, to prepare an order 

with terms that are mutually agreeable to them.

336 Other alternatives involve accepting a 

protective agreement proffered by a party or ordering parties to adhere to Board’s standard 

agreement.337 Parties are encouraged, however, to stipulate to a protective agreement governing 

the handling of confidential or trade secret information rather than filing a motion for a 

protective order. 

 527 Motion for Sanctions 

527.01 Motion for Discovery Sanctions 

527.01(a) For Failure to Comply With Board Discovery Order 

37 CFR § 2.120(g) Sanctions. 

(1) If a party fails to comply with an order of the Trademark Trial and Appeal Board 

relating to discovery, including a protective order, the Board may make any appropriate 

order, including any of the orders provided in Rule 37(b)(2) of the Federal Rules of Civil 

Procedure, except that the Board will not hold any person in contempt or award any 

expenses to any party. The Board may impose against a party any of the sanctions 

provided by this subsection in the event that said party or any attorney, agent, or 

designated witness of that party fails to comply with a protective order made pursuant to 

Rule 26(c) of the Federal Rules of Civil Procedure. 

335 See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988); Neville 

Chemical Co. v. Lubrizol Corp., 184 USPQ 689 (TTAB 1975); and Saul Lefkowitz and Janet E. Rice, Adversary 

Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 387-388 (1985). 

336 See, for example, Johnston Pump/General Valve Inc. v. Chromalloy American Corp., supra; and Neville 

Chemical Co. v. Lubrizol Corp., supra. 

337 For other examples of cases involving a motion for a protective order relating to discovery, see Double J of

Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991) (request for protective order that

discovery be governed by the Hague Evidence Convention); and Crown Wallcovering Corp. v. Wall Paper 

Manufacturers Ltd., 188 USPQ 141 (TTAB 1975) (motion for protective order that discovery not be taken pending 

Board's determination of motion to dismiss). 

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If a party fails to comply with an order of the Board relating to discovery, including a 

protective order or an order compelling discovery, the Board may enter appropriate 

sanctions, as defined in 37 CFR § 2.120(g)(1). e of a protective order, the 

Board may enter these sanctions against a party if the party or any attorney, agent, or 

designated witness of the party fails to comply with the protective order.

 

338 In the cas

339 

The sanctions which may be entered by the Board include, inter alia, 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.340 Default judgment is a harsh remedy, but may be justified where no

less drastic remedy would be effective and there is a strong showing of willful evasion.341 

However, the Board will not hold any person in contempt, or award any expenses, 

including attorneys' fees, to any party.342 

338 See 37 CFR § 2.120(g)(1) and Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 11 Fed. R. Serv.3d 

1342 (Fed. Cir. 1988) (question of proper sanction committed to sound discretion of the court). 

339 See 37 CFR § 2.120(g)(1).

 

340 See Ingalls Shipbuilding, Inc. v. United States, supra; MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg 

KG, 59 USPQ2d 1477 (TTAB 2000) (repeated failure to comply with orders and unpersuasive reasons for delay

resulted in entry of judgment); Baron Philippe de Rothchild S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 

1854 (TTAB 2000) (pattern of dilatory conduct indicated willful disregard of Board order and resulted in entry of

judgment); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000) (applicant ordered to copy and forward 

documents to opposer at applicant's expense); and Electronic Industries Association v. Potega, 50 USPQ2d 1775, 

1778 (TTAB 1999) (where applicant, in violation of order, served objections to discovery requests, judgment was 

denied as too harsh but applicant was ordered to provide new and complete responses without objection, to copy

documents and forward to opposer, and to study sections of TBMP and certify completion to the Board). 

 See also Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB 1984) and Unicut Corp. v. Unicut, Inc., 220 USPQ

1013 (TTAB 1983) (in 1983 decision respondent sanctioned by order to produce documents by mailing them to

petitioner’s attorney at petitioner’s expense; in 1984 decision respondent’s continued refusal to obey Board orders 

sanctioned by entry of judgment); and Caterpillar Tractor Co. v. Catfish Anglers Together, Inc., 194 USPQ 99

(TTAB 1976) (judgment entered where applicant provided no reason for not complying with Board order 

compelling discovery). 

 Cf. Ingalls Shipbuilding, Inc. v. United States, supra at 1348 (failure to comply based on confusion or sincere 

misunderstanding of court's order does not warrant dismissal) and Seligman & Latz, Inc. v. Merit Mercantile Corp., 

222 USPQ 720 (TTAB 1984) (sanction of drawing adverse inference best left to situations where witness fails or

refuses to answer during testimony as opposed to discovery deposition). 

341 See Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., supra at 1854, and other cases cited in

previous note.

342 See 37 CFR §§ 2.120(g)(1) and 2.127(f), and TBMP § 502.05 (Attorneys’ Fees, etc., on Motions).

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For information concerning sanctions for failure to respond, or respond properly, to 

requests for admissions, see TBMP § 527.01(d). 

 

The motion for sanctions for failure to comply with an order of the Board lies only when 

the Board has entered an order relating to discovery (i.e., an order compelling discovery 

or a protective order) and the order has been violated.343

The motion for sanctions for failure to comply with an order of the Board relating to 

discovery does not apply in situations involving requests for admissions. Sanctions in 

those situations are governed by Fed. R. Civ. P. 36, except that the Board will not award 

any expenses to any party.344 

527.01(b) If Party Says It Will Not Respond to Discovery Request 

37 CFR § 2.120(g)(2) If a party, or an officer, director, or managing agent of a party, or 

a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Civil Procedure 

to testify on behalf of a party, fails to attend the party's or person's discovery deposition, 

after being served with proper notice, or fails to provide any response to a set of 

interrogatories or to a set of requests for production of documents and things, and such 

party or the party's attorney or other authorized representative informs the party seeking 

discovery that no response will be made thereto, the Board may make any appropriate 

order, as specified in paragraph (g)(1) of this section. 

The motion for sanctions under 37 CFR § 2.120(g)(2) is available only for discovery 

depositions, interrogatories, and requests for production of documents and things, and lies 

only where the responding party (1) has failed to respond, and (2) has informed the party 

seeking discovery that no response will be made. 

The sanctions which may be entered by the Board include, inter alia, 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 

343 See, for example, Nobelle.com LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1303

(TTAB 2003) (request to preclude party from submitting trial evidence as a sanction for its alleged failure to comply 

with discovery obligations was procedurally baseless where no discovery order was violated or even ever issued);

MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979) (Board did not issue order compelling 

discovery but had only resumed proceedings after apparent failure of settlement negotiations and reset time to

respond to discovery); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384 (TTAB 1976) (motion for 

summary judgment on basis of petitioner’s failure to answer interrogatories denied); and Johnson & Johnson v.

Diamond Medical, Inc., 183 USPQ 615 (TTAB 1974) (motion for judgment denied).

344 See 37 CFR § 2.120(h), and TBMP § 502.05.

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The motion for sanctions under 37 CFR § 2.120(g)(2) does not apply in situations 

involving requests for admissions. For information concerning sanctions for failure to 

respond, or respond properly, to requests for admissions, see TBMP § 527.01(d). 

A party which fails to respond to a request for discovery (except for a request for 

admission) during the time allowed therefor, and which is unable to show that its failure 

was the result of excusable neglect, may be found, upon motion to compel filed by the 

propounding party, to have forfeited its right to object to the discovery request on its 

merits. erits of a discovery request include claims that the 

information sought by the request is irrelevant, overly broad, unduly vague and 

ambiguous, burdensome and oppressive, or not likely to lead to the discovery of 

admissible evidence.347 Objections based on claims of privilege or confidentiality or 

attorney work product do not go to the merits of the request, but instead to a 

characteristic of the information sought.

 

introducing designated matters in evidence; and entering judgment against the 

disobedient party. However, the Board will not hold any person in contempt, or award 

any expenses, including attorneys' fees, to any party.345 

527.01(c) Untimely Response to Discovery Requests 

346 Objections going to the m

348 

345 See 37 CFR §§ 2.120(g)(1), (2), 2.127(f), and TBMP § 502.05. 

346 See No Fear Inc. v. Rule, 54 USPQ2d 1551 (TTAB 2000) (stating that the Board has great discretion in

determining whether such forfeiture should be found); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 

1987) (circumstances do not justify waiver of right to object in view of confusion regarding time to respond);

Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448 (TTAB 1979) (excusable neglect not shown where 

opposer was out of the country and, upon return, failed to ascertain that responses were due); MacMillan Bloedel 

Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (even where there is complete failure to respond to 

discovery, party seeking such discovery is required to make good faith effort to determine why no response has been

made before filing motion to compel); and Crane Co. v. Shimano Industrial Co., 184 USPQ 691 (TTAB 1975) 

(waived right to object by refusing to respond to interrogatories, claiming that they served "no useful purpose"). See

also TBMP § 403.03 (Time for Service of Discovery Responses). 

347 See No Fear Inc. v. Rule, supra at 1554. 

348 See No Fear Inc. v. Rule, supra at 1554 (party will generally not be found to have waived the right to make these 

objections).

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527.01(e) Estoppel Sanction 

 

527.01(d) In the Case of Requests for Admission 

The entry of sanctions for failure to respond, or respond properly, to requests for 

admission is governed by 37 CFR § 2.120(h) and Fed. R. Civ. P. 36, except that the 

Board will not award expenses to any party.349 

If a party upon which requests for admission have been served fails to file a timely 

response thereto, the requests will stand admitted (automatically), and may be relied upon 

by the propounding party pursuant to 37 CFR § 2.120(j)(3)(i), unless the party upon 

which the requests were served is able to show that its failure to timely respond was the 

result of excusable neglect; or unless a motion to withdraw or amend the admissions is 

filed pursuant to Fed. R. Civ. P. 36(b), and granted by the Board. See Fed. R. Civ. P. 6(b) 

and 36(a), and TBMP § 407.03(a). For information concerning motions to withdraw or 

amend admissions, see TBMP § 525. 

If a party upon which requests for admission have been served responds by serving 

answers and/or objections thereto, and the propounding party believes that one or more of 

the answers and/or objections is insufficient, the propounding party may file a motion 

with the Board to determine the sufficiency of the answers and/or objections believed to 

be insufficient.350 If the Board determines that an answer does not comply with the 

requirements of Fed. R. Civ. P. 36(a), it may order either that the matter is deemed 

admitted or that an amended answer be served. If the Board determines that an objection 

is not justified, it will order that an answer be served.351 For information concerning 

motions to determine the sufficiency of answers or objections to requests for admission, 

see TBMP § 524. 

A party that responds to a request for discovery by indicating that it does not have the 

information sought, or by stating objections thereto, may be barred by its own action 

from later introducing the information sought in the request as part of its evidence on the 

case, providing that the propounding party raises the matter by objecting to the evidence 

in question on that ground, and preserves the objection in its brief on the case (it is not 

necessary that the objecting party file a motion asking for application of this sanction).352

349 See 37 CFR § 2.120(h), and TBMP § 502.05 (Attorneys’ Fees etc., on Motions).

350 See 37 CFR § 2.120(h); Fed. R. Civ. P. 36(a); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ

690 (TTAB 1975); and Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971). 

351 See Fed. R. Civ. P. 36(a). 

352 See, for example, Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 11 Fed. R. Serv. 3d 1342, 1351

(Fed. Cir. 1988); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 828-29 (CCPA 1980)

500 - 352 
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STIPULATIONS AND MOTIONS 

Fed. R. Civ. P. 11...(b) Representations to Court. By presenting to the court (whether by 

signing, filing, submitting, or later advocating) a pleading, written motion, or other paper, an 

attorney or unrepresented party is certifying that to the best of the person's knowledge, 

information, and belief, formed after an inquiry reasonable under the circumstances, -- 

(2) the claims, defenses, and other legal contentions therein are warranted by existing 

law or by a nonfrivolous argument for the extension, modification, or reversal of existing 

law or the establishment of new law; 

 

See also TBMP § 523.04 (Failure to File a Motion to Compel) and cases cited therein.

527.02 Motion for Fed. R. Civ. P. 11 Sanctions 

(1) it is not being presented for any improper purpose, such as to harass or to cause 

unnecessary delay or needless increase in the cost of litigation; 

(applicant’s representations in objecting to interrogatories that facts other than those already litigated in prior 

proceedings were irrelevant and not discoverable gave rise to equitable estoppel preventing applicant from

introducing testimony about those other facts); Super Valu Stores Inc. v. Exxon Corp., 11 USPQ2d 1539, 1543 

(TTAB 1989) (party may not refuse to answer interrogatories by claiming confidentiality and then introduce 

responsive information during its trial period); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 

1896 n.5 (TTAB 1988) (trademark search report not produced under attorney-client privilege, albeit rightfully

withheld, still cannot be relied upon to support motion for summary judgment); ConAgra Inc. v. Saavedra, 4 

USPQ2d 1245, 1247 n.6 (TTAB 1987) (exhibits demonstrating pronunciation not produced during discovery, 

though encompassed by discovery requests, excluded from consideration); and National Aeronautics and Space 

Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1672 n.3 (TTAB 1987) (opposer’s exhibits identified

in applicant’s brief as within the scope of documents requested by applicant but not produced by opposer during

discovery, excluded from consideration). 

 Cf. Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (no estoppel; where objections that discovery 

requests are, for example, ambiguous or burdensome, or are otherwise not of a nature which would lead

propounding party to believe that the requested information does not exist, party should have filed motion to

compel), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28

USPQ2d 1197, 1201 (TTAB 1993) (no estoppel; where applicant gave partial answers and otherwise objected to

requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or

otherwise pursue material, evidence introduced by applicant at trial was considered), aff'd, 35 F.3d 1527, 32

USPQ2d 1120 (Fed. Cir. 1994); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) 

(Board will not impose sanction of drawing adverse inferences against party based on inconsistent responses to

questions asked during discovery deposition without motion to compel complete responses and violation of an order 

compelling answers); and Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989) 

(in that party need not specify evidence it intends to present, failure to identify witness in response to interrogatory 

seeking identification of all witnesses who would testify at trial, did not preclude testimony of such witness). 

 Additional cases: Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985); Era Corp. v.

Electronic Realty Associates, Inc., 211 USPQ 734 (TTAB 1981); Visual Information Institute, Inc. v. Vicon

Industries Inc., 209 USPQ 179 (TTAB 1980); Shoe Factory Supplies Co. v. Thermal Engineering Co., 207 USPQ

517 (TTAB 1980); Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840 (TTAB 1977); Autac Inc. v.

Walco Systems, Inc., 195 USPQ 11 (TTAB 1977); and Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ

193 (TTAB 1976). Cf. Nestle Foods Corp. v. Kellogg Co., 6 USPQ2d 1145 (TTAB 1988); Bigfoot 4x4 Inc. v. Bear

Foot Inc., 5 USPQ2d 1444 (TTAB 1987); Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76

(TTAB 1979); and Procter & Gamble Co. v. Keystone Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976). 

500 - 353 
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STIPULATIONS AND MOTIONS 

(A) By Motion. A motion for sanctions under this rule shall be made separately 

from other motions or requests and shall describe the specific conduct alleged to 

violate subdivision (b). It shall be served..., but shall not be filed with or 

presented to the court unless, within 21 days after service of the motion (or such 

other period as the court may prescribe), the challenged paper, claim, defense, 

contention, allegation, or denial is not withdrawn or appropriately corrected. ... 

(B) On Court's Initiative. On its own initiative, the court may enter an order 

describing the specific conduct that appears to violate subdivision (b) and 

directing an attorney, law firm, or party to show cause why it has not violated 

subdivision (b) with respect thereto. 

determined to constitute a violation of this rule and explain the basis for the sanction 

imposed. 

 

(3) the allegations and other factual contentions have evidentiary support or, if 

specifically so identified, are likely to have evidentiary support after a reasonable 

opportunity for further investigation or discovery; and 

(4) the denials of factual contentions are warranted on the evidence or, if specifically so 

identified, are reasonably based on a lack of information or belief.

(c) Sanctions. If, after notice and a reasonable opportunity to respond, the court determines that 

subdivision (b) has been violated, the court may, subject to the conditions stated below, impose 

an appropriate sanction upon the attorneys, law firms, or parties that have violated subdivision 

(b) or are responsible for the violation. 

 (1) How Initiated. 

(2) Nature of Sanction; Limitations. A sanction imposed for violation of this rule shall 

be limited to what is sufficient to deter repetition of such conduct or comparable conduct 

by others similarly situated. Subject to the limitations in subparagraphs (A) and (B), the 

sanction may consist of, or include, directives of a nonmonetary nature,... 

 (3) Order. When imposing sanctions, the court shall describe the conduct 

(d) Inapplicability to Discovery. Subdivisions (a) through (c) of this rule do not apply to ... 

discovery requests, responses, objections, and motions that are subject to the provisions of Rules 

26 through 37. 

37 CFR § 10.18 Signature and certificate for correspondence filed in the Patent and 

Trademark Office. 

(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, 

except for correspondence that is required to be signed by the applicant or party, each piece of

correspondence filed by a practitioner in the Patent and Trademark Office must bear a 

signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this chapter. 

500 - 354 
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STIPULATIONS AND MOTIONS 

(1) All statements made therein of the party's own knowledge are true, all statements 

made therein on information and belief are believed to be true, and all statements made 

therein are made with the knowledge that whoever, in any matter within the jurisdiction 

of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers 

up by any trick, scheme, or device a material fact, or makes any false, fictitious or 

fraudulent statements or representations, or makes or uses any false writing or document 

knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be 

subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this 

paragraph may jeopardize the validity of the application or document, or the validity or 

enforceability of any patent, trademark registration, or certificate resulting therefrom; 

and 

(i) The paper is not being presented for any improper purpose, such as to 

(iii) The allegations and other factual contentions have evidentiary support or, if 

specifically so identified, are likely to have evidentiary support after a reasonable 

opportunity for further investigation or discovery; and 

specifically so identified, are reasonably based on a lack of information or belief. 

(c) Violations of paragraph (b)(1) of this section by a practitioner or non-practitioner may 

jeopardize the validity of the application or document, or the validity or enforceability of any 

patent, trademark registration, or certificate resulting therefrom. Violations of any of 

paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to 

respond, subject to such sanctions as deemed appropriate by the Commissioner [Director of the 

United States Patent and Trademark Office], or the Commissioner's [Director's] designee, which 

may include, but are not limited to, any combination of- 

 (3) Precluding a party from filing a paper, or presenting or contesting an issue; 

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any 

paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying 

that- 

(2) To the best of the party's knowledge, information and belief, formed after an inquiry 

reasonable under the circumstances, thatharass someone or to cause unnecessary delay or needless increase in the cost of 

prosecution before the Office; 

 (ii) The claims and other legal contentions therein are warranted by 

existing law or by a nonfrivolous argument for the extension, modification, or 

reversal of existing law or the establishment of new law; 

 (iv) The denials of factual contentions are warranted on the evidence, or if 

 (1) Holding certain facts to have been established; 

 (2) Returning papers; 

 (4) Imposing a monetary sanction; 

 (5) Requiring a terminal disclaimer for the period of the delay; or 

 (6) Terminating the proceedings in the Patent and Trademark Office. 

500 - 355 
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STIPULATIONS AND MOTIONS 

Moreover, Rule 11 certification standards apply to parties as well as attorneys.

 

(d) Any practitioner violating the provisions of this section may also be subject to disciplinary 

action. See §10.23(c)(15). 

The quoted provisions of Fed. R. Civ. P. 11 are applicable to pleadings, motions, and other 

papers filed in inter partes proceedings before the Board.353 Thus, if a paper filed in an inter 

partes proceeding before the Board violates the provisions of Fed. R. Civ. P. 11, any party to the 

proceeding may file a motion for the imposition of an appropriate sanction. The Board may find 

a Fed. R. Civ. P. 11 violation, and impose an appropriate sanction, not only upon motion, but 

also upon its own initiative, following issuance of an order to show cause and an opportunity for 

the party to be heard.354 

355 

While Fed. R. Civ. P. 11 provides, inter alia, for the imposition of monetary sanctions, the Board 

will not impose monetary sanctions, or award attorneys' fees or other expenses to any party.356 

However, the Board may enter other appropriate sanctions, up to and including the entry of 

judgment, against a party that violates Fed. R. Civ. P. 11.357 

353 See 37 CFR § 2.116(a); The Clorox co. v. Chemical Bank, 40 USPQ2d 1098, n.9 (TTAB 1996) (accuracy in

factual representations is expected); and Hilson Research Inc. v. Society for Human Resource Management, 27

USPQ2d 1423, 1426 (TTAB 1993) (filing of notice of reliance on third-party discovery deposition constitutes 

certificate that circumstances exist which justify acceptance of the evidence). See also, Alan S. Cooper, The 

Application of Rule 11 Sanctions in Trademark Cases, 78 Trademark Rep. 427 (1988). 

 

354 See Fed. R. Civ. P. 11(c)(1)(B); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021 

(TTAB 1998) (order to show cause issued where, although 56(f) motion was granted, party responded to summary 

judgment without taking the requested discovery); and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ

626, 633 n.19 (TTAB 1986) (Rule 11 permits court to enter sanctions sua sponte).

355 See Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 547, 111 S.Ct. 922, 

112 L.Ed.2d 1140 (1991) and Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 

1213 (TTAB 2001) (authority to sanction pro se party "is manifestly clear."). See also Patent and Trademark Rule 

10.18(b). 

356 See 37 CFR § 2.127(f) and TBMP § 502.05 (Attorneys’ Fees etc., on Motion). Compare 37 CFR § 2.120(f) and 

2.120(g)(1). 

357 See 37 CFR § 2.116(a); ITC Entertainment Group Ltd. v. Nintendo of America Inc., supra at 2023 (sanctions 

included requirement that law firm include express provision in all subsequent filings acknowledging Rule 11(b) and

Trademark Rule 10.18(a) and stating that motion was read, has a sound legal basis and is not interposed for delay,

harassment or other improper purpose); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1221 (TTAB 1990) 

(Rule 11 not designed to punish semantic errors; applicant had reasonable basis for allegations in its pleading); Fort

Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (filing of discovery motions without

reasonable basis in law or in fact resulted in Rule 11 sanctions precluding applicant from filing further discovery 

motions and from filing any motion without prior leave of Board); Giant Food, Inc. v. Standard Terry Mills, Inc., 

supra (applicant’s frivolous request for reconsideration of order imposing Rule 11 sanctions resulted in entry of 

judgment); and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986) (applicant warned that

500 - 356 
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STIPULATIONS AND MOTIONS 

The provisions of 37 CFR § 10.18 largely pattern Federal Rule 11 and are also applicable to 

pleadings, motions, and other papers filed in inter partes proceedings before the Board. Any 

practitioner who knowingly violates the provisions of that rule is subject to disciplinary action.

 

 

A motion for sanctions under Fed. R. Civ. P. 11(c) is governed by, and should not be filed in 

violation of, Fed. R. Civ. P. 11(b). If the Board finds that a motion for Fed. R. Civ. P. 11(c) 

sanctions itself violates the provisions of Fed. R. Civ. P. 11(b), an appropriate Fed. R. Civ. P. 

11(c) sanction may be entered against the party that filed the motion. 

358 

527.03 Inherent Authority to Sanction 

Flowing from the Board's inherent authority to manage the cases on its docket is the inherent 

authority to enter sanctions against a party.359 The Board's exercise of this authority is clearly 

permitted in a variety of situations where the conduct in question does not fall within the reach of 

other sanctioning provisions of the rules.360

For example, when a party to an inter partes proceeding before the Board advises an adverse 

party that it will not take any further action in the case, the adverse party may file a motion 

asserting this fact and request entry of judgment in its favor. If, as is usually the case, the motion 

is uncontested, the Board normally will grant it.361 

Similarly, if a registrant (having been served by the Board with a copy of a petition to cancel its 

registration) or any other party to an inter partes proceeding before the Board, relocates, and fails 

to inform its attorney (if it is represented by an attorney) or the Board or any adverse party of its 

any other filing deemed frivolous would result in judgment). See also, Alan S. Cooper, The Application of Rule 11

Sanctions in Trademark Cases, supra. 

358 See 37 CFR § 10.18 and, for example, ITC Entertainment Group Ltd. v. Nintendo of America Inc., supra. For 

information concerning disciplinary proceedings, see 37 CFR §§ 10.130-10.170, and TBMP § 115.02 (Disciplinary 

Proceedings). In addition, conduct in violation of the Canons and Disciplinary Rules set forth in 37 CFR part 10

may be referred to the Office of Enrollment and Discipline for appropriate action. See 37 CFR §§ 10.18(d) and 

10.20, et.seq.

359 See Chambers v. NASCO, Inc., 501 U.S. 32, 111 S.Ct. 2123, 115 L.Ed.2d 27, rehearing denied, 501 U.S. 1269, 

112 S.Ct. 12, 115 L.Ed.2d 1097 (1991) (stating that this inherent power "stems from the very nature of courts and

their need to be able to manage their own affairs so as to achieve the orderly and expeditious disposition of the 

cases"). 

360 See Chambers v. NASCO, Inc., supra (stating that "[i]f in the informed discretion of the court, neither the statute 

nor the Rules are up to the task, the court may safely rely on its inherent power.") and Carrini Inc. v. Carla Carini 

S.R.L., 57 USPQ2d 1067, 1071-72 (TTAB 2000) (opposer's conduct did not "fall within reach" of Rule 11 but 

resulted in judgment under Board's inherent power to sanction). 

361 See 37 CFR § 2.127(a). 

500 - 357 
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STIPULATIONS AND MOTIONS 

 

new address, with the result that the party cannot be found, and papers relating to the proceeding 

cannot be served upon it, any adverse party may file a motion asserting such fact and requesting 

entry of judgment in its own favor. Again, if the motion is uncontested, the Board normally will 

grant it. Alternatively, under these or similar circumstances indicating that a party is no longer 

interested in the case, the Board may, either upon motion by the adverse party or upon its own 

initiative, issue an order that the party show cause why the Board should not enter judgment in 

view of the party's apparent loss of interest in the case. If the party files no response to the order, 

judgment will normally be entered. 

Other circumstances involving the Board's inherent power to sanction are set forth in the cases 

cited in the note below.

362 

528 Motion for Summary Judgment 

Fed. R. Civ. P. 56. Summary Judgment 

(a) For Claimant. A party seeking to recover upon a claim [or] counterclaim ... may ... move 

with or without supporting affidavits for a summary judgment in the party's favor upon all or any 

part thereof.

(b) For Defending Party. A party against whom a claim [or] counterclaim ... is asserted ... may 

... move with or without supporting affidavits for a summary judgment in the party's favor as to 

all or any part thereof. 

(c) Motion and Proceedings Thereon. ... The adverse party ... may serve opposing affidavits. 

The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to 

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no 

genuine issue as to any material fact and that the moving party is entitled to a judgment as a 

matter of law. ... 

362 International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 n.23 (TTAB 2002) (following opposer's third 

motion to compel, Board prohibited opposer from filing any further motions to compel without prior Board

permission); Central Manufacturing Inc. v. Third Millennium Technology, Inc., 61 USPQ2d 1210 (TTAB 2001)

(extensions of time based on false allegations of continuing settlement negotiations resulted in imposition of

continuing sanctions in future cases); Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1071-72 (TTAB 2000) 

(opposer's "callous disregard for Board orders and ignorance of warnings" including violation of order prohibiting 

filing of any further papers without prior leave, resulted in order dismissing opposition without prejudice, and 

holding opposed application abandoned without prejudice); and Johnston Pump/General Valve Inc. v. Chromalloy 

American Corp., 13 USPQ2d 1719, 1721 n.4 (TTAB 1989) (opposer's counsel warned that Board would not tolerate 

any further "game playing" or evasiveness in discovery). 

 Cf. Thrifty Corporation v. Bomax Enterprises, 228 USPQ 62, 63 n.2 (TTAB 1985) (Board, while noting that it 

did not condone applicant's repeated failure to comply with the requirements of Trademark Rules 2.119(a) and (b) 

found that, in absence of any prejudice to opposer, such conduct did not justify the harsh result of entry of default

judgment).

500 - 358 
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STIPULATIONS AND MOTIONS 

(e) Form of Affidavits; Further Testimony; Defense Required. Supporting and opposing 

affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible 

in evidence, and shall show affirmatively that the affiant is competent to testify to the matters 

stated therein. Sworn or certified copies of all papers or parts thereof referred to in an affidavit 

shall be attached thereto or served therewith. The court may permit affidavits to be 

supplemented or opposed by depositions, answers to interrogatories, or further affidavits. When 

a motion for summary judgment is made and supported as provided in this rule, an adverse party 

may not rest upon the mere allegations or denials of the adverse party's pleading, but the 

adverse party's response, by affidavits or as otherwise provided in this rule, must set forth 

specific facts showing that there is a genuine issue for trial. If the adverse party does not so 

respond, summary judgment, if appropriate, shall be entered against the adverse party. 

 

(d) Case Not Fully Adjudicated on Motion. If on motion under this rule judgment is not 

rendered upon the whole case or for all the relief asked and a trial is necessary, the court ..., by 

examining the pleadings and the evidence before it ..., shall if practicable ascertain what 

material facts exist without substantial controversy and what material facts are actually and in 

good faith controverted. It shall thereupon make an order specifying the facts that appear 

without substantial controversy, ... and directing such further proceedings in the action as are 

just. Upon the trial of the action the facts so specified shall be deemed established, and the trial 

shall be conducted accordingly. 

(f) When Affidavits are Unavailable. Should it appear from the affidavits of a party opposing 

the motion that the party cannot for reasons stated present by affidavit facts essential to justify 

the party's opposition, the court may refuse the application for judgment or may order a 

continuance to permit affidavits to be obtained or depositions to be taken or discovery to be had 

or may make such other order as is just. 

* * * * 

528.01 General Nature of Motion 

The motion for summary judgment is a pretrial device to dispose of cases in which "the 

pleadings, depositions, answers to interrogatories, and admissions on file, together with the 

affidavits, if any, show that there is no genuine issue as to any material fact and that the moving 

party is entitled to judgment as a matter of law."363 

363 Fed. R. Civ. P. 56(c). See, for example, Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty 

Lobby, Inc., 477 U.S. 242 (1986); T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. 

Cir. 1996); Dana Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); and

Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). 

 See also Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 

1990); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987); Pure Gold, 

Inc. v. Syntex (U.S.A.), Inc., 221 USPQ 151 (TTAB 1983), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984);

Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei

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The purpose of the motion is judicial economy, that is, to avoid an unnecessary trial where there 

is no genuine issue of material fact and more evidence than is already available in connection 

with the summary judgment motion could not reasonably be expected to change the result in the 

case.364 

The summary judgment procedure is regarded as "a salutary method of disposition," and the 

Board does not hesitate to dispose of cases on summary judgment when appropriate.365

A party moving for summary judgment has the burden of demonstrating the absence of any 

genuine issue of material fact, and that it is entitled to judgment as a matter of law.366 This 

burden is greater than the evidentiary burden at trial.367 

The burden of the moving party may be met by showing (that is, pointing out) "that there is an 

absence of evidence to support the nonmoving party's case."368

GmbH, 5 USPQ2d 1376 (TTAB 1986); Bongrain International (American) Corp. v. Moquet Ltd., 230 USPQ 626

(TTAB 1986); and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986). 

364 See, for example, Pure Gold, Inc. v. Syntex (U.S.A.), Inc., supra at 743 (Fed. Cir. 1984) (evidence which might

be adduced at trial would not change result given the differences in the goods of the parties); Larami Corp. v. Talk 

To Me Programs Inc., 36 USPQ 1840, 1843 (TTAB 1995) (where issue involved collateral estoppel); and University 

Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1390-91 (TTAB 1994). 

365 See, for example, Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987)

(no relevant evidence to raise genuine issue of material fact); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 

222 USPQ 939 (Fed. Cir. 1984) (response contained only unsupported arguments and conclusions): and The Clorox 

Co. v. Chemical Bank, 40 USPQ2d 1098, 1102 (TTAB 1996) (question of legal effect of assigning ITU application 

is one of law). See also, T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary 

Judgment: No Fishing Allowed, 80 Trademark Rep. 413, 413-414 (1990); and T. Jeffrey Quinn, TIPS FROM THE 

TTAB: Inter Partes Summary Judgment Revisited, 76 Trademark Rep. 73, 77-78 (1986). 

 But see Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298-99 (Fed. Cir. 1991)

(factual question of intent [regarding misuse of registration symbol] is particularly unsuited to disposition on

summary judgment) and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) 

(question of intent [regarding filing of ITU application] generally unsuitable for disposal by summary judgment). 

366 See, for example, Copelands' Enterprises Inc. v. CNV Inc., supra (moving party’s conclusory statement as to 

intent insufficient) and Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 

1998). 

367 See, e.g., Gasser Chair Co. Inc. v. Infanti Chair Manufacturing Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824

(Fed. Cir. 1995) (in addition to proving elements of laches by preponderance of the evidence, moving party must 

also establish no genuine issue of material fact as to those elements). 

368 See Celotex Corp. v. Catrett, supra (no requirement that moving party support its motion with affidavits or other

similar materials negating the opponent's claim but may be based on nonmovant's failure to make sufficient showing 

as to its own case on which it has burden of proof) and Anderson v. Liberty Lobby, Inc., supra. See also Copelands' 

Enterprises Inc. v. CNV Inc., supra at 1298; Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 

1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991); Avia Group International Inc. v. L.A. Gear

500 - 360 
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If the moving party meets its burden, that is, if the moving party has supported its motion with 

affidavits or other evidence which if unopposed would establish its right to judgment, the 

nonmoving party may not rest on mere denials or conclusory assertions, but rather must proffer 

countering evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that 

there is a genuine factual dispute for trial.369 A factual dispute is genuine if sufficient evidence is 

presented such that a reasonable fact finder could decide the question in favor of the non-moving 

party.370 

In deciding a motion for summary judgment, the function of the Board is not to try issues of fact, 

but to determine instead if there are any genuine issues of material fact to be tried.371 The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of 

material fact exist; and the evidentiary record on summary judgment, and all inferences to be 

drawn from the undisputed facts, must be viewed in the light most favorable to the non-moving 

party.372 

California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); and Sweats Fashions Inc. v. Pannill Knitting Co.,

supra. 

369 Fed. R. Civ. P. 56(e); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d

1783 (Fed. Cir. 1990) (non-moving party’s response was not supported by contradictory facts, but merely expressed

disagreement with facts); and Sweats Fashions Inc. v. Pannill Knitting Co., supra at 1797 ("mere conclusory

statements and denials do not take on dignity by placing them in affidavit form."). 

 

370 See Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. 

Cir. 1992) (not required to present entire case but just sufficient evidence to show an evidentiary conflict as to the 

material fact in dispute); Sweats Fashions Inc. v. Pannill Knitting Co., Inc., supra at 1795 (dispute is genuine "only 

if, on the entirety of the record, a reasonable jury could resolve a factual matter in favor of the non-movant"); and

Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). 

371 See Dyneer Corp. v. Automotive Products plc, 37 USPQ 1251, 1254 (TTAB 1995) and University Book Store v. 

University of Wisconsin Board of Regents, supra at 1389. 

372 See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (impermissible 

inferences against nonmovant); Opryland USA Inc. v. The Great American Music Show Inc., supra at 1472; Olde 

Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992) (impermissible inferences in

favor of movant); Copelands' Enterprises Inc. v. CNV Inc., supra (reasonable inferences as to intent could have been

drawn in nonmovant's favor); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 

1030, 1034 (TTAB 1996) (Board accepted nonmovant's version of the facts for purposes of deciding motion); and 

Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993) (on opposer's motion

for summary judgment applicant's evidence of statement of use filed in connection with another of its applications

covering many of same goods as in opposed application created inference of bona fide intent to use present mark 

despite absence of any documents regarding its intent to use present mark). 

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A fact is material if it "may affect the decision, whereby the finding of that fact is relevant and 

necessary to the proceedings."373 However, a dispute over a fact that would not alter the Board’s 

decision on the legal issue will not prevent entry of summary judgment.374 Further, even a 

genuine dispute over a fact relating only to an issue that is not the subject of the summary 

judgment motion will not preclude determination of the motion.375 

Where both parties have moved for summary judgment, the mere fact that they have done so 

does not necessarily mean that there are no genuine issues of material fact, or authorize the 

resolution of such issues, or dictate that judgment should be entered in favor of one of them.

376 

A party moving for summary judgment should specify, in its brief in support of the motion, the 

material facts that are undisputed. The nonmoving party, in turn, should specify, in its brief in 

opposition to the motion, the material facts that are in dispute.377 

If the Board concludes that there is no genuine issue of material fact, but that the nonmoving 

party is the one entitled to judgment as a matter of law, the Board may enter summary judgment 

sua sponte in favor of the nonmoving party.378

Briefs in support of a motion for summary judgment and briefs in response are limited to 25 

pages, and a reply brief shall not exceed 10 pages in length. Exhibits submitted in support of or 

in opposition to the motion are not deemed to be part of the brief for purposes of determining the 

373 Opryland USA Inc. v. The Great American Music Show Inc., supra at 1472. See also Institut National Des 

Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1879 (TTAB 1998) (fact is material when its 

resolution would affect the outcome of the case). 

374 See, for example, Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 

21 USPQ2d 1142 (Fed. Cir. 1991) (single du Pont factor of dissimilarity of marks outweighed all others such that

other factors, even if decided in nonmovant's favor, would not be material because they would not change the 

result). See also Institut National Des Appellations d'Origine v. Brown-Forman Corp., supra at 1879; and Anderson

v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

375 See United States Olympic Committee v. O-M Bread Inc., 29 USPQ2d 1555 (TTAB 1993) (genuine issues of fact 

as to grounds which were asserted in opposition but were not grounds for summary judgment were irrelevant).

376 See University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994). 

377 See T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary Judgment: No

Fishing Allowed, 80 Trademark Rep. 413 (1990). 

378 See The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1104 (TTAB 1996) (effect of assigning ITU

application if statutory exception is not met is one of law and could be decided in nonmovant's favor). See also

Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1209 n.10 (TTAB 2003) (in considering whether to enter

summary judgment in favor of petitioner as nonmoving party, Board treated respondent's statements as it would 

those of a nonmovant and accepted the statements as true). 

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Moreover, the motion for summary judgment should be filed before the opening of the first 

testimony period, as originally set or as reset. The motion for summary judgment is a pretrial 

device, intended to save the time and expense of a full trial when a party is able to demonstrate, 

prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a 

matter of law. the Board, trial commences with the opening 

of the first testimony period.382 Therefore, a motion for summary judgment should be filed prior 

to the opening of the first testimony period, as originally set or as reset, and the Board, in its 

discretion, may deny as untimely any summary judgment motion filed thereafter. ony 

periods are reset prior to the opening of the plaintiff's testimony period-in-chief, a motion for 

summary judgment filed before such testimony period commences is timely. Once the first 

testimony period commences, however, any summary judgment motion filed thereafter is 

 

length of the brief.379 A motion for summary judgment should be filed in single (not multiple) 

form. 

528.02 Time for Filing Motion 

37 CFR § 2.127(e)(1) A motion for summary judgment may not be filed until notification of the 

proceeding has been sent to the parties by the Trademark Trial and Appeal Board. A motion for 

summary judgment, if filed, should be filed prior to the commencement of the first testimony 

period, as originally set or as reset, and the Board, in its discretion, may deny as untimely any 

motion for summary judgment filed thereafter. ... 

A motion for summary judgment filed in an inter partes proceeding before the Board may not be 

filed until after the Board notifies the parties of the institution of the proceeding.380 

381 In inter partes proceedings before 

383 If testim

379 37 CFR § 2.127(a). 

380 See 37 CFR 2.127(e)(1). See also TBMP § 310.01 (Notification to Parties of Proceeding). 

381 See TBMP § 528.01 (General Nature of Motion [for Summary Judgment]) and authorities cited therein. 

382 See TBMP §§ 504.01 (Time for Filing [Judgment on the Pleadings]) and 701 (Time of Trial). 

383 See 37 CFR § 2.127(e)(1); Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 (TTAB 

1992) (motion filed three days before testimony period opened was not untimely despite respondent's claim that it

would have conducted additional discovery if it had known petitioner was planning to file motion rather than go to 

trial); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376 (TTAB 1986) (motion

filed after trial period opens does not serve purpose of eliminating need for trial); and Rainbow Carpet, Inc. v.

Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718 (TTAB 1985) (motion filed after close of

applicant’s testimony period untimely). 

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untimely, even if technically filed prior to the opening of a rescheduled testimony period-in-chief 

for plaintiff, and/or even if no trial evidence has actually been adduced by the plaintiff.

When a motion for summary judgment is filed, a brief in response, or a motion under 56(f) of the 

Federal Rules of Civil Procedure, must be filed within 30 days from the date of service of the 

motion. A reply brief, if any, must be filed within 15 days from the service date of the brief in 

response. e for filing a responsive brief may be extended, but the time for filing a 

motion under Rule 56(f) in lieu thereof, will not be extended.

 

384

The Board will generally not consider a motion for summary judgment filed after the first 

testimony period commences unless (1) it involves a matter of res judicata (claim preclusion) or 

collateral estoppel (issue preclusion), (2) was submitted by agreement of the parties (prior to the 

taking of any testimony), or (3) was not opposed by the nonmoving party (at least on the basis of 

its untimeliness).385 

386 The tim

387 

528.03 Suspension Pending Determination of Motion

37 CFR § 2.127(d) When any party files a motion to dismiss, or a motion for judgment on the 

pleadings, or a motion for summary judgment, or any other motion which is potentially 

dispositive of a proceeding, the case will be suspended by the Trademark Trial and Appeal 

Board with respect to all matters not germane to the motion and no party should file any paper 

which is not germane to the motion except as otherwise specified in the Board’s suspension 

order. If the case is not disposed of as a result of the motion, proceedings will be resumed 

pursuant to an order of the Board when the motion is decided. 

384 See La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234 (Comm’r 1976) (motion filed before reset

testimony period opened, but after previous testimony period opened was untimely; petition to Commissioner to

reverse Board action denied); David J. Kera, TIPS FROM THE TTAB: Summary Judgment, 71 Trademark Rep. 59, 

62 (1981); and T. Jeffrey Quinn, TIPS FROM THE TTAB: Inter Partes Summary Judgment Revisited, 76

Trademark Rep. 73, at 73-74 (1986). 

385 See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1498 n.2 (TTAB 1986) (untimely crossmotions decided where parties acknowledged that both were untimely but wanted a ruling thereon); Lukens Inc. v.

Vesper Corp., 1 USPQ2d 1299, 1300 n.2 (TTAB 1986), aff'd, 831 F.2d 306 (Fed. Cir. 1987) (untimely motion

decided where non-moving party did not object to timeliness and responded on merits and moreover, motion was

based on collateral estoppel); and Buffett v. Chi Chi’s, Inc., 226 USPQ 428 (TTAB 1985) (untimely motion decided 

where no objection to timeliness was raised and delay was relatively insignificant). 

386 37 CFR § 2.127(e)(1). 

387 See TBMP § 528.06 (Request for Discovery to Respond to Summary Judgment). 

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When a party files a timely motion for summary judgment, the Board will suspend proceedings 

in the case with respect to all matters not germane to the motion ely 

filed, the Board, in its discretion, may issue an immediate action denying the motion for that 

reason). The filing of a summary judgment motion does not, in and of itself, automatically 

suspend proceedings in a case; rather, proceedings are suspended when the Board issues an order 

to that effect.389 However, on a case-by-case basis, the Board may find that the filing of a motion 

for summary judgment provides a party with good cause for not complying with an otherwise 

outstanding obligation, for example, responding to discovery requests.

 

388 (if the motion was untim

390 

Once the Board has suspended proceedings in a case pending the determination of a motion for 

summary judgment, no party should file any paper that is not germane to the motion.391 

Examples of papers which are or may be germane to a motion for summary judgment include a 

brief in opposition to the summary judgment motion, a motion for an extension of time in which 

to respond to the summary judgment motion, a motion under Fed. R. Civ. P. 56(f) for discovery 

needed to enable the nonmoving party to respond to the summary judgment motion, a crossmotion for summary judgment, and a motion for leave to amend a party's pleading.392 

388 See 37 CFR §§ 2.127(d) and (e)(1) and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 

(TTAB 1986) (motion to compel deferred pending ruling on summary judgment motion). 

 

389 See Giant Food, Inc. v. Standard Terry Mills, Inc., supra at 965 and T. Jeffrey Quinn, TIPS FROM THE TTAB: 

Inter Partes Summary Judgment Revisited, 76 Trademark Rep. 73, 74 (1986). Cf. Consultants & Designers, Inc. v.

Control Data Corp., 221 USPQ 635, 637 n.8 (TTAB 1984) (filing of motion for entry of default judgment for 

failure to answer does not automatically suspend proceedings). 

390 Cf. Leeds Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002) (regarding

suspension in the case of a motion for judgment on the pleadings); Electronic Industries Association v. Potega, 50 

USPQ2d 1775, 1776 n.4 (TTAB 1999) (regarding suspension in the case of a motion for sanctions in the nature of

judgment); and Giant Food, Inc. v. Standard Terry Mills, Inc., supra at 965-66 (pendency of applicant's summary

judgment motion did not under the circumstances constitute good cause for not responding to outstanding discovery 

requests).

391 See 37 CFR § 2.127(d) and, for example, Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 

USPQ2d 1477, 1479 (TTAB 1998) (motion for discovery sanctions not considered) and Pegasus Petroleum Corp. v. 

Mobil Oil Corp., 227 USPQ 1040 (TTAB 1985) (motion to suspend for civil action not considered). 

392 See TBMP § 528.07 (Unpleaded Issue), and cases cited therein (regarding amendment of pleadings). See also 

International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603-04 (TTAB 2002) (motion to amend opposition

germane inasmuch as it related to the issue of whether applicant's motion is one for complete or partial summary 

judgment); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ 1030, 1032 (TTAB 

1996) (motion to amend pleading to add new claim); United States Olympic Committee v. O-M Bread Inc., 26 

USPQ2d 1221, 1222 (TTAB 1993) (motion to amend to amplify pleading); and Nestle Co. v. Joyva Corp., 227 

USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment is a proper filing even after proceeding is 

suspended). 

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If the Board's determination of the summary judgment motion does not dispose of the case, the 

Board ordinarily will issue an order resuming proceedings.

 

 

Extensions of time will not be granted for a motion under 56(f) for discovery or for the moving 

party to file a reply brief. The Board will consider no further papers beyond a reply brief in 

support of or in opposition to a motion for summary judgment.393 

394 

528.04 Miscaptioned Motion 

If, on a motion captioned as a motion to dismiss (for failure to state a claim upon which relief 

can be granted), or a motion for judgment on the pleadings, matters outside the pleadings are 

submitted and not excluded by the Board, the motion will be treated as a motion for summary 

judgment under Fed. R. Civ. P. 56.

395 Ordinarily, the parties to the proceeding will be notified 

that the motion to dismiss, or for judgment on the pleadings, is being treated as a motion for 

summary judgment, and they will be given a reasonable opportunity to present all material made 

pertinent to such a motion by Fed. R. Civ. P. 56.396 Such notice may be unnecessary, however, 

in those cases where the parties themselves clearly have treated a motion to dismiss, or a motion 

for judgment on the pleadings, as a motion for summary judgment, and the nonmoving party has 

responded to the motion on that basis.397 

393 37 CFR § 2.127(e)(1).

394 See 37 CFR § 2.127(d). 

395 See, for example, Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.2 (TTAB 1998) (thirdparty registrations submitted, but excluded). See also TBMP §§ 503.04 (regarding motions to dismiss for failure to 

state a claim) and 504.03 (regarding motions for judgment on the pleadings).

 

396 See, for example, Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., supra at 1031

(12(b)(6) motion treated in its entirety as one for summary judgment). See also TBMP §§ 503.04 (Matters Outside 

the Pleading for Motion to Dismiss) and 504.03 (Matters Outside the Pleadings for Judgment on Pleadings) and 

authorities cited therein. 

397 See TBMP §§ 503.04 and 504.03; Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 

USPQ2d 1875, 1876 n.1 (TTAB 1998) (motion under 12(b)(6) and/or for summary judgment treated as a motion for 

summary judgment where both parties submitted evidentiary materials outside pleadings); and Parker Brothers v. 

Tuxedo Monopoly, Inc., 225 USPQ 1222 (TTAB 1984) (motion to dismiss treated as one for summary judgment

where matters outside the pleadings submitted and cross-motion for summary judgment filed in response). 

 Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983) (Board

improperly treated motion to dismiss as a motion for summary judgment by rendering a decision on the merits 

without giving plaintiff notice it would treat the motion as such). 

500 - 366 
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Conversely, a motion for summary judgment without supporting evidence is the functional 

equivalent of a motion to dismiss for failure to state a claim upon which relief can be granted, or 

of a motion for judgment on the pleadings.

 

528.05(a) In General

The types of evidence that may be submitted in support of, or in opposition to, a motion 

for summary judgment include "the pleadings, depositions, answers to interrogatories, 

and admissions on file, together with the affidavits, if any." 

The evidentiary record upon summary judgment in an inter partes proceeding before the 

Board also includes, without action by any party, the file of any application or 

registration which is the subject of the proceeding as provided in 37 CFR § 2.122(b) and 

a copy of any registration pleaded and made of record by the plaintiff with its complaint, 

in the manner prescribed in 37 CFR § 2.122(d)(1). In addition, a party may make of 

record, for purposes of summary judgment, copies of other registrations; documents or 

things produced in response to a request for production; official records, if competent 

evidence and relevant to an issue; printed publications, such 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, if the publication is 

competent evidence and relevant to an issue; and testimony from other proceedings, so 

far as relevant and material.400 A party need not submit these materials under a notice of 

reliance in order to make them of record for purposes of a summary judgment motion. 

Rather, the materials may be submitted as attachments or exhibits to a party's brief on the 

motion.

In a Board proceeding, the only evidentiary materials likely to be already of record when 

a motion for summary judgment is filed are the pleadings; the file of any application or 

 

398 

528.05 Summary Judgment Evidence 

399 

401 

398 See S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987) (motion for summary 

judgment was unsupported and whether movant was entitled to judgment as a matter of law could not be determined

on pleadings alone); and Wright, Miller & Kane, Federal Practice and Procedure: Civil 3d § 2722 (1998). For 

information concerning the motion to dismiss for failure to state a claim, see TBMP § 503. For information 

concerning the motion for judgment on the pleadings, see TBMP § 504. 

399 See Fed. R. Civ. P. 56(c). See also Fed. R. Civ. P. 56(e).

400 See 37 CFR §§ 2.122(b), 2.122(d)(2), 2.122(e), 2.122(f), and 2.127(e)(2). See also Raccioppi v. Apogee Inc., 47 

USPQ 1368, 1369-70 (TTAB 1998) (may rely on documents admissible under 2.122(e)). 

401 Cf. TBMP § 700 (Trial Procedure and Introduction of Evidence). 

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STIPULATIONS AND MOTIONS 

registration that is the subject matter of the proceeding; and any registration pleaded and 

made of record by the plaintiff with its complaint. Any other evidence, which a party 

wishes to have considered upon summary judgment, must be submitted in connection 

with the summary judgment motion.

Evidence submitted in connection with a motion for summary judgment is ordinarily of 

record only for purposes of that motion. If the case goes to trial, the summary judgment 

evidence may not form part of the evidentiary record to be considered at final hearing 

unless it is properly introduced in evidence during the appropriate testimony period.

However, the parties may stipulate that any or all of the summary judgment evidence be 

treated as properly of record for purposes of final decision.404 Moreover, the parties may, 

if they so desire, stipulate that the summary judgment motion and evidence be treated as 

the final record and briefs in the case.

What follows, in TBMP §§ 528.05(b) through 528.05(f), is a more detailed discussion of 

some of the types of evidence that may be submitted in connection with a summary 

judgment motion. 

528.05(b) Affidavits and Accompanying Exhibits 

Affidavits may be submitted in support of, or in opposition to, a motion for summary 

judgment provided that they (l) are made on personal knowledge; (2) set forth such facts 

as would be admissible in evidence; and (3) show affirmatively that the affiant is 

competent to testify to the matters stated therein. This is so even though affidavits are 

self-serving in nature, and even though there is no opportunity for cross-examination of 

 

402 

403

405

402 See Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990), aff'd, 951 F.2d 330, 21

USPQ2d 1142 (Fed. Cir. 1991). 

403 See Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998); Levi Strauss & Co. v. R.

Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) (declaration of witness submitted in connection with 

summary judgment motion was part of record for trial where witness identified and attested to accuracy of it during 

applicant’s testimony period); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983) (affidavit offered with

response to motion for summary judgment became part of trial record when witness identified it during testimony

deposition and adverse counsel cross-examined witness about statements in the affidavit); and American Meat 

Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981) (material in support of untimely 

summary judgment motion not trial evidence absent agreement of parties). See also Oxy Metal Industries Corp. v.

Technic, Inc., 189 USPQ 57 (TTAB 1975), summ. judgment granted, 191 USPQ 50 (TTAB 1976); and Clairol Inc. 

v. Holland Hall Products, Inc., 165 USPQ 214 (TTAB 1970). 

404 See, for example, Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1662 n.2 (TTAB 1998) (where parties 

stipulated that evidence submitted in connection with summary judgment motion be deemed of record for trial). 

405 See, for example, Freeman v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002) and Miller 

Brewing Company v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986).

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the affiant. However, an adverse party may have an opportunity for direct examination of 

the affiant, if a Fed. R. Civ. P. 56(f) motion to take the discovery deposition of the affiant 

is made and granted - see TBMP § 528.06.

 

Documents submitted with a summary judgment affidavit, but not identified therein, 

cannot be considered as exhibits to the affidavit.

documentary evidence may nevertheless be given consideration if the statements 

contained in the affidavit are clear and convincing in character, and uncontradicted.

In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 

CFR § 2.20.

 

 

406

The Board may permit affidavits submitted in connection with a summary judgment 

motion to be supplemented or opposed by depositions, answers to interrogatories, or 

further affidavits.407 

408 An affidavit that is not supported by 

409 

410 

 

406 See Fed. R. Civ. P. 56(e). See also Fed. R. Civ. P. 56(c); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d

1560, 4 USPQ2d 1793 (Fed. Cir. 1987) (moving party’s affidavit and other evidence were uncontradicted by

nonmoving party); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB 1998) 

(use of standard language in declaration did not raise genuine issue as to personal knowledge); C & G Corp. v. 

Baron Homes, Inc., 183 USPQ 60 (TTAB 1974) (affidavit is competent evidence); John T. Clark Co. v. ColgatePalmolive Co., 176 USPQ 93, 94 (TTAB 1972) (affidavit was not made on personal knowledge and there was no

foundation for statements made therein); and 4U Company of America, Inc. v. Naas Foods, Inc., 175 USPQ 251

(TTAB 1972) (issue of credibility raised as to one affiant but statements by another affiant were competent and 

uncontradicted and suspicion alone is insufficient to invalidate). 

407 See Fed. R. Civ. P. 56(e), and Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993) 

(additional affidavit submitted with reply brief considered). 

408 See Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 

1030 n.9 (TTAB 1988) (documents were related to information given in affidavit, but were not specifically

identified therein). 

409 See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1736 (TTAB 2001) (opposer's 

declaration, while not accompanied by any documentary evidence, was internally consistent, not characterized by

uncertainty and unchallenged by applicant); 4U Company of America, Inc. v. Naas Foods, Inc., supra at 253 (fact 

that allegations in affidavit not supported by invoice does not undermine the testimony when uncontradicted). 

 Cf., for example, with respect to testimony depositions, Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203

USPQ 305, 307 n.1 (TTAB 1979); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 

1976); Clubman's Club Corp. v. Martin, 188 USPQ 455, 458 (TTAB 1975); and Rite Aid Corp. v. Rite-Way

Discount Corp., 182 USPQ 698, 702 n.5 (TTAB 1974), aff'd, 508 F.2d 828, 184 USPQ 351 (CCPA 1975). 

410 See 37 CFR § 2.20, and Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).

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Cf. 37 CFR § 2.120(j), governing the use of discovery responses as trial evidence, and 

TBMP §§ 704.09-704.11. 

528.05(d) Registrations 

 

528.05(c) Discovery Responses 

37 CFR § 2.127(e)(2) For purposes of summary judgment only, a discovery deposition, 

or an answer to an interrogatory, or a document or thing produced in response to a 

request for production, or an admission to a request for admission, will be considered by 

the Trademark Trial and Appeal Board if any party files, with the party's brief on the 

summary judgment motion, the deposition or any part thereof with any exhibit to the part 

that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part 

of the answer, or a copy of the request for production and the documents or things 

produced in response thereto, or a copy of the request for admission and any exhibit 

thereto and the admission (or a statement that the party from which an admission was 

requested failed to respond thereto). 

37 CFR § 2.122(d)(1) A registration of the opposer or petitioner pleaded in an 

opposition or petition to cancel will be received in evidence and made part of the record

if the opposition or petition is accompanied by two copies (originals or photocopies) of 

the registration prepared and issued by the Patent and Trademark Office showing both 

the current status of and current title to the registration. ... 

If a plaintiff's registration is pleaded and made of record pursuant to 37 CFR § 

2.122(d)(1), the registration is of record for all purposes, including a summary judgment 

motion. 

Alternatively, a plaintiff may make its pleaded registration of record, for purposes of 

summary judgment only, by filing such a status and title copy with its brief on the 

summary judgment motion.411 A registration owned by a defendant may be made of 

record, for purposes of summary judgment only, in the same manner. 

A party may make a third-party registration of record, for purposes of summary judgment 

only, by filing a copy thereof with its brief on the summary judgment motion; the copy 

need not be a certified copy, nor need it be a status and title copy.412

411 See Bongrain International (American) Corp. v. Moquet Ltd., 230 USPQ 626 n.3 (TTAB 1986). Cf. 37 CFR §

2.122(d)(2). 

412 See Interbank Card Ass'n v. United States National Bank of Oregon, 197 USPQ 123 (TTAB 1977) (third-party 

registrations may be plain copies). See also 37 CFR § 2.122(e) and Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 

1370 (TTAB 1998) (incomplete TRAM records of third-party registrations not sufficient).

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For purposes of summary judgment only, a copy of a trademark search report, made of 

record as an exhibit to an affidavit, or as part of a discovery response, submitted in 

opposition to a summary judgment motion, may be sufficient to raise a genuine issue of 

material fact as to the nature and extent of third-party use of a particular designation.413 

528.05(e) Printed Publications and Official Records 

Printed publications, as described in 37 CFR § 2.122(e), include such materials 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.414 The term "official records," as used in 37 CFR § 2.122(e), refers 

not to a party's company business records, but rather to the records of public offices or 

agencies, or records kept in the performance of duty by a public officer.415 

Materials which qualify as printed publications or official records under 37 CFR § 

2.122(e) are considered essentially self-authenticating, that is, the nonoffering party is 

readily able to verify the authenticity of the proffered materials.416 As such, these 

materials may be relied on for purposes of summary judgment without further evidence 

of authenticity.417 A party may introduce evidence of this nature in connection with a 

summary judgment motion, if the evidence is competent and relevant, by: specifying the 

official record or printed publication (including, with respect to the printed publication, 

information sufficient to identify the source and date of the publication) and the pages to 

be read; indicating generally the relevance of the material being offered; and including a 

copy of the proffered material with the party's brief.418

 

413 See, e.g., Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). See 

also, with respect to third-party applications, Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 

(TTAB 2003) (third-party applications which were published for opposition, submitted in response to motion for 

summary judgment, were considered by the Board, but failed to raise a genuine issue of material fact). 

414 See 37 CFR § 2.122(e) and TBMP § 704.08 (Printed Publications).

415 See TBMP § 704.07 (Official Records). 

416 See Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) and Weyerhaeuser v. Katz, 24 USPQ2d

1230, 1232 (TTAB 1992). 

417 See 37 CFR § 2.122(e) and Raccioppi v. Apogee Inc., supra at 1369. 

418 Cf. Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (noting that a proffered

excerpt from a newspaper or periodical is lacking in foundation and, thus, is not admissible as evidence to the extent

that it is an incomplete or illegible copy, is unintelligible because it is in a language other than English, or is not 

fully identified as to the name and date of the published source). 

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The material need not be submitted under a notice of reliance or in connection with the 

affidavit or declaration of a witness, and may simply be submitted as an attachment or 

exhibit to a party's supporting brief. 

Internet evidence and other material that is not self-authenticating. The element of 

self-authentication cannot be presumed to be capable of being satisfied by information 

obtained and printed out from the Internet.

they may be modified or deleted at any time without notice and thus are not "subject to 

the safeguard that the party against whom the evidence is offered is readily able to 

corroborate or refute the authenticity of what is proffered."420 For this reason, Internet 

printouts cannot be considered the equivalent of printouts from, for example, a NEXIS 

search where printouts are the electronic equivalents of the printed publications and 

permanent sources for the publications are identified.

Materials which do not fall within 37 CFR § 2.122(e), that is, materials which are not 

self-authenticating in nature, may nonetheless be admissible as evidence in connection 

with a summary judgment motion, if competent and relevant, provided they are properly 

authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(e).

materials, including printouts of articles or information obtained from the Internet may, 

on summary judgment, be introduced by the affidavit or declaration of a person who can 

clearly and properly authenticate and identify the materials, including identifying the

nature, source and date of the materials.423 

 

419 Internet postings are transitory in nature as 

421

422 Such 

For further information concerning official records and printed publications, including 

the probative value of such evidence, see TBMP §§ 704.07 and 704.08.

424

419 See Raccioppi v. Apogee Inc., supra at 1370. See also In re Total Quality Group Inc., 51 USPQ2d 1474, 1476

(TTAB 1999). 

420 Weyerhaeuser v. Katz, supra at 1232 (TTAB 1992) citing Glamorene Products Corporation v. Earl Grissmer

Company, Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979). See Raccioppi v. Apogee Inc., supra at 1370. Cf. Michael 

S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000) (introduction of telephone listings retrieved 

from Internet was improper); and Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB

1999) (printout of page of website is not proper subject matter for a notice of reliance). 

421 See Raccioppi v. Apogee Inc., supra at 1370. See also In re Total Quality Group Inc., supra (examining

attorney’s request for judicial notice of on-line dictionary definitions denied because the definitions were not 

available in printed format). 

422 See TBMP § 528.05(b) (Affidavits and Accompanying Exhibits). 

423 See, e.g., Raccioppi v. Apogee Inc., supra at 1369. 

424 See also Raccioppi v. Apogee Inc., supra at 1371 for a discussion of the probative weight given evidence 

obtained from the Internet. 

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Upon motion granted by the Board, testimony taken in another proceeding, or in a suit or 

action in a court, between the same parties or their privies, may be used in connection 

with a summary judgment motion in a pending Board proceeding, to the extent that the 

testimony is relevant and material. The use of such testimony, however, is subject "to the 

right of any adverse party to recall or demand the recall for examination or crossexamination of any witness whose prior testimony has been offered and to rebut the 

testimony." otion made to enter testimony from another proceeding should be 

accompanied by a copy of the testimony sought to be entered in the record together with 

clear arguments as to its relevance and materiality. Relevance and materiality frequently 

hinge upon the marks and goods or services involved in the two proceedings.426

528.06 Request for Discovery to Respond to Summary Judgment 

Fed. R. Civ. P. 56(f) When Affidavits are Unavailable. Should it appear from the affidavits of a 

party opposing the motion that the party cannot for reasons stated present by affidavit facts 

essential to justify the party's opposition, the court may refuse the application for judgment or 

may order a continuance to permit affidavits to be obtained or depositions to be taken or 

discovery to be had or may make such other order as is just. 

 

528.05(f) Testimony from Another Proceeding 

37 CFR § 2.122(f) Testimony from other proceedings. By order of the Trademark Trial 

and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken 

in a suit or action in a court, between the same parties or those in privity may be used in 

a proceeding, so far as relevant and material, subject, however, to the right of any 

adverse party to recall or demand the recall for examination or cross-examination of any 

witness whose prior testimony has been offered and to rebut the testimony. 

425 Any m

When the Board allows testimony of this nature to be used in connection with a motion 

for summary judgment, the testimony (and any testimony taken upon recall of the same

witness for examination or cross-examination, or in rebuttal thereof) is of record only for 

purposes of the motion for summary judgment; it will not be considered at final hearing if 

the case goes to trial, unless it is reintroduced, upon motion granted by the Board, during 

the appropriate trial period.427 

 

425 37 CFR § 2.122(f). 

426 See TBMP § 530 (Motion to Use Testimony from Another Proceeding). 

 

427 See TBMP § 528.05(a) (Summary Judgment Evidence – In General). 

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37 CFR § 2.127(e)(1) ... A motion under Rule 56(f) of the Federal rules of civil Procedure, if 

filed in response to a motion for summary judgment, shall be filed within 30 days from the date 

of service of the summary judgment motion. The time for filing a motion under rule 56(f) will not 

be extended. ... 

A party that believes that it cannot effectively oppose a motion for summary judgment without 

first taking discovery may file a request with the Board for time to take the needed discovery. 

The request must be supported by an affidavit showing that the nonmoving party cannot, for 

reasons stated therein, present by affidavit facts essential to justify its opposition to the 

motion.428 

It is not sufficient that a nonmoving party simply state in an affidavit supporting its motion under 

Fed. R. Civ. P. 56(f) that it needs discovery in order to respond to the motion for summary 

judgment; rather, the party must state therein the reasons why it is unable, without discovery, to 

present by affidavit facts sufficient to show the existence of a genuine issue of material fact for 

trial.429 If a party has demonstrated a need for discovery that is reasonably directed to obtaining 

facts essential to its opposition to the motion, discovery will be permitted, especially if the 

information sought is largely within the control of the party moving for summary judgment.430 

428 See Fed. R. Civ. P. 56(f); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23

USPQ2d 1471 (Fed. Cir. 1992) (finding sufficient need for additional discovery); Keebler Co. v. Murray Bakery

Products, 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (unfocused requests for discovery; 56(f) makes no

distinction between whether no discovery has been taken or whether additional discovery is needed); Avia Group 

International Inc. v. L.A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988) (complaint that

summary judgment was granted before it could take discovery unavailing where party failed to seek 56(f) 

protection); Spectra Corp. v. Lutz, 839 F.2d 1579, 5 USPQ2d 1867 (Fed. Cir. 1988) (discovery properly denied

where plaintiff had conducted 11 months of discovery and was allowed to continue taking discovery pending

decision on defendant’s motion for summary judgment and failed to file 56(f) affidavit); Sweats Fashions Inc. v. 

Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir. 1987) (mere assertion in brief of need for

discovery insufficient). See also Institut National des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 

1875, 1896 n.13 (TTAB 1998) (assertion in response to summary judgment motion that opposers intend to conduct 

further discovery was not proper request for 56(f) discovery); Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 

1251, 1253 (TTAB 1995) (56(f) denied where applicant also filed a response to the summary judgment motion on

the merits); Orion Group Inc. v. Orion Insurance Co., plc, 12 USPQ2d 1923 (TTAB 1989) (56(f) declaration

sufficient); Nature's Way Products Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077 (TTAB 1989) (mere unsupported 

assertion of desire to take deposition inadequate); and T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery 

Safeguards in Motions for Summary Judgment: No Fishing Allowed, 80 Trademark Rep. 413 (1990). See also

Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992) (failure to file 56(f) motion

creates presumption party did not consider such discovery essential). 

429 See Dyneer Corp. v. Automotive Products PLC, supra at 1253 (56(f) denied where applicant failed to show need

for discovery as to specific issues, not merely a showing that it deferred taking discovery it otherwise would have 

taken had it known a motion for summary judgment would be filed). See also cases cited in previous note.

430 See Orion Group Inc. v. Orion Insurance Co., plc, supra. 

 

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A request for Fed. R. Civ. P. 56(f) discovery, if filed, must be filed within 30 days of the date of 

service of the summary judgment motion. time will be granted to file a 

motion under Rule 56(f). The affidavit in support of the request may be signed either by the 

requesting party or by its counsel, as appropriate.

 

The motion should set forth with specificity the areas of inquiry needed to obtain the information 

necessary to enable party to respond to the motion for summary judgment.431 

In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 CFR § 

2.20.432 

When a request for discovery under Fed. R. Civ. P. 56(f) is granted by the Board, the discovery 

allowed is limited to that which the nonmoving party must have in order to oppose the motion 

for summary judgment; this is so even if the nonmoving party had, at the time when the 

summary judgment motion was filed, requests for discovery outstanding, and those requests 

remain unanswered.433 

434 No extensions of

435 

A request for 56(f) discovery should be clearly made, and certainly not buried somewhere in a 

responsive brief or other paper, and should not be filed as a "throw away" alternative 

accompanying a response to the motion for summary judgment on the merits.436 Moreover, if a 

party’s request for discovery under Fed. R. Civ. P. 56(f) is granted by the Board, and the party 

thereafter files a response to the summary judgment without taking the requested discovery, the 

431 See Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989) (unfocused

requests for discovery are insufficient); Sweats Fashions Inc. v. Pannill Knitting Co., supra (mere assertion that 

discovery is necessary is insufficient); Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990) (affidavit 

stating that, during discovery party will seek to elicit information on likelihood of confusion insufficient); Nature's 

Way Products Inc. v. Nature's Herbs Inc., supra (56(f) motion, to the extent it could be construed as such, was not

supported by required affidavit); and J.I. Case Co. v. F.L. Industries, Inc., 229 USPQ 697 (TTAB 1986) (statement

by applicant of need to take discovery on validity of assignment was unsupported speculation). 

432 See 37 CFR § 2.20. Cf. Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).

433 See T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary Judgment: No

Fishing Allowed, 80 Trademark Rep. 413 (1990). 

434 37 CFR § 2.127(e)(1). 

 

435 See T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary Judgment: No

Fishing Allowed, supra. 

436 See T. Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary Judgment: No

Fishing Allowed, supra at 416. See also Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009

(TTAB 2002) (56(f) motion denied where opposer filed a response to the motion for summary judgment on the 

merits). 

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filing of the Rule 56(f) motion may be viewed as sanctionable conduct under Fed. R. Civ. P. 

11.437 

For further information concerning requests for discovery under Fed. R. Civ. P. 56(f), see T. 

Jeffrey Quinn, TIPS FROM THE TTAB: Discovery Safeguards in Motions for Summary 

Judgment: No Fishing Allowed, 80 Trademark Rep. 413 (1990). 

528.07 Unpleaded Issue 

528.07(a) Not Basis for Entering Summary Judgment

A party may not obtain summary judgment on an issue that has not been pleaded.438 

Moreover, at the summary judgment stage of a proceeding before the Board, there has not 

yet been a trial of any issue, whether pleaded or unpleaded, and therefore the 

requirements of Fed. R. Civ. P. 15(b) for an amendment to conform the pleadings to the 

evidence cannot have been met. 439

Generally, a party that seeks summary judgment on an unpleaded issue may move to 

amend its pleading to assert the matter. Alternatively, if the parties, in briefing 

summary judgment motion, have treated an unpleaded issue on its merits, and the 

nonmoving party has not objected to the motion on the ground that it is based on an 

unpleaded issue, the Board may deem the pleadings to have been amended, by agreement 

440

437 See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021 (TTAB 1998) (order to show

cause issued where, although 56(f) motion was granted, party responded to summary judgment without taking the 

requested discovery). 

438 See Fed. R. Civ. P. 56(a) and 56(b); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 

1997); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993); Estate of

Biro v. Bic Corp., 18 USPQ2d 1382, 1386 n.8 (TTAB 1991); Giant Food, Inc. v. Standard Terry Mills, Inc., 231

USPQ 626, 628 (TTAB 1986); and Consolidated Foods Corp. v. Berkshire Handkerchief Co. Inc., 229 USPQ 619, 

621 (TTAB 1986). 

439 See, e.g., Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1635 (TTAB

1998) (attempt to amend pleadings under 15(b) denied since there had not yet been a trial, but allowed time to move 

to amend under 15(a)). 

440 See Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc., supra at 1635 (allowed time to file 

motion to amend pleading to add new grounds and to renew summary judgment motion); Commodore Electronics 

Ltd. v. CBM Kabushiki Kaisha, supra (motion to amend, filed after summary judgment on unpleaded issue had been

denied, was granted); and Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 

1242 n.4 (TTAB 1989) (motion to amend to add new ground, filed simultaneously with motion for summary

judgment, granted and allegations in new ground deemed denied). 

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528.07(b) Not Defense Against Summary Judgment

However, a party which seeks to defend against a motion for summary judgment by 

asserting the existence of genuine issues of material fact regarding an unpleaded claim or 

defense, may move to amend its pleading to allege the matter.

seeks to defend against a motion for summary judgment by asserting the existence of 

genuine issues of material fact regarding an unpleaded claim or defense, and the party 

moving for summary judgment treats the unpleaded matter on its merits, and does not 

object thereto on the ground that the matter is unpleaded, the Board may deem the 

pleadings to have been amended, by agreement of the parties, to allege the matter.445 

However, an opposition against a 66a) application may not be amended (or deemed 

amended) to assert a new ground for opposition.

 

of the parties, to allege the matter. However, an opposition against a 66(a) application 

may not be amended (or deemed amended) to assert an entirely new claim or to rely on 

an additional registration in support of an existing Section 2(d) claim.

442 

441

 

A party may not defend against a motion for summary judgment by asserting the 

existence of genuine issues of material fact as to an unpleaded claim or defense.443

444 Alternatively, if a party 

446

441 See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (pleading deemed amended

where nonmoving party did not object to motion as seeking judgment on unpleaded claim), aff’d (unpub’d), 108 

F.3d 1392 (Fed. Cir. 1997); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 81 n.3 (TTAB 1984)

(pleading deemed amended where nonmoving party did not object to motion on unpleaded claim and treated it on its

merits). Compare Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 n.5 (TTAB 1995) (not permitted

where nonmoving party objected to inclusion of unpleaded grounds even though party responded to motion on

unpleaded grounds on merits).

442 See 37 CFR 2.107(b) and TBMP §§ 314 and 507.01. See also Rules of Practice for Trademark-Related Filings

Under the Madrid Protocol Implementation Act; Final Rule, published in the Federal Register on September 26, 

2003 at 68 FR 55748, 55757. 

443 Cf. Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477 (TTAB 1992) (may not

assert unpleaded Morehouse defense), and Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d

1134, 1135 n.2 (TTAB 1992) (no consideration given to three unpleaded grounds asserted by opposer in response to

applicant’s motion for summary judgment). 

444 See United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993). 

445 Cf. TBMP § 528.07(a) (Unpleaded Issue – Not Basis for Entering or Avoiding Summary Judgment) and

authorities cited therein. 

446 See 37 CFR 2.107(b) and TBMP §§ 314 and 507.01. 

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 529 Motion to Offer Discovery Deposition of Self or Nonparty 

37 CFR § 2.120(j) Use of discovery deposition, ... (1) The discovery deposition of a party or of 

anyone who at the time of taking the deposition was an officer, director or managing agent of a 

party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal 

Rules of Civil Procedure, may be offered in evidence by an adverse party. 

 

528.08 Entry of Summary Judgment in Favor of Nonmoving Party 

If the Board concludes, upon motion for summary judgment, that there is no genuine issue of 

material fact, but that it is the nonmoving party, rather than the moving party, which is entitled to 

judgment as a matter of law, the Board may, in appropriate cases, enter summary judgment sua

sponte in favor of the nonmoving party (that is, enter summary judgment in favor of the 

nonmoving party even though there is no cross-motion for summary judgment).447 

(2) Except as provided in paragraph (j)(1) of this section, the discovery deposition of a witness, 

whether or not a party, shall not be offered in evidence unless the person whose deposition was 

taken is, during the testimony period of the party offering the deposition, dead; or out of the 

United States (unless it appears that the absence of the witness was procured by the party 

offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; 

or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there 

is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to 

make it desirable, in the interest of justice, to allow the deposition to be used. The use of a 

discovery deposition by any party under this paragraph will be allowed only by stipulation of the 

parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, 

which shall be filed at the time of the purported offer of the deposition in evidence, unless the 

motion is based upon a claim that such exceptional circumstances exist as to make it desirable, 

in the interest of justice, to allow the deposition to be used, in which case the motion shall be 

filed promptly after the circumstances claimed to justify use of the deposition became known. 

Ordinarily, the discovery deposition of a party (or of anyone who, at the time of taking the 

deposition, was an officer, director, or managing agent of a party, or a person designated by a 

party pursuant to Fed. R. Civ. P. 30(b)(6) or Fed. R. Civ. P. 31(a)(3)) may be offered in evidence 

447 See, for example, Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443, 1446 (TTAB 1996) (nonmovant

entitled to summary judgment where question was one of law); The Clorox Company v. Chemical Bank, 40 USPQ2d 

1098 (TTAB 1996) (effect of assigning ITU application if statutory exception is not met is one of law and could be 

decided in nonmovant's favor); Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857 (TTAB 1986) (granted to 

nonmovant as to its standing); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909

(TTAB 1984) (granted to nonmovant applicant because application elements allegedly missing from application 

were not required by Paris Convention); and Visa International Service Assn v. Life-Code Systems, Inc., 220 USPQ

740 (TTAB 1983) (nonmovant entitled to judgment as a matter of law on issues of abandonment, non-use and

fraud). 

 

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(1) The person whose deposition was taken is, during the testimony period of the party 

offering the deposition, dead; or out of the United States (unless it appears that the 

absence of the witness was procured by the party offering the deposition); or unable to 

testify because of age, illness, infirmity, or imprisonment; or cannot be served with a 

subpoena to compel attendance at a testimonial deposition; or

 

only by an adverse party; a party may not, in the first instance, offer in evidence a discovery 

deposition taken of itself (or of its officer, director, managing agent, etc.) by an adverse party, 

except by stipulation of the parties approved by the Board, or by order of the Board on motion. 

Similarly, no party may offer into evidence the discovery deposition of a nonparty witness, 

except by stipulation of the parties approved by the Board, or by order of the Board on motion.448 

A motion for leave to offer in evidence a discovery deposition taken by an adverse party of the 

moving party itself (or of an officer, director, managing agent, etc., of the moving party), or the 

discovery deposition of a nonparty witness, must show that: 

(2) Such exceptional circumstances exist as to make it desirable, in the interest of justice, 

to allow the deposition to be used.449 

A motion based on one of the first grounds listed above must be filed at the time of the purported 

offer of the deposition in evidence. A motion based on the second ground must be filed 

promptly after the circumstances claimed to justify use of the deposition become known.450

530 Motion to Use Testimony From Another Proceeding 

37 CFR § 2.122(f) Testimony from other proceedings. By order of the Trademark Trial and 

Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or 

action in a court, between the same parties or those in privity may be used in a proceeding, so 

448 See 37 CFR § 2.120(j)(2), and TBMP § 704.09 (Discovery Depositions) and authorities cited therein. Cf. 37

CFR § 2.120(j)(4) (fairness exception provides that if only part of a discovery deposition is made of record by a 

party, an adverse party may introduce any other part of the deposition which should be considered so as to make not 

misleading what was offered by the submitting party). 

449 See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993)

(opposer established that one third-party witness was out of the country during its testimony period but failed to

establish that another witness was either a "party" as contemplated by Trademark Rule 2.120(j)(1), at the time of 

deposition or the existence of exceptional circumstances). Cf. Maytag Co. v. Luskin's, Inc., 228 USPQ 747 n.4 

(TTAB 1986) (deposition of opposer’s nonparty witness taken by opposer during discovery treated as testimony

deposition taken by stipulation of the parties prior to trial); and Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 

221 USPQ 354, 356 n.5 (TTAB 1984) (discovery deposition of nonparty treated as stipulated in the record where 

applicant had not objected to opposer’s notice of reliance upon the deposition). 

450 See 37 CFR § 2.120(j)(2). 

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far as relevant and material, subject, however, to the right of any adverse party to recall or 

demand the recall for examination or cross-examination of any witness whose prior testimony 

has been offered and to rebut the testimony. 

The use, in an inter partes proceeding before the Board, of testimony taken in another Board 

proceeding, or testimony taken in a suit or action in a court, is governed by 37 CFR § 2.122(f).451 

A party may seek, by motion, to use testimony from another proceeding, either as evidence in its 

behalf upon summary judgment or as part of its evidence on the case.452 The Board prefers that a 

motion for leave to use testimony from another proceeding as evidence on the case be filed 

during the testimony period of the moving party.453 The better practice is to file the motion early 

in the testimony period, in order to minimize the resulting delay in the proceeding. If the motion 

is made without the consent of every adverse party, and the moving party believes that it will 

need additional time to present evidence if the motion is denied, the moving party should file 

with its motion under 37 CFR § 2.122(f) a motion to extend its testimony period. 

However, 37 CFR § 2.122(f) does not require that a motion for leave to use testimony from

another proceeding be filed during the testimony period of the moving party, and it is not 

unreasonable for a party to want to ascertain, prior to the opening of its testimony period, 

whether it will be allowed to rely on such testimony. Thus, a motion under 37 CFR § 2.122(f) 

filed prior to the opening of the moving party's testimony period will not be denied as 

untimely.454 

A motion for leave to use testimony from another proceeding should be accompanied by a copy 

of the testimony, and accompanying exhibits, sought to be introduced. A copy of the motion, 

testimony, and accompanying exhibits should be served on every other party to the 

proceeding.455 

451 Cf. TBMP § 704.11 (Produced Documents) and authorities cited therein. 

452 See TBMP §§ 528.05(f) (Testimony from Another Proceeding) and 704.11 (Produced Documents) and

authorities cited therein. 

453 Cf. 37 CFR § 2.120(j)(2).

454 See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316 (TTAB 1992) (motion

to admit testimony from prior opposition filed during discovery period). 

455 See 37 CFR § 2.119(a), and Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, supra. 

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The Board has construed the term "testimony," as used in 37 CFR § 2.122(f), as meaning only 

trial testimony, by agreement of the parties, as trial 

testimony in the other proceeding. 

 

456 or a discovery deposition which was used, 

531 Motion That Deposition Upon Written Questions Be Taken Orally 

37 CFR § 2.123(a)(1) The testimony of witnesses in inter partes cases may be taken by 

depositions upon oral examination as provided by this section or by depositions upon written 

questions as provided by §2.124. If a party serves notice of the taking of a testimonial deposition 

upon written questions of a witness who is, or will be at the time of the deposition, present within 

the United States or any territory which is under the control and jurisdiction of the United 

States, any adverse party may, within fifteen days from the date of service of the notice, file a 

motion with the Trademark Trial and Appeal Board, for good cause, for an order that the 

deposition be taken by oral examination. 

A party served with notice of the taking, by an adverse party, of a testimonial deposition upon 

written questions of a witness who is, or will be at the time of the deposition, present within the 

United States or any territory which is under the control and jurisdiction of the United States, 

may, within 15 days from the date of service of the notice (20 days if service of the notice was 

made by first-class mail, "Express Mail," or overnight courier--see 37 CFR § 2.119(c)), file a 

motion with the Board, showing good cause, for an order that the deposition be taken by oral 

examination.457 

The Board on a case-by-case basis, depending upon the particular facts and circumstances in 

each case, makes the determination of whether good cause exists for a motion that a testimonial 

deposition upon written questions instead be taken by oral examination.458 

456 See Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172 (TTAB 1986) (cf., Allen,

dissenting, 177, 182 n.15) (wherein dissent contended that discovery deposition should have been admitted as 

admission against interest). 

457 See 37 CFR § 2.123(a)(1).

458 See Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079 (TTAB 1990) (unjust to deprive 

applicant of oral cross-examination opposer's expert rebuttal witness present in U.S.), corrected, 19 USPQ2d 1479 

(TTAB 1990); and Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980) (proposed deposition

on written questions of petitioner's employees during rebuttal period would deprive applicant of cross-examination

and confronting witness). See also Louise E. Fruge, TIPS FROM THE TTAB: Depositions Upon Written Questions, 

70 Trademark Rep. 253, 254 (1980). Cf. Orion Group Inc. v. Orion Insurance Co., plc, 12 USPQ2d 1923 (TTAB 

1989) (good cause to take oral discovery deposition of witness in England) and TBMP § 520 (Motion to Take

Foreign Deposition Orally). 

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532 Motion to Strike Notice of Reliance 

During its testimony period, a party may make certain specified types of evidence of record by 

filing a notice of reliance thereon, accompanied by the evidence being offered. For a discussion 

of the introduction of evidence see TBMP § 700. Trademark Rule 2.120(j), 37 CFR § 2.120(j), 

provides for the introduction, by notice of reliance, of a discovery deposition, answer to 

interrogatory, or admission; but specifically states that documents obtained by production under 

Fed. R. Civ. P. 34 may not be made of record by notice of reliance alone, except to the extent 

that they are admissible by notice of reliance under the provisions of 37 CFR § 2.122(e). 

Trademark Rule 2.122(d)(2), 37 CFR § 2.122(d)(2), provides for the introduction, by notice of 

reliance, of a registration owned by a party to a proceeding. Trademark Rule 2.122(e), 37 CFR § 

2.122(e), provides for the introduction, by notice of reliance, of certain specified types of printed 

publications and official records.459 

When a notice of reliance under any of the aforementioned rules is filed after the close of the 

offering party's testimony period, an adverse party may file a motion to strike the notice of 

reliance (and, thus, the evidence submitted thereunder), in its entirety, as untimely.460 

An adverse party may also move to strike a notice of reliance, in whole or in part, on the ground 

that the notice of reliance does not comply with the procedural requirements of the particular rule 

under which it was submitted. For example, a party may move to strike a Trademark Rule 

2.122(e) notice of reliance on a printed publication, on the ground that it does not include a copy 

of the printed publication, or does not indicate the general relevance thereof,461or that the 

proffered materials are not appropriate for introduction by notice of reliance.462 If, upon motion 

to strike a notice of reliance on the ground that it does not meet the procedural requirements of 

the rule under which it was filed, the Board finds that the notice is defective, but that the defect is 

curable, the Board may allow the party which filed the notice of reliance time within which to 

cure the defect, failing which the notice will stand stricken.463 

459 See also TBMP §§ 704.03(b) (Applications and Registrations - Not Subject of Proceeding), and 704.07-704.11. 

460 See TBMP § 707.02(c), and cases cited therein. 

461 See TBMP § 707.02(b)(2), and cases cited therein. 

462 See TBMP § 707.02(b)(2) (regarding objections to notices of reliance on procedural grounds) and, for example, 

Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2019-20 (TTAB 2003) (whether plaintiff's price 

sheets and catalogs constitute proper subject matter for a notice of reliance is not a substantive issue and may be

determined from the face of the notice of reliance). 

463 See M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070 (TTAB 1990) (allowed 20 days to correct deficiencies) 

and Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.6 (TTAB 1988) (where registrant was 

given leave to amend notice of reliance to correct deficiencies but failed to do so, documents remained stricken). 

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Objections to a notice of reliance on substantive grounds, such as objections on the grounds that 

evidence offered under a notice of reliance constitutes hearsay or improper rebuttal, or is 

incompetent, irrelevant, or immaterial, normally need not and should not be raised by motion to 

strike. Rather, such objections should be raised in the objecting party's brief on the case, unless 

the ground for objection is one that could have been cured if raised promptly by motion to 

strike.

464 

It is the policy of the Board not to read trial testimony or examine other trial evidence prior to 

final decision.465 Thus, if a motion to strike cannot be resolved simply by reviewing the face of 

the notice of reliance (and attached documents), but instead would require a review of testimony 

or other evidence, determination of the motion will be deferred by the Board until final 

hearing.466 

Evidence timely and properly introduced by notice of reliance under the applicable trademark 

rules generally will not be stricken, but the Board will consider any objections thereto in its 

evaluation of the probative value of the evidence at final hearing.467 

 533 Motion to Strike Trial Testimony Deposition 

533.01 On Ground of Untimeliness 

37 CFR § 2.121(a)(1) The Trademark Trial and Appeal Board will issue a trial order assigning 

to each party the time for taking testimony. No testimony shall be taken except during the times 

assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order 

of the Board. ... 

A party may not take testimony outside of its assigned testimony period, except by stipulation of 

the parties approved by the Board, or upon motion granted by the Board, or by order of the 

Board.468

When there is no such approved stipulation, granted motion, or Board order, and a testimony 

deposition is taken after the close of the deposing party's testimony period, an adverse party may 

464 See TBMP § 707.02(c) and authorities cited therein. 

465 See TBMP § 502.01 and authorities cited therein. 

466 See M-Tek Inc. v. CVP Systems Inc., supra (questions of admissibility of documents based on hearsay and lack 

of authentication deferred). 

467 See TBMP § 707.02(c) (Objections to Notice of Reliance on Substantive Grounds) and cases cited therein. 

468 See 37 CFR § 2.121(a) and TBMP § 701 (Time of Trial). 

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file a motion to strike the deposition, in its entirety, as untimely.469 Alternatively, the adverse 

party may raise this ground for objection in its brief on the case.470 

533.02 On Ground of Improper or Inadequate Notice 

37 CFR § 2.123(c) Notice of examination of witnesses. Before the depositions of witnesses 

shall be taken by a party, due notice in writing shall be given to the opposing party or parties, as 

provided in §2.119(b), of the time when and place where the depositions will be taken, of the 

cause or matter in which they are to be used, and the name and address of each witness to be 

examined; if the name of a witness is not known, a general description sufficient to identify the 

witness or the particular class or group to which the witness belongs, together with a 

satisfactory explanation, may be given instead. ... 

37 CFR § 2.123(e)(3) Every adverse party shall have full opportunity to cross-examine each 

witness. If the notice of examination of witnesses which is served pursuant to paragraph (c) of 

this section is improper or inadequate with respect to any witness, an adverse party may crossexamine that witness under protest while reserving the right to object to the receipt of the 

testimony in evidence. Promptly after the testimony is completed, the adverse party, if he wishes 

to preserve the objection, shall move to strike the testimony from the record, which motion will 

be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a 

witness for lack of proper or adequate notice of examination must request the exclusion of the 

entire testimony of that witness and not only a part of that testimony. 

If the notice of examination of witnesses served by a party is improper or inadequate with respect 

to any witness, such as, does not give due (i.e., reasonable) notice, or does not identify a witness 

whose deposition is to be taken, an adverse party may cross-examine the witness under protest 

while reserving the right to object to the receipt of the testimony in evidence. However, 

promptly after the deposition is completed, the adverse party, if it wishes to preserve the 

objection, must move to strike the testimony from the record.471

469 See 37 CFR §§ 2.121(a) and 2.123(l); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1790 (TTAB 1998); and MTek Inc. v. CVP Systems Inc., 17 USPQ2d 1070 (TTAB 1990) (motion to strike testimony for insufficient notice 

construed as motion to strike testimony taken out of time). 

470 See TBMP § 707.03(b)(1) (Objections to Trial Testimony Depositions On Ground of Untimeliness) and 

authorities cited therein. But see Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555 (TTAB 1991) 

(where applicant first raised an untimeliness objection in its brief on the case, objection held waived, since the 

premature taking of testimony deposition two days prior to opening of testimony period could have been corrected 

upon seasonable objection). 

471 See 37 CFR § 2.123(e)(3); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1704 (TTAB 1990) (one day notice 

not sufficient time for applicant to prepare for deposition but opposer allowed time to recall witness for purpose of

cross-examination and redirect); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB 1986)

(substitute witness not identified but adverse party failed, after deposition, to move to strike); Home Juice Co. v. 

Runglin Companies Inc., 231 USPQ 897, 898 n.4 (TTAB 1986) (motion to strike filed four months after testimony

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A motion to strike a testimony deposition for improper or inadequate notice must request the 

exclusion of the entire deposition, not just a part thereof. The motion will be decided on the 

basis of all the relevant circumstances.472 

533.03 When Motion to Strike Should Not Be Filed 

Objections to testimony depositions on grounds other than the ground of untimeliness, or the 

ground of improper or inadequate notice, generally should not be raised by motion to strike. 

Rather, the objections should simply be made in writing at the time specified in the applicable 

rules, or orally "on the record" at the taking of the deposition, as appropriate.473 

534 Motion for Judgment for Plaintiff's Failure to Prove Case 

534.01 In General 

37 CFR § 2.132 Involuntary dismissal for failure to take testimony. 

(a) If the time for taking testimony by any party in the position of plaintiff has expired and that 

party has not taken testimony or offered any other evidence, any party in the position of 

defendant may, without waiving the right to offer evidence in the event the motion is denied, 

move for dismissal on the ground of the failure of the plaintiff to prosecute. The party in the 

position of plaintiff shall have fifteen days from the date of service of the motion to show cause 

why judgment should not be rendered against him. In the absence of a showing of good and 

sufficient cause, judgment may be rendered against the party in the position of plaintiff. If the 

motion is denied, testimony periods will be reset for the party in the position of defendant and for 

rebuttal. 

(b) If no evidence other than a copy or copies of Patent and Trademark Office records is offered

by any party in the position of plaintiff, any party in the position of defendant may, without 

taken was untimely); and Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6

(TTAB 1982) (where applicant attended deposition and objected to its consideration on ground that it was taken on

two-days notice, Board found that notice, although short, was not unreasonable where deposition was held a short 

distance from applicant's attorney's office and where no specific prejudice was shown). 

 See also, for example, Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and

two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); 

Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not 

reasonable and opposing counsel's failure to appear was excused); and Penguin Books Ltd. V. Eberhard, 48 USPQ2d 

1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party 

gave notice "as early as possible" and moreover offered to make witness again available at a future date). 

472 See 37 CFR § 2.123(e)(3).

473 See TBMP § 707.03(c) (Objections to Trial Testimony Depositions on Other Grounds). 

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waiving the right to offer evidence in the event the motion is denied, move for dismissal on the 

ground that upon the law and the facts the party in the position of plaintiff has shown no right to 

relief. The party in the position of plaintiff shall have fifteen days from the date of service of the 

motion to file a brief in response to the motion. The Trademark Trial and Appeal Board may 

render judgment against the party in the position of plaintiff, or the Board may decline to render 

judgment until all of the evidence is in the record. If judgment is not rendered, testimony periods 

will be reset for the party in the position of defendant and for rebuttal. 

(c) A motion filed under paragraph (a) or (b) of this section must be filed before the opening of 

the testimony period of the moving party, except that the Trademark Trial and Appeal Board may 

in its discretion grant a motion under paragraph (a) even if the motion was filed after the 

opening of the testimony period of the moving party. 

The Trademark Rules of Practice permit the filing of a motion for judgment directed to the 

sufficiency of a plaintiff's trial evidence in two particular situations, described in 37 CFR §§ 

2.132(a) and 2.132(b). Only in these two situations will the Board entertain such a motion.474 

534.02 Motion for Judgment under Trademark Rule 2.132(a) 

The first situation in which a defendant may appropriately file a motion for judgment directed to 

the sufficiency of a plaintiff's trial evidence, is when the plaintiff's testimony period has passed, 

and the plaintiff has not taken testimony or offered any other evidence. In such a situation, the 

defendant may, without waiving its right to offer evidence in the event the motion is denied, 

move for dismissal for failure of the plaintiff to prosecute.475 A motion for judgment under 37

CFR § 2.132(a) should be filed before the opening of the moving party's testimony period, but 

the Board may, in its discretion, grant the motion even if it was filed thereafter.476

474 See TBMP § 534.04 (Motion Under Fed. R. Civ. P. 41(b) or 50(a) Not Available). 

475 See 37 CFR § 2.132(a). See also, for example, Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18

USPQ2d 1710 (Fed. Cir. 1991); Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 61 USPQ2d 1542, 1544

(TTAB 2001) (motion to extend testimony period denied; motion to dismiss granted); SFW Licensing Corp. and 

Shoppers Food Warehouse Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1374 (TTAB 2001) (same); Societa 

Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 

1383, 1384 (TTAB 2001) (motion to extend testimony period granted, motion to dismiss denied); Atlanta Fulton 

County Zoo Inc. v. De Palma, 45 USPQ2d 1858 (TTAB 1998) (motion to reopen discovery and testimony periods 

denied, motion to dismiss granted); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 n.4 (TTAB 1990) (respondent

advised that if petitioner continued to show no interest and failed to take testimony, applicant may avail itself of § 

2.132(a)); Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1645, 1845-46 (TTAB 1987) (where opposer failed

to offer evidence during its testimony period, applicant could have filed motion to dismiss instead of offering its 

own evidence); Loren Cook Co. v. Acme Engineering and Manufacturing Corp., 216 USPQ 517 (TTAB 1982) 

(where evidence was presented by plaintiff, motion for judgment under rule 2.132 was not entertained); and T.

Jeffrey Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark Rep. 269, 275-276 (1984). 

476 See 37 CFR § 2.132(c), and Hewlett-Packard Co. v. Olympus Corp., supra and Atlanta-Fulton County Zoo,

supra. 

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When a motion for judgment under 37 CFR § 2.132(a) has been filed by a defendant, the 

plaintiff has 15 days from the date of service of the motion (20 days, if service of the motion was 

made by first-class mail, "Express Mail," or overnight courier--see 37 CFR § 2.119(c)) in which 

to respond and show cause why judgment should not be rendered against it. In the absence of a 

showing of good and sufficient cause, judgment may be rendered against the plaintiff.477 

The "good and sufficient cause" standard, in the context of this rule, is equivalent to the 

"excusable neglect" standard that would have to be met by any motion under Fed. R. Civ. P. 6(b) 

to reopen the plaintiff's testimony period.478 

For examples of cases involving the question of whether good and sufficient cause has been 

shown for a plaintiff's failure to offer any evidence, see note below.479 For a complete discussion 

477 See 37 CFR § 2.132(a). See also Hewlett-Packard Co. v. Olympus Corp., supra at 1713 ("While it is true that 

the law favors judgments on the merits wherever possible, it is also true that the Patent and Trademark Office is 

justified in enforcing its procedural deadlines") and PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d

1860, 1862 (TTAB 2002) (Board is justified in enforcing procedural deadlines). Cf. Litton Business Systems, Inc. v.

JG Furniture Co., 188 USPQ 509, 512 (TTAB 1976) (although no testimony or other evidence was introduced, 

answer to complaint contained certain admissions which arguably preserved enough of an issue to proceed to final

hearing). 

478 See PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., supra at 1860-61; HKG Industries Inc. v. Perma-Pipe Inc., 

49 USPQ2d 1156, 1157 (TTAB 1998); and Grobet File Co. of America Inc. v. Associated Distributors Inc., 12 

USPQ2d 1649 (TTAB 1989) (showing of good and sufficient cause is equivalent of excusable neglect because it

requires the reopening of the testimony period to introduce the evidence). 

479 Old Nutfield Brewing Company, Ltd. v. Hudson Valley Brewing Company, Inc., 65 USPQ2d 1701 (TTAB 2002)

(excusable neglect not found where opposer waited four months after close of testimony period to file motion to

reopen and where reason for delay was based on, inter alia, opposer's asserted failure to receive answer to 

opposition); HKG Industries Inc. v. Perma-Pipe Inc., supra (plaintiff provided no factual details as to the date of 

counsel’s death in relation to plaintiff’s testimony period or as to why other lawyers in deceased counsel’s firm

could not have assumed responsibility for the case); PolyJohn Enterprises Corp. v. 1-800-Toilets Inc., supra 

(excusable neglect not found where motion to reopen was filed nearly one month after close of testimony period and 

was based on mistaken belief that extension of time to respond to discovery extended testimony period and on fact

that petitioner was gathering information to respond to discovery); Jain v. Ramparts, 49 USPQ2d, 1429, 1431 

(TTAB 1998) (pendency of plaintiff's motion to compel and to extend trial dates after ruling on such motion

sufficient cause for failure to try case); and Atlanta-Fulton County Zoo Inc. v. De Palma, 45 USPQ2d 1858 (TTAB 

1998) (mere existence of settlement negotiations insufficient). 

 See also the following cases [NOTE: These cases were decided prior to Pioneer Investment Services Company 

v. Brunswick Associates Ltd. Partnership, 507 U.S. 380 (1993) which changed the excusable neglect standard. For a

discussion of the effect of this change on the Board's analysis, see TBMP § 509.01(b) regarding motions to reopen.]

Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710 (Fed. Cir. 1991) (mere request from

adversary for extension of time is not sufficient and plaintiff cannot rely on inaction of defendant to establish that its 

own neglect was excusable); Grobet File Co. of America Inc. v. Associated Distributors Inc., 12 USPQ2d 1649 

(TTAB 1989) (no excusable neglect where plaintiff mistakenly assumed extension of time to respond to discovery 

would result in extension of discovery period); and Fort Howard Paper Co. v. Kimberly-Clark Corp., 216 USPQ

617 (TTAB 1982) (opposer’s good faith interpretation of parties’ long-standing agreement to cooperate in extending

or resetting dates constituted excusable neglect). Cf. Midwest Plastic Fabricators Inc. v. Underwriters Laboratories 

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of excusable neglect and the standard to be applied, see TBMP § 509.01(b) regarding motions to 

reopen, and cases cited therein. 

If a timely motion under 37 CFR § 2.132(a) is denied, testimony periods will be reset for the 

defendant and for rebuttal.480 

The purpose of the motion under 37 CFR § 2.132(a) is to save the defendant the expense and 

delay of continuing with the trial in those cases where plaintiff has failed to offer any evidence 

during its testimony period.481 However, the defendant is under no obligation to file such a 

motion; the motion is optional, not mandatory.482 If no motion under 37 CFR § 2.132(a) is filed, 

trial dates will continue to run, and the case will be determined at final hearing; in those cases 

where plaintiff did, in fact, fail to offer any evidence during its testimony period, plaintiff cannot 

prevail and, thus, defendant need not offer evidence either.483

Inc., 5 USPQ2d 1067 (TTAB 1987) (plaintiff entitled to know disposition of defendant's pending motion to amend

its answer before proceeding to trial); and Proctor & Gamble Co. v. Johnson & Johnson Inc., 485 F. Supp. 1185, 

205 USPQ 697 (S.D.N.Y. 1979), aff'd without opinion, 636 F.2d 1203 (2d Cir. 1980). 

 Additional cases: Allegro High Fidelity, Inc. v. Zenith Radio Corp., 197 USPQ 550 (TTAB 1977) (civil action

filed by plaintiff after close of its testimony period); Tel-E-Gift Corp. v. Teleflora Inc., 193 USPQ 254 (TTAB 1976) 

(communication problem between plaintiff and its counsel); Litton Business Systems, Inc. v. J. G. Furniture Co., 190 

USPQ 428 (TTAB 1976), recon. denied, 190 USPQ 431 (TTAB 1976) (inadequate docket system and heavy work

load of plaintiff's counsel; request filed by plaintiff, after close of its testimony period, that Board take judicial

notice of certain matters); Litton Business Systems, Inc. v. JG Furniture Co., 188 USPQ 509 (TTAB 1976) (answer 

to complaint contained certain admissions); A.R.A. Manufacturing Co. v. Equipment Co., 183 USPQ 558 (TTAB 

1974) (unfamiliarity with current rule governing introduction of plaintiff's registration); Pierce Foods Corp. v.

Mountain Mamma, Inc., 183 USPQ 380 (TTAB 1974) (applicant assertedly guilty of unclean hands); Other

Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125 (TTAB 1974), petition denied, 181 USPQ

779 (Comm'r 1974) (during its testimony period, plaintiff had moved to suspend pending outcome of recently filed 

civil action); W. R. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118 (TTAB 1973) (unfamiliarity with current 

rule governing introduction of plaintiff's registration); and Perfect Film & Chemical Corp. v. Society Ordinastral, 

172 USPQ 696 (TTAB 1972) (allegations in pleading, and exhibits attached thereto, not evidence in plaintiff's 

behalf).

480 See 37 CFR § 2.132(a). 

481 See Litton Business Systems, Inc. v. J. G. Furniture Co. Inc., 190 USPQ 428, recon. denied, 190 USPQ 431 

(TTAB 1976). 

482 See Pfaltzgraf v. William Davies Co. Inc., 175 USPQ 620 (TTAB 1972), and Gary D. Krugman, TIPS FROM

THE TTAB: Motions for Judgment After Commencement of Testimony Periods, 73 Trademark Rep. 76 (1983). 

483 See, for example, Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1645, 1645-46 (TTAB 1987) 

(opposition dismissed where applicant filed evidence instead of a motion to dismiss and opposer filed improper 

rebuttal) and Pfaltzgraf v. William Davies Co., supra. 

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The fact that a defendant may have previously sought judgment under 37 CFR § 2.132(b) does 

not preclude it from thereafter seeking judgment under 37 CFR § 2.132(a).484 

534.03 Motion for Judgment Under Trademark Rule 2.132(b) 

The second situation in which a defendant may appropriately file a motion for judgment directed 

to the sufficiency of a plaintiff's trial evidence is when the plaintiff's testimony period has 

passed, and the plaintiff has offered no evidence other than a copy or copies of PTO records. In 

such a situation, the defendant may, without waiving its right to offer evidence in the event the 

motion is denied, move for dismissal on the ground that upon the law and the facts the plaintiff 

has shown no right to relief.485 A motion for judgment under 37 CFR § 2.132(b) must be filed 

before the opening of the moving party's testimony period. 486 

When a motion for judgment under 37 CFR § 2.132(b) has been filed by a defendant, the 

plaintiff has 15 days from the date of service of the motion (20 days, if service of the motion was 

made by first-class mail, "Express Mail," or overnight courier--see 37 CFR § 2.119(c)) to file a 

brief in response.487 

In determining a motion under 37 CFR § 2.132(b), the Board may either render judgment against 

the plaintiff, or decline to render judgment until all of the evidence is in the record.488

If a timely motion under 37 CFR § 2.132(b) is denied, testimony periods will be reset for the 

defendant and for rebuttal.489 

The purpose of the motion under 37 CFR § 2.132(b) is to save the defendant the expense and 

delay of continuing with the trial in those cases where plaintiff, during its testimony period, has 

484 See W. R. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118 (TTAB 1973). 

 

485 See 37 CFR § 2.132(b). 

486 See 37 CFR § 2.132(c). 

487 See 37 CFR § 2.132(b). 

488 See 37 CFR § 2.132(b). See also Merker Counter Co., Inc. v. Central Counter Co., 310 F.2d 746, 135 USPQ

433 (CCPA 1962) (declined to render judgment); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 

1880 (TTAB 1990) (judgment entered where marks not identical and the relationship, if any, between the parties'

goods not apparent from the face of pleaded registration); and Newhoff Blumberg Inc. v. Romper Room Enterprises, 

Inc., 193 USPQ 313 (TTAB 1976) (motion granted as conceded but even if denied, petition to cancel would have

been dismissed on the merits). Cf. Litton Business Systems, Inc. v. JG Furniture Co., 188 USPQ 509, 512 (TTAB

1976) (where 2.132(a) motion was filed, although no testimony or other evidence had been introduced, answer to

complaint contained certain admissions which arguably preserved enough of an issue to proceed to final hearing). 

489 See 37 CFR § 2.132(b). 

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offered no evidence other than copies of USPTO records, and those records do not make out a 

prima facie case.490 However, the defendant is under no obligation to file such a motion; the 

motion is optional, not mandatory.491 

The fact that a defendant may have previously sought judgment under 37 CFR § 2.132(a) does 

not preclude it from thereafter seeking judgment under 37 CFR § 2.132(b).492 

534.04 Motion Under Fed. R. Civ. P. 41(b) or 50(a) Not Available 

Trial testimony, in Board inter partes proceedings, is taken out of the presence of the Board, and 

it is the policy of the Board not to read trial testimony, or examine other trial evidence, prior to 

its final deliberations in the proceeding.493 

Accordingly, the only means available for testing the sufficiency of trial evidence in an inter 

partes proceeding before the Board are the motions described in 37 CFR §§ 2.132(a) and 

2.132(b).494 The motion under Fed. R. Civ. P. 41(b) for involuntary dismissal, and the motion 

under Fed. R. Civ. P. 50(a) for a directed verdict, are not available in Board proceedings.495 

535 Motion for Order to Show Cause Under Trademark Rule 2.134(b) 

37 CFR § 2.134(b) After the commencement of a cancellation proceeding, if it comes to the 

attention of the Trademark Trial and Appeal Board that the respondent has permitted his 

involved registration to be cancelled under § 8 of the Act of 1946 or has failed to renew his 

involved registration under § 9 of the Act of 1946, an order may be issued allowing respondent 

until a set time, not less than fifteen days, in which to show cause why such cancellation or 

failure to renew should not be deemed to be the equivalent of a cancellation by request of 

respondent without the consent of the adverse party and should not result in entry of judgment 

490 See, for example, Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1880 (TTAB 1990) (marks

not identical and the relationship, if any, between the parties' goods not apparent from the face of pleaded 

registration); Newhoff Blumberg Inc. v. Romper Room Enterprises, Inc., supra (2.132(b) requires decision on merits

of the case); and Litton Business Systems, Inc. v. J. G. Furniture Co., Inc., 190 USPQ 431, 434 (TTAB 1976) (Board

will not use judicial notice to remedy plaintiff's failure to present adequate evidence). 

491 See Gary D. Krugman, TIPS FROM THE TTAB: Motions for Judgment After Commencement of Testimony 

Periods, 73 Trademark Rep. 76 (1983). Cf. Pfaltzgraf v. William Davies Co., 175 USPQ 620 (TTAB 1972). 

 

492 See Newhoff Blumberg Inc. v. Romper Room Enterprises, Inc., supra.

493 See TBMP § 502.01 (Available Motions) and authorities cited therein.

494 See TBMP §§ 534.02 (Motion for Judgment Under Rule 2.132(a)) and 534.03 (Motion for Judgment under Rule

2.132(b)). 

495 See TBMP § 502.01 (Available Motions) and authorities cited therein.

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against respondent as provided by paragraph (a) of this section. In the absence of a showing of 

good and sufficient cause, judgment may be entered against respondent as provided by 

paragraph (a) of this section. 

It is generally the responsibility of a petitioner for cancellation to keep track of the status of the 

respondent's subject registration, and to file a motion for an order to show cause under 37 CFR § 

2.134(b) if such registration is cancelled under Section 8 or 9 of the Act, 15 U.S.C. § 1058 or 

1059, after the commencement of the proceeding. However, if the cancellation of the 

registration under Section 8 or 9 of the Act comes to the attention of the Board in another 

manner, the Board may issue an order to show cause upon its own initiative. 

The purpose of 37 CFR § 2.134(b) is to prevent a cancellation proceeding respondent from being 

able to moot the proceeding and avoid judgment by deliberately failing to file a required affidavit 

of use under Section 8 or renewal application under Section 9.496

In those cases where the Board finds that respondent has not acted deliberately to avoid 

judgment and thereby has shown good and sufficient cause why judgment should not be entered 

against it under 37 CFR § 2.134(b), petitioner will be given time in which to elect whether it 

wishes to go forward with the cancellation proceeding, or to have the cancellation proceeding 

dismissed without prejudice as moot. In those cases where the Board enters judgment against the 

respondent only and specifically on the ground of abandonment, petitioner will be given time in 

which to elect whether it wishes to go forward to obtain a determination of the remaining issues, 

or to have the cancellation proceeding dismissed without prejudice as to those issues. 497 

For further information concerning orders to show cause under 37 CFR § 2.134(b), and related 

orders to show cause in the case of 66(a) applications or registrations, see TBMP §§ 602.01 and 

602.02(b). 

536 Motion for Order to Show Cause Under Trademark Rule 2.128(a)(3) 

37 CFR § 2.128(a)(3) When a party in the position of plaintiff fails to file a main brief, an order 

may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show 

cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to 

file a response to the order, or files a response indicating that he has lost interest in the case, 

judgment may be entered against plaintiff. 

496 See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154, 1156 (TTAB 1989) (failure to file 

Section 8 occurred prior to commencement of proceeding and therefore not to avoid judgment). 

497 See TBMP § 602.02(b) (Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70) and cases cited 

therein. 

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The principal purpose of 37 CFR § 2.128(a)(3) is to save the Board the burden of determining a 

case on the merits where the parties have settled, but have neglected to notify the Board thereof,

or where the plaintiff has lost interest in the case. It is not the policy of the Board to enter 

judgment against a plaintiff for failure to file a main brief on the case if the plaintiff still wishes 

to obtain an adjudication of the case on the merits.498 If a show cause order is issued under 37 

CFR § 2.128(a)(3), and the plaintiff files a response indicating that it has not lost interest in the 

case, the show cause order will be considered discharged, and judgment will not be entered 

against plaintiff for failure to file a main brief. If the plaintiff files no response to the order, or 

files a response indicating that it has lost interest in the case, judgment may be entered against 

the plaintiff.499 

 

When a plaintiff fails to file a main brief on the case, it is the normal practice of the Board to 

issue, sua sponte, an order to show cause why the failure to file a brief should not be treated as a 

concession of the case. If such an order is not issued by the Board sua sponte, or if an adverse 

party fears that the Board may inadvertently overlook a plaintiff's failure to file a main brief, the 

adverse party may file a motion for an order to show cause. 

When it finds that a 37 CFR § 2.128(a)(3) order to show cause has been discharged, the Board 

may reset the times for filing remaining briefs on the case. If the plaintiff includes with its 

response to the show cause order a motion under Fed. R. Civ. P. 6(b) to reopen its time to file a 

main brief (see TBMP § 509), and the motion is granted; all times for filing briefs on the case 

will be reset. 

If a 37 CFR § 2.128(a)(3) order to show cause has been discharged, but the record shows that 

plaintiff failed, during its testimony period, to take any testimony or offer any other evidence in 

its behalf, the Board, in lieu of resetting the times for filing remaining briefs on the case, may 

enter judgment against plaintiff for failure to prove its case.500 

537 Motion for Leave to Exceed Page Limit for Brief on Case 

37 CFR § 2.128(b) ... Each brief shall contain an alphabetical index of cited cases. Without 

prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed 

fifty-five pages in length in its entirety, including the table of contents, index of cases, description 

498 See Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR 23122, 23132, and 

in the Official Gazette of June 21, 1983 at 1031 TMOG 13, 22; and T. Jeffrey Quinn, TIPS FROM THE TTAB: The 

Rules Are Changing, 74 Trademark Rep. 269, 275 (1984). 

 

499 See, for example, CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2D 1300, 1302 (TTAB 

1999) (no response filed). 

500 See Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369, 1372 (TTAB 2000) 

(show cause order discharged but plaintiff failed to show excusable neglect to reopen case). 

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of the record, statement of the issues, recitation of the facts, argument, and summary; and a 

reply brief shall not exceed twenty-five pages in its entirety. 

Motions for leave to file a brief on the case in excess of the page limit are disfavored by the 

Board and rarely granted. Because the Board is an administrative tribunal of limited jurisdiction, 

empowered to determine only the right to register, very few of the cases before it are of such a 

nature as to require a brief on the case which exceeds the 37 CFR § 2.128(b) page limit. Further, 

one of the primary purposes of the rule is to assist the Board in managing its workload, and to 

encourage litigants to focus their arguments and eliminate needless verbiage.501 Thus, a party 

seeking leave to file a brief on the case with more than the allowed number of pages must obtain 

"prior leave" from the Board to do so.502 The motion must be submitted on or before the date 

that the brief is due.503 This is so even in those cases where the motion is filed with the consent 

of the adverse party or parties. Trademark Rule 2.128(b) is for the benefit of the Board, and it is 

only with the Board's permission, timely sought, that a brief exceeding the page limit be 

entertained. 

The preferred practice, when a timely motion for leave to exceed the page limit is filed, is that 

the proposed overlength brief not be filed with the motion. If the moving party refrains from

filing its brief with the motion, and the motion is granted, the Board in its decision on the motion 

will allow time for the filing of the brief and specify the number of additional pages granted. 

Alternatively, if the motion is denied, the Board, in its decision, will allow time for the filing of a 

brief that does not exceed the page limit specified in 37 CFR § 2.128(b). On the other hand, if 

the proposed overlength brief is filed with the motion, and the motion is granted, the Board will 

accept the brief. If the motion is denied, the overlength brief will be given no consideration, and 

the Board will allow time for the filing of a brief which conforms to the page limit set out in 37 

CFR § 2.128(b).504 

A timely motion to exceed the specified page limit need not be accompanied by a motion to 

extend the time for filing the subject brief. As noted in the preceding paragraph, when the Board 

rules upon the motion to exceed the page limit, it will reset the due date for the brief which is the 

subject of the motion, along with the due dates for any remaining briefs on the case, whether or 

not the motion is granted. 

501 Cf. Fleming v. County of Kane, 855 F.2d 496 (7th Cir. 1988). 

 

502 See 37 CFR § 2.128(b) and, for example, Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1604 n.4 

(TTAB 1999). 

503 See United Foods Inc. v. United Air Lines Inc., 33 USPQ2d 1542 (TTAB 1994). 

504 See United Foods Inc. v. United Air Lines Inc., supra (filing overlength brief with motion is potentially 

disadvantageous as movant may end up having to redo brief if motion is denied). 

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If a party files a brief that exceeds the page limit, but does not file a timely motion for leave to 

file such a brief, the brief will be stricken, without leave to file a substitute brief that meets the 

limit.505

A motion for leave to file a brief exceeding the page limit is evaluated on the basis of the 

reasonableness of the request in light of such factors as the number of additional pages sought, 

the novelty and/or complexity of the issues in the case, the extent of the trial record, and any 

other relevant facts or circumstances which may serve to demonstrate why additional pages are 

necessary.506 

For information concerning the parts of a brief that fall within the page limit, see TBMP § 

801.03 and authorities cited therein. 

538 Motion for Leave to File Amicus Brief 

Amicus briefs are neither provided for nor prohibited in the rules governing practice in Board 

proceedings. Thus, the Board may, in its discretion, entertain an amicus brief if the Board finds 

that such a brief is warranted under the circumstances of a particular case.507 

An entity that wishes to file an amicus brief should file a motion with the Board for leave to do 

so. The motion may be accompanied by the proposed brief. An amicus brief should be filed 

within the time allowed the party whose position the brief serves to support, unless all parties 

consent otherwise, or the Board, upon motion for good cause shown, permits a later filing.508 

A motion for leave to file an amicus brief may not be used as a substitute for a timely notice of 

opposition or petition for cancellation. 

Motions for leave to file an amicus brief are rarely filed in Board proceedings, and the granting 

thereof by the Board is even rarer. The Board will determine whether the proposed brief will aid 

the Board in resolving issues of law, whether the moving party is effectively seeking a role in the 

505 See United Foods Inc. v. United Air Lines Inc., supra. 

506 See United Foods Inc. v. United Air Lines Inc., supra, (30-page reply brief unnecessary where main brief was 18

pages and responsive brief was 37 pages); and U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254

(TTAB 1987) (due to size of record, parties allowed to file overlength briefs). Cf. 37 CFR § 2.129(a), and TBMP §

541.02 regarding motions for additional time for oral argument. 

507 See, for example, Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1791 (TTAB 1998) (leave to file amicus brief

denied as unnecessary to resolve issues which have been adequately addressed by parties), and Federal Circuit Rule

29 (governing the filing of amicus briefs in appeals to the Court of Appeals for the Federal Circuit). 

508 Cf. Federal Circuit Rule 29. 

 

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proceeding beyond arguing questions of law, and is effectively arguing factual matters, and 

whether any partisan arguments would prejudice defendant.509 

 539 Motion to Strike Brief on Case 

The Trademark Rules of Practice specifically provide for the filing of briefs on the case, namely, 

the main brief of the party in the position of plaintiff, the answering brief of the party in the 

position of defendant, and the reply brief of the party in the position of plaintiff.510 

Subject to the provisions of Fed. R. Civ. P. 11, a party is entitled to offer in its brief on the case 

any argument it believes will be to its advantage. Accordingly, when a brief on the case has been 

regularly filed, the Board generally will not strike the brief, or any portion thereof, upon motion 

by an adverse party that simply objects to the contents thereof. Rather, any objections which an 

adverse party may have to the contents of such a brief will be considered by the Board in its 

determination of the case, and any portions of the brief that are found by the Board to be 

improper will be disregarded. 

However, if a brief on the case is not timely filed, or violates the length limit or other format 

requirements specified in 37 CFR § 2.128(b),511 it may be stricken, or given no consideration, by 

the Board.512 If a brief is stricken because of a format violation, the Board may, in its discretion, 

allow the offending party time to submit a substitute brief complying with the requirements of 37 

CFR § 2.128(b).513 

Because the rules do not provide for the filing of a reply or rejoinder brief by a party in the 

position of defendant, any such brief may be stricken, or given no consideration, by the Board.514

509 See Harjo v. Pro-Football Inc., supra at 1791 (motion denied where Board, noting "intimate" relationship

between movants and petitioners, found that movants were seeking to introduce new evidence and advance partisan

arguments). 

510 See 37 CFR § 2.128(a). See also TBMP § 801.02 (Time for Filing Brief on the Case). 

511 See TBMP §§ 537 (motions regarding page limitations for final briefs) and 801.03 (regarding form and contents

of briefs). 

512 See Ariola-Eurodisc Gesellschaft v. Eurotone International Ltd., 175 USPQ 250 (TTAB 1972) (brief filed three 

weeks late stricken); and American Optical Corp. v. Atwood Oceanics, Inc., 177 USPQ 585 (Comm'r 1973) (brief 

which was too long and not in proper form was not considered). 

513 But see TBMP § 537 (if a party files a brief which exceeds the page limit without also filing a timely motion for 

leave to file such a brief, the brief will be stricken, without leave to file a substitute brief that meets the limit). 

514 See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.3 (TTAB 1993) (motion to

strike portions of opposer's reply brief on the case given no consideration since motion was essentially attempt by

applicant to file a reply brief); and Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 863 n.3 

(TTAB 1985). See also Hydrotechnic Corp. v. Hydrotech International, Inc., 196 USPQ 387 (TTAB 1977); L.

500 - 395 
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540 Motion for Augmented Panel Hearing 

 

Evidentiary material attached to a brief on the case can be given no consideration unless it was 

properly made of record during the testimony period of the offering party. If evidentiary 

material not of record is attached to a brief on the case, an adverse party may object thereto by 

motion to strike or otherwise.515

Each case before the Board is heard by a panel of at least three members of the Board (i.e., its 

statutory members, including administrative trademark judges).516 However, the Board may use 

an augmented panel to hear a case.517 An augmented panel may include any number of Board 

members exceeding three, that is, from four to the entire body of members. For information 

concerning the constitution of Patent and Trademark Office Board panels, see In re Alappat, 33 

F.3d 1526, 31 USPQ2d 1545, 1547 (Fed. Cir. 1994) (Director has authority to constitute a new 

panel for purposes of reconsideration). 

A decision by the Board to use an augmented panel may be made either upon the Board's own 

initiative, or upon motion filed by a party to the proceeding. A motion requesting that a case be 

heard by an augmented panel should be filed no later than the time for requesting an oral hearing 

on the case (i.e., no later than 10 days after the due date for the filing of the last reply brief in the 

proceeding--see 37 CFR § 2.129(a)). 

Leichner (London) Ltd. v. Robbins, 189 USPQ 254 (TTAB 1975); and Globe-Union Inc. v. Raven Laboratories Inc., 

180 USPQ 469 (TTAB 1973). 

515 See, for example, Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1009 n.18 (TTAB 

1984) (copy of decision by Canadian Opposition Board attached to brief given no consideration); and Plus Products

v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 112 n.3 (TTAB 1978) (applicant’s exhibits attached to its 

brief cannot be considered). See also Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387 (TTAB 1976); L. 

Leichner (London) Ltd. v. Robbins, supra; Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 

534 F.2d 915, 189 USPQ 693 (CCPA 1976); and Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 

178 USPQ 429 (TTAB 1973). 

516 See, for example, 37 CFR §§ 2.129(a) and 2.142(e)(1). See also 15 U.S.C. § 1067. 

 

517 See, for example, In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992) (augmented panel used to overrule 

previous decision barring examining attorneys from requesting reconsideration), recon. denied, 24 USPQ2d 1061

(TTAB 1992); In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (in view of issues presented, oral hearing 

held before augmented panel of eight Board members); In re McDonald's Corp., 230 USPQ 210 (TTAB 1986) 

(augmented five-member panel); and In re WSM, Inc., 225 USPQ 883 (TTAB 1985) (augmented panel used to

delineate rights in FCC “assigned” call letters for radio broadcasting services). 

 

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An augmented panel is used by the Board only in extraordinary cases, involving precedentsetting issues of exceptional importance, or when consideration by an augmented panel is 

necessary to secure or maintain uniformity of Board decisions.518 

541 Motion to Change Oral Hearing Date; For Additional Time 

541.01 Motion to Change Oral Hearing Date 

If a party to a proceeding before the Board desires to present oral argument (i.e., oral hearing), at 

final hearing, the party must file a request therefor, by separate paper, not later than 10 days after 

the due date for the filing of the last reply brief in the proceeding.519 When a request for an oral 

hearing is filed, the Board sets the date and time for the hearing, and sends each party written 

notice thereof.520 Ordinarily, oral hearings are scheduled on Tuesdays, Wednesdays and 

Thursdays. It is the normal practice of the Board, in setting an oral hearing, to phone the parties, 

or their attorneys or other authorized representatives, to determine a convenient date and time for 

the hearing, following which the written notice formally scheduling the hearing is mailed. 

The date or time of an oral hearing may be reset, so far as is convenient and proper, to meet the 

wishes of the parties and their attorneys or other authorized representatives.521 When parties 

agree to the resetting of an oral hearing, they should determine a new date and time convenient to 

every party and then contact the Chief Administrative Trademark Judge’s secretary by phone, 

well prior to the scheduled hearing date, to request that the hearing be reset for the new date and 

time. The parties should also file a written stipulation or consented motion confirming their 

agreement. If parties agree to the resetting of an oral hearing due to settlement negotiations, they 

should request that proceedings, including the time for oral hearing, be suspended pending 

completion of the negotiations. 

When one or more of the parties does not consent to the resetting of an oral hearing, the party 

that wishes to have the hearing reset must file a motion therefor, showing good cause.522 The 

518 See, for example, In re Johanna Farms Inc., supra; In re McDonald's Corp., supra; and In re WSM, Inc., supra. 

See also Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984) 

(augmented panel of eight-members because of the importance of the issues). Cf. Federal Circuit Rule 35 and In re 

Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547 (Fed. Cir. 1994) (Section 7 grants Director authority to designate the 

members of a panel and expanded panel). Cf. also Fioravanti v. Fioravanti Corrado S.R.L, 230 USPQ 36 (TTAB

1986), recon. denied, 1 USPQ2d 1304, 1305 (TTAB 1986) (case not appropriate for designation of more than threemember panel). 

519 See TBMP § 802 regarding oral hearings. 

520 See 37 CFR § 2.129(a). 

521 See 37 CFR § 2.129(b). 

522 See Fed. R. Civ. P. 6(b) and TBMP § 509 (Motion to Extend Time; Motion to Reopen Time). 

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motion should be filed well in advance of the scheduled hearing date. Further, to ensure that the 

motion is determined (by telephone conference call, if necessary) prior to the scheduled hearing 

date, the moving party should either hand deliver its motion, at the offices of the Board, to the 

Board interlocutory attorney to whom the case is assigned, or, if the motion has been filed with 

the Board by some other method, telephone the interlocutory attorney handling the case and 

notify the attorney of the filing of the motion.523 An unconsented motion to reset an oral hearing 

should not be filed merely because another date would be more convenient. The process of 

scheduling an oral hearing is a time-consuming task for the Board. Because of the inherent 

difficulties in arranging a date for an oral hearing, an unconsented motion to reset the hearing 

should be filed only for the most compelling reasons. Examples thereof include the onset of 

serious illness, nonelective surgery, death of a family member and similar unanticipated or 

unavoidable events.524 

Repeated stipulations or consented requests to reset an oral hearing should not be filed. 

For further information concerning oral hearings, see TBMP § 802. 

541.02 Motion for Additional Time for Oral Argument 

Ordinarily, each party in a Board inter partes proceeding is allowed 30 minutes for its oral 

arguments. 525 If, because of the novelty or complexity of the issues, the extent of the record, the 

presence of a counterclaim involving different issues than those involved in the original 

proceeding, etc., a party feels that it needs more than 30 minutes for oral argument, it may file a 

request with the Board for additional time.526 If the request is granted, each party will be 

allowed the same amount of time for oral argument. 

When a party decides to request additional time for oral argument, the party should immediately 

call the Board and notify the Board that it intends to file a request for additional time. 

Alternatively (and ideally), the request for additional time may be included in the request for oral 

hearing. This early notification is necessary to ensure that there will be time in the Board's 

523 See TBMP § 502.06(a) (Telephone Conferences). 

524 See, e.g., In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1214 n.2 (TTAB 2000) (applicant's 

request to reschedule oral hearing three hours before hearing due to "a sudden conflict of time" denied).

525 See 37 CFR § 2.129(a), and TBMP § 802.05 (Length of Oral Argument). 

526 See 37 CFR § 2.129(a), and U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254 (TTAB 1987)

(additional time for arguments allowed in view of voluminous record). Cf. 37 CFR § 2.128(b) and TBMP § 537 

(Motion for Leave to Exceed Page Limit for Brief on Case). 

 

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hearing schedule for an extended oral hearing, and also to ensure that the request will be 

considered and determined prior to the date of the oral hearing.527 

 542 Motion for Leave to Audiotape Oral Hearing 

Upon prior arrangement, the Board will usually permit a party to make an audiotape recording of 

an oral hearing. However, such a recording is strictly for the party's private use, and is not to be 

used for purposes of publicity, or as "evidence" in any proceeding (the oral hearing is not part of 

the evidentiary record in a proceeding before the Board). 

Leave to audiotape an oral hearing is secured by filing a motion therefor showing good cause 

(such as, that the audiotape is desired by the requesting attorney, or the requesting attorney's

firm, for personal use in evaluating the performance of the attorney as an advocate). The motion 

should be filed well in advance of the date set for the oral hearing, so that if an adverse party 

raises any objections, the Board will have time to rule upon the motion prior to the oral hearing. 

Where permission to record an oral hearing is granted, the moving party is responsible for 

furnishing, operating, and removing its own audiotaping equipment in an unobtrusive manner. A 

court reporter is distracting and disruptive in the context of an oral hearing before the Board, and 

therefore may not be used. For the same reason, an oral hearing before the Board may not be 

videotaped. Any motion for leave to videotape an oral hearing will be denied. 

 543 Motion for Reconsideration of Final Decision 

37 CFR § 2.129(c) Any request for rehearing or reconsideration or modification of a decision 

issued after final hearing must be filed within one month from the date of the decision. A brief in 

response must be filed within fifteen days from the date of service of the request. The times 

specified may be extended by order of the Trademark Trial and Appeal Board on motion for 

good cause. 

The filing of a request for rehearing, reconsideration, or modification of a decision issued after 

final hearing is governed by 37 CFR § 2.129(c).528 

There is no requirement that an adverse party file a brief in response to a request for rehearing, 

reconsideration, or modification of a decision issued after final hearing. However, it is the better 

practice to do so.529 If a responsive brief is filed, it must be filed within 15 days from the date of 

527 Cf. TBMP § 541.01 (Motion to Change Oral Hearing Date). 

528 Cf. 37 CFR § 2.127(b), and TBMP § 518 (Motion for Reconsideration of Decision on Motion). 

529 See Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) (serious questions

raised by applicant’s request for reconsideration ought to have generated response by opposer). 

500 - 399 
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STIPULATIONS AND MOTIONS 

 

service of the request (20 days if service of the request was made by first-class mail, "Express 

Mail," or overnight courier--see 37 CFR § 2.119(c)). 

Although 37 CFR § 2.129(c) makes no provision for the filing of a reply brief on a request for 

rehearing, reconsideration, or modification of a decision issued after final hearing, the Board 

may, in its discretion, consider such a brief.530 

Generally, the premise underlying a request for rehearing, reconsideration, or modification under 

37 CFR § 2.129(c) is that, based on the evidence of record and the prevailing authorities, the 

Board erred in reaching the decision it issued. The request may not be used to introduce 

additional evidence,531 nor should it be devoted simply to a reargument of the points presented in 

the requesting party's brief on the case. Rather, the request normally should be limited to a 

demonstration that, based on the evidence properly of record and the applicable law, the Board's 

ruling is in error and requires appropriate change.532 

If a request for rehearing, reconsideration, or modification of a decision after final hearing is 

timely filed, the time for filing an appeal, or for commencing a civil action for review of the 

Board's decision, will expire two months after action on the request.533 

 

 544 Motion for Relief From Final Judgment 

Fed. R. Civ. P. 60(b) Mistakes; Inadvertence; Excusable Neglect; Newly Discovered Evidence; 

Fraud, etc. On motion and upon such terms as are just, the court may relieve a party or a 

party's legal representative from a final judgment, order, or proceeding for the following

reasons: (1) mistake, inadvertence, surprise, or excusable neglect; (2) newly discovered 

evidence which by due diligence could not have been discovered in time to move for a new trial 

under Rule 59(b); (3) fraud (whether heretofore denominated intrinsic or extrinsic),

misrepresentation, or other misconduct of an adverse party; (4) the judgment is void; (5) ... a 

prior judgment upon which [the judgment] is based has been reversed or otherwise vacated ...; 

530 See Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 185 USPQ 61, recon. denied, 185 USPQ 176, 

177 n.2 (TTAB 1975) (reply brief considered only to the extent it addressed arguments in responsive brief), aff’d,

530 F.2d 1396, 189 USPQ 138 (CCPA 1976). See also 37 CFR § 2.127(a) and TBMP § 502.02(b) (Briefs on

Motions). 

531 See Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126 (TTAB 1978) (survey did not qualify as newly discovered

evidence). 

532 For examples of cases in which a request for reconsideration of a decision after final hearing has been granted, 

see Steiger Tractor Inc. v. Steiner Corp., 221 USPQ 165 (TTAB 1984), different results reached on reh’g, 3 

USPQ2d 1708 (TTAB 1984). Cf. In re Kroger Co., 177 USPQ 715, 717 (TTAB 1973).

533 See 37 CFR § 2.145(d)(1), and TBMP §§ 902.02 (Time for Filing Notice of Appeal) and 903.04 (Time for Filing

Civil Action). 

500 - 400 
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STIPULATIONS AND MOTIONS 

 

or (6) any other reason justifying relief from the operation of the judgment. The motion shall be 

made within a reasonable time, and for reasons (1), (2), and (3) not more than one year after the 

judgment, order, or proceeding was entered or taken. A motion under this subdivision (b) does 

not affect the finality of a judgment or suspend its operation. This rule does not limit the power 

of a court to entertain an independent action to relieve a party from a judgment, order, or 

proceeding ... or to set aside a judgment for fraud upon the court. ...

Motions to set aside or vacate a final judgment rendered by the Board are governed by Fed. R. 

Civ. P. 60(b).534 Thus, upon such terms as are just, the Board, on motion, may relieve a party 

from a final judgment for one of the reasons specified in Fed. R. Civ. P. 60(b). 

Fed. R. Civ. P. 60(b), as made applicable by 37 CFR § 2.116(a), applies to all final judgments 

issued by the Board, including default and consent judgments, summary judgments, and 

judgments entered after trial on the merits. As a practical matter, motions to vacate or set aside a 

final Board judgment are usually based upon the reasons set forth in subsections (1), (2) and/or 

(6) of Fed. R. Civ. P. 60(b). 

For examples of cases involving a motion for a relief from a final judgment of the Board, see 

cases cited in the note below.

535

534 See 37 CFR § 2.116(a). 

535 See CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300 (TTAB 1999) (reason (1)

denied; counsel and client share duty [suggesting General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d

1933 (TTAB 1992), where relief was granted due to negligent conduct of counsel who concealed critical facts from

petitioner, is no longer good law]); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293 (TTAB 1997) (reason 

(1) granted; petitioner contributed to respondent's delay and confusion); Jack Lenor Larsen Inc. v. Chas. O. Larson 

Co., 44 USPQ2d 1950 (TTAB 1997) (reasons (4) and (6), based on alleged failure to receive correspondence from

Board, denied, given presumption of receipt of correspondence, passage of 12 years, and resulting hardship to third 

parties); Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 (TTAB 1992) 

(reason (6) granted; petition withdrawn based on apparent acceptance by examining attorney of settlement 

agreement obviating basis for refusal of petitioner’s applications); Djeredjian v. Kashi Co., 21 USPQ2d 1613

(TTAB 1991) (reason (1) granted; respondent’s failure to answer resulted from mistake due to involvement in

numerous Board proceedings); and Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991)

(reason (1) granted; respondent's employees had limited knowledge of English and were unaware cancellation and 

opposition were separate proceedings).

 See also Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735 (TTAB 1976) (reasons (1) and (6) denied; 

opposer's failure to maintain communication between its staff counsel due to inattention and carelessness is not 

excusable neglect and does not constitute "inadvertence") and Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB 

1974), aff'd, 510 F.2d 963, 184 USPQ 744 (CCPA 1975) (reason (1) denied; petitioner's arguments that its neglect 

resulted from docketing errors and the absence of petitioner's counsel from its office do not constitute excusable 

neglect). In addition, see Syosset Laboratories, Inc. v. TI Pharmaceuticals, 216 USPQ 330 (TTAB 1982) (reasons 

(1), (3), and (6)); Lee Byron Corp. v. H.D. Lee Co. 203 USPQ 1097 (TTAB 1979) (reason (2)); Amoco Oil Co. v. 

Amerco, Inc., 201 USPQ 126 (TTAB 1978) (reason (2)); Bass Anglers Sportsman Society of America, Inc. v. Bass

Pro Lures, Inc., 200 USPQ 819 (TTAB 1978) (reason (1)); and Columbia Broadcasting System, Inc. v. De Costa, 

165 USPQ 95 (TTAB 1970) (reason (6)). 

 Cf. In re Sotheby's Inc., 18 USPQ2d 1969 (Comm'r 1989). 

500 - 401 
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STIPULATIONS AND MOTIONS 

 

A motion for relief from judgment must be made within a reasonable time; and if the motion is 

based on reasons (1), (2), and/or (3), it must be filed not more than one year after the judgment 

was entered.536 The filing of the motion will not affect the finality of the judgment or suspend its 

operation.537 

Relief from a final judgment is an extraordinary remedy to be granted only in exceptional 

circumstances.538 The determination of whether a motion under Fed. R. Civ. P. 60(b) should be 

granted is a matter that lies within the sound discretion of the Board.539 

Where a motion for relief from judgment is made without the consent of the adverse party or 

parties, it must persuasively show (preferably by affidavits, declarations, documentary evidence, 

etc., as may be appropriate) that the relief requested is warranted for one or more of the reasons 

specified in Fed. R. Civ. P. 60(b). 

Because default judgments for failure to timely answer the complaint are not favored by the law, 

a motion under Fed. R. Civ. P. 55(c) and 60(b) seeking relief from such a judgment is generally 

treated with more liberality by the Board than are motions under Fed. R. Civ. P. 60(b) for relief 

from other types of judgments.540 Among the factors to be considered in determining a motion 

to vacate a default judgment for failure to answer the complaint are (1) whether the plaintiff will 

be prejudiced, (2) whether the default was willful, and (3) whether the defendant has a

meritorious defense to the action.541

If, in a cancellation proceeding, a petition to the Director is filed concurrently with a Fed. R. Civ. 

P. 60(b) motion to the Board for relief from judgment, and the petition and motion seek the same

relief and require review of the same set of facts, the Board will rule first upon the motion for 

536 See Fed. R. Civ. P. 60(b); Djeredjian v. Kashi Co., supra (filed 15 days after entry of default judgment); and 

Bass Anglers Sportsman Society of America, Inc. v. Bass Pro Lures, Inc., supra (motion denied where judgment was

entered under § 2.135 and applicant was mistaken as to consent to abandonment by opposer but delayed over a year 

to file motion). 

537 See Fed. R. Civ. P. 60(b). 

538 See Djeredjian v. Kashi Co., supra at 1615. 

539 See Djeredjian v. Kashi Co., supra at 1615. 

540 See TBMP § 312.03 (Setting Aside Default Judgment) and authorities cited therein.

 

541 See TBMP § 312.03; Djeredjian v. Kashi Co., supra at 1615 (granted pending showing of meritorious where 

other two elements were established); and Regatta Sport Ltd. v. Telux-Pioneer Inc., supra (respondent's employees 

had limited knowledge of English and were unaware opposition and cancellation were separate proceedings). 

Compare Jack Lenor Larsen Inc. v. Chas. O. Larson Co., supra (motion denied). 

500 - 402 
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STIPULATIONS AND MOTIONS 

 

relief from judgment.542 If the Board grants the motion, the Director, as a ministerial act, will 

reinstate the subject registration.543 

Where the parties are agreed that the circumstances warrant the vacating or setting aside of a 

final judgment, a stipulation or consented motion for relief from the judgment should be filed. 

The Board ordinarily will grant a consented request for relief from judgment. 

542 See National Telefilm Associates, Inc. v. Craig Denney Productions, 228 USPQ 61 (Comm'r 1985).

543 See National Telefilm Associates, Inc. v. Craig Denney Productions, supra. 

500 - 403 
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WITHDRAWAL; SETTLEMENT 

37 CFR § 2.106(c) The opposition may be withdrawn without prejudice before the answer is 

filed. After the answer is filed, the opposition may not be withdrawn without prejudice except 

with the written consent of the applicant or the applicant's attorney or other authorized 

representative. 

 

601 Withdrawal by Opposition or Cancellation Plaintiff 

601.01 Withdrawal by Opposer 

An opposer may withdraw its opposition without prejudice at any time before the applicant's 

answer is filed. After the answer is filed, however, the opposition may not be withdrawn without 

prejudice except with the written consent of the applicant or the applicant's attorney or other 

authorized representative.

1

 

For information concerning the effect of a judgment entered against plaintiff for withdrawal 

after answer without consent, see note below.2

1

 37 CFR § 2.106(c). See Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., 178 USPQ 254, 256 (TTAB 1973)

(opposition dismissed with prejudice where applicant’s statement that favorable decision in civil action renders 

issues in opposition moot cannot be construed as consent to opposer's withdrawal). 

 Cf. 37 CFR § 2.114(c), and Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765, 766 (TTAB 1973)

(although there was no indication that the dismissal of the counterclaims in a previous opposition was "with

prejudice," because the record showed that the counterclaims were withdrawn after answer and without consent, it 

was clear that dismissal was with prejudice and that therefore plaintiff was estopped from attempting to assert same

counterclaim in subsequent petition to cancel). 

2

 See Johnson & Johnson v. Bio-Medical Sciences, Inc., supra (dismissal of previous counterclaims with prejudice 

operated as estoppel barring same counterclaims in subsequent proceeding). 

 Cf. Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first 

opposition, as result of abandonment of application without consent, operates as claim preclusion in subsequent

opposition so as to bar applicant's subsequent application for an insignificantly modified mark); United States 

Olympic Committee v. Bata Shoe Co., 225 USPQ 340, 342 (TTAB 1984) (abandonment of application without

consent in previous opposition does not operate as collateral estoppel or claim preclusion in subsequent cancellation 

proceeding between same parties since the two cases involve two distinct marks, and does not operate as issue 

preclusion because no issues were actually litigated in prior opposition); Bass Anglers Sportsman Society of 

America, Inc. v. Bass Pro Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (judgment against applicant in prior 

opposition due to abandonment of application without consent operated as collateral estoppel in subsequent

opposition involving same marks and same parties in opposite positions); and In re Communications Technology 

Corp., 182 USPQ 695, 696 (TTAB 1974) (judgment against applicant in prior opposition between applicant and

owner of cited registration is not conclusive of likelihood of confusion and does not operate as a estoppel in

subsequent application for a distinctly different mark). 

600 - 404 
Chapter 600 

WITHDRAWAL; SETTLEMENT 

 

An opposer may withdraw its opposition by filing in the Office a written withdrawal signed by 

the opposer or the opposer's attorney. The withdrawal should include proof of service upon 

every other party to the proceeding.3

 

601.02 Withdrawal by Petitioner

37 CFR § 2.114(c) The petition for cancellation may be withdrawn without prejudice before the 

answer is filed. After the answer is filed, the petition may not be withdrawn without prejudice 

except with the written consent of the registrant or the registrant's attorney or other authorized 

representative. 

A petitioner may withdraw its petition for cancellation without prejudice at any time before the 

registrant's answer is filed. After the answer is filed, however, the petition for cancellation may 

not be withdrawn without prejudice except with the written consent of the registrant or the 

registrant's attorney or other authorized representative.4

 

For information concerning the effect of a judgment entered against plaintiff for withdrawal 

after answer without consent, see note below.5

A petitioner may withdraw its petition for cancellation by filing in the Office a written 

withdrawal signed by the petitioner or the petitioner's attorney. The withdrawal should include 

proof of service upon every other party to the proceeding.6

 

3

 See 37 CFR § 2.119(a), and TBMP § 113 (Service of Papers). 

4

 37 CFR § 2.114(c). See Johnson & Johnson v. Bio-Medical Sciences, Inc., supra. Cf. 37 CFR § 2.106(c), and 

Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., supra.. 

5

 See Johnson & Johnson v. Bio-Medical Sciences, Inc., supra (dismissal of previous counterclaims with prejudice 

operated as estoppel barring same counterclaims in subsequent proceeding). 

 Cf. Miller Brewing Co. v. Coy International Corp., supra (judgment in first opposition, as result of abandonment 

of application without consent, operates as claim preclusion in subsequent opposition so as to bar applicant's 

subsequent application for an insignificantly modified mark); United States Olympic Committee v. Bata Shoe Co., 

supra (abandonment of application without consent in previous opposition does not operate as collateral estoppel or

claim preclusion in subsequent cancellation proceeding between same parties since the two cases involve two

distinct marks, and does not operate as issue preclusion because no issues were actually litigated in prior 

opposition); Bass Anglers Sportsman Society of America, Inc. v. Bass Pro Lures, Inc., supra (judgment against 

applicant in prior opposition due to abandonment of application without consent operated as collateral estoppel in 

subsequent opposition involving same marks and same parties in opposite positions); and In re Communications 

Technology Corp., supra (judgment against applicant in prior opposition between applicant and owner of cited

registration is not conclusive of likelihood of confusion and does not operate as a estoppel in subsequent application 

for a distinctly different mark).

6

 See 37 CFR § 2.119(a), TBMP § 113 (Service of Papers) and Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d

1322, 50 USPQ2d 1532, 1536 (Fed. Cir. 1999) (filing of withdrawal of petition sufficient to consider that no

600 - 405 
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WITHDRAWAL; SETTLEMENT 

 

601.03 Effect of Motion for Judgment 

A plaintiff in an opposition or cancellation proceeding may unilaterally withdraw its complaint 

without prejudice, even in the face of a defendant's adverse motion such as a motion to dismiss, 

motion for summary judgment, motion for judgment on the pleadings, provided that the 

withdrawal is filed prior to defendant’s answer to the complaint. When a plaintiff unilaterally 

withdraws its complaint prior to answer, in the face of a defendant's pending motion for 

judgment, the proceeding will be dismissed without prejudice (unless plaintiff specifies that it is 

withdrawing with prejudice), and the pending motion will be declared moot. 

602 Withdrawal by Opposition or Cancellation Defendant 

602.01 Withdrawal by Applicant 

37 CFR § 2.68 Express abandonment (withdrawal) of application. An application may be 

expressly abandoned by filing in the Patent and Trademark Office a written statement of 

abandonment or withdrawal of the application signed by the applicant, or the attorney or other 

person representing the applicant. Except as provided in §2.135, the fact that an application has 

been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, 

affect any rights that the applicant may have in the mark which is the subject of the abandoned 

application. 

37 CFR § 2.135 Abandonment of application or mark. After the commencement of an

opposition, concurrent use, or interference proceeding, if the applicant files a written 

abandonment of the application or of the mark without the written consent of every adverse party 

to the proceeding, judgment shall be entered against the applicant. The written consent of an 

adverse party may be signed by the adverse party or by the adverse party's attorney or other 

authorized representative. 

37 CFR § 7.30 Effect of cancellation or expiration of international registration. When the 

International Bureau notifies the Office of the cancellation or expiration of an international 

registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding 

pending or registered extension of protection to the United States. The date of cancellation of an 

extension of protection or relevant part shall be the date of cancellation or expiration of the 

corresponding international registration or relevant part. 

proceeding is" pending" and that proceeding was "disposed of" for purposes of filing Section 15 declaration of 

incontestability). 

600 - 406 
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WITHDRAWAL; SETTLEMENT 

 

An applicant may expressly abandon its application by filing in the Office a written statement of 

abandonment or withdrawal of the application, signed by the applicant or the applicant's attorney 

or other authorized representative.7

 

However, after the commencement of an opposition proceeding, if the applicant files a written 

abandonment of its subject application or mark without the written consent of every adverse 

party to the proceeding, judgment will be entered against the applicant.8

 The written consent of 

an adverse party may be signed by the adverse party itself, or by the adverse party's attorney or 

other authorized representative.9

 

For information concerning the effect of a 37 CFR § 2.135 judgment against applicant, see cases 

cited in the note below.10

7

 37 CFR § 2.68. 

8

 37 CFR § 2.135. See Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991), aff'd, 26

USPQ2d 1551 (S.D.Ohio 1992) (where excepted user abandoned application in concurrent use proceeding, 

judgment precluded applicant from obtaining any registration at all, although it may remain in proceeding as 

defaulting user); Goodway Corp. v. International Marketing Group Inc., 15 USPQ2d 1749, 1749 (TTAB 1990);

Grinnell Corp. v. Grinnell Concrete Pavingstones Inc., 14 USPQ2d 2065, 2067 (TTAB 1990) (consent required for

abandonment without prejudice regardless of motivation for abandonment, i.e.. a concession by applicant that it is 

not owner of mark and that judgment would be unfair to real owner, a nonparty to the case); and In re First National 

Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where abandonment of application and notice of opposition 

were filed on same day, consent was not required because there was no application to oppose). 

9

 See 37 CFR § 2.135. 

10 Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first opposition,

as result of abandonment of application without consent, operates as claim preclusion in subsequent opposition so as 

to bar applicant's subsequent application for an insignificantly modified mark); United States Olympic Committee v. 

Bata Shoe Co., 225 USPQ 340, 342 (TTAB 1984) (abandonment of application without consent in previous

opposition does not operate as collateral estoppel or claim preclusion in subsequent cancellation proceeding between

same parties since the two cases involve two distinct marks, and does not operate as issue preclusion because no

issues were actually litigated in the prior opposition); Bass Anglers Sportsman Society of America, Inc. v. Bass Pro

Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (judgment against applicant in prior opposition due to abandonment

of application without consent operated as collateral estoppel in subsequent opposition involving same marks and

same parties in opposite positions); and In re Communications Technology Corp., 182 USPQ 695, 696 (TTAB 

1974) (judgment against applicant in prior opposition between applicant and owner of cited registration is not 

conclusive of likelihood of confusion and does not operate as a estoppel in subsequent application for a distinctly

different mark). 

 Cf. Aromatique Inc. v. Lang, 25 USPQ2d 1359, 1361 (TTAB 1992) (applicant, by abandoning application with

prejudice in prior opposition is estopped in subsequent opposition from attempting to register virtually identical 

mark for identical goods), and Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765 (TTAB 1973)

(dismissal of previous counterclaims with prejudice operated as estoppel barring same counterclaims in subsequent

proceeding). 

600 - 407 
Chapter 600 

WITHDRAWAL; SETTLEMENT 

 

In an opposition to an application having multiple classes, if the applicant files a request to 

amend the application to delete an opposed class, the request for amendment is, in effect, an 

abandonment of the application with respect to that class, and is governed by 37 CFR § 2.135. 

An abandonment of an opposed application should be filed with the Board, and should bear at 

the top of its first page both the application serial number, and the opposition number and title. 

The abandonment should include proof of service upon every other party to the proceeding.11

If an applicant files an unconsented abandonment after the commencement of an opposition, but 

before applicant has been notified of the opposition by the Board, applicant will be allowed an 

opportunity to obtain and submit the written consent of every adverse party, or to withdraw the 

abandonment and defend against the opposition, failing which judgment will be entered against 

applicant.12 

If an opposition and an unconsented abandonment of the opposed application are filed on the 

same day, the abandonment (unless specifically made with prejudice) is without prejudice to 

applicant; the opposition will be returned to the opposer; no proceeding will be instituted; and 

any submitted opposition fee will be refunded.13 . 

Abandonment prior to publication. If after an opposition is filed, it comes to the attention of 

the Board that the opposed application was abandoned prior to its publication for opposition for 

failure of the applicant to respond to an Office action, the Board will advise the parties that the 

application is not subject to opposition unless applicant files a petition to revive under 37 CFR § 

2.66, and the petition is granted. If a prior abandonment for failure to timely respond comes to 

the attention of the Board at a time reasonably contemporaneous with the filing of the opposition, 

and the application is not revived, the opposition will not be instituted, and any submitted 

opposition fee will be refunded. If the prior abandonment comes to the attention of the Board at 

a later stage in the opposition, and the application is not revived, the opposition will be dismissed 

without prejudice.14 

Abandonment for failure to respond to office action after remand. If, during the pendency 

of an opposition, the Board grants a request by the trademark examining attorney for remand of a 

Section 1 or 44 application under 37 CFR § 2.130,15 and the application thereafter becomes 

11 See 37 CFR § 2.119(a), and TBMP § 113 (Service of Papers). 

12 See In re First National Bank of Boston, supra. (where opposition and abandonment were filed on same day) Cf.

TBMP § 218 (Abandonment of Application). 

13 See In re First National Bank of Boston, supra. Cf. TBMP § 218 (Abandonment of Application). 

14 See Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1080 (TTAB 1992). 

15 See TBMP § 515 (Motion to Remand Application to Examining Attorney). 

600 - 408 
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WITHDRAWAL; SETTLEMENT 

 

abandoned by operation of law for failure of the applicant to respond to an Office action issued 

by the examining attorney, or because a final refusal to register is affirmed on appeal, judgment 

under 37 CFR § 2.135 will not be entered against applicant in the opposition. Trademark Rule 

2.135 comes into play only when there is a written abandonment by the applicant. However, 

opposer will be given time to decide whether it wishes to go forward to obtain a determination of 

the opposition on its merits, or to have the opposition dismissed without prejudice as moot.16 If, 

after remand under 37 CFR § 2.130, applicant files a written abandonment of its application 

without the written consent of every adverse party to the proceeding, judgment will be entered 

against the applicant pursuant to 37 CFR § 2.135. A 66(a) application may not be remanded 

under 37 CFR § 2.130.17

Abandonment of 66(a) application as the result of cancellation of the underlying 

international registration by the International Bureau. If an international registration is 

cancelled by the International Bureau for any reason, the IB will notify the USPTO and the 

USPTO will abandon the corresponding 66(a) application.18 If a 66(a) application that is the 

subject of an opposition is abandoned by the Office as the result of cancellation of the underlying 

international registration, and if judgment under 37 CFR 2.135 is not entered against applicant, 

opposer will be given time to decide whether it wishes to go forward to obtain a determination of 

the opposition on its merits, or to have the opposition dismissed without prejudice as moot. 

If an applicant whose application is the subject of an opposition files an abandonment of the 

application with the written consent of the opposer, the opposition will be dismissed without 

prejudice, and the application will stand abandoned. 

If the applicant files an abandonment of the application with the written consent of the opposer, 

and the opposer files a withdrawal of the opposition, the opposition will be dismissed without 

prejudice, and the application will stand abandoned. 

If the applicant files an abandonment of the application with prejudice with the written consent 

of the opposer, the opposition will be dismissed without prejudice (and the application will stand 

16 Cf. TBMP § 602.02(b) (Cancellation under Section 8 or 71; Expiration under Section 9 or 70) and cases cited 

therein. Cf. also Bank of America National Trust & Savings Ass'n v. First National Bank of Allentown, 220 USPQ

892, 8984 n.6 (TTAB 1984) (opposer elected to adjudicate pleaded issues where applicant had conceded that use 

was not made until after filing date, and its application was held void ab initio); and Daggett & Ramsdell, Inc. v. 

Procter & Gamble Co., 119 USPQ 350, 350 (TTAB 1958), rev'd on other grounds, 275 F.2d 955, 125 USPQ 236 

(CCPA 1960) (applicant in prior opposition consented to judgment and therefore not entitled to registration but in 

subsequent opposition against same applicant, opposer pressed for determination on merits). 

17 See 7.25 ("Sections of part 2 applicable to extension of protection"). 

18 See 37 CFR § 7.30. 

600 - 409 
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WITHDRAWAL; SETTLEMENT 

 

abandoned with prejudice to applicant's right to reregister the same mark for the same goods or 

services), unless the parties specify otherwise in writing.19 

If the applicant files an abandonment of the application with prejudice with the written consent 

of the opposer, and the opposer files a withdrawal of the opposition with prejudice with the 

written consent of the applicant, the opposition will be dismissed with prejudice, and the 

application will stand abandoned with prejudice to applicant's right to reregister the same mark 

for the same goods or services. 

 

602.02 Withdrawal by Respondent 

602.02(a) Surrender or Voluntary Cancellation of Registration 

37 CFR § 2.134(a) [Surrender or Voluntary Cancellation of Registration] After the 

commencement of a cancellation proceeding, if the respondent applies for cancellation of the 

involved registration under section 7(e) of the Act of 1946 without the written consent of 

every adverse party to the proceeding, judgment shall be entered against the respondent. 

The written consent of an adverse party may be signed by the adverse party or by the adverse 

party's attorney or other authorized representative. 

37 CFR § 2.172 Surrender for cancellation. Upon application by the registrant, the 

Director may permit any registration to be surrendered for cancellation. Application for 

such action must be signed by the registrant and must be accompanied by the original 

certificate of registration, if not lost or destroyed. When there is more than one class in a 

registration, one or more entire class but less than the total number of classes may be

surrendered as to the specified class or classes. Deletion of less than all of the goods or 

services in a single class constitutes amendment of registration as to that class (see § 2.173).

37 CFR § 7.30 Effect of cancellation or expiration of international registration. When the 

International Bureau notifies the Office of the cancellation or expiration of an international 

registration, in whole or in part, the Office shall cancel, in whole or in part, the 

corresponding pending or registered extension of protection to the United States. The date 

of cancellation of an extension of protection or relevant part shall be the date of cancellation 

or expiration of the corresponding international registration or relevant part. 

A registrant that wishes to voluntarily surrender its registration for cancellation, except a 

66(a) registration, may file in the Office a written application, signed by the registrant, or an 

attorney as defined in 37 CFR § 10.1(c) who has an actual or implied written or verbal power 

19 See Aromatique Inc. v. Lang, 25 USPQ2d 1359, 1361 (TTAB 1992). See also Wells Cargo, Inc. v. Wells Cargo, 

Inc., 606 F.2d 961, 203 USPQ 564 (CCPA 1979) (applicant's successor in interest is bound by act of withdrawal of 

application with prejudice and is barred from again seeking to register same mark for same goods). 

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of attorney from the owner,20 and accompanied by the original certificate of registration, if 

not lost or destroyed.21 There is no fee for a voluntary surrender for cancellation.22 

A registrant that wishes to voluntarily cancel23 its 66(a) registration may do so by filing such 

request with the International Bureau.24

However, after the commencement of a cancellation proceeding, if the respondent applies for 

surrender of its subject registration under Section 7(e) of the Act, 15 U.S.C. § 1057(e), or 

voluntary cancellation of a 66(a) registration, without the written consent of every adverse 

party to the proceeding, judgment will be entered against the respondent.25 The written

consent of an adverse party may be signed by the adverse party itself, or by the adverse 

party's attorney or other authorized representative.

26 

For information concerning the effect of a judgment of this type, see TBMP § 602.01, and 

cases cited therein. 

20 See Post Registration: Changes to Requirements for Maintaining Trademark Registrations, in the Official Gazette

of November 30, 1999 at 1228 TMOG 187.

21 See Section 7(e) of the Act, 15 U.S.C. § 1057(e); 37 CFR § 2.172; and TMEP §§ 1403.05(b) (for multiple class 

registrations) and 1608 (Surrender of Registration). The requirement for statement that the original certificate has 

been lost or destroyed has been eliminated. 

22 See TMEP § 1608. 

23 For ease of reference, the term "voluntary cancellation" as used throughout this section, refers to a request by the 

owner of a 66(a) registration for either cancellation of its international registration or renunciation of its extension of

protection to the United States. Either action results in cancellation of the 66(a) registration. 

24 Section 7(e) of the Trademark Act and corresponding Trademark Rules 2.134 and 2.172 regarding surrender of a

registration are not applicable to a 66(a) registration. Requests to record changes to 66(a) registrations must be filed

with the International Bureau. See 37 CFR §§ 7.22 and 7.25. Although Trademark Rule 7.25 specifically exempts 

only a "request for extension of protection" (a 66(a) application) from application of certain rules in part 2 of 37

CFR, including Rule 2.172 (surrender for cancellation), it is clear from the nature of the excepted provisions that 

Rule 7.25 is intended to apply to a 66(a) registration as well as a 66(a) application. See also Exam Guide 2-03, 

Guide to Implementation of Madrid Protocol in the United States (part VI.5) (October 28, 2003). 

25 See 37 CFR § 2.134(a). Cf. 37 CFR § 2.135; Goodway Corp. v. International Marketing Group Inc., 15 USPQ2d 

1749, 1750 (TTAB 1990); Grinnell Corp. v. Grinnell Concrete Pavingstones Inc., 14 USPQ2d 2065, 2067 (TTAB 

1990) (consent required for abandonment without prejudice regardless of motivation for abandonment, i.e., a 

concession by applicant that it is not owner of mark and that judgment would be unfair to real owner, a nonparty to

the case); and In re First National Bank of Boston, 199 USPQ 296, 301 (TTAB 1978) (where abandonment of

application and notice of opposition were filed on same day, consent was not required because there was no

application to oppose). 

26 See 37 CFR § 2.134(a). 

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In a cancellation proceeding against a registration having multiple classes, except in the case 

of a 66(a) registration, if the respondent files a request to amend the registration to delete a 

class sought to be cancelled, the request for amendment is, in effect, a voluntary surrender of 

the registration with respect to that class, and is governed by 37 CFR § 2.134(a). 

Trademark Rule 2.134 is not applicable to 66(a) registrations. Nevertheless, in a cancellation 

proceeding against a 66(a) registration, if the respondent requests to amend the registration to 

delete a class sought to be cancelled, or requests cancellation with the International Bureau as 

to some of the goods and services in the registration without the written consent of every 

adverse party to the proceeding, the request is, in effect, a voluntary cancellation of the 

registration with respect to those goods or services and judgment will be entered against the 

registrant as to the deleted goods or services. 

An application for voluntary surrender of a registration that is the subject of a Board inter 

partes proceeding should be filed with the Board, and should bear at the top of its first page 

both the registration number and the inter partes proceeding number and title. The 

application for voluntary surrender should include proof of service upon every other party to 

the proceeding.27 In the case of a voluntary cancellation of a 66(a) registration, the registrant 

should file with the Board and serve upon every other party to the proceeding, a copy of the 

appropriate notice or request for cancellation that has been filed with the International 

Bureau. 

If a registrant whose registration is the subject of a petition for cancellation files a surrender 

or voluntary cancellation of the registration with the written consent of the petitioner, the 

petition for cancellation will be dismissed without prejudice, and the registration will be 

cancelled. 

If the registrant files a surrender or voluntary cancellation of the registration with the written 

consent of the petitioner, and the petitioner files a withdrawal of the petition for cancellation, 

the petition for cancellation will be dismissed without prejudice, and the registration will be 

cancelled. 

If the registrant files a surrender or voluntary cancellation of the registration with prejudice

with the written consent of the petitioner, the petition for cancellation will be dismissed 

without prejudice (the registration will be cancelled with prejudice to registrant's right to 

reregister the same mark for the same goods or services), unless the parties specify otherwise 

in writing. 

If the registrant files a surrender or voluntary cancellation of the registration with prejudice 

with the written consent of the petitioner, and the petitioner files a withdrawal of the petition 

27 See 37 CFR § 2.119(a) and TBMP § 113 (Service of Papers). 

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for cancellation with prejudice with the written consent of the registrant, the petition for 

cancellation will be dismissed with prejudice, and the registration will be cancelled with 

prejudice to registrant's right to reregister the same mark for the same goods or services. 

 

602.02(b) Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70 

37 CFR § 2.134(b) After the commencement of a cancellation proceeding, if it comes to the 

attention of the Trademark Trial and Appeal Board that the respondent has permitted his 

involved registration to be cancelled under § 8 of the Act of 1946 or has failed to renew his 

involved registration under § 9 of the Act of 1946, an order may be issued allowing 

respondent until a set time, not less than fifteen days, in which to show cause why such 

cancellation or failure to renew should not be deemed to be the equivalent of a cancellation 

by request of respondent without the consent of the adverse party and should not result in 

entry of judgment against respondent as provided by paragraph (a) of this section. In the 

absence of a showing of good and sufficient cause, judgment may be entered against 

respondent as provided by paragraph (a) of this section. 

37 CFR § 7.30 Effect of Cancellation or expiration of international registration. When the 

International Bureau notifies the Office of the cancellation or expiration of an international 

registration, in whole or in part, the Office shall cancel, in whole or in part, the 

corresponding pending or registered extension of protection to the United States. The date 

of cancellation of an extension of protection or relevant part shall be the date of cancellation 

or expiration of the corresponding international registration or relevant part. 

37 CFR § 7.36 Affidavit or declaration of use in commerce or excusable nonuse required 

to avoid cancellation of an extension of protection to the United States. 

(a) Subject to the provisions of section 71 of the Act, a registered extension of protection 

shall remain in force for the term of the international registration upon which it is based 

unless the international registration expires or is cancelled under section 70 of the Act due to 

cancellation of the international registration by the International Bureau. 

(b) During the following time periods, the holder of an international registration must file an 

affidavit or declaration of use or excusable nonuse, or the registered extension of protection 

will be cancelled under section 71 of the Act: 

(1) On or after the fifth anniversary and no later than the sixth anniversary after 

the date of registration in the United States; and 

(2) Within the six-month period preceding the end of each ten-year period after 

the date of registration in the United States, or the three-month grace period

immediately following, with payment of the grace period surcharge required by 

section 71(a)(2)(B) of the Act and §7.6. 

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 37 CFR § 7.41 Renewal of international registration and extension of protection. 

 (a) Any request to renew an international registration and its extension of protection to the 

 United States must be made at the International Bureau in accordance with Article 7 of the 

 Madrid Protocol. 

 * * * * 

If it comes to the attention of the Board, during the course of a proceeding, that respondent 

has permitted its involved registration to be cancelled under Section 8 of the Trademark Act, 

15 U.S.C. § 1058, or has failed to renew its involved registration under Section 9 of the Act, 

15 U.S.C. § 1059, the Board may issue an order allowing respondent time to show cause why 

the cancellation, or the failure to renew, should not be deemed to be the equivalent of a 

cancellation by request of respondent without the consent of petitioner and should not result 

in entry of judgment against respondent.28 

Similarly, in the case of a 66(a) registration, if it comes to the attention of the Board during 

the course of a proceeding that respondent has allowed its extension of protection to the 

United States to be cancelled under Section 71, 15 U.S.C. § 1141k,29 or has failed to renew 

its extension of protection under Section 70, 15 U.S.C. § 1141j,30 the Board may issue an 

order allowing respondent time to show cause why the cancellation should not be deemed to 

be the equivalent of a cancellation by request of respondent without the consent of petitioner 

and should not result in entry of judgment against respondent.31

In a cancellation proceeding against a registration having multiple classes, if the respondent 

permits a class which is the subject of the cancellation proceeding to be cancelled under 

Section 8 of the Act, or fails to renew the registration under Section 9 of the Act with respect 

28 See Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154 (TTAB 1989); C.H. Guenther & Son Inc. v. 

Whitewing Ranch Co., 8 USPQ2d 1450 (TTAB 1988); and Abraham's Seed v. John One Ten, 1 USPQ2d 1230

(TTAB 1986). Cf. In re Checkers of North America Inc., 23 USPQ2d 1451 (Comm'r 1992), aff’d sub nom., 

Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks, 51 F.3d 1078, 34 USPQ2d 1574

(D.C. Cir. 1995); and Global Maschinen GmbH v. Global Banking Systems, Inc., 227 USPQ 862 (TTAB 1985).

29 A 66(a) registration is subject to the Section 71 requirements for affidavits of continued use (or excusable 

nonuse). A Section 71 affidavit is filed with the Office. 

30 A renewal under Section 70 of the Trademark Act refers to a renewal of the international registration underlying a 

66(a) registration. A 66(a) registration will be cancelled under Section 70 for failure to renew the international 

registration on which it is based. Renewals of international registrations are filed directly with the International 

Bureau, not the USPTO. If the IB does not renew the underlying international registration, the IB will notify the 

USPTO that the international registration has expired. The corresponding extension of protection to the U.S. will 

expire as of the expiration date of the international registration and the 66(a) registration will be cancelled by the 

Office. See Section 70 of the Trademark Act.

31 37 CFR § 2.134 is not applicable to 66(a) registrations as any request by the registrant to voluntarily cancel its 

66(a) registration would not be made under Section 7 of the Trademark Act, but instead would be filed directly with

the International Bureau. See 37 CFR §§ 7.22 and 7.25. 

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to that class, the cancellation or failure to renew with respect to that class is governed by 37 

CFR § 2.134(b). 

An order to show cause under 37 CFR § 2.134(b) may be issued by the Board upon motion 

by the petitioner, or (if the failure to file a Section 8 or Section 9 affidavit comes to the 

attention of the Board in another manner) upon the Board's own initiative.32 

For information concerning motions for an order to show cause under 37 CFR § 2.134(b), 

see TBMP § 535. 

The purpose of 37 CFR § 2.134(b), and the policy underlying the issuance of a show cause 

order in the case of a 66(a) registration, is to prevent a cancellation proceeding respondent 

whose subject registration comes due, during the course of the proceeding, for a Section 8 or 

Section 9 affidavit, or in the case of a 66(a) registration, a Section 71 affidavit or Section 70 

renewal, from being able to moot the proceeding, and avoid judgment, by deliberately failing 

to file the required affidavits or renewal applications.33 The Board's policy governing 

application of 37 CFR § 2.134(b) is as follows: 

The paragraph has been modified to provide an opportunity for the respondent 

in such situation to "show cause" why judgment should not be entered against it. 

If respondent submits a showing that the cancellation or expiration was the 

result of an inadvertence or mistake, judgment will not be entered against it. If 

respondent submits a showing that the cancellation or expiration was 

occasioned by the fact that its registered mark had been abandoned and that 

such abandonment was not made for purposes of avoiding the proceeding but 

rather was the result, for example, of a two-year period of nonuse which 

commenced well before respondent learned of the existence of the proceeding, 

judgment will be entered against it only and specifically on the ground of 

abandonment.

34

32 See C.H. Guenther & Son Inc. v. Whitewing Ranch Co., supra at 1452 (motion for order to show cause); and

Abraham's Seed v. John One Ten, supra at 1232 (show cause order issued where respondent's failure to file Section 

8 affidavit came to Board's attention following receipt of petitioner's final brief but before final decision). 

33 See In re Checkers, supra (petitioner should not be deprived of a judgment in its favor by a respondent who lets 

its registration lapse during a cancellation proceeding); Marshall Field & Co. v. Mrs. Fields Cookies, supra at 1156

(although judgment entered on ground of abandonment in view of concession that failure to file Section 8 affidavit

was due to discontinued use of mark, judgment was not entered on ground of likelihood of confusion where 

respondent showed that failure to file Section 8 affidavit with respect to that ground was result of deliberate business 

decision made prior to commencement of proceeding and not for purposes of avoiding proceeding); and T. Jeffrey 

Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark Rep. 269, 277 (1984). 

34 Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR 23122, 23133, and in 

the Official Gazette of June 21, 1983 at 1031 TMOG 13, 23. See Marshall Field & Co. v. Mrs. Fields Cookies, 

supra (where registrant stated that failure to file Section 8, with respect to ground of likelihood of confusion, was 

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If, in response to an order to show cause a respondent submits a showing that the cancellation 

of its registration under Section 8 or 71of the Act, or failure to renew the registration under 

Section 9 or 70 of the Act, was the result of inadvertence or mistake, judgment will not be 

entered against it.35 

If respondent submits a showing that it permitted its registration to be cancelled under Section 

8 or 71 of the Act, or failed to renew the registration under Section 9 or 70 of the Act, because 

its registered mark had been abandoned, and that the abandonment was not made for purposes 

of avoiding the proceeding, judgment will be entered against it only and specifically on the 

ground of abandonment (if abandonment has not been pleaded as a ground for cancellation, 

plaintiff will be allowed to amend its pleading appropriately).36 

In those cases where the Board finds that respondent has shown good and sufficient cause 

why judgment should not be entered against it, petitioner may be given time to decide 

whether it wishes to go forward with the cancellation proceeding, or to have the cancellation 

proceeding dismissed without prejudice as moot.37 In those cases where the Board enters 

judgment against the respondent only and specifically on the ground of abandonment, 

petitioner may be given time to decide if it wishes to go forward to obtain a determination of 

the remaining issues, or to have the cancellation proceeding dismissed without prejudice as to 

those issues.38

result of deliberate business decision made prior to commencement of proceeding and not to avoid judgment, 

judgment was not entered as to that ground); C.H. Guenther & Son Inc. v. Whitewing Ranch Co., supra (failure to

renew was unintentional and not due to abandonment); Abraham's Seed v. John One Ten, supra (respondent's belief 

that it was improper to file a Section 8 affidavit since "the cancellation action had priority," while erroneous, was 

treated as sufficient showing of cause to avoid entry of judgment); and T. Jeffrey Quinn, TIPS FROM THE TTAB: 

The Rules Are Changing, supra. 

35 See C.H. Guenther & Son Inc. v. Whitewing Ranch Co., supra (failure to renew was unintentional and not due to 

abandonment) and Abraham's Seed v. John One Ten, supra (respondent's belief that it was improper to file a Section

8 affidavit since "the cancellation action had priority," while erroneous, was treated as sufficient showing of cause to

avoid entry of judgment). 

36 See Marshall Field & Co. v. Mrs. Fields Cookies, supra at 1156 (where registrant stated that failure to file 

Section 8, with respect to ground of likelihood of confusion, was result of deliberate business decision made prior to 

commencement of proceeding and not to avoid judgment, judgment was not entered as to that ground and petitioner 

was allowed time to advise whether it wished to go forward on that ground). 

37 See Abraham's Seed v. John One Ten, supra (opted for decision on merits). Cf. C.H. Guenther & Son Inc. v.

Whitewing Ranch Co., supra (where petitioner moved for show cause order and respondent filed response showing 

good cause along with uncontested motion to dismiss petition as moot, petition was dismissed as moot). 

38 See Marshall Field & Co. v. Mrs. Fields Cookies, supra. Cf. with respect to the Board's election practice, United

Rum Merchants Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1484 n.3 (TTAB 1988); Bank of America National 

Trust & Savings Ass'n v. First National Bank of Allentown, 220 USPQ 892, 894 n.6 (TTAB 1984) (where

application was held void ab initio, opposer elected to adjudicate pleaded issues); and Daggett & Ramsdell, Inc. v. 

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As noted above, the purpose of 37 CFR § 2.134(b) is to prevent a cancellation proceeding 

respondent from being able to moot the proceeding, and avoid judgment, by deliberately 

failing to file a required affidavit of use under Section 8, or renewal application under Section 

9. The rule provides not that an order to show cause "shall" be issued, but rather that an order 

"may" be issued. Normally, the Board, in the exercise of its discretion under the rule, does 

not issue a show cause order in those cases where the failure to file a required affidavit under 

Section 8, or renewal application under Section 9, occurs after the filing of a petition for 

cancellation, but before respondent has been notified by the Board.39 Rather, the Board issues 

an action notifying respondent of the filing of the proceeding, advising both parties that the 

registration has been cancelled under Section 8, or has expired, and allowing petitioner time 

to elect whether it wishes to go forward with the cancellation proceeding, or to have the 

cancellation proceeding dismissed without prejudice as moot.40 However, a petitioner which 

believes that the respondent had knowledge of the filing of the petition to cancel 

(notwithstanding the fact that respondent had not been notified thereof by the Board), and that 

respondent deliberately failed to file a required affidavit of use under Section 8, or renewal 

application under Section 9, in an effort to moot the proceeding, and avoid judgment, may file 

a motion for an order to show cause under 37 CFR § 2.134(b)41 stating the reasons for its 

belief. 

While Trademark Rule 2.134 is not itself applicable to 66(a) registrations, the above-stated 

policy considerations underlying the rule are applicable to cancellation proceedings involving 

66(a) registrations. 

 603 Withdrawal by Interference or Concurrent Use Applicant 

37 CFR § 2.68 Express abandonment (withdrawal) of application. An application may be 

expressly abandoned by filing in the Patent and Trademark Office a written statement of 

abandonment or withdrawal of the application signed by the applicant, or the attorney or other 

person representing the applicant. Except as provided in § 2.135, the fact that an application 

has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, 

affect any rights that the applicant may have in the mark which is the subject of the abandoned 

application. 

Procter & Gamble Co., 119 USPQ 350, 350 (TTAB 1958), rev'd on other grounds, 275 F.2d 955, 125 USPQ 236 

(CCPA 1960). 

39 See Global Maschinen GmbH v. Global Banking Systems Inc., 227 USPQ 862, 862 n.1 (TTAB 1985). 

40 Cf. TBMP § 602.01 (Withdrawal by Applicant). 

41 See TBMP § 535 (Motion for Order to Show Cause under Rule 2.134(b)).

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37 CFR § 2.135 Abandonment of application or mark. After the commencement of an

opposition, concurrent use, or interference proceeding, if the applicant files a written 

abandonment of the application or of the mark without the written consent of every adverse party 

to the proceeding, judgment shall be entered against the applicant. The written consent of an 

adverse party may be signed by the adverse party or by the adverse party's attorney or other 

authorized representative. 

After the commencement of an interference or concurrent use proceeding, if an applicant whose 

application is a subject of the proceeding files a written abandonment of its application or mark 

without the written consent of every adverse party to the proceeding, judgment will be entered 

against the applicant.42 Any concurrent use proceeding will be dissolved, and registration to 

applicant will be refused.

If, after the commencement of a concurrent use proceeding involving two or more applicants, 

one of the applicants files an unconsented abandonment of its application, but not of its use of its 

mark, judgment will be entered against that applicant with respect to the registration sought by it. 

However, if the abandoning applicant is specified as an excepted concurrent user in any other 

application involved in the proceeding, the abandoning applicant will remain a party to the 

proceeding as a concurrent user, and every other applicant to the proceeding who, in its own 

application, has listed that party as an excepted user will retain the burden of proving its 

entitlement to registration in view of the acknowledged rights of the abandoning applicant.43 On 

the other hand, if a party to a concurrent use proceeding abandons all rights in its mark and in its 

application (if any), any remaining party that seeks concurrent registration may move to amend 

its application to delete the abandoning party as an excepted user. If the abandoning party is the 

only excepted user specified in a remaining party's application, the remaining party may move to 

amend its application to seek a geographically unrestricted registration.44 If the motion is 

granted, the concurrent use proceeding will be dissolved without prejudice, and the application 

will be republished, for purposes of opposition, as an application for a geographically 

42 37 CFR § 2.135. 

43 See Fleming Companies Inc. v. Thriftway Inc., 21 USPQ2d 1451, 1456 (TTAB 1991), aff'd, 26 USPQ2d 1551 

(S.D.Ohio 1992) (although judgment was entered against excepted user in view of abandonment of its application 

without consent and therefore user was not entitled to a registration, because said party was listed as exception to

plaintiff's right to use, plaintiff was required to show entitlement to concurrent registration), and Newsday, Inc. v. 

Paddock Publications, Inc., 223 USPQ 1305, 1308 (TTAB 1984) (once concurrent user is acknowledged, even if 

application owned by user is expressly abandoned, plaintiff is not entitled to unrestricted registration and still must 

show entitlement to concurrent use registration). 

 Cf. 37 CFR § 2.99(d)(3), and Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987)

(settlement agreement sufficient to show entitlement as to non defaulting user but still must show entitlement as to

defaulting users and may do so through an ex parte type of showing). 

44 See Newsday, Inc. v. Paddock Publications, Inc., supra. 

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unrestricted registration. Republication may not be available for a 66(a) application due to the 

time requirements of the Madrid Protocol.45

If an application which is the subject of an interference or concurrent use proceeding has 

multiple classes, and the applicant files a request to amend the application to delete a class, the 

request for amendment is, in effect, an abandonment of the application with respect to that class, 

and is governed by 37 CFR § 2.135. 

An abandonment of an application, which is the subject of an interference or concurrent use 

proceeding, should be filed with the Board. The top of its first page should list both the 

application serial number, and the interference or concurrent use proceeding number and title. 

The abandonment should include proof of service thereof upon every other party to the 

proceeding.46 

If, during the pendency of an interference or concurrent use proceeding involving an application 

under Section 1 or 44 of the Trademark Act, the Board grants a request by the Trademark 

Examining Attorney for remand under 37 CFR § 2.13047 and the application thereafter becomes 

abandoned by operation of law, for failure of the applicant to respond to an Office action, or 

because a final refusal to register is affirmed on appeal, judgment under 37 CFR § 2.135 will not 

be entered against applicant in the interference, or in the concurrent use proceeding. Trademark 

Rule 2.135 comes into play only when there is a written abandonment by the applicant. If, after 

remand under 37 CFR § 2.130, applicant files a written abandonment of its application without 

the written consent of every adverse party to the proceeding, judgment will be entered against the 

applicant pursuant to 37 CFR § 2.135. An application under Section 66(a) of the Act may not be 

remanded under 37 CFR § 2.130.48 

 

604 Consent to Judgment 

If a party to an inter partes proceeding before the Board does not wish to litigate the case, and is 

willing to accept entry of judgment against itself, the party may file a statement with the Board 

indicating that it consents to entry of judgment against itself. Upon receipt of such a statement, 

the Board will enter judgment against the filing party. 

45 See Sections 68 & 69 of the Trademark Act, 15 U.S.C. 1141h and 1141i. 

46 See 37 CFR § 2.119(a), and TBMP § 113 (Service of Papers). 

47 See TBMP § 515 (Motion to Remand Application to Examining Attorney). 

48 See 37 CFR §§ 2.130 and 7.25 ("Sections of part 2 applicable to extension of protection"). 

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605 Settlement 

605.01 In General 

A substantial percentage of the inter partes cases filed with the Board are eventually settled. The 

Board encourages settlement, and several aspects of Board practice and procedure, including its 

liberal discovery practice (see TBMP chapter 400) and its usual willingness to suspend 

proceedings in pending cases while parties negotiate for settlement49 serve to facilitate the 

resolution of cases by agreement. 

605.02 Suspension for Settlement Negotiations 

Parties that are negotiating for settlement, and wish to defer further litigation of the case pending 

conclusion of their negotiations, should remember to file stipulations to extend or suspend the 

running of the time periods set in the case. 

When the Board is notified that parties are negotiating for settlement, the Board may suspend 

proceedings for a period of up to six months, subject to the right of either party to request 

resumption at any time prior to the expiration of the suspension period.50 The suspension period 

may be further extended upon request, or upon notification to the Board that the parties are still 

engaged in their settlement negotiations. However, once proceedings have been suspended for 

over a year, the Board may require that the parties submit a report as to the status of their 

negotiations in order to show good cause for continued suspension. This report should include a 

summary of the progress of the parties' negotiations and a firm timetable for resolution. Absent 

such a report, any subsequent motion to extend or suspend for settlement negotiations may be 

denied, even though agreed to by the parties.51 

 

605.03 Settlement Agreements 

605.03(a) In General

When an inter partes proceeding before the Board is settled, the parties should promptly 

notify the Board of the settlement. It is not necessary that the parties file a copy of their 

settlement agreement with the Board. Rather, they may simply file a stipulation stating 

49 See TBMP §§ 510.03 (Suspension for Other Reasons) and 605.02 (Suspension for Settlement Negotiations). 

50 See TBMP § 510.03. 

51 Cf. Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 121 (TTAB 2001)

(where opposer’s statements that the parties were engaged in settlement negotiations were found to be false and filed

in bad faith, opposer was sanctioned with dismissal). For a discussion of motions to suspend see TBMP § 510. 

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the desired disposition of the proceeding (i.e., "It is hereby stipulated that the opposition 

be sustained," "It is hereby stipulated that the petition for cancellation be dismissed with 

prejudice," or the like). If there is a counterclaim, the stipulation should also state the 

desired disposition of the counterclaim. If, in a proceeding with a counterclaim, the 

parties stipulate to the disposition of the claim against which the counterclaim was 

brought, but there is no stipulation to dispose of the counterclaim, and there is no 

withdrawal of the counterclaim, consent by one party to entry of judgment against itself 

on the counterclaim, etc., the counterclaim will go forward, notwithstanding the fact that 

judgment has been entered on the original claim.

52 

If the proceeding is to be dismissed, the stipulation should specify whether the dismissal 

is to be with prejudice or without prejudice. If no specification is made, the Board, in its 

action dismissing the proceeding, will simply state that the proceeding is being dismissed 

"in accordance with the agreement of the parties." However, if the agreement itself also

fails to indicate whether the dismissal is to be with or without prejudice, at some later 

time a dispute may arise between the parties as to whether they intended the dismissal to 

be with or without prejudice. A clear specification in the stipulation may avoid future 

trouble. 

A settlement agreement may simply call for a party to withdraw with, or without, 

prejudice, or with, or without, consent. In such a case, the parties need not file a 

settlement stipulation, because the withdrawal, when filed, will result in a final 

disposition of the proceeding. 

A settlement stipulation, which is not in accordance with the applicable rules and the 

statute, will be given no effect by the Board. 

605.03(b) With Amendment of Subject Application or Registration 

If a settlement agreement is contingent upon amendment of a defendant's subject 

application or registration, the request for amendment is governed by 37 CFR § 

2.133(a)53 and should be filed with the Board. The request should list at the top of the 

page both the number of the subject application or registration, and the Board proceeding 

number and title. The request also should include proof of service thereof upon every 

other party to the proceeding.54 

52 See TBMP § 606 (Effect on Counterclaim). 

53 See TBMP § 514 (Motion to Amend Application or Registration). 

54 See 37 CFR § 2.119(a), and TBMP § 113 (Service of Papers). 

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A proposed amendment to a defendant's application or registration must comply with all 

applicable rules and statutory provisions.55 Thus, for example, a proposed amendment to 

a Section 1 or 44 application or registration that materially alters the character of the 

defendant’s subject mark,56 or a proposed amendment to a Section 66(a) application or 

registration that involves an amendment to the mark at all,57 cannot be approved by the 

Board.58 If a settlement agreement calls for an amendment that may amount to a material 

change in the defendant's mark, the parties may wish to also agree that if a request for 

amendment of the defendant's subject application or registration is denied by the Board, 

the defendant will abandon that application, or voluntarily surrender that registration, and 

file a new application for registration of the altered mark; and that the plaintiff will not 

oppose the new application or seek to cancel any registration that matures therefrom.

59 

In an opposition to an application having multiple classes, if the applicant files a request 

to amend the application to delete an opposed class, the request for amendment is, in 

effect, an abandonment of the application with respect to that class, and is governed by 

37 CFR § 2.135. Similarly, in a cancellation proceeding against a registration having 

multiple classes, except in the case of a 66(a) registration, if the respondent files a request 

to amend the registration to delete a class sought to be cancelled, the request for 

amendment is, in effect, a voluntary surrender of the registration with respect to that 

class, and is governed by 37 CFR § 2.134(a). 

Trademark Rule 2.134 is not applicable to 66(a) registrations. Nevertheless, the policy 

considerations underlying the rule are applicable in a cancellation proceeding against a 

66(a) registration. If the respondent requests to amend the registration to delete a class 

55 See TBMP § 514.01 (Motion to Amend Application or Registration – In General). 

56 See Section 7(e) of the Act, 15 U.S.C. § 1057(e), and 37 CFR §§ 2.72 and 2.173. 

57 The mark in a 66(a) registration cannot be amended under Section 7 of the Trademark Act. See 37 CFR § 2.72, 

providing only for amendments to the mark in Section 1 and 44 applications, and the International Bureau’s Guide 

to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, Para. B.ll.69.02 

(2002) at www.wip.int/madrid/en/guide. See, in addition, Rules of Practice for Trademark-Related Filings Under 

the Madrid Protocol Implementation Act; Final Rule, published in the Federal Register on September 26, 2003 at 68

FR 55748, 55756.

58 See Section 7(e) of the Act, 15 U.S.C. § 1057; 37 CFR §§ 2.71(b), 2.72, 2.173(a) and 2.173(b); Vaughn Russell 

Candy Co. and Toymax Inc. v. Cookies In Bloom, Inc., 47 USPQ2d 1635 (TTAB 1998) (material alteration); Aries 

Systems Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB 1992), summ. judgment granted in part, 26 USPQ2d

1926 (TTAB 1993) (expansion of scope of goods); Mason Engineering and Design Corp. v. Mateson Chemical

Corporation, 225 USPQ 956 (TTAB 1985) (amendment to dates of use not supported by affidavit or declaration);

and Louise E. Rooney, TIPS FROM THE TTAB: Rule 2.133 Today, 81 Trademark Rep. 408 (1991). 

59 See TBMP § 602 (Withdrawal by Opposition or Cancellation Defendant) for a discussion of abandonment of an

application and surrender or voluntary cancellation of a registration. 

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sought to be cancelled, or requests cancellation with the International Bureau as to some

of the goods and services in the registration, without the written consent of every adverse 

party to the proceeding, the request is, in effect, a voluntary cancellation of the 

registration with respect to those goods or services and judgment will be entered against 

the registrant as to the deleted goods or services.60 

605.03(c) With Amendment of Plaintiff's Pending Application 

The plaintiff in an inter partes proceeding before the Board may own a pending 

application for registration that has been rejected by the trademark examining attorney in 

view of the defendant's subject registration, or which is going to be rejected by the 

examining attorney when and if defendant's subject application matures to registration. 

In such a case, a settlement agreement may be contingent upon the approval of an 

amendment to be filed in the plaintiff's application, or acceptance of a consent agreement 

to be filed therein, and the consequent approval of the application for publication. 

The Board has no jurisdiction over a plaintiff's application which is still pending before 

the trademark examining attorney.61 Thus, when the plaintiff in an inter partes 

proceeding before the Board owns an application which is still pending before the 

trademark examining attorney, and an amendment or consent agreement is filed in the 

application pursuant to a settlement agreement between the parties, the amendment 

should be filed with the examining attorney, not with the Board. The examining attorney 

should consider the amendment or agreement and take appropriate action (including, if 

the amendment or consent agreement puts the application in condition for publication, 

approving the application for publication), notwithstanding the fact that action on the 

application may previously have been suspended pending the final determination of the 

inter partes proceeding before the Board. Indeed, if settlement of the inter partes 

proceeding is contingent upon approval of the amendment, or acceptance of the consent 

agreement, by the examining attorney, proceedings before the Board may be suspended 

pending action by the examining attorney on the amendment or consent agreement. 

605.03(d) Breach of Settlement Agreement 

If an agreement settling an inter partes proceeding before the Board is breached by one of 

the parties, an adverse party's remedy is by way of civil action. The Board has no 

jurisdiction to enforce such an agreement. However, while the Board does not have 

jurisdiction to enforce the contract, agreements to cease use of a mark or not to use a 

60 See TBMP § 602.02 (Withdrawal by Respondent). 

61 See Home Juice Co. v. Runglin Cos., 231 USPQ 897, 898 n.7 (TTAB 1986) (cannot instruct examining attorney 

to pass application to registration). 

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WITHDRAWAL; SETTLEMENT 

 

mark in a certain format are routinely upheld and enforced to the extent a party may not 

obtain a registration for exclusive use that may be precluded by the terms of a settlement 

agreement.62 

605.03(e) Effect of Judgment Based Upon Agreement 

For information concerning the effect of agreements and judgments resulting therefrom, 

see cases cited in the note below.63

 

605.03(f) Consent Orders 

The Board will dismiss, sustain, etc., a Board inter partes proceeding, if the parties so

stipulate64 and will also enter judgment against a party which submits its written consent 

to entry of judgment against itself, or which concedes that its case is not well taken. 

Further, the Board encourages the use of stipulated evidence in Board inter partes 

proceedings.65 However, the Board does not issue advisory opinions. Nor does the 

Board issue consent orders. That is, the Board does not, based simply upon a joint 

request by the parties that it does so, enter, approve, or otherwise adopt as its own 

62 See Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 

1998) (registration refused where settlement agreement precluded use of a portion of applicant's mark) and In re Sun

Refining and Marketing Co., 23 USPQ2d 1072, 1074 (TTAB 1991) (refusal affirmed since settlement agreement 

containing geographic restrictions clearly showed that applicant was not entitled to unrestricted registration). 

63 Kimberly-Clark Corp. v. Fort Howard Paper Co., 772 F.2d 860, 227 USPQ 36, 39 (Fed. Cir. 1985) (construction 

of 1924 agreement found that goods in current application not encompassed within agreement, registration

permitted); Chromalloy American Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 191 

n.4 (Fed. Cir. 1984) (unless principles of res judicata apply, consent given in a decree should be treated as any other 

contractual consent and as a factor to be taken into consideration in determining likelihood of confusion); Wells 

Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564, 567 (CCPA 1979) (although agreement can be

implied from applicant's withdrawal of application with consent and with prejudice in prior opposition, that 

agreement was not itself a settlement of the substantive rights of the parties and estoppel does not rest on that 

agreement but instead on the act of withdrawing the application with prejudice); Danskin, Inc. v. Dan River, Inc., 

498 F.2d 1386, 182 USPQ 370, 372 (CCPA 1974) (equitable estoppel barring opposition rested on terms of the 

agreement between parties in settlement of prior proceeding ); United States Olympic Committee v. Bata Shoe Co., 

225 USPQ 340, 342 (TTAB 1984) (abandonment of application without consent in prior opposition does not operate 

as res judicata when different marks were involved in subsequent proceeding); and Marc A. Bergsman, TIPS FROM

THE TTAB: The Effect of Board Decisions in Civil Actions; Claim Preclusion and Issue Preclusion in Board

Proceedings, 80 Trademark Rep. 540 (1990). See also Epic Metals Corp. v. H.H. Robertson Co., 870 F.2d 1574, 10

USPQ2d 1296, 1299 (Fed. Cir. 1989) (district court erred in construction of consent judgment), and Hartley v. 

Mentor Corp., 869 F.2d 1469, 10 USPQ2d 1138, 1142 (Fed. Cir. 1989) (intent of the parties is generally controlling

with respect to preclusive effect of stipulated judgment). 

64 See TBMP § 605.03(a) (Settlement Agreements – In General). 

65 See 37 CFR § 2.123(b), and TBMP § 705 (Stipulated Evidence). 

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findings, as if on the merits, stipulated findings of fact and/or conclusions of law, without 

any consideration by the Board of evidence properly adduced during the course of the 

proceeding. Rather, the Board makes findings of fact, and conclusions of law, on the 

merits of the case only as warranted by the evidence of record upon motion for summary 

judgment or at final hearing. 

606 Effect on Counterclaim 

If, prior to the determination of a counterclaim, the parties stipulate to the disposition of the 

claim against which the counterclaim was brought, or the original claim is withdrawn, dismissed 

for failure to prosecute, or otherwise disposed of, the counterclaim will nevertheless go forward, 

unless the parties stipulate to its disposition, or it is withdrawn by the counterclaimant, or one 

party consents to entry of judgment against itself on the counterclaim, etc.66 

66 See, for example, Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1880 (TTAB 1990)

(opposition dismissed with prejudice; applicant elected to go forward with counterclaim to cancel opposer’s 

registration and had standing to do so). Cf. TBMP § 901.02(a). 

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 701 Time of Trial 

37 CFR § 2.116(b) The opposer in an opposition proceeding or the petitioner in a cancellation 

proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or 

the respondent in a cancellation proceeding shall be in the position of defendant. A party that is 

a junior party in an interference proceeding or in a concurrent use registration proceeding shall 

be in the position of plaintiff against every party that is senior, and the party that is a senior 

party in an interference proceeding or in a concurrent use registration proceeding shall be a 

defendant against every party that is junior. 

(c) The opposition or the petition for cancellation and the answer correspond to the complaint 

and answer in a court proceeding. 

(d) The assignment of testimony periods corresponds to setting a case for trial in court 

proceedings. 

(e) The taking of depositions during the assigned testimony periods corresponds to the trial in 

court proceedings. 

37 CFR § 2.121 Assignment of times for taking testimony 

(a)(1) The Trademark Trial and Appeal Board will issue a trial order assigning to each party the 

time for taking testimony. No testimony shall be taken except during the times assigned, unless 

by stipulation of the parties approved by the Board, or, upon motion, by order of the Board. 

Testimony periods may be rescheduled by stipulation of the parties approved by the Board, or 

upon motion granted by the Board, or by order of the Board. If a motion to reschedule testimony 

periods is denied, the testimony periods may remain as set. The resetting of the closing date for 

discovery will result in the rescheduling of the testimony periods without action by any party. 

 * * * * 

(b)(1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff 

to present its case in chief, a testimony period for the defendant to present its case and to meet 

the case of the plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal. 

 (2) When there is a counterclaim, or when proceedings have been consolidated and one party 

is in the position of plaintiff in one of the involved proceedings and in the position of defendant 

in another of the involved proceedings, or when there is an interference or a concurrent use 

registration proceeding involving more than two parties, the Board will schedule testimony 

periods so that each party in the position of plaintiff will have a period for presenting its case in 

chief against each party in the position of defendant, each party in the position of defendant will 

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have a period for presenting its case and meeting the case of each plaintiff, and each party in the 

position of plaintiff will have a period for presenting evidence in rebuttal. 

(c) A testimony period which is solely for rebuttal will be set for fifteen days. All other testimony 

periods will be set for thirty days. The periods may be extended by stipulation of the parties 

approved by the Trademark Trial and Appeal Board, or upon motion granted by the Board, or by 

order of the Board. If a motion for an extension is denied, the testimony periods may remain as 

set. 

(d) When parties stipulate to the rescheduling of testimony periods or to the rescheduling of the 

closing date for discovery and the rescheduling of testimony periods, a stipulation presented in 

the form used in a trial order, signed by the parties, or a motion in said form signed by one party 

and including as statement that every other party has agreed thereto, shall be submitted to the 

Board. 

On receipt of a properly filed notice of opposition or petition to cancel (or at the time described 

in 37 CFR § 2.92 for an interference and 37 CFR § 2.99(c) for a concurrent use proceeding) the 

Board sends out a notice advising the parties of the institution of the proceeding. The notice 

includes a trial order assigning each party's time for taking testimony and introducing other 

evidence in the case.1

 Specifically, the Board schedules a 30-day testimony period for the 

plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its 

case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to 

present rebuttal evidence.2

 The plaintiff's period for presenting its case in chief is scheduled to 

open 60 days after the close of the discovery period; the defendant's testimony period is 

scheduled to open 30 days after the close of the plaintiff's testimony period in chief; and the 

plaintiff's rebuttal testimony period is scheduled to open 30 days after the close of the defendant's

testimony period.3

 

If there is a counterclaim, or if proceedings have been consolidated and one party is in the 

position of plaintiff in one of the involved proceedings and in the position of defendant in 

another, or if there is an interference or a concurrent use registration proceeding involving more 

than two parties, the Board schedules testimony periods as specified in 37 CFR § 2.121(b)(2), 

i.e., giving each plaintiff a period for presenting its case in chief as against each defendant, 

giving each defendant a period for presenting its case and meeting the case of each plaintiff, and 

giving each plaintiff a period for rebuttal. The testimony periods are separated from the 

1

 See 37 CFR §§ 2.120(a), 2.121 and TBMP § 403.01 (Timing of Discovery - In General). 

2

 See 37 CFR §§ 2.121(b)(1) and 2.121(c). 

3

 See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day interval

between each testimony period), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982). 

 

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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

 

discovery period by a 60-day interval, and from each other by 30-day intervals.4

 In an 

interference or concurrent use proceeding, a junior party is in the position of plaintiff and a 

senior party is in the position of defendant.5

A party may not take testimony outside of its assigned testimony period, except by stipulation of 

the parties approved by the Board, or, on motion, by order of the Board.6

 

Testimony periods may be rescheduled, extended, or reopened by stipulation of the parties 

approved by the Board, or on motion granted by the Board, or by order of the Board.7

 A 

stipulation or consented motion to extend or reopen testimony periods, or the discovery period 

and testimony periods, must be submitted to the Board and must be presented in the form used in 

a trial order, specifying the closing date for each period to be reset.8

 It is preferable, where an 

unconsented motion seeks an extension or a reopening of a testimony period or periods, or of the 

discovery period and testimony periods, that the motion request that the new period or periods be 

set to run from the date of the Board's decision on the motion.9

 

4

 See 37 CFR §§ 2.121(b)(2) and 2.121(c). Examples of trial schedules can be found in the Appendix of Forms.

5

 See 37 CFR §§ 2.96 and 2.99(e), and TBMP §§ 1005 and 1007. 

6

 See 37 CFR § 2.121(a)(1). See also M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) 

(untimely deposition stricken); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (opposer's 

discovery deposition of nonparty witness treated as testimony deposition taken by stipulation prior to trial); and

Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (discovery deposition of nonparty 

inadmissible as evidence under a notice of reliance filed by one party without express or implied consent of adverse 

party; should have taken deposition during trial period or at least moved to take trial testimony prior to assigned

testimony period). 

 Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's 

testimony deposition was taken two days prior to the opening of opposer's testimony period, but applicant first

raised an untimeliness objection in its brief on the case, objection held waived, since the premature taking of the 

deposition could have been corrected on seasonable objection). 

7

 See Fed. R. Civ. P. 6(b); 37 CFR §§ 2.121(a)(1), 2.121(c) and 2.121(d); and, for example, Fairline Boats plc v. 

New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion to extend testimony filed on last day with 

vague references to settlement and no detailed information concerning apparent difficulty in identifying and 

scheduling its witnesses for testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 

1999) (motion to extend denied where sparse motion contained insufficient facts on which to find good cause);

Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (motion to reopen to submit new evidence 

denied); and Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582, 1588 (TTAB 1997) (motion to reopen filed over

three months after close of testimony period, due to a docketing error, denied). See also TBMP §§ 501 and 509

regarding stipulations and motions to extend or reopen. 

8

 See 37 CFR § 2.121(d). 

9

 See TBMP § 509.02 (Form and Determination of Motions to Extend or Reopen). 

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The resetting of the closing date for discovery results in the automatic rescheduling of the 

testimony periods, without action by any party. However, the resetting of a party's time to 

respond to an outstanding request for discovery does not result in the automatic rescheduling of 

the discovery and/or testimony periods.10 When a party's time to respond to an outstanding 

request for discovery is reset, the discovery and/or testimony periods will be rescheduled only on 

stipulation of the parties approved by the Board, or on motion granted by the Board, or by order 

of the Board.11 

In Board inter partes proceedings, the taking of testimony depositions during the assigned 

testimony periods corresponds to the trial in court proceedings, and the trial period commences 

with the opening of the first testimony period.12 

702 Manner of Trial and Introduction of Evidence – In General 

The introduction of evidence in inter partes proceedings before the Board is governed by the 

Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the 

relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark 

cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations).13 

Within the parameters of these rules, there are a number of ways to introduce evidence into the 

record in a proceeding before the Board. Evidence may be introduced in the form of testimony 

depositions taken by a party during its testimony period, and documents and other exhibits may 

be made of record with appropriate identification and introduction by the witness during the 

course of the deposition.14 Certain specified types of evidence, including official records and 

printed publications as described in 37 CFR § 2.122(e) and discovery responses under 37 CFR § 

2.120(j), may, but need not be, introduced in connection with the testimony of a witness. Such 

evidence may instead be made of record by filing the materials with the Board under cover of a 

10 See PolyJohn Enterprises Corp. v. 1-800-Toilets, Inc., 61 USPQ2d 1860, 1861 (TTAB 2002) (mistaken belief

that resetting time to respond to discovery also extended discovery and testimony periods did not constitute 

excusable neglect to reopen). 

 

11 See 37 CFR § 2.121(a)(1).

12 See TBMP § 504.01 (Time for Filing Judgment on Pleadings) and authorities cited therein. See also Yamaha

International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board

proceedings approximate the proceedings in a courtroom trial) and Time Warner Entertainment Company v. Jones.

65 USPQ2d 1650 (TTAB 2002) (trial in a Board proceeding takes place during the testimony periods). Cf. TBMP § 

528.02 (Time for Filing Motion for Summary Judgment). 

13 37 CFR § 2.122(a). Cf. TBMP §§ 101.01 and 101.02. 

 

14 See generally, TBMP § 703 regarding testimony depositions. See also TBMP § 704.13 regarding introducing

testimony from another proceeding, and TBMP § 530 regarding motions to use testimony from another proceeding. 

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notice of reliance during the testimony period of the offering party.15 In addition, the parties may 

enter into a wide variety of stipulations concerning the timing and/or introduction of specified 

matter into evidence.16 For example, the parties may stipulate that matter otherwise improper for 

a notice of reliance (such as documents obtained by production under Fed. R. Civ. P. 34) may be 

introduced in that manner, that testimony may be submitted in the form of an affidavit, that a 

party may rely on its own discovery responses or that notices of reliance can be filed after the 

testimony periods have closed. There may also be circumstances where improperly offered or 

otherwise noncomplying evidence may nevertheless be deemed stipulated into the record where, 

for example, no objection to the evidence is raised and/or the nonoffering party treats the 

evidence as being of record.17 

A discussion of the time and manner of taking testimony depositions and introducing evidence is 

presented in the sections that follow. 

Because the Board is an administrative tribunal, its rules and procedures differ in some respects 

from those prevailing in the Federal district courts.18 For example, proceedings before the Board 

are conducted in writing, and the Board's actions in a particular case are based on the written 

record therein.19 The Board does not preside at the taking of testimony. Rather, all testimony is 

taken out of the presence of the Board, and the written transcripts thereof, together with any 

exhibits thereto, are then submitted to the Board.20 

Depositions may be noticed for any reasonable place in the United States.21 As a result, parties 

do not have to travel to the offices of the Board, or to the geographic area surrounding the 

15 See generally, TBMP § 704.02 regarding the types of evidence that may be submitted by notice of reliance and

the requirements for the introduction of such evidence by notice of reliance. See also Sports Authority Michigan

Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2001) (notices of reliance must be filed before closing

date of party's testimony period). 

16 See TBMP § 705 regarding stipulated evidence. 

17 See generally TBMP § 704 regarding the introduction of other evidence. 

18 See Yamaha International Corp. v. Hoshino Gakki Co., supra and La Maur, Inc. v. Bagwells Enterprises, Inc., 

193 USPQ 234, 235 (Comm'r 1976). Cf. TBMP §§ 102.03 (General Description of Board Proceedings) and 502.01 

(Available Motions). For a discussion concerning the general nature of trials in proceedings before the Board, see 

Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979); and Litton Business Systems, Inc.

v. J. G. Furniture Co., 190 USPQ 428, recon. denied, 190 USPQ 431 (TTAB 1976). 

 

19 See 37 CFR § 2.191. 

 

20 See Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552 (TTAB 1991) and La Maur, Inc. v.

Bagwells Enterprises, Inc., supra. 

21 See 37 CFR § 2.123(c). 

 

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Board's offices, to take their testimony. A party to a proceeding before the Board need never 

come to the offices of the Board at all, unless the party wishes to argue its case at oral hearing 

(and an oral hearing is held only if requested by a party to the proceeding--see 37 CFR § 

2.129(a)). 

The papers and other materials filed with the Board during the course of an inter partes 

proceeding are kept, during the course of the proceeding, in the physical possession of the 

Board.22 However, no paper, document, exhibit, etc. will be considered as evidence in the case

unless it has been introduced in evidence in accordance with the applicable rules.23 

703 Taking and Introducing Testimony 

703.01 Oral Testimony Depositions 

703.01(a) In General

A testimony deposition is a device used by a party to a Board inter partes proceeding to 

present evidence in support of its case. Testimony is taken out of the presence of the 

Board, on oral examination or written questions, and the written transcripts thereof, 

together with any exhibits thereto, are then submitted to the Board.24 During a party's 

testimony period, testimony depositions are taken, by or on behalf of the party, of the 

party himself or herself (if the party is an individual), or of an official or employee of the 

party, or of some other witness testifying (either willingly or under subpoena) in behalf of 

the party.25 

Testimony depositions are the means by which a party may introduce into the record not 

only the testimony of its witnesses, but also those documents and other exhibits that may 

not be made of record by notice of reliance.26 However, only evidence admissible under 

the applicable rules of evidence may properly be adduced during a testimony deposition; 

inadmissibility is a valid ground for objection.27 

22 See TBMP § 120 (Access to Files). 

23 See 37 CFR § 2.123(l), and TBMP § 706 (Noncomplying Evidence). 

24 See TBMP § 702 (Manner of Trial and Introduction of Evidence). See also TBMP § 502.01 (Available Motions). 

25 See TBMP § 404.02 (Discovery Depositions Compared to Testimony Depositions) and authorities cited therein. 

26 See generally TBMP § 704 describing types of evidence admissible by notice of reliance. 

27 See 37 CFR §§ 2.122(a) and 2.123(k), and TBMP § 707.03 (Objections to Trial Testimony Depositions).

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For a comparison of testimony depositions and discovery depositions, see TBMP § 

404.09. 

703.01(b) Form of Testimony 

37 CFR § 2.123(a) 

(1) The testimony of witnesses in inter partes cases may be taken by depositions upon 

oral examination as provided by this section or by depositions upon written questions as 

provided by § 2.124. If a party serves notice of the taking of a testimonial deposition 

upon written questions of a witness who is, or will be at the time of the deposition, 

present within the United States or any territory which is under the control and 

jurisdiction of the United States, any adverse party may, within fifteen days from the date 

of service of the notice, file a motion with the Trademark Trial and Appeal Board, for 

good cause, for an order that the deposition be taken by oral examination.

(2) A testimonial deposition taken in a foreign country shall be taken by deposition upon 

written questions as provided by § 2.124, unless the Board, upon motion for good cause, 

orders that the deposition be taken by oral examination, or the parties so stipulate. 

(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before 

any person authorized to administer oaths, at any place, upon any notice, and in any 

manner, and when so taken may be used like other depositions. By written agreement of 

the parties, the testimony of any witness or witnesses of any party, may be submitted in 

the form of an affidavit by such witness or witnesses. The parties may stipulate in writing 

what a particular witness would testify to if called, or the facts in the case of any party 

may be stipulated in writing. 

Ordinarily, the testimony of a witness may be taken either on oral examination pursuant 

to 37 CFR § 2.123, or by deposition on written questions pursuant to 37 CFR § 2.124.28 

However, if a party serves notice of the taking of a testimony deposition on written 

questions of a witness who is, or will be at the time of the deposition, present within the 

United States (or any territory that is under the control and jurisdiction of the United 

States), any adverse party may, within 15 days from the date of service of the notice (20 

days if service of the notice was by first-class mail, "Express Mail," or overnight courier-

-see 37 CFR § 2.119(c)), file a motion with the Board, for good cause, for an order that 

28 See 37 CFR § 2.123(a)(1). For information concerning testimony depositions on written questions, see TBMP § 

703.02. 

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the deposition be taken by oral examination.29 What constitutes good cause to take an 

oral deposition is determined on a case-by-case basis.30

In addition, a testimony deposition taken in a foreign country must be taken by deposition 

on written questions, unless the Board, on motion for good cause, orders that the 

deposition be taken by oral examination, or the parties so stipulate.31 

By written agreement of the parties, the testimony of any witness or witnesses of any 

party may be submitted in the form of an affidavit by such witness or witnesses.32 The 

parties may also stipulate in writing the facts in the case of any party, or what a particular 

witness would testify to if called, or that a party may use a discovery deposition as 

testimony.33 

29 37 CFR § 2.123(a)(1). See Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080

(TTAB 1990), corrected at 19 USPQ2d 1479 (TTAB 1990) (good cause to take oral deposition of expert witness, 

during rebuttal testimony period); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980)

(good cause shown where deponents were former employees of respondent and present employees of petitioner and 

were being deposed for first time during rebuttal period); and TBMP § 531 (Motion that Deposition on Written

Questions be Taken Orally). 

30 See Feed Flavors Inc. v. Kemin Industries, Inc., supra at 591 and TBMP § 531. 

31 See 37 CFR § 2.123(a)(2). See also TBMP § 520 (Motion to take Foreign Deposition Orally) and, with respect to 

discovery depositions, Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); 37 CFR § 2.120(c)(1); TBMP § 

404.03(b) (Person Residing in Foreign Country – Party); and Orion Group Inc. v. Orion Insurance Co. P.L.C., 12

USPQ2d 1923, 1925-26 (TTAB 1989) (good cause to take oral deposition of witness in England under the 

circumstances and since fares to England were not that much greater than fares within U.S. and no translation was 

required).

32 37 CFR § 2.123(b). See Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364, 1365 n.3

(TTAB 1999) ("statement" with exhibits by defendant's officer stricken where there was no agreement that 

defendant could file testimony in form of affidavit or declaration); Hard Rock Café Licensing Corp. v. Elsea, 48 

USPQ2d 1400, 1403-04 n.9 (TTAB 1998) (no agreement; officer's affidavit not considered); McDonald's Corp. v. 

McKinley, 13 USPQ2d 1895, 1897 n.3-4 (TTAB 1989) (although parties had stipulated to submission of testimony

by affidavit, opposer's objection was well taken because applicant's unsworn statement did not constitute testimony);

Chase Manhattan Bank, N.A. v. Life Care Services Corp., 227 USPQ 389, 390 (TTAB 1985) (affidavits submitted

by agreement of the parties); Oxy Metal Industries Corp. v. Transene Co., 196 USPQ 845, 847 n.20 (TTAB 1977) 

(stipulation to presentation of evidence by affidavit evidence reduces cost of litigation); and National Distillers and

Chemical Corp. v. Industrial Condenser Corp., 184 USPQ 757, 758-59 (TTAB 1974) (both parties submitted 

stipulated testimony and exhibits). 

 Cf. Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1425 n.8 (TTAB 1993) 

(objection waived where although there was no such agreement, plaintiff did not object to declarations with exhibits 

submitted by defendant and moreover considered the evidence as if properly of record). 

33 37 CFR § 2.123(b). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990)

(stipulation for use of discovery deposition as testimony deposition) and Oxy Metal Industries Corp. v. Transene

Co., supra, at 847 n.20 (litigation expenses can be saved where parties agree to introduce all uncontroverted facts by

affidavit or stipulated facts and provide balance through deposition testimony). 

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37 CFR § 2.123(a) 

 

703.01(c) Time for Taking Testimony 

A party may take testimony only during its assigned testimony period, except by 

stipulation of the parties approved by the Board, or, on motion, by order of the Board.34 

For information concerning the assignment of testimony periods, and the rescheduling, 

extension, and reopening thereof, see TBMP §§ 509 and 701. 

703.01(d) Time and Place of Deposition 

(1) The testimony of witnesses in inter partes cases may be taken by depositions upon 

oral examination as provided by this section or by depositions upon written questions as 

provided by § 2.124. If a party serves notice of the taking of a testimonial deposition 

upon written questions of a witness who is, or will be at the time of the deposition, 

present within the United States or any territory which is under the control and 

jurisdiction of the United States, any adverse party may, within fifteen days from the date 

of service of the notice, file a motion with the Trademark Trial and Appeal Board, for 

good cause, for an order that the deposition be taken by oral examination.

(2) A testimonial deposition taken in a foreign country shall be taken by deposition upon 

written questions as provided by § 2.124, unless the Board, upon motion for good cause, 

orders that the deposition be taken by oral examination, or the parties so stipulate. 

 * * * * 

(c) Notice of examination of witnesses. Before the depositions of witnesses shall be 

taken by a party, due notice in writing shall be given to the opposing party or parties, as 

provided in § 2.119(b), of the time when and place where the depositions will be taken, of 

the cause or matter in which they are to be used, and the name and address of each 

witness to be examined; if the name of a witness is not known, a general description 

sufficient to identify the witness or the particular class or group to which the witness 

belongs, together with a satisfactory explanation, may be given instead. Depositions may 

be noticed for any reasonable time and place in the United States. A deposition may not 

be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this 

section. No party shall take depositions in more than one place at the same time, nor so 

nearly at the same time that reasonable opportunity for travel from one place of 

examination to the other is not available. 

34 See 37 CFR § 2.121(a)(1). See also TBMP § 701 (Time of Trial) and authorities cited therein.

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A testimony deposition may be noticed for any reasonable time during the deposing 

party's testimony period.35 A testimony deposition may not be taken outside the deposing 

party's testimony period except by stipulation of the parties approved by the Board, or, on 

motion, by order of the Board.36 

A testimony deposition to be taken in the United States may be noticed for any 

reasonable place.37 A party may not take depositions in more than one place at the same 

time, nor so nearly at the same time that reasonable opportunity for travel from one place 

of examination to the other is not available.38 

A deposition may not be noticed for a place in a foreign country, unless the deposition is 

to be taken on written questions as provided by 37 CFR § 2.124, or unless the Board, on 

motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral 

examination.39 

If the parties so stipulate in writing, a deposition may be taken before any person 

authorized to administer oaths, at any place, on any notice, and in any manner, and when 

so taken may be used like any other deposition.40 

703.01(e) Notice of Deposition

37 CFR § 2.123(c) Notice of examination of witnesses. Before the depositions of 

witnesses shall be taken by a party, due notice in writing shall be given to the opposing 

party or parties, as provided in § 2.119(b), of the time when and place where the 

depositions will be taken, of the cause or matter in which they are to be used, and the 

name and address of each witness to be examined; if the name of a witness is not known, 

35 See 37 CFR § 2.123(c). 

36 See 37 CFR § 2.121(a)(1) and Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 n.1 (TTAB 1998) (stipulation 

that testimony deposition of applicant's witness could be taken prior to its testimony period on the same day as 

opposer's witness to achieve efficiencies in time and cost). See also TBMP § 701 (Time of Trial) and authorities 

cited therein. Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n..2 (TTAB 1991)

(where opposer's testimony deposition was taken two days prior to the opening of opposer's testimony period, and 

applicant first raised an untimeliness objection in its brief on the case, objection held waived, since the premature 

taking of the deposition could have been corrected on seasonable objection). 

37 See 37 CFR § 2.123(c). 

38 See 37 CFR § 2.123(c). 

39 See 37 CFR §§ 2.123(a)(2) and 2.123(c). See also TBMP § 703.01(b) (Form of Testimony). 

40 See 37 CFR § 2.123(b). 

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a general description sufficient to identify the witness or the particular class or group to 

which the witness belongs, together with a satisfactory explanation, may be given 

instead. Depositions may be noticed for any reasonable time and place in the United 

States. A deposition may not be noticed for a place in a foreign country except as 

provided in paragraph (a)(2) of this section. No party shall take depositions in more 

than one place at the same time, nor so nearly at the same time that reasonable 

opportunity for travel from one place of examination to the other is not available. 

Before the oral depositions of witnesses may be taken by a party, the party must give due 

(i.e., reasonable) notice in writing to every adverse party.41

The notice must specify the time and place the depositions will be taken, the cause or 

matter in which they are to be used, and the name and address of each witness to be 

examined. If the name of a witness is not known, the notice must include a general 

description sufficient to identify the witness or the particular class or group to which the 

witness belongs, together with a satisfactory explanation.42 

If the parties so stipulate in writing, a deposition may be taken before any person 

authorized to administer oaths, at any place, on any notice, and in any manner, and when 

so taken may be used like any other deposition.43 

41 37 CFR § 2.123(c). See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one

and two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); 

Electronic Industries Assn v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable);

Penguin Books Ltd. V. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert

witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make 

witness again available at a future date); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 

hours not sufficient time to prepare for deposition); and Hamilton Burr Publishing Co. v. E. W. Communications, 

Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable 

where deposition was held a short distance from applicant's attorney's office and where no specific prejudice was 

shown). See also TBMP § 533.02 (Motion to Strike on Ground of Improper or Inadequate Notice). Cf. TBMP § 

404.05 (Notice of [Discovery] Deposition). 

42 See 37 CFR § 2.123(c). See also Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) 

(testimony not considered where notice failed to specify name of party being deposed), different results reached on 

reh'g, 3 USPQ2d 1708 (TTAB 1984); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352, 353 (TTAB 

1976) (testimony stricken where notice identified one witness and indicated that "possibly others will testify"; and

where opposer proceeded to take testimony of unidentified witness, applicant objected, did not cross-examine the 

witness, and moved to strike testimony); and Allstate Life Insurance Co. v. Cuna International, Inc., 169 USPQ 313, 

314 (TTAB 1971) (objections sustained where identification of possible witnesses as "such other persons as may be 

called" insufficient to identify witness or group to which witness belongs), aff'd without opinion, 487 F.2d 1407, 180 

USPQ 48 (CCPA 1973). Cf. TBMP § 404.05 (Notice of [Discovery] Deposition). 

43 37 CFR § 2.123(b). 

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Ordinarily, a notice of oral deposition need not be filed with the Board, except as part of

the completed deposition.44 However, if a certified copy of the notice of deposition is, 

for some reason, required for use before a Federal district court, the notice of deposition 

must be filed with the Board for purposes of certification.45 

For information concerning the raising of an objection to a testimony deposition on the 

ground of improper or inadequate notice, see 37 CFR § 2.123(e)(3) and TBMP § 533.02. 

 

703.01(f) Securing Attendance of Unwilling Adverse Party or Nonparty 

703.01(f)(1) In General 

Normally, during a party's testimony period, testimony depositions are taken, by 

or on behalf of the party, of the party himself or herself (if the party is an 

individual), or of an official or employee of the party, or of some other witness 

who is willing to appear voluntarily to testify on behalf of the party. These 

testimony depositions may be taken, at least in the United States, on notice alone. 

However, where a party wishes to take the testimony of an adverse party or 

nonparty, or an official or employee of an adverse party or nonparty, and the 

proposed witness is not willing to appear voluntarily to testify, the deposition 

may not be taken on notice alone. Rather, the party that wishes to take the 

deposition must take steps, discussed below, to compel the attendance of the 

witness. If the witness resides in a foreign country, the party may not be able 

to take the deposition.46 

44 See Rany L. Simms, TIPS FROM THE TTAB: Whether and When to File Papers During Trademark

Proceedings, 67 Trademark Rep. 175 (1977), and 37 CFR § 2.123(f). 

45 See TBMP §§ 122 (Certification) and 703.01(f)(2) (Securing Attendance of Unwilling Witness Residing in U.S.). 

46 See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully 

attempting to take testimony deposition on written questions of adverse party's officer on notice alone, opposer 

obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v. Ferro Corp., 189 

USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena issued from the U.S. district

court where witness is located and have same properly served on witness with sufficient time to apprise him that he

is under order to appear) ; Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial 

and Appeal Board, 75 Trademark Rep. 323, 396-397 (1985); Rany L. Simms, TIPS FROM THE TTAB: Compelling 

the Attendance of a Witness in Proceedings Before the Board, 75 Trademark Rep. 296 (1985); and TBMP §§

703.01(f)(2) (securing attendance of unwilling witness residing in U.S.), 703.01(f)(3) (securing attendance of

unwilling witness residing in foreign country), and 703.02 (testimony depositions on written questions). See also

Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn 

from adverse party's failure to appear and produce requested documents at testimony deposition where party 

attempted to secure attendance by notice alone), aff'd, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984). 

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703.01(f)(2) Unwilling Witness Residing in United States 

If a party wishes to take the trial testimony of an adverse party or nonparty 

(or an official or employee of an adverse party or nonparty) residing in the 

United States, and the proposed witness is not willing to appear voluntarily to 

testify, the party wishing to take the testimony must secure the attendance of 

the witness by subpoena.47 

The subpoena must be issued, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 

45, from the United States district court in the Federal judicial district where 

the witness resides or is regularly employed. Occasionally district courts may 

request a “matter number” for the issuance of a subpoena. If that is the case, 

the requesting party should obtain one from the court or determine whether 

the Board’s proceeding number will satisfy the court. If, for any reason, a 

certified copy of the notice of deposition is required in connection with the 

subpoena, such as for purposes of a motion to quash the subpoena, or a 

motion to enforce the subpoena, the interested party should contact the clerk 

of the court to determine whether the court will require a formal certified

copy (i.e., a certified copy bearing a USPTO seal) of the notice.48 A certified 

copy of a notice of deposition is a copy prepared by the party noticing the 

deposition, and certified by the USPTO as being a true copy of the notice of 

deposition filed in the proceeding before the Board. A copy of a notice of

deposition cannot be certified by the USPTO unless it has been filed in the 

Board proceeding.49 

If a person named in a subpoena compelling attendance at a testimony 

deposition fails to attend the deposition, or refuses to answer a question 

propounded at the deposition, the deposing party must seek enforcement from

the United States district court that issued the subpoena. Similarly, any 

request to quash a subpoena must be directed to the United States district 

47 See Health-Tex Inc. v. Okabashi (U.S.) Corp., supra; Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582 

(TTAB 1976); Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal

Board, supra; and Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in

Proceedings Before the Board, supra. Cf. TBMP § 404.03(a)(2) (securing attendance of nonparty residing in U.S. at 

discovery deposition).

48 NOTE: The Board no longer provides verified copies of filings. 

49 For further information relating to USPTO certification of a notice of deposition, see TBMP § 122 

(Certification). 

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court that issued the subpoena. The Board has no jurisdiction over 

depositions by subpoena.50 

 

703.01(f)(3) Unwilling Witness Residing in Foreign Country 

There is no certain procedure for obtaining, in a Board inter partes 

proceeding, the trial testimony deposition of a witness who resides in a 

foreign country, is an adverse party or a nonparty (or an official or employee 

of an adverse party or nonparty), and is not willing to appear voluntarily to 

testify. However, the deposing party may be able to obtain the testimony 

deposition of such a witness through the letter rogatory procedure or The 

Hague Convention letter of request procedure.51 

For information concerning these procedures, see TBMP § 404.03(c)(2). 

703.01(g) Persons Before Whom Depositions May be Taken 

37 CFR § 2.123(d) Persons before whom depositions may be taken. Depositions may be

taken before persons designated by Rule 28 of the Federal Rules of Civil Procedure. 

Fed. R. Civ. P. 28. Persons Before Whom Depositions May Be Taken 

(a) Within the United States. Within the United States or within a territory or insular

possession subject to the jurisdiction of the United States, depositions shall be taken 

before an officer authorized to administer oaths by the laws of the United States or of the 

place where the examination is held, or before a person appointed by the court in which 

the action is pending. A person so appointed has power to administer oaths and take 

testimony. The term officer as used in Rules 30, 31 and 32 includes a person appointed 

by the court or designated by the parties under Rule 29. 

(b) In Foreign Countries. Depositions may be taken in a foreign country (1) pursuant to 

any applicable treaty or convention, or (2) pursuant to a letter of request (whether or not 

captioned a letter rogatory), or (3) on notice before a person authorized to administer 

50 See, for example, In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201, 201 (D.Del. 1973) (no power to grant 

protective order with respect to depositions taken by subpoena); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 

1304 n.3 (TTAB 1987) (no authority to quash subpoena); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ

318, 319 n.2 (TTAB 1971) (opposer’s allegation in its brief that applicant defied a subpoena to produce witnesses is 

a matter opposer should have pursued before the court that issued the subpoena); Saul Lefkowitz and Janet E. Rice, 

Adversary Proceedings Before the Trademark Trial and Appeal Board, supra); and Rany L. Simms, TIPS FROM

THE TTAB: Compelling the Attendance of a Witness in Proceedings Before the Board, supra. 

51 See Rany L. Simms, TIPS FROM THE TTAB: Compelling the Attendance of a Witness in Proceedings Before 

the Board, 75 Trademark Rep. 296 (1985). 

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oaths in the place where the examination is held, either by the law thereof or by the law 

of the United States, or (4) before a person commissioned by the court, and a person so 

commissioned shall have the power by virtue of the commission to administer any 

necessary oath and take testimony. A commission or a letter of request shall be issued on 

application and notice and on terms that are just and appropriate. It is not requisite to 

the issuance of a commission or a letter of request that the taking of the deposition in any 

other manner is impracticable or inconvenient; and both a commission and a letter of 

request may be issued in proper cases. A notice of commission may designate the person 

before whom the deposition is to be taken either by name or descriptive title. A letter of 

request may be addressed "To the Appropriate Authority in [here name the country]." 

When a letter of request or any other device is used pursuant to any applicable treaty or 

convention, it shall be captioned in the form prescribed by that treaty or convention. 

Evidence obtained in response to a letter of request need not be excluded merely because 

it is not a verbatim transcript, because the testimony was not taken under oath, or 

because of any similar departure from the requirements for depositions taken within the 

United States under these rules. 

(c) Disqualification for Interest. No deposition shall be taken before a person who is a 

relative or employee or attorney or counsel of any of the parties, or is a relative or 

employee of such attorney or counsel, or is financially interested in the action.

Depositions in Board inter partes proceedings may be taken before the persons described 

in Fed. R. Civ. P. 28.52 

Thus, in the United States (or in any territory or insular possession subject to the 

jurisdiction of the United States) a Board proceeding testimony deposition "shall be taken 

before an officer authorized to administer oaths by the laws of the United States or of the 

place where the deposition is held, or before a person appointed by the court in which the 

action is pending."53 As a practical matter, Board proceeding depositions taken in the 

United States are usually taken before a court reporter who is authorized to administer 

oaths in the jurisdiction where the deposition is taken. 

In a foreign country, a Board proceeding testimony deposition may be taken pursuant to 

Fed. R. Civ. P. 28(b). This means, for example, that a Board proceeding testimony 

deposition taken of a willing witness in a foreign country usually may be taken on notice 

before a United States consular official, or before anyone authorized by the law of the 

foreign country to administer oaths therein. Some countries, however, may prohibit the 

taking of testimony within their boundaries for use in any other country, including the 

52 37 CFR § 2.123(d). 

53 See Fed. R. Civ. P. 28(a).

 

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United States, even though the witness is willing; or may permit the taking of testimony 

only if certain procedures are followed.54 A party which wishes to take a testimony 

deposition in a foreign country should first consult with local counsel in the foreign 

country, and/or with the Office of Citizens Consular Services, Department of State, in 

order to determine whether the taking of the deposition will be permitted by the foreign 

country, and, if so, what procedure must be followed. The testimony of an unwilling 

adverse party or nonparty witness may be taken in a foreign country, if at all, only by the 

letter rogatory procedure, or by the letter of request procedure provided under the Hague 

Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, or by any 

other procedure provided for the purpose by any future treaty into which the United 

States may enter.55 

If the parties so stipulate in writing (and if permitted by the laws of the foreign country, 

in the case of a deposition to be taken in a foreign country), a deposition may be taken 

before any person authorized to administer oaths, at any place, on any notice, and in any 

manner, and when so taken may be used like any other deposition.56 

703.01(h) Examination of Witnesses 

37 CFR § 2.123(e) Examination of witnesses. 

(1) Each witness before testifying shall be duly sworn according to law by the officer 

before whom his deposition is to be taken. 

(2) The deposition shall be taken in answer to questions, with the questions and answers 

recorded in their regular order by the officer, or by some other person (who shall be 

subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the 

presence of the officer except when the officer's presence is waived on the record by 

agreement of the parties. The testimony shall be taken stenographically and transcribed, 

unless the parties present agree otherwise. In the absence of all opposing parties and 

their attorneys or other authorized representatives, depositions may be taken in 

longhand, typewriting, or stenographically. Exhibits which are marked and identified at 

the deposition will be deemed to have been offered into evidence, without any formal 

offer thereof, unless the intention of the party marking the exhibits is clearly to the 

contrary. 

54 See Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2083 (1994). 

55 Cf. TBMP §§ 404.03(c) (concerning discovery deposition of nonparty residing in foreign country) and 

703.01(f)(3) (securing attendance of unwilling witness residing in foreign country). 

56 37 CFR § 2.123(b). 

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(3) Every adverse party shall have full opportunity to cross-examine each witness. If the 

notice of examination of witnesses which is served pursuant to paragraph (c) of this 

section is improper or inadequate with respect to any witness, an adverse party may 

cross-examine that witness under protest while reserving the right to object to the receipt 

of the testimony in evidence. Promptly after the testimony is completed, the adverse 

party, if he wishes to preserve the objection, shall move to strike the testimony from the 

record, which motion will be decided on the basis of all the relevant circumstances. A

motion to strike the testimony of a witness for lack of proper or adequate notice of 

examination must request the exclusion of the entire testimony of that witness and not 

only a part of that testimony. 

(4) All objections made at the time of the examination to the qualifications of the officer 

taking the deposition, or to the manner of taking it, or to the evidence presented, or to the 

conduct of any party, and any other objection to the proceedings, shall be noted by the 

officer upon the deposition. Evidence objected to shall be taken subject to the objections. 

37 CFR § 2.123(g) Form of deposition. (1) The pages of each deposition must be 

numbered consecutively, and the name of the witness plainly and conspicuously written 

at the top of each page. The deposition must be in written form. The questions 

propounded to each witness must be consecutively numbered unless the pages have 

numbered lines. Each question must be followed by its answer. 

Fed. R. Civ. P. 30(b)(7) The parties may stipulate in writing or the court may upon 

motion order that a deposition be taken by telephone or other remote electronic means. 

For the purposes of this rule and Rules 28(a), 37(a)(1), and 37(b)(1) a deposition taken 

by such means is taken in the district and at the place where the deponent is to answer 

questions. 

Before testifying, a witness whose testimony deposition is being taken for use in a Board 

inter partes proceeding must be duly sworn, according to law, by the officer before whom

the deposition is to be taken.57 

The deposition is taken in answer to questions, and the questions and answers are 

recorded in order by the officer, or by some other person (who is subject to the provisions 

of Fed. R. Civ. P. 28) in the presence of the officer, except when the officer's presence is 

waived on the record by agreement of the parties. The testimony is taken 

57 37 CFR § 2.123(e)(1). See Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) 

(objection to deposition taken in Honduras that officer designated in notice did not take deposition and that the 

transcript did not show due administration of the oath overruled where the person who conducted the deposition had

authority to do so under Honduran law and the oath was administered in standard manner under Honduran law). See 

also TBMP § 703.01(g) (Persons Before Whom Depositions May be Taken). 

 

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stenographically and transcribed, unless the parties present agree otherwise. If no 

adverse party, or its attorney or other authorized representative, attends the deposition, 

the testimony may be taken in longhand, typewriting, or stenographically.58 

The Board does not accept videotape depositions. A deposition must be submitted to the 

Board in written form.

59 

On stipulation of the parties, or on motion granted by the Board, a deposition may be 

taken or attended by telephone.60 A deposition taken by telephone is taken in the district 

and at the place where the witness is to answer the questions propounded to him or her. 

Exhibits which are marked and identified at the deposition will be deemed to have been 

offered in evidence, even if no formal offer thereof is made, unless the intention of the

party marking the exhibits is clearly to the contrary.61 

Every adverse party must be given a full opportunity to cross-examine the witness. If the 

notice of deposition served by a party is improper or inadequate with respect to the 

witness, an adverse party may cross-examine the witness under protest while reserving 

the right to object to the receipt of the testimony in evidence.62 

All objections made at the time of the taking of a testimony deposition as to the 

qualifications of the officer taking the deposition, the manner of taking the deposition, the 

evidence presented, the conduct of any party, or any other objection to the proceedings, 

are noted by the officer upon the deposition. Evidence objected to is taken subject to the 

objections.63 

58 37 CFR § 2.123(e)(2).

59 37 CFR §§ 2.123(g) and 2.126.. 

60 See Fed. R. Civ. P. 30(b)(7), and Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552-53

(TTAB 1991) (Board granted request to attend deposition by telephone noting that trademark rules do not

specifically provide for or prohibit depositions by telephone and that federal court practice favors use of

technological benefits). 

61 37 CFR § 2.123(e)(2). Cf. Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1838 n.4 (TTAB 

1989) (decided prior to the rule change which eliminated "formal" introduction of exhibits). 

62 37 CFR § 2.123(e)(3). For information concerning the raising of an objection to a testimony deposition on the 

ground of improper or inadequate notice, see 37 CFR § 2.123(e)(3), and TBMP §§ 533.02 and 707.03(b)(2).

63 37 CFR § 2.123(e)(4). See also TBMP § 707.03 (Objections to Trial Testimony Depositions). 

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Questions to which an objection is made ordinarily should be answered subject to the 

objection, but a witness may properly refuse to answer a question asking for information 

that is, for example, privileged or confidential.64 For information concerning the 

propounding party's recourse if a witness not only objects to, but also refuses to answer, 

a particular question, see TBMP §§ 404.09 and 707.03(d) and authorities cited therein.

For further information concerning the raising of objections to testimony depositions, see 

TBMP §§ 533 and 707.03 and authorities cited therein. 

If the parties so stipulate in writing, a deposition may be taken before any person 

authorized to administer oaths, at any place, on any notice, and in any manner, and when 

so taken may be used like any other deposition.65 

703.01(i) Form of Deposition and Exhibits 

37 CFR § 2.123(g) Form of deposition. 

(1) The pages of each deposition must be numbered consecutively, and the name of the 

witness plainly and conspicuously written at the top of each page. The deposition must 

be in written form. The questions propounded to each witness must be consecutively 

numbered unless the pages have numbered lines. Each question must be followed by its 

answer. 

(2) Exhibits must be numbered or lettered consecutively and each must be marked with 

the number and title of the case and the name of the party offering the exhibit. Entry and 

consideration may be refused to improperly marked exhibits. 

(3) Each deposition must contain an index of the names of the witnesses, giving the 

pages where their examination and cross-examination begin, and an index of the exhibits, 

briefly describing their nature and giving the pages at which they are introduced and 

offered in evidence. 

37 CFR § 2.125(d) Each transcript shall comply with § 2.123(g) with respect to 

arrangement, indexing and form. 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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: 

64 See TBMP § 404.09 (Discovery Depositions Compared to Testimony Depositions) and authorities cited therein. 

65 37 CFR § 2.123(b). 

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(1) A paper submission must be printed in at least 11-point type and doublespaced, with text on one side only of each sheet; 

(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) 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) A paper submission must not be stapled or bound; 

(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) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a 

paper or CD-ROM submission. 

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM 

where the rules in this part or Board practice permit. A CD-ROM submission must 

identify the parties and case number and contain a list that clearly identifies the 

documents and exhibits contained thereon. This information must appear in the data 

contained in the CD-ROM itself, on a label affixed to the CD-ROM, and on the 

packaging for the CD-ROM. Text in a CD-ROM submission must be in at least 11-point 

type and double-spaced. A brief filed on CD-ROM must be accompanied by a single 

paper copy of the brief. A CD-ROM submission must be accompanied by a transmittal 

letter on paper that identifies the parties, the case number and the contents of the CDROM. 

(c) 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. 

 * * * * 

A deposition must be submitted to the Board in written form. The Board does not accept 

videotape depositions.

66 

66 37 CFR §§ 2.123(g) and 2.126. 

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The general requirements for submissions to the Board, including depositions and 

exhibits thereto, are specified in 37 CFR § 2.126.67 The particular requirements for the 

form of a written deposition are specified in 37 CFR § 2.123(g). 

Depositions may be submitted to the Board on paper, CD-ROM, or electronically over 

the Internet.

68 The requirements for each form of submission are set out in 37 CFR § 

2.126(a), (b) and (c), respectively. 

A paper deposition must be 8 to 8.5 inches wide and 11 to 11.69 inches long, and printed 

in at least 11-point type and double-spaced, with the text on one side only of each sheet. 

If a paper submission contains dividers, the dividers may not contain tabs or any devices 

that extend beyond the edges of the paper, and must be on the same size and weight paper 

as the submission. 

In addition, a paper deposition must not be stapled or bound. All paper submissions are 

scanned electronically into the Board's electronic information system and removing 

staples or binding prior to scanning is difficult and time-consuming, especially where 

papers have been bound by machine. Moreover, disassembling stapled or bound papers 

can damage pages, resulting in misfeeds to the scanning equipment and increasing the 

likelihood that pages will become disordered during scanning.69 

CD-ROM submissions are governed by part (b) of 37 CFR § 2.126, and the requirements 

for electronic submissions over the Internet can be found in part (c) of 37 CFR § 2.126. 

Submissions over the Internet are made through the Board's electronic filing system, 

ESTTA which is available on the USPTO web site.70 

Exhibits to a deposition are also subject to the requirements of 37 CFR § 2.126. If a 

deposition is submitted on paper, any exhibits pertaining to the deposition must be filed 

on paper or CD-ROM and comply with the requirements for a paper or CD-ROM 

submission.71 Exhibits pertaining to a deposition that is filed electronically must be filed 

electronically as an attachment to the deposition and conform to the requirements for 

67 See also TBMP § 106.03 (Form of Submissions). 

68 See 37 CFR § 2.126. 

69 See Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule, 

published in the Federal Register on September 26, 2003 at 68 FR 55748, 55760. 

70 See 37 CFR § 2.2(g). 

71 See 37 CFR § 2.126(a)(6).

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electronic submissions.72 Exhibits that are large, bulky, valuable, or breakable may be 

photographed or otherwise reproduced so that an appropriate paper or digitized image of 

the exhibits can be filed with the Board in lieu of the originals. The originals should, of 

course, be shown to every adverse party. Exhibits consisting of videotapes or audiotapes 

of commercials, demonstrations, etc., may be transferred to an appropriate electronic 

format for submission to the Board. 

As with any paper submission, paper exhibits may not contain tabs, dividers or any other 

devices that extend beyond the edges of the paper, and moreover, may not be stapled or 

bound. However, it would be acceptable to use binder clips, rubber bands, or other such 

means for containing the materials that would allow for easy separation of the papers for 

scanning. 

Confidential portions of the deposition and confidential exhibits must be submitted in

accordance with 37 CFR § 2.126(d). For further information concerning the submission 

of confidential information, see TBMP §§ 703.01(p) and 703.02(l).

Exhibits must be marked as specified in 37 CFR § 2.123(g)(2). The Board, in its 

discretion, may refuse to enter and consider improperly marked exhibits.73 

For information concerning deposition objections based on errors or irregularities in 

form, see TBMP § 707.03(c). 

703.01(j) Signature of Deposition by Witness 

37 CFR § 2.123(e)(5) When the deposition has been transcribed, the deposition shall be 

carefully read over by the witness or by the officer to him, and shall then be signed by the 

witness in the presence of any officer authorized to administer oaths unless the reading 

and the signature be waived on the record by agreement of all parties. 

The signature of a deposition by the witness is governed by 37 CFR § 2.123(e)(5). The 

deposition does not have to be signed in the presence of the officer before whom the 

deposition was taken. It may be signed in the presence of any officer authorized to 

administer oaths. 

72 See 37 CFR § 2.126(c). 

73 37 CFR § 2.123(g)(2). Cf. Tampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382, 1384 (TTAB 2000) 

(these requirements are for the convenience of the Board; improperly marked exhibits considered); Pass & Seymour,

Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (the Board has discretion to consider improperly marked

exhibits); and G. Douglas Hohein, TIPS FROM THE TTAB: Potpourri, 71 Trademark Rep. 163 (1981). 

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Reading and signature cannot be waived by mere agreement of the witness; the 

agreement of every party is required.74 

703.01(k) Certification and Filing of Deposition 

37 CFR § 2.123(f) Certification and filing of deposition. 

(1) The officer shall annex to the deposition his certificate showing: 

(i) Due administration of the oath by the officer to the witness before the 

commencement of his deposition;

(ii) The name of the person by whom the deposition was taken down, and whether, 

if not taken down by the officer, it was taken down in his presence; 

(iii) The presence or absence of the adverse party; 

(iv) The place, day, and hour of commencing and taking the deposition; 

(v) The fact that the officer was not disqualified as specified in Rule 28 of the 

 Federal Rules of Civil Procedure. 

(2) If any of the foregoing requirements in paragraph (f)(1) are waived, the certificate 

shall so state. The officer shall sign the certificate and affix thereto his seal of office, if 

he has such a seal. Unless waived on the record by an agreement, he shall then securely 

seal in an envelope all the evidence, notices, and paper exhibits, inscribe upon the 

envelope a certificate giving the number and title of the case, the name of each witness, 

and the date of sealing. The officer or the party taking the deposition, or its attorney or 

other authorized representative, shall then promptly forward the package to the address 

set out in § 1.1(a)(2)(i). If the weight or bulk of an exhibit shall exclude it from the 

envelope, it shall, unless waived on the record by agreement of all parties, be 

authenticated by the officer and transmitted by the officer or the party taking the 

deposition, or its attorney or other authorized representative, in a separate package 

marked and addressed as provided in this section. 

37 CFR § 2.125 Filing and service of testimony. 

(a) One copy of the transcript of testimony taken in accordance with § 2.123, together 

with copies of documentary exhibits and duplicates or photographs of physical exhibits, 

shall be served on each adverse party within thirty days after completion of the taking of 

that testimony. If the transcript with exhibits is not served on each adverse party within 

thirty days or within an extension of time for the purpose, any adverse party which was 

not served may have remedy by way of a motion to the Trademark Trial and Appeal 

74 See 37 CFR § 2.123(e)(5). See alsoTampa Rico Inc. v. Puros Indios Cigars Inc., supra at 1383 (TTAB 2000) 

(where witness did not sign his deposition, the defect was curable and allowed time to file and serve a signed copy) 

and Gary D. Krugman, TIPS FROM THE TTAB: Testimony Depositions, 70 Trademark Rep. 353 (1980). Cf.

Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) (depositions which were 

not signed and included no waiver were nevertheless considered where no objections were made). 

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Board to reset such adverse party's testimony and/or briefing periods, as may be 

appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on 

an adverse party after having been ordered to do so by the Board, the Board, in its 

discretion, may strike the deposition, or enter judgment as by default against the 

deposing party, or take any such other action as may be deemed appropriate. 

* * * * 

(c) One certified transcript and exhibits shall be filed with the Trademark Trial and 

Appeal Board. Notice of such filing shall be served on each adverse party and a copy of 

each notice shall be filed with the Board. 

The certification and filing of a deposition are governed by 37 CFR § 2.123(f).75 The 

certified transcript, with exhibits, should be sent to the Board at its mailing address, i.e., 

Commissioner of Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514. 

The certified transcript and exhibits must be filed with the Board.76 The Board will 

accept transcripts of testimony depositions at any time prior to the submission of the case 

for final decision.77 In addition, a notice of reliance on the deposition transcript need not 

(and should not) be filed.78 However, notice of the filing of the certified transcript, and 

accompanying exhibits, with the Board must be served on each adverse party. A copy of 

each such notice must also be filed with the Board.79 In addition, one copy of the 

deposition transcript, together with copies, duplicates, or photographs of the exhibits 

thereto, must be served on each adverse party within 30 days after completion of the 

taking of the testimony, or within an extension of time for the purpose.80 For information 

75 The Board interprets "promptly forward," in 37 CFR § 2.123(f)(2), as meaning forwarded at any time prior to the 

submission of the case for final decision. See authorities cited in note 69 infra. 

76 See 37 CFR § 2.125(c). 

77 See Notice of Final Rulemaking, published in the Federal Register on September 9, 1998 at 63 FR 48081 and

comments and responses published in the notice in regard to amendment of 37 CFR §§ 2.123(f) and 2.125(c). See 

also Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392 n.6 (TTAB 1991)

(where the wording "promptly filed" in an earlier version of Rule 2.125(c) was construed as meaning filed at any

time prior to final hearing). 

78 See, for example, Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897, 1898 n.2 (TTAB 1988) and

Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.1 (TTAB 1982) (notice of reliance on exhibits 

introduced in connection with testimony superfluous). 

79 See 37 CFR § 2.125(c). See also Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 

n.4 (TTAB 2001) (testimony depositions are not filed by notice of reliance but instead are filed under cover of 

notice of filing which must also be served on each adverse party). 

80 See 37 CFR § 2.125(a). 

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concerning the remedy that an adverse party may have if it is not timely served with a 

copy of the deposition and exhibits, see TBMP § 703.01(m). 

703.01(l) Testimony Deposition Must be Filed 

37 CFR § 2.123(h) Depositions must be filed. All depositions which are taken must be 

duly filed in the Patent and Trademark Office. On refusal to file, the Office at its 

discretion will not further hear or consider the contestant with whom the refusal lies; and 

the Office may, at its discretion, receive and consider a copy of the withheld deposition, 

attested by such evidence as is procurable. 

All trial testimony depositions that are taken in a Board inter partes proceeding must be 

filed with the Board, and, when filed, automatically constitute part of the evidentiary 

record in the proceeding.81 If a party which took a testimony deposition refuses to file it, 

the Board, in its discretion, may refuse to further hear or consider the party, or may 

receive and consider a copy of the withheld deposition, attested by such evidence as is

procurable.82 

703.01(m) Service of Deposition

37 CFR § 2.125 Filing and service of testimony. (a) One copy of the transcript of 

testimony taken in accordance with § 2.123, together with copies of documentary exhibits 

and duplicates or photographs of physical exhibits, shall be served on each adverse party 

within thirty days after completion of the taking of that testimony. If the transcript with 

exhibits is not served on each adverse party within thirty days or within an extension of 

time for the purpose, any adverse party which was not served may have remedy by way of 

a motion to the Trademark Trial and Appeal Board to reset such adverse party's 

testimony and/or briefing periods, as may be appropriate. If the deposing party fails to 

serve a copy of the transcript with exhibits on an adverse party after having been ordered 

to do so by the Board, the Board, in its discretion, may strike the deposition, or enter 

judgment as by default against the deposing party, or take any such other action as may 

be deemed appropriate. 

81 See 37 CFR § 2.123(h). See also, for example, Order Sons of Italy in America v. Memphis Mafia, Inc., 52

USPQ2d 1364, 1366 n.4 (TTAB 1999); Hewlett-Packard Co. v. Human Performance Measurement, Inc., supra

(opposer was not prejudiced by transcript of testimony deposition filed for first time with applicant's brief on the 

case because opposer should have assumed it would become part of the record); and Anheuser-Busch, Inc. v. Major

Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984). Cf. An Evening at the Trotters, Inc. v. A Nite at the 

Races, Inc., 214 USPQ 737, 738 n.2 (TTAB 1982) (deposition which had not been filed but was not completed and 

was not referred to by either party was considered terminated and omitted by stipulation). 

82 37 CFR § 2.123(h). 

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One copy of the transcript of trial testimony, together with copies of documentary 

exhibits and duplicates or photographs of physical exhibits, must be served on each 

adverse party within 30 days after completion of the taking of the testimony, or within an 

extension of time for the purpose.83 

The requirement that a copy of the transcript, with exhibits, be served on every adverse 

party within the time specified in 37 CFR § 2.125(a) is intended to ensure that each 

adverse party will have the testimony before it has to offer its own evidence, or, if the 

testimony in question is rebuttal testimony, to ensure that each adverse party will have 

the testimony before it has to prepare its brief on the case.84 If a copy of the transcript, 

with exhibits, is not served on each adverse party within that time, any adverse party that 

was not served may have remedy by way of a motion to the Board to reset its testimony 

and/or briefing periods, as may be appropriate.85 

If a party that took a deposition fails to serve a copy of the transcript, with exhibits, on an 

adverse party after having been ordered to do so by the Board, the Board, in its 

discretion, may take any of the actions mentioned in 37 CFR § 2.125(a). 

 

703.01(n) Correction of Errors in Deposition 

 

37 CFR § 2.125(b) The party who takes testimony is responsible for having all 

typographical errors in the transcript and all errors of arrangement, indexing and form 

of the transcript corrected, on notice to each adverse party, prior to the filing of one 

certified transcript with the Trademark Trial and Appeal Board. The party who takes 

testimony is responsible for serving on each adverse party one copy of the corrected 

transcript or, if reasonably feasible, corrected pages to be inserted into the transcript 

previously served. 

A party that takes testimony is responsible for having any errors in the transcript 

corrected, on notice to each adverse party, prior to the filing of the certified transcript 

with the Board.86

83 37 CFR § 2.125(a). 

84 See Techex, Ltd. v. Dvorkovitz, 220 USPQ 81, 82 n.2 (TTAB 1983) (opposer's objection to introduction of

deposition overruled where opposer had been given time to request additional time for rebuttal in light of late-served 

copy of transcript but failed to do so), and S. S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ 124, 125 n.3 

(TTAB 1973) (applicant's objection in its brief to opposer's introduction of exhibits which were allegedly missing

from service copy of deposition transcript, was untimely).

 

85 37 CFR § 2.125(a), and Techex, Ltd. v. Dvorkovitz, supra. 

86 37 CFR § 2.125(b), and Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1392

n.6 (TTAB 1991) (objection to corrections served four days after filing and less than two weeks prior to due date for 

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If the witness, upon reading the transcript, discovers that typographical or transcription 

errors need to be made, or that other corrections are necessary to make the transcript an 

accurate record of what the witness actually said during the taking of his or her 

testimony, the witness should make a list of all such corrections and forward the list to 

the officer before whom the deposition was taken. The officer, in turn, should correct the 

transcript by redoing the involved pages. Alternatively, if there are not many corrections 

to be made, the witness may correct the transcript by writing each correction above the 

original text that it corrects, and initialing the correction. Although parties sometimes 

attempt to correct errors in transcripts by simply inserting a list of corrections at the end 

of the transcript, this is not an effective method of correction. The Board does not enter 

corrections for litigants, and the list of corrections is likely to be overlooked and/or 

disregarded. While corrections may be made in a transcript, to make the transcript an 

accurate record of what the witness said during the taking of his or her testimony, 

material changes in the text are not permitted--the transcript may not be altered to change 

the testimony of the witness after the fact.87 

If corrections are necessary, the party that took the deposition must serve on every 

adverse party a copy of the corrected transcript or, if reasonably feasible, corrected pages 

to be inserted into the transcript previously served.

88 

If errors are discovered after the transcript has been filed with the Board, a list of 

corrections, signed by the witness, should be submitted to the Board (and served on every 

adverse party), together with a request for leave to correct the errors. Alternatively, the 

parties may stipulate that specified corrections may be made. If the request is granted, or 

if the parties so stipulate, the party that took the deposition should send a representative 

to the offices of the Board to make the listed corrections by writing them above the 

original text in the transcript.89 

reply brief overruled since remedy lies in requesting extension of briefing period rather than having Board exclude

the evidence). 

87 See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (any substantive 

changes made to testimony deposition on written questions would not be considered); Cadence Industries Corp. v.

Kerr, 225 USPQ 331, 333 n.4 (TTAB 1985) (Board gave no consideration to response or corrected response when 

the correction, which changed the percentage of opposer's business income derived from licensing, was substantive);

Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116, 1117 n.2 (TTAB 1982) (change in testimony from

"...designing that type of game..." to "...designing that Simon Says type of game..." was substantive in nature and 

not permitted).

88 See 37 CFR § 2.125(b). See also Hewlett-Packard Co. v. Human Performance Measurement, Inc., supra. 

89 See Gary D. Krugman, TIPS FROM THE TTAB: Testimony Depositions, 70 Trademark Rep. 353 (1980). 

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703.01(o) Objections to Testimony Depositions 

For information concerning objections to testimony depositions, see TBMP § 707.03. 

See also TBMP § 533. 

703.01(p) Confidential or Trade Secret Material 

37 CFR § 2.125(e) Upon motion by any party, for good cause, the Trademark Trial and 

Appeal Board may order that any part of a deposition transcript or any exhibits that 

directly disclose any trade secret or other confidential research, development, or 

commercial information may be filed under seal and kept confidential under the 

provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply 

with an order made under this paragraph, the Board may impose any of the sanctions 

authorized by § 2.120(g). 

37 CFR § 2.126(d) 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. 

The requirements for confidential submissions are specified in part (d) of 37 CFR § 

2.126. To be handled as confidential, and kept out of the public record, submissions to 

the Board that are confidential must be filed 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 also be 

submitted.90 

Confidential materials filed in the absence of a protective order are not regarded as 

confidential and are not kept confidential by the Board.91 The mere stamping of 

“confidential” on documents does not operate in lieu of a protective order or agreement. 

Except for materials filed under seal pursuant to a protective order, the files of 

applications and registrations that are the subject matter of pending proceedings before 

the Board and all pending proceeding files and exhibits thereto are available for public 

90 See 37 CFR § 2.126(d). See also TBMP § 120.02 (Confidential Materials). 

91 See Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked

confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of 

such motion, the exhibits would be placed in the proceeding file), rev'd on other grounds, 284 F. Supp. 2d 96, 68

USPQ2d 1225 (D.D.C. 2003).

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703.02(a) Depositions on Written Questions: When Available 

 

inspection and copying.92 Therefore, only the particular exhibits or deposition transcript 

pages that disclose confidential information should be filed under seal pursuant to a 

protective order. If a party submits a transcript or other such filing containing 

confidential information under seal, the party must also submit for the public record a 

redacted version of said papers.93

703.02 Testimony Depositions on Written Questions

37 CFR § 2.123(a)(1) The testimony of witnesses in inter partes cases may be taken by 

depositions upon oral examination as provided by this section or by depositions upon 

written questions as provided by § 2.124. If a party serves notice of the taking of a 

testimonial deposition upon written questions of a witness who is, or will be at the time of 

the deposition, present within the United States or any territory which is under the 

control and jurisdiction of the United States, any adverse party may, within fifteen days 

from the date of service of the notice, file a motion with the Trademark Trial and Appeal 

Board, for good cause, for an order that the deposition be taken by oral examination.

(2) A testimonial deposition taken in a foreign country shall be taken by deposition upon 

written questions as provided by § 2.124, unless the Board, upon motion for good cause, 

orders that the deposition be taken by oral examination, or the parties so stipulate. 

(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before 

any person authorized to administer oaths, at any place, upon any notice, and in any 

manner, and when so taken may be used like other depositions. By written agreement of 

the parties, the testimony of any witness or witnesses of any party, may be submitted in 

the form of an affidavit by such witness or witnesses. The parties may stipulate in writing 

what a particular witness would testify to if called, or the facts in the case of any party 

may be stipulated in writing. 

Ordinarily, the testimony of a witness may be taken either on oral examination pursuant 

to 37 CFR § 2.123, or by deposition on written questions pursuant to 37 CFR § 2.124.94 

For information concerning depositions on oral examination, see TBMP § 703.01.

92 See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000) and Rany L. Simms, TIPS 

FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 653 (1981). 

93 Cf. 37 CFR § 2.120(f), and TBMP §§ 120.03 (Files of Terminated Proceedings), 412 (Protective Orders), 526

(Motion for a Protective Order), and 527.01 (Motion for Discovery Sanctions). 

94 37 CFR § 2.123(a)(1). 

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However, if a party serves notice of the taking of a testimony deposition on written 

questions of a witness who is, or will be at the time of the deposition, present within the 

United States (or any territory which is under the control and jurisdiction of the United 

States), any adverse party may, within 15 days from the date of service of the notice (20 

days if service of the notice was by first-class mail, "Express Mail," or overnight courier-

-see 37 CFR § 2.119(c)), file a motion with the Board, for good cause, for an order that 

the deposition be taken by oral examination.95 

In addition, a testimony deposition taken in a foreign country must be taken by deposition 

on written questions, unless the Board, on motion for good cause, orders that the 

deposition be taken by oral examination, or the parties so stipulate.96 

703.02(b) Depositions on Written Questions: Before Whom Taken. 

37 CFR § 2.124(a) A deposition upon written questions may be taken before any person 

before whom depositions may be taken as provided by Rule 28 of the Federal Rules of 

Civil Procedure. 

A deposition on written questions, like a deposition on oral examination, may be taken 

before the persons described in Fed. R. Civ. P. 28. See 37 CFR § 2.124(a). For further 

information, see TBMP § 703.01(g).

703.02(c) Depositions on Written Questions: When Taken 

37 CFR § 2.121 Assignment of times for taking testimony. (a)(1) The Trademark Trial 

and Appeal Board will issue a trial order assigning to each party the time for taking 

testimony. No testimony shall be taken except during the times assigned, unless by 

stipulation of the parties approved by the Board, or, upon motion, by order of the Board. 

Testimony periods may be rescheduled by stipulation of the parties approved by the 

Board, or upon motion granted by the Board, or by order of the Board. ... 

37 CFR § 2.124(b)(1) A party desiring to take a testimonial deposition upon written 

questions shall serve notice thereof upon each adverse party within ten days from the 

opening date of the testimony period of the party who serves the notice. The notice shall 

state the name and address of the witness. A copy of the notice, but not copies of the 

questions, shall be filed with the Trademark Trial and Appeal Board. 

* * * * 

95 See 37 CFR § 2.123(a)(1), and TBMP § 703.01(b) (Form of Testimony) and cases cited therein. 

96 37 CFR § 2.123(a)(2), and TBMP § 703.01(b) and cases cited therein. 

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(d)(2) ... Upon receipt of written notice that one or more testimonial depositions are to be 

taken upon written questions, the Trademark Trial and Appeal Board shall suspend or 

reschedule other proceedings in the matter to allow for the orderly completion of the 

depositions upon written question. 

A party may take testimony only during its assigned testimony period, except by 

stipulation of the parties approved by the Board, or, on motion, by order of the Board.97 

A party that desires to take a testimony deposition on written questions must serve notice 

thereof on each adverse party within 10 days from the opening date of the deposing 

party's testimony period, as originally set or as reset.98 

On receipt of written notice that one or more testimony depositions are to be taken on 

written questions, the Board will suspend or reschedule other proceedings in the case to 

allow for the orderly completion of the depositions on written questions.99 

For information concerning the time for taking a discovery deposition, see TBMP § 

404.01. 

 

703.02(d) Depositions on Written Questions: Place of Deposition 

A testimony deposition on written questions may be taken at any reasonable place.100 An 

adverse party may attend the taking of the deposition if it so desires, not for the purpose 

of participating (its participation will have occurred previously, through its service of 

cross questions, recross questions, and objections, if any, pursuant to 37 CFR § 

2.124(d)(1)), but rather merely for the purpose of observing. 

For information concerning the place where a discovery deposition upon written 

questions is taken, see TBMP §§ 404.03(b), 404.03(c), and 404.04. 

97 37 CFR § 2.121(a)(1). See TBMP § 701 (Time of Trial) and authorities cited therein. For information

concerning the assignment of testimony periods, and the rescheduling, extension, and reopening thereof, see TBMP 

§§ 509 (Motion to Extend Time and Motion to Reopen Time) and 701. 

98 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652, 1652 (TTAB 1990) 

(notice of testimony depositions on written questions, while served eight months after testimony period originally 

opened, were nonetheless timely having been served within 10 days of testimony period as last reset). 

99 37 CFR § 2.124(d)(2). See also Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) 

and Marshall Field & Co. v. Mrs. Field's Cookies, supra. 

100 Cf. 37 CFR § 2.123(c), and TBMP § 703.01(d) (Time and Place of Deposition). Cf. also 37 CFR § 2.123(b)

regarding stipulations as to place, manner and notice of depositions. 

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703.02(e) Depositions on Written Questions: Notice of Deposition 

37 CFR § 2.124(b)(1) A party desiring to take a testimonial deposition upon written 

questions shall serve notice thereof upon each adverse party within ten days from the 

opening date of the testimony period of the party who serves the notice. The notice shall 

state the name and address of the witness. A copy of the notice, but not copies of the 

questions, shall be filed with the Trademark Trial and Appeal Board. 

 

* * * * 

(c) Every notice given under the provisions of paragraph (b) of this section shall be 

accompanied by the name or descriptive title of the officer before whom the deposition is 

to be taken. 

(d)(1) Every notice served on any adverse party under the provisions of paragraph (b) of 

this section shall be accompanied by the written questions to be propounded on behalf of 

the party who proposes to take the deposition. ... 

To take a testimony deposition on written questions a party must serve notice thereof on

each adverse party within 10 days from the opening date of its testimony period, as 

originally set or as reset.101 The notice must state the name and address of the witness; it 

must be accompanied by the name or descriptive title of the officer before whom the 

deposition is to be taken, and by the written questions to be propounded on behalf of the 

deposing party.102 A copy of the notice, but not of the questions, must be filed with the 

Board.103 

If the parties so stipulate in writing, a deposition may be taken before any person 

authorized to administer oaths, at any place, on any notice, and in any manner, and when 

so taken may be used like any other deposition.104

For information concerning the notice of deposition in the case of a discovery deposition 

on written questions, see TBMP § 404.07(d). 

101 37 CFR § 2.124(b)(1). See Marshall Field & Co. v. Mrs. Field's Cookies, supra. See also. 37 CFR § 2.123(b)

regarding stipulations as to place, manner and notice of depositions.

102 37 CFR §§ 2.124(b)(1), 2.124(c), and 2.124(d)(1). 

103 37 CFR § 2.124(b)(1).

104 37 CFR § 2.123(b). 

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703.02(f) Depositions on Written Questions: Securing Attendance of 

 Unwilling Witness 

For information concerning securing the attendance of an unwilling witness, see TBMP 

§ 703.01(f) (for a testimony deposition) and 404.03 (for a discovery deposition). 

703.02(g) Depositions on Written Questions: Examination of Witness 

37 CFR § 2.124(b)(1) A party desiring to take a testimonial deposition upon written 

questions shall serve notice thereof upon each adverse party within ten days from the 

opening date of the testimony period of the party who serves the notice. The notice shall 

state the name and address of the witness. A copy of the notice, but not copies of the 

questions, shall be filed with the Trademark Trial and Appeal Board. 

* * * * 

(c) Every notice given under the provisions of paragraph (b) of this section shall be 

accompanied by the name or descriptive title of the officer before whom the deposition is 

to be taken. 

(d)(1) Every notice served on any adverse party under the provisions of paragraph (b) of 

this section shall be accompanied by the written questions to be propounded on behalf of 

the party who proposes to take the deposition. Within twenty days from the date of 

service of the notice, any adverse party may serve cross questions upon the party who 

proposes to take the deposition; any party who serves cross questions shall also serve 

every other adverse party. Within ten days from the date of service of the cross 

questions, the party who proposes to take the deposition may serve redirect questions on 

every adverse party. Within ten days from the date of service of the redirect questions,

any party who served cross questions may serve recross questions upon the party who 

proposes to take the deposition; any party who serves recross questions shall also serve 

every other adverse party. Written objections to questions may be served on a party 

propounding questions; any party who objects shall serve a copy of the objections on 

every other adverse party. In response to objections, substitute questions may be served 

on the objecting party within ten days of the date of service of the objections; substitute 

questions shall be served on every other adverse party. 

(2) Upon motion for good cause by any party, or upon its own initiative, the Trademark 

Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) 

of this section. Upon receipt of written notice that one or more testimonial depositions 

are to be taken upon written questions, the Trademark Trial and Appeal Board shall 

suspend or reschedule other proceedings in the matter to allow for the orderly 

completion of the depositions upon written questions. 

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(e) Within ten days after the last date when questions, objections, or substitute questions 

may be served, the party who proposes to take the deposition shall mail a copy of the 

notice and copies of all the questions to the officer designated in the notice; a copy of the 

notice and of all the questions mailed to the officer shall be served on every adverse 

party. The officer designated in the notice shall take the testimony of the witness in

response to the questions and shall record each answer immediately after the 

corresponding question. The officer shall then certify the transcript and mail the 

transcript and exhibits to the party who took the deposition. 

A party which desires to take a testimony deposition on written questions must, within 10 

days from the opening date of its testimony period, as originally set or as reset, serve 

notice thereof on each adverse party.

105 

The notice must be accompanied by the written questions to be propounded on behalf of 

the deposing party.106 A copy of the notice, but not of the questions, must be filed with 

the Board.107 

Within 20 days from the date of service of the notice (25 days, if service of the notice and 

accompanying questions was made by first-class mail, "Express Mail," or overnight

courier--see 37 CFR § 2.119(c)), any adverse party may serve cross questions on the 

deposing party. A party that serves cross questions on the deposing party must also serve 

copies of them on every other adverse party. Within 10 days from the date of service of 

the cross questions (15 days, if service of the cross questions was made by first-class 

mail, "Express Mail," or overnight courier), the deposing party may serve redirect 

questions on every adverse party. Within 10 days from the date of service of the redirect 

questions (15 days, if service of the redirect questions was made by first-class mail, 

"Express Mail," or overnight courier), any party that served cross questions may serve 

recross questions on the deposing party. A party that serves recross questions on the 

deposing party must also serve copies thereof on every other adverse party.108 

Written objections to questions may be served on the party that propounded the 

questions. A party that serves objections on a propounding party must also serve a copy 

of the objections on every other adverse party. In response to objections, substitute 

questions may be served on the objecting party within 10 days from the date of service of 

the objections (15 days, if service of the objections was made by first-class mail, 

105 37 CFR § 2.124(b)(1). See TBMP § 703.02(e) (Notice of Deposition on Written Questions). 

106 37 CFR §§ 2.124(b)(1), 2.124(c), and 2.124(d)(1). 

107 37 CFR § 2.124(b)(1).

108 37 CFR § 2.124(d)(1). See Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

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"Express Mail," or overnight courier). The substitute questions must also be served on 

every other adverse party.109 

On motion for good cause filed by any party, or on its own initiative, the Board may 

extend any of the time periods specified in 37 CFR § 2.124(d)(1), that is, the time periods 

for serving cross questions, redirect questions, recross questions, objections, and 

substitute questions. Further, on receipt of written notice that one or more testimony 

depositions are to be taken on written questions, the Board will suspend or reschedule 

other proceedings in the matter to allow for the orderly completion of the depositions on 

written questions.110 

Within 10 days after the last date when questions, objections, or substitute questions may 

be served, the deposing party must mail a copy of the notice and copies of all the 

questions to the officer designated in the notice. A copy of the notice and of all the 

questions mailed to the officer must also be served on every adverse party. The officer 

designated in the notice shall take the testimony of the witness in response to the 

questions, and shall record each answer immediately after the corresponding question.111 

An adverse party may attend the taking of the deposition if it so desires, not for the 

purpose of participating (its participation will have occurred previously, through its 

service of cross questions, recross questions, and objections, if any, pursuant to 37 CFR § 

2.124(d)(1)), but rather merely for the purpose of observing. 

If the parties so stipulate in writing, a deposition may be taken before any person 

authorized to administer oaths, at any place, on any notice, and in any manner. When so 

taken, the deposition may be used like any other deposition.112 

703.02(h) Depositions on Written Questions: Form, Signature and 

 Certification of Deposition

37 CFR § 2.124(e) Within ten days after the last date when questions, objections, or 

substitute questions may be served, the party who proposes to take the deposition shall 

mail a copy of the notice and copies of all the questions to the officer designated in the 

notice; a copy of the notice and of all the questions mailed to the officer shall be served 

109 37 CFR § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990). 

110 37 CFR § 2.124(d)(2). See TBMP § 703.02(c) (Deposition on Written Questions – When Taken) and cases cited

therein. 

111 37 CFR § 2.124(e). 

112 See 37 CFR § 2.123(b). 

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on every adverse party. The officer designated in the notice shall take the testimony of

the witness in response to the questions and shall record each answer immediately after 

the corresponding question. The officer shall then certify the transcript and mail the 

transcript and exhibits to the party who took the deposition. 

The officer before whom a deposition on written questions is taken shall record each 

answer immediately after the corresponding question. 113 

For further information on the form for a deposition taken in an inter partes proceeding 

before the Board, see 37 CFR §§ 2.123(g), 2.126, and TBMP § 703.01(i) (Form of 

Deposition and Exhibits).

For information concerning signature of a deposition taken in an inter partes proceeding 

before the Board, see 37 CFR § 2.123(e)(5), and TBMP § 703.01(j). 

After the officer designated in the notice of deposition has taken a deposition on written 

questions, the officer must certify the transcript of the deposition. See 37 CFR § 

2.124(e). For information concerning certification of a deposition taken in an inter 

partes proceeding before the Board, see 37 CFR § 2.123(f), and TBMP § 703.01(k). 

When the transcript has been certified, the officer should mail the transcript and exhibits 

to the party that took the deposition.114 

703.02(i) Depositions on Written Questions: Service, Correction and Filing 

 of Deposition 

37 CFR § 2.124(f) The party who took the deposition shall promptly serve a copy of the 

transcript, copies of documentary exhibits, and duplicates or photographs of physical 

exhibits on every adverse party. It is the responsibility of the party who takes the 

deposition to assure that the transcript is correct (see § 2.125(b)). If the deposition is a 

discovery deposition, it may be made of record as provided by § 2.120(j). If the 

deposition is a testimonial deposition, the original, together with copies of documentary 

exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with 

the Trademark Trial and Appeal Board. 

The party that took the deposition on written questions must promptly serve a copy of the 

transcript, with exhibits, on every adverse party.115 The party that took the deposition 

113 See 37 CFR § 2.124(e). 

114 See 37 CFR § 2.124(e). 

115 37 CFR § 2.124(f). See TBMP § 703.01(m) (Service of Deposition). 

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must also assure that the transcript is correct.116 For information concerning correction 

of errors in a deposition taken in a Board inter partes proceeding, see TBMP § 

703.01(n). 

If the deposition is a testimony deposition, the original, with exhibits, must be filed 

promptly with the Board.

117 By "promptly" the Board means that the transcript, with 

exhibits, may be filed at any time prior to submission of the case for final decision.118

703.02(j) Testimony Depositions on Written Questions Must be Filed 

While the offering of a discovery deposition in evidence is voluntary, all trial testimony 

depositions that are taken in a Board inter partes proceeding must be filed in the Office, 

and, when filed, automatically constitute part of the evidentiary record in the 

proceeding.119 

See, with respect to making a discovery deposition of record, 37 CFR § 2.120(j) and 

TBMP § 704.09. 

 

703.02(k) Depositions on Written Questions: Objections to Deposition 

37 CFR § 2.124(d)(1) ... Written objections to questions may be served on a party 

propounding questions; any party who objects shall serve a copy of the objections on 

every other adverse party. In response to objections, substitute questions may be served 

on the objecting party within ten days of the date of service of the objections; substitute 

questions shall be served on every other adverse party. 

* * * * 

(g) Objections to questions and answers in depositions upon written questions may be 

considered at final hearing. 

Written objections to questions propounded for a deposition on written questions may be 

served on the party that propounded the questions. Any party that serves written 

objections on a propounding party must also serve a copy of the objections on every other 

adverse party.120

116 37 CFR § 2.124(f) and 2.125(b). 

 

117 See 37 CFR § 2.124(f). 

118 See TBMP § 703.01(k) (Certification and Filing of Deposition). 

119 See 37 CFR § 2.123(h), and TBMP § 703.01(l) (Testimony Deposition Must be Filed). 

120 37 CFR § 2.124(d)(1). See TBMP § 703.02(g) (Deposition on Written Questions – Examination of Witness). 

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Unless waived, objections to questions and answers in depositions on written questions, 

as in oral depositions, generally are considered by the Board at final hearing.121 

For further information concerning the raising of objections to trial testimony 

depositions, see TBMP §§ 707.03 and 533.

For information concerning the raising of objections to discovery depositions, see TBMP 

§ 404.08. For information concerning the raising of objections to a notice of reliance on 

a discovery deposition, see TBMP §§ 707.02 and 532. 

703.02(l) Depositions on Written Questions: Confidential or Trade Secret 

 Material 

For information concerning the protection of confidential or trade secret material 

forming part of a deposition transcript or exhibits thereto, see 37 CFR §§ 2.125(e), 

2.126(d) and TBMP § 703.01(p). 

 

703.02(m) Depositions on Written Questions: Utility 

A deposition on written questions is a cumbersome, time-consuming procedure. It 

requires that cross questions, redirect questions, recross questions, and objections all be 

framed and served before the questions on direct examination have even been answered. 

Moreover, it deprives an adverse party of the right to confront the witness and ask followup questions on cross examination.122 

Nevertheless, it has some utility. It may be the only means by which a deposition may be 

taken in a foreign country.123 Moreover, the deposition on written questions is generally 

less expensive than the deposition on oral examination and is usually more convenient for 

the witness. Thus, even for a deposition to be taken in the United States, a deposing party 

121 37 CFR § 2.124(g). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990)

(objections to questions based on relevancy and materiality will be deferred until final hearing). 

122 See 37 CFR § 2.124(d)(1); TBMP § 703.02(g) (Deposition on Written Questions – Examination of Witness); 

Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected, 19 

USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); 

Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979); and Saul Lefkowitz and Janet E. 

Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 397 (1985). 

See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1926 (TTAB 1989) (motion to take

discovery deposition in foreign country orally) 

123 See 37 CFR §§ 2.120(c)(1) and 2.123(a)(2), and TBMP §§ 404.03(c) (discovery deposition of nonparty residing

in foreign country), 703.01(b) (Form of Testimony), and 703.02(a) (Depositions on Written Questions – When 

Available). 

 

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may prefer to use the deposition on written questions, particularly in those cases where 

the testimony will be short, simple, straight-forward, and not likely to be disputed, such 

as to establish for the record examples of third-party usage.124 

704 Introducing Other Evidence 

704.01 In General 

As noted earlier in this chapter (see TBMP § 702) evidence in an inter partes proceeding before 

the Board can be introduced in a number of ways. The first part of this chapter discussed the 

introduction of evidence in the form of testimony depositions with accompanying exhibits. The 

following sections discuss other forms of evidence and the methods available for their 

introduction. 

 

704.02 Notice of Reliance – Generally 

Certain types of evidence, such as official records and printed publications as described in 37 

CFR § 2.122(e), need not be introduced in connection with the testimony of a witness but may 

instead be made of record by filing the materials with the Board under cover of one or more 

notices of reliance during the testimony period of the offering party. A notice of reliance is 

essentially a cover sheet for the materials sought to be introduced. This cover sheet is entitled 

"notice of reliance" and it serves, as the title suggests, to notify opposing parties that the offering 

party intends to rely on the materials submitted thereunder in support of its case. The notice of 

reliance must include a description of the proffered materials and, in some instances, must 

indicate the relevance of those materials to the case. A discussion of the types of evidence that 

may be submitted by notice of reliance and the requirements for introduction of such evidence by 

notice of reliance can be found in the sections that follow. 

704.03 Applications and Registrations 

704.03(a) Subject of Proceeding 

37 CFR 2.122(b) Application files. 

(1) The file of each application or registration specified in a notice of interference, of 

each application or registration specified in the notice of a concurrent use registration 

proceeding, of the application against which a notice of opposition is filed, or of each 

registration against which a petition or counterclaim for cancellation is filed forms part 

of the record of the proceeding without any action by the parties and reference may be 

made to the file for any relevant and competent purpose. 

124 Cf. Feed Flavors Inc. v. Kemin Industries, Inc., supra. 

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(2) The allegation in an application for registration, or in a registration, of a date of use 

is not evidence on behalf of the applicant or registrant; a date of use of a mark must be 

established by competent evidence. Specimens in the file of an application for 

registration, or in the file of a registration, are not evidence on behalf of the applicant or 

registrant unless identified and introduced in evidence as exhibits during the period for 

the taking of testimony. 

The file of an application or registration that is the subject of a Board inter partes 

proceeding forms part of the record of the proceeding without any action by the parties, 

and reference may be made to the file by any party for any relevant and competent 

purpose.125 

However, the fact that the subject application or registration file is automatically part of

the record in a proceeding does not mean that the allegations made, and the specimens, 

documents, exhibits, etc., filed therein are evidence on behalf of the applicant or 

registrant in the inter partes proceeding. Allegations must be established by competent 

evidence properly adduced at trial. The specimens, documents, exhibits, etc., in an 

application or registration file are not properly adduced evidence in an inter partes

proceeding, on behalf of the applicant or registrant unless they are identified and 

introduced in evidence as exhibits during the testimony period.126 

For further information concerning the probative value of applications and registrations, 

see TBMP § 704.03.

704.03(b) Not Subject of Proceeding – In General 

The file of a particular application or registration that is not the subject of a proceeding 

may be made of record either in connection with testimony or by notice of reliance as 

described below. 

125 37 CFR § 2.122(b)(1). See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ

1281, 1283 (Fed. Cir. 1984); Cleveland-Detroit Corp. v. Comco (Machinery) Ltd., 277 F.2d 958, 125 USPQ 586, 

586-87 (CCPA 1960) (application file automatically forms part of record on appeal); Uncle Ben’s Inc. v. Studenberg 

International Inc., 47 USPQ2d 1310, 1311 n.2 (TTAB 1998) (notice of reliance on application file not necessary as 

it is automatically of record); and Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 

1990) (submission of portions of application unnecessary since file is automatically of record), aff'd, 951 F.2d 330, 

21 USPQ2d 1142 (Fed. Cir. 1991). 

126 See 37 CFR § 2.122(b)(2). See also Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., supra at 1283

(evidence in application file considered by court, but little weight given to applicant’s statements before examining

attorney); Kellogg Co. v. Pack'Em Enterprises Inc, supra; and TBMP § 704.04 (Statements and Things in

Application or Registration). 

 

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704.03(b)(1) Registration Not Subject of Proceeding 

704.03(b)(1)(A) Registration Owned by Party 

 

37 CFR § 2.122(d) Registrations. 

(1) A registration of the opposer or petitioner pleaded in an opposition or 

petition to cancel will be received in evidence and made part of the record

if the opposition or petition is accompanied by two copies (originals or 

photocopies) of the registration prepared and issued by the Patent and 

Trademark Office showing both the current status of and current title to 

the registration. For the cost of a copy of a registration showing status 

and title, see § 2.6(b)(4).

(2) A registration owned by any party to a proceeding may be made of 

record in the proceeding by that party by appropriate identification and 

introduction during the taking of testimony or by filing a notice of 

reliance, which shall be accompanied by a copy (original or photocopy) of 

the registration prepared and issued by the Patent and Trademark Office 

showing both the current status of and current title to the registration. 

The notice of reliance shall be filed during the testimony period of the 

party that files the notice.

A party that wishes to rely on its ownership of a Federal registration of its 

mark that is not the subject of a proceeding before the Board may make 

the registration of record by offering evidence sufficient to establish that 

the registration is still subsisting, and that it is owned by the party which 

seeks to rely on it.127 This may be done in a number of different ways. 

A Federal registration owned by the plaintiff in an opposition or 

cancellation proceeding, and pleaded by the plaintiff in its complaint, will 

be received in evidence and made part of the record in the proceeding if 

the complaint (either as originally filed or as amended) is accompanied by 

127 See Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ 742, 744 n.5 (TTAB 1978) (plain copies of

registrations introduced through testimony which established ownership of the registrations but failed to establish 

that they were currently subsisting were not considered); Maybelline Co. v. Matney, 194 USPQ 438, 440 (TTAB 

1977) (pleaded registration was not considered of record where testimony introduced original certificate of 

registration into evidence but failed to establish current status and title); and Peters Sportswear Co. v. Peter's Bag 

Corp., 187 USPQ 647, 647 (TTAB 1975) (mere fact that copies show that registration originally issued to opposer

does not establish that title still resides in opposer). 

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two copies of the registration prepared and issued by the Office showing 

both the current status of and current title to the registration.128 

NOTE: Except under limited circumstances, requests to record an 

assignment of a 66(a) registration must be filed directly with the 

International Bureau.129 The International Bureau will notify the USPTO

of any changes in ownership recorded in the International Register, and 

the USPTO will record only those assignments or other documents 

transferring title that have been recorded in the International Register.

130 

A Federal registration owned by any party to a Board inter partes 

proceeding will be received in evidence and made part of the record in the

proceeding if that party files, during its testimony period, a notice of 

reliance on the registration, accompanied by a copy of the registration 

prepared and issued by the Office showing both the current status of and 

current title to the registration.131 

128 See 37 CFR § 2.122(d)(1). See also Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 

1713 (Fed. Cir. 1991) (not of record where opposer’s copies of registrations submitted with notice of opposition did 

not show current status or title); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 

n.3 (TTAB 1990); Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984); Industrial 

Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983) (photocopy of registration did not contain status

and title information); Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 213 USPQ 591, 592 (TTAB 

1980) (handwritten notations on registration certificate insufficient to show status of registration); and Royal 

Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 146 (TTAB 1979). 

 See, in addition, Vita-Pakt Citrus Products Co. v. Cerro, 195 USPQ 78 (TTAB 1977); Maybelline Co. v. 

Matney, supra; Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735 (TTAB 1976); American Manufacturing

Co., v. Phase Industries, Inc., 192 USPQ 498 (TTAB 1976); West Point-Pepperell, Inc. v. Borlan Industries Inc., 

191 USPQ 53 (TTAB 1976); O. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352 (TTAB 1976); Fort 

Howard Paper Co. v. Georgia-Pacific Corp., 189 USPQ 537 (TTAB 1975); Peters Sportswear Co. v. Peter's Bag 

Corp., supra; and A.R.A. Manufacturing Co. v. Equipment Co., 183 USPQ 558 (TTAB 1974). Cf. Hollister Inc. v. 

Downey, 565 F.2d 1208, 196 USPQ 118 (CCPA 1977). 

129 See 37 CFR §§ 7.22 and 7.23. 

130 See Exam Guide No. 2-03, Guide to Implementation of Madrid Protocol in the United States, (part IV.F.) 

(October 28, 2003) on the Office web site at www.uspto.gov. 

131 See 37 CFR § 2.122(d)(2). See also Hewlett-Packard Co. v. Olympus Corp., supra; Jean Patou Inc. v. Theon 

Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (untimely notice of reliance on status and title copy of registration filed

after close of testimony period); and Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230

USPQ 530, 531 n.3 (TTAB 1986). See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329 (TTAB 1979);

Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979); and W. R. Grace & Co. v. 

Red Owl Stores, Inc., 181 USPQ 118 (TTAB 1973). In addition, see NOTE to this section for information on

recording assignments of 66(a) registrations.

 

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A party's submission, with a notice of reliance on its registration, of an 

order for status and title copies of the registration is not sufficient to make 

the registration of record. Although that procedure was once permitted, it 

is no longer allowed.132 The status and title copies themselves must 

accompany the notice of reliance.133 However, the status and title copies 

need not be certified.134 Additionally, a party need not submit the original 

status and title copy; a photocopy is sufficient.135 

The registration copies "prepared and issued by the Patent and Trademark 

Office showing both the current status of and current title to the 

registration," as contemplated by 37 CFR § 2.122(d), are printed copies of 

the registration on which the Office has entered the information it has in 

its records, at the time it prepares and issues the status and title copies, 

about the current status and title of the registration. That information 

includes information about the renewal, cancellation, publication under 

Section 12(c) of the Act, 15 U.S.C. § 1062(c); affidavits or declarations 

under Sections 8, 15 and 71 of the Act, 15 U.S.C. §§ 1058, 1065 and 

1141; and recorded documents transferring title.136 Plain copies of the 

registration, and the electronic equivalent thereof, such as printouts of the 

registration from the electronic records of the Office’s trademark 

automated search system, are not sufficient.137

132 See 37 CFR §2.122(d); Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR 

23122, and in the Patent and Trademark Office Official Gazette of June 21, 1983 at 1031 TMOG 13; and In re InterState Oil Co., 219 USPQ 1229 (TTAB 1983). 

133 See Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1461 n.4 (TTAB 1992). 

134 See 37 CFR § 2.122(e). 

135 See 37 CFR § 2.122(d). 

136 See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); Acme Boot Co. v. Tony and

Susan Alamo Foundation, Inc., 213 USPQ 591, 592 (TTAB 1980) (handwritten notations on registration certificate 

not sufficient), and Peters Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647, 647 (TTAB 1975) (constitutes 

prima facie showing of status and title). 

 NOTE: Except under limited circumstances, requests to record an assignment of a 66(a) registration must be 

filed directly with the International Bureau. See 37 CFR §§ 7.22 and 7.23. The International Bureau will notify the 

Office of any changes in ownership recorded in the International Register, and the Office will record only those 

assignments or other documents transferring title that have been recorded in the International Register. See Exam

Guide No. 2-03, Guide to Implementation of Madrid Protocol in the United States, (part IV.F.) (October 28, 2003)

on the Office web site at www.uspto.gov. 

137 See, for example, Hewlett-Packard Co. v. Olympus Corp., supra and Industrial Adhesive Co. v. Borden, Inc., 

supra (photocopy of registration without status and title information insufficient to establish prima facie showing). 

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Although the status and title copies need not be certified (see 37 CFR § 

2.122(e)), at present all status and title copies prepared and issued by the 

Office are certified.138 For the cost of a copy of a registration showing 

status and title, see 37 CFR § 2.6(b)(4). 

The issuance date of status and title copies filed with a complaint must be 

reasonably contemporaneous with the filing date of the complaint. Status 

and title copies filed under a notice of reliance during the offering party's 

testimony period must have been issued at a time reasonably 

contemporaneous with the filing of the complaint, or thereafter.139 The 

fact that there have been no changes in the status and title of a party's 

registration since the date of its issuance does not mean that a plain 

photocopy thereof may be used by the party as a substitute for the status 

and title copy.

140 

When it comes to the attention of the Board that there has been an Office 

error in the preparation of a registration status and title copy made of 

record in an inter partes proceeding, that is, that the status and title copy 

does not accurately reflect the status and title information which the Office 

has in its records, the Board will take judicial notice of the correct facts as 

shown by the records of the Office.141 Further, when a Federal registration 

138 See Industrial Adhesive Co. v. Borden, Inc., supra at 947 (copies do not have to be certified but must contain 

status and title information). 

 

139 See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000) (status and title 

copies prepared three years prior to opposition not reasonably contemporaneous); Electronic Data Systems Corp. v.

EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075

(TTAB1990) (whether notice of reliance on status and title copy of registration prepared four years earlier is 

sufficiently recent goes to the competency, not the admissibility, of the registration); Philip Morris Inc. v. Reemtsma

Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990) (status and title copies from 1963 not

reasonably contemporaneous with filing of opposition in 1986); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ

945, 947 (TTAB 1983); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 204 USPQ 144, 

146 (TTAB 1979) (prepared two months prior to filing of opposition is reasonably contemporaneous); 

Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979); and Marriott Corp. v.

Pappy's Enterprises, Inc., 192 USPQ 735 (TTAB 1976). 

140 See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 949 (TTAB 1983) (it is not sufficient that status and

title copies might have shown the same facts indicated by a photocopy of an original registration which had recently 

issued or even if time for filing Sections 8 and 15 affidavits had not yet occurred since ownership could have

changed or other events affecting ownership may have occurred); Acme Boot Co. v. Tony and Susuan Alamo 

Foundation Inc., 213 USPQ 591, 592 (TTAB 1980); Maybelline Co. v. Matney, 194 USPQ 438 (TTAB 1977); and

Marriott Corp. v. Pappy's Enterprises, Inc., supra. 

141 See Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846, 847 n.5 (TTAB 1978) (USPTO error in identification of

owner). See also NOTE to this section for information on recording assignments of 66(a) registrations.

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owned by a party has been properly made of record in an inter partes 

proceeding, and the status of the registration changes between the time it 

was made of record and the time the case is decided, the Board, in 

deciding the case, will take judicial notice of, and rely on, the current 

status of the registration, as shown by the records of the Office.142 

A Federal registration owned by any party to a Board inter partes 

proceeding may be made of record by that party by appropriate 

identification and introduction during the taking of testimony, that is, by 

introducing a copy of the registration as an exhibit to testimony, made by a 

witness having knowledge of the current status and title of the registration, 

establishing that the registration is still subsisting, and is owned by the 

offering party.143

A Federal registration owned by a plaintiff (including a counterclaimant) 

will be deemed by the Board to be of record in an inter partes proceeding

if the defendant's answer to the complaint contains admissions sufficient 

for the purpose.144

142 See Time Warner Entertainment Company v. Jones. 65 USPQ2d 1650 (TTAB 2002) (review of Office 

automated records subsequent to filing of status and title copy of registration revealed that Section 8 and 15

affidavits had been accepted and acknowledged); Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 

49 USPQ2d 1313, 1314, n.6 (TTAB 1998) (same); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of

Hawaii, Inc., supra at 147 (status and title copy need not be updated after it is submitted; judicial notice of filing of

Sections 8 and 15 affidavits); Duffy-Mott Co. v. Borden, Inc., supra; and Volkswagenwerk Aktiengesellschaft v. 

Clement Wheel Co., supra at 80 n.3. 

143 See 37 CFR § 2.122(d)(2); Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1713

(Fed. Cir. 1991); Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332 n.2 (TTAB 1985) (no probative value 

where testimony established opposer’s ownership of registration, but not current status); Floralife, Inc. v. Floraline 

International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984) (identification by witness as having come from opposer’s 

files insufficient to establish ownership and status); and Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 

supra. 

 See also Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329 (TTAB 1979); Alcan Aluminum Corp. v. Alcar 

Metals Inc., 200 USPQ 742 (TTAB 1978); Groveton Papers Co. v. Anaconda Co., 197 USPQ 576 (TTAB 1977); 

Maybelline Co. v. Matney, 194 USPQ 438 (TTAB 1977); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ

576 (TTAB 1976); American Manufacturing Co., v. Phase Industries, Inc., 192 USPQ 498 (TTAB 1976); and West 

Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53 (TTAB 1976).

144 See Tiffany & Co. v. Columbia Industries, Inc., 455 F.2d 582, 173 USPQ 6, 8 (CCPA 1972) (Board erred in 

refusing to consider registrations of record when applicant admitted "the registrations referred to in the notice of 

opposition" in its answer); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998)

(applicant effectively admitted active status and ownership of certain specifically identified registrations); HewlettPackard Co. v. Olympus Corp., supra (admission only of ownership and not validity was not sufficient); and Philip

Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487, 1488 n.3 (TTAB 1990) (not of record where 

although applicant admitted that copies attached to opposition were "true copies" applicant did not admit to status

and title of those registrations). 

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Similarly, a registration owned by any party to the proceeding may be 

deemed by the Board to be of record in the proceeding, even though the 

registration was not properly introduced in accordance with the applicable 

rules, if the adverse party in its brief, or otherwise, treats the registration as 

being of record.145 

Finally, a registration owned by any party to the proceeding may be made 

of record in the proceeding by stipulation of the parties.146 

When a subsisting registration on the Principal Register has been properly 

made of record by its owner in a Board inter partes proceeding, the 

certificate of registration is entitled to certain statutory evidentiary 

presumptions.147 

In contrast, a subsisting registration on the Supplemental Register, even 

when properly made of record by its owner, is not entitled to any statutory 

145 See Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222 (CCPA 1974) (after filing its 

answer, respondent filed a "paper" in which respondent admitted existence of petitioner’s registration; admission

was sufficient to overcome respondent's Rule 2.132 motion for default judgment); Local Trademarks Inc. v. Handy 

Boys Inc., 16 USPQ2d 1156, 1157 (TTAB 1990) (applicant conceded ownership and validity in trial brief); 

Floralife, Inc. v. Floraline International Inc., 225 USPQ 683, 684 n.6 (TTAB 1984) (applicant's treatment of

pleaded registrations as properly of record in its trial brief was deemed a stipulation as to current status and title); 

and Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB 1983) (admission in brief). See also

Jockey International, Inc. v. Frantti, 196 USPQ 705 (TTAB 1977); Angelica Corp. v. Collins & Aikman Corp., 192

USPQ 387 (TTAB 1976); and West Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53 (TTAB 1976). 

146 See 37 CFR § 2.123(b); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945 (TTAB 1983); and Plus 

Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979).

147 See, for example, Section 7(b) of the Act, 15 U.S.C. § 1057(b); CTS Corp. v. Cronstoms Manufacturing, Inc., 

515 F.2d 780, 185 USPQ 773, 774 (CCPA 1975) (prima facie evidence of registrant’s right to use the mark on the 

identified goods); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 

274 (CCPA 1974) (prima facie evidence of validity of registration, ownership of mark and exclusive right to use it);

and In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986) (prima facie evidence of registrant’s 

continuous use of the mark). See also Section 7(c) of the Act, 15 U.S.C. § 1057(c) (conferring, contingent on the 

registration of a mark on the Principal Register, and subject to certain specified exceptions, constructive use priority 

dating from the filing of the application for registration of the mark); Jimlar Corp. v. The Army and Air Force 

Exchange Service, 24 USPQ2d 1216, 1217 n5 (TTAB 1992) (opposer’s constructive use date on ITU application

was subsequent to applicant’s); and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 

(TTAB 1991) (constructive use dates intended to give ITU applicants superior rights to others who adopt the mark 

after filing date). 

 See also Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232 (TTAB 1976); David Crystal, Inc. v. 

Glamorise Foundations, Inc., 189 USPQ 740 (TTAB 1975); Johnson & Johnson v. E. I. du Pont de Nemours & Co.,

181 USPQ 790 (TTAB 1974); and Gates Rubber Co. v. Western Coupling Corp., 179 USPQ 186 (TTAB 1973). 

700 - 471 
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presumptions, and is not evidence of anything except that the registration 

issued.148 

Expired or Cancelled Registrations. Although an expired or cancelled 

registration may be made of record by any of the methods described 

above, such a registration is not evidence of anything except that the 

registration issued; it is not evidence of any presently existing rights in the 

mark shown in the registration, or that the mark was ever used.149 

 

State Registrations. A state registration owned by a party to a Board inter 

partes proceeding may be made of record therein by notice of reliance 

under 37 CFR § 2.122(e), or by appropriate identification and introduction 

during the taking of testimony, or by stipulation of the parties.150

However, a state registration (whether owned by a party, or not) is 

incompetent to establish that the mark shown therein has ever been used, 

or that the mark is entitled to Federal registration.151

148 See McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272, 276 (CCPA 1966) (registration on

Supplemental Register is not evidence of constructive notice of ownership nor evidence of exclusive right to use); In

re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); and Copperweld Corp. v. Arcair Co., 200 

USPQ 470 (TTAB 1978). Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232 (TTAB 1976); Aloe Creme 

Laboratories, Inc. v. Johnson Products Co., 183 USPQ 447 (TTAB 1974); Nabisco, Inc. v. George Weston Ltd., 179 

USPQ 503 (TTAB 1973); and Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970). 

149 See Action Temporary Services Inc. v. Labor Force Inc., 10 USPQ2d 1307 (Fed. Cir. 1989) (does not provide 

constructive notice of anything); Time Warner Entertainment Company v. Jones, 65 USPQ2d 1650, 1653 n.6

(TTAB 2002) (status and title copy of expired registration); Sunnen Products Co. v. Sunex International Inc., 1 

USPQ2d 1744, 1746-47 (TTAB 1987) (parties stipulated to introduction of photocopy of expired registration having

no probative value other than that it issued); United States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815, 818

n.7 (TTAB 1986) (expired “Act of 1920” registration had no probative value); Sinclair Manufacturing Co. v. Les 

Parfums de Dana, Inc., 191 USPQ 292, 294 (TTAB 1976) (lapsed registration of affiliated company is not evidence 

of use of mark at any time); and Bonomo Culture Institute, Inc. v. Mini-Gym, Inc., 188 USPQ 415, 416 (TTAB 

1975) (expired registration is incompetent evidence of any existing rights in mark). 

 See also Borden, Inc. v. Kerr-McGee Chemical Corp., 179 USPQ 316 (TTAB 1973), aff'd without opinion, 500 

F.2d 1407, 182 USPQ 307 (CCPA 1974); Unitec Industries, Inc. v. Cumberland Corp., 176 USPQ 62 (TTAB 1972);

and Monocraft, Inc. v. Leading Jewelers Guild, 173 USPQ 506 (TTAB 1972).

150 See TBMP § 704.07 (Official Records). 

 

151 See, for example, Faultless Starch Co. v. Sales Producers Associates, Inc., 530 F.2d 1400, 189 USPQ 141, 142

n.2 (CCPA 1976) (state registrations do not establish use); Kraft, Inc. v. Balin, 209 USPQ 877, 880 (TTAB 1981) 

(although parties stipulated to introduction of state registration, said registration is incompetent to prove anything

material to opposition proceeding); Plak-Shack, Inc. v. Continental Studios of Georgia, Inc., 204 USPQ 242, 246

(TTAB 1979) (incompetent as evidence of use of a mark); and Stagecoach Properties, Inc. v. Wells Fargo & Co., 

199 USPQ 341, 352 (TTAB 1978) (incompetent evidence to establish use of the mark), aff'd, 685 F.2d 302, 216 

USPQ 480 (9th Cir. 1982). See also Econo-Travel Motor Hotel Corp. v. Econ-O-Tel of America, Inc., 199 USPQ

307 (TTAB 1978); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387 (TTAB 1976); State Historical

Society of Wisconsin v. Ringling Bros.-Barnum & Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB 1976); Old

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Foreign Registrations. A foreign registration owned by a party to a 

Board inter partes proceeding may be made of record in the same manner

as a state registration, but a foreign registration is not evidence of the use, 

registrability, or ownership of the subject mark in the United States.

152 

 

Making the file history of the registration of record. If a party owns a 

registration that is not the subject of the proceeding and wishes to make of 

record the registration file history (rather than just the certificate of

registration), or a portion thereof, it may do so by: (1) filing, during its 

testimony period, a copy of the file history, or the portion it wishes to 

introduce, together with a notice of reliance thereon as an official record 

pursuant to 37 CFR § 2.122(e) (see TBMP § 704.05); or (2) appropriate 

identification and introduction of a copy of the file history, or portion 

thereof, during the taking of testimony; or (3) stipulation of the parties, 

accompanied by a copy of the file history, or portion thereof. 

The file history of a registration owned by another party, but not the 

subject of the proceeding, may be made of record in the same manner.153

Copies of official records of the Patent and Trademark Office need not be 

certified.154 

704.03(b)(1)(B) Third-Party Registration 

37 CFR § 2.122(e) Printed publications and official records. Printed 

publications, such as books and periodicals, available to the general 

public in libraries or of general circulation among members of the public 

Dutch Foods, Inc. v. Old Dutch Country House, Inc., 180 USPQ 659 (TTAB 1973); and Philip Morris Inc. v. 

Liggett & Myers Tobacco Co., 139 USPQ 240 (TTAB 1963). 

 Cf., with respect to ex parte appeals, In re Anania Associates, Inc., 223 USPQ 740, 742 (TTAB 1984) (argument 

that applicant’s state registration for the mark must be taken as prima facie evidence of distinctiveness rejected); In

re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984); and In re Illinois Bronze Powder & Paint Co., 188 USPQ 459

(TTAB 1975). 

152 See Societe Anonyme Marne et Champagne v. Myers, 250 F.2d 374, 116 USPQ 153, 156 (CCPA 1957); and

Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610, 1618 (TTAB

1988). See also Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503 (TTAB 1973); and Barash Co. v. Vitafoam 

Ltd., 155 USPQ 267 (TTAB 1967), aff'd, 427 F.2d 810, 166 USPQ 88 (CCPA 1970). Cf. In re Hag 

Aktiengesellschaft, 155 USPQ 598 (TTAB 1967). 

153 See Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692, 693 n.4 (TTAB 1974) (file history of

petitioner's registration not of record where respondent noticed it but failed to file a copy of it). 

 

154 See 37 CFR § 2.122(e). 

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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

A party to an inter partes proceeding before the Board may introduce as 

part of its evidence in the case, a registration owned by a party not 

involved in the proceeding.

 

or that segment of the public which is relevant under an issue in a 

proceeding, and official records, if the publication or official record is 

competent evidence and relevant to an issue, may be introduced in 

evidence by filing a notice of reliance on the material being offered. The 

notice shall specify the printed publication (including information 

sufficient to identify the source and the date of the publication) or the 

official record and the pages to be read; indicate generally the relevance 

of the material being offered; and be accompanied by the official record 

or a copy thereof whose authenticity is established under the Federal 

Rules of Evidence, or by the printed publication or a copy of the relevant 

portion thereof. A copy of an official record of the Patent and Trademark 

Office need not be certified to be offered in evidence. The notice of 

reliance shall be filed during the testimony period of the party that files 

the notice. 

155 

A party that wishes to make such a third-party registration of record in a 

Board inter partes proceeding may do so by filing, during its testimony

period, a plain copy of the registration together with a notice of reliance 

thereon specifying the registration and indicating generally its 

relevance.156 

A party to a Board inter partes proceeding may also make a third-party 

registration of record by introducing a copy of it as an exhibit to 

testimony, or by stipulation of the parties. 

It is not necessary that the copy of the third-party registration submitted 

with a notice of reliance (or with testimony or a stipulation) be certified, 

nor need it be a current status and title copy prepared by the Office; a plain 

155 See J. David Sams, TIPS FROM THE TTAB: Third Party Registrations in TTAB Proceedings, 72 Trademark 

Rep. 297 (1982). 

156 See 37 CFR § 2.122(e). See also Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992) (printouts 

of third-party registrations obtained from private search reports are neither printed publications nor official records);

Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 153 n.2 (TTAB 1983), aff'd, 739 F.2d 624, 222 USPQ 741 

(Fed. Cir. 1984); W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308, 309 n.5 (TTAB 1976)

(reference to third-party registrations in answer, without filing copies with a notice of reliance, was insufficient to

make them of record); and J. David Sams, TIPS FROM THE TTAB: Third Party Registrations in TTAB

Proceedings, supra at 301. 

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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

 

copy (or legible photocopy) of the registration itself, or the electronic 

equivalent thereof, that is, a printout of the registration from the electronic 

records of the Office’s automated search system is all that is required.157 

As stated in TBMP § 704.03(b)(1) above, a current status and title copy of 

a registration prepared by the Office (or other appropriate proof of current 

status and title) is necessary when the owner of a registration on the 

Principal Register seeks to make the registration of record for the purpose 

of relying on the presumptions accorded to a certificate of registration 

pursuant to Section 7(b) of the Act, 15 U.S.C. §1057(b). However, the 

Section 7(b) presumptions accorded to a registration on the Principal 

Register accrue only to the benefit of the owner of the registration, and 

hence come into play only when the registration is made of record by its 

owner, or when the registration is cited by a trademark examining attorney 

(in an ex parte case) as a reference under Section 2(d) of the Act, 15 

U.S.C. § 1052(d), against a mark sought to be registered.158 

Thus, when third-party registrations are made of record, the party offering 

them may not rely on the Section 7(b) presumptions; normally, third-party 

registrations are offered merely to show that they issued, and a plain copy 

of the registration is sufficient for that purpose.159 

157 See 37 CFR § 2.122(e); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) (incomplete excerpts 

of registrations from TRAM system was insufficient); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 

1994); and Weyerhaeuser Co. v. Katz, supra. See also Interbank Card Ass'n v. United States National Bank of

Oregon, 197 USPQ 123 (TTAB 1977); J. David Sams, TIPS FROM THE TTAB: Third Party Registrations in TTAB

Proceedings, supra; and Janet E. Rice, TIPS FROM THE TTAB: Making Documents Obtained During Discovery

and Third-Party Registrations of Record, 67 Trademark Rep. 54 (1977). 

158 See Section 7(b) of the Act, 15 U.S.C. § 1057(b); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 

USPQ2d 1139, 1144 (TTAB 1986) (wholly owned subsidiary of owner of registrations may not rely on registrations

to prove priority); In re Phillips-Van Heusen Corp., 228 USPQ 949, 950 (TTAB 1986) (claim that mark in cited

registration is not in use is an impermissible collateral attack on the validity of the registration in an ex parte 

proceeding); In re H & H Products, 228 USPQ 771, 773 (TTAB 1986) (entitled to presumption that marks have

overcome any inherent nondistinctiveness); Yamaha International Corp. v. Stevenson, 196 USPQ 701, 702 (TTAB 

1979) (opposer could not rely on 7(b) presumptions where registration is owned by its parent company); Fuld 

Brothers, Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ 473, 475-76 (TTAB 1972) (although petitioner 

can rely on its wholly owned subsidiary's use of a mark, petitioner cannot rely on the registrations owned by its 

wholly owned subsidiary for statutory presumptions); and Joseph S. Finch & Co. v. E. Martinoni Co., 157 USPQ

394, 395 (TTAB 1968) (opposer cannot rely on registrations owned by its parent or its parent's subsidiaries). 

159 See Hiram Walker & Sons, Inc. v. Milstone, 130 USPQ 274, 276 (TTAB 1961) and Janet E. Rice, TIPS FROM 

THE TTAB: Making Documents Obtained During Discovery and Third-Party Registrations of Record, 67 

Trademark Rep. 54 (1977). 

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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

 

On the other hand, a party may not make a third-party registration of 

record simply by introducing a list of third-party registrations that includes 

it; or by filing a trademark search report in which the registration is 

mentioned; or by filing a printout, from a private company's data base, of 

information about the registration; or by filing a notice of reliance together 

with a reproduction of the mark as it appeared in the Official Gazette for 

purposes of publication; or by referring to the registration in its brief or 

pleading. The Board does not take judicial notice of registrations in the 

Office.160 

Even when a third-party Federal registration has been properly made of 

record, its probative value is limited, particularly when the issue to be 

determined is likelihood of confusion, and there is no evidence of actual 

use of the mark shown in the registration.161 Nevertheless, third-party 

160 See, for example, In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) (listings from commercial 

trademark search reports); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994) (search report from 

private company’s database); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1885 (TTAB 

1993) (trademark search report wherein registrations are mentioned); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 

1231-32 (TTAB 1992) (trademark search reports from private companies are neither printed publications nor official 

records); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990) (search report), aff'd, 951 

F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International 

GmbH, 230 USPQ 530, 532 (TTAB 1986) (reference to third-party registrations in a brief); and Janet E. Rice, TIPS 

FROM THE TTAB: Making Documents Obtained During Discovery and Third-Party Registrations of Record, 

supra. See also National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978); Wella 

Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev'd on other grounds, 558 F.2d 1019, 194

USPQ 419 (CCPA 1977); and W. R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 

1976); 

 Cf. TBMP § 528.05(d) (for purposes of responding to a summary judgment motion only, a copy of a trademark 

search report may be sufficient to raise a genuine issue of material fact as to the nature and extent of third-party use 

of a particular designation). 

161 See AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (not

evidence of what happens in the market place or consumer familiarity); Sports Authority Michigan Inc. v. PC

Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (not evidence of use or that consumers have been exposed to

them); and Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d 1404, 1406 (TTAB 1988) (not

evidence of use to show public awareness of the marks). 

 See also Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (may 

not be given any weight in determining strength of a mark); Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d

1342, 196 USPQ 289, 291 n.12 (CCPA 1977) (little evidentiary value in determining scope of protection); 

Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff’d,534 F.2d 915, 189 USPQ 693, 694 (CCPA

1976) (little weight on likelihood of confusion); Conde Nast Publications Inc. v. Miss Quality, Inc., 507 F.2d 1404, 

184 USPQ 422, 424-25 (CCPA 1975) (little weight on question of likelihood of confusion); Spice Islands, Inc. v.

Frank Tea and Spice Co., 505 F.2d 1293, 184 USPQ 35, 38 (CCPA 1974) (do not control determination of whether

marks are so similar that they are likely to cause confusion); and Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ

151, 153 n.2 (TTAB 1983) (third-party registration only establishes what appears on its face, that application was 

made claiming adoption and use and that registration was granted), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir.

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registrations may be entitled to some weight to show the meaning of a 

mark, or a portion of a mark, in the same manner as a dictionary 

definition.162

A state registration, whether or not owned by a party, has very little, if 

any, probative value in a proceeding before the Board.163 

Making file history of third-party registration of record. The file history 

of a third-party registration (rather than just the certificate of registration), 

or a portion thereof, may be made of record by: (1) filing, during the 

offering party's testimony period, a copy of the file history, or the portion 

it wishes to introduce, together with a notice of reliance thereon as an 

official record pursuant to 37 CFR § 2.122(e) (see TBMP § 704.07); or (2) 

appropriate identification and introduction of a copy of the file history, or 

portion thereof, during the taking of testimony; or (3) stipulation of the 

parties, accompanied by a copy of the file history, or portion thereof. 

It is not necessary that the copy of the registration file, or portions thereof, 

be certified.164 However, third-party registration histories are of very 

limited probative value.165 

1984). See, in addition, J. David Sams, TIPS FROM THE TTAB: Third Party Registrations in TTAB Proceedings, 

72 Trademark Rep. 297, 301 (1982). 

 Cf. In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002) (registrations under 

Section 2(f) or on the Supplemental Register, although not conclusive evidence, may be probative evidence of mere 

descriptiveness). Cf. also In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988) (third-party 

registrations may have some probative value to the extent that they may serve to suggest that goods or services are 

of a type which may emanate from the same source).

162 See Tektronix, Inc. v. Daktronics, Inc., supra, 189 USPQ at 694-95, and Conde Nast Publications, Inc. v. Miss

Quality, Inc., supra. See also Sports Authority Michigan Inc. v. PC Authority Inc., supra at 1798 (that a term is 

adopted to convey a particular suggestive meaning); General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 

1277 (TTAB 1992) (to show the sense in which the term is employed in the marketplace); United Foods Inc. v. J.R. 

Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987) (to show ordinary usage of a term and descriptive or suggestive 

significance); and Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964, 968 (TTAB 1985) (to show

geographic significance of terms). 

163 See Allstate Insurance Co. v. DeLibro, 6 USPQ2d 1220, 1223 (TTAB 1988) (third-party state registrations "are 

of absolutely no probative value" on the question of likelihood of confusion), and TBMP § 704.03(b)(1)(A)

(Registration Owned by Party) and cases cited therein.

164 See 37 CFR § 2.122(e). 

165 See Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB 1979) (specimens from thirdparty registration files are not evidence of the fact that the specimens filed in the underlying applications or even

with Section 8 affidavits are in use today or that such specimens have ever been used to the extent that hey have

made an impression on the public). 

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704.03(b)(2) Application Not Subject of Proceeding 

37 CFR § 2.122(e) Printed publications and official records. Printed 

publications, such 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, and official 

records, if the publication or official record is competent evidence and relevant to 

an issue, may be introduced in evidence by filing a notice of reliance on the 

material being offered. The notice shall specify the printed publication (including 

information sufficient to identify the source and the date of the publication) or the 

official record and the pages to be read; indicate generally the relevance of the 

material being offered; and be accompanied by the official record or a copy 

thereof whose authenticity is established under the Federal Rules of Evidence, or 

by the printed publication or a copy of the relevant portion thereof. A copy of an 

official record of the Patent and Trademark Office need not be certified to be 

offered in evidence. The notice of reliance shall be filed during the testimony 

period of the party that files the notice. 

A party to a proceeding before the Board may introduce, as part of its evidence in 

the case, a copy of an application that is not the subject of the proceeding, by 

filing, during its testimony period, a copy of the application file, or of the portions 

which it wishes to introduce, together with a notice of reliance thereon specifying 

the application and indicating generally its relevance.166 It is not necessary that 

the copy of the application, or portions thereof, filed under a notice of reliance be 

certified.167 

An application that is not the subject of the proceeding may also be made of 

record by appropriate identification and introduction during the taking of 

testimony, or by stipulation of the parties. 

An application made of record in a Board inter partes proceeding, whether owned 

by a party or not, is generally of very limited probative value.168 However, if the 

166 See 37 CFR § 2.122(e); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231 (TTAB 1992) (copy of drawing from

abandoned application); Glamorene Products Corporation. v. Earl Grissmer Company, Inc., 203 USPQ 1090, 1092 

n.5 (TTAB 1979) (copies of third-party applications); and St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 

196 USPQ 778, 780 n.4 (TTAB 1977) (file history of petitioner’s application). 

167 See 37 CFR § 2.122(e). 

168 See Glamorene Products Corporation v. Earl Grissmer Company, Inc., supra at 1092 n.5 (evidence only of the 

filing of the application); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 396 n.10 (TTAB 1979) (claim of

ownership of a registration in an application is not competent evidence of ownership of the registration); Lasek &

Miller Associates v. Rubin, 201 USPQ 831, 833 n.3 (TTAB 1978) (petitioner’s application file is proof only of

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application is owned by a party to the proceeding, the allegations made and 

documents and things filed in the application may be used as evidence against the 

applicant, that is, as admissions against interest and the like.169 

704.04 Statements and Things in Application or Registration 

37 CFR § 2.122(b) Application files. 

(1) The file of each application or registration specified in a notice of interference, of each 

application or registration specified in the notice of a concurrent use registration proceeding, of

the application against which a notice of opposition is filed, or of each registration against 

which a petition or counterclaim for cancellation is filed forms part of the record of the 

proceeding without any action by the parties and reference may be made to the file for any 

relevant and competent purpose. 

(2) The allegation in an application for registration, or in a registration, of a date of use is not 

evidence on behalf of the applicant or registrant; a date of use of a mark must be established by 

competent evidence. Specimens in the file of an application for registration, or in the file of a 

registration, are not evidence on behalf of the applicant or registrant unless identified and 

introduced in evidence as exhibits during the period for the taking of testimony. 

While the file of a particular application or registration may be of record in a Board inter partes 

proceeding, by operation of 37 CFR § 2.122(b) (see TBMP § 704.03(a)) or otherwise (see TBMP 

§ 704.03(b)) the allegations made, and documents and other things filed, in the application or 

registration are not evidence in the proceeding on behalf of the applicant or registrant.170 

Allegations must be established by competent evidence, properly adduced at trial, and the 

documents and other things in an application or registration file are not evidence, in an inter 

partes proceeding, on behalf of the applicant or registrant unless they are identified and 

filing, not of any facts alleged in the application); and St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 

supra (incompetent to prove use). See also Allied Mills, Inc. v. Kal Kan Foods, Inc., supra at 397 n.11 (specimens

from third-party registration files are not evidence of the fact that the specimens filed in the underlying applications 

or even with Section 8 affidavits are in use today or that such specimens have ever been used to the extent that hey

have made an impression on the public); Continental Specialties Corp. v. Continental Connector Corp., 192 USPQ

449 (TTAB 1976); Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232 (TTAB 1976); and TBMP § 704.04

(Statements and Things in Application or Registration). 

169 See TBMP § 704.04 (Statements and Things in Application or Registration) and cases cited therein. 

170 See, for example, Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (in 

the absence of proof of use, the filing date of the application, rather than the dates of use alleged in the application,

is treated as the earliest use date on which applicant may rely); Allied Mills, Inc. v. Kal Kan Foods, Inc., supra at 

396 n.10 (an application is not evidence of anything on behalf of applicant except that it was filed); and Omega SA 

v. Compucorp, 229 USPQ 191, 195 (TTAB 1985) (allegations and documents in application file not evidence unless 

and to the extent they have been identified and introduced in evidence during testimony). 

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introduced in evidence as exhibits during the testimony period.171 This is because the adverse 

party has a right to confront and cross-examine the person making the allegations, and to 

question the authenticity of the specimens, documents, exhibits, etc.172 Thus, for example, the 

allegation in an application or registration of a date of use is not evidence on behalf of the 

applicant or registrant in an inter partes proceeding; to be relied on by the applicant or registrant, 

a claimed date of use of a mark must be established by competent evidence.173 Similarly, the 

allegations of use in a third-party registration do not constitute evidence that the mark shown 

therein has actually been used.174 The specimens in the file of an application or registration are 

171 See 37 CFR § 2.122(b); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB 1993)

(exhibits, affidavits and market survey which had been submitted by applicant in connection with the prosecution of 

its application are not evidence in subsequent opposition proceeding to establish acquired distinctiveness unless 

properly introduced), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Kellogg Co. v. Pack'Em Enterprises 

Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990) (reliance in brief on unproven statements in application), aff'd, 951 

F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1897 n.4 (TTAB

1989) (notice of reliance referring to declaration signed by applicant in applying for registration); Edison Brothers 

Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 531 n.7 (TTAB 1986) (claim of ownership

of registration in application does not make registration of record); Osage Oil & Transportation, Inc. v. Standard Oil 

Co., 226 USPQ 905, 906 n.4 (TTAB 1985) (statements and materials in registration file bearing on respondent's 

dates of use not evidence on behalf of respondent unless properly introduced); Sunbeam Corp. v. Battle Creek 

Equipment Co., 216 USPQ 1101, 1102 n.3 (TTAB 1982) (applicant's claim of distinctiveness in its application is an 

admission by applicant that term is descriptive but 2(f) affidavit in application not admissible evidence of the truth 

of statements therein in inter partes proceeding); Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 

(TTAB 1981) (specimens in application not evidence on behalf of respondent); Copperweld Corp. v. Arcair Co., 

200 USPQ 470, 474 n.3 (TTAB 1978) (claim of ownership of registration in application does not make registration

of record ); Dap, Inc. v. Century Industries Corp., 183 USPQ 122, 123 (TTAB 1974) (applicant cannot rely on

specimens filed with application to delineate nature and use of its goods); Textron Inc. v. Arctic Enterprises, Inc., 

178 USPQ 315, 316 n.2 (TTAB 1973) (applicant cannot rely on dates of use alleged in application); ILC Products 

Co. v. ILC, Inc., 175 USPQ 722, 723 n.3 (TTAB 1972); and Fuld Brothers, Inc. v. Carpet Technical Service 

Institute, Inc., 174 USPQ 473, 476 (TTAB 1972) (self-serving statements made during prosecution of application

are not admissible in cancellation proceeding). See also W. T. Grant Co. v. Grant Avenue Fashions, Inc., 135 USPQ

273 (TTAB 1962).

172 See ILC Products Co. v. ILC, Inc., supra and Fuld Brothers, Inc. v. Carpet Technical Service Institute, Inc., 

supra. See also W.T. Grant Co. v. Grant Avenue Fashions, Inc., supra. 

173 See 37 CFR § 2.122(b)(2). See also Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467

(TTAB 1993); Omega SA v. Compucorp, 229 USPQ 191, 193 n.10 (TTAB 1985) (applicant may rely on

presumption that its mark was in use as of filing date of application in absence of any proof of earlier use); Osage 

Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.4 (TTAB 1985); and Textron Inc. v. Arctic 

Enterprises, Inc., 178 USPQ 315 (TTAB 1973). 

174 See 37 CFR § 2.122(b)(2), and Alpha Industries, Inc. v. Alpha Microsystems, 223 USPQ 96, 96 (TTAB 1984)

(Board will not take judicial notice of statements made in third-party applications regarding use). See also, for 

example, Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1622 (TTAB 1989); Chemical New 

York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (registrations owned by opposer's 

parent corporation are third-party registrations and opposer cannot rely on those registrations to prove priority);

Economics Laboratory, Inc. v. Scott's Liquid Gold, Inc., 224 USPQ 512, 514 (TTAB 1984); and Allied Mills, Inc. v. 

Kal Kan Foods, Inc., 203 USPQ 390, 397 n.11 (TTAB 1979) (specimens from third-party registration files are not

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not evidence on behalf of the applicant or registrant, in an inter partes proceeding, unless they are 

identified and introduced in evidence as exhibits during the testimony period.175 Affidavits or 

declarations in an application or registration file cannot be relied on by the applicant or 

registrant, in an inter partes proceeding, as evidence of the truth of the statements contained 

therein; the statements must be established by competent evidence at trial.176 Similarly, 

statements made by counsel, and exhibits filed, in an application or registration do not constitute 

admissible evidence in the applicant's or registrant's behalf in an inter partes proceeding; the 

statements must be established by competent evidence, and the exhibits must be properly 

identified and introduced in evidence, at trial.177 Further, the fact that the file of an application or 

registration that is the subject of a Board inter partes proceeding is automatically of record in that 

proceeding, does not mean that a registration claimed by applicant or registrant in the application 

or registration is also automatically of record.178 

Although the allegations made and documents and things filed in an application or registration 

are not evidence, in a Board inter partes proceeding, on behalf of the applicant or registrant

(unless they are properly proved at trial), they may be used as evidence against the applicant or 

registrant, that is, as admissions against interest and the like.179 

evidence of the fact that the specimens filed in the underlying applications or even with Section 8 affidavits are in

use today or that such specimens have ever been used to the extent that hey have made an impression on the public). 

175 See 37 CFR § 2.122(b)(2); Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 961

n.11 (TTAB 1985); and Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 (TTAB 1981). See also Dap,

Inc. v. Century Industries Corp., 183 USPQ 122 (TTAB 1974). 

176 See British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB 1993) (2(f) affidavits submitted

during prosecution of application), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); McDonald's Corp. v. 

McKinley, 13 USPQ2d 1895, 1897 n.4 (TTAB 1989) (declaration in support of application), and Sunbeam Corp. v. 

Battle Creek Equipment Co., 216 USPQ 1101, 1102 n.3 (TTAB 1982) (2(f) affidavit in application). 

177 See British Seagull Ltd. v. Brunswick Corp., supra (exhibits and market surveys to show acquired 

distinctiveness during prosecution were not competent evidence in subsequent opposition proceeding); W. T. Grant 

Co. v. Grant Avenue Fashions, Inc., 135 USPQ 273, 275 (TTAB 1962) (explanation of applicant's operations by

applicant’s counsel during ex parte prosecution was not admissible evidence in subsequent opposition). 

178 See Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 185 USPQ 61, recon. denied, 185 USPQ 176 

(TTAB 1975), aff’d,530 F.2d 1396, 189 USPQ 138, 140 (CCPA 1976); Edison Brothers Stores, Inc. v. Brutting E.B. 

Sport-International GmbH, 230 USPQ 530, 531 n. 7 (TTAB 1986); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 

USPQ 390, 396 n.10 (TTAB 1979); and Copperweld Corp. v. Arcair Co., 200 USPQ 470, 474 n.3 (TTAB 1978). 

179 See Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 961 n.5 and n.11 (TTAB

1985) (date of first use asserted by opposer in its application may be considered as admission against interest; in

evaluating "Morehouse" type defense, Board relied on specimens and other materials in applicant's application as 

evidence of the nature of applicant's services to find that those services were not "substantially identical" to the 

goods in applicant's subsisting registration): Sunbeam Corp. v. Battle Creek Equipment Co., 216 USPQ 1101, 1102

n.3 (TTAB 1982) (applicant's claim of distinctiveness in its application is an admission by applicant that term is 

descriptive but 2(f) affidavit in application not admissible evidence of the truth of statements therein in inter partes 

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704.05 Exhibits to Pleadings or Briefs 

 

704.05(a) Exhibits to Pleadings

37 CFR § 2.122(c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of this 

section, an exhibit attached to a pleading is not evidence on behalf of the party to whose 

pleading the exhibit is attached unless identified and introduced in evidence as an exhibit 

during the period for the taking of testimony.

37 CFR § 2.122(d) Registrations. (1) A registration of the opposer or petitioner pleaded 

in an opposition or petition to cancel will be received in evidence and made part of the 

record if the opposition or petition is accompanied by two copies (originals or 

photocopies) of the registration prepared and issued by the Patent and Trademark Office 

showing both the current status of and current title to the registration. For the cost of a 

copy of a registration showing status and title, see § 2.6(b)(4). 

With one exception, exhibits attached to a pleading are not evidence on behalf of the 

party to whose pleading they are attached unless they are thereafter, during the time for 

taking testimony, properly identified and introduced in evidence as exhibits.180 

The one exception is a current status and title copy, prepared by the Office, of a plaintiff's 

pleaded registration. When a plaintiff submits such a status and title copy of its pleaded 

proceeding);and Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607, 613 n.7 (TTAB 1981) (specimens in

respondent's registration may be used as admission against interest of relationship between respondent's and 

petitioner's goods). 

 See also, for example, Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773

(Fed. Cir. 1987) (applicant which seeks to prove date of first use earlier than that stated in its application must do so

by heavier burden of clear and convincing evidence, rather than a preponderance of the evidence, because of the 

change of position from one "considered to have been made against interest at the time of filing of the application");

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984)

(applicant's earlier contrary position before the Examining Attorney as to the meaning of its mark as demonstrated

by statements in the application illustrating the variety of meanings that may be attributed to, and commercial 

impression projected by, applicant's mark, may be relevant); Interstate Brands Corp. v. Celestial Seasonings, Inc., 

576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (fact that party took position in its application inconsistent with its 

position in inter partes proceeding may be considered as evidence "illuminative of shade and tone in the total picture 

confronting the decision maker"); Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36

(CCPA 1971) (in application for mark in typed form, specimens in application may be used to illustrate one form in

which mark may actually be used in order to show similarity with opposer's mark); and American Rice, Inc. v. H.I.T. 

Corp., 231 USPQ 793, 798 (TTAB 1986) (fact that opposer took position in its application regarding descriptiveness 

of term inconsistent with its position in inter partes proceeding may be considered as evidence, although earlier 

inconsistent position does not give rise to an estoppel). 

180 37 CFR § 2.122(c) and TBMP § 317 (Exhibits to Pleadings) and cases cited therein. 

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registration as an exhibit to its complaint, the registration will be received in evidence 

and made part of the record without any further action by plaintiff.181 

704.05(b) Exhibits to Briefs 

Exhibits and other evidentiary materials attached to a party's brief on the case can be

given no consideration unless they were properly made of record during the time for 

taking testimony.182

If, after the close of the time for taking testimony, a party discovers new evidence that it 

wishes to introduce in its behalf, the party may file a motion to reopen its testimony 

period. However, the moving party must show not only that the proposed evidence has 

been newly discovered, but also that it could not have been discovered earlier through the 

exercise of reasonable diligence.183

 

181 See 37 CFR §§ 2.122(c) and (d)(1), and TBMP § 704.03(b)(1)(A) (Registration Owned by Party). 

182 See, for example, Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 748 n.5 (TTAB 1986) (third-party registrations

attached to brief not considered); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1009 n.18

(TTAB 1984) (copy of Canadian Opposition Board decision attached to brief not considered); BL Cars Ltd. v. Puma 

Industria de Veiculos S/A, 221 USPQ 1018, 1019 (TTAB 1983); Plus Products v. Physicians Formula Cosmetics,

Inc., 198 USPQ 111 (TTAB 1978); Astec Industries, Inc. v. Barber-Greene Co., 196 USPQ 578 (TTAB 1977); and

Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387 (TTAB 1976). See also L. Leichner (London) Ltd. v. 

Robbins, 189 USPQ 254 (TTAB 1975); American Crucible Products Co. v. Kenco Engineering Co., 188 USPQ 529

(TTAB 1975); Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693 

(CCPA 1976); Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 185 USPQ 61 (TTAB 1975), aff'd, 530

F.2d 1396, 189 USPQ 138 (CCPA 1976); and Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 

USPQ 429 (TTAB 1973). 

 Compare, for example, Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) 

(dictionary definitions attached to applicant’s brief were the proper subject of judicial notice); Plus Products v. 

Natural Organics, Inc., 204 USPQ 773, n.5 (TTAB 1979) (evidence which had been timely filed was not

objectionable when a reproduction of the evidence was later attached to a trial brief); and TBMP § 704.12 regarding

judicial notice. 

183 See TBMP § 509.01 (Nature of Motions to Extend Time or Reopen Time) and cases cited therein. 

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704.06 Statements in Pleadings or Briefs 

704.06(a) Statements in Pleadings 

Statements made in pleadings cannot be considered as evidence in behalf of the party 

making them; such statements must be established by competent evidence during the time 

for taking testimony.184 

However, statements in pleadings may have evidentiary value as admissions against 

interest by the party that made them.

185 

 

704.06(b) Statements in Briefs 

Factual statements made in a party's brief on the case can be given no consideration 

unless they are supported by evidence properly introduced at trial. Statements in a brief 

have no evidentiary value, except to the extent that they may serve as admissions against 

interest.186 

184 See Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1547 n.6 (TTAB 1990), aff'd, 951 F.2d 330, 21

USPQ2d 1142 (Fed. Cir. 1991), and Times Mirror Magazines, Inc. v. Sutcliff, 205 USPQ 656, 662 (TTAB 1979)

(statements in answer referring to sales of applicant's magazines were not considered).

185 See Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 174 USPQ 395, 396 n.4 (CCPA 1972) (pleadings in prior

proceeding available as evidence, although not conclusive evidence, against the pleader); Bakers Franchise Corp. v. 

Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192, 193 (CCPA 1969) (admission contained in pleading of one 

action may be evidence against pleader in another action); Kellogg Co. v. Pack'Em Enterprises Inc., supra; Litton

Business Systems, Inc. v. J. G. Furniture Co., 196 USPQ 711, 714 (TTAB 1977) (admissions in answer regarding

meaning of mark); and Brown Co. v. American Stencil Manufacturing Co., 180 USPQ 344, 345 n.5 (TTAB 1973)

(applicant having admitted in its answer that it did not use mark prior to a certain date was estopped from later 

contending that it has an earlier date of use).

186 See, e.g., Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1462 n.5 (TTAB 1992)

(additional revenue figures provided in trial brief not considered); Kellogg Co. v. Pack'Em Enterprises Inc., 14

USPQ2d 1545, 1547 n.6 (TTAB 1990) (reliance in brief on unproven statements made in application), aff'd, 951

F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); BL Cars Ltd. v. Puma Industria de Veiculos S/A, 221 USPQ 1018, 

1019 (TTAB 1983); Abbott Laboratories v. Tac Industries, Inc., 217 USPQ 819, 823 (TTAB 1981) (factual 

statements regarding certain scientific matter which cannot be deemed to be public knowledge not considered);

Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502, 507 (TTAB 1978); and Plus Products v. Physicians Formula 

Cosmetics, Inc., 198 USPQ 111, 112 n.3 & 113 (TTAB 1978). 

 Cf. Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) (without

copies of relevant documentation including relevant portions of application file, not possible to determine validity of

opposer's allegations that applicant took inconsistent position in its application) and In re Simulations Publications, 

Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975). 

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704.07 Official Records 

37 CFR § 2.122(e) Printed publications and official records. Printed publications, such 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, and official records, if the publication or official record is competent evidence and 

relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material 

being offered. The notice shall specify the printed publication (including information sufficient 

to identify the source and the date of the publication) or the official record and the pages to be 

read; indicate generally the relevance of the material being offered; and be accompanied by the 

official record or a copy thereof whose authenticity is established under the Federal Rules of 

Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an 

official record of the Patent and Trademark Office need not be certified to be offered in 

evidence. The notice of reliance shall be filed during the testimony period of the party that files 

the notice. 

A party that wishes to introduce an official record in evidence in a Board inter partes proceeding 

may do so, if the official record is competent evidence and relevant to an issue in the proceeding, 

by filing a notice of reliance thereon during its testimony period. The notice of reliance must 

specify the official record and the pages to be read; indicate generally the relevance of the 

material being offered; and be accompanied by the official record or a copy thereof whose 

authenticity is established under the Federal Rules of Evidence.187 

The term "official records" as used in 37 CFR § 2.122(e) refers not to a party's company business 

records, but rather to the records of public offices or agencies, or records kept in the performance 

187 See 37 CFR § 2.122(e). See also Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992) (trademark

search reports are not official records); Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361 n.3

(TTAB 1978) (notice of reliance on official records is untimely when filed after oral hearing), aff'd, 599 F.2d 1009, 

202 USPQ 100 (CCPA 1979); Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 (TTAB 

1984) (sufficiently indicated relevance of third-party registrations); Conde Nast Publications Inc. v. Vogue Travel,

Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (official records are records prepared by a public officer); Plus Products

v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (submission of duplicate copies of third-party 

registrations with brief was not untimely where the evidence had been timely filed during course of proceeding); and 

May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (untimely notice of reliance on official 

records filed after expiration of testimony period not considered). 

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of duty by a public officer.188 These official records are considered self-authenticating, and as 

such, require no extrinsic evidence of authenticity as a condition to admissibility.189

For examples of cases concerning the admissibility of specific documents, by notice of reliance, 

as "official records" under 37 CFR § 2.122(e), see cases cited in the note below.190

For information concerning establishing the authenticity, under the Federal Rules of Evidence, 

of an official record, see Fed. R. Evid. 901(a), 901(b)(7), and 902(4). The latter rule provides, in 

effect, that extrinsic evidence of authenticity as a condition precedent to admissibility is not 

required with respect to a properly certified copy of an official record, and describes the 

188 See Black's Law Dictionary (Fifth Edition, 1979); Weyerhaeuser Co. v. Katz, supra at 1223 (party's own file 

copies of documents from a Board proceeding are not official records); and Conde Nast Publications Inc. v. Vogue 

Travel, Inc., supra at 580 n.5 (official records are records prepared by a public officer). See also Fed. R. Evid. 

902(4). 

189 See Conde Nast Publications Inc. v. Vogue Travel, Inc., supra at 580 n.5. See also Raccioppi v. Apogee Inc., 47 

USPQ2d 1368, 1369 (TTAB 1998). 

190 Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508 (TTAB 2000) (copy of Board's 

decision on summary judgment in prior opposition – yes; purported copy of brief in support of summary judgment

motion in prior proceeding which did not reflect that it was received by the Board but appeared to be merely 

applicant's file copy of the document – no); Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d

1883, 1884 n.3 (TTAB 1993) (trademark search report --no); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232

(TTAB 1992) (trademark search reports--no); Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d 1157, 

1159 n.3 (TTAB 1992), aff'd, 28 USPQ2d 1687 (Fed. Cir. 1993) (trademark search report -- no; third-party 

registrations--yes); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985)

(copy of cancellation proceeding file--yes; party's file copies of documents filed in the PTO--no); Cadence 

Industries Corp. v. Kerr, 225 USPQ 331, 332 n.3 (TTAB 1985) (letters between counsel for parties, and list of 

party's licensees--no); Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 (TTAB 1984) 

(third-party registrations--yes); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ

73, 74 n.2 (TTAB 1983) (portions of an agreement between applicant and a third party, press release, list of foreign

trademark registrations, and a shipping document for applicant's product--no); Conde Nast Publications Inc. v. 

Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB 1979) (copy of letter from Amtrak to applicant congratulating

applicant for having an appointment as an Amtrak agent, copy of a "Passenger Sales Agency Agreement" between 

the International Air Transport Association and applicant, etc.--no); Hunt-Wesson Foods, Inc. v. Riceland Foods, 

Inc., 201 USPQ 881, 883 (TTAB 1979) (brochures and other promotional literature--no); May Department Stores 

Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) (certified copies of corporate records maintained by Secretary 

of State of Missouri --yes); Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658, 663 n.3 & 

664 (TTAB 1977) (plat plan, deed of realty, and confirmatory assignment--not admissible by notice of reliance as 

official record because not properly authenticated); Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ 653, 654

n.9 (TTAB 1976) (third-party registrations--yes); Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692, 693

n.4 (TTAB 1974) (file history of party's registration--yes); Jetzon Tire & Rubber Corp. v. General Motors Corp., 

177 USPQ 467, 468 n.3 (TTAB 1973) (drawings from Federal trademark applications--yes); and American Optical

Corp. v. American Olean Tile Co., 169 USPQ 123, 125 (TTAB 1971) (certificate of good standing from a United

States district court--yes). 

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requirements for proper certification. However, a copy of an official record of the USPTO need 

not be certified to be offered in evidence by notice of reliance.191 

In lieu of the actual "official record or a copy thereof," the notice of reliance may be 

accompanied by an electronically generated document (or a copy thereof) which is the equivalent 

of the official record, and whose authenticity is established under the Federal Rules of 

Evidence.192 

Although official records may be made of record by notice of reliance under 37 CFR § 2.122(e), 

it is not mandatory that they be introduced in this manner. They may, alternatively, be made of 

record by appropriate identification and introduction during the taking of testimony, or by 

stipulation of the parties.193 These latter two methods may also be used to introduce types of 

official records that are not admissible by notice of reliance under 37 CFR § 2.122(e).194 

For information concerning the raising of objections to notices of reliance and materials filed 

there under, see TBMP §§ 533 and 707.02. 

Materials improperly offered under 37 CFR § 2.122(e) may nevertheless be considered by the 

Board if the adverse party (parties) does not object to their introduction or itself treats the 

materials as being of record.195 

191 See 37 CFR § 2.122(e). 

192 See Weyerhaeuser Co. v. Katz, supra at 1232. Cf. TBMP § 704.08 (Printed Publications). 

193 See Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984); Hayes Microcomputer Products, Inc. v. 

Business Computer Corp., 219 USPQ 634, 637 n.3 (TTAB 1983); and Regent Standard Forms, Inc. v. Textron Inc., 

172 USPQ 379, 380-81 (TTAB 1971). 

194 See, for example, Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2

(TTAB 1983) (an agreement between applicant and a third party, press releases, and a shipping document, although

not acceptable for a notice of reliance may be introduced in connection with competent testimony); Midwest 

Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (since adverse 

party did not object to notice of reliance on annual reports, treated as stipulated into the record ), aff'd, 906 F.2d

1568, 15 USPQ2d 1359 (Fed. Cir. 1990), and Minnesota Mining & Manufacturing Co. v. Stryker Corp., 179 USPQ

433, 434 (TTAB 1973) (while annual reports and booklets and brochures do not constitute printed publications and

are therefore not appropriate for introduction by notice of reliance, they may be introduced in connection with

testimony of someone who is familiar with them and can explain the nature and use of such materials). 

195 See, for example, U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1309 n.4 (TTAB 1990) (improper subject 

matter but adverse party expressly agreed to its authenticity and accuracy); Midwest Plastic Fabricators Inc. v. 

Underwriters Laboratories Inc., supra (neither party objected to the notice of reliance on annual reports by the 

other); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (improper 

subject matter and improper rebuttal considered where no objection was raised); Jeanne-Marc, Inc. v. Cluett, 

Peabody & Co., 221 USPQ 58, 59 nn.3 & 4 (TTAB 1984) (improper subject matter deemed stipulated into record 

where no objection was raised); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580 n.5 (TTAB

1979) (improper subject matter deemed stipulated into record where adverse party did not object and specifically 

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704.08 Printed Publications 

37 CFR § 2.122(e) Printed publications and official records. Printed publications, such 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, and official records, if the publication or official record is competent evidence and 

relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material 

being offered. The notice shall specify the printed publication (including information sufficient 

to identify the source and the date of the publication) or the official record and the pages to be 

read; indicate generally the relevance of the material being offered; and be accompanied by the 

official record or a copy thereof whose authenticity is established under the Federal Rules of 

Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an 

official record of the Patent and Trademark Office need not be certified to be offered in 

evidence. The notice of reliance shall be filed during the testimony period of the party that files 

the notice. 

Certain types of printed publications may be introduced in evidence in a Board inter partes 

proceeding by notice of reliance. Specifically, printed publications, such 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, if the 

publication is competent evidence and relevant to an issue in the proceeding, may be introduced 

in evidence by filing a notice of reliance thereon during the testimony period of the offering 

party.196 The notice must specify the printed publication, including information sufficient to 

referred to the matter in its brief); and Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB

1979) (untimely notice of reliance filed prior to testimony period considered where no objection was raised and error 

was not prejudicial). Cf. Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987)

(improper subject matter excluded where although there was no objection, no agreement could be inferred) and 

Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (improper subject matter 

excluded, although adverse party did not object to the material).

196 See Hunter Publishing Co. v. Caulfield Publishing 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); Mack 

Trucks, Inc. v. California Business News, Inc., 223 USPQ 164, 165 n.5 (TTAB 1984) (objection that applicant failed 

to indicate relevance of materials overruled); Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361

n.3 (TTAB 1978) (notice of reliance on printed material filed after oral hearing untimely), aff'd, 599 F.2d 1009, 202 

USPQ 100 (CCPA 1979); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979)

(duplicates of printed publications submitted with brief which had been properly filed by notice of reliance during

testimony period considered); Glamorene Products Corporation. v. Earl Grissmer Company, Inc., 203 USPQ 1090, 

1092 n.5 (TTAB 1979) (rule provides safeguard that party against whom evidence is offered is readily able to

corroborate or refute authenticity of what is proffered); Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ

33, 36 n.10 (TTAB 1976) (plaintiff's catalogs and house publications not considered because it was not shown they

are "available to the general public in libraries or in general circulation"; advertisements permitted if publication in

which they appeared and dates are provided to allow party to verify authenticity); and Jetzon Tire & Rubber Corp. v.

General Motors Corp., 177 USPQ 467, 468 n.3 (TTAB 1973) (publication shown to be available in public library

properly submitted under 2.122(e), even though it may constitute hearsay or be of dubious relevance). 

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identify the source and the date of the publication, and the pages to be read; indicate generally 

the relevance of the material being offered; and be accompanied by the printed publication or a 

copy of the relevant portion thereof.197 

In lieu of the actual "printed publication or a copy of the relevant portion thereof," the notice of 

reliance may be accompanied by an electronically generated document which is the equivalent of 

the printed publication or relevant portion, as, for example, by a printout from the NEXIS 

computerized library of an article published in a newspaper or magazine of general circulation.198 

In case of reasonable doubt as to whether printed publications submitted by notice of reliance 

under 37 CFR § 2.122(e) are "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 

the proceeding, the burden of showing that they are so available lies with the offering party.199 

For examples of cases concerning the admissibility of specific materials, by notice of reliance, as 

"printed publications" under 37 CFR § 2.122(e), see cases cited in the note below.200

197 See 37 CFR § 2.122(e). See also Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1721 n.50 (TTAB 1999) 

(excerpts that were unidentified as to either source or date were not considered, as the extent to which such material 

is genuine and available to the public could not be ascertained), rev'd on other grounds, 284 F. Supp. 2d 96, 68

USPQ2d 1225 (D.D.C. 2003); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) 

(finding it sufficient that copies of the excerpted articles contained notations either on the copies themselves or in 

the notice of reliance as to the source and date of the copied articles, but noting that a proffered excerpt from a 

newspaper or periodical is lacking in foundation and, thus, is not admissible as evidence to the extent that it is an 

incomplete or illegible copy, is unintelligible because it is in a language other than English, or is not fully identified 

as to the name and date of the published source); Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 

1717 n.3 (TTAB 1987) (printed advertisement not identified with the specificity required to be considered a printed 

publication); and Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986) (notice of

reliance received without appended copy of printed publication). 

198 See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); and International Ass'n of Fire Chiefs, Inc. v. H. 

Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB 1985) (NEXIS printout of excerpted stories published in 

newspapers, magazines, etc. are admissible because excerpts identify their dates of publication and sources and 

since complete reports, whether through the same electronic library or at a public library, are available for 

verification), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). 

 Cf. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (electronic excerpts are 

not hearsay because articles were not used to support the truth of the statements therein but to show descriptive 

usage of term); R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 174-75 (TTAB 

1985) (printouts from databases which themselves comprise abstracts or syntheses of published documents unlike

the actual text of the documents, are hearsay as to the context of a term); and TBMP § 707 (Objections to Evidence).

199 See Glamorene Products Corporation. v. Earl Grissmer Company, Inc., supra at 1092 n.5 (TTAB 1979) (private 

promotional literature is not presumed to be publicly available within the meaning of the rule). 

200 Harjo v. Pro-Football Inc., supra at 1722 n.54 (TTAB 1999) (advertisements in newspapers or magazines 

available to the general public in libraries or in general circulation – yes); Hard Rock Café Licensing Corp. v. Elsea, 

48 USPQ2d 1400, 1403 (TTAB 1998) (press releases, press clippings, studies prepared for a party, affidavits or

declarations, or product information -- no); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 n.5 (TTAB 1992)

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Printed publications made of record by notice of reliance under 37 CFR § 2.122(e) are 

admissible and probative only for what they show on their face, not for the truth of the matters 

contained therein, unless a competent witness has testified to the truth of such matters.201 

(trademark search reports--no); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d

1267, 1270 n.5 (TTAB 1989), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (annual reports--no); Hunter 

Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (conference papers, 

dissertations, and journal papers--no); Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221

USPQ 73, 74 n.2 (TTAB 1983) (press releases--no); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59

n.4 (TTAB 1984) (annual reports--no); Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.6 (TTAB 1980) 

(annual report even if in some libraries, or available on request--no; magazine articles--yes); Glamorene Products

Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (promotional literature--no); Hunt-Wesson 

Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 1979) (promotional literature--no); Wagner

Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) (catalogs and other house publications--

no); Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232, 234 (TTAB 1976) (annual reports, promotional

brochures, price list, reprints of advertisements, and copies of advertising mats--no); Manpower, Inc. v. Manpower

Information Inc., 190 USPQ 18, 21 (TTAB 1976) (telephone directory pages, indexes from United States Code 

Annotated, and dictionary pages--yes); Litton Industries, Inc. v. Litronix, Inc., 188 USPQ 407, 408 n.5 (TTAB 1975)

(annual reports--no); Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974) (credit card 

applications, handouts, and flyers--no; articles from trade publications and other magazines--yes); Minnesota Mining

& Manufacturing Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB 1973) (annual reports, product booklets, and 

product brochures--no); and Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 n.2 

(TTAB 1973) (article from "Memoirs of the University of California"--no, since publication not shown to be

available to the general public). 

201 See, for example, In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (articles 

are not used to support the truth of the statements therein but to show descriptive usage of term); Gravel Cologne, 

Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 176 USPQ 123, 123 (CCPA 1972) (advertisement from newspaper 

only showed promotion of the product on the day the publication issued); Midwest Plastic Fabricators Inc. v.

Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual report considered stipulated into 

evidence only for what it showed on its face ), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); Harjo v.

Pro-Football Inc., supra at 1721 n.50 (evidence of the manner in which the term is used in the articles and of the 

fact that the public has been exposed to the articles and may be aware of the information contained therein);

Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768 n.6 (TTAB 1980) (magazine article limited to what it showed

on its face); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) (advertisement 

submitted with notice of reliance only showed that advertisement appeared on that date in that journal and does not 

show customer familiarity with marks nor actual sales); Food Producers, Inc. v. Swift & Co., 194 USPQ 299, 301

n.2 (TTAB 1977) (publications limited to their face value because no opportunity to ascertain basis for information 

or confront and cross-examine individuals responsible therefor); Wagner Electric Corp. v. Raygo Wagner, Inc., 192 

USPQ 33, 36 n.10 (TTAB 1976) (advertisements were only probative of fact that opposer advertised its goods under 

the mark in the publications on those dates); Litton Industries, Inc. v. Litronix, Inc., 188 USPQ 407, 408 n.5

(TTAB 1975) (even if annual reports were admissible as printed publications, they would only be probative of fact

that they are opposer's annual reports for the years shown thereon); Otis Elevator Co. v. Echlin Manufacturing Co., 

187 USPQ 310, 312 n.4 (TTAB 1975) (magazine article showed only that the goods under the mark were the subject 

of the article in that publication); and Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974)

(articles from trade publications admissible to show that they appeared in the publication on a certain date and that 

they contained certain information, but not that the information is true). 

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Although the types of printed publications described above may be made of record by notice of 

reliance under 37 CFR § 2.122(e), they may, alternatively, be made of record by appropriate 

identification and introduction during the taking of testimony, or by stipulation of the parties.202 

These latter two methods may also be used for the introduction of printed publications that are 

not admissible by notice of reliance under 37 CFR § 2.122(e).203 

For information concerning the raising of objections to notices of reliance and materials filed 

there under, see TBMP §§ 533 and 707.02.

Materials improperly offered under 37 CFR § 2.122(e) may nevertheless be considered by the 

Board if the adverse party (parties) does not object to their introduction or itself treats the 

materials as being of record.204

Internet evidence and other materials that are not self-authenticating. Certain printed 

publications qualify for submission by notice of reliance under Trademark Rule 2.122(e) because 

202 See Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845, 846 (TTAB 1984) (objection on ground that no notice of

reliance was filed was not well taken where party had introduced the materials in connection with testimony), and

Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 n.3 (TTAB 1983) (same). 

203 See, for example, Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., supra (annual reports);

Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (copies 

of agreements, press releases, shipping documents and foreign registrations); and Minnesota Mining &

Manufacturing Co. v. Stryker Corp., 179 USPQ 433, 434 (TTAB 1973) (annual reports, product booklets and

brochures). 

 

204 See, for example, Genesco Inc. v. Martz, 66 USPQ2d 1260, 1266 (TTAB 2003) (documents construed as being 

offered under Rule 2.122(e) and deemed to be of record despite lack of information as to source and date since 

applicant did not object to the materials and moreover treated them as of record; however probative value of such

materials necessarily limited due to lack of information as to source and date); (Plyboo America Inc. v. Smith &

Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB 1999) (plaintiff did not object to introduction of curriculum vitae, 

advertising literature, printout of page from website by notice of reliance and treated materials as of record); U.S.

West Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1309 n.4 (TTAB 1990) (opposer's improper subject matter

considered where applicant expressly agreed to its authenticity and accuracy); Midwest Plastic Fabricators Inc. v. 

Underwriters Laboratories Inc., supra (neither party objected to the annual reports submitted by the other party); 

Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997 n.2 (TTAB 1986) (improper subject 

matter and improper rebuttal considered); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58 (TTAB 1984) 

(annual reports improper subject matter considered); Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ

579, 580 n.5 (TTAB 1979) (various documents constituting improper subject matter considered where no objection

was raised and adverse party specifically addressed the materials in its brief); and Plus Products v. Natural

Organics, Inc., 204 USPQ 773, 775 n.5 (TTAB 1979) (untimely, but no objection or prejudice). 

 Cf. Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987) (improper subject 

matter excluded where adverse party, while not objecting to the improperly offered materials, did not treat the 

materials as being of record); Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881 (TTAB 1979) 

(improper subject matter excluded, although no objection).

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they are considered essentially self-authenticating.205 That is, permanent sources for the 

publications are identified and the nonoffering party is readily able to verify the authenticity of

the documents.206 The element of self-authentication cannot be presumed to be capable of being 

satisfied by information obtained and printed out from the Internet.207 Internet postings are 

transitory in nature as they may be modified or deleted at any time without notice and thus are 

not "subject to the safeguard that the party against whom the evidence is offered is readily able to

corroborate or refute the authenticity of what is proffered."208 For this reason, Internet printouts 

cannot be considered the equivalent of printouts from a NEXIS search where printouts are the 

electronic equivalents of the printed publications and permanent sources for the publications are 

identified.209

Materials that do not fall within 37 CFR § 2.122(e), that is, materials that are not selfauthenticating in nature and thus not admissible by notice of reliance, may nevertheless be 

introduced into evidence through the testimony of a person who can clearly and properly 

authenticate and identify the materials, including identifying the nature, source and date of the 

materials.

210 Even if properly made of record, however, such materials, including Internet 

printouts, would only be probative of what they show on their face, not for the truth of the 

matters contained therein, unless a competent witness has testified to the truth of such matters.211

205 See Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1722 (TTAB 1999), rev'd on other grounds, 284 F. Supp. 2d

96, 68 USPQ2d 1225 (D.D.C. 2003). 

206 See Weyerhaeuser v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992). 

207 See Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). See also In re Total Quality Group Inc., 

51 USPQ2d 1474, 1476 (TTAB 1999). 

208 Weyerhaeuser v. Katz, supra at 1232 (TTAB 1992) citing Glamorene Products Corporation v. Earl Grissmer

Company, Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979). See also Raccioppi v. Apogee Inc., supra at 1370; 

Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000) (introduction of telephone listings

retrieved from Internet was improper); and Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3

(TTAB 1999) (printout of page of website is not proper subject matter for a notice of reliance). 

209 See Raccioppi v. Apogee Inc., supra at 1370. See also In re Total Quality Group Inc., 51 USPQ2d 1474, 1476

(TTAB 1999) (examining attorney’s request for judicial notice of on-line dictionary definitions denied because the 

definitions were not available in printed format). Cf. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3

(TTAB 2002) (judicial notice taken of online dictionary definition where resource was also available in book form). 

210 See Raccioppi v. Apogee Inc., supra at 1371 with respect to introducing Internet evidence in connection with a 

summary judgment motion. 

211 See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (not evidence of

use but may have some probative value to show the meaning of a mark in the same way as third-party registrations) 

and Raccioppi v. Apogee Inc., supra at 1371 (the reliability of the information becomes a matter of weight or 

probative value to be given the Internet evidence). See also In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 

2002) (involving Internet articles from sources outside the United States). 

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704.09 Discovery Depositions 

37 CFR § 2.120(j) Use of discovery deposition, answer to interrogatory, or admission. 

(1) The discovery deposition of a party or of anyone who at the time of taking the deposition was 

an officer, director or managing agent of a party, or a person designated by a party pursuant to 

Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence 

by an adverse party. 

(2) Except as provided in paragraph (j)(1) of this section, the discovery deposition of a witness, 

whether or not a party, shall not be offered in evidence unless the person whose deposition was 

taken is, during the testimony period of the party offering the deposition, dead; or out of the 

United States (unless it appears that the absence of the witness was procured by the party 

offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; 

or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there 

is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to 

make it desirable, in the interest of justice, to allow the deposition to be used. The use of a 

discovery deposition by any party under this paragraph will be allowed only by stipulation of the 

parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, 

which shall be filed at the time of the purported offer of the deposition in evidence, unless the 

motion is based upon a claim that such exceptional circumstances exist as to make it desirable, 

in the interest of justice, to allow the deposition to be used, in which case the motion shall be 

filed promptly after the circumstances claimed to justify use of the deposition became known. 

(3)(i) A discovery deposition, an answer to an interrogatory, or an admission to a request for 

admission, which may be offered in evidence under the provisions of paragraph (j) of this section 

may be made of record in the case by filing the deposition or any part thereof with any exhibit to 

the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made 

part of the answer, or a copy of the request for admission and any exhibit thereto and the 

admission (or a statement that the party from which an admission was requested failed to 

respond thereto), together with a notice of reliance. The notice of reliance and the material 

submitted thereunder should be filed during the testimony period of the party which files the 

notice of reliance. An objection made at a discovery deposition by a party answering a question 

subject to the objection will be considered at final hearing. 

 * * * * 

(4) If only part of a discovery deposition is submitted and made part of the record by a party, an 

adverse party may introduce under a notice of reliance any other part of the deposition which 

should in fairness be considered so as to make not misleading what was offered by the submitting 

party. A notice of reliance filed by an adverse party must be supported by a written statement 

explaining why the adverse party needs to rely upon each additional part listed in the adverse 

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party's notice, failing which the Board, in its discretion, may refuse to consider the additional 

parts. 

 * * * * 

(6) Paragraph (j) of this section will not be interpreted to preclude the reading or the use of a 

discovery deposition, or answer to an interrogatory, or admission as part of the examination or 

cross-examination of any witness during the testimony period of any party. 

(7) When a discovery deposition, or a part thereof, or an answer to an interrogatory, or an 

admission, has been made of record by one party in accordance with the provisions of 

paragraph (j)(3) of this section, it may be referred to by any party for any purpose permitted by

the Federal Rules of Evidence. 

(8) Requests for discovery, responses thereto, and materials or depositions obtained through the 

discovery process should not be filed with the Board except when submitted with a motion 

relating to discovery, or in support of or response to a motion for summary judgment, or under a 

notice of reliance during a party's testimony period. Papers or materials filed in violation of this 

paragraph may be returned by the Board. 

The discovery deposition of a party (or of anyone who, at the time of taking the deposition, was 

an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 

30(b)(6) or 31(a)(3) to testify on behalf of a party) may be offered in evidence by any adverse 

party.

212 

 

Otherwise, the discovery deposition of a witness, whether or not a party, may not be offered in 

evidence except in the following situations: 

(1) By stipulation of the parties, approved by the Board.213 

212 37 CFR § 2.120(j)(1). See Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 

1427 (TTAB 1993) (deponent was no longer an officer or director at time his deposition was taken); Marshall Field 

& Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1325 (TTAB 1992) (same); First International Services Corp. v. 

Chuckles Inc., 5 USPQ2d 1628, 1630 n.5 (TTAB 1988) (only by adverse party); Fort Howard Paper Co. v. C.V. 

Gambina Inc., 4 USPQ2d 1552, 1555 (TTAB 1987) (same); Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026, 

1028 n.2 (TTAB 1980) (same); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 867 n.7 (TTAB 1979) 

(discovery deposition of nonparty taken on written questions inadmissible); Johnson Publishing Co. v. Cavin &

Tubiana OHG, 196 USPQ 383, 384 n.5 (TTAB 1977) (party who takes discovery deposition may place it into 

evidence); and Ethicon, Inc. v. American Cyanamid Co., 192 USPQ 647, 651 n.11 (TTAB 1976) (deposed party 

may not rely on statements made in discovery deposition if the deposition is not made of record). 

213 37 CFR § 2.120(j)(2). See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298, 1302 

n.11 (TTAB 2000) (deposition of nonparty properly in evidence by stipulation of parties). 

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(2) By order of the Board, on motion showing that the person whose deposition was 

taken is, during the testimony period of the party offering the deposition, dead; or out of 

the United States (unless it appears that the absence of the witness was procured by the 

party offering the deposition); or unable to testify because of age, illness, infirmity, or 

imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial 

deposition; or that such exceptional circumstances exist as to make it desirable, in the 

interest of justice, to allow the deposition to be used. The motion must be filed at the 

time of the purported offer of the deposition in evidence, unless the motion is based on a 

claim that such exceptional circumstances exist as to make it desirable, in the interest of

justice, to allow the deposition to be used, in which case the motion must be filed 

promptly after the circumstances claimed to justify use of the deposition became

known.214 

(3) If only part of a discovery deposition is submitted and made part of the record by a 

party entitled to offer the deposition in evidence, an adverse party may introduce under a 

notice of reliance any other part of the deposition which should in fairness be considered 

so as to make not misleading what was offered by the submitting party. In such a case, 

the notice of reliance filed by the adverse party must be supported by a written statement 

explaining why the adverse party needs to rely on each additional part listed in the 

adverse party's notice, failing which the Board, in its discretion, may refuse to consider 

the additional parts.215

A discovery deposition that may be offered in evidence under 37 CFR § 2.120(j) may be made of 

record by filing, during the testimony period of the offering party, the deposition or any part 

214 37 CFR § 2.120(j)(2). See Hilson Research Inc. v. Society for Human Resource Management, supra; Marshall 

Field & Co. v. Mrs. Fields Cookies, supra; Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555

(TTAB 1987) (no special circumstances shown by applicant to admit discovery deposition of applicant’s president); 

Fischer Gesellschaft m.b.H. v. Molnar & Co., supra (mere speculation that nonparty witness would be unavailable

is insufficient); and National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691, 692 n.4 (TTAB

1978) (no special circumstances shown to admit discovery deposition of nonparty). 

 

215 37 CFR § 2.120(j)(4). See Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1806 n.2 (TTAB 

1990) (adverse party failed to show how portions submitted were misleading), aff'd, 926 F.2d 1156 (TTAB 1988), 

17 USPQ2d 1866 (Fed. Cir. 1991); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215

(Board refused to consider pages of a deposition relied on by applicant in its brief since they were not relied on by

opposer and not properly made of record by applicant and since opposer objected thereto); First International

Services Corp. v. Chuckles Inc., supra (where applicant submitted entire deposition of its president in response to

opposer’s partial submission, without identifying specific relevant testimony Board refused to consider additional 

portions); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.6 (TTAB 1986)

(pages of additional portions should be clearly marked); Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ

954, 955 n.4 (TTAB 1985) (Board refused to consider additional exhibits since they did not serve to correct

misimpression engendered by those of record); Dynamark Corp. v. Weed Eaters, Inc., supra (distinguishing

mandatory filing of trial deposition in its entirety from discovery deposition where only the portion or portions

which are properly introduced are of record); and Johnson Publishing Co. v. Cavin & Tubiana OHG, supra. 

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thereof with any exhibit to the part that is filed, together with a notice of reliance.216 The notice 

of reliance need not indicate the relevance of the deposition, or parts thereof, relied on.217 When

only part of a deposition is relied on, the notice of reliance must specify the part or parts relied 

on.218 

When a discovery deposition has been made of record by one party in accordance with 37 CFR § 

2.120(j), it may be referred to by any party for any purpose permitted by the Federal Rules of 

Evidence.219 If only part of a discovery deposition has been made of record pursuant to 37 CFR 

§ 2.120(j), that part only may be referred to by any party for any purpose permitted by the 

Federal Rules of evidence. If one party has filed a notice of reliance on a discovery deposition or 

part thereof and an adverse party has based its presentation of evidence on the belief that the 

deposition or the part thereof is of record, the notice of reliance may not later be withdrawn.220 

A discovery deposition not properly offered in evidence under 37 CFR § 2.120(j) may 

nevertheless be considered by the Board if the nonoffering party (parties) does not object thereto, 

or treats the deposition as being of record, or improperly offers a discovery deposition in the 

same manner.

221

216 37 CFR § 2.120(j)(3)(i). See BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21

(CCPA 1978) (mere presence of discovery responses in the file does not make them of record without a notice of 

reliance); Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., supra; Fischer Gesellschaft m.b.H. v. Molnar 

& Co., supra; Ethicon, Inc. v. American Cyanamid Co., supra; Chemetron Corp. v. Self-Organizing Systems, Inc., 

166 USPQ 495, 496 n.2 (TTAB 1970) (discovery depositions not in evidence since notice of reliance not filed); and 

American Skein & Foundry Co. v. Stein, 165 USPQ 85, 85 (TTAB 1970) (discovery deposition inadmissible where 

it was timely filed but not accompanied by notice of reliance). 

217 See 37 CFR § 2.120(j)(3)(i). Cf. Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 

(TTAB 2001) (noting that it is more effective to file only those portions of the deposition that are relevant and

explain their relevancy in the notice of reliance). 

218 See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (vague reference to

reliance on "only those portions of the deposition pertaining to the descriptive nature of the opposed mark" 

insufficient). 

219 37 CFR § 2.120(j)(7). See Chesebrough-Pond's Inc. v. Soulful Days, Inc., supra at 955 n.4 (notice of reliance on

deposition already made of record by the other party is superfluous); Andersen Corp. v. Therm-O-Shield Int'l, Inc., 

226 USPQ 431, 432 n.6 (TTAB 1985) (stipulation that deposition relied on by opposer may also be considered as 

part of applicant's case was unnecessary); Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 

1192 n.7 (TTAB 1984); and Miles Laboratories, Inc. v. SmithKline Corp., 189 USPQ 290, 291 n.4 (TTAB 1975). 

220 See Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440, 441 n.4 (TTAB 1983) (opposer’s notice of

reliance as to deposition designation indefinite and given time to clarify; response severely narrowed original 

designation to applicant’s prejudice and not permitted). 

 221 See, for example, Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1737 n.11 (TTAB 1990) (no 

objection to applicant's introduction of discovery deposition of officer of opposer's parent corporation); Maytag Co. 

v. Luskin's, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (deposition taken during discovery but treated by both

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Requests for discovery, responses thereto, and materials or depositions obtained through the 

discovery process should not be filed with the Board except when submitted (1) with a motion 

relating to discovery; or (2) in support of or response to a motion for summary judgment; or (3) 

under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony 

deposition; or (5) in support of an objection to proffered evidence on the ground that the 

evidence should have been, but was not, provided in response to a request for discovery. The 

Board may return discovery papers or materials filed under other circumstances.222 

Nothing in 37 CFR § 2.120(j) will be interpreted to preclude the reading or the use of a discovery 

deposition as part of the examination or cross-examination of any witness during the testimony 

period of any party.223 

For information concerning the taking of a discovery deposition, and the raising of objections 

thereto, see TBMP §§ 404, 532, and 707.02. 

NOTE: Some of the cases cited in this section established principles later codified in current 37 

CFR § 2.120(j), or were decided under rules that were the predecessors to such provisions. 

704.10 Interrogatory Answers; Admissions 

37 CFR § 2.120(j) 

 * * * * 

(3)(i) A discovery deposition, an answer to an interrogatory, or an admission to a request for 

admission, which may be offered in evidence under the provisions of paragraph (j) of this section 

may be made of record in the case by filing the deposition or any part thereof with any exhibit to 

parties as a testimonial deposition introduced by deposed party treated as trial deposition taken prior to testimony

period pursuant to stipulation); Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354, 356 n.5 (TTAB

1984) (deposition of nonparty treated as stipulated into the record since adverse party did not object and referred to

it as being of record in its brief); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 

n.7 (TTAB 1982) (discovery deposition of nonparty treated by both parties as properly of record); Pamex Foods, 

Inc. v. Clover Club Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (considered of record where although opposer 

did not file a notice of reliance on discovery depositions, both parties referred to the depositions in their briefs); Plus 

Products v. Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (plaintiff's notice of reliance filed during

rebuttal testimony period improper where defendant introduced no evidence; but since defendant filed improper 

notice of reliance in response thereto and because neither party objected to the untimely evidence of the other and 

moreover addressed each other's evidence, all material was considered); and Insta-Foam Products, Inc. v. Instapak 

Corporation, 189 USPQ 793, 795 n. 4 (TTAB 1976) (discovery deposition of nonparty deemed stipulated into the 

record where there was no objection and both parties relied on the deposition). 

222 37 CFR § 2.120(j)(8). See Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.3 (TTAB 

1999); and TBMP § 409 (Filing Discovery Requests and Responses with Board) and authorities cited therein.

223 37 CFR § 2.120(j)(6). Cf. West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d

1306, 1308 n.3 (TTAB 1987) (party may testify as to veracity of information contained in interrogatory answers or

use such answers to refresh memory of witness during testimony deposition). 

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the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made 

part of the answer, or a copy of the request for admission and any exhibit thereto and the 

admission (or a statement that the party from which an admission was requested failed to 

respond thereto), together with a notice of reliance. The notice of reliance and the material 

submitted thereunder should be filed during the testimony period of the party which files the 

notice of reliance. An objection made at a discovery deposition by a party answering a question 

subject to the objection will be considered at final hearing. 

 * * * * 

(5) An answer to an interrogatory, or an admission to a request for admission, may be submitted 

and made part of the record by only the inquiring party except that, if fewer than all of the 

answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the 

inquiring party, the responding party may introduce under a notice of reliance any other 

answers to interrogatories, or any other admissions, which should in fairness be considered so 

as to make not misleading what was offered by the inquiring party. The notice of reliance filed 

by the responding party must be supported by a written statement explaining why the responding 

party needs to rely upon each of the additional discovery responses listed in the responding 

party's notice, failing which the Board, in its discretion, may refuse to consider the additional 

responses. 

(6) Paragraph (j) of this section will not be interpreted to preclude the reading or the use of a 

discovery deposition, or answer to an interrogatory, or admission as part of the examination or 

cross-examination of any witness during the testimony period of any party. 

(7) When a discovery deposition, or a part thereof, or an answer to an interrogatory, or an 

admission, has been made of record by one party in accordance with the provisions of 

paragraph (j)(3) of this section, it may be referred to by any party for any purpose permitted by

the Federal Rules of Evidence. 

(8) Requests for discovery, responses thereto, and materials or depositions obtained through the 

discovery process should not be filed with the Board except when submitted with a motion 

relating to discovery, or in support of or response to a motion for summary judgment, or under a 

notice of reliance during a party's testimony period. Papers or materials filed in violation of this 

paragraph may be returned by the Board. 

Ordinarily, an answer to an interrogatory, or an admission to a request for admission, may be 

submitted and made part of the record by only the inquiring party.224

224 See 37 CFR § 2.120(j)(5). See also Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 

1827 n.3 (TTAB 1987); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 

(TTAB 1984); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.8 (TTAB 1982);

and Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 950 (TTAB 1981).

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However, if fewer than all of the answers to a set of interrogatories, or fewer than all of the 

admissions, are offered in evidence by the inquiring party, the responding party may introduce, 

under a notice of reliance, any other answers to interrogatories, or any other admissions that 

should be considered so as to avoid an unfair interpretation of the responses offered by the 

inquiring party.225 The notice of reliance must be supported by a written statement explaining 

why the responding party needs to rely on each of the additional interrogatory answers, or 

admissions, listed in the responding party's notice, failing which the Board, in its discretion, may 

refuse to consider the additional responses.226 

An interrogatory answer (including documents provided as all or part of an interrogatory 

answer), or an admission to a request for admission, that may be offered in evidence under 37 

CFR § 2.120(j) may be made of record by notice of reliance during the testimony period of the 

offering party. The party should file a copy of the interrogatory and the answer thereto, with any 

exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto 

and the admission (or a statement that the party from which an admission was requested failed to 

respond thereto), together with its notice of reliance thereon.227

 See also Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979); Jerrold Electronics 

Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978; Cities Service Co. v. WMF of America, Inc., 199

USPQ 493, 495 n.4 (TTAB 1978); General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.6 (TTAB

1977) ; Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658, 660 n.2 (TTAB 1977) ; A. H. 

Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340 (TTAB 1976); W. R. Grace & Co. v. Herbert J. Meyer

Industries, Inc., 190 USPQ 308, 309 n.6 (TTAB 1976) ; and Beecham Inc. v. Helene Curtis Industries, Inc., 189

USPQ 647, 647 (TTAB 1976). 

225 See 37 CFR § 2.120(j)(5) and Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB 

1988). 

226 See 37 CFR § 2.120(j)(5). See also Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 

1128 n.4 (TTAB 1995) (notice of reliance on responses stricken since responses did not clarify answers relied on by 

inquiring party); Heaton Enterprises of Nevada Inc. v. Lang, supra at 1844 n.5 (TTAB 1988) (answering party is 

expected to select only the relevant answers and to inform the Board of the relationship of that answer to those 

offered by propounding party); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1719 n.4 (TTAB 1987) 

(other answers may be introduced to clarify, rebut or explain responses relied on by inquiring party; opposer failed

to indicate the relevance of its interrogatory responses to rebut those relied on by applicant); Board of Trustees of the 

University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (broad statement by

answering party that without the additional responses the selected responses would be misleading is insufficient); 

Packaging Industries Group, Inc. v. Great American Marketing, Inc., 227 USPQ 734, 734 n.3 (TTAB 1985)

(applicant did not introduce the additional responses referred to in its brief by notice of reliance); Holiday Inns, Inc.

v. Monolith Enterprises, supra at 950 (may not simply rely on all remaining answers and expect Board to determine 

which, if any, answers require explanation or clarification); and Beecham Inc. v. Helene Curtis Industries, Inc., 189 

USPQ 647 (TTAB 1976). 

227 37 CFR § 2.120(j)(3)(i). See BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20, 21

(CCPA 1978); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of reliance must 

specify and be accompanied by the interrogatory to which each document was provided in lieu of an answer); Miles 

Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986) (documents 

provided in lieu of interrogatory answer admissible by notice of reliance); May Department Stores Co. v. Prince, 

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The notice of reliance need not indicate the relevance of the discovery responses relied on.228

Offering interrogatory answers, or admissions, on the record during the taking of a testimony 

deposition is the equivalent of serving and filing a notice of reliance by mail.229 

An interrogatory answer may also be made of record by stipulation of the parties, accompanied 

by a copy of the interrogatory and the answer thereto with any exhibit made part of the answer. 

Similarly, an admission may be made of record by stipulation of the parties, accompanied by a 

copy of the request for admission and any exhibit thereto and the admission (or a statement that 

the party from which an admission was requested failed to respond thereto).230 

When an interrogatory answer, or an admission, has been made of record by one party in 

accordance with 37 CFR § 2.120(j), it may be referred to by any party for any purpose permitted 

by the Federal Rules of Evidence.231 

An interrogatory answer, or an admission, not properly offered in evidence under 37 CFR § 

2.120(j) may nevertheless be considered by the Board if the nonoffering party (parties) does not 

200 USPQ 803, 805 n.1 (TTAB 1978) (notice of reliance filed after close of testimony period untimely); and Bausch

& Lomb Inc. v. Gentex Corp., 200 USPQ 117, 119 n.2 (TTAB 1978) (neither party filed notice of reliance on the 

other party's interrogatories and therefore not of record). 

 See also E. I. du Pont de Nemours & Co. v. G. C. Murphy Co., 199 USPQ 807, 808 n.2 (TTAB 1978); Miss 

Nude Florida, Inc. v. Drost, 193 USPQ 729, 731 (TTAB 1976), pet. to Comm'r den., 198 USPQ 485 (Comm'r

1977); Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439, 440 n.2 (TTAB 1976); Plus Products v. Don Hall

Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976); and A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190

USPQ 340, 341 n.3 (TTAB 1976). 

 Cf. Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7 (TTAB 1984) (applicant's 

notice of reliance on responses which were already made of record by opposer was superfluous).

228 See 37 CFR § 2.120(j)(3)(i), and Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 (TTAB 

1979) (not required to set forth the relevance of interrogatory answers). 

229 See Lacoste Alligator S.A. v. Everlast World's Boxing Headquarters Corp., 204 USPQ 945, 947 (TTAB 1979). 

230 See Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1015 n.7 (TTAB 1984) 

(although parties stipulated that certain interrogatory answers were part of evidentiary record, because copies of the

interrogatories and answers were never submitted to the Board they could not be considered). See also Jerrold 

Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 n.4 (TTAB 1978), and General Electric Co. v. Graham 

Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977). Cf. Wella Corp. v. California Concept Corp., 192 USPQ

158, 160 n.4 (TTAB 1976) (supplemental answers to interrogatories were not covered by the stipulation), rev'd on 

other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977). 

 231 37 CFR § 2.120(j)(7). See Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191, 1192 n.7

(TTAB 1984) (applicant's notice of reliance on matter already made of record by opposer is superfluous). See also

Henry Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154, 1155 n.5 (TTAB 1987); and Beecham Inc. v. 

Helene Curtis Industries, Inc., 189 USPQ 647, 647 (TTAB 1976) (where party relies on all of adversary’s answers 

to interrogatories, the adversary need not file its own notice of reliance thereon). 

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object thereto; and/or treats the answer, or admission, as being of record; and/or improperly 

offers an interrogatory answer, or an admission, in the same manner.232 

Requests for discovery, responses thereto, and materials or depositions obtained through the 

discovery process should not be filed with the Board except when submitted (1) with a motion 

relating to discovery; or (2) in support of or response to a motion for summary judgment; or (3) 

under a notice of reliance during a party's testimony period; or (4) as exhibits to a testimony 

deposition; or (5) in support of an objection to proffered evidence on the ground that the 

evidence should have been, but was not, provided in response to a request for discovery. The 

Board may return discovery papers or materials filed under other circumstances.233 

Nothing in 37 CFR § 2.120(j) precludes reading or using an interrogatory answer, or an 

admission, as part of the examination or cross-examination of any witness during the testimony 

period of any party.234 

232 See, for example, Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883, 1884 n.3 (TTAB 

1993) (no objection to party's reliance on its own answers and moreover the responses set forth facts which were

described in the parties' stipulation); Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.5 (TTAB

1988) (no objection to responding party's notice of reliance on remaining answers and such answers were deemed as 

explanatory or clarifying); Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826, 1827 n.3

(TTAB 1987) (no objection to party's reliance on its own answers); Board of Trustees of the University of Alabama

v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (objection which was raised for first time in

brief waived since defect of failing to explain why the additional responses were necessary could have been

cured);Plus Products v. Natural Organics, Inc., 204 USPQ 773, 775 n.4 (TTAB 1979) (no objection to untimely

notice of reliance or to failure to submit copies of the discovery requests or responses thereto); Safeway Stores, Inc.

v. Captn's Pick, Inc., 203 USPQ 1025, 1027 n.1 (TTAB 1979) (no objection by either party to the other's improper 

reliance on its own answers; opposer did not object to interrogatories introduced by applicant and in fact referred to

answers to other of opposer's interrogatories without benefit of notice of reliance); Pamex Foods, Inc. v. Clover Club 

Foods Co., 201 USPQ 308, 310 n.3 (TTAB 1978) (discovery depositions filed without a notice of reliance were

treated as being of record where both parties referred to the depositions in their briefs and in view of stipulations

concerning marking of exhibits in the depositions); Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751, 753 

n.4 (TTAB 1978) (both parties relied on answers given by each to the other's interrogatories without objection); 

General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977) (same); Plus Products v.

Don Hall Laboratories, 191 USPQ 584, 585 n.2 (TTAB 1976) (neither party objected to improper notice of reliance 

by the other and each relied on the contents of the other's notice of reliance); and Plus Products v. Sterling Food

Co., 188 USPQ 586, 587 n.2 (TTAB 1975) (applicant did not file required notice of reliance on opposer's answers 

but both parties referred to the answers in their briefs). 

233 37 CFR § 2.120(j)(8). See TBMP § 409 (Filing Discovery Requests and Responses with Board) and authorities 

cited therein.

234 37 CFR § 2.120(j)(6). See West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 2 USPQ2d

1306, 1308 n.3 (TTAB 1987) (use of interrogatory answers to refresh memory of witness and testifying as to 

veracity of interrogatory answers permitted). Cf. Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169-70

(TTAB 1984) (reading answers into record when witness was present at deposition inadmissible because no written

copy given to refresh witnesses’ memory), different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984). 

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However, a party that has obtained documents from another party under Fed. R. Civ. P. 34 may 

not make the produced documents of record by notice of reliance alone, except to the extent that 

they are admissible by notice of reliance under 37 CFR § 2.122(e) (as official records; or as 

 

For information concerning the taking of discovery by way of interrogatories, see TBMP § 405. 

For information concerning the taking of discovery by way of requests for admission, see TBMP 

§ 407. For information concerning the raising of objections to notices of reliance and materials 

filed there under, see TBMP §§ 532 and 707.02. 

NOTE: Some of the cases cited in this section established principles later codified in the cited 

provisions in current 37 CFR § 2.120(j), or were decided under rules which were the 

predecessors to such provisions. 

704.11 Produced Documents 

37 CFR § 2.122(e) Printed publications and official records. Printed publications, such 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, and official records, if the publication or official record is competent evidence and 

relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material 

being offered. The notice shall specify the printed publication (including information sufficient 

to identify the source and the date of the publication) or the official record and the pages to be 

read; indicate generally the relevance of the material being offered; and be accompanied by the 

official record or a copy thereof whose authenticity is established under the Federal Rules of 

Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an 

official record of the Patent and Trademark Office need not be certified to be offered in 

evidence. The notice of reliance shall be filed during the testimony period of the party that files 

the notice.

37 CFR § 2.120(j)(3)(ii) A party which has obtained documents from another party under Rule 

34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of 

reliance alone, except to the extent that they are admissible by notice of reliance under the 

provisions of § 2.122(e).

Documents provided as all or part of an answer to an interrogatory may be made of record, as an 

interrogatory answer, by notice of reliance filed in accordance with 37 CFR §§ 2.120(j)(3)(i) and 

2.120(j)(5).235

235 See M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990), (notice of reliance failed to indicate 

that documents were being introduced under Rule 2.120(j)(3)(i) by specifying and making of record a copy of the 

particular interrogatories to which each document was provided in lieu of an interrogatory answer) and Miles 

Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986). 

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printed publications, such 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 the proceeding -- see TBMP §§ 704.07 and 704.08).236 

 

Listed below are a number of methods by which documents produced in response to a request for 

production of documents may be made of record: 

(1) A party that has obtained documents under Fed. R. Civ. P. 34 may serve on its 

adversary requests for admission of the authenticity of the documents, and then, during 

its testimony period, file a notice of reliance, under 37 CFR § 2.120(j)(3)(i), on the 

requests for admission, the exhibits thereto, and its adversary's admissions (or a statement 

that its adversary failed to respond to the requests for admission). However, if a party 

wishes to have an opportunity to serve requests for admission after obtaining documents 

under Fed. R. Civ. P. 34, it must serve its request for production of documents early in 

the discovery period, so that when it obtains the produced documents, it will have time to 

prepare and serve requests for admission prior to the expiration of the discovery 

period.237 

(2) A party that has obtained documents under Fed. R. Civ. P. 34 may offer them as 

exhibits in connection with the taking of its adversary's discovery deposition. Again, 

however, the request for production of documents must be served early in the discovery 

period, so that there will still be time remaining, after the requested documents have been 

produced, to notice and take a discovery deposition.238 

(3) A party that has obtained documents under Fed. R. Civ. P. 34 may introduce them as 

exhibits during the cross-examination of its adversary's witness.239 This method is 

available only if the adversary takes testimony and the documents pertain to matters 

within the scope of the direct examination of the witness. 

236 37 CFR § 2.120(j)(3)(ii). See, for example, M-Tek Inc. v. CVP Systems Inc., supra at 1073; Miles Laboratories 

Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1447 n.9 (TTAB 1986); Osage Oil & Transportation, 

Inc. v. Standard Oil Co., 226 USPQ 905, 906 n.5 (TTAB 1985) (documents were neither official records nor printed

publications); Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (documents were

not printed publications); and Janet E. Rice, TIPS FROM THE TTAB: Making Documents Obtained During

Discovery and Third-Party Registrations of Record, 67 Trademark Rep. 54 (1977). 

 237 See TBMP §§ 403.05(a) and 403.05(b) regarding the need for early initiation of discovery. 

238 See TBMP §§ 403.05 (Need for Early Initiation of Discovery). 

239 See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 121 n.1 (TTAB 1976). 

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(4) A party that has obtained documents under Fed. R. Civ. P. 34 may, during its own 

testimony period, take the testimony of its adversary as an adverse witness and introduce 

the obtained documents as exhibits during direct examination.240 

(5) A party that has obtained documents under Fed. R. Civ. P. 34 may, during its own 

testimony period, make of record by notice of reliance, under 37 CFR § 2.122(e), any of 

the documents that fall into the category of "printed publications, such 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, and official records, if the publication or official record is competent 

evidence and relevant to an issue."

241 

(6) A party that wishes to obtain documents under Fed. R. Civ. P. 34 may combine its 

request for production of documents with a notice of taking discovery deposition, and ask 

that the requested documents be produced at the deposition. However, the combined 

request for production and notice of deposition must be served well before the date set for 

the deposition, because a discovery deposition must be both noticed and taken before the 

close of the discovery period, and because Fed. R. Civ. P. 34(b) allows a party 30 days in 

which to respond to a request for production of documents (this period is lengthened to 

35 days if service of the request is made by first-class mail, "Express Mail," or overnight 

courier--see 37 CFR § 2.119(c)).242 

(7) Documents obtained under Fed. R. Civ. P. 34 may be made of record by stipulation 

of the parties. 

(8) Documents obtained by request for production of documents under Fed. R. Civ. P.

34, and improperly offered in evidence, may nevertheless be considered by the Board if 

the nonoffering party (parties) does not object thereto; and/or treats the documents as 

being of record; and/or in the same manner improperly offers documents which it 

obtained under Fed. R. Civ. P. 34.243 

240 See Harvey Hubbell, Inc. v. Red Rope Industries, Inc., supra. 

241 See 37 CFR § 2.120(j)(3)(ii). See also TBMP §§ 704.07 (Official Records) and 704.08 (Printed Publications)

and cases cited in the first paragraph of this section.

242 See TBMP §§ 403.05 (Need for Early Initiation of Discovery). 

243 See, for example, Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4 (TTAB 1984) (improper

subject of notice of reliance but no objection raised); Autac Inc. v. Viking Industries, Inc., 199 USPQ 367, 369 n.2 

(TTAB 1978) (neither party objected to other’s offering of Rule 34 documents by notice alone); Southwire Co. v. 

Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 569 n.1 (TTAB 1977) (applicant did not object to documents 

produced and introduced by notice alone and referred to those documents in its brief); and Harvey Hubbell, Inc. v. 

Red Rope Industries, Inc., supra (no objection to notice of reliance). Cf. Osage Oil & Transportation, Inc. v. 

Standard Oil Co., 226 USPQ 905, 906 n.8 (TTAB 1985). 

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704.12 Judicial Notice 

 

For information concerning the obtaining of discovery by way of a request for production of 

documents, see TBMP § 406. 

37 CFR § 2.122(a) Rules of Evidence. The rules of evidence for proceedings before the 

Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of 

the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States 

Code, and the provisions of this Part of Title 37 of the Code of Federal Regulations. 

Fed. R. Evid. 201. Judicial Notice of Adjudicative Facts 

(a) Scope of rule. This rule governs only judicial notice of adjudicative facts. 

(b) Kinds of facts. A judicially noticed fact must be one not subject to reasonable dispute in that 

it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable 

of accurate and ready determination by resort to sources whose accuracy cannot reasonably be 

questioned. 

(c) When discretionary. A court may take judicial notice, whether requested or not. 

(d) When mandatory. A court shall take judicial notice if requested by a party and supplied with 

the necessary information. 

(e) Opportunity to be heard. A party is entitled upon timely request to an opportunity to be 

heard as to the propriety of taking judicial notice and the tenor of the matter noticed. In the 

absence of prior notification, the request may be made after judicial notice has been taken. 

(f) Time of taking notice. Judicial notice may be taken at any stage of the proceeding. 

In appropriate instances, the Board may take judicial notice of adjudicative facts. See 37 CFR § 

2.122(a) and Fed. R. Evid. 201. 

704.12(a) Kind of Fact That May be Judicially Noticed 

The only kind of fact that may be judicially noticed by the Board is a fact that is "not 

subject to reasonable dispute in that it is either (1) generally known within the territorial 

jurisdiction of the trial court or (2) capable of accurate and ready determination by resort 

to sources whose accuracy cannot reasonably be questioned."244

244 Fed. R. Evid. 201(b) and Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 n.5 (TTAB 

1999). See, for example, Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6

USPQ2d 1305 (Fed. Cir. 1988); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1603 (TTAB 1999);

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For examples of decisions concerning whether particular facts are appropriate subject 

matter for judicial notice by the Board, see cases cited in the note below.245

Omega SA v. Compucorp, 229 USPQ 191 (TTAB 1985); and United States National Bank of Oregon v. Midwest

Savings and Loan Ass'n, 194 USPQ 232 (TTAB 1977). 

245 B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) (dictionary

definition of term as trademark--yes, indicates mark is reasonably famous; also, encyclopedias may be consulted); 

Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other grounds, 558 F.2d 1019, 194

USPQ 419 (CCPA 1977) (home cold permanent wave kits have for many years been sold directly to nonprofessional

consumers through retail outlets--yes); Boswell v. Mavety Media Group Ltd, supra (that violations of the rights of

members of the African American community, and acts of disrespect to members of said community, by members 

of the majority community are likely to lead to an antagonistic attitude on the part of many members of the minority 

community – no); In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998) (that there are thousands of registered

marks incorporating the term NEW YORK for goods and services that do not originate there – no) aff'd 194 F.3d

1297, 52 USPQ2d 1539 (Fed. Cir. 1999); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213

USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (dictionary definitions--yes); 

General Mills Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396 (TTAB 1979), aff'd, 648 F.2d 1335, 209

USPQ 986, 988 (CCPA 1981) (frequent use of famous marks on collateral products such as clothing, glassware,

trash cans, etc.--yes); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (online dictionary

definition where resource was also available in book form – yes); In re Broyhill Furniture Industries Inc., 60 

USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works – yes); In re 3Com

Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (dictionary definitions and technical reference works, e.g., 

computer dictionary--yes); Continental Airlines Inc. V. United Air Lines Inc., 53 USPQ2d 1385, 1393 (TTAB 1999) 

(dictionary definitions noticed although not made of record by either party); In re Total Quality Group Inc., 51

USPQ2d 1474, 1476 (TTAB 1999) (on-line dictionaries which otherwise do not exist in printed format-- no); In re 

Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1998) (“Physicians’ Desk Reference” --yes); In re U.S. Cargo 

Inc., 49 USPQ2d 1702, 1704 (TTAB 1998) (that “U.S.” means the United States, which is a geographic area with

defined boundaries--yes); In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) (third-party 

registrations--no); Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989) (Catonsville, Maryland is 

located between Baltimore, Maryland and Washington, D.C.--yes); Los Angeles Bonaventure Co. v. Bonaventure 

Associates, 4 USPQ2d 1882 (TTAB 1987) (whether other companies have expanded from restaurant services to

hotel services under a single mark, and, if so, when--no); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d

1290 (TTAB 1986) (files of applications and/or registrations, where no copies thereof are filed, and where they are 

not the subject of the proceeding--no); Hertz System, Inc. v. A-Drive Corp., 222 USPQ2d 625 (TTAB 1984) (the 

numeral "1" is widely used to indicate superiority--yes); Hamilton Burr Publishing Co. v. E.W. Communications, 

Inc., 216 USPQ 802, 804 n.5 (TTAB 1982) (probation report–no); Abbott Laboratories v. Tac Industries, Inc., 217 

USPQ 819 (TTAB 1981) (use of antimicrobial agents in the floor covering industry--no); Marcal Paper Mills, Inc. 

v. American Can Co., 212 USPQ 852 (TTAB 1981) (dictionary definitions--yes); Sprague Electric Co. v. Electrical 

Utilities Co., 209 USPQ 88 (TTAB 1980) (standard reference works--yes); Cities Service Co. v. WMF of America,

Inc., 199 USPQ 493 (TTAB 1978) (third-party registrations and listings in trade directories, where no copies thereof 

are submitted--no); Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ 653 (TTAB 1976) (law of any 

jurisdiction, when a copy thereof is submitted under notice of reliance--yes); Plus Products v. Sterling Food Co., 

188 USPQ 586 (TTAB 1975) (food supplements and fortifiers are commonly used in producing bakery products--

yes); and Bristol-Myers Co. v. Texize Chemicals, Inc., 168 USPQ 670 (TTAB 1971) (operations of opposer and 

applicant--no). 

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704.12(b) When Taken 

The Board will take judicial notice of a relevant fact not subject to reasonable dispute, as 

defined in Fed. R. Evid. 201(b), if a party (1) requests that the Board do so, and (2) 

supplies the necessary information.246 The request should be made during the requesting 

party's testimony period, by notice of reliance accompanied by the necessary 

information.247 The Board, in its discretion, may take judicial notice of a fact not subject 

to reasonable dispute, as defined in Fed. R. Evid. 201(b), whether or not it is requested to 

do so.248

704.12(c) Opportunity to be Heard 

A party to a proceeding before the Board is entitled, on timely request, "to an opportunity 

to be heard as to the propriety of taking judicial notice and the tenor of the matter noticed. 

In the absence of prior notification, the request may be made after judicial notice has 

been taken."249 This does not mean, however, that when judicial notice is taken without 

prior notification, a party is automatically entitled to a hearing on request, even if it 

makes no offer to show that the taking of judicial notice was improper.250 

246 Fed. R. Evid. 201(d). See United States National Bank of Oregon v. Midwest Savings and Loan Ass'n, 194 

USPQ 232 (TTAB 1977), and Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431 (TTAB 1976) 

247 See Litton Business Systems, Inc. v. J. G. Furniture Co., supra. See also Wright Line Inc. v. Data Safe Services 

Corp., 229 USPQ 769 (TTAB 1985), and Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88 (TTAB

1980). 

248 Fed. R. Evid. 201(c). See Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1603 (TTAB 1999) (declined 

to take judicial notice of slang dictionary definition when submitted as part of rebuttal testimony when could have

been submitted with case in chief); United States National Bank of Oregon v. Midwest Savings and Loan Ass'n,

supra, and Litton Business Systems, Inc. v. J. G. Furniture Co., supra. 

249 Fed. R. Evid 201(e). See Litton Business Systems, Inc. v. J. G. Furniture Co., supra. 

 

250 See In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983). See also General Mills Fun Group, Inc v. 

Tuxedo Monopoly, Inc., 204 USPQ 396 (TTAB 1979), aff’d, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). 

 

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On motion granted by the Board, testimony taken in another proceeding, or testimony taken in a 

suit or action in a court, between the same parties or their privies, may be used in a pending 

Board inter partes proceeding, to the extent that the testimony is relevant and material, subject 

"to the right of any adverse party to recall or demand the recall for examination or crossexamination of any witness whose prior testimony has been offered and to rebut the 

testimony."

 

704.12(d) Time of Taking Notice 

Judicial notice may be taken at any stage of a Board proceeding, even on review of the 

Board's decision on appeal.251 However, the Federal Circuit may decline to consider a 

request for judicial notice made at the late stage of oral argument on appeal.252 

704.13 Testimony From Another Proceeding 

37 CFR § 2.122(f) Testimony from other proceedings. By order of the Trademark Trial and 

Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or 

action in a court, between the same parties or those in privity may be used in a proceeding, so 

far as relevant and material, subject, however, to the right of any adverse party to recall or 

demand the recall for examination or cross-examination of any witness whose prior testimony 

has been offered and to rebut the testimony. 

253 

251 See, for example, Fed. R. Evi. 201(f); B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6

USPQ2d 1719, 1721 (Fed. Cir. 1988) (request for judicial notice as to fame of mark made in the briefs on appeal);

Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308

(Fed. Cir. 1988) (judicial notice of banking business on appeal ); American Security Bank v. American Security and

Trust Co., 571 F.2d 564, 197 USPQ 65, 67 n.1 (CCPA 1978) (judicial notice of absence of listing in local telephone

directories); Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAN 1976), rev’d on other grounds, 558

F.2d 1019, 194 USPQ 419, 422 n.5 (CCPA 1977) (fact of common knowledge, e.g., of purchasers and channels of

trade for home permanent wave kits, appropriate for judicial notice); Food Specialty Co. v. Kal Kan Foods, Inc., 487

F.2d 1389, 180 USPQ 136, 139 n.3 (CCPA 1973) (judicial notice on appeal of general sentiment towards kittens

which differs from that toward other small animal pets); and Continental Airlines Inc. v. United Air Lines Inc., 53

USPQ2d 1385, 1393 n.5 (TTAB 1999) (judicial notice may be taken at any time).

252 See Packard Press Inc. v. Hewlett-Packard Co., 56 USPQ2d 1351, 1356 (Fed. Cir. 2000) (Court declined to 

consider whether to take judicial notice of fame where request for judicial notice was made for first time at oral 

argument on appeal). 

253 37 CFR § 2.122(f). See Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 

1317 (TTAB 1992) (stating that there is no prerequisite that the Board must have considered the testimony or

determined the relevancy in the prior opposition, or that the adverse party have actually attended the deposition 

when originally taken); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061, 1063 n.2 (TTAB 1988) 

(motion to use testimony from prior district court proceeding granted as uncontested and right to recall the witness

waived since no request to do so was made), rev'd on other grounds, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.

1989); Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57, 58 (TTAB 1975) (motion to rely on testimony

from prior cancellation proceeding between the parties granted, subject to applicant’s right to recall witnesses), 

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Testimony from another proceeding between the parties or their privies may be used, on motion 

granted by the Board, as evidence in connection with a motion for summary judgment, or as 

evidence at trial. ony of this nature to be used in 

connection with a motion for summary judgment, the testimony (and any testimony taken on 

recall of the same witness for examination or cross-examination, or in rebuttal thereof) is of 

record only for purposes of the motion; it will not be considered at final hearing if the case goes 

to trial, unless it is reintroduced, on motion granted by the Board, during the appropriate trial 

period.

For information on filing a motion for leave to use testimony from another proceeding, see 

TBMP § 530. 

 

The Board has construed the term "testimony," as used in 37 CFR § 2.122(f), as meaning only 

trial testimony,254 or a discovery deposition which was used, by agreement of the parties, as trial 

testimony in the other proceeding. 

255 However, when the Board allows testim

256 

A testimony deposition from another proceeding may also be made of record in a Board 

proceeding by stipulation of the parties approved by the Board. The same is true of a discovery 

deposition. 

705 Stipulated Evidence 

Subject to the approval of the Board, parties may enter into a wide variety of stipulations 

concerning the admission of specified matter into evidence. The use of stipulated evidence 

normally results in savings of time and expense for all concerned. Notwithstanding such a 

summ. judgment granted, 191 USPQ 50 (TTAB 1976); and Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440

(TTAB 1973). 

254 See Marcon Ltd. v. Avon Products Inc., 4 USPQ2d 1474, 1475 n.3 (TTAB 1987) (discovery deposition from

previous proceeding to which applicant was not a party would not be admissible under this rule but in this case it

was made of record by another means) and Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ

172, 182 (TTAB 1986) (cf. dissent at 182 n.15 contending that discovery deposition should have been admitted as 

admission against interest). 

255 See, for example, Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., supra (evidence on the case), and Oxy Metal 

Industries Corp. v. Technic, Inc., supra (summary judgment evidence). 

 

256 See TBMP §§ 528.05(a) (Summary Judgment Evidence in General) and 528.05(f) (Testimony from Another

Proceeding). 

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For example, parties may stipulate that a party may rely on specified responses to requests for 

discovery, or on other specified documents or exhibits; or that the testimony of a witness may be 

submitted in the form of an affidavit by the witness; or what a particular witness would testify to 

if called; or to the facts in the case of any party; or that a discovery deposition may be used as 

testimony; or that evidence from another proceeding may be used as evidence in the proceeding 

in which the stipulation is filed.

37 CFR § 2.123(l) Evidence not considered. Evidence not obtained and filed in compliance 

with these sections will not be considered. 

 

37 CFR § 2.122(a) Rules of Evidence. The rules of evidence for proceedings before the 

Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of 

 

stipulation, a party may reserve the right to object to stipulated evidence on the grounds of 

competency, relevance, and materiality.257 

258 

706 Noncomplying Evidence 

Evidence not obtained and filed in compliance with the rules of practice governing inter partes 

proceedings before the Board will not be considered by the Board.259

707 Objections to Evidence 

707.01 In General 

257 See Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 

Trademark Rep. 323, 397-398 (1985). 

258 See, for example, 37 CFR § 2.123(b), and TBMP §§ 704.07-704.11 for a discussion of the various types of

evidence and 703.01(b) (Form of Testimony). 

259 37 CFR § 2.123(l). See Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 

1987) (stating that a party may not reasonably presume evidence is of record when that evidence is not offered in 

accordance with the rules); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1009 n.18

(TTAB 1984) (copy of decision by Canadian Opposition Board attached to main brief and not otherwise properly 

made of record was not considered); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 948 (TTAB 1983)

(neither a recent photocopy of opposer’s claimed registration attached to pleading without status and title notation

nor introduction during testimony of original certificate of registration without testimony as to status and title is 

sufficient); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391 n.10 (TTAB 1976) (evidence submitted

for first time with brief not considered); Plus Products v. General Mills, Inc., 188 USPQ 520, 521 n.1 (TTAB 1975) 

(evidence submitted after filing of reply brief not considered); American Skein & Foundry Co. v. Stein, 165 USPQ

85, 85 (TTAB 1970) (discovery deposition timely filed but not accompanied by notice of reliance not considered);

and Saul Lefkowitz and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75

Trademark Rep. 323, 393 (1985). 

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the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States 

Code, and the provisions of this Part of Title 37 of the Code of Federal Regulations. 

707.02 Objections to Notices of Reliance 

707.02(a) In General

Some grounds for objection to a notice of reliance are waived unless promptly made 

(generally errors of any kind which might be obviated or cured if promptly presented) 

while other grounds that cannot be cured may be raised at any time. The various grounds 

 

The introduction of evidence in inter partes proceedings before the Board is governed by the 

Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the 

relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark 

cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations).260 A party to 

a Board inter partes proceeding that believes that proffered evidence should, under these rules, be 

excluded from consideration, may, raise an objection. The procedure for raising an objection to 

proffered evidence depends on the nature of the evidence and the ground for objection.261 

During its testimony period, a party may make certain specified types of evidence of 

record by filing a notice of reliance thereon, accompanied by the evidence being 

offered.262 Trademark Rule 2.120(j), 37 CFR § 2.120(j), provides for the introduction, by 

notice of reliance, of a discovery deposition, answer to interrogatory, or admission; but 

specifically states that documents obtained by production under Fed. R. Civ. P. 34 may 

not be made of record by notice of reliance alone, except to the extent that they are 

admissible by notice of reliance under the provisions of 37 CFR § 2.122(e). Trademark 

Rule 2.122(d)(2), 37 CFR § 2.122(d)(2), provides for the introduction, by notice of 

reliance, of a registration owned by a party to a proceeding. Trademark Rule 2.122(e), 37 

CFR § 2.122(e), provides for the introduction, by notice of reliance, of certain specified 

types of printed publications and official records.263

260 37 CFR § 2.122(a). Cf. TBMP §§ 101.01 (Statute and Rules of Practice) and 101.02 (Federal Rules). 

 

261 See, for example, Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998). 

262 See generally TBMP §§ 702 (Manner of Trial and Introduction of Evidence – In General) and 704 (Introducing 

Other Evidence). 

263 See also TBMP §§ 704.03(b) (Applications and Registrations - Not Subject of Proceeding) and 704.07-704.11

discussing introduction of other types of evidence by notice of reliance. 

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for objection to a notice of reliance, and the time and procedure for raising them, are 

discussed in the sections that follow.

For information concerning motions to strike notices of reliance, see TBMP § 532. 

 

264

707.02(b) On Procedural Grounds 

Ordinarily, a procedural objection to a notice of reliance should be raised promptly, 

preferably by motion to strike if the defect is one that can be cured.265 However, if the 

ground for the objection is one that could not be cured even if raised promptly, the 

adverse party may wait and raise the procedural objection in or with266 its brief on the 

case.267 

264 See also TBMP § 707.04 (Waiver of Objection). 

265 See, for example, Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986)

(objection waived where respondent received notice of reliance without referenced publications appended thereto 

but did not raise the issue until briefing); and Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 883 

(TTAB 1979) (objection that notice of reliance did not set forth relevance of appended documents raised for first

time in brief waived). 

266 See Harjo v. Pro Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (motion to strike trial brief as exceeding 

page limitation denied where evidentiary objections which were not required to be raised immediately were raised in

appendices to the brief rather than in text of brief) and Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d

1321, 1326 (TTAB 1992) (objections to testimony on grounds including relevance and bias of witness, raised a year

after depositions were taken and set out in a separate paper from brief were not untimely and paper did not result in

violation of page limitation for final briefs). 

267 See Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB 1986) (defect of failing to append

copy of printed publication identified in notice of reliance could have been cured); Board of Trustees of the 

University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408, 409 n.3 (TTAB 1986) (petitioner's objection

that respondent's justification for reliance on its own discovery responses was insufficient raised for first time in

petitioner's brief was untimely since defect is one which could have been cured if raised promptly); Colt Industries 

Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983) (objection that items

submitted by notice of reliance were neither official records nor printed publications raised in brief sustained); 

Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ 653, 655 n.9 (TTAB 1976) (objection to notice of reliance as 

to statement of relevance of third-party registrations untimely); Manpower, Inc. v. Manpower Information Inc., 190 

USPQ 18, 21 (TTAB 1976) (objection that notice of reliance failed to indicate relevance of materials was curable 

and should have been raised when notice was filed); and Johnson & Johnson v. American Hospital Supply 

Corporation, 187 USPQ 478, 479 (TTAB 1975) (Board, on reconsideration, reversed its decision to treat defendant's 

objection to notice of reliance as motion to strike since opposer did not file a brief in response to objections but

instead intended to argue against the objections in its trial brief). 

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When a notice of reliance under any of the aforementioned rules is filed after the 

close of the offering party's testimony period, an adverse party may file a motion 

to strike the notice of reliance (and, thus, the evidence submitted there under), in 

its entirety, as untimely. e party may raise this ground 

for objection in its brief on the case.

707.02(b)(2) On Other Procedural Grounds 

An adverse party may object to a notice of reliance, in whole or in part, on the 

ground that the notice does not comply with the procedural requirements of the 

particular rule under which it was submitted, as, for example, that a 37 CFR § 

2.122(e) notice of reliance on a printed publication does not include a copy of the 

printed publication, or does not indicate the general relevance thereof,

 

707.02(b)(1) On Ground of Untimeliness 

268 Alternatively, an advers

269 

270 or that 

268 See, for example, Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (motion to strike 

untimely supplemental notice of reliance to admit current status and title copy of registration in place of timely but 

older status and title copy granted) and May Department Stores Co. v. Prince, 200 USPQ 803, 805 n.1 (TTAB 1978) 

(motion to strike untimely notice of reliance on interrogatory answers and certified copies of corporate records filed 

with the state granted). 

269 See, for example, Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 361 n.3 (TTAB 1978), aff'd, 

599 F.2d 1009, 202 USPQ 100 (CCPA 1979) and Miss Nude Florida, Inc. v. Drost, 193 USPQ 729, 731 (TTAB 

1976) (respondent's objection to untimely notice of reliance raised for the first time in its brief was not waived), pet.

to Comm'r denied, 198 USPQ 485 (Comm'r 1977). Cf. Of Counsel Inc. v. Strictly of Counsel Chartered, 21 

USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition was taken two days prior to opening

of opposer's testimony period, and applicant first raised an untimeliness objection in its brief on the case, objection

held waived, since the premature taking of the deposition could have been corrected on seasonable objection). 

270 See, for example, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (motion to strike granted 

where notice of reliance was filed under inapplicable provision of rules in that items did not constitute discovery 

materials admissible under 2.120(j)(3) and opposer failed to explain relevance of appended copy of notice of

opposition from a different case); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (notice of

reliance failed to indicate that documents were being introduced under Rule 2.120(j)(3)(i) by specifying and making

of record a copy of the particular interrogatories to which each document was provided in lieu of an interrogatory 

answer); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1719 n.4 (TTAB 1987) (motion to strike notice of

reliance granted where opposer failed to indicate how its own answers clarified rebutted or explained those relied on

by applicant); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 951 (TTAB 1981) (motion to strike notice 

of reliance granted in part where applicant failed to identify specific answers sought to be introduced by answering 

party or indicate how they explained, clarified or rebutted answers relied on by inquiring party); Johnson & Johnson 

v. American Hospital Supply Corp., 187 USPQ 478, 479 (TTAB 1975) (applicant's objection to opposer's notice of

reliance on letters between applicant and attorneys for third party well taken because such documents were not

printed publications or official records and were not properly identified during deposition so as to lay foundation for 

introduction into evidence); Rogers Corp. v. Fields Plastics & Chemicals, Inc., 172 USPQ 377, 378-79 (TTAB 

1972) (motion to strike notice of reliance on entire remainder of deposition granted); and American Optical Corp. v.

American Olean Tile Co., 169 USPQ 123, 124 (TTAB 1971) (motion to strike items in applicant's notice of reliance 

700 - 513 
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the proffered materials are not appropriate for introduction by notice of 

reliance.

An adverse party may object to a notice of reliance on substantive grounds, such as that 

evidence offered under the notice constitutes hearsay or improper rebuttal, or is 

incompetent, irrelevant, or immaterial. Objections of this nature normally should be 

raised in or with s brief on the case, rather than by motion to strike, 

 

271 

When, on a motion to strike a notice of reliance on the ground that it does not 

meet the procedural requirements of the rule under which it was filed, the Board 

finds that the notice is defective, but that the defect is curable, the Board may 

allow the relying party time to cure the defect, failing which the notice will stand 

stricken.272 

If a motion to strike a notice of reliance raises objections that cannot be resolved 

simply by reviewing the face of the notice of reliance (and attached documents), 

the Board will defer determination of the motion until final hearing.273 When

determination of a motion to strike a notice of reliance is deferred until final 

hearing, the parties should argue the matter alternatively in their briefs on the 

case.

707.02(c) On Substantive Grounds 

274 the objecting party'

stricken as they were either duplicative of evidence already made of record, not deemed to be printed publications in

general circulation, or, in view of the purpose stated by applicant in the notice of reliance, hearsay). 

271 See, for example, Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2019-20 (TTAB 2003) (whether 

plaintiff's price sheets and catalogs constitute proper subject matter for a notice of reliance is not a substantive issue 

and may be determined from the face of the notice of reliance). 

272 See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (allowed 20 days to submit substitute 

notice of reliance remedying defects including submission of proper official record); M-Tek Inc. v. CVP Systems

Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (allowed time to clarify that the documents submitted by notice of

reliance were in fact produced in response to interrogatories rather than in response to document requests); and 

Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1844 n.6 (TTAB 1988) (documents remained stricken

where party did not correct deficiencies). 

273 See Weyerhaeuser Co. v. Katz, supra, and M-Tek Inc. v. CVP Systems Inc., supra at 1073 (under the 

circumstances, whether documents were properly admissible under 2.120(j)(3)(i) and/or 2.120(j)(3)(ii) deferred). 

 

274 See Harjo v. Pro Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (motion to strike trial brief as exceeding 

page limitation denied where evidentiary objections which were not required to be raised immediately were raised in

appendices to the brief rather than in text of brief) and Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d

1321, 1326 (TTAB 1992) (objections to testimony on grounds including relevance and bias of witness, raised a year

after depositions were taken and set out in a separate paper from brief were not untimely and paper did not result in

violation of page limitation for final briefs). 

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unless the ground for objection is one that could be cured if raised promptly by motion to 

strike.

275 This is because it is the policy of the Board not to read trial testimony or 

examine other trial evidence prior to final deliberations in the proceeding. otion 

to strike a notice of reliance raises objections that cannot be resolved simply by reviewing 

the face of the notice of reliance (and attached documents), determination of the motion 

will be deferred by the Board until final hearing.277 

Because the parties to an inter partes Board proceeding generally will not know until final 

decision whether a substantive objection to a notice of reliance has been sustained, they 

should argue the matter alternatively in their briefs on the case. 

As in the case of an objection to a notice of reliance, an objection to a testimony 

deposition must be raised promptly if the defect is one that can be obviated or removed, 

failing which it is waived. The objections, which are waived unless promptly raised, are 

basically procedural in nature. Objections to testimony depositions are not waived for 

failure to make them during or before the taking of the deposition, provided that the 

 

276 If a m

Evidence timely and properly introduced by notice of reliance under the applicable 

trademark rules generally will not be stricken, but the Board will consider any 

outstanding objections thereto in its evaluation of the probative value of the evidence at 

final hearing.

278 

707.03 Objections to Trial Testimony Depositions 

707.03(a) In General

275 See, n this regard, 37 CFR § 2.123(k), and Fed. R. Civ. P. 32(d)(3)(A). See also Louise E. Frugé, TIPS FROM

THE TTAB: An "Object" Lesson, 72 Trademark Rep. 211 (1982). Cf. TBMP §§ 707.02(b)(2) (Other Procedural 

Grounds) and 707.03(c) (On Other Procedural Grounds and on Substantive Grounds). 

276 See TBMP § 502.01 (Available Motions) and authorities cited therein. 

 

277 See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (whether notice of reliance sought to

introduce improper rebuttal evidence deferred), and M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073

(TTAB 1990) (whether documents submitted by notice of reliance were properly authenticated and whether they 

constituted hearsay deferred). 

278 See, for example, Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (TTAB 1990) (timely notice of reliance 

on four-year old status and title copy of pleaded registration was not stricken); Jetzon Tire & Rubber Corp. v.

General Motors Corp., 177 USPQ 467, 468 n.3 (TTAB 1973) (copies of USPTO drawings are official records and

therefore would not be stricken; however, their probative value is limited); and American Optical Corp. v. American 

Olean Tile Co., 169 USPQ 123, 125 (TTAB 1971) ("Certificate of Good Standing" from a U.S. district court is 

admissible as an official record and therefore would not be stricken; however its probative value would be

determined at final hearing). Cf. TBMP § 707.03(c) (On Other Procedural Grounds and on Substantive Grounds). 

700 - 515 
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ground for objection is not one that might have been obviated or removed if presented at 

that time. These objections are basically substantive in nature. The grounds for objection 

to testimony depositions and the procedures for raising them are discussed below. 

707.03(b) On Procedural Grounds 

37 CFR § 2.123(c) Notice of examination of witnesses. Before the depositions of 

witnesses shall be taken by a party, due notice in writing shall be given to the 

opposing party or parties, as provided in § 2.119(b), of the time when and place 

where the depositions will be taken, of the cause or matter in which they are to be 

used, and the name and address of each witness to be examined; if the name of a 

witness is not known, a general description sufficient to identify the witness or the 

particular class or group to which the witness belongs, together with a 

 

707.03(b)(1) On Ground of Untimeliness 

A party may not take testimony outside of its assigned testimony period, except 

by stipulation of the parties approved by the Board, or on motion granted by the 

Board, or by order of the Board.279 

When there is no such approved stipulation, granted motion or Board order, and a 

testimony deposition is taken after the close of the deposing party's testimony 

period, an adverse party may file a motion to strike the deposition, in its entirety, 

as untimely.280 Alternatively, an adverse party may raise this ground for objection 

in its brief on the case.281 

On the other hand, when a testimony deposition is noticed for a date prior to the 

opening of the deposing party's testimony period, an adverse party that fails to 

promptly object to the scheduled deposition on the ground of untimeliness may be 

found to have waived this ground for objection, because the premature scheduling 

of a deposition is an error which can be corrected on seasonable objection.282 

707.03(b)(2) On Ground of Improper or Inadequate Notice 

279 37 CFR § 2.121(a) and TBMP § 701 (Time of Trial). 

280 See TBMP § 533.01 (On Ground of Untimeliness) and authorities cited therein. 

281 Cf. TBMP § 707.02(b)(1) (Untimeliness) and cases cited therein. 

282 See Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (objection to 

timeliness of testimony deposition taken two days before period opened, but raised for the first time in its brief 

waived).

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satisfactory explanation, may be given instead. Depositions may be noticed for 

any reasonable time and place in the United States. A deposition may not be 

noticed for a place in a foreign country except as provided in paragraph (a)(2) of 

this section. No party shall take depositions in more than one place at the same 

time, nor so nearly at the same time that reasonable opportunity for travel from 

one place of examination to the other is not available. 

* * * * 

(e)(3) Every adverse party shall have full opportunity to cross-examine each 

witness. If the notice of examination of witnesses which is served pursuant to 

paragraph (c) of this section is improper or inadequate with respect to any 

witness, an adverse party may cross-examine that witness under protest while 

reserving the right to object to the receipt of the testimony in evidence. Promptly 

after the testimony is completed, the adverse party, if he wishes to preserve the 

objection, shall move to strike the testimony from the record, which motion will be 

decided on the basis of all the relevant circumstances. A motion to strike the 

testimony of a witness for lack of proper or adequate notice of examination must 

request the exclusion of the entire testimony of that witness and not only a part of 

that testimony. 

Before testimony depositions on oral examination may be taken by a party, the 

party must give every adverse party due notice in writing of the time when and 

place where the depositions will be taken, the cause or matter in which they are to 

be used, and the name and address of each witness to be deposed. If the name of 

a witness is not known, a general description sufficient to identify the witness or 

the particular class or group to which the witness belongs, together with a 

satisfactory explanation, may be given instead.

 

283 

If the notice of examination of witnesses served by a party is improper or 

inadequate with respect to any witness, such as, does not give due (i.e., 

reasonable) notice, or does not identify a witness whose deposition is taken, an 

adverse party may cross-examine the witness under protest while reserving the 

right to object to the receipt of the testimony in evidence. However, promptly 

after the deposition is completed, the adverse party, if it wishes to preserve the 

objection, must move to strike the testimony from the record.284 

283 37 CFR § 2.123(c). See also TBMP § 703.01(e) (Notice of Deposition). Cf. Fed. R. Civ. P. 30(b)(1).

284 See 37 CFR § 2.123(e)(3) and TBMP § 533.02 (motion to strike testimony deposition on ground of improper or 

inadequate notice) and cases cited therein. See also Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 

1290, 1291 (TTAB 1986) (while respondent's objection to notice was raised at the deposition, respondent failed to

preserve the objection by moving to strike testimony promptly thereafter). 

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* * * * 

 

A motion to strike a testimony deposition for improper or inadequate notice must 

request the exclusion of the entire deposition, not just a part thereof. The motion 

will be decided on the basis of all the relevant circumstances.

285 

For further information concerning the motion to strike a testimony deposition for 

improper or inadequate notice, see TBMP § 533.02. 

707.03(c) On Other Procedural Grounds and on Substantive Grounds 

37 CFR § 2.123(e) 

(3) Every adverse party shall have full opportunity to cross-examine each witness. If the 

notice of examination of witnesses which is served pursuant to paragraph (c) of this 

section is improper or inadequate with respect to any witness, an adverse party may 

cross-examine that witness under protest while reserving the right to object to the receipt 

of the testimony in evidence. Promptly after the testimony is completed, the adverse 

party, if he wishes to preserve the objection, shall move to strike the testimony from the 

record, which motion will be decided on the basis of all the relevant circumstances. A

motion to strike the testimony of a witness for lack of proper or adequate notice of 

examination must request the exclusion of the entire testimony of that witness and not 

only a part of that testimony. 

(4) All objections made at the time of the examination to the qualifications of the officer 

taking the deposition, or to the manner of taking it, or to the evidence presented, or to the 

conduct of any party, and any other objection to the proceedings, shall be noted by the 

officer upon the deposition. Evidence objected to shall be taken subject to the objections. 

(j) Effect of errors and irregularities in depositions. Rule 32(d)(1), (2), and (3)(A) and 

(B) of the Federal Rules of Civil Procedure shall apply to errors and irregularities in 

depositions. Notice will not be taken of merely formal or technical objections which shall 

not appear to have wrought a substantial injury to the party raising them; and in case of 

such injury it must be made to appear that the objection was raised at the time specified 

in said rule.

(k) Objections to admissibility. Subject to the provisions of paragraph (j) of this section, 

objection may be made to receiving in evidence any deposition, or part thereof, or any 

other evidence, for any reason which would require the exclusion of the evidence from 

consideration. Objections to the competency of a witness or to the competency, 

relevancy, or materiality of testimony must be raised at the time specified in Rule 

285 37 CFR § 2.123(e)(3).

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An adverse party may object to a testimony deposition not only on the grounds of 

untimeliness proper or inadequate notice,

deposing party has not complied with one or more of the other procedural requirements 

specified in the rules governing the taking of testimony in Board inter partes proceedings. 

In addition, objection may be made to a testimony deposition on one or more substantive 

grounds, such as that the witness is incompetent to testify, or that the testimony is 

irrelevant or constitutes hearsay or improper rebuttal. The time and procedure for raising 

these objections is described below. 

(1) Objections to errors and irregularities in the notice for taking a deposition 

(waived unless written objection is promptly served on the party giving the notice, 

 

32(d)(3)(A) of the Federal Rules of Civil Procedure. Such objections will not be 

considered until final hearing. 

Fed. R. Civ. P. 32(d) Effect of Errors and Irregularities in Depositions. 

(1) As to Notice. All errors and irregularities in the notice for taking a deposition are 

waived unless written objection is promptly served upon the party giving the notice. 

(2) As to Disqualification of Officer. Objection to taking a deposition because of 

disqualification of the officer before whom it is to be taken is waived unless made before 

the taking of the deposition begins or as soon thereafter as the disqualification becomes 

known or could be discovered with reasonable diligence. 

(3) As to Taking of Deposition. 

(A) Objections to the competency of a witness or to the competency, relevancy, or 

materiality of testimony are not waived by failure to make them before or during 

the taking of the deposition, unless the ground of the objection is one which might 

have been obviated or removed if presented at that time. 

(B) Errors and irregularities occurring at the oral examination in the manner of 

taking the deposition, in the form of the questions or answers, in the oath or 

affirmation, or in the conduct of parties, and errors of any kind which might be 

obviated, removed, or cured if promptly presented, are waived unless seasonable 

objection thereto is made at the taking of the deposition. 

286 and im 287 but also on the ground that the 

As noted in TBMP § 707.03, some objections to testimony depositions must be raised 

promptly, or they are waived. The objections, which are waived unless raised promptly, 

are basically procedural in nature. They include: 

286 See TBMP § 707.03(b)(1) (Untimeliness). 

287 See TBMP § 707.03(b)(2) (Improper or Inadequate Notice). 

 

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in the case of an objection based on improper or inadequate notice, waived unless 

the provisions of 37 CFR § 2.123(e)(3) are followed);

(4) Errors of any kind that might be obviated, removed, or cured if promptly 

presented (waived unless seasonable objection thereto is made at the taking of the 

deposition).

 

288 

(2) Objections to taking a deposition because of disqualification of the officer 

before whom the deposition is to be taken (waived unless made before the taking 

of the deposition begins or as soon thereafter as the disqualification becomes 

known or could be discovered with reasonable diligence); 

(3) Objections based on errors and irregularities occurring at the oral examination 

in the manner of taking the deposition, in the form of the questions or answers, in 

the oath or affirmation, or in the conduct of parties; and 

289 

Moreover, notice will not be taken of merely formal or technical objections, unless they 

were timely raised, and appear to have caused substantial injury to the party raising 

them.

290 This applies not only to errors and irregularities in the taking of a deposition, 

but also in the form of a deposition transcript (such as, improperly numbered pages or 

questions, improperly marked exhibits, etc.).291 

288 See TBMP § 707.03(b)(2). 

289 See 37 CFR §§ 2.123(e)(3) and 2.123(j), and Fed. R. Civ. P. 32(d)(1),(2), and (3)(A) and (B). See also Ross v. 

Analytical Technology Inc., 51 USPQ2d 1269, 1271 n.4 (TTAB 1999) (objection raised for the first time in brief to

manner in which testimonial depositions were filed, waived since purported defect could have been cured if 

promptly raised); Chase Manhattan Bank, N.A. v. Life Care Services Corp., 227 USPQ 389, 391 (TTAB 1985) 

(foundation objections to a survey submitted by opposer raised for the first time in brief waived); Pass & Seymour, 

Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (objection on grounds of improper identification or authentication

of exhibits waived since defects could have been cured if made during the deposition); and TBMP § 707.03(b)(1). 

 Cf. TBMP § 707.02(b)(2) (Other Procedural Grounds), and Miss Nude Florida, Inc. v. Drost, 193 USPQ 729, 

731 (TTAB 1976), pet. to Comm'r den., 198 USPQ 485 (Comm'r 1977) (objection to untimeliness of notice of

reliance raised for first time in brief was not waived since defect could not have been cured or remedied). 

290 See 37 CFR § 2.123(j). See also, for example, Pass & Seymour, Inc. v. Syrelec, supra (regarding technical 

deficiencies in marking exhibits). See also Fed. R. Civ. P. 61 and, with respect to notices of reliance, Beech Aircraft 

Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1292 n.1 (TTAB 1986) (noting precept of Fed. R. Civ. P. 61, 

Board stated that plaintiff's failure to serve notice of reliance was not fatal per se to the notice of reliance). 

291 See Fed. R. Civ. P. 61; 37 CFR § 2.123(g); and, for example, Tampa Rico Inc. v. Puros Indios Cigars Inc., 56

USPQ2d 1382, 1384 (TTAB 2000) (improperly marked exhibits considered) and Pass & Seymour, Inc. v. Syrelec, 

supra (Board has discretion to consider improperly marked exhibits). 

700 - 520 
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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

Other objections to testimony depositions are not waived for failure to make them during 

or before the taking of the deposition, provided that the ground for objection is not one 

that might have been obviated or removed if presented at that time. These objections, 

which are basically substantive in nature, include objections

(1) to the competency of a witness, or 

(2) to the competency, relevance, or materiality of testimony, or 

 

292

(3) that the testimony constitutes hearsay or improper rebuttal.

When an objection of this type could not have been obviated or removed if presented at 

the deposition, the Board will consider it even if the objection is raised for the first time 

in or with293 a party's brief on the case.294 

Substantive objections to testimony (that is, objections going to such matters as the 

competency of a witness, or the competency, relevance, or materiality of testimony, or 

the asserted hearsay or improper rebuttal nature of the testimony) are not considered by 

the Board prior to final hearing.295 This is because depositions are taken out of the 

presence of the Board, and it is the policy of the Board not to read trial testimony, or 

examine other trial evidence offered by the parties, prior to deliberations on the final 

292 See 37 CFR § 2.123(k); Fed. R. Civ. P. 32(d)(3)(A); Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003) 

(objection to the failure of opposer to provide applicant with the notes to which the witness was referring during his 

testimony was considered substantive, not procedural in nature); Beech Aircraft Corp. v. Lightning Aircraft Co., 

supra; and Wright Line Inc. v. Data Safe Services Corp., 229 USPQ 769, 769 n.4 (TTAB 1985) (objection that 

testimony is immaterial because it is outside scope of pleading is not waived). 

 

293 See Harjo v. Pro Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (motion to strike trial brief as exceeding 

page limitation denied where evidentiary objections which were not required to be raised immediately were raised in

appendices to the brief rather than in text of brief) and Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d

1321, 1326 (TTAB 1992) (objections to testimony on grounds including relevance and bias of witness, raised a year

after depositions were taken and set out in a separate paper from brief were not untimely and paper did not result in

violation of page limitation for final briefs).

294 See Louise E. Frugé, TIPS FROM THE TTAB: An "Object" Lesson, 72 Trademark Rep. 211 (1982). Cf. Pass &

Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984) (Objection on ground of hearsay with no foundation for

establishing an exception waived since defect could have been cured if objection was raised during the deposition). 

295 See, for example, Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections

based on relevancy and materiality deferred); Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305,

307 n.1 (TTAB 1979) (objections to relevance and materiality of exhibits offered at a deposition deferred); Primal 

Feeling Center of New England, Inc. v. Janov, 201 USPQ 44, 47-48 (TTAB 1978) (objection on hearsay grounds or

that witness offered opinion testimony without adequate foundation deferred); and Globe-Union Inc. v. Raven 

Laboratories Inc., 180 USPQ 469, 471 n.5 (TTAB 1973) (objection to testimony as lacking foundation deferred). 

Cf. TBMP § 707.02(c) (Objections to Notices of Reliance on Substantive Grounds). 

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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

For the foregoing reasons, the objections described in this section (as opposed to the 

objection to testimony as late-taken, which may be raised by motion to strike--see TBMP 

§§ 533.01 and 707.03(b)(1); and the objection based on improper or inadequate notice of 

the taking of a deposition, which is the subject of the motion to strike procedure 

described in 37 CFR § 2.123(e)(3), and TBMP §§ 533.02 and 707.03(b)(2)), generally 

should not be raised by motion to strike. Rather, the objections should simply be made in 

writing at the time specified in the rules cited above, or orally "on the record" at the 

taking of the deposition, as appropriate. These objections, if properly asserted and not 

waived or rendered moot, normally will be considered by the Board in its determination 

of the case at final hearing.

Additionally, in order to preserve an objection that was seasonably raised at trial, a party 

should maintain the objection in its brief on the case.

 

decision.296 Further, testimony regularly taken in accordance with the applicable rules 

ordinarily will not be stricken on the basis of a substantive objection; rather, any such 

objection (unless waived) will be considered by the Board in its evaluation of the 

probative value of the testimony at final hearing.297 

Similarly, if the propriety of a procedural objection to a testimony deposition (such as an 

objection to the form of a question) cannot be determined without reading the deposition, 

or examining other trial evidence, it generally will not be considered by the Board until 

final hearing.

298 

299 

300

296 See TBMP § 502.01 (Available Motions) and authorities cited therein.

297 See Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321 (TTAB 1992); Liqwacon Corp. v. 

Browning-Ferris Industries, Inc., supra; Primal Feeling Center of New England, Inc. v. Janov, supra; and GlobeUnion Inc. v. Raven Laboratories Inc., supra. Cf. TBMP § 707.02(c) (Objections to Notices of Reliance on

Substantive Grounds). 

298 See, for example, Globe-Union Inc. v. Raven Laboratories Inc., 180 USPQ 469, 471 n.5 (TTAB 1973) (objection 

to testimony as based on leading questions deferred). Cf. TBMP § 707.02(b)(2) (Objections to Notices of Reliance 

on Other Procedural Grounds). 

299 See 37 CFR § 2.123(k). Cf. TBMP § 707.02(c) (Objections to Notices of Reliance on Substantive Grounds). 

300 See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000) (objection to 

exhibit raised during deposition but not maintained in brief deemed waived); Reflange Inc. v. R-Con International, 

17 USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections to testimony and exhibits made during depositions deemed

waived where neither party raised any objection to specific evidence in its brief); United Rum Merchants Ltd. v.

Fregal, Inc., 216 USPQ 217, 218 n.4 (TTAB 1982) (party failed to pursue objection to certain insufficiently 

identified exhibits introduced at trial in its brief); Donut Shops Management Corporation v. Mace, 209 USPQ 615 

(TTAB 1981); Medtronic, Inc. v. Medical Devices, Inc., 204 USPQ 317, 320 n.1 (TTAB 1979) (applicant's 

objections to opposer's main testimony and rebuttal testimony on grounds of hearsay and competency deemed 

waived where applicant did not repeat the objections in its brief and in fact attempted to use the rebuttal to support 

700 - 522 
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707.03(d) Refusal to Answer Deposition Question 

 

When a deposition is taken on written questions pursuant to 37 CFR § 2.124, written 

objections to questions (that is, the direct questions, cross questions, redirect questions, 

and recross questions) may be served on the party propounding the subject questions. A 

party that serves written objections on a propounding party must also serve a copy of the 

objections on every other adverse party.301 Objections to questions and answers in 

depositions on written questions generally are considered by the Board (unless waived) at 

final hearing.

302 

Because parties that have raised objections to testimony depositions generally will not 

know the disposition thereof until final decision, they should argue the matters 

alternatively in their briefs on the case. 

When an objection is made to a question propounded during a testimony deposition, the 

question ordinarily should be answered subject to the objection. However, a witness may 

properly refuse to answer a question asking for information that is, for example, 

privileged or confidential.303 

If a witness not only objects to, but also refuses to answer, a particular question, the 

propounding party may obtain an immediate ruling on the propriety of the objection only 

by the unwieldy process of adjourning the deposition and applying, under 35 U.S.C. § 24, 

to the Federal district court, in the jurisdiction where the deposition is being taken, for an 

order compelling the witness to answer.304 

There is no mechanism for obtaining from the Board, prior to final hearing, a ruling on 

the propriety of an objection to a question propounded during a testimony deposition.305 

its own case); Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76, 83 (TTAB 1979)

(objections made during depositions but not argued in the briefs were considered to have been dropped); Fischer

Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB 1979); and Copperweld Corp. v. Astralloy-Vulcan

Corp., 196 USPQ 585 (TTAB 1977). See also TBMP § 707.04 (Waiver of Objection)

301 See 37 CFR § 2.124(d)(1), and TBMP § 703.02(g) (Depositions on Written Questions -- Examination of 

Witness). 

302 See TBMP § 703.02(k) (Depositions on Written Questions – Objections to Deposition). 

303 See TBMP § 404.09 (Discovery Depositions Compared to Testimony Depositions) and authorities cited therein. 

304 See TBMP § 404.09 (Discovery Depositions Compared to Testimony Depositions) and authorities cited therein. 

305 See TBMP §§ 404.02 (Discovery Depositions Compared to Testimony Depositions) and 707.03(c) (On Other 

Procedural Grounds and Substantive Grounds) and authorities cited therein. 

700 - 523 
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For information concerning refusal to answer a discovery deposition question, see

TBMP §§ 404.03(a)(2) regarding deposition of nonparty residing in U.S., 404.08(c) 

(Objections During Deposition), 404.09 (Discovery Depositions Compared to Testimony 

Depositions), 411.03 (Discovery Depositions [Remedy for Failure to Provide 

Discovery]), and 523 (Motion to Compel Discovery). 

707.04 Waiver of Objection 

 

Accordingly, where the witness in a testimony deposition refuses to answer a particular 

question; no court action is sought; and the Board finds at final hearing that the objection 

was not well taken, the Board may presume that the answer would have been unfavorable 

to the position of the party whose witness refused to answer, or may find that the refusal 

to answer reduces the probative value of the witness's testimony.306 

A party may waive an objection to evidence by failing to raise the objection at the appropriate 

time.307 

For example, an objection to a notice of reliance on the ground that the notice does not comply 

with the procedural requirements of the particular rule under which it was submitted generally 

should be raised promptly. If a party fails to raise an objection of this nature promptly, the 

objection may be deemed waived, unless the ground for objection is one that could not have been 

cured even if raised promptly.308 

Similarly, an objection to a testimony deposition on the ground that it does not comply with the 

applicable procedural rules generally is waived if not raised promptly, unless the ground for 

objection is one which could not have been cured even if raised promptly.309 

306 See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993) (where opposer’s

objections were found to be not well taken, Board presumed that the answers would have been adverse to opposer's

position); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409 (TTAB 1990); Seligman & Latz, Inc. v. Merit 

Mercantile Corp., 222 USPQ 720 (TTAB 1984); Ferro Corp. v. SCM Corp., 219 USPQ 346 (TTAB 1983); Entex 

Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116 (TTAB 1982); Data Packaging Corp. v. Morning Star, Inc.,

212 USPQ 109 (TTAB 1981); Donut Shops Management Corp. v. Mace, 209 USPQ 615 (TTAB 1981); S. 

Rudofker's Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499 (TTAB 1969); and Bordenkircher v. Solis Entrialgo y 

Cia., S. A., 100 USPQ 268, 276-278 (Comm'r 1953). Cf. Land v. Regan, 342 F.2d 92, 144 USPQ 661 (CCPA 1965).

But see University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d,

703 F.2d 1372, 217 USPQ 505, 510 (Fed. Cir. 1983). 

307 See 37 CFR §§ 2.123(e)(3), 2.123(j), and 2.123(k); Fed. R. Civ. P. 32(d)(1),(2), and (3)(A) and (B); and TBMP 

§§ 707.02 (Objections to Notices of Reliance) and 707.03 (Objections to Trial Testimony Depositions). 

308 See TBMP §§ 707.02(b)(1) (Untimeliness) and 707.02(b)(2) (Other Procedural Grounds) and authorities cited

therein. 

309 See TBMP §§ 707.03(b)(1) (Untimeliness) and 707.03(c) (On Other Procedural Grounds and on Substantive 

Grounds) and authorities cited therein. 

700 - 524 
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TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 

On the other hand, objections to a notice of reliance, or to a testimony deposition, on substantive 

grounds, such as, that the proffered evidence constitutes hearsay or improper rebuttal, or is 

incompetent, irrelevant, or immaterial, generally are not waived for failure to raise them

promptly, unless the ground for objection is one which could have been cured if raised 

promptly.

Additionally, by failing to preserve the objection in its brief on the case, a party may waive an 

objection that was seasonably raised at trial.

 

310 

If testimony is submitted in affidavit form by stipulation of the parties pursuant to 37 CFR 

§2.123(b), any objection, which is waived if not made at deposition, must be raised promptly 

after receipt of the affidavit submission, failing which it is waived.311 

If a party fails to attend a testimony deposition, any objection, which is waived if not made at the 

deposition, is waived.312 

313

310 See TBMP §§ 707.02(c) (On Substantive Grounds) and 707.03(c) (On Other Procedural Grounds and on

Substantive Grounds) and authorities cited therein.

311 See Chase Manhattan Bank, N.A. v. Life Care Services Corp., 227 USPQ 389 (TTAB 1985). 

312 See Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR 23122, at 23132, 

and in the Official Gazette of June 21, 1983 at 1031 TMOG 13, at 22; Wright Line Inc. v. Data Safe Services Corp., 

229 USPQ 769 (TTAB 1985); Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845 (TTAB 1984); and T. Jeffrey Quinn,

TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark Rep. 269, 274 (1984). 

313 See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000) (objection to 

exhibit raised during deposition but not maintained in brief deemed waived); Reflange Inc. v. R-Con International, 

17 USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections to testimony and exhibits made during depositions deemed

waived where neither party raised any objection to specific evidence in its brief); United Rum Merchants Ltd. v.

Fregal, Inc., 216 USPQ 217, 218 n.4 (TTAB 1982) (party failed to pursue objection to certain insufficiently 

identified exhibits introduced at trial in its brief); Medtronic, Inc. v. Medical Devices, Inc., 204 USPQ 317, 320 n.1 

(TTAB 1979) (applicant's objections to opposer's main testimony and rebuttal testimony on grounds of hearsay and

competency deemed waived where applicant did not repeat the objections and in fact attempted to use the rebuttal to

support its own case); Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76, 83 (TTAB 1979) 

(objections made during depositions but not argued in the briefs were considered to have been dropped); Fischer

Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861 (TTAB 1979); and Copperweld Corp. v. Astralloy-Vulcan

Corp., 196 USPQ 585 (TTAB 1977). See also TBMP § 707.03(c) (On Other Procedural Grounds and on

Substantive Grounds). 

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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

801.01 In General 

(2) When there is a counterclaim, or when proceedings have been consolidated and one party is

in the position of plaintiff in one of the involved proceedings and in the position of defendant in 

another of the involved proceedings, or when there is an interference or a concurrent use 

registration proceeding involving more than two parties, the Trademark Trial and Appeal Board 

will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal 

brief by the parties. 

 

801 Briefs on the Case 

After the close of all testimony periods in an inter partes proceeding before the Board, the parties 

are allowed time in which to file briefs on the case. The brief is a party's "opportunity to present, 

in a systematic and coherent manner, and in a form which is permanent and can be referred to, a 

discussion of the facts in light of the law," its strongest affirmative arguments, and a rebuttal of 

its adversary's arguments.1

 

Subject to Fed. R. Civ. P. 11, a party is entitled to offer in its brief on the case any argument it 

feels will be to its advantage. However, the facts and arguments presented in the brief must be 

based on the evidence offered at trial. A brief may not be used as a vehicle for the introduction 

of evidence.2

 

For information concerning briefs and oral hearings in ex parte appeals, see TBMP §§ 1203.01 

and 1216, respectively. 

801.02 Time for Filing 

37 CFR § 2.128(a) 

(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after the 

date set for the close of rebuttal testimony. The brief of the party in the position of defendant, if 

filed, shall be due not later than thirty days after the due date of the first brief. A reply brief by 

the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due 

date of the defendant's brief. 

(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued 

allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the 

Board should not treat such failure as a concession of the case. If plaintiff fails to file a response 

1

 See David J. Kera, TIPS FROM THE TTAB: Preparing and Filing Briefs With the Trademark Trial and Appeal

Board, 66 Trademark Rep. 141, 141 (1976). 

2

 See TBMP §§ 704.05(b) (Exhibits to Briefs) and 704.06(b) (Statements in Briefs) and authorities cited therein.

800 - 526 
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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

801.02(a) Plaintiff's Main Brief 

The main brief of the party in the position of plaintiff is due not later than 60 days after 

the date set for the close of the rebuttal testimony period.

If a party in the position of plaintiff fails to file a main brief, the Board may issue an 

order allowing plaintiff until a set time, not less than 15 days, in which to show cause 

why its failure to file a main brief should not be treated as a concession of the case. If the 

plaintiff fails to file a response to the order, or files a response indicating that it has lost 

interest in the case, judgment may be entered against the plaintiff.

order to show cause procedure is to save the Board the burden of determining a case on 

the merits where the parties have settled, but have neglected to notify the Board, or where 

the plaintiff has lost interest in the case. It is the policy of the Board not to enter 

judgment against a plaintiff, for failure to file a main brief on the case, where the 

plaintiff, in its response to the show cause order, indicates that it has not lost interest in

the case.5

 

For further information concerning the 37 CFR § 2.128(a)(3) order to show cause 

procedure, see TBMP § 536. 

 

to the order, or files a response indicating that he has lost interest in the case, judgment may be 

entered against plaintiff. 

3

 

4

 The purpose of this 

801.02(b) Defendant's Main Brief 

The filing of a brief on the case is optional, not mandatory, for a party in the position of 

defendant.6

 

However, if a party in the position of defendant wishes to file a brief on the case, the brief 

is due not later than 30 days after the due date of the plaintiff's main brief.7

 

3

 37 CFR § 2.128(a)(1).

4

 37 CFR § 2.128(a)(3). See CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302

(TTAB 1999) (opposer’s failure to respond to order to show cause under Rule 2.128 resulted in entry of judgment). 

5

 See TBMP § 536 (Motion for Order to Show Cause Under Rule 2.128(a)(3)) and authorities cited therein.

6

 37 CFR § 2.128(a)(1). See T. Jeffrey Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark 

Rep. 269, 275 (1984). 

7

 37 CFR § 2.128(a)(1). See Ariola-Eurodisc Gesellschaft v. Eurotone International Ltd., 175 USPQ 250, 250 

(TTAB 1972) (uncontested motion to strike brief filed three weeks after due date granted). For information on

extensions of time, see TBMP § 509. 

800 - 527 
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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

However, if a party in the position of plaintiff wishes to file a reply brief, the brief is due 

not later than 15 days after the due date of the defendant's main brief.

801.02(d) Reply Brief for Defendant Not Permitted 

There is no provision for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party 

in the position of defendant. If a party in the position of defendant files such a brief, it 

may be stricken, or given no consideration, by the Board.

However, if a defendant has counterclaimed to cancel a registration owned by the 

plaintiff, the defendant, as plaintiff in the counterclaim, may file a reply brief directed to 

the counterclaim

 

801.02(c) Plaintiff's Reply Brief 

The filing of a reply brief is optional for a party in the position of plaintiff.8

 

9

 

10 

.

11

801.02(e) Special Situations 

In certain special situations, the Board will set, by written action, the due dates for the 

filing of briefs on the case. This occurs when (1) there is a counterclaim, (2) proceedings 

have been consolidated, and one party is in the position of plaintiff in one of the involved 

proceedings and in the position of defendant in another, or (3) there is an interference or a 

concurrent use registration proceeding involving more than two parties.12 

For example, if there is a counterclaim, the Board will issue an order setting the due dates 

for plaintiff's main brief in the original proceeding (due the 60th day after the date set for 

the close of rebuttal testimony); defendant's brief as defendant in the original proceeding 

and as plaintiff in the counterclaim (due the 30th day after the due date of the plaintiff's 

main brief); plaintiff's combined reply brief in the original proceeding and its brief as

defendant in the counterclaim (due the 30th day after the due date of defendant's brief as 

defendant in the original proceeding and as plaintiff in the counterclaim); and defendant's

8

 See 37 CFR § 2.128(a)(1), and T. Jeffrey Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 

Trademark Rep. 269, 275 (1984). 

9

 See 37 CFR § 2.128(a)(1).

10 See TBMP § 539 (Motion to Strike Brief on Case) and cases cited therein. 

11 See TBMP § 801.02(e) (Time for Filing – Special Situations).

12 See 37 CFR § 2.128(a)(2). 

800 - 528 
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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

(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; 

(6) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a paper or 

CD-ROM submission. 

 

reply brief as plaintiff in the counterclaim (due the 15th day after the due date of 

plaintiff's combined reply brief in the original proceeding and brief as defendant in the 

counterclaim).

13 

In an interference or concurrent use registration proceeding, the Board will schedule 

briefing periods so that each party in the position of plaintiff will have a period for filing 

a main brief on the case, each party in the position of defendant will have a period for 

filing a main brief in which it may meet the brief of each plaintiff, and each party in the 

position of plaintiff will have a period for filing a reply brief.

14 

801.03 Form and Contents of Brief 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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) A paper submission must be printed in at least 11-point type and double-spaced, with 

text on one side only of each sheet; 

(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) A paper submission must not be stapled or bound; 

(5) All pages of a paper submission must be numbered and exhibits shall be identified in 

the manner prescribed in §2.123(g)(2);

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the 

rules in this part or Board practice permit. A CD-ROM submission must identify the parties and 

case number and contain a list that clearly identifies the documents and exhibits contained 

thereon. This information must appear in the data contained in the CD-ROM itself, on a label 

affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission 

must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be 

accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied 

13 See the Appendix of Forms for a sample briefing schedule.

14 See TBMP § 1007 (example of a briefing schedule in an interference proceeding), and TBMP § 1109 (example of 

a briefing schedule in a concurrent use proceeding). Cf. 37 CFR § 2.121(b)(2). 

800 - 529 
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by a transmittal letter on paper that identifies the parties, the case number and the contents of 

the CD-ROM. 

(c) 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. 

(d) 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. 

37 CFR § 2.128(b) Briefs must be submitted in written form and must meet the requirements 

prescribed in § 2.126. Each brief shall contain an alphabetical index of cases cited. Without 

prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed 

fifty-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; and a 

reply brief shall not exceed twenty-five pages in its entirety. 

A brief on the case must be submitted in written form and must meet the general requirements 

for submissions to the Board specified in 37 CFR § 2.126. A party may file a brief on the case 

on paper, CD-ROM, or electronically through ESTTA.15 The requirements for each form of 

submission are set out in 37 CFR § 2.126(a), (b) and (c), respectively. If the brief is submitted 

on CD-ROM, a paper copy of the brief must be submitted at the same time.

16

In addition to the general requirements for submissions to the Board, briefs at final hearing are 

also subject to the page limitations specified in 37 CFR § 2.128(b).17 

As provided in 37 CFR § 2.128(b), without prior leave of the Board, a main brief on the case 

may not exceed 55 pages in length in its entirety, and a reply brief may not exceed 25 pages in its 

entirety. The parts of the brief that fall within the length limit include the table of contents, index 

of cases, description of the record, statement of the issues, recitation of facts, argument, and 

summary. Extensive single-spaced footnotes may not be used as a subterfuge to avoid the page 

15 See also TBMP § 106.03 (Form of Submissions). 

16 See 37 CFR § 2.126(b).

17 See also, with respect to briefs on the case, David J. Kera, TIPS FROM THE TTAB: Preparing and Filing Briefs 

With the trademark Trial and Appeal Board, 66 Trademark Rep. 141 (1976). 

800 - 530 
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limit.18 Exhibits or appendices to a brief, not being part of the brief itself, are not included 

within the page limit.19 In addition, evidentiary objections that may properly be raised in a 

party’s brief on the case may instead be raised in an appendix or by way of a separate statement 

of objections. The appendix or separate statement is not included within the page limit.20 

For information concerning motions for leave to file a brief exceeding the page limit, see 37 

CFR § 2.128(b) and TBMP § 537. 

The brief must contain an alphabetic index of all cited cases. 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. 

The description of the record should comprise a list of the evidence properly introduced by the 

parties, such as, "The evidence of record consists of opposer's Registration No. 1,234,567; 

applicant's answers to opposer's interrogatories; the discovery deposition of Mr. X; and the 

testimony depositions of opposer's witnesses, Mr. Y and Ms. Z." For each significant fact 

recited, the recitation of facts should include, a citation to the portion of the evidentiary record 

where supporting evidence may be found. 

If a mark that is the subject of, or is pleaded in, a proceeding includes stylization or a design 

feature, a reproduction of the mark should be included in the brief on the case. 

If a plaintiff files a reply brief, the brief must be confined to rebutting the defendant's main brief. 

Confidential information. Except for materials filed under seal pursuant to a protective order, 

the files of applications and registrations which are the subject matter of pending proceedings 

before the Board and all pending proceeding files and exhibits thereto are available for public 

inspection and copying.21 Therefore, only the particular portion of a brief that discloses 

18 See Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 

1992) (warned that single-spaced footnotes containing substantial discussion may be viewed as a subterfuge to avoid 

page limit). 

 

19 See 37 CFR § 2.128(b); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (raising evidentiary

objections in appendices was not viewed as subterfuge to avoid page limit); United Foods Inc. v. United Air Lines 

Inc., 33 USPQ2d 1542, 1543 (TTAB 1994) (motion to file 30-page reply brief denied as unnecessary where main

brief was 18 pages and responsive brief was 37 pages), and Consorzio del Prosciutto di Parma v. Parma Sausage 

Products Inc., supra. 

20 See Harjo v. Pro-Football Inc., supra at 1792 (appropriate evidentiary objections may be raised in appendix or 

separate paper rather than in text of brief); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 

(TTAB 1992) and Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., supra. 

21 See, e.g., Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked 

confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of 

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Confidential portions of the brief, if any, must be submitted in accordance with 37 CFR § 

2.126(d). The requirements for confidential submissions are specified in part (d) of 37 CFR § 

2.126. To be handled as confidential, and kept out of the public record, submissions to the Board 

that are confidential must be filed 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 also be submitted.

801.04 Amicus Briefs 

A party may move to strike a brief on the case on a variety of grounds, including that the brief 

was untimely filed, exceeds the page limit for a brief on the case, violates the format 

requirements for such a brief, is a brief not provided for by the applicable rules (e.g., is a reply 

brief filed by the defendant). In addition, a party may move to strike evidentiary matter attached 

to a brief where the evidentiary matter was not properly made of record during the time for 

 

confidential information should be filed under seal pursuant to a protective order. If a party 

submits a brief containing confidential information under seal, the party must also submit for the 

public record a redacted version of the brief.22 

23 

Confidential materials filed in the absence of a protective order are not regarded as confidential 

and will not be kept confidential by the Board.24 . 

For further information regarding confidential materials, see TBMP §§ 120.02 and 412. 

The Board may, in its discretion, entertain an amicus brief.25 An entity that wishes to file an 

amicus brief should file a motion with the Board for leave to do so. For information concerning 

motions for leave to file an amicus brief, see TBMP § 538. 

801.05 Motion to Strike Brief on Case 

such motion, the exhibits would be placed in the proceeding file), rev'd on other grounds, 284 F. Supp. 2d 96, 68

USPQ2d 1225 (D.D.C. 2003).

22 See 37 CFR §§ 2.27(d) and (e), and 2.126(d); Duke University v. Haggar Clothing Inc., supra at 1445; and Rany

L. Simms, TIPS FROM THE TTAB: Stipulated Protective Agreements, 71 Trademark Rep. 653 (1981).

23 See 37 CFR § 2.126(d). See also TBMP § 120.02 (Confidential Materials). 

24 See Harjo v. Pro-Football, Inc., supra (Board agreed to hold exhibits marked confidential for thirty days pending

receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be 

placed in the proceeding file). 

25 See TBMP § 538 (Motion for Leave to File Amicus Brief) and authorities cited therein.

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taking testimony. For information concerning motions to strike a brief on the case, or matter 

attached to such a brief, see TBMP § 539 and cases cited therein. 

802 Oral Hearing 

Subject to Fed. R. Civ. P. 11, a party is entitled to offer at oral hearing any argument it feels will 

be to its advantage. However, the facts recited and arguments made at oral hearing must be 

based on the evidence offered at trial. An oral hearing may not be used as a vehicle for the 

introduction of evidence

 

37 CFR § 2.129(a) If a party desires to have an oral argument at final hearing, the party shall 

request such argument by a separate notice filed not later than ten days after the due date for the 

filing of the last reply brief in the proceeding. Oral arguments will be heard by at least three 

Members of the Trademark Trial and Appeal Board at the time specified in the notice of hearing. 

If any party appears at the specified time, that party will be heard. If the Board is prevented 

from hearing the case at the specified time, a new hearing date will be set. Unless otherwise 

permitted, oral arguments in an inter partes case will be limited to thirty minutes for each party. 

A party in the position of plaintiff may reserve part of the time allowed for oral argument to 

present a rebuttal argument. 

(b) The date or time of a hearing may be reset, so far as is convenient and proper, to meet the 

wishes of the parties and their attorneys or other authorized representatives. 

802.01 In General 

The oral hearing on the case in an inter partes proceeding before the Board corresponds to the 

oral summation in court proceedings after all the evidence is in.26 

An oral hearing is optional and is scheduled only if a timely request therefor is filed by a party to 

the proceeding. The oral hearing provides a party with one last opportunity to emphasize its 

strongest arguments, and to refute its adversary's arguments. It is particularly useful in cases 

with complex issues or a complex record, or where the defendant needs to respond to arguments 

in the plaintiff's reply brief.27

.

28 

26 See 37 CFR § 2.116(f). For information on oral hearings in ex parte cases, see TBMP § 1216. 

27 For information concerning situations in which it may be advisable to request an oral hearing on a case, see Saul 

Lefkowitz, TIPS FROM THE TTAB: Presentation of an Oral Hearing Before the Trademark Trial and Appeal

Board, 67 Trademark Rep. 283 (1977). 

28 See 37 CFR § 2.123(l); TBMP § 704.06 (Statements in Pleadings or Briefs); and Saul Lefkowitz, TIPS FROM

THE TTAB: Presentation of an Oral Hearing Before the Trademark Trial and Appeal Board, 67 Trademark Rep.

283 (1977). Cf. TBMP § 801.01 (Briefs on the Case – In General). 

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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

If an oral hearing is not requested, the case will be decided in due course after the due date for 

filing the last reply brief on the case. 

When a timely request for an oral hearing on the case has been filed by a party to an inter partes 

proceeding before the Board, the Board sets the date and time for the hearing, and sends each 

party a written notice of hearing specifying the date, time, and location of the hearing.

hearings are ordinarily scheduled on Tuesdays, Wednesdays and Thursdays. In setting an oral 

hearing it is the normal practice of the Board, to telephone the parties, or their attorneys or other 

authorized representatives, to determine a convenient date and time for the hearing. A written 

notice formally scheduling the hearing is mailed. 

Attendance at a scheduled oral hearing is voluntary, not mandatory. If any party appears at the 

specified time, the party will be heard, whether or not the party that appears is the one that 

requested the hearing. to attend a scheduled hearing, the party should 

notify the Board, well in advance of the scheduled hearing date, that it will not attend the 

hearing. 

 

802.02 Request for Oral Hearing 

A party that wishes to have an oral hearing on the case must file a request, by separate paper (not 

as part of its brief on the case), not later than 10 days after the due date for filing the last reply 

brief in the proceeding.29 Any party to the proceeding may request a hearing. 

802.03 Time and Place of Hearing 

30 Oral 

Oral hearings are almost exclusively held at the offices of the Board. However, there are two 

off-site video conference centers available for use for oral hearings. The two video conference 

centers are located in Sunnyvale, California and Detroit, Michigan. To request a hearing by 

video conference, a party must make the request in its written request for an oral hearing. When 

a request is received, the Board will contact the off-site video conference centers to obtain 

available times and dates, as well as the on-site video conference center for tentative scheduling 

options that coincide with the off-site video conference center. Once the information is obtained, 

counsel will be contacted and informed of the nearest center location, the available scheduling 

dates/times and the fee required by the off-site center. The requesting party is responsible for the 

fee for the off-site center. Once agreement is made on the conference, the Board will secure the 

hearing centers and provide written notice to the parties. 

31 If a party elects not 

29 See 37 CFR § 2.129(a). 

30 See 37 CFR § 2.129(a). 

31 See 37 CFR § 2.129(a). 

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If a party that requested an oral hearing fails to appear at the appointed time, without giving prior 

notice to the Board of nonappearance, the failure to appear will be construed by the Board as a 

withdrawal of the request for an oral hearing. Any new request for an oral hearing will be

granted only upon a showing that the failure to appear was occasioned by extraordinary 

circumstances. 

If the Board is prevented from hearing the case at the time specified in the notice of hearing, a 

new hearing date will be set.32 The Board will reschedule an oral hearing, at the request of the 

parties, if there is a reasonable basis for the request. But, absent compelling circumstances, a 

hearing date will not be changed if the request for rescheduling is made within two weeks of the 

scheduled hearing date unless both parties agree to the change. When the parties agree to the 

resetting of an oral hearing, they should determine a new date and time convenient to every party 

and then contact the Chief Administrative Trademark Judge’s secretary by telephone, well prior 

to the scheduled hearing date, to request that the hearing be reset for the new date and time. The 

parties should also file a written stipulation or consented motion confirming their agreement. If 

the parties agree to reset an oral hearing due to settlement negotiations, they should request that 

proceedings, including the time for oral hearing, be suspended pending completion of the 

negotiations. If agreement cannot be reached, the party that wishes to have the hearing reset 

should file a motion therefor.33 However, parties should not file repeated requests to reset an 

oral hearing. For information concerning requests to reset an oral hearing, see TBMP § 541.01 

802.04 Before Whom Held 

An oral hearing is held before a panel of at least three members of the Board (i.e., its statutory 

members, generally administrative trademark judges).34 Normally, an oral hearing panel consists 

of only three Board members. If for some reason a member of a panel of three that held the oral 

hearing is unable to participate in the final decision, another Board member may be substituted at 

final decision for the missing member, even though the substituted member was not present at 

the oral hearing; no new oral hearing is necessary.35

32 See 37 CFR § 2.129(a). 

33 See 37 CFR § 2.129(b). 

34 See 37 CFR § 2.129(a). Cf. Section 17 of the Act, 15 U.S.C. § 1067; Knickerbocker Toy Co. v. Faultless Starch

Co., 467 F.2d 501, 175 USPQ 417, 420 n.8 (CCPA 1972) (where only one Board member signed decision, court 

presumed the proper number participated in decision) and 37 CFR § 2.142(e)(1). 

35 See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed. Cir. 1985) (statutory requirement that a case be 

heard "means judicially heard not physically heard"), and Jockey International, Inc. v. Bette Appel Unltd., 216 

USPQ 359, 360 (TTAB 1982). Cf. Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB

1981), set aside on other grounds and new decision entered, 217 USPQ 464, 464 (TTAB 1983) (final decision

rendered by only two Board members vacated); Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492, 494

(Comm'r 1978) (final decision heard by three Board judges but rendered by only two, vacated and oral hearing 

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For information concerning motions for an augmented panel hearing, see TBMP § 540. For 

further information concerning the constitution of Board panels, see In re Alappat, 33 F.3d 1526, 

31 USPQ2d 1545, 1547 (Fed. Cir. 1994). 

802.05 Length of Oral Argument 

Ordinarily, each party in a Board inter partes proceeding is allowed 30 minutes for its oral 

argument. If it so desires, the plaintiff may reserve part of its 30 minutes for rebuttal.

is a counterclaim, the defendant, as the plaintiff in the counterclaim, may also reserve part of its 

30 minutes for rebuttal on the counterclaim.

 

On the other hand, if a party feels that it needs more than 30 minutes for oral argument, it may 

file a request with the Board for additional time st is granted, each party will be 

allowed the same amount of time for oral argument. For information concerning requests or 

motions for additional time for oral argument, see TBMP § 541.02. 

 

The Board may, in its discretion, use an augmented panel to hear a case.36 A decision by the 

Board to use an augmented panel may be made either upon the Board's own initiative, or upon 

motion filed by a party to the proceeding.37 

There is no requirement that a party use all of its allotted 30 minutes for oral argument. Often, a 

case may be presented in considerably less than 30 minutes. 

.

39 If the reque

38 If there 

rescheduled); and Ethicon, Inc. v. American Cyanamid Co., 193 USPQ 374, 377 (Comm'r 1977) (petition to vacate

decision denied).

36 See TBMP § 540 (Motion for Augmented Panel Hearing) and cases cited therein. 

37 See, for example, In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992) (augmented panel used to overrule 

previous decision barring examining attorneys from requesting reconsideration), recon. denied, 24 USPQ2d 1061

(TTAB 1992); In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (in view of issues presented, oral hearing 

held before augmented panel of eight Board members); In re McDonald's Corp., 230 USPQ 210 (TTAB 1986) 

(augmented five-member panel); and In re WSM, Inc., 225 USPQ 883 (TTAB 1985) (augmented panel used to

delineate rights in FCC “assigned” call letters for radio broadcasting services). See also Crocker National Bank v. 

Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984) (augmented panel of eight members because 

of the importance of the issues). 

 Cf. Federal Circuit Rule 35. Cf. also Fioravanti v. Fioravanti Corrado S.R.L, 230 USPQ 36 (TTAB 1986), 

recon. denied, 1 USPQ2d 1304, 1305 (TTAB 1986) (case not appropriate for designation of more than threemember panel). 

38 See 37 CFR § 2.129(a). 

39 See 37 CFR § 2.129(a); TBMP § 541.02 (Motion for Additional Time for Oral Argument) and U.S. Navy v. 

United States Manufacturing Co., 2 USPQ2d 1254 (TTAB 1987) (additional time for arguments allowed in view of

voluminous record). 

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The Board will generally allow certain types of materials, such as graphs, large depictions of

marks, schedules, charts, etc., to be used at oral hearing, either for clarification or to eliminate 

the need for extended description, when such materials are based on evidence properly of 

record.

A party may not, however, use an oral hearing for the purpose of offering new evidence, whether 

in the form of charts, graphs, exhibits, or other such materials. ay a party submit in 

writing the text of its oral argument; to allow such a practice would be to permit a party, in 

effect, to file an additional brief on the case.43 

 

802.06 Audiotaping and Videotaping 

Upon motion showing good cause and with prior arrangement, the Board will usually permit a 

party to make an audiotape recording of an oral hearing. The recording, when permitted by the 

Board, is strictly for the party's private use, and is not to be used for purposes of publicity, or as 

"evidence" in any proceeding (the oral hearing is not part of the evidentiary record in a 

proceeding before the Board). The motion should be filed well in advance of the date set for the 

oral hearing, so if an objection is raised, the Board will have time to rule on the matter. For 

information concerning motions for leave to audiotape an oral hearing, see TBMP § 542. 

If permission to record an oral hearing is granted, the moving party is responsible for furnishing, 

operating, and removing its own audio taping equipment in an unobtrusive manner. 

802.07 Visual Aids, etc. 

41 

A party may also bring to the oral hearing any materials introduced as exhibits at trial, including 

audiotapes or videotapes of commercials or demonstrations. A party that introduced an 

audiotape or videotape as an exhibit at trial, and wishes to play it at the oral hearing, should 

notify the Board in advance. In addition, a party that wishes to play such a tape at oral hearing is 

responsible for furnishing, operating, and removing the necessary equipment in an unobtrusive 

manner. 

A court reporter is distracting and disruptive in the context of an oral hearing before the Board, 

and therefore may not be used. For the same reason, an oral hearing before the Board may not 

be videotaped.40 

42 Nor m

40 See TBMP § 542.

41 See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.5 (TTAB 1990). 

42 See TBMP § 802.01 (Oral Hearing – In General) and authorities cited therein.

43 See Reflange Inc. v. R-Con International, supra. 

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Prior to an oral hearing, the Board panel members read the briefs on the case and, if necessary, 

examine the case files. Thus, persons presenting oral arguments should not read from the briefs 

on the case, except to emphasize an admission contained in an adversary's brief. 

A person presenting oral arguments should be prepared to answer questions from Board panel 

members at any point in the arguments. If exhibits or visual aids have been brought to the oral 

hearing, they should be shown to the adversary before they are shown to the Board panel. 

Further, a person presenting oral arguments should never interrupt the oral arguments of the 

adversary. 

 

 

802.08 Nature of Hearing 

Normally, an oral hearing case is not assigned to a particular Board member to draft a final 

decision until some time after the oral hearing. Thus, the Board member who sits in the middle 

of the panel of three is not necessarily the person to whom the case will be assigned for decision; 

rather, the middle panel member is usually (but not always) the senior panel member. 

803 Final Decision 

After an oral hearing has been held in a Board inter partes proceeding, the case is set down for 

final decision. If no oral hearing is requested, the case is set down for final decision after the due 

date for filing the last reply brief. 

A panel of at least three Board members renders the final decision.44 When there has been an 

oral hearing in a case, the final decision normally is rendered by the panel before which the oral 

hearing was held. If a member of a panel of three before which an oral hearing was held is 

unable to participate in the final decision, another Board member may be substituted at final 

decision for the missing member.45 

The Board may use an augmented panel at final decision. For information concerning the use of 

an augmented panel, see TBMP § 540. For further information concerning the constitution of 

Board panels, see In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994). 

For further information on how to argue a case before the Board, see Saul Lefkowitz, TIPS 

FROM THE TTAB: Presentation of an Oral Hearing Before the Trademark Trial and Appeal 

Board, 67 Trademark Rep. 283 (1977). 

44 See Section 17 of the Act, 15. U.S.C. § 1067. See also TBMP § 802.04 (Oral Hearing – Before Whom Held) and

cases cited therein. 

45 See TBMP § 802.04 and cases cited therein.

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804 Request for Rehearing, Reconsideration, or Modification of Final 

Decision

37 CFR § 2.131 Remand after decision in inter partes proceeding. If, during an inter partes 

proceeding involving an application under Section 1 or 44 of the Act, facts are disclosed which 

appear to render the mark unregistrable, but such matter has not been tried under the pleadings 

as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal 

Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in 

lieu of determining the matter in the decision on the proceeding, may remand the application to 

the trademark examining attorney for reexamination in the event the applicant ultimately 

prevails in the inter partes proceeding. Upon remand, the trademark examining attorney shall 

reexamine the application in the light of the reference by the Board. If, upon reexamination, the 

 

Every member of the panel assigned to decide the case does not read the evidentiary record in a 

case. Rather, one panel member is assigned to read the testimony and examine the other 

evidence of record, discuss the case with the other panel members, and then draft a decision and 

supporting opinion. The draft is circulated to the other panel members for their approval and 

signature. A panel member who does not agree with the decision may write a dissent. A panel 

member who agrees with the decision, but disagrees with the reasoning expressed in the opinion 

supporting the decision, or wishes to express additional reasons, may write a concurring opinion. 

Section 21 of the Trademark Act, 15 U.S.C. § 1071, and 37 CFR § 2.145 govern any appeal from 

a final decision of the Board.46 

A party may file a request for rehearing, reconsideration, or modification of a decision issued 

after final hearing.47 The request must be filed within one month from the date of decision and a 

responsive brief, if any, is due within 15 days of the date of service of the request. For 

information concerning requests for rehearing, reconsideration, or modification of a decision 

issued after final hearing, see TBMP § 543. 

805 Final Decision Remand to Examining Attorney 

When the members of the panel rendering the decision have signed a final decision, a copy is 

mailed to every party to the proceeding. All final decisions are posted on the USPTO web site as 

final decisions of the TTAB. The decisions are grouped first by year decided and then by issues. 

Within the groupings of issues, the decisions are listed by proceeding number. 

46 See TBMP Chapter 900 regarding appeals. 

47 See 37 CFR § 2.129(c). 

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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

trademark examining attorney finally refuses registration to the applicant, an appeal may be 

taken as provided by §§ 2.141 and 2.142.

If, during the course of an opposition, concurrent use, or interference proceeding involving an 

application under Section 1 or 44 of the Trademark Act, facts are disclosed which appear to 

render the mark of the involved application unregistrable, and the matter has not been tried under 

the pleadings as filed by the parties or as they might be deemed to be amended pursuant to Fed. 

R. Civ. P. 15(b), the Board, in its decision in the proceeding, may, in addition to determining the 

pleaded matters, remand the application to the trademark examining attorney for further 

examination in light of the disclosed facts. That is, the Board may include in its decision a 

recommendation that in the event applicant ultimately prevails in the inter partes proceeding, the 

examining attorney reexamine the application in light of the disclosed facts.

under Section 66(a) of the Act may not be remanded under 37 CFR § 2.131. 

If a party to an opposition, concurrent use, or interference proceeding involving a Section 1 or 44 

application believes that the facts disclosed therein appear to render the mark of the involved 

application unregistrable, but the matter was not pleaded or tried by the express or implied 

consent of the parties pursuant to Fed. R. Civ. P. 15(b), the party may request that the Board 

include, in its decision in the proceeding, a 37 CFR § 2.131 remand to the examining attorney. 

The request may be made in the party's brief on the case, or by separate motion. A 66(a) 

application may not be remanded under 37 CFR § 2.131. 

806 Termination of Proceeding 

 

48 An application 

When an inter partes proceeding before the Board has been finally determined (that is, when the 

time for filing an appeal from a decision of the Board determining the case has expired, and no 

appeal has been filed, or when any appeals filed have been determined), the Board takes certain 

further steps, based on the judgment entered, to close out the proceeding file and give effect to 

the judgment.49 The same is true when a proceeding ends by stipulation of the parties, or by a 

voluntary withdrawal or consent to judgment by one party. 

For example, when a decision of the Board dismissing an opposition becomes final (that is, the 

time for filing an appeal has expired, and no appeal has been filed), or the opposition is 

dismissed pursuant to a stipulation of the parties or as the result of a withdrawal by opposer, 

among other things, the Board normally takes the following steps: 

48 See 37 CFR § 2.131 and TBMP § 515 (Motion to Remand Application to Examining Attorney) and cases cited

therein. Cf. TBMP § 1217 (Final Decision). 

49 See Notice of Final Rulemaking published in the Federal Register on August 22, 1989 at 54 FR 34886, 34896, 

and in the Official Gazette of September 12, 1989 at 1106 TMOG 26, 34. 

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case, and one copy of each brief on the case (that is, materials which, because of their 

bulkiness, would not have been kept by the Board in the proceeding file), are all placed in 

the proceeding file. 

(2) The word "TERMINATED" is stamped on the proceeding file. 

(3) The proceeding file is sent to the USPTO warehouse where terminated proceeding 

files are stored. 

 

(1) The testimony depositions, any discovery depositions made of record in the 

 

 

(4) Exhibits, which, because of their size, were too bulky to put in the proceeding file, 

and therefore were stored separately by the Board, are returned to the party that filed 

them. 

 

(6) The applicant's subject application is sent to the appropriate section of the Office for 

further appropriate action, such as, issuance of a notice of allowance under 37 CFR § 

2.81(b), in an intent-to-use application for which no amendment to allege use under 37 

CFR § 2.76 has been submitted and accepted; issuance of a registration pursuant to 37

CFR § 2.81(a); republication, if necessary for some reason; or reexamination by the 

trademark examining attorney pursuant to a 37 CFR § 2.131 remand.50 

Alternatively, if the applicant has abandoned the subject application, the abandoned 

application is sent to the USPTO warehouse where newly abandoned applications are 

stored (pending their destruction approximately two years after abandonment). 

When a decision of the Board granting a petition for cancellation becomes final, the first five 

steps listed above are taken, and the subject registration is cancelled by separate order of the 

Director. When a decision of the Board dismissing a petition for cancellation becomes final, the 

first five steps are taken, and the file of the registration is returned to the USPTO warehouse 

where "live" (subsisting) registrations are stored.

Because the Board will take the termination steps described above when a Board decision 

appears to be final, a party that commences a civil action, seeking review of the Board's decision 

pursuant to Section 21(b) of the Act, 15 U.S.C. § 1071(b), must file written notice thereof with 

the Board. Board practice requires that the written notice be filed within one month after the 

expiration of the time for appeal or civil action. If a party files a civil action, but fails to notify 

the Board, the Board, believing that its decision has become final, will terminate the proceeding. 

 

(5) Confidential materials filed under protective order are returned to the party that filed 

them. 

50 See TBMP § 805 (Final Decision Remand to Examining Attorney). 

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BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 

When an opposition, concurrent use or interference proceeding ends with a judgment which is 

not adverse to an involved applicant, the application returns to the status it had before 

commencement of the proceeding, unless the Board indicates in its decision that the application 

must be republished for some reason, or includes in its decision a 37 CFR § 2.131 remand to the 

trademark examining attorney.

 

As a result, a registration may be issued or cancelled prematurely, while the civil action seeking 

review of the Board's decision is still pending. 

37 CFR § 2.136 Status of application on termination of proceeding. On termination of a 

proceeding involving an application, the application, if the judgment is not adverse, returns to 

the status it had before the institution of the proceedings. If the judgment is adverse to the 

applicant, the application stands refused without further action and all proceedings thereon are 

considered terminated. 

51 

If the proceeding ends with a judgment that is adverse to the applicant, the application stands 

refused, the file thereof is stamped "ABANDONED," and all proceedings are considered 

terminated.52

807 Status of Application After Proceeding 

51 See TBMP § 805 (Final Decision Remand to Examining Attorney) and 37 CFR § 2.136. 

52 See 37 CFR § 2.136; Forest Laboratories Inc. v. G.D. Searle & Co., 52 USPQ2d 1058, 1060 n.3 (TTAB 1999) (if

opposition is sustained, application is deemed abandoned); and In re Vesper Corp., 8 USPQ2d 1788, 1789 (Comm'r 

1988) (there is no authority for the Commissioner to reopen an application for entry of an amendment after a 

successful opposition). See also National Patent Development Corp. v. Hercules Inc., 192 USPQ 491, 492 (Comm'r

1976) (Commissioner refused to reopen application for motion to amend after adverse final judgment in opposition). 

800 - 542 
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REVIEW OF DECISION OF BOARD 

* * * * 

901 Appeals--In General 

(a)(1) An applicant for registration of a mark, party to an interference proceeding, party to an 

opposition proceeding, party to an application to register as a lawful concurrent user, party to a 

cancellation proceeding, a registrant who has filed an affidavit as provided in section 8, or an 

applicant for renewal, who is dissatisfied with the decision of the Director or Trademark Trial 

and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit 

thereby waiving his right to proceed under subsection (b) of this section: Provided, That such 

appeal shall be dismissed if any adverse party to the proceeding, other than the Director, shall, 

within twenty days after the appellant has filed notice of appeal according to paragraph (2) of 

this subsection, files notice with the Director that he elects to have all further proceedings 

conducted as provided in subsection (b) of this section. Thereupon the appellant shall have 

thirty days thereafter within which to file a civil action under subsection (b), of this section, in 

default of which the decision appealed from shall govern the further proceedings in the case. 

 (2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the 

appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the 

Director, within such time after the date of the decision from which the appeal is taken as the 

Director prescribes, but in no case less than 60 days after that date. 

(b)(1) Whenever a person authorized by subsection (a) of this section to appeal to the United 

States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or 

Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said 

United States Court of Appeals for the Federal Circuit, have remedy by a civil action if 

commenced within such time after such decision, not less than sixty days, as the Director 

appoints or as provided in subsection (a) of this section. The court may adjudge that an 

applicant is entitled to a registration upon the application involved, that a registration involved 

should be cancelled, or such other matter as the issues in the proceeding require, as the facts in 

the case may appear. Such adjudication shall authorize the Director to take any necessary 

action, upon compliance with the requirements of law. However, no final judgment shall be 

entered in favor of an applicant under section 1(b) before the mark is registered, if such 

applicant cannot prevail without establishing constructive use pursuant to section 7(c). 

 (2) The Director shall not be made a party to an inter partes proceeding under this 

subsection, but he shall be notified of the filing of the complaint by the clerk of the court in which 

it is filed and shall have the right to intervene in the action. 

15 U.S.C. § 1071 [Section 21(a)(1) of the Trademark Act] Review of Director's or Trademark 

Trial and Appeal Board's Decision 

900 - 543 
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REVIEW OF DECISION OF BOARD 

37 CFR § 2.145 Appeal to court and civil action. 

(a) Appeal to U.S. Court of Appeals for the Federal Circuit. An applicant for registration, or 

any party to an interference, opposition, or cancellation proceeding or any party to an 

application to register as a concurrent user, hereinafter referred to as inter partes proceedings, 

who is dissatisfied with the decision of the Trademark Trial and Appeal Board and any 

registrant who has filed an affidavit or declaration under section 8 of the Act or who has filed an 

application for renewal and is dissatisfied with the decision of the Director (§§ 2.165, 2.184),

may appeal to the U.S. Court of Appeals for the Federal Circuit. . . . 

 * * * * 

(2) Any applicant or registrant in an ex parte case who takes an appeal to the U.S. Court 

of Appeals for the Federal Circuit waives any right to proceed under section 21(b) of the 

Act. 

(d) Time for appeal or civil action. 

 * * * * 

(c) Civil Action. 

(3) Any adverse party to an appeal taken to the U.S. Court of Appeals for the Federal 

Circuit by a defeated party in an inter partes proceeding may file a notice with the Office, 

addressed to the Office of General Counsel, according to part 104 of this chapter, within 

twenty days after the filing of the defeated party's notice of appeal to the court 

(paragraph (b) of this section), electing to have all further proceedings conducted as 

provided in section 21(b) of the Act. The notice of election must be served as provided in 

§ 2.119. 

(1) Any person who may appeal to the U.S. Court of Appeals for the Federal Circuit 

(paragraph (a) of this section), may have remedy by civil action under section 21(b) of

the Act. Such civil action must be commenced within the time specified in paragraph (d)

of this section. 

 * * * * 

(1) The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal 

Circuit (paragraph (b) of this section), or for commencing a civil action (paragraph (c) 

of this section), is two months from the date of the decision of the Trademark Trial and 

Appeal Board or the Director, as the case may be. If a request for rehearing or 

reconsideration or modification of the decision is filed within the time specified in §§ 

2.127(b), 2.129(c) or § 2.144, or within any extension of time granted thereunder, the 

time for filing an appeal or commencing a civil action shall expire two months after 

action on the request. In inter partes cases, the time for filing a cross-action or a notice 

900 - 544 
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REVIEW OF DECISION OF BOARD 

(3) If a party to an inter partes proceeding has taken an appeal to the U.S. Court of 

Appeals for the Federal Circuit and an adverse party has filed notice under section 

21(a)(1) of the Act electing to have all further proceedings conducted under section 21(b)

of the Act, the time for filing a civil action thereafter is specified in section 21(a)(1) of the 

Act. The time for filing a cross-action expires 14 days after service of the summons and 

complaint. 

of a cross-appeal expires (i) 14 days after service of the notice of appeal or the summons 

and complaint; or (ii) two months from the date of the decision of the Trademark Trial 

and Appeal Board or the Director, whichever is later. 

(2) The times specified in this section in days are calendar days. The times specified 

herein in months are calendar months except that one day shall be added to any twomonth period which includes February 28. If the last day of time specified for an appeal, 

or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the 

District of Columbia, the time is extended to the next day which is neither a Saturday, 

Sunday nor a Federal holiday. 

* * * * 

901.01 Avenues of Appeal 

A party to a Board proceeding who is dissatisfied with the decision of the Board is provided, 

under the Act, with two possible (mutually exclusive) remedies. The dissatisfied party may 

either: 

(2) Have remedy by civil action (in a United States District Court), in which the 

 

(1) Appeal to the United States Court of Appeals for the Federal Circuit, which 

will review the decision from which the appeal is taken on the record before the Office, 

or 

court "may adjudge that an applicant is entitled to a registration upon the application 

involved, that a registration involved should be cancelled, or such other matter as the 

issues in the proceeding require, as the facts in the case may appear."1

1 See Section 21 of the Act, 15 U.S.C. § 1071, and 37 CFR § 2.145. See also CAE Inc. v. Clean Air Engineering 

Inc., 60 USPQ2d 1449, 1458 (7th Cir. 2001) (choice of appealing to Federal Circuit on closed record of Board

proceedings or a federal district court with the option of presenting additional evidence and raising additional 

claims); Spraying Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181, 1183 (7th Cir. 1992) (appeal to

district court is in part an appeal and in part a new action); and Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622,

20 USPQ2d 1698, 1703 (9th Cir. 1991) (where winning and losing party each appealed to different district court; 

discussion of appealability of those aspects of a ruling with which "winning" party is dissatisfied, and dismissal, stay 

or transfer of second-filed appeal). 

900 - 545 
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REVIEW OF DECISION OF BOARD 

901.02 What May be Appealed 

901.02(a) Final Decision Versus Interlocutory Decision 

The only type of Board decision that may be appealed, whether to the United States Court 

of Appeals for the Federal Circuit or by way of civil action, is a final decision, i.e., a final 

dispositive ruling that ends litigation on the merits before the Board.

Interlocutory decisions or orders, i.e., decisions or orders that do not put an end to the 

litigation before the Board, are not appealable.

 

 

In an inter partes proceeding, if a dissatisfied party chooses to file an appeal to the Federal 

Circuit, any adverse party may, within 20 days after the filing of the notice of appeal, file notice 

that it elects to have the appeal dismissed, and to have further proceedings conducted instead by 

way of civil action.2

 Within 30 days after the filing of a notice of election by an adverse party, 

the appellant must commence a civil action for review of the Board's decision, failing which the 

Board's decision will govern further proceedings in the case.3

 

For a discussion of forum selection considerations, see Saul Lefkowitz and Janet E. Rice,

Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 

400-405 (1985). 

4

 

5

 

2

 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071, and 37 CFR § 2.145(c)(3). 

3

 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071, and 37 CFR § 2.145(d)(3). 

4

 See R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 1005, 204 USPQ 195, 197 (CCPA 1979) (the

word "decision" in the statute means "final decision") and Gal v. Israel Military Industries of the Ministry of

Defense of the State of Israel, 1 USPQ2d 1424, 1427 (Comm'r 1986) (same).

5

 See Copelands' Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1565 (Fed. Cir. 1989) (where

Board granted partial summary judgment dismissing allegation of misuse of registration symbol but denied 

summary judgment on other potentially dispositive ownership and consent issues, appeal was premature since 

appealed issues did not result in a disposition of the case). See also Jewelers Vigilance Committee Inc. v. Ullenberg 

Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d

888, 7 USPQ2d 1628, 1630 n.2 (Fed. Cir. 1988) (ordinarily denial of summary judgment is interlocutory and not 

appealable except where, as in this case, the decision was a final decision of dismissal [i.e., the Board, in effect, 

entered judgment in favor of nonmoving party]); Parker Brothers v. Tuxedo Monopoly, Inc., 225 USPQ 1222

(TTAB 1984), appeal dismissed, 757 F.2d 254, 226 USPQ 11, 11 (Fed. Cir. 1985) (order denying summary

judgment was interlocutory and thus non-final and non-appealable); and Gal v. Israel Military Industries of the 

Ministry of Defense of the State of Israel, supra ([Director] is without jurisdiction to certify an order to the Federal

Circuit and court is without jurisdiction to hear it). 

900 - 546 
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REVIEW OF DECISION OF BOARD 

 

Appealability is not limited to decisions issued by the Board after final hearing. Other 

types of Board decisions are also appealable, in those cases where they put an end to the 

litigation before the Board.6

 

On the other hand, if the Board resolves a merits issue prior to final hearing, but other 

merits issues remain, that is, the litigation is still before the Board as a whole, the Board's 

decision on the merits issue is interlocutory, rather than final, for purposes of judicial 

review. For example, in a case in which there is a counterclaim, if the Board grants 

summary judgment only as to the counterclaim, the case is not ripe for appeal until there 

has been a final decision with respect to the original claim; similarly, if the Board grants 

summary judgment only as to the original claim, the case is not ripe for appeal until there 

has been a final decision with respect to the counterclaim.

7

 When the Board, prior to 

final hearing, issues a decision resolving one or more, but not all, of the merits issues in a 

case before it, it is the usual practice of the Board to include in its decision the following 

statement: "This decision is interlocutory in nature. Appeal may be taken within two 

months after the entry of a final decision in the case."8

 

When an appeal is taken from a decision of the Board, it is the court to which an appeal is 

taken, not the Board, that determines whether the involved decision is appealable, that is, 

whether the court has jurisdiction to entertain the appeal.9

6

 See, e.g., Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1711 (Fed. Cir. 1991) 

(decision denying reconsideration of Board's order dismissing opposition for failure to prosecute was reviewable); 

Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1477 (Fed. Cir. 1990) (decision granting summary 

judgment was reviewable); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., supra (denial of motion for 

summary judgment where it resulted in judgment against moving party was reviewable); Stanspec Co. v. American 

Chain & Cable Company, Inc., 531 F.2d 563, 189 USPQ 420, 422 (CCPA 1976) (decision granting motion to

dismiss for failure to state a claim is reviewable); and Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB 1970), 

aff’d, 510 F.2d 963, 184 USPQ 744, 745 (CCPA 1975) (decision denying petitioner's 60(b) motion to vacate earlier 

decision granting respondent's uncontested motion for summary judgment was reviewable). 

7

 See Procter & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589, 1594 & n.4 (TTAB 1992) (decision

granting opposer's motion for summary judgment on counterclaim and denying opposer's motion for partial

summary judgment in the opposition was not appealable) and Interlocutory Decisions by the Trademark Trial and 

Appeal Board, 1123 TMOG 36 (February 19, 1991). See also Copelands' Enterprises Inc. v. CNV Inc., supra at 

1565 (appeal of order granting partial summary judgment was premature). 

8

 See, e.g., Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 n.17

(TTAB 1998); Interlocutory Decisions by the Trademark Trial and Appeal Board, supra, and Procter & Gamble 

Co. v. Sentry Chemical Co., supra at 1594 n.4.

9

 See R.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 204 USPQ 195, 197 n.3 (CCPA 1979)

(following Board's denial of motion for summary judgment on issue of res judicata, Board's attempt to "certify" an

interlocutory decision as appealable given no effect in Court's determination of whether it had jurisdiction over the 

appeal), and Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, supra ([Director] has 

no statutory authority to "certify" interlocutory orders of the Board for appeal). See also, with respect to jurisdiction 

to entertain an appeal, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698 (9th Cir. 1991). 

900 - 547 
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REVIEW OF DECISION OF BOARD 

The mandamus procedure may not be used as a substitute for the appeal procedure 

specified in Section 21 of the Act, 15 U.S.C. § 1071.

 

When a final decision of the Board is reviewed on appeal, interlocutory orders or 

decisions issued during the course of the proceeding before the Board may also be 

reviewed if they are "logically related" to the basic substantive issues in the case.10 

A party may obtain review of an order or decision of the Board which concerns matters 

of procedure (rather than the central issue or issues before the Board), and does not put an 

end to the litigation before the Board, by timely petition to the Director.11 A party may 

also file a request with the Board for reconsideration of such an order or decision.12 

13 

901.02(b) Judgment Subject to Establishment of Constructive Use 

In an inter partes proceeding before the Board, no final judgment will be entered in favor 

of an applicant under Section 1(b) of the Act, 15 U.S.C. § 1051(b), before the mark is 

registered, if such applicant cannot prevail without establishing constructive use pursuant 

to Section 7(c) of the Act, 15 U.S.C. §1057(c).14 Rather, in those cases where the Board

finds that a Section 1(b) applicant is entitled to prevail only if it establishes constructive

use, the Board will enter judgment in favor of that applicant, subject to the applicant's 

establishment of constructive use.15 If, after entry of that judgment, the Section 1(b) 

10 See Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358 (TTAB 1978), aff'd, 599 F.2d 1009, 202 

USPQ 100, 104 (CCPA 1979) (denial of motion to strike deposition as untimely filed was a purely procedural issue 

not a decision sufficiently related to the merits of the appealable issues); and Palisades Pageants, Inc. v. Miss 

America Pageant, 442 F.2d 1385, 169 USPQ 790, 792 (CCPA 1971), cert. denied, 404 U.S. 938, 171 USPQ 641

(1971) (Board's decision to deny applicant's motion to amend description of services not logically related to the 

"jurisdiction-giving issues" in the case, i.e., the issues of likelihood of confusion and laches, and not reviewable). 

11 See Palisades Pageants, Inc. v. Miss America Pageant, supra; and TBMP § 905 (Petition to the Director), and 

authorities cited therein. 

 

12 See TBMP § 518 (Motion for Reconsideration). 

13 See Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641, 646 (CCPA 1979) (stating that this is particularly

true where the issue involves jurisdictional questions that Board is competent to decide and that are reviewable in

the regular course of appeal). 

14 See Sections 21(a)(4) and 21(b)(1) of the Act, 15 U.S.C.§§ 1071(a)(4) and 1071(b)(1). 

 

15 See 37 CFR § 2.129(d). See also Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844 (TTAB 

1995) (constructive use provision of Section 7(c) interpreted differently in Board cases involving right to register

and civil actions, such as infringement action, involving a party's right to use a mark); and Zirco Corp. v. American 

Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45 (TTAB 1991) (judgment entered in favor of applicant 

subject to applicant’s establishment of constructive use). 

 

900 - 548 
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REVIEW OF DECISION OF BOARD 

 

37 CFR § 2.145 Appeal to court and civil action. 

(a) Appeal to U.S. Court of Appeals for the Federal Circuit. An applicant for registration, or 

any party to an interference, opposition, or cancellation proceeding or any party to an 

application to register as a concurrent user, hereinafter referred to as inter partes proceedings, 

who is dissatisfied with the decision of the Trademark Trial and Appeal Board and any 

registrant who has filed an affidavit or declaration under section 8 of the Act or who has filed an 

application for renewal and is dissatisfied with the decision of the Director (§§2.165, 2.184),

may appeal to the U.S. Court of Appeals for the Federal Circuit. The appellant must take the 

following steps in such an appeal: 

(2) In the court, file a copy of the notice of appeal and pay the fee for appeal, as 

(b) Notice of appeal. 

 

applicant files an acceptable statement of use, and obtains a registration, thus establishing 

its constructive use, final judgment will be entered in behalf of the Section 1(b) applicant. 

If, on the other hand, the Section 1(b) applicant fails to establish constructive use, that is, 

fails to file an acceptable statement of use and obtain a registration, judgment will instead 

be entered in favor of the adverse party. 

When the Board enters judgment in favor of a Section 1(b) applicant subject to that 

party's establishment of constructive use, the time for filing an appeal or commencing a 

civil action for review of the Board's decision runs from the date of the entry of judgment 

subject to establishment of constructive use.16 

902 Appeal to Court of Appeals for the Federal Circuit 

902.01 Notice of Appeal 

15 U.S.C. § 1071(a)(2) [Section 21(a)(2) of the Trademark Act] When an appeal is taken to the 

United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and 

Trademark Office a written notice of appeal directed to the Director, within such time after the 

date of the decision from which the appeal is taken as the Director prescribes, but in no case less 

than 60 days after that date. 

(1) In the Patent and Trademark Office give written notice of appeal to the 

Director (see paragraphs (b) and (d) of this section); 

provided by the rules of the Court. 

(1) When an appeal is taken to the U.S. Court of Appeals for the Federal Circuit, the 

appellant shall give notice thereof in writing to the Director, which notice shall be filed 

in the Patent and Trademark Office, within the time specified in paragraph (d) of this 

16 See 37 CFR § 2.129(d) and Zirco Corp. v. American Telephone and Telegraph Co., supra.

900 - 549 
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REVIEW OF DECISION OF BOARD 

(2) In inter partes proceedings, the notice must be served as provided in § 2.119. 

37 CFR § 104.2 Address for mail and service; telephone number.

(a) Mail under this part should be addressed to: 

General Counsel, United States Patent and Trademark Office 

Arlington, VA 22215. 

(b) Service by hand should be made during business hours to the: 

Office of the General Counsel 

Arlington, Virginia. 

Specifically, the original notice of appeal must be filed in the USPTO, within the time required 

by 37 CFR § 2.145(d) (see TBMP § 902.02). tificate of mailing and certificate of

transmission procedures described in 37 CFR § 2.197, and the "Express Mail" procedure 

described in 37 CFR § 2.198, are available for filing a notice of appeal. The notice must specify 

the party or parties taking the appeal and designate the decision or part thereof appealed from. 

However, reasons for appeal need not be given.

 

section. The notice shall specify the party or parties taking the appeal and shall 

designate the decision or part thereof appealed from. 

(3) Notices of appeal directed to the Director shall be mailed to or served by hand on the 

General Counsel according to part 104 of this chapter, with a duplicate copy mailed or 

served by hand on the Trademark Trial and Appeal Board. 

P.O. Box 15667 

Crystal Park Two Suite 905 

2121 Crystal Drive 

(c) The Office of the General Counsel may be reached by telephone at 703-308-2000 during 

business hours. 

A party taking an appeal to the United States Court of Appeals for the Federal Circuit from a 

decision of the Board must give written notice thereof both to the Director and to the Court of 

Appeals for the Federal Circuit, and pay to the Court the fee required by the Court's rules.17 

18 The cer

19 A copy of the decision being appealed, and a 

17 See 37 CFR §§ 2.145(a) and 2.145(b), and Fed. Cir. R. 15. (The Federal Circuit Rules and Forms can be found

on the Court’s website at: www.fedcir.gov.) 

18 See Section 21(a)(2) of the Act, 15 U.S.C. § 1071(a)(2); 37 CFR §§ 2.145(a) and 2.145(b)(1). 

 

19 See 37 CFR § 2.145(b)(1). 

900 - 550 
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REVIEW OF DECISION OF BOARD 

copy of any decision on reconsideration thereof, should be attached to the notice of appeal.20 If 

the appeal is taken from a decision of the Board in an inter partes proceeding, a copy of the 

notice must be served on every other party to the proceeding, in the manner prescribed in 37 

CFR § 2.119 (see TBMP § 113). otice, if mailed to the USPTO (rather than handdelivered to the Office of the General Counsel), must be addressed to General Counsel, United 

States Patent and Trademark Office, P.O. Box 15667, Arlington, VA 22215.22 

902.02 Time for Filing Notice of Appeal, Cross-Appeal 

 

21 The written n

For information concerning the ways (i.e., by hand delivery, first-class mail, etc.) in which a 

notice of appeal may be filed in the Office, the filing date of a notice of appeal, and the address 

to be used on a notice of appeal mailed to the Office, see 37 CFR §§ 2.190, 2.195, 2.197, 2.198, 

and 2.145(b)(3); and Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 

13, 1990) (NOTE: the 1990 Official Gazette notice must be read in light of subsequent rule 

amendments--for example, the 37 CFR § 2.197 certificate procedures are now applicable to a 

notice of appeal from a decision of the Board, but were not in 1990). 

For further information concerning how to file a notice of appeal, contact the Office of the 

General Counsel in the USPTO. 

Three copies of the notice of appeal must be filed in the Court of Appeals for the Federal Circuit 

(NOTE: While 37 CFR § 2.145(a) requires the filing of only one copy of the notice with the 

Federal Circuit, Fed. Cir. R. 15(a)(1) requires that three copies of the notice be filed with the 

Federal Circuit), and the appeal fee required by the rules of the Court must be paid to the Court.23 

A copy of the decision being appealed, and a copy of any decision on reconsideration thereof, 

should be attached to the copy of the notice.24 

15 U.S.C. § 1071(a)(2) [Section 21(a)(2) of the Trademark Act] When an appeal is taken to the 

United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and 

Trademark Office a written notice of appeal directed to the Director, within such time after the 

date of the decision from which the appeal is taken as the Director prescribes, but in no case less 

than 60 days after that date. 

20 See Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990). 

21 See 37 CFR § 2.145(b)(2).

 

22 See 37 CFR §§ 2.190 and 104.2. 

23 See 37 CFR § 2.145(a). 

24 See Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990). See also the website 

for the Court of Appeals for the Federal Circuit at: www.fedcir.gov.

900 - 551 
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37 CFR § 2.145(d) Time for appeal or civil action. 

 

(1) The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit 

(paragraph (b) of this section), or for commencing a civil action (paragraph (c) of this section), 

is two months from the date of the decision of the Trademark Trial and Appeal Board or the 

Director, as the case may be. If a request for rehearing or reconsideration or modification of 

the decision is filed within the time specified in §§ 2.127(b), 2.129(c) or 2.144, or within any 

extension of time granted thereunder, the time for filing an appeal or commencing a civil action 

shall expire two months after action on the request. In inter partes cases, the time for filing a 

cross-action or a notice of a cross-appeal expires (i) 14 days after service of the notice of appeal 

or the summons and complaint; or (ii) two months from the date of the decision of the Trademark 

Trial and Appeal Board or the Director, whichever is later. 

(2) The times specified in this section in days are calendar days. The times specified herein in 

months are calendar months except that one day shall be added to any two-month period which 

includes February 28. If the last day of time specified for an appeal, or commencing a civil 

action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is 

extended to the next day which is neither a Saturday, Sunday nor a Federal holiday. 

(3) If a party to an inter partes proceeding has taken an appeal to the U.S. Court of Appeals for 

the Federal Circuit and an adverse party has filed notice under section 21(a)(1) of the Act 

electing to have all further proceedings conducted under section 21(b) of the Act, the time for 

filing a civil action thereafter is specified in section 21(a)(1) of the Act. The time for filing a 

cross-action expires 14 days after service of the summons and complaint. 

37 CFR § 2.145(e) Extensions of time to commence judicial review. The Director may extend 

the time for filing an appeal or commencing a civil action (1) for good cause shown if requested 

in writing before the expiration of the period for filing an appeal or commencing a civil action, 

or (2) upon written request after the expiration of the period for filing an appeal or commencing 

a civil action upon a showing that the failure to act was the result of excusable neglect. 

The time for filing a notice of appeal to the United States Court of Appeals for the Federal 

Circuit is two months from the date of the Board decision which is the subject of the appeal.25 

When the Board enters judgment in favor of a Section 1(b), 15 U.S.C. § 1051(b), applicant 

subject to that party's establishment of constructive use (see TBMP § 901.02(b)), the time for 

filing an appeal runs from the date of the entry of judgment subject to establishment of 

constructive use.26

25 See Section 21(a)(2) of the Act, 15 U.S.C. § 1071(a)(2); 37 CFR § 2.145(d)(1); and Appeals to the Federal

Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990). 

 

26 See 37 CFR § 2.129(d), and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45

(TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use). 

900 - 552 
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REVIEW OF DECISION OF BOARD 

If a request for rehearing, reconsideration, or modification of the Board's decision is filed within 

the time specified in 37 CFR §§ 2.127(b), 2.129(c), or 2.144, or within any extension of time 

granted thereunder, the time for filing an appeal expires two months after action on the request

 

.

27 

In an inter partes case, the time for filing a notice of cross-appeal expires (1) 14 days after 

service of the notice of appeal, or (2) two months from the date of the Board decision which is 

the subject of the appeal, whichever is later.28 

The certificate of mailing and certificate of transmission procedures described in 37 CFR § 

2.197, and the "Express Mail" procedure described in 37 CFR § 2.198, are available for filing a 

notice of appeal or a notice of cross-appeal. 

If a written request to extend the time for appeal is filed before the expiration of the appeal 

period, the Director may grant the request on a showing of good cause. If the request is not filed 

until after the expiration of the appeal period, the Director may grant the request only on a 

showing that the failure to act was the result of excusable neglect.29 A request for an extension 

of time to file an appeal should be directed to the attention of the Office of the Solicitor.30 

It is the Director, through the Office of General Counsel, not the Board, who determines whether 

a notice of appeal has been timely filed. If the Director determines that a notice of appeal was 

not timely, the Director notifies the Clerk of the Federal Circuit thereof. The Clerk in turn issues 

an order to the appellant to show cause why the appeal should not be dismissed, and refers 

appellant's response to the Court.31 

An appellant that has received an order to show cause from the Clerk of the Federal Circuit may 

file a request under 37 CFR § 2.145(e) for an extension of time to file an appeal, accompanied by 

a showing that the late filing of the notice of appeal was the result of excusable neglect. The 

request should be filed in the Office of the Solicitor, which will notify the Clerk of the court of 

the Director’s decision on the request. 

27 See 37 CFR § 2.145(d)(1).

28 See 37 CFR § 2.145(d)(1), and Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 

1990). 

29 See 37 CFR § 2.145(e), and Appeals to the Federal Circuit From PTO, supra. 

30 See Appeals to the Federal Circuit From PTO, supra. 

31 See Fed. Cir. R. 15(b)(1), and Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 

1990). 

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902.04 Notice of Election to Have Review by Civil Action 

 

902.03 Appeal to Federal Circuit Waives Appeal by Civil Action 

A party which takes an appeal to the United States Court of Appeals for the Federal Circuit from 

a decision of the Board thereby waives its right to have remedy by way of civil action under 

Section 21(b) of the Act, 15 U.S.C. § 1071(b).32 

However, in an inter partes case, if an adverse party, in response to the notice of appeal to the 

Federal Circuit, files a notice electing to have further proceedings conducted instead by way of 

civil action, the appeal to the Federal Circuit will be dismissed, and the party that filed the appeal 

must commence a civil action, within 30 days after the filing of the notice of election, for review 

of the appealed decision, failing which that decision will govern further proceedings in the 

case.33

15 U.S.C. § 1071(a)(1) [Section 21(a)(1) of the Trademark Act] An applicant for registration of 

a mark, party to an interference proceeding, party to an opposition proceeding, party to an 

application to register as a lawful concurrent user, party to a cancellation proceeding, a 

registrant who has filed an affidavit as provided in section 8, or an applicant for renewal, who is 

dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, may appeal 

to the United States Court of Appeals for the Federal Circuit thereby waiving his right to 

proceed under subsection (b) of this section: Provided, That such appeal shall be dismissed if 

any adverse party to the proceeding, other than the Director, shall, within twenty days after the 

appellant has filed notice of appeal according to paragraph (2) of this subsection, files notice 

with the Director that he elects to have all further proceedings conducted as provided in 

subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within 

which to file a civil action under subsection (b), of this section, in default of which the decision 

appealed from shall govern the further proceedings in the case. 

37 CFR § 2.145(c)(3) Any adverse party to an appeal taken to the U.S. Court of Appeals for the 

Federal Circuit by a defeated party in an inter partes proceeding may file a notice with the 

Office, addressed to the Office of the General Counsel, according to part 104 of this chapter, 

within twenty days after the filing of the defeated party's notice of appeal to the court (paragraph 

32 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071(a)(1) (party which appeals to the Federal Circuit thereby 

waives its right to proceed under Section 21(b) of the Act), and 37 CFR § 2.145(c)(2) (applicant in ex parte case 

which takes an appeal to the Federal Circuit waives any right to proceed under Section 21(b) of the Act). Cf.

Section 21(b)(1) of the Act, 15 U.S.C. § 1071(b)(1) (party dissatisfied with decision of Board may, unless appeal has

been taken to the Federal Circuit, have remedy by civil action), and TBMP § 903.05 (Information Concerning Times 

Specified in 37 CFR § 2.145) 

33 See TBMP §§ 901.01 (Avenues of Appeal) and 902.04 (Notice of Election). 

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37 CFR § 2.145(d)(2) The times specified in this section in days are calendar days. The times 

specified herein in months are calendar months except that one day shall be added to any two-

 

(b) of this section), electing to have all further proceedings conducted as provided in section 

21(b) of the Act. The notice of election must be served as provided in § 2.119. 

* * * * 

(d)(3) If a party to an inter partes proceeding has taken an appeal to the U.S. Court of Appeals 

for the Federal Circuit and an adverse party has filed notice under section 21(a)(1) of the Act 

electing to have all further proceedings conducted under section 21(b) of the Act, the time for 

filing a civil action thereafter is specified in section 21(a)(1) of the Act. The time for filing a 

cross-action expires 14 days after service of the summons and complaint. 

When a defeated party in an inter partes proceeding before the Board takes an appeal to the 

United States Court of Appeals for the Federal Circuit, any adverse party may, within 20 days 

after the filing of the notice of appeal, file a notice with the Office electing to have all further 

proceedings conducted by way of civil action, under Section 21(b) of the Act, 15 U.S.C. § 

1071(b), seeking review of the decision that was the subject of the appeal.34 The certificate of 

mailing and certificate of transmission procedures described in 37 CFR § 2.197, and the 

"Express Mail" procedure described in 37 CFR § 2.198, are available for filing a notice of 

election. A copy of the notice must be served on every other party to the proceeding, in the 

manner prescribed in 37 CFR § 2.119 (see TBMP § 113).35 A copy of the notice must also be 

filed with the Federal Circuit.36 

If an adverse party files a notice electing to have further proceedings conducted by way of civil 

action under Section 21(b) of the Act, the appeal to the Federal Circuit will be dismissed, (see 

Fed. Cir. R. 15(e)) and the party that filed the appeal must commence a civil action, within 30 

days after the filing of the notice of election, for review of the appealed decision, failing which 

that decision will govern further proceedings in the case.37 Any cross-action must be filed within 

14 days after service of the summons and complaint in the civil action.38 

902.05 Information Concerning Times Specified in 37 CFR § 2.145 

34 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071(a)(1), and 37 CFR § 2.145(c)(3). 

 

35 See 37 CFR § 2.145(c)(3). 

36 See Fed. Cir. R. 15(e). 

37 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071(a)(1), and 37 CFR § 2.145(d)(3). 

38 See 37 CFR § 2.145(d)(3). 

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month period which includes February 28. If the last day of time specified for an appeal, or 

commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of 

Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal 

holiday. 

 

In 37 CFR § 2.145 (which concerns appeals and civil actions seeking review of Board decisions), 

the times specified in days are calendar days, while the times specified in months are calendar 

months (except that one day is added to any two-month period which includes February 28). If 

the last day of the time allowed for filing an appeal falls on a Saturday, Sunday, or Federal 

holiday in the District of Columbia, the time for filing an appeal is extended to the next day 

which is not a Saturday, Sunday, or Federal holiday.39 

902.06 Certified List 

15 U.S.C. § 1071(a)(3) [Section 21(a)(3) of the Trademark Act] The Director shall transmit to 

the United States Court of Appeals for the Federal Circuit a certified list of the documents 

comprising the record in the Patent and Trademark Office. The court may request that the 

Director forward the original or certified copies of such documents during pendency of the 

appeal. In an ex parte case, the Director shall submit to that court a brief explaining the 

grounds for the decision of the Patent and Trademark Office, addressing all the issues involved 

in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the 

hearing to the Director and the parties in the appeal. 

When notice is filed in the USPTO of an appeal to the United States Court of Appeals for the 

Federal Circuit from a decision of the Board, the Office sends to the Federal Circuit a statement 

indicating whether the notice of appeal was considered timely filed, and a certified list of the 

documents comprising the record in the USPTO, i.e., a certified copy of the list of docket entries 

on the file jacket containing the Office record of the proceeding accompanied by a copy of the 

decision appealed.40 A copy of the certified list is mailed by the USPTO to every party to the 

proceeding. 41

When the Federal Circuit receives the notice of appeal and the certified list, the Court dockets 

the appeal, and gives notice to all parties of the date of docketing.42 The appellant's time in 

which to file its initial brief runs from the date of service of the certified list or the date of

39 37 CFR § 2.145(d)(2). 

40 See Section 21(a)(3) of the Act, 15 U.S.C. § 1071(a)(3); Fed. Cir. R. 15(b)(1) and 17(b)(1); and Appeals to the 

Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990).

 

41 See Fed. Cir. R. 17(c) and Appeals to the Federal Circuit From PTO, supra. 

42 See Fed. Cir. R. 15(b)(1), and Appeals to the Federal Circuit From PTO, supra.

 

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docketing the appeal, whichever is later. Because an appeal is not docketed until after the 

certified list is served in appeals from Board decisions, the appellant's time for filing its brief

normally runs from the date of docketing. 43

902.07 Appeal Briefs, Appendix, etc. 

For information concerning other matters of practice and procedure during an appeal to the 

United States Court of Appeals for the Federal Circuit from a Board decision, including 

information concerning motions, briefs, the appendix to the briefs, oral argument, etc., see 

Federal Circuit Rules and Appeals to the Federal Circuit From PTO, 1120 TMOG 22 

(November 13, 1990). 

For information concerning the appendix to the briefs, in particular, see Fed. Cir. R. 30 and 32, 

and Appeals to the Federal Circuit From PTO, supra at 25. All of the information is also 

available on the court’s website at www.fedcir.gov. 

902.08 Special Provisions for Ex Parte Cases 

15 U.S.C. § 1071(a)(3) [Section 21(a)(3) of the Trademark Act] ... In an ex parte case, the 

Director shall submit to that court a brief explaining the grounds for the decision of the Patent 

and Trademark Office, addressing all the issues involved in the appeal. The court shall, before 

hearing an appeal, give notice of the time and place of the hearing to the Director and the 

parties in the appeal. 

 

37 CFR § 2.145(c)(2) Any applicant or registrant in an ex parte case who takes an appeal to the 

U.S. Court of Appeals for the Federal Circuit waives any right to proceed under § 21(b) of the 

Act. 

If an applicant in an ex parte case takes an appeal to the United States Court of Appeals for the 

Federal Circuit from a decision of the Board, the applicant thereby waives its right to proceed by 

way of civil action under Section 21(b) of the Act, 15 U.S.C. § 1071(b).44 

On appeal to the Federal Circuit in an ex parte case, the Office files a brief in support of the 

Board's decision. 45

 

43 See Fed. Cir. R. 31(a), and Appeals to the Federal Circuit From PTO, supra. 

44 See Section 21(a)(1) of the Act, 15 U.S.C. § 1071(a)(1), and 37 CFR § 2.145(c)(2).

45 See Section 21(a)(3) of the Act, 15 U.S.C. § 1071(a)(3). 

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903 Appeal by Civil Action 

 

15 U.S.C. § 1071(b) [Section 21(b) of the Trademark Act] 

(3) In any case where there is no adverse party, a copy of the complaint shall be served on the 

Director, and, unless the court finds the expenses to be unreasonable, all the expenses of the 

proceeding shall be paid by the party bringing the case, whether the final decision is in favor of

such party or not. . . . 

(4) Where there is an adverse party, such suit may be instituted against the party in interest as 

shown by the records of the Patent and Trademark Office at the time of the decision complained 

of, but any party in interest may become a party to the action. . . . 

When a party to a Board inter partes proceeding appeals a decision of the Board by commencing 

a civil action seeking review of the decision, the Director shall not be made a party to the civil 

 

903.01 Notice of Civil Action 

37 CFR § 2.145(c)(4) In order to avoid premature termination of a proceeding, a party who 

commences a civil action, pursuant to Section 21(b) of the Act, must file written notice thereof at 

the Trademark Trial and Appeal Board. 

A party which commences a civil action, under Section 21(b) of the Act, 15 U.S.C. § 1071(b) 

seeking review of a decision of the Board should file written notice thereof with the Board within 

one month after the expiration of the time for appeal or civil action. Failure to notify the Board 

of the commencement of the civil action may result in premature termination of the proceeding.46 

That is, if the Board is unaware of the commencement of the civil action, it will treat the Board's 

decision as governing further proceedings in the case, and will take steps, based on the judgment 

entered in that decision, to close out the proceeding file and give effect to the judgment.47 

903.02 Parties to and Service of Civil Action 

* * * * 

(2) The Director shall not be made a party to an inter partes proceeding under this subsection, 

but he shall be notified of the filing of the complaint by the clerk of the court in which it is filed 

and shall have the right to intervene in the action. 

46 See 37 CFR § 2.145(c)(4).

47 See TBMP § 806. 

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action. However, the clerk of the court in which the civil action is filed must notify the Director 

of the filing of the complaint, and the Director has the right to intervene in the action.

903.03 Place of Civil Action 

15 U.S.C. § 1071(b)(4) [Section 21(b)(4) of the Trademark Act] Where there is an adverse 

party, such suit may be instituted against the party in interest as shown by the records of the 

Patent and Trademark Office at the time of the decision complained of, but any party in interest 

may become a party to the action. If there be adverse parties residing in a plurality of districts 

not embraced within the same State, or an adverse party residing in a foreign country, the 

United States District Court for the District of Columbia shall have jurisdiction and may issue 

summons against the adverse parties directed to the marshal of any district in which any adverse 

party resides. Summons against adverse parties residing in foreign countries may be served by 

publication or otherwise as the court directs. 

Generally, a civil action under Section 21(b) of the Act, 15 U.S.C. § 1071(b), may be brought in 

any Federal district court which has jurisdiction over the person. However, if there are adverse 

parties residing in a plurality of districts not embraced within the same state, or an adverse party 

residing in a foreign country, the United States District Court for the District of Columbia has 

jurisdiction.

 

48 

The suit may be instituted against the party in interest as shown by the records of the Office at 

the time of the decision of which review is sought, but any party in interest may become a party 

to the action.

49 

When an applicant in an ex parte proceeding appeals a decision of the Board by commencing a 

civil action seeking review of the decision, a copy of the complaint must be served on the 

Director (who is a party to the proceeding).50 Service of a complaint on the Director is governed 

by Fed. R. Civ. P. 4(i), “Serving the United States, Its Agencies, Corporations, Officers, or 

Employees.”51 

52 

48 See Section 21(b)(2) of the Act, 15 U.S.C. § 1071(b)(2).

49 See Section 21(b)(4) of the Act, 15 U.S.C. § 1071(b)(4).

50 See Section 21(b)(3) of the Act, 15 U.S.C. § 1071(b)(3).

 

51 See also 37 CFR § 104.2. 

52 See Section 21(b)(4), 15 U.S.C. § 1071(b)(4); Pro-Football Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 

1228 (D.D.C. 2003) (U.S. District Court of the District of Columbia has jurisdiction where defendants reside in

plurality of districts not within the same state); Del-Viking Productions Inc. v. Estate of Johnson, 31 USPQ2d 1063, 

1064 (W.D.Pa. 1994) (civil action improperly brought in Pennsylvania was transferred to U.S. District Court for the

District of Columbia in view of existence of multiple adverse parties residing in different states); and Saul Lefkowitz

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903.04 Time for Filing Civil Action, Cross-Action 

15 U.S.C. § 1071(b)(1) [Section 21(b)(1) of the Trademark Act] Whenever a person authorized 

by subsection (a) of this section to appeal to the United States Court of Appeals for the Federal 

Circuit is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, 

said person may, unless appeal has been taken to said United States Court of Appeals for the 

Federal Circuit, have remedy by a civil action if commenced within such time after such 

decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of 

this section. . . . 

37 CFR § 2.145(d) Time for appeal or civil action. (1) The time for filing the notice of appeal to 

the U.S. Court of Appeals for the Federal Circuit (paragraph (b) of this section), or for 

commencing a civil action (paragraph (c) of this section), is two months from the date of the 

decision of the Trademark Trial and Appeal Board or the Director, as the case may be. If a 

request for rehearing or reconsideration or modification of the decision is filed within the time 

specified in §§ 2.127(b), 2.129(c) or 2.144, or within any extension of time granted thereunder, 

the time for filing an appeal or commencing a civil action shall expire two months after action 

on the request. In inter partes cases, the time for filing a cross-action or a notice of a crossappeal expires (i) 14 days after service of the notice of appeal or the summons and complaint; or 

(ii) two months from the date of the decision of the Trademark Trial and Appeal Board or the 

Director, whichever is later. 

* * * * 

(e) Extensions of time to commence judicial review. The Director may extend the time for filing 

an appeal or commencing a civil action (1) for good cause shown if requested in writing before 

the expiration of the period for filing an appeal or commencing a civil action, or (2) upon written 

request after the expiration of the period for filing an appeal or commencing a civil action upon 

a showing that the failure to act was the result of excusable neglect. 

The time for commencing a civil action under Section 21(b) of the Act, 15 U.S.C. § 1071(b), is 

two months from the date of the Board decision of which review is sought.53 A civil action is 

and Janet E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 

405-407 (1985). 

 Cf. regarding application of "first to file" rule, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d

1698, 1703 (9th Cir. 1991) (district court erred in dismissing rather than staying second-filed suit), and, regarding 

the transfer of an action to a different forum, Chocoladefabriken Lindt & Sprungli Aktiengesellschaft v. RykoffSexton Inc., 24 USPQ2d 1236, 1238 (S.D.N.Y. 1992) (civil action filed in New York transferred to California where 

defendant's witnesses and relevant documents and records were located). 

53 See Section 21(b)(1) of the Act, 15 U.S.C. §1071(b)(1); 37 CFR § 2.145(d)(1); and Appeals to the Federal

Circuit From PTO, 1120 TMOG 22, 24 (November 13, 1990). 

 

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commenced by the filing of a complaint with the court.54 When the Board enters judgment in 

favor of a Section 1(b), 15 U.S.C. § 1051(b), applicant subject to that party's establishment of 

constructive use (see TBMP § 901.02(b)), the time for commencing a civil action for review of 

the Board's decision runs from the date of the entry of judgment subject to establishment of 

constructive use.55 

If a request for rehearing, reconsideration, or modification of the Board's decision is filed within 

the time specified in 37 CFR §§ 2 .127(b), 2.129(c), or 2.144, or within any extension of time 

granted thereunder, the time for commencing a civil action expires two months after action on 

the request.56 

In an inter partes case, the time for filing a cross-action expires (1) 14 days after service of the 

summons and complaint, or (2) two months from the date of the Board decision which is the 

subject of the civil action, whichever is later.57 

If a written request to extend the time for commencing a civil action is filed before the expiration 

of the period for commencing a civil action, the Office may grant the request on a showing of 

good cause. If the request is not filed until after the expiration of the period for commencing a 

civil action, the Office may grant the request only on a showing that the failure to act was the 

result of excusable neglect.58 A request for an extension of time to file an appeal should be 

directed to the attention of the Office of the Solicitor.59

903.05 Information Concerning Times Specified in 37 CFR § 2.145 

37 CFR § 2.145(d)(2) The times specified in this section in days are calendar days. The times 

specified herein in months are calendar months except that one day shall be added to any twomonth period which includes February 28. If the last day of time specified for an appeal, or 

commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of 

Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal 

holiday.

54 See Fed. R. Civ. P. 3. 

55 See 37 CFR § 2.129(d), and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544-45

(TTAB 1991) (judgment entered in favor of applicant subject to applicant’s establishment of constructive use). 

56 See 37 CFR § 2.145(d)(1).

57 See 37 CFR § 2.145(d)(1).

58 See 37 CFR § 2.145(e). Cf. Appeals to the Federal Circuit From PTO, 1120 TMOG 22, 24 (November 13, 

1990). 

59 Cf. Appeals to the Federal Circuit From PTO, supra. 

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In 37 CFR § 2.145 (which concerns appeals and civil actions seeking review of Board decisions), 

the times specified in days are calendar days, while the times specified in months are calendar 

months (except that one day is added to any two-month period which includes February 28). If 

the last day of the time allowed for commencing a civil action falls on a Saturday, Sunday, or 

Federal holiday in the District of Columbia, the time for commencing a civil action is extended 

to the next day which is not a Saturday, Sunday, or Federal holiday.60 

903.06 Civil Action Precluded by Appeal to Federal Circuit 

In a proceeding before the Board, a party that is dissatisfied with the decision of the Board may 

have remedy by way of civil action, unless an appeal to the United States Court of Appeals for 

the Federal Circuit has been taken.61 

However, in an inter partes case, if an appeal has been taken to the Federal Circuit, and a party 

adverse to the appellant files a notice electing to have further proceedings conducted instead by 

way of civil action, the appeal to the Federal Circuit will be dismissed, and the party which filed 

the appeal must commence a civil action, within 30 days after the filing of the notice of election, 

for review of the appealed decision, failing which that decision will govern further proceedings 

in the case.62 

903.07 Special Provisions for Ex Parte Cases 

15 U.S.C. § 1071(b)(3) [Section 21(b)(3) of the Trademark Act] In any case where there is no 

adverse party, a copy of the complaint shall be served on the Director, and, unless the court 

finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the 

party bringing the case, whether the final decision is in favor of such party or not. In suits 

brought hereunder, the record in the Patent and Trademark Office shall be admitted on motion 

of any party, upon such terms and conditions as to costs, expenses, and the further crossexamination of the witnesses as the court imposes, without prejudice to the right of any party to 

take further testimony. The testimony and exhibits of the record in the Patent and Trademark 

Office, when admitted, shall have the same effect as if originally taken and produced in the suit. 

When an applicant in an ex parte case seeks review of a decision of the Board by way of civil 

action under Section 21(b) of the Act, 15 U.S.C. § 1071(b), it must effect service on the agency 

60 37 CFR § 2.145(d)(2). 

61 See Section 21(b)(1) of the Act, 15 U.S.C. § 1071(b)(1). Cf. Section 21(a)(1) of the Act, 15 U.S.C. § 1071(a)(1)

(party which appeals to the Federal Circuit thereby waives its right to proceed under Section 21(b) of the Act); 37

CFR § 2.145(c)(2) (applicant in ex parte case which takes an appeal to the Federal Circuit waives any right to

proceed under Section 21(b) of the Act); and TBMP § 902.03 (Appeal to Federal Circuit). 

62 See TBMP §§ 901.01 (Avenues of Appeal) and 902.04 (Notice of Election). 

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pursuant to Fed. R. Civ. P. 4(i), and all the expenses, including expert witness fees and travel, of 

the proceeding must be paid by the applicant which brought the suit, whether the final decision is 

in favor of the applicant or not, unless the court finds the expenses to be unreasonable.63 

904 Access to Record During Appeal 

904.01 Access During Appeal to Federal Circuit 

During an appeal to the United States Court of Appeals for the Federal Circuit, from a decision 

of the Board in an inter partes case, the original USPTO record of the case is kept at the Office 

of the Solicitor. However, when it deems necessary, the Federal Circuit may, on motion or sua 

sponte, order transmission (via the Office of the Solicitor) of the original or certified copies of 

the record, or portions thereof, or the physical exhibits, at any time during the pendency of the 

appeal.64 

The Board will permit a party, or its attorney or other authorized representative, to inspect and 

copy any portions of the record, including papers, transcripts, and exhibits, that are not subject to 

a protective order. Any portions of the record that are subject to a protective order may be 

inspected and copied only in accordance with the terms of the protective order, unless the 

Federal Circuit amends, modifies, or annuls the protective order, in which case access by a party, 

or its attorney or other authorized representative, to the record will be governed by the Court's 

order.65 

During an appeal to the Federal Circuit from a decision of the Board in an ex parte case, the 

subject application file is kept at the Office of the Solicitor. Any request for access to the 

application should be directed to the Office of the Solicitor. 

904.02 Access During Appeal by Civil Action 

During a civil action seeking review of a decision of the Board in an inter partes case, the Board 

retains the original USPTO record of the case. The Board will release the original record for 

submission (via the Office of the Solicitor) to the court in which the civil action is pending only 

upon order of the court. 

The Board will permit a party, or its attorney or other authorized representative, to inspect and 

copy any portions of the record, including papers, transcripts, and exhibits, which are not subject 

to a protective order. Any portions of the record which are subject to a protective order may be 

63 Section 21(b)(3) of the Act, 15 U.S.C. § 1071(b)(3). 

64 See Section 21(a)(3) of the Act, 15 U.S.C. § 1071(a)(3), and Fed. Cir. R. 17(a). 

65 See Fed. Cir. R. 17(d) and 17(e).

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inspected and copied only in accordance with the terms of the protective order, unless the court 

amends, modifies, or annuls the protective order, in which case access by a party, or its attorney 

or other authorized representative, to the record will be governed by the court's order. 

During a civil action seeking review of a decision of the Board in an ex parte case, the subject 

application file is kept at the Office of the Solicitor. Any request for access to the application 

should be directed to the Office of the Solicitor. 

905 Petition to the Director 

37 CFR § 2.146 Petitions to the Director. 

(a) Petition may be taken to the Director: (1) From any repeated or final formal requirement of 

the examiner in the ex parte prosecution of an application if permitted by § 2.63(b); (2) in any 

case for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of 

the Code of Federal Regulations specifies that the matter is to be determined directly or 

reviewed by the Director; (3) to invoke the supervisory authority of the Director in appropriate 

circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 

of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and 

no other party is injured thereby, to request a suspension or waiver of any requirement of the 

rules not being a requirement of the Act of 1946. 

(b) Questions of substance arising during the ex parte prosecution of applications, including, but 

not limited to, questions arising under §§ 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not 

considered to be appropriate subject matter for petitions to the Director. 

(c) Every petition to the Director shall include a statement of the facts relevant to the petition, 

the points to be reviewed, the action or relief that is requested, and the fee required by § 2.6. 

Any brief in support of the petition shall be embodied in or accompany the petition. When facts 

are to be proved in ex parte cases proof in the form of affidavits or declarations in accordance 

with § 2.20 shall accompany the petition. 

(d) A petition must be filed within two months of the mailing date of the action from which relief 

is requested, unless a different deadline is specified elsewhere in this chapter. 

(e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of

opposition shall be filed within fifteen days from the date of mailing of the denial of the request. 

A petition from the grant of a request shall be served on the attorney or other authorized 

representative of the potential opposer, if any, or on the potential opposer. A petition from the 

denial of a request shall be served on the attorney or other authorized representative of the 

applicant, if any, or on the applicant. Proof of service of the petition shall be made as provided 

by § 2.119(a). The potential opposer or the applicant, as the case may be, may file a response 

within fifteen days from the date of service of the petition and shall serve a copy of the response 

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on the petitioner, with proof of service as provided by § 2.119(a). No further paper relating to 

the petition shall be filed. 

 (2) A petition from an interlocutory order of the Trademark Trial and Appeal Board shall be 

filed within thirty days after the date of mailing of the order from which relief is requested. Any 

brief in response to the petition shall be filed, with any supporting exhibits, within fifteen days 

from the date of service of the petition. Petitions and responses to petitions, and any papers 

accompanying a petition or response, under this subsection shall be served on every adverse 

party pursuant to § 2.119(a). 

(f) An oral hearing will not be held on a petition except when considered necessary by the 

Director. 

(g) The mere filing of a petition to the Director will not act as a stay in any appeal or inter 

partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the 

period for replying to an Office action in an application except when a stay is specifically 

requested and is granted or when §§ 2.63(b) and 2.65 are applicable to an ex parte application. 

(h) Authority to act on petitions, or on any petition, may be delegated by the Director. 

The only type of Board decision that may be appealed, whether to the United States Court of 

Appeals for the Federal Circuit or by way of civil action, is a final decision, i.e., a "final 

dispositive ruling that ends litigation on the merits" before the Board. Interlocutory decisions or 

orders, i.e., decisions or orders that do not put an end to the litigation before the Board, are not 

appealable. Appealability is not limited to decisions issued by the Board after final hearing. 

Other types of Board decisions are also appealable, in those cases where they put an end to the 

litigation before the Board.66 

When a final decision of the Board is reviewed on appeal, interlocutory orders or decisions 

issued during the course of the proceeding before the Board may also be reviewed if they are 

"logically related" to the basic substantive issues in the case.67 

In an inter partes proceeding, a party may obtain review of an order or decision of the Board 

which concerns matters of procedure (rather than the central issue or issues before the Board),

and does not put an end to the litigation before the Board, by timely petition to the Director.68

66 See TBMP § 901.02(a) (Final Decision vs. Interlocutory Decision) and cases cited therein. 

67 See TBMP § 901.02(a) and cases cited therein. 

68 See 37 CFR § 2.146; Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891 (CCPA 1980) 

(grant of summary judgment motion although essentially a procedural decision is appealable not petitionable in view 

of its substantial substantive effect); Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 169 USPQ

790, 792 (CCPA 1971) (whether Board abused discretion in denying motion to amend description of services was a 

matter to be determined by Commissioner, not the Court since not part of the central issue), Jack Lenor Larsen Inc. 

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A petition to the Director from an interlocutory order or decision of the Board, in a Board inter 

partes proceeding, must be filed within 30 days after the mailing date of the order or decision 

from which relief is requested. Any brief in response to the petition must be filed, with any 

supporting exhibits, within 15 days from the date of service of the petition. Petitions from an 

interlocutory order or decision of the Board, responses to such petitions, and any papers 

accompanying a petition or response, must be served on every adverse party in the manner 

prescribed in 37 CFR § 2.119(a).69 

For information concerning a petition to the Director from the denial, or from the granting, of a 

request for an extension of time to file a notice of opposition, see 37 CFR § 2.146(e)(1), and 

TBMP § 211.03. 

A petition on any matter not otherwise specifically provided for must be filed within 60 days 

from the mailing date of the action from which relief is requested.70 

The mere filing of a petition to the Director will not act as a stay in any ex parte appeal or inter 

partes proceeding pending before the Board.71 

A petition to the Director must include a statement of the facts relevant to the petition, the points 

to be reviewed, the action or relief requested, and the fee required by 37 CFR § 2.6. Any brief in 

support of the petition must be embodied in or accompany the petition. When facts are to be 

v. Chas. O. Larsen Co., 44 USPQ2d 1950, 1952 n.2 (TTAB 1997) (petition to Director seeking reopening of 

cancellation proceeding is inappropriate as petition because it seeks review of final decision of Board); Quality S. 

Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 60 USPQ2d 1703 (Comm’r 2000) (petition from

Board's finding that registration issued inadvertently and to direct Board to dismiss opposition granted in view of 

defect in request for extension of time to oppose); Kimberly Clark Corp. v. Paper Converting Industry Inc., 21

USPQ2d 1875 (Comm'r 1991) (decision denying motion to dismiss opposition as untimely filed reviewed by

petition); Miss Nude Florida, Inc. v. Drost, 193 USPQ 729 (TTAB 1976), pet. to Comm’r denied, 198 USPQ 485, 

486 (Comm'r 1977) (Board’s decision not to consider untimely evidence was critical factor leading to Board's final 

decision and to that extent was "logically related" to the central issue and therefore appropriate for appeal rather than

petition); and Johnson & Johnson v. Cenco Medical/Health Supply Corp., 177 USPQ 586 (Comm'r 1973) (Board's 

decision granting motion to amend pleading to add new claim reviewable by petition). 

 Cf. 37 CFR § 2.146(b) (questions of substance arising during the ex parte prosecution of applications, including, 

but not limited to, questions arising under Sections 2, 3, 4, 5, 6, and 23 of the Act, 15 U.S.C. §§ 1052, 1053, 1054, 

1055, 1056, and 1091, are not considered to be appropriate subject matter for petition to the Director). 

69 See 37 CFR § 2.146(e)(2) and TBMP § 113 (Service of Papers).

70 See 37 CFR § 2.146(d). 

71 See 37 CFR § 2.146(g). See also In re Docrite Inc., 40 USPQ2d 1636, 1637 n.1 (Commr 1996) (citing

Trademark Rule 2.146(g) and stating that filing petition to review denial of request to extend time to oppose does 

not stay time to file opposition or further extensions of time to oppose). 

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proved in ex parte cases, the proof, in the form of affidavits or declarations in accordance with 

37 CFR § 2.20, and any exhibits, must accompany the petition.

72 

An oral hearing will not be held on a petition to the Director except when considered necessary 

by the Director.73 

For further information on petitions to the Director, see 37 CFR § 2.146. Cf. TMEP Chapter 

1700. 

906 Standards of Review of Board Decisions 

As stated at the outset of this chapter, after the Board determines and decides “the respective 

rights of registration” under 15 U.S.C. § 1067, any party dissatisfied with the Board’s decision 

may appeal either to the United States Court of Appeals for the Federal Circuit or to a federal 

district court.74 

906.01 Appeal to Federal Circuit or by Civil Action 

In an appeal to the Federal Circuit, the case proceeds on the closed administrative record and no 

new evidence is permitted.75 In contrast, an appeal to the district court is both an appeal and a 

new action, which allows the parties to submit new evidence and raise additional claims.

76

Questions of fact. The district court sits as the appellate reviewer of facts found by the Board 

and as the fact-finder with respect to new evidence and additional claims.

77 Both the Federal 

Circuit and the district court, in reviewing factual findings, will afford deference to those factfindings.78

72 See 37 CFR § 2.146(c). See also, for example, Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 

1952 n.2 (TTAB 1997) (respondent’s petition did not specify which subsection of 2.146(a) provided basis for 

Director’s review). 

 

73 See 37 CFR § 2.146(f). 

74 See 15 U.S.C. § 1071. 

75 15 U.S.C. § 1071(a)(4).

 

76 See CAE Inc. v. Clean Air Engineering Inc., 60 USPQ2d 1449, 1458 (7th Cir. 2001) (appeal from district court's 

review of Board's finding of no likelihood of confusion, and from district court's decision on added claims of 

infringement, unfair competition and dilution). 

 

77 See CAE Inc., supra at 1457. 

78 See In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987) and CAE Inc., supra at 1458. 

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The degree of deference that the reviewing courts must afford the Board’s findings of fact was 

decided by the U.S. Supreme Court in Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 

(1999). In that decision the Supreme Court held that the proper standard of judicial review of 

findings of fact made by the USPTO is not the traditional "clearly erroneous" standard of review 

but rather the "slightly more" deferential standard of the Administrative Procedure Act (APA), 5 

U.S.C. § 706(2).79 Thus, whether a party elects direct review by the Federal Circuit or initiates a 

new action in the district court, the APA standard of review should be applied to the Board's 

fact-finding.80 

The Supreme Court did not decide which of the two standards of review under § 706(2) of the 

APA, the "arbitrary, capricious" test under § 706(2)(A) or the "substantial evidence" test under § 

706(2)(E), should be applied.81 Of the two tests, the Federal Circuit has determined that the 

“substantial evidence” standard is the appropriate standard of review for USPTO findings of 

fact.82 A number of circuit courts of appeals have also indicated that "substantial evidence" 

review is appropriate.83 

The substantial evidence standard requires the reviewing court to ask whether a reasonable 

person might accept that the evidentiary record supports the agency’s conclusion.84 Considered 

to be less deferential than the “arbitrary, capricious” standard of the APA, “substantial evidence” 

requires a stricter judicial review of agency fact-finding.85 A review for substantial evidence 

“involves examination of the record as a whole, taking into account evidence that both justifies 

and detracts from an agency’s decision.”86 Moreover, “the possibility of drawing two 

79 CAE Inc., supra at 1458 quoting Dickinson v. Zurko, 527 U.S. 150, 165, 50 USPQ2d 1930 (1999). 

 

80 See Dickinson v. Zurko, 50 USPQ2d at 1936 (rejecting the argument that the “two paths” for review would create 

“an anomaly” in the standard of review). See also Pro-Football Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d

1225, 1239 (D.D.C. 2003) (district court review of Board decision is "commensurate with the 'substantial evidence' 

standard of review articulated in the APA."). 

81 5 U.S.C. §§ 706(2)(A) & (E). See In re Gartside, 203 F.3d 1305, 53 USPQ2d 1773, 1773 (Fed. Cir. 2000). 

82 See Gartside, supra at 1775. See also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d

1471 (Fed. Cir. 2000); and Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). 

83 See CAE Inc., supra at 1459 and Gartside, supra at 1773. 

84 Dickinson v. Zurko, supra 50 USPQ2d at 1935 and Gartside, supra at 1773, quoting Consolidated Edison Co. v.

NLRB, 305 U.S. 197, 229-30 (1938) ("substantial evidence is more than a mere scintilla. It means such relevant

evidence as a reasonable mind might accept as adequate to support a conclusion. ... Mere uncorroborated hearsay or

rumor does not constitute substantial evidence."). 

85 Dickinson v. Zurko, id. and In re Gartside, supra at 1772 (the "arbitrary, capricious" standard of review is the

most deferential of the APA standards of review). 

 

86 Gartside, supra at 1773. 

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inconsistent conclusions from the evidence does not prevent an administrative agency’s finding 

from being supported by substantial evidence.”87 

Conclusions of law. While the Board's findings of fact are reviewed for substantial evidence, 

conclusions of law are reviewed de novo, without deference to the Board.88 

906.02 Petition to Director 

In reviewing non-final rulings of the Board, the Director will exercise supervisory authority 

under Trademark Rule 2.146(a)(3) and reverse the Board's ruling only where there is a clear error 

or abuse of discretion.89 

87 Id., quoting Consolo v. Federal Maritime Comm’n, 383 U.S. 607, 620 (1966). 

88 See Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002) 

(conclusions of law are reviewed without deference); In re International Flavors & Fragrances Inc., 47 USPQ2d

1314 (TTAB 1998), aff’d, 183 F.3d 1361, 51 USPQ2d 1513, 1515 (Fed. Cir. 1999) (legal conclusions are reviewed

de novo); and Allied-Signal Inc. v. Allegheny Ludlum Corp., 29 USPQ2d 1039, 1043 (DC Conn 1993) (conclusions 

of law are reviewed de novo). 

 Compare Custom Computer Services Inc. v. Paychex Properties Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1639

(Fed. Cir. 2003) ("substantial deference" given to USPTO's interpretation of its own regulation) and In re California

Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) (Board's interpretations of the Lanham Act are 

reviewed without deference).

 See also, regarding types of decisions and particular issues, In re Majestic Distilling Co., 315 F.3d 1311, 65

USPQ2d 1201, 1203 (Fed. Cir. 2003) (determination of likelihood of confusion is a question of law); Herbko

International Inc. v. Kappa Books Inc., supra at 1377 (grant of summary judgment is reviewed without deference 

and court must decide for itself whether moving party has shown that it is entitled to judgment as a matter of law); 

In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1781 (Fed. Cir. 2001) (validity of the Board's 

adaptation of the related goods test to geographic marks is a question of law that is reviewed de novo); Recot Inc. v. 

M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000) (ultimate question of whether a likelihood of

confusion exists is a question of law, based on underlying factual determinations); Sunrise Jewelry Mfg. Corp. v. 

Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (whether Board properly granted defendant's

motion to dismiss is a question of law that is reviewed "independently"); and Spraying Systems Co. v. Delavan Inc.,

975 F.2d 387, 24 USPQ2d 1181, 1184 (7th Cir. 1992) (Board's grant of summary judgment is reviewed de novo). In

addition, see Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002)

(functionality is a question of fact); On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 

1476 (Fed. Cir. 2000) (abandonment is a question of fact); and Towers v. Advent Software Inc., 913 F.2d 942, 16

USPQ2d 1039, 1040 (Fed. Cir. 1990) (descriptiveness is a question of fact). 

89 See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1511 (Comm'r 1995); Huffy Corp. v. Geoffrey Inc., 18

USPQ2d 1240, 1242 (Comm'r 1990); and Paolo's Associates Ltd. Partnership v. Paolo Bodo, 21 USPQ2d 1899 

(Comm'r 1990). 

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1001 In General 

15 U.S.C.§ 1066. Upon petition showing extraordinary circumstances, the Director may declare 

that an interference exists when application is made for the registration of a mark which so 

resembles a mark previously registered by another, or for the registration of which another has 

previously made application, as to be likely when used on or in connection with the goods or 

services of the applicant to cause confusion or mistake or to deceive. No interference shall be 

declared between an application and the registration of a mark the right to the use of which has 

become incontestable. 

37 CFR § 2.83 Conflicting marks. 

(a) Whenever an application is made for registration of a mark which so resembles another mark 

or marks pending registration as to be likely to cause confusion or mistake or to deceive, the 

mark with the earliest effective filing date will be published in the Official Gazette for opposition 

if eligible for the Principal Register, or issued a certificate of registration if eligible for the 

Supplemental Register. 

(b) In situations in which conflicting applications have the same effective filing date, the 

application with the earliest date of execution will be published in the Official Gazette for 

opposition or issued on the Supplemental Register. 

(c) Action on the conflicting application which is not published in the Official Gazette for 

opposition or not issued on the Supplemental Register will be suspended by the Examiner of 

Trademarks until the published or issued application is registered or abandoned. 

37 CFR § 2.91 Declaration of interference. 

(a) An interference will not be declared between two applications or between an application and 

a registration except upon petition to the Director. Interferences will be declared by the 

Director only upon a showing of extraordinary circumstances which would result in a party 

being unduly prejudiced without an interference. In ordinary circumstances, the availability of 

an opposition or cancellation proceeding to the party will be deemed to remove any undue 

prejudice. 

(b) Registrations and applications to register on the Supplemental Register, registrations under 

the Act of 1920, and registrations of marks the right to use of which has become incontestable 

are not subject to interference.

An interference is a proceeding in which the Board determines which, if any, of the owners of 

conflicting applications (or of one or more applications and one or more registrations which are 

in conflict) is entitled to registration.1

 A "conflict" exists, for interference purposes, whenever 

1

 See Sections 16 and 18 of the Act, 15 U.S.C. §§ 1066 and 1068. 

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INTERFERENCES 

 

"application is made for the registration of a mark which so resembles a mark previously 

registered by another, or for the registration of which another has previously made application, as 

to be likely when used on or in connection with the goods or services of the applicant to cause 

confusion or mistake or to deceive."

2

 

Ordinarily, when conflicting applications are pending, the application with the earliest effective 

filing date is approved for publication in the Official Gazette for opposition (if the mark is 

eligible for registration on the Principal Register), or is registered on the Supplemental Register 

(if the mark is eligible for registration on the Supplemental Register). Action on any later-filed 

conflicting application is suspended until the earlier-filed application is registered or abandoned. 

37 CFR § 2.83 and TMEP § 1208.01. 

If the owner of an application which conflicts with one or more pending applications wishes to 

have the Office set up an interference proceeding between the conflicting applications, rather 

than have the Office follow the procedure described in 37 CFR § 2.83, that applicant must file a 

petition to the Director to declare an interference.3

 

NOTE: Although the Director is authorized by Section 16 of the Act to declare an interference 

between an application and a registration (except for registrations issued on the Supplemental 

Register, registrations issued under the Act of 1920, and registrations of marks the right to use of 

which has become incontestable), it is not the Director’s practice to do so.4

 

1002 Declaration of Interference 

15 U.S.C. § 1066. Upon petition showing extraordinary circumstances, the Director may 

declare that an interference exists when application is made for the registration of a mark which 

so resembles a mark previously registered by another, or for the registration of which another 

has previously made application, as to be likely when used on or in connection with the goods or 

services of the applicant to cause confusion or mistake or to deceive. No interference shall be 

declared between an application and the registration of a mark the right to use of which has 

become incontestable. 

37 CFR § 2.91 Declaration of interference. 

(a) An interference will not be declared between two applications or between an application and 

a registration except upon petition to the Director. Interferences will be declared by the 

2

 Section 16 of the Act, 15 U.S.C. § 1066. See also Section 2(d) of the Act, 15 U.S.C. § 1052(d); 37 CFR § 2.83; 

and TMEP § 1208.01(a). 

3

 See Section 16 of the Act, 15 U.S.C. § 1066; 37 CFR § 2.91(a); and TBMP § 1002 (Declaration of Interference). 

4

 See TBMP § 1002 and authorities cited therein.

1000 - 571 
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INTERFERENCES 

 

Director only upon a showing of extraordinary circumstances which would result in a party 

being unduly prejudiced without an interference. In ordinary circumstances, the availability of 

an opposition or cancellation proceeding to the party will be deemed to remove any undue 

prejudice. 

(b) Registrations and applications to register on the Supplemental Register, registrations under 

the Act of 1920, and registrations of marks the right to use of which has become incontestable 

are not subject to interference.

Under Section 16 of the Act of 1946, 15 U.S.C. § 1066, the Director, upon petition showing 

extraordinary circumstances, may declare that an interference exists when an application 

conflicts with a registration issued to another, or with an application previously filed by another, 

that is, "when application is made for the registration of a mark which so resembles a mark 

previously registered by another, or for the registration of which another has previously made 

application, as to be likely when used on or in connection with the goods or services of the 

applicant to cause confusion or mistake or to deceive." 

A petition for declaration of an interference will be granted by the Director only if the petition 

shows "extraordinary circumstances which would result in a party being unduly prejudiced 

without an interference."5

 Ordinarily, the availability of an opposition or cancellation 

proceeding is deemed to prevent any undue prejudice from the unavailability of an interference 

proceeding.6

 However, a petition to the Director to declare an interference has been granted 

where, but for the interference, multiple oppositions would be necessary.7

 

Although the Director is authorized by Section 16 of the Act to declare an interference between 

an application and a registration (except for registrations issued on the Supplemental Register, 

registrations issued under the Act of 1920, and registrations of marks the right to use of which 

has become incontestable8

 it is not the Director’s practice to do so.9 This is because a 

registration will not be cancelled as a result of a decision in an interference proceeding. A 

formal petition for cancellation must still be filed and granted, and the registration must be 

5

 See 37 CFR § 2.91(a). See also In re Ratny, 24 USPQ2d 1713, 1715 (Comm'r 1992); In re Kimbell Foods, Inc., 

184 USPQ 172, 173 (Comm'r 1974); and In re Family Inns of America, Inc., 180 USPQ 332, 332 (Comm'r 1974). 

6

 See 37 CFR § 2.91(a). See also In re Kimbell Foods, Inc., supra. 

7

 See In re Family Inns of America, Inc., supra. See also TMEP §§ 1208.03 and 1208.03(b). 

8

 See Sections 16, 26, and 46(b) of the Act, 15 U.S.C. §§ 1066, 1094, and 1051 [note],;and 37 CFR § 2.91(b)). 

9

 See In re Kimbell Foods, Inc., supra, and Ex parte H. Wittur & Co., 153 USPQ 362, 363 (Comm'r 1966). 

 

1000 - 572 
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INTERFERENCES 

 

cancelled, before any registration will be issued to the applicant.10 The interference proceeding 

is superfluous, since the cancellation proceeding by itself will accomplish the same purpose as 

the two proceedings together. 

A petition to the Director to declare an interference should be made by separate paper bearing the 

title "PETITION TO THE DIRECTOR," and be accompanied by the fee specified in 37 CFR § 

2.6. For further information concerning the form for a petition to the Director, see 37 CFR § 

2.146(c), TMEP § 1208.03 and TBMP § 905. 

A petition to declare an interference should not be filed in an application until the trademark 

examining attorney has examined the application, and the mark has been found registrable but 

for the existence of one or more pending conflicting applications. When such a petition is filed, 

the examining attorney will immediately forward the petition, together with the application file, 

to the Office of the Commissioner for Trademarks for determination of the petition.11 

1003 Institution of Interference 

37 CFR § 2.92 Preliminary to interference. An interference which has been declared by the 

Director will not be instituted by the Trademark Trial and Appeal Board until the Examiner of 

Trademarks has determined that the marks which are to form the subject matter of the

controversy are registrable, and all of the marks have been published in the Official Gazette for 

opposition. 

37 CFR § 2.93 Institution of interference. An interference is instituted by the mailing of a 

notice of interference to the parties. The notice shall be sent to each applicant, in care of the 

applicant's attorney or other representative of record, if any, and if one of the parties is a 

registrant, the notice shall be sent to the registrant or the registrant's assignee of record. The 

notice shall give the name and address of every adverse party and of the adverse party's attorney 

or other authorized representative, if any, together with the serial number and date of filing and 

publication of each of the applications, or the registration number and date of issuance of each 

of the registrations, involved. 

An interference proceeding does not commence with the granting of a petition to the Director to 

declare an interference. Rather, the interference proceeding will not be instituted unless and until 

the trademark examining attorney has determined that the marks which are to be included in the 

interference are registrable, but for the interfering marks; and all of the marks have been 

10 See 37 CFR § 2.96; In re Kimbell Foods, Inc., supra; and Ex parte H. Wittur & Co., supra. Cf. Hy-Pure 

Laboratories, Inc. v. Foley & Co., 98 USPQ 280, 281 (Chief Examiner 1953); and Cudahy Packing Co. v. York

Pharmacal Co., 93 USPQ 227, 228 (Comm'r 1952). 

 

11 See TMEP § 1208.03(a). 

1000 - 573 
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published (preferably together) in the Official Gazette for opposition, subject to the 

interference.12 

If an application published subject to interference is opposed by an entity which is not to be a 

party to the interference, the opposition may be determined first, following which the 

interference, if still necessary and appropriate, will be instituted;13 alternatively, depending upon 

the circumstances, the opposition and interference may go forward contemporaneously. If an 

opposition is filed by an entity that is to be a party to the interference, and the interference is to 

involve three or more parties, the opposition will be dismissed without prejudice in favor of the 

interference proceeding, wherein the rights of all parties can be determined in a single 

proceeding. If an opposition is filed by an entity that is to be a party to the interference, and the 

interference is to involve only two parties, the rights of the parties will be determined in the 

opposition, and the interference will not be instituted. 

If the marks which are to be included in an interference (1) are found by the trademark 

examining attorney to be registrable, (2) are published for opposition, and (3) survive the 

opposition period (as indicated in the preceding paragraph), the interference proceeding will be 

instituted by the Board. 

The Board prepares a "Notice of Interference" notifying the parties that the interference

proceeding is thereby instituted, and setting trial and briefing dates in the case. The notice 

specifies the name and address of each party to the proceeding and of each party's attorney or 

other authorized representative, if any; the mark of each party; and the serial number, filing date, 

and publication date of each involved application.14 

An interference proceeding commences when the Board mails the notice of interference to the 

parties. The notice is mailed to the attorney or other authorized representative of each involved 

applicant, or, if the applicant does not have an attorney or other authorized representative, to the 

applicant.15 

It is not the Director’s practice to declare an interference with a registration.16 However, should 

the Director elect to declare an interference with one or more registrations, the notice of 

12 See 37 CFR § 2.92 and TMEP § 1208.02(c). 

13 Cf. 37 CFR § 2.99(c).

14 See 37 CFR § 2.93. 

15 See 37 CFR § 2.93. 

16 See TBMP § 1002 (Declaration of Interference) and cases cited therein. 

 

1000 - 574 
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interference would specify the registration number and issuance date of each involved 

registration, and would be mailed to the registrant or its assignee of record.17 

There are no pleadings in an interference proceeding.18 The notice of interference takes the place 

of pleadings, to the extent that it serves to provide each party with information concerning the 

involved application (or registration, if an interference should be declared with one or more 

registrations) of every adverse party. 

There is no fee for an interference proceeding, beyond the fee required for a petition to the 

Director to declare an interference.19 

1004 Issues in Interference 

37 CFR § 2.96 Issue; burden of proof. The issue in an interference between applications is 

normally priority of use, but the rights of the parties to registration may also be determined. ... 

The issue in an interference between an application and a registration shall be the same, but in 

the event the final decision is adverse to the registrant, a registration to the applicant will not be

authorized so long as the interfering registration remains on the register. 

Normally, the issue to be determined in an interference proceeding is priority of use. However, 

such additional issues as the registrability of each mark, and whether there is, in fact, a conflict 

between the marks involved in the proceeding (i.e., whether the marks do so resemble one 

another as to be likely, when used in connection with the respective goods and/or services of the 

parties, to cause confusion, mistake, or deception), are always before the Board in an 

interference, and may also be determined; there is no requirement that a party file an affirmative 

pleading of such matters in order to be heard thereon.20 

17 See 37 CFR § 2.93. 

18 Cf. TBMP §§ 1004 (Institution of Interference), 1106 (Commencement of Concurrent Use), and 1107 (Answer; 

Default in Concurrent Use). 

19 See 37 CFR § 2.6. Cf. TBMP § 1002. 

20 See, for example, Sections 17 and 18 of the Act, 15 U.S.C. §§ 1067 and 1068; 37 CFR § 2.96; Giant Food Inc. v.

Malone & Hyde, Inc., 522 F.2d 1386, 187 USPQ 374, 380 (CCPA 1975); Dynamet Technology, Inc. v. Dynamet

Inc., 197 USPQ 702 (TTAB 1977), aff'd, 593 F.2d 1007, 201 USPQ 129 (CCPA 1979); Jos. Schlitz Brewing Co. v. 

United Vintners, Inc., 166 USPQ 493, 494 (TTAB 1970); Clairol Inc. v. Holland Hall Products, Inc., 165 USPQ

214, 217-18 (TTAB 1970); Tudor Square Sportswear, Inc. v. Pop-Op Corp., 160 USPQ 50, 53-54 (TTAB 1968); La

Jolla Sportswear Co. v. Maskuline Underwear Co., 114 USPQ 130, 131 (Comm'r 1957); Saul Lefkowitz and Janet

E. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rep. 323, 325

(1985); and Notice of Final Rulemaking published in the Federal Register on May 23, 1983 at 48 FR 23122, and in

the Official Gazette of June 21, 1983 at 1031 TMOG 13 (deleting former 37 CFR § 2.97, which contained a 

requirement for an affirmative pleading of registrability issues). 

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1005 Burden of Proof 

37 CFR § 2.96 Issue; burden of proof. ... The party whose application involved in the 

interference has the latest filing date is the junior party and has the burden of proof. When there 

are more than two parties to an interference, a party shall be a junior party to and shall have the 

burden of proof as against every other party whose application involved in the interference has 

an earlier filing date. If the involved applications of any parties have the same filing date, the 

application with the latest date of execution will be deemed to have the latest filing date and that 

applicant will be the junior party. ... 

37 CFR § 2.116(b) ... A party that is a junior party in an interference proceeding or in a 

concurrent use registration proceeding shall be in the position of plaintiff against every party 

that is senior, and the party that is a senior party in an interference proceeding or in a 

concurrent use registration proceeding shall be a defendant against every party that is junior. 

In an interference proceeding, the party whose involved application has the latest filing date is 

the junior party. When there are three or more parties to an interference, a party is a junior party 

to every other party whose involved application has an earlier filing date. If the involved 

applications of any parties have the same filing date, the application with the latest date of

execution is deemed to have the latest filing date, and that applicant is the junior party.21 

A junior party in an interference proceeding is in the position of plaintiff, and has the burden of 

proof, as against every party that is senior, that is, as against every party whose involved 

application has an earlier filing date. Conversely, a senior party is in the position of defendant as 

against every party that is junior, that is, as against every party whose involved application has a 

later filing date.22 

 

1006 Addition of Party 

37 CFR § 2.98 Adding party to interference. A party may be added to an interference only upon 

petition to the Director by that party. If an application which is or might be the subject of a 

petition for addition to an interference is not added, the examiner may suspend action on the 

application pending termination of the interference proceeding. 

A party may be added to an interference only upon petition to the Director filed, pursuant to 37 

CFR § 2.98, by the party to be added. 

21 See 37 CFR § 2.96. 

22 See 37 CFR §§ 2.96 and 2.116(b). See also Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 

USPQ 673 (CCPA 1972); and McNeil v. Mini Mansions, Inc., 178 USPQ 312 (TTAB 1973). 

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For information concerning joining or substituting a transferee when there has been an 

assignment of a mark which is involved in an interference proceeding, see TBMP § 512.01. 

1007 Conduct of Proceeding 

Once commenced,23 an interference proceeding is conducted in the same general manner as an 

opposition or cancellation proceeding, except that there are no pleadings,

24 and therefore no 

motions relating to pleadings;25 the issues of priority of use, likelihood of confusion, and 

registrability are always before the Board,26 a party's burden of proof as against another party to 

the proceeding depends upon the filing date of its involved application27 and additional parties 

may be added to the proceeding upon petition to the Director filed by the party to be added.28 

In addition, the trial and briefing schedule in an interference involving three or more parties 

differs, because of the multiplicity of parties, from that in an opposition or cancellation. In the 

notice of interference that commences an interference proceeding, the Board sets trial and 

briefing dates in the case.29 Specifically, the Board sets an opening and closing date for 

discovery and schedules testimony periods so that each party in the position of plaintiff30 will 

have a period for presenting its case in chief against each party in the position of defendant, each 

party in the position of defendant will have a period for presenting its case and meeting the case 

of each plaintiff, and each party in the position of plaintiff will have a period for presenting 

evidence in rebuttal; the testimony periods are separated from the discovery period and from

each other by 30-day intervals.31 Similarly, the Board schedules briefing periods so that each 

party, beginning with the junior-most party and ending with the senior-most party, will have a 

time for filing its main brief on the case, and each junior party will have a time for filing a reply 

brief.32 

23 See TBMP §§ 1002 (Declaration) and 1003 (Institution). 

24 See TBMP §§ 1003 and 1004 (Issues in Interference). 

25 Compare, e.g., 37 CFR § 2.107.

26 See TBMP § 1004. 

27 See TBMP § 1005 (Burden of Proof). 

28 See TBMP § 1006 (Addition of Party). 

29 See TBMP § 1003. 

30 See TBMP § 1005. 

31 See TBMP § 701 (Time of Trial). 

32 See TBMP § 801.02(e) (Special Situations for Filing Brief). 

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INTERFERENCES 

Set forth below is a sample trial and briefing schedule for an interference involving parties A, B, 

C, D, and E, where A is junior to every other party; B is junior to C, D, and E, and senior to A; C 

is junior to D and E, and senior to A and B; D is junior to E, and senior to A, B, and C; and E is 

senior to every other party: 

THE PERIOD FOR DISCOVERY TO OPEN : January 2, 2003 

THE PERIOD FOR DISCOVERY TO CLOSE : July 2, 2003 

30-day testimony period for A to close : August 31, 2003 

30-day testimony period for B to close : October 30, 2003 

 

30-day testimony period for C to close : December 31, 2003 

 

30-day testimony period for D to close : March 1, 2004 

 

30-day testimony period for E to close : April 30, 2004 

 

 15-day rebuttal testimony period for 

 A to close : June 14, 2004 

 

 15-day rebuttal testimony period for 

 B to close : July 29, 2004 

 

 15-day rebuttal testimony period for 

 C to close : September 12, 2004 

 

15-day rebuttal testimony period for 

D to close : October 28, 2004 

 

Briefs on final hearing (37 CFR 2.128) shall become due as follows: 

Brief for A shall be due : December 27, 2004 

Brief for B shall be due : January 26, 2005 

Brief for C shall be due : February 25, 2005 

Brief for D shall be due : March 27, 2005 

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Brief for E shall be due : April 26, 2005 

Reply briefs, if any, shall be due as follows: 

Reply brief for A shall be due : May 11, 2005 

Reply brief for B shall be due : May 26, 2005 

Reply brief for C shall be due : June 10, 2005 

Reply brief for D shall be due : June 25, 2005 

With the exceptions noted above, the practices and procedures for taking discovery, filing 

motions, introducing evidence, briefing the case, presenting oral arguments at final hearing, and 

seeking review of a decision of the Board, are essentially the same in an interference as in an 

opposition or cancellation.

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1101 In General 

15 U.S.C. § 1052. No trademark by which the goods of the applicant may be distinguished from 

the goods of others shall be refused registration on the principal register on account of its nature 

unless it -- 

 * * * * 

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and 

Trademark Office, or a mark or trade name previously used in the United States by another and 

not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to 

cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines 

that confusion, mistake, or deception is not likely to result from the continued use by more than 

one person of the same or similar marks under conditions and limitations as to the mode or 

place of use of the marks or the goods on or in connection with which such marks are used, 

concurrent registrations may be issued to such persons when they have become entitled to use 

such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the 

filing dates of the applications pending or of any registration issued under this Act; (2) July 5, 

1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 

20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of 

applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use 

prior to the filing date of any pending application or a registration shall not be required when 

the owner of such application or registration consents to the grant of a concurrent registration 

to the applicant. Concurrent registrations may also be issued by the Director when a court of 

competent jurisdiction has finally determined that more than one person is entitled to use the 

same or similar marks in commerce. In issuing concurrent registrations, the Director shall 

prescribe conditions and limitations as to the mode or place of use of the mark or the goods on 

or in connection with which such mark is registered to the respective persons. 

15 U.S.C. § 1067. In every case of interference, opposition to registration, application to 

register as a lawful concurrent user, or application to cancel the registration of a mark, the 

Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to 

determine and decide the respective rights of registration. ... 

15 U.S.C. § 1068. 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 hereunder 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 2 of this Act. ... 

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1101.01 Nature of Proceeding 

A concurrent use registration proceeding (hereafter referred to as a "concurrent use proceeding") 

is an inter partes proceeding in which the Board determines whether one or more applicants is 

entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed 

by the Board, as to the mode or place of use of the applicant's mark or the goods and/or services 

on or in connection with which the mark is used.1

 

Section 2(d) of the Act, 15 U.S.C. § 1052(d), governs the Board’s determination of registrability 

in a concurrent use proceeding. That section provides, in part, that if the Director (acting 

through the Board--see Section 17 of the Act, 15 U.S.C. § 1067): 

... determines that confusion, mistake, or deception is not likely to 

result from the continued use by more than one person of the same or 

similar marks under conditions and limitations as to the mode or 

place of use of the marks or the goods on or in connection with which 

such marks are used, concurrent registrations may be issued to such 

persons when they have become entitled to use such marks as a result 

of their concurrent lawful use in commerce prior to ... 

a certain specified date (normally, prior to the earliest application filing date of the 

application(s), or 1946 Act registration(s) (if any), involved in the proceeding, or prior to July 5, 

1947, in the case of an involved registration under the Acts of 1881 or 1905.2

 

The proviso of Section 2(d) of the Trademark Act sets out two requirements for issuance of 

concurrent use registration in a proceeding before the Board.3

 A concurrent use applicant needs 

to meet the jurisdictional requirement of use in commerce prior to the applicable date specified 

1

 See, for example, Sections 2(d), 17, and 18 of the Act, 15 U.S.C. §§ 1052(d), 1067, and 1068; Weiner King, Inc. v.

Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 831 (CCPA 1980) (the conditions and limitations imposed by

Section 2(d) are for the purpose of preventing consumer confusion); Terrific Promotions Inc. v. Vantex Inc., 36

USPQ2d 1349, 1353 (TTAB 1995); Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 (TTAB 1989);

Women's World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1988 (TTAB 1988); and Ole' Taco Inc. v. Tacos 

Ole, Inc., 221 USPQ 912, 916 (TTAB 1984). 

2

 See TBMP § 1103.01(b) (Jurisdictional Requirement). 

3

 See In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) and Over the Rainbow, Ltd. v. 

Over the Rainbow, Inc., 227 USPQ 879, 882 (TTAB 1985). 

1100 - 581 
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in Section 2(d) of the Act4

 and the requirement that there be no likelihood of confusion in that 

use of a concurrent registration.5

 

1101.02 Context for USPTO Determination of Concurrent Rights 

37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine 

concurrent use rights only in the context of a concurrent use registration proceeding.

37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark 

Trial and Appeal Board only in the context of a concurrent use registration proceeding. 

Within the USPTO, the Board determines the right to concurrent registration.6

 Concurrent rights 

are considered and determined by the Board only in the context of a concurrent use proceeding.7

 

A registration cannot be restricted territorially by amendment under Section 7(e) of the Act, 15 

U.S.C. § 1057(e), and 37 CFR § 2.173(a).8

 Thus, when a registration is the subject of a 

cancellation proceeding, the proceeding may not be settled by amending the registration to 

include territorial restrictions.9

 

Moreover, a Section 7(e) amendment may generally not be used to remove a concurrent use 

restriction from a registration. However, removal of a concurrent use restriction by amendment 

under Section 7(e) may be permitted where an entity which was the only exception to registrant's

4

 For information concerning the dates specified in Section 2(d) of the Act and a discussion of the jurisdictional

requirement, see TBMP § 1103.01(b).

5

 See Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990) and Over the Rainbow, Ltd.

v. Over the Rainbow, Inc., supra at n.4. 

6

 See Sections 2(d), 17, and 18 of the Act, 15 U.S.C. §§1052(d), 1067 and 1068. 

7

 See Sections 2(d), 17, and 18 of the Act, 15 U.S.C. §§ 1052(d), 1067, and 1068. See also, for example, 37 CFR §§

2.99(h) and 2.133(c); Stock Pot Restaurant, Inc. v. Stockpot, Inc., 220 USPQ 52 (TTAB 1983), aff’d, 737 F.2d 1576, 

222 USPQ 665, 669 (Fed. Cir. 1984) (attempt to interject concurrent use proceeding into cancellation unavailing); 

Mother's Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 400 (Fed. Cir. 1983) (concurrent use

not available in cancellation by way of counterclaim); Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 

219 USPQ 1050, 1053 (Fed. Cir. 1983); Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271, 277

(CCPA 1978) (concurrent rights can only be adjudicated in concurrent use proceeding). 

8

 See In re Forbo, 4 USPQ2d 1415 (Comm'r 1984).

9

 See, e.g., Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831, 832 (Comm’r 1984) (a decision in the cancellation

proceeding adverse to respondent would not preclude respondent from filing a new application seeking concurrent

registration with petitioner). See also TBMP § 1114 (Alteration of Restrictions on Concurrent Registration) and 

cases cited therein. 

1100 - 582 
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right to exclusive use of its registered mark assigns its rights in its mark to registrant, so that all 

rights in the mark are merged in registrant.10 

1102 Generation of Proceeding 

1102.01 Means of Generation 

A concurrent use proceeding before the Board may be generated only by way of an application 

for registration as a lawful concurrent user (hereafter referred to as a "concurrent use 

application").11 A concurrent use application is an application in which applicant: 

 (1) concedes that its use is not exclusive, 

 

(2) specifies the goods and/or services and area or mode of use for which it desires 

registration, 

 

(3) identifies, as exceptions to its claim of exclusive use, one or more persons (unrelated 

to applicant) which use the same or similar mark, for the same or similar goods or 

services, concurrently with applicant, and 

(4) provides, to the extent of the applicant's knowledge, certain information concerning 

use of the mark by each listed concurrent user.12 

For further information concerning the requirements for a concurrent use application, see 

TBMP § 1103. 

10 See In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm'r 1987) (geographic restriction removed by amendment

when excepted rights assigned to registrant). 

 

11 See Chichi's, Inc. v. Chi-Chi's, Inc., supra; Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 

1977); Hollowform, Inc. v. Delma Aeh, 180 USPQ 284 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA

1975); Janet E. Rice, TIPS FROM THE TTAB: Concurrent Use Applications and Proceedings, 72 Trademark Rep. 

403 (1982); and Rany L. Simms, TIPS FROM THE TTAB: The Concurrent User as Opposer, 67 Trademark Rep.

654 (1977). 

12 See Sections 1(a)(1)(A) and 2(d) of the Act, 15 U.S.C. §§ 1051(a)(1)(A) and 1052(d); 37 CFR § 2.42; and TMEP 

§§ 1207.04(b); and 1207.04(d). 

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1102.02 Bases for Concurrent Registration – Board Determination; Court 

 Determination 

There are two bases upon which a concurrent registration may be issued. 

First, a concurrent registration may be issued when the Board has determined in a prior or to-be 

instituted concurrent use proceeding, that an applicant for concurrent registration is entitled 

thereto.13 

Second, a concurrent registration may be issued "when a court of competent jurisdiction has 

finally determined that more than one person is entitled to use the same or similar marks in 

commerce."14

These two types of concurrent use registrations are the only means by which a geographically 

restricted registration may be obtained.15 Thus, for example, an applicant may not, by including 

a geographical restriction in its identification of goods and/or services, obtain a geographically 

restricted registration without a concurrent use proceeding.16 

If an application seeking concurrent registration on the basis of the Board's decision in a prior 

concurrent use proceeding meets certain requirements (in addition to those necessary for all 

concurrent use applications,17 the registration sought, if otherwise appropriate, will be issued 

based on the Board's prior decision. A new concurrent use proceeding before the Board will not 

be necessary, because of the legal principles of res judicata and stare decisis.18 

Similarly, if an application seeking concurrent registration on the basis of a prior court 

determination of concurrent rights meets certain requirements, in addition to those necessary for 

13 See TBMP § 1101.01 (Nature of Proceeding) and authorities cited therein.

14 See Section 2(d) of the Act, 15 U.S.C. § 1052(d). See also 37 CFR § 2.99(f); Holiday Inn v. Holiday Inns, Inc., 

534 F.2d 312, 189 USPQ 630 (CCPA 1976) (district court found applicant entitled to restricted registration); Alfred 

Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1961) (court ordered 

restricted registration); In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm'r 1987); and In re Forbo, 4 USPQ2d 1415 

(Comm'r 1984). 

15 See TBMP §§ 1101.02 (Context for USPTO Determination of Concurrent Rights) and 1102.02 (Bases for 

Concurrent Registration). 

16 See In re Home Federal Savings & Loan Ass'n, 213 USPQ 68, 69 (TTAB 1982). 

17 See 37 CFR § 2.42 and TBMP § 1103 (Requirements for Concurrent Use Application).

18 Cf. 37 CFR § 2.99(f). For information concerning the requirements for an application seeking concurrent 

registration on the basis of the Board's decision in a prior concurrent use proceeding, see TBMP § 1103.02. 

1100 - 584 
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all concurrent use applications, the registration sought, if otherwise appropriate, will be issued 

based on the court determination, without any concurrent use proceeding before the Board.19 

1103 Requirements for Concurrent Use Application 

15 U.S.C. § 1051(a)(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. 

(3)(D) ... except that, in the case of every application claiming concurrent use, the 

applicant shall – 

(i) state exceptions to his claim of exclusive use; and 

 (ii) shall specify, to the extent of the verifier’s knowledge -- 

(I) any concurrent use by others; 

(II) the goods on or in connection with which and the areas in which each 

concurrent use exists; 

(III) the periods of each use and 

(IV) the goods and area for which the applicant desires registration. 

* * * * 

15 U.S.C.§ 1052. No trademark by which the goods of the applicant may be distinguished from 

the goods of others shall be refused registration on the principal register on account of its nature 

unless it -- 

 * * * * 

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and 

Trademark Office, or a mark or trade name previously used in the United States by another and 

not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to 

cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines 

that confusion, mistake, or deception is not likely to result from the continued use by more than 

one person of the same or similar marks under conditions and limitations as to the mode or 

place of use of the marks or the goods on or in connection with which such marks are used, 

concurrent registrations may be issued to such persons when they have become entitled to use 

such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the 

filing dates of the applications pending or of any registration issued under this Act; (2) July 5, 

1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 

20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of 

applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use 

19 See 37 CFR § 2.99(f). For information concerning the requirements for an application seeking concurrent 

registration on the basis of a prior court determination of concurrent rights, see TBMP §1103.03. 

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prior to the filing date of any pending application or a registration shall not be required when 

the owner of such application or registration consents to the grant of a concurrent registration 

to the applicant. Concurrent registrations may also be issued by the Director when a court of 

competent jurisdiction has finally determined that more than one person is entitled to use the 

same or similar marks in commerce. In issuing concurrent registrations, the Director shall 

prescribe conditions and limitations as to the mode or place of use of the mark or the goods on 

or in connection with which such mark is registered to the respective persons. 

37 CFR § 2.42 Concurrent use. An application for registration as a lawful concurrent user 

shall specify and contain all the elements required by the preceding sections. The applicant in 

addition shall state in the application the area, the goods, and the mode of use for which 

applicant seeks registration; and also shall state, to the extent of applicant's knowledge, the 

concurrent lawful use of the mark by others, setting forth their names and addresses; 

registrations issued to or applications filed by such others, if any; the areas of such use; the 

goods on or in connection with which such use is made; the mode of such use; and the periods of 

such use. 

37 CFR § 2.73 Amendment to recite concurrent use. 

(a) An application under section 1(a), section 44, or section 66(a) of the Act may be amended to 

an application for concurrent use registration, provided the application as amended satisfies the 

requirements of § 2.42. The trademark examining attorney will determine whether the 

application, as amended, is acceptable. 

(b) An application under § 1(b) of the Act may not be amended so as to be treated as an 

application for a concurrent registration until an acceptable amendment to allege use under § 

2.76 or statement of use under § 2.88 has been filed in the application, after which time such an 

amendment may be made, provided the application as amended satisfies the requirements of § 

2.42. The examiner will determine whether the application, as amended, is acceptable. 

37 CFR § 2.99 Application to register as concurrent user. 

(a) An application for registration as a lawful concurrent user will be examined in the same 

manner as other applications for registration. 

(b) When it is determined that the mark is ready for publication, the applicant may be required 

to furnish as many copies of his application, specimens and drawing as may be necessary for the 

preparation of notices for each applicant, registrant or user specified as a concurrent user in the 

application for registration. 

(c) Upon receipt of the copies required by paragraph (b) of this section, the examiner shall 

forward the application for concurrent use registration for publication in the Official Gazette as 

provided by § 2.80. If no opposition is filed, or if all oppositions that are filed are dismissed or 

withdrawn, the Trademark Trial and Appeal Board shall prepare a notice for the applicant for 

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concurrent use registration and for each applicant, registrant or user specified as a concurrent 

user in the application. The notices for the specified parties shall state the name and address of 

the applicant and of the applicant's attorney or other authorized representative, if any, together 

with the serial number and filing date of the application. 

(d)(1) The notices shall be sent to each applicant, in care of his attorney or other authorized 

representative, if any, to each user, and to each registrant. A copy of the application shall be 

forwarded with the notice to each party specified in the application. 

 (2) An answer to the notice is not required in the case of an applicant or registrant whose 

application or registration is specified as a concurrent user in the application, but a statement, if 

desired, may be filed within forty days after the mailing of the notice; in the case of any other 

party specified as a concurrent user in the application, an answer must be filed within forty days 

after the mailing of the notice. 

 (3) If an answer, when required, is not filed, judgment will be entered precluding the specified 

user from claiming any right more extensive than that acknowledged in the application(s) for 

concurrent use registration, but the applicant(s) will remain with the burden of proving 

entitlement to registration(s).

(e) The applicant for a concurrent use registration has the burden of proving entitlement thereto. 

If there are two or more applications for concurrent use registration involved in a proceeding, 

the party whose application has the latest filing date is the junior party. A party whose 

application has a filing date between the filing dates of the earliest involved application and the 

latest involved application is a junior party to every party whose involved application has an 

earlier filing date. If any applications have the same filing date, the application with the latest 

date of execution will be deemed to have the latest filing date and that applicant will be the 

junior party. A person specified as an excepted user in a concurrent use application but who has 

not filed an application shall be considered a party senior to every party that has an application 

involved in the proceeding. 

(f) When a concurrent use registration is sought on the basis that a court of competent 

jurisdiction has finally determined that the parties are entitled to use the same or similar marks 

in commerce, a concurrent use registration proceeding will not be instituted if all of the 

following conditions are fulfilled: 

(1) The applicant is entitled to registration subject only to the concurrent lawful use of a 

party to the court proceeding; and 

(2) The court decree specifies the rights of the parties; and 

(3) A true copy of the court decree is submitted to the examiner; and 

(4) The concurrent use application complies fully and exactly with the court decree; and 

(5) The excepted use specified in the concurrent use application does not involve a 

registration, or any involved registration has been restricted by the Director in 

accordance with the court decree. 

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If any of the conditions specified in this paragraph is not satisfied, a concurrent use registration 

proceeding shall be prepared and instituted as provided in paragraphs (a) through (e) of this 

section. 

(g) Registrations and applications to register on the Supplemental Register and registrations 

under the Act of 1920 are not subject to concurrent use registration proceedings. Applications 

to register under section 1(b) of the Act of 1946 are subject to concurrent use registration 

proceedings only after an acceptable amendment to allege use under § 2.76 or statement of use 

under § 2.88 has been filed. 

(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights 

only in the context of a concurrent use registration proceeding. 

1103.01 Application Based on Board Determination 

1103.01(a) Application Must Assert Use in Commerce 

A basic requirement for any concurrent use application (whether it is to be based on a 

Board determination, through a concurrent use proceeding, of applicant's right to 

concurrent registration, or whether it is based on a prior court determination of applicant's 

concurrent use rights) is that it must assert use in commerce of the mark sought to be 

registered. Section 2(d) of the Act, 15 U.S.C. § 1052(d), provides, in pertinent part: 

[I]f the Director determines that confusion, mistake, or deception is not 

likely to result from the continued use by more than one person of the 

same or similar marks under conditions and limitations as to the mode or 

place of use of the marks or the goods on or in connection with which such 

marks are used, concurrent registrations may be issued to such persons 

when they have become entitled to use such marks as a result of their 

concurrent lawful use in commerce prior to (1) the earliest of the filing 

dates of the applications pending or of any registration issued under this 

Act; ... Concurrent registrations may also be issued by the Director when 

a court of competent jurisdiction has finally determined that more than 

one person is entitled to use the same or similar marks in commerce.

20 

(Emphasis added.) 

If a concurrent use application is filed as an intent-to-use application under Section 1(b) 

of the Act, 15 U.S.C. § 1051(b), rather than as a use application under Section 1(a) of the 

Act, 15 U.S.C. § 1051(a), the applicant may not amend the application to seek concurrent 

20 See also 37 CFR § 2.99(g), and Fleming Companies v. Thriftway Inc., 21 USPQ 1451 (TTAB 1991), aff’d, 26

USPQ2d 1551, 1553 (S.D.Ohio 1992) (use must be lawful).

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CONCURRENT USE PROCEEDINGS 

 

use until use is effected.21 Thus, an intent-to-use application for an unrestricted 

registration may be amended to seek concurrent registration when an acceptable 

amendment to allege use under 37 CFR § 2.76, or an acceptable statement of use under 

37 CFR § 2.88, has been filed in the application.22 

An application for registration under the provisions of Section 44 of the Act, 15 U.S.C. § 

1126, may not seek concurrent registration unless the application also includes, as a 

second basis for registration, an allegation of use in commerce pursuant to Section 1(a) of 

the Act.23 

An application filed under Section 66(a) of the Act, 15 U.S.C. § 1141f, may not seek 

concurrent registration unless the application also includes an appropriate allegation of 

use in commerce. 

1103.01(b) Jurisdictional Requirement 

An application seeking concurrent registration based on a Board determination, through a 

concurrent use proceeding, of applicant's right thereto, must allege use in commerce 

"prior to (1) the earliest of the filing dates of the applications pending or of any 

registration issued under this Act [of 1946]; (2) July 5, 1947, in the case of registrations 

previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing 

in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed 

under the Act of February 20, 1905, and registered after July 5, 1947."24 As a practical 

matter, this means that an application seeking concurrent registration through a 

concurrent use proceeding normally must assert a date of first use in commerce prior to 

the earliest application filing date of the application(s), or 1946 Act registration(s) (if 

any), involved in the proceeding (or prior to July 5, 1947, in the case of an involved 

registration under the Acts of 1881 or 1905). 

This requirement is jurisdictional in nature.25 If it is not met, applicant normally is not 

entitled to a concurrent registration, and the trademark examining attorney in charge of 

the application should refuse registration.

21 See 37 CFR § 2.99(g); TMEP § 1207.04(b). 

22 See 37 CFR § 2.73(b), and Marc A. Bergsman, TIPS FROM THE UNITED STATES PATENT AND 

TRADEMARK OFFICE TTAB: Concurrent Use and Intent-to-Use Applications, 83 Trademark Rep. 416 (1993). 

23 See TMEP § 1207.04(b). 

24 See Section 2(d) of the Act, 15 U.S.C. § 1052(d). 

25 See Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (a valid application

cannot be filed at all without lawful use in commerce and for purposes of concurrent use proceeding, such lawful

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However, an application for concurrent registration need not meet the jurisdictional 

requirement, that is, need not assert use in commerce prior to the earliest application 

filing date of the application(s), or registration(s) (if any), involved in the proceeding if 

the owner of such application(s) or registration(s) consents to the grant of a concurrent 

registration to the applicant.26 

In addition, the jurisdictional requirement does not apply to an application seeking 

concurrent registration based on a final determination, by a court of competent 

jurisdiction, that applicant is entitled to concurrently use its mark.27 

1103.01(c) Application Must Meet Requirements Applicable to NonRestricted Application 

A concurrent use application must specify and contain all the elements required by those 

of the rules of practice in trademark cases for a non-restricted application.28 

use must begin prior to the filing date of any application with which concurrent use is sought); In re Beatrice Foods 

Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970) (applicant’s lawful use outside of conflicting claimant’s area 

is jurisdictional in nature and must begin prior to filing date by conflicting claimant; extent of such actual use in 

commerce is irrelevant so long as it is more than a token use); Morgan Services Inc. v. Morgan Linen Services Inc., 

12 USPQ2d 1841 (TTAB 1989) (assignees (excepted users) stand in the shoes of the assignor (concurrent use 

applicant) for purposes of determining jurisdictional requirement and therefore assignee's acquisition of rights 

through territorial assignment meets jurisdictional requirement); My Aching Back Inc. v. Klugman, 6 USPQ2d 1892, 

1894 (TTAB 1988) (jurisdiction requirement not met where applicant was not a lawful concurrent user since 

applicant used mark after filing date of excepted user's registration and therefore had constructive notice of use of 

same mark for same goods by another party); and Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 

882 (TTAB 1985) (jurisdictional requirement met where excepted users had no registration or application). 

 Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (where Board declined 

to institute concurrent use proceeding). 

26 See Section 2(d) of the Act, 15 U.S.C. § 1052(d). 

27 See TBMP § 1103.03 (Application Based on Court Determination) and authorities cited therein. See also In re

Home Federal Savings and Loan Association, 213 USPQ 68, 69 (TTAB 1982). 

28 See 37 CFR §§ 2.32-2.41. See DataNational Corp. v. BellSouth Corp., 18 USPQ2d 1862, 1866 (TTAB 1991), 

aff’d., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995) (before an applicant may obtain concurrent use registration,

it must first satisfy requirements which apply to any application whether restricted or unrestricted; may not obtain

concurrent use registration where designation does not function as a mark in non-territory); Gray v. Daffy Dan's 

Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (a valid application cannot be filed at all 

without lawful use in commerce and for purposes of concurrent use proceeding, such lawful use must begin prior to

the filing date of any application with which concurrent use is sought); and In re Beatrice Foods Co., 429 F.2d 466, 

166 USPQ 431, 436 (CCPA 1970) (extent of such use in commerce is irrelevant so long as it is more than a token

use). 

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1103.01(d) Application Must Identify Nature and Extent of Restriction 

Sought 

 

1103.01(d)(1) In General 

The applicant must: 

(1) State in the application the geographic area, goods and/or services, and (if 

applicable) mode of use for which applicant seeks registration of the mark.29

The statement in the application of the area, goods and/or services, and (if 

applicable) mode of use for which applicant seeks registration serves to give 

notice, both when the mark is published for opposition (assuming it is approved 

for publication) and when a concurrent use proceeding is thereafter instituted (if 

no opposition is filed, or if all oppositions filed are dismissed), of the scope of the 

registration sought by applicant, and the extent of applicant's acknowledgment of 

the concurrent rights of others.30 

1103.01(d)(2) Geographic Restrictions 

The vast majority of concurrent use applications seek a registration that is 

restricted geographically. The area for which registration is sought is usually 

more extensive than the area in which the applicant is actually using its mark. 

Generally, concurrent rights arise when a party, in good faith, and without 

knowledge of a prior party’s use in another geographic area, adopts and uses the 

same or similar mark for the same or similar goods or services within its own 

geographic area.31 If applicant believes that it is the prior user as against the other 

29 See 37 CFR § 2.42. See also Section 1(a) of the Act, 15 U.S.C. § 1051(a)(3)(D). 

30 See 37 CFR §§ 2.99(d)(1) and 2.99(d)(3); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986); and In re El 

Chico Corp., 159 USPQ 740, 741 (TTAB 1968). See also Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d

1224, 1230 (TTAB 1993) (at late stage in contested concurrent use proceeding, Board will generally not permit

concurrent use applicant to enlarge territory for which it seeks registration). 

31 See Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1726 (TTAB 1990) (actual use in a territory is 

not necessary to establish rights in that territory and depends on a number of factors). See also Gray v. Daffy Dan's 

Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1307 (Fed. Cir. 1987) (issue of likelihood of confusion was properly 

resolved by looking at the concurrent use applicant's area of actual use, not merely the area claimed in its 

application); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 829 (CCPA 1980) (mere 

knowledge of the existence of the prior user should not, in itself, constitute bad faith); In re Beatrice Foods Co., 429 

F.2d 466, 166 USPQ 431, 436 (CCPA 1970); Fleming Companies v. Thriftway Inc., 21 USPQ 1451 (TTAB 1991),

aff’d, 26 USPQ2d 1551, 1553 (S.D.Ohio 1992) (plaintiff did not use mark in expanded territory prior to defendant’s 

registration and therefore could not be “lawful” user); DataNational Corp. v. BellSouth Corp., 18 USPQ2d 1862, 

1866 (TTAB 1991), aff’d., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995); and Over the Rainbow, Ltd. v. Over the 

1100 - 591 
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CONCURRENT USE PROCEEDINGS 

 

party or parties to the proceeding, applicant may, as the prior user, seek 

registration for all of the United States except for the subsequent user's area of 

actual use and (possibly) natural expansion.32 If applicant is not the prior user, 

but believes that the prior user, through its failure to expand over a long period of 

time, has abandoned its right as prior user to expand into all of the United States 

except for the subsequent user's area of actual use and natural expansion, 

applicant may seek registration for all of the United States except for the prior 

user's area of actual use.33 If the concurrent use applicant is a subsequent user, it 

normally will seek registration not only for its area of actual use but also for its 

area of natural expansion. If another party to the proceeding owns a registration 

of its mark, the right to use of which has become incontestable, any registration 

issued to applicant will be limited (even if applicant is the prior user) to 

applicant's area of actual use prior to actual or constructive notice of registrant's

rights, unless the parties stipulate otherwise.34 

The description of the geographic area sought by the concurrent use applicant 

should be sufficiently definite. If the excepted area is less than an entire state, it 

should be described in terms of counties or in other specific and definite terms.35

Rainbow, Inc., 227 USPQ 879, 884 (TTAB 1985) (primary concern in concurrent use proceeding is the avoidance of 

likelihood of confusion; here, confusion inevitable; applicant unable to establish its entitlement to registration in

area claimed, where senior user was national franchise). 

32 See Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1229 (TTAB 1989) (as a general rule prior user is 

entitled to registration covering entire U.S. except for geographic area in which subsequent user has actually used 

the mark plus an area shown to be within the natural expansion of its business, but rule is not absolute); Ole' Taco

Inc. v. Tacos Ole, Inc., 221 USPQ 912, 916 (TTAB 1984) (later user may obtain registration for area of actual use as 

well as area of natural expansion and later user who adopts in good faith is not necessarily precluded from further

expansion after learning of senior user); and Zimmerman v. Holiday Inns of America, Inc., 123 USPQ 86 (TTAB 

1959) (acknowledged the right of the later user to operate in areas into which it had expanded after notice of the 

existence of the prior user). 

 Cf. Terrific Promotions inc. v. Vantex Inc., 36 USPQ2d 1349, 1353 (TTAB 1995) (where good faith second user

that had vigorously expanded under mark was given most of U.S.). 

33 See, for example, Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 832 (CCPA 1980), and 

Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB 1989).

34 See Sections 15 and 33(b)(5) of the Act, 15 U.S.C. §§ 1065 and 1115(b)(5); Holiday Inn v. Holiday Inns, Inc.,

534 F.2d 312, 189 USPQ 630, 633 (CCPA 1976) (court determination of rights); and Thriftimart, Inc. v. Scot Lad 

Foods, Inc., 207 USPQ 330, 334 (TTAB 1980) (agreement by parties found to obviate likelihood of confusion). 

35 See Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993) (description excepting "the San

Francisco Bay area" indefinite) and In re El Chico Corp., 159 USPQ 740, 741 (TTAB 1968) (merely stating that

there are various users in various states for similar services is insufficient). 

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1103.01(d)(3) Mode of Use Restrictions 

In very rare instances, a concurrent use applicant may seek concurrent registration 

based only on conditions or limitations as to the mode of use of its mark or as to 

the goods and/or services on or in connection with which the mark is used, i.e., a 

restriction as to the form in which it may use its mark; a limitation as to the trade 

channels in which its goods are sold; a requirement that the mark always be used 

in conjunction with a particular trade dress or house mark, or a specified 

disclaimer of affiliation; etc.36 Usually, "mode of use" cases arise before the 

Federal district courts, which, for equitable reasons, may permit a continuation of 

concurrent use even if there is some resulting confusion. Notwithstanding the 

likelihood of confusion, a party to the court proceeding may obtain concurrent 

registration on the basis of such a court determination, if its application is 

otherwise acceptable.37 In contrast, when concurrent registration is sought by 

way of a concurrent use proceeding before the Board, the Board cannot allow 

registration if it finds that there would be likelihood of confusion from the

continued concurrent use of the marks.38 

An applicant seeking registration on the basis of "mode of use" conditions or 

limitations should request concurrent registration only if its application includes a 

condition or limitation not capable of being incorporated into the applicant's 

drawing of its mark and/or identification of goods or services, and into the 

drawing and/or identification of any conflicting application or registration which 

may be owned by another.39 

Where an applicant seeks registration on the basis of "mode of use" conditions or 

limitations which are incorporated, or are capable of being incorporated, into the 

applicant's drawing of its mark and/or identification of goods or services, and into 

36 See, for example, Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976) (restrictions, 

inter alia, to form of mark and geographic area of use); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, 

Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1961) (restrictions, inter alia, to form of mark and types of goods). 

 Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587 (TTAB 1995) (request for concurrent use 

registration based on asserted dissimilarity of trade channels denied); and In re Wells Fargo & Co., 231 USPQ 95

(TTAB 1986) (court imposed geographic restriction and mode of use requirements involving, inter alia, trade dress 

and advertising). 

37 See, for example, Section 2(d) of the Act, 15 U.S.C. §1052(d); Holiday Inn v. Holiday Inns, Inc., supra 

(application presenting mark in plain typed capital letters did not violate judgment but accompanying specimen 

showing mark in prohibited script did); and Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., supra. 

38 See Section 2(d) of the Act, 15 U.S.C. § 1052(d); and Holiday Inn v. Holiday Inns, Inc., supra. 

39 See The Tamarkin Co. v. Seaway Food Town Inc., supra. 

1100 - 593 
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the drawing and/or identification of any conflicting application or registration 

which may be owned by another, a concurrent use proceeding is unnecessary and 

will not be instituted by the Board. The application should be presented as a 

regular application, not as a concurrent use application.40 If an applicant which 

has incorporated mode of use conditions or limitations into its drawing and/or 

identification is unable to obtain a registration in the absence of corresponding 

conditions or limitations in a conflicting application or registration, and the owner 

thereof is not willing to amend its application or registration to include the 

conditions or limitations, applicant's remedy lies in an opposition or a petition for 

cancellation, respectively, to restrict the application or registration 

appropriately.41 

For information concerning a claim for partial opposition or partial cancellation, 

i.e., a request to restrict, see TBMP § 309.03(d). 

1103.01(e) Application Must Identify Excepted Users and Their Asserted 

Rights 

In addition to the requirements noted above, the applicant must: 

(2) State in the application, to the extent of applicant's knowledge, the concurrent lawful 

use of the mark by others, setting forth their names and addresses; their areas of use; the 

goods and/or services on or in connection with which their use is made; the mode of their 

use; the periods of their use; and the registrations issued to or applications filed by them, 

if any.42

A concurrent use applicant must specify the extent of its knowledge of the concurrent 

rights of others.43 It is not necessary that an applicant for concurrent registration list, as 

40 See The Tamarkin Co. v. Seaway Food Town Inc., supra. 

 

41 See The Tamarkin Co. v. Seaway Food Town Inc., supra (concurrent use proceeding not instituted where only 

limitation was trade channels that could be adequately dealt with under main clause of 2(d) in ordinary ex parte or

inter partes proceeding). 

42 See 37 CFR § 2.42. 

 

43 See 37 CFR § 2.42. See also Section 1(a) of the Act, 15 U.S.C. § 1051(a); Gallagher's Restaurants Inc, v. 

Gallagher's Farms Inc., 3 USPQ2d 1864, 1866 (TTAB 1986) (motion to amend concurrent use application to add 

additional users denied where it was filed late in proceeding, existence of the users were known to applicant years 

earlier, and applicant failed to specify the marks or the goods/services allegedly used by those parties); In re Wells 

Fargo & Co., 231 USPQ 106, 116 (TTAB 1986) (concurrent use registration denied where, inter alia, applicant 

failed to specify areas of use and services of excepted user); and In re El Chico Corp., 159 USPQ 740, 741 (TTAB

1968) (merely stating that there are various users in various states for similar services is insufficient). 

1100 - 594 
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CONCURRENT USE PROCEEDINGS 

exceptions to its claim of exclusive use, every entity known to it to be using the same or 

similar mark for the same or similar goods or services. Rather, applicant's duty is to list 

any entity known to it to be a senior user of a clearly conflicting mark, as well as any 

junior user known to it to have clearly conflicting rights which are clearly established, as, 

for example, by court decree, by settlement agreement, or by a registration.44 

1103.01(f) Other Requirements 

(3) When it is determined that applicant's mark is ready for publication, applicant may 

also be required to furnish a copy of its application, specimens and drawing for each 

applicant, registrant or user specified in the application as a concurrent user.

45

The additional application copies required by 37 CFR § 2.99(b) are used by the Board, 

when it institutes a concurrent use proceeding, to provide each specified concurrent user 

with information concerning the scope of the concurrent registration sought by each 

concurrent use applicant, and the extent of each concurrent use applicant's 

acknowledgment of the concurrent rights of others.46 

When an application seeking concurrent registration by way of a concurrent use 

proceeding before the Board is approved for publication, it is marked (by the trademark 

examining attorney) with the following statement: 

SUBJECT TO CONCURRENT USE PROCEEDING 

WITH . APPLICANT CLAIMS EXCLUSIVE 

RIGHT TO USE THE MARK IN THE AREA 

COMPRISING . 

The first blank is filled in with the number(s) of the involved application(s) or 

registration(s) owned by the other party or parties to the proceeding. If any such party 

does not own an application or registration of its involved mark, then the name and 

 

44 See Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050, 1053 (Fed. Cir. 1983) (no 

requirement to investigate and report all possible users; senior user ordinarily need not identify junior users in the 

oath unless rights of a junior user have been "clearly established"), and Pennsylvania Fashion Factory, Inc. v.

Fashion Factory, Inc., 215 USPQ 1133, 1137 (TTAB 1982) (duty to investigate only known prior users; existence 

of other users came to applicant's attention after applicant began use and then only as result of computer-generated 

search report). See also In re Sun Refining & Marketing Co., 23 USPQ2d 1072, 1073 (TTAB 1991) (obligated to

amend declaration to acknowledge rights recognized by the terms of a settlement agreement). 

 Cf. SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 414 (TTAB 1975) (no duty to identify other

user where there are arguable differences between the marks). 

 

45 See 37 CFR § 2.99(b). Cf. 37 CFR § 2.99(c). 

46 See TBMP § 1106 (Commencement of Proceeding). 

1100 - 595 
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CONCURRENT USE PROCEEDINGS 

 

address of the party is inserted in the first blank space. The second blank is filled in with 

the area for which applicant seeks registration. 

 

For information concerning the examination by the trademark examining attorney of a 

concurrent use application, see TMEP §§ 1207.04(d)(i) and 1207.04(e)(i). 

1103.02 Application Based on Prior Board Decision 

An application seeking concurrent registration on the basis of the Board's final decision in a prior 

concurrent use proceeding47 must assert use in commerce of the mark sought to be registered.48 

The application must also specify and contain all the elements required by those of the rules of 

practice in trademark cases preceding 37 CFR § 2.42; and must comply with the requirements of 

37 CFR § 2.42 (described in TBMP § 1103.01)), namely, the requirements that applicant state in 

the application the area, goods and/or services, and (if applicable) mode of use for which 

applicant seeks registration, and also state, to the extent of applicant's knowledge, the concurrent 

lawful use of the mark by others, setting forth their names and addresses, their areas of use, the 

goods and/or services on or in connection with which their use is made, the mode of their use, 

the periods of their use, and the registrations issued to or applications filed by them, if any.49 In 

addition, the applicant should, of course, submit a copy of the Board decision upon which it 

relies. 

When an application for concurrent registration is based on a final determination by the Board, in 

a prior concurrent use proceeding, that applicant is entitled to a concurrent registration of its 

mark, a new concurrent use proceeding will not be instituted, that is, the application (if found 

otherwise acceptable, published, and not opposed, or opposed unsuccessfully) will be forwarded 

to issue without having to go through a new concurrent use proceeding, provided that the 

following conditions are met: 

(1) The applicant is entitled to registration subject only to the concurrent lawful use of a 

party or parties to the prior concurrent use proceeding; and 

(2) The Board's prior decision specifies applicant's right to concurrent registration; and 

(3) A copy of the Board's prior decision is submitted to the trademark examining 

attorney; and 

47 See TBMP § 1102.01 (Means of Generation). 

48 See TBMP § 1103.01(a) (Application Must Assert Use in Commerce) and authorities cited therein.

49 See 37 CFR § 2.42. 

1100 - 596 
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CONCURRENT USE PROCEEDINGS 

 

(4) The concurrent use application complies with the Board's prior decision (that is, 

seeks registration for the same or a more limited geographic area, or mode of use, and for 

substantially the same mark and substantially the same goods and/or services as, or more 

limited goods and/or services than, those listed in the Board's prior specification of 

applicant's entitlement to concurrent registration), or seeks registration for the same or a 

more limited area, or mode of use, than that accorded to applicant in the prior decision, 

and for a mark and goods and/or services less similar to those of the other party or parties 

than applicant's mark and goods and/or services in the prior proceeding;50 and 

(5) The excepted use specified in the concurrent use application does not involve a 

registration, or any involved registration has been restricted in accordance with the 

Board's prior decision. 

If an application seeking concurrent registration on the basis of the Board's determination in a 

prior concurrent use proceeding of applicant's entitlement thereto, meets all of the conditions 

specified above, a new concurrent use proceeding is unnecessary, because of the legal principles 

of res judicata and stare decisis.51 If any of the conditions is not satisfied, a new concurrent use 

proceeding will be prepared and instituted. In the event that the first four conditions are met, but 

an involved registration, through some happenstance, has not already been restricted in 

accordance with the Board's prior decision, a new concurrent use proceeding will be instituted 

solely for the purpose of restricting the involved registration in accordance with the Board's 

decision. In such cases, the Board sends out, with the notice of institution, an order to the 

registrant to show cause why its registration should not be restricted in accordance with the 

Board's prior decision. If no good cause is shown, the registration is ordered restricted, applicant 

is found entitled to the registration sought, and the concurrent use proceeding is dissolved. 

If all of the five conditions specified above are satisfied so that a new concurrent use proceeding 

is not necessary, there is no need for applicant to furnish the extra copies of its application, 

specimens and drawing referred to by 37 CFR § 2.99(b).52 When and if the application is 

approved for publication, it is marked (by the trademark examining attorney) with the following 

statement: 

50 Cf., regarding comparison of marks and goods/services in context of prior registration defense, Missouri Silver 

Pages Directory Publishing Corp. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028 (TTAB 1988); Carl Karcher 

Enterprises, Inc. v. Gold Star Chili, Inc., 222 USPQ 979 (TTAB 1983), recon. denied, 222 USPQ 727 (TTAB 

1983); and Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022 (TTAB 1983). 

51 Cf. 37 CFR § 2.99(f). 

52 Cf. TBMP § 1103.01(c)-(f) (Requirements for Concurrent Use Application). 

1100 - 597 
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CONCURRENT USE PROCEEDINGS 

REGISTRATION LIMITED TO THE AREA COMPRISING 

PURSUANT TO CONCURRENT USE PROCEEDING NO. . 

CONCURRENT REGISTRATION WITH . 

The area specified in the Board's decision as the area for which applicant is entitled to 

registration is inserted in the first blank, together with any other conditions or limitations 

imposed by the Board. The second blank is filled in with the number of the prior concurrent use 

proceeding. The third blank is filled in with the number(s) of the involved application(s) or 

registration(s) owned by the other party or parties to the prior concurrent use proceeding. If any 

such party does not own an application or registration of its involved mark, then the name and 

address of the party is inserted in the third blank space. 

If the five conditions are not all satisfied so that a new concurrent use proceeding is necessary, 

applicant normally will be required, at least if its mark is determined to be ready for publication, 

to furnish as many copies of its application, specimens and drawing as may be necessary for the 

preparation of notices for each applicant, registrant or user specified as a concurrent user in the 

application.53 When and if the application is approved for publication, it is marked (by the 

trademark examining attorney) with the following statement: 

SUBJECT TO CONCURRENT USE PROCEEDING WITH

____APPLICANT CLAIMS EXCLUSIVE RIGHT TO USE

THE MARK IN THE AREA COMPRISING . 

The first blank is filled in with the number(s) of the involved application(s) or registration(s) 

owned by the other party or parties to the proceeding. If any such party does not own an 

application or registration of its involved mark, then the name and address of the party is inserted 

in the first blank space. The second blank is filled in with the area for which applicant seeks 

registration. 

 

The Board does not determine, in a concurrent use proceeding, the right to concurrent 

registration of a party that is included in the proceeding only as a common law concurrent user, 

i.e., a party that does not own an involved application or registration.54 A party that was 

included in a prior concurrent use proceeding only as a common law concurrent user may not 

thereafter obtain a concurrent registration, on the basis of the Board's decision in the prior 

proceeding, without going through a new concurrent use proceeding. 

53 See 37 CFR § 2.99(b). 

54 See TBMP § 1108 (Issue In Concurrent Use Proceeding; Burden of Proof) and cases cited therein. 

1100 - 598 
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1103.03 Application Based on Court Determination 

An application for concurrent registration that is based on a final determination by a court of 

competent jurisdiction, must assert use in commerce of the mark sought to be registered.55 The 

application must also specify and contain all the elements required by those of the rules of 

practice in trademark cases preceding 37 CFR § 2.42; and must comply with the requirements of 

37 CFR § 2.42 (described in TBMP §§ 1103.01(c) – (f)), namely, the requirements that applicant 

state in the application the area, goods and/or services, and (if applicable) mode of use for which 

applicant seeks registration, and also state, to the extent of applicant's knowledge, the concurrent 

lawful use of the mark by others, setting forth their names and addresses, their areas of use, the 

goods and/or services on or in connection with which their use is made, the mode of their use, 

the periods of their use, and the registrations issued to or applications filed by them, if any.56 In 

addition, the applicant must, of course, submit a copy of the court decree upon which it relies. 

When an application for concurrent registration is based on a final determination by a court of 

competent jurisdiction that applicant is entitled to concurrently use its mark, a concurrent use 

proceeding will not be instituted, that is, the application (if found otherwise acceptable, 

published, and not opposed, or opposed unsuccessfully) will be forwarded to issue without 

having to go through a concurrent use proceeding, provided that all of the following conditions,

specified in 37 CFR § 2.99(f), are met: 

(1) The applicant is entitled to registration subject only to the concurrent lawful use of a 

party or parties to the court proceeding; and 

(2) The court decree specifies the rights of the parties; and 

 

(3) A true copy of the court decree is submitted to the trademark examining attorney; 

and 

(4) The concurrent use application complies fully and exactly with the court decree,57

and 

 

(5) The excepted use specified in the concurrent use application does not involve a 

registration, or, if it does, the involved registration has been restricted by the Director in 

accordance with the court decree.

55 See TBMP § 1103.01(a) (Application Must Assert Use in Commerce) and authorities cited therein.

56 See 37 CFR § 2.42. 

57 See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (application was properly 

limited geographically and as to the form of the mark, but the specimens appeared to violate the judgment), and 

Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1961). 

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CONCURRENT USE PROCEEDINGS 

If any of the five conditions specified above is not satisfied, a concurrent use registration 

proceeding will be prepared and instituted.58 If the first four conditions are met, but the Director 

in accordance with the court decree has not already restricted an involved registration, a 

concurrent use proceeding will be instituted solely for the purpose of restricting the involved 

registration in accordance with the court decree. In such cases, the Board sends out, with the 

notice of institution, an order to the registrant to show cause why its registration should not be 

restricted in accordance with the court decree. If no good cause is shown, the registration is 

ordered restricted, applicant is found entitled to the registration sought, and the concurrent use 

proceeding is dissolved.

If all of the five conditions specified above are satisfied, so that a concurrent use proceeding is 

not necessary, there is no need for applicant to furnish the extra copies of its application, 

specimens and drawing referred to by 37 CFR § 2.99(b).59 When and if the application is 

approved for publication, it is marked (by the trademark examining attorney) with the following 

statement: 

REGISTRATION LIMITED TO THE AREA COMPRISING_______ 

PURSUANT TO THE DECREE OF . CONCURRENT 

REGISTRATION WITH . 

The area granted to applicant by the court is inserted in the first blank, together with any other 

conditions or limitations imposed by the court. The second blank is filled in with the name of 

the court, proceeding number, and date of decree. The third blank is filled in with the number(s) 

of the involved application(s) or registration(s) owned by the other party or parties to the court 

proceeding. If any such party does not own an application or registration of its involved mark, 

then the name and address of the party is inserted in the third blank space. 

 

If the five conditions are not all satisfied, so that a concurrent use proceeding is necessary, 

applicant normally will be required, at least if its mark is determined to be ready for publication, 

to furnish as many copies of its application, specimens and drawing as may be necessary for the 

preparation of notices for each applicant, registrant or user specified as a concurrent user in the 

application.60 When and if the application is approved for publication, it is marked (by the 

trademark examining attorney) with the following statement: 

58 See 37 CFR § 2.99(f), and T. Jeffrey Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark 

Rep. 269 (1984). 

59 Cf. TBMP § 1103.01(c)-(f) (Requirements for Concurrent Use Application). 

60 See 37 CFR § 2.99(b). 

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CONCURRENT USE PROCEEDINGS 

SUBJECT TO CONCURRENT USE PROCEEDING

WITH . APPLICANT CLAIMS EXCLUSIVE RIGHT

TO USE THE MARK IN THE AREA COMPRISING . 

The first blank is filled in with the number(s) of the involved application(s) or registration(s) 

owned by the other party or parties to the proceeding. If any such party does not own an 

application or registration of its involved mark, then the name and address of the party is inserted 

in the first blank space. The second blank is filled in with the area for which applicant seeks 

registration. 

 

Jurisdictional requirement, and requirement that there be no likelihood of confusion need 

not be met. An application for concurrent registration on the basis of a court determination of 

applicant's right to concurrently use its mark in commerce does not need to meet the 

jurisdictional requirement of use in commerce prior to the applicable date specified in Section 

2(d) of the Act, 15 U.S.C. § 1052(d).61 Similarly, such an application is not subject to the 

requirement that the Director determine, prior to issuance of a concurrent registration, that 

confusion, mistake, or deception is not likely to result from the continued concurrent use by the 

parties of their marks. These two requirements are conditions precedent to the issuance of a 

concurrent registration by way of a concurrent use proceeding before the Board, but they are not 

conditions precedent to the issuance of a concurrent registration on the basis of a court decree. 

The sentence in Section 2(d) permitting the Director to issue concurrent registrations when a 

court of competent jurisdiction has finally determined that more than one person is entitled to use 

the same or similar marks in commerce is wholly independent of these two provisions. Thus, a 

concurrent registration may (and should, if otherwise appropriate) be issued on the basis of a 

court decree even though the application for registration does not claim use in commerce prior to 

the applicable date specified in Section 2(d), and even though there is likelihood of confusion by 

reason of the concurrent use of the marks of the parties to the court proceeding.62 

For information concerning the examination by the trademark examining attorney of a 

concurrent use application, see TMEP §§ 1207.04(d)(i). 

1104 Parties to Proceeding; Involved Applications, Registrations 

The parties to a concurrent use proceeding are the concurrent use applicant(s), and all of those 

persons listed in the concurrent use application(s) as exceptions to applicant's claim of exclusive 

use. The persons listed as exceptions may themselves own one or more Federal applications 

(either for concurrent registration, or for an unrestricted registration) or Federal registrations for 

61 For information concerning the dates specified in Section 2(d) of the Act, see TBMP § 1103.01(b). 

62 See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976), and TMEP § 1207.04(d)(i). 

Cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412 (CCPA 1961). 

1100 - 601 
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CONCURRENT USE PROCEEDINGS 

 

a conflicting mark, or may simply be common law users of a conflicting mark. Thus, a 

concurrent use proceeding may involve the concurrent use applicant(s) and one or more other 

applicants (either for concurrent registration or for unrestricted registration), and/or one or more 

registrants, and/or one or more common law concurrent users that do not own an involved 

application or registration. Often, the only parties to a concurrent use proceeding are the 

concurrent use applicant, and a common law user that does not own an involved application or 

registration.63

If, after the commencement of a concurrent use proceeding, the concurrent use applicant learns 

of another person with conflicting concurrent rights, the applicant may file a motion to amend its 

application to list that person as an additional exception to applicant's claim to exclusive use. If

the motion is granted, the person listed in the amendment will be added as a party to the 

proceeding.64 Similarly, if the concurrent use applicant learns that a person listed as an 

exception to applicant's claim of exclusive use has abandoned its mark, or if the person assigns 

its rights in its mark to the applicant, the applicant may file a motion to amend its application to 

delete reference to that person. The motion should include an explanation of the facts that serve 

as the basis for the motion. If the motion is granted, the amendment will be entered, and the 

person in question will be dropped as a party to the proceeding. 

The applications and/or registrations involved in a concurrent use proceeding include the 

concurrent use application(s); every conflicting unrestricted application which is identified in the 

concurrent use application(s) as being owned by a person listed as an exception to the concurrent 

applicant's claim of exclusive use, and which has a filing date prior to the filing date of the 

concurrent use application(s); every conflicting registration identified in the concurrent use 

application(s) as being owned by a person listed as an exception to the concurrent applicant's 

claim of exclusive use; and every registration claimed by the concurrent use applicant(s) in the 

concurrent use application(s), unless there is no conflict between the mark(s) in such 

registration(s) and the mark(s) of the other party or parties to the proceeding.65 If any identified 

application has not yet been published in the Official Gazette, or has been published but has not 

yet cleared the opposition period, the proceeding will be instituted, with the owner of that 

application being included as a common law user, rather than as an applicant. The Board may, in 

its discretion, suspend proceedings in the concurrent use proceeding until the unpublished 

application either becomes abandoned, or is published in the Official Gazette and survives the 

opposition period; and then, if the application is published and survives the opposition period, 

63 See Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305, 1308 (TTAB 1984) (two concurrent use 

applicants). 

64 See Gallagher's Restaurants Inc. v. Gallagher's Farms Inc., 3 USPQ2d 1864, 1866 (TTAB 1986) (motion to

amend concurrent use application to add additional users denied where it was filed late in proceeding, existence of

the users were known to applicant years earlier, and applicant failed to specify the marks or the goods/services 

allegedly used by those parties). 

65 See Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841, 1842 (TTAB 1989). 

1100 - 602 
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CONCURRENT USE PROCEEDINGS 

 

add it to the proceeding, and change the proceeding position of its owner from that of common 

law user to applicant.66 Further, when the Board institutes the concurrent use proceeding, inquiry 

will be made as to whether any party owns any other application or registration which is for the 

same or similar mark, and same or similar goods and/or services, and thus should be added to the 

proceeding. A conflicting application or registration identified in response to this inquiry 

normally will be added to the proceeding. 

However, if a party to the proceeding owns a conflicting application which seeks an unrestricted 

registration, and which was not filed until after the concurrent use application(s), the trademark 

examining attorney will suspend action on the subsequent unrestricted application (once the 

application is otherwise in condition for approval for publication) pending disposition of the 

concurrent use application(s).67 In the event that the concurrent use application(s) matures into 

concurrent registration(s), the concurrent registration(s) will be cited, under Section 2(d) of the 

Act, 15 U.S.C. § 1052(d), as a reference(s) against the subsequent unrestricted application.68 

Alternatively, if the owner of the subsequent unrestricted application amends it to seek 

concurrent registration, the application will be published for opposition and, if no opposition is 

filed, or if all oppositions filed are dismissed, the application will be added to the concurrent use 

proceeding, if the amendment is filed early enough so that addition to the concurrent use 

proceeding is feasible, or will be the subject of a new concurrent use proceeding, if the 

amendment is not filed early enough.69 

1105 Applications and Registrations Not Subject to Proceeding 

37 CFR § 2.73(b) An application under section 1(b) of the Act may not be amended so as to be 

treated as an application for a concurrent registration until an acceptable amendment to allege 

use under § 2.76 or statement of use under § 2.88 has been filed in the application, after which 

time such an amendment may be made, provided the application as amended satisfies the 

requirements of § 2.42. The examiner will determine whether the application, as amended, is 

acceptable. 

66 See TBMP §§ 1106 (Commencement of Proceeding). 

67 See Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1226 (TTAB 1993) (Board has no jurisdiction

over user/registrant's application that was pending before examining attorney unless application is amended to seek

concurrent use, and is published without successful opposition, and is added to the proceeding), and GeorgiaSouthern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 n.5 (TTAB 1990) (user's later filed application pending

before examining attorney is not in issue in concurrent use proceeding but if it is not amended to seek concurrent

use, applicant's concurrent use registration will be a 2(d) bar to an unrestricted registration to user). 

68 See Georgia-Southern Oil Inc. v. Richardson, supra. 

69 See Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1480 (TTAB 1998); ProCuts v. Schilz-Price Enterprises Inc., supra at 1230; and Georgia-Southern Oil Inc. v. Richardson, supra. 

1100 - 603 
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37 CFR § 2.99(g) Registrations and applications to register on the Supplemental Register and 

registrations under the Act of 1920 are not subject to concurrent use registration proceedings. 

Applications to register under section 1(b) of the Act of 1946 are subject to concurrent use 

registration proceedings only after an acceptable amendment to allege use under § 2.76 or 

statement of use under § 2.88 has been filed. 

Applications on Supplemental Register. Applications for registration on the Supplemental 

Register, registrations on the Supplemental Register, and registrations issued under the Act of 

1920 are not subject to concurrent use proceedings.70 

Applications under Section 1(b) of the Trademark Act. Applications to register under 

Section 1(b) of the Act, 15 U.S.C. § 1051(b), i.e., intent-to-use applications, are subject to 

concurrent use proceedings only after an acceptable amendment to allege use under 37 CFR § 

2.76, or an acceptable statement of use under 37 CFR § 2.88, has been filed.71 If a concurrent

use application is filed as an intent-to-use application under Section 1(b) of the Act rather than as 

a use application under Section 1(a) of the Act, 15 U.S.C. § 1051(a), the applicant may not 

amend the application to seek concurrent use until use is effected.72 

Limitations of rights as against incontestable marks. An "incontestable registration," that is, 

a registration of a mark the right to use of which has become incontestable pursuant to Section 

15 of the Act, 15 U.S.C. § 1065, is subject to a concurrent use proceeding. However, any 

registration issued to the concurrent use applicant as against the owner of an incontestable 

registration will be limited (even if applicant is the prior user) to applicant's area of actual use 

prior to actual or constructive notice of registrant's rights, unless the parties stipulate otherwise.73 

The five-year incontestability period for a registration is tolled with respect to an applicant's 

concurrent rights if, prior to expiration of the five-year period, the applicant files a proper 

concurrent use application (or an amendment converting its unrestricted application into one 

70 See Sections 26 and 46(b) of the Act of 1946, 15 U.S.C. §§ 1094 and 1051 note; 37 CFR § 2.99(g); and T. Jeffrey 

Quinn, TIPS FROM THE TTAB: The Rules Are Changing, 74 Trademark Rep. 269 (1984). 

71 See 37 CFR § 2.99(g). Cf. 37 CFR § 2.73(b), and TBMP § 1103.01(a) (Application Must Assert Use in

Commerce). 

72 See 37 CFR § 2.99(g); TMEP § 1207.04(b); and Marc A. Bergsman, TIPS FROM THE UNITED STATES 

PATENT AND TRADEMARK OFFICE TTAB: Concurrent Use and Intent-to-Use Applications, 83 Trademark Rep. 

416 (1993). 

73 See Sections 15 and 33(b)(5) of the Act, 15 U.S.C. §§ 1065 and 1115(b)(5); Holiday Inn v. Holiday Inns, Inc., 

534 F.2d 312, 189 USPT 630, 636 (CCPA 1976) (only the right to use may become incontestable, not the 

registration); and Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330 (TTAB 1980) (applicant involved in

concurrent use proceeding with registration with incontestable rights is normally only entitled to specific area in

which it has established rights prior to actual or constructive notice of the registration). 

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1106.01 Marking of Concurrent Use Application 

seeking concurrent use registration) naming the registrant as the exception to applicant's right of 

exclusive use.74

1106 Commencement of Proceeding 

When an application seeking concurrent registration by way of a concurrent use proceeding 

before the Board is approved for publication, it is marked (by the trademark examining attorney) 

with the following statement: 

SUBJECT TO CONCURRENT USE PROCEEDING WITH . 

APPLICANT CLAIMS EXCLUSIVE RIGHT TO USE THE MARK 

IN THE AREA COMPRISING ______. 

The first blank is filled in with the number(s) of the involved application(s) or registration(s) 

owned by the other party or parties to the proceeding. If any such party does not own an 

application or registration of its involved mark, then the name and address of the party is inserted 

in the first blank space. The second blank is filled in with the area for which applicant seeks 

registration. 

If an application approved for publication seeks concurrent registration on the basis of the 

Board's determination, in a prior concurrent use proceeding, of applicant's entitlement thereto, 

and meets the conditions described in TBMP § 1103.02), so that a new concurrent use 

proceeding is unnecessary, the application is marked with the following statement: 

REGISTRATION LIMITED TO THE AREA COMPRISING______ 

PURSUANT TO CONCURRENT USE PROCEEDING NO. . 

CONCURRENT REGISTRATION WITH . 

The area specified in the Board's decision as the area for which applicant is entitled to 

registration is inserted in the first blank, together with any other conditions or limitations 

imposed by the Board. The second blank is filled in with the number of the prior concurrent use 

proceeding. The third blank is filled in with the number(s) of the involved application(s) or 

registration(s) owned by the other party or parties to the prior concurrent use proceeding. If any 

such party does not own an application or registration of its involved mark, then the name and 

address of the party is inserted in the third blank space. 

 

74 See Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982).

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CONCURRENT USE PROCEEDINGS 

 

If an application approved for publication seeks concurrent registration on the basis of a court 

determination of concurrent rights, and meets the conditions of 37 CFR § 2.99(f),75 so that a 

concurrent use proceeding is unnecessary, the application is marked with the following

statement: 

REGISTRATION LIMITED TO THE AREA 

COMPRISING_________ PURSUANT TO THE DECREE 

OF_______. CONCURRENT REGISTRATION WITH ______ 

The area granted to applicant by the court is inserted in the first blank, together with any other 

conditions or limitations imposed by the court. The second blank is filled in with the name of 

the court, proceeding number, and date of decree. The third blank is filled in with the number(s) 

of the involved application(s) or registration(s) owned by the other party or parties to the court 

proceeding. If any such party does not own an application or registration of its involved mark, 

then the name and address of the party is inserted in the third blank space. 

1106.02 Publication of Concurrent Use Application; Opposition Period 

The application is then published, with the indicated statement, in the Official Gazette for 

opposition. If the application seeks concurrent registration on the basis of a court decree, meets 

the requirements of 37 CFR § 2.99(f), and is not opposed, or all oppositions filed are dismissed, 

the application goes to issue without a concurrent use proceeding.76 Similarly, if the application 

seeks concurrent registration on the basis of the Board's determination, in a prior concurrent use 

proceeding, of applicant's entitlement thereto, meets the conditions described in TBMP § 

1103.02, and is not opposed, or all oppositions filed are dismissed, the application goes to issue 

without a new concurrent use proceeding.77 

If the application seeks concurrent registration by way of a concurrent use proceeding before the 

Board, and is not opposed, or all oppositions filed are dismissed, a concurrent use proceeding is 

instituted.78 Similarly, if the application seeks concurrent registration on the basis of a court 

decree but does not meet the requirements of 37 CFR § 2.99(f), or seeks concurrent registration 

on the basis of the Board's decision in a prior concurrent use proceeding but does not meet the 

75 See TBMP § 1103.03 (Application Based on Court Determination). 

76 See 37 CFR § 2.99(f), and TBMP § 1103.03. 

77 See TBMP § 1103.02 (Application Based on Prior Board Decision). Cf. 37 CFR § 2.99(f), and TBMP § 1103.03 

(Application Based on Court Determination). 

78 See 37 CFR § 2.99(c). 

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conditions described in TBMP § 1103.02, and the application is not opposed, or all oppositions 

filed are dismissed, a concurrent use proceeding is instituted.79 

After the opposition period has expired, and no opposition is filed, or all oppositions filed are 

dismissed, the file of a concurrent use application that must go through a concurrent use 

proceeding before the Board is forwarded to the Board for institution of the proceeding. There is

no fee for the institution of a concurrent use proceeding. 

1106.03 Obtaining Included Application and Registration Files 

The Board obtains the files of all of the other applications and registrations, if any, to be included 

in the proceeding. If any such application has not yet been published in the Official Gazette, or 

has been published but has not yet cleared the opposition period, the proceeding will be 

instituted, with the owner of that application being included as a common law user, rather than as 

an applicant. The Board may, in its discretion, suspend proceedings in the concurrent use 

proceeding until the unpublished application either becomes abandoned, or is published in the 

Official Gazette and survives the opposition period; and then, if the application is published and 

survives the opposition period, add it to the proceeding, and change the proceeding position of its 

owner from that of common law user to applicant.80 

1106.04 Preparing Concurrent Use Notices 

There is no complaint in a concurrent use proceeding.81 When the Board has obtained the files 

of all other applications and registrations, if any, to be included in the proceeding, the Board 

prepares a notice for each party advising the party that the concurrent use proceeding is thereby 

instituted; supplying information concerning the filing of an "answer" to the notice and 

specifying a due date therefor;82 setting discovery, trial and briefing periods;83 and allowing the 

party until a specified time to advise the Board of any relevant, but as yet uninvolved,

application(s) and/or registration(s), which should be included in the proceeding. The notice to 

each party listed as an exception to a concurrent use applicant's claim of exclusive use also 

specifies the name and address of the concurrent use applicant and the concurrent use applicant's 

79 See 37 CFR §§ 2.99(c) and 2.99(f), and TBMP §§ 1103.02 and 1103.03. 

80 Cf. TBMP §§ 1104 (Parties to Proceeding; Involved Applications, Registrations) and 1108 (Issue in Concurrent 

Use Proceeding; Burden of Proof). 

81 Cf. TBMP § 1003 (Institution of Interference). 

 

82 For information concerning the "answer" in a concurrent use proceeding, see TBMP § 1107 (Answer; Default). 

83 See TBMP § 1109 (Conduct of Proceeding). 

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attorney or other authorized representative, if any, together with the concurrent use applicant's 

mark, goods and/or services, application filing date and serial number, and claimed territory;

84

the name and address of any other involved applicant or registrant; the name and address of any 

other involved applicant's attorney or other authorized representative, if any; the mark, goods 

and/or services, application filing date, application serial number, and claimed territory of any 

other involved applicant, as reflected in its involved application (if the application is unrestricted, 

the claimed territory will be described in the notice as "The entire United States"); the mark, 

goods and/or services, registration filing and issue date, registration number, and claimed 

territory of any other involved registrant, as reflected in its involved registration; and the name

and address of any other involved party which is simply a common law concurrent user, i.e., 

does not own an involved application or registration of its mark. 

The notices are sent to each involved applicant, in care of the applicant's attorney or other 

authorized representative, if any; to any involved user; and to any involved registrant. If an 

applicant is not represented by an attorney but the applicant has appointed a domestic 

representative, the Board will send the notice to the domestic representative unless the applicant 

has designated in writing another correspondence address.85 In the case of an involved 

registration, the notice is sent to the registrant itself, or to the registrant's domestic representative 

if one is appointed, even if there is an attorney or other authorized representative of record in the 

application file after the mark has registered.86 A copy of each concurrent use applicant's 

involved application(s) is forwarded with the notice to each party specified in the concurrent use 

application as an exception to applicant's claim of exclusive use.87 

The concurrent use proceeding commences when the Board sends the notices to the parties.88 

1106.05 Locating Excepted Users 

It is the responsibility of the concurrent use applicant, which has the burden of proving its 

entitlement to concurrent registration, to provide information concerning the current address of 

each specified excepted user, as well as information concerning each user's use of its particular 

mark in its particular area or mode of use.89 The address used by the Board in mailing the notice 

84 See 37 CFR § 2.99(c).

85 Cf. 37 CFR § 2.105(c) and 37 CFR § 2.119(d). 

86 See 37 CFR § 2.113(c). 

 

87 See 37 CFR § 2.99(d)(1).

88 Cf. 37 CFR § 2.93. 

89 See 37 CFR §§ 2.42 and 2.99(e). See also TBMP §§ 1103.01(c)-(f) (Requirements for Concurrent Use 

Application) and 1108 (Issue in Concurrent Use Proceeding). 

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to a specified excepted user is the address provided by the concurrent use applicant in its 

application, unless the user itself owns an involved application or registration which includes an 

address more current than the one provided by the concurrent use applicant. 

If a notice or other communication sent by the Board to a specified excepted user is returned as 

undeliverable, the concurrent use applicant will be required to investigate further and furnish the 

correct address. Unless and until the concurrent use applicant does so, the proceeding cannot go 

forward. Alternatively, if, upon further investigation, the concurrent use applicant learns that a 

specified excepted user has abandoned its use of its mark, the concurrent use applicant may file a 

motion to amend its application to delete reference to that user.90 

If the owner of a registration is listed as an excepted user and the concurrent use applicant is 

unable, after reasonable investigation, to locate the registrant, applicant may file a petition to 

cancel the registration owned by the user on the ground of abandonment. The concurrent use 

proceeding would be suspended pending the outcome of the petition to cancel. Once a petition 

to cancel is filed, it is the responsibility of the Board to attempt to locate the registrant. If the 

Board is unable to do so, notice of the filing of the petition to cancel will be published in the 

Official Gazette. If the registrant fails to appear within the thirty-day period of time allowed by 

the notice, default judgment will be entered against the registrant and the petition to cancel will 

be granted. In the event the petition is granted, applicant may file a motion to amend its 

application to delete reference to registrant as the exception to applicant's exclusive right to use 

the mark in commerce, and to seek a geographically unrestricted registration of the mark. 

1107 Answer; Default 

There is no complaint in a concurrent use proceeding.91 Instead, there is a notice which informs 

the parties to the proceeding of the institution thereof, supplies information concerning the filing

of an "answer" to the notice, and specifies a due date therefor. In addition, the notice, (including 

the copy of each involved concurrent use application, which is sent with the notice to every 

person specified in the application) takes the place of a complaint to the extent that it informs 

every specified person of the scope of the concurrent registration sought by each concurrent use 

applicant, and the extent of each concurrent use applicant's acknowledgment of the concurrent

rights of others--i.e., the essence of what each concurrent use applicant intends to prove at trial.92 

90 See TBMP § 1104 (Parties to Proceeding). 

91 Cf. TBMP § 1003 (Institution of Interference). 

92 See TBMP §§ 1103.01(c)-(f) (Requirements) and 1106 (Commencement of Proceeding). 

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The "answer" in a concurrent use proceeding is a response to the notice. In the "answer," the 

answering party sets forth its position with respect to the registration(s) sought by the concurrent 

use applicant(s).93 

An answer to the notice is not required of an applicant or registrant whose application or 

registration is involved in the proceeding,94 but such a party may file an answer if it so desires. 

Any other party specified as a concurrent user in an involved concurrent use application must file 

an answer to avoid default. Any answer filed must be filed within 40 days after the mailing date 

of the notice, or within an extension of time for the purpose. 95 

If a party that is required, under 37 CFR § 2.99(d)(2), to file an answer fails to do so, judgment 

will be entered against that party precluding the party from claiming any right more extensive 

than that acknowledged in the involved concurrent use application(s). However, each concurrent 

use applicant still will have the burden of proving its entitlement to the registration(s) sought as 

against every party specified in its application(s), including any party against which default 

judgment for failure to answer has been entered. That is, the concurrent use applicant still will 

have to prove that there will be no likelihood of confusion by reason of the concurrent use by the 

parties of their respective marks, and, where necessary,96 that the parties have become entitled to 

use their marks as a result of their concurrent lawful use in commerce prior to the applicable date 

specified in Section 2(d) of the Act, 15 U.S.C. § 1052(d) [usually, this means use in commerce 

prior to the earliest application filing date of the application(s), or 1946 Act registration(s) (if 

any), involved in the proceeding (or prior to July 5, 1947, in the case of an involved registration 

under the Acts of 1881 or 1905)].97 Moreover, if, after the entry of default judgment against a 

party for failure to answer, the concurrent use applicant seeks to amend its application to narrow 

93 See, for example, Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993); Fleming Companies 

v. Thriftway Inc., 21 USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992); Georgia-Southern Oil

Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990); Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305

(TTAB 1984); Ole' Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912 (TTAB 1984); T. Jeffrey Quinn, TIPS FROM THE 

TTAB: The Rules Are Changing, 74 Trademark Rep. 269 (1984); and Janet E. Rice, TIPS FROM THE TTAB: 

Concurrent Use Applications and Proceedings, 72 Trademark Rep. 403 (1982). 

94 For information concerning which applications and registrations are involved in a concurrent use proceeding, 

see TBMP § 1104.

95 See also 37 CFR § 2.99(d)(2); TBMP §§ 501(Stipulations) and 509 (Motion to Extend Time; Motion to Reopen

Time); Newsday, Inc. v. Paddock Publications, Inc., supra, and T. Jeffrey Quinn, TIPS FROM THE TTAB: The

Rules Are Changing, supra. Cf. TBMP § 316 (Motions Relating to Pleadings). 

96 See TBMP § 1103.01(b) (Jurisdictional Requirement). 

97 See 37 CFR § 2.99(d)(3). See also Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993); 

Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987); Newsday, Inc. v. Paddock 

Publications, Inc., 223 USPQ 1305 (TTAB 1984); and T. Jeffrey Quinn, TIPS FROM THE TTAB: The Rules Are 

Changing, 74 Trademark Rep. 269 (1984). 

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the extent of the concurrent rights conceded therein to the defaulting party, the defaulting party 

will be allowed an opportunity to object thereto. If the amendment is permitted, the defaulting 

party will be allowed to contest the registration sought by the applicant, to the extent that the 

applicant claims a greater right, as against the defaulting party, than that previously claimed. 

When default judgment for failure to file an answer is entered against a party to a concurrent use 

proceeding, the Board does not continue to send to that party copies of all of the communications 

issued by the Board in the proceeding, nor do the other parties to the proceeding need to continue

serving on the defaulting party copies of all papers which they file in the proceeding. However, 

a copy of the Board's final decision in the case is mailed to the defaulting party. Moreover, any 

request by the concurrent use applicant to amend its application to narrow the extent of the 

concurrent rights conceded therein to the defaulting party must be served upon that party. If the 

amendment is permitted, the Board will send a copy of its action on the request, and copies of all 

further communications issued by the Board in the proceeding, to the defaulting party. 

Similarly, after approval of such an amendment, copies of all further papers filed by the other 

parties to the proceeding should be served on the defaulting party. 

If a concurrent use proceeding involves only a concurrent use applicant and one or more 

specified common law concurrent users which do not have an involved application or 

registration, and default judgment for failure to answer is entered against every specified user, or 

applicant has entered into a persuasive settlement agreement with every party against which 

default judgment has not been entered, applicant may prove its entitlement to registration as 

against the defaulting users by an "ex parte" type of showing. That is, applicant may prove its 

entitlement to registration by less formal procedures (such as by the submission of affidavit 

evidence) than those (such as depositions upon oral examination) normally required for the 

introduction of evidence in an inter partes proceeding.98 In such a case, the Board, instead of 

setting formal trial dates, simply allows the concurrent use applicant time (usually 60 days) in 

which to submit proof of its entitlement to registration.99 

1108 Issue in Concurrent Use Proceeding; Burden of Proof 

37 CFR § 2.99(e) The applicant for a concurrent use registration has the burden of proving 

entitlement thereto. If there are two or more applications for concurrent use registration 

involved in a proceeding, the party whose application has the latest filing date is the junior 

party. A party whose application has a filing date between the filing dates of the earliest 

involved application and the latest involved application is a junior party to every party whose 

98 See Precision Tune Inc. v. Precision Auto-Tune Inc., supra. See also Fleming Companies v. Thriftway Inc., 21

USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992). 

99 For an example of proof of entitlement to concurrent registration in such a situation, see Precision Tune Inc. v. 

Precision Auto-Tune Inc., supra. 

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involved application has an earlier filing date. If any applications have the same filing date, the 

application with the latest date of execution will be deemed to have the latest filing date and that 

applicant will be the junior party. A person specified as an excepted user in a concurrent use 

application but who has not filed an application shall be considered a party senior to every party 

that has an application involved in the proceeding. 

37 CFR § 2.116(b) ... A party that is a junior party in an interference proceeding or in a 

concurrent use registration proceeding shall be in the position of plaintiff against every party 

that is senior, and the party that is a senior party in an interference proceeding or in a 

concurrent use registration proceeding shall be a defendant against every party that is junior. 

The issue to be determined in a concurrent use proceeding is the entitlement of the concurrent

use applicant(s) to the registration(s) sought, and the extent, if any, to which every other involved 

application or registration should be restricted as a result thereof. The Board does not determine 

the right to registration of a party that is included in the proceeding only as a common law 

concurrent user, i.e., a party that does not own an involved application or registration (for 

information concerning the parties to a concurrent use proceeding, and the applications and 

registrations involved therein.100 

Each applicant for concurrent registration has the burden of proving its entitlement thereto as 

against every other party specified in its application as an exception to its claim of exclusive 

right to use. That is, a concurrent use applicant must prove that there will be no likelihood of 

confusion by reason of the concurrent use by the parties of their respective marks, and, where 

necessary,101 that the parties have become entitled to use their marks as a result of their

concurrent lawful use in commerce prior to the applicable date specified in Section 2(d) of the 

Act, 15 U.S.C. § 1052(d) [usually, this means use in commerce prior to the earliest application 

filing date of the application(s), or 1946 Act registration(s) (if any), involved in the proceeding 

(or prior to July 5, 1947, in the case of an involved registration under the Acts of 1881 or 

1905)].102

100 See TBMP § 1104 (Parties to Proceeding). See also Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349 

(TTAB 1995); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993); Fleming Companies v. 

Thriftway Inc., 21 USPQ2d 1451 (TTAB 1991), aff'd, 26 USPQ2d 1551 (S.D.Ohio 1992); and Georgia-Southern Oil

Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990). 

101 See TBMP § 1103.01(b) (Jurisdictional Requirement). 

102 See, for example, Section 2(d) of the Act, 15 U.S.C. § 1052(d); 37 CFR § 2.99(e); Gray v. Daffy Dan's 

Bargaintown, 823 F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987); Fleming Companies v. Thriftway Inc., supra (party is 

entitled to concurrent use registration for a given territory only if the party actually used the mark in that territory 

prior to registration by the other party; plaintiff did not use mark in expanded territory prior to defendant’s 

registration and therefore could not be “lawful” user); Terrific Promotions Inc. v. Vantex Inc., supra (good faith 

second user that has vigorously expanded under mark given most of U.S.); Pro-Cuts v. Schilz-Price Enterprises Inc., 

27 USPQ2d 1224 (TTAB 1993); Georgia-Southern Oil Inc. v. Richardson, supra (actual use in a territory is not 

necessary to establish rights in that territory and depends on a number of factors); Over the Rainbow, Ltd. v. Over 

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Any other party may attempt to prove any ground for refusal of registration which might be 

asserted with respect to an application for an unrestricted registration, as well as other matters, 

such as, that the concurrent use applicant is entitled to a concurrent registration covering only 

some of the area specified in its application; that the concurrent use applicant is not entitled to 

registration at all because it is a bad faith junior user; that applicant does not meet the 

jurisdictional requirement of use of its involved mark prior to the applicable date specified in 

Section 2(d) of the Act (see TBMP § 1103.01(b)); that applicant's use of its mark is unlawful; 

etc.103

In a concurrent use proceeding, a junior party stands in the position of plaintiff, and a senior 

party stands in the position of defendant.104 When there are two or more concurrent use 

applications involved in a concurrent use proceeding, the party whose application has the latest 

filing date is the junior party. A party whose application has a filing date between the filing 

dates of the earliest involved application and the latest involved application is a junior party to 

every party whose involved application has an earlier filing date. If any applications have the 

same filing date, the application with the latest date of execution will be deemed to have the 

latest filing date, and that applicant will be the junior party. A party which is specified in an 

involved concurrent use application as an excepted user, but which does not have an involved 

the Rainbow, Inc., 227 USPQ 879, 884 (TTAB 1985) (primary concern in concurrent use proceeding is the 

avoidance of likelihood of confusion; applicant unable to establish its entitlement to registration in area claimed

where senior user was national franchise); Faces, Inc. v. Face's, Inc., 222 USPQ 918 (TTAB 1983); Ole' Taco Inc. 

v. Tacos Ole, Inc., 221 USPQ 912 (TTAB 1984); Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 

1977); Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351 (TTAB 1974); Janet E. Rice, TIPS FROM THE TTAB: 

Concurrent Use Applications and Proceedings, 72 Trademark Rep. 403 (1982); and Rany L. Simms, TIPS FROM

THE TTAB: The Concurrent User as Opposer, 67 Trademark Rep. 654 (1977). See also TBMP § 1103.01(d)(2)

(Geographic Restrictions).

103 See. DataNational Corp v. Bell South Corp., 18 USPQ2d 1862 (TTAB 1991), aff’d, 60 F.3d 1565, 35 USPQ2d

1554, 1557-59 (Fed. Cir. 1995) (the term "use" means use as a trademark; a concurrent use applicant may claim less 

than the entire country as the place of use but only when there is actual or potential concurrent use of the mark by 

another lawful user that is not likely to cause confusion, and where mark is generic in the non-claimed area, there 

can be no lawful user in the non-claimed area); Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480

(Fed. Cir. 1990) (allegation of bad faith adoption and use of mark in U.S. subsequent to user's adoption in foreign

country); Gray v. Daffy Dan's Bargaintown, supra at 1308 (a valid application cannot be filed at all without lawful

use in commerce and for purposes of claim of concurrent rights, such lawful use must begin prior to the filing date 

of any application with which concurrent use is sought); Fleming Companies v. Thriftway Inc., supra (junior user

was not lawful user in that it did not lawfully use the mark in expanded territory prior to defendant's registration); 

Women's World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1988 (TTAB 1988) (plaintiff's use, albeit 

geographically remote, was not lawful because plaintiff had actual knowledge of defendant's prior use); PaganLewis Motors, Inc. v. Superior Pontiac, Inc., 216 USPQ 897, 899 (TTAB 1982) (applicant's first use was neither

innocent nor in good faith since applicant had constructive notice of user's mark); and Janet E. Rice, TIPS FROM

THE TTAB: Concurrent Use Applications and Proceedings, supra; and Rany L. Simms, TIPS FROM THE TTAB: 

The Concurrent User as Opposer, supra. 

104 See 37 CFR § 2.116(b). 

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application, shall be considered a party senior to every party that has an application involved in 

the proceeding.105 

1109 Conduct of Proceeding 

Once commenced,106 a concurrent use proceeding is conducted in the same general manner as an 

opposition or cancellation proceeding, except that, inter alia, there is no complaint (see TBMP § 

1106.04 and 1107), and thus no motions relating to the complaint; the "answer" is not an answer 

in the usual sense of the word, and is not always required;107 if an answer, when required, is not 

filed, default judgment is entered against the non-answering party, precluding that party from

claiming any right more extensive than that acknowledged in the involved concurrent use 

application(s), but each concurrent use applicant will still have the burden of proving its 

entitlement to the registration(s) sought;108 the issue is the entitlement of the concurrent use 

applicant(s) to the registration(s) sought, and the extent, if any, to which every other involved 

application or registration should be restricted as a result thereof;109 the order in which the parties 

offer evidence depends upon whether or not they own an involved application or registration, 

and, if two or more parties own an involved concurrent use application, the filing dates of such 

applications;

110 and in certain cases, where default judgment is entered for failure to answer, a 

concurrent use applicant may be permitted to prove its entitlement to registration by less formal 

procedures than those normally required for the introduction of evidence in an inter partes 

proceeding.111 

In addition, the trial and briefing schedule in a concurrent use proceeding involving three or 

more parties differs, because of the multiplicity of parties, from that in an opposition or 

cancellation proceeding. Along with the concurrent use notice, the Board sends out an order 

setting trial and briefing dates in the case. Specifically, the Board sets the opening and closing 

date for discovery, and schedules testimony periods so that each party in the position of plaintiff 

will have a period for presenting its case in chief against each party in the position of defendant, 

each party in the position of defendant will have a period for presenting its case and meeting the 

105 See 37 CFR § 2.99(e). See also Janet E. Rice, TIPS FROM THE TTAB: Concurrent Use Applications and 

Proceedings, 72 Trademark Rep. 403 (1982).

106 See TBMP § 1106 (Commencement of Proceeding). 

107 See TBMP § 1107 (Answer; Default). 

108 See TBMP § 1107. 

109 See TBMP § 1108 (Issue in Concurrent Use Proceeding; Burden of Proof). 

110 See TBMP § 1108. 

111 See TBMP § 1107. 

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case of each plaintiff, and each party in the position of plaintiff will have a period for presenting 

evidence in rebuttal.112 The testimony periods are separated from the discovery period and from

each other by 60-day intervals. Similarly, the Board schedules briefing periods so that each 

party in the position of plaintiff will have a period for filing a main brief on the case, each party 

in the position of defendant will have a period for filing a main brief and meeting the main brief 

of each plaintiff, and each party in the position of plaintiff will have a period for filing a reply 

brief.113 

Set forth below is a sample trial and briefing schedule for a concurrent use proceeding involving 

parties A, B, C, D, and E, where A, B, C, and D are all concurrent use applicants, A's application 

has the latest filing date, B's application has the next-latest filing date, C's application has the 

next-latest filing date, D's application has the earliest filing date, and E is a specified concurrent

user which does not own an involved application or registration (the trial and briefing schedule 

would look the same if E were a concurrent use applicant whose application had the earliest 

filing date, or if E owned an involved registration): 

MAILING DATE 1/1/2003 

DISCOVERY PERIOD TO OPEN 1/21/2003 

DISCOVERY PERIOD TO CLOSE 7/20/2003 

30-DAY TESTIMONY PERIOD FOR A 

to close 10/18/2003 

30-DAY TESTIMONY PERIOD FOR B 

to close 12/17/2003 

30-DAY TESTIMONY PERIOD FOR C 

to close 2/15/2004 

30-DAY TESTIMONY PERIOD FOR D 

to close 4/15/2004 

30-DAY TESTIMONY PERIOD FOR E 

to close 6/14/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR A 

to close 7/29/2004 

112 See 37 CFR § 2.121(b)(2). See also TBMP § 701 (Time of Trial). 

113 See TBMP § 801.02(e) (Special Situations – Time for Filing). 

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1/21/2003 

15-DAY REBUTTAL TESTIMONY PERIOD FOR B 

to close 9/12/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR C 

to close 10/27/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR D 

to close 12/11/2004 

BRIEFS ON FINAL HEARING (37 CFR 2.128) 

shall become due as follows:

BRIEF FOR A is due 2/9/2005 

BRIEF FOR B is due 3/11/2005 

BRIEF FOR C is due 4/10/2005 

BRIEF FOR D is due 5/10/2005 

BRIEF FOR E is due 6/9/2005 

REPLY BRIEFS, if any, shall be due as follows: 

REPLY BRIEF FOR A is due 7/9/2005 

REPLY BRIEF FOR B is due 7/24/2005 

REPLY BRIEF FOR C is due 8/8/2005 

REPLY BRIEF FOR D is due 8/23/2005 

Set forth below is another sample trial and briefing schedule for a concurrent use proceeding 

involving parties X, Y, and Z, where X is a concurrent use applicant, Y owns a registration 

which is involved in the proceeding, and Z is a specified concurrent user which does not own an 

involved application or registration: 

MAILING DATE 1/1/2003 

DISCOVERY PERIOD TO OPEN 

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6/29/2004 

 

DISCOVERY PERIOD TO CLOSE 7/20/2003 

30-DAY TESTIMONY PERIOD FOR X 

to close 10/18/2003 

30-DAY TESTIMONY PERIOD FOR Y 

to close 12/17/2003 

30-DAY TESTIMONY PERIOD FOR Z 

to close 2/15/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR X 

to close 3/31/2004 

BRIEFS ON FINAL HEARING (37 CFR 2.128) 

shall become due as follows:

BRIEF FOR X is due 5/30/2004 

BRIEF FOR Y is due 

BRIEF FOR Z is due 7/29/2004 

REPLY BRIEFS, if any, shall be due as follows: 

REPLY BRIEF FOR X is due 8/13/2004 

The trial and briefing schedule set forth immediately above would look the same if Y and Z were 

both specified concurrent users that did not own an involved application or registration. If X, Y, 

and Z were all concurrent use applicants, there would be a separate testimony period for each 

party, and X and Y would each have a separate rebuttal testimony period; each party would also 

be allowed time to file a brief on the case, but only X and Y would be allowed time in which to 

file a reply brief. 

With the exceptions noted above, the practices and procedures for taking discovery, filing 

motions, introducing evidence, briefing the case, presenting oral arguments at final hearing, and 

seeking review of a decision of the Board, are essentially the same in a concurrent use 

proceeding as in an opposition or cancellation proceeding. 

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1110 Settlement Providing for Concurrent Registration 

Most concurrent use proceedings before the Board are not litigated to final decision on the 

merits, but rather are settled on the basis of an agreement between the parties which provides for 

the issuance to the concurrent use applicant(s) of the concurrent registration(s) sought. Such an 

agreement is usually filed by the concurrent use applicant(s) together with a request for issuance 

of the concurrent registration(s) sought. 

The Board will not enter judgment on behalf of the concurrent use applicant(s), and find such 

applicant(s) entitled to concurrent registration, on the basis of a settlement agreement, unless the 

terms of the agreement are sufficient to persuade the Board that confusion, mistake, or deception 

is not likely to result from the continued concurrent use by the parties of their marks.114 

If a settlement agreement does not include every party to the proceeding, each concurrent use 

applicant still will have the burden of proving its entitlement to registration as against every 

party to the proceeding that is not also a party to the agreement, even if a default judgment for 

failure to answer has been entered against a non-included party.115

1111 Effect of Abandonment of Involved Application 

For information concerning the effect of the abandonment of an application that is a subject of a 

concurrent use proceeding, see TBMP § 603.

114 See Section 2(d) of the Act, 15 U.S.C. § 1052(d); Meijer, Inc. v. Purple Cow Pancake House, 226 USPQ 280, 

282 (TTAB 1985) (initial agreement deficient in view of, inter alia, provision allowing for "spill over" advertising); 

Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351, 352 (TTAB 1974) (mere naked agreement wherein parties 

have not delineated measures taken to preclude likelihood of confusion is not persuasive); and Janet E. Rice, TIPS

FROM THE TTAB: Concurrent Use Applications and Proceedings, 72 Trademark Rep. 403 (1982). 

 For information concerning settlement agreements offered in a concurrent use proceeding as a basis for the 

issuance of the concurrent registration(s) sought, see Amalgamated Bank of New York v. Amalgamated Trust &

Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988) (agreements to be given "substantial weight");

In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 438 (CCPA 1970) (agreements should be given "serious 

consideration"); Meijer, Inc. v. Purple Cow Pancake House, supra; Handy Spot Inc. v. J. D. Williams Co., supra; 

and Janet E. Rice, TIPS FROM THE TTAB: Concurrent Use Applications and Proceedings, supra. Cf. Houlihan v. 

Parliament Import Co., 921 F.2d 1258, 17 USPQ2d 1208, 1212 (Fed. Cir. 1990) (agreements entitled to "great 

weight"; although the agreement did not contain explicit provisions designed to avoid confusion or explicit

statement that concurrent use of the marks would not cause confusion, the provisions in the agreement reflected 

recognition by parties that concurrent use by marks in their respective, albeit in contiguous geographic areas, would

not cause likelihood of confusion). 

115 See Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987) (ex parte type showing

permitted). 

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1112 Effect of Adverse Decision in Opposition or Cancellation 

A party which receives an adverse decision, in an opposition, cancellation, or interference 

proceeding, on the issue of priority of use is not precluded thereby from seeking concurrent 

registration, unless its first use in commerce was subsequent to the earliest application filing date 

of any conflicting application or registration owned by another party to the opposition, 

cancellation, or interference proceeding; that other party does not consent to the grant of a 

concurrent registration to the applicant; and concurrent registration is sought by way of a 

concurrent use proceeding before the Board.116 

1113 "Conversion" of Opposition or Cancellation Proceeding to Concurrent 

Use Proceeding 

1113.01 Conversion of Opposition Proceeding 

In certain situations, an opposition proceeding may be "converted" into a concurrent use 

proceeding. In these cases, the opposition proceeding is not actually transformed into a 

concurrent use proceeding. Rather, the opposition is terminated, usually by dismissal without 

prejudice, in favor of the concurrent use proceeding. The concurrent use proceeding, in turn, is 

instituted immediately. In fact, notice of the institution of the concurrent use proceeding is 

normally included in the decision terminating the opposition proceeding.117 

An opposition may be terminated in favor of a concurrent use proceeding in the situations 

described below: 

(1) When an opposition to a concurrent use application is filed by a party 

specified in the application as an exception to applicant's claim of exclusive use, 

the opposition may be dismissed without prejudice in favor of a concurrent use 

116 See Section 2(d) of the Act, 15 U.S.C. § 1052(d); U.S. Soil, Inc. v. Colovic, 214 USPQ 471 (TTAB 1982) 

(opposition cannot proceed where it has been established through prior litigation that applicant has superior rights, 

and where opposer only alleges that it has rights in certain geographic areas); Home Federal Savings & Loan Ass'n 

v. Home Federal Savings & Loan Ass'n of Chicago, 205 USPQ 467 (TTAB 1979); Cook's Pest Control, Inc. v.

Sanitas Pest Control Corp., 197 USPQ 265 (TTAB 1977); and Chichi's, Inc. v. Chi-Chi's, Inc., 222 USPQ 831

(Comm'r 1984) (a decision in the cancellation proceeding adverse to respondent would not preclude respondent

from filing a new application seeking concurrent registration with petitioner). For information concerning the 

jurisdictional requirement of Section 2(d) of the Act, see TBMP § 1103.01(b). 

117 See Janet E. Rice, TIPS FROM THE TTAB: Newest TTAB Rule Changes; More Tips on Concurrent Use 

Proceedings, 76 Trademark Rep. 252 (1986). Cf. 37 CFR § 2.99(c) (in effect providing, inter alia, that when a 

concurrent use application has been published in the Official Gazette for opposition, a concurrent use proceeding 

will not be instituted unless no opposition is filed, or unless all oppositions that are filed are dismissed). 

1100 - 619 
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proceeding.118 This action may be taken by the Board upon its own initiative, or 

upon motion. 

(2) When an opposition to a concurrent use application is filed by a party which 

is not specified in the application as an exception to applicant's claim of exclusive 

use, the Board may grant a motion to dismiss the opposition without prejudice in 

favor of a concurrent use proceeding if opposer files an application for concurrent

registration, naming applicant as an exception to its claim of exclusive use. 

However, the opposition will not be dismissed, and the concurrent use proceeding 

instituted, unless opposer's concurrent use application is published in the Official 

Gazette for opposition, and no opposition is filed, or all oppositions filed are 

dismissed. 

 

(3) When an opposition to a concurrent use application is filed by a party which 

is not specified in the application as an exception to applicant's claim of exclusive 

use, the Board may grant a motion to dismiss the opposition without prejudice in 

favor of a concurrent use proceeding if applicant amends its application to specify 

the opposer as an additional exception to its claim of exclusive use. 

(4) When an opposition is filed against an application for an unrestricted 

registration, the applicant may file a motion to amend its application to one for 

concurrent registration, reciting opposer as an exception to applicant's claim of 

exclusive use, together with a motion to terminate the opposition in favor of a 

concurrent use proceeding. If opposer consents to the amendment, the opposition 

will be dismissed without prejudice, and the concurrent use proceeding will be 

instituted. If opposer does not consent to the amendment, but applicant consents 

to entry of judgment against itself with respect to its right to an unrestricted 

registration, judgment will be entered against applicant, in the opposition, with 

respect to applicant's right to an unrestricted registration; the amendment will be 

approved; and a concurrent use proceeding involving the amended application 

will be instituted, all in one Board action.119

118 See Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 1977) (applicant's motion to dismiss 

opposition and institute concurrent use granted; party named as exception filed opposition against concurrent use 

application; by setting forth opposer as exception to applicant's exclusive right to use, applicant has, in effect, 

admitted that it is not entitled to unrestricted registration). 

119 See Terrific Promotions Inc. v. Vanlex Inc., 36 USPQ2d 1349, 1350 (TTAB 1995) (opposer objected to 

amendment; judgment entered; concurrent use proceeding instituted); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 

USPQ2d 1224 (TTAB 1993); Faces, Inc. v. Face's, Inc., 222 USPQ 918, 920 (TTAB 1983) (applicant accepted 

judgment in opposition; concurrent use proceeding instituted); Marc A. Bergsman, TIPS FROM THE UNITED 

STATES PATENT AND TRADEMARK OFFICE TTAB: Concurrent Use and Intent-to-Use Applications, 83 

Trademark Rep. 416 (1993); and Janet E. Rice, TIPS FROM THE TTAB: Newest TTAB Rule Changes; More Tips 

on Concurrent Use Proceedings, 76 Trademark Rep. 252 (1986). 

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1113.02 Conversion of Cancellation Proceeding 

In appropriate situations, a cancellation proceeding may also be terminated in favor of a 

concurrent use proceeding, if one party has a concurrent use application reciting the adverse 

party in the cancellation proceeding as an exception to its claim of exclusive use; the application 

is published in the Official Gazette for opposition; and no opposition is filed, or all oppositions

filed are dismissed.120 

1114 Alteration of Restrictions on Concurrent Registration 

A concurrent registration may be issued only pursuant to the decision of the Board in a 

concurrent use proceeding, or on the basis of a final determination, by a court of competent 

jurisdiction, that more than one person is entitled to use the same or similar marks in 

commerce.121 A registration cannot be restricted territorially by amendment under Section 7(e) 

of the Act, 15 U.S.C. § 1057(e), and 37 CFR § 2.173(a).122 

Further, a concurrent registrant which wishes to alter the restriction to its registration ordinarily 

may do so, if at all, only through an appropriate decision in a new concurrent use proceeding 

before the Board, or a new civil action before a court of competent jurisdiction; a Section 7(e) 

amendment cannot be used to alter a concurrent use restriction.123 

However, removal of such a restriction by amendment under Section 7(e) may be permitted 

where an entity which was the only exception to registrant's right to exclusive use of its 

registered mark assigns its rights in its mark to registrant, so that all rights in the mark are 

merged in registrant.124 Requests to record changes to a Section 66(a) registration, 15 U.S.C. § 

 See also Janet E. Rice, TIPS FROM THE TTAB: Concurrent Use Applications and Proceedings, 72 Trademark 

Rep. 403 (1982), and Rany L. Simms, TIPS FROM THE TTAB: The Concurrent User as Opposer, 67 Trademark 

Rep. 654 (1977) (NOTE: these two articles were written at earlier stages in the development of the Board's practice 

concerning termination of an opposition in favor of a concurrent use proceeding). 

120 See Chichi's, Inc. v. Chi-Chi's, Inc., 222 USPQ 831 (Comm'r 1984) (a decision in the cancellation proceeding 

adverse to respondent would not preclude respondent from filing a new application seeking concurrent registration

with petitioner). 

121 See TBMP § 1102.02 (Bases for Concurrent Registration) and authorities cited therein. 

122 See Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841 (TTAB 1989); In re Alfred Dunhill 

Ltd., 4 USPQ2d 1383 (Comm'r 1987); and In re Forbo, 4 USPQ2d 1415 (Comm'r 1984).

123 See Morgan Services Inc. v. Morgan Linen Services Inc., supra; In re Alfred Dunhill Ltd., supra; and In re 

Forbo, supra.

124 See In re Alfred Dunhill Ltd., supra. 

1100 - 621 
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CONCURRENT USE PROCEEDINGS 

 

1141f, must be filed with the International Bureau. The amendment is not made under Section 7 

of the Trademark Act.125 

In addition, if every concurrent user specified in a concurrent registration abandons its use of its 

involved mark, and owns no subsisting registration thereof, the owner of the remaining 

concurrent registration may file a new application for an unrestricted registration of the mark.

125 See 37 CFR § 7.22. See also TBMP 514.01 and, in particular, the footnote appearing in the third paragraph of

that section for further information regarding amendments to 66(a) registrations. 

1100 - 622 
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EX PARTE APPEALS 

 1201 Propriety of Appeal 

1201.01 Readiness of Case for Appeal 

15 U.S.C. § 1070 [Section 20 of the Trademark Act] Appeal from examiner to Trademark Trial 

and Appeal Board. 

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 CFR § 2.63(b) After reexamination the applicant may respond by filing a timely petition to 

the Director for relief from a formal requirement if: (1) the requirement is repeated, but the 

examiner's action is not made final, and the subject matter of the requirement is appropriate for 

petition to the Director (see § 2.146(b)); or (2) the examiner's action is made final and such 

action is limited to subject matter appropriate for petition to the Director. If the petition is 

denied, the applicant shall have until six months from the date of the Office action which 

repeated the requirement or made it final or thirty days from the date of the decision on the 

petition, whichever date is later, to comply with the requirement. A formal requirement which is 

the subject of a petition decided by the Director may not subsequently be the subject of an appeal 

to the Trademark Trial and Appeal Board. 

37 CFR § 2.64(a) On the first or any subsequent reexamination or reconsideration the refusal of

the registration or the insistence upon a requirement may be stated to be final, whereupon 

applicant's response is limited to an appeal, or to a compliance with any requirement, or to a 

petition to the Director if permitted by § 2.63(b). 

37 CFR § 2.64(b) During the period between a final action and expiration of the time for filing 

an appeal, the applicant may request the examiner to reconsider the final action. The filing of a 

request for reconsideration will not extend the time for filing an appeal or petitioning the 

Director, but normally the examiner will reply to a request for reconsideration before the end of 

the six-month period if the request is filed within three months after the date of the final action. 

Amendments accompanying requests for reconsideration after final action will be entered if they 

comply with the rules of practice in trademark cases and the Act of 1946. 

37 CFR § 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 an appeal is 

taken. A second refusal on the same grounds may be considered as final by the applicant for 

purpose of appeal. 

1200 - 623 
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EX PARTE APPEALS 

 

37 CFR § 2.146(b) Questions of substance arising during the ex parte prosecution of 

applications, including, but not limited to, questions arising under §§ 2, 3, 4, 5, 6 and 23 of the 

Act of 1946, are not considered to be appropriate subject matter for petitions to the Director. 

On the first or any subsequent reexamination or reconsideration of an application for registration 

of a trademark, the examining attorney may state that the refusal of the registration or the 

insistence upon a requirement is final.1

 When the examining attorney states that his or her action 

is final, the applicant's response is limited to an appeal to the Board, or to compliance with any 

requirement, or to a petition to the Director if a petition is permitted by 37 CFR § 2.63(b).2

 An 

applicant may, pursuant to 37 CFR § 2.64(b), file a request for reconsideration, but the 

submission of such a request does not automatically extend the applicant’s time for filing a 

notice of appeal. Thus, if an applicant submits a request for reconsideration within the six-month 

time period from the mailing date of the final action, but does not file a notice of appeal within 

that time period, if the request for reconsideration fails to persuade the examining attorney, and 

the examining attorney does not issue a new final refusal, the application will be deemed 

abandoned.3

 

An applicant may consider a second refusal on the same ground(s), or a repeated requirement, as 

final for purposes of appeal.4

 All grounds and/or requirements must be repeated in order for the 

second refusal to be considered as final.5

 

Thus, an application is ripe for appeal when the examining attorney issues a final action, and an 

appeal may also be taken from a second refusal on the same ground(s) or from a repeated 

requirement.6

 However, an Office action that repeats one or more grounds for refusal or 

requirements but also raises a new ground or requirement may not be considered as final for 

purposes of appeal. 

 

1

 See Section 12(b) of the Act; 15 U.S.C. § 1062(b); 37 CFR § 2.64(a); and TMEP §§ 713, 714.03. 

2

 See 37 CFR § 2.64(a), and TMEP § 715.01. See also Section 20 of the Act, 15 U.S.C. § 1070, and TMEP § 1501. 

3

 In re GTE Education Services, 34 USPQ2d 1478, 1480 (Comm’r 1994).

4

 See In re MediaShare Corp., 43 USPQ2d 1304, 1305 n.2 (TTAB 1997); In re Hechinger Investment Co. of

Delaware Inc., 24 USPQ2d 1053, 1054 n.2 (TTAB 1991); and In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 

1985); 37 CFR § 2.141; and TMEP § 1501. 

5

 In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999). 

6

 See In re Hechinger Investment Co. of Delaware Inc., supra; and In re Citibank, N.A., supra; Section 20 of the 

Act; 15 U.S.C. § 1070; 37 CFR §§ 2.64(a) and 2.141; and TMEP § 1501. 

1200 - 624 
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EX PARTE APPEALS 

 

1201.02 Premature Final 

15 U.S.C. § 1062(b) If the applicant is found not entitled to registration, the examiner shall 

advise the applicant thereof and of the reason 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. 

A refusal of registration or an insistence upon a requirement may be made final by the trademark 

examining attorney only on the first or any subsequent reexamination or reconsideration of an 

application; a refusal or requirement may not be made final in a first action.7

 

An action should not be stated to be final until the applicant has had at least one opportunity to 

reply to each ground of refusal, and each requirement, asserted by the examining attorney.8

 

Moreover, a final action should not be issued until all matters but for those that are to be the 

subject of the final action have been resolved, and a clear issue has been developed between the 

examining attorney and the applicant with respect to each remaining ground of refusal or 

requirement.9

 As stated in TMEP § 714.03: 

No requirement may be made final, even if it is a repeated requirement, 

unless the entire action is made final. Thus, if the examining attorney 

makes a new refusal or requirement in a second or subsequent action, a 

repeated refusal or requirement may not be made final. 

Examples of new issues that would preclude the issuance of a final action until applicant has had 

an opportunity to respond are amendments to the drawing,10 and amendments to the 

Supplemental Register or to assert acquired distinctiveness.11 However, if the amendment is 

7

 See Section 12(b) of the Act, 15 U.S.C. § 1062(b); 37 CFR § 2.64(a); and TMEP §§ 714.01 and 1501. 

8

 See TMEP § 714.01. See also In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992), and In re 

Pierce Foods Corp., 230 USPQ 307, 308 n.1 (TTAB 1986). 

 

9

 See TMEP § 714.03. See also In re Moore Business Forms Inc., 24 USPQ2d 1638, 1638 n.2 (TTAB 1992) 

(ground for refusal first raised in examining attorney's appeal brief given no consideration). 

10 See In re Abolio y Rubio S.A.C.I. y G., supra. 

11 See In re Audio Book Club Inc., 52 USPQ2d 1042, 1043 n.2 (TTAB 1999) and TMEP § 714.05 et seq. 

1200 - 625 
Chapter 1200 

EX PARTE APPEALS 

 

irrelevant to an outstanding refusal or is merely cumulative, it is not deemed to raise a new 

issue.12 

If an applicant believes that a refusal to register, or the insistence upon a requirement, has been 

made final prematurely, applicant may raise the matter by request to the examining attorney for 

reconsideration or by contacting the managing attorney or senior attorney in the examining 

attorney’s law office. If the examining attorney does not withdraw the finality, the applicant 

may file a petition under 37 CFR § 2.146.13 

The prematureness of a final action is not a ground for appeal to the Board.14 However, if it 

comes to the attention of the Board, when an appeal has been filed from a final refusal to register 

or a final requirement, that the final action was issued prematurely, the Board normally will 

decline to institute the appeal and will forward the case to the examining attorney for appropriate 

action. That action is generally that the finality of the examining attorney's action is withdrawn 

and a new nonfinal action is issued. The Board letter will generally indicate that if the 

examining attorney finds, upon consideration of applicant's response to the new nonfinal action, 

that the application is in condition for publication (or for registration, if the application seeks 

registration on the Supplemental Register), the applicant may request a refund of the previously 

submitted appeal fee; and that if the examining attorney ultimately issues a new final action, and 

the applicant wishes to appeal, a new notice of appeal should be filed, in which the applicant 

requests that the previously submitted appeal fee should be applied to the appeal.

1201.03 Premature Appeal 

An application is ripe for appeal when the trademark examining attorney issues a final action, 

and an appeal may also be taken from a second refusal on the same ground(s) or a repeated 

requirement; an appeal from a first refusal or requirement is premature.15 All grounds and/or 

requirements must be repeated in order for the second refusal to be considered as final.16 If, in 

response to a final Office action, applicant files a request for reconsideration that raises a new 

12 See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental 

Register in response to a refusal of registration under § 2(a) does not raise a new issue); In re GTE Education

Services, 34 USPQ2d 1478, 1480 (Comm’r 1994) (examining attorney properly determined that no new issue had 

been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute 

specimens submitted with the request were deficient for same reason as the original specimens). See also TMEP §§ 

714.05, 714.05(a), and 714.05(a)(i);

13 See TMEP § 714.06. 

14 See TMEP § 714.06. 

15 See TBMP § 1201.01 (Readiness of Case for Appeal) and authorities cited therein. 

16 In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999). 

1200 - 626 
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EX PARTE APPEALS 

 

issue, and does not file a notice of appeal, applicant may not then file an appeal until a final 

Office action issues with respect to the new issue.17 

The Board has no jurisdiction to entertain a premature appeal. Thus, if an appeal is filed 

prematurely, the Board, in a written action, will notify applicant that the appeal was filed 

prematurely and forward the application to the trademark examining attorney for further 

appropriate action. The examining attorney will normally treat the premature notice of appeal as 

an incomplete response under 37 CFR § 2.65(b) and allow applicant time to submit a complete 

response. If applicant has also filed a request for reconsideration or an appeal brief, the request 

for reconsideration or brief may be treated as a response.18 In the event that the examining 

attorney ultimately issues a final action, or a second refusal on the same ground(s) or a repeated 

requirement, and applicant wishes to appeal, applicant should file a new notice of appeal, and 

request that the appeal fee previously submitted be applied to the new appeal. If, on the other 

hand, no new appeal is ever filed in the case, applicant may request that the appeal fee submitted 

with the premature appeal be refunded. 

1201.04 Compliance With Requirements Not Subject of Appeal 

37 CFR § 2.142(c) All requirements made by the examiner and not the subject of appeal shall be 

complied with prior to the filing of an appeal.

Prior to the filing of an appeal, the applicant should comply with all requirements that the 

trademark examining attorney, has made, but which are not the subject of appeal. If an applicant 

who files an appeal to the Board fails to comply with a requirement not the subject of appeal, the 

refusal to register may be affirmed by the Board as to that requirement, regardless of the 

disposition made by the Board of the issue or issues that are the subject of appeal.19 

17 In re Virshup, 42 USPQ2d 1403, 1404 (TTAB 1997) (after final refusal on Principal Register, applicant amended 

to Supplemental Register; applicant’s appeal of initial refusal on Supplemental Register held premature). 

18 In re Virshup, supra. 

19 See 37 CFR § 2.142(c); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Cord Crafts Inc., 11

USPQ2d 1157, 1157 n.2 (TTAB 1989); In re Riddle, 225 USPQ 630, 632 (TTAB 1985); In re Big Daddy's Lounges,

Inc., 200 USPQ 371, 373 (TTAB 1978); and Gary D. Krugman, TIPS FROM THE TTAB: The Amended Trademark

Rules of Practice and Their Effect on Ex Parte Appeals, 74 Trademark Rep. 341 (1984). Cf. In re Walker-Home 

Petroleum, Inc., 229 USPQ 773, 774 (TTAB 1985), and In re Citibank, N.A., 225 USPQ 612, 613 (TTAB 1985). 

 NOTE: A possible alternative approach for use in situations where informalities that are not the subject of the 

appeal have not been resolved, suggested in In re Variable Speech Control Co., 209 USPQ 431, 433 (TTAB 1980), 

of including in the Board's decision on the appealed issues a recommendation that no registration be granted to

applicant until the informalities have been resolved, is no longer appropriate. This is because (1) the current 37 CFR 

§ 2.142(c), adopted thereafter, provides that all requirements made by the examining attorney and not the subject of 

appeal shall be complied with prior to the filing of an appeal, and (2) it is now settled that once the Board decides an

appeal, the examining attorney is without jurisdiction to take further action in the case, nor may the Board, in its 

decision on the appealed issues, remand the case for further action on a matter not before it in the appeal. See In re 

1200 - 627 
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EX PARTE APPEALS 

 

Thus, an applicant may not defer compliance with an outstanding requirement, such as the 

submission of a proper drawing or declaration to support substitute specimens, until after the 

Board rules on any substantive grounds for refusal. 

1201.05 Appeal Versus Petition 

37 CFR § 2.63(b) After reexamination the applicant may respond by filing a timely petition to 

the Director for relief from a formal requirement if: (1) the requirement is repeated, but the 

examiner's action is not made final, and the subject matter of the requirement is appropriate for 

petition to the Director (see § 2.146(b)); or (2) the examiner's action is made final and such 

action is limited to subject matter appropriate for petition to the Director. If the petition is 

denied, the applicant shall have until six months from the date of the Office action which 

repeated the requirement or made it final or thirty days from the date of the decision on the 

petition, whichever date is later, to comply with the requirement. A formal requirement which is 

the subject of a petition decided by the Director may not subsequently be the subject of an appeal 

to the Trademark Trial and Appeal Board. 

37 CFR § 2.64(a) On the first or any subsequent reexamination or reconsideration the refusal of

the registration or the insistence upon a requirement may be stated to be final, whereupon 

applicant's response is limited to an appeal, or to a compliance with any requirement, or to a 

petition to the Director if permitted by § 2.63(b). 

37 CFR § 2.146(a) Petition may be taken to the Director: (1) from any repeated or final formal 

requirement of the examiner in the ex parte prosecution of an application if permitted by § 

2.63(b); (2) in any case for which the Act of 1946, or Title 35 of the United States Code, or this 

Part of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined 

directly or reviewed by the Director; (3) to invoke the supervisory authority of the Director in 

appropriate circumstances; (4) in any case not specifically defined and provided for by this Part 

of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice 

requires and no other party is injured thereby, to request a suspension or waiver of any 

requirement of the rules not being a requirement of the Act of 1946. 

(b) Questions of substance arising during the ex parte prosecution of applications, including, but 

not limited to, questions arising under §§ 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not 

considered to be appropriate subject matter for petitions to the Director. 

An action taken on a matter arising during the ex parte prosecution of an application for 

registration may, depending on the nature of the matter and the posture of the case, be reviewable 

only by appeal to the Board, or only by petition to the Director or by either appeal or petition. 

Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984); In re Mercedes Slacks, Ltd., 213 USPQ 397, 397 n.2 (TTAB

1982); and TBMP §§ 1202.01 (Readiness of Case for Appeal) and 1217 (Final Decision).

1200 - 628 
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EX PARTE APPEALS 

 

The following discussion contains general guidelines for determining whether a matter is 

appealable or petitionable. 

An appeal to the Board may be taken from any final action, second refusal to register on the 

same ground(s), or repeated requirement issued by the trademark examining attorney during the 

ex parte prosecution of an application for registration, whether the matter involved in the 

examining attorney's action is substantive or procedural in nature, except that a formal 

requirement which was the subject of a petition decided by the Director may not thereafter be the 

subject of an appeal to the Board.20 

Substantive questions arising during the ex parte prosecution of an application, including, but not 

limited to, issues arising under Sections 2, 3, 4, 5, 6, and 23 of the Act, 15 U.S.C. §§ 1052, 1053, 

1054, 1055, 1056, and 1091, are considered to be appropriate subject matter for appeal to the 

Board (after issuance of a final action, or a second refusal on the same ground(s)),21 but not for 

petition to the Director.22 

A wide variety of matters are petitionable. Petition may be taken to the Director in the following

situations: 

(1) From any repeated or final formal requirement made by the trademark examining 

attorney, during the ex parte prosecution of an application, if (i) the requirement is 

repeated, but the examining attorney's action is not made final and the subject matter of

the requirement is appropriate for petition to the Director;

23 or (ii) the examining 

attorney's action is made final and is limited to subject matter appropriate for petition to 

the Director.24 If the petition is denied, the applicant will have six months from the date 

20 See Section 20 of the Act, 15 U.S.C. § 1070; 37 CFR §§ 2.63(b), 2.64(a), and 2.141; In re Pony International 

Inc., 1 USPQ2d 1076, 1079 (Comm'r 1986); and TBMP § 1201.01 (Readiness of Case for Appeal).

21 See TBMP § 1201.01 

22 See 37 CFR § 2.146(b); TMEP § 1704; In re The Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778, 1781

(Comm’r 1995); In re Mission Pharmacal Co., Inc., 33 USPQ2d 1060, 1061 (Comm'r 1993); In re Direct Access 

Communications (M.C.G.) Inc., 30 USPQ2d 1393, 1393 (Comm'r 1993); In re Tetrafluor Inc., 17 USPQ2d 1160, 

1161 (Comm'r 1990); In re Hart, 199 USPQ 585, 586-87 (Comm'r 1978); and In re Stenographic Machines, Inc., 

199 USPQ 313, 315 (Comm'r 1978). 

23 See, in this regard, 37 CFR § 2.146(b), and the preceding paragraph. 

24 See 37 CFR §§ 2.63(b) and 2.146(a)(1); In re Sambado & Son Inc., 45 USPQ2d 1312, 1314 (TTAB 1997)

(question of whether examining attorney’s failure to issue substantive refusal during initial, pre-Statement-of-Use 

examination was clear error is procedural and reviewable on petition to Director; Board’s decision on appeal is 

limited to the correctness of underlying substantive refusal; applicant that wishes to challenge procedural propriety

must file petition after issuance of final refusal); In re The Du Pont Merck Pharmaceutical Co., supra (proper 

signatory for an application and Statement of Use filed by a partnership); and In re Stenographic Machines, Inc., 

supra (requirement for a more particular identification of goods). 

1200 - 629 
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EX PARTE APPEALS 

 

of the Office action which repeated the requirement or made it final, or 30 days from the 

date of the Director’s decision on the petition, whichever is later, to comply with the 

requirement. A formal requirement that was the subject of a petition to the Director may 

not thereafter be the subject of an appeal to the Board.25 

(2) In any case for which the Act of 1946, or Title 35 of the United States Code, or Part 2 

of 37 CFR (i.e., the rules of practice in trademark cases) specifies that the matter is to be 

determined directly or reviewed by the Director.26 Insofar as applications for registration 

are concerned, this includes petitions to review the denial of requests for extensions of

time to file statements of use under 37 CFR § 2.89(g), petitions to review the actions of 

Post Registration examiners under 15 U.S.C. §§ 1057, 1058 and 1059, and petitions to 

record a document in the Assignment Services Division of the Office.27

(3) To invoke the supervisory authority of the Director in appropriate circumstances.28 

Under this provision, an applicant generally may petition to the Director for relief from, 

inter alia, a nonfinal refusal to register based on a procedural matter, i.e., an alleged 

failure of the applicant to comply with a technical requirement of the rules of practice 

governing trademark cases; or an alleged failure of the examining attorney to act in 

accordance with those rules and/or proper practice thereunder.29 

(4) In any case not specifically defined and provided for by Part 2 of 37 CFR (i.e., the 

rules of practice in trademark cases).30 Under this provision, an applicant may petition

the Director with respect to any situation, not covered by the rules, from which applicant 

seeks relief.31 

25 See 37 CFR § 2.63(b). See also In re Pony International Inc., 1 USPQ2d 1076, 1079 (Comm'r 1986). 

26 See 37 CFR § 2.146(a)(2). 

27 See TMEP §§ 1702, 1703 and 1704. 

28 See 35 U.S.C. § 2 and 37 CFR § 2.146(a)(3). 

29 See, for example, In re Mission Pharmacal Co., Inc., 33 USPQ2d 1060, 1061 (Comm'r 1993) (whether examining

attorney acted properly in issuing final Office action); In re Direct Access Communications (M.C.G.) Inc., 30

USPQ2d 1393, 1393 (Comm'r 1993) (whether examining attorney properly suspended application); In re Tetrafluor

Inc., 17 USPQ2d 1160, 1161 (Comm'r 1990) (whether examining attorney properly refused to allow amendment of 

drawing to correct an allegedly obvious typographical error); and TMEP §§ 1702 and 1703. For further information 

concerning the matters that are petitionable under this provision, see TMEP § 1707. 

 

30 See 37 CFR § 2.146(a)(4).

31 See TMEP § 1708

1200 - 630 
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EX PARTE APPEALS 

 

(5) In an extraordinary situation, when justice requires and no other party is injured 

thereby, to request a suspension or waiver of any requirement of the rules which is not 

also a requirement of the Act of 1946.32

However, petition may not be taken to the Director on a question of substance arising during the 

ex parte prosecution of an application; nor may petition be taken from a final action of the 

examining attorney, except that an applicant may petition for relief from an action making a 

formal requirement final if the action is limited to subject matter appropriate for petition to the 

Director (i.e., involves questions such as the applicant's alleged failure to comply with one or 

more of the technical requirements of the rules of practice in trademark cases, rather than a 

question of substance).33 

For examples of matters that are appealable and those that are petitionable, see TMEP §§ 1703 

and 1704. 

1202 Filing an Appeal 

1202.01 In General 

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 CFR § 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 an appeal is 

taken. A second refusal on the same grounds may be considered as final by the applicant for 

purpose of appeal. 

37 CFR § 2.142(a) Any appeal filed under the provisions of § 2.141 must be filed within six 

months from the date of 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. 

32 See 37 § 2.146(a)(5). For information concerning the meaning of the words "extraordinary situation” see TMEP 

§ 1708. 

33 See 37 CFR §§ 2.63(b), 2.64(a), 2.146(a), and 2.146(b); In re Tetrafluor Inc., supra; In re Hart, supra; In re

Stenographic Machines, Inc., supra; and TMEP §§ 1702 and 1704. 

1200 - 631 
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An appeal to the Board from a trademark examining attorney's final action, second refusal on the 

same ground(s), or repeated requirement, is taken by timely34 filing in the Office both a notice of 

appeal and the prescribed appeal fee.35 If the notice of appeal and fee are not timely filed, the 

application will be deemed to have been abandoned, and the Board cannot entertain the appeal

unless applicant successfully petitions the Director to revive the application.36 

All requirements that have been made by the trademark examining attorney, but which are not to 

be the subject of appeal, should be complied with prior to the filing of an appeal.37 If an 

applicant that files an appeal to the Board fails to comply with such a requirement, the refusal to 

register may be affirmed by the Board for failure to comply with that requirement, regardless of 

the disposition made by the Board of the issue or issues that are the subject of appeal.38 

If an application contains multiple classes, and a final refusal or requirement pertains to some, 

but not all, of the classes in the application, the applicant has the option of filing an appeal for 

the application as a whole, or filing a request to divide the application to sever those classes for 

which there has been no final requirement or refusal. In the former case, the application will not 

be published for opposition (or a registration will not issue in the case of an application on the 

Supplemental Register) for those classes for which no refusal or requirement was made final 

until the appeal is decided. If a request to divide the application is filed,39 the classes for which 

there is no final requirement or refusal which have been divided out of the application will 

proceed to publication or registration, as appropriate, and an appeal will be instituted for the 

remaining classes for which an appeal has been filed.40 

1202.02 Time for Appeal 

An appeal to the Board may be taken from any final action, second refusal on the same 

ground(s), or repeated requirement issued by the trademark examining attorney during the ex 

parte prosecution of an application for registration, except that a formal requirement which was 

34 See TBMP § 1202.02 (Time for Appeal). 

35 See 37 CFR § 2.6(a)(18) and TBMP § 1202.04 (Appeal Fee). See also Section 20 of the Act, 15 U.S.C. § 1070;

37 CFR §§ 2.141 and 2.142(a); and TMEP § 1501. 

36 See Section 12(b) of the Act, 15 U.S.C. § 1062; 37 CFR §§ 2.64(a), 2.65(a), and 2.66; and TMEP §§ 718.02, 

718.05, 1501.04, 1714 and 1714.01(a). 

37 See 37 CFR § 2.142(c). 

38 See TBMP § 1201.04 (Compliance with Requirements Not Subject of Appeal) and authorities cited therein.

39 See 37 CFR § 2.87 and TBMP § 1205.02 (Request to Divide).

40 See TBMP § 1202.05 (Multiple Class Applications). 

1200 - 632 
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EX PARTE APPEALS 

 

the subject of a petition decided by the Director may not thereafter be the subject of an appeal to 

the Board.41 

An appeal to the Board must be filed within six months from the date of the action from which 

the appeal is taken.42 If a notice of appeal is timely filed, but the appeal fee is not, the appeal 

will be untimely, and the application will be deemed to have been abandoned.43 

The notice of appeal to the Board (unlike other correspondence to be filed with the Board) may 

be filed by facsimile transmission, as well as by any of the ordinary methods for filing 

correspondence intended for the Board, including electronically through ESTTA in the manner 

prescribed in 37 CFR § 2.126(c).44 The certificate of mailing and certificate of transmission 

procedures described in 37 CFR § 2.197, and the "Express Mail" procedure described in 37 CFR 

§ 2.198, are available for the filing of an appeal to the Board.45 

During the period between issuance of a final action and expiration of the time for filing an 

appeal therefrom, an applicant may file a request for reconsideration, with or without an 

amendment and/or new evidence.46 However, the filing of a request for reconsideration will not

serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate.)47 If, 

upon the examining attorney's consideration of the request, all refusals and requirements are not 

withdrawn, and no appeal or other proper response48 to the final refusal has been filed during the 

six months following issuance of the final action, the application will be abandoned.49 Thus, if 

41 See TBMP §§ 1201.01 (Readiness of case for Appeal) and 1201.05 (Appeal vs. Petition) and authorities cited

therein. See also TMEP § 1501. 

42 See Section 12(b) of the Act, 15 U.S.C. § 1062, and 37 CFR § 2.142(a). 

43 See TBMP § 1202.01 and authorities cited therein

44 See 37 CFR §§ 2.195 and 2.126 (Form of Submissions to the Trademark Trial and Appeal Board), and TBMP §§

107 (How and Where to File Papers and Fees) and 1202.03 (Filing an Appeal - Notice of Appeal). 

45 See 37 CFR §§ 2.197 and 2.198, and TBMP §§ 110 (Certificate of Mailing/Transmission) and 111 (‘Express

Mail’ Procedure). It is noted that the examining operation has eliminated the Express Mail procedure, see TMEP § 

305.03. However, because the notice of appeal is filed with the Board, rather than the examining operation, the 

Express Mail procedure is available for such filings. 

46 See 37 CFR § 2.64(b) and TBMP § 1204 (Effect of Request for Reconsideration). See also TMEP §§ 715.02 and 

715.03(a), and Gary D. Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules of Practice and Their 

Effect on Ex Parte Appeals, 74 Trademark Rep. 341 (1984). 

47 See 37 CFR §§ 2.63(b) and 2.64(a), and TBMP § 1201.05 (Appeal vs. Petition). See also 37 CFR § 2.64(b), and

TMEP §§ 715.03 and 715.03(c). 

48 See 37 CFR § 2.64(a), and TMEP § 715.01. 

49 See 37 CFR §§ 2.64 and 2.142(a), and TMEP § 715.03(a). 

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an applicant who has filed a request for reconsideration of a final action wishes to preserve its 

right to appeal in the event that the request is unsuccessful, the applicant must file an appeal prior 

to the expiration of the six-month period following issuance of the final action. 

If an appeal is late filed, but applicant timely filed some other response to the appealed action, 

such as an amendment or request for reconsideration, the Board will issue a written action 

informing applicant of the lateness of its appeal; stating that the late appeal cannot be entertained 

by the Board; and forwarding the application to the examining attorney for appropriate action 

with respect to the document that was timely filed. An applicant may petition the Director to 

revive an application for failure to file a timely appeal, as an appeal is considered a response to 

an Office action.50 

1202.03 Notice of Appeal 

A notice of appeal is a simple statement indicating that applicant appeals from the decision of the 

trademark examining attorney refusing registration; reasons for appeal need not be given. The 

notice of appeal should bear at its top the wording "IN THE UNITED STATES PATENT AND 

TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD," 

followed by information identifying the application in which the appeal is being filed, namely, 

applicant's name, the serial number and filing date of the application, and the involved mark. 

Only one copy of the notice of appeal should be submitted. 

A notice of appeal need not be verified, and it may be signed by the applicant or its attorney or 

other authorized representative. 

Although the notice of appeal must be signed, an unsigned notice of appeal will not be refused 

consideration if a signed copy is submitted to the Board within the time limit set in the 

notification of this defect by the Board.51 The same is true of other unsigned papers filed in an 

application during an ex parte appeal to the Board. 

For further information concerning signature of submissions, see TBMP § 106.02. 

The notice of appeal must be filed in written form and must meet the general requirements for 

submissions to the Board set forth in 37 CFR § 2.126.52 

The Board has no printed form for use in filing a notice of appeal. However, as an aid to 

applicants, the Office has prepared a suggested format for a notice of appeal. A notice of appeal 

50 See 37 CFR § 2.66(a) and TMEP § 1714 et seq. 

51 Cf. 37 CFR § 2.119(e), and TBMP § 106.02 (Signature of Submissions).

52 See TBMP § 106.03 (Form of Submissions). 

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need not follow the suggested format, as long as it includes the necessary information. The 

suggested format for a notice of appeal can be found in the Appendix of Forms to this manual. 

If applicant files a request for reconsideration or amendment along with the notice of appeal, or 

at the time of filing the notice of appeal applicant had filed a request for reconsideration or 

amendment which is still pending before the examining attorney, the applicant should indicate 

this in its notice of appeal so that the Board can obtain the request for reconsideration prior to 

instituting the appeal.53 However, the request for reconsideration or amendment should not be 

combined in the body of the notice of appeal. 

1202.04 Appeal Fee 

37 CFR § 2.85(e) Where the amount of the fee received on filing an appeal in connection with an 

application or on an application for renewal is sufficient for at least one class of goods or 

services but is less than the required amount because multiple classes in an application or 

registration are involved, the appeal or renewal application or petition for cancellation will not 

be refused on the ground that the amount of the fee was insufficient if the required additional 

amount of the fee is received in the Patent and Trademark Office within the time limit set forth in 

the notification of this defect by the Office, or if action is sought only for the number of classes 

equal to the number of fees submitted. 

37 CFR § 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 an appeal is taken. A second refusal on the same grounds may be considered as 

final by the applicant for purpose of appeal. 

An ex parte appeal to the Board is taken by timely filing in the Office both a notice of appeal and

the prescribed appeal fee for each class for which the appeal is taken.54 If a notice of appeal is 

timely filed, but the appeal fee is not, the appeal will be untimely, and the application will be 

deemed to have been abandoned.55 In such circumstance, however, the applicant may file a 

petition to revive.56 Further, if a party fails to timely file an appeal fee but has previously given a 

53 See TBMP §§ 1204 (Effect of Request for Reconsideration of Final Action) and 1205 (Amendment of

Application During Appeal). 

54 37 CFR § 2.141.

55 See TBMP § 1202.01 (Filing an Appeal in General) and authorities cited therein. 

 

56 See generally, TMEP § 1714. See also § 1704.01(f)(ii). 

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general authorization to charge all fees that may become due during the pendency of an 

application to a deposit account, such authorization will be accepted upon petition to the 

Director.

57 

The amount of the fee required for an ex parte appeal to the Board is specified in 37 CFR § 

2.6(a)(18). If an application in which an appeal is filed has more than one class of goods and/or 

services58 the required fee must be paid for each class in which appeal is taken.59 If an appeal is 

taken in, and an appeal fee is submitted for fewer than all of the classes in the application, the 

class or classes in which the appeal is taken should be specified.60 If the final requirement or 

refusal does not pertain to all classes in the application, the appeal fee need be submitted only for 

those classes for which a final requirement or refusal has issued.61 

If an applicant timely submits a fee sufficient to pay for an appeal in at least one class, but the 

fee submitted is less than the required amount because multiple classes in an application are 

involved, and applicant has not specified the class or classes to which the submitted fee applies, 

the Board will issue a written notice allowing applicant until a set time in which to submit the 

required fee or to specify the class or classes appealed. If the required fee is not submitted, or

the specification made, within the time set in the notice, the fee submitted will be applied to the 

classes in ascending order, beginning with the lowest numbered class and including the number 

of classes in the application for which sufficient fees have been submitted.62 

1202.05 Multiple Class Applications 

If an application contains multiple classes, and the final refusal or requirement pertains to some

but not all of the classes, an applicant may choose to file an appeal for the application as a whole, 

or it may choose to file a request to divide the application.63 In the former case, the classes for 

which an appeal has not been taken remain part of the file. After a decision on the appeal is 

rendered, the classes that were not part of the appeal (and those classes for which the refusal or 

requirement was reversed) will be published for opposition or, in the case of an application on 

the Supplemental Register, will proceed to registration. If a request to divide is filed along with 

57 See In re Sky is the Ltd., 42 USPQ2d 1799, 1800 (Comm’r 1996).

58 See 37 CFR § 2.86(b)). 

59 See 37 CFR § 2.6(a)(18). 

60 See 37 CFR § 2.141, and TMEP § 1403.05(a). 

61 See TBMP § 1202.05 (Multiple Class Applications). 

62 See 37 CFR §§ 2.85(e) and 2.141. 

63 See 37 CFR § 2.87 and TBMP § 1205.02 (Request to Divide).

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(1) A paper submission must be printed in at least 11-point type and double-spaced, 

with the text on one side only of each sheet; 

 

a notice of appeal, the appeal will be suspended until action is taken on the request to divide. 

Those classes for which there is no final requirement or refusal, and which have been divided 

out, will immediately proceed to publication or, in the case of an application on the 

Supplemental Register, to registration, and will not be delayed pending a decision on the appeal. 

If the final refusals or requirements do not apply to all the classes in a multiple class application, 

an appeal fee is required only those classes for which the appeal is taken, that is, those classes for 

which a final refusal or requirement is made. This is true whether or not the applicant requests 

that the application be divided.

 1203 Appeal Briefs 

It should be noted that if the ground or one of the grounds for refusal is likelihood of 

confusion with a registered mark, it is suggested, before applicant and the examining attorney 

file their respective briefs, that they check the records of the Office to ascertain whether the 

cited registration has been cancelled or has expired.64 

For information about requesting suspension pending a determination as to whether a cited 

registration has been cancelled or has expired, see TBMP § 1213. 

1203.01 Form of Brief 

37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. 

(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: 

(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.5 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) 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) A paper submission must not be stapled or bound; 

(5) All pages of a paper submission must be numbered and exhibits shall be 

identified in the manner prescribed in § 2.123(g)(2);

64 See TBMP § 1212 (Cancellation or Assignment of Cited Registration).

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(6) Exhibits pertaining to a paper submission must be filed on paper or CD-ROM 

concurrently with the paper submission, and comply with the requirements for a 

paper or CD-ROM submission. 

(b) Submissions may be made to the Trademark Trial and Appeal Board on CD-ROM where the 

rules in this part or Board practice permit. A CD-ROM submission must identify the parties and 

case number and contain a list that clearly identifies the documents and exhibits contained 

thereon. This information must appear in the data contained in the CD-ROM itself, on a label 

affixed to the CD-ROM, and on the packaging for the CD-ROM. Text in a CD-ROM submission 

must be in at least 11-point type and double-spaced. A brief filed on CD-ROM must be 

accompanied by a single paper copy of the brief. A CD-ROM submission must be accompanied 

by a transmittal letter on paper that identifies the parties, the case number and the contents of 

the CD-ROM. 

(c) 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. 

37 CFR § 2.142(b)(2) Briefs must be submitted in written form and must meet the requirements 

prescribed in § 2.126. Each brief shall contain an alphabetic 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. 

A brief filed in an ex parte appeal to the Board must conform to the requirements of 37 CFR § 

2.142(b)(2) as well as the general requirements for submissions to the Board specified in 37 CFR 

§ 2.126. 

Only one copy of the brief should be submitted. The twenty-five pages allowed for an appeal 

brief does not refer to any exhibits attached to the brief. However, material that was not 

previously made of record should not be submitted with the appeal brief.65 Also, the appeal brief 

is placed in the application file, so papers that are already in the file should not, as a matter of 

course, be resubmitted as exhibits to the brief. Most appeal briefs are far less than the twentyfive pages allowed by the rule and, given the limited issues and record in an appeal, the Board 

65 See TBMP §§ 1203.02(e) (Material Submitted with Briefs) and 1207.01 (Evidence Submitted After Appeal

Untimely – General Rule). 

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will rarely grant a motion for leave to exceed the twenty-five page limit.66 If an applicant files a 

brief that exceeds the twenty-five page limit without prior leave of the Board, the brief will not 

be considered, although the failure to file a conforming brief will not be treated as a failure to file 

a brief which would result in the dismissal of the appeal. 

The brief should indicate that it is an appeal brief, and include information identifying the 

application in which it is filed, namely, the applicant's name, the serial number and filing date of 

the application, and the mark sought to be registered.67 An appeal brief should include an 

alphabetic index of cited cases68 but need not include the formal requirements, such as a table of 

contents and description of the record, of a trial brief.

69 

For further information concerning the form and contents of the trademark examining attorney's 

appeal brief, in particular, see TMEP § 1501.02. 

1203.02 Time for Filing Brief 

1203.02(a) Applicant's Main Brief 

37 CFR § 2.142(b)(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. 

An applicant's main brief in an ex parte appeal to the Board must be filed within 60 days 

from the date of appeal, or within an extension of time for that purpose. The time for 

filing the brief is set by rule; therefore, although the Board attempts to send the applicant 

an acknowledgement of the receipt of the notice of appeal which indicates the date the 

brief is due, the failure to receive such acknowledgement does not affect the deadline for 

66 See In re Psygnosis Ltd., 51 USPQ2d 1594, 1596 (TTAB 1999) (applicant’s request for a waiver in order to

include an additional 10 pages denied; applicant’s attempt to submit discussion as an appendix to brief treated by

Board as an attempt to circumvent the Board’s order denying the waiver, and sanctions imposed). 

67 Cf. TMEP § 302.03. 

68 See 37 CFR § 2.142(b)(2).

69 Cf. 37 CFR § 2.128. 

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such filing.70 If no brief is filed, the appeal will be dismissed.71 If the brief is filed late, 

applicant will be allowed an opportunity to submit an explanation for the late filing; in 

the absence of an adequate explanation, the appeal will be dismissed. The determination 

of whether to accept the brief will depend on the circumstances, including the length of

time after the due date that the brief is filed.

If the appeal is dismissed for failure to file a timely brief, applicant’s recourse is to file a 

petition to the Director under the provisions of 37 CFR § 2.146(a)(3). Because such a 

petition invokes the supervisory authority of the Director, it is determined under the clear 

error/abuse of discretion standard, that is, whether the Board has committed clear error or 

abused its discretion in its determination not to accept the late-filed brief.

72 The applicant 

should not file a petition to the Director until it has first filed with the Board a 

request/motion to accept the late-filed brief, and that request/motion has been denied. 

Further, a petition to revive is not available when applicant has failed to file an appeal 

brief or has filed its appeal brief late. The petition to revive procedure provided in 37 

CFR § 2.66(a) applies only to situations in which the applicant did not timely respond to 

an Office action or notice of allowance. The filing of an appeal brief is not a response to 

an Office action. Thus, the “unintentional delay” standard of 37 CFR § 2.66(a) does not 

apply to the determination of whether a late-filed brief will be accepted. 

If a notice of appeal (accompanied by the required fee) is filed with a certificate of

mailing by first-class mail pursuant to 37 CFR § 2.197, the date of mailing specified in 

the certificate will be used for determining the timeliness of the notice of appeal. 

However, the actual date of receipt of the notice of appeal in the Office will be used for 

all other purposes, including the running of the time for filing applicant's main brief.

73

If an applicant that has filed a timely request for reconsideration of a final action, second 

refusal on the same ground(s), or repeated requirement, also files a timely appeal, and the 

examining attorney has not yet considered the request for reconsideration when the 

appeal is filed, or if applicant files a request for reconsideration along with the notice of 

appeal, the file of the application, with the appeal and the request for reconsideration, will 

be forwarded to the Board. However, because papers may become separated, if applicant 

files a request for reconsideration along with the notice of appeal, it should indicate in the 

notice of appeal that a request for reconsideration is being filed contemporaneously. The 

70 In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998). 

71 See 37 CFR § 2.142(b)(1). 

72 See TMEP § 1706. 

73 See 37 CFR § 2.197. 

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Board will acknowledge receipt of the appeal and request, suspend further proceedings

(including applicant's time for filing its appeal brief) with respect to the appeal, and 

remand the application to the examining attorney for consideration of the request. 

Because proceedings in the appeal are automatically suspended when a request for 

reconsideration is pending, the applicant should not file its appeal brief within sixty days 

of the filing of the notice of appeal, as provided by 37 CFR § 2.142(b)(1), even if the 

Board has not issued its order suspending proceedings prior to the date the appeal brief 

would otherwise be due. Nor does the applicant need to verify with the Board that the

due date for its brief will be changed if necessary.74 

If, upon the examining attorney's consideration of the request for reconsideration, all 

refusals and requirements are not withdrawn, and a new final refusal to register is issued 

(either in the examining attorney's action on the request for reconsideration, or in a 

subsequent action)75 the six-month response clause should be omitted from the paper in 

which such action is taken; the file of the case should be returned to the Board; 

proceedings with respect to the appeal will be resumed; and applicant will be allowed 

time in which to file its appeal brief. If the examining attorney approves the application 

for publication (or for registration, in the case of a Supplemental Register application), 

the appeal will be moot. The examining attorney should so notify the applicant either in 

a written action or by telephone.76 

1203.02(b) Trademark Examining Attorney's Brief 

When the applicant's main appeal brief has been received by the Board and entered in the 

application file, the Board sends the file to the trademark examining attorney. Within 60 

days after the date of the Board's written action forwarding the file to the examining 

attorney, or within an extension of time for the purpose, the examining attorney must file 

an appeal brief answering the applicant's main brief.77 The examining attorney must also 

send a copy of his or her brief to the applicant.78 If the examining attorney's brief is late 

74 See In re Live Earth Products Inc., supra. See also TBMP § 1204 (Effect of Request for Reconsideration of Final

Action). 

75 See TBMP § 1205 for procedure when request for reconsideration contains an amendment.

76 TMEP § 715.04. 

77 See 37 CFR § 2.142(b)(1); In re Wells Fargo & Co., 231 USPQ 106, 107 n.2 (TTAB 1986); In re Tennessee 

Walking Horse Breeders' and Exhibitors' Ass'n, 223 USPQ 188, 188 n.3 (TTAB 1984); TMEP § 1501.02; and Gary

D. Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules of Practice and Their Effect on Ex Parte 

Appeals, 74 Trademark Rep. 341 (1984). See also In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985). 

78 See 37 CFR § 2.142(b)(1). See also In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475, 1476 n.3 (Fed. Cir. 

1993). 

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filed, the Board may exclude it in the absence of an adequate explanation for the late 

filing.79 

If the examining attorney, having received the application for preparation of his or her 

appeal brief, is persuaded, by applicant's appeal brief, that applicant is entitled to the 

registration sought, the examining attorney may approve the application for publication 

(or for registration, in the case of a Supplemental Register application), and the appeal 

will be moot. The examining attorney should notify the applicant by telephone.80 If 

there is more than one ground of refusal or requirement and the examining attorney 

determines that one ground or requirement is no longer tenable, the examining attorney 

should state in his or her appeal brief that the refusal or requirement has been withdrawn. 

The appeal will then go forward on the remaining ground(s)/requirement(s). NOTE: 

Even if the examining attorney does not specifically state in the appeal brief that the 

refusal or requirement has been withdrawn, the Board may treat the refusal/requirement 

to have been withdrawn if no mention is made of it in the brief.81 

On the other hand, the examining attorney, having received the application for 

preparation of his or her appeal brief, may decide that registration should be refused on 

an additional ground, or that a new requirement should be made, or that the application 

should be suspended. In that event, the examining attorney, during the time for and 

instead of preparing an appeal brief, should send to the Board a written request that the 

application be remanded to him or her for further examination.82 If the request is denied, 

the Board will reset the examining attorney's time in which to file an appeal brief.

83 If 

the request is granted, the Board will suspend proceedings with respect to the appeal, and 

remand the application to the examining attorney for further examination in accordance 

with the request for remand. If, during the course of the further examination, the 

application is ultimately approved for publication (or for registration, in the case of a 

Supplemental Register application), the appeal will be moot. If the examining attorney 

refuses registration on a new ground, or makes a new requirement, and the new refusal or 

requirement is ultimately made final, the new final action should not include a six-month 

response clause; the application should be returned to the Board; and the Board will 

79 See In re Tennessee Walking Horse Breeders' and Exhibitors' Ass'n, supra.

80 See TMEP § 1501.03. 

81 See TBMP § 1203.02(g) (Waiver of Claim or Requirement in Brief). 

82 See TMEP § 1501.02. See also In re Moore Business Forms Inc., 24 USPQ2d 1638, 1638 n.2 (TTAB 1992) 

(ground for refusal first raised in examining attorney's appeal brief given no consideration). For information 

concerning requests for remand, see TBMP § 1209.02 (Remand Upon Request by Examining Attorney), and TMEP

§§ 1504.05 and 1504.05(a). 

83 See In re Miller Brewing Co., supra. 

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resume proceedings with respect to the appeal and allow applicant 60 days in which to 

submit a supplemental appeal brief directed to the new issue or issues, following which 

the application will be returned to the examining attorney for preparation of his or her 

appeal brief. 

 

1203.02(c) Applicant's Reply Brief 

Within 20 days from the mailing date of the trademark examining attorney's appeal brief, 

or within an extension of time for the purpose, the applicant may, if it so desires, file a 

reply brief.84 However, the filing of a reply brief is not mandatory. 

If the applicant files a reply brief, the Board will notify the trademark examining 

attorney. If the examining attorney, having read the applicant's reply brief, is persuaded 

thereby that applicant is entitled to the registration sought, the examining attorney may 

approve the application for publication (or for registration, in the case of a Supplemental 

Register application), and the appeal will be moot. The examining attorney should advise

the Board (by e-mail to the Board's administrator) that the application is being approved 

for publication (or registration) as soon as possible after being notified of the reply brief 

in order to avoid the possibility of the Board’s scheduling an oral argument or drafting a 

decision. The examining attorney should also notify the applicant by telephone.85 

There is no provision in the rules for the filing by the examining attorney of a written 

response to the applicant's reply brief. However, if the applicant requests an oral hearing, 

the examining attorney may respond orally, at the oral hearing, to arguments raised in 

applicant's reply brief.86 

1203.02(d) Extension of Time for Filing Brief 

An extension of time for filing an appeal brief in an ex parte appeal to the Board may be 

granted by the Board upon written request showing good cause for the requested 

extension.87 The determination of good cause will be based upon all relevant 

circumstances, including the length of time of any previously granted extensions. Thus, a 

84 See 37 CFR § 2.142(b)(1); In re Gena Laboratories, Inc., 230 USPQ 382, 383 n.4 (TTAB 1985); and In re 

Randall & Hustedt, 226 USPQ 1031, 1033 n.2 (TTAB 1985). Cf. In re Gale Hayman Inc., 15 USPQ2d 1478, 1478

n.3 (TTAB 1990). 

85 See TMEP § 1501.03. 

86 See TMEP § 1501.02(a). 

87 See In re Miller Brewing Co., 226 USPQ 666, 667 n.4 (TTAB 1985). See also In re Tennessee Walking Horse 

Breeders' and Exhibitors' Ass'n, 223 USPQ 188, 188 n.3 (TTAB 1984). 

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reason such as the press of other business, which may be sufficient to show good cause 

for a first extension of thirty days, may not be sufficient for a second extension of time. 

Depending on the totality of the circumstances, good cause has been found when there 

has been an appointment of a new attorney, illness, the need to get instructions from a 

foreign applicant, and attempting to negotiate a consent agreement. If a request is found 

not to be sufficient to warrant an extension, the Board may allow applicant a limited 

period of time, such as ten days, in which to file the appeal brief, or may grant the 

requested extension, but advise that no further extensions will be granted absent a 

showing of extraordinary circumstances. 

1203.02(e) Material Submitted with Briefs 

The record in the application should be complete prior to the filing of an appeal.88 

Exhibits attached to a brief that were not made of record during examination are 

untimely, and generally will not be considered.89 However, if the examining attorney, in 

his or her brief, discusses the exhibits attached to the applicant’s brief without objecting 

to them, or if applicant discusses, in its reply brief, exhibits attached to the examining 

attorney’s brief without objection, they will be deemed to have been stipulated into the 

record and will be considered.90 

 

1203.02(f) Cases Which May Be Cited 

Decisions that are designated by the Board "citable as precedent" or "for publication in 

full" are citable as precedent. Decisions that are not so designated, or that are designated 

for publication only in digest form, are not citable authority and will not be considered by 

the Board.91 

88 37 CFR § 2.142(d). 

89 See In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Couture, 60 USPQ2d 1317, 1319 n.3 

(TTAB 1999); In re Styleclick.com Inc., 57 USPQ2d 1445, 1446 n.2 (TTAB 2000) (although applicant had properly 

submitted copies of third-party registrations, additional registrations listed in applicant’s brief, which were not

commented on by examining attorney in her brief, not considered); In re Polo International Inc., 51 USPQ2d 

1061,1062 n.2 (TTAB 1999) (typed list of third-party registrations submitted with applicant’s brief which were 

objected to by examining attorney, not considered); In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998) 

(third-party registrations submitted with reply brief not considered); In re North American Free Trade Association, 

43 USPQ2d 1282, 1287 n.9 (TTAB 1997) (letter submitted with applicant’s brief was not made of record during

prosecution, and therefore not considered); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (copy of

unpublished case submitted with applicant’s reply brief no considered); and TBMP § 1207.01 (Evidence Submitted

After Appeal Untimely – General Rule). 

90 See TBMP § 1207.03 (Evidence Considered Due to Actions of Nonoffering Party). 

91 In re A La Vielle Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001); In re Polo International Inc., supra at 

1063, n.3 (TTAB 1999) (non-precedential case disregarded); and In re Caterpillar Inc., supra (decisions which are 

1200 - 644 
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If applicant, in its appeal brief, does not assert a claim made during prosecution, it may 

be deemed waived by the Board. ilarly, if applicant, in its appeal brief, complies

with a requirement and the examining attorney does not discuss the requirement, or if the 

examining attorney does not discuss a ground for refusal in his brief, the requirement or 

refusal may be deemed withdrawn. tice, if applicant seeks to

comply with a requirement, is to request remand rather than simply offering the 

amendment as part of its brief.94 

 

 

1203.02(g) Waiver of Claim or Requirement in Brief 

92 Sim

93 However, the better prac

 1204 Effect of Request for Reconsideration of Final Action 

During the period between issuance of a final action and expiration of the time for filing an 

appeal therefrom, an applicant may file a request for reconsideration, with or without an 

amendment and/or new evidence.95 However, the filing of a request for reconsideration will not

serve to stay the time for filing an appeal (or for petitioning the Director, if appropriate).96 If, 

upon the examining attorney's consideration of the request, all refusals and requirements are not 

withdrawn, and no appeal or other proper response97 to the final refusal has been filed during the 

six months following issuance of the final action, the application will be abandoned.98 Thus, if 

an applicant who has filed a request for reconsideration of a final action wishes to preserve its 

right to appeal in the event that the request is unsuccessful, the applicant must file an appeal prior 

to the expiration of the six-month period following issuance of the final action. 

not designated for publication are not citable as precedent, even if a complete copy of the unpublished decision is

submitted). See also TBMP § 101.03 (Decisional Law). 

92 See In re Gibson Guitar Corp., 61 USPQ2d 1948,1950 n.2 (TTAB 2001) (applicant did not, in its appeal brief,

pursue claim of inherent distinctiveness, and therefore the claim was not considered by Board). 

93 See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (requirement for 

translation deemed moot because applicant, in its appeal brief, offered translation, and examining attorney, in her

appeal brief, did not address issue). See also TBMP § 1203.02(b) (Trademark Examining Attorney’s Brief). 

94 See TBMP § 1205 (Amendment of Application During Appeal). 

95 See 37 CFR § 2.64(b). See also TMEP § 715.03, and Gary D. Krugman, TIPS FROM THE TTAB: The Amended 

Trademark Rules of Practice and Their Effect on Ex Parte Appeals, 74 Trademark Rep. 341 (1984). 

96 See 37 CFR §§ 2.63(b) and 2.64(a) & (b); TBMP §§ 1201.02 (Premature Final) and 1201.05 (Appeal vs. 

Petition); and TMEP §§ 715.03 and 715.03(c). 

97 See 37 CFR § 2.64(a), and TMEP § 715.01. 

98 See 37 CFR §§ 2.64 and 2.142(a), TMEP § 715.03 and TBMP § 1202.02 (Time for Appeal). 

1200 - 645 
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When an applicant files, in response to a final action or a second refusal on the same ground(s), 

or a repeated requirement, both a request for reconsideration and an appeal, the request for 

reconsideration should be made by separate submission and should specify the reasons why 

applicant believes reconsideration is warranted. The request for reconsideration should not be 

combined in the body of the notice of appeal; however, the applicant should indicate, in the 

notice of appeal, that a request for reconsideration has also been filed, so that the Board will be

alerted to obtain that submission prior to instituting the appeal.99 

A request for reconsideration filed more than six months from the final refusal is treated by the 

Board as a request for remand.100 A request for reconsideration or request for remand should not 

be combined with the applicant's appeal brief.101 

If an applicant which has filed a timely request for reconsideration of a final action, second 

refusal on the same ground(s), or repeated requirement, also files a timely appeal, and the 

examining attorney has not yet considered the request for reconsideration when the appeal is 

filed, the file of the application, with the appeal and the request for reconsideration, will be 

forwarded to the Board. The Board will acknowledge receipt of the appeal and request, suspend 

further proceedings (including applicant's time for filing its appeal brief) with respect to the 

appeal, and remand the application to the examining attorney for consideration of the request. 

Where an applicant has timely filed both a notice of appeal and a request for reconsideration, but 

has not heard from the Board within sixty days with regard to the appeal and reconsideration 

request, the applicant should not file its appeal brief. Rather, it may assume that the Board will 

institute the appeal, and then suspend proceedings and remand the application to the examining 

attorney, so that the due date for the appeal brief will be reset in the event that the examining 

attorney denies the request for reconsideration.102 The applicant does not need to verify with the 

Board that the due date for its brief on appeal will be changed if necessary.103 

In particular, if the request for reconsideration raises a new issue, the examining attorney must 

give the applicant an opportunity to respond before issuing a new final refusal and returning the 

file to the Board. New issues are typically raised by a request for reconsideration which amends 

the application to seek registration under the provisions of Section 2(f) of the Trademark Act, 15 

99 See TBMP § 1202.03 (Notice of Appeal).

100 See TBMP § 1209.04 (Remand Upon Request by Applicant). 

101 See In re Best Western Family Steak House, Inc., 222 USPQ 827, 828 (TTAB 1984).

102 For information concerning the actions that an examining attorney may take in response to a request for 

reconsideration of a final action, see TMEP §§ 715.03(a), 715.03(b) and 715.04. See also In re Juleigh Jeans 

Sportswear Inc., 24 USPQ2d 1694, 1696 n.8 (TTAB 1992). 

103 In re Live Earth Products Inc., 49 USPQ2d 1063 (TTAB 1998); and TBMP § 1203.02(a) (Applicant’s Main

Brief). 

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U.S.C. § 1052(f), or to seek registration on the Supplemental Register, or to amend the 

identification of goods, if a requirement for an acceptable identification of goods was not the 

subject of the final Office action.104 If the examining attorney believes that the outstanding 

issue(s) can be resolved, the examining attorney may contact applicant and attempt to work out a 

resolution. 

Occasionally when an applicant files its notice of appeal and a request for reconsideration at the 

same time, the papers become separated, and the examining attorney acts on the request for 

reconsideration before the Board can institute the appeal and remand the application. In that 

event, the Board will institute the appeal after the examining attorney acts on the request for 

reconsideration. Depending on the action the examining attorney has taken, the Board will either 

remand the application to the examining attorney (generally to await the applicant’s response to a 

nonfinal Office action) or, if the examining attorney has denied the request for reconsideration, 

will proceed with the appeal, and allow applicant 60 days from the mailing date of the Board 

action in which to file its appeal brief. The date for filing the appeal brief is reset in this situation 

because the applicant, at the time it filed its notice of appeal and request for reconsideration, had 

the expectation that the Board would follow its normal procedure and suspend proceedings in the 

appeal.105 

If, after suspension and remand for consideration by the examining attorney of a timely request 

for reconsideration, the examining attorney approves the application for publication (or for 

registration, in the case of a Supplemental Register application), the appeal will be moot. 

However, the examining attorney should notify the applicant by telephone.106 If, upon the 

examining attorney's consideration of the request, all refusals and requirements are not 

withdrawn, and a new final refusal to register or action maintaining the finality of a prior Office 

action is issued (either in the examining attorney's action on the request for reconsideration, or in 

a subsequent action), the six-month response clause should be omitted from the paper in which 

such action is taken; the file of the case should be returned to the Board; proceedings with 

respect to the appeal will be resumed; and applicant will be allowed time in which to file its 

appeal brief. The examining attorney must, prior to returning the file to the Board to resume

proceedings in the appeal, issue a written Office action apprising applicant of that fact, indicating 

the examining attorney’s withdrawal and maintenance of any refusals or requirements and 

acceptance of any amendments; it is not sufficient to make a note in the file and return the file to 

the Board. 

104 See TMEP § 714.05 and TBMP § 1201.02 for examples of new issues that would preclude the issuance of a final

action. 

105 See In re Live Earth Products Inc., supra.

106 See TMEP § 715.04. 

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If an appeal is late filed, but applicant timely filed a request for reconsideration, the Board will 

issue an action informing applicant of the lateness of its appeal, stating that the late appeal 

cannot be entertained by the Board, and forwarding the application to the examining attorney for 

consideration of the request for reconsideration.107 

A timely request for reconsideration of an appealed action may be accompanied by an 

amendment and/or by additional evidence. The evidentiary record in an application should be 

complete prior to the filing of an appeal, and additional evidence filed after appeal normally will 

be given no consideration by the Board.108 The Board will regard additional evidence a proper 

part of the record on appeal if it is submitted, together with a request for reconsideration, before 

the expiration of the six-month response period, even if it is submitted after the notice of appeal 

is filed.109 

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. 

If the applicant wishes to submit additional evidence, it must file a request for remand.110 

1205 Amendment of Application During Appeal 

1205.01 In General 

If, within six months following the issuance of a final action, or a second refusal on the same

ground(s), or a repeated requirement, applicant files both an amendment to its application and an 

ex parte appeal to the Board, and the examining attorney has not yet acted on the amendment 

when the appeal is filed, the file of the application, with the amendment and the appeal, will be 

forwarded to the Board. However, because of the possibility that papers may be separated, 

applicant should indicate in its notice of appeal that it has also filed an amendment with the 

107 See TBMP § 1202.02 (Time for Appeal). 

108 See 37 CFR § 2.142(d). See also TBMP § 1207 (Submission of Evidence During Appeal). 

109 See Gary D. Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules of Practice and Their Effect on

Ex Parte Appeals, 74 Trademark Rep. 341 (1984), and Daniel L. Skoler, TIPS FROM THE TTAB: Evidence in Ex 

Parte Appeals--Problems and Lost Opportunities, 73 Trademark Rep. 310 (1983). See also In re Psygnosis Ltd., 51

USPQ2d 1594, 1598 n.4 (TTAB 1999); In re Corning Glass Works, 229 USPQ 65, 65 n.5 (TTAB 1985), and In re 

Best Western Family Steak House, Inc., 222 USPQ 827, 828 n.3 (TTAB 1984). 

110 See 37 CFR § 2.142(d); TBMP §§ 1207.02 (Request to Remand for Additional Evidence) and 1209.04 (Remand

Upon Request by Applicant).

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notice of appeal.111 The Board will acknowledge receipt of the amendment and appeal, suspend 

further proceedings (including applicant's time for filing its appeal brief ̧

112 with respect to the 

appeal, and remand the application to the trademark examining attorney for consideration of the 

amendment. The Board's remand letter will also include instructions to the examining attorney 

with respect to the further actions that may and/or should be taken by the examining attorney in 

conjunction with the examining attorney's consideration of the amendment.113 Further, if the 

examining attorney believes that the outstanding issue(s) can be resolved, the examining attorney 

may contact applicant and attempt to work out a resolution. The examining attorney may not, 

however, assert a new refusal or requirement or submit evidence unrelated to the amendment or 

material submitted therewith, unless the examining attorney files with the Board a request under 

37 CFR § 2.142(f)(6) for remand to assert the new refusal or requirement or submit additional 

evidence, and the request is granted. 

Where an applicant has timely filed both a notice of appeal and an amendment, but has not heard 

from the Board within sixty days with regard to the appeal and amendment, the applicant should 

not file its appeal brief. Rather, it may assume that the Board will institute the appeal, and then 

suspend proceedings and remand the application to the examining attorney, so that the due date 

for the appeal brief will be reset in the event that the amendment does not place the application in 

condition for publication (or registration, in the case of an application on the Supplemental 

Registration). The applicant does not need to verify with the Board that the due date for its brief

on appeal will be changed if necessary.114 

If the examining attorney is persuaded, on the basis of the amendment, that applicant is entitled 

to the registration sought, the examining attorney may approve the application for publication (or 

for registration, in the case of a Supplemental Register application), and the appeal will be moot. 

The examining attorney should notify the applicant by telephone.115 

.

If the examining attorney, after consideration of the amendment filed after appeal, accepts the 

amendment but adheres to the final refusal to register, either because there are other grounds for 

refusal or requirements which have not been satisfied, or because the amendment, while 

111 See TBMP §§ 1202.03 (Notice of Appeal) and 1204 (Effect of Request for Reconsideration of Final Action). 

112 See TBMP § 1203.02(a) (Applicant’s Main Brief)

113 For information concerning the actions which may be taken by the examining attorney upon consideration of the

amendment see TMEP §§ 715.03(a), 715.03(b) and 715.04; and TBMP § 1204 (Effect of Request for

Reconsideration of Final Action). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 n.8 (TTAB 

1992); In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1153-54 (TTAB 1992); and In re Pierce Foods Corp.,

230 USPQ 307, 308 n.1 (TTAB 1986). 

114 In re Live Earth Products Inc., 49 USPQ2d 1063, 1064 (TTAB 1998) and TBMP § 1203.02(a) (Applicant’s 

Main Brief). 

115 See TMEP §§ 715.04 and 1501.05.

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acceptable, does not obviate the requirement/refusal, the examining attorney should issue a 

written action to that effect. That is, the Office action should indicate that the amendment has 

been accepted, and also indicate what refusals/requirements remain. The six-month response 

clause should be omitted from the paper in which such action is taken; the file of the case should 

be returned to the Board; proceedings with respect to the appeal will be resumed; and applicant 

will be allowed time in which to file its appeal brief. If the examining attorney refuses to accept 

the amendment, and the amendment raises a new issue, the examining attorney must allow 

applicant an opportunity to respond before issuing a final refusal and returning the file of the 

application to the Board. Therefore, the first Office action that considers and refuses the 

amendment must be a nonfinal action, and must include the six-month response clause.116 

If an applicant that has filed a timely appeal to the Board files an amendment to its application 

more than six months after the issuance of the final action, or the second refusal on the same

ground(s), or the repeated requirement, from which the appeal was taken, the Board will treat the 

amendment as a request for remand.117 Such a request will be granted upon a showing of good 

cause. Good cause will be found, for example, when the amendment is an attempt to comply 

with a requirement, such as an amendment to the identification of goods in response to a 

requirement for an acceptable identification, or when the amendment will obviate a ground for 

refusal, such as an amendment to the Supplemental Register or an amendment to assert a Section 

2(f) claim (15 U.S.C. § 1052(f)) in order to avoid or overcome a refusal under Sections 2(e)(1), 

2(e)(2) or 2(e)(4) of the Trademark Act, 15 U.S.C. §§ 1052(e)(1), 1052(e)(2) or 1052(e)(4). If 

the remand is granted, the Board will suspend proceedings with respect to the appeal and remand 

the application to the examining attorney for consideration of the amendment. The Board's 

remand letter will also include instructions to the examining attorney with respect to the further 

actions that may and/or should be taken by the examining attorney in conjunction with the 

examining attorney's consideration of the amendment. Remand in an ex parte appeal is a matter 

of discretion with the Board, and the Board may refuse to remand for consideration of an 

amendment filed more than six months after the date of the action from which the appeal was 

taken, if, for example, the amendment was filed in bad faith, or would serve no useful purpose. 

Further, if remand is made, the Board's instructions to the examining attorney concerning the 

handling of the amendment, and further action in connection therewith, may differ, for an 

amendment filed more than six months after the date of the action from which the appeal was 

taken, from those given by the Board for an amendment filed within six months after that date. 

If an appeal is late filed, but applicant timely filed an amendment to its involved application, the 

Board will issue a written action informing applicant of the lateness of its appeal; stating that the 

late appeal cannot be entertained by the Board; and forwarding the application to the examining 

attorney for appropriate action with respect to the amendment.

116 See TBMP § 1201.02 (Premature Final) and TMEP § 714.05 regarding amendments which raise new issues. 

117 See TBMP § 1209.04 (Remand Upon Request by Applicant). 

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If, at the time applicant files its appeal brief, it also wishes to amend its application in order to, 

for example, attempt to comply with a final requirement or to overcome a final refusal, the 

proper procedure is to file a request for remand and a request to suspend proceedings in the 

appeal pending the Board’s decision on the request for remand.118 However, occasionally an 

applicant will include an amendment as part of its brief. If this amendment is noted by the Board 

(and frequently it will not be noted if it is not made by a separate paper), the Board will treat the 

proposed amendment as a request for remand, and consider whether good cause has been shown 

in determining the request. If the Board does not note the request, but the examining attorney, 

upon reviewing applicant’s appeal brief, considers the amendment and allows it, the amendment 

will be entered.119

An application that has been considered and decided on appeal may be amended, if at all, only in 

accordance with 37 CFR § 2.142(g).120 

 

1205.02 Request to Divide 

An applicant may submit a request to divide the application to divide out goods or classes prior 

to, with or after the filing of a notice of appeal.121 An applicant may wish to submit such a 

request in a situation where a refusal to register applies only to certain classes in a multi-class 

application or to certain goods or services within a class in either a single-class or multi-class 

application. If an applicant submits a request to divide along with a notice of appeal, the Board 

will institute the appeal, suspend proceedings in it, and forward the file to the ITU/Divisional 

Unit of the Office for action on the request to divide. If a request to divide is pending at the time 

a notice of appeal is submitted, the Board will await receipt of the divided applications after the 

ITU/Divisional Unit has acted on the request to divide, and then institute the appeal. 

In either situation, after the request to divide has been processed, the Board receives both the 

original file (parent application) and the new file created by the division (child application). If 

the appeal applies to only one of the files, the Board will institute the appeal with respect to that 

file, and allow the applicant 60 days in which to submit its appeal brief. If the appeal applies to 

both files, the Board will resume action in the appeals with respect to both files. In the latter 

situation, the Board may consolidate the appeals. 

118 See above discussion. 

119 See In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1512 n.2 (TTAB 2001) (one ground for refusal 

was requirement for translation of mark; because applicant offered translation in appeal brief and examining 

attorney did not address the issue in his brief, Board treated requirement as moot). 

120 For further information concerning amendment after decision on appeal, see TBMP § 1218 and TMEP § 

1501.06.

121 See generally, TMEP § 1110 regarding requests to divide. 

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If the appeal applies to only one of the files, and if applicant had previously submitted a request

for reconsideration or an amendment with respect to this file, the Board will suspend action on 

the appeal and remand the application to the examining attorney, in the same procedure that is 

followed for any request for reconsideration or amendment.122 The remaining file will be 

forwarded to the examining attorney for further action, as appropriate. Such action may be 

approval of the application for publication, or for consideration of a request for reconsideration 

or amendment. However, unless the examining attorney issues a new final action with respect to 

that application, applicant may not subsequently submit a notice of appeal. 

If a request to divide is submitted after an appeal is instituted, the Board will determine whether 

to suspend action on the appeal and forward the file to the ITU/Divisional Unit, or defer the 

processing of the request to divide and continue proceedings in the appeal. Such a determination 

will be based on such factors as the reason for the request to divide (e.g., if the division will 

result in the withdrawal of the refusal as to certain of the classes) and the stage of the appeal. 

 

1206 Amendment to Allege Use; Statement of Use 

1206.01 Amendment to Allege Use 

An amendment to allege use under Section 1(c) of the Act, 15 U.S.C. § 1051(c), may be filed in 

an intent-to-use application, i.e., an application under Section 1(b) of the Act, 15 U.S.C. § 

1051(b), at any time between the filing of the application and the date the trademark examining 

attorney approves the mark for publication. Thereafter, an allegation of use may be submitted 

only as a statement of use under Section 1(d) of the Act, 15 U.S.C. § 1051(d), after the issuance 

of a notice of allowance under Section 13(b)(2) of the Act, 15 U.S.C. § 1063(b)(2).123 Thus, 

because an ex parte appeal occurs prior to the approval of a mark for publication, an amendment 

to allege use filed during the pendency of an ex parte appeal to the Board is timely.124 

If an applicant that has filed an amendment to allege use during the six-month response period 

following issuance of a final action also files a timely appeal, and the examining attorney has not 

yet acted on the amendment to allege use when the appeal is filed, the file of the application, 

with the appeal and the amendment to allege use, will be forwarded to the Board. The Board 

will acknowledge receipt of the appeal and amendment to allege use, suspend further 

proceedings (including applicant's time for filing its appeal brief) with respect to the appeal, and 

122 See generally, TBMP §§ 1204 (Effect of Request for Reconsideration of Final Action) and 1205 (Amendment of

Application During Appeal). 

123 See 37 CFR § 2.76(a). See also In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm'r 1991). 

124 See 37 CFR § 2.76(a) and TMEP §§ 1104.03 and 1104.07. 

1200 - 652 
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remand the application to the examining attorney for consideration of the amendment to allege 

use. That is, the amendment to allege use will be handled by the Board in the same manner as 

any other amendment filed during the six-month response period following issuance of a final 

action.125 Applicant should not file its appeal brief within sixty days of the filing of the notice of 

appeal, as provided by 37 CFR § 2.142(b)(1), even if the Board has not issued its order 

suspending proceedings prior to the date the appeal brief would otherwise be due. Nor does the 

applicant need to verify with the Board that the due date for its brief will be changed if

necessary. See TBMP § 1203.02(a). However, because papers may become separated, if 

applicant files an amendment to allege use along with the notice of appeal, it should indicate in 

the notice of appeal that an amendment to allege use in being filed contemporaneously.126

If, in the course of examination of the amendment to allege use, the application is approved for 

publication (or for registration, in the case of an application amended to seek registration on the 

Supplemental Register), or becomes abandoned, the appeal will be moot. The examining 

attorney should so notify the applicant, by telephone or e-mail, if e-mail communications have 

been authorized.127 If the examining attorney, after consideration of the amendment to allege 

use, adheres to the final refusal to register, or ultimately issues a new final refusal to register, the 

six-month response clause should be omitted from the paper in which such action is taken; the 

file of the case should be returned to the Board; proceedings with respect to the appeal will be 

resumed; and further appropriate action will be taken therein.

128 

If an applicant which has filed a timely appeal to the Board files an amendment to allege use, in 

the application which is the subject of the appeal, more than six months after issuance of the 

appealed action, the Board may, in its discretion, suspend proceedings with respect to the appeal 

and remand the application to the examining attorney for consideration of the amendment to 

allege use. Alternatively, the Board may continue proceedings with respect to the appeal, thus

deferring examination of the amendment to allege use until after final determination of the 

appeal. If the final determination of the appeal is adverse to applicant, the amendment to allege 

use will be moot. 

 

125 See in this regard, TBMP § 1205 (Amendment of Application During Appeal). 

126 For information concerning examination by the examining attorney of an amendment to allege use filed in

conjunction with a notice of appeal, see TMEP § 1104.07.

127 See TMEP § 1104.07. 

128 See TMEP § 1104.07. 

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37 CFR § 2.142(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.

The evidentiary record in an application should be complete prior to the filing of an ex parte 

appeal to the Board. Additional evidence filed after appeal normally will be given no 

consideration by the Board.132

 

1206.02 Statement of Use 

A statement of use under Section 1(d) of the Act, 15 U.S.C. § 1051(d), is premature if it is filed 

in an intent-to-use application, i.e., an application under Section 1(b) of the Act, 15 U.S.C. § 

1051(b), prior to the issuance of a notice of allowance under Section 13(b)(2) of the Act, 15 

U.S.C. § 1063(b)(2).129 

A notice of allowance is not issued in an intent-to-use application (for which no amendment to 

allege use under Section 1(c) of the Act, 15 U.S.C. § 1051(c) has been timely filed and accepted) 

unless and until the application is approved for publication, and then published in the Official 

Gazette for opposition; no timely opposition is filed or all oppositions filed are dismissed; and no

interference is declared.130 

Therefore, a statement of use filed during an ex parte appeal to the Board is premature. A 

premature statement of use will not be considered.

131 Instead, the premature statement of use 

will be returned to applicant and the fee will be refunded. 

1207 Submission of Evidence During Appeal 

1207.01 General Rule--Evidence Submitted After Appeal Untimely 

129 See 37 CFR § 2.88(a).

130 See Section 13(b)(2) of the Act, 15 U.S.C. § 1063, and 37 CFR § 2.81(b). See also TMEP § 1109.04 and TBMP

§ 219 (Amendment to Allege Use). 

131 See 37 CFR § 2.88(a). 

 

132 See 37 CFR § 2.142(d). See also In re Trans Continental Records Inc, 62 USPQ2d 1541 (TTAB 2002)

(materials from web search engines submitted with appeal brief not considered); In re Lamb-Weston Inc., 54 

USPQ2d 1190, 1191 n.2 (TTAB 2000); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999); In re Posthuma, 45

USPQ2d 2011, 2012 n.2 (TTAB 1998) (third-party registration attached to appeal brief not considered); In re Wada, 

48 USPQ2d 1689, 1689 n.2 (TTAB 1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (evidence 

1200 - 654 
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However, if the applicant or the examining attorney submits excerpts from articles, the 

nonoffering party may submit the complete article, even if such submission is made after the 

appeal is filed.133 If the nonoffering party wishes to have the entire article considered, the better 

practice is to submit the article with a request for remand. However, because the party 

submitting the excerpt of the article had the opportunity to review the entire article, if the article 

is submitted with an appeal brief the Board need not remand the application, and may instead 

consider the article as part of the record.134 

1207.02 Request to Remand for Additional Evidence 

If an applicant or trademark examining attorney wishes to introduce additional evidence after an 

appeal has been filed, the applicant or examining attorney may file a written request with the 

Board to suspend the appeal and remand the application for further examination.135

submitted with reply brief not considered); In re L.C. Licensing Inc., 49 USPQ2d 1379, n.3 (TTAB 1998) (thirdparty registrations first submitted with appeal brief not considered); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 

1997) (new material attached to appeal and reply briefs, and submitted at oral hearing and subsequent to hearing 

untimely and not considered); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Pennzoil 

Products Co., 20 USPQ2d 1753 1756 n.9 (TTAB 1991); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1884 n.5

(TTAB 1988); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 n.2 (TTAB 1987); In re Gold's Gym 

Enterprises Inc., 3 USPQ2d 1716, 1716 n.2 (TTAB 1987); In re International Environmental Corp., 230 USPQ 688, 

690 (TTAB 1986); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 (TTAB 1984); In re Compagnie 

Internationale Pour L'Informatique-Cie Honeywell Bull, 223 USPQ 363, 363 n.3 (TTAB 1984); In re Carvel Corp., 

223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 46 n.1 (TTAB 1983); In re Best 

Western Family Steak House, Inc., 222 USPQ 827, 827 n.1 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 336 n.3 

(TTAB 1984); In re Pierre Fabre S.A., 221 USPQ 1210, 1212 n.2 (TTAB 1984); In re Development Dimensions 

International, Inc., 219 USPQ 161, 162 n.2 (TTAB 1983); In re Gagliardi Bros., Inc., 218 USPQ 181, 183 (TTAB 

1983); and In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982). 

 Cf. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986), and In re Volvo White Truck 

Corp., 16 USPQ2d 1417 (TTAB 1990). 

 133 See In re Bed & Breakfast Registry, supra at 820 (if only a portion of an article is submitted, that portion is not 

thereby insulated from the context from whence it came). 

134 See also TBMP § 1208.01 (Evidence from NEXIS Database or Publications). But see In re Psygnosis Ltd., 

supra (if, after appeal, an applicant attempts to submit a full printout of articles from the NEXIS database which 

were revealed in an examining attorney’s search, but which were not introduced by the examining attorney, such

articles are considered to be additional evidence and therefore untimely). 

135 See 37 CFR § 2.142(d). See also In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992); In

re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Big Wrangler Steak House, Inc., 230 USPQ

634, 635 n.4 (TTAB 1986); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re Chung,

Jeanne & Kim Co., 226 USPQ 938, 940 n.6 (TTAB 1985); In re Mayer-Beaton Corp., 223 USPQ 1347, 1348 

(TTAB 1984); In re Compagnie Internationale Pour L'Informatique-Cie Honeywell Bull, 223 USPQ 363, 363 n.3

(TTAB 1984); In re Carvel Corp., 223 USPQ 65, 66 (TTAB 1984); In re Jos. Schlitz Brewing Co., 223 USPQ 45, 

46 n.1 (TTAB 1983); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 n.1 (TTAB 1984); In re 

Jeep Corp., 222 USPQ 333, 336 n.3 (TTAB 1984); In re Consolidated Foods Corp., 218 USPQ 184, 186 n.2

(TTAB 1983); and In re Royal Viking Line A/S, 216 USPQ 795, 797 n.3 (TTAB 1982). 

1200 - 655 
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A request under 37 CFR § 2.142(d) to suspend and remand for additional evidence must be filed 

prior to the rendering of the Board's final decision on the appeal.136 In addition, the request must 

include a showing of good cause therefor (which may take the form of a satisfactory explanation 

as to why the evidence was not filed prior to appeal), and be accompanied by the additional 

evidence sought to be introduced.137 The length of the delay in making the request after the 

reason for the remand becomes known, or the point in the appeal process at which the request for 

remand is made, will be considered in the determination of whether good cause exists. 

Generally, the later in the appeal proceeding that the request for remand is filed, the stronger the 

reason that must be given for good cause to be found.138 

Examples of circumstances that have been found to constitute good cause for a remand for 

additional evidence include the following: 

(1) The evidence was not previously available.139 Even if the evidence was not 

previously available, good cause may not be found if the newly available 

evidence is merely cumulative in nature. Thus, if the examining attorney requests 

remand in order to submit an article which was published subsequent to the filing 

of the appeal, but which is of substantially the same nature as articles previously 

made of record, the request may be denied. Nor can the examining attorney use 

the subsequent publication of a single article to make of record articles which 

were previously available. Similarly, if the applicant requests remand to make of 

record its most recent monthly sales or advertising figures in support of a Section 

2(f) claim, the request may be denied. There is a point at which prosecution or 

examination must come to an end. 

(2) A new attorney for the applicant, or a new examining attorney, has taken over 

the case and wishes to supplement the evidence of record. The transfer of a case 

136 See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984), and In re Carvel Corp., supra. 

137 See In re Big Wrangler Steak House, Inc., supra; In re Bercut-Vandervoort & Co., supra; In re Chung, Jeanne &

Kim Co., supra; In re Mayer-Beaton Corp., supra; In re Compagnie Internationale Pour L'Informatique-Cie 

Honeywell Bull, supra; In re Jeep Corp., supra; and In re Historic Wharf's Associates, Inc., 222 USPQ 92, 93 n.1

(TTAB 1984). 

138 See also In re Pennzoil Products Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991); Gary D. Krugman, TIPS

FROM THE TTAB: The Amended Trademark Rules of Practice and Their Effect on Ex Parte Appeals, 74

Trademark Rep. 341 (1984); and Daniel L. Skoler, TIPS FROM THE TTAB: Evidence in Ex Parte Appeals--

Problems and Lost Opportunities, 73 Trademark Rep. 310 (1983). 

139 See In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001); and In re Central Sprinkler Co., 49 USPQ2d 1194, 

1194 n.2 (TTAB 1998) (applicant’s request for remand made in its appeal brief in order to allow examining attorney

to consider additional third-party registrations denied because such evidence could have been submitted earlier in

the prosecution). 

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EX PARTE APPEALS 

If a request to remand for additional evidence is granted, the nonrequesting party may submit 

additional evidence in response to the evidence submitted with the request.

When an applicant's request to suspend and remand for additional evidence is granted, and the 

application is remanded to the examining attorney for further examination, the examining 

attorney may approve the application for publication (or for registration, in the case of a 

Supplemental Register application), or adhere to the action from which the appeal was taken. 

The examining attorney may also issue a new nonfinal action asserting any new refusal or 

requirement necessitated by the new evidence. The examining attorney may not, however, assert 

a new refusal or requirement unrelated to the new evidence, unless the examining attorney files 

with the Board a request under 37 CFR § 2.142(f)(6) for remand to assert the new refusal or 

requirement, and the request is granted. If the examining attorney is persuaded, on the basis of 

the new evidence, that applicant is entitled to the registration sought, and approves the 

application for publication (or for registration, in the case of a Supplemental Register 

application), the appeal will be moot. However, the examining attorney should so notify the 

applicant by telephone. ining attorney, after consideration of the new evidence, 

adheres to the final refusal to register, or ultimately issues a new final refusal to register, the sixmonth response clause should be omitted from the action; the file of the case should be returned 

to the Board; proceedings with respect to the appeal will be resumed; and further appropriate 

action will be taken therein. 

 

from one firm member to another is not considered by the Board to constitute 

good cause for a remand under the "new attorney" rationale. However, the 

transfer of the case from in-house counsel to an outside firm is treated as a new 

attorney taking over the case. Similarly, a different examining attorney being 

assigned to the file is treated as a new attorney taking over the case. 

(3) The applicant and examining attorney have agreed to the remand. 

In addition, because a consent agreement offered in response to a refusal to register under 

Section 2(d) of the Act, 15 U.S.C. § 1052(d)140 is inherently difficult and time-consuming to 

obtain, and may be highly persuasive of registrability, the Board will grant a request to suspend 

and remand for consideration of a consent agreement if the request, accompanied by the consent 

agreement, is filed at any time prior to the rendering of the Board's final decision on the appeal. 

141 

142 If the exam

140 See, for example, In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 970 (Fed. Cir. 1985), and In re E.I. du Pont de

Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).

141 See In re Northland Aluminum Products, Inc., 221 USPQ 1110, 1112 (TTAB 1984), aff'd, 777 F.2d 1556, 227

USPQ 961 (Fed. Cir. 1985). Cf. In re Development Dimensions International, Inc., 219 USPQ 161, 162 (TTAB 

1983). 

142 See TMEP § 715.04. 

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EX PARTE APPEALS 

 

When an examining attorney's request to suspend and remand for additional evidence is granted, 

the Board, in its action granting the request, will allow the examining attorney time in which to 

issue an Office action (with no six-month response clause) relating to the new evidence to be 

submitted therewith. After the examining attorney's new action has been issued, the application 

should be returned to the Board; proceedings with respect to the appeal will be resumed; 

applicant will be allowed an opportunity to submit, if it so desires, responsive evidence; and 

further appropriate action with respect to the appeal will be taken. If applicant's appeal brief has 

already been filed, applicant will be allowed an opportunity, if it so desires, to file a 

supplemental brief directed to the new evidence submitted by the examining attorney. 

1207.03 Evidence Considered Due to Actions of Nonoffering Party 

Evidence submitted after appeal, without a granted request to suspend and remand for additional 

evidence143 may be considered by the Board, despite its untimeliness, if the nonoffering party (1) 

does not object to the new evidence, and (2) discusses the new evidence or otherwise 

affirmatively treats it as being of record.144 In such a situation, the Board may consider evidence 

submitted by the nonoffering party to rebut the untimely evidence.145 

Copies of third-party registrations that are submitted with an applicant’s brief may be considered 

in certain circumstances, even if the examining attorney objects to the registrations or does not 

discuss them in the examining attorney’s brief. If the applicant, during the prosecution of the 

application, provided a listing of third-party registrations, without also submitting actual copies 

of the registrations, and the examining attorney did not object or otherwise advise applicant that 

a listing is insufficient to make such registrations of record at a point when the applicant could 

143 See TBMP § 1207.02 (Request to Remand for Additional Evidence). 

144 See, for example, In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 n.5 (TTAB 2001) (“evidence” of sales 

mentioned for first time in applicant’s brief and thus not timely submitted, but because in her brief examining

attorney treated the information as though of record, Board did also); In re Urbano, 51 USPQ2d 1776, 1778 n.4

(TTAB 1999) (third-party registrations submitted with examining attorney’s brief considered of record because 

applicant did not object and discussed the evidence on its merits in reply brief); In re Pennzoil Products Co., 20

USPQ2d 1753, 1756 n.9 (TTAB 1991); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 n.2 (TTAB 1990); In

re Dana Corp., 12 USPQ2d 1748, 1749 n.8 (TTAB 1989); In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988);

Gary D. Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules of Practice and Their Effect on Ex

Parte Appeals, 74 Trademark Rep. 341 (1984); and Daniel L. Skoler, TIPS FROM THE TTAB: Evidence in Ex

Parte Appeals--Problems and Lost Opportunities, 73 Trademark Rep. 310 (1983). 

 See also In re Wells Fargo & Co., 231 USPQ 95, 101 n.24 (TTAB 1986); In re Weather Channel, Inc., 229

USPQ 854, 854 n.3 (TTAB 1985); In re Bercut-Vandervoort & Co., 229 USPQ 763, 766 n.6 (TTAB 1986); In re 

Cotter & Co., 228 USPQ 202, 204 n.2 (TTAB 1985); In re Chung, Jeanne & Kim Co., 226 USPQ 938, 946 n.6 

(TTAB 1985); In re Bee Pollen From England Ltd., 219 USPQ 163, 165 n.4 (TTAB 1983); and In re Development 

Dimensions International, Inc., 219 USPQ 161,162 n.2 (TTAB 1983). 

145 See In re Development Dimensions International, Inc., supra. Cf. In re Northland Aluminum Products, Inc., 221 

USPQ 1110, 1112 (TTAB 1984), aff'd, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). 

1200 - 658 
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EX PARTE APPEALS 

 

cure the insufficiency, the examining attorney will be deemed to have waived any objection as to 

improper form.146 

1207.04 Evidence Filed With Timely Request for Reconsideration 

A timely request for reconsideration of an appealed action may be accompanied by additional 

evidence, which will thereby be made part of the evidentiary record in the application. There is 

no need, in such a situation, for a 37 CFR § 2.142(d) request to suspend and remand for 

additional evidence. Evidence submitted with a timely request for reconsideration of an 

appealed action, that is, a request filed during the six-month response period following issuance 

of the appealed action, is considered by the Board to have been filed prior to appeal, even if the 

notice of appeal was, in fact, filed earlier in the six-month response period than the request for 

reconsideration.147 

When a timely request for reconsideration of an appealed action is filed (with or without new 

evidence), the examining attorney may submit, with his or her response to the request, new 

evidence directed to the issue(s) for which reconsideration is sought. However, the applicant 

may not submit additional evidence in response to any evidence submitted by the examining 

attorney unless the examining attorney’s action is a nonfinal action to which a response may be 

filed. Otherwise, if the applicant wishes to submit additional evidence, it must file a request for 

remand.148

 

1207.05 Submission of Evidence Upon Remand for New Refusal 

Additional evidence may be submitted, both by the examining attorney and by the applicant, if

(1) an appealed application is remanded by the Board for further examination under 37 CFR § 

2.142(f) (i.e., sua sponte remand by the Board when it appears to the Board that an issue not 

previously raised may render the mark of the applicant unregistrable),149 or under 37 CFR § 

2.142(f)(6) (i.e., remand by the Board upon written request by the examining attorney when it 

appears to the examining attorney that an issue not involved in the appeal may render the mark 

146 See TBMP § 1208.02 (Third-Party Registrations), including discussion of evidentiary value of such listings. See

also In re Boyd Gaming Corp., 57 USPQ2d 1944, 1945 n.4 (TTAB 2000) (applicant provided list of third-party 

registration numbers in its response; because examining attorney did not object and made no mention of the marks, 

they were deemed to be of record). 

147 See TBMP § 1204 (Effect of Request for Reconsideration of Final Action) and authorities cited therein. 

148 See 37 CFR § 2.142(d), TBMP §§ 1207.01 (Evidence Submitted After Appeal Untimely) and 1207.02 (Request

to Remand for Additional Evidence). 

149 See TBMP § 1209.01 (Remand Upon Board’s Own Initiative). 

1200 - 659 
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EX PARTE APPEALS 

Proceedings in an ex parte appeal will not be suspended pending determination by the 

Commissioner for Trademark’s Office of a letter of protest. However, if a letter of protest is 

granted during the pendency of an ex parte appeal, and the examining attorney, having 

considered the supporting evidence submitted with the letter of protest, wishes to make that 

evidence of record in the application, that is, wishes to rely on the evidence to support the 

appealed refusal of registration, the examining attorney may file a written request with the 

Board, pursuant to 37 CFR § 2.142(d), to suspend the appeal and remand the application for 

further examination.

The request must be filed prior to the rendering of the Board's final decision on the appeal, and 

must be accompanied by the additional evidence sought to be introduced.

request must include a showing of good cause therefor, in the same manner as any other request 

to remand for additional evidence.

 

of the applicant unregistrable),150 and (2) the examining attorney, upon remand, does, in fact, 

issue a new refusal to register or requirement.151 If no new refusal or requirement is made, and 

the examining attorney instead returns the file to the Board, no additional evidence may be 

submitted.152 

 

1207.06 Letter of Protest Evidence 

A third party that has knowledge of facts bearing upon the registrability of a mark in a pending 

application may bring such information to the attention of the Office by filing, with the Office of 

the Commissioner for Trademarks, a "letter of protest," that is, a letter that recites the facts and 

which is accompanied by supporting evidence. The Administrator for Trademark Identifications, 

Classifications and Practice (“Administrator”) will determine whether the information should be 

given to the trademark examining attorney for consideration.153 If the examining attorney issues 

an Office action that includes any materials submitted with the letter of protest, that material 

becomes part of the record of the file for appeal.154 

155 

156 In addition, the 

157 

150 See TBMP § 1209.02 (Upon Request by Trademark Examining Attorney).

151 See In re Bank America Corp., 229 USPQ 852, 853 n.4 (TTAB 1986). 

152 See In re Diet Tabs, Inc., 231 USPQ 587, 588 n.3 (TTAB 1986). 

153 See TBMP § 215 (Effect of Letter of Protest) and authorities cited therein. 

154 In re Urbano, 51 USPQ2d 1776, 1778 n.4 (TTAB 1999). 

155 For information concerning a request for remand for additional evidence see TBMP § 1207.02.

156 See TBMP § 1207.02 (Request to Remand for Additional Evidence). 

157 For information concerning good cause for a remand for additional evidence, see TBMP § 1207.02.

1200 - 660 
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EX PARTE APPEALS 

1208 Treatment of Evidence 

For example, the Board is somewhat more lenient in its approach in the consideration of surveys 

in ex parte proceedings than inter partes proceedings.

declaration is an established method for the introduction of evidence in an ex parte 

proceeding. evidence may not be offered in affidavit 

or 37 CFR § 2.20 declaration form except by agreement of the parties.162 

 

Evidentiary value of material submitted by a third party through a letter of protest will depend on 

whether it meets evidentiary requirements for authentication or foundation, identified as to 

nature or source and are not self-authenticating.158 

The Board generally takes a somewhat more permissive stance with respect to the admissibility 

and probative value of evidence in an ex parte proceeding than it does in an inter partes 

proceeding. That is, in an ex parte proceeding the Board tolerates some relaxation of the 

technical requirements for evidence and focuses instead on the spirit and essence of the rules of 

evidence. The reason for this more relaxed approach in ex parte cases is that in an ex parte 

proceeding, there is no cross-examination of witnesses or any compelling need for the strict 

safeguards required in an inter partes proceeding.

159 

160 Also, the affidavit or 37 CFR § 2.20 

161 In an inter partes proceeding, however, 

158 In re Urbano, supra (documents of limited evidentiary value because no affidavits or other evidence establishing 

foundation, and no information establishing authenticity or source). 

159 See In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10 &1924 n.18 (TTAB 1996) (Board allowed NEXIS

evidence to show psychological effect of color blue, despite hearsay nature, recognizing the difficulty for examining 

attorney to establish such fact without relying on NEXIS evidence; Board also accepted sufficiency of evidence

showing features of applicant’s trade dress were common, recognizing that USPTO’s limited resources constrain an

examining attorney’s ability to acquire photographs of interiors of retail establishments); In re Broadway Chicken 

Inc., 38 USPQ2d 1559, 1565 (TTAB 1996); In re Murphy Door Bed Co., 223 USPQ 1030, 1032 n.9 (TTAB 1984);

and Daniel L. Skoler, TIPS FROM THE TTAB: Evidence in Ex Parte Appeals--Problems and Lost Opportunities, 

73 Trademark Rep. 310, 315 (1983). See also In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 

1993). 

160 In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996); and In re Pillsbury Co., 174 USPQ 318, 320 (TTAB 

1972). 

161 See, for example, 37 CFR § 2.41(b); In re Manco Inc., 24 USPQ2d 1938, 1941 n.8 (TTAB 1992); In re Bauhaus 

Designs Canada Ltd., 12 USPQ2d 2001, 2004 (TTAB 1989); In re Motorola, Inc., 3 USPQ2d 1142, 1143 (TTAB 

1986); In re Peterson Manufacturing Co., 229 USPQ 466, 468 (TTAB 1986); In re Melville Corp., 228 USPQ 970, 

972 (TTAB 1986); In re Gammon Reel, Inc., 227 USPQ 729, 731 (TTAB 1985); and In re Original Red Plate Co., 

223 USPQ 836, 838 (TTAB 1984). 

162 See 37 CFR § 2.123(b), and TBMP § 703.01(b) (Form of Testimony) and cases cited therein. 

1200 - 661 
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EX PARTE APPEALS 

However, while the evidentiary requirements in an ex parte record are less formal than in an inter 

partes context, documents submitted by a third party by letter of protest must still comply with 

inter partes evidentiary requirements of foundation and authentication to have evidentiary 

value.

 

It is the better practice to provide evidence as to sales figures and the like by affidavit or 

declaration. However, representations by applicant’s counsel may, in certain circumstances, be 

accepted.163 Affidavits or declarations may have probative value even if they are form

documents, or are prepared by applicant’s attorney.164 

165 

For information as to how the Court of Appeals for the Federal Circuit, in reviewing a decision 

of the Board on an ex parte appeal, evaluates the sufficiency of the evidence offered by the 

trademark examining attorney, see the cases cited in the note below.166

 

163 See In re EBSCO Industries Inc., 41 USPQ2d 1917, 1923 n.5 (TTAB 1997) (examining attorney never objected

to attorney’s representations, and figures uncontradicted by other information). 

164 See In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396, 399 (CCPA 1972) (fact that affidavits were

drafted by applicant’s attorney and were practically identical in wording detracts little or nothing from their 

sufficiency to make out a prima facie case of trademark recognition); and In re Pingel Enterprise Inc., 46 USPQ2d 

1811, 1822 n.15 (TTAB 1998) (fact that applicant’s attorney assisted consumers in preparing statements--form

letters--to show acquired distinctiveness does not make the submissions less honest or valid). 

 But see In re Audio Book Club Inc., 52 USPQ2d 1042, 1047 (TTAB 1999) (fact that 49 form letters were

couched in legal terms and presumably drafted by applicant’s counsel raises some questions as to whether signers

understood the legal import of their statements); In re Benetton Group S.p.A., 48 USPQ2d 1214, 1217 (TTAB 1998)

(form statements that do not provide basic background information about the declarants and their experience with 

applicant have limited probative value); and In re EBSCO Industries Inc., supra (declarations deserve little weight

because there are questions as to whether they reflect views of the declarants since declarants filled in only their 

names and addresses in forms, and declarants failed to notice that drawing was missing from the declaration when

the focus of the declaration was the configuration shown in the drawing). 

165 See In re Urbano, 51 USPQ2d 1776, 1779 n.6 (TTAB 1999) (affidavit should have been submitted to identify 

and authenticate documents that are not clearly identified as to nature or source and are not self-authenticating). 

166 In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988) (Court, being mindful

that the USPTO has limited facilities for acquiring evidence--it cannot, for example, be expected to conduct a survey 

of the marketplace or obtain consumer affidavits--concludes evidence of record is sufficient to establish a prima 

facie case of deceptiveness), and In re Loew's Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 

1985) ("...practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its 

administrative action."). 

 But see In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923, 1928 (Fed. Cir. 1994) ("...the PTO 

may discharge its burden of proving that Mavety's mark BLACK TAIL is scandalous under §1052(a) through

evidence such as consumer surveys regarding the substantial composite of the general public."). 

1200 - 662 
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EX PARTE APPEALS 

Applicant or the trademark examining attorney may submit articles or excerpts from articles 

taken from periodicals or the NEXIS database as evidence. aterial is evidence of how 

a term or mark may be perceived, rather than of the truth of the underlying information in the 

article. newswires or foreign publications are of minimal 

evidentiary value because it is not clear that such stories have appeared in any publication 

available to the consuming public.169 Wire service stories are competent to show how their 

authors used particular terms, but since they are circulated primarily to newspapers, they are not 

assumed to have influenced the attitudes of prospective customers.

 

1208.01 Evidence from NEXIS Database or Publications 

167 Such m

168 Accordingly, stories from

170 

It is not necessary that all NEXIS articles retrieved by a search be submitted and, indeed, the 

Board discourages such submissions where they are unnecessarily redundant or not probative. 

Examining attorneys should not submit articles or excerpts that are not relevant.171 However, 

167 In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998). 

168 See In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (use of term in articles, particularly those 

periodicals with a general circulation, reflects a perception that the public is familiar with the term and will readily 

understand it) and In re Hudson News Co., 39 USPQ2d 1915, 1920 n.10 (TTAB 1996) (Board allowed use of

NEXIS evidence to show psychological effect of color blue, despite applicant’s hearsay objection, noting the

difficulties for examining attorneys to establish this kind of fact, and although the evidence has a hearsay element, 

there is no bias in the evidence, which was not prepared for purposes of the case). 

169 In re Opus One Inc., 60 USPQ2d 1812, 1815 n.7 (TTAB 2001) (newswire stories, presumably unpublished, and 

stories from foreign publications, not considered); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1538

n.2 (TTAB 1998) (in the absence of evidence of the extent of circulation of foreign publications in the United States, 

they cannot serve to show the significance in this country of the designation at issue); and In re Wilcher Corp., 40 

USPQ2d 1929, 1931 (TTAB 1996) (in absence of evidence establishing substantial circulation of foreign 

publications in U.S., they are not competent to show significance of term to general American public). Compare In 

re Cell Therapeutics Inc., 67 USPQ2d 1795, 1797 (TTAB 2003) (where the relevant public consisted of highly 

sophisticated medical doctors and researchers who would have access to news wire stories). 

170 See In re Organik Technologies Inc., 41 USPQ2d 1690, 1691 n.3 (TTAB 1997) (newswire articles given 

minimal consideration as they are circulated primarily to newspapers whose editors select those stories of sufficient

interest to publish; thus, such articles do not prove that the news release appeared as a story in any newspaper or

magazine and are evidence only of the opinion of the author). See also In re Fitch IBCA, Inc., 64 USPQ2d 1058, 

1059 n.2 (TTAB 2002); In re Couture, 60 USPQ2d 1317, 1318 n.2 (TTAB 1999); In re Urbano, 51 USPQ2d 1776, 

1778 n. 3 (TTAB 1999); In re Manco Inc., 24 USPQ2d 1938, 1939 n.4 (TTAB 1992); and In re Men’s International

Professional Tennis Council, 1 USPQ2d 1917, 1918-19 (TTAB 1986). 

 Compare In re Cell Therapeutics, Inc., supra at 1798 (given that news wire stories are likely to reach the public 

via the Internet, they now have more probative value than in the past). 

171 See In re Couture, supra (many excerpts were repetitive or used the searched term for services not related to the 

applicant’s); and In re Lamb-Weston Inc., supra (articles which bear no relationship to applicant’s goods are 

irrelevant). 

 

1200 - 663 
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EX PARTE APPEALS 

 

examining attorneys should not submit only those articles that support the Office’s position, and 

deliberately not submit those which are helpful to the applicant.172 

If applicant or the examining attorney submits excerpts from articles, the nonoffering party may 

submit the complete article, even if such submission is made after the appeal is filed.173 If only a 

portion of an article is submitted, that portion is not thereby insulated from the context from

whence it came.174 If the nonoffering party wishes to have the entire article considered, the 

better practice is to submit the article with a request for remand. However, because the party 

submitting the excerpt of the article had the opportunity to review the entire article, if the article 

is submitted with an appeal brief the Board need not remand the application, and may instead 

consider the article as part of the record. However, if, after appeal, an applicant attempts to 

submit a full printout of articles from the NEXIS database which were revealed in an examining 

attorney’s search, but which were not introduced by the examining attorney, such articles are 

considered to be additional evidence and therefore untimely.175 

1208.02 Third-party Registrations 

To make a third-party registration of record, a copy of the registration, either a copy of the paper 

USPTO record, or a copy taken from the electronic records of the Office, should be submitted.176 

Mere listings of registrations, or copies of private company search reports, are not sufficient to 

make the registrations of record.177 There are limited circumstances in which the Board will 

consider such listings. In particular, if an applicant includes a listing of registrations in a 

response to an Office action, and the examining attorney does not advise applicant that the listing 

is insufficient to make the registrations of record at a point when applicant can correct the error,

the examining attorney will be deemed to have stipulated the registrations into the record.178 

172 See In re Trans Continental Records Inc., 62 USPQ2d 1541, 1544 (TTAB 2002) (although the examining

attorney described the NEXIS articles which were submitted as a “sample,” Board concerned by the fact that the 

NEXIS search retrieved 441 articles, and the first of the ten stories submitted was number 257). 

173 See TBMP § 1207.01 for general rule that evidence submitted after appeal is untimely. 

174 In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986). 

175 In re Psygnosis Ltd., 51 USPQ2d 1594, 1597-98 (TTAB 1999). 

176 In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Duofold Inc., 184 

USPQ 638, 640 (TTAB 1974). 

177 In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) and In re Broadway Chicken Inc., 38 USPQ2d

1559, 1560 n.6 (TTAB 1996). 

178 See In re Hayes, 62 USPQ2d 1443, 1445 n.3 (TTAB 2002) (Board considered third-party registrations submitted

with reply brief because applicant had submitted copies of Official Gazettes showing marks published for opposition 

during prosecution, and examining attorney did not advise applicant that copies of the registrations were necessary

to make them of record); and In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001)

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An improper listing of third-party registrations will not be considered if the list is submitted at a 

point where applicant cannot correct the format of the submission if the examining attorney does 

not discuss the registrations or otherwise treat them as of record.

 

Similarly, if the examining attorney discusses the registrations in an Office action or brief, 

without objecting to them, the registrations will be treated as stipulated into the record.179 

However, the Board will not consider more than the information provided by applicant. Thus, if 

applicant has provided only a list of registrations numbers and/or marks, the list will have very 

limited probative value. 

180 

Third-party applications, as opposed to registrations, have no probative value other than as 

evidence that the applications were filed.181 

1208.03 Internet Material 

Material obtained through the Internet or from websites is acceptable as evidence in ex parte 

proceedings.182 Because website contents and search engine results are accessible by the 

consuming public (although search engine results may be retrieved only if members of the public 

enter the identical search strategy), they constitute evidence of potential public exposure.183 

Material obtained from an applicant’s website, or that of a third party, may provide information 

about, for example, products or services, customers, and channels of trade, although their 

probative value will vary depending on the facts of the particular case. On the other hand, a 

search result summary from a search engine, such as Yahoo! or Google, which shows use of a 

phrase as key words by the search engine, is of limited probative value. Such search results do 

not show use of a term or phrase as a heading, link or content on a website. Use in a search 

(examining attorney’s objection, raised in appeal brief, to “mere listing” of registrations deemed waived because it 

was not interposed in response to applicant’s reliance on such listing in its response to initial Office action). 

179 See In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999) (examining attorney did not object 

to listing of third-party registrations, and considered registrations as if they were of record) and In re Dos Padres

Inc., supra (listings from a commercial trademark search report submitted by applicant during prosecution). See also

TBMP § 1207.03 (Evidence Considered Due to Actions of Nonoffering Party). 

180 In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998) (list of third-party registered marks from an

unidentified source submitted with request for reconsideration, and objected to by examining attorney, not

considered). 

181 In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). 

182 Compare use in inter partes proceedings, TBMP §§ 704.08 (Printed Publications) and 528.05(e) (Printed 

Publications and Official records). 

183 In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).

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summary may indicate only that the two words in an overall phrase appear separately in the 

website literature.184 

Evidence from on-line dictionaries that do not otherwise appear in printed format must be 

submitted prior to appeal so that the nonoffering party has an opportunity to check the reliability 

of the evidence and/or timely offer rebuttal evidence.185 The Board will not take judicial notice 

of such material.186 

1208.04 Judicial Notice 

The Board may take judicial notice of dictionary definitions.

187 Definitions found in slang 

dictionaries are also appropriate for judicial notice.188 

The Board may also take judicial notice of encyclopedia entries, standard reference works and of 

commonly known facts.189

184 In re Fitch IBCA, Inc., supra.

185 In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) and In re Total Quality Group Inc., 51 

USPQ2d 1474, 1476 (TTAB 1999). 

 

186 See TBMP § 1208.04 (Judicial Notice). 

187 In re Styleclick.com, 58 USPQ2d 1523, 1525 (TTAB 2001) (definitions from computer dictionaries, i.e., 

net.speak—the internet dictionary, The Computing Dictionary and The Illustrated Dictionary of Microcomputers);

In re 3Com Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (judicial notice of definitions in technical reference 

works); In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1210 n.6 (TTAB 1999) (dictionary definition 

submitted with examining attorney’s brief); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1537 (TTAB 

1998) (well settled that dictionary listings comprise matter of which Board can take judicial notice); In re Carolina

Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (definitions from Webster’s New Geographical Dictionary 

submitted with examining attorney’s appeal brief); and In re North American Free Trade Association, 43 USPQ2d 

1282, 1285 n.6 (TTAB 1997) (definition in Black’s Law Dictionary); In re Analog Devices Inc., 6 USPQ2d 1808, 

1810 n.2 (TTAB 1988) (judicial notice of technical trade dictionaries such as IEEE Standard dictionary of Electric 

and Electronics Terms) aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); and University of Notre Dame du

Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 

505 (Fed. Cir. 1983).

188 In re Wilcher Corp., 40 USPQ2d 1929, 1933 n.4 (TTAB 1996). 

189 See, for example, In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.5 (TTAB 2001) (judicial 

notice taken of The Encyclopedia of Furniture, The Complete Guide To Furniture Styles, and Seng Furniture Facts

showing that Danish, Scandinavian and Mediterranean are styles of furniture); In re Major League Umpires, 60 

USPQ2d 1059, 1060 n.2 (TTAB 2001) (the National League is part of Major League Baseball); In re Infinity 

Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 n.5 (TTAB 2001) (common knowledge that radio broadcasts 

may be heard in real-time on the Internet); In re Dial-A-Mattress Operating Corp., 52 USPQ2d 1910, 1916 (TTAB 

1999), rev’d. on other grounds, 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (toll-free telephone area codes 

such as “1-888” are used by numerous persons and businesses); In re Astra Merck Inc., 50 USPQ2d 1216, 1219

(TTAB 1998) (judicial notice taken of Physician’s Desk Reference and other PDR publications); In re U.S. Cargo 

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The Board will not take judicial notice of definitions found only in on-line dictionaries and not 

available in a printed format; however, it will consider them if made of record during the 

prosecution of the application. e Board take judicial notice of third-party 

registrations or marks.

 

For a full discussion of judicial notice see TBMP § 704.12. 

(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) 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. 

 

190 Nor will th

191

1209 Remand 

1209.01 Upon Board's Own Initiative 

37 CFR § 2.142(f) 

(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. 

Inc., 49 USPQ2d 1702, 1704 n.3 (TTAB 1998) (“U.S.” means the United States, and the United States is a 

geographic area with defined boundaries); and In re Perry Manufacturing Co., 12 USPQ2d 1751, 1752 (TTAB 

1989) (New York is world-renowned center of culture and high fashion and people from throughout world go to

New York to purchase latest styles in clothing, from haute couture to off-the-rack garments). 

190 In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also In re CyberFinancial.Net Inc., 

65 USPQ2d 1789, 1791 n.3 (TTAB 2002) and In re Styleclick.com Inc., 57 USPQ2d 1445, 1447 n.3 (TTAB 2000). 

 

191 In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999)

(request in reply brief that Board take judicial notice of “thousands of registered marks incorporating the term NEW

YORK for products and services that do not originate in New York state or city” denied); In re Carolina Apparel, 48

USPQ2d 1542, 1542 n.2 (TTAB 1998); and In re Caserta, 46 USPQ2d 1088, 1090 n.4 (TTAB 1998) (Board refused

to take judicial notice of the characters listed in registrations and their manner of use). 

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If the examining attorney, upon consideration of the issue specified in the Board's remand letter, 

does not believe that the specified issue renders the mark of the applicant unregistrable, the 

 

(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) 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. 

If, during an ex parte appeal to the Board, it appears to the Board that an issue not previously 

raised may render the mark of the applicant unregistrable, the Board may issue a written action 

suspending the appeal and remanding the application to the trademark examining attorney for 

further examination with respect to that issue.192 Thus, the Board will not remand an application 

for consideration of a ground for refusal if the examining attorney had previously refused 

registration on that ground and then withdrew the refusal. 

The Board may also sua sponte remand an application to the examining attorney if, after 

examination and/or briefing has been completed, a decision is rendered that is likely to have a 

bearing on the examining attorney’s position.193 Or the Board may remand an application for 

clarification of the issues on appeal, where, for example, the examining attorney and the 

applicant appear to be arguing different grounds of refusal. 

The further examination must be completed within 30 days from the date of remand, or within an 

extension of time for that purpose.194 

192 See 37 CFR § 2.142(f)(1). See also In re Opryland USA Inc., 1 USPQ2d 1409, 1411 (TTAB 1986); In re Diet 

Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986); In re Johanna Farms, Inc., 223 USPQ 459, 461 (TTAB 1984); and

Gary D. Krugman, TIPS FROM THE TTAB: The Amended Trademark Rules of Practice and Their Effect on Ex

Parte Appeals, 74 Trademark Rep. 341 (1984). See, in addition, In re Wella A.G., 230 USPQ 77, 79 (TTAB 1986) 

(but see In re Wella A.G., 858 F.2d 725, 8 USPQ2d 1365, 1369 (Fed. Cir. 1988)). 

193 See In re Dekra e.V., 44 USPQ2d 1693, 1694-95 (TTAB 1997) (after briefs were filed, the Federal Circuit issued

a decision with applicability to the case; Board remanded case to examining attorney to consider refusal in light of 

that decision). 

194 See 37 CFR § 2.142(f)(1).

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examining attorney must promptly return the application to the Board with a written statement 

that further examination did not result in an additional ground for refusal of registration.

If the examining attorney returns the remanded application to the Board with a written statement 

that further examination did not result in an additional ground for refusal of registration, the 

Board will resume proceedings with respect to the appeal, and take further appropriate action 

therein. The issues ultimately determined by the Board will be those that were the subject of the 

appeal; no consideration will be given to the issue that was the subject of the remand.

 

 

195 

196 

If, on the other hand, the further examination does result in an additional ground for refusal of 

registration, the examining attorney and applicant should proceed as specified in 37 CFR §§ 2.61 

through 2.64.197 If the additional ground for refusal of registration is ultimately made final, the 

six-month response clause should be omitted from the paper in which such action is taken; the 

file of the case should be returned to the Board; proceedings with respect to the appeal will be 

resumed; and further appropriate action will be taken therein. Specifically, the Board will issue 

an order allowing applicant 60 days from the date of the order in which to file a supplemental 

brief directed (solely) to the additional ground for refusal of registration.198 

If applicant fails to file a supplemental brief within the specified 60-day period, or during an 

extension of time for that purpose, the appeal may be dismissed.199 If applicant files a 

supplemental brief, the Board will send the application file, with applicant's supplemental brief 

entered therein, to the examining attorney. Within 60 days after the date of the Board's written 

action forwarding the file to the examining attorney, or within an extension of time for that 

purpose, the examining attorney must file a written brief answering the supplemental brief of the 

applicant. If the examining attorney had not previously submitted an appeal brief, the written 

brief may answer not just the applicant’s supplemental brief, but also its original appeal brief.200 

The examining attorney must also send a copy of his or her brief to the applicant.201 If the 

examining attorney's brief is late filed, the Board may exclude it in the absence of an adequate 

195 See 37 CFR § 2.142(f)(2). See also In re Diet Tabs, Inc., supra. 

196 See In re Diet Tabs, Inc., supra.

197 See 37 CFR § 2.142(f)(3).

198 See 37 CFR § 2.142(f)(3). 

199 See 37 CFR § 2.142(f)(3).

200 See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998). 

201 See 37 CFR § 2.142(f)(4).

 

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For information concerning the submission of new evidence after remand for refusal of 

registration on an additional ground, see TBMP § 1207.05. 

 

explanation for the late filing.202 Within 20 days from the date of the examining attorney's brief, 

or within an extension of time for the purpose, the applicant may, if it so desires, file a reply 

brief.203 However, the filing of a reply brief is not mandatory. If the applicant files a reply brief, 

the Board will notify the examining attorney so that it can be reviewed. 

If an oral hearing on the appeal had been requested by applicant prior to the remand of the 

application, but had not yet been held, the oral hearing will be set after the expiration of 

applicant's time for filing a reply brief directed to the additional ground for refusal of 

registration.204 If an oral hearing had been held prior to the remand, or had not previously been 

requested by applicant, an oral hearing may be requested by applicant by separate paper filed not 

later than 10 days after the due date for a reply brief on the additional ground for refusal of 

registration; the oral hearing will be set by the Board upon receipt of the request.205 

If the examining attorney is persuaded by applicant's supplemental brief and/or reply brief that 

the additional ground for refusal of registration should be withdrawn, the examining attorney 

should issue a written action withdrawing the additional ground, and return the application to the 

Board for resumption of proceedings with respect to the appeal. 

The examining attorney may not, upon remand under 37 CFR § 2.142(f)(1), refuse registration 

on a new ground not specified in the Board's remand letter. If the examining attorney, upon 

remand, wishes to refuse registration on a new ground not specified in the Board's remand letter, 

the examining attorney must file a request with the Board, pursuant to 37 CFR § 2.142(f)(6), for 

jurisdiction to refuse registration on the new ground. Nor may the examining attorney, upon 

remand under 37 CFR § 2.142(f)(1), submit evidence relating to a ground not specified in the 

Board’s remand letter.206

202 Cf. In re Tennessee Walking Horse Breeders' and Exhibitors' Ass'n, 223 USPQ 188, 188 n.3 (TTAB 1984), and

TBMP § 1203.02(b) (Trademark Examining Attorney’s Brief). 

203 See 37 CFR § 2.142(f)(4). 

204 See 37 CFR § 2.142(f)(5). 

205 See 37 CFR § 2.142(f)(5).

 

206 For information on informalities which are noted by the Board in its final decision, but for which remand was 

not considered necessary, see TBMP § 1217. See also In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d

1544, 1545 n.1 (TTAB 1996) (in final decision, Board recommended that applicant, if it ultimately prevailed, amend 

description of mark to clearly set forth claim); and In re EBSCO Industries Inc., 41 USPQ2d 1913, 1915 n.3 (TTAB 

1996) (if applicant ultimately prevailed, it should file an amended drawing). 

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1209.02 Upon Request by Trademark Examining Attorney 

37 CFR § 2.142(f)(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. 

If, during an ex parte appeal to the Board, it appears to the trademark examining attorney that an 

issue not involved in the appeal may render the mark of the applicant unregistrable, the 

examining attorney may file a written request with the Board to suspend the appeal and remand 

the application for further examination.207 Such a request may be filed at any point in the appeal 

prior to the Board’s rendering a final decision, including at the point the examining attorney is to 

submit his appeal brief or supplemental appeal brief.208 

Because the mandate of the USPTO is to register only eligible marks, an examining attorney’s 

request for remand will generally be granted unless there is no valid basis for the request, e.g., 

remand is requested to require a disclaimer of a term which is not part of the mark. If the 

examining attorney's request for remand is granted, the Board will forward the application to the 

examining attorney for further examination in accordance with the request. In its action granting 

the request, the Board will allow the examining attorney a specified time in which to issue an 

Office action pursuant to the request. Thereafter, the examining attorney and applicant should 

proceed as provided in 37 CFR §§ 2.61 through 2.64.209 

When, upon remand, the examining attorney determines that registration should not be finally 

refused on the additional ground for refusal of registration mentioned in the request for remand, 

the examining attorney should issue a written Office action in which the six-month response 

clause is omitted and return the file of the case to the Board; proceedings with respect to the 

207 See 37 CFR § 2.142(f)(6).

208 See In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1918 (TTAB 1998) (Board granted examining attorney’s 

request for remand which was filed after submission of applicant’s appeal brief and supplemental appeal brief in 

order to allow examining attorney to refuse registration on additional ground). See also In re Wells Fargo & Co., 

231 USPQ 116, 119 (TTAB 1986); In re Wells Fargo & Co., 231 USPQ 95, 101 (TTAB 1986); and In re Texsun 

Tire and Battery Stores, Inc., 229 USPQ 227, 228 (TTAB 1986). [NOTE: The latter three cases were decided prior 

to the adoption of 37 CFR § 2.142(f)(6)]. 

209 See 37 CFR § 2.142(f)(6). Cf. 37 CFR § 2.142(f)(3).

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Proceedings in an ex parte appeal will not be suspended pending determination by the Office of 

the Commissioner for Trademarks of a letter of protest. However, if a letter of protest is granted 

during the pendency of an ex parte appeal, and the examining attorney, having considered the 

supporting evidence submitted with the letter of protest, believes that an issue not involved in the 

appeal may render the mark of the applicant unregistrable, the examining attorney may file a 

 

appeal will be resumed and further appropriate action will be taken therein.210 If the examining 

attorney determines, after considering applicant’s response to the nonfinal Office action, that a 

final refusal on that ground should issue, the examining attorney should issue a new action, 

omitting the six-month response clause, which makes the refusal final as to both the additional 

ground and the ground(s) asserted in the previous final action. The file should then be returned 

to the Board, and proceedings in the appeal will be resumed.211 

The examining attorney may not, upon remand under 37 CFR § 2.142(f)(6), refuse registration 

on a new ground not mentioned in the examining attorney's request for remand. If the examining 

attorney, upon remand, wishes to refuse registration on a new ground not mentioned in the 

request for remand, the examining attorney must file a new request with the Board for 

jurisdiction to refuse registration on the new ground. Nor may the examining attorney submit 

evidence that does not relate to the ground mentioned in the request for remand; thus, the 

examining attorney may not submit evidence that supports the grounds for refusal on which the 

appeal was originally filed. 

For information concerning the submission of new evidence after remand for refusal of 

registration on an additional ground, see TBMP § 1207.05.

1209.03 Upon Granted Letter of Protest 

A third party that has knowledge of facts bearing upon the registrability of a mark in a pending 

application may bring such information to the attention of the Office by filing, with the Office of 

the Commissioner for Trademarks, a "letter of protest," that is, a letter that recites the facts and 

which is accompanied by supporting evidence.212 The Administrator for Trademark 

Identification, Classifications, and Practice (“Administrator”) will determine whether the 

information should be given to the trademark examining attorney for consideration.213 

210 See 37 CFR § 2.142(f)(6). 

211 See In re Boston Beer Co. L.P., supra. See also, for information as to the further action taken by the Board, i.e., 

for information concerning the filing of supplemental briefs, and a request for oral hearing, TBMP § 1209.01

(Remand Upon Board’s Own Initiative). 

212 See TMEP § 1715. 

213 See TBMP § 215 (Effect of letter of Protest) and authorities cited therein. 

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written request with the Board, pursuant to 37 CFR § 2.142(f)(6), to suspend the appeal and 

remand the application for further examination. 

For information concerning requests for remand for a new refusal or new requirement, and the 

further proceedings in the case if such a request is granted by the Board, see 37 CFR §

2.142(f)(6), and TBMP § 1209.02. 

 

1209.04 Upon Request by Applicant 

A request filed by an applicant to remand the application to the examining attorney that is filed 

within six months of the issuance of a final Office action is treated as a request for 

reconsideration, whether it is denominated as such, or is captioned as a request for remand. 

Requests for reconsideration are granted by the Board as a matter of right.214 However, if the 

request is filed more than six months after the issuance of the final refusal (generally after the 

filing of the notice of appeal), it will be treated as a request for remand, whether it is captioned as 

such or is captioned as a request for reconsideration. 

Requests for remand are generally filed by applicants because they wish to make additional 

evidence of record, or because they wish to amend the application. Applicants may also request 

remand so that the examining attorney can consider a refusal in light of a recently decided 

case.215 No matter what the purpose, the request for remand must include a showing of good 

cause.216 In determining whether good cause has been shown, the Board will consider both the 

reason given and the point in the appeal at which the request for remand is made. 

If applicant has not filed its appeal brief prior to filing the request for remand, it should not do so 

until the Board has acted on the remand request. If the request is denied, the Board will allow 

applicant time in which to file its appeal brief. If the request for remand is granted, the Board 

will suspend proceedings with respect to the appeal, and remand the application to the examining 

attorney for consideration of the request for remand. The Board’s order granting the remand and 

the directions to the examining attorney contained therein will depend on the nature of the 

remand request and the circumstances.217 

214 See TBMP § 1204 (Effect of Request for Reconsideration of Final Action). 

215 See In re Martin Container, Inc., 65 USPQ2d 1058, 1060 (TTAB 2002) (request for remand filed after notice of

appeal in view of recent ruling by Federal Circuit Court of Appeals). 

216 See TBMP § 1207.02 for examples of circumstances that have been found to constitute good cause for a remand

for the purpose of submitting additional evidence. See TBMP § 1205 for examples of what constitutes good cause 

for the purpose of amending an application.

217 If the request for remand is for the purpose of submitting additional evidence, see generally, TBMP § 1207.02. 

If the request for remand is for the purpose of submitting an amendment to the application, see generally, TBMP § 

1205. 

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EX PARTE APPEALS 

However, the examining attorney should notify the applicant by telephone that the application is 

being approved for publication (or registration).

During an ex parte appeal to the Board, the applicant may expressly abandon its involved 

application by filing in the Office a written statement of abandonment or withdrawal of the 

application. The abandonment or withdrawal must be signed by the applicant or its attorney or 

other authorized representative.

 

1210 Approval for Publication During Appeal 

The trademark examining attorney may withdraw an appealed refusal to register, and approve the 

involved application for publication (or for registration, in the case of a Supplemental Register 

application), at any time prior to issuance of the Board's decision in the case.218 When the

examining attorney does so, the appeal becomes moot. 

219 

1211 Abandonment During Appeal 

37 CFR § 2.68 Express abandonment (withdrawal) of application. An application may be 

expressly abandoned by filing in the Patent and Trademark Office a written statement of 

abandonment or withdrawal of the application signed by the applicant, or the attorney or other 

person representing the applicant. Except as provided in § 2.135, the fact that an application 

has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, 

affect any rights that the applicant may have in the mark which is the subject of the abandoned 

application. 

220 

The express abandonment, during an ex parte appeal to the Board, of the applicant's involved 

application will not, in any proceeding in the Office, affect any rights that the applicant may have 

in the mark that is the subject of the abandoned application.221 

In contrast, after the commencement of an opposition, concurrent use, or interference 

proceeding, if the applicant files a written abandonment of its involved application or mark 

218 See TMEP § 1501.03. See also, for example, TBMP §§ 1203.02(b), 1203.02(c), 1204, 1205, and 1207.02. 

219 See TMEP § 1501.03. 

220 See 37 CFR § 2.68. 

221 See 37 CFR § 2.68. See also Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264, 

1267 (1st Cir. 1987). Cf. (re preclusive effect of prior final judgment arising out of an ex parte case) In re 

Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988); Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 

(TTAB 1987); and Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299 (TTAB 1986), aff'd, 831 F.2d 306 (Fed. Cir. 1987). 

1200 - 674 
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(1) Applicant is involved in a civil action, or a Board inter partes proceeding, that may 

be dispositive of the issue(s) involved in the appeal--Board may suspend pending final 

determination of the civil action or Board inter partes proceeding. 

 

without the written consent of every adverse party to the proceeding, judgment will be entered 

against the applicant.222 

1212 Cancellation or Assignment of Cited Registration 

Often, in an ex parte appeal to the Board, the asserted ground (or one of the asserted grounds) for 

refusal of registration is the Section 2(d), 15 U.S.C. § 1052(d), ground that applicant's mark so 

resembles a mark registered in the USPTO as to be likely, when used on or in connection with 

the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive. 

If, during the pendency of an ex parte appeal involving a refusal to register under Section 2(d) of 

the Act, the cited registration is cancelled, or is assigned to the applicant, the appeal will be moot 

insofar as that issue is concerned. If the refusal to register on the basis of the cancelled or 

assigned registration is the only issue involved in the appeal, the Board will dismiss the appeal as 

moot, and the application will be sent to the trademark examining attorney for approval for 

publication (or for registration, in the case of a Supplemental Register application). If the appeal 

involves additional issues, it will go forward solely on the additional issues. 

When an application has been rejected under Section 2(d) of the Act, and the refusal to register 

has been appealed to the Board, it is recommended that the applicant periodically check the 

status of the cited registration.223 If the applicant learns that the registration has expired or been 

cancelled, the applicant should immediately notify the Board thereof. Similarly, if the 

registration is assigned to applicant, the applicant should immediately notify the Board thereof. 

1213 Suspension of Appeal 

Prior to the issuance of the Board's decision in an ex parte appeal, proceedings with respect to 

the appeal may be suspended by the Board upon written request by applicant showing good 

cause for the requested suspension.224 Examples of situations in which the Board may suspend 

proceedings in an appeal, at the request of the applicant, are listed below: 

222 See 37 CFR § 2.135, and TBMP §§ 602.01 (Withdrawal by Applicant) and 603 (Withdrawal by Interference or

Concurrent Use Applicant). 

223 See TBMP § 1203 (Appeal Briefs).

224 Cf. 37 CFR § 2.117, and TBMP § 510 (Motion to Suspend; Motion to Resume). 

1200 - 675 
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EX PARTE APPEALS 

(2) Another application that involves the same issue is also on appeal to the Board--

Board may suspend pending final determination of the appeal in the other application. 

(3) A registration cited as a reference, under Section 2(d) of the Act, 15 U.S.C. § 

1052(d), against applicant's mark is due, or will soon be due, for an affidavit of continued 

use (or excusable nonuse) under Section 8 or 71 of the Act, 15 U.S.C. §§ 1058 or 

1141k, ection 9 or 70 of the Act, 15 U.S.C. §§ 

1059 or 1141k. ay suspend pending determination of whether the 

registration will continue in existence or will, instead, be cancelled or expire. If an 

applicant requests suspension based on the possibility that the cited registration may be 

cancelled for failure to file an affidavit of continued use, the Board will grant such 

request if the Board acts on the request after the 5th anniversary of the issue date of the 

registration. If an applicant requests suspension based on the possibility that the cited 

registration will expire for failure to renew it, the Board will grant such request if the

Board acts on the request after the 9 date for ten-year term

registrations (registrations that issued or were renewed on or after November 16, 1989), 

or after the 19th anniversary of the issue date for twenty-year registrations (registrations 

that issued prior to November 16, 1989 and which have not yet been renewed). 

 

225 or for an application for renewal under S

226 The Board m

th anniversary of the issue 

If it comes to the attention of the examining attorney, in the case of a refusal based on likelihood 

of confusion with a registered mark (Section 2(d) of the Trademark Act), that the grace period 

for filing an affidavit of continued use or an application for renewal for the cited registration has 

passed, and Office records do not indicate that such paper has been submitted, the examining 

attorney may request remand so the application can be suspended pending final disposition of the 

cited registration.227 In that situation, the Board will issue an order suspending the appeal and 

remanding the case to the examining attorney. If the cited registration is cancelled or expires, 

and that registration forms the only basis for refusal, the examining attorney may approve the 

application for publication (or for registration in the case of a Supplemental Register 

application), and the appeal will be moot. The examining attorney should so notify the applicant. 

If the Section 2(d) refusal is only one of the issues of appeal, the examining attorney should 

notify the Board of the status of the cited registration, and return the file to the Board, which will 

225 A 66(a) registration is subject to the Section 71 requirements for affidavits of continued use (or excusable 

nonuse). A Section 71 affidavit is filed with the Office. 

226 A renewal under Section 70 of the Trademark Act refers to a renewal of the international registration underlying

a 66(a) registration. A 66(a) registration will be cancelled under Section 70 for failure to renew the international 

registration on which it is based. Renewals of international registrations are filed directly with the International 

Bureau, not the USPTO. If the underlying international registration is not renewed, the International Bureau will 

notify the USPTO that the international registration has expired. The corresponding extension of protection to the

U.S. will expire as of the expiration date of the international registration and the 66(a) registration will be cancelled

by the Office. See Section 70 of the Trademark Act. 

227 See TMEP § 716.02(e). 

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The examining attorney may also request suspension if it comes to his or her attention that 

another application that involves the same issue is on appeal to the Board. In that circumstance, 

the examining attorney may also request that the appeals be consolidated.

When proceedings have been suspended at the request of the applicant in an ex parte appeal to 

the Board, and the event for which proceedings have been suspended occurs, as, for example, 

when a civil action for which proceedings have been suspended has been finally determined, the 

applicant should file a paper notifying the Board thereof as soon as that knowledge comes to 

applicant’s attention. When an appeal has been suspended pending a determination of whether a 

cited registration will be cancelled or will expire, applicant should monitor the status of the cited 

registration on a monthly basis and should advise the Board as soon as it ascertains either that the 

registration has been cancelled or has expired, or that the required document has been accepted 

by the USPTO. 

 

resume proceedings in the appeal. If an appropriate affidavit or renewal application is filed for 

the cited registration, the examining attorney should notify the Board, and return the file to the 

Board. The Board will then resume proceedings in the appeal. 

If the grace period for filing the appropriate affidavit or renewal application for the cited 

registration has not yet expired, the examining attorney may request that the Board suspend 

proceedings in the appeal. In that case, the Board will issue an action advising the applicant the 

Board is suspending proceedings in the appeal, and giving the applicant the opportunity to 

inform the Board if it wishes the appeal to proceed without waiting for a determination as to 

whether the cited registration will be cancelled or will expire. If the applicant wishes the appeal 

to proceed, the cited registration will be treated as existing and valid. 

228 

A request for suspension of proceedings before the Board in an ex parte appeal must be filed 

prior to the issuance of the Board's final decision in the case. For example, an applicant that has 

appealed a refusal to register under Section 2(d) of the Act (i.e., a refusal to register on the 

ground that applicant's mark so resembles a registered mark as to be likely to cause confusion) 

may not wait until it receives the Board's decision on appeal and then, if the decision is adverse, 

file a petition to cancel the cited registration and request suspension of proceedings in the appeal 

pending the final determination of the cancellation proceeding.229 

The Board will then resume proceedings and take further appropriate action in the appeal. If the 

cited registration has been cancelled or has expired, and it was the only bar to registration, the 

appeal will be dismissed as moot. If the cited registration formed only one basis of the refusals 

on appeal, the Board will resume proceedings in the appeal with respect to the remaining issues.

228 See TBMP § 1214 (Consolidation). 

229 See In re Vycom Electronics Ltd., 21 USPQ2d 1799, 1800 (Comm'r 1986). 

1200 - 677 
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 1214 Consolidation 

 

In addition, when the refusal of registration, or one of the grounds of refusal, is based on Section 

2(d) of the Act, and it appears that the cited registration will be cancelled for failure to file an 

affidavit of continued use or will expire for failure to renew, the Board will sua sponte suspend 

action in the following circumstance. When an ex parte appeal has been assigned to an 

Administrative Trademark Judge for final decision, the case will be suspended if the due date for 

filing a affidavit or application for renewal of the cited registration falls on or before the date the 

case is assigned for decision. The due date is the anniversary date of the registration, and does 

not include the grace period. In this situation, the applicant will be advised that the Board is 

suspending proceedings in the appeal, and be given the opportunity to inform the Board if it 

wishes the Board to render a decision without waiting to determine whether the cited registration 

will be cancelled or will expire. If the applicant wishes the board to proceed with a decision, the 

cited registration will be treated as existing and valid. 

Proceedings in an ex parte appeal may also be suspended by the Board if the application is 

remanded to the examining attorney, as, for example, for (1) consideration of an amendment to 

the application, or (2) consideration of a request for reconsideration of a final action, or (3) 

assertion of a new ground of refusal, or (4) submission of additional evidence.230 

When an applicant has filed an ex parte appeal to the Board in two or more copending 

applications, and the cases involve common issues of law or fact, the Board, upon request by the 

applicant or trademark examining attorney or upon its own initiative, may order the 

consolidation of the cases for purposes of briefing, oral hearing, and/or final decision.231 The 

Board may also consider two or more cases in one opinion even if they have not been 

230 See TBMP §§ 1202.02; 1203.02(a); 1203.02(b); 1204; 1205; 1206.01; 1207.02; 1207.06; and 1209. 

231 See, for example, In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997). See also In re Pebble Beach

Co., 19 USPQ2d 1687 (TTAB 1991); In re Del E. Webb Corp., 16 USPQ2d 1232 (TTAB 1990); In re Anton/Bauer

Inc., 7 USPQ2d 1380 (TTAB 1988); In re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB 1987); and In re 

Petersen Manufacturing Co., 2 USPQ2d 2032 (TTAB 1987). Cf. FRCP 42(a), and TBMP § 511 (Motion to 

Consolidate). See also In re Le Sorbet, Inc., 228 USPQ 27 (TTAB 1985); In re San Diego National League

Baseball Club, Inc., 224 USPQ 1067 (TTAB 1983); In re 1776, Inc., 223 USPQ 186 (TTAB 1984); In re Canadian

Pacific Ltd., 222 USPQ 533 (TTAB 1984), aff'd, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Wallyball, 

Inc., 222 USPQ 87 (TTAB 1984); and In re Armour & Co., 220 USPQ 76 (TTAB 1983). 

1200 - 678 
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EX PARTE APPEALS 

 

Just as the trademark examining attorney may refuse registration on alternative grounds (such as, 

that applicant's mark, as applied to its goods and/or services, is either merely descriptive or 

deceptively misdescriptive of them within the meaning of Section 2(e)(1) of the Act, 15 U.S.C. § 

1052(e)(1)), so, too, the applicant may, in appropriate cases, take alternative positions with 

respect to a refusal to register. For example, where registration has been refused on the ground 

that applicant's mark, as applied to its goods and/or services, is merely descriptive of them, 

applicant may take the position that its mark is not merely descriptive, and, alternatively, assert a 

claim, under the provisions of Section 2(f) of the Act, 15 U.S.C. § 1052(f), that its mark has 

become distinctive of its goods and/or services in commerce.

responsibility to make clear that it is taking alternative positions.235 

 

consolidated.

232 Even if the Board renders its decisions on two appeals in a single opinion, the 

appeals will not necessarily be consolidated.233

Although cases consolidated prior to briefing may be presented on the same brief, they do not 

have to be. The applicant (and/or the examining attorney) may file a different brief in each case, 

if the applicant (and/or the examining attorney) so desires. When consolidated cases are to be 

presented on the same brief, the brief should bear the serial number of each consolidated 

application, and a copy of the brief should be submitted for each application. 

1215 Alternative Positions 

234 However, it is applicant’s 

232 In re Orange Communications Inc., 41 USPQ2d 1036, 1037-39 (TTAB 1996); In re Sandberg & Sikorski 

Diamond Corp., 42 USPQ2d 1544, 1546 (TTAB 1996) (because issues and record in each case essentially identical, 

Board rendered decision as to two applications in a single opinion, noting that applicant and examining attorney 

treated the cases as consolidated for purposes of briefs and oral hearing). 

233 In re Hudson News Co., 39 USPQ2d 1914, 1915 n. 5 (TTAB 1996), aff’d without published opinion (Fed. Cir.

1997) (Board issued a single opinion in interest of judicial economy, but each appeal stands on its own merits). 

234 See, for example, In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992); In re Analog Devices Inc., 6

USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); In re Engineering Systems

Corp., 2 USPQ2d 1075 (TTAB 1986); In re Seaman & Associates Inc., 1 USPQ2d 1657 (TTAB 1986); In re 

Professional Learning Centers, Inc., 230 USPQ 70 (TTAB 1986); In re American Home Products Corp., 226 USPQ

327 (TTAB 1985); and TMEP § 1212.02(c). See also In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985); In

re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984); In re Anania Associates, Inc., 223 USPQ 740 (TTAB 

1984); In re Perfect Fit Industries, Inc., 223 USPQ 92 (TTAB 1984); In re House of Windsor, Inc., 221 USPQ 53

(TTAB 1983); In re Capital Formation Counselors, Inc., 219 USPQ 916 (TTAB 1983); and In re Harrington, 219

USPQ 854 (TTAB 1983).

 Cf. Fed. R. Civ. P. 8(e)(2), and TBMP §§ 309.03 (Substance of Complaint) and 311.02(b) (Affirmative 

Defenses). 

 235 See In re A La Vielle Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001) (applicant did not assert Section 2(f)

claim in the alternative); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 n.2 (TTAB 1997) (Board found that 

applicant had abandoned its claim that its mark was inherently distinctive early in the prosecution and therefore 

Board refused to consider claim of inherent distinctiveness made in reply brief, or to view the claim of acquired

1200 - 679 
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When an applicant asserts alternative positions, and is not willing to accept registration on the 

basis of its "fallback" position unless the Board determines, on appeal, that applicant's primary 

position is not well taken, the applicant should make its wishes clear both to the examining 

attorney and to the Board. For example, when applicant, in response to a refusal on the ground 

of mere descriptiveness, has asserted alternatively that its mark is not merely descriptive and that

the mark has become distinctive in commerce, but applicant is not willing to accept a registration 

issued under Section 2(f) on the basis of the claim of distinctiveness unless the Board holds, on 

appeal from the refusal to register, that the mark is merely descriptive, applicant should clearly 

so state. Otherwise, if the examining attorney finds applicant's claim of distinctiveness to be 

persuasive (and there is no other outstanding ground for refusal to register), the examining 

attorney will approve the application for publication on that basis, and any registration issued to 

applicant will be issued under the provisions of Section 2(f) of the Act. 

If, in an application that is the subject of an ex parte appeal to the Board, the applicant has 

asserted alternative positions (such as, that its mark is not merely descriptive of its goods and/or 

services, and that the mark has, in any event, become distinctive of its goods and/or services in 

commerce; or that its mark has become distinctive of its goods and/or services in commerce, and 

that the mark is, in any event, registrable on the Supplemental Register), the examining attorney 

should clearly state his or her position with respect to each of applicant's alternative claims.

236 

1216 Oral Hearing 

37 CFR § 2.142(e) 

(1) If the appellant desires an oral hearing, a request therefor 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 Members 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 

his attorney or other authorized representative. 

(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 

distinctiveness as an alternative claim); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1546 n.2 

(TTAB 1996) (applicant did not pursue its contention that the marks were inherently distinctive during prosecution, 

and Board found this claim to have been waived). 

 But see In re Central Sprinkler Co., 49 USPQ2d 1194, 1195 n.3 (TTAB 1998) (Board considered registrability 

on both Principal and Supplemental Registers even though applicant’s amendment to the Supplemental Register was 

originally not made in the alternative, noting that examining attorney continued to refuse registration on both 

registers, and subsequent papers of both applicant and examining attorney, including request for reconsideration and 

decision on that request, discussed the amendment as being in the alternative). 

236 See TMEP § 1212.02(c). 

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EX PARTE APPEALS 

(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. 

An oral hearing is held before a panel of at least three members of the Board (i.e., its statutory 

members, generally administrative trademark judges). The time for oral hearing may be reset if 

the Board is prevented from holding the hearing at the specified time, or, so far as is convenient 

and proper, to meet the wishes of the applicant (or the applicant's attorney or other authorized 

 

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. 

For general information concerning oral hearings in proceedings before the Board, see TBMP § 

802. What follows below is information pertaining specifically to oral hearings in ex parte 

appeals to the Board. 

An oral hearing is not mandatory in an ex parte appeal to the Board, but will be scheduled if a 

timely request therefor is filed by the applicant.237 If the applicant does not request an oral 

hearing, the appeal will be decided on the record and briefs.238 An examining attorney may not 

request an oral hearing. An oral hearing is particularly useful in ex parte cases involving 

complex issues or where the goods or services identified in applicant’s application (or a cited 

registration) are technical or unfamiliar, or where an issue on appeal is not clearly defined. In 

addition, the oral hearing sometimes provides an opportunity for the applicant and trademark 

examining attorney to work out an agreement that results in approval of the application for 

publication (or for registration, in the case of a Supplemental Register application). 

If the applicant desires an oral hearing in an ex parte appeal to the Board, the applicant should 

file a written request, by separate paper, not later than 10 days after the due date for applicant's 

reply brief. Only one copy of such request should be submitted. When the applicant has filed a 

timely request for an oral hearing, the Board sets the date and time for the hearing, and sends the 

applicant a notice of hearing specifying the date, time, and location of the hearing. Ordinarily, 

hearings are scheduled on Tuesdays, Wednesdays and Thursdays. In setting the oral hearing, it 

is the normal practice of the Board to set a time that is convenient for both the applicant and the 

examining attorney. Hearings are almost exclusively held at the offices of the Board.239 

237 See 37 CFR § 2.142(e)(1). 

238 See 37 CFR § 2.142(e)(2).

239 Videoconferences are available in California and Michigan. For information on requesting a videoconference,

see TBMP § 802.03. 

1200 - 681 
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EX PARTE APPEALS 

representative) or the examining attorney.

an oral hearing, either by postponing the date or by moving it forward, but, absent compelling 

circumstances, not to change a hearing date if the request for rescheduling is made within two 

weeks of the scheduled hearing date, unless both the applicant and the examining attorney agree 

to the change. Therefore, if applicant requires a rescheduling of the oral hearing, it should 

inform the Board by telephoning the secretary to the Chief Judge, and by a follow-up facsimile 

transmission, not later than two weeks prior to the scheduled hearing date. If circumstances arise 

that prevent applicant from providing such notice, applicant should inform the Board as soon as 

the circumstances become known. Although the Board will allow the cancellation of the oral 

hearing by the applicant at any point, the Board will consider the circumstances in determining 

whether it will grant a request by applicant to reschedule the oral hearing, or whether it will 

decide the case on briefs without oral hearing.

If the applicant requests an oral hearing, the examining attorney who issued the Office action 

from which the appeal was taken, or another examining attorney from the same USPTO law 

office who has been designated for the purpose by the managing attorney of that law office, must 

appear at the hearing and present an oral argument. ining attorney requires a 

rescheduling of the oral hearing, he or she should advise the secretary to the Chief Judge of the 

Board, by telephone and e-mail, not later than two weeks prior to the scheduled hearing date. If 

circumstances arise which prevent the examining attorney from providing such notice, another 

examining attorney should be designated by the managing attorney of the law office to appear at 

the oral hearing. In the rare instances in which the applicant appears but the examining attorney 

does not, the oral hearing will be held without the examining attorney; only the applicant will 

present its oral argument. 

 

240 Board practice in such a situation is to reschedule 

241 

242 If the exam

The applicant is allowed 20 minutes for its oral argument, and the examining attorney is allowed 

10 minutes. If the applicant so desires, it may reserve a portion of its 20 minutes to use for 

rebuttal argument.243 There is no requirement that the applicant and the examining attorney use 

all of their allotted time. Often, an ex parte appeal to the Board is of such nature that oral 

arguments thereon may be presented in considerably less than the allotted time. On the other 

hand, if, because of the complexity or novelty of the issues, an applicant feels that it needs more 

240 See 37 CFR § 2.142(e)(1).

241 See In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1214 n.2 (TTAB 2000) (applicant’s request to

reschedule hearing received three hours before the scheduled hearing because of “a sudden conflict of time” was 

denied; Commissioner [now Director] denied petition stating that Board has wide discretion in scheduling or

rescheduling oral hearings). 

242 See 37 CFR § 2.142(e)(2).

243 See 37 CFR § 2.142(e)(3).

1200 - 682 
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EX PARTE APPEALS 

The oral hearing is not an opportunity to present new evidence to the Board. Documents offered 

at the hearing that were not properly made of record will not be considered

In determining an ex parte appeal, the Board reviews the appealed decision of the trademark 

examining attorney to determine if it was correctly made. The Board need not find that the 

examining attorney's rationale was correct in order to affirm the refusal to register, but rather

may rely on a different rationale. ining attorney may not raise a new 

ground for refusal of registration during appeal, except upon remand by the Board for the 

purpose,247 the examining attorney is not precluded from raising, during appeal, new arguments 

and/or additional case citations in support of a ground for refusal which was timely raised and is 

a subject of the appeal.

When the Board has issued its final decision in an ex parte appeal, the examining attorney is 

without jurisdiction to take any further action therein. ilarly, the Board has no authority, 

 

than 20 minutes for oral argument, it should file a written request with the Board for additional 

time.244 If the request is granted, the examining attorney will also be allowed additional time. 

For information concerning audiotaping, visual aids, videoconferencing and the nature of an 

oral hearing before the Board, see TBMP §§ 802.06, 802.07, 802.03 and 802.08, respectively. 

.

245 

1217 Final Decision 

For general information concerning final decisions in proceedings before the Board, see TBMP 

§ 803. What follows below is information pertaining specifically to final decisions in ex parte 

appeals to the Board. 

246 Thus, while the exam

248 

249 Sim

244 Cf. 37 CFR § 2.129(a), and TBMP § 802.05 (Length of Oral Argument).

245 In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (exhibits in booklet submitted at oral hearing which 

had not previously been made of record were not considered).

246 See In re AFG Industries Inc., 17 USPQ2d 1162, 1163 (TTAB 1990); In re Avocet, Inc., 227 USPQ 566, 567 

(TTAB 1985); and In re D.B. Kaplan Delicatessen, 225 USPQ 342, 343 n.2 (TTAB 1985). Cf. Yamaha

International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1009 (Fed. Cir. 1988); Ilco Corp. v.

Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 488 (CCPA 1976); and Hunt v. Treppschuh and 

Hentrich, 523 F.2d 1386, 187 USPQ 426, 428 (CCPA 1975). 

247 See TBMP § 1209 (Remand). 

248 See In re D.B. Kaplan Delicatessen, supra. 

249 See, for example, In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984); In re Mercedes Slacks, Ltd., 213 

USPQ 397, 397 n.2 (TTAB 1982); and TMEP § 1501.06. 

1200 - 683 
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EX PARTE APPEALS 

either in its final decision on appeal or thereafter, to remand the case to the examining attorney 

for further examination. A case that has been considered and decided on appeal to the Board 

may be reopened only as provided in 37 CFR § 2.142(g), as discussed below.250 That is, while 

the Board, in its final decision in an opposition, concurrent use, or interference proceeding, may 

include a remand of the application (except a 66(a) application) e examining attorney for 

further examination with respect to a matter which appears to render the mark of an applicant 

unregistrable but which was not tried under the pleadings in the case252 the Board cannot include 

such a remand in its final decision in an ex parte appeal. 

However, if, at final decision in an ex parte appeal, it appears to the Board that an issue not 

previously raised may render the mark of the applicant unregistrable, the Board may, without 

deciding the issue(s) on appeal, suspend the appeal and remand the application to the examining 

attorney for further examination. rnatively, if the issue not previously raised is an

application defect that can easily be corrected by the applicant, the Board may elect to decide the 

issue(s) on appeal, and include in its decision a recommendation that applicant voluntarily 

correct the defect if it prevails on the appealed issue(s).

Once an application has been considered and decided by the Board on appeal, applicant's course 

of action normally is limited to a request for reconsideration of the Board's decision, and/or the 

filing of an appeal therefrom, either by way of an appeal to the Court of Appeals for the Federal 

Circuit, or by way of a civil action seeking review of the Board's decision.

 

251 to th

253 Alte

254 

1218 Reopening (Amendment, etc., After Final Decision) 

37 CFR § 2.142(g) An application which has been considered and decided on appeal will not be

reopened except for the entry of a disclaimer under § 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. 

255 An application 

250 See In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984) and In re Mercedes Slacks, Ltd., supra. 

251 A 66(a) application may not be remanded under 37 CFR § 2.131.

252 See 37 CFR § 2.131 and TBMP § 515 (Motion to Remand). 

253 See 37 CFR § 2.142(f)(1) and TBMP § 1209.01 (Remand Upon Board’s Own Initiative). 

254 See In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1545 n.1 (TTAB 1996) (in final decision,

Board recommended that applicant, if it ultimately prevailed, amend description of mark to clearly set forth claim); 

In re EBSCO Industries Inc., 41 USPQ2d 1913, 1915 n.3 (TTAB 1996) (if applicant ultimately prevailed, it should

file an amended drawing); In re Lativ Systems, Inc., 223 USPQ 1037, 1037 n.1 (TTAB 1984); and In re Wallyball, 

Inc., 222 USPQ 87, 88 n.2 (TTAB 1984). 

255 See TBMP § 1219 (Review of Final Decision).

1200 - 684 
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EX PARTE APPEALS 

may not be "reopened," that is, an applicant may not amend its application, or submit additional 

evidence, at this stage, except in two very limited situations.256 They are as follows: 

(1) The application may be reopened by the Board for entry of a disclaimer under 

Section 6 of the Act, 15 U.S.C. § 1056;

 

257 and 

(2) The application may be reopened 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.258 

256 See 37 CFR § 2.142(g); In re Societe D'Exploitation de la Marque Le Fouquet's, 67 USPQ2d 1784, 1789 (TTAB

2003) (no authority to remand after decision on appeal for amendment to filing basis); In re Hines, 32 USPQ2d 

1376, 1377 (TTAB 1994) (reconsideration); and In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 n.3 (TTAB 

1986). 

 

257 See 37 CFR § 2.142(g); In re Petite Suites Inc., 21 USPQ2d 1708, 1710 (Comm'r 1991) (Board has authority to

remand application, after decision by Board on appeal, for entry of a disclaimer); and In re S. D. Fabrics, Inc., 223 

USPQ 56, 57 n.1 (TTAB 1984) (Board accepts disclaimers after decision by Board on appeal where the disclaimer 

puts the application in condition for publication without the need for any further examination). 

258 See 37 CFR § 2.142(g); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1047 n.2 (TTAB 2002) (request in

applicant’s brief that if the refusals are maintained the application be amended to the Supplemental Register denied

because application which has been decided on appeal will not be reopened); In re Taverniti, SARL, 228 USPQ 975, 

976 (TTAB 1985) (since applicant's registration was not part of evidentiary record before Board when it decided 

case, registration can be given no consideration in the absence of a successful petition to the Commissioner [now 

Director] to reopen); In re Taverniti, SARL, 225 USPQ 1263, 1264 n.3 (TTAB 1985) (it has been practice of the 

Commissioner [now Director] to refuse to reopen, after final decision, for amendment to the Supplemental Register);

In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984) (Board has no jurisdiction to remand an application,

after final decision, for submission of new evidence; only the Commissioner [now Director] has authority, after final

decision, to remand for the purpose of reopening the application; In re S. D. Fabrics, Inc., 223 USPQ 56, 57 n.1 

(TTAB 1984) (after a case has been decided on appeal, an amendment to the Supplemental Register may be 

accepted only by the Commissioner [now Director] upon petition, and Commissioner has in past denied petitions to

reopen to amend to the Supplemental Register); In re Dodd International, Inc., 222 USPQ 268, 270 (TTAB 1983) 

(Board denies request to reopen application, after final decision, for amendment to Supplemental Register, quoting 

37 CFR § 2.142(g)); ); In re Vesper Corp., 8 USPQ2d 1788, 1789 n.3 (Comm'r 1988) (petitions to reopen are 

granted only when proposed amendment would place application in condition for publication, subject to updating 

search, and no other examination by examining attorney would be required); In re Vycom Electronics Ltd., 21 

USPQ2d 1799, 1800 (Comm'r 1986) (petition to reopen to allow applicant to file and litigate petition to cancel cited 

registration denied);In re Mack Trucks, Inc., 189 USPQ 642, 643 (Comm'r 1976) (petition to reopen for letter of

consent and for amendment of identification of goods denied; applicant, having elected to proceed, prior to Board's 

decision, without letter of consent assumed the risk of an adverse decision by Board and does not establish sufficient

cause to reopen; also, both the letter of consent and amendment would require further examination beyond an

updating search); and Ex parte Simoniz Co., 161 USPQ 365, 366 (Comm'r 1969) (petition to reopen for amendment 

to Supplemental Register denied; applicant elected a course of action and had a hearing and an adjudication 

thereon); and TMEP § 1501.06. 

1200 - 685 
Chapter 1200 

EX PARTE APPEALS 

1219 Review of Final Decision 

 

When a decision of the Board affirming a refusal to register in an ex parte case has been 

appealed to the United States Court of Appeals for the Federal Circuit, the Court, during the 

pendency of the appeal, may remand the application for further examination and the submission 

of additional evidence.259 

 

1219.01 By Request for Reconsideration 

37 CFR § 2.144 Reconsideration of decision on ex parte appeal. 

Any request for rehearing or reconsideration, or modification of the decision, must be filed 

within one month from the date of the decision. Such time may be extended by the Trademark 

Trial and Appeal Board upon a showing of sufficient cause. 

For general information concerning requests for rehearing, reconsideration, or modification of 

a final decision of the Board, see TBMP §§ 543 and 544. What follows below is information 

pertaining specifically to requests for rehearing, reconsideration, or modification of a final 

decision of the Board in an ex parte appeal. 

An applicant that has filed an ex parte appeal to the Board, received a final decision therein from

the Board, and is dissatisfied with that decision, may file a request for rehearing, reconsideration, 

or modification of the decision. The applicant must file the request within one month from the 

date of the decision. The time for filing the request may be extended by the Board upon a 

showing of sufficient cause.260 

The Board may also rehear, reconsider, or modify its final decision, in an ex parte appeal, at the 

request of the trademark examining attorney.261 The examining attorney must file the request 

within one month of the date of the final decision, unless the time is extended by the Board upon 

a showing of sufficient cause.262 

259 See In re Lowrance Electronics Inc., 14 USPQ2d 1251, 1251 (TTAB 1989). 

260 See 37 CFR § 2.144. 

261 See In re Ferrero S.p.A., 22 USPQ2d 1800, 1800 (TTAB 1992), recon. denied, 24 USPQ2d 1061 (TTAB 1992)

(in the absence of statutory or regulatory prohibition, Board has inherent authority to entertain examining attorney’s 

request for reconsideration); and TMEP § 1501.07

262 See In re Ferrero S.p.A., supra at 24 USPQ2d 1062 n.1. 

1200 - 686 
Chapter 1200 

EX PARTE APPEALS 

If a request for rehearing, reconsideration, or modification of the Board's final decision in an ex 

parte appeal is timely filed, applicant's time for filing an appeal, or for commencing a civil action 

for review of the Board's decision, will expire two months after action on the request.263 

1219.02 By Appeal 

An applicant that has filed an ex parte appeal to the Board, received a final decision therein from

the Board, and is dissatisfied with that decision, may have remedy by way of an appeal to the 

United States Court of Appeals for the Federal Circuit, or by way of a civil action for review of 

the decision of the Board.264 

For information concerning the taking of an appeal from a final decision of the Board, see

TBMP §§ 901-903. 

When a decision of the Board affirming a refusal to register in an ex parte case has been 

appealed to the United States Court of Appeals for the Federal Circuit, the Court, during the 

pendency of the appeal, may remand the application for further examination and the submission 

of additional evidence.265

 

263 See 37 CFR § 2.145(d)(1).

264 Section 21 of the Act, 15 U.S.C. § 1071, and 37 CFR § 2.145.

 

265 See TBMP § 1218 (Reopening).

1200 - 687 
APPENDIX OF FORMS 

Certificate of Mailing Suggested Format 

 Certificate of Mailing

Postal Service with sufficient postage as 

Arlington, Virginia 22202-3514 

Typed or printed name of 

I hereby certify that this correspondence 

is being deposited with the United States 

First-class mail in an envelope addressed to: 

Commissioner for Trademarks 

2900 Crystal Drive 

on ___________ _________________ 

 Date Signature 

_________________________________ 

person signing certificate 

Certificate of Transmission Suggested Format 

 Certificate of Transmission

I hereby certify that this correspondence 

 Date Signature 

is being facsimile transmitted to the

United States Patent and Trademark 

Office 

on ___________ _________________ 

_________________________________ 

Typed or printed name of 

person signing certificate 

Appendix of Forms - 688 
APPENDIX OF FORMS 

Certificate of Service Suggested Format 

Shown below is a suggested format for a certificate of service: 

I hereby certify that a true and complete copy of the 

foregoing (insert title of submission) has been served on 

(insert name of opposing counsel or party) by mailing 

said copy on (insert date of mailing), via First Class Mail, 

postage prepaid (or insert other appropriate method of 

delivery) to: (set out name and address of opposing 

counsel or party). 

Designation of Domestic Representative 

Designation of Domestic Representative

(Name of Domestic Representative), whose postal 

 address is ______________________________ 

 ______________________________________, 

is hereby designated (Name of Designating Party)'s

proceeding may be served. 

 __________________________ 

 __________________________ 

MAILING DATE 

DISCOVERY PERIOD TO OPEN 

 

30-day testimony period for party in position 

of plaintiff to close 

representative upon whom notice or process in this 

 (Signature of Designating Party) 

 (Identification of Person Signing) 

 __________________________ 

 (Date of Signature) 

Sample Trial Order -- Standard

1/1/2003 

1/21/2003 

DISCOVERY PERIOD TO CLOSE 7/20/2003 

 10/18/2003 

Appendix of Forms - 689 
APPENDIX OF FORMS 

 

of defendant to close 12/17/2003 

 

15-day rebuttal testimony period for plaintiff 

 

Brief for plaintiff is due 

Brief for defendant is due 

5/16/2004 

DISCOVERY PERIOD TO CLOSE 

 10/18/2003 

 

 

In the counterclaim is due 

30-day testimony period for party in position 

to close 1/31/2004 

Briefs shall be due as follows: 

[See Trademark Rule 2.128(a)(2)]: 

4/1/2004 

5/1/2004 

Reply brief, if any, for plaintiff is due 

Sample Trial Order With a Counterclaim 

 7/20/2003 

30-day testimony period for plaintiff in the opposition 

to close 

30-day testimony period for defendant in the opposition 

and plaintiff in the counterclaim to close 12/17/2003 

30-day testimony period for defendant in the counterclaim 

and rebuttal testimony for plaintiff in the opposition 

to close 2/15/2004 

15-day rebuttal testimony period for plaintiff in the 

counterclaim to close 4/1/2004 

Briefs shall be due as follows: 

[See Trademark Rule 2.128(a)(2)]: 

Brief for plaintiff in the opposition is due 5/31/2004

Brief for defendant in the opposition and plaintiff 

7/1/2004

Appendix of Forms - 690 
APPENDIX OF FORMS 

Brief for defendant in the counterclaim and reply brief, 

8/16/2004

 

PROVISIONS FOR PROTECTING 

REVEALED DURING BOARD PROCEEDING

Parties may use this standard form order as the entirety of their agreement or may use it as a 

template from which they may fashion a modified agreement. If the Board orders that the parties 

abide by the terms of this order, they may subsequently agree to modifications or additions, 

subject to Board approval. 

Agreement of the parties is indicated by the signatures of the parties’ attorneys and/or the parties 

themselves at the conclusion of the order. Imposition of the terms by the Board is indicated by 

signature of a Board attorney or Administrative Trademark Judge at the conclusion of the order. 

if any, for plaintiff in the opposition is due 7/31/2004

Reply brief, if any, for plaintiff in the counterclaim is due 

Terms of Suggested Protective Agreement upon Stipulation 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Plaintiff Proceeding No. 

 v. 

 

Defendant 

 

CONFIDENTIALITY OF INFORMATION 

Information disclosed by any party or non-party witness during this proceeding may be

considered confidential, a trade secret, or commercially sensitive by a party or witness. To 

preserve the confidentiality of the information so disclosed, either the parties have agreed to be 

bound by the terms of this order, in its standard form or as modified by agreement, and by any 

additional provisions to which they may have agreed and attached to this order, or the Board has 

ordered that the parties be bound by the provisions within. As used in this order, the term

"information" covers both oral testimony and documentary material. 

Appendix of Forms - 691 
APPENDIX OF FORMS 

If the parties have signed the order, they may have created a contract. The terms are binding 

from the date the parties or their attorneys sign the order, in standard form or as modified or 

supplemented, or from the date of imposition by a Board attorney or judge. 

1) Classes of Protected Information. 

The Rules of Practice in Trademark Cases provide that all inter partes proceeding files, as 

well as the involved registration and application files, are open to public inspection. The 

terms of this order are not to be used to undermine public access to files. When 

appropriate, however, a party or witness, on its own or through its attorney, may seek to 

protect the confidentiality of information by employing one of the following 

designations. 

 The provisions of this order regarding access to protected information are subject to 

 

 TERMS OF PROTECTIVE ORDER 

 Confidential—Material to be shielded by the Board from public access. 

Highly Confidential—Material to be shielded by the Board from public access 

and subject to agreed restrictions on access even as to the parties and/or their 

attorneys. 

Trade Secret/Commercially Sensitive—Material to be shielded by the Board from

public access, restricted from any access by the parties, and available for review 

by outside counsel for the parties and, subject to the provisions of paragraph 4 and 

5, by independent experts or consultants for the parties. 

2) Information Not to Be Designated as Protected. 

Information may not be designated as subject to any form of protection if it (a) is, or 

becomes, public knowledge, as shown by publicly available writings, other than through 

violation of the terms of this document; (b) is acquired by a non-designating party or nonparty witness from a third party lawfully possessing such information and having no 

obligation to the owner of the information; (c) was lawfully possessed by a nondesignating party or non-party witness prior to the opening of discovery in this 

proceeding, and for which there is written evidence of the lawful possession; (d) is 

disclosed by a non-designating party or non-party witness legally compelled to disclose 

the information; or (e) is disclosed by a non-designating party with the approval of the 

designating party. 

3) Access to Protected Information. 

Appendix of Forms - 692 
APPENDIX OF FORMS 

modification by written agreement of the parties or their attorneys, or by motion filed 

with and approved by the Board. 

 Judges, attorneys, and other employees of the Board are bound to honor the parties’ 

Outside counsel, but not in-house counsel, shall have access to information designated as 

trade secret/commercially sensitive. 

 Independent experts or consultants, non-party witnesses, and any other individual not 

4) Disclosure to Any Individual. 

designations of information as protected but are not required to sign forms

acknowledging the terms and existence of this order. Court reporters, stenographers, 

video technicians or others who may be employed by the parties or their attorneys to 

perform services incidental to this proceeding will be bound only to the extent that the 

parties or their attorneys make it a condition of employment or obtain agreements from 

such individuals, in accordance with the provisions of paragraph 4. 

Parties are defined as including individuals, officers of corporations, partners of 

partnerships, and management employees of any type of business organization. 

Attorneys for parties are defined as including in-house counsel and outside counsel, 

including support staff operating under counsel’s direction, such as paralegals or legal 

assistants, secretaries, and any other employees or independent contractors operating 

under counsel’s instruction. 

Independent experts or consultants include individuals retained by a party for purposes 

related to prosecution or defense of the proceeding but who are not otherwise employees 

of either the party or its attorneys. 

Non-party witnesses include any individuals to be deposed during discovery or trial, 

whether willingly or under subpoena issued by a court of competent jurisdiction over the 

witness. 

Parties and their attorneys shall have access to information designated as confidential or

highly confidential, subject to any agreed exceptions. 

otherwise specifically covered by the terms of this order may be afforded access to 

confidential or highly confidential information in accordance with the terms that follow 

in paragraph 4. Further, independent experts or consultants may have access to trade 

secret/commercially sensitive information if such access is agreed to by the parties or

ordered by the Board, in accordance with the terms that follow in paragraph 4 and 5. 

Prior to disclosure of protected information by any party or its attorney to any individual 

not already provided access to such information by the terms of this order, the individual 

Appendix of Forms - 693 
APPENDIX OF FORMS 

shall be informed of the existence of this order and provided with a copy to read. The 

individual will then be required to certify in writing that the order has been read and 

understood and that the terms shall be binding on the individual. No individual shall 

receive any protected information until the party or attorney proposing to disclose the 

information has received the signed certification from the individual. A form for such 

certification is attached to this order. The party or attorney receiving the completed form

shall retain the original. 

5) Disclosure to Independent Experts or Consultants. 

Responses to interrogatories under Federal Rule 33 and requests for admissions under 

Federal Rule 36, and which the responding party reasonably believes to contain protected 

information shall be prominently stamped or marked with the appropriate designation 

from paragraph 1. Any inadvertent disclosure without appropriate designation shall be 

remedied as soon as the disclosing party learns of its error, by informing all adverse 

parties, in writing, of the error. The parties should inform the Board only if necessary 

because of the filing of protected information not in accordance with the provisions of 

paragraph 12. 

7) Production of Documents. 

If a party responds to requests for production under Federal Rule 34 by making copies 

and forwarding the copies to the inquiring party, then the copies shall be prominently 

stamped or marked, as necessary, with the appropriate designation from paragraph 1. If 

the responding party makes documents available for inspection and copying by the 

inquiring party, all documents shall be considered protected during the course of 

In addition to meeting the requirements of paragraph 4, any party or attorney proposing 

to share disclosed information with an independent expert or consultant must also notify 

the party which designated the information as protected. Notification must be personally 

served or forwarded by certified mail, return receipt requested, and shall provide notice 

of the name, address, occupation and professional background of the expert or 

independent consultant. 

The party or its attorney receiving the notice shall have ten (10) business days to object to 

disclosure to the expert or independent consultant. If objection is made, then the parties 

must negotiate the issue before raising the issue before the Board. If the parties are unable 

to settle their dispute, then it shall be the obligation of the party or attorney proposing 

disclosure to bring the matter before the Board with an explanation of the need for 

disclosure and a report on the efforts the parties have made to settle their dispute. The 

party objecting to disclosure will be expected to respond with its arguments against 

disclosure or its objections will be deemed waived. 

6) Responses to Written Discovery. 

Appendix of Forms - 694 
APPENDIX OF FORMS 

inspection. After the inquiring party informs the responding party what documents are to 

be copied, the responding party will be responsible for prominently stamping or marking 

the copies with the appropriate designation from paragraph 1. Any inadvertent disclosure 

without appropriate designation shall be remedied as soon as the disclosing party learns 

of its error, by informing all adverse parties, in writing, of the error. The parties should 

inform the Board only if necessary because of the filing of protected information not in 

accordance with the provisions of paragraph 12. 

8) Depositions. 

Protected documents produced during a discovery deposition, or offered into evidence 

during a testimony deposition shall be orally noted as such by the producing or offering 

party at the outset of any discussion of the document or information contained in the 

document. In addition, the documents must be prominently stamped or marked with the 

appropriate designation. 

During discussion of any non-documentary protected information, the interested party 

shall make oral note of the protected nature of the information. 

When a party or its attorney files a notice of reliance during the party’s testimony period, 

the party or attorney is bound to honor designations made by the adverse party or 

attorney, or non-party witness, who disclosed the information, so as to maintain the 

protected status of the information. 

10) Briefs. 

When filing briefs, memoranda, or declarations in support of a motion, or briefs at final 

hearing, the portions of these filings that discuss protected information, whether 

information of the filing party, or any adverse party, or any non-party witness, should be 

redacted. The rule of reasonableness for redaction is discussed in paragraph 12 of this 

order. 

The transcript of any deposition and all exhibits or attachments shall be considered 

protected for 30 days following the date of service of the transcript by the party that took 

the deposition. During that 30-day period, either party may designate the portions of the 

transcript, and any specific exhibits or attachments that are to be treated as protected, by 

electing the appropriate designation from paragraph 1. Appropriate stampings or 

markings should be made during this time. If no such designations are made, then the 

entire transcript and exhibits will be considered unprotected. 

9) Filing Notices of Reliance. 

11) Handling of Protected Information. 

Appendix of Forms - 695 
APPENDIX OF FORMS 

Disclosure of information protected under the terms of this order is intended only to 

facilitate the prosecution or defense of this case. The recipient of any protected 

information disclosed in accordance with the terms of this order is obligated to maintain 

the confidentiality of the information and shall exercise reasonable care in handling, 

storing, using or disseminating the information. 

12) Redaction; Filing Material With the Board. 

 

This envelope contains documents or information that 

are subject to a protective order or agreement. The 

confidentiality of the material is to be maintained and 

the envelope is not to be opened, or the contents 

revealed to any individual, except by order of the Board. 

When a party or attorney must file protected information with the Board, or a brief that 

discusses such information, the protected information or portion of the brief discussing 

the same should be redacted from the remainder. A rule of reasonableness should dictate 

how redaction is effected. 

Redaction can entail merely covering a portion of a page of material when it is copied in 

anticipation of filing but can also entail the more extreme measure of simply filing the 

entire page under seal as one that contains primarily confidential material. If only a 

sentence or short paragraph of a page of material is confidential, covering that material 

when the page is copied would be appropriate. In contrast, if most of the material on the 

page is confidential, then filing the entire page under seal would be more reasonable, 

even if some small quantity of non-confidential material is then withheld from the public 

record. Likewise, when a multi-page document is in issue, reasonableness would dictate 

that redaction of the portions or pages containing confidential material be affected when 

only some small number of pages contain such material. In contrast, if almost every page 

of the document contains some confidential material, it may be more reasonable to 

simply submit the entire document under seal. Occasions when a whole document or 

brief must be submitted under seal should be very rare. 

Protected information, and pleadings, briefs or memoranda that reproduce, discuss or 

paraphrase such information, shall be filed with the Board under seal. The envelopes or 

containers shall be prominently stamped or marked with a legend in substantially the 

following form: 

 CONFIDENTIAL 

13) Acceptance of Information; Inadvertent Disclosure. 

Acceptance by a party or its attorney of information disclosed under designation as 

protected shall not constitute an admission that the information is, in fact, entitled to 

protection. Inadvertent disclosure of information, which the disclosing party intended to 

Appendix of Forms - 696 
APPENDIX OF FORMS 

designate as protected, shall not constitute waiver of any right to claim the information as 

protected upon discovery of the error. 

14) Challenges to Designations of Information as Protected. 

This order shall not preclude the parties or their attorneys from making any applicable 

claims of privilege during discovery or at trial. Nor shall the order preclude the filing of 

If the parties or their attorneys disagree as to whether certain information should be 

protected, they are obligated to negotiate in good faith regarding the designation by the 

disclosing party. If the parties are unable to resolve their differences, the party 

challenging the designation may make a motion before the Board seeking a determination 

of the status of the information. 

A challenge to the designation of information as protected must be made substantially 

contemporaneous with the designation, or as soon as practicable after the basis for 

challenge is known. When a challenge is made long after a designation of information as 

protected, the challenging party will be expected to show why it could not have made the 

challenge at an earlier time. 

The party designating information as protected will, when its designation is timely 

challenged, bear the ultimate burden of proving that the information should be protected. 

15) Board’s Jurisdiction; Handling of Materials After Termination. 

The Board’s jurisdiction over the parties and their attorneys ends when this proceeding is 

terminated. A proceeding is terminated only after a final order is entered and either all 

appellate proceedings have been resolved or the time for filing an appeal has passed 

without filing of any appeal. 

The parties may agree that archival copies of evidence and briefs may be retained, subject 

to compliance with agreed safeguards. Otherwise, within 30 days after the final 

termination of this proceeding, the parties and their attorneys shall return to each 

disclosing party the protected information disclosed during the proceeding, and shall 

include any briefs, memoranda, summaries, and the like, which discuss or in any way 

refer to such information. In the alternative, the disclosing party or its attorney may make 

a written request that such materials be destroyed rather than returned. 

16) Other Rights of the Parties and Attorneys. 

any motion with the Board for relief from a particular provision of this order or for 

additional protections not provided by this order. 

 By Agreement of the Following, 

 Effective: 

Appendix of Forms - 697 
APPENDIX OF FORMS 

 ____________________________ 

 [insert signature date]

individual signing for plaintiff]

[print or type name and title of 

 [print or type name and law firm of 

 ____________________________ 

 attorney for defendant] 

By Order of the Board, effective _____________________. 

30-day testimony period for defendant in the 

opposition and as plaintiff in the counterclaim

to close: 

30-day testimony period for defendant in the 

counterclaim and its rebuttal testimony as 

plaintiff in the opposition to close: 

15-da

____________________________ 

[print or type name and title of 

____________________________ 

individual signing for defendant]

 ____________________________ 

 attorney for plaintiff] 

[print or type name and law firm of 

 

 

_____________________________________ 

[print or type name and title of Board attorney 

or judge imposing order] 

Sample briefing schedule for a case with a counterclaim 

. 

THE PERIOD FOR DISCOVERY TO 

CLOSE: 2/19/2003 

30-day testimony period for 

Plaintiff in the opposition to close: 5/20/2003 

 7/19/2003 

9/17/2003 

y rebuttal testimony period for plaintiff 11/1/2003 

Appendix of Forms - 698 
APPENDIX OF FORMS 

in the counterclaim to close: 

 

[See Trademark rule 2.128(a)(2)]. 

Brief for plaintiff in the opposition shall be 

due: 12/31/2003 

plaintiff in the counterclaim shall be due: 

 

 

Sample Trial Order for Interference 

Set forth below is a sample trial and briefing schedule for an interference involving parties A, B, 

C, D, and E, where A is junior to every other party; B is junior to C, D, and E, and senior to A; C 

is junior to D and E, and senior to A and B; D is junior to E, and senior to A, B, and C; and E is 

senior to every other party: 

Briefs shall be due as follows:

Brief for defendant in the opposition and as 

1/30/2004 

Brief for defendant in the counterclaim and its 

reply brief (if any) as plaintiff in the 

opposition shall be due: 2/29/2004 

Reply brief (if any) for plaintiff in the 

counterclaim shall be due: 3/15/2004 

If the parties stipulate to any extension of these dates, the papers should be filed in triplicate and 

should set forth the dates in the format shown in this order. See Trademark Rule 2.121(d). 

An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129. 

THE PERIOD FOR DISCOVERY TO OPEN : January 2, 2003 

THE PERIOD FOR DISCOVERY TO CLOSE : July 2, 2003 

30-day testimony period for A to close : August 31, 2003 

30-day testimony period for B to close : October 30, 2003 

 

Appendix of Forms - 699 
APPENDIX OF FORMS 

30-day testimony period for C to close : December 31, 2003 

 

30-day testimony period for D to close : March 1, 2004 

 

30-day testimony period for E to close : April 30, 2004 

 

 15-day rebuttal testimony period for 

 A to close : June 14, 2004 

 

 15-day rebuttal testimony period for 

 B to close : July 29, 2004 

 

 15-day rebuttal testimony period for 

 C to close : September 12, 2004 

 

15-day rebuttal testimony period for 

D to close : October 28, 2004 

 

Briefs on final hearing (37 CFR 2.128) shall become due as follows: 

Brief for A shall be due : December 27, 2004 

Brief for B shall be due : January 26, 2005 

Brief for C shall be due : February 25, 2005 

Brief for D shall be due : March 27, 2005 

Brief for E shall be due : April 26, 2005 

 

Reply briefs, if any, shall be due as follows: 

Reply brief for A shall be due : May 11, 2005 

Reply brief for B shall be due : May 26, 2005 

Reply brief for C shall be due : June 10, 2005 

Reply brief for D shall be due : June 25, 2005 

Appendix of Forms - 700 
APPENDIX OF FORMS 

Sample Trial Orders for Concurrent Use 

Set forth below is a sample trial and briefing schedule for a concurrent use proceeding involving 

parties A, B, C, D, and E, where A, B, C, and D are all concurrent use applicants, A's application 

has the latest filing date, B's application has the next-latest filing date, C's application has the 

next-latest filing date, D's application has the earliest filing date, and E is a specified concurrent

user which does not own an involved application or registration (the trial and briefing schedule 

would look the same if E were a concurrent use applicant whose application had the earliest 

filing date, or if E owned an involved registration): 

MAILING DATE 1/1/2003 

DISCOVERY PERIOD TO OPEN 1/21/2003 

DISCOVERY PERIOD TO CLOSE 7/20/2003 

30-DAY TESTIMONY PERIOD FOR A 

to close 10/18/2003 

30-DAY TESTIMONY PERIOD FOR B 

to close 12/17/2003 

30-DAY TESTIMONY PERIOD FOR C 

to close 2/15/2004 

30-DAY TESTIMONY PERIOD FOR D 

to close 4/15/2004 

30-DAY TESTIMONY PERIOD FOR E 

to close 6/14/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR A 

to close 7/29/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR B 

to close 9/12/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR C 

to close 10/27/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR D 12/11/2004 

Appendix of Forms - 701 
APPENDIX OF FORMS 

to close 

BRIEFS ON FINAL HEARING (37 CFR 2.128) 

shall become due as follows:

BRIEF FOR A is due 2/9/2005 

BRIEF FOR B is due 3/11/2005 

BRIEF FOR C is due 4/10/2005 

BRIEF FOR D is due 5/10/2005 

BRIEF FOR E is due 6/9/2005 

REPLY BRIEFS, if any, shall be due as follows: 

REPLY BRIEF FOR A is due 7/9/2005 

REPLY BRIEF FOR B is due 7/24/2005 

REPLY BRIEF FOR C is due 8/8/2005 

REPLY BRIEF FOR D is due 8/23/2005 

Set forth below is another sample trial and briefing schedule for a concurrent use proceeding 

involving parties X, Y, and Z, where X is a concurrent use applicant, Y owns a registration 

which is involved in the proceeding, and Z is a specified concurrent user which does not own an 

involved application or registration: 

MAILING DATE 1/1/2003 

DISCOVERY PERIOD TO OPEN 1/21/2003 

DISCOVERY PERIOD TO CLOSE 7/20/2003 

30-DAY TESTIMONY PERIOD FOR X 

to close 10/18/2003 

30-DAY TESTIMONY PERIOD FOR Y 

to close 12/17/2003 

Appendix of Forms - 702 
APPENDIX OF FORMS 

30-DAY TESTIMONY PERIOD FOR Z 

to close 2/15/2004 

15-DAY REBUTTAL TESTIMONY PERIOD FOR X 

to close 3/31/2004 

BRIEFS ON FINAL HEARING (37 CFR 2.128) 

shall become due as follows:

BRIEF FOR X is due 5/30/2004 

BRIEF FOR Y is due 6/29/2004 

BRIEF FOR Z is due 7/29/2004 

REPLY BRIEFS, if any, shall be due as follows: 

REPLY BRIEF FOR X is due 8/13/2004 

Notice of Appeal – Suggested Format 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

.................................................... 

 (Name of applicant) 

.................................................... 

(Serial Number of application) 

.................................................... 

 (Filing date of application) 

.................................................... 

 (Mark) 

NOTICE OF APPEAL

Applicant hereby appeals to the Trademark Trial and Appeal Board from the decision of 

the Trademark Examining Attorney refusing registration.(1)

By.........................................................

Appendix of Forms - 703 
APPENDIX OF FORMS 

 (Signature)(2)

.............................................................. 

(Identification of person signing)(3) 

FOOTNOTES 

(1)

 The required fee must be submitted for each class for which an appeal is taken. If an appeal 

is taken for fewer than the total number of classes in the application, the classes in which the 

appeal is taken should be specified. 

(2)

 The notice of appeal may be signed by the applicant or by the applicant's attorney or other 

authorized representative. If an applicant signing for itself is a partnership, the signature must be 

made by a partner; if an applicant signing for itself is a corporation or similar juristic entity, the 

signature must be made by an officer of the corporation or other juristic entity who has authority 

to sign for the entity and whose title is given. 

(3)

 State the capacity in which the signing individual signs, e.g., attorney for applicant, applicant 

(if applicant is an individual), partner of applicant (if applicant is a partnership), officer of 

applicant identified by title (if applicant is a corporation), etc. 

Appendix of Forms - 704 
TABLE OF AUTHORITIES 

Cases1

 

1776, Inc., In re, 223 USPQ 186 (TTAB 1984) .................................................................................................. § 1214

3Com Corp., In re, 56 USPQ2d 1060 (TTAB 2000)...................................................................§§ 704.12(a); 1208.04

4U Company of America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB 1972)..................................... § 528.05(b)

8440 LLC v. Midnight Oil Company, 59 USPQ2d 1541 (TTAB 2001) ............................................. § 309.03(d); 511

-AA-1-A Corp. v. The Gillette Co., 199 USPQ 118 (TTAB 1978)............................................................................ § 317

A La Vielle Russie Inc., In re, 60 USPQ2d 1895 (TTAB 2001).................................................... §§ 1203.02(f) ; 1215

A. H. Robins Co. v. Evsco Pharmaceutical Corp., 190 USPQ 340 (TTAB 1976) ............................................§ 704.10

A.R.A. Manufacturing Co. v. Equipment Co., 183 USPQ 558 (TTAB 1974) ................................. §§ 534.02; 534.02; 

 704.03(b)(1)(A) 

Abbott Laboratories v. Tac Industries, Inc., 217 USPQ 819 (TTAB 1981).............................§§ 704.06(b); 704.12(a)

Abolio y Rubio S.A.C.I. y G, In re., 24 USPQ2d 1152 (TTAB 1992)............................................ §§ 1201.02; 1205.01

Abraham's Seed v. John One Ten, 1 USPQ2d 1230 (TTAB 1986) ..............................................................§ 602.02(b)

Accu Personnel Inc. v. Accustaff Inc., 38 USPQ 1443 (TTAB 1996) ................................................. § 512.04; 528.08

Acme Boot Co. v. Tony and Susan Alamo Foundation, Inc., 213 USPQ 591 

 (TTAB 1980)..................................................................................................................................§ 704.03(b)(1)(A)

Action Temporary Services, Inc. v. Labor Force Inc., 10 USPQ2d 1307

 (Fed. Cir. 1989) ............................................................................................................................§ 704.03(b)(1)(A)

Adolphe Lafont, S.A. v. S.A.C.S.E. Societa Azioni Confezioni Sportive Ellera, S.p.A., 

 228 USPQ 589 (TTAB 1985).............................................................................................................................§ 414

Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 

988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993)....................................................................... §§ 503.02; 503.04

AFG Industries Inc., In re, 17 USPQ2d 1162 (TTAB 1990)................................................................................§ 1217

Alappat, In re, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994) .................................................. §§ 540; 802.04; 803

Alcan Aluminum Corp. v. Alcar Metals Inc., 200 USPQ 742 (TTAB 1978)......................................§ 704.03(b)(1)(A)

Alfred Dunhill Ltd., In re, 4 USPQ2d 1383 (Comm'r 1987).................................................. §§ 514.03; 1101.02; 1114

Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 

293 F.2d 685, 130 USPQ 412 (CCPA 1961)...................................................................§§ 1102.02; 1103.01(d)(3)

All England Lawn Tennis Club, Ltd. v. Creations Aromatiques, Inc., 

220 USPQ 1069 (TTAB 1983) ...................................................................................................................§ 414(13)

Allegro High Fidelity, Inc. v. Zenith Radio Corp., 197 USPQ 550 (TTAB 1977) ............................................§ 534.02

Alliance Manufacturing Co. v. ABH Diversified Products, Inc., 

 226 USPQ 348 (TTAB 1985)............................................................................................................................§ 314

Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390 (TTAB 1979) ......................§§ 309.03(c); 704.03(b)(1)(B); 

704.03(b)(2); 704.04

Allied-Signal Inc. v. Allegheny Ludlum Corp., 29 USPQ2d 1039 (DC Conn 1993) .........................................§ 906.01

Allstate Insurance Co. v. DeLibro, 6 USPQ2d 1220 (TTAB 1988) ...................................................§ 704.03(b)(1)(B)

Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663 (TTAB 1988)............................§ 405.04(c); 513.02

1 References are to the sections of the manual in which the case, statute or rule appears. 

Table of Authorities - 705 
TABLE OF AUTHORITIES 

Allstate Life Insurance Co. v. Cuna International, Inc., 169 USPQ 313 

 (TTAB 1971), aff'd without opinion, 487 F.2d 1407, 180 USPQ 48 

 (CCPA 1973)........................................................................................................................ §§ 404.08(a); 703.01(e) 

Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698

 (9th Cir.1991) ................................................................................................. §§ 412.03; 901.01; 901.02(a); 903.03

Aloe Creme Laboratories, Inc. v. Aloe 99, Inc., 188 USPQ 316 (TTAB 1975) ................................................§ 512.01

Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970)............................§ 704.03(b)(1)(A)

Aloe Crème Laboratories, Inc. v. Johnson Products Co., 183 USPQ 447 (TTAB 1974) ..................§ 704.03(b)(1)(A)

Alpha Analytics Investment Group LLC, In re, 62 USPQ2d 1852 (TTAB 2002)...............................§ 704.03(b)(1)(B)

Alpha Industries, Inc. v. Alpha Microsystems, 223 USPQ 96 (TTAB 1984).....................................................§ 704.04

Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 

 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988) ......................................................§§ 704.12(a); 704.12(d); 1110

Amerace Corp. v. USM Corp., 183 USPQ 506 (TTAB 1974)............................................................§§ 414(6); 523.02

American Automobile Ass'n v. AAA Legal Clinic of Jefferson Crooke, P.C., 

 930 F.2d 1117, 19 USPQ2d 1142 (5th Cir. 1991) ............................................................§§ 407.03(a); 407.04; 525

American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 USPQ2d 1208 

 (D.Minn. 1986).........................................................................................................................................§ 510.02(a)

American Crucible Products Co. v. Kenco Engineering Co., 188 USPQ 529 (TTAB 1975).......................§ 704.05(b)

American Home Products Corp., In re, 226 USPQ 327 (TTAB 1985)................................................................§ 1215

American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855 (TTAB 1986)................................ §§ 503.03; 507.02

American Manufacturing Co. v. Phase Industries, Inc., 192 USPQ 498 (TTAB 1976).....................§ 704.03(b)(1)(A)

American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981) ................................§ 528.05(a)

American Olean Tile Co., In re,, 1 USPQ2d 1823 (TTAB 1986)..................................................... §§ 101.02; 101.03

American Optical Corp. v. American Olean Tile Co., 168 USPQ 471

 (TTAB 1971)..........................................................................................................§§ 507.02; 507.02(a); 507.03(a) 

American Optical Corp. v. American Olean Tile Co., 169 USPQ 123

 (TTAB 1971) .................................................................................................. §§ 704.07; 707.02(b)(2); 707.02(c) 

American Optical Corp. v. Atwood Oceanics, Inc., 177 USPQ 585 (Comm’r 1973).............................................§ 539

American Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB 1974)............................§§ 414(3); 414(7); 414(11); 

 414(12); 414(14); 414(18) 

American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793 (TTAB 1986) ..................................................................§ 704.01

American Security Bank v. American Security and Trust Co., 571 F.2d 564, 

197 USPQ 65 (CCPA 1978) ...................................................................................................................§ 704.12(d) 

American Skein & Foundry Co. v. Stein, 165 USPQ 85 (TTAB 1970)..................................................................§ 706

American Society of Oral Surgeons v. American College of Oral & 

 Maxillofacial Surgeons, 201 USPQ 531 (TTAB 1979).....................................................................................§ 414

American Speech-Language-Hearing Ass'n v. National Hearing Aid Society, 

 224 USPQ 798 (TTAB 1984).......................................................................................................................§ 303.03

American Standard Inc. v. AQM Corporation, 208 USPQ 840 (TTAB 1980).......................................... § 309.03(c)A

American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 13132

 (TTAB 1992)....................................................................................................§§ 303.03; 309.03(a)(2); 309.03(b);

 403.04; 506.01; 506.02; 509.01(b)(1)

American-International Travel Service, Inc. v. AITS, Inc., 174 USPQ 175 (TTAB 1972)................................§ 102.01

Amethyst Investment Group, In re, 37 USPQ2d 1735 (Comm'r 1995)...................................................................§ 109

AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) ..........§ 704.03(b)(1)(B)

Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126 (TTAB 1978)..................................................................... § 543; 544

AMP Inc. v. Raychem Corp., 179 USPQ 857 (TTAB 1973) .............................................................................§ 403.02

An Evening at the Trotters, Inc. v. A Nite at the Races, Inc., 214 USPQ 737 (TTAB 1982) ........................§ 703.01(l) 

Analog Devices Inc., In re, 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097,

 10 USPQ2d 1879 (Fed. Cir. 1989) ................................................................................................. §§ 1208.04; 1215

Anania Associates, Inc., In re, 223 USPQ 740 (TTAB 1984)............................................... §§ 704.03(b)(1)(A); 1214

 

2

 NOTE: BNA’s electronic version of this case is cited as: 22 USPQ2d 1316. 

Table of Authorities - 706 
TABLE OF AUTHORITIES 

Andersen Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ 431 (TTAB 1985)...................... §§ 102.01; 408.03; 704.09

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)......................................................................................§ 528.01

Andrea Radio Corp. v. Premium Import Co., 191 USPQ 232 

(TTAB 1976) ...........................................................................................§§ 704.03; 704.03(b)(2); 704.08(b)(1)(A)

Angelica Corp. v. Collins & Aikman Corp., 183 USPQ 378 (TTAB 1974) ......................................................§ 523.02

Angelica Corp. v. Collins & Aikman Corp., 192 USPQ 387 

(TTAB 1976) ............................................................................................ §§ 539; 704.03(b)(1)(A); 704.05(b); 706

Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 

 29 USPQ2d 1146 (TTAB 1993)............................................................................................................... § 309.03(c)

Anheuser-Busch, Inc. v. Major Mud & Chemical Co., 221 USPQ 1191 

(TTAB 1984) ............................................................................................................... §§ 703.01(l); 704.09; 704.10

Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434 (TTAB 1975)..................§§ 503.02; 507.02; 507.02(a); 507.03(a) 

Anschuetz & Co., GmbH, In re, 838 F.2d 1362 (5th Cir. 1988) ...............................................................§ 404.03(c)(2)

Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187 (TTAB 1983) .......................................................§ 515

Anton/Bauer Inc., In re, 7 USPQ2d 1380 (TTAB 1988)......................................................................................§ 1214

Application Papers Filed November 12, 1965, In re, 152 USPQ 194 

(Comm'r 1966)...................................................................................................... §§ 202.01; 308.02(b); 309.02(b)

Aquion Partners L.P. v. Envirogard Ltd., 43 USPQ2d 1371 (TTAB 1991).................................................§ 311.02(b)

Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 USPQ 505 

 (TTAB 1974) .............................................................................................................§§ 206.03; 303.05(c) ; 512.04

Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366 (TTAB 1975)..........................§§ 206.02; 510.02(a)

Argo & Co. v. Springer, 189 USPQ 581 (TTAB 1976)..................................................................... §§ 206.03; 512.04

Argo & Co. v. Springer, 198 USPQ 626 (TTAB 1978)..................................................................... §§ 206.03; 512.04

Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB 1992), 

 summ. judgment granted in part, 26 USPQ2d 1926 (TTAB 1993)............................. §§ 309.03(d); 313.02; 514.01

Ariola-Eurodisc Gesellschaft v. Eurotone International Ltd., 175 USPQ 250 (TTAB 1972)........... §§ 539; 801.02(b)

Arman's Systems, Inc. v. Armand's Subway, Inc., 215 USPQ 1048

 (TTAB 1982) .......................................................................................... §§ 307.02(a); 307.02(c)(1); 313.03; 1105

Armour & Co., In re, 220 USPQ 76 (TTAB 1983) ..............................................................................................§ 1214

Aromatique Inc. v. Lang, 25 USPQ2d 1359 (TTAB 1992) ...............................................................................§ 602.01

Aruba v. Excelsior Inc., 5 USPQ2d 1685 (TTAB 1987) ...................................................................................§ 303.02

Astec Industries, Inc. v. Barber-Greene Co., 196 USPQ 578 (TTAB 1977) ...............................................§ 704.05(b)

Astra Merck Inc., In re, 50 USPQ2d 1216 (TTAB 1998)............................................................§§ 704.12(a); 1208.04

Atlanta Blue Print Co., In re, 19 USPQ2d 1078 (Comm'r 1990) ...................................................... §§ 206.03; 512.04

Atlanta Fulton County Zoo Inc. v. De Palma, 45 USPQ2d 1858 (TTAB 1998) ......................§§ 509.01(b)(1); 534.02

Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606 TTAB 1974)................. §§ 403.02; 410 

Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998)............................................. § 309.03(c)

Audio Book Club Inc., In re, 52 USPQ2d 1042 (TTAB 1999)........................................................... §§ 1201.02; 1208

Autac Inc. v. Viking Industries, Inc., 199 USPQ 367 (TTAB 1978).................................................................... 704.11

Autac Inc. v. Walco Systems, Inc., 195 USPQ 11 (TTAB 1977) .................................................................. § 527.01(e)

Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ 539 (TTAB 1973).........................................................§ 507.02

Avedis Zildjian Co. v. D. H. Baldwin Co., 181 USPQ 736 (Comm’r 1974) ..........................................................§ 518

Avia Group International Inc. v. Faraut, 25 USPQ2d 1625 (TTAB 1992)..................... §§ 303.06; 405.03(d); 512.01

Avia Group International Inc. v. L.A. Gear California Inc., 853 F.2d 1557,

 7 USPQ2d 1548 (Fed. Cir. 1988) .................................................................................................. §§ 528.01; 528.06

Avocet, Inc., In re, 227 USPQ 566 (TTAB 1985).................................................................................................§ 1217

Azteca Restaurant Enterprises Inc., In re, 50 USPQ2d 1209 (TTAB 1999)...................................................§ 1208.04 

Table of Authorities - 707 
TABLE OF AUTHORITIES 

-BB.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 

 6 USPQ2d 1719 (Fed. Cir. 1988) .........................................................................................§§ 704.12(a); 704.12(d) 

Babies Beat Inc., In re, 13 USPQ2d 1729 (TTAB 1990) ................................................................................§ 1201.04 

Bacardi & Co. Ltd., In re, 48 USPQ2d 1031 (TTAB 1997).................................................................................§ 1214

BAF Industries v. Pro-Specialties, Inc., 206 USPQ 166 (TTAB 1980).............................................................§ 704.11

Bakers Franchise Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 192 (CCPA 1969)...............§ 704.06(a) 

Bank of America National Trust & Savings Ass'n v. First National Bank of Allentown, 

 220 USPQ 892 (TTAB 1984)....................................................................................................§§ 602.01; 602.02(b)

BankAmerica Corp. v. International Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979)............§§ 407.03(a); 525 

BankAmerica Corp. v. Invest America, 5 USPQ2d 1076 (TTAB 1987).......................... §§ 303.03; 309.03(b); 313.03 

BankAmerica Corp., In re, 229 USPQ 852 (TTAB 1986)...............................................................................§ 1207.05 

BankAmerica Corp., In re, 231 USPQ 873 (TTAB 1986).................................................................................§ 102.02

Barash Co. v. Vitafoam Ltd., 155 USPQ 267 (TTAB 1967), aff'd, 427 F.2d 810,

 166 USPQ 88 (CCPA 1970)...........................................................................................................§ 704.03(b)(1)(A)

Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992) ...................................§ 504.02

Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Mfg. Co., 

 55 USPQ2d 1848 (TTAB 2000)...................................................... §§ 502.04; 509.01(a); 509.01(b)(1); 527.01(a)

Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co., 

 16 USPQ2d 1466 (TTAB 1990) ..................................................................................§§ 405.03(b); 405.03(e); 519

BASF Wyandotte Corp. v. Polychrome Corp., 586 F.2d 238, 200 USPQ 20

(CCPA 1978) ................................................................................................................................ §§ 704.09; 704.10

Bass Anglers Sportsman Society of America, Inc. v. Bass Pro Lures, Inc., 

 200 USPQ 819 (TTAB 1978)...................................................................................§§ 544; 601.01; 601.02; 602.01

Bauhaus Designs Canada Ltd., In re, 12 USPQ2d 2001 (TTAB 1989)...............................................................§ 1208 

Bausch & Lomb Inc. v. Gentex Corp., 200 USPQ 117 (TTAB 1978) ..............................................................§ 704.10

Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986) ...........................§ 311.02(b); 528.02

Beatrice Foods Co, In re, 429 F.2d 466, 166 USPQ 431 

(CCPA 1970) .......................................................................... §§ 1101.01; 1103.01(b); 1103.01(c); 1103.01(d)(2) 

Bed & Breakfast Registry, In re, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)......................... §§ 1207.01; 1208.01 

Bee Pollen From England Ltd., In re, 219 USPQ 163 (TTAB 1983)..............................................................§ 1207.03 

Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB 1986) ............. § 533.02; 704.08; 704.12(a);

707.02(b); 707.03(b)(2); 707.03(c)

Beecham Inc. v. Helene Curtis Industries, Inc., 189 USPQ 647 (TTAB 1976).................................................§ 704.10

Benetton G roup S.p.A., In re, 48 USPQ2d 1214 (TTAB 1998)...........................................................................§ 1208

Bercut-Vandervoort & Co., In re, 229 USPQ 763 (TTAB 1986)........................................ §§ 1207.02; 1207.03; 1218

Berman Bros. Harlem Furniture Inc., In re, 26 USPQ2d 1514 (TTAB 1993).....................................................§ 1208 

Best Western Family Steak House, Inc., In re, 222 USPQ 827 (TTAB 1984)..................... §§ 1204; 1207.01; 1207.02 

Big Daddy’s Lounges Inc., In re, 200 USPQ 371 (TTAB 1978) ....................................................................§ 1201.04 

Big Wrangler Steak House, Inc., In re, 230 USPQ 634 (TTAB 1986)............................................................§ 1207.02 

Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444 (TTAB 1987)..............................................§ 305; 511; 527.01(e)

Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003

(TTAB 1984) ............................................................................................................... § 309.03(b); 512.02; 512.01; 

539; 704.05(b); 706

Bison Corporation v. Perfecta Chemie B.V., 4 USPQ2d 1718 

 (TTAB 1987)........................................................................................ §§ 401; 402.02; 404.09; 407.03(a); 408.02; 

408.03; 404(2); 704.10; 707.02(b)(2)

BL Cars Ltd. v. Puma Industria de Veiculos S/A, 221 USPQ 1018 (TTAB 1983).....................§ 704.05(b); 704.06(b)

Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 

 (TTAB 1992)...............................................................................................................§§ 528.02; 528.06; 528.07(a)

Table of Authorities - 708 
TABLE OF AUTHORITIES 

Board of Trustees of the University of Alabama v. BAMA-Werke Curt Baumann, 

 231 USPQ 408 (TTAB 1986).....................................................................................................§ 704.10; 707.02(b)

Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537 (TTAB 1983)............................................... § 309.03(c)

Bongrain International (American) Corp. v. Moquet Ltd., 230 USPQ 626 (TTAB 1986)..............§ 528.01; 528.05(d) 

Bonni Keller Collections Ltd., In re, 6 USPQ2d 1224 (TTAB 1987)..............................................................§ 1207.01 

Bonomo Culture Institute, Inc. v. Mini-Gym, Inc., 188 USPQ 415 (TTAB 1975)..............................§ 704.03(b)(1)(A)

Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987)...............§ 303.01; 309.03(b)

Boral Ltd. v. FMC Corp., 59 USPQ2d 1701 (TTAB 2000) ...............................................§ 102.01; 507.02; 507.02(a)

Borden, Inc. v. Kerr-McGee Chemical Corp., 179 USPQ 316 (TTAB 1973), 

 aff'd without opinion, 500 F.2d 1407, 182 USPQ 307 (CCPA 1974).............................................§ 704.03(b)(1)(A)

Bordenkircher v. Solis Entrialgo y Cia., S. A., 100 USPQ 268 (Comm'r 1953)............... § 404.09; 411.03; 707.03(d)

Bose Corp, In re., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985)........................................................................§ 802.04 

Boston Beer Co. L.P., In re, 47 USPQ2d 1914 (TTAB 1998)....................................................... §§ 1209.01; 1209.02

Boston Chicken Inc. v. Boston Pizza International Inc., 53 USPQ2d 1053 (TTAB 1999)............§§ 311.02(b); 502.04

Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) ..................................... §§ 303.06; 309.03(b); 

 309.03(c); 704.12(a); 704.12(b)

Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964 (TTAB 1985).......................................§ 704.03(b)(1)(B) 

Boulevard Entertainment, Inc., In re, 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003)........................... § 309.03(c)

Boyd Gaming Corp., In re, 57 USPQ2d 1944 (TTAB 2000) ..........................................................................§ 1207.03

Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017 (TTAB 2003) ................................. §§ 106.02; 502.04; 

 510.02(a); 532; 707.02(b)(2)

BPJ Enterprises Ltd, In re., 7 USPQ2d 1375 (Comm'r 1988)................................................................ § 215; 1209.03

Brawn of California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572 

(TTAB 1990) ..................................................................................................§§ 402.01; 405.03(d); 405.03(e); 519

Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998)........................................... § 309.03(c)A

Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 

 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001) ..................................................................................§ 311.02(b)

Bristol-Myers Co. v. Texize Chemicals, Inc., 168 USPQ 670 (TTAB 1971) ...............................................§ 704.12(a)

British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), 

 aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994) ............................................. §§ 311.02(b); 402.02; 414(2); 

 414(7); 523.04; 527.01(e); 704.04 

British-American Tobacco Co. v. Philip Morris Inc., 55 USPQ2d 1585 (TTAB 2000)................§§ 102.01; 307.02(a)

Brittains Tullis Russell Inc., In re, 23 USPQ2d 1457 (Comm'r 1991)...............................................................§ 512.02

Broadway Chicken Inc., In re, 38 USPQ2d 1559 (TTAB 1996).......................................................................§ 101.02

Brown Co. v. American Stencil Manufacturing Co., 180 USPQ 344 (TTAB 1973) ....................................§ 704.06(a)

Broyhill Furniture Industries Inc, In re., 60 USPQ2d 1511 (TTAB 2001)...........................§§ 704.12(a); 1203.02(g); 

 1205.01; 1208.02; 1208.04

BRT Holdings Inc. v. Homeway, Inc., 4 USPQ2d 1952 (TTAB 1987)..............................................................§ 303.03

Budge Manufacturing Co., In re, 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) .............................................§ 1208 

Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985) ................................................ §§ 504.01; 507.02; 507.02(a); 

507.03(a); 528.02

Bureau National Interprofessionnel Du Cognac v. International Better 

 Drinks Corp., 6 USPQ2d 1610 (TTAB 1988)................................................................................§ 704.03(b)(1)(A) 

Burns Philip Food Inc. V. Modern Products Inc., 24 USPQ2d 1230 (TTAB 1992), 

 aff’d, 28 USPQ2d 1687 (Fed. Cir. 1993) ......................................................................................................§ 704.07

Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 

 498 U.S. 533, 111 S.Ct. 922, 112 L.Ed.2d 1140 (1991)................................................................................§ 527.02

Table of Authorities - 709 
TABLE OF AUTHORITIES 

-CC & G Corp. v. Baron Homes, Inc., 183 USPQ 60 (TTAB 1974)................................................................§ 528.05(b) 

C. H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506 (TTAB 1980).....................................§§ 408.01 ; 509.01(a)

C. H. Stuart Inc. v. S. S. Sarna, Inc., 212 USPQ 386 (TTAB 1980)..................................................................§ 408.01

C.H. Guenther & Son Inc. v. Whitewing Ranch Co., 8 USPQ2d 1450 (TTAB 1988)..................................§ 602.02(b) 

Cadence Industries Corp. v. Kerr, 225 USPQ 331 (TTAB 1985)................... §§ 703.01(n); 704.03(b)(1)(A); 704.07

CAE Inc. v. Clean Air Engineering Inc., 60 USPQ2d 1449 (7th Cir. 2001)...................................... §§ 901.01; 906.01

California Innovations, Inc., In re, 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003)................§§ 309.03(c); 906.01

Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919 

(TTAB 2002) ....................................................................................................................... §§ 309.03(c); 311.02(b)

Cambridge Digital Systems, In re,, 1 USPQ2d 1659 (TTAB 1986)..................................................................§ 303.02

Canadian Pacific Ltd., In re, 222 USPQ 533 (TTAB 1984), aff'd, 754 F.2d 992,

 224 USPQ 971 (Fed. Cir. 1985) .......................................................................................................................§ 1214

Canadian Tire Corp. Ltd. v. Cooper Tire & Rubber Co., 40 USPQ2d 1537 (Comm’r 1996)................. § 509.01(b)(2)

Canovas v. Venezia 80 S.R.L., 220 USPQ 660 (TTAB 1983) .........................................................................§ 414(13)

Cantatore, In re, 231 USPQ 742 (Comm'r 1986)..............................................................................................§ 118.03

Capital Formation Counselors, Inc., In re, 219 USPQ 916 (TTAB 1983) ..........................................................§ 1214

Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 

 41 USPQ2d 1030 (TTAB 1996) ........................................................................... §§ 102.01; 507.02(a); 507.02(b);

 528.01; 528.03; 528.04

Carano v. Vina Concha Y Toro S.A., 67 USPQ2d 1149 (TTAB 2003)............................................................ § 102.01

Carl Karcher Enterprises Inc. v. Gold Star Chili, Inc., 222 USPQ 979 

 (TTAB 1983), recon. denied, 222 USPQ 727 (TTAB 1983).......................................................................§ 1103.02 

Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995) ...........................§ 704.10

Carolina Apparel, In re, 48 USPQ2d 1542 (TTAB 1998) ..........................................................§§ 704.12(a); 1208.04

Caron Corp. v. Helena Rubinstein, Inc., 193 USPQ 113 (TTAB 1976)...........................§§ 503.02; 507.02(a); 507.02 

Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067 (TTAB 2000)...............................................................§ 527.03

Carvel Corp., In re, 223 USPQ 65 (TTAB 1984) ......................................................................... §§ 1207.01; 1207.02

Caserta, In re, 46 USPQ2d 1088 (TTAB 1998)............................................................................ §§ 1208.02; 1208.04

Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075

(TTAB 1993) ......................................................................................................................§§ 201; 206.01; 206.03; 

211.02; 303.05(a); 303.05(c); 512.01 512.04 

Catepillar Inc., In re, 43 USPQ2d 1335 (TTAB 1997)..................... §§ 1203.02(e); 1203.02(f); 1207.01; 1215; 1216

Caterpillar Tractor Co. v. Catfish Anglers Together, Inc., 

194 USPQ 99 (TTAB 1976) ....................................................................................................................§ 527.01(a) 

CBS Inc. v. Mercandante, 23 USPQ2d 1784 (TTAB 1992)................................................. §§ 504.02; 505.01; 507.02

CCI Corp. v. Continental Communications, Inc., 184 USPQ 445 (TTAB 1974)...................................................§ 314 

Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 

 (TTAB 1994).........................................................................................................§§ 309.03(b) ; 313.03 ; 309.03(c) 

Cell Therapeutics Inc., In re, 67 USPQ2d 1795 (TTAB 2003).......................................................................§ 1208.01 

Celotex Corp. v. Catrett, 477 U.S. 317 (1986)..................................................................................................§ 528.01

Central Manufacturing Inc. v. Third Millennium Technology Inc., 

 61 USPQ2d 1210 (TTAB 2001) ............................................................................ §§ 113.02; 211.02; 318; 502.04; 

502.05; 527.02; 527.03; 605.02

Central Sprinkler Co., In re, 49 USPQ2d 1194 (TTAB 1998)........................................................... §§ 1207.02; 1215

Century 21 Real Estate Corp. v. Century Life of America, 11 USPQ2d 1355 (TTAB 1989)....................... § 309.03(c) 

Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079 (TTAB 1990), 

 corrected at 19 USPQ2d 1479 (TTAB 1990) ......................................................................§§ 404.07(j); 520; 521;

531; 703.01(b); 703.02(m)

Table of Authorities - 710 
TABLE OF AUTHORITIES 

Cerveceria India Inc. v. Cerveceria Centroamericana, S.A., 

 10 USPQ2d 1064 (TTAB 1989), aff’d, 892 F.2d 1021, 

 13 USPQ2d 1307 (Fed. Cir. 1989) ................................................................................................ §§ 101.03; 106.02

Cerveceria Modelo S.A. de C.V. v. R..B. Marco & Sons, Inc., 55 USPQ2d 1298

 (TTAB 2000) ...........................................................................................................................§§ 309.03(b); 704.09

Chambers v. NASCO, Inc., 501 U.S. 32, 111 S.Ct. 2123, 115 L.Ed.2d 27, 

 rehearing denied, 501 U.S. 1269, 112 S.Ct. 12, 115 L.Ed.2d 1097 (1991).................................................§ 527.03

Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 

(TTAB 1989) ............................................................................................................................ §§ 414(7); 527.01(e)

Chase Manhattan Bank, N.A. v. Life Care Services Corp., 227 USPQ 389

(TTAB 1985) .........................................................................................................§§ 703.01(b); 707.03(c); 707.04

Checkers of North America Inc,. In re, 23 USPQ2d 1451 (Comm'r 1992), 

 aff’d sub nom., Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents 

 and Trademarks, 51 F.3d 1078, 34 USPQ2d 1574 (D.C. Cir. 1995)...................................§§ 510.03(a); 602.02(b) 

Chemetron Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495 (TTAB 1970)..................§§ 509.01(b)(2); 704.09

Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139

 (TTAB 1986)..................................................................................................... §§ 303.06; 704.03(b)(1)(B); 704.04

Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 

 205 USPQ 888 (CCPA 1980).............................................................................. §§ 502.04; 509.02; 509.01(a); 905

Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954 (TTAB 1985).................................................§ 704.09

Chicago Corp. v. North American Chicago Corp., 16 USPQ2d 1479 (TTAB 1990) ................................. §§ 409; 519

Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991) ........................§§ 311.02(c); 314 

Chichi’s, Inc. v. Chi-Chi’s, Inc., 222 USPQ 831 (Comm’r 1984).......................§§ 1101.02; 1102.01 ; 1112; 1113.02

Chocoladefabriken Lindt & Sprungli Aktiengesellschaft v. Rykoff-Sexton Inc., 

 24 USPQ2d 1236 (S.D.N.Y. 1992)................................................................................................................§ 903.03

Chromalloy American Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 

 222 USPQ 187 (Fed. Cir. 1984) ............................................................................................................... § 605.03(e) 

Chung, Jeanne & Kim Co., In re, 226 USPQ 938 (TTAB 1985) .................................................. §§ 1207.02; 1207.03

Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theaters, 56 USPQ2d 1538 

 (TTAB 2000).............................................................................................................................§§ 309.03(c); 503.02

Citibank, N.A., In re, 225 USPQ 612 (TTAB 1985)..................................................................... §§ 1201.01; 1201.04

Cities Service Co. v. WMF of America, Inc., 199 USPQ 493 (TTAB 1978)........................ §§ 317; 704.12(a); 704.10

Clairol Inc. v. Holland Hall Products, Inc., 165 USPQ 214 (TTAB 1970) .....................................§§ 528.05(a); 1004

Cleveland-Detroit Corp. v. Comco (Machinery) Ltd., 277 F.2d 958, 125 USPQ 586 (CCPA 1960)...........§ 704.03(a) 

Clorox Co. v. Chemical Bank, see The Clorox Co. v. Chemical Bank 

Clorox Co. v. State Chemical Manufacturing Co., 197 USPQ 840 (TTAB 1977) .......................§§ 311.02(b); 313.01

Clubman's Club Corp. v. Martin, 188 USPQ 455 (TTAB 1975) .................................................................§ 528.05(b) 

Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 223 USPQ 196 (TTAB 1984) ......... § 509.01(b)(1)

Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551,

 19 USPQ2d 1401 (11th Cir. 1991) ............................................................................................................§ 311.02(b) 

Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984).............................§ 507.03(b) 

Color Key Corp. v. Color 1 Associates, Inc., 219 USPQ 936 (TTAB 1983)..........................................................§ 515 

Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A., 

221 USPQ 73 (TTAB 1983) .........................................................................§§ 414(13); 704.07; 704.08; 707.02(a) 

Columbia Broadcasting System, Inc. v. De Costa, 165 USPQ 95 (TTAB 1970) ...................................................§ 544 

Columbo Inc, In re., 33 USPQ2d 1530 (Comm’r 1994)............................................................................... § 303.05(c) 

Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 

 26 USPQ2d 1503 (TTAB 1993).............................................................................§§ 309.03(c); 507.02; 507.02(a);

 528.01; 528.07(a)

Communications Technology Corp., In re, 182 USPQ 695 (TTAB 1974)........................... §§ 601.01; 601.02; 602.01

Compagnie Internationale Pour L'Informatique-Cie Honeywell Bull, In re, 

 223 USPQ 363 (TTAB 1984)................................................................................................... §§ 1207.01 ; 1207.02

Comserv Corp. v. Comserv, 179 USPQ 124 (TTAB 1973)...............................................................................§ 523.04

Table of Authorities - 711 
TABLE OF AUTHORITIES 

ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987).......................................................................... § 527.01(e) 

Conde Nast Publications Inc. v. Miss Quality, Inc., 507 F.2d 1404,

184 USPQ 422 (CCPA 1975) ........................................................................................................§ 704.03(b)(1)(B) 

Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB 1979)........................ §§ 704.07 ; 704.08

Consolidated Edison Co. v. NLRB, 305 U.S. 197 (1938) ................................................................................. § 906.01

Consolidated Foods Corp. v. Berkshire Handkerchief Co., Inc., 229 USPQ 619

 (TTAB 1986).................................................................................................................... § 509.01(b)(1); 528.07(a) 

Consolidated Foods Corp. v. Big Red, Inc., 231 USPQ 744 (TTAB 1986) ......................................................§ 313.04

Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582 (TTAB 1976) .......................................... §§ 404.03(a)(1); 

 404.03(a)(2); 509.01(a); 703.01(f)(2)

Consolidated Foods Corp., In re, 218 USPQ 184 (TTAB 1983)...................................................................... 1207.02

Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 

 228 USPQ 752 (TTAB 1985)..................................................................................§§ 303.02; 309.03(a)(2); 503.02

Consolo v. Federal Maritime Comm’n, 383 U.S. 607 (1966) ...........................................................................§ 906.01

Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 

 23 USPQ2d 1894 (TTAB 1992)......................................................................................§§ 309.03(c) ; 543 ; 801.03

Consultants & Designers, Inc. v. Control Data Corp., 221 USPQ 635 (TTAB 1984)......................................§ 528.03

Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) ...............§§ 704.12(a); 704.12(d) 

Continental Gummi-Werke AG v. Continental Seal Corp., 

 222 USPQ 822 (TTAB 1984)............................................................................. §§ 307.02(c)(1); 311.02(b); 506.01

Continental Specialties Corp. v. Continental Connector Corp., 192 USPQ 449

 (TTAB 1976)...................................................................................................................................... § 704.03(b)(2)

Contour Chair-Lounge Co., Inc. v. The Englander Company, Inc., 

324 F.2d 186, 139 USPQ 285 (CCPA 1963)............................................................ §§ 309.03(c)A; 311.02(b); 313.01

Cook's Pest Control, Inc. v. Sanitas Pest Control Corp., 

 197 USPQ 265 (TTAB 1977)...........................................................................................................................§ 1112

Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618 (TTAB 1974).........................§§ 402.02; 414(3); 507.02; 507.02(a)

Cooper, In re, 209 USPQ 670 (Comm'r 1980)....................................................................§§ 202.01; 202.04; 206.01;

 206.02; 303.05(a); 303.05(b); 306.04

Copeland’s Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 

 12 USPQ2d 1562 (Fed. Cir. 1989) ..........................................................................................................§ 901.02(a) 

Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 

 20 USPQ2d 1295 (Fed. Cir. 1991) ................................................................................................................§ 528.01

Copperweld Corp. v. Arcair Co., 200 USPQ 470 (TTAB 1978)........................................ §§ 704.03(b)(1)(A); 704.04

Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585 (TTAB 1977)... §§ 311.02(c); 314; 707.03(c); 707.04

Cord Crafts Inc., In re, 11 USPQ2d 1157 (TTAB 1989) ................................................................................§ 1201.04 

Corning Glass Works, In re, 229 USPQ 65 (TTAB 1985)...................................................................................§ 1204

Corporate Document Services Inc. v. I.C.E.D. Management Inc., 

 48 USPQ2d 1477 (TTAB 1998) .................................................§§ 309.03(c)A; 528.01; 528.03 ; 528.05(b) ; 1104

Cotter & Co., In re, 228 USPQ 202 (TTAB 1985)..........................................................................................§ 1207.03 

Couture, In re, 60 USPQ2d 1317 (TTAB 1999) ...................................................................... §§ 1203.02(e); 1208.01

Cowan, In re, 18 USPQ2d 1407 (Comm'r 1990)...............................................................................................§ 106.02

Crane Co. v. Shimano Industrial Co., 184 USPQ 691 (TTAB 1975)............................. §§ 402.01; 403.03; 405.04(a); 

407.03(a); 529.01(c)

Crocker National Bank v. Canadian Imperial Bank of Commerce, 

 223 USPQ 909 (TTAB 1984).............................................................................. §§ 309.03(c); 528.08; 540; 802.04

Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392,

 184 USPQ 221 (CCPA 1974).........................................................................................................§ 704.03(b)(1)(A) 

Crown Wallcovering Corp. v. Wall Paper Manufacturers Ltd., 

 188 USPQ 141 (TTAB 1975).............................................................................................................................§ 526 

CTRL Systems Inc. v. Ultraphonics of North America Inc., 

 52 USPQ2d 1300 (TTAB 1999).............................................................................. §§ 509.01(b)(1); 536; 801.02(a)

Table of Authorities - 712 
TABLE OF AUTHORITIES 

CTS Corp. v. Cronstoms Manufacturing, Inc., 515 F.2d 780, 

 185 USPQ 773 (CCPA 1975).........................................................................................................§ 704.03(b)(1)(A) 

Cudahy Co. v. August Packing Co., 206 USPQ 759 (TTAB 1979)...................................................................§ 507.02

Cudahy Packing Co. v. York Pharmacal Co., 93 USPQ 227 (Comm’r 1952) ....................................................§ 1002

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).......................................§ 303.03

Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 182 USPQ 572 (Comm'r 1974)...........................§ 504.01

Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 185 USPQ 61 (TTAB 1975), 

 recon. denied, 185 USPQ 176 (TTAB 1975), aff'd, 530 F.2d 1396, 

 189 USPQ 138 (CCPA 1976)............................................................................................ §§ 543; 704.04; 704.05(b)

Custom Computer Services Inc. v. Paychex Properties, Inc., 

 337 F.3d 1334, 67 USPQ2d 1638 (Fed. Cir. 2003) ...................... §§ 206.01; 206.03; 303.05(a); 303.05(c); 906.01

CyberFinancial.Net Inc., In re, 65 USPQ2d 1789 (TTAB 2002)................................................ §§ 704.08; 704.12(a); 

 1208.03; 1208.04

-DD.B. Kaplan Delicatessen, In re, 225 USPQ 342 (TTAB 1985)..........................................................................§ 1217

Daggett & Ramsdell, Inc. v. Procter & Gamble Co., 119 USPQ 350

 (TTAB 1958), rev'd on other grounds, 275 F.2d 955, 

 125 USPQ 236 (CCPA 1960)....................................................................................................§§ 602.01; 602.02(b)

Daimler-Benz Aktiengesellschaft v. Hibner Products Mfg., Inc., 189 USPQ 479

 (TTAB 1976)................................................................................................................................................§ 523.02

DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434 (TTAB 1995)......................... §§ 309.03(d); 502.02(b); 

503.01; 504.01; 504.03; 510.03(a)

Dana Corp., In re, 12 USPQ2d 1748 (TTAB 1898) ......................................................................................§ 1207.03 

Dana Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 

 (Fed. Cir. 1991) ............................................................................................................................................§ 528.01

Danskin, Inc. v. Dan River, Inc., 498 F.2d 1386, 182 USPQ 370 (CCPA 1974).......................................... § 605.03(e) 

Dap, Inc. v. Century Industries Corp., 183 USPQ 122 (TTAB 1974)...............................................................§ 704.04

Dap, Inc. v. Litton Industries, Inc., 185 USPQ 177 (TTAB 1975).........................................................................§ 314 

Data Packaging Corp. v. Morning Star, Inc., 212 USPQ 109 (TTAB 1981)...............................................§ 707.03(d) 

Data Packaging Corp., In re, 453 F.2d 1300, 172 USPQ 396 (CCPA 1972) ......................................................§ 1208

DataNational Corp. v. Bell South Corp., 18 USPQ2d 1862 (TTAB 1991), aff’d, 

 35 USPQ2d 1554 (Fed. Cir. 1995) .....................................................................................................§§ 1103.01(c); 

 1103.01(d)(2); 1108 

Davco Inc. v. Chicago Rawhide Mfg. Co., 224 USPQ 245 (TTAB 1984).........................................................§ 303.03

David Crystal, Inc. v. Glamorise Foundations, Inc., 189 USPQ 740 (TTAB 1975)..........................§ 704.03(b)(1)(A) 

Davidoff Extension S.A. v. Davidoff International, Inc., 221 USPQ 465 

 (S.D. Fla. 1983) ..........................................................................................................................................§ 414(13)

Davidson v. Instantype, Inc., 165 USPQ 269 (TTAB 1970) ............................................§§ 206.03; 303.05(c); 512.04 

DBMS Consultants Ltd. v. Computer Associates International, Inc., 

 18 FR Serv 3d 33, 131 FRD 367 (D. Mass. 1990)................................................................................§ 404.03(c)(2)

De Luxe N.V., In re, 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993) .....................................................§ 1203.02(b)

Deere & Co. v. Deerfield Products Corp., 176 USPQ 422 (TTAB 1973) ........................................................§ 403.02

Dekra e.v, In re., 44 USPQ2d 1693 (TTAB 1997)..........................................................................................§ 1209.01 

Del E. Webb Corp., In re, 16 USPQ2d 1232 (TTAB 1990).................................................................................§ 1214

DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222 (TTAB 2000)................................ §§ 106.03; 309.02(a);

 312.01; 312.02; 508

Delta Tire Corp. v. Sports Car Club of America, Inc., 186 USPQ 431 (TTAB 1975)......................................§ 502.03

Del-Viking Productions Inc. v. Estate of Johnson, 31 USPQ2d 1063 (W.D.Pa. 1994).....................................§ 903.03

Table of Authorities - 713 
TABLE OF AUTHORITIES 

Development Dimensions International, Inc., In re, 219 USPQ 161 (TTAB 1983).................................... §§ 1207.01;

 1207.02; 1207.03

Devries v. NCC Corp., 227 USPQ 705 (TTAB 1985)..................................................................................§ 507.03(b) 

Dial-A-Mattress Operating Corp., In re, 52 USPQ2d 1910 (TTAB 1999), 

 rev’d. on other grounds, 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001)..............................................§ 1208.04 

Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 (1999)............................................................................§ 906.01

Diet Tabs, Inc., In re, 231 USPQ 587 (TTAB 1986)..................................................................... §§ 1207.05; 1209.01

Direct Access Communications (M.C.G.) Inc., In re, 30 USPQ2d 1393 

 (Comm'r 1993).............................................................................................................................................§ 1201.05 

Djeredjian v. Kashi Co., 21 USPQ2d 1613 (TTAB 1991) ...........................................§§ 114.03; 117.01; 312.02; 544

Docrite Inc., In re, 40 USPQ2d 1636 (Comm'r 1996)..................................................§§ 203.04; 207.03; 211.03; 905

Dodd International, Inc., In re, 222 USPQ 268 (TTAB 1983).............................................................................§ 1218

Domino's Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988) ....................................§ 414(9)

Donut Shops Management Corporation v. Mace, 209 USPQ 615 (TTAB 1981)..................... §§ 707.03(c); 707.03(d)

Dos Padres, Inc, In re., 49 USPQ2d 1860 (TTAB 1998)..................................................§§ 704.03(b)(1)(B); 1208.02

Double J of Broward Inc. v. Skalony Sportswear GmbH, 

 21 USPQ2d 1609 (TTAB 1991).....................................................................§§ 404.03(c)(2); 414(5); 414(13); 526

Dow Corning Corp. v. Doric Corp., 183 USPQ 126 (TTAB 1974)....................................................... §§ 410; 523.01 

Dow Corning Corp. v. Doric Corp., 192 USPQ 106 (TTAB 1976)..................................................................§ 704.11

Dr. Pepper Co., In re, 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) ...........................................................§ 906.01

Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ 977 (Fed. Cir. 1985),

 on remand, In re Dubost, 231 USPQ 887 (Comm'r 1986) ............................................................................§ 118.03

Duffy-Mott Co. v. Borden, Inc., 201 USPQ 846 (TTAB 1978) .........................................................§ 704.03(b)(1)(A) 

Duke University v. Haggar Clothing Co., 54 USPQ2d 1443 (TTAB 2000)................................ §§ 120.02; 412.02(b); 

 412.02(d); 412.03; 502.02(c);

502.06(a); 521; 533.02; 703.01(e); 703.01(p)

Dunkin' Donuts of America Inc. v. Metallurgical Exoproducts Corp., 

 840 F.2d 917, 6 USPQ2d 1026 (Fed. Cir. 1988) ...........................................................................................§ 503.04

Duofold Inc., In re, 184 USPQ 638 (TTAB 1974) ..........................................................................................§ 1208.02 

Dynamark Corp. v. Weed Eaters, Inc., 207 USPQ 1026 (TTAB 1980)............................................................§ 704.08

Dynamet Technology, Inc. v. Dynamet Inc., 197 USPQ 702 (TTAB 1977), 

 aff'd, 593 F.2d 1007, 201 USPQ 129 (CCPA 1979).........................................................................................§ 1004

Dyneer Corp. v. Automotive Products plc, 37 USPQ 1251 (TTAB 1995) ........................................ §§ 528.01; 528.06

-EE.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ 713 (TTAB 1984) ........................................................§ 512.01

E.I. du Pont de Nemours & Co., In re, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) ............ §§ 309.03(c)B; 1207.02

E.I. du Pont de Nemours & Co. v. G.C. Murphy Co., 199 USPQ 807 (TTAB 1978)...................§§ 510.02(a) ; 704.10

E.S. Robbins Corp., In re, 30 USPQ2d 1540 (TTAB 1992) ................................................................................§ 1215

EBSCO Industries Inc., In re, 41 USPQ2d 1913 (TTAB 1996) ........................................................ §§ 1209.01; 1217 

EBSCO Industries Inc., In re, 41 USPQ2d 1917 (TTAB 1997)...........................................................................§ 1208

Economics Laboratory, Inc. v. Scott's Liquid Gold, Inc., 224 USPQ 512 (TTAB 1984)..................................§ 704.04

Econo-Travel Motor Hotel Corp. v. Econ-O-Tel of America, Inc., 199 USPQ 307 (TTAB 1978) ....§ 704.03(b)(1)(A) 

Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 

 230 USPQ 530 (TTAB 1986)..................................................................................................... §§ 704.03(b)(1)(A);

 704.03(b)(1)(B); 704.04

Eikonix Corp. v. CGR Medical Corp., 209 USPQ 607 (TTAB 1981)...............................................................§ 704.04

Table of Authorities - 714 
TABLE OF AUTHORITIES 

El Chico Corp., In re, 159 USPQ 740 (TTAB 1968) .........................................................................§§ 1103.01(d)(1);

 1103.01(d)(2); 1103.01(e)

Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 

 (TTAB 1992)..............................................................................................................§§ 704.03(b)(1)(A); 704.06(b) 

Electronic Industries Association v. Potega, 50 USPQ2d 1775 (TTAB 1999)...........................§§ 406.03; 502.06(A); 

510.03(a) 

Electronic Realty Associates, Inc. v. Extra Risk Associates, Inc., 217 USPQ 810 (TTAB 1982) .....................§ 512.01

Electronic Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162 (TTAB 1984)..................................§ 102.01

Engineering Systems Corp., In re, 2 USPQ2d 1075 (TTAB 1986)......................................................................§ 1215

Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 

 62 USPQ2d 1857 (TTAB 2002), aff'd, 300 F.3d 1333, 

 66 USPQ2d 1811 (Fed. Cir. 2003) ...............................................................................§§ 102.01; 309.03(c); 507.02 

Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116 (TTAB 1982)........................ §§ 703.01(k); 703.01(n); 

 707.03(d)

Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448 (TTAB 1979)............................. §§ 403.03; 405.04(a); 

 407.03(a) ; 523.02 ; 527.01(c) 

Envirotech Corp. v. Solaron Corp., 211 USPQ 724 (TTAB 1981)....................................................................... § 511 

Epic Metals Corp. v. H.H. Robertson Co., 870 F.2d 1574, 10 USPQ2d 1296 

 (Fed. Cir. 1989) .......................................................................................................................................... 605.03(e) 

Era Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734 (TTAB 1981)........................................... § 527.01(e) 

Ercona Corp. v. JENAer Glaswerk Schott & Gen., 182 USPQ 573 (TTAB 1974)......................................§ 507.03(a) 

Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991).......................................................§§ 303.03; 309.03(c);

 511; 528.07(a); 507.02

Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095 (TTAB 2000) .............................................§ 502.02(b) 

Estee Lauder Inc. v. Aloe Creme Laboratories, Inc., 178 USPQ 254 (TTAB 1973)......................... §§ 601.01; 601.02

Ethicon, Inc. v. American Cyanamid Co., 192 USPQ 647 (TTAB 1976)..........................................................§ 704.09

Ethicon, Inc. v. American Cyanamid Co., 193 USPQ 374 (Comm’r 1977) .....................................................§ 802.04

Eucryl, Ltd., In re, 193 USPQ 377 (TTAB 1976).............................................................................. §§ 206.03; 512.04

Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co. KG , 

 34 USPQ2d 1266 (TTAB 1994).................................................................................. §§ 309.03(d); 312.01; 507.02 

Ex parte H. Wittur & Co., 153 USPQ 362 (Comm'r 1966) ..................................................................................§ 1002

Ex parte Simoniz Co., 161 USPQ 365 (Comm'r 1969).........................................................................................§ 1218

Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443 (TTAB 1974)............................................................§ 704.08

Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ 440 (TTAB 1983)...............................................§ 704.09

Exxon Corp. v. National Foodline Corp., 196 USPQ 444 (TTAB 1977), 

 aff'd, 579 F.2d 1244, 198 USPQ 407 (CCPA 1978)...................................................................... §§ 503.04; 504.03

-FF. Jacobson & Sons, Inc. v. Excelled Sheepskin & Leather Coat Co., 140 USPQ 281 

 (Comm'r 1963)...............................................................................................................................................§ 206.02

Faces, Inc. v. Face's, Inc., 222 USPQ 918 (TTAB 1983) ..................................................... §§ 514.03; 1108; 1113.01

Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479 (TTAB 2000) ...........................§§ 509.01(a); 701 

Family Inns of America Inc., In re, 180 USPQ 332 (Comm’r 1992)................................................................... § 1002

Faultless Starch Co. v. Sales Producers Associates, Inc., 

 530 F.2d 1400, 189 USPQ 141 (CCPA 1976) ..............................................................................§ 704.03(b)(1)(A) 

Federal Trade Commission v. Formica Corp., 200 USPQ 182 (TTAB 1978).................................. §§ 303.04; 502.03

Federated Department Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262 

 (TTAB 1985).......................................................................................................................................... §§ 305; 511

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24

 (CCPA 1976)................................................................................................................................................§ 303.03

Table of Authorities - 715 
TABLE OF AUTHORITIES 

Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980)..............................§§ 404.07(j); 521; 531; 

 703.01(b); 703.02(m)

Ferro Corp. v. SCM Corp., 219 USPQ 346 (TTAB 1983)............................................ §§ 404.09; 411.03; 707.03(d)

Ferrero S.p.A., In re, 22 USPQ2d 1800 (TTAB 1992), recon. denied, 

 24 USPQ2d 1061 (TTAB 1992).......................................................................................... §§ 540; 802.04; 1219.01

Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 

 191 USPQ 127 (TTAB 1976)................................................................................................ §§ 410; 523.01; 523.02

Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986), 

 recon. denied, 1 USPQ2d 1304 (TTAB 1986) ...................................................................... §§ 507.02; 540; 802.04

First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988)............................. §§ 515; 704.09 

First National Bank of Boston, In re, 199 USPQ 296 (TTAB 1978).................................... §§ 218; 602.01; 602.02(a)

Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861

 (TTAB 1979) ..................................................................................................................§§ 401; 402.01; 404.03(b); 

 404.07(e); 404.08(c); 404.09; 409; 701; 702;

 703.02(g); 703.02(m); 704.09;

 707.03(c); 707.04 

Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167 (TTAB 1980)....................................§§ 402.02; 414(3); 414(6)

Fitch IBCA, Inc., In re, 64 USPQ2d 1058 (TTAB 2002) ...........................................§§ 1203.02(e); 1208.01; 1208.03

Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989) ............................................ §§ 503.02; 507.02; 507.02(a); 528.01

Fleming Companies, Inc. v. Thriftway Inc., 21 USPQ2d 1451 

 (TTAB 1991), aff’d, 26 USPQ2d 1551 (S.D. Ohio 1992) ............................................ §§ 602.01; 603; 1103.01(a); 

 1103.02(d)(2); 1107; 1108

Fleming v. County of Kane, 855 F.2d 496 (7th Cir. 1988) ......................................................................................§ 537 

Floralife, Inc. v. Floraline International Inc., 225 USPQ 683 (TTAB 1984)......................... §§ 515; 704.03(b)(1)(A)

Flow Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991) ...........................................................§ 311.02(b) 

Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987)............................................§ 1211

FMR Corp. v. Alliant Partners, 51 USPQ2d 1759 (TTAB 1999) .................................................. §§ 402.02; 410; 526

Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 

 22 USPQ2d 1316 (TTAB 1992)................................................................................. §§ 507.02; 507.02(a); 513.02; 

 530; 704.13

Food Producers, Inc. v. Swift & Co., 194 USPQ 299 (TTAB 1977).................................................................§ 704.08

Food Specialty Co. v. Carnation Co., 170 USPQ 522 (TTAB 1971)........................................................... § 309.03(c) 

Food Specialty Co. v. Kal Kan Foods, Inc., 487 F.2d 1389, 180 USPQ 136 

 (CCPA 1973)...........................................................................................................................................§ 704.12(d) 

Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 USPQ 46 

 (CCPA 1969).............................................................................................................................§§ 311.02(b); 313.01

Forbo, In re, 4 USPQ2d 1415 (Comm'r 1984).......................................................§§ 514.03; 1101.02; 1102.02; 1114

Ford Motor Co. v. Shelby International, Inc., 193 USPQ 236 (TTAB 1976) ..................................................§ 532.02

Forest Laboratories Inc. v. G.D. Searle & Co. 52 USPQ2d 1058 (TTAB 1999)...............................§§ 510.02(a); 807 

Formica Corp. v. Lefkowitz, 590 F.2d 915, 200 USPQ 641 (CCPA 1979)...................................§§ 303.04; 901.02(a) 

Fort Howard paper Co. v. C.V. Gambina, Inc., 4 USPQ2d 1552 (TTAB 1987)............................. §§ 403.03; 412.03; 

 514.03; 527.02; 704.09

Fort Howard Paper Co. v. Kimberly Clark Corp., 216 USPQ 617 (TTAB 1982) ...........................................§ 534.02

Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863 (TTAB 1985).................................................§ 539 

Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998).......................................................................§ 703.01(d) 

Foundry Products, Inc., In re, 193 USPQ 565 (TTAB 1976) ...........................................................................§ 101.02

Fred Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., 

 21 USPQ2d 1556 (TTAB 1991).................................................................................................... §§ 312.01; 312.03

Freeman v. National Association of Realtors, 64 USPQ2d 1700 (TTAB 2002)......................§§ 311.02(b); 528.05(a)

Fuld Brothers, Inc. v. Carpet Technical Service Institute, Inc., 

 174 USPQ 473 (TTAB 1972) .........................................................................................§§ 707.03(b)(1)(B); 704.04

Table of Authorities - 716 
TABLE OF AUTHORITIES 

-GG. Heileman Brewing Co., Inc., In re, 34 USPQ2d 1476 (Comm’r 1994).............................................................§ 215 

GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576 (TTAB 1976)........................................ §§ 528.05(b); 

 704.03(b)(1)(A) 

Gagliardi Bros., Inc, In re., 218 USPQ 181 (TTAB 1983) .............................................................................§ 1207.01 

Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 

 1 USPQ2d 1424 (Comm'r 1986)...............................................................................................................§ 901.02(a) 

Gale Hayman Inc., In re, 15 USPQ2d 1478 (TTAB 1990) ........................................................................ § 1203.02(c)

Gallagher’s Restaurants, Inc. v. Gallagher’s Farms, Inc., 

 3 USPQ2d 1864 (TTAB 1986)......................................................................................§§ 514.01; 1103.01(e); 1104

Gammon Reel, Inc., In re, 227 USPQ 729 (TTAB 1985).....................................................................................§ 1208

Gartside, In re, 203 F.3d 1305, 53 USPQ2d 1773 (Fed. Cir. 2000)..................................................................§ 906.01

Gasser Chair Co., Inc. v. Infanti Chair Manufacturing Corp., 60 F.3d 770, 

34 USPQ2d 1822 (Fed. Cir. 1995)................................................................................................................§ 528.01

Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477 (TTAB 1974)..................................... §§ 402.01; 408.01

Gates Rubber Co. v. Western Coupling Corp., 179 USPQ 186 (TTAB 1973)...................................§ 704.03(b)(1)(A) 

Gaylord Entertainment Co. v. Calvin Gilmore Productions Inc., 59 USPQ2d 1369 

 (TTAB 2000).............................................................................................................................§§ 509.01(b)(1); 536

Gemini Engine Co. v. Solar Turbines Inc., 225 USPQ 620 (TTAB 1985)........................................................§ 507.02

Gena Laboratories, Inc., In re, 230 USPQ 382 (TTAB 1985)................................................................... § 1203.02(c)

General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690 (TTAB 1977) ..............................................§ 704.10

General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822 (TTAB 1983).............................................. § 309.03(c) 

General Mills Fun Group v. Tuxedo Monopoly, Inc., 204 USPQ 396 (TTAB 1979), 

 aff’d, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) ............................................................ §§ 704.12(a); 704.12(c) 

General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992) ..............................§§ 101.03; 309.03(c); 

704.03(b)(1)(B) 

General Mills Inc. v. Natures Way Products, 202 USPQ 840 (TTAB 1979)................................§§ 309.03(b); 313.03

General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933

 (TTAB 1992)..................................................................................................................................§§ 510.02(a); 544 

General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384 (TTAB 1976) ..................................................§ 523.01

General Tire & Rubber Co. v. Gendelman Rigging & Trucking Inc., 189 USPQ 425 

 (TTAB 1975)......................................................................................................................................................§ 518 

Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003)............................................................... §§ 704.08; 707.03(c)

Georgia-Pacific Corp. v. Great Plains Bag Co., 190 USPQ 193 (TTAB 1976).............................. §§ 406.03; 414(5); 

 414(10); 414(16); 522; 527.01(e) 

Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990).......................§§ 1101.01; 1103.01(d)(2); 

 1104; 1107; 1108

Giant Food Inc. v. Malone & Hyde, Inc., 522 F.2d 1386, 187 USPQ 374

 (CCPA 1975)................................................................................................................................................... § 1004

Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 

 (TTAB 1986)................................................................................................. §§ 311.02(b); 313.01; 314; 510.03(a);

 527.02; 528.01; 528.03

Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986) ........................§§ 403.03; 514.01; 518; 

 523.02; 527.02; 528.07(a)

Gibson Guitar Corp., In re, 61 USPQ2d 1948 (TTAB 2001) ...................................................§§ 1203.02(g); 1207.03

Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101 (CCPA 1968)...............................§ 311.02(b) 

Gilman Corp. v. Gilman Brothers Co., 20 USPQ2d 1238 (Comm'r 1991) .......................................................§ 114.08

Table of Authorities - 717 
TABLE OF AUTHORITIES 

Glamorene Products Corporation v. Earl Grissmer Company, Inc., 

 203 USPQ 1090 (TTAB 1979)........................................................................... §§ 528.05(e); 704.03(b)(2); 704.08

Global Maschinen GmbH v. Global Banking Systems, Inc., 227 USPQ 862

 (TTAB 1985)............................................................................................................................................§ 602.02(b) 

Globe-Union Inc. v. Raven Laboratories Inc., 180 USPQ 469 (TTAB 1973)....................................§§ 539; 707.03(c)

Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109 (TTAB 1976) ........................ §§ 310.01; 410; 

 512.01; 521; 526

Gold's Gym Enterprises Inc., In re, 3 USPQ2d 1716 (TTAB 1987) ...............................................................§ 1207.01 

Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200 (CCPA 1979) ................................. §§ 309.03(b); 309.03(c)A

Goodway Corp. v. International Marketing Group Inc., 15 USPQ2d 1749 

 (TTAB 1990).............................................................................................................................§§ 602.01; 602.02(a)

Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207 (TTAB 1975) ........................... §§ 402.02; 414(1); 

 414(4); 414(6)

Goodyear Tire & Rubber Co. v. Uniroyal, Inc., 183 USPQ 372 (TTAB 1974)................................................§ 402.02

Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998).................... § 309.03(c) 

Gor-Ray Limited v. Garay & Co., Inc., 167 USPQ 694 (TTAB 1970) ..................................................... § 309.03(c)A 

Gould Inc. v. Sanyo Electric Co., 179 USPQ 313 (TTAB 1973) ........................................§§ 405.02; 414(21); 506.01

Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988).....................§ 510.02(a) 

Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 

 176 USPQ 123 (CCPA 1972)........................................................................................................................§ 704.08

Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987)............................. §§ 1103.01(b); 

 1103.01(c); 1103.01(d)(2); 1108

Gray, In re, 3 USPQ2d 1558 (TTAB 1987) ..................................................................................................... § 513.02

Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748 (TTAB 1995).........................................................§ 528.07(a) 

Greyhound Corporation and Armour and Company v. Armour Life 

 Insurance Company, 214 USPQ 473 (TTAB 1982)..................................................................................... § 514.01

Grinnell Corp. v. Grinnell Concrete Pavingstones Inc., 14 USPQ2d 2065 (TTAB 1990)............§§ 602.01; 602.02(a)

Grobet File Co. of America Inc. v. Associated Distributors Inc., 12 USPQ2d 1649 

 (TTAB 1989).................................................................................................................................................§ 534.02

Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r 1999) ........................................ §§ 212.01; 214 

Groveton Papers Co. v. Anaconda Co., 197 USPQ 576 (TTAB 1977)................................................ § 704.03(b)(1)A 

GTE Education Services, In re, 34 USPQ2d 1478 (Comm’r 1994) .............................................. §§ 1201.01; 1201.02

 

-HH & H Products, In re, 228 USPQ 771 (TTAB 1986) ......................................................................§ 704.03(b)(1)(B) 

Hag Aktiengesellschaft, In re, 155 USPQ 598 (TTAB 1967)............................................................§ 704.03.(b)(1)(A)

Halcon International, Inc. v. Werbow, 228 USPQ 611 (Comm'r 1980)............................................................§ 114.08

Hamilton Bank, In re, 222 USPQ 174 (TTAB 1984) ......................................................................... §§ 1201.04; 1217

Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 

 216 USPQ 802 (TTAB 1982).............................................................................§§ 404.08(a); 512.01; 521; 533.02;

 703.01(e); 704.09; 704.10

Handy Spot Inc. v. J. D. Williams Co., 181 USPQ 351 (TTAB 1974) .................................................... §§ 1108; 1110 

Hard Rock Café Intl (USA) Inc. v. Elsea, 56 USPQ2d 1504 (TTAB 2000) ........................... §§ 317; 704.03(b)(1)(A); 

 704.07; 707.03(c); 707.04

Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998)........................ §§ 528.05(a);

 704.05(b); 704.08 

528.05(e); 

 703.01(b); 704.03(b)(1)(A);

Table of Authorities - 718 
TABLE OF AUTHORITIES 

Harjo v. Pro-Football Inc., 45 USPQ2d 1789 (TTAB 1998)............... §§ 502.02(b); 509.01(b)(2); 533.01; 538; 701;

 707.01; 707.02(b); 707.02(c); 

 707.03(c); 801.03 

Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999), 

 rev’d, 284 F.Supp.2d 96, 68 USPQ2d 1225 (D.D.C. 2003) ............................... §§ 102.01; 120.02; 309.03(c); 401;

 406.02; 412.04; 502.02(c); 703.01(p);

704.08; 801.03; 903.03; 906.01

Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857 (TTAB 1986)..............................................§ 518 

Harrington, In re, 219 USPQ 854 (TTAB 1983) .................................................................................................§ 1214

Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 (TTAB 1988).........................§§ 309.03(a)(2); 311.02(d); 

 506.01

Hart, In re, 199 USPQ 585 (Comm'r 1978) ....................................................................................................§ 1201.05 

Hartley v. Mentor Corp., 869 F.2d 1469, 10 USPQ2d 1138 (Fed. Cir. 1989).............................................. § 605.03(e) 

Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990).................................................................. §§ 309.03; 502.04; 

 503.02; 534.02

Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119 (TTAB 1976)............................................§ 704.11

Harzfeld's, Inc. v. Joseph M. Feldman, Inc., 184 USPQ 692 (TTAB 1974) ...................... §§ 704.03(b)(1)(A); 704.07

Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469 

 (Fed. Cir. 1993) .............................................................................................................................................§ 402.02

Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634 

 (TTAB 1983)................................................................................................................................. §§ 704.07; 704.08

Hayes, In re, 62 USPQ2d 1443 (TTAB 2002).................................................................................................§ 1208.02 

Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409 (TTAB 1990)........................ § 404.03(a)(2); 404.07(e); 

 404.07(f); 404.09; 502.06(a); 703.01(b);

 703.01(f)(1); 703.01(f)(2); 703.02(c); 703.02(g);

 703.02(k); 707.03(c); 707.03(d)

Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842

 (TTAB 1988)................................................................................................................§§ 532; 704.10; 707.02(b)(2) 

Hechinger Investment Co. of Delaware Inc., In re, 24 USPQ2d 1053 (TTAB 1991).....................................§ 1201.01 

Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502 (TTAB 1978) ........................................................§ 704.06(b) 

Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989)............................ §§ 511; 704.04 

Helene Curtis Industries Inc. v. John H. Breck, Inc., 183 USPQ 126 (TTAB 1974) ........................................§ 523.02

Henry Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154 (TTAB 1987) ........................................§ 704.10

Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 

 64 USPQ2d 1375 (Fed. Cir. 2002) ...................................................................................§§ 309.03(b); 309.03(c)A;

 309.03(c)B; 906.01

Hershey Foods Corp. v. Cerreta, 195 USPQ 246 (TTAB 1977)...........................................§§ 102.01; 311.02(c); 314

Hershey, In re, 6 USPQ2d 1470 (TTAB 1988)......................................................................................................§ 213 

Hertz System, Inc. v. A-Drive Corp., 222 USPQ2d 625 (TTAB 1984).........................................................§ 704.12(a) 

Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1645 (TTAB 1987) .....................................................§ 534.02

Hewlett Packard Co. v. Healthercare Personnel Inc., 21 USPQ2d 1552

(TTAB 1991) ................................................................................................. §§ 404.06; 502.06(a); 702; 703.01(h)

Hewlett Packard Co. v. Human Performance Management Inc., 

 23 USPQ2d 1390 (TTAB 1991) ........................................................................§§ 703.01(k); 703.01(l); 703.01(n)

Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 

 18 USPQ2d 1710 (Fed. Cir. 1991) ....................................................................§§ 311.02(a); 509.01(b)(1); 534.02; 

 704.03(b)(1)(A); 901.02(a)

Hilson Research Inc. v. Society for Human Resource Management, 

 27 USPQ2d 1423 (TTAB 1993)...................................................................................§§ 314; 502.01; 511; 527.02; 

 529; 703.01(b); 704.09 

Hines, In re, 32 USPQ2d 1376 (TTAB 1994) ......................................................................................................§ 1218

Hiram Walker & Sons, Inc. v. Milstone, 130 USPQ 274 (TTAB 1961).............................................§ 704.03(b)(1)(B) 

Historic Wharf's Associates, Inc., In re, 222 USPQ 92 (TTAB 1984) ............................................................§ 1207.02 

Table of Authorities - 719 
TABLE OF AUTHORITIES 

HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156 (TTAB 

 1998).......................................................................................................................§§ 114.03 ; 509.01(b)(1); 534.02

Hobie Designs Inc. v. Fred Hayman Beverly Hills Inc., 

 14 USPQ2d 2064 (TTAB 1990)............................................................................. §§ 407.03(a); 509. 01(b)(1); 525

Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630

 (CCPA 1976)...................................................................................................................§§ 1102.02; 1103.01(d)(2);

 1103.01(d)(3); 1103.03; 1105

Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949 (TTAB 1981)............................§§§ 704.10; 707.02(b)(2) 

Holland American Wafer Co., In re, 737 F.2d 1015, 222 USPQ 273 

 (Fed. Cir. 1984) ....................................................................................................................... §§ 202.01; 308.02(b);

 309.02(b); 509.02 

Hollister Inc. v. Downey, 565 F.2d 1208, 196 USPQ 118 (CCPA 1977)...........................................§ 704.03(b)(1)(A) 

Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) ......................................................................§ 704.10

Hollowform Inc. v. Delma Aeh, 180 USPQ 284 (TTAB 1973), aff’d, 

 515 F.2d 1174, 185 USPQ 790 (CCPA 1975)............................................................§§ 503.01; 510.03(a); 1102.01

Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549 (TTAB 1994).......................................... § 309.03(c)A 

Home Federal Savings & Loan Ass’n v. Home Federal Savings and 

 Loan Ass’n of Chicago, 205 USPQ 467 (TTAB 1979) ....................................................................................§ 1112

Home Juice Co. v. Runglin Cos., 231 USPQ 897 (TTAB 1986)......................................§§ 309.03(a)(2); 309.03(c)B; 

 311.02(b); 317; 533.02; 605.03(c)

Honeywell, In re, 8 USPQ2d 1600 (TTAB 1988) ...............................................................................................§ 1211

Hoover Co. v. Royal Appliance Mfg. Co., see The Hoover Co. v. Royal Appliance Mfg. Co. 

Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733 

 (TTAB 2001) .............................................................................................................. §§ 110; 311.02(b); 528.01(b) 

Houlihan v. Parliament Import Co., 921 F.2d 1258, 17 USPQ2d 1208 (Fed. Cir. 1990) ....................................§ 1110

House of Windsor, Inc., In re, 221 USPQ 53 (TTAB 1983).................................................................................§ 1214

Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 USPQ 658

 (TTAB 1977)................................................................................................................................. §§ 704.07; 704.10

Hudson News Co., In re, 39 USPQ2d 1915 (TTAB 1996), aff’d without 

 published opinion, (Fed. Cir. 1997) .................................................................................... §§ 1208; 1208.01; 1214

Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240 (Comm'r 1990)......................................... §§ 507.02; 512.01; 906.02

Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987)................................ §§ 309.03(a)(2); 309.03(c)(B; 

 311.02(b); 311.02(d)

Humble Oil & Refining Co. v. Sekisui Chemical Company Ltd. of Japan, 

 165 USPQ 597 (TTAB 1970)............................................................................................... §§ 307.02(c)(1); 313.03

Hunt v. Treppschuh and Hentrich, 523 F.2d 1386, 187 USPQ 426 (CCPA 1975)...............................................§ 1217

Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986)....................... §§ 704.07; 704.08 

Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881 (TTAB 1979)........................... §§ 704.07; 704.08; 

 704.10; 707.02(b)

Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772 

 (Fed. Cir. 1987) .............................................................................................................................................§ 704.04

Hydrotechnic Corp. v. Hydrotech International, Inc., 196 USPQ 387 (TTAB 1977)............................................§ 539 

Hy-Pure Laboratories, Inc. v. Foley & Co., 98 USPQ 280 (Chief Examiner 1953) ............................................§ 1002

-IIdenticon Corp. v. Williams, 195 USPQ 447 (Comm'r 1977)............................................................ §§ 312.01; 312.02 

ILC Products Co. v. ILC, Inc., 175 USPQ 722 (TTAB 1972)...........................................................................§ 704.04

Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976) .............................§ 1217

Illinois Bronze Powder & Paint Co, In re, 188 USPQ 459 (TTAB 1975) ........................................§ 704.03(b)(1)(A)

Table of Authorities - 720 
TABLE OF AUTHORITIES 

Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 

 (Fed. Cir. 1990) .................................................................................................................... §§ 307.02(b); 309.03(c)

Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 94 (TTAB 1983).................................... §§ 704.03(b)(1)(A); 706 

Infinity Broadcasting Corp. of Dallas, In re, 60 USPQ2d 1214 (TTAB 2001)...............................................§ 1208.04 

Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 

 (TTAB 1988).................................................................................................................................................§ 512.01

Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153 (N.D. Cal. 1996) ..............................................§ 309.02(a) 

Ingalls Shipbuilding, Inc. v. United States, 857 F.2d 1448, 11 Fed. R. Serv.3d 1342 

 (Fed. Cir. 1988) .................................................................................................................... §§ 527.01(a); 527.01(e) 

Inland Oil & Transport Co. v. IOT Corp., 197 USPQ 562 (TTAB 1977)........................... §§ 1102.01; 1108; 1113.01

Insta-Foam Products, Inc. v. Instapak Corporation, 189 USPQ 793 (TTAB 1976)........................................§ 704.09

Institut National des Appellations d'Origine v. Brown-Forman Corp., 

 47 USPQ2d 1875 (TTAB 1998).........................................................................§§ 503.03; 503.04; 507.02; 528.01;

 528.04 ; 528.06 ; 901.02(a)

Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925 

 (TTAB 1999)...................................................................................................... §§ 509.01(a); 510.03(a); 510.03(b)

Intellimedia Sports Inc. v. Intellimedia Corp.. 43 USPQ2d 1203 

 (TTAB 1997)................................................................................................................................. §§ 503.02; 503.03

Interbank Card Ass’n v. United States National Bank of Oregon, 

 197 USPQ 123 (TTAB 1997) ....................................................................................§§ 528.05(d); 704.03(b)(1)(B) 

Interbank Card Ass'n v. United States National Bank of Oregon, 

 197 USPQ 127 (TTAB 1975).............................................................................................................................§ 414 

International Ass'n of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940

 (TTAB 1985).................................................................................................................................................§ 704.08

International Environmental Corp, In re., 230 USPQ 688 (TTAB 1986).......................................................§ 1207.01 

International Finance Corporation v. Bravo Co., 64 USPQ2d 1597 

 (TTAB 2002)................................................................................................................§§ 507.02(a); 527.03; 528.03 

International Flavors & Fragrances Inc., In re, 47 USPQ2d 1314 

 (TTAB 1998) aff'd 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999) ....................................§§ 309.03(c); 906.01

International Harvester Company v. International Telephone and 

 Telegraph Corporation, 208 USPQ 940 (TTAB 1980)................................................................................§ 514.03

International Telephone and Telegraph Corp. v. International

 Mobile Machines Corp., 218 USPQ 1024 (TTAB 1983) ............................................... §§ 313.01; 504.02; 504.03

International Mobile Machines Corp. v. International Telephone 

 and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986).............................. §§ 307.02(a); 309.03(c) 

International Nutrition Co. v. Horphag Research Ltd., 220 F.2d 1325, 

 55 USPQ2d 1492 (Fed. Cir. 2000) ......................................................................... §§ 206.02; 309.03(b); 311.02(b)

International Order of Job's Daughters v. Lindeburg and Company, 

 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984) ...............................................................§§ 303.03; 309.03(a)(2);

 309.03(b); 307.02(a)

Internet Inc. v. Corporation for National Research Initiatives, 

 38 USPQ2d 1435 (TTAB 1996).......................................................................... §§ 117.02; 309.03(c); 309.03(c)A;

 503.04; 504.01; 511

Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003).....................................§ 528.05(d) 

Intersat Corp. v. International Telecommunications Satellite Organization, 

 226 USPQ 154 (TTAB 1985)...................................................................................................§§ 309.03(a)(2); 317;

 503.02; 503.03

Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 

 (CCPA 1978).................................................................................................................................................§ 704.04

Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000) ...........................................§ 512.01

Inter-State Oil Co., In re, 219 USPQ 1229 (TTAB 1983)..................................................................§ 704.03(b)(1)(A) 

Investigacion Y Desarrollo de Cosmeticos S.A., In re, 19 USPQ2d 1717 (Comm'r 1991).....................................§ 104 

Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988).........................................................................§ 303.03

Table of Authorities - 721 
TABLE OF AUTHORITIES 

Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794

 (TTAB 1974)........................................................................................................................ §§ 309.03(a)(2); 506.01

ITC Entertainment Group Ltd. v. Nintendo of America Inc., 

 45 USPQ2d 2021 (TTAB 1998)....................................................................................... §§ 106.03; 527.02; 528.06

Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440 (TTAB 1973)................................................. §§ 305 ; 511 ; 704.13

-JJ. B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB 1975) ............................................ §§ 313.04; 314;

 402.01; 402.02; 414(2); 414(10);

 414(12); 414(16); 414(18)

J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 581 (TTAB 1975) .........................................................§ 523.02

J.I. Case Co. v. F.L. Industries, Inc., 229 USPQ 697 (TTAB 1986).................................................................§ 528.06

JSB International Inc. v. Auto Sound North, Inc., 215 USPQ 60 (TTAB 1982) ...............................................§ 408.03

Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950 (TTAB 1997)........................... §§ 117.01; 312.01; 

 312.03; 544; 905

Jain v. Ramparts Inc., 49 USPQ2d 1429 (TTAB 1998)..........................................................§§ 404.03(a); 404.03(b);

 404.09; 405.04(b); 510.03(a); 520;

 521; 522; 523.01; 534.02; 703.01(b)

Jan Bell Marketing, Inc. v. Centennial Jewelers, Inc., 

 19 USPQ2d 1636 (TTAB 1990)............................................................................... §§ 405.03(d) 405.03(e); 501.03

Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072 (TTAB 1990) ......................................... §§ 521; 533.02; 703.01(e); 

 704.03(b)(1)(A) ; 707.02(b)(1) ; 707.02(c)

Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58

 (TTAB 1984).................................................................................................................... §§ 704.07; 704.08; 704.11

Jeep Corp., In re, 222 USPQ 333 (TTAB 1984)........................................................................... §§ 1207.01; 1207.02

Jerrold Electronics Corp. v. Magnavox Co., 199 USPQ 751 (TTAB 1978).....................................................§ 704.10

Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 

 (Fed. Cir. 2000) .........................................................................................................................§§ 311.02(b); 507.02

Jet-Pak, Inc. v. United States Plywood Corp., 124 USPQ 385 (TTAB 1960)...................................................§ 313.02

Jet-Pak, Inc. v. United States Plywood Corp., 125 USPQ 491 (Comm'r 1960) ................................................§ 313.02

Jetzon Tire & Rubber Corp. v. General Motors Corp., 177 USPQ 467 

 (TTAB 1973)................................................................................................................§§ 704.07; 704.08; 707.02(c) 

Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 

 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), 

 rev'd, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) ........................................................... §§ 303.03; 309.03(b);

 309.03(c); 309.03(c)A; 901.02(a)

Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972) ..............................§ 1005

Jimlar Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216 

 (TTAB 1992)........................................................................................................... §§ 309.03(c)A; 704.03(b)(1)(A)

Jockey International Inc. v. Bette Appel Unltd., 216 USPQ 359 (TTAB 1982) ...............................................§ 802.04

Jockey International Inc. v. Frantti, 196 USPQ 705 (TTAB 1977) ..................................................§ 704.03(b)(1)(A) 

Johanna Farms Inc., In re, 223 USPQ 459 (TTAB 1984) ....................................... §§ 1207.02; 1209.01; 1217; 1218

Johanna Farms Inc., In re, 8 USPQ2d 1408 (TTAB 1988) ................................................................... §§ 540; 802.04 

John T. Clark Co. v. Colgate-Palmolive Co., 176 USPQ 93 (TTAB 1972).................................................§ 528.05(b) 

Johnson & Johnson v. American Hospital Supply Corporation, 187 USPQ 478 

 (TTAB 1975) .................................................................................................................. §§ 707.02(b); 707.02(b)(2)

Johnson & Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765 (TTAB 1973) ........................... §§ 601.01; 602.01

Johnson & Johnson v. Cenco Medical/Health Supply Corp., 177 USPQ 586

(Comm'r 1973)................................................................................................................................... §§ 507.02; 905 

Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615 (TTAB 1974).................... §§ 523.01; 523.03; 524.03

Table of Authorities - 722 
TABLE OF AUTHORITIES 

Johnson & Johnson v. Diaz, 339 F. Supp. 60, 172 USPQ 35 (C.D. Cal. 1971) ..............................................§ 414(13)

Johnson & Johnson v. E. I. du Pont de Nemours & Co., 181 USPQ 790 (TTAB 1974)....................§ 704.03(b)(1)(A) 

Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167 (TTAB 1975)................................................ §§ 313.04; 314;

 402.01; 402.02; 414(10); 414(22)

Johnson & Johnson v. Salve S.A., 183 USPQ 375 (TTAB 1974)....................................................................§ 414(13)

Johnson & Johnson, In re, 59 F.R.D. 174, 178 USPQ 201 (D.Del. 1973).......................§§ 404.03(a)(2); 703.01(f)(2) 

Johnson Publishing Co. v. Cavin & Tubiana OHG, 196 USPQ 383 (TTAB 1977)..........................................§ 704.09

Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 

 10 USPQ2d 1671 (TTAB 1988)................................................................................. §§ 402.01; 402.02; 404.08(c); 

 405.02; 408.01; 412.02(d); 414(3);

 414(8); 414(9); 414(10); 414(11);

 414(16); 414(20); 414(21)

Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 

13 USPQ2d 1719 (TTAB 1989).................................................................................§§ 407.03(a); 408.01; 412.02(a);

 502.02(b); 509.01(a); 525; 527.03

Jonergin Co. Inc. v. Jonergin Vermont Inc., 222 USPQ 337 

 (Comm'r 1983)............................................................................................................. §§ 404.03(b); 404.03(d); 520 

Joseph F. Finch & Co. v. E. Martinoni Co., 157 USPQ 394 (TTAB 1968) ......................................§ 704.03(b)(1)(B) 

Jos. Schlitz Brewing Co, In re., 223 USPQ 45 (TTAB 1983) ....................................................... §§ 1207.01; 1207.02

Jos. Schlitz Brewing Co. v. United Vintners, Inc., 166 USPQ 493 (TTAB 1970)................................................§ 1004

Joy Manufacturing Co. v. Robbins Co., 181 USPQ 408 (TTAB 1974)..................................................................§ 518 

Juleigh Jeans Sportswear Inc, In re., 24 USPQ2d 1694 (TTAB 1992)..............................§§ 1201.02; 1204; 1205.01;

 1207.01; 1207.02

-KKabushiki Kaisha Hitachi Seisakusho, In re, 33 USPQ2d 1477 (Comm’r 1994).............................. §§ 202.04; 306.04

Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501 (TTAB 1993)................................§§ 502.01; 507.03(b)

Kassnar Imports v. Plastilite Corp., 180 USPQ 156 (TTAB 1973), 

 aff'd, 508 F.2d 824, 184 USPQ 348 (CCPA 1975)................................................................................... § 309.03(c) 

Katz v. Batavia Marine & Sporting Supplies Inc., 984 F.2d 422, 25 USPQ2d 1547 (Fed. Cir. 1993)............. § 402.02

Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989) ...........................§ 528.06

Kelley v. Crosfield Catalysts, 135 F.3d 1202 (7th Cir. 1998).............................................................................§ 507.02

Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988)........................§§ 404.03(a)(2); 410; 521

Kellogg Co. v. Nugget Distributors' Cooperative of America, Inc., 

 16 USPQ2d 1468 (TTAB 1990)........................................................................................... §§ 405.03(d); 405.03(e)

Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), 

 aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) .......................................................... §§ 307.02(a); 309.02; 

 309.03(c); 409; 528.01; 528.05(a); 

 704.03(a); 704.03(b)(1)(B); 704.04; 

 704.06(a); 704.06(b)

Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992) ..................................... §§ 102.01; 

 309.03(a)(2); 503.02

Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327 (TTAB 1976)......................................... § 309.03(c) 

Kimbell Foods, Inc, In re., 184 USPQ 172 (Comm'r 1974) .................................................................................§ 1002

Kimberly Clark Corp. v. Fort Howard Paper Co., 772 F.2d 860, 

 227 USPQ 36 (Fed. Cir. 1985) ................................................................................................................ § 605.03(e) 

Kimberly Clark Corp. v. Paper Converting Industry Inc., 21 USPQ2d 1875

 (Comm'r 1991)....................................................................................................................... §§ 207.02; 209.02; 905

King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 

 182 USPQ 108 (CCPA 1974)................................................................................................................ § 309.03(c)A 

Klein v. Peterson, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989)..................................................................§ 115.02

Table of Authorities - 723 
TABLE OF AUTHORITIES 

Klein, In re, 6 USPQ2d 1528 (Dep't Comm. 1986), aff'd sub nom., 

 Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), 

 aff'd 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989) ........................................................................ §§ 109; 110.01 

Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 

 175 USPQ 417 (CCPA 1972)........................................................................................................ §§ 102.01; 802.04

Kraft, Inc. v. Balin, 209 USPQ 877 (TTAB 1981) .............................................................................§ 704.03(b)(1)(A) 

Kroger Co., In re,, 177 USPQ 715 (TTAB 1973) ..................................................................................................§ 543 

K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540 (TTAB 2001)................................................... § 309.03(c) 

-LL. Leichner (London) Ltd. v. Robbins, 189 USPQ 254 (TTAB 1975)............................................... §§ 539; 704.05(b)

L.C. Licensing Inc., In re, 49 USPQ2d 1379 (TTAB 1998)............................................................................§ 1207.01 

L.R. Sport Inc., In re, 25 USPQ2d 1533 (Comm'r 1992)................................................. §§ 202.01; 309.02(b); 509.02 

La Jolla Sportswear Co. v. Maskuline Underwear Co., 114 USPQ 130 

 (Comm'r 1957)..................................................................................................................................................§ 1004

La Maur, Inc. v. Andis Clipper Co., 181 USPQ 783 (Comm'r 1974)............................................... §§ 203.03 ; 203.04

La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234 

 (Comm’r 1976).........................................................................................................§§ 102.03; 504.01; 528.02; 702

La Coste Alligator S.A. v. Everlast World’s Boxin Headquarters Corp., 

 204 USPQ 945 (TTAB 1979) .......................................................................................................................§ 704.10

Laboratoires due Dr. N.G. Payot Etablissement v. Southwestern Classics Collection Ltd., 

3 USPQ2d 1600 (TTAB 1987) ...............................................................................................................§ 507.03(b) 

Lamb-Weston Inc., In re, 54 USPQ2d 1190 (TTAB 2000) ........................................................... §§ 1207.01; 1208.01

Land v. Regan, 342 F.2d 92, 144 USPQ 661 (CCPA 1965).........................................................................§ 707.03(d) 

Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994)...................................... § 309.03(c) 

Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840 (TTAB 1995) ..............................§§ 309.03(c)A; 314; 

 510.02(a); 528.01; 901.02(b)

Lasek & Miller Associates v. Rubin, 201 USPQ 831 (TTAB 1978)........................................................ § 704.03(b)(2)

Lativ Systems, Inc., In re, 223 USPQ 1037 (TTAB 1984)....................................................................................§ 1217

Le Sorbet, Inc., In re, 228 USPQ 27 (TTAB 1985)..............................................................................................§ 1214

Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699 

 (TTAB 2002)...........................................................................................................§§ 309.03(c); 311.02(b); 507.02

Lee Byron Corp. v. H.D. Lee Co., 203 USPQ 1097 (TTAB 1979) ........................................................................§ 544 

Leeds Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303

 (TTAB 2002).............................................................................................................................§§ 510.03(a); 528.03

Legendary Inc., In re, 26 USPQ2d 1478 (Comm'r 1992)..................................................................................§ 116.05

Leon Shaffer Golnick Advertising, Inc. v. William G. Pendill Marketing Co., 

 177 USPQ 401 (TTAB 1973)........................................................................................................................§ 506.01

Lever Brothers Co. v. Shaklee Corp., 214 USPQ 654 (TTAB 1982) .....................................................................§ 511 

Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984).....................................§ 528.01

Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 USPQ2d 1464 (TTAB 1993), 

Liberty & Co. v. Liberty Trouser Co., 216 USPQ 65 (TTAB 1982) .................................................................§ 512.01

 recon. denied, 36 USPQ2d 1328 (TTAB 1994) ..................................................... §§ 309.03(a)(2); 309.03(c); 314;

 507.03(b); 528.05(a); 539; 704.04; 707.03(d)

Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357 (TTAB 1983) ......................................§§ 307.02(a); 309.03(b) 

Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594 

 (TTAB 1992), summ. judgment granted, 24 USPQ2d 1376 (TTAB 1992)................. §§ 313.04; 503.04; 507.02(b) 

Lillian Vernon Corp., In re, 225 USPQ 213 (TTAB 1985)..................................................................................§ 1214

Link v. Wabash R. Co., 370 U.S. 626 (1962)........................................................................................... § 509.01(b)(1)

Table of Authorities - 724 
TABLE OF AUTHORITIES 

Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 

 45 USPQ2d 1374 (Fed. Cir. 1998) ......................................................................................§§ 309.03(c); 507.03(b);

 523.04; 527.01(e)

Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 

 213 USPQ 185 (CCPA 1982)............................................................................§§ 303.03; 309.03(a)(2); 309.03(b);

 309.03(c); 311.02(a); 503.02

Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 

 (TTAB 1979)........................................................................................................................ §§ 528.05(b); 707.03(c)

Little Caesar Enterprises, Inc. v. Domino’s Pizza Inc., 11 USPQ2d 1233

 (Comm’r 1989)..............................................................................................................................................§ 513.02

Little Ceasar Enterprises Inc., In re, 48 USPQ2d 1222 (Comm’r 1998)................................................ § 212.02; 516 

Litton Business Systems, Inc. v. J. G. Furniture Co., 190 USPQ 428, 

Litton Business Systems, Inc. v. J. G. Furniture Co., Inc., 196 USPQ 711 (TTAB 1977)............................§ 704.06(a) 

 recon. denied, 190 USPQ 431 (TTAB 1976) ................................................................................................§ 534.02

Litton Business Systems, Inc. v. J. G. Furniture Co., Inc., 190 USPQ 431 (TTAB 1976)............................§ 704.12(b) 

Litton Business Systems, Inc. v. J. G. Furniture Co., 188 USPQ 509 (TTAB 1976)......................... §§ 534.02; 534.03

Litton Industries, Inc. v. Litronix, Inc., 188 USPQ 407 (TTAB 1975)..............................................................§ 704.08

Live Earth Products Inc., In re, 49 USPQ2d 1063 (TTAB 1998) ...................................§§ 1203.02(a); 1204; 1205.01 

Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027

 (Fed. Cir. 1993) .........................................................................................................................§§ 528.01; 528.05(d)

Local Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990)....................................§ 704.03(b)(1)(A) 

Loew’s Theatres, Inc., In re, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) .....................................................§ 1208

Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767 (TTAB 1980) .......................................................................§ 704.08

Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531 

 (Fed. Cir. 1992) .............................................................................................................................................§ 102.01

Lone Star Manufacturing Co. v. Bill Beasley, Inc., 176 USPQ 426 (TTAB 1972), 

 rev'd on other grounds, 498 F.2d 906, 182 USPQ 368 (CCPA 1974)...........................................................§ 512.04

Long John Silver's, Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982)........................................§§ 314; 507.02(a)

Loren Cook Co. v. Acme Engineering and Manufacturing Corp., 216 USPQ 517 (TTAB 1982) ....................§ 534.02

Los Angeles Bonaventure Co. v. Bonaventure Associates, 4 USPQ2d 1882 (TTAB 1987) ........................§ 704.12(a) 

Lotus Development Corp. v. Narada Productions, Inc., 23 USPQ2d 1310 

 (Comm'r 1991).................................................................................................................§§ 202.01; 207.01; 207.02;

 207.03; 209.02 

Lowrance Electronics Inc., In re, 14 USPQ2d 1251 (TTAB 1989) .....................................................................§ 1218

LS Bedding, In re, 16 USPQ2d 1451 (Comm'r 1990)........................................................................................§ 110.01

Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987) .................................................... §§ 402.01; 403.03;

 403.04; 404.03(a)(2); 405.04(a);

 407.03(a); 408.01; 509.01(a); 521;

 523.02; 527.01(c); 703.01(f)(2)

Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758 (TTAB 1999) .......................... §§ 110.01; 403.02; 410; 502.06(a);

 509.01(a); 509.02; 523.01; 526; 701

Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299 (TTAB 1986), aff'd, 

 831 F.2d 306 (Fed. Cir. 1987) ............................................................................................ §§ 504.01; 528.02; 1211

Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354 

 (TTAB 1984)................................................................................................................§§ 509.01(b)(2); 529; 704.09 

-MM. Aron Corporation v. Remington Products, Inc., 222 USPQ 93 (TTAB 1984)....................... §§ 309.03(b); 313.03; 

 313.04; 507.02(a)

M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) .....................§§ 102.01; 309.03(c); 311.02(b)

Table of Authorities - 725 
TABLE OF AUTHORITIES 

Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164 (TTAB 1984)........................ §§ 704.07; 704.08

Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286 (TTAB 1974).............. §§ 402.01; 402.02; 414(2)

Mack Trucks, Inc. v. Monroe Auto Equipment Co., 182 USPQ 511 (TTAB 1974).......................§§ 507.02; 507.02(a)

Mack Trucks, Inc., In re, 189 USPQ 642 (Comm'r 1976) ....................................................................................§ 1218

MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979) ................................ §§ 403.03; 405.04(a); 

 407.03(a); 510.03(a); 510.03(b);

 523.01; 523.02; 527.01(c)

Maine Savings Bank v. First Banc Group of Ohio, Inc., 220 USPQ 736 (TTAB 1983) ...................................§ 512.02

Majestic Distilling Co, In re., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003)............................................§ 906.01

Major League Umpires, In re, 60 USPQ2d 1059 (TTAB 2001).....................................................................§ 1208.04 

Manco Inc., In re, 24 USPQ2d 1938 (TTAB 1992) ........................................................................... §§ 1208; 1208.01

Manpower, Inc. v. Manpower Information Inc., 190 USPQ 18 (TTAB 1976)..............................§§ 704.08; 707.02(b)

Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981)..........§§ 313.03; 507.03(b); 704.12(a)

Marcon Ltd. v. Avon Products Inc., 4 USPQ2d 1474 (TTAB 1987).................................................................§ 704.13

Marcon, Ltd. v. Merle Norman Cosmetics, Inc., 221 USPQ 644 (TTAB 1984)................................................§ 101.03

Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 174 USPQ 395 (CCPA 1972) ..........................................§ 704.06(a) 

Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993) ............................§ 510.02(a) 

Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988)............................§ 704.09

Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989)................................................. §§ 309.03(c); 507.02

Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735 (TTAB 1976).......................................... §§ 312.03; 544; 

 704.03(b)(1)(A) 

Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1154 (TTAB 1989) .............................. §§ 535; 602.02(b)

Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989)...........................§§ 309.03(c); 313.04

Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652 (TTAB 1990)....................§§ 507.02(a); 507.02(b); 

 521; 703.02(c)

Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321 (TTAB 1992).....................§§ 309.03(c); 703.01(n); 

 704.09; 707.02(b); 707.02(c);

 707.03(c); 801.03 

Martahus v. Video Duplication Services Inc., 3 F.3d 417, 

 27 USPQ2d 1846 (Fed. Cir. 1993) ....................................................................................... §§ 309.03(c); 704.06(b)

Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568 (TTAB 1971)...........................................§ 510.02(a) 

Martin Container, Inc., In re, 65 USPQ2d 1058 (TTAB 2002) ......................................................................§ 1209.04 

Mason Engineering & Design Corp. v. Mateson Chemical Corp., 

 225 USPQ 956 (TTAB 1985)....................................................................................................... §§ 512.04; 514.01;

 514.03; 512.01; 704.04

Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 

 181 USPQ 272 (CCPA 1974).........................................................................................................§ 704.03(b)(1)(A) 

Mastic Inc. v. Mastic Corp., 230 USPQ 699 (TTAB 1986) ............................................................................§ 414(13)

Mavety Media Group Ltd., In re, 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) ......................§§ 309.03(c); 1208

May Department Stores Co. v. Prince, 200 USPQ 803 (TTAB 1978)............................................. §§ 704.07; 704.10;

 707.01(b)(1)

Maytag Co. v. Luskin's, Inc., 228 USPQ 747 (TTAB 1986).....................................................§§ 311.02(d); 529; 701;

 704.05(b); 704.09

Maybelline Co. v. Matney, 194 USPQ 438 (TTAB 1977)..................................................................§ 704.03(b)(1)(A) 

Mayer-Beaton Corp., In re, 223 USPQ 1347 (TTAB 1984) ......................................................... §§ 1207.02; 1207.01

McCandlish v. Doe, 22 USPQ2d 1223 (Comm'r 1992).....................................................................................§ 115.02

McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16 (TTAB 1959)..........§§ 309.03(a)(2); 311.02(b);

 311.02(d); 313.02; 506.01

McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966) ................................. § 704.03(b))(1)(A) 

McDonald's Corp, In re., 230 USPQ 210 (TTAB 1986)........................................................................ §§ 540; 802.04 

McDonald’s Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989) ...............................................§§ 703.01(b); 704.04

Table of Authorities - 726 
TABLE OF AUTHORITIES 

McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB 1985)............................... §§ 309.03(a)(2); 

 311.02(b); 503.03; 506.01

MCI Communications Corp., In re, 21 USPQ2d 1534 (Comm’r 1991)............................... §§ 212.01; 212.02; 212.06

McNeil v. Mini Mansions, Inc., 178 USPQ 312 (TTAB 1973).............................................................................§ 1005

MediaShare Corp., In re, 43 USPQ2d 1304 (TTAB 1997)............................................................................§ 12.01.01

Medical Disposables Co., In re, 25 USPQ2d 1801 (TTAB 1992) .....................................................§ 704.03(b)(1)(A) 

Medinol Ltd. V. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) ..................................................................§ 528.01

Medtronic Inc. v. Medical Disposables, 204 USPQ 317 (TTAB 1979) .......................................§§ 707.03(c); 707.04

Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984) ....................................... §§ 402.01; 408.01;

 410; 523.02; 528.07(a)

Meijer, Inc. v. Purple Cow Pancake House, 226 USPQ 280 (TTAB 1985).........................................................§ 1110

Melville Corp., In re, 228 USPQ 970 (TTAB 1986) ............................................................................................§ 1208

Men’s International Professional Tennis Council, In re, 1 USPQ2d 1917 (TTAB 1986) ..............................§ 1208.01 

Mercedes Slacks, Ltd., In re, 213 USPQ 397 (TTAB 1982)............................................................... §§ 1201.04; 1217

Merck & Co., In re., 24 USPQ2d 1317 (Comm'r 1992).....................................................................§§ 104; 203.02(a)

Merker Counter Co., Inc. v. Central Counter Co., 310 F.2d 746, 135 USPQ 433 (CCPA 1962)....................§ 534.03

Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d 1205 (TTAB 1993)...................§§ 309.03(b); 507.02(a)

MHW Ltd. v. Simex, Aussenhandelsgesellschaft Savelsberg KG, 

 59 USPQ2d 1477 (TTAB 2000)...............................................................................................................§ 527.01(a) 

Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000)................................§§ 309.03(c); 507.02; 

 528.05(e); 704.08

MicroMotion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696 (Fed. Cir. 1990)................ §§ 402.02; 408.01

Micro Motion, Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998)...............................§§ 314; 507.03(b); 528.05(e) 

Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d 1732 (TTAB 1990) .....................§§ 507.02; 507.02(a)

Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 

 5 USPQ2d 1067 (TTAB 1987).................................................................................§§ 409; 503.03; 507.02; 534.02

Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 

 12 USPQ2d 1267 (TTAB 1989), aff'd, 906 F.2d 1568, 

 15 USPQ2d 1359 (Fed. Cir. 1990) ...............................................................................§§ 507.02(a); 704.07; 704.08 

Miles Laboratories Inc. v. Instrumentation Laboratory Inc., 185 USPQ 432 (TTAB 1975).............§§ 402.02; 414(6)

Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 

 1 USPQ2d 1445 (TTAB 1986)......................................................................................... §§ 704.09; 704.10; 704.11

Miles Laboratories Inc. v. SmithKlein Corp., 189 USPQ 290 (TTAB 1975) ..................................................§ 704.09

Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495 (TTAB 1975)..................... §§ 402.02; 414(3); 

 414(5); 414(16)

Miller Brewing Co., In re, 226 USPQ 666 (TTAB 19985) .................................................§§ 1203.02(b); 1203.02(d)

Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711 (TTAB 1993) ................................. §§ 503.02; 503.03

Miller Brewing Co. v. Coy International Corp., 230 USPQ 675 (TTAB 1986).......................... §§ 528.05(a); 601.01; 

 601.02; 602.01

Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364 (E.D. N.Y. 1964)..................................§ 404.03

Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996)....................................§§ 309.03(d); 414(7)

Minnesota Mining & Manufacturing Co. v. Stryker Corp., 179 USPQ 433 (TTAB 1973)............... §§ 704.07; 704.08

Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067 

 (TTAB 1990).......................................................................................................§§ 402.01; 403.03; 403.04; 408.01

Miss Nude Florida, Inc. v. Drost, 193 USPQ 729 (TTAB 1976), 

 pet. to Comm'r denied, 198 USPQ 485 (Comm'r 1977) .................................................§§ 404.08(a); 707.02(b)(1); 

 707.03(c); 704.10; 905

Mission Pharmacal Co., Inc., In re, 33 USPQ2d 1060 (Comm'r 1993)..........................................................§ 1201.05 

Missouri Silver Pages Directory Publishing Corp. v. Southwestern Bell 

 Media, Inc., 6 USPQ2d 1028 (TTAB 1988)............................................................................§§ 528.05(b); 1103.02

Mohawk Air Services Inc., In re, 196 USPQ 851 (TTAB 1977) .......................................................................§ 303.02

Monocraft, Inc. v. Leading Jewelers Guild, 173 USPQ 506 (TTAB 1972)........................................§ 704.03(b)(1)(A) 

Moore Business Forms Inc., In re, 24 USPQ2d 1638 (TTAB 1992).........................................§§ 1201.02; 1203.02(b)

Table of Authorities - 727 
TABLE OF AUTHORITIES 

Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881,

 160 USPQ 715 (CCPA 1969)....................................................................................................§§ 303.02; 311.02(b)

Morgan Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d 1841 

 (TTAB 1989)................................................................................................................... §§ 1103.01(b); 1104; 1114

Moseley v. Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003)................................................... § 309.03(c) 

Mother's Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221 USPQ 394 

 (Fed. Cir. 1983) .......................................................................................................................§§ 510.02(a); 1101.02

Mother's Restaurants, Inc. v. Mother's Other Kitchen, Inc., 218 USPQ 1046 (TTAB 1983)..........................§ 414(13)

Motorola, Inc., In re, 3 USPQ2d 1142 (TTAB 1986) ..........................................................................................§ 1208

MRI Systems Corp. v. Wesley-Jessen Inc., 189 USPQ 214 (TTAB 1975).........................................................§ 704.11

M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070 (TTAB 1990)..................... §§ 502.01; 532; 533.01; 701; 704.10; 

 704.11; 707.02(b)(2); 704.02(c)

Mucky Duck Mustard Co., Inc., In re, 6 USPQ2d 1467 (TTAB 1988) ..............................................§ 704.03(b)(1)(B) 

Murphy Door Bed Co., In re, 223 USPQ 1030 (TTAB 1984)..............................................................................§ 1208

My Aching Back Inc. v. Klugman, 6 USPQ2d 1892 (TTAB 1988) ............................................................§ 1103.01(b)

-NN.A.D. Inc., In re, 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)..................................................................§ 1207.02 

Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993).....................................§§ 305; 308.05; 310.01;

 310.03(a); 511 

Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503 (TTAB 1973) .................................................§ 704.03(b)(1)(A) 

Narwood Productions, Inc., In re, 223 USPQ 1034 (TTAB 1984) ......................................................................§ 1214

National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 

 3 USPQ2d 1671 (TTAB 1987)................................................................................................................. § 527.01(e) 

National Blank Book Co. v. Leather Crafted Products, 218 USPQ 827 (TTAB 1983).....................................§ 512.02

National Cable Television Association Inc. v. American Cinema Editors Inc., 

 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) .............................................................. §§ 309.03(c); 311.02(b)

National Distillers and Chemical Corp. v. Industrial Condenser Corp., 

 184 USPQ 757 (TTAB 1974)...................................................................................................................§ 703.01(b) 

National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 

 (TTAB 1978) ..................................................................................................................§§ 704.09; 704.03(b)(1)(B)

National Football League v. Jasper Alliance Corporation, 16 USPQ2d 1212

 (TTAB 1990)............................................................................................................................................§ 311.02(a) 

National Patent Development Corp. v. Hercules Inc., 192 USPQ 491 (Comm'r 1976).........................................§ 807 

National Semiconductor Corp. v. Varian Associates, 184 USPQ 62 (TTAB 1974)..........................................§ 503.02

National Telefilm Associates, Inc. v. Craig Denney Productions, 228 USPQ 61 (Comm'r 1985) .........................§ 544 

Nationwide Industries Inc., In re, 6 USPQ2d 1882 (TTAB 1988) ..................................................................§ 1207.01 

Nature's Way Products Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077 (TTAB 1989) ........................................§ 528.06

Nestle Co. v. Joyva Corp., 227 USPQ 477 (TTAB 1985) .............................................................§§ 510.03(a); 528.03

Nestle Foods Corp. v. Kellogg Co., 6 USPQ2d 1145 (TTAB 1988)............................................................ § 527.01(e) 

Netcore Technologies, Inc. v. Firstwave Technologies, Inc., ___ USPQ2d ___ (TTAB 2001),

 2001 WL 243440, Trademark Trial and Appeal Board, March 9, 2001..............................§§ 509.01(b)(1) ; 513.01

Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974)...................................§§ 313.04; 314; 402.01;

 404.08(a); 404.08(c); 404.09; 410;

 411.03; 412.02(a); 414(4); 414(11);

 414(22); 523.01

Nevile Chemical Co. v. Lubrizol Corp., 184 USPQ 689 (TTAB 1875) ......................... §§ 402.02; 403.04; 412.02(d); 

414(2); 414(18); 509.01(a); 526

New York State Office of Parks and Recreation v. Atlas Souvenir & Gift Co., 

 207 USPQ 954 (TTAB 1980)...................................................................................................................§ 507.03(b) 

Table of Authorities - 728 
TABLE OF AUTHORITIES 

Newhoff Blumberg Inc. v. Romper Room Enterprises, Inc., 193 USPQ 313 

 (TTAB 1976).................................................................................................................................................§ 534.03

Newsday, Inc. v. Paddock Publications, Inc., 223 USPQ 1305 (TTAB 1984)................................ §§ 603; 1104; 1107

Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 9 USPQ2d 1061 (TTAB 1988),

 rev'd on other grounds, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989).................................................§ 704.13

Nobelle.com LLC v. Qwest Communications International, Inc., 66 USPQ2d 1300 (TTAB 2003)..................§ 527.01

 406.03; 406.04(a); 406.04(b); 502.02(b);

 522; 527.01(c)

Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542

Ole' Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912 (TTAB 1984) ........................................§§ 1101.01; 1103.01(d)(2);

 1107; 1108

No Fear Inc. v. Rule, 54 USPQ2d 1551 (TTAB 2000).............................................. §§ 403.03; 405.04(a); 405.04(b);

North American Free Trade Association, In re, 43 USPQ2d 1282 (TTAB 1997) .................... §§ 1203.02(e); 1208.04

Northland Aluminum Products, Inc., In re, 221 USPQ 1110 (TTAB 1984), 

 aff'd, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) ................................................................................§ 1207.02 

Nuclear Research Corp., In re, 16 USPQ2d 1316 (TTAB 1990)....................................................................§ 1207.03 

NutraSweet Co. v. K & S Foods Inc., 4 USPQ2d 1964 (TTAB 1987) ..............................................................§ 512.02

-OO. M. Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352 (TTAB 1976) .................. §§ 404.08(a); 703.01(e); 

 704.03(b)(1)(A) 

Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 

 16 USPQ2d 1783 (Fed. Cir. 1990) ................................................................................................ §§ 507.02; 528.01

Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555 (TTAB 1991) ................... §§ 404.08(a); 533.01; 

 701; 703.01(d); 707.02(b)(1);

 707.03(b)(1)

Ohio State University v. Ohio University, 51 USPQ2d 1289 (TTAB 1999) ......................§§ 309.03(a)(2); 309.03(b); 

 311.02(b); 313.03; 506.01

Oland's Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ 481 

 (TTAB 1975), aff'd, Miller Brewing Co. v. Oland's Breweries, 548 F.2d 349, 

 192 USPQ 266 (CCPA 1976)......................................................................................................................§ 414(13)

Old Dutch Foods, Inc. v. Old Dutch Country House, Inc., 180 USPQ 659 

 (TTAB 1973)..................................................................................................................................§ 704.03(b)(1)(A) 

Old Nutfield Brewing Company, Ltd. v. Hudson Valley Brewing Company, Inc., 

 65 USPQ2d 1701 (TTAB 2002)................................................................................................§§ 510.03(a); 534.02

 (Fed. Cir. 1992) ............................................................................................................. §§ 528.01; 704.03(B0(1)(A)

O-M Bread Inc. v. United States Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 

 (Fed. Cir. 1995) ........................................................................................................................................§ 311.02(b) 

Omaha National Corp., In re, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987)............................. §§ 101.02; 704.08

Omega SA v. Compucorp, 229 USPQ 191 (TTAB 1985).............................................................§§ 704.04 ; 704.12(a)

On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471

 (Fed. Cir. 2000) .............................................................................................................................................§ 906.01

Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 

 23 USPQ2d 1471 (Fed. Cir. 1992) ...........................................................................................§§ 303.02; 309.03(c);

 309.03(c)B; 528.01; 528.06

Opryland USA Inc., In re, 1 USPQ2d 1409 (TTAB 1986)..............................................................................§ 1209.01 

Opticians Ass'n of America v. Independent Opticians of America Inc., 

 734 F. Supp. 1171, 14 USPQ2d 2021 (D.N.J. 1990), rev'd on other grounds,

 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990) ........................................................................§§ 510.01; 510.02(a)

Opus One Inc., In re, 60 USPQ2d 1812 (TTAB 2001) ...................................................................................§ 1208.01 

Table of Authorities - 729 
TABLE OF AUTHORITIES 

Orange Communications Inc., In re, 41 USPQ2d 1036 (TTAB 1996) ................................................................§ 1214

Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 

 36 USPQ2d 1221 (TTAB 1995)..................................................................... §§ 311.02(b); 503.01; 506.01; 506.02

Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 

(TTAB 1999) ...................................................................................................... §§ 309.03(c); 703.01(b); 703.01(l)

Organik Technologies Inc., In re, 41 USPQ2d 1690 (TTAB 1997)................................................................§ 1208.01 

Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717 (TTAB 1987)..................... §§ 704.07; 704.08; 706

Original Red Plate Co., In re, 223 USPQ 836 (TTAB 1984)...............................................................................§ 1208

Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923 (TTAB 1989)............... §§ 404.03(b); 404.07(j); 

520; 528.06; 531; 703.01(b); 703.02(m)

Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 

 178 USPQ 429 (TTAB 1973)......................................................................... §§ 510.02(a); 539; 704.05(b); 704.08

Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556 (TTAB 1975).......................§§ 402.02; 414(3); 509.01(a) 

Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ 905

 (TTAB 1985).................................................................................................................... §§ 704.04; 704.07; 704.11

Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125

 (TTAB 1974), petition denied, 181 USPQ 779 (Comm'r 1974)................................................§§ 510.02(a); 534.02

Otis Elevator Co. v. Echlin Manufacturing Co., 187 USPQ 310 (TTAB 1975)................................................§ 704.08

Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)...... §§ 309.03(b); 309.03(c)A

Over the Rainbow Ltd. V. Over the Rainbow Inc., 227 USPQ 879 (TTAB 1985).................. §§ 1101.01; 1103.01(b); 

 1103.01(d)(2); 1108

Oxford Pendaflex Corp. v. Roladex Corp., 204 USPQ 249 (TTAB 1979).............................................. § 509.01(b)(2)

 summ. judgment granted, 191 USPQ 50 (TTAB 1976).............................................................§§ 528.05(a); 704.13

Oxy Metal Industries Corp. v. Transene Co., 196 USPQ 845 (TTAB 1977) ..............................................§ 703.01(b) 

P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome 

 Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA 1978) ................................... §§ 314; 408.03 

 Pacesetter Group, Inc., In re, 45 USPQ2d 1703 (Comm’r 1994) .................................................... §§ 111.01; 202.01

Packaging Industries Group, Inc. v. Great American Marketing, Inc., 

Packard Press Inc. v. Hewlett-Packard Co., 56 USPQ2d 1351 (Fed. Cir. 2000).........................................§ 704.12(d) 

Page, In re, 51 USPQ2d 1660 (TTAB 1999) ................................................................................ §§ 1201.01; 1201.02

 171 USPQ 641 (1971) ....................................................................................................................§§ 901.02(a); 905 

Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff’d

 226 USPQ 11 (Fed. Cir. 1985) ................................................................................................................ § 901.02(a)

 704.08; 707.03(c); 707.04

Oxy Metal Industries Corp. v. Technic, Inc., 189 USPQ 57 (TTAB 1975), 

-P- 

 227 USPQ 734 (TTAB 1985)........................................................................................................................§ 704.10

Pagan-Lewis Motors, Inc. v. Superior Pontiac, Inc., 216 USPQ 897 (TTAB 1982)............................................§ 1108

Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 

 169 USPQ 790 (CCPA 1971), cert. denied, 404 U.S. 938,

Pamex Foods, Inc, In re., 209 USPQ 275 (Comm'r 1980)................................................................................§ 514.01

Pamex Foods Inc. v. Clover Club Foods Co., 201 USPQ 308 (TTAB 1978) .................................. §§ 704.09; 704.10

Paolo's Associates Limited Partnership v. Paolo Bodo, 21 USPQ2d 1899 (Comm'r 1990) ............ §§ 312.01; 312.03;

 406.02; 509.01(b)(1)

Paramount Pictures Corp. v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988)......................................§ 703.01(k) 

 (unpublished), 108 F.3d 1392 (Fed. Cir. 1997) ...............................................................§§ 102.01; 309.03(c); 314

Parker Brothers v. Tuxedo Monopoly, Inc., 225 USPQ 1222 (TTAB 1984).....................................................§ 528.04

Parker Brothers v. Tuxedo Monopoly, Inc., appeal dismissed, 757 F.2d 254, 

Pass & Seymour, Inc. v. Syrelec, 224 USPQ 845 (TTAB 1984).................................................. §§ 703.01(i); 704.07;

Patent & Trademark Services Inc., In re, 49 USPQ2d 1537 (TTAB 1998).................................. §§ 1208.01; 1208.04

Table of Authorities - 730 
TABLE OF AUTHORITIES 

Pebble Beach Co., In re, 19 USPQ2d 1687 (TTAB 1991)...................................................................................§ 1214

Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040 (TTAB 1985)........................... §§ 309.03(d); 503.04; 

 504.03; 507.02; 510.03(a); 528.03

313.01; 408.03; 507.02(a); 533.02; 703.01(e)

 215 USPQ 1133 (TTAB 1982)................................................................................................§§ 512.01; 1103.01(e)

Pennzoil Products Co., In re, 20 USPQ2d 1753 (TTAB 1991)...................................... §§ 1207.01; 1207.02; 1207.03 

Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985)..................................................§ 514.03

Permatex Co. v. California Tube Products, Inc., 175 USPQ 764 (TTAB 1972)....................................................§ 317 

Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990).......................... §§ 102.01; 307.02(a); 

 901.02(a); 1108 

Petersen Manufacturing Co., In re, 2 USPQ2d 2032 (TTAB 1987)....................................................................§ 1214

Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172 (TTAB 1986)................... §§ 530; 704.13 

Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) ..........§ 704.03(b)(1)(A) 

Phillips-Van Heusen Corp., In re, 228 USPQ 949 (TTAB 1986) ........................§§ 704.03(b)(1)(A); 704.03(b)(1)(B) 

Pierce Foods Corp. v. Mountain Mamma, Inc., 183 USPQ 380 (TTAB 1974) ................................................§ 534.02

Pillsbury Co., In re, 174 USPQ 318 (TTAB 1972) ..............................................................................................§ 1208

Plak-Shack, Inc. v. Continental Studios of Georgia, Inc., 204 USPQ 242 (TTAB 1979) ..................§ 704.03(b)(1)(A) 

Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 1981), 

Pencils Inc., In re, 9 USPQ2d 1410 (TTAB 1988)..........................................................................................§ 1207.03 

Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998)....................§§ 309.03(c)A; 309.03(d); 311.02(b); 

Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 

Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542 (TTAB 1983)...................................................... § 309.03(c) 

Penthouse International Ltd. v. Dyn Electronics, Inc., 184 USPQ 117 (TTAB 1974)......................................§ 523.02

Perfect Film & Chemical Corp. v. Society Ordinastral, 172 USPQ 696 (TTAB 1972)....................................§ 534.02

Perfect Fit Industries, Inc., In re, 223 USPQ 92 (TTAB 1984) ...........................................................................§ 1214

Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134 (TTAB 1992)................... §§ 314; 512.02;

 512.08; 528.07(a)

Perry Manufacturing Co, In re., 12 USPQ2d 1751 (TTAB 1989)..................................................................§ 1208.04 

Personnel Data Systems Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863

 (TTAB 1991).............................................................................................................................§§ 311.02(b); 514.03

 309.03(a)(2); 414(13);

Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983) .......................................................................................§ 528.05(a) 

Peters Sportswear Co. v. Peter's Bag Corp., 187 USPQ 647 (TTAB 1975)......................................§ 704.03(b)(1)(A) 

Peterson Manufacturing Co., In re, 229 USPQ 466 (TTAB 1986) .....................................................................§ 1208

Peterson's Ltd. v. Consolidated Cigar Corp., 183 USPQ 559 (TTAB 1974)....................................................§ 504.01

Petite Suites, In re, 21 USPQ2d 1708 (Comm’r 1991) ........................................................................................§ 1218

Pfaltzgraf v. William Davies Co. Inc., 175 USPQ 620 (TTAB 1972)...............................................................§ 534.02

Philip Morris Inc. v. Liggett & Myers Tobacco Co., 139 USPQ 240 (TTAB 1963)..........................§ 704.03(b)(1)(A) 

Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) ................................§ 704.04

Phillips-Van Heusen Corp., In re, 63 USPQ2d 1047 (TTAB 2002) ................................................. §§ 1208.02; 1218

Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057 (TTAB 2000) ...................................§§ 309.03(c); 507.02

Pierce Foods Corp., In re, 230 USPQ 307 (TTAB 1986)............................................................. §§ 1201.02; 1205.01

Pierre Fabre S.A., In re, 221 USPQ 1210 (TTAB 1984) ................................................................................§ 1207.01 

Pingel Enterprise Inc., In re, 46 USPQ2d 1811 (TTAB 1998) ............................................................................§ 1208

Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989)............. §§ 704.12(a); 1101.01; 1103.01(d)(2)

Pioneer Investment Services Company v. Brunswick Associates Ltd. 

 Partnership, 507 U.S. 380 (1993) ........................................................................................§§ 509.01(b)(1); 534.02

Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022 (TTAB 1983)......................................§ 1103.02 

Plus Products v. Con-Stan Industries, Inc., 221 USPQ 1071 (Comm'r 1984)...................................................§ 114.08

Plus Products v. Don Hall Laboratories, 191 USPQ 584 (TTAB 1976) .......................................... §§ 704.09; 704.10

Plus Products v. General Mills, Inc., 188 USPQ 520 (TTAB 1975)......................................................................§ 706 

 set aside on other grounds and new decision entered, 217 USPQ 464 (TTAB 1983) ....................... §§ 511; 802.04 

Table of Authorities - 731 
TABLE OF AUTHORITIES 

Plus Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979)........................................ §§ 704.03(b)(1)(A);

 704.05(b); 704.07; 704.08; 704.10

Plus Products v. Sterling Food Co., 188 USPQ 586 (TTAB 1975) .............................................§§ 704.10; 704.12(a)

Polaroid Corp. v. Opto Specs, Ltd., 181 USPQ 542 (TTAB 1974)...................................................................§ 414(7)

Polyjohn Enterprises Corp. v. 1-800-Toilets Inc., 61 USPQ2d 1860 (TTAB 2002)................. §§ 403.04; 534.02; 701

Primal Feeling Center of New England, Inc. v. Janov, 201 USPQ 44 (TTAB 1978) .................................. § 707.03(c) 

Proctor & Gamble Co. v. Keystone Automotive Warehouse, Inc., 191 USPQ 468

Proctor & Gamble Co. v. Sentry Chemical Co., 22 USPQ2d 1589 (TTAB 1992) ......................................§ 901.02(a) 

 513.01; 514.03; 1103.01(d)(1); 1103.01(d)(2);

 61 USPQ2d 1542 (TTAB 2001)...............................................................................................§§ 509.01(a) ; 534.02

 205 USPQ 368 (TTAB 1979)...................................................................................................................§ 510.02(a) 

 aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984) ................................................................... §§ 503.03; 528.01; 

Pyco, Inc. v. Pico Corp., 165 USPQ 221 (TTAB 1969)...................................................§§ 206.03; 303.05(c); 512.04 

-Q- 

 704.08; 707.02(b)(1); 901.02(a)

Plus Products v. Physicians Formula Cosmetics, Inc., 198 USPQ 111 (TTAB 1978) ..................... §§ 539; 704.06(b)

Plus Products v. Redken Laboratories, Inc., 199 USPQ 111 (TTAB 1978) ................................................§ 704.05(b) 

Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999) ............................... §§ 528.05(e); 704.08

Pohn, In re, 3 USPQ2d 1700 (Comm'r 1987)....................................................................................... §§ 215; 1209.03

Polaris Industries v. DC Comics, 59 USPQ2d 1789 (TTAB 2001) ..................................................................§ 507.02

Polo International Inc, In re., 51 USPQ2d 1061 (TTAB 1999)...............................§§ 101.03; 1203.02(e); 1203.02(f)

Pony International Inc., In re, 1 USPQ2d 1076 (Comm'r 1986).....................................................................§ 1201.05 

Posthuma, In re, 45 USPQ2d 2011 (TTAB 1998)...........................................................................................§ 1207.01

Pratt v. Philbrook, 109 F.3d 18 (1st Cir. 1997)........................................................................................ § 509.01(b)(1)

PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318 (TTAB 1971)................................... §§ 404.03(a)(2); 

 703.01(f)(2)

Precision Tune Inc. v. Precision Auto-Tune Inc., 4 USPQ2d 1095 (TTAB 1987).......................... §§ 603; 1107; 1110

Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988) ........................................ § 527.01(e) 

Proctor & Gamble Co. v. Johnson & Johnson Inc., 485 F. Supp. 1185, 

 205 USPQ 697 (S.D.N.Y. 1979), aff'd without opinion, 636 F.2d 1203 (2d Cir. 1980)................................§ 534.02

 (TTAB 1976) ..............................................................................................................................§ 523.04; 527.01(e)

Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993)............................... §§ 510.03(b); 512.01;

 1104; 1107; 1108; 1113.01

Procyon Pharmaceuticals Inc. v. Procyon Biopharma Inc., 

Professional Economics Incorporated v. Professional Economic Services, Inc., 

Professional Learning Centers, Inc., In re, 230 USPQ 70 (TTAB 1986) ............................................................§ 1215

Pro-Football Inc. v. Harjo, 57 USPQ2d 1140 (D.D.C. 2000)........................................................... §§ 903.03; 906.01

Psygnosis Ltd, In re., 51 USPQ2d 1594 (TTAB 1999) ........................................§§ 1203.01; 1204; 1207.01; 1208.01

Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997)...............................................§§ 509.01(b)(1); 701

Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151 (TTAB 1983), 

 704.03(b)(1)(B) 

Pyttronic Industries Inc. v. Terk Technologies Corp., 16 USPQ2d 2055 

 (TTAB 1990)...........................................................................................................§§ 313.01; 405.03(d); 405.03(e)

Quaker Oats Co. v. Acme Feed Mills, Inc., 192 USPQ 653 

 (TTAB 1976)...........................................................................................................§§ 704.07; 704.12(a); 707.02(b)

Quality S. Manufacturing Inc. v. Tork Lift Central Welding of Kent Inc., 

 60 USPQ2d 1703 (Comm’r 2000)........................................................................................................... §§ 216; 905

Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358

 (TTAB 1978), aff'd, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979)........................................ §§ 407.03(a); 704.07; 

Table of Authorities - 732 
TABLE OF AUTHORITIES 

-RR.G. Barry Corp. v. Mushroom Makers, Inc., 609 F.2d 1002, 204 USPQ 195 (CCPA 1979) .....................§ 901.02(a) 

 (TTAB 1985) ................................................................................................................................................§ 704.08

 528.05(e); 704.03(b)(1)(B);

Remacle, In re, 66 USPQ2d 1222 (TTAB 2002)...............................................................................................§ 704.08

 136 USPQ 447 (CCPA 1963).............................................................................................................................§ 317 

Rite Aid Corp. v. Rite-Way Discount Corp., 182 USPQ 698 (TTAB 1974), aff'd, 

Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009 

 311.02(b); 707.03(d)

R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169 

Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) ...................................... §§ 313.02; 528.05(a); 528.05(d);

 704.07; 704.08 

Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning 

 Co., 226 USPQ 718 (TTAB 1985) ................................................................................... §§ 502.02; 504.01; 528.02

Raker Paint Factory v. United Lacquer Mfg. Corp., 141 USPQ 407

 (TTAB 1964).................................................................................................................................. §§ 206.03; 512.04

Randall & Hustedt, In re, 226 USPQ 1031 (TTAB 1985) ......................................................................... § 1203.02(c)

Ratny, In re, 24 USPQ2d 1713 (Comm'r 1992)....................................................................................................§ 1002

Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000)................................................§ 906.01

Red Carpet Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d 1404 (TTAB 1988) ...........§ 704.03(b)(1)(B) 

Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861 (TTAB 2001).............................................. §§ 402.02; 404.05;

 404.08(a); 410; 414(9)

Reflange Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990)........................§§ 309.03(d); 311.02((b); 314; 

 507.03(b); 514.03; 703.03(c);

 707.04; 802.07 

Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840 (TTAB 1977) .................................. § 527.01(e) 

Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991) ................................... §§ 312.03; 511; 543

Regent Standard Forms, Inc. v. Textron Inc., 172 USPQ 379 (TTAB 1971)....................................................§ 704.07

Republic Steel Co. v. M.P.H. Manufacturing Corp., 312 F.2d 940, 

Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48 (TTAB 1971)................................................... §§ 309.03(a)(2);

 309.03(c)B; 311.02(b) 

Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372 

 (TTAB 1978).............................................................................................................. §§ 403.01; 404.01; 404.03(b); 

 404.03(d); 404.09; 521

Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883 

 (TTAB 1993)................................................................................................................................ §§ 314; 507.03(b);

 704.03(b)(1)(B); 704.07; 704.10

Riddle, In re, 225 USPQ 630 (TTAB 1985)....................................................................................................§ 1201.04 

Ritchie v. Simpson, 41 USPQ2d 1859 (TTAB 1996), rev’d on 

 other grounds, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999)..................... §§ 303.03; 309.03(b); 503.02; 511

 508 F.2d 828, 184 USPQ 351 (CCPA 1975)............................................................................................§ 528.05(b) 

Roberts Proprietaries, Inc. v. Rumby International, Inc., 212 USPQ 302 (TTAB 1981) .................................§ 101.03

Rogers Corp. v. Fields Plastics & Chemicals, Inc., 172 USPQ 377 (TTAB 1972)................................. § 707.02(b)(2)

Rolex Watch U.S.A., Inc. v. Madison Watch Co., Inc., 211 USPQ 352 

 (TTAB 1981).......................................................................................................................... §§ 206.02; 309.03(c)A

 (TTAB 2002).............................................................................................................................§§ 502.02(b); 528.06

Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492 (Comm'r 1978).....................................................§ 802.04

Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999)..........................................§§ 102.01; 309.03(c);

Table of Authorities - 733 
TABLE OF AUTHORITIES 

Rosso & Mastracco, Inc. v. Giant Food Inc., 720 F.2d 1263, 219 USPQ 1050 

 (Fed. Cir. 1983) ........................................................................................................§§ 303.03; 1101.02; 1103.01(e)

Royal Viking Line A/S, In re, 216 USPQ 795 (TTAB 1982) ......................................................... §§ 1207.01; 1207.02

-SS. C. Johnson & Son, Inc. v. GAF Corp., 177 USPQ 720 (TTAB 1973)...........................................................§ 506.01

S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293 (TTAB 1997) ...................§§ 110.01; 404.08(a); 511; 521;

 (TTAB 1983)....................................................................................................................................................§ 1214

Sarkli, Ltd., In re, 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983)............................................................... § 704.12(c) 

 306.04; 906.02

 (Fed. Cir. 2001) .........................................................................................................................§§ 309.03(c); 906.01

 1103.01(e)

SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994) ................................................ §§ 106.03; 206.01;

Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289

Seculus da Amazonia S/S v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154

Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 

Rowell Laboratories, Inc. v. Canada Packers Inc., 215 USPQ 523 (TTAB 1982)................................. § 509.01(b)(2)

Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc., 

 204 USPQ 144 (TTAB 1979).........................................................................................................§ 704.03(b)(1)(A) 

S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221 (TTAB 1987)...................... §§ 313.04; 528.04; 512.01

S. D. Fabrics, Inc., In re, 223 USPQ 56 (TTAB 1984) ........................................................................................§ 1218

 523.01; 528.07(a); 544

S. Rudofker's Sons, Inc. v. "42" Products, Ltd., 161 USPQ 499 (TTAB 1969)............... §§ 404.09; 411.03; 707.03(d) 

S. S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ 124 (TTAB 1973)...................................................§ 703.01(n) 

Safeway Stores, Inc. v. Captn's Pick, Inc., 203 USPQ 1025 (TTAB 1979).......................................................§ 704.10

Saint-Gobain Abrasives, Inc. v. Unova Industrial Automation Systems, Inc., 

 66 USPQ2d 1355 (TTAB 2003)........................................................................................... §§ 309.03(c); 311.02(b)

Sambado & Son Inc., In re, 45 USPQ2d 1312 (TTAB 1997)..........................................................................§ 1201.05 

San Diego National League Baseball Club, Inc., In re, 224 USPQ 1067

Sandberg & Sikorski Diamond Corp., In re, 42 USPQ2d 1544 (TTAB 1996) ..............§§ 1209.01; 1214; 1215; 1217

Sasson Licensing Corp, In re., 35 USPQ2d 1510 (Comm’r 1995)................................................... §§ 202.01; 202.04;

Save Venice New York Inc., In re, 259 F.3d 1346, 59 USPQ2d 1778

SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411 (TTAB 1975), 

 appeal dismissed, 189 USPQ 15 (CCPA 1976)................................................................ §§ 309.03(c)A; 510.02(a);

Scotch Whiskey Assn v. United States Distilled Products., see The Scotch Whiskey Assn v. United States Distilled 

Products 

 206.02; 303.05(a); 303.05(b); 303.06;

 308.03; 510.03(a); 512.01

 (CCPA 1977)..................................................................................................................................§ 704.03(b)(1)(B) 

Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975) .............................................§§ 311.02(b); 313.01

Seaman & Associates Inc., In re, 1 USPQ2d 1657 (TTAB 1986)........................................................................§ 1215

 (TTAB 2003)...................................................................................................... §§ 309.03(c); 309.03(d); 502.02(b)

See's Candy Shops Inc. v. Campbell Soup Co., 12 USPQ2d 1395 (TTAB 1989)............................. §§ 313.04; 507.02; 

 507.02(b)

Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271 (CCPA 1978).................................§ 1101.02 

Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720 (TTAB 1984) ......§§ 523.04; 527.01(e); 707.03(d)

 (Fed. Cir. 1983) .......................................................................................................... §§ 102.01; 303.03(b); 309.03;

 503.04; 504.03; 528.02

Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666 (TTAB 1986)..................................... §§ 402.01; 408.01; 523.02

Table of Authorities - 734 
TABLE OF AUTHORITIES 

SFW Licensing Corp. and Shoppers Food Warehouse Corp. v. 

 Di Pardo Packing Limited, 60 USPQ2d 1372 (TTAB 2001)......................................§§ 509.01(a); 513.01; 534.02 

Sheller-Globe Co. v. Scott Paper Co., 204 USPQ 329 (TTAB 1979)................................................§ 704.03(b)(1)(A) 

Sinclair Manufacturing Co. v. Les Parfums de Dana, Inc., 191 USPQ 292 (TTAB 1976)................§ 704.03(b)(1)(A) 

Slack, In re, 54 USPQ2d 1504 (Comm’r 2000).................................................................................................§ 513.01

 (TTAB 1990)...................................................................................................................... §§ 309.03(b); 311.02(b);

Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. 

Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 

 207.02 ; 207.03 ; 208 ; 209.02

 Southern District of Iowa, 482 U.S. 522 (1987)...................................................................................§ 404.03(c)(2)

Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) ......................................... §§ 309.03(d); 311.02(b);

Specialty Brands Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 

Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1990).....................................................§ 704.09

Spraying Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181

Springs Industries, Inc. v. Bumblebee Di Stefano Ottina & C.S.A.S., 222 USPQ 512 

Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).................... §§ 309.03(c)A; 528.05(b)

Shiva Corp., In re, 48 USPQ2d 1957 (TTAB 1998) .......................................................................................§ 1208.01 

Shoe Factory Supplies Co. v. Thermal Engineering Co., 207 USPQ 517 (TTAB 1980) ............................. § 527.01(e) 

Simulations Publications, Inc., In re, 521 F.2d 797, 187 USPQ 147 (CCPA 1975).....................................§ 704.06(b) 

Sky is the Ltd., In re,, 42 USPQ2d 1799 (Comm’r Pats. 1996)..........................................................................§ 118.04

Smith and Mehaffey, In re, 31 USPQ2d 1531 (TTAB 1994)..............................................................§ 704.03(b)(1)(B) 

Smith International, Inc. v. Olin Corp., 201 USPQ 250 (TTAB 1978)................................................. §§ 401; 403.01;

 404.01; 404.09; 406.01

Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815

 313.01; 514.03 

 Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383 (TTAB 2001) ...............................................§§ 509.01(a);

 523.03; 523.04; 534.02 

Societe Anomyme Marne et Champagne v. Myers, 250 F.2d 374, 

 116 USPQ 153 (CCPA 1975) ....................................................................................................... § 704.03(b)(1)(A)

Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 

 10 USPQ2d 1241 (TTAB 1989)...............................................................................................................§ 528.07(a) 

 24 USPQ2d 1079 (TTAB 1992)............................................................................§§ 117.01 ; 218 ; 512.01 ; 602.01

Societe des Produits Nestle S.A., In re, 17 USPQ2d 1093 (Comm'r 1990) ................................. §§ 202.01; 203.02(b);

Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784 (TTAB 2003) ........................................§ 1218

Societe Nationale Industrielle Aerospatiale v. U.S. District Court for the 

Software Development Systems, Inc., In re, 17 USPQ2d 1094 (Comm'r 1989) .............. §§ 203.02(b); 207.02; 207.03 

Sotheby's Inc., In re, 18 USPQ2d 1969 (Comm'r 1989).........................................................................................§ 544 

Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566 (TTAB 1977) ....................................§ 704.11

Sovran Financial Corp., In re, 25 USPQ2d 1537 (Comm'r 1992)...................................................... §§ 104; 123; 219

Spa International, Inc. v. European Health Spa, Inc., 184 USPQ 747 (TTAB 1975).......................................§ 523.01

 503.02; 507.02; 507.02(a);

 514.03; 527.02 

Spang Industries, Inc, In re., 225 USPQ 888 (Comm'r 1985)..................................................... §§ 203.02(b); 206.02;

 207.02; 207.03; 208

 223 USPQ 1281 (Fed. Cir. 1984) .............................................................................................§§ 704.03(a); 704.04

Spectra Corp. v. Lutz, 839 F.2d 1579, 5 USPQ2d 1867 (Fed. Cir. 1988) .........................................................§ 528.06

Spice Islands, Inc. v. Frank Tea and Spice Co., 505 F.2d 1293, 184 USPQ 35 (CCPA 1974) ..........§ 704.03(b)(1)(B) 

Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2001)........... §§ 309.03(c)B; 414(9);

 702; 703.01(j)

Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88 (TTAB 1980).........................§§ 704.12(a); 704.12(b) 

 (7th Cir. 1992) ............................................................................................................................... §§ 901.01; 906.01

 (TTAB 1984).................................................................................................................................................§ 503.02

Table of Authorities - 735 
TABLE OF AUTHORITIES 

St. Louis Janitor Supply Co. v. Abso-Clean Chemical Co., 196 USPQ 778 

Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341 (TTAB 1978), 

Standard Brands Inc. v. Peters, 191 USPQ 168 (TTAB 1975)..............................................................................§ 314 

State Historical Society of Wisconsin v. Ringling Bros.-Barnum & Bailey 

Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 

Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649 (CCPA 1975).................................................§ 414(11)

 aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)................................................................ §§ 502.01; 1101.02

Styleclick.com Inc., In re, 57 USPQ2d 1445 (TTAB 2000)....................................................... §§ 1203.02(e); 1208.04

Su Wung Chong, In re, 20 USPQ2d 1399 (Comm'r 1991)...................................... §§ 203.02(b); 207.02; 207.03; 208 

Sunbeam Corp. v. Duro Metal Products Co., 106 USPQ 385 (Comm'r 1955)......................... §§ 307.02(c)(1); 313.03

Sunkist Growers, Inc. v. Benjamin Ansehl Company, 229 USPQ 147 (TTAB 1985)...........§§ 404.02; 414(2); 414(3);

Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322, 

Sunway Fruit Products, Inc. v. Productos Caseros, S. A., 130 USPQ 33

Super Valu Stores v. Exxon Corp., 11 USPQ2d 1539 (TTAB 1989) .......................................................... § 527.01(e)

-TTampa Rico Inc. v. Puros Indios Cigars Inc., 56 USPQ2d 1382 (TTAB 2000)...................... §§ 703.01(h); 703.01(i);

Taylor & Francis [Publishers] Inc., In re, 55 USPQ2d 1213 (TTAB 2000) ....................................... §§ 541.01; 1216

 (TTAB 1977)....................................................................................................................................... § 704.03(b)(2)

 aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982) ............................................................ §§ 701; 704.03(b)(1)(A)

Stanspec Co. v. American Chain & Cable Company, Inc., 531 F.2d 563, 

 189 USPQ 420 (CCPA 1976)..............................................................................§§ 307.02(c)(1); 503.02; 901.02(a)

 Combined Shows, Inc., 190 USPQ 25 (TTAB 1976)......................................................................§ 704.03(b)(1)(A) 

 different results reached on reh'g, 3 USPQ2d 1708 (TTAB 1984).................§§ 404.08(a); 543; 703.01(e); 704.10

Stenographic Machines, Inc., In re, 199 USPQ 313 (Comm'r 1978) ..............................................................§ 1201.05 

Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52 (TTAB 1983), 

Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990)....................... §§ 112; 307.02(a); 307.02(b); 528.06

Styleclick.com, In re, 58 USPQ2d 1523 (TTAB 2001) ...................................................................................§ 1208.04 

Sun Refining and Marketing Co., In re, 23 USPQ2d 1072 (TTAB 1991).............................. §§ 605.03(d); 1103.01(e)

Sunbeam Corp. v. Battle Creek Equipment Co., 216 USPQ 1101 (TTAB 1982)..............................................§ 704.04

Sunkist Growers, Inc. v. Benjamin Ansehl Company, 221 USPQ 1077 (Comm'r 1984) ...................................§ 114.08

 414(11); 414(18); 509.01(a); 527.01(e) 

Sunnen Products Co. v. Sunex International Inc., 1 USPQ2d 1744 (TTAB 1987) ............................§ 704.03(b)(1)(A) 

 50 USPQ2d 1532 (Fed. Cir. 1999) ...............................................................................§§ 309.03(c); 601.02; 906.01 

 (Comm'r 1960)...............................................................................................................................................§ 313.02

Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793

 (Fed. Cir. 1987) ........................................................................................................... §§ 528.01; 528.05(b); 528.06 

Syndicat de la Parfumerie Francaise v. Scaglia, 173 USPQ 383 (TTAB 1972)...............................................§ 503.02

Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879 (TTAB 1990)...................... §§ 309.03(b); 313.03; 

 534.03 ; 606

Syosset Laboratories, Inc. v. TI Pharmaceuticals, 216 USPQ 330 (TTAB 1982) ....................... §§ 312.03 ; 317 ; 544

T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996).............. §§ 309.03(c)A ; 528.01

Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154 (TTAB 1975)..........................§§ 309.03(a)(2); 309.03(c)B; 

311.02(b); 311.02(c); 314

Tamarkin Co. v. Seaway Food Town Inc., see The Tamarkin Co. v. Seaway Food Town Inc. 

 703.01(j); 707.03(c)

Taverniti, SARL, In re, 225 USPQ 1263 (TTAB 1985)........................................................................................§ 1218

Taverniti, SARL, In re, 228 USPQ 975 (TTAB 1985)..........................................................................................§ 1218

Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412 (TTAB 1986)...........................§§ 528.05(b); 528.06

Table of Authorities - 736 
TABLE OF AUTHORITIES 

TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989) ................................................ §§ 311.02(b); 313.04; 

Tennessee Walking Horse Breeders' and Exhibitors' Ass'n, In re, 

Texas Instruments Inc. v. Conklin Instrument Corp., 161 USPQ 740 (TTAB 1969) ...................................§ 309.02(b) 

Textron, Inc. v. Arctic Enterprises, Inc., 178 USPQ 315 (TTAB 1973)............................................................§ 704.04

The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc. , 

 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991) .............................................................§§ 102.01; 309.03(a)(2);

The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587 (TTAB 1995)............................. §§ 301; 510.02(a); 

Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835 (TTAB 1989)........................................§ 703.01(h) 

Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002)...........................§§ 309.03(b); 309.03(c); 

Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975), 

Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001)....................................................................... § 309.03(c) 

 502.03; 507.02(b)

TBC Corp. v. Grand Prix Ltd., 16 USPQ2d 1399 (TTAB 1990) ................................................................... § 414(11)

Techex, Ltd. v. Dvorkovitz, 220 USPQ 81 (TTAB 1983) ............................................................................§ 793.01(m) 

Techsonic Industries, Inc., In re, 216 USPQ 619 (TTAB 1982) ....................................................... §§ 206.03; 512.04

Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 

 534 F.2d 915, 189 USPQ 693 (CCPA 1976)............................................................................§§ 509.01(b)(2); 539;

 704.03(b)(1)(B); 704.05(b)

Tektronix Inc. v. Tek Associates, Inc., 183 USPQ 623 (TTAB 1974) .............................................. §§ 402.01; 408.01

Tel-E-Gift Corp. v. Teleflora Inc., 193 USPQ 254 (TTAB 1976) .....................................................................§ 534.02

 223 USPQ 188 (TTAB 1984)............................................................................§§ 1203.02(b); 1203.02(d); 1209.01

Terrific Promotions Inc. v. Vantex Inc., 36 USPQ2d 1349 (TTAB 1995)...........................§§ 1101.01; 1103.01(d)(2);

 1108; 1113.01 

Tetrafluor Inc., In re, 17 USPQ2d 1160 (Comm'r 1990).................................................................................§ 1201.05 

Texsun Tire and Battery Stores, Inc., In re, 229 USPQ 227 (TTAB 1986).....................................................§ 1209.02 

Textron, Inc. v. Gillette Co., 177 USPQ 530 (Comm'r 1973)............................................................................§ 512.04

Textron, Inc. v. Gillette Co., 180 USPQ 152 (TTAB 1973) ..........................................................§§ 311.02(d); 506.01

The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996) ............................................... §§ 106.02; 527.02;

 528.01; 528.08

The Du Pont Merck Pharmaceutical Co., In re, 34 USPQ2d 1778 (Comm’r 1995).......................................§ 1201.05 

The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720

 (Fed. Cir. 2001) ..............................................................................................................................§§ 309.03(c); 314 

The Nestle Company Inc. v. Nash-Finch Co., 4 USPQ2d 1085 (TTAB 1987)..................................................§ 309.03

 191 USPQ 468 (TTAB 1976)........................................................................................................................§ 414(2)

The Scotch Whiskey Association v. United States Distilled Products Co., 

 13 USPQ2d 1711 (TTAB 1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990)

 dismissed,18 USPQ2d 1391 (TTAB 1991), rev'd on other grounds, 

 502.03; 504.02

 510.03(a); 510.03(b);

 1103.01(b); 1103.01(d)(3)

Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330 (TTAB 1980)...................................§§ 1103.01(d)(2); 1105

Thrifty Corp. v. Bomax Enterprises, 228 USPQ 62 (TTAB 1985)................................................§§ 311.02(a); 527.03

Tiffany & Co. v. Columbia Industries, Inc., 455 F.2d 582, 173 USPQ 6 (CCPA 1972)......................§704.03(b)(1)(A)

Tilcon Warren, Inc., In re, 221 USPQ 86 (TTAB 1984)....................................................................§ 704.03(b)(1)(A) 

 309.03(c)B; 414(7); 507.03(b);

 523.04; 701; 704.03(b)(1)(A)

Times Mirror Magazines, Inc. v. Sutcliff, 205 USPQ 656 (TTAB 1979) .....................................................§ 704.06(a) 

Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB 1973).................................................§§ 206.02; 510.02(a)

Tong Yang Cement Corp., In re, 19 USPQ2d 1689 (TTAB 1991)..............................§§ 309.03(b); 303.05(c); 512.04

Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857 (TTAB 1986) ................................... §§ 309.03(b); 512.01; 528.08 

 rev'd on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977)......................................................§ 510.02(a) 

Total Quality Group Inc., In re, 51 USPQ2d 1474 (TTAB 1999)..............................§§ 528.05(e); 704.08; 704.12(a); 

 1208.02; 1208.03; 1208.04

Table of Authorities - 737 
TABLE OF AUTHORITIES 

Towers, Perrin, Forster & Crosby Inc. v. Circle Consulting Group Inc., 

Tudor Square Sportswear Inc. v. Pop-Op Corp., 160 USPQ 50 (TTAB 1968) ..................................................§ 1004

-UU.S. Cargo Inc., In re, 49 USPQ2d 1702 (TTAB 1998) ......................................... §§ 704.12(a); 1203.02(e); 1208.04

 (Comm'r 1974)..............................................................................................................§§ 206.03; 303.05(c); 512.04 

UMC Industries, Inc. v. UMC Electronics Co., 207 USPQ 861 (TTAB 1980)........................ §§ 307.02(c)(1); 313.03

Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB 1983)................................................................. §§ 406.03; 522 

Unitec Industries, Inc. v. Cumberland Corp., 176 USPQ 62 (TTAB 1972).......................................§ 704.03(b)(1)(A) 

United Foods Inc. v. United Air Lines Inc., 33 USPQ2d 1542 (TTAB 1994)........................................ §§ 537; 801.03 

United States National Bank of Oregon v. Midwest Savings and Loan Ass'n, 

United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221 

 528.03; 528.07(a) 

United States Plywood Corp. v. Modiglass Fibers, Inc., 125 USPQ 144 (TTAB 1960)......................... § 509.01(b)(2)

 (TTAB 1986)......................................................................................................................... § 314; 704.03(b)(1)(A) 

Universal Oil Products. Co. v. Rexall Drug and Chemical. Co., 463 F.2d 1122, 

 16 USPQ2d 1398 (TTAB 1990).....................................................................................................§§ 405.03(e); 519 

Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990) .........................................§ 906.01

Trademark Registration of Mc Lachlan Touch Inc., In re, 6 USPQ2d 1395 

 (Comm'r 1987)....................................................................................................................................................§ 216 

Trans Continental Records Inc, In re, 62 USPQ2d 1541 (TTAB 2002) ....................................... §§ 1207.01; 1208.01

Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748 

 (TTAB 1978)..................................................................................................................................§§ 311.02(c); 314 

Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318 (TTAB 1990)................................... §§ 309.03(c); 311.02(b)

Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540 (TTAB 2001)............................§§ 503.03; 507.02; 507.02(a) 

Triumph Machinery Co. v. Kentmaster Manufacturing Co., 1 USPQ2d 1826 (TTAB 1987)...........................§ 704.10

Turner Entertainment Co. v. Ken Nelson, 38 USPQ2d 1942 (TTAB 1996).................................................§ 311.02(a) 

Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB 1999)..............................................................§ 311.02(b) 

U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254 

 (TTAB 1987)............................................................................................................§§ 303.02; 537; 541.02; 802.05

U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613

U.S. Soil, Inc. v. Colovic, 214 USPQ 471 (TTAB 1982)......................................................................................§ 1112

U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307 (TTAB 1990)................................................. §§ 704.07; 704.08

Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 

 49 USPQ2d 1313 (TTAB 1998).....................................................................................................§ 704.03(b)(1)(A) 

Uncle Ben’s Inc. v. Studenberg International Inc., 47 USPQ2d 1310 (TTAB 1998)...................................§ 704.03(a) 

Unico American Corp. v. Unico Banking Group, 223 USPQ 684 (Comm'r 1984) ...........................................§ 114.08

Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB 1984) .............................................................................§ 408.01

United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172 (TTAB 1987)..............................................§ 704.03(b)(1)(B) 

United Rum Merchants Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988)...............................§ 602.02(b) 

United Rum Merchants Ltd. v. Fregal, Inc., 216 USPQ 217 (TTAB 1982)..................................§§ 707.03(c); 707.04

United States Mineral Products Co. v. GAF Corp., 197 USPQ 301 (TTAB 1977) ...........................§§ 311.02(c); 314 

 194 USPQ 232 (TTAB 1977)...............................................................................................§§ 704.12(a); 704.12(b) 

United States Olympic Committee v. Bata Shoe Co., 225 USPQ 340 (TTAB 1984)........... §§ 311.02(c); 314; 601.01;

 601.02; 602.01; 605.03(e)

 (TTAB 1993)........................................................................................................................... §§ 507.02; 507.02(a);

United States Olympic Committee v. O-M Bread Inc., 29 USPQ2d 1555 (TTAB 1993)..................................§ 528.01

United States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815

United States v. Boyle, 469 U.S. 241 (1985) ........................................................................................... § 509.01(b)(1)

 174 USPQ 458 (CCPA 1972)...................................................................................................................§ 303.03(b) 

Table of Authorities - 738 
TABLE OF AUTHORITIES 

University Book Store v. University of Wisconsin Board of Regents, 

 33 USPQ2d 1385 (TTAB 1994)................................................................................................§§ 309.03(c); 528.01

 

Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 

Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 

 414(3); 414(4); 414(11); 414(18); 523.02

Vaughn Russell Candy Co. and Toymax Inc. v. Cookies In Bloom, Inc., 

 528.07(a); 605.03(d) 

Visa International Service Assn v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983)..............................§ 528.08

 313.04; 507.02(b)

Vita-Pakt Citrus Products Co. v. Cerro, 195 USPQ 78 (TTAB 1977)...............................................§ 704.03(b)(1)(A) 

Volkswagenwerk Aktiengesellschaft v. MTD Products Inc., 

Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 USPQ2d 1264 (1st Cir. 1987)........................§ 1211

Volvo White Truck Corp., In re, 16 USPQ2d 1417 (TTAB 1990)...................................................................§ 1207.01 

 5 USPQ2d 1376 (TTAB 1986)......................................................................................... §§ 504.01; 528.01; 528.02

-WW.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313 (TTAB 1965), 

W.R.. Grace & Co. v. Arizona Feeds, 195 USPQ 670 (Comm'r 1977) ........................... §§ 311.02(b); 506.01; 507.02 

University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 

 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 

 217 USPQ 505 (Fed. Cir. 1983) ............................................................................§§ 704.12(a); 707.03(d); 1208.04 

Urbano, In re, 51 USPQ2d 1776 (TTAB 1999)....................................§§ 1207.03; 1207.06; 1208; 1208.01; 1209.03

-V- 

(Fed. Cir. 2002).........................................................................................................................§§ 309.03(c); 906.01

Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346 (TTAB 1974)...........................................§§ 402.02; 414(2)

 (Fed. Cir. 1991) .............................................................................................................................................§ 507.02

Variable Speech Control Co., In re, 209 USPQ 431 (TTAB 1980) ................................................................§ 1201.04 

Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975) .......................§§ 402.02; 402.02; 408.01; 

 47 USPQ2d 1635 (TTAB 1998)................................................................................................... §§ 514.01; 514.02;

Vesper Corp., In re, 8 USPQ2d 1788 (Comm’r 1988) ............................................................................. §§ 807; 1218

Virshup, In re, 42 USPQ2d 1403 (TTAB 1997)..............................................................................................§ 1201.03 

Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980)........................... § 527.01(e) 

Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989)............. §§ 311.02(b); 313.01;

Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979)...........§§ 523.04; 527.01(e);

 704.03(b)(1)(A); 707.03(c); 707.04

 181 USPQ 471 (TTAB 1974).......................................................................................§§ 414(4); 414(12); 414(14); 

 414(16); 414(18); 414(19)

Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 188 USPQ 690 (TTAB 1975) ....... §§ 410; 524.01; 527.01(d)

Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 410 (TTAB 1979) ........................ §§ 543; 704.08 

Volkswagenwerk Aktiengesellschaft v. Thermo-Chem Corp., 176 USPQ 493 (TTAB 1973) .........................§ 414(11)

Volvo Care of North America, In re, 46 USPQ2d 1455 (TTAB 1998) ..........................................................§ 1208.02 

Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 

Vycom Electronics Ltd., In re, 21 USPQ2d 1799 (Comm'r 1986)........................................................... §§ 1213; 1218 

 aff’d, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) ................................................................................§ 311.02(b) 

W.R.. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 

 (TTAB 1976)...................................................................................................................§§ 704.03(b)(1)(B); 704.10

Table of Authorities - 739 
TABLE OF AUTHORITIES 

W.R.. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118 (TTAB 1973) ....................... §§ 534.02; 704.03(b)(1)(A)

 1207.01; 1208.04

Waifersong Ltd. Inc. v. Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632

Wallyball, Inc., In re, 222 USPQ 87 (TTAB 1984)................................................................................. §§ 1214; 1217 

Wear-Guard Corp. v. Van Dyne-Crotty Inc., 18 USPQ2d 1804 (TTAB 1990)................................................ § 704.09

Wella A.G., In re, 230 USPQ 77 (TTAB 1986)...............................................................................................§ 1209.01 

Wella Corp. v. California Concept Corp., 192 USPQ 158 (TTAB 1976), 

 704.12(a); 704.12(d); 

West Point-Pepperell, Inc. v. Borlan Industries Inc., 191 USPQ 53 (TTAB 1976) ...........................§ 704.03(b)(1)(A) 

 17 USPQ2d 1137 (TTAB 1990)................................................................................. §§ 307.01; 307.02(b); 502.04;

 704.08; 707.02(b)(2); 707.02(c)

William & Scott Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1870 

W T. Grant Co. v. Grant Avenue Fashions, Inc., 135 USPQ 273 (TTAB 1962)...............................................§ 704.04

Wada, In re, 48 USPQ2d 1689 (TTAB 1998), aff’d, 194 F.3d 1297, 

 52 USPQ2d 1539 (Fed. Cir. 1999) ...................................................................................... §§ 309.03(c); 704.12(a);

Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33 (TTAB 1976) ...................................................§ 704.08

 (6th Cir. 1992) ...............................................................................................................................................§ 312.03

Walker-Home Petroleum, Inc., In re, 229 USPQ 773 (TTAB 1985)...............................................................§ 1201.04 

Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971).............. §§ 524.01; 524.04; 527.01(d) 

Weather Channel, Inc, In re., 229 USPQ 854 (TTAB 1985) ..........................................................................§ 1207.03 

Weber-Stephen Products Co., In re, 3 USPQ2d 1659 (TTAB 1987) ...................................................................§ 1214

Weiffenbach v. Frank, 18 USPQ2d 1397 (Comm'r 1991) .................................................................................§ 114.94

Weiffenbach v. Klempay, 29 USPQ2d 2027 (Dep't Comm. 1993)..................................................... §§ 114.03; 114.04

Weiffenbach v. Logan, 27 USPQ2d 1870 (Comm'r 1993).................................................................................§ 115.02

Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820 (CCPA 1980).............§§ 527.01(e); 1101.01;

 1103.01(d)(2) 

Wella A.G., In re, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988) ................................................................§ 1209.01 

 rev’d on other grounds, 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) ..................................... §§ 414(11); 704.10; 

 704.03(b)(1)(B) 

Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998)............................ §§ 309.03(d); 503.04; 

 504.03; 528.04

Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564 (CCPA 1979) ..................§§ 602.01; 605.03(e)

Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156 (TTAB 1991) ...............................................§ 503.04

Wells Fargo & Co., In re, 231 USPQ 106 (TTAB 1986) .................................................... §§ 1103.01(e); 1203.02(b)

Wells Fargo & Co., In re, 231 USPQ 116 (TTAB 1986)................................................................................§ 1209.02 

Wells Fargo & Co., In re, 231 USPQ 95 (TTAB 1986).............................§§ 1103.01(d)(1); 1103.01(d)(3); 1207.02; 

 1209.02; 1207.03

West End Brewing Co. of Utica, N.Y. v. South Australian Brewing Co., 

 2 USPQ2d 1306 (TTAB 1987).............................................................................................. §§ 515; 704.09; 704.10

Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 

 503.01; 504.01; 504.03; 506.01;

 506.02; 512.01

Weyerhaeuser v. Katz, 24 USPQ2d 1230 (TTAB 1992) .............................................................§§ 502.01; 528.05(e); 

 704.03(b)(1)(B); 704.03(b)(2); 704.07; 

Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB 1971)...............................................§ 510.02(a) 

Wilcher Corp., In re, 40 USPQ2d 1929 (TTAB 1996)........................................................ §§ 1208; 1208.01; 1208.04

Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 

 222 USPQ 1012 (TTAB 1984)........................................................................................................... §§ 515; 704.10 

 (TTAB 1994).............................................................................................................. §§ 303.05(c); 503.01; 512.01

Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB 1974), 

 aff'd, 510 F.2d 963, 184 USPQ 744 (CCPA 1975) .......................................................... §§ 312.03; 544; 901.02(a)

Table of Authorities - 740 
TABLE OF AUTHORITIES 

Williamson-Dickie Manufacturing Co. v. Mann Overall Company, 

309.02(b); 313.02; 313.03

Women's World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB 1988)............................ §§ 1101.01; 1108

World Hockey Ass'n v. Tudor Metal Products Corp., 185 USPQ 246 (TTAB 1975).................................. §§ 305; 511

 (TTAB 1985)...........................................................................................................§§ 704.12(b); 707.03(c); 707.04

-YYamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 

Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752 (Fed. Cir. 1998)................................... §§ 101; 309.03(a)(2)

Zanova Inc., In re, 59 USPQ2d 1300 (TTAB 2001) .......................................................................................§ 1207.01 

 359 F.2d 450, 149 USPQ 518 (CCPA 1966)............................................... §§ 307.02(c)(1); 308.02(a); 308.02(b);

Wilson Sporting Goods Co. v. Northwestern Golf Co., 169 USPQ 510 (TTAB 1971) ......................... § 509.01(b)(2) 

WMA Group Inc..v. Western International Media Corp., 29 USPQ2d 1478 (TTAB 1993)............................. § 512.02

Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 

 (TTAB 1997), aff'd (unpub'd), Appeal No. 97-1580 (Fed. Cir. Mar. 5, 1998) ....................................... § 309.03(c) 

Wright Line Inc. v. Data Safe Services Corp., 229 USPQ 769 

WSM, Inc., In re, 225 USPQ 883 (TTAB 1985)..................................................................................... §§ 540; 802.04 

 6 USPQ2d 1001 (Fed. Cir. 1988) .........................................................................................§§ 101.01; 102.03; 302;

 401; 701; 1217

Yamaha International Corp. v. Stevenson, 196 USPQ 701 (TTAB 1979) ....................................... § 704.03(b)(1)(B)

Yasutomo & Co. v. Commercial Ball Pen Co., 184 USPQ 60 (TTAB 1974) .................................................. § 102.01

 309.03(c); 503.02 

-ZZimmerman v. Holiday Inns of America, Inc., 123 USPQ 86 (TTAB 1959)......................................... § 1103.01(d)(2)

Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).......§§ 102.01; 309.03(c)A;

 704.03(b)(1)(A); 901.02(b); 902.02; 903.04 

Table of Authorities - 741 
TABLE OF AUTHORITIES 

Statutes 

5 U.S.C.§ 706(2) ...............................................................................................................................................§ 706.01

15 U.S.C. § 1051(b) ......................................... §§ 212.02; 219; 516; 901.02(b); 903.04; 1103.01(a); 1105; 1206.02

15 U.S.C. § 1051(d) ............................................................................................................. §§ 219; 1206.01; 1206.02

15 U.S.C. § 1052(a) ................................................................................................................... §§ 307.01; 3009.03(c)

15 U.S.C. § 1052(c) ..................................................................................................................... §§ 307.01; 309.03(c)

 1103.01(a); 1103.01(b); 1103.01(d)(3); 1103.03; 1104; 1107; 

15 U.S.C. § 1052(e)....................................................................................... §§ 307.01; 307.02; 3009.03(c); 1205.01

15 U.S.C. § 1053 .......................................................................................................................................... § 1201.05

15 U.S.C. § 1056 ................................................................................................................................ §§ 1201.05; 1218

 704.03(b)(1)(A); 704.03(b)(1)(B); 901.02(b); 1101.02; 1114; 1201.05

15 U.S.C. § 1059 .........................................................................................§§ 117.03; 535; 602.02(b); 1201.05; 1213

15 U.S.C. § 1062 ........................................................................................................................... §§ 1202.01; 1202.02

15 U.S.C. § 1062(b).......................................................................................................... §§ 102.02; 1201.01; 1201.02

15 U.S.C. § 1064 ................................................................................... §§ 102.02; 119.03; 214; 301; 303.01; 303.03;

 303.04; 306.04; 307.02(a); 307.02(c)(2); 307.03; 307.04;

15 U.S.C. § 1064(1) ..........................................................................................................................................§ 307.02

15 U.S.C. § 1064(3).................................................................................................§§ 307.01; 307.02; 307.03; 309.03

15 U.S.C. § 1065 ................................................................ §§ 117.03; 307.02; 704.03(b)(1)(A); 1103.01(d)(2); 1105

11 U.S.C. §§ 301-303 ................................................................................................................................. § 510.03(a)

11 U.S.C. § 362 .......................................................................................................................................... § 510.03(a)

15 U.S.C. § 1051 .................................................................... §§ 101; 214; 307.01; 308.02; 309.01; 603; 1002; 1105

15 U.S.C. § 1051(a)...................................................................... §§ 212.01; 212.02; 213; 309.03(c); 1102.01; 1103;

 1103.01(a); 1103.01(d)(1); 1103.01(e); 1105

15 U.S.C. § 1051(c) ............................................................................................................. §§ 219; 1206.01; 1206.02

15 U.S.C. § 1052 ................................................................................................................... §§ 1101; 1103; 1201.05

15 U.S.C. § 1052(b) ......................................................................................................................................... § 307.01

15 U.S.C. § 1052(d) ....................................... §§ 307.02; 309.03(c); 309.03(c)B; 311.02(b); 704.03(b)(1)(B); 1001;

 1101; 1101.01; 1101.02; 1102.01; 1102.02; 1103; 

 1108; 1110; 1112; 1207.02; 1212; 1213

15 U.S.C. § 1052(f) ......................................................................................................................... §§ 1204; 1205.01

15 U.S.C. § 1054 .............................................................................................................................................§ 1201.05 

15 U.S.C. § 1055 ...............................................................................................................§§ 206.02; 414(14); 1201.05

15 U.S.C. § 1057 ..................................................................................§§ 106.01; 117.03; 514.01; 514.03; 605.03(b);

15 U.S.C. § 1057(b)............................................................................................................................§ 704.03(b)(1)(A) 

15 U.S.C. § 1058 .................................. §§ 117.03; 119.03; 309.04; 535; 602.02(b); 704.03(b)(1)(A); 1201.05; 1213

15 U.S.C. § 1060 .................................................................................................................................... §§ 124; 512.01 

15 U.S.C. § 1062(a)................................................................... §§ 202.01; 202.02; 202.03; 205; 301; 306.01; 306.02

15 U.S.C. § 1062(c).........................................................................§§ 307.01; 307.02(c)(2); 308.02; 704.03(b)(1)(A)

15 U.S.C. § 1063 .............................................................................................. §§ 102.02; 303.03; 309.03(b); 1206.02

15 U.S.C. § 1063(a).......................................................................... §§ 201; 202.01; 202.03; 202.04; 203.01; 203.04;

 205; 206.01; 207.01; 301; 303.01; 306.01;

 306.03; 306.04; 308.01(a); 309.03(c)

15 U.S.C. § 1063(b) ......................................................................................................§§ 213; 219; 1206.01; 1206.02

 308.02(a); 308.02(b); 308.02(c); 309.04; 313.03 

15 U.S.C. § 1064(2)...........................................................................................................................................§ 307.02

15 U.S.C. § 1064(5).................................................................................................§§ 307.01; 307.02; 307.03; 309.03

Table of Authorities - 742 
TABLE OF AUTHORITIES 

15 U.S.C. § 1066 ................................................................................................................§§ 102.02; 301; 1001; 1002

15 U.S.C. § 1067 ....................................................§§ 102.01; 540; 802.04; 803; 906; 1004; 1101; 1101.01; 1101.02

 311.02(a); 312.01; 313.01; 514.03; 1001; 1004;

15 U.S.C. § 1069 .......................................................................................................................................... § 311.02(c) 

 901.02(a); 901.02(b); 902.01; 902.02; 902.03; 902.04; 

 903.07; 904.01; 906; 906.01; 1219.02

15 U.S.C. § 1091(b)................................................................................................................................................§ 205 

15 U.S.C. § 1092 ............................................. §§ 102.01; 102.02; 205; 301; 303.01; 307; 307.01; 307.03; 308.02(a)

15 U.S.C. § 1094 ..................................................................................................................................... §§ 1002; 1105 

15 U.S.C. § 1127 .................................................................................................................. §§ 206.02; 303.01; 303.02

15 U.S.C. § 1141f...............................................................................§§ 124; 213; 301; 309.01; 314;507.01; 514.01;

 1103.01(a); 1114

15 U.S.C. § 1141j .....................................................................................................................§§ 602.02(b); 605.03(b)

15 U.S.C. § 1141l ..............................................................................................................................................§ 512.01

35 U.S.C. § 2 ...................................................................................................................................................§ 1201.05 

Rules 

Federal Circuit Rules 

Fed. Cir. R. 17 ............................................................................................................................. §§ 902.06; 909.01 

Fed. Cir. R. 31(a).........................................................................................................................................§ 902.06

 Fed. Cir. R. 35 .................................................................................................................................. §§ 540; 802.04 

Fed. R. Civ. P. 3 .............................................................................................................................. §§ 302; 903.04 

15 U.S.C. § 1068 ................................................................ §§ 102.01; 102.02; 301; 307.02; 309.03(a)(1); 309.03(d); 

 1101; 1101.01; 1101.02

15 U.S.C. § 1070 ..................................................................................§§ 102.01; 102.02; 1201.01; 1201.05; 1202.01

15 U.S.C. § 1071 ........................................................................................ §§ 106.03; 110.07; 803; 806; 901; 901.01;

 902.06; 902.08; 903.01; 903.02; 903.03; 903.06;

15 U.S.C. § 1091 .............................................................................................................................................§ 1201.05 

15 U.S.C. § 1115 .......................................................................................................................§§ 1103.01(d)(2); 1105

15 U.S.C. § 1126 ...................................................................................§§ 212.02; 213; 214; 309.01; 603; 1103.01(a)

15 U.S.C. § 1141 ................................................................................................................................§ 704.03(b)(1)(A) 

15 U.S.C. § 1141c.....................................................................................................................§§ 602.02(a); 605.03(b) 

602.01; 602.02(a); 602.02(b); 605.03(b); 

15 U.S.C. § 1141h ....................................................................................................§§ 202.01; 214; 301; 514.01; 603

15 U.S.C. § 1141i ........................................................................................................................... §§ 214; 514.01; 603

15 U.S.C. § 1141k ............................................................................................................................§§ 602.02(b); 1213

35 U.S.C. § 24 ..........................................................................§§ 404.03(a)(2); 406.01; 411.03; 523.01; 703.01(f)(2)

Federal Rules 

Fed. Cir. R. 15 ................................................................................................................ §§ 902.01; 902.04; 902.06

Fed. Cir. R. 29 ..................................................................................................................................................§ 538

Fed. Cir. R. 30 .............................................................................................................................................§ 902.07

Fed. Cir. R. 32 .............................................................................................................................................§ 902.07

Federal Rules of Civil Procedure 

 Fed. R. Civ. P. 4 ......................................................................................................................... §§ 903.02; 903.07

Table of Authorities - 743 
TABLE OF AUTHORITIES 

 Fed. R. Civ. P. 6(b) .............................................................................................§§ 310.03(c); 403.04; 407.03(a); 

502.02(b); 509; 509.01(a); 525; 

527.01(d); 534.02; 536; 541.01; 401

Fed. R. Civ. P. 8(d)................................................................................................................................§ 311.02(a) 

Fed. R. Civ. P. 8(f) ............................................................................................................ §§ 309.03(a)(2); 503.02

Fed. R. Civ. P. 10(c) ........................................................................................................................ § 309.03(a)(2) 

Fed. R. Civ. P. 12(b)(6)..............................................................................................................................§ 505.01

Fed. R. Civ. P. 12(e)...................................................................................................... §§ 505.01; 505.02; 505.03

Fed. R. Civ. P. 15 .......................................................................................................................................§ 507.01

 507.02; 507.02(a); 512.04

 507.03; 507.03(a); 514.03; 515; 528.07(a); 805 

Fed. R. Civ. P. 25 .......................................................................................................................................§ 512.01

Fed. R. Civ. P. 26(a)(5) .........................................................................................................................§ 404.03(a) 

Fed. R. Civ. P. 26(b)(1)................................................................................................. §§ 402.01; 405.02; 407.02

Fed. R. Civ. P. 26(d)...................................................................................................................................§ 403.03

Fed. R. Civ. P. 26(g)(2)..............................................................................................................................§ 408.01

Fed. R. Civ. P. 28(a)..................................................................................................§§ 404.03; 404.04; 703.01(g) 

Fed. R. Civ. P. 30(a)................................................................................................................... §§ 404.02; 404.03

Fed. R. Civ. P. 30(b)(1)..............................................................................................................................§ 404.05

 404.03(c)(2); 404.05; 411.03; 520; 529

Fed. R. Civ. P. 8(a)........................................................................................................................... § 309.03(a)(2) 

Fed. R. Civ. P. 8(b)........................................................................................................ §§ 311.02; 311.02(a); 314

 Fed. R. Civ. P. 8(c) .....................................................................................................................§§ 311.02(c); 314 

Fed. R. Civ. P. 8(e)(1) .................................................................................................. §§ 309.03(a)(2); 311.02(b)

Fed. R. Civ. P. 8(e)(2) ............................................................................. §§ 309.03(b); 309.03(c)B; 311.02; 1215

Fed. R. Civ. P. 9 ....................................................................................................................................§ 311.02(b) 

Fed. R. Civ. P. 10(b)......................................................................................................................... § 309.03(a)(2) 

Fed. R. Civ. P. 11 ............................................................................................§§ 106.02; 311.02(a); 318; 502.07;

 517; 527.02; 539; 801.01; 802.01

Fed. R. Civ. P. 12(b)........................................................................§§ 311.02(c); 314; 503.01; 503.04; 510.03(a)

Fed. R. Civ. P. 12(c)................................................................................................................... §§ 504.01; 504.03

Fed. R. Civ. P. 12(f) ................................................................................................................... §§ 506.01; 506.02

Fed. R. Civ. P. 12(h)(2)...................................................................................................... §§ 311.02; 314; 503.01

Fed. R. Civ. P. 13(b)................................................................................................................... §§ 313.05; 313.06

Fed. R. Civ. P. 15(a)................................................................................§§ 309.03(d); 311.02(c); 503.03; 507.01

Fed. R. Civ. P. 15(b)................................................................................... §§ 309.03(d); 311.02(c); 314; 507.01; 

Fed. R. Civ. P. 17 .......................................................................................................................................§ 512.01

Fed. R. Civ. P. 25(c)................................................................................................................... §§ 512.01; 512.02

Fed. R. Civ. P. 26(a).............................................................................................................................. § 404.08(c) 

Fed. R. Civ. P. 26(b)..................................................................................................§§ 404.08(c); 404.09; 406.02 

Fed. R. Civ. P. 26(b)(2)..............................................................................................................................§ 402.02

Fed. R. Civ. P. 26(b)(3)..............................................................................................................................§ 402.02

Fed. R. Civ. P. 26(b)(5).............................................................................................................. §§ 402.02; 404.09

Fed. R. Civ. P. 26(c)...................................................................................................§§ 402.02; 410; 412.01; 526

Fed. R. Civ. P. 26(e)................................................................................................................... §§ 408.02; 408.03

Fed. R. Civ. P. 26(g)................................................................................................................... §§ 402.01; 408.01

Fed. R. Civ. P. 28 .................................................................................................§§ 404.04; 703.01(g); 703.01(h)

Fed. R. Civ. P. 28(b)............................................................................................. §§ 404.03(c)(2); 404; 703.01(g)

Fed. R. Civ. P. 30 ..................................................................................................................................§ 404.03(a) 

Fed. R. Civ. P. 30(b)..................................................................................................§§ 404.05; 404.03(a)(1); 521 

Fed. R. Civ. P. 30(b)(6).................................................. §§ 404.03(a)(1); 404.03(a)(2); 404.03(b); 404.03(c)(1);

Fed. R. Civ. P. 30(b)(7)..........................................................................................................§§ 404.06; 703.01(h)

Fed. R. Civ. P. 30(c)...............................................................................................................§§ 404.08(c); 404.09

Table of Authorities - 744 
TABLE OF AUTHORITIES 

Fed. R. Civ. P. 31 ..................................................................................................................................§ 404.03(a) 

Fed. R. Civ. P. 34 .......................................................................................................§§ 501.01; 532; 702; 704.11

 406.04(b); 527.01(d); 704.11

 407.03(a); 407.03(b); 407.03(c); 411.01; 411.02;

Fed. R. Civ. P. 36(b)......................................................................................... §§ 407.03(a); 407.04; 411.02; 525

Fed. R. Civ. P. 41(b)...................................................................................................................................§ 534.04

Fed. R. Civ. P. 45 ........................................................................................ §§ 404.03(b)(2); 406.01; 703.01(f)(2)

Fed. R. Civ. P. 55(a)........................................................................................................................ §§ 312.01; 508 

Fed. R. Civ. P. 55(c)......................................................................................§§ 312.01; 312.02; 312.03; 508; 544

Fed. R. Civ. P. 56(c).................................................................................... §§ 528; 528.01; 528.05(a); 528.05(b) 

Fed. R. Civ. P. 56(e)................................................................................ §§ 528; 528.05(a); 528.05(b); 528.05(e)

Fed. R. Civ. P. 60(b)(4)..............................................................................................................................§ 312.01

Federal Rules of Evidence 

Fed. R. Evid. 501....................................................................................................................§§ 404.08(c); 404.09

 Fed. R. Evid. 902(4) ...................................................................................................................................§ 704.07

Fed. R. Civ. P. 31(a)........................................................................................................................................§ 521 

Fed. R. Civ. P. 31(a)(3) .........................................................................§§ 404.03(a)(1); 404.03(b); 404.03(c)(1);

 404.03(c)(2); 404.05; 411.03; 520; 529

Fed. R. Civ. P. 32(d).............................................................................................................................. § 707.03(c) 

Fed. R. Civ. P. 32(d)(1)........................................................................................ §§ 404.08(a); 707.03(c); 707.04

Fed. R. Civ. P. 32(d)(2)...................................................................... §§ 404.08(b); 404.08(c); 709.03(c); 707.04 

Fed. R. Civ. P. 32(d)(3)(A)..................................................................§§ 404.08(c)l 707.02(c); 707.03(c); 707.04

Fed. R. Civ. P. 32(d)(3)(B)................................................................................... §§ 404.08(c); 707.03(c); 707.04

Fed. R. Civ. P. 33(a).............................................................................................................................. § 405.04(c) 

Fed. R. Civ. P. 33(b).............................................................................................§§ 405.03; 405.04(b); 405.04(c)

Fed. R. Civ. P. 33(b)(2)......................................................................................................................... § 405.04(c) 

Fed. R. Civ. P. 33(b)(3)..............................................................................................................................§ 403.03

Fed. R. Civ. P. 33(c).................................................................................................................§§ 405.02; 414(21)

Fed. R. Civ. P. 33(d)..............................................................................................................................§ 405.04(b) 

Fed. R. Civ. P. 34(a)..................................................................................................§§ 406.01; 406.02; 407.03(a)

Fed. R. Civ. P. 34(b)...................................................................................§§ 403.03; 406.01; 406.03; 406.04(a);

Fed. R. Civ. P. 34(c)...................................................................................................................................§ 406.02

Fed. R. Civ. P. 36 ........................................................................................ §§ 407.04; 525; 527.01(a); 527.01(d) 

Fed. R. Civ. P. 36(a).................................................................§§ 403.03; 403.05(b); 407.01; 407.02; 407.03(a);

 414(21); 522.01; 524.01; 527.01(d) 

Fed. R. Civ. P. 37(a).....................................................................................§§ 404.08(c); 404.09; 411.03; 523.01

Fed. R. Civ. P. 42(a)............................................................................................................................. §§ 305; 511

Fed. R. Civ. P. 50(a)................................................................................................................... §§ 502.01; 534.04

Fed. R. Civ. P. 55(b)........................................................................................................... §§ 312.01; 312.03; 508

Fed. R. Civ. P. 56 .....................................................................................§§ 503.04; 504.03; 528; 528.01; 528.04

Fed. R. Civ. P. 56(a)....................................................................................................................§§ 528; 528.07(a)

Fed. R. Civ. P. 56(b).................................................................................................................... §§ 528. 528.07(a)

Fed. R. Civ. P. 56(d)........................................................................................................................................§ 528 

Fed. R. Civ. P. 56(f) ..........................................................§§ 502.02(b); 528; 528.02; 528.03; 528.05(b); 528.06

Fed. R. Civ. P. 61 .................................................................................................................................. § 707.03(c) 

Fed. R. Evid. 201..................................................................................................§§ 704.12; 704.12(a); 704.12(b)

Fed. R. Civ. P. 60(b)........................................................................................................................ §§ 312.03; 544 

 Fed. R. Evid. 901........................................................................................................................................§ 704.07

Table of Authorities - 745 
TABLE OF AUTHORITIES 

Trademark Rules 

37 CFR § 2.1......................................................................................................................................................§ 101.01

37 CFR § 2.2(b)................................................................................................................................. §§ 303.01; 303.02

37 CFR § 2.17(b)...............................................................................................................................................§ 114.04

37 CFR § 2.18(a)...............................................................................................................................................§ 117.08

37 CFR § 2.24......................................................................................................................................... §§ 114.07; 117 

37 CFR § 2.27.................................................................................................................................... §§ 120.01; 412.04

37 CFR § 2.27(e)................................................................................... §§ 120; 120.02; 412.02(b); 412.04; 502.02(c)

 1202.02; 1204

37 CFR § 2.65(a).............................................................................................................................................§ 1202.01 

37 CFR § 2.66.................................................................................................................................. §§ 602.01; 1202.01

37 CFR § 2.73(b)..................................................................................................................§§ 1103; 1103.01(a); 1105

37 CFR § 2.76(a).................................................................................................................................. §§ 219; 1206.01

37 CFR § 2.2(g)............................................................................................................................... §§ 106.03; 1202.03

37 CFR § 2.6.....................................................................................................................§§ 118.01; 121; 204; 211.03; 

 308.01(a); 308.02(a); 313.02; 313.06;

 704.03(b)(1)(A); 905; 1002; 1003;

 1202.01; 1202.04

37 CFR § 2.11.................................................................................................................................... §§ 106.02; 114.02

37 CFR § 2.17(a)...............................................................................................................................................§ 114.03

37 CFR § 2.17(c)...............................................................................................................................................§ 114.03

37 CFR § 2.18..................................................................................................§§ 114.06; 117; 117.02; 117.03; 117.08

37 CFR § 2.18(b)............................................................................................................................... §§ 117.01; 117.02

37 CFR § 2.18(d).................................................................................................................. §§ 114.06; 117.01; 117.03

37 CFR § 2.19(a)............................................................................................................................... §§ 114.03; 116.01

37 CFR § 2.19(b)......................................................................................................§§ 114.03;116.02; 116.05; 513.01

37 CFR § 2.20................................................................................................§§ 211.03; 528.05(b); 528.06; 905; 1208

37 CFR § 2.25....................................................................................................................................................§ 119.02

37 CFR § 2.27(d)................................................................................... §§ 120; 120.02; 412.02(b); 412.04; 502.02(c)

37 CFR §§ 2.32 – 2.41................................................................................................................................ § 1103.01(c)

37 CFR § 2.41(b)..................................................................................................................................................§ 1208

37 CFR § 2.42...........................................................................§§ 212.02; 1102.01; 1103; 1103.01(d)(1); 1103.01(e);

 1103.02; 1103.03; 1106.05

37 CFR § 2.47.........................................................................................................................................................§ 205 

37 CFR § 2.61................................................................................................................................ §§ 1209.01; 1209.02

37 CFR § 2.63(b)..................................................................................................§§ 1201.01; 1201.05; 1202.02; 1204

37 CFR § 2.64................................................................................................................. §§ 1202.02; 1209.01; 1209.02 

37 CFR § 2.64(a)............................................................................................§§ 1201.01; 1201.02; 1201.05; 1202.01;

37 CFR § 2.64(b)................................................................................................................. §§ 1201.01; 1202.02; 1204

37 CFR § 2.65(b).............................................................................................................................................§ 1201.03 

37 CFR § 2.66(a).......................................................................................................................§§ 1202.02; 1203.02(a)

37 CFR § 2.68.......................................................................................................................§§ 218; 602.01; 603; 1211

37 CFR § 2.71....................................................................................................................................................§ 514.01

37 CFR § 2.71(b)...............................................................................................................................................§ 514.01

37 CFR § 2.72................................................................................................................................§§ 514.01; 605.03(b)

37 CFR § 2.73(a)..................................................................................................................................................§ 1103

37 CFR § 2.75....................................................................................................................................................§ 514.01

37 CFR § 2.75(c).............................................................................................................................................§ 1205.01 

37 CFR § 2.76........................................................................................................................ §§ 806; 1103.01(a); 1105

37 CFR § 2.81(a)....................................................................................................................................................§ 806 

Table of Authorities - 746 
TABLE OF AUTHORITIES 

37 CFR § 2.81(b).......................................................................................................................... §§ 210; 806; 1206.02

37 CFR § 2.82.........................................................................................................................................................§ 205 

37 CFR § 2.83.......................................................................................................................................................§ 1001

37 CFR § 2.84....................................................................................................................................................§ 212.01

37 CFR § 2.84(a)....................................................................................................................................................§ 213 

37 CFR § 2.84(b)...............................................................................................................................................§ 212.02

37 CFR § 2.85(e).............................................................................................................................................§ 1202.04 

37 CFR § 2.86(b).................................................................................................................................. §§ 304; 1202.04

37 CFR § 2.87....................................................................................................................................... §§ 516; 1202.01

37 CFR § 2.88.................................................................................................................................§§ 1103.01(a); 1105

37 CFR § 2.88(a).................................................................................................................................. §§ 219; 1206.02

37 CFR § 2.89(g)............................................................................................................................. §§ 211.01; 1201.05

37 CFR § 2.91.....................................................................................................................§§ 120.02; 301; 1001; 1002

37 CFR § 2.91(a)........................................................................................................................ §§ 102.02; 1001; 1002

37 CFR § 2.92............................................................................................................................... §§ 403.01; 701; 1003

37 CFR § 2.93............................................................................................................................. §§ 302; 1003; 1106.04

37 CFR § 2.96........................................................................................................................§§ 701; 1002; 1004; 1005

37 CFR § 2.98.......................................................................................................................................................§ 1006

37 CFR § 2.99(a)..................................................................................................................................................§ 1103

37 CFR § 2.99(b)..............................................................................................§§ 1103; 1103.01(f); 1103.02; 1103.03

37 CFR § 2.99(c).................................................................................................................§§ 302; 403.01; 701; 1003;

 1103; 1103.01(f); 1106.02; 1106.04; 1113.01

37 CFR § 2.99(d)(1) .......................................................................................... §§ 302; 1103; 1103.01(d)(1); 1106.04

37 CFR § 2.99(d)(2) ................................................................................................................................ §§ 1103; 1107 

37 CFR § 2.99(d)(3) ............................................................................................... §§ 603; 1103; 1103.01(d)(1); 1107

37 CFR § 2.99(e)...................................................................................................................... §§ 1103; 1106.05; 1108

37 CFR § 2.99(f).....................................................................§§ 1102.02; 1103; 1103.02; 1103.03; 1106.01; 1106.02

37 CFR § 2.99(g)..................................................................................................................§§ 1103; 1103.01(a); 1105

37 CFR § 2.99(h)........................................... §§ 309.03; 309.03(a)(1); 309.03(d); 311.02(b); 313.01; 1101.02; 1103

37 CFR § 2.101....................................................................................................................................... §§ 201; 206.01 

37 CFR § 2.101(a)................................................................................................... §§ 203.04; 302; 306.01; 308.01(a)

37 CFR § 2.101(b).............................................................................................. §§ 303.01; 309.01; 309.02; 309.02(b)

37 CFR § 2.101(c).............................................................................................................................................§ 306.01

37 CFR § 2.101(d)..............................................................................................................................§§ 304; 308.01(a)

37 CFR § 2.101(d)(1) ..................................................................................................§§ 303.06; 308.01(a); 309.02(b)

37 CFR § 2.101(d)(2) ...............................................................................................................§§ 308.01(a); 308.01(b)

37 CFR § 2.101(d)(3) ...................................................................................................................................§ 308.01(a)

37 CFR § 2.101(d)(4) ........................................................................................................................................§ 306.01

37 CFR § 2.102....................................................................................................................................... §§ 201; 206.01 

37 CFR § 2.102(a)........................................................................................................§§ 106.02; 203.01; 203.03; 206

37 CFR § 2.102(b)..................................................................................................§§ 119.03; 203.01; 203.02(b); 206;

 206.01; 206.02; 206.03; 303.05(a); 303.05(b);

 303.05(c); 306.01; 309.04; 512.01; 512.04

37 CFR § 2.102(c)..................................................................................................§§ 202.01; 202.04; 203.01; 203.04;

 207; 207.01; 207.02; 207.03; 209.02; 210; 306.01

37 CFR § 2.104(a)................................................................................................................§§ 309.02(c); 309.03(a)(2)

37 CFR § 2.104(b).......................................................................................................................... §§ 305; 308.05; 511

37 CFR § 2.105.................................................................. §§ 117.03; 309.02(c); 310.01; 310.03(a); 403.01; 1106.04

37 CFR § 2.105(a).........................................................................................................................§§ 310.01; 310.03(a)

37 CFR § 2.105(b).............................................................................................................................................§ 310.01

37 CFR § 2.105(c)............................................................................................................§§ 309.02(c); 310.01; 506.03 

37 CFR § 2.106(a).................................................................................................................................. §§ 312.01; 508 

37 CFR § 2.106(b)............................................................................................................................. §§ 311.02; 311.03

Table of Authorities - 747 
TABLE OF AUTHORITIES 

37 CFR § 2.106(b)(1) ...............................................................................................................§§ 311.02(a); 311.02(b) 

37 CFR § 2.106(b)(2) ........................................................................................§§ 311.02(b); 313.01; 313.02; 313.04;

 313.06; 314; 507.02(b)

37 CFR § 2.106(c)............................................................................................................................. §§ 502.04; 601.01

37 CFR § 2.107.................................................................................§§ 314; 315; 507.01; 507.03(a); 507.03(b); 1007

37 CFR § 2.107(a)..................................................................................................................................................§ 315 

37 CFR § 2.107(b)...................................................................................... §§ 314; 315; 507.01; 528.07(a); 528.07(b)

37 CFR § 2.111..................................................................................................................................................§ 313.09

37 CFR § 2.111(a)........................................................................................................ §§ 302; 307; 308.02(a); 310.01

37 CFR § 2.111(b).....................................................................................§§ 106.02; 303.03; 307; 307.01; 307.02(a);

 309.01; 309.02(b); 309.03(d); 313.01

37 CFR § 2.111(c)................................................................................. §§ 304; 308.02(a); 308.02(b); 308.03; 313.02

37 CFR § 2.111(c)(1).......................................................................................... §§ 118.02; 303.06; 308.02(a); 308.03

37 CFR § 2.111(c)(2).........................................................................................................................................§ 118.02

37 CFR § 2.111(c)(3)................................................................................................................§§ 308.02(b); 307.02(a)

37 CFR § 2.111(c)(4)........................................................................................................§§ 307; 307.02(a); 308.02(a) 

37 CFR § 2.112(a).............................................................................................§§ 309.02(a); 309.02(c); 309.03(a)(2);

 310.01; 313.03

37 CFR § 2.112(b)..................................................................................................................... §§ 305; 308.05; 313.02

37 CFR § 2.113..............................................................................................§§ 117.03; 309.02(c); 310.01; 310.03(a);

 403.01; 512.01; 1106.04

37 CFR § 2.113(a).........................................................................................................................§§ 310.01; 310.03(a)

37 CFR § 2.113(b).............................................................................................................................................§ 310.01

37 CFR § 2.113(c)...............................................................................................§§ 309.02(c); 310.01; 506.03; 512.01

37 CFR § 2.113(d)................................................................................................................ §§ 310.01; 310.02; 512.01

37 CFR § 2.113(e).............................................................................................................................................§ 310.01

37 CFR § 2.114(a)..................................................................................................................... §§ 312.01; 313.06; 508

37 CFR § 2.114(b).................................................................................................................§§ 311.02(a); 311.03; 511

37 CFR § 2.114(b)(1) ...................................................................................................................................§ 311.02(b) 

37 CFR § 2.114(b)(2) ........................................................................................§§ 311.02(b); 313.01; 313.02; 313.04;

 313.06; 314; 507.02(b)

37 CFR § 2.114(c)................................................................................................................ §§ 502.04; 601.01; 601.02

37 CFR § 2.115.......................................................................................................................... §§ 313.01; 315; 507.01

37 CFR § 2.116(a).................................................................................................. §§ 101; 309.03(a)(2); 318; 408.03;

 502.01; 507.01; 509.01; 527.02; 544

37 CFR § 2.116(b)...................................................................................................................§§ 302; 701; 1005; 1108

37 CFR § 2.116(c).............................................................................................................§§ 302; 309.01; 311.01; 701

37 CFR § 2.116(d)..................................................................................................................................................§ 701 

37 CFR § 2.116(e).................................................................................................................................. §§ 504.01; 701 

37 CFR § 2.116(f)..............................................................................................................................................§ 802.01

37 CFR § 2.117............................................................................................................................. §§ 510; 510.01; 1213

37 CFR § 2.117(a)........................................................................................................................................§ 510.02(a) 

37 CFR § 2.117(b)........................................................................................................................................§ 510.02(a) 

37 CFR § 2.117(c)........................................................................................................................................§ 510.03(a) 

37 CFR § 2.118..................................................................................................................................................§ 310.02

37 CFR § 2.119....................................................................................................................................... §§ 113; 902.01 

37 CFR § 2.119(a).................................................................................... §§ 113.01; 113.02; 113.04; 203.04; 211.03; 

 309.02(c); 311.01(c); 313.03; 404.03(c)(2); 514.01;

 530; 601.01; 601.02; 602.01; 602.02(a); 603;

 605.03(b); 905 

37 CFR § 2.119(b)............................................................................................................§§ 113.04; 406.01; 502.02(a) 

Table of Authorities - 748 
TABLE OF AUTHORITIES 

37 CFR § 2.119(c).......................................................................§§ 113.05; 310.03(b); 403.03; 404.07(e); 405.04(a);

 406.01; 406.04(a); 407.03(a); 502.02(b); 506.02; 531;

 534.02; 534.03; 543; 703.01(b); 703.02(a); 707.02(g); 704.11 

37 CFR § 2.119(d).........................................................................................§§ 114.07; 117; 117.06; 310.01; 1106.04

37 CFR § 2.119(e).......................................................................................................§§ 106.02; 203.03; 208; 309.01;

 309.02(b); 311.01(b); 502.02(a); 1202.03

37 CFR § 2.120.......................................................................................................................................................§ 401 

37 CFR § 2.120(a)............................................................................................................§§ 101; 310.01; 401; 403.01; 

 403.02; 403.03; 403.04; 404.07(b); 406.04(a);

 501.03; 509; 509.01(a); 509.02; 701

37 CFR § 2.120(b)....................................................................................................... §§ 404.03(a); 404.03(a)(2); 521 

37 CFR § 2.120(c).......................................................................................... §§ 404.03(b); 404.03(c)(1); 404.05; 518

37 CFR § 2.120(c)(1).................................................................................... §§ 404.03(b); 520; 703.01(b); 703.02(m)

37 CFR § 2.120(c)(2)....................................................................................................................................§ 404.03(d) 

37 CFR § 2.120(d)(1) ..........................................................................§§ 405.03(a); 405.03(b); 405.03(c); 405.03(d);

 405.03(e); 405.04(b); 410; 501.01; 519; 526

37 CFR § 2.120(d)(2) ................................................................................................................ §§ 406.03; 501.01; 522

37 CFR § 2.120(e)............................................................................................. §§ 404.09; 405.03(e); 411.01; 411.03;

 523.01; 523.02; 523.03; 524.01; 524.02

37 CFR § 2.120(e)(1).........................................................................................................................................§ 523.01

37 CFR § 2.120(e)(2)............................................................................................................ §§ 510; 510.03(a); 523.01

37 CFR § 2.120(f).............................................................................................................§§ 120.02; 410; 412; 412.01; 

 502.05; 526; 527.02; 703.01(p)

37 CFR § 2.120(g)........................................................................................................................................§ 527.01(a) 

37 CFR § 2.120(g)(1) ....................................................................... §§ 411.04; 502.05; 527.01(a); 527.01(b); 527.02

37 CFR § 2.120(g)(2) ....................................................................................................................§§ 411.04; 527.01(b)

37 CFR § 2.120(h)..................................................................................................§§ 411.02; 523.01; 524.01; 524.02;

 527.01(a); 527.01(d) 

37 CFR § 2.120(h)(1) ........................................................................................................... §§ 523.01; 524.02; 524.03

37 CFR § 2.120(h)(2) ........................................................................................................................ §§ 524.01; 524.03

37 CFR § 2.120(i)...................................................................................................................................................§ 413 

37 CFR § 2.120(i)(1) ..........................................................................................................................§§ 502.06(a); 521 

37 CFR § 2.120(i)(2) ............................................................................................................ §§ 102.03; 104; 502.06(b)

37 CFR § 2.120(j)......................................................................................... §§ 403.05(b); 404.07; 404.08(c); 404.09;

 409; 525.01(d); 528.05(c); 529; 702; 703.02(j);

 704.09; 704.10; 704.11; 707.02(a)

37 CFR § 2.121...................................................................................................................................§§ 701; 703.02(c)

37 CFR § 2.121(a)..................................................................................................§§ 403.01; 403.04; 501.03; 509.02;

 533.01; 701; 707.03(b)(1)

37 CFR § 2.121(a)(1).................................................................................§§ 403.04; 404.09; 509; 509.01(a); 533.01; 

 701; 703.01(c); 703.01(d); 703.02(c)

37 CFR § 2.121(b)(1) .............................................................................................................................................§ 701 

37 CFR § 2.121(b)(2) ...............................................................................................................§§ 701; 801.02(e); 1109

37 CFR § 2.121(c).......................................................................................................................... §§ 509; 509.02; 701

37 CFR § 2.121(d)................................................................................................§§ 501.02; 501.03; 509; 509.02; 701

37 CFR § 2.122(a).......................................................................................................§§ 101; 404.09; 702; 703.01(a);

 704.12; 704.12(a); 707.01

37 CFR § 2.122(b).........................................................................................................................§§ 528.05(a); 704.04

37 CFR § 2.122(b)(1) ....................................................................................................................§§ 704.03(a); 707.04

37 CFR § 2.122(b)(2) ....................................................................................................................§§ 704.03(a); 707.04

37 CFR § 2.122(c)................................................................................................................ §§ 317; 506.03; 704.05(a)

37 CFR § 2.122(d)..................................................................................................§§ 317; 704.03(b)(1)(A); 704.05(a)

Table of Authorities - 749 
TABLE OF AUTHORITIES 

37 CFR § 2.122(d)(1) ........................................................................................ §§ 317; 506.03; 528.05(a); 528.05(d); 

 704.03(b)(1)(A); 704.05(a)

37 CFR § 2.122(d)(2) .........................................................§§ 528.05(a); 528.05(d); 532; 704.03(b)(1)(A); 707.02(a) 

37 CFR § 2.122(e)................................................................................ §§ 403.05(b); 528.05(a); 528.05(e); 532; 702;

 704.02; 704.03(b)(1)(A); 704.03(b)(1)(B); 704.03(b)(2);

 704.07; 704.08; 704.11; 707.02(a); 707.02(b)(2)

37 CFR § 2.122(f)................................................................................................ §§ 528.05(a); 528.05(f); 530; 704.13

37 CFR § 2.123............................................................................................................§§ 404.03; 703.01(b); 703.02(a)

37 CFR § 2.123(a)....................................................................................................................................§ 404.03(c)(1)

37 CFR § 2.123(a)(1)............................................................................. §§ 521; 531; 703.01(b); 703.01(d); 703.02(a)

37 CFR § 2.123(a)(2).................................................................. §§ 520; 703.01(b); 703.01(d); 703.02(a); 703.02(m)

37 CFR § 2.123(b)....................................................................................§§ 501.01; 605.03(f); 703.01(b); 703.01(d); 

 703.01(e); 703.01(g); 703.01(h); 703.02(d);

 703.02(e); 705; 1208

37 CFR § 2.123(c)......................................................................................... §§ 404.05; 521; 533.02; 702; 703.01(d);

 703.01(e); 703.02(d); 707.03(b)(2)

37 CFR § 2.123(d)........................................................................................................................................§ 703.01(g) 

37 CFR § 2.123(e)........................................................................................................................................§ 703.01(h) 

37 CFR § 2.123(e)(1)....................................................................................................................................§ 703.01(h) 

37 CFR § 2.123(e)(2)....................................................................................................................................§ 703.01(h) 

37 CFR § 2.123(e)(3)................................................................................§§ 533.02; 703.01(e); 703.01(h); 707.03(c); 

 707.03(b)(2); 707.03(c); 707.04

37 CFR § 2.123(e)(4)...................................................................................................§§ 404.08(c); 404.09; 703.01(h)

37 CFR § 2.123(e)(5).................................................................................................................§§ 703.01(j); 703.02(h)

37 CFR § 2.123(f)......................................................................................§§ 404.07; 703.01(e); 703.01(k); 703.02(h)

37 CFR § 2.123(g)................................................................................. §§ 703.01(h); 703.01(i); 703.02(h); 707.03(c)

37 CFR § 2.123(h)......................................................................................................................§§ 703.01(l); 703.02(j)

37 CFR § 2.123(j).................................................................... §§ 404.08(a); 404.08(b); 404.08(c); 707.03(c); 707.04

37 CFR § 2.123(k)....................................................................§§ 404.08(c); 404.09; 703.01(a); 707.02(c); 707.03(c)

37 CFR § 2.123(l)..............................................................................................................§§ 533.01; 702; 706; 802.01

37 CFR § 2.124................................................................................ §§ 404.03(a); 404.03(b); 404.07; 510.03(a); 520;

 703.01(b); 703.01(d); 703.02(a); 707.03(c)

37 CFR § 2.124(a)......................................................................................................................§§ 404.07(a); 70.02(b)

37 CFR § 2.124(b)(1) ..............................................................................................§§ 703.02(c); 703.02(e); 703.02(g)

37 CFR § 2.124(b)(2) ..................................................................................... §§ 404.03(c)(2); 404.05; 404.07(d); 510 

37 CFR § 2.124(c)..........................................................................................§§ 404.05; 404.07; 703.02(e); 703.02(g)

37 CFR § 2.124(d)(1) ..................................................................... §§ 404.03(c)(2); 404.07(d); 404.07(e); 404.07((f);

 404.07(j); 703.02(d); 703.02(e); 703.02(g);

 703.02(k); 703.02(m); 707.03(c)

37 CFR § 2.124(d)(2) ......................................................§§ 404.03(c)(2); 404.07(e); 510.03(a); 703.02(c); 703.02(g)

37 CFR § 2.124(e)................................................................................§§ 404.07 (e); 404.07(f); 404.07(h); 404.07(i); 

 703.02(g); 703.02(h) 

37 CFR § 2.124(f).......................................................................................................................§§ 404.07(i); 703.02(i)

37 CFR § 2.124(g).....................................................................................................................§§ 404.07(f); 703.02(k)

37 CFR § 2.125............................................................................................................................................§ 703.01(m) 

37 CFR § 2.125(a)...................................................................................................................§§ 703.01(k); 703.01(m)

37 CFR § 2.125(b)....................................................................................................§§ 404.07(i); 703.01(h); 703.02(j)

37 CFR § 2.125(c).........................................................................................................................§§ 502.01; 703.01(k)

37 CFR § 2.125(d).........................................................................................................................................§ 703.01(i) 

37 CFR § 2.125(e)........................................................................................................§§ 120.02; 703.01(p); 703.02(l)

37 CFR § 2.126.....................§§ 203.01; 309.02; 502.02; 502.02(a); 703.01(i); 704.05(a); 801.03; 1202.02; 1202.03

37 CFR § 2.126(a)..................................................§§ 106.03; 203.01; 309.01; 309.02; 311.01; 502.02(a); 703.01(h)

37 CFR § 2.126(b)................................................................................. §§ 106.03; 309.02; 311.01; 502.02(a); 801.03

Table of Authorities - 750 
TABLE OF AUTHORITIES 

37 CFR § 2.126(c)......................................................................................§§ 106.03; 203.01; 309.01; 309.02; 311.01

37 CFR § 2.126(d).............................................. §§ 120.02; 311.01; 412.04; 502.02(c); 703.01(p); 703.02(l); 801.03

37 CFR § 2.127(a)................................................................................§§ 106.03; 113.05; 502.01; 502.02; 505.02(b);

 502.03; 502.04; 508; 509.01(a); 509.02; 

 517; 518; 527.03; 528.02; 543

37 CFR § 2.127(b)........................................................................................... §§ 502.06(a); 518; 543; 902.02; 903.04

37 CFR § 2.127(c)..................................................................................................................... §§ 102.03; 502.04; 518

37 CFR § 2.127(d).............................................................................................. §§ 510; 510.03(a); 510.03(b); 528.03

37 CFR § 2.127(e).............................................................................................§§ 502.02; 502.02(b); 504.01; 509.01;

 509.01(a); 509.02; 528.02; 528.03; 528.05(a); 528.05(c) 

37 CFR § 2.127(f) ......................................................................................... §§ 411.04; 502.05; 527.01(a); 527.01(b)

37 CFR § 2.128(a)..................................................................................................................... §§ 539; 802.03; 802.04

37 CFR § 2.128(a)(1)................................................................................. §§ 801.02; 801.02(a); 801.02(b); 801.02(c)

37 CFR § 2.128(a)(2).....................................................................................................................§§ 801.02; 801.02(e)

37 CFR § 2.128(a)(3)............................................................................................................ §§ 536; 801.02; 801.02(a)

37 CFR § 2.128(b).............................................................................................................§§ 537; 539; 541.02; 801.03

37 CFR § 2.129 ......................................................................................................................................................§ 104 

37 CFR § 2.129(a).............................................................................................. §§ 102.03; 540; 541.01; 541.02; 702;

 802; 802.02; 802.03; 802.05; 1216 

37 CFR § 2.129(b).............................................................................................................§§ 540; 541.01; 802; 802.03

37 CFR § 2.129(c).............................................................................................................§§ 543; 804; 902.02; 903.04

37 CFR § 2.129(d).........................................................................................................................§§ 901.02(b); 903.04

37 CFR § 2.130 ..............................................................................................................§§ 213; 215; 515; 602.02; 603

37 CFR § 2.131 .................................................................................................................§§ 515; 805; 806; 807; 1217 

37 CFR § 2.132 ........................................................................................................................§§ 509.01(b)(1); 534.01

37 CFR § 2.132(a)......................................................................................§§ 502.01; 534.01; 534.02; 534.03; 534.04 

37 CFR § 2.132(b)......................................................................................§§ 502.01; 534.01; 534.02; 534.03; 534.04

37 CFR § 2.132(c)................................................................................................................ §§ 534.01; 534.02; 534.03

37 CFR § 2.133......................................................................................§§ 212.01; 212.03; 212.07; 311.02(b); 514.01

37 CFR § 2.133(a)......................................................................................§§ 311.02(b); 514; 514.03; 515; 605.03(b)

37 CFR § 2.133(b)......................................................................................... §§ 309.03(d); 311.02(b); 313/01; 514.03

37 CFR § 2.133(c)............................................................................................§§ 309.03(a)(1); 309.03(d); 311.02(b);

 313.01; 514.03; 1101.02

37 CFR § 2.133(d)........................................................................................................................................§ 311.02(b) 

37 CFR § 2.134(a).......................................................................................................§§ 502.04; 602.02(a); 605.03(b)

37 CFR § 2.134(b)............................................................................................................................. §§ 535; 602.02(b)

37 CFR § 2.135 ...........................................................................................................§§ 113.02; 218; 502.04; 602.01;

 602.02(a); 603; 605.03(b); 1211

37 CFR § 2.136 ......................................................................................................................................................§ 807 

37 CFR § 2.141 ..................................................................................§§ 102.02; 1201.01; 1201.05; 1202.01; 1202.04

37 CFR § 2.142 .................................................................................................................................................§ 102.02

37 CFR § 2.142(a)............................................................................................................... §§ 1202.01; 1202.02; 1204

37 CFR § 2.142(b)(1) ....................................................................................... §§ 1203.02(a); 1203.02(b); 1203.02(c)

37 CFR § 2.142(b)(2) ...................................................................................................................... §§ 106.03; 1203.01

37 CFR § 2.142(c)......................................................................................................................... §§ 1201.04; 1202.01

37 CFR § 2.142(d)............................................................................ §§ 1203.02(e); 1204; 1207.01; 1207.02; 1207.04

37 CFR § 2.142(e)(1).......................................................................................................§§ 102.03; 540; 802.04; 1216 

37 CFR § 2.142(e)(2)............................................................................................................................................§ 1216

37 CFR § 2.142(e)(3)............................................................................................................................................§ 1216

37 CFR § 2.142(f)..........................................................................................................§§ 1205.01; 1207.02; 1207.05;

 1209.01; 1209.02; 1209.03; 1217

37 CFR § 2.142(g).................................................................................................................... §§ 1205.01; 1216; 1218

37 CFR § 2.144 .................................................................................................................. §§ 902.02; 903.04; 1219.01

Table of Authorities - 751 
TABLE OF AUTHORITIES 

37 CFR § 2.145.................................................................................................................§§ 803; 901; 901.01; 902.01; 

 902.05; 903.05; 1219.02

37 CFR § 2.145(a).............................................................................................................................................§ 902.01

37 CFR § 2.145(b).............................................................................................................................................§ 902.01

37 CFR § 2.145(c)(2)............................................................................................................ §§ 902.03; 902.08; 903.06

37 CFR § 2.145(c)(3)......................................................................................................................... §§ 901.01; 902.04

37 CFR § 2.145(c)(4).............................................................................................................................. §§ 806; 903.01 

37 CFR § 2.145(d)............................................................................................................................. §§ 902.01; 902.02

37 CFR § 2.145(d)(1) .................................................................................................§§ 543; 902.02; 903.04; 1219.01

37 CFR § 2.145(d)(2) ........................................................................................................... §§ 902.02; 902.05; 903.05

37 CFR § 2.145(d)(3) ........................................................................................................... §§ 901.01; 902.02; 902.04

37 CFR § 2.145(e) ............................................................................................................... §§ 509.02; 902.02; 903.04

37 CFR § 2.146 ...................................................................................................................................... §§ 211.03; 905 

37 CFR § 2.146(a)............................................................................................... §§ 905; 906.02; 1201.05; 1203.02(a)

37 CFR § 2.146(b)................................................................................................................. §§ 905; 1201.01; 1201.05

37 CFR § 2.146(c)........................................................................................................................ §§ 211.03; 905; 1002

37 CFR § 2.146(d)..................................................................................................................................................§ 905 

37 CFR § 2.146(e)(1).............................................................................................................................. §§ 211.03; 905 

37 CFR § 2.146(e)(2)..........................................................................................................................§§ 502.06(a); 518 

37 CFR § 2.146(f)...................................................................................................................................................§ 905 

37 CFR § 2.146(g)..................................................................................................................... §§ 510; 510.03(a); 905

37 CFR § 2.146(h)..................................................................................................................................................§ 905 

37 CFR §§ 2.160 – 2.166...................................................................................................................................§ 514.01

37 CFR § 2.171.......................................................................................................................................................§ 517 

37 CFR § 2.172..............................................................................................................................§§ 514.01; 602.02(a)

37 CFR § 2.173.......................................................................................§§ 514.01; 514.03; 605.03(b); 1101.02; 1114 

37 CFR § 2.190.................................................................................................................................. §§ 110.02; 902.01

37 CFR § 2.190..................................................................................................................................................§ 902.01

37 CFR § 2.190(d).............................................................................................................................................§ 110.02

37 CFR § 2.191............................................................................................................................... §§ 104; 203.01; 702

37 CFR § 2.193........................................................................................................... §§ 115.02; 309.02(b); 311.01(b)

37 CFR § 2.193(c)..................................................................................................................... §§ 106.02; 107; 203.03

37 CFR § 2.193(d).............................................................................................................................................§ 106.02

37 CFR § 2.194..............................................................................................................................§§ 106.01; 203.02(a)

37 CFR § 2.195..................................................................................... §§ 107; 109; 110.08; 209.02; 902.01; 1202.02

37 CFR § 2.195(a)....................................................................................................................................... §§ 107; 109

37 CFR § 2.195(b)....................................................................................................................................... §§ 107; 109

37 CFR § 2.195(c).....................................................................................................§§ 107; 108; 109; 110.01; 110.02

37 CFR § 2.195(d).................................................................................................................................. §§ 107; 110.07 

37 CFR § 2.195(e)..................................................................................................................................................§ 107 

37 CFR § 2.196.......................................................................................................................................................§ 112 

37 CFR § 2.197.............................................................................................. §§ 109; 110.01; 110.03; 110.06; 110.08;

 202.01; 202.04; 306.01; 307.02; 502.02(a);

 902.01; 902.02; 902.04; 1202.02; 1203.02(a)

37 CFR § 2.197(a).........................................................................§§ 109; 110.01; 110.02; 110.08; 306.01; 307.02(a)

37 CFR § 2.197(b).............................................................................................................................................§ 110.06

 902.02; 902.04; 1202.02 

37 CFR § 2.197(c).............................................................................................................................................§ 110.01

37 CFR § 2.198............................................................................................................§§ 109; 111.01; 111.02; 111.03;

 306.01; 307.02; 502.02(a); 902.01;

37 CFR § 2.199..................................................................................................................................................§ 118.01

37 CFR § 2.206............................................................................................................§§ 118.02; 308.01(a); 308.02(a)

37 CFR § 2.207............................................................................................................§§ 118.03; 308.01(a); 308.02(a)

Table of Authorities - 752 
TABLE OF AUTHORITIES 

37 CFR § 2.208............................................................................................................§§ 118.03; 308.01(a); 308.02(a)

37 CFR § 2.208(b).............................................................................................................................................§ 118.04

37 CFR § 2.209............................................................................................................§§ 119.01; 308.01(a); 308.02(a)

37 CFR § 3.71 ........................................................................................................................................ §§ 124; 512.01 

37 CFR § 3.73(b).................................................................................................................................... §§ 124; 512.01 

37 CFR § 3.85 ................................................................................................................................... §§ 512.02; 512.03

37 CFR § 7.1......................................................................................................................................................§ 117.03

37 CFR § 7.6......................................................................................................................................................§ 118.01

37 CFR § 7.22..............................................................................§§ 124; 512.01; 514.01; 602.02(a); 602.02(b); 1114

37 CFR § 7.23..................................................................................................................... §§ 512.01; 704.03(b)(1)(A)

37 CFR § 7.25........................................................................................ §§ 514.01; 602.01; 602.02(a); 602.02(b); 603

37 CFR § 7.30..............................................................................................................§§ 602.01; 602.02(a); 602.02(b)

37 CFR § 7.36...............................................................................................................................................§ 602.02(b) 

37 CFR § 7.41...............................................................................................................................................§ 602.02(b)

37 CFR § 10.1(c)........................................................................................... §§ 114.03; 117.01; 309.02(b); 602.02(a)

37 CFR § 10.14 ................................................................................................................................. §§ 106.02; 114.03

37 CFR § 10.14(a)........................................................................................................§§ 114; 114.03; 114.06; 117.08

37 CFR § 10.14(b)......................................................................................§§ 114; 114.04; 114.06; 117.08; 309.02(b) 

37 CFR § 10.14(c)............................................................................. §§ 114; 114.05; 114.06; 114.07; 117.06; 117.08

37 CFR § 10.14(d)..................................................................................................................... §§ 114; 114.06; 117.08

37 CFR § 10.14(e)............................................................................................§§ 106.02; 114; 114.01; 114.06;117.08

37 CFR § 10.18 .................................................................................................................... §§ 106.02; 115.02; 527.02

37 CFR § 10.18(a).............................................................................................................................................§ 106.02

37 CFR § 10.18(b)............................................................................................................................. §§ 106.02; 115.02

37 CFR § 10.18(c).............................................................................................................................................§ 106.02

37 CFR § 10.18(d)............................................................................................................................. §§ 502.05; 527.02

37 CFR § 10.20..................................................................................................................... §§ 115.01; 502.05; 527.02

37 CFR § 10.20(b).............................................................................................................................................§ 114.08

37 CFR § 10.40 ..........................................................................................§§ 116.02; 116.03; 116.04; 116.05; 513.01

37 CFR § 10.63 .............................................................................................................................§§ 405.04(c); 513.02

37 CFR § 10.66 .................................................................................................................................................§ 114.08

37 CFR § 10.66(a).............................................................................................................................................§ 114.08

37 CFR § 10.66(b).............................................................................................................................................§ 114.08

37 CFR § 10.66(c).............................................................................................................................................§ 114.08

37 CFR § 10.66(d).............................................................................................................................................§ 114.08

37 CFR § 10.93(b)..................................................................................................................................................§ 105 

37 CFR § 10.130 ............................................................................................................................... §§ 115.02; 527.02

37 CFR § 10.130(b).......................................................................................................................... § § 115.03; 513.02 

37 CFR § 10.170................................................................................................................................ §§ 513.01; 527.02

37 CFR § 104.2 ................................................................................................................................. §§ 902.01; 903.02

Other Authorities 

Articles

Allen, David B., TIPS FROM THE TTAB: Impact of TTAB Decisions 

 in Civil Litigation: The Alphonse-Gaston Act, 

 74 Trademark Rep. 180 (1984).................................................................................................................§ 510.02(a) 

Table of Authorities - 753 
TABLE OF AUTHORITIES 

Bergsman, Marc A., TIPS FROM THE TTAB: The Effect of Board Decisions 

 in Civil Actions; Claim Preclusion and Issue Preclusion in Board Proceedings, 

 80 Trademark Rep. 540 (1990)............................................................................................. §§ 510.02(a); 605.03(e) 

Bergsman, Marc A., TIPS FROM THE UNITED STATES

 PATENT AND TRADEMARK OFFICE TTAB: Concurrent Use and 

 Intent-to-Use Applications, 

 83 Trademark Rep. 416 (1993)....................................................................................§§ 1103.01(a); 1105; 1113.01 

Bogorad, Abraham The Impact of the Amended Rules Upon 

 Discovery Practice Before the Trademark Trial and Appeal Board,

 66 Trademark Rep. 28 (1976)..................................................................................................................§ 502.06(b) 

Calcagno, Carla TIPS FROM THE TTAB: Discovery Practice Under Trademark Rule 2.120 (d)(1), 

 80 Trademark Rep. 285 (1990)................................................................................................................. § 405.02(c) 

Chapman, Beth A., TIPS FROM THE TTAB: Amending Pleadings: 

 The Right Stuff, 81 Trademark Rep. 302 (1991)..........................................................§§ 309.03(a)(2); 313.04; 315;

 506.01; 507.01; 507.02; 507.02(b);

 507.03(a); 507.03(b)

Cooper, Alan S., The Application of Rule 11 Sanctions in Trademark Cases, 

 78 Trademark Rep. 427 (1988)......................................................................................................................§ 527.02

Frugé, Louise E., TIPS FROM THE TTAB: An "Object" Lesson, 

 72 Trademark Rep. 211 (1982)..............................................................................................§§ 707.02(c); 707.03(c)

Frugé, Louise E., TIPS FROM THE TTAB: Depositions Upon Written Questions, 

 70 Trademark Rep. 253 (1980)..................................................................................... §§ 404.03(b); 404.07(j); 531 

Hohein, G. Douglas, TIPS FROM THE TTAB: Potpourri, 

 71 Trademark Rep. 163 (1981)........................................................................................... §§ 405.04(b); 407.03(b);

 409; 703.01(i) 

Kera, David J., TIPS FROM THE TTAB: Preparing and Filing Briefs 

 With the Trademark Trial and Appeal Board, 

 66 Trademark Rep. 141 (1976)...................................................................................................... §§ 801.01; 801.03

Kera, David J., TIPS FROM THE TTAB: Summary Judgment, 

 71 Trademark Rep. 59 (1981)........................................................................................................................§ 528.02

Krugman, Gary D., TIPS FROM THE TTAB: Motions for Judgment 

 After Commencement of Testimony Periods, 

 73 Trademark Rep. 76 (1983)........................................................................................... §§ 502.01; 534.02; 534.03

Krugman, Gary D., TIPS FROM THE TTAB: The Amended Trademark

 Rules of Practice and Their Effect on Ex Parte Appeals, 

 74 Trademark Rep. 341 (1984)............................................................................. §§ 1201.04; 1202.02; 1203.02(b);

 1204; 1207.02; 1207.03; 1209.01

Krugman, Gary TIPS FROM THE TTAB: Testimony Depositions, 

 70 Trademark Rep. 353 (1980).............................................................. §§ 404.09; 703.01(h); 703.01(j); 703.01(n)

Lefkowitz, Saul and Janet E. Rice, Adversary Proceedings

 Before the Trademark Trial and Appeal Board, 

 75 Trademark Rep. 323 (1985).....................................................................§§ 309.02(b); 404.03(a)(2); 404.03(b);

 404.03(d); 404.05; 404.07(j); 406.03; 407.02;

 522; 526; 703.01(f)(1); 703.01(f)(2); 703.02(m);

 705; 706; 901.01; 903.03; 1004

Lefkowitz, Saul TIPS FROM THE TTAB: Presentation of an 

 Oral Hearing Before the Trademark Trial and Appeal Board, 

 67 Trademark Rep. 283 (1977)...................................................................................................... §§ 802.01; 802.08

Quinn, T. Jeffrey, TIPS FROM THE TTAB: The Rules Are Changing, 

 74 Trademark Rep. 269 (1984)........................................................................................§§ 534.02; 536; 602.02(b);

 707.04; 801.02(b); 801.02(c); 

 1103.03; 1105; 1107

Table of Authorities - 754 
TABLE OF AUTHORITIES 

Quinn, T. Jeffrey, TIPS FROM THE TTAB: Discovery Safeguards 

 in Motions for Summary Judgment: No Fishing Allowed, 

 80 Trademark Rep. 413 (1990)...................................................................................................... §§ 528.01; 528.06

Quinn, T. Jeffrey, TIPS FROM THE TTAB: Inter Partes Summary 

 Judgment Revisited, 

 76 Trademark Rep. 73 (1986)........................................................................................... §§ 528.01; 528.02; 528.03

Rice, Janet E., and Saul Lefkowitz, Adversary Proceedings Before the 

 TTAB see Lefkowitz, Saul and Janet E. Rice

Rice, Janet E., TIPS FROM THE TTAB: Concurrent Use 

 Applications and Proceedings, 

 72 Trademark Rep. 403 (1982)....................................................................§§ 1102.01; 1107; 1108; 1110; 1113.01

Rice, Janet E., TIPS FROM THE TTAB: Making Documents 

 Obtained During Discovery and Third-Party Registrations of Record, 

 67 Trademark Rep. 54 (1977)..........................................................................................§§ 704.03(b)(1)(B); 704.11

Rice, Janet E., TIPS FROM THE TTAB: Newest TTAB Rule Changes; 

 More Tips on Concurrent Use Proceedings, 

 76 Trademark Rep. 252 (1986).................................................................................................... §§ 514.03; 1113.01

Rice, Janet E., TIPS FROM THE TTAB: Recent Changes in the 

 TTAB Discovery Rules, 

 74 Trademark Rep. 449 (1984)......................................................................................... §§ 404.03(b); 406.03; 522

Rice, Janet E., TIPS FROM THE TTAB: The Timing of Discovery, 

 68 Trademark Rep. 581 (1978)......................................................................................................................§ 403.04

Rooney, Louise E., TIPS FROM THE TTAB: Rule 2.133 Today, 

 81 Trademark Rep. 408 (1991)...................................................................................................... §§ 514.01; 514.03

Sams, J. David, TIPS FROM THE TTAB: Third Party Registrations in 

 TTAB Proceedings, 

 72 Trademark Rep. 297 (1982).......................................................................................................§ 704.03(b)(1)(B) 

Simms, Rany L., TIPS FROM THE TTAB: Compelling the 

 Attendance of a Witness in Proceedings Before the Board, 

 75 Trademark Rep. 296 (1985)................................................................ §§ 404.03(a)(1); 404.03(a)(2); 404.03(b);

 404.03(c)(2); 404.03(d); 703.01(f)(1);

 703.01(f)(2); 703.01(f)(3)

Simms, Rany L., TIPS FROM THE TTAB: Stipulated Protective Agreements, 

 71 Trademark Rep. 653 (1981)...............................................................................§§ 120.02; 412.02(b); 412.02(c);

 412.02(d); 412.04; 703.01(p)

Simms, Rany L., TIPS FROM THE TTAB: The Concurrent User as Opposer, 

 67 Trademark Rep. 654 (1977)........................................................................................ §§ 1102.01; 1108; 1113.01

Simms, Rany L., TIPS FROM THE TTAB: Whether and When

 to File Papers During Trademark Proceedings, 

 67 Trademark Rep. 175 (1977)................................................................................................................ § 703.01(e) 

Skoler, Daniel L., TIPS FROM THE TTAB: Evidence in Ex Parte Appeals 

 --Problems and Lost Opportunities, 

 73 Trademark Rep. 310 (1983)..............................................................................§§ 1204; 1207.02; 1207.03; 1208

Wendel, Helen R., TIPS FROM THE UNITED STATES PATENT 

 AND TRADEMARK OFFICE TTAB: The Burden Shifts: Revised 

 Discovery Practice Under Trademark Rule 2.120(d)(1), 

 82 Trademark Rep. 89 (1992).................................................................................................§§ 405.03(e); 410; 519

Treatises 

McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, 

 §§ 20:13 et seq. (4th ed. 2001).............................................................................................................. § 309.03(a)(2) 

Table of Authorities - 755 
TABLE OF AUTHORITIES 

McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, 

 § 20:52 (4th ed. 2001).......................................................................................................................... § 309.03(a)(2)

McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, 

 § 20:67 (4th ed. 2001)........................................................................................................... §§ 307.02(c)(1); 313.03

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1357 (1990)....................................................§ 503.01

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1367 (1990)....................................................§ 504.02

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1368 (1990) ...................................................§ 504.02

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1376 (1990)....................................................§ 505.01

Wright & Miller, Federal Practice and Procedure: Civil 2d § 1380 (1990).................................... §§ 506.01; 506.02

Wright & Miller, Federal Practice and Procedure: Civil 2d § 2382 (1999).........................................................§ 511 

Wright & Miller, Federal Practice and Procedure: Civil 2d § 2383 (1999).........................................................§ 511 

Wright & Miller, Federal Practice and Procedure: Civil 2d § 2384 (1999).........................................................§ 511 

Wright, Miller & Kane, Federal Practice and Procedure: Civil 3d § 2692 (1998) .........................................§ 312.03

Wright, Miller & Kane, Federal Practice and Procedure: Civil 3d § 2693 (1998) .........................................§ 312.03

Wright, Miller & Kane, Federal Practice and Procedure: Civil 3d § 2722 (1998) .........................................§ 528.04

Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2083 (1994)......................... §§ 404.03(c)(2); 

 404.04; 703.01(g)

Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2113 (1994)..................§§ 404.08(c); 404.09

Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2178 (1994).................................§ 405.04(b) 

Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2213 (1994).................................§ 406.04(b) 

Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2005 (1994).............................§ 404.03(c)(2)

Official Publications 

Federal Register 

46 Fed. Reg. 6,940 (1981)...............................................................................................................................§ 313.04

48 Fed. Reg. 23,122 (1983)............................................................§§ 536; 602.02(b); 704.03(b)(1)(A); 707.04; 1004

54 Fed. Reg. 34,886 (1989)..................................................................................... §§ 310.01; 310.02; 405.03(a); 806

56 Fed. Reg. 46,376 (1991) corrected at 56 Fed. Reg. 54917 (1991)....................................................................§ 519 

63 Fed. Reg. 48,086 (1998)..........................................................................................................................§ 509.01(a) 

63 Fed. Reg. 48,081 (1998)..................................................................................................... §§ 509.01(a); 703.01(k) 

68 Fed. Reg. 55,748 (2003).........................................§§ 315; 507.01; 507.02; 512.01; 514.01; 528.07(a); 605.03(b)

Official Gazette 

Filing of Papers During Unscheduled Closings of the Patent and Trademark Office,

 1076 TMOG 6 (March 10, 1987)...................................................................................................................§ 112 

Appeals to the Federal Circuit from PTO, 

 1120 TMOG 22 (November 13, 1990)........................................................................§§ 509.02; 902.01; 902.02;

 902.06; 902.07; 903.04

Interlocutory Decisions by the Trademark Trial and Appeal Board, 

 1123 TMOG 36 (February 19, 1991)...................................................................................................§ 901.02(a) 

Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 

 1214 TMOG 149 (September 29, 1998).............................................................................................§ 509.01(a) 

Post Registration: Changes to Requirements for Maintaining Trademark Registrations, 

 1228 TMOG 187 (November 30, 1999)...............................................................................................§ 602.02(a) 

Effect of Dec. 1, 1993 Amendments to the FRCP on TTAB Inter Partes Proceedings, 

 1159 TMOG 14 (February 1, 1994)...............................................................................................................§ 401 

Table of Authorities - 756 
TABLE OF AUTHORITIES 

Notice of Final Rulemaking 

 1031 TMOG 13 (June 21, 1983)...........................................§§ 536; 602.02(b); 704.03(b)(1)(A); 707.04; 1004

 Notice of Final Rulemaking

 1106 TMOG 26 (September 12, 1989)............................................................ §§ 310.01; 310.02; 405.03(d); 806

 Notice of Final Rulemaking, 

 1131 TMOG 54 (October 22, 1991)...............................................................................................................§ 519 

 Teleconferencing on Cases Before the TTAB (June 20, 2000)..................................................................§ 502.06(a) 

 Notice 824 TMOG 1200 (February 23, 1966) .............................................................. § 118.04 

Trademark Manual of Examining Procedure 

TMEP § 108 ...........................................................................................................................................................§ 123 

TMEP § 109 ......................................................................................................................................................§ 120.03

TMEP § 302.03 ...............................................................................................................................................§ 1203.01 

TMEP § 305.03 ...............................................................................................................................................§ 1202.02 

TMEP § 305.03(h).............................................................................................................................................§ 111.03

TMEP § 306.02 ......................................................................................................................................................§ 107 

TMEP § 602 ......................................................................................................................................................§ 114.06

TMEP § 602.01 .................................................................................................................................................§ 114.03

TMEP § 602.03 ................................................................................................................................. §§ 117.08; 513.01

TMEP § 603 ......................................................................................................................................................§ 117.02

TMEP § 603.02 .................................................................................................................................................§ 117.03

TMEP § 707 ......................................................................................................................................................§ 212.06

TMEP § 713 ....................................................................................................................................................§ 1201.01 

TMEP § 714.01 ...............................................................................................................................................§ 1201.02 

TMEP § 714.03 ............................................................................................................................. §§ 1201.01; 1201.02

TMEP § 714.05 .................................................................................................................................. §§ 1201.02; 1204

TMEP § 714.06 ...............................................................................................................................................§ 1201.02 

TMEP § 715.01 ................................................................................................................... §§ 1201.01; 1202.02; 1204

TMEP § 715.02 ...............................................................................................................................................§ 1202.02 

TMEP § 715.03 ................................................................................................................... §§ 1202.02; 1204; 1205.01

TMEP § 715.04 ............................................................................................... §§ 1203.02(a); 1204; 1205.01; 1207.02

TMEP § 716.02 ....................................................................................................................................................§ 1213

TMEP § 718.02 ...............................................................................................................................................§ 1202.01 

TMEP § 718.05 ...............................................................................................................................................§ 1202.01 

TMEP § 802.06 .................................................................................................................................................§ 512.04

TMEP § 802.07 .................................................................................................................................................§ 512.04

TMEP § 803.03 ............................................................................................................................................ § 303.05(c) 

TMEP § 803.06 .................................................................................................................................................§ 206.03

TMEP § 804.05 ................................................................................................................................. §§ 106.02; 203.03

TMEP § 1104.03 .............................................................................................................................................§ 1206.01 

TMEP § 1104.04 ....................................................................................................................................................§ 219 

TMEP § 1104.07 .............................................................................................................................................§ 1206.01 

TMEP § 1109.04 .............................................................................................................................................§ 1206.02 

TMEP § 1110 ...................................................................................................................................... §§ 516; 1205.02

TMEP § 1110.08 ....................................................................................................................................................§ 516 

TMEP § 1201.02(c)...................................................................................................................................... § 303.05(c) 

TMEP § 1201.02(d)...........................................................................................................................................§ 303.02

TMEP § 1207.04 .................................................................................... §§ 1102.01; 1103.01(a); 1103.01(f); 1103.03

TMEP § 1208.01 ..................................................................................................................................................§ 1001

TMEP § 1208.02 ..................................................................................................................................................§ 1003

TMEP § 1208.03 ..................................................................................................................................................§ 1002

Table of Authorities - 757 
TABLE OF AUTHORITIES 

TMEP § 1212.02 ..................................................................................................................................................§ 1215

TMEP § 1403.05(a).........................................................................................................................................§ 1202.04 

TMEP § 1403.05(b).........................................................................................................................................§ 602.02a 

TMEP § 1501 .................................................................................................. §§ 1201.01; 1201.02; 1202.01; 1202.02

TMEP § 1501.02 ............................................................................... §§ 1203.01; 1203.02(a); 1203.02(b); 1203.02(c)

TMEP § 1501.03 ........................................................................................................§§ 1203.02(b); 1203.02(c); 1210

TMEP § 1501.04 .............................................................................................................................................§ 1202.01 

TMEP § 1501.05 .......................................................................................................................§§ 1203.02(b); 1205.01

TMEP § 1501.06 ...................................................................................................................... §§ 1205.01; 1217; 1218

TMEP § 1501.07 .............................................................................................................................................§ 1219.01 

TMEP § 1502 .........................................................................................................................................................§ 205 

TMEP § 1503.04 ........................................................................................... §§ 206.02; 206.03; 303.05(a); 303.05(b)

TMEP § 1504.01 ....................................................................................................................... §§ 212.02; 212.04; 213

TMEP § 1504.02 ........................................................................................................................................... § 213; 215 

TMEP § 1504.05 ........................................................................................................................................§ 1203.02(b)

TMEP § 1505 .................................................................................................................................... §§ 212.02; 212.04

TMEP § 1505.01 .................................................................................................................................... §§ 212.02; 214 

TMEP § 1605.05 ..........................................................................................................................................§ 307.02(a) 

TMEP § 1606.03 ..........................................................................................................................................§ 307.02(a) 

TMEP § 1608 ...............................................................................................................................................§ 602.02(a) 

TMEP § 1702 ..................................................................................................................................................§ 1201.05 

TMEP § 1703 ..................................................................................................................................................§ 1201.05 

TMEP § 1704 .................................................................................................................................. §§ 211.03; 1201.05

TMEP § 1706 .............................................................................................................................................§ 1203.02(a)

TMEP § 1707 ..................................................................................................................................................§ 1201.05 

TMEP § 1707.05 ....................................................................................................................................................§ 123 

TMEP § 1708 ..................................................................................................................................................§ 1201.05 

TMEP § 1714 ................................................................................................................................ §§ 1202.01; 1202.04

TMEP § 1714.01 ........................................................................................................................... §§ 1202.01; 1202.04

TMEP § 1715 ....................................................................................................................................... §§ 215; 1209.03

TMEP § 1715.03 ....................................................................................................................................................§ 215 

Miscellaneous 

American Bar Association's Model Rules of Professional Conduct, Rules 1.7 and 1.9 ....................................§ 114.08

Black's Law Dictionary (Fifth Edition, 1979)....................................................................................................§ 404.03

Guide to Implementation of Madrid Protocol in the United States, Exam Guide No. 2-03, 

 October 28, 2003 .......................................................................................................§§ 602.02(a); 704.03(b)(1)(A)

Guide to the International Registration of Marks Under the Madrid Agreement

 and the Madrid Protocol (2002) at www.wipo.int/madrid/en/guide ........................................§§ 514.01; 605.03(b)

Notes of Advisory Committee on Rules, Advisory Committee Note of 1963 to 

 Fed. R. Civ. P. 28(b) .................................................................................................................................... § 404.03

 * * * * * 

Table of Authorities - 758 
SUBJECT MATTER INDEX 

- A - 

Abandonment of Application: 

During Ex Parte Appeal ...... ..................................................................................................................§ 1211

During Time to Oppose ......................................................................................................................... § 218

During TTAB Inter Partes Proceeding:

 Abandonment and Opposition Filed on Same Day ............................................................ §§ 602.01 

 After Rule 2.130 Remand to Examining Attorney .....................................................§§ 602.01; 603

 Deletion of Class From Multi-Class Application......................................§§ 602.01; 603; 605.03(b)

 During Concurrent Use Proceeding .........................................................................................§§ 603

 During Interference ..................................................................................................................§§ 603

 During Opposition.......................................................................................................§§ 218; 602.01

Not During TTAB Inter Partes Proceeding ............................................................................................. § 218

Prior to Opposition, for Failure to Timely Respond to Office Action................................................ § 602.01

Procedure for ..................... ...............................................................................................§§ 218; 602.01; 603

Abandonment of Cancellation by Petitioner 

(see also Withdrawal of Proceeding by Plaintiff).................................................................... § 601

Abandonment of Opposition by Opposer 

(see also Withdrawal of Proceeding by Plaintiff).................................................................... § 601

Abandonment of Subject Registration During Inter Partes Proceeding........................... § 602.02 

Abstracts of Title to Applications and Registrations ..................................................................... § 121

Access to Files: 

After TTAB Proceeding ............................. ........................................................................................§ 120.03

 Confidential .................................... ....................................................................................................§ 120.02

 During Appeal From TTAB Decision..................................................................................................... § 904

 During TTAB Proceeding ...................................................................................................§§ 120.01; 120.02

Files Not to be Removed From Offices of TTAB.....................................................................§§ 120.01; 121

 Nonconfidential ..............................................................................................................................§ 120.01

 Terminated Proceeding .......................................................................................................................§ 120.03

Access to Record, During Appeal From TTAB Decision ............................................................................. § 904

Action by Assignee ....................................................................................................................................§ 124

Act of 1946 (see Trademark Act of 1946) 

Subject Matter Index - 759 
SUJECT MATTER INDEX 

Additional Time:

For Argument at Oral Hearing, Motion for............................................................................ §§ 541.02; 802.05 

For Taking Action After Service by Mail ............................................................................................ § 113.05

Addresses: 

Change of Party or Representative....................................................................................................... § 117.07

Of TTAB ............................................ ........................................................................................................§ 103

Admission(s): 

Against Interest: 

 In Application or Registration File ................................................................... §§ 704.03(a); 704.04

 In Briefs on Case ............................................................................................................ § 704.06(b)

 In Pleadings ................................................................................................................... § 704.06(a)

Requests for (see also Requests for Admission) ..............................................................§§ 407; 407.03

Responses to Requests for (see Requests for Admission; and Evidence, 

Introduction of, in Inter Partes Proceeding: Discovery Responses)

Advisory Opinions Not Issued by TTAB ................................................................................... § 605.03(f)

Agreement, Settlement (see Settlement Agreement) 

Alternative: 

Pleading ................................................................................................................................................ § 309.03

Positions May be Taken by Applicant During Ex Parte Prosecution........................................................§ 1215

Amendment: 

Of Admission (or Withdrawal) ....................................................................................................§§ 407.04; 525

Of Application: 

 After Decision on Ex Parte Appeal................................................................. §§ 1205; 1217; 1218

 As Defense to Inter Partes Proceeding............................................................ §§ 311.02(b); 514.03 

 During Inter Partes Proceeding ................................................§§ 212.07; 514; 605.03(b); 605.03(c)

 During Opposition, to Convert to Concurrent Use................................................................. § 1113

During or After Extension of Time to Oppose 

 (see Extension of Time to Oppose)

 Geographic Limitations......................................................................... §§ 309.03(a)(1); 311.02(b); 

313.01; 514.03; 1101.02

 Motion to Amend (see also Motions, Types of).............................................................. § 514

 Plaintiff's Pending .......................................................................................................... § 605.03(c)

 Pursuant to Settlement ..................................................................................§§ 605.03(b); 605.03(c)

 To Allege Use (see Amendment to Allege Use)

 Of Mark: 

 Unavailable to 66(a) applications......................................................................§§ 514.01; 605.03(b)

 Of Pleadings:

 May be Amended as in Civil Action........................................................................................ § 315

 Motion for amendment (see also Motions, Types of) ...................................................... § 507

 Prohibition in opposition to 66(a) application............................................... §§ 315; 507.01; 507.02

 Of Registration: 

 As Defense to Inter Partes Proceeding............................................................. §§ 311.02(b); 514.03

 During Inter Partes Proceeding ............................................................................ §§ 514; 605.03(b)

Subject Matter Index - 760 
SUJECT MATTER INDEX 

 Effect on Time for Filing Cancellation ....................................................................... § 307.02(c)(2)

 Geographic Limitations...................................§§ 309.03(a)(1); 311.02(b); 313.01; 514.03; 1101.02

 Motion to Amend (see also Motions, Types of)............................................................... § 514

Pursuant to Settlement ................................................................................................... § 605.03(b) 

 To restriction on concurrent registration..................................................................................§ 1114

To Allege Use:

 Disposition of Untimely........................................................................................................... § 219

Filed, or associated with file, During Ex Parte Appeal..................................................... § 1206.01

Filed, or associated with file, During Extension of Time to Oppose ....................................... § 219

 Filed, or associated with file, During Opposition .................................................................... § 219

 Time for Filing ......................................................................................................................... § 219 

To Section 66(a) registrations ..................................................................................§§ 704.03(b)(1)(A); 1114

Amicus Brief .................................................................................................................................... §§ 538; 801.04

Answer: 

Admissions and Denials ........... .................................................................................................... § 311.02(a)

 Affirmative Assertions Which Are Not Defenses........................................................................ § 311.02(d)

Affirmative Defenses .................................................................................................................. . § 311.02(b) 

Content of ............................. ............................................................................................................ § 311(a)

 Counterclaims, Generally (see also Counterclaim)......................................................................... § 313

 Defenses, Generally (see also Defenses)............................................................. §§ 311.02(b); 311.02(d)

 Denials ......................................................................................................................................... § 311.02(a)

Failure to Timely File (see also Default: Failure to Timely Answer Complaint)............................... § 312

 Filed through ESTTA..................................................................................................................... § 311.01(a) 

Form of, Generally ................ ...................................................................................................... § 311.01(a)

Heading For ................................................................................................................................. § 311.01(a)

Must be Served ............................................................................................................................ § 311.01(c)

Need Not be Verified ................................................................................................................... § 311.01(b)

Reply to Answer Should Not be Filed............................................................................................... § 311.03

 Signature.......... ........................................................................................................................... § 311.01(b) 

 Substantive Pleading of .................................................................................................................... § 311.02

Time for Filing:

 Extension of ............ ............................................................................... §§ 310.03(c); 501.03; 509

 Rule 2.119(c) Five-Day Addition Not Applicable ......................................................... § 310.03(b)

 To Complaint ................................................................................................................. § 310.03(a)

 To Counterclaim ............................................................................................................. § 310.03(a)

 Unsigned ....................................................................................................................................... § 311.01(b)

Who May Sign ............................................................................................................................. § 311.01(b)

Appeal From Action of Examining Attorney (see Ex Parte Appeal) 

Appeal From Decision of TTAB: 

Access to Record During Appeal ........................................................................................................... § 904

Avenues of Appeal Described............................................................................................................ § 901.01 

By Appeal to Federal Circuit:

 Access to Record During .................................................................................................... § 904.01

 Appeal Brief ......................................................................................................... §§ 902.06; 902.07

 Appendix ............................................................................................................................ § 902.07

 Certified List ....................................................................................................................... § 902.06

Subject Matter Index - 761 
SUJECT MATTER INDEX 

 Described Generally............................................................................................................ § 901.01

 Docketing of Appeal ........................................................................................................... § 902.06

Ex Parte Cases, Special Provisions re ...................................................... §§ 902.08; 1218; 1219.02

 How to File Appeal ............................................................................................................. § 902.01

 Notice of Appeal...................................................................................................................§ 902.01

 Notice of Election to Have Review by Civil Action .................. §§ 901.01; 902.03; 902.04; 903.06

 Oral Argument on Appeal................................................................................................... § 902.07

 Requirements for Appeal .................................................................................................... § 902.01

 Standard of Review ...................................................................................................................§ 906

 Time for Filing: 

 Appeal Brief ......................................................................................................... § 902.06

 Certificate of Mailing or Transmission Available ............................................... § 902.02

 Counting of Time.................................................................................................. § 902.05

 Cross-Appeal ........................................................................................................ § 902.02 

 Director Determines Timeliness of Notice of Appeal........................................... § 902.02

 "Express Mail" Procedure Available .................................................................... § 902.02

 Extension of Time.................................................................................. §§ 509.02; 902.02

If There is Request for Reconsideration of Subject Decision ............................... § 902.02

In Case of Judgment Entered Subject to Prevailing Party's 

Establishment of Constructive Use ............................................................... § 901.02(b)

 Notice of Appeal ................................................................................................... § 902.02

Notice of Election to Have Review by Civil Action......§§ 901.01; 902.03; 902.04; 903.06

 Waives Appeal by Civil Action .............................................................................§§ 902.03; 902.08

By Commencing Civil Action:

 Access to Record During ......................................................................................................§ 904.02

Appeal to Federal Circuit Waives Appeal by Civil Action...................................................§ 903.06

 Commencement of Action ....................................................................................................§ 903.04

 Described Generally..............................................................................................................§ 901.01

 Ex Parte Cases, Special Provisions re ...................................................................................§ 903.07

 Notice of Election to Have Review by Civil Action ....................§§ 901.01; 902.03; 902.04; 903.06

 Parties to Action....................................................................................................................§ 903.02

 Place of Action......................................................................................................................§ 903.03

 Standard of Review................................................................................................................... § 906

 Time for Filing:

 Civil Action ...........................................................................................................§ 903.04

 Counting of Time....................................................................................................§ 903.05

 Cross-Action ..........................................................................................................§ 903.04

 Extension of Time................................................................................... §§ 509.02; 903.04

If There is Request for Reconsideration of Subject Decision .................................§ 903.04

In Case of Judgment Entered Subject to Prevailing Party's 

 Establishment of Constructive Use .................................................. §§ 901.02(b); 903.04

Notice of Election to Have Review by Civil Action......§§ 901.01; 902.03; 902.04; 903.06

TTAB Should be Notified Promptly of Filing of Civil Action ................................. §§ 806; 903.01

 Standard of Review .................................................................................................................................§ 906

What is Appealable:

Court to Which Appeal is Taken Determines Appealability of Decision ...................... § 901.02(a)

 Decision Must be Final, Not Interlocutory........................................................... §§ 901.02(a); 905

Judgment Entered Subject to Prevailing Party's 

 Establishment of Constructive Use ............................................................................. § 901.02(b)

 Review of Interlocutory Decisions on Appeal From Final Decision .................. §§ 901.02(a); § 905

What is Petitionable (see also Petition to the Director).......................................... . §§ 901.02(a); 905

Subject Matter Index - 762 
SUJECT MATTER INDEX 

Application Files:

 Access to (see also Access to Files)................................................................................................. § 120

 Copies of Files or Parts Thereof................................................................................................... §§ 121; 122

 Introduction as Evidence (see also Evidence, 

Introduction of, in Inter Partes Proceeding) .................................................... § 704.03

Not to be Removed From Offices of TTAB............................................................................ §§ 120.01; 121

Application:

 Abandonment of (see Abandonment of Application)

 Abstract of Title to ................................................................................................................................ § 121

Allegations, Specimens, etc., Not Evidence Unless Proved at Trial ................................ §§ 704.03a; 704.04

 Amendment of (see Amendment of Application)

Appeal to TTAB From Final Action in (see Ex Parte Appeal)

Approval of, During Ex Parte Appeal, for Publication .............................................................. § 1203.02(b)

 Concurrent Use (see also Concurrent Use Proceeding):

 Abandonment of, During Concurrent Use Proceeding 

 (see also Abandonment of Application).........................................................§ 603

 Amendment of Intent-to-use Application to Seek Concurrent Registration .................. § 1103.01(a)

Applicant May be Required to Furnish Extra Copies of Application, etc. ......... .§§ 1103.01(c) - (f); 

 1103.02; 1102.02(b)

Application Based on Sec. 44 Only May Not Seek Concurrent Registration ................ § 1103.01(a)

 Described ........................................................................................................................... § 1102.01

 Geographic Restriction, Generally....................................................................... §§ 1103.01(c) – (f)

 Intent-to-use Application Filed Also as Concurrent Use Application Void................... § 1103.01(a)

 Information in Application - What it Provides................§§ 1103.01(c) – (f); 1106 – 1106.05; 1107

 Jurisdictional Requirement ......................................................................... §§ 1103.01(b); 1103.03

 Mode of Use Restriction, Generally........................................................................ § 1103.01(d)(3)

Must Assert Use in Commerce .................................................... §§ 1103.01(a); 1103.02; 1103.03

Must State Area and/or Mode of Use for Which Registration Sought....... §§ 1103.01(d); 1103.02; 

 1103.03

 Must State Information re Use by Exceptions ................................§§ 1103.01(e); 1103.02; 1103.03

On Basis of Concurrent Use Proceeding ........................................... §§ 1102.02; 1102.01; 1103.10

 On Basis of Prior Court Decision.......................................................................§§ 1102.01; 1103.03

On Basis of TTAB Decision in Prior Concurrent Use Proceeding. ...................§§ 1102.01; 1103.02

 Publication Statement for ............................................... §§ 1103.01(f); 1103.02; 1103.03; 1106.01

 Request to Amend Application ................................................................................................§ 1107

 Requirements for......................................................................................................................§ 1103

 Statement, Publication, for ............................................. §§ 1103.01(f); 1103.02; 1103.03; 1106.01

 Types of...............................................................................................................................§ 1102.01 

 Who Must be Listed as Exception ................................................................................. § 1103.01(e)

 Wording of Publication Statement for .............................§§ 1103.01(f); 1103.02; 1103.03; 1106.01

Deletion of Class From Multi-Class Application During Inter Partes Proceeding §§ 602.01; 603; 605.03(b)

 Evidentiary Value of ................................................................................ §§ 704.03(a); 704.03(b)(2); 704.04

 Introduction as Evidence (see also Evidence,Introduction of, in 

 Inter Partes Proceeding) ................................................................................................§ 704.03

 Motion to Amend (see also Motions, Types of)............................................................................. § 514

 Motion to Divide ................... ................................................................................................................. § 516

 Obtaining Status Information Concerning............................................................................................... § 123

Plaintiff's Pending, TTAB has no Jurisdiction Over ...................................................................... § 605.03(c)

Subject Matter Index - 763 
SUJECT MATTER INDEX 

Remand to Examining Attorney From Inter Partes Case .............................................................. §§ 515; 805

Statements and Things in File Not Evidence Unless Proved at Trial.............................. §§ 704.03(a); 704.04

Status of Application After Inter Partes Proceeding.................................................................................§ 807

When Assignee May Take Action in ...................................................................................................... § 124

Applications under Section 66(a): 

Abandonment of, as result of cancellation of underlying international registration:

 During Extension of Time to Oppose ........................................................................................§ 218 

 During Opposition.............................................................................................§§ 602.01; 602.02(b)

Amendment of Application .................................................................................................................§ 514.01

Amendment of Mark In, Not Permitted.............................................................................§ 514.01; 605.03(b)

Amendment of Notice of Opposition Against..................................... § 314; 315; 507.01; 507.02; 528.07(a)

 Concurrent Use ............................................................................................................ § 212.02; 1103.01(a)

Motion to Divide .....................................................................................................................................§ 516 

Electronic filing Required for Opposition Against.............................................§§ 106.03; 308.01(b); 309.01

Electronic filing Required for Extension of Time to Oppose................................. §§ 106.03; 203.01; 212.02

Recording Assignments of or Changes to ................§§ 124; 512.01; 512.03; 704.03(b)(1)(A); 1213; 514.01

 Remand of ...................................................................................§§ 213; 515; 602.01; 603; 805; 1217

Republication of ............................................................................................................. §§ 214; 514.01; 603 

Voluntary Cancellation of .............................................................................................................. § 602.02(a) 

Assignee: 

Motion to Join or Substitute Assignee (see also Motions, Types of) ............................................ § 512

When May Take Action ...........................................................................................................§§ 124; 512.01

Assignment: 

Action by Assignee ............... .................................................................................................. §§ 124; 512.01

Issuance of Registration in Name of Assignee.................................................................................. § 512.03

Motion to Join or Substitute Assignee (see also Motions, Types of) ............................................. § 512

Of 66(a) registration .............................................................................................................§ 704.03(b)(1)(A) 

Of Mark in Inter Partes Case............................................................................................................. § 512.01

Attending Deposition by Telephone ............................................................................... §§ 404.06; 703.01(h)

Attorney: 

Adverse Parties Represented by Same Attorney .............................................................................. § 114.08

Appearance as Representative of Party ............................................................................................ § 114.03

 Change of Address ............................................................................................................................ § 117.07

 Conduct of ............................................................................................................................................. § 115

 Correspondence With (see Correspondence -- With Whom Held)

 Disciplinary Proceedings.....................................................................................................................§ 115.02

 Disqualification of ..............................................................................................................................§ 115.03

Eligibility to Represent Party ..............................................................................................................§ 114.03

 Foreign ............................................................................................................................................... § 114.05

 Power of (see Power of Attorney)

Revocation of Authority to Represent Party...................................................................................... § 116.01

 Selection of ........................................................................................................................................ § 114.02

 Withdrawal (see Withdrawal as Representative of Party)

Subject Matter Index - 764 
SUJECT MATTER INDEX 

Attorneys' Fees, Not Awarded by TTAB..........................................................................§§ 502.05; 527.02

Audiotape Oral Hearing, Motion for Leave to ....................................................................§§ 542; 802.06

Augmented Panel Hearing, Motion for...................................................................................§§ 540; 802.04 

Authority: 

Of TTAB Members, Interlocutory Attorneys to Act 

(see Trademark Trial and Appeal Board)

Of TTAB to Schedule Proceedings...................................................................................................... § 510.01 

- B - 

Bankruptcy Proceeding: 

Resumption of TTAB Proceeding After ....................................................................................... § 510.03(b)

Suspension of TTAB Proceeding Due to ....................................................................................... § 510.03(a)

Briefs: 

Ex Parte Appeal:

Cases That May be Cited as Precedent ...........................................................................§ 1203.02(f)

 Form for .................. ...........................................................................................................§ 1203.01

Evidence of Record Should Not Be Resubmitted With Brief.............................................§ 1203.01

 Material Submitted with Briefs......................................................................§§ 1203.01; 1203.02(e) 

No Provision for Reply Brief by Examining Attorney................................................... § 1203.02(c)

 Supplemental Brief, After Remand.....................................................................................§ 1209.01

 Time for Filing:

 Applicant's Main Brief..................................................................................... § 1203.02(a)

 Applicant's Reply Brief.................................................................................... § 1203.02(c)

 Examining Attorney's Brief............................................................................. § 1203.02(b)

 Extension of Time............................................................................................ § 1203.02(d)

 When Amendment and Appeal Both Filed................................................................§ 1205

When Appeal and Request for Reconsideration Both Filed ........... §§ 1202.02; 1203.02(a)

 Waiver of Claim or Requirement in Brief.................................................................... § 1203.02(g)

 On Case:

 Amicus . ......................................................................................................................§§ 538; 801.04

 Contents of........................................................................................................................... § 801.03

 Evidentiary Objections Raised in........................................................................................ § 801.03

 Exhibits Not Evidence Unless Properly Introduced....................................................... § 704.05(b)

 Form of ...............................................................................................................................§ 801.03

 May Not be Used to Introduce Evidence ........................................ §§ 704.05(b); 704.06(b); 801.01

Motion for Judgment for Failure of Plaintiff to

 File Main Brief [Rule 2.128(a)(3)] .......................................................... §§ 536; 801.02(a)

Motion for Leave to Exceed Page Limit .....................................................................§§ 537; 801.03

Motion for Leave to File Amicus Brief......................................................................................§ 538

 Motion to Strike Brief or Attached Exhibits...............................................................§§ 539; 801.05

 Not Mandatory for Defendant.......................................................................................... § 801.02(b)

Order to Show Cause re Failure of Plaintiff to 

File Main Brief [Trademark Rule 2.128(a)(3)]........................................ §§ 536; 801.02(a)

Subject Matter Index - 765 
SUJECT MATTER INDEX 

 Page Limit Described..................................................................................................§§ 537; 801.03

 Purpose of ............... ............................................................................................................ § 801.01

Reply Brief Not Permitted for Defendant in Absence of Counterclaim ......................... § 801.02(d)

Reply Brief Not Mandatory for Plaintiff ......................................................................... § 801.02(c)

 Statements in, Evidentiary Value of................................................................................. § 704.06(b)

 Time for Filing:

 Defendant's Main............................................................................................... § 801.02(b)

 Plaintiff's Main .................................................................................................. § 801.02(a)

 Plaintiff's Reply ................................................................................................. § 801.02(c)

 When Concurrent Use or Interference

 Proceeding Has More Than Two Parties ................................ §§ 801.02(e); 1007; 1109

When Parties are in Reverse 

 Positions in Consolidated Proceedings......................................................... § 801.02(e)

 When There is Counterclaim............................................................................ § 801.02(e)

 On Motions:

 Amicus ......................................................................................................................§§ 538; 801.04

 Failure to File Brief in Opposition ................................................................................... § 502.02(b)

Motion for Leave to File Amicus Brief......................................................................................§ 538

 Motion to Strike Brief................................................................................................................§ 517

 Page Limit ........................................................................................................ §§ 502.02(b); 528.01

 Reply Briefs ..................................................................................................... §§ 502.02(b); 517.02

 Requirement for Supporting Brief .................................................................................. § 502.02(b)

 Time for Filing ................................................................................................. §§ 502.02(b); 517.02

Business to be Conducted in Writing .....................................................................................................§ 104 

- C - 

Cancellation, Under Sec. 8 or 9, During Case, of Defendant's 

Registration, Motion for Order to Show Cause due to [Trademark Rule 2.134(b)]................§§ 535; 602.02(b)

Cancellation Proceeding:

Abandonment of, by Petitioner 

 (see also Withdrawal of Proceeding by Plaintiff).....................................................§ 601

Abandonment of Subject Registration During ....................................................................................§ 602.02

Access to Files During (see also Access to Files)..............................................................................§ 120

Adverse Decision in, Effect of on Right to Seek Concurrent Registration ............................................§ 1112

 Answer, Generally (see also Answer) ....................................................................................§ 310.03; 311

Appeal From Decision of TTAB in (see Appeal From Decision of TTAB)

Briefing Schedule .................. .............................................................................................................§ 801.02

Briefs on Case (see also Briefs: On Case)............................................................................................§ 801

 Combined Complaint May be Filed .........................................................................................................§ 305

 Commencement of ....................................................................................................................§§ 302; 403.02

 Complaint (see also Complaint).........................................................................................................§ 309

 Consolidated Complaint May be Filed.....................................................................................................§ 305

"Conversion" to Concurrent Use Proceeding .........................................................................................§ 1113

 Counterclaim for Cancellation ................................................................................................................ § 313

Subject Matter Index - 766 
SUJECT MATTER INDEX 

 Decision, Adverse, in Cancellation, Effect of on Right to Seek Concurrent Registration .....................§ 1112

 Decision, Final (see also Final Decision).................................................................................§§ 803; 806

Defendant's Registration Cancelled Under Sec. 8 or 9 During Case, 

Motion for Order to Show Cause Due to [Trademark Rule 2.134(b)] ...................§§ 535; 602.02(b)

 Described ............................................................................................................................................§ 102.02

Effect of Adverse Decision in Cancellation on Right to Seek Concurrent Registration ........................§ 1112

 Electronic filing ............................................................................................................§§ 308.02(b); 309.01

Fee for Filing (see also Fee) ...................................................................................... § 118.01; 307; 308.02

 Filing Date of Petition to Cancel.................................................................................................... § 308.02(b)

 Final Decision in (see also Final Decision) ............................................................................§§ 803; 806

 Geographic Limitations Not Considered in................................................................................§ 309.03(a)(1)

 Grounds for Cancellation: 

 Grounds Available at Any Time ...........................................................................................§ 307.01

Grounds Available Only Within Five Years After Registration or Republication:

 Counting of Five-Year Period............................................................................ § 307.02(a)

 Effect of Amendment of Registration............................................................§ 308.02(c)(2)

 Grounds Described ............................................................................................ § 307.02(a)

Limitation of Grounds After Five Years Is Independent of Sec. 15 Affidavit... § 307.02(b) 

Reliance on Registration by Plaintiff in Inter Partes 

 Proceeding Tolls Five-Year Period as to Counterclaim............................§ 307.02(c)(1) 

 Identity of Defendant ............................................................................................ §§ 309.02; 310.01; 310.02

 Joint Petitioners May File....................................................................................................................§ 303.06

 Late-filed .............................. ..............................................................................................................§ 307.04

Multiple Class Registration, Cancellation Against...................................................................................§ 304

 Notification of Proceeding (see also Notification of TTAB Proceeding)..................................§ 310

 Oral Hearing (see also Oral Hearing: On the Case) .........................................................................§ 802

 Partial Cancellation ............... ........................................................................................................ § 309.03(d) 

Petition to Cancel (see also Complaint)................................................................................................§ 309

Petition to Director From Action of TTAB During (see Petition to the Director)

 Registration Cancelled Under Sec. 8 or 9 During ................................................................§§ 535; 602.02(b)

Termination of ......................................................................................................................... §§ 120.03; 806

 Prematurely Filed ................... ............................................................................................................§ 307.03

 Scope of .....................................................................................................................................§ 309.03(a)(1) 

 Standing ............................................................................................................. §§ 303.03; 309.03(b); 313.03

Storage of Files and Exhibits After Termination of Proceeding ...............................................§§ 120.03; 806

Surrender of Registration During ........................................................................................................§ 602.02

Time for Filing Petition to Cancel: 

 Late Petition ................ .........................................................................................................§ 307.04

Petition That May be Filed at Any Time After Registration or Republication .....................§ 307.01

Petition That Must be Filed Within Five Years After Registration or Republication:

 Counting of Five-Year Period............................................................................ § 307.02(a)

 Effect of Amendment of Registration............................................................§ 307.02(c)(2) 

 General Description of....................................................................................... § 307.02(a)

Limitation of Grounds After Five Years Is Independent

 of Sec. 15 Affidavit....................................................................................... § 307.02(b) 

Reliance on Registration by Plaintiff in Inter Partes 

Proceeding Tolls Five-Year Period as to Counterclaim..................§§ 307.02(c)(1); 313.03

 Premature Petition ..................................................................................................§ 307.03

 Trial Schedule ..........................................................................................................................................§ 701

Voluntary Surrender of Registration During.......................................................................................§ 602.02

Who is Defendant ...............................................................................................................................§ 310.01

Subject Matter Index - 767 
SUJECT MATTER INDEX 

Who May Petition to Cancel:

 Damage, Meaning of.............................................................................................................§ 303.03

 Described, Generally.............................................................................................................§ 303.01

 Federal Trade Commission ...................................................................................................§ 303.04

 Joint Petitioners ....................................................................................................................§ 303.06

 Person, Meaning of...............................................................................................................§ 303.02

 Standing .................. ......................................................................................... §§ 303.03; 309.03(b)

Withdrawal of, by Petitioner 

 (see also Withdrawal of Proceeding by Plaintiff).....................................................§ 601

 Withdrawal of Subject Registration During ........................................................................................§ 602.02

Caption of Documents Filed With TTAB...................................................................................... § 106.01

Cause, Order to Show:

Why Default Judgment Should Not be Entered Against Defendant for Failure

 to Answer ................ ........................................................................................................§§ 312; 508

Why Judgment Should Not be Entered Against Defendant for Permitting its Registration

to be Cancelled Under Sec. 8 or 9 During Case [Trademark Rule 2.134(b)].........§§ 535; 602.02(b)

Why Judgment Should Not be Entered Against Plaintiff for Failure to File Main 

 Brief [Trademark Rule 2.128(a)(3)]....................................................................... §§ 536; 801.02(a)

CD-ROM Submissions: 

Briefs............... .................................................................................................................§§ 502.02; 801.03

Exhibits....................................................................................................................................... § 703.01(h) 

Certificate of Mailing By First-Class Mail:

 Applying or Attaching ........................................................................................................................§ 110.04

Available for Filing Any Document With TTAB.................................................................§§ 110.01; 110.07

 Described ............................................................................................................................................§ 110.01

 Distinguished From Certificate of Service ..........................................................................................§ 110.08

 Distinguished From Certified Mail .....................................................................................................§ 110.08

Filings to Which Not Applicable.........................................................................................................§ 110.07

 In General ..........................................................................................................................................§ 110.01

Location of ............................. ............................................................................................................§ 110.04

Loss of ...........................................................................................................................................§ 110.05

Nonreceipt by USPTO of Document or Fee Bearing ..........................................................................§ 110.06

 Requirements for.................................................................................................................................§ 110.02

 Suggested Format for .........................................................................................................................§ 110.03

Certificate of Service: 

 Distinguished From Certificate of Mailing or Transmission...............................................................§ 113.06

Elements of .........................................................................................................................................§ 113.03

Requirement for Proof of Service........................................................................................................§ 113.02

Certificate of Transmission: 

 Described ............................................................................................................................................§ 110.01

 Distinguished From Certificate of Service ..........................................................................................§ 110.08

Filings to Which Not Applicable.........................................................................................................§ 110.07

 Generally Not Available for Filings With TTAB..........................................§§ 107; 110.01; 110.07; 1202.02

 In General ............................. ............................................................................................................. § 110.01

Location of ............................ ............................................................................................................ § 110.04

Subject Matter Index - 768 
SUJECT MATTER INDEX 

Nonreceipt by USPTO of Document or Fee Bearing ..........................................................................§ 110.06

Requirements for ...................... ..........................................................................................................§ 110.02

Suggested Format for ............. ............................................................................................................§ 110.03

Certified Copies of Files or Parts Thereof: 

 Court Requirement for Certification ...................................................................................................§ 122.01 

Of Registrations .......................................................................................................................................§ 121

 With Certification Seal ............................................................................................... §§ 121; 122.01; 122.02

Change of Address ...................... ............................................................................................. §§ 117.03; 117.07 

Change of Name of Party:

Issuance of Registration in New Name ............................................................................................. § 512.03

Motion to Reflect Change of Name in Inter Partes Case.....................................................................§ 512.02

Proceeding May be Continued in Old Name.......................................................................................§ 512.02

Change Oral Hearing Date, Motion to...............................................................................§§ 541.01; 802.03

Change Title of Proceeding, Motion to ..................................................................................................§ 512 

Change to Registration (see also Amendments to Registration)...................................................§ 1114

Checks for Payment of Fees...................................................................................................................§ 118.03

Civil Procedure, Federal Rules of, in TTAB Proceedings 

 (see Federal Rules of Civil Procedure: In TTAB Proceedings)

Code of Federal Regulations:

 Obtaining Copies of ............................................................................................................................§ 101.01

 Rules Governing TTAB Proceedings................................................................................................. § 101.01

Collateral Attack on Registration Not Permitted.....................................................§§ 311.02(b); 313.01

Combined Complaint May be Filed........................................................................................................§ 305

Commencement:

Of TTAB Inter Partes Proceedings.....................................................................................§§ 302; 1003; 1106

Of Trial Period .........................................................................................................................................§ 701

Compel Discovery, Motion to (see also Motions, Types of: To Compel) ..............................................§ 523

Complaint:

 Alternative Pleading of Claims ...........................................................................................................§ 309.03

 Combined Complaint May be Filed .........................................................................................................§ 305 

Content of ............................. ..............................................................................................................§ 309.03

Defects in That May Affect Institution ...............................................................................................§ 309.04

 Defined ...............................................................................................................................................§ 309.01

 Electronic filing of ...................................................................................................................................§ 309 

Subject Matter Index - 769 
SUJECT MATTER INDEX 

Elements of ..........................................................................................................................§§ 309.02; 309.03

Evidentiary Matters Should Not be Pleaded........................................................................................§ 309.03

Fair Notice of Basis Required .............................................................................................................§ 309.03

 Form of, Generally ................... ..........................................................................................................§ 309.02

 Format, Suggested: 

 For Notice of Opposition ................................................................................................ § 309.02(a) 

 For Petition to Cancel ..................................................................................................... § 309.02(a)

Heading For .................................................................................................................................. § 309.02(a)

 Hypothetical Pleading of Claim ..........................................................................................................§ 309.03

 Inconsistent Claims . ...........................................................................................................................§ 309.03

Need Not be Served by Plaintiff Upon Defendant ......................................................................... § 309.02(c)

 Need Not be Verified . ................................................................................................................... § 309.02(b)

 Signature.......... ........................................................................................................................... § 309.02(b) 

 Substantive Pleading of:

 Generally ..............................................................................................................................§ 309.03

 Grounds . ......................................................................................................................... § 309.03(c)

 Standing .......................................................................................................................... § 309.03(b)

 Unpleaded matters....................................................................................................................................§ 314 

 Unsigned ........................................................................................................................................ § 309.02(b)

Who May Sign ............................................................................................................................... § 309.02(b)

Compulsory Counterclaim (see also Counterclaim)........................................................§§ 313.04; 313.06

Concurrent Use Proceeding: 

Abandonment of Subject Application During 

 (see also Abandonment of Application).......................................................................§ 603

Access to Files During (see also Access to Files)..............................................................................§ 120

 Addition of Application or Registration to.............................................................................................§ 1104

 Addition of Party to ...............................................................................................................................§ 1104

Adverse Decision in Opposition or Cancellation, Effect of on Right to Seek 

 Concurrent Registration ...........................................................................................................§ 1112

 Amend Application, Request to .............................................................................................................§ 1107

Answer to Notice ...................................................................................................................................§ 1107

Appeal From Decision of TTAB in 

 (see Appeal From Decision of TTAB)

 Applicant, Concurrent Use, Must Prove Entitlement to Registration.....................§§ 1107; 1108; 1109; 1110

Applications Involved in Proceeding, Described ...................................................................................§ 1104

Applications Not Subject to Proceeding, Described...............................................................................§ 1105

Briefing Schedule ...................... .............................................................................................§§ 801.02; 1109

 Briefs on Case (see also Briefs: On Case)...........................................................................................§ 801

Burden of Proof, Applicant's, When Default Judgment Has Been Entered 

Against Excepted User for Failure to File Answer to Notice of Institution .............................§ 1107

 Burden of Proof, Generally ....................................................................................§§ 1107; 1108; 1109; 1110

Cannot be Circumvented by Section 7(e) Amendment .....................................................................§ 1101.02

Cannot be Instituted Until All Oppositions Filed are Dismissed............................................................§ 1106

 Commencement of ..........................................................................................................§§ 302; 403.02; 1106

 Common Law User, Entitlement to Registration Not Determined........................................§§ 1103.02; 1108 

Compared to Cancellation or Opposition ...............................................................................................§ 1109

Complaint, Has None ............... ....................................................................... §§ 1106; 1106.04; 1107; 1109

Concurrent Use Applicant Must Prove Entitlement to Registration.......................§§ 1107; 1108; 1109; 1110

Concurrent Use Application:

Subject Matter Index - 770 
SUJECT MATTER INDEX 

 Abandonment of, During Concurrent Use Proceeding 

 (see also Abandonment of Application) .........................................................§ 603

Amendment of Intent-to-use Application to Seek Concurrent 

 Registration...................................................................................................... § 1103.01(a)

Applicant May be Required to Furnish Extra Copies .....................§§ 1103.01(f); 1103.02; 1103.03

Application Based on Sec. 44 Only May Not Seek Concurrent

 Registration...................................................................................................... § 1103.01(a)

 Application under 66(a) ................................................................................................. § 1103.01(a)

 Described ................... ........................................................................................................§ 1102.01

 Geographic Restriction, Generally......................................................... § 1103.01(d); 110201(d)(1)

Intent-to-use Application Filed Also as Concurrent Use 

 Application Void ............................................................................................. § 1103.01(a)

 Information in Application -- What it Provides ...............................§§ 1103.01(c) – (f); 1106; 1107

 Jurisdictional Requirement ........................................................................... §§ 1103.01(b); 1103.03

 Mode of Use Restriction, Generally..................................................§ 1103.01(d)(1); 1103.01(d)(3)

Must Assert Use in Commerce ...................................................... §§ 1103.01(a); 1103.02; 1103.03

Must Meet Requirements Applicable to Non-Restricted 

 Application ...................................................................................................... § 1103.01(c)

Must State Area and/or Mode of Use for Which 

 Registration Sought ......................................................... §§ 1103.01(d); 1103.02; 1103.03

 Must State Information re Use by Exceptions ................................§§ 1103.01(e); 1103.02; 1103.03

 On Basis of Concurrent Use Proceeding.............................................§§ 1102.02; 1102.01; 1103.01

 On Basis of Prior Court Decision.......................................................................§§ 1102.01; 1103.03

On Basis of TTAB Decision in Prior Concurrent Use 

 Proceeding ...........................................................................................§§ 1102.01; 1103.02

 Publication Statement for.................................................§§ 1103.01(f); 1103.02; 1103.03; 1106.01

 Request to Amend Application ................................................................................................§ 1107

 Requirements for......................................................................................................................§ 1103

 Statement, Publication, for...............................................§§ 1103.01(f); 1103.02; 1103.03; 1106.01

 Types of ....................... ......................................................................................................§ 1102.01

 Who Must be Listed as Exception ................................................................................. § 1103.01(e)

 Wording of Publication Statement for .............................§§ 1103.01(f); 1103.02; 1103.03; 1106.01

Concurrent Use Registration: 

 Alteration of Restrictions on ....................................................................................................§ 1114

Bases for Issuance of -- Board Determination, Court Determination .................................§ 1102.02

Cannot be Obtained by Including Geographical Restriction in

 Identification of Goods.........................................................................................§ 1102.01

 How Obtained ........... ..................................................................................................§§ 1101; 1102

Registration Cannot be Geographically Restricted by Section 

 7(e) Amendment .......................................................................................§§ 1101.02; 1114

Conduct of Proceeding Described, In General .......................................................................................§ 1109

"Conversion" of Opposition or Cancellation Proceeding to....................................................§§ 514.03; 1113

Correspondence, with whom.............................................................................................................§ 1106.04 

Decision, Adverse, in Opposition or Cancellation, Effect of on Right to Seek 

 Concurrent Registration ...........................................................................................................§ 1112

 Decision, Final (see also Final Decision).................................................................................§§ 803; 806

Default Judgment for Failure to File Answer to Notice of Institution....................................................§ 1107

 Defendant, Defined ................ ...............................................................................................................§ 1108

 Described ...........................................................................................................................§§ 102.02; 1101.01

Effect of Adverse Decision in Opposition or Cancellation on

Right to Seek Concurrent Registration.....................................................................................§ 1112

Entitlement to Registration Must be Proved by Concurrent Use Applicant...........§§ 1107; 1108; 1109; 1110

Subject Matter Index - 771 
SUJECT MATTER INDEX 

Entitlement to Registration of Common Law User Not Determined ....................................§§ 1103.02; 1108

Ex Parte Type Showing of Entitlement to Registration, When Appropriate..........................................§ 1107

 Final Decision in (see also Final Decision)..............................................................................§§ 803; 806

Generated Only by Way of Application for Concurrent Registration ...............................................§ 1102.01

 Geographic Limitations Considered Only in............................................§§ 309.03(a)(1); 311.02(b); 313.01; 

 514.03; 1101.02

Incontestable Registrations Are Subject to Concurrent Use Proceeding................................................§ 1105

Information in Application and Notice of Institution--What They Provide ....§§ 1103.01(c) – (f); 1106; 1107

Instituted Only as Result of Application for Concurrent Registration ..............................................§ 1102.01

Intent-to-Use Application Filed Seeking Concurrent Concurrent Use 

 Application Void............................................................................................................ § 1103.01(a)

Intent-to-Use Applications Not Subject to Concurrent Use Proceeding 

Until After Acceptable Affidavit of Use Filed.........................................................................§ 1105

Involved Applications and/or Registrations, Described .........................................................................§ 1104

Issues in ................................... ..............................................................................................................§ 1108

 Judgment, Default, for Failure to File Answer to Notice of Institution..................................................§ 1107

 Junior Party, Defined .............................................................................................................................§ 1108

Locating Excepted Users ..................................................................................................................§ 1106.05

Mailing of Documents to Excepted User After Default Judgment Entered Against it...........................§ 1107

 Notice of Institution ..............................................................................................................§§ 1106.04; 1107

Opposition to Concurrent Use Application, Procedure When Filed ......................................................§ 1106

 Oral Hearing (see also Oral Hearing: On the Case)..............................................................§§ 802; 1109

Parties to, Described ..............................................................................................................................§ 1104

Petition to Director From Action of TTAB During (see Petition to the Director)

 Plaintiff, Defined ................... ................................................................................................................§ 1108

 Pleadings (Has No Complaint).........................................................................................§§ 1106; 1107; 1109

Procedure When Application Published Subject to Concurrent Use 

 Proceeding is Opposed........................................................................................................§ 1106.02

Proof of Applicant's Entitlement to Registration May be Ex Parte in 

Nature in Certain Default Situations........................................................................................§ 1107

Proof of Applicant's Entitlement to Registration Must be Made Even 

against Defaulting User............................................................................................................§ 1107

Publication Statement for Concurrent Use Application ............... §§ 1103.01(f); 1103.02; 1103.03; 1106.01

Registration Cannot be Geographically Restricted by Section 7(e) Amendment..............................§ 1101.02 

Registrations Involved in Proceeding, Described...................................................................................§ 1104

Registrations Not Subject to Proceeding, Described..............................................................................§ 1105

Request to Amend Application Must be Served Even Upon Defaulted Excepted User.........................§ 1107

Senior Party, Defined ............. ...............................................................................................................§ 1108

Settlement Agreement Providing for Concurrent Registration...............................................................§ 1110

 Statement, Publication, for Concurrent Use Application ...............§§ 1103.01(f); 1103.02; 1103.03; 1106.01

Status of Application After Proceeding....................................................................................................§ 807

Status of Excepted User After Default Judgment Entered Against it.....................................................§ 1107

Storage of Files and Exhibits After Termination of Proceeding ...............................................§§ 120.03; 806

Supplemental Register Applications and Registrations Not Subject to 

 Concurrent Use Proceedings....................................................................................................§ 1105

Termination of ..........................................................................................................................§§ 120.03; 806

Trial Schedule for ........................................................................................................................§§ 701; 1109

Conduct of Practitioner: 

Applicable Rules ..................... ...........................................................................................................§ 115.01

 Disciplinary Proceedings for Misconduct ...........................................................................................§ 115.02

 Disqualification .......................... ........................................................................................................§ 115.03

Subject Matter Index - 772 
SUJECT MATTER INDEX 

Conferences: 

 Pre-Trial ...............................................................................................................................§§ 413; 502.06(b)

 Telephone ............................. ............................................................................................... §§ 413; 502.06(a)

Confidential Materials: 

Access to ......................................................................................................................§§ 120.02; 412.05; 904

 Filing of ................................ ................................................................................. §§ 120.02; 412.04; 502.02

 Handling of ................................................................................................................................§ 412.05

 In briefs.............. .............................................................................................................................§ 801.03

 In depositions...... ...................................................................................................... §§ 703.01(p); 703.02(l)

 Information ........................................................................................................................... § 502.02(c) 

Protective Order for (see also Discovery: Protective Orders) ............................................................§ 412

Consent Orders, Not Issued by TTAB..........................................................................................§ 605.03(f)

Consent to Entry of Judgment Against Self.........................................................................................§ 604

Consolidated Complaint May be Filed...................................................................................................§ 305

Consolidation: 

Of Applications During Ex Parte Appeal..................................................................................................§ 1214

Of Inter Partes Proceedings.........................................................................................................................§ 511

Constructive Use, Judgment Entered 

Subject to Prevailing Party's Establishment of............................................................. § 901.02(b)

Contact With TTAB Personnel.................................................................................................................§ 105 

Contempt, TTAB Cannot Hold Person in .......................................................................................§ 502.05

Copies of Files or Parts Thereof: 

 Certified Copies (see also Certified Copies of Files or Parts Thereof)........................§§ 121; 122

Plain Copies ............................................................................................................................................ § 121

Correction of Errors in Deposition Transcript ........................................................................ § 703.01(n)

Correction of Inter Partes Proceeding Title ........................................................................................§ 512

Correspondence -- With Whom Held: 

After a Move .......................... ............................................................................................................§ 117.07

After Revocation of Authority to Represent........................................................................................§ 117.05

 After Withdrawal From Representation ..............................................................................................§ 117.05

Change of Address ................ .............................................................................................................§ 117.07 

 Generally .............................. ..............................................................................................................§ 117.01

 Ineligible Representative ....................................................................................................................§ 117.08

More Than One Authorized Representative........................................................................................§ 117.02

Subject Matter Index - 773 
SUJECT MATTER INDEX 

 When Inter Partes Proceeding Commences.............................................................§§ 117.01; 117.03; 117.04

With Foreign Party ................. ............................................................................................................§ 117.06

Counterclaim: 

 Answer to:

 May Include Counterclaim....................................................................................................§ 313.06

 Failure to Timely File ...........................................................................................................§ 313.06

 Form for ....................... ........................................................................................................§ 313.06

 Time for Filing .....................................................................................................................§ 313.06

 Compulsory:

 Counterclaim Versus Separate Petition to Cancel.................................................................§ 313.04

 Defined ..................................................................................................................§§ 313.04; 313.06

 Time for Filing .....................................................................................................................§ 313.04

Defense Attacking Validity of Plaintiff's Registration Requires Counterclaim .............. §§ 311.02(b); 313.01

Defense Seeking Restriction of Plaintiff's Registration Requires Counterclaim............................ § 311.02(b)

Effect on, When Main Claim Disposed of ...............................................................................................§ 606

Fee for Filing (see also Fee)...............................................................................................§§ 118.01; 313.02

Form of, Generally ................ .............................................................................................................§ 313.03

 Grounds Available ..............................................................................................................................§ 313.03

Legal Equivalent of Petition to Cancel................................................................................................§ 313.01

May Seek Cancellation in Whole or in Part ........................................................................................§ 313.01

Must be Served Upon Every Other Party ............................................................................................§ 313.03

Must Seek Cancellation of Plaintiff's Registration..............................................................................§ 313.01

Not Vehicle for Geographic Limitation...............................................................................................§ 313.01

Permissive, Defined .............................................................................................................§§ 313.05; 313.06

Reliance on Registration by Plaintiff Tolls Five-Year Period as to Counterclaim..... §§ 307.02(c)(1); 313.03

Same Matter Should Not be Pleaded Both as Counterclaim and as Affirmative Defense .......... . § 311.02(b)

 Standing Inherent, Need Not be Pleaded........................................................................................... § 313.03 

Trademark Rules 2.111-2.115 Applicable to..................................................................................... § 313.01

- D - 

Damage, Meaning of ......................................................................................................................§§ 303.03; 309.03

Damages, Not Awarded by TTAB .................................................................................................§§ 502.05; 527.02

Date: 

For Oral Hearing, Motion to Change ......................................................................................§§ 541.01; 802.03

Of Publication of Mark, Definition of....................................................................................................§ 202.02

Dates of Use in Application or Registration Not 

Evidence for Owner Unless Proved at Trial.................................................... §§ 704.03(a); 704.04

Decision, Final (see Final Decision) 

Decisions, Citable as Precedent.......................................................................................§§ 101.03; 1203.02(f)

Subject Matter Index - 774 
SUJECT MATTER INDEX 

Decisions of the TTAB:

 Appeal From (see Appeal From Decision of TTAB)

 As Precedent ...................................................................................................................§ 101.03; 1203.02(f)

Authority of TTAB Members, Interlocutory Attorneys to Act 

 (see Trademark Trial and Appeal Board)

 Digest Decisions ............................................................................................................§§ 101.03; 1203.02(f)

 Final (see Final Decision)

 On Case (see Final Decision)

 On Motions .........................................................................................................................................§ 502.04

Posted on USPTO Website.......................................................................................................................§ 803

 Reconsideration of, Motion for: 

 Decision on Motion....................................................................................................................§ 518

 Final Decision ........... .......................................................................................§§ 543; 804; 1219.01

 Unpublished Decisions ..................................................................................................§§ 101.03; 1203.02(f)

 Where Published .................................................................................................................................§ 101.03

Declaration of Interference 

 (see also Interference Proceeding and Petition to the Director).......................................§ 1002

Default: 

Failure to File Answer to Notice of Institution in Concurrent Use Proceeding......................................§ 1107

Failure to Timely Answer Complaint:

 Generally ..............................................................................................................................§ 312.01

 Methods of Raising Issue of Default...........................................................................§§ 312.01; 508

 Motion for Judgment for............................................................................................................§ 508

Motion for Relief From Default Judgment .................................................................§§ 312.03; 544

Notice of Default ................... .............................................................................................................§ 312.01

Setting Aside Default Judgment..........................................................................................................§ 312.03

Setting Aside Notice of Default ..........................................................................................................§ 312.02

Defendant, Identity of: 

 In Concurrent Use Proceeding................................................................................................................§ 1108

In Interference Proceeding .....................................................................................................................§ 1005

In Opposition or Cancellation Proceeding...........................................................................................§ 310.01

Defenses: 

Affirmative Defenses .............. ...........................................................................................................§ 311.02

 Affirmative Pleadings Which Are Not Defenses........................................................................... .§ 311.02(d)

Defendant at Least Entitled to Restricted Registration.................................................... §§ 311.02(b); 514.03

Defense Attacking Validity of Plaintiff's Registration Requires Counterclaim .............. §§ 311.02(b); 313.01

Alternative Pleading of .................................................................................................................. § 311.02(b)

 Counterclaims, Generally (see also Counterclaims).........................................................................§ 313

Defense Seeking Restriction of Plaintiff's Registration Requires Counterclaim............................ § 311.02(b)

Evidentiary Matters Should Not be Pleaded................................................................................... § 311.02(b) 

Fair Notice of Basis Required ........................................................................................................ § 311.02(b)

 Hypothetical Pleading of ........ ....................................................................................................... § 311.02(b)

 Inconsistent .................................................................................................................................... § 311.02(b)

 Pleading of ..................................................................................................................................... § 311.02(b) 

Same Matter Should Not be Pleaded Both as Counterclaim and as Affirmative Defense ............ .§ 311.02(b)

Subject Matter Index - 775 
SUJECT MATTER INDEX 

 Types of ......................................................................................................................................... § 311.02(b)

Definite Statement, Motion for More (see also Motions, Types of)...............................................§ 505

Deletion of Class From Multi-Class Application: 

 During Inter Partes Proceeding ............................................................................... §§ 602.01; 603; 605.03(b)

 During Cancellation ................................................................................................... §§ 602.02(a); 605.03(b) 

Deposit Accounts, for Payment of Fees.............................................................................................§ 118.04

Depositions: 

 Discovery (see also Discovery Depositions).......................................................§§ 404; 404.08; 704.09

 Form of...........................................................................................................................................§ 703.01

 Notice of (see Notice of Deposition, Requirements for)

 On written questions.............................................................................................................§§ 703.02; 404.07

 Testimony (see also Evidence, Introduction of, in 

 Inter Partes Proceeding and Testimony Depositions).........................§ 703.01; 703.02

Videotape, Not Entertained ............................................................................................................ § 703.01(h)

Digest Decisions of the TTAB (see Decisions of the TTAB)

Directed Verdict, Motion for, Not Available ...................................................................§§ 502.01; 534.04

Director, Petition to (see Petition to the Director)

Director’s Orders and Notices, Effect on TTAB Proceedings of.........................................................§ 101.04

Disciplinary Proceedings for Practitioner Misconduct ..............................................................§ 115.02

Discovery: 

 Attorney-Client Privilege ....................................................................................................................§ 402.02

Automatic Disclosure Provisions of Federal Rules Do Not Apply ..........................................................§ 401

 Conferences: 

 Pre-Trial .................. ...................................................................................................§§ 413; 502.06 

 Telephone ...................................................................................................................§§ 413; 502.06

 Confidential Information ........................................................................................§§ 120.02; 402.02; 412.02

Cooperate, Duty to .................. .................................................................................................§§ 401; 408.01

 Depositions (see Discovery Depositions) 

 Discoverability Guidelines.......................................................................................................................§ 414

Discovery Requests and Responses, When to be Filed ................................................§§ 409; 704.09; 704.10

 Discovery Response:

Made of Record by One Party May be Referred to by Any Party..........................§§ 704.09; 704.10

May be Used in Exam or Cross-exam of Any Witness at Trial .............................§§ 704.09; 704.10

Discovery Sanctions:

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB ..............................§§ 502.05; 527.02

 Estoppel Sanction............................................................................................................. § 527.01(e)

 For Failure to Comply With Order re Discovery ............................................................. § 527.01(a)

 For Failure to Respond, or Respond Properly, to Admission Request............................. § 527.01(d)

Subject Matter Index - 776 
SUJECT MATTER INDEX 

 For Failure to Timely Respond ......................................................................... §§ 403.03; 527.01(c)

 If Party Says it Won't Respond to Discovery................................................................... § 527.01(b)

Duty to Cooperate .................. ..................................................................................................§§ 401; 408.01

Duty to Search Records for Discovery Information............................................................................§ 408.02

Duty to Serve Only Proper Request .....................................................................................§§ 402.02; 408.01

Duty to Supplement Responses...........................................................................................................§ 408.03

Early Initiation, Need for:

 To Allow Time for Follow-up Discovery ....................................................................... .§ 403.05(a)

 To Aid Introduction of Produced Documents................................................... §§ 403.05(b); 704.11

Failure to Provide Requested Discovery:

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB ..............................§§ 502.05; 527.02

 Discovery Deposition..................................................................................................§§ 411.03; 523

 Estoppel Sanction............................................................................................................. § 527.01(e)

 Failure to Comply With Order re Discovery.................................................................... § 527.01(a)

 Interrogatories ........... ................................................................................................ §§ 411.01; 523

 Motion for Discovery Sanctions ...........................................................................................§ 527.01

 Party Says it Will Not Respond to Discovery .................................................................. § 527.01(b)

 Requests for Admission .......................................................... §§ 407.03(a); 411.01; 524; 527.01(d)

 Requests for Production of Documents.......................................................................§§ 411.01; 523

 Untimely Discovery Response.......................................................................... §§ 403.03; 527.01(c)

Failure to Timely Respond .......................................................... §§ 403.03; 405.04(a); 406.04(a); 407.03(a)

Filing Discovery Requests and Responses, When Appropriate ...................................§§ 409; 704.09; 704.10

 Goose-Gander Rule ................. ...........................................................................................................§ 402.02

 Guidelines for Discoverability .................................................................................................................§ 414

Hague Convention Procedure....................................................................................................... §§ 404.03(c)

In Camera Inspection of Documents...................................................................................................§ 412.04

 In General .............................. ..................................................................................................................§ 401

 Interrogatories (see heading Interrogatories)

Introduction of Discovery Responses in Evidence 

 (see Evidence, Introduction of, in Inter Partes Proceeding)

 Letter Rogatory Procedure ............................................................................................................. § 404.03(c)

Limitations on Right to:

 Attorney-Client Privilege......................................................................................................§ 402.02

 Cannot Limit Opponent's by Limiting Own..........................................................................§ 402.01

 Confidential Information.......................................................................................................§ 402.02

 Generally ..............................................................................................................................§ 402.02

 Representative Sampling.......................................................................................................§ 402.02

 Where Unduly Burdensome, etc. ..........................................................................................§ 402.02

Motion Attacking Discovery Request 

 Generally Inappropriate ............................................. §§ 405.04(b); 406.04(b); 407.03(b); 410; 526

Motion for Discovery Sanctions (see also Motions, Types of)...................................................§ 527.01

Motion for Discovery to Respond to Summary Judgment Motion .....................................................§ 528.06

Motion for Order re Manner or Place of Production of Documents.........................................................§ 522

Motion for Protective Order................................................................................................ .§§ 412.02(a); 526

Motion for Sanction for Failure to Comply With Protective Order................................................ § 527.01(a)

Motion to Compel Discovery: 

 Answer to Interrogatories, Generally..........................................................................§§ 411.01; 523

 Failure to File Motion ...........................................................................................................§ 523.04

 In General .............................................................................................................................§ 523.01

 Production of Documents............................................................................................§§ 411.01; 523

 Re Deposition ................................................................................................§§ 404.09; 411.03; 523

 Requirements for Motion ......................................................................................................§ 523.02

Subject Matter Index - 777 
SUJECT MATTER INDEX 

 Time for Filing .....................................................................................................................§ 523.03

TTAB Not Bound by Introduction or Preamble to Interrogatories ................................. § 405.03(d) 

 When Interrogatories are Objected to as Excessive ......................................................... § 405.03(e)

Motion to Extend or Reopen Discovery Period (see also Motions, Types of) ............. §§ 502.02(a); 509

Motion to Offer Discovery Deposition of Self or Nonparty.....................................................................§ 529

Motion to Quash Notice of Deposition ....................................................................................................§ 521

Motion to Serve Additional Interrogatories..............................................................................................§ 519

Motion to Take Foreign Deposition Orally ........................................................ §§ 520; 703.01(b); 703.02(a)

Motion to Test Sufficiency of Response to Admission Request ...............................................§§ 411.02; 524

 Motion to Withdraw or Amend Admission...............................................................................§§ 407.04; 525

Party Propounding Request Normally Estopped to Deny Propriety of 

 Pre-Trial Conferences ...............................................................................................................§§ 413; 502.06

 Produced Documents, Introduction of (see also Evidence, 

 For Failure to Timely Respond ......................................................................... §§ 403.03; 527.01(c)

 Scope of:

 Cannot limit Opponent's by Limiting Own...........................................................................§ 402.01

Same Request by Opponent ..................................................................................................§ 402.02

Introduction of, in Inter Partes Proceeding).................................. §§ 403.05(b); 704.11

 Protective Orders:

 Access to Covered Materials at TTAB ..........................................................§§ 120.02; 412.05; 904

 Contents Described .......................................................................................................... § 412.02(d)

 Defined .................................................................................................................................§ 412.01

 Failure to Comply With ................................................................................................... § 527.01(a)

How to File Covered Materials With TTAB.........................................................................§ 412.04

 In Camera Inspection of Documents................................................................................ § 412.02(c)

 Marking Covered Materials................................................................................................. § 412.04

 Material Which May be Filed Under ..................................................................................§§ 412.04

 Motion for ............... .............................................................................................. §§ 412.02(a); 526

 Motion for Sanctions for Failure to Comply With ........................................................... § 527.01(a)

 Signature of ..........................................................................................................................§ 412.03

 Stipulated ..................... ................................................................................................... § 412.02(b)

 Purposes of ............................... ...............................................................................................................§ 401

Requests for Admission (see heading Requests for Admission)

Requests for Production of Documents 

 (see heading Requests for Production of Documents)

Responses or Requests, Discovery, When to be Filed................................................. §§ 409; 704.09; 704.10

Rules Governing ......................................................................................................................................§ 401

 Sanctions: 

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB ..............................§§ 502.05; 527.02

 Estoppel Sanction............................................................................................................. § 527.01(e)

 For Failure to Comply With Order re Discovery ............................................................. § 527.01(a)

For Failure to Respond, or Respond Properly, to Admission Request............................. § 527.01(d)

 If Party Says it Won't Respond to Discovery................................................................... § 527.01(b)

 Discovery Not Limited to Pleaded Matters...........................................................................§ 402.01

Governed by Fed. R. Civ. P. .................................................................................................§ 402.01

 In General .............................................................................................................................§ 402.01

 Taking of Discovery Not Attack on Registration.......................................................................§ 414

Search Records for Discovery Information, Duty to...........................................................................§ 408.02

Should be Initiated Early: 

 To Allow Time for Follow-up Discovery ....................................................................... .§ 403.05(a)

 To Aid Introduction of Produced Documents................................................... §§ 403.05(b); 704.11

Signature of Request or Response Certifies Propriety ............................................§§ 106.02; 402.02; 408.01

Subject Matter Index - 778 
SUJECT MATTER INDEX 

Summary Judgment Motion, Discovery to Respond to.......................................................................§ 528.06

 Supplement Responses, Duty to..........................................................................................................§ 408.03

 Telephone Conferences ............... .............................................................................................§§ 413; 502.06

 Timing of:

 Closing of Discovery Period .................................................................................................§ 403.01

 Depositions ............................................................................................................§§ 403.02; 404.01

 Extensions of Time ...................................................................... §§ 403.04; 501.03; 502.02(a); 509

Extension of Time to Respond to Discovery Requests Does 

 Not Extend Trial Dates............................................................................§§ 403.04; 509.02

 Failure to Timely Respond...............................................................§§ 403.03; 405.04(a); 406.04(a)

 In General .............................................................................................................................§ 403.01

 Interrogatories ..................................................................................... §§ 403.02; 405.01; 405.04(a)

Motion to Extend or Reopen (see also Motions, Types of)............................ §§ 502.02(a); 509

Need for Early Initiation of Discovery.....................................................................§ 403.05; 704.11

 Opening of Discovery Period.................................................................................§§ 403.01; 403.02

 Priority of Discovery Concept Not Applicable .....................................................................§ 403.03

 Requests for Production....................................................................... §§ 403.02; 406.01; 406.04(a)

 Requests for Admission ....................................................................... §§ 403.02; 407.01; 407.03(a)

 Service of Discovery Requests..............................................................................................§ 403.02

 Service of Discovery Responses...........................................................................................§ 403.03

 Stipulation to Extend Discovery Period Should be Filed in Multiple Form..........................§ 501.03

 Stipulation to Extend Discovery Period Should Specify New Dates....................................§ 501.03

Stipulation to Extend Time to Respond to Discovery Request 

 Need Not be Filed.....................................................................................§§ 403.04;501.02

 Untimely Request .................................................................................................................§ 403.01

 Types of ...............................................................................................................................................§ 401

Attending by Telephone .................. ...................................................................................................§ 404.06

Compared to Testimony Depositions..................................................................................................§ 404.09

 Failure to Appear, Answer, etc..............................................................§§ 404.03(a)(2); 404.09; 411.03; 523

Hague Convention Procedure......................................................................................................... § 404.03(c)

 Introduction of ....................................................................................................................§§ 404.09; 704.09

 Letter Rogatory Procedure ............................................................................................................. § 404.03(c)

May be Used in Exam or Cross-exam of Any Witness at Trial ..........................................................§ 704.09

Motion to Offer Discovery Deposition of Self or Nonparty.....................................................................§ 529

 Notice of, Requirements for................................................................................................................§ 404.05

Of Whom May be Taken ....................................................................................................................§ 404.02

Discovery Depositions: 

 Described, Generally ............... ...........................................................................................................§ 404.09

Discovery Responses or Requests, When to be Filed...................................................§§ 409; 704.09; 704.10

 Exhibits to ...................................................................................................................................... § 703.01(h)

Manner of Taking .............................................................................................. §§ 404.03; 404.06; 703.01(h)

Motion to Compel Appearance, Answer, etc. ........................................§§ 404.09; 404.03(a)(2); 411.03; 523

Motion to Quash Notice of Deposition ....................................................................................................§ 521

Motion to Take Foreign Deposition Orally ........................................................ §§ 520; 703.01(b); 703.02(a)

 Objections to (see also Objections: To Discovery Deposition)................§§ 404.09; 404.03(a)(2); 404.08

 Of Foreign Country Resident, Nonparty ........................................................................................ § 404.03(c) 

 Of Foreign Country Resident, Party............................................................................................... § 404.03(b)

Of U.S. Resident, Nonparty.................................................................................... §§ 404.03(a); 404.03(a)(2)

Of U.S. Resident, Party ............ .....................................................................§§ 404.03(a); 404.03(a)(1); 520

Offering of Exhibits to ........................................................................................................................§ 713.08

 

Subject Matter Index - 779 
SUJECT MATTER INDEX 

On Written Questions:

 Before Whom Taken......................................................................................................... §404.07(a)

 Correction of Deposition................................................................................................... § 404.07(i) 

 Notice of Deposition ....................................................................................................... .§ 404.07(d)

 Service of Deposition......................................................................................................... §404.07(i)

 When Taken ............ ........................................................................................................ § 404.07(b) 

Refusal to Answer Questions............................................... §§ 404.09; 404.03(a)(2); 404.08(c); 411.03; 523

 Subpoena: 

Time for Taking ......................................................................................................§§ 403.02; 404.01; 404.09

Who May Be Deposed ............. ..........................................................................................................§ 404.02

 Of Application ........................................................................................................................§§ 516; 1205.02

Documents: 

 (see also Requests for Production of Documents)........................§§ 406; 406.04; 704.11

 Certification of Deposition............................................................................................... § 404.07(h) 

 Examination of Witness................................................................................................... § 404.07(e) 

 In General .............................................................................................................................§ 404.07

 Making the Deposition of Record ..................................................................................... § 404.07(i) 

 Objections ............... .........................................................................................................§ 404.07(f) 

 Place of Deposition .......................................................................................................... § 404.07(c) 

 Utility ...................... .........................................................................................................§ 404.07(j) 

Oral or Written Depositions................................................................................................................§ 404.03

 Securing Attendance of Deponent........................................................................................§§ 404.03; 411.03

 Violation of .............. ...................................................................................................§ 404.03(a)(2)

 When Necessary...............................................................................§§ 404.09; 404.03(a)(2); 411.03

 Taking by Telephone ..........................................................................................................................§ 404.06

 Telephone, Taking or Attending by.....................................................................................................§ 404.06

 Videotape Depositions Not Entertained ......................................................................................... § 703.01(h)

When Made of Record by One Party, May be Referred to by Any Party ...........................................§ 704.09

 Where Taken ......................... .................................................................................§§ 404.03; 404.05; 404.06

Who May Take ...................................................................................................................................§ 404.01

Dismiss for Failure of Plaintiff to Offer Evidence, Motion to 

 (see also Motions, Types of) .............................................................................................§§ 502.01; 534

Dismiss for Failure to State Claim, Motion to 

 (see also Motions, Types of) ............................................................................................................§ 503

Dismiss Under Fed. R. Civ. P. 41(b) or 50(a), Motion Not Available ....................§§ 502.01; 534.04

Disqualification of Practitioner.............................................................................................§§ 115.03; 513.02

Division: 

 Of Registration .. .....................................................................................................................................§ 516

In Camera Inspection of ......... ............................................................................................................§ 412.04

Requests for Production of 

Domestic Representative: 

Authority of ......................... ...............................................................................................................§ 114.07

Subject Matter Index - 780 
SUJECT MATTER INDEX 

Correspondence With .............. ...........................................................................................................§ 114.07

 Designation of ....................... .............................................................................................................§ 114.07

 Notification sent to..............................................................................................................................§ 310.01

Electronic Equivalent:

Of Printed Publication ........................................................................................................................§ 704.08

 Affidavits and Attached Exhibits ................................................................................................... § 528.05(b)

 Generally .............................. ......................................................................................................... § 528.05(a)

Of Record Only for Motion............................................................................................................ § 528.05(a)

 Registrations .................................................................................................................................. § 528.05(d)

Examining Attorney May Submit Additional Evidence 

 Suggested Format for Designation ......................................................................................................§ 114.07

Due Dates, Where Last Day for Action Falls on Sat., Sun., Holiday .........................................§ 112 

- E - 

Of Official Document .........................................................................................................................§ 704.07

 Of Plain Copy of Registration .............................................................................................. § 704.03(b)(1)(B)

 Of Signature ....... ..............................................................................................................................§ 106.02

Electronic Forms ......................................................................................................................................§ 106.03

Electronic Images (see also TTABVUE) .........................................................................................§ 120.01

Electronic Signature ...............................................................................................§§ 106.02; 203.03; 311.01(b) 

Establishment of Constructive Use by Prevailing Party, 

Judgment Entered Subject to............................................................................................ § 901.02(b)

ESTTA (Electronic System for Trademark Trials & Appeals)..............................................§ 106.03

Extensions of time................................................................................................................§§ 202.01; 203.01

Other filings ............................................................................ §§ 308.01(b); 308.02(b); 309; 311; 1202 

Evidence, Fed. Rules of, in TTAB Proceedings 

 (see Federal Rules of Evidence in TTAB Proceedings)

Evidence, For Summary Judgment Motion: 

 Discovery Responses ..................................................................................................................... § 528.05(c)

Internet Materials ........................................................................................................................... § 528.05(e) 

Official Records ..................... ....................................................................................................... § 528.05(e)

 Printed Publications ....................................................................................................................... § 528.05(e) 

Testimony From Another Case ................................................................................§§ 528.05(f); 530; 704;13

Evidence, In Ex Parte Appeal: 

Submission of During Appeal:

 After Granting of Letter of Protest......................................................................................§ 1207.06

With Action on Request for Reconsideration of Final Action..................§§ 1204; 1207.04

Subject Matter Index - 781 
SUJECT MATTER INDEX 

 Evidence Submitted After Appeal Normally Untimely ..........................................§§ 1204; 1207.01

May be Submitted Upon Remand for New Refusal..........................................................§§ 1207.05

 Final Action ...............................................................................§§ 1202.02; 1204; 1207.04

Admissions Against Interest:

 In Briefs on Case.............................................................................................................. § 704.06(b)

Answers to Interrogatories .................................................................................................................§ 704.10

Allegations, Specimens, etc., Not Evidence for Owner 

 Answers to Interrogatories....................................................................................................§ 704.10

Discovery Responses or Requests, When to be Filed ....................................§§ 409; 704.09; 704.10

 Evidentiary Record Should be Complete Prior to Appeal.......................................§§ 1204; 1207.01

May be Considered Due to Actions of Nonoffering Party................................................§§ 1207.03

May be Submitted With Timely Request for Reconsideration of 

 Request for Remand for.....................................................................................§§ 1207.02; 1207.06

Treatment of, by TTAB, Federal Circuit: 

 Evidence From NEXIS Database or Publications...............................................................§ 1208.01 

 In General ................................................................................................................................§ 1208

 Internet Material..................................................................................................................§ 1208.03 

 Judicial Notice ....................................................................................................................§ 1208.04 

 Third-Party Registrations...................................................................................§§ 1207.03; 1208.02 

Evidence, Introduction of, in Inter Partes Proceeding: 

 In Application or Registration File ................................................................... §§ 704.03(a); 704.04

 In Pleadings ..................................................................................................................... § 704.06(a)

 Applications:

 Unless Proved at Trial ....................................................................... §§ 704.03(a); 704.04

 Evidentiary Value of...................................................................§§ 704.03(a); 704.03(b)(2); 704.04

 Not Subject of Proceeding .......................................................................................... § 704.03(b)(2)

Statements and Things in File Not Evidence for Owner 

 Unless Proved at Trial ........................................................................ §§ 704.03(a); 704.04

 Subject of Proceeding ...................................................................................................... § 704.03(a)

Brief on Case May Not be Used to Introduce Evidence................................ §§ 704.05(b); 704.06(b); 801.01

Commencement of Trial Period ...............................................................................................................§ 701

 Discovery Depositions:

Discovery Responses or Requests, When to be Filed ....................................§§ 409; 704.09; 704.10

 Generally ...............................................................................................................§§ 404.09; 704.09

May be Used in Exam or Cross-exam of Any Witness at Trial ............................................§ 704.09

 Of Party .................. ...................................................................................................§§ 529; 704.09

 Of Self or Nonparty.....................................................................................................§§ 529; 704.09

When Made of Record by One Party, May be Referred to by Any Party .............................§ 704.09

Discovery Responses or Requests, When to be Filed...................................................§§ 409; 704.09; 704.10

 Discovery Responses:

 Depositions ...........................................................................................................................§ 704.09

 Documents Provided as Interrogatory Answer ......................................................§§ 704.10; 704.11

 Interrogatory Answers...........................................................................................................§ 704.10

May be Used in Exam or Cross-exam of Any Witness at Trial ...............................§ 704.09; 704.10

 Produced Documents ........................................................................................ §§ 403.05(b); 704.11

 Responses to Requests for Admission ..................................................................................§ 704.10

 Responses to Interrogatories.................................................................................................§ 704.10

When Made of Record by One Party, May be Referred to by Any Party ..............§§ 704.09; 704.10

 Documents, Discovery, Produced by Opponent.............................................................. §§ 403.05(b); 704.11

Documents Provided as Interrogatory Answer.....................................................................§§ 704.10; 704.11

Subject Matter Index - 782 
SUJECT MATTER INDEX 

 Electronic Equivalent:

 Of Official Document ...........................................................................................................§ 704.07

 Of Plain Copy of Registration................................................................................ § 704.03(b)(1)(B)

Extension of Time for (see also Extension of Time)........................................................................§ 701

 Interrogatory Responses .......... ...........................................................................................................§ 704.10

Right to be Heard on Propriety of Taking........................................................................ § 704.12(c)

 Materials Not Considered Unless Properly Introduced ............................................................................§ 702

 (see also Motions, Types of)..............................................................................................§ 534

 Motion to Strike Notice of Reliance.........................................................................................................§ 532

Motion to Use Testimony From Another Proceeding ...............................................................§§ 530; 704.13

 Upon Discovery Deposition.......................................................................................................§ 509

 Upon Printed Publications ....................................................................................................§ 704.08

Official Records .................... .............................................................................................................§ 704.07

 Printed Publications ............................................................................................................................§ 704.08

Allegations, Specimens, etc., Not Evidence for Owner Unless 

 Cancelled ...............................................................................................................§ 704.03(b)(1)(A)

 Expired ..................................................................................................................§ 704.03(b)(1)(A)

 Of Printed Publication...........................................................................................................§ 704.08

Evidence, Trial, Not Examined Prior to Final Decision.................... §§ 502.01; 534.04; 707.02(c); 707.03(c)

Evidence Not in Compliance With Rules.................................................................................................§ 706

Exhibits to Briefs On Case Not Evidence Unless Properly Introduced.......................................... § 704.05(b)

Exhibits to Pleadings Not Evidence Unless Properly Introduced......................................... §§ 317; 704.05(a)

Filing Discovery Responses or Requests, When Appropriate......................................§§ 409; 704.09; 704.10

 For Summary Judgment (see Evidence, For Summary Judgment Motion)

Internet Materials .................. .............................................................................................................§ 704.08

 Judicial Notice:

 Kind of Fact Which May be Judicially Noticed............................................................... § 704.12(a)

Time of Taking ................................................................................................................ § 704.12(d)

 When Discretionary ......................................................................................................... § 704.12(b)

 When Mandatory ............................................................................................................. § 704.12(b)

Motion That Deposition Upon Written Questions be Taken Orally................... §§ 531; 703.01(b); 703.02(a)

Motion to Dismiss for Failure of Plaintiff to Offer Evidence 

Motion to Offer Discovery Deposition of Self or Nonparty.....................................................................§ 529

Motion to Reopen Testimony Period for Newly Discovered Evidence .......................... §§ 509.01; 704.05(b)

Motion to Strike Trial Testimony Deposition (see also Motions, Types of)....................................§ 533

Newly Discovered, Motion to Reopen Testimony Period for Introduction of ................ §§ 509.01; 704.05(b)

Noncomplying Evidence ......... ................................................................................................................§ 706

 Notice of Reliance:

 In General .............................................................................................................................§ 704.02

 Motion to Strike .. ......................................................................................................................§ 532

Normally May Not be Used to Introduce Produced Documents....................... §§ 403.05(b); 704.11

 Upon Admission to Request for Admission..........................................................................§ 704.10

 Upon Answer to Interrogatory ..............................................................................................§ 704.10

 Upon Official Records..........................................................................................................§ 704.07

 Objections to Evidence (see Objections)

Oral Hearing on Case May Not be Used to Introduce Evidence ..................................§§ 706; 802.01; 802.07

 Produced Documents ...................................................................................................... §§ 403.05(b); 704.11

 Registrations:

Proved at Trial .................................................................................... §§ 704.03(a); 704.04

 Electronic Equivalent of Copy of........................................................................... § 704.03(b)(1)(B)

 Evidentiary Value of................................................................ §§ 704.03(b)(1)(A); 704.03(b)(1)(B)

 File History of Registration Not Subject of Proceeding.........................................§ 704.03(b)(1)(A)

Subject Matter Index - 783 
SUJECT MATTER INDEX 

 Foreign ..................... .............................................................................................§ 704.03(b)(1)(A)

 Party's ....................................................................................................................§ 704.03(b)(1)(A)

 Plaintiff's ................. ....................................................................................§§ 317; 704.03(b)(1)(A)

 Subject of Proceeding ...................................................................................................... § 704.03(a)

 Statements in Briefs on Case.......................................................................................................... § 704.06(b)

 Stipulated Evidence .................................................................................................................................§ 705

 Stipulations re Testimony....................................................................§§ 704.07-704.11; 703.01; 703.02; 705

Testimony From Another Proceeding .......................................................................................§§ 530; 704.13

Testimony Not Read Prior to Final Decision .................................... §§ 502.01; 534.04; 707.02(c); 707.03(c)

When Discovery Responses Made of Record by One Party, May be 

Form of submission..........................................................................................................§§ 106.02; 703.01(i)

Abandonment of Application During.....................................................................................................§ 1211

 Section 7(b) Presumptions, When Accorded ........................... §§ 704.03(b)(1)(A); 704.03(b)(1)(B)

 State .......................................................................................................................§ 704.03(b)(1)(A)

Statements and Things in File Not Evidence for Owner Unless 

Proved at Trial .................................................................................... §§ 704.03(a); 704.04

Status and Title Copies, Requirements for............................... §§ 704.03(b)(1)(A); 704.03(b)(1)(B)

 Third-Party ............................................................................................................ § 704.03(b)(1)(B)

Responses or Requests, Discovery, When to be filed ................................................. §§ 409; 704.09; 704.10

Responses to Requests for Discovery (see Discovery Responses this heading) 

Statements in Pleadings ................................................................................................................. § 704.06(a)

 Stipulated Testimony .................................................................................................................... .§ 703.01(b)

Sufficiency of Evidence, Available Motions Relating to ..........................................................§§ 502.01; 534

Testimony Depositions, Oral (see Testimony Depositions)

Testimony Depositions, Written Questions (see Testimony Depositions) 

 Testimony in Affidavit or Stipulated Form............................................................................§ 703.01(b); 705

Testimony Periods ...................................................................................................................................§ 701

Time for ...................................................................................................................................................§ 701

Trial Order ...............................................................................................................................................§ 701

Trial Period, Commencement of ..............................................................................................................§ 701

Referred to by Any Party .......................................................................................§§ 704.09; 704.10

Evidence, Newly Discovered, 

Motion to Reopen Testimony Period for Introduction of.......................§§ 509.01; 704.05(b)

Evidence, Trial, Not Examined Prior to Final Decision.......... §§ 502.01; 534.04; 707.02(c); 707.03(c)

Evidentiary Matters Should Not be Pleaded .............................................................. §§ 309.03; 311.02(b)

Excusable Neglect Showing, Requirement For 

 (see Motions, Types of: To Reopen) 

Exhibits: 

 Confidential (see Confidential Materials) 

To Brief on Case Not Evidence Unless Properly Introduced ......................................................... § 704.05(b)

To Deposition ........................ ..................................................................................... §§ 703.01(h); 703.01(i) 

To Pleadings Not Evidence Unless Properly Introduced ..................................................... §§ 317; 704.05(a)

Ex Parte Appeal: 

Subject Matter Index - 784 
SUJECT MATTER INDEX 

Access to Subject Application File (see also Access to Files)...........................................................§ 120

Alternative Positions May be Taken by Applicant.................................................................................§ 1215

Amendment of Application: 

 After Decision on Appeal ..................................................................................§§ 1205; 1217; 1218

Amendment to Allege Use Filed, or Associated With File, During Appeal .......................§ 1206.01

Amendment to Allege Use Filed, or Associated With File, During ..................................................§ 1206.01

 Upon Assignment to Applicant of Cited Registration..............................................................§ 1212

 Upon Consideration of Amendment .......................................................................§§ 1202.02; 1205

 Upon Consideration of Applicant's Appeal Brief........................................................... § 1203.02(b)

 Remand for Additional Evidence..........................................................................§ 1207.02

 Arguments on Appeal, Raising New......................................................................................................§ 1217

 Cancellation of Cited Registration During .............................................................................................§ 1212

Copies of Subject File or Parts Thereof .........................................................................................§§ 122; 123

Submission of, During Appeal:

Examining Attorney May Submit Additional Evidence With 

 Evidence of Record Should Not Be Resubmitted With Brief...............................§ 1203.01

 Evidentiary Record Should be Complete Prior to Appeal ........................§§ 1204; 1207.01

May be Submitted With Timely Request for Reconsideration of 

 Request for Remand for.......................................................................§§ 1207.02; 1207.06

 In General ..................................................................................................................§ 1208

 Judicial Notice ..................................................................................................... § 1208.04

Federal Rules of Evidence in...............................................................................................................§ 101.02

 During Appeal .........................................................................................................................§ 1205

 In General ...........................................................................................................................§ 1205.01 

 Request to Divide Application............................................................................................§ 1205.02

 Appealable Matter .................. ..........................................................................................................§ 1201.05

Approval by Examining Attorney of Application, During Appeal, for Publication: 

 In General ................................................................................................................................§ 1210

 Upon Cancellation of Cited Registration .................................................................................§ 1210

 Upon Consideration of Amendment to Allege Use.............................................................§ 1206.01

 Upon Consideration of Applicant's Reply Brief ............................................................ § 1203.02(c)

Upon Consideration of Evidence Submitted With Request to 

Upon Consideration of Request for Reconsideration of Final Action.....................§§ 1202.02; 1204

 Assignment of Cited Registration During ..............................................................................................§ 1212

 Briefs for (see also Briefs: Ex Parte Appeal).....................................................................................§ 1203

 Consolidation of Applications on Appeal ..............................................................................................§ 1214

 Decision, Final .......................................................................................................................................§ 1217

 Evidence in: 

 After Granting of Letter of Protest........................................................................§ 1207.06

Action on Request for Reconsideration of Final Action ........................§§ 1204; 1207.04

 Evidence Submitted After Appeal Normally Untimely ............................§§ 1204; 1207.01

May be Considered Due to Actions of Nonoffering Party....................................§ 1207.03

May be Submitted Upon Remand for New Refusal..............................................§ 1207.05

Final Action ............................................................................§§ 1202.02; 1204; 1207.04

Treatment of, by TTAB, Federal Circuit: 

 Evidence From NEXIS Database or Publications.................................................§ 1208.01 

 Internet Materials..................................................................................................§ 1208.03 

 Third-Party Registrations.......................................................................§ 1207.03; 1208.02

Fee for ................................................................................................................................§ 1202.04; 1202.05

File Not to be Removed From Offices of TTAB.......................................................................§§ 120.01; 122 

 

Subject Matter Index - 785 
SUJECT MATTER INDEX 

Filing of Appeal: 

"Express Mail," Certificate of Mailing, and Certificate of 

 Transmission Procedures Available for................................................................§ 1202.02

 How to Take Appeal ...........................................................................................................§ 1202.01

 Notice of Appeal May be Filed by Fax...........................................§§ 107; 110.01; 110.07; 1202.02

 Final Decision ........................................................................................................................................§ 1217

 Ground for Refusal, New, May Not be Raised During Appeal Except 

 Examining Attorney Does Not Have .......................................................................................§ 1217

 Premature Final Action .......................................................................................................§ 1201.02

Reconsideration of Final Decision of TTAB, Request for ................................................................§ 1219.01

After Appeal to Federal Circuit................................................................................................§ 1218

 TTAB Cannot Remand in Final Decision................................................................................§ 1217

 Request to Divide Application ...........................................................................................§ 1202.01; 1205.02

 Appeal ..................... ...........................................................................§§ 1201.02; 1201.04; 1202.01

Multiple Classes, Refusal Pertaining to Some But Not All.................................................§ 1202.01

Procedure When Appeal and Amendment to Application Both Filed .....................................§ 1205

Procedure When Appeal and Request for Reconsideration of 

 Both Filed ............................................................................. §§ 1202.02; 1203.02(a); 1204

 With Board..........................................................................................................................§ 1201.01 

From Final Decision of TTAB.................................................................................§§ 902.08; 1218; 1219.02

Further Action in Case May Not be Taken by Examining Attorney 

 After Issuance of Final Decision..............................................................................................§ 1217

 Upon Remand .............. ...................................................................... §§ 1201.02; 1203.02(b); 1217

Jurisdiction to Take Further Action After TTAB Final Decision, 

Multiple Class Applications...............................................................................................§ 1202.01; 1202.05

Notice of Appeal ...............................................................................................................................§ 1202.03

Oral Hearing on ..................... ................................................................................................................§ 1216

 Petitionable Matter (see also Petition to the Director) ...........................................................§ 1201.05

Procedure When Appeal and Amendment to Application Both File......................................................§ 1205

Procedure When Appeal and Request for Reconsideration Both Filed............. §§ 1202.02; 1203.02(a); 1204

Propriety of Appeal: 

 Appealable Versus Petitionable Matter (see also Petition to the Director)..............§ 1201.05

 Premature Appeal................................................................................................................§ 1201.03

 Readiness of Case for Appeal ............................................................................§§ 1201.01; 1201.03

 Readiness of Case for Final Action.....................................................................................§ 1201.02

Requirements Not Subject of Appeal Must be Satisfied 

Prior to Appeal..................................................................... §§ 1201.02; 1201.04; 1202.01

Remand of Application to Examining Attorney During:

 After Granting of Letter of Protest.....................................................................§§ 1207.06; 1209.03

For Consideration of Amendment or Request for Reconsideration ..............§§ 1202.02; 1204; 1205

For Consideration of Amendment to Allege Use................................................................§ 1206.01

For New Refusal or Suspension:

 At Request of Examining Attorney...................................§§ 1203.02(c); 1209.02; 1209.03

 Sua Sponte by TTAB............................................................................................§ 1209.01

 For Submission of Additional Evidence ............................................................§§ 1207.02; 1207.06

 Supplemental Brief After Remand......................................................................................§ 1209.01

 Upon Request by Applicant ................................................................................................§ 1209.04 

Reopening of Application After Final Decision.........................................................................§§ 1217; 1218

Request for Reconsideration of Examining Attorney's Final Action 

 (see also Reconsideration) ..............................................................................§§ 1202.02; 1204 

Requirements Not Subject of Appeal Must be Complied With Prior to 

Statement of Use Filed During is Untimely ......................................................................................§ 1206.02

Subject Matter Index - 786 
SUJECT MATTER INDEX 

Suspension of Proceedings During:

 At Request of Applicant...........................................................................................................§ 1213

For Remand to Examining Attorney: 

 For New Refusal.................................................................................. §§ 1203.02(b); 1209

 Amendment to Allege Use....................................................................................§ 1206.01

"Express Mail," and Certificate of Mailing and Transmission 

Filing of Request for Reconsideration of Examining Attorney's 

Must be Filed Within 6 Months From Date of Appealed Action........................................§ 1202.02

 Motions .................. ......................................................................................................... § 502.02(a)

(see Applications Under Section 66(a) and Registrations Under Section 66(a))

Of Discovery Period .................................................................................. §§ 403.04; 501.03; 502.02(a); 509

 To Oppose (see Extension of Time to Oppose 

 Unconsented Motion ............. ........................................................................................................ § 502.02(a)

 For Submission of More Evidence ......................................................§§ 1207.02; 1207.06

Pending Consideration by Examining Attorney of: 

 Amendment to Application.......................................................................§§ 1202.02; 1205

 Request for Reconsideration of Final Action........................ §§ 1202.02; 1203.02(a); 1204 

Sua Sponte by Board, Pending Determination of Whether Cited 

 Registration will be Cancelled Under Section 8 or Will Expire ................................§ 1213

Time for Filing:

Both Notice of Appeal and Appeal Fee Must be Timely Filed.........................§§ 1202.01; 1202.04

 Procedures Available for ......................................................................................§ 1202.02

Final Action Does Not Stay Time for Filing Appeal ................................§§ 1202.02; 1204

 Late-Filed Appeal ...............................................................................................................§ 1202.02

 Notice of Appeal May be Filed by Fax...........................................§§ 107; 110.01; 110.07; 1202.02

 Premature Appeal................................................................................................................§ 1201.03

 TTAB Cannot Remand in Final Decision ..............................................................................................§ 1217

 When Assignee May Take Action in........................................................................................................§ 124

Expenses, Not Awarded by TTAB.......................................................................................§§ 502.05; 527.02

Express Mail: 

Procedure .................................................................................................................................................§ 111

Available for filing: 

 Notice of Appeal to Federal Circuit......................................................................................§ 902.02

Notice of Appeal to TTAB..................................................................................................§ 1202.02 

 Notice of Opposition.............................................................................................................§ 306.01

 Petition to Cancel .................................................................................................................§ 307.02

Extension of Protection to United States 

Extension of Time: 

Motion to Extend or Reopen (see also Motions, Types of).......................................... §§ 502.02(a); 509

 Of Testimony Periods ..................................................................................... §§ 501.03; 502.02(a); 509; 701

Stipulation to Extend or Reopen Should Specify New Date(s)...........................................................§ 501.03

Stipulation to Extend Time to Respond to Discovery Request Need Not be Filed ..............§§ 403.04; 501.02

To Appeal Decision of TTAB.................................................................................§§ 509.02; 902.02; 903.04

 and Extension of Time to Oppose, Request for) 

To Respond to Discovery Request .......................................................................................§§ 403.04; 501.03

 Upon Decision on Other Motion ........................................................................ §§ 502.02(a); 502.04; 509.02

Subject Matter Index - 787 
SUJECT MATTER INDEX 

Extension of Time to Oppose (see also Extension of Time to Oppose, Request for): 

 Access to Application File During ...........................................................................................................§ 120

 Action by TTAB Upon Receipt of Amendment ...................................................................§ 212.04

 Approval of Amendment, Conditions for .............................................................................§ 212.02

Effect on Extension of Time to Oppose .................................................................§§ 212.04; 212.06

 For 66(a) applications ...........................................................................................................§ 212.02

 Who Has Jurisdiction to Consider Amendment....................................................................§ 212.01

Effect on Extension of:

 Letter of Protest..........................................................................................................................§ 215

 Statement of Use Filed During Extension..................................................................................§ 219 

Relinquishment by Potential Opposer of Extension.................................................................................§ 217

 Republication of Mark, During ................................................................................................................§ 214

 Statement of Use Filed During.................................................................................................................§ 219

Extension of Time to Oppose, Request for (see also Extension of Time to Oppose):

Action by TTAB on Request:

 Objections to Request, Consideration of....................................................................................§ 210

 Suspension, General Policy Governing.................................................................................§ 209.01

 Correction of Defective Request ..................................................................................§§ 207.02; 207.03; 208

 Defective, Correction of ..............................................................................................§§ 207.02; 207.03; 208

Expiration Date of Extension, How Determined.................................................................................§ 209.02

Amendment of Application During or After: 

Action by TTAB After Consideration of Amendment.........................................................§ 212.06

Action by TTAB During Consideration of Amendment.......................................................§ 212.05

 Amendment During Opposition............................................................................................§ 212.07

Amendment Should be Addressed to TTAB.........................................................................§ 212.03

 Amendment to Allege Use.........................................................................................................§ 219

 Does Not Require Potential Opposer's Consent....................................................................§ 212.03

 Form of Amendment.............................................................................................................§ 212.03

 Notification of Action on Amendment..................................................................................§ 212.06

Amendment to Allege Use Filed, or Associated With File, During .........................................................§ 219

Amendment to Allege Use Filed, or Associated With File, During Extension..........................§ 219

 Inadvertent Issuance of Registration..........................................................................................§ 216

 Petition to Director From Action on Request for Extension of Time to Oppose ..................§ 211.03

 Request for Reconsideration of Action on Extension Request .............................................§ 211.01

 Republication of Mark ...............................................................................................................§ 214

 Restoration of Jurisdiction to Examining Attorney....................................................................§ 213

Inadvertent Issuance of Notice of Allowance, During .............................................................................§ 220

Inadvertent Issuance of Registration, During...........................................................................................§ 216

Letter of Protest, During ..........................................................................................................................§ 215

 Request for (see Extension of Time to Oppose, Request for)

Restoration of Jurisdiction to Examining Attorney, During.....................................................................§ 213 

Suspension of Running of Extension Not Permitted ...........................................................................§ 209.01

 Withdrawal of Applicant's Representative During..............................................................................§ 212.01

 Determination of Extension Expiration Date ........................................................................§ 209.02

 Petition to Director for Review of Action.............................................................................§ 211.03

 Request for Reconsideration of Action .......................................................................§§ 210; 211.01

Caption of ............................. ..............................................................................................................§ 203.02

 Consent, Written, When Required.......................................................................................................§ 207.03

 Duplicate Requests Should be Avoided ..............................................................................................§ 203.05

 Essential Element Omitted ..........................................................................................§§ 207.02; 207.03; 208

 Extension Beyond First 30 Days.........................................................................................................§ 207.02

Subject Matter Index - 788 
SUJECT MATTER INDEX 

Extension Up to 120 Days From Publication .......................................................................§§ 207.02; 209.01

Extension Beyond 120 Days From Publication...................................................................................§ 207.03

 Extension, With Consent, Beyond 180 Days From Publication..........................................................§ 207.03

 Extraordinary Circumstances Showing (see also Showing of Cause, 

 Requirements for, this heading):

Fee Not Required .....................................................................................................................................§ 204

First 30-Day Extension ........................................................................................................§§ 207.01; 207.02

 By Privy .................. .............................................................................................................§ 206.02

 General Information Concerning..............................................................................................................§ 201

 Nature of Required Showing.................................................................................................§ 207.02 

 Required Showing Omitted...................................................................................................§ 207.03 

 Filing through ESTTA.........................................................................................................................§ 202.01

Form of Request, Generally .....................................................................................................................§ 203

Further Request Normally Must be Filed in Same Name.........................................................................§ 206

Further Request Filed in Different Name: 

Due to Misidentification in Earlier Request of Potential Opposer........................................§ 206.03

Good Cause Showing (see also Showing of Cause, Requirements for, this heading):

N

 Required Showing Omitted...................................................................................................§ 207.02

 When Required ......... ............................................................................................§§ 207.02; 207.03

Handling by TTAB of Request (see Action by TTAB on Request) 

Must Identify Potential Opposer .................................................................................................... § 203.02(b)

 Notification to Applicant of Filing of Request.........................................................................................§ 210 

Petition to Director for Review of Action on ......................................................................................§ 211.03

Proof of Service Not Required ..................................................................................................§§ 203.04; 210

Showing of Cause, Requirements for:

 Extension Beyond First 30 Days...........................................................................................§ 207.02

Signature of ........................... ..............................................................................................§§ 203.02; 203.03

 In general......... ................................................................................................................................§ 207.01

 Misidentification of Potential Opposer ...............................................................................................§ 206.03

Must be Made in Writing ......... ..........................................................................................................§ 203.01

No more than 3... .................................................................................................................§§ 202.01; 207.01

 Notice of Allowance, Inadvertent Issuance of..........................................................................................§ 220

Objections to Request ..............................................................................................................................§ 210

Privy, Further Request Filed by ..........................................................................................................§ 206.02

 Request for Reconsideration of Action on ................................................................................§§ 210; 211.01

 Required Element Omitted ..........................................................................................§§ 207.02; 207.03; 208

Review of Board's Action on: 

 After Institution ....................................................................................................................§ 211.02

 Petition to Director................................................................................................................§ 211.03

 Request for Reconsideration .................................................................................................§ 211.01

 Service of, Not Required ...... ....................................................................................................§§ 203.04; 210

Not Required for First 30-Day Extension ..............................................................§§ 207.01; 207.02

 Extension Beyond 120 Days From Publication ....................................................................§ 207.03

Supplemental Register Mark Not Subject to Opposition ...............................................................§§ 205; 301

Time for Filing: 

 Definition of Date of Publication of Mark ............................................................................§ 202.02

 Effect on Time of:

 Inadvertent Issuance of Registration............................................................................§ 216

 Letter of Protest ...........................................................................................................§ 215

 Petition to Director From Action on Previous Extension Request..........................§ 211.03

 Republication of Mark.................................................................................................§ 214

 Request for Reconsideration of Action on Previous Request .................................§ 211.01

 Restoration of Jurisdiction...........................................................................................§ 213

Subject Matter Index - 789 
SUJECT MATTER INDEX 

Further Extension Request Must be Filed Prior to Expiration of Previous 

 Extension .................................................................................................§§ 202.01; 203.02

 Late-filed Request.................................................................................................................§ 202.04 

Ex Parte Appeals .................... ...........................................................................................................§ 101.02

Fee: 

 Amount of ................. ....................................................................................... §§ 118.01; 308.01(a) 

 Insufficient ............... ....................................................................................................... § 308.01(b) 

 Amount of ................. ....................................................................................... §§ 118.01; 308.02(a) 

When Petition is Filed by Federal Trade Commission (No Fee) ..................................... § 308.02(c) 

Filing, Acceptable Methods of.................................................................................................................§ 107

Lists of ................................................................................................................................................§ 118.01

Must be Paid in Advance ....................................................................................................................§ 118.02

 Generally ..............................................................................................................................§ 202.01

 Timeliness Requirements Cannot be Waived .......................................................................§ 202.04

 Unsigned .............................................................................................................................................§ 203.03

Who May Request Extension ....................................................................................................§§ 201; 206.01

 Written Consent, When Required........................................................................................................§ 207.03

- F - 

Fax Transmission of Documents to TTAB, Generally Improper...............§§ 107; 110.01; 110.07; 1202.02

Federal Rules of Civil Procedure: 

 General Applicability in TTAB Proceedings ......................................................................................§ 101.02

Rule 11 Applicable ...................................................................................................................§§ 318; 527.02

Fed. Rules of Evidence in TTAB Proceedings: 

 Generally ................................ ............................................................................................................§ 101.02

Federal Trade Commission, May File Petition to Cancel..........................................................§ 303.04

For Filing Counterclaim ............. .........................................................................................§§ 118.01; 313.02

 For Filing Opposition:

 Generally ......................................................................................................................... § 308.01(a)

For Filing Petition to Cancel:

 Insufficient .............. ........................................................................................................ § 308.02(b) 

When Petition is in Form of Counterclaim (Fee Required) ..................................................§ 313.02

Fees: 

Attorneys', Not Awarded by TTAB.....................................................................................................§ 502.05

Checks, for Payment of .......... ............................................................................................................§ 118.03

 Deposit Accounts, for Payment of.......................................................................................................§ 118.04

Filing Date of, How Accorded .................................................................................................................§ 109

Filing Receipts for ................. ..................................................................................................................§ 108

Methods of Payment ............................................................................................................§§ 118.03; 118.04

Money Orders, for Payment of............................................................................................................§ 118.03

Not Required for Request for Extension of Time to Oppose ...................................................................§ 204

 Refund of (see Refund of Fees) 

Subject Matter Index - 790 
SUJECT MATTER INDEX 

Files:

 Access to (see also Access to Files)...................................................................................................§ 120

 Copies of Files or Parts Thereof.....................................................................................................§§ 121; 122

Adverse Decision in Opposition or Cancellation, 

Augmented Panel for .....................................................................................................................§§ 540; 803

 Described Generally .............. ..................................................................................................................§ 803

Motion for Augmented Panel.........................................................................................................§§ 540; 803

Motion to Include Trademark Rule 2.131 Remand in Inter Partes Case ........................................§§ 515; 805

With Remand to Examining Attorney in Inter Partes Case [Trademark Rule 2.131].....................§§ 515; 805

 (see Trademark Rule 2.119(c) 5-Day Addition) 

Foreign Attorney or Agent, Representation by .............................................................................§ 114.05

Foreign Party, Correspondence With..........................................................................................................§ 117.06

 Application (see Application Files) 

Confidential Materials in (see Confidential Materials)

 Electronic......... ......................................................................................................................§§ 120.01; 121 

Not to Be Removed From Offices of TTAB.............................................................................§§ 120.01; 121

 Proceeding (see Proceeding Files) 

 Registration (see Registration Files) 

 Of Terminated Proceedings...............................................................................................................§§ 120.03

Filing Date of Submissions and Fees, How Accorded.............................................................................§ 109

Filings and Fees Intended for TTAB, Methods of.............................................................................§ 107

Filing Receipts .................................................................................................................................................§ 108

Final Decision (see also Decisions of the TTAB): 

Effect of on Right to Seek Concurrent Registration.................................................................§ 1112

 Appeal From (see Appeal From Decision of TTAB) 

By Whom Rendered .............. ..................................................................................................................§ 803

In Ex Parte Appeal ................ ................................................................................................................§ 1217

Motion for Reconsideration of .......................................................................................................§§ 543; 804

Motion for Relief From Final Judgment ..................................................................................................§ 544 

Preparation of ........................ ..................................................................................................................§ 803 

Final Judgment, Motion for Relief From..............................................................................................§ 544

Five-day Addition After Certain Manners of Service 

Foreign Depositions: 

 Discovery ............................................................................................................§§ 404.03(c); 520; 703.02(a)

Motion for Leave to Take Orally..............................................................................................................§ 520

 Testimony ...................................................................................................................§§ 520; 703.01; 703.02

Subject Matter Index - 791 
SUJECT MATTER INDEX 

Form of: 

 Depositions ..... ............................................................................................................................§ 703.01(i) 

 

For Answer ........................................................................................................................... § 311.01(a) 

Exhibits.......... ............................................................................................................................§ 703.01(i) 

Formats: 

 For Complaint ........................................................................................................................... § 309.02(a) 

Forms, Electronic ...................... .............................................................................................................. § 106.03

- G - 

Geographic Limitations Considered Only in Concurrent 

 514.03; 1101.02 

Good Cause Showing, Requirement for (see Cause, Order to Show; 

Extension of Time to Oppose, Request for; and Motions, Types of: To Extend) 

Grounds for Opposition or Cancellation ..........................................................................§§ 307.02; 309.03

- H - 

Heading of Submissions Filed With TTAB, Proper ....................................................................§ 106.01

Hearing, Motion for Augmented Panel ..................................................................................§§ 540; 802.04

Hearing, Oral (see Oral Hearing)

Hypothetical Pleading .............................................................................................................................§ 309.03

 

 Use Proceeding .................................................................................§§ 309.03(a)(1); 311.02(b); 313.01; 

Goose-Gander Rule ..................................................................................................................................§ 402.02

Hague Convention Procedure.......................................................................................................... § 404.03(c) 

- I - 

Identification of Submissions Filed With TTAB, Proper ..........................................................§ 106.01

Subject Matter Index - 792 
SUJECT MATTER INDEX 

Inadvertently Issued Registration............................................................................................................§ 216

Information, Obtaining Procedural........................................................................................................§ 105

Inherent Power of TTAB: 

Concurrent Use ......................................................................................................................................§ 1106

Interference Proceeding:

 Addition of Party to ...............................................................................................................................§ 1006

 Briefs on Case (see also Briefs: On Case)...........................................................................................§ 801

Conduct of Proceeding Described, In General .......................................................................................§ 1007

Declared Only Upon Petition to Director Showing Extraordinary Circumstances ....................§§ 1001; 1002

Fee Not Required Beyond Fee for Petition to Director to Declare Interference.....................................§ 1003

 Has No Pleadings ......................................................................................................................§§ 1003; 1004

Issues in .................................................................................................................................................§ 1004

Not Declared Between Application and Registration.................................................................§§ 1001; 1002

 Oral Hearing (see also Oral Hearing: On the Case).............................................................§§ 802; 1007

Petition to Director to Declare (see also Petition to the Director)...................................§§ 1001; 1002

In Camera Inspection of Documents..................................................................................................§ 412.04

To Sanction .........................................................................................................................................§ 527.03

To Schedule Proceedings .......... .........................................................................................................§ 510.01

Inspection of Files at TTAB (see Access to Files)

Institution of Proceeding (see also Notification of TTAB Proceeding): 

Cancellation ............................................................................................................... § 310; see also § 309.04

 Interference ............................................................................................................................................§ 1003

 Opposition ............................ ..................................................................................... § 310; see also § 309.04

Abandonment of Subject Application During (see also Abandonment of Application).............§ 603

Access to Files During (see also Access to Files)..............................................................................§ 120

Appeal From Decision of TTAB in (see Appeal From Decision of TTAB)

 Briefing Schedule ...................................................................................................................§§ 801.02; 1007

Burden of Proof in, Who Has.................................................................................................................§ 1005

 Commencement of . ........................................................................................................§§ 302; 403.02; 1003

Compared to Cancellation or Opposition ...............................................................................................§ 1007

 Decision, Final (see also Final Decision) ................................................................................§§ 803; 806

Defendant, Defined ................................................................................................................................§ 1005

 Described ..................................................................................................................................§ 102.02; 1001

Examination of Application With Petition to Director to Declare Interference ...........................§ 1002; 1003

 Final Decision in (see also Final Decision)..............................................................................§§ 803; 806

 Institution of ........................................................................................................................................§ 1003

Junior Party, Defined..............................................................................................................................§ 1005

 Notice of Interference.................................................................................................................§§ 1003; 1007

 Opposition to Application Published Subject to Interference, Procedure When Filed...........................§ 1003

Petition to Director From Action of TTAB During (see Petition to the Director)

 Plaintiff, Defined ...................... .............................................................................................................§ 1005

Subject Matter Index - 793 
SUJECT MATTER INDEX 

Pleadings Not Used in Interference............................................................................................§§ 1003; 1004

Procedure When Application Published Subject to Interference is Opposed.........................................§ 1003

Senior Party, Defined ............. ...............................................................................................................§ 1005

Status of Application After Proceeding....................................................................................................§ 807

In Ex Parte Appeal; and Evidence, Introduction of, in Inter Partes Proceeding) 

Answers May be Used in Exam or Cross-exam of Any Witness at Trial............................................§ 704.10

Documents Provided as Interrogatory Answer.....................................................................§§ 704.10; 704.11

Motion for Leave to Serve More .......................................................................................... §§ 405.03(c); 519

TTAB Not Bound by Introduction or Preamble to Interrogatories.................................. § 405.03(d) 

 Business Records Option ................................................................................................. § 405.04(b)

 Generally ...............................................................................................................§§ 405.04(b); 410

 Objections to ........................................................................................§§ 405.03(e); 405.04(b); 410

 Signature of ..................................................................................................................... § 405.04(c)

When Made of Record by One Party, May be Referred to by Any Party .............................§ 704.10

 Scope of .................................................................................................................................§§ 402; 405.02

 Responses to ..................................................................................................... §§ 403.03; 405.04(a)

Who May be Served ...................... .....................................................................................................§ 405.01

Termination of ..........................................................................................................................§§ 120.03; 806

Trial Schedule for ........................................................................................................................§§ 701; 1007 

Internet Materials (see Evidence, For Summary Judgment Motion; Evidence, 

Interrogatories: 

Discovery Requests and Responses, When to be Filed ................................................§§ 409; 704.09; 704.10

 Excessive ............................... .............................................................................................. §§ 405.03(e); 526

Motion to Compel Answer: 

 Generally ....................................................................................................................§§ 411.01; 523

 When Interrogatories are Objected to as Excessive ......................................................... § 405.03(e)

 Numerical Limit:

 Consolidated Proceedings................................................................................................ § 405.03(c)

 Counterclaim ................................................................................................................... § 405.03(c)

 Described ................. ....................................................................................................... § 405.03(a)

 How Questions Counted .................................................................................................. § 405.03(d)

 Motion for Leave to Serve More............................................................................ §§ 405.03(c); 519

 Multiple Marks ................................................................................................................ § 405.03(c)

 Remedy for Excessive............................................................................................ §§ 405.03(e); 410

 Service of Revised Interrogatories................................................................................... § 405.03(e)

 Sets Added Together........................................................................................................ § 405.03(b)

Objections to .......................................................................................................§§ 405.03(e); 405.04(b); 410

 Responses to:

Answers Must be Under Oath.......................................................................................... § 405.04(b)

 Documents Provided as Interrogatory Answer ......................................................§§ 704.10; 704.11

 Failure to Timely Respond................................................................................ §§ 403.03; 405.04(a)

 Introduction in Evidence.......................................................................................................§ 704.10

May be Used in Exam or Cross-exam of Any Witness at Trial ............................................§ 704.10

 Motion Attacking Interrogatories Generally Inappropriate.................................... §§ 405.04(b); 410

 Requirements for.............................................................................................................. § 405.04(b)

 Time for ........................................................................................................... §§ 403.03; 405.04(a)

 Who Must Respond.......................................................................................................... § 405.04(c)

 Time for: 

 Service of ................. .............................................................................................§§ 403.02; 405.01

Who May Serve ..................................................................................................................................§ 405.01

Subject Matter Index - 794 
SUJECT MATTER INDEX 

Introduction of Evidence (see Evidence, Introduction of, in Inter Partes Proceeding) 

 Not Available .................................................................................................................§§ 502.01; 534.04

- J - 

Judgment: 

Consent to Entry of Against Self..............................................................................................................§ 604

Entered Subject to Prevailing Party's Establishment of Constructive Use ..................................... § 901.02(b)

For Failure of Plaintiff to File Main Brief on Case, Motion for 

 [Trademark Rule 2.128(a)(3)]................................................................................ §§ 536; 801.02(a)

Jurisdiction: 

Examining Attorney Does Not Have .......................................................................................§ 1217

Juristic Person, Meaning of...................................................................................................................§ 303.02

Involuntary Dismissal Under Fed. R. Civ. P. 41(b), Motion for 

Joinder of Party ..............................................................................................................................................§ 512

Joint Plaintiffs, May File Opposition or Cancellation ................................................................................§ 303.06

 Based Upon Settlement Agreement, Effect of................................................................................ § 605.03(e)

Default, for Failure to Answer, Motion for ..............................................................................................§ 508

Default, for Failure to Answer Notice of Institution in Concurrent Use Proceeding .............................§ 1106

 Default, Motion for Relief From ...............................................................................................§§ 312.03; 544

 Final, Motion for Relief From..................................................................................................................§ 544

For Failure of Plaintiff to Offer Evidence, Motion for (see also Motions, Types of)........§§ 502.01; 534

Motion for, due to Cancellation under Sec. 8 or 9 During Case, of 

 Defendant's Registration [Trademark Rule 2.134(b)]...............................................................§ 535

On Pleadings, Motion for (see also Motion, Types of).....................................................................§ 504

 Summary, Motion for (see also Motions, Types of).........................................................................§ 528 

Judicial Notice (see also Evidence, Introduction of, in Inter Partes Proceeding)...............§ 704.12

Junior Party, Defined ........................ ................................................................................................§§ 1005; 1108

Of TTAB, Generally ................ .............................................................................................................§ 102.01

Over Plaintiff's Pending Application, TTAB Does Not Have........................................................... § 605.03(c)

Restoration of, to Examining Attorney (see Restoration of Jurisdiction to 

 Examining Attorney)

To Take Further Action After Final Decision in Ex Parte Appeal, 

Subject Matter Index - 795 
SUJECT MATTER INDEX 

- L - 

Letter of Protest:

 Described .................................................................................................................................................§ 215

Effect on Time to Oppose ...... .................................................................................................................§ 215

Time for Filing ........................... .............................................................................................................§ 215

Letter Rogatory Procedure .............................................................................................................. § 404.03(c)

LEXIS Legal Data Base, TTAB Decisions in..................................................................................§ 101.03

Limit, Page: 

 Of Applicant or Registrant .................................................................................................................§ 512.04

For Brief on Case ................... ..................................................................................................§§ 537; 801.03

For Brief on Motion ......................................................................................................... .§ 502.02(b); 528.01

- M - 

Mailing Address, of TTAB ........... .................................................................................................................§ 103

Misidentification: 

 Of Plaintiff ..........................................................................................................................................§ 512.04 

 Of Potential Opposer ...................................................................................................... §§ 206.03; 303.05(c)

Money Orders, for Payment of Fees..................................................................................................§ 118.03

More Definite Statement, Motion for (see also Motions, Types of)...............................................§ 505

Motions, Generally: 

 Action on ....................................... .....................................................................................................§ 502.04

Authority of TTAB Members, Interlocutory Attorneys to Act 

 (see Trademark Trial and Appeal Board)

 Briefs on (see also Briefs: On Motions)..................................................................................... § 502.02(b)

Caption of ................................... ................................................................................................... § 502.02(a)

Certificate of Mailing by First-Class Mail Available for ............................................................... § 502.02(a)

Conferences on, Telephone or Pre-Trial....................................................................................§§ 413; 502.06

 Determination of .................................................................................................................................§ 502.04

Form of .................................... ...................................................................................................... § 502.02(a)

 Identification of ....................... ...................................................................................................... § 502.02(a)

Must be Made in Writing ............................................................................................................... § 502.02(a)

Must be Served on Every Other Party............................................................................................ § 502.02(a)

Oral Hearings on .................... ...........................................................................................................§ 502.03

 Pre-Trial Conferences on......................................................................................................§§ 413; 502.06(b)

 Reconsideration of Decision on................................................................................................................§ 518

Subject Matter Index - 796 
SUJECT MATTER INDEX 

Rule 11, Fed. R. Civ. P. Applicable ..........................................................................................§§ 318; 527.02

Signature of ............................ ....................................................................................................... § 502.02(a)

 Telephone Conferences on .................................................................................................. §§ 413; 502.06(a)

 Types Available Differ From District Court .......................................................................................§ 502.01

 Unsigned ........................................................................................................................................ § 502.02(a)

Who May Act on .................... ............................................................................................................§ 502.04

Motions, Types of: 

 Attacking Discovery Requests, Generally Inappropriate ........ §§ 405.04(b); 406.04(b); 407.03(b); 410; 526

 Consented ............................. .......................................................................................... §§ 502.02(a); 502.04

 Contested ............................... ......................................................................................... §§ 502.02(a); 502.04

For Additional Time for Argument at Oral Hearing ............................................................§§ 541.02; 802.05

For Attorneys' Fees (Not Awarded by TTAB).....................................................................§§ 502.05; 527.02

For Augmented Panel Hearing ..................................................................................................§§ 540; 802.04

For Damages (Not Awarded by TTAB)...............................................................................§§ 502.05; 527.02

For Default Judgment for Failure to Answer............................................................................................§ 508

 For Directed Verdict, Not Available ....................................................................................§§ 502.01; 534.04

 For Discovery Sanctions:

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB ..............................§§ 502.05; 527.02

 Estoppel Sanction............................................................................................................. § 527.01(e)

 For Failure to Comply With Order re Discovery ............................................................. § 527.01(a)

For Failure to Respond, or Respond Properly, to Admission Request............................. § 527.01(d)

 For Failure to Timely Respond ......................................................................... §§ 403.03; 527.01(c)

 If Party Says it Won't Respond to Discovery................................................................... § 527.01(b)

For Discovery to Respond to Summary Judgment Motion .................................................................§ 528.06

For Expenses (Not Awarded by TTAB)...............................................................................§§ 502.05; 527.02

For Involuntary Dismissal Under Fed. R. Civ. P. 41(b), Not Available...............................§§ 502.01; 534.04

For Judgment due to Cancellation, Under Sec. 8 or 9 During Case, of 

Defendant's Registration [Trademark Rule 2.134(b)]............................................§§ 535; 602.02(b)

For Judgment for Failure of Plaintiff to File Main Brief on Case 

[Trademark Rule 2.128(a)(3)]................................................................................ §§ 536; 801.02(a)

For Judgment for Failure of Plaintiff to Offer Evidence:

 In General ..............................................................................................................§§ 502.01; 534.01

Motion Under Fed. R. Civ. P. 41(b) or 50(a) Not Available..................................§§ 502.01; 534.04

No Evidence at All [Trademark Rule 2.132(a)].....................................................§§ 502.01; 534.02

No Evidence Except USPTO Records [Trademark Rule 2.132(b)].......................§§ 502.01; 534.03

 Other Motions Relating to Sufficiency of Evidence Not Available.......................§§ 502.01; 534.04

For Judgment on the Pleadings:

 Determination of Motion ......................................................................................................§ 504.02

 Nature of Motion...................................................................................................................§ 504.02

 Submission of Matters Outside Pleadings..............................................................§§ 504.03; 528.04

 Time for Filing .....................................................................................................................§ 504.01

For Leave to Audiotape Oral Hearing .......................................................................................§§ 542; 802.06

For Leave to Exceed Page Limit for Brief on Case...................................................................§§ 537; 801.03

For Leave to File Amicus Brief................................................................................................................§ 538

For Leave to Serve More Interrogatories ............................................................................. §§ 405.03(c); 519

For More Definite Statement:

Failure to Obey Order for Such Statement............................................................................§ 505.03

 May Not be Used to Obtain Discovery .................................................................................§ 505.01

 Nature of Motion...................................................................................................................§ 505.01

 Time for Filing .....................................................................................................................§ 505.02

For Order re Manner or Place of Production of Documents.....................................................................§ 522

Subject Matter Index - 797 
SUJECT MATTER INDEX 

For Order to Show Cause due to Cancellation, Under Sec. 8 or 9 

During Case, of Defendant's Registration [Trademark Rule 2.134(b)]....................§ 535; 602.02(b)

For Order to Show Cause re Plaintiff's Failure to File Main Brief on Case 

[Trademark Rule 2.128(a)(3)]................................................................................ §§ 536; 801.02(a)

 For Protective Order ............................................................................................................ §§ 412.02(a); 526

 For Reconsideration of Final Decision...........................................................................................§§ 543; 804

 For Reconsideration of Decision on Motion ............................................................................................§ 518

For Relief From Default Judgment for Failure to Timely Answer Complaint ..........................§§ 312.03; 544

For Relief From Final Judgment ..............................................................................................................§ 544

 For Sanctions: 

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB ..............................§§ 502.05; 527.02

 For Failure to Comply With Protective Order.................................................................. § 527.01(a)

 Non-Discovery .....................................................................................................................§ 527.03

 Relating to Discovery (see also Motions, Types of: For Discovery Sanctions)...........§ 527.01

 Under Board's Inherent Authority.........................................................................................§ 527.03

 Under Rule 11, Fed. R. Civ. P...............................................................................................§ 527.02

 Where Party Cannot be Located ...........................................................................................§ 527.03

 Where Party States it Will Not Proceed................................................................................§ 527.03

 For Summary Judgment:

 Evidence on:

 Affidavits and Attached Exhibits...................................................................... .§ 528.05(b)

 Discovery Responses ........................................................................................ § 528.05(c)

 In General .......................................................................................................... § 528.05(a)

 Internet Materials............................................................................................... § 528.05(e) 

 Notice of Reliance Not Required ...................................................................... § 528.05(a)

 Official Records................................................................................................. § 528.05(e)

Of Record Only for Motion .............................................................................. .§ 528.05(a)

 Printed Publications........................................................................................... § 528.05(e) 

 Registrations...................................................................................................... § 528.05(d)

 Testimony From Another Case...........................................................................§ 528.05(f)

Judgment May be Entered for Nonmoving Party..................................................................§ 528.08

 Miscaptioned Motion ............................................................................................................§ 528.04

 Motion for Discovery to Respond to.....................................................................................§ 528.06

 Nature of Motion ..................................................................................................................§ 528.01

Should Specify Facts Said to be Disputed, or Undisputed....................................................§ 528.01

 Standards for Determining ....................................................................................................§ 528.01

 Suspension of Case Pending Determination of.....................................................................§ 528.03

 Time for Filing .....................................................................................................................§ 528.02

 Unpleaded Issue Not Basis for......................................................................................... § 528.07(a)

 Unpleaded Issue Not Defense Against............................................................................. § 528.07(b)

 Without Supporting Evidence ...............................................................................................§ 528.04

 Relating to Sufficiency of Trial Evidence .................................................................................§§ 502.01; 534

That Deposition Upon Written Questions be Taken Orally ................................§§ 531; 703.01(g); 703.02(a)

To Amend Application or Registration:

 Amendment With Consent....................................................................................................§ 514.02

 Amendment Without Consent...............................................................................................§ 514.03

 As Defense to Proceeding ................................................................................. §§ 311.02(b); 514.03

Geographic Limitations Considered Only in Concurrent 

 Use Proceeding .................................§§ 309.03(a)(1); 311.02(b); 313.01; 514.03; 1101.02

 In General .............................................................................................................................§ 514.01

 Requirements for...................................................................................................................§ 514.01

To Amend Name of Misidentified Party .............................................................................................§ 512.04

 

Subject Matter Index - 798 
SUJECT MATTER INDEX 

 To Amend Pleading:

 In General .............................................................................................................................§ 507.01

 Should be Accompanied by Proposed Pleading....................................................................§ 507.01

Under Fed. R. Civ. P. 15(a)...................................................................................................§ 507.02

Under Fed. R. Civ. P. 15(b) ..................................................................................................§ 507.03

 When Motion Necessary.......................................................................................................§ 507.02

 When unavailable against 66(a) applications.........................................................§§ 507.01; 507.02

To Change Oral Hearing Date..............................................................................................§§ 541.01; 802.03

 To Change Title of Proceeding.................................................................................................................§ 512

To Compel Discovery:

 Answer to Interrogatories.......................................................................... §§ 405.03(e); 411.01; 523

 Failure to File Motion ...........................................................................................................§ 523.04

 In General .............................................................................................................................§ 523.01

 Production of Documents............................................................................................§§ 411.01; 523

 Re Deposition ................................................................................................§§ 404.09; 411.03; 523

 Requirements for Motion ......................................................................................................§ 523.02

 Suspension of Proceeding Pending Determination of...........................................................§ 523.01

 Time for Filing .....................................................................................................................§ 523.03

TTAB Not Bound by Introduction or Preamble to Interrogatories.................................. § 405.03(d)

 When Interrogatories are Objected to as Excessive ......................................................... § 405.03(e)

To Consolidate ...................... ..................................................................................................................§ 511

To Correct Name of Misidentified Party.............................................................................................§ 512.04

To Dismiss for Failure of Plaintiff to Offer Evidence:

 In General ..............................................................................................................§§ 502.01; 534.01

Motion Under Fed. R. Civ. P. 41(b) or 50(a) Not Available..................................§§ 502.01; 534.04

No Evidence at All [Trademark Rule 2.132(a)].....................................................§§ 502.01; 534.02

No Evidence Except USPTO Records [Trademark Rule 2.132(b)].......................§§ 502.01; 534.03

 Other Motions Relating to Sufficiency of Evidence Not Available.......................§§ 502.01; 534.04

To Dismiss for Failure to State Claim:

 Amendment of Defective Pleading .......................................................................................§ 503.03

 Determination of ... ...............................................................................................................§ 503.02

 Nature of Motion ..................................................................................................................§ 503.02

 Submission of Matters Outside Pleading ...............................................................§§ 503.04; 528.04

 Time for Filing .....................................................................................................................§ 503.01

To Dismiss Under Fed. R. Civ. P. 41(b) or 50(a), Not Available ........................................§§ 502.01; 534.04

To Divide Application .............................................................................................................................§ 516

 To Extend:

 Consented:

 Determination of.....................................................................................................§ 509.02

 Form of...................................................................................................................§ 509.02

 Should Specify New Date(s)............................................................... §§ 502.02(a); 509.02

 Nature of Motion...................................................................................................................§ 509.01

 Requirement for Good Cause Showing.................................................................................§ 509.01

 Unconsented:

 Determination of.....................................................................................................§ 509.02

 May Not be Granted ...............................................................................................§ 509.02

 Relating to summary judgment...............................................................................§ 509.01

Request That Reset Date(s) Run From Date of Decision on Motion.. §§ 502.02(a); 509.02

 Upon Decision on Other Motion............................................ §§ 502.02(a); 502.04; 509.02

To Hold Person in Contempt (TTAB Cannot) ....................................................................................§ 502.05

To Join or Substitute:

Issuance of Registration in Name of Assignee or in Changed Name....................................§ 512.03

Proceeding May be Continued in Original Name ..................................................§§ 512.01; 512.02

Subject Matter Index - 799 
SUJECT MATTER INDEX 

 Upon Change of Name..........................................................................................................§ 512.02

 Upon Misidentification by Mistake ......................................................................................§ 512.04

 Upon Transfer of Interest in Mark ........................................................................................§ 512.01

To Offer Discovery Deposition of Self or Nonparty................................................................................§ 529

 To Quash Notice of Deposition................................................................................................................§ 521

 To Remand Application to Examining Attorney............................................................................§§ 515; 805

 To Reopen:

 Consented: 

 Determination of.....................................................................................................§ 509.02

 Form of...................................................................................................................§ 509.02

 Should Specify New Date(s)............................................................... §§ 502.02(a); 509.02

For Introduction of Newly Discovered Evidence......................... § 509.01; 509.01(b)(2); 704.05(b)

 Nature of Motion...................................................................................................................§ 509.01

 Requirement for Showing of Excusable Neglect ......................................... §§ 509.01; 509.01(b)(1)

 Unconsented:

 Determination of.....................................................................................................§ 509.02

 May Not be Granted ...............................................................................................§ 509.02

Request That Reset Date(s) Run From Date of Decision on Motion.. §§ 502.02(a); 509.02

 Upon Decision on Other Motion............................................ §§ 502.02(a); 502.04; 509.02

To Resume Proceedings: 

 After Conclusion of Bankruptcy Proceeding ................................................................... § 510.03(b)

 After Determination of Another Proceeding.................................................................... § 510.02(b)

 After Suspension for Settlement Negotiations................................................................. § 510.03(b)

To Strike Brief on Case, or Attached Exhibits..........................................................................§§ 539; 801.05

 To Strike Brief on Motion........................................................................................................................§ 517 

To Strike Notice of Reliance ....................................................................................................................§ 532

To Strike Part of Pleading: 

 Exhibits Attached to Pleadings .............................................................................................§ 506.03

 Motion Not Favored..............................................................................................................§ 506.01

 Nature of Motion...................................................................................................................§ 506.02

To Strike Trial Testimony Deposition:

 For Inadequate Notice.................................................................................................§§ 521; 533.02

 For Untimeliness...................................................................................................................§ 533.01

When Motion Should Not be Filed ................................................................... §§ 533.03; 707.03(c)

To Substitute or Join: 

Issuance of Registration in Name of Assignee or in Changed Name....................................§ 512.03

Proceeding May be Continued in Original Name ..................................................§§ 512.01; 512.02

 Upon Change of Name..........................................................................................................§ 512.02

 Upon Misidentification by Mistake ......................................................................................§ 512.04

 Upon Transfer of Interest in Mark ........................................................................................§ 512.01

 To Suspend Proceedings:

 Due to Withdrawal of Party's Attorney............................................................................ § 510.03(a)

 For Bankruptcy Proceeding............................................................................................. .§ 510.03(a)

 For Good Cause ............................................................................................................... § 510.03(a)

 For Settlement Negotiations............................................................................................. § 510.03(a)

 Pending Deposition Upon Written Questions.................................................................. § 510.03(a)

 Pending Determination of Motion to Compel.......................................................................§ 523.01

Pending Disposition of Potentially Dispositive Motion................................................... § 510.03(a)

 Pending Outcome of Another Proceeding........................................................................ § 510.02(a)

 Potentially Dispositive Motion Also Pending.................................................................. § 510.02(a)

 TTAB has Inherent Power to Suspend..................................................................................§ 510.01

 To Take Foreign Deposition Orally ................................................................... §§ 520; 703.01(b); 703.02(a)

 

Subject Matter Index - 800 
SUJECT MATTER INDEX 

To Test Sufficiency of Response to Admission Request:

 Failure to File Motion ...........................................................................................................§ 524.04

 In General ..............................................................................................................§§ 411.02; 524.01

 Requirements for Motion ......................................................................................................§ 524.02

 Time for Filing Motion .........................................................................................................§ 524.03

To Use Testimony From Another Proceeding...........................................................................§§ 530; 704.13 

To Withdraw as Representative:

 Action by TTAB After Granting of Motion......................................... §§ 116.05; 510.03(b); 513.01

 Requirements for Motion .......................................................................................§§ 116.05; 513.01

To Withdraw or Amend Admission ..........................................................................................§§ 407.04; 525

 Types Available Differ From District Court .......................................................................................§ 502.01

 Unconsented, Uncontested .............................................................................................. §§ 502.02(a); 502.04

Move by Party or Representative to New Address.......................................................................§ 117.07

Multiple Class Application or Registration, Opposition or Cancellation Against ...............................§ 304 

- N - 

Negotiation for Settlement: 

Resumption of Proceedings After .................................................................................................. § 510.03(b)

Suspension of Proceedings During.................................................................................. §§ 510.03(a); 605.02

Newly Discovered Evidence, Motion to Reopen 

Testimony Period for Introduction of ....... ..................................................... §§ 509.01; 704.05(b)

NEXIS Materials (see Evidence, For Summary Judgment Motion; 

Evidence, in Ex Parte Appeal; and Evidence, Introduction 

of, in Inter Partes Proceeding)

Non-lawyer, Representation by................................................................................§§ 114.04; 114.06; 117.08

Notice, Judicial (see also Evidence, In Ex Parte Appeal 

 and Evidence, Introduction of, in Inter Partes Proceeding)........................................§ 704.12

Notice of Allowance, Inadvertent Issuance of (see Extension of Time 

 to Oppose and Extension of Time to Oppose Request for)

Notice of Appeal From Decision of TTAB (see Appeal From Decision of TTAB)

Notice of Deposition, Requirements for: 

 Discovery Deposition ............ .............................................................................................................§ 404.05

 Testimony Deposition:

 Oral .................................................................................................................................. § 703.01(e)

 Upon Written Questions................................................................................................... § 703.02(e)

Subject Matter Index - 801 
SUJECT MATTER INDEX 

Notice of Election, to Have Review by Civil Action of TTAB 

 Decision (see also Appeal From Decision of TTAB)................§§ 901.01; 902.03; 902.04; 903.06

Notice of Opposition (see also Complaint) ..............................................................................................§ 309

Notice of Reliance: 

 In General ............................. ..............................................................................................................§ 704.02

Introduction of Evidence by (see Evidence, 

Introduction of, in Inter Partes Proceeding)

Not Required for Submission of Evidence on Summary Judgment ............................................... § 528.05(a) 

 Objections to (see Objections: To Notice of Reliance)

Motion to Strike .......................................................................................................................................§ 532

Notices in Official Gazette, Effect on TTAB Proceedings of..................................................................§ 101.04

Notification of TTAB Proceeding:

Concurrent Use Proceeding....................................................................................................................§ 1106

 Interference Proceeding .........................................................................................................................§ 1003

Opposition or Cancellation Proceeding:

 Defendant's Copy Returned as Undeliverable.......................................................................§ 310.02

 Description of Notification Letter.........................................................................................§ 310.01

 General Procedure.................................................................................................................§ 310.01

 To Whom Sent .......... ...........................................................................................................§ 310.01

- O - 

Objections:

To Discovery Deposition:

 Conduct of Parties............................................................................................................ § 404.08(c)

 Curable Error ................................................................................................................... § 404.08(c)

 Motion to Strike Deposition.......................................................................................................§ 533

 Deposition Proceedings.................................................................................................... § 404.08(c)

 Deposition Questions.................................................................. §§ 404.09; 404.03(a)(2); 404.08(c)

 Motion to Quash Notice.............................................................................................................§ 521

 Notice of Deposition .............................................................................................. §§ 521; 404.08(a)

 Oath ................................................................................................................................. § 404.08(c)

 Qualification of Officer.................................................................................................... § 404.08(b)

 Substantive ...................................................................................................................... § 404.08(c)

 Waiver of ......................................................................................................................... § 404.08(c)

To Discovery, in General ................. .......................................................................................................§ 410

To Evidence, in General........................... ................................................................................................§ 707

 To Interrogatories:

 Excessive ......................................................................................................................... § 405.03(e)

 Stated in Lieu of Answer ................................................................................................. § 405.04(b)

To Notice of Reliance (and Accompanying Evidence):

 Curability ............... .......................................................................................... §§ 532; 707.02(b)(2)

 In General .............................................................................................................................§ 707.01

 Motion to Strike Notice .............................................................................................................§ 532

Subject Matter Index - 802 
SUJECT MATTER INDEX 

 On Ground of Untimeliness.............................................................................. §§ 532; 707.02(b)(1)

 On Other Procedural Grounds........................................................................... §§ 532; 707.02(b)(2)

 On Substantive Grounds ........................................................................................ §§ 532; 707.02(c)

 Waiver of ...............................................................................................................§§ 707.02; 707.04

To Requests for Admission ............................................................................................................ § 407.03(b)

To Requests for Production of Documents..................................................................................... § 406.04(b)

To Testimony Deposition, Oral:

 Curability ................. ............................................................................... §§ 707.03(b)(1); 707.03(c)

 Deposition Answers.......................................................................................... §§ 533.03; 707.03(c)

 Deposition Proceedings.................................................................................§§ 703.01(h); 707.03(c)

 Deposition Questions...................................................................... §§ 404.09; 703.01(h); 707.03(d)

 Form of Transcript ........................................................................................................... § 707.03(c)

 In General ........................................................................................................................ § 707.03(a)

 Motion to Quash Notice.............................................................................................................§ 521

 Motion to Strike Deposition.................................................................................. .§§ 533; 707.03(c)

 Notice of Deposition ......................................... §§ 521; 533.02; 703.01(e); 703.01(h); 707.03(b)(2)

 On Ground of Improper or Inadequate Notice ............................................................ § 707.03(b)(2)

 On Ground of Untimeliness......................................................................... §§ 533.01; 707.03(b)(1)

 On Other Procedural Grounds........................................................................... §§ 533.03; 707.03(c)

 On Substantive Grounds .................................................................................. .§§ 533.03; 707.03(c)

 Qualification of Officer.................................................................................§§ 703.01(h); 707.03(c)

 Refusal to Answer........................................................................... §§ 404.09; 703.01(h); 707.03(d)

 Testimony Not Read Prior to Final Decision ..................... .§§ 502.01; 534.04; 707.02(c); 707.03(c)

 Waiver of .......................................................................................................... §§ 707.03(c); 707.04

To Testimony Deposition, On Written Questions:

 Curability ................. ............................................................................... §§ 707.03(b)(1); 707.03(c)

 Deposition Answers.........................................................................§§ 533.03; 703.02(k); 707.03(c)

 Deposition Proceedings.................................................................................§§ 703.01(h); 707.03(c)

 Deposition Questions.....................................................§§ 404.09; 703.02(g); 703.02(k); 707.03(d)

 Form of Transcript ........................................................................................................... § 707.03(c)

 In General ........................................................................................................................ § 707.03(a)

 Motion to Quash Notice.............................................................................................................§ 521

 Motion to Strike Deposition........................................................................... §§ 521; 533; 707.03(c)

 Notice of Deposition ...........................................................§§ 521; 533.02; 703.02(e); 707.03(b)(2)

 On Ground of Untimeliness........................................................§§ 533.01; 703.02(c); 707.03(b)(1)

 On Other Procedural Grounds........................................................................... §§ 533.03; 707.03(c)

 On Substantive Grounds .................................................................................. .§§ 533.03; 707.03(c)

 Qualification of Officer.................................................................................§§ 703.01(h); 707.03(c)

 Refusal to Answer........................................................................... §§ 404.09; 703.01(h); 707.03(d)

 Testimony Not Read Prior to Final Decision ...................... §§ 502.01; 534.04; 707.02(c); 707.03(c)

 Waiver of .......................................................................................................... §§ 707.03(c); 707.04

Waiver of ................................................................................................................§§ 707.02; 707.03; 707.04

Obtaining Status Information for Applications and Registrations............................................§ 123

Official Gazette, Notices, Effect on TTAB Proceedings of.........................................................................§ 101.04

Official Records (see Evidence, For Summary Judgment Motion 

 and Evidence, Introduction of, in Inter Partes Proceeding)

Opinions, Advisory, Not Issued by TTAB...................................................................................§ 605.03(f)

Subject Matter Index - 803 
SUJECT MATTER INDEX 

Opposition Proceeding: 

Abandoned Application Not Subject to Opposition ....................................................................§ 218; 602.01

Abandonment of Application by Applicant During ..................................................................§§ 218; 602.01

Abandonment of Proceeding, by Opposer 

 (see also Withdrawal of Proceeding by Plaintiff).....................................................§ 601

Access to Files During (see also Access to Files)..............................................................................§ 120

Adverse Decision in, Effect of on Right to Seek Concurrent Registration ............................................§ 1112

Amendment of Application During.....................................................................................................§ 212.07

Amendment to Allege Use Filed, or Associated With File, During .........................................................§ 219

 Answer, Generally (see also Answer)....................................................................................§§ 310.03; 311

Appeal From Decision of TTAB in (see Appeal From Decision of TTAB)

Briefing Schedule ................... ............................................................................................................§ 801.02

 Briefs on Case (see also Briefs: On Case)............................................................................................§ 801

 Combined Complaint May be Filed .........................................................................................................§ 305

 Commencement of ................ ...................................................................................................§§ 302; 403.02

 Complaint (see also Complaint) .........................................................................................................§ 309

 Consolidated Complaint May be Filed.....................................................................................................§ 305

"Conversion" to Concurrent Use Proceeding ..........................................................................§§ 514.03; 1113

Decision, Adverse, in Opposition, Effect of on Right to Seek Concurrent Registration........................§ 1112

 Decision, Final (see also Final Decision).................................................................................§§ 803; 806

 Described ............................................................................................................................................§ 102.02

Effect of Adverse Decision in Opposition on Right to Seek Concurrent Registration...........................§ 1112

 Electronic filing ................................................................................................................................§ 309.01

Extension of Time to File (see Extension of Time to Oppose) 

Fee for Filing (see also Fee)................................................................................. §§ 118.01; 306.01; 308.01

 Final Decision in (see also Final Decision)..............................................................................§§ 803; 806

Grounds for Opposition ................................................................................................................. § 309.03(c)

Geographic Limitations Not Considered in...................§§ 309.03(a)(1); 311.02(b); 313.01; 514.03; 1101.02

 Identity of Defendant ..........................................................................................................................§ 310.01

 Inadvertent Issuance of Registration During............................................................................................§ 216 

 Joint Opposers May File .....................................................................................................................§ 303.06

 Late-filed ................................ ............................................................................................................§ 306.04

Letter of Protest During Opposition Period..............................................................................................§ 215 

Misidentification of Party Granted Extension of Time to Oppose ................................................. § 303.05(c)

Multiple Class Application, Opposition Against......................................................................................§ 304

 Notice of Opposition (see also Complaint) ........................................................................................§ 309

 Notification of Proceeding (see also Notification of TTAB Proceeding)..................................§ 310

 Oral Hearing (see also Oral Hearing: On the Case)..........................................................................§ 802

 Partial Opposition .......................................................................................................................... § 309.03(d) 

Petition to Director From Action of TTAB During (see Petition to the Director) 

Petition to the Director From Action on Request for Extension of Time to Oppose, Effect of...........§ 211.03

 Prematurely Filed ...................... .........................................................................................................§ 306.03

Privy of Party Granted Extension of Time to Oppose, Opposition Filed by ................................. .§ 303.05(b)

Republication of Mark, Effect of on Time for Filing Opposition ............................................................§ 214 

Restoration of Jurisdiction to Examining Attorney During Opposition Period........................................§ 213 

 Scope of .....................................................................................................................................§ 309.03(a)(1) 

Statement of Use Filed During (Untimely) ..............................................................................................§ 219

Status of Application After Proceeding....................................................................................................§ 807

Supplemental Register Mark Not Subject to Opposition ...............................................................§§ 205; 301

Subject Matter Index - 804 
SUJECT MATTER INDEX 

Termination of ..........................................................................................................................§§ 120.03; 806

Time for Filing:

 Definition of Date of Publication of Mark .............................................................§§ 202.02; 306.02

 Effect on Time of:

 Abandonment of Application.......................................................................................§ 218 

 Inadvertent Issuance of Registration............................................................................§ 216 

 Letter of Protest ...........................................................................................................§ 215 

Petition to the Director From Action on Request for Extension of Time 

 to Oppose...........................................................................................................§ 211.03

 Republication of Mark.................................................................................................§ 214 

Request for Reconsideration of Action on 

 Request for Extension of Time to Oppose .........................................................§ 211.01

 Restoration of Jurisdiction to Examining Attorney During Opposition Period ...........§ 213 

Extension of Time to File (see Extension of Time to Oppose 

 and Extension of Time to Oppose, Request for) 

 General Information Concerning ..........................................................................................§ 306.01

 Late-filed Opposition ............................................................................................................§ 306.04

 Opposition Filed During Original Opposition Period Timely Even if Mark Republished.........§ 214

 Premature Opposition ...........................................................................................................§ 306.03

To Application Published Subject to Concurrent Use Proceeding .........................................................§ 1106

To Application Published Subject to Interference Proceeding...............................................................§ 1004

 Trial Schedule ......................................................................................................................................... § 701

Who is Defendant ...............................................................................................................................§ 310.01

 Who May Oppose:

After Extension of Time to Oppose:

 General Rule ...................................................................................................... § 303.05(a)

 Misidentification of Party Granted Extension ................................................... § 303.05(c)

 Party in Privity With Party Granted Extension................................................. .§ 303.05(b)

 Damage, Meaning of.............................................................................................................§ 303.03

 Described, Generally.............................................................................................................§ 303.01

 Joint Opposers ......................................................................................................................§ 303.06

 Person, Meaning of...............................................................................................................§ 303.02

 Standing ...................... .........................................................................................................§ 303.03

 Withdrawal of Application by Applicant During ......................................................................§§ 218; 602.01

Withdrawal of Proceeding, by Opposer 

 (see also Withdrawal of Proceeding by Plaintiff).....................................................§ 601 

Oral Hearing: 

On a Motion ........................................................................................................................................§ 502.03

On Ex Parte Appeal ...............................................................................................................................§ 1216

On the Case (Inter Partes):

 Audiotape Exhibit May be Used ...........................................................................................§ 802.07

Audiotaping May be Permitted ...................................................................................§§ 542; 802.06

 Before Whom Held .....................................................................................................§§ 540; 802.04

Corresponds to Oral Summation in Civil Action ..................................................................§ 802.01

 Date of ...................................................................................................................§§ 541.01; 802.03

 Describe ................... .............................................................................................§§ 802.05; 802.08 

 Length of ...............................................................................................................§§ 541.02; 802.05

 Location of ............... ............................................................................................................§ 802.03

 May Not be Used to Introduce Evidence .......................................................§§ 706; 802.01; 802.07

 Motion for Additional Time for Argument............................................................§§ 541.02; 802.05

 Motion for Augmented Panel Hearing........................................................................§§ 540; 802.04

Subject Matter Index - 805 
SUJECT MATTER INDEX 

Motion for Leave to Audiotape Hearing.....................................................................§§ 542; 802.06

 Motion to Change Oral Hearing Date ....................................................................§§ 541.01; 802.03

 Must be Requested................................................................................................................§ 802.02

 Nature of ................. ..............................................................................................§§ 802.05; 802.08

 Not Mandatory . .....................................................................................................§§ 802.01; 802.03

 Notice of ...............................................................................................................................§ 802.03

 Party That Appears at, Will be Heard ...................................................................................§ 802.03

Party That Elects Not to Appear Should Notify TTAB Thereof...........................................§ 802.03

 Purpose of ............... .............................................................................................................§ 802.01

 Request for ...........................................................................................................................§ 802.02

 Reschedule of, By Agreement of Parties ..............................................................................§ 802.03

Time for, Length of................................................................................................§§ 541.02; 802.05

 Time of ..................................................................................................................§§ 541.01; 802.03

 Videoconferences..................................................................................................................§ 802.03

 Videotape Exhibit May be Used ...........................................................................................§ 802.07

 Videotaping Not Permitted .........................................................................................§§ 542; 802.06

 Visual Aids, Including Audiotape and Videotape Exhibits, May be Used ...........................§ 802.07

 When Advisable....................................................................................................................§ 802.01

Written Text of Oral Argument May Not be Submitted .......................................................§ 802.07

Ordering Abstracts of Title to Applications and Registrations...................................................§ 121

Ordering Copies of Files or Parts Thereof.................................................................................§§ 121; 122

Ordering Copies of Registrations.............................................................................................................§ 121

Order to Show Cause: 

Why Default Judgment Should not be Entered Against Defendant for Failure to Answer............§§ 312; 508

Why Judgment Should not be Entered Against Defendant for Permitting its Registration

 to be Cancelled Under Sec. 8 or 9 or 71 for for failure to renew 

 During Case [Trademark Rule 2.134(b)].........................................................................§§ 535; 602.02(b)

Why Judgment Should not be Entered Against Plaintiff for Failure to File Main Brief 

 [Trademark Rule 2.128(a)(3)]................................................................................ §§ 536; 801.02(a) 

Other Authorized Representative of Party .....................................................................................§ 114.04

- P - 

Page Limit: 

For Brief on Case ................. ....................................................................................................§§ 537; 801.03

For Brief on Motion ............... ........................................................................................ §§ 502.02(b); 528.01

Motion to exceed limit .............................................................................................................................§ 537 

Panel Hearing, Augmented, Motion for............................................................................................§§ 540; 802.04

Papers (see Submissions) 

Subject Matter Index - 806 
SUJECT MATTER INDEX 

Partial Cancellation of Registration............................................................................... §§ 309.03(d); 313.01

Partial Opposition to Application .................................................................................................. § 309.03(d) 

Permissive Counterclaim (see also Counterclaim)...........................................................§§ 313.05; 313.06

Person, Meaning of ..................... .............................................................................................................§ 303.02

Petition to Cancel (see also Cancellation Proceeding and Complaint)...........................................§ 309

Petition to Disqualify Practitioner .......................................................................................§§ 115.03; 513.02

Petition to the Director: 

 Appealable Versus Petitionable Matter................................................................. §§ 901.02(a); 905; 1201.05

 Form for ...................................................................................................................................................§ 905

For Review of Action During Ex Parte Prosecution of Application .................................................§ 1201.05

For Review of Action of TTAB in TTAB Proceeding:

 Filing of Petition Does Not Stay Proceeding .............................................................................§ 905

 Standard of Review....................................................................................................................§ 906

 Time for Filing ..........................................................................................................................§ 905

 What is Petitionable ................................................................................ §§ 901.02(a); 905; 1201.05

For Review of Action on Request for Extension of Time to Oppose................................................§§ 211.03 

 In General ............................. ...................................................................................................................§ 905

Oral Hearing on ..................... ..................................................................................................................§ 905

 Petitionable Matter .................. ............................................................................. §§ 901.02(a); 905; 1201.05

Requirements for .................... .................................................................................................................§ 905 

Standard of Review on ............ ...........................................................................................................§ 906.02

To Declare an Interference: 

 Examination of Application Which is Subject of Petition ...........................................§§ 1002; 1003

 Form for .................. ......................................................................................................§§ 905; 1002

 Interference Declared Only Upon Petition to Director.................................................§§ 1001; 1002

Interference Not Declared Between Application and Registration ..............................§§ 1001; 1002

 Must Show Extraordinary Circumstances................................................................................§ 1002

 To Disqualify Practitioner....................................................................................................§§ 115.03; 513.02

To Reopen Application After Final Decision of TTAB in Ex Parte Appeal..........................................§ 1218

Pleadings: 

 Amendment of (see also Amendment of Pleadings and Motions, Types of)..............§§ 315; 507

 Answer, Generally (see also Answer)...................................................................................§§ 310.03; 311

 Complaint, Generally (see also Complaint)........................................................................................§ 309

Construed so as to do Substantial Justice ............................................................................................§ 309.03

 Counterclaim, Generally (see also Counterclaim) ............................................................................§ 313

 Defenses, Generally (see also Defenses).................................................................................... § 311.02(b) 

Exhibits to Not Evidence Unless Properly Introduced......................................................... §§ 317; 704.05(a)

Evidentiary Matters Should Not be Pleaded.................................................................... §§ 309.03; 311.02(b)

 Exhibits to, Not Evidence.........................................................................................................................§ 317

Fair Notice of Basis Required ......................................................................................... §§ 309.03; 311.02(b)

 Motions relating to, in general .................................................................................................................§ 316 

Subject Matter Index - 807 
SUJECT MATTER INDEX 

 Motion to Amend (see also Motions, Types of)...............................................................................§ 507

Motion to Strike Part of (see also Motions, Types of)......................................................................§ 506

Permissible Scope of Complaint ................................................................................................§ 309.03(a)(1) 

 Purpose of ...........................................................................................................................................§ 507.01

 Remedies Available to Plaintiff...................................................................................................... § 309.03(d) 

Rule 11, Fed. R. Civ. P. Applicable ..........................................................................................§§ 318; 527.02

 Statements in, Evidentiary Value of............................................................................................... § 704.06(a)

 Unpleaded Matters (see also Unpleaded Matters)...........................................................§§ 314; 528.07

Potential Opposition (see Extension of Time to Oppose) 

Power of Attorney: 

Elements of .........................................................................................................................................§ 114.03

 Revocation of ........................ .............................................................................................................§ 116.01

Power of TTAB to Schedule Proceedings........................................................................................§ 510.01

Pre-Trial Conferences ..............................................................................................................§§ 413; 502.06(b)

Printed Publications (see Evidence, For Summary Judgment Motion; Evidence, 

in Ex Parte Appeal; and Evidence, Introduction of, in Inter Partes Proceeding)

Privity, Defined ............................... ..............................................................................................................§ 206.02

Privy, Further Request for Extension of Time to Oppose, or 

Opposition, Filed by ........ ...................................................................................... §§ 206.02; 303.05(b)

Proceeding Files:

 Access to (see also Access to Files)...................................................................................................§ 120

Not to be Removed From Offices of TTAB..............................................................................§§ 120.01; 121

 Of Terminated Proceedings.................................................................................................................§ 120.03

Proceedings Before TTAB: 

Access to Files During (see also Access to Files)..............................................................................§ 120

 Combined Complaint May be Filed .........................................................................................................§ 305

Commencement of Inter Partes................................................................................................................§ 302

 Consolidated Complaint May be Filed.....................................................................................................§ 305

 General Description of Nature.............................................................................................................§ 102.03

Fee for Filing (see Fee and Fees) 

Joint Plaintiffs May File Opposition or Cancellation..........................................................................§ 303.06

Multiple Class Application or Registration, Proceeding Against.............................................................§ 304

Storage of Files After Termination of Proceeding ....................................................................§§ 120.03; 806

 Types of: 

 Concurrent Use Described (see also Concurrent Use Proceeding)................§§ 102.02; 301

 Ex Parte Appeal Described (see also Ex Parte Appeal)................................................§ 102.02

 Interference Described (see also Interference Proceeding).............................§§ 102.02; 301

 Opposition Described (see also Opposition Proceeding) .................................§§ 102.02; 301

Subject Matter Index - 808 
SUJECT MATTER INDEX 

 When Assignee May Take Action in........................................................................................................§ 124

Who May Bring Opposition or Cancellation:

After Extension of Time to Oppose: 

 General Rule ...................................................................................................... § 303.05(a)

 Misidentification of Party Granted Extension ................................................... § 303.05(c)

 Party in Privity With Party Granted Extension................................................. .§ 303.05(b)

 Damage, Meaning of.............................................................................................................§ 303.03

 Described, Generally.............................................................................................................§ 303.01

 Federal Trade Commission May File Cancellation...............................................................§ 303.04

 Joint Plaintiffs ......... .............................................................................................................§ 303.06

 Person, Meaning of...............................................................................................................§ 303.02

 Standing ................ ...............................................................................................................§ 303.03

Production of Documents (see Requests for Production of Documents)

Proof of Service, Requirement for......................................................................................................§ 113.02

Protective Agreements (see Protective Orders) 

Protective Orders (see also Discovery: Protective Orders)...........................................§§ 412; 526; 703.01(p)

Protest, Letter of ....................... .....................................................................................................................§ 215

Publication Date of Mark, Definition of..................................................................................................§ 202.02

Publications, Printed (see Evidence, For Summary Judgment Motion; Evidence, in 

Ex Parte Appeal; and Evidence, Introduction of, in Inter Partes Proceeding)

- Q - 

Quash Notice of Deposition, Motion to ..................................................................................................§ 521 

 - R - 

Reconsideration: 

Of Action on Request for Extension of Time to Oppose, Request for ......................................§§ 210; 211.01

Of Decision on Motion, Motion for .........................................................................................................§ 518

Of Examining Attorney's Final Action in Application, Request for:

 Action by Examining Attorney on ..........................................................................§§ 1202.02; 1204

 Does Not Stay Time for Filing Appeal ...................................................................§§ 1202.02; 1204

If Filed, Must be Filed Within 6 Months of Final Action .......................................§§ 1202.02; 1204

 May be Accompanied by Amendment and/or Additional Evidence........§§ 1202.02; 1204; 1207.04

Procedure When Appeal and Request for Reconsideration of Appealed 

Action Both Filed ................................................................. §§ 1202.02; 1203.02(a); 1204

Subject Matter Index - 809 
SUJECT MATTER INDEX 

Should Not be Combined With Applicant's Appeal Brief .......................................................§ 1204

Of Final Decision of TTAB: 

In Ex Parte Appeal, Request for..........................................................................................§ 1219.01

 In Inter Partes Case, Motion for.......................................................................................§§ 543; 804

Records, Official (see Evidence, For Summary Judgment 

 Motion and Evidence, Introduction of, in Inter Partes Proceeding) 

Refund of Fees: 

 General Rule .......................................................................................................................................§ 119.01

In Ex Parte Cases ................................................................................................................................§ 119.02

In Inter Partes Cases .............. .............................................................................................................§ 119.03

Refusal to Answer Deposition Question: 

 Discovery Deposition ............. ............................................. §§ 404.09; 404.03(a)(2); 404.08(c); 411.03; 523

 Testimony Deposition ............. ..................................................................... §§ 404.09; 703.01(h); 707.03(d)

Registration Files: 

 Access to (see also Access to Files)...................................................................................................§ 120

 Copies of Files or Parts Thereof.....................................................................................................§§ 121; 122

Not to be Removed From Offices of TTAB..............................................................................§§ 120.01; 121

 

Registration: 

Abandonment of During Inter Partes Proceeding................................................................................§ 602.02

Abstract of Title to ................. .................................................................................................................§ 121

Allegations, Specimens, etc., Not Evidence for Owner Unless Proved at Trial............. .§§ 704.03(a); 704.04

 Amendment of (see Amendment of Registration) 

 Cancellation of (see Cancellation Proceeding and Counterclaim) 

 Cancelled .............................. ...............................................................................................§ 704.03(b)(1)(A)

Cannot be Divided ...................................................................................................................................§ 516 

 Collateral Attack on, Not Permitted .....................................................................................§§ 311.02; 313.01

 Concurrent Use (see also Application: Concurrent Use; and Concurrent Use Proceeding): 

 Alteration of Restrictions on ....................................................................................................§ 1114

 Bases for Issuance of...........................................................................................................§ 1102.02

Cannot be Obtained by Including Geographical Restriction in Identification of Goods.....§ 1102.01

 How Obtained ............. ................................................................................................§§ 1101; 1102

 Registration Cannot be Geographically Restricted by Section 7(e) Amendment ...§§ 1101.02; 1114

Defendant's Registration Cancelled Under Sec. 8 or 9 During Case, Motion 

for Order to Show Cause Due to [Trademark Rule 2.134(b)]............................... .§§ 535; 602.02(b)

 Electronic Equivalent of Copy of......................................................................................... § 704.03(b)(1)(B)

Evidentiary Value of ............................................................................................................§ 704.03(b)(1)(A)

 Expired ................................. ...............................................................................................§ 704.03(b)(1)(A)

 Foreign .................................................................................................................................§ 704.03(b)(1)(A)

Geographic Restriction of, How Obtained, Altered, Removed .............................................§§ 1101.02; 1114

Inadvertently Issued ............... ...............................................................................................................§§ 216 

Introduction into Evidence 

 (see also Evidence, Introduction of, in Inter Partes Proceeding)..................§ 704.03

 Obtaining Status Information Concerning................................................................................................§ 123

Ordering Copies of ..................................................................................................................................§ 121

 Party's ...................................... ............................................................................................§ 704.03(b)(1)(A)

Subject Matter Index - 810 
SUJECT MATTER INDEX 

 Principal Register . ...............................................................................................................§ 704.03(b)(1)(A)

 Restriction of (see Restriction of Application or Registration) 

Section 7(b) Presumptions Accorded to ................................................. §§ 704.03(b)(1)(A); 704.03(b)(1)(B)

 State ....................................... ..............................................................................................§ 704.03(b)(1)(A)

Statements and Things in File Not Evidence for Owner Unless Proved at Trial............. §§ 704.03(a); 704.04

 Supplemental Register .........................................................................................................§ 704.03(b)(1)(A)

Surrender of During Inter Partes Proceeding ......................................................................................§ 602.02

 Third-Party ............................. ............................................................................................. § 704.03(b)(1)(B)

 When Assignee May Take Action in........................................................................................................§ 124

 Withdrawal of During Inter Partes Proceeding ...................................................................................§ 602.02

Voluntary Surrender of During Inter Partes Proceeding .....................................................................§ 602.02

Registrations Under Section 66(a): 

Amendment of Mark in, Not Permitted...............................................................................................§ 514.01

Motion to Divide .....................................................................................................................................§ 516 

Failure to file affidavit of use or renewal ....................................................................................... § 602.02(b) 

Recording Assignments of ................................................................... § 124; 512.01; 704.03(b)(1)(A); 1213

Voluntary cancellation of............................................................................................................... § 602.02(a) 

Remand to Examining Attorney: 

Of Application During Ex Parte Appeal to Federal Circuit....................................................................§ 1218

 Of Application During Ex Parte Appeal to TTAB: 

 After Granting of Letter of Protest.....................................................................§§ 1207.06; 1209.03

For Consideration of Amendment or Request for Reconsideration ..............§§ 1202.02; 1204; 1205

For Consideration of Amendment to Allege Use................................................................§ 1206.01

For New Refusal or Suspension: 

 At Request of Examining Attorney...................................§§ 1203.02(c); 1209.02; 1209.03

 Sua Sponte by TTAB............................................................................................§ 1209.01

 For Submission of Additional Evidence ............................................................§§ 1207.02; 1207.06 

 Supplemental Briefs After ..................................................................................................§ 1209.01

 TTAB Cannot Remand in Final Decision................................................................................§ 1217

 Upon Request by Applicant ................................................................................................§ 1209.04

Of Application Which is Subject of Inter Partes Case ...................................................................§§ 515; 805

Not applicable to 66(a) applications...............................................................................................§§ 515; 603

Removal of Files From Offices of TTAB Not Permitted.................................................................§ 121

Reopen Time, Motion to (see also Motions, Types of) .................................................... §§ 502.02(a); 509 

Reply to Answer Should Not be Filed................................................................................................§ 311.03

Representation of Party:

Adverse Parties Represented by Same Practitioner.............................................................................§ 114.08

 Attempted Representation by Ineligible Individual.............................................................................§ 114.06

By Attorney ............................ ............................................................................................................§ 114.03

By Foreign Attorney or Agent.............................................................................................................§ 114.05

By Non-lawyer ....................... ................................................................................§§ 114.04; 114.06; 117.08

By "Other Authorized Representative" ...............................................................................................§ 114.04

By Party Itself .....................................................................................................................................§ 114.01

Subject Matter Index - 811 
SUJECT MATTER INDEX 

Change of Address ..................... ........................................................................................................§ 117.07

 Correspondence With Representative (see Correspondence -- With Whom Held) 

 Domestic Representative ....................................................................................................................§ 114.07

Revocation of Authority .....................................................................................................................§ 116.01

Selection of Attorney ..........................................................................................................................§ 114.02

 Withdrawal From (see Withdrawal As Representative of Party) 

Republication of Mark: 

After Filing of Opposition, Effect of......................................................................................................§§ 214 

By Mistake ...............................................................................................................................................§ 214

During Time to Oppose, Effect of............................................................................................................§ 214 

Not available to 66(a) applications.................................................................................................§§ 214; 603

Request for Extension of Time to Oppose 

 (see Extension of Time to Oppose, Request for)

Request for Reconsideration (see Reconsideration) 

Requests for Admission: 

Admissions May be Used in Exam or Cross-Exam of Any Witness at Trial ......................................§ 704.10

Discovery Requests and Responses, When to be Filed ................................................§§ 409; 704.09; 704.10

Effect of Admission ............................................................................................................................§ 407.04

 Generally ............................... .............................................................................................................§ 407.02

Motion to Test Sufficiency of Response ...................................................................................§§ 411.02; 524

 Motion to Withdraw or Amend Admission...............................................................................§§ 407.04; 525

Objections to .................................................................................................................................. § 407.03(b)

Requirements for ........................ ........................................................................................................§ 407.02

 Responses to: 

 Failure to Timely Respond................................................................................ §§ 403.03; 407.03(a)

 Generally ...............................................................................................................§§ 407.03(b); 410

 Introduction in Evidence.......................................................................................................§ 704.10

May be Used in Exam or Cross-exam of Any Witness at Trial ............................................§ 704.10

 Motion Attacking Request Generally Inappropriate .............................................. §§ 407.03(b); 410

 Motion to Test Sufficiency of .....................................................................................§§ 411.02; 524

 Objections to ............ ....................................................................................................... § 407.03(b)

 Requirements for.............................................................................................................. § 407.03(b)

 Signature of .................... ................................................................................................. § 407.03(c)

 Time for ..................... ...................................................................................... §§ 403.03; 407.03(a)

When Made of Record by One Party, May be Referred to by Any Party .............................§ 704.10

 Scope of ....................................................................................................................................§§ 402; 407.02

 Time for: 

 Responses to ..................................................................................................... §§ 403.03; 407.03(a)

 Service of . .............................................................................................................§§ 403.02; 407.01

 Usefulness of ......................................................................................................................................§ 407.02

Who May be Served ............... ............................................................................................................§ 407.01

Who May Serve ..................................................................................................................................§ 407.01

Requests for Production of Documents: 

Discovery Requests and Responses, When to be Filed ................................................§§ 409; 704.09; 704.10

Documents Provided as Interrogatory Answer.....................................................................§§ 704.10; 704.11

Subject Matter Index - 812 
SUJECT MATTER INDEX 

In Camera Inspection of Documents...................................................................................................§ 412.04

 Introduction of Produced Documents.............................................................................. §§ 403.05(b); 704.11

Motion re Place or Manner of Production.................................................................................§§ 406.03; 522

Motion to Compel Production...................................................................................................§§ 411.01; 523

Objections to .................................................................................................................................. § 406.04(b)

Place of Production ................ ............................................................................................................§ 406.03

Requirements for ................................................................................................................................§ 406.03

 Responses to: 

 Documents Provided as Interrogatory Answer ......................................................§§ 704.10; 704.11

 Failure to Timely Respond................................................................................ §§ 403.03; 406.04(a)

 Generally ...............................................................................................................§§ 406.04(b); 410

 Introduction in Evidence.......................................................................................................§ 704.11

 Motion Attacking Requests Generally Inappropriate............................................. §§ 406.04(b); 410

 Objections to ........... ........................................................................................................ § 406.04(b)

 Requirements for.............................................................................................................. § 406.04(b)

 Time for ................. .......................................................................................... §§ 403.03; 406.04(a)

 Scope of ....................................................................................................................................§§ 402; 406.02

 Time for:

 Combined With Notice of Deposition...................................................................................§ 406.01

 Responses to ..................................................................................................... §§ 403.03; 406.04(a)

 Service of ................. .............................................................................................§§ 403.02; 406.01

Who May be Served ............... ............................................................................................................§ 406.01

Who May Serve ..................................................................................................................................§ 406.01

Restoration of Jurisdiction to Examining Attorney: 

During Time to Oppose ...........................................................................................................................§ 213 

 During Opposition ...................................................................................................................................§ 213 

Restriction of Application or Registration: 

At Request of Owner ..................................................................................................................... § 311.02(b)

By Counterclaim for Partial Cancellation ...........................................................................................§ 313.01

 By Opposition in Part ............. ....................................................................................................... § 309.03(d) 

By Petition for Partial Cancellation................................................................................................ § 309.03(d) 

Defense Seeking Restriction of Plaintiff's Registration Requires Counterclaim............................ § 311.02(b)

Geographic Restrictions Considered by TTAB Only in Concurrent Use Proceeding................§ 309.03(a)(1) 

Resumption of Proceedings Following Suspension: 

 After Withdrawal of Party's Attorney............................................................................................. § 510.03(b)

 For Bankruptcy Proceeding............................................................................................................ § 510.03(b)

For Consideration of Matter Pending Before Examining Attorney................................................ § 510.03(b) 

 For Settlement Negotiations.......................................................................................................... .§ 510.03(b)

Motion to Resume (see also Motions, Types of)..............................................................................§ 510

Pending Determination of Potentially Dispositive Motion ............................................................ § 510.03(b)

 Pending Outcome of Another Proceeding..................................................................................... .§ 510.02(b)

Return of Documents Filed in USPTO: 

In Ex Parte Cases ................................................................................................................................§ 119.02

In Inter Partes Cases ............... ............................................................................................................§ 119.03

Review of Decision of TTAB 

 (see Appeal From Decision of TTAB and Petition to the Director) 

Subject Matter Index - 813 
SUJECT MATTER INDEX 

Revocation of Authority to Represent Party ..................................................................................§ 116.01

(See also Withdrawal as Representative) 

Rule 11, Fed. R. Civ. P.:

 Applicable to Filings in TTAB Proceedings .............................................................................§§ 318; 527.02

Motion for Sanctions Under................................................................................................................§ 527.02

Rules Governing TTAB Proceedings: 

 Discovery .................................................................................................................................................§ 401

 Generally ...................................... ......................................................................................................§ 101.01

Obtaining Copies of ............................................................................................................................§ 101.01

- S - 

Sanctions: 

Attorneys' Fees, Damages, Expenses Not Awarded by TTAB.............................................§§ 502.05; 527.02

 Discovery:

 Estoppel Sanction............................................................................................................. § 527.01(e)

 For Failure to Comply With Order re Discovery ............................................................. § 527.01(a)

For Failure to Respond, or Respond Properly, to Admission Request............................. § 527.01(d)

 For Failure to Timely Respond ......................................................................... §§ 403.03; 527.01(c)

 If Party Says it Won't Respond to Discovery................................................................... § 527.01(b)

For Failure to Comply With Protective Order................................................................................ § 527.01(a)

Under Board's Inherent Authority .......................................................................................................§ 527.03

Under Rule 11, Fed. R. Civ. P.............................................................................................................§ 527.02

 Where Party Cannot be Located..........................................................................................................§ 527.03

 Where Party States it Will Not Proceed ..............................................................................................§ 527.03

Scope of Opposition and Petition to Cancel...........................................................................§ 309.03(a)(1)

Section 7(b) Presumptions: 

Accorded to Owner of Principal Register Registration .......................... §§ 704.03(b)(1)(A); 704.03(b)(1)(B) 

Applicable Only When Principal Register Registration Made of Record 

by its Owner or Cited by Trademark Examining Attorney .................................... § 704.03(b)(1)(B)

Not Accorded to Supplemental Register Registration..........................................................§ 704.03(b)(1)(A) 

Section 66(a) Applications 

(see Applications Under Section 66(a)) 

Section 66(a) Registrations 

(see Registrations Under Section 66(a)) 

Section 18, Remedy Under ............................................................................................................... § 309.03(d) 

Senior Party, Defined .....................................................................................................................§§ 1005; 1108

Subject Matter Index - 814 
SUJECT MATTER INDEX 

Service of Papers: 

 Additional Time After Certain Manners of.........................................................................................§ 113.05

Elements of Certificate of Service.......................................................................................................§ 113.03

 Generally .............................. ...................................................................................................................§ 113

 Manner of Service, Acceptable ...........................................................................................................§ 113.04

Requirement for Proof of Service.........................................................................................§§ 113.02; 203.03

Requirement for Service ...................................................................................................................§§ 113.01

Which Documents Must be Served .....................................................................................................§ 113.01

Settlement Agreement: 

 Breach of ............................... ........................................................................................................ § 605.03(d)

 Consent Orders Not Issued by TTAB .............................................................................................§ 605.03(f)

 Effect of Judgment Based Upon..................................................................................................... § 605.03(e) 

Effect on Counterclaim When Main Claim Disposed of..........................................................................§ 606

In Concurrent Use Proceeding, Providing for Concurrent Registration.................................................§ 1110

Nature of ........................................................................................................................................ § 605.03(a)

 Notification to TTAB of ................................................................................................................ § 605.03(a)

 Stipulation to Dispose of Case ....................................................................................................... § 605.03(a)

 TTAB Encourages Settlement.............................................................................................................§ 605.01

Will be Disregarded if Violates Act or Rules................................................................................. § 605.03(a)

With Amendment of Plaintiff's Pending Application..................................................................... § 605.03(c)

With Amendment of Subject Application or Registration.............................................................. § 605.03(b)

Settlement Negotiations: 

Resumption of Proceedings After .................................................................................................. § 510.03(b)

 Suspension of Proceedings for ........................................................................................ §§ 510.03(a); 605.02

Show Cause, Order to: 

Why Default Judgment Should not be Entered Against Defendant for Failure to Answer............§§ 312; 508

Why Judgment Should not be Entered Against Defendant for Permitting its Registration

to be Cancelled or to Expire...................................................................................§§ 535; 602.02(b)

Why Judgment Should not be Entered Against Plaintiff for Failure to File Main

 Brief [Trademark Rule 2.128(a)(3)]....................................................................... §§ 536; 801.02(a) 

Signature of Submissions: 

 Certifies Propriety .................... ..............................................................................§§ 106.02; 402.02; 408.01

 Depositions ................................................................................................................. §§ 703.01(j); 703.02(h)

 Either Original or Copy May be Filed.................................................................................................§ 106.02

 Electronic ............................................................................................................................................§ 106.02

 In General ................................ ...........................................................................................................§ 106.02

One Person May Not Sign for Another...............................................................................................§ 106.02

Requirements for ...................... ..........................................................................................................§ 106.02

 Responses to Interrogatories ......................................................................................................... .§ 405.04(c)

 Responses to Requests for Admission............................................................................................ § 407.03(c)

 Unsigned Submission....................... ...................................................................................................§ 106.02

Who Must Sign ...................................................................................................................................§ 106.02

Specimens, in Application or Registration Not Evidence for Owner 

Unless Proved at Trial........................................................................................... §§ 704.03(a); 704.04

Subject Matter Index - 815 
SUJECT MATTER INDEX 

Standards of Review of Board Decisions...............................................................................................§ 906 

Standing ............................................................................................................................§§ 303.03; 309.03; 313.03

Statement of Use: 

Filed During Ex Parte Appeal (Untimely).........................................................................................§ 1206.02

Filed During Extension of Time to Oppose (Untimely)...........................................................................§ 219

 Filed During Opposition (Untimely)........................................................................................................§ 219

Time for Filing ....................... .................................................................................................................§ 219

Statements and Things in Application or Registration File 

Not Evidence for Owner Unless Proved at Trial ........................................ §§ 704.03(a); 704.04

Statements in Briefs on Case, Evidentiary Value of............................................................... § 704.06(b)

Statements in Pleadings, Evidentiary Value of......................................................................... § 704.06(a)

Status Line, Trademark ..............................................................................................................................§ 123

Status of Proceedings, Information Concerning................................................................................§ 123 

Statute Governing TTAB Proceedings, Generally............................................................................§ 101.01

Stipulated Testimony .......................................................................................................................... § 703.01(b)

Stipulations: 

 Filing of ..............................................................................................................................................§ 501.02

Form of .................................. .............................................................................................................§ 501.03

 Generally ............................... .............................................................................................................§ 501.01

 Matters Which May be Stipulated.......................................................................................................§ 501.01

Re Evidence .............................................................................................................................................§ 705

Re Testimony ........................ ............................................... §§ 501.02; 704.07-704.11; 703.01; 703.02; 705

Signature of ................................ ........................................................................................................§ 501.03

To Dispose of Case ........................................................................................................................ § 605.03(a)

 To Extend:

 Discovery Period...................................................................................................................§ 403.04

 Form of .................................................................................................................................§ 501.03

 Should Normally be Filed in Multiple Form.........................................................................§ 501.03

 Should Specify New Date(s).................................................................................................§ 501.03

Stipulation to Extend Time to Respond to Discovery Request 

 Need Not be Filed ..............................................................................................§§ 403.04;501.02

Time to answer complaint.....................................................................................................§ 501.03

 Time to Respond to Discovery Request.................................................................§§ 403.04; 501.03

 To Reopen:

 Form of .................................................................................................................................§ 501.03

 Should be Filed in Multiple Form.........................................................................................§ 501.03

 Should Specify New Date(s).................................................................................................§ 501.03

Subject Matter Index - 816 
SUJECT MATTER INDEX 

 Time to Respond to Discovery Request.................................................................§§ 403.04; 501.03

 Whether Must be Filed .............. .........................................................................................................§ 501.02

Storage of Files and Exhibits After Termination of TTAB Proceeding ....................§§ 120.03; 806

 

Strike, Motion to (see also Motions, Types of): 

Brief on Case or Attached Exhibits.............................................................................................................§ 539

Brief On Motion .........................................................................................................................................§ 517 

Notice of Reliance ......................................................................................................................................§ 532

Part of Pleading .........................................................................................................................................§ 506

Trial Testimony Deposition .......................................................................................................................§ 533

Submissions: 

According Filing Date to .........................................................................................................................§ 109

Bound Form, When Appropriate.........................................................................................................§ 106.03 

Caption of Documents Filed With TTAB, Proper..............................................................................§ 106.01

 Confidential (see Confidential Materials) 

 Copying Documents From USPTO Files.......................................................................................§§ 121; 122

 Discovery, When to be Filed....................................................................................................................§ 409

 Either Original or Copy May be Filed..................................................................................§§ 106.02; 106.03

Fax Transmission to TTAB Generally Improper ..........................................§§ 107; 110.01; 110.07; 1202.02 

Filing, Acceptable Methods of.................................................................................................................§ 107

Filing Date of, How Accorded .................................................................................................................§ 109

Filing Receipts for ................. ..................................................................................................................§ 108 

 Form of ........... ................................................................................................................................§ 106.03

 Generally ................................. ................................................................................................................§ 106

Not to be Removed From Offices of TTAB..............................................................................§§ 120.01; 121 

On C-D Rom...... ................................................................................................................................§ 502.02

Ordering Copies of ................. .......................................................................................................§§ 121; 122

 Original Need Not be Filed ..................................................................................................§§ 106.02; 106.03

Preferred Size of .................................................................................................................................§ 106.03

 Return of ..............................................................................................................................§§ 119.02; 119.03

 Service of (see Service of Papers) 

Signature of ........................... .............................................................................................................§ 106.02

 Unsigned .............................................................................................................................................§ 106.02

 Suggested Format for Various TTAB .................................................................................................§ 106.03

Subpoena: 

 Violation of ................................................................................................................................§ 404.03(a)(2)

 When Necessary ...................... ......................................................................§§ 404.09; 404.03(a)(2); 411.03

Substitution of Party .................... ................................................................................................................§ 512

Sufficient Evidence, Motion to Dismiss for Failure 

of Plaintiff to Offer (see also Motions, Types of)....................................................................§ 534

Sufficiency of Evidence, Available Motions re.................................................................... §§ 502.01; 534

Summary Judgment, Motion for (see also Motions, Types of)........................................................§ 528

Subject Matter Index - 817 
SUJECT MATTER INDEX 

Supplemental Register Mark Not Subject to Opposition.....................................................§§ 205; 301

Surrender of Subject Registration During Inter Partes Proceeding.....................................§ 602.02

Suspension:

Of Ex Parte Appeal Proceeding:

 At Request of Applicant...........................................................................................................§ 1213

For Remand to Examining Attorney: 

 For New Refusal.................................................................................. §§ 1203.02(b); 1209

 For Submission of More Evidence ......................................................§§ 1207.02; 1207.06

Pending Consideration by Examining Attorney of:

 Amendment to Allege Use....................................................................................§ 1206.01

 Amendment to Application.......................................................................§§ 1202.02; 1205

 Request for Reconsideration of Final Action........................ §§ 1202.02; 1203.02(a); 1204 

 Sua Sponte by Board, Pending Determination of Whether Cited

 Registration will be Cancelled Under Section 8 or Will Expire..........................................§ 1213

Of Inter Partes Proceeding:

 By Stipulation of Parties.................................................................................................. § 510.03(a) 

 Due to Withdrawal of Party's Attorney............................................................................ § 510.03(a)

 For Bankruptcy Proceeding............................................................................................. .§ 510.03(a)

For Good Cause ............. ................................................................................................. § 510.03(a)

 For Settlement Negotiations............................................................................................. § 510.03(a)

 Motion to Suspend (see also Motions, Types of)...............................................................§ 510

 Pending Decision on Motion to Compel.......................................................................... § 510.03(a)

 Pending Testimony Deposition On Written Questions................................................... .§ 510.03(a)

Pending Disposition of Potentially Dispositive Motion.................................... §§ 510.03(a); 528.03

 Pending Outcome of Another Proceeding........................................................................ § 510.02(a)

 Potentially Dispositive Motion Also Pending.................................................................. § 510.02(a)

 TTAB has Inherent Power to Suspend..................................................................................§ 510.01

Of the Running of an Extension of Time to Oppose, Not Permitted...................................................§ 209.01

- T - 

Taking Deposition by Telephone ..................................................................................... §§ 404.06; 703.01(h)

Telephone Conferences ............................................................................................................ §§ 413; 502.06(a)

Telephone, Taking or Attending Deposition by......................................................... §§ 404.06; 703.01(h)

Termination of Proceeding ......... ................................................................................................§§ 120.03; 806

Testimony Depositions: 

Depositions, Oral:

 Attending by Telephone...................................................................................................§ 703.01(h)

 Automatically of Record.................................................................................... §§ 404.09; 703.01(l)

 Before Whom Taken........................................................................................................ § 703.01(g)

Subject Matter Index - 818 
SUJECT MATTER INDEX 

 Certification of................................................................................................................. § 703.01(k)

 Compared to Discovery Depositions.....................................................................................§ 404.09

 Confidential Material in ................................................................................................... § 703.01(p)

 Correction of Errors in Transcript................................................................................... .§ 703.01(n)

 Described, Generally......................................................................................... §§ 404.09; 703.01(a)

Errors in Transcript, Correction of...................................................................................§ 703.01(n)

 Examination of Witnesses................................................................................................ § 703.01(h)

 Exhibits to ............... ..................................................................................... §§ 703.01(h); 703.01(i)

Extension of Time for (see also Extension of Time) .........................................................§ 701

 Failure to File ..................... .............................................................................................. § 703.01(l)

 Failure to Serve Upon Opponent.....................................................................................§ 703.01(m)

 Filing of .......................... ............................................................................. §§ 703.01(k); 703.01(l)

 Form of ......................................................................................................... §§ 703.01(h); 703.01(i)

 From Another Proceeding...........................................................................................§§ 530; 704.13

Motion That Deposition Upon Written Questions be Taken Orally .... §§ 531; 703.01(b); 703.02(a)

 Motion to Quash Notice of Deposition ......................................................................................§ 521

 Motion to Strike (see also Motions, Types of)............................................... §§ 533; 707.03(c)

Motion to Take Foreign Deposition Orally......................................... .§§ 520; 703.01(b); 703.02(a)

 Must be Filed ............ ........................................................................................ §§ 404.09; 703.01(l)

 Not Read Prior to Final Decision..........................................................................................§ 502.01

 Notice of Filing ........ ....................................................................................................... § 703.01(k)

 Notice of Taking .............................................................................................................. § 703.01(e)

 Objections to Depositions (see Objections: To Testimony Deposition, Oral)

 Offering of Exhibits......................................................................................................... § 703.01(h)

 Place of ........................................................................................................................... .§ 703.01(d)

 Protective Order for (see also Discovery: Protective Orders).................................... .§ 703.01(p)

 Refusal to Answer Questions.......................................................... §§ 404.09; 703.01(h); 707.03(d)

 Refusal to File Deposition................................................................................................. § 703.01(l)

 Securing Attendance of Witness: 

 Adverse...............................................................................................................§ 703.01(f)

 By Subpoena...........................................................................§§ 703.01(f)(1); 703.01(f)(2)

 Generally ....................................................................................................... § 703.01(f)(1)

 Nonparty .............................................................................................................§ 703.01(f)

 Unwilling, in Foreign Country...................................................................... .§ 703.01(f)(3)

 Unwilling, in United States............................................................................ § 703.01(f)(2)

 Service of ................ .......................................................................................................§ 703.01(m)

 Signature of ......................................................................................................................§ 703.01(j)

 Stipulations re ............ ..........................................................§§ 704.07-704.11; 703.01; 703.02; 705

 Taken Outside of TTAB's Presence .......................................................... §§ 502.01; 702; 703.01(a)

 Taking by Telephone ....................................................................................................... § 703.01(h)

 Taking of Corresponds to Trial..................................................................................................§ 701

 Telephone, Taking or Attending by ................................................................................. § 703.01(h)

 Testimony Not Read Prior to Final Decision ...................... §§ 502.01; 534.04; 707.02(c); 707.03(c)

Time for Taking .......... ............................................................§§ 404.09; 701; 703.01(c); 703.01(d)

 Trade Secret Material in................................................................................................... § 703.01(p)

 Videotape Depositions Not Entertained........................................................................... § 703.01(h)

 Whom Taken Before....................................................................................................... .§ 703.01(g)

Depositions, Upon Written Questions:

 Advantages of ........... .....................................................................................................§ 703.02(m)

 Attendance at by Adverse Party....................................................................................... § 703.02(d)

 Automatically of Record.................................................................................... §§ 404.09; 703.01(l)

 Availability of ......... .................................................................... §§ 520; 531; 703.01(b); 703.02(a)

Subject Matter Index - 819 
SUJECT MATTER INDEX 

 Before Whom Taken..................................................................................... §§ 703.01(g); 703.02(f)

 Certification of ......... ................................................................................... §§ 703.01(k); 703.02(h)

 Compared to Discovery Depositions.....................................................................................§ 404.09

 Confidential Material in ................................................................................ §§ 703.01(p); 703.02(l)

 Correction of Errors in Transcript................................................................. §§ 703.01(n); 703.02(i)

 Described, Generally.....................................................§§ 404.09; 703.01(a); 703.02(g); 703.02(m)

 Disadvantages of.............................................................................................................§ 703.02(m)

Errors in Transcript, Correction of................................................................ §§ 703.01(n); 703.02(i)

 Examination of Witnesses................................................................................................ § 703.02(g)

 Exhibits to ............... ..................................................................................... §§ 703.01(h); 703.01(i)

Extension of Time for (see also Extension of Time) ....................§§ 701; 703.02(c); 703.02(g)

 Filing of .................. ..................................................................... §§ 703.01(l); 703.02(i); 703.02(j)

 Form of ....................................................................................... §§ 703.01(h); 703.01(i); 703.02(h)

 From Another Proceeding...........................................................................................§§ 530; 704.13

 May be Attended by Adverse Party ................................................................................. § 703.02(d)

Motion That Deposition Upon Written Questions be Taken Orally .... §§ 531; 703.01(b); 703.02(a)

 Motion to Quash Notice of Deposition ......................................................................................§ 521

 Motion to Strike (see also Motions, Types of)............................................... §§ 533; 707.03(c)

Motion to Take Foreign Deposition Orally......................................... .§§ 520; 703.01(b); 703.02(a)

 Must be Filed ............. ..................................................... §§ 404.09; 703.01(l); 703.02(i); 703.02(j)

 Not Read Prior to Final Decision..........................................................................................§ 502.01

 Notice of Filing ........ ....................................................................................................... § 703.01(k)

 Notice of Taking .............................................................................................................. § 703.02(e)

 Objections to Depositions 

 (see Objections: To Testimony Deposition, Upon Written Questions)

 Offering of Exhibits......................................................................................................... § 703.01(h)

 Place of ........................................................................................................................... .§ 703.02(d)

 Protective Order for (see also Discovery: Protective Orders).................. §§ 703.01(p); 703.02(l)

 Questions, Service of ....................................................................................................... § 703.02(g)

 Refusal to Answer Questions.......................................................... §§ 404.09; 703.01(h); 707.03(d)

 Refusal to File Deposition................................................................................................. § 703.01(l)

 Securing Attendance of Witness: 

 Adverse............................................................................................§§ 703.01(f); 703.02(f)

 By Subpoena..........................................................§§ 703.01(f)(1); 703.01(f)(2); 703.02(f)

 In General ................................................................................... §§ 703.01(f)(1); 703.02(f)

 Nonparty .......................................................................................... §§ 703.01(f); 703.02(f)

 Unwilling, in Foreign Country....................................... §§ 404.03; 703.01(f)(3); 703.02(f)

 Unwilling, in United States............................................ §§ 404.03; 703.01(f)(2); 703.02(f)

 Service of Questions........................................................................................................ § 703.02(g)

 Service of Transcript................................................................................... .§§ 703.01(m); 703.02(i)

 Signature of .................................................................................................. §§ 703.01(j); 703.02(h)

 Stipulations re .......... ............................................................§§ 704.07-704.11; 703.01; 703.02; 705

 Suspension for ............................................................................ §§ 510.03(a); 703.02(c); 703.02(g)

 Taken Outside of TTAB's Presence .......................................................... §§ 502.01; 702; 703.01(a)

 Taking of Corresponds to Trial..................................................................................................§ 701

 Testimony Not Read Prior to Final Decision ...................... §§ 502.01; 534.04; 707.02(c); 707.03(c)

Time for Taking ......... .............................................................................. §§ 404.09; 701; 703.02(c)

 Trade Secret Material in................................................................................ §§ 703.01(p); 703.02(l)

 Utility of .........................................................................................................................§ 703.02(m)

 When Available ........................................................................... §§ 520; 531; 703.01(b); 703.02(a)

 Whom Taken Before.................................................................................... §§ 703.01(g); 703.02(b)

Subject Matter Index - 820 
SUJECT MATTER INDEX 

Testimony From Another Proceeding.....................................................................................§§ 530; 704.13

Testimony Not Read Prior to Final Decision................................ §§ 502.01; 534.04; 707.02(c); 707.03(c)

Testimony Periods ...................................................................................................................§§ 701; 1007; 1109

Testimony, Stipulations re ........ ..................................................................§§ 703.01(b); 703.01(d); 703.02(g)

Time for Argument at Oral Hearing, Motion for Additional.............................................§§ 541.02; 802.05

Time for Oral Hearing, Motion to Change...............................................................................§§ 541.01; 802.03

Times for Taking Action .............................................................................................................................§ 112 

Trademark Act of 1946, Generally .........................................................................................................§ 101.01

Trademark Rule 2.119(c) 5-Day Addition:

 Applicable After Certain Manners of Service .....................................................................................§ 113.05

Not Applicable to Answer to Complaint ........................................................................................ § 310.03(b)

Trademark Status Line ...............................................................................................................................§ 123 

Trademark Trial and Appeal Board: 

 Address of ................................................................................................................................................§ 103

Authority of Members, Interlocutory Attorneys to Act................................................§§ 102.03; 502.04; 518

 Composition of ....................... ............................................................................................................§ 102.03

 Contact With TTAB Personnel ................................................................................................................§ 105 

 Description of .......................... .................................................................................................§§ 102.01; 702

Jurisdiction of, Generally ............ .......................................................................................................§ 102.01

Power, Inherent, to Schedule Proceedings ..........................................................................................§ 510.01

Types of Proceedings Before ....................................................................................................§§ 102.02; 301 

Transfer of Interest in Mark in Inter Partes Case ............................................................................§ 512

Trial in TTAB Inter Partes Proceeding, In General 

 (see also Evidence, Introduction of, in Inter Partes Proceeding): 

 Commencement of ...................................................................................................................................§ 701

 Described, Generally .................. .............................................................................................................§ 702

 Manner of .............................. ..................................................................................................................§ 702

Testimony Periods ...................................................................................................................................§ 701

Time of ................................. ...................................................................................................................§ 701

Trial Order ............................................................................................................§§ 310.01; 701; 1007; 1109

Trial Order ....................................................................................................................§§ 310.01; 701; 1007; 1109

Trial Period, Commencement of ......................................................................................................................§ 701

Subject Matter Index - 821 
SUJECT MATTER INDEX 

Trial Schedule .................................. .........................................................................................§§ 701; 1007; 1109

TTABVUE...............................................................................................................................................§ 120.01

- U - 

U. S. Patents Quarterly (USPQ), TTAB Decisions in .........................................................................§ 101.03

Unpleaded Matters: 

Amendment of Complaint...................................................................................................§§ 314; 528.07(a) 

Cannot be Basis for Summary Judgment .............................................................................§§ 314; 528.07(a)

Cannot be Defense Against Summary Judgment .................................................................. §§ 314 528.07(b)

 Cannot be Relied Upon ............. ..............................................................................................................§ 314

Remand to Examining Attorney From Inter Partes Case for Consideration of ..............................§§ 515; 805

Unpublished Decisions of the TTAB (see Decisions of the TTAB)

Unsigned Submissions, Treatment of..................................................................................§§ 106.02; 203.03 

- V - 

Videotape Depositions Not Entertained....................................................................................... § 703.01(h)

Voluntary Cancellation ...................................................................................................................... § 602.02(a) 

Voluntary Surrender of Subject Registration During Inter Partes Proceeding:

Express Surrender .......................................................................................................................... § 602.02(a)

For Allowing Registration to be Cancelled Under Sec. 8 or 9 ............................................ .§§ 535; 602.02(b)

Single Class in Multi-Class Registration.................................................................... §§ 602.02(a); 605.03(b) 

- W - 

Withdrawal as Representative of Party: 

By Applicant's Representative, During Extension of Time to Oppose................................................§ 212.01

 Generally ............................... .............................................................................................................§ 116.02

 Mandatory .............................. ............................................................................................................§ 116.03

Motion for ............................................................................................................................§§ 116.05; 513.01

 Permissive ............................. .............................................................................................................§ 116.04

Suspension (and Then Resumption) of Proceedings as Result of .............................. §§ 510.03(a); 510.03(b)

Withdrawal of Application (see Abandonment of Application) 

Subject Matter Index - 822 
SUJECT MATTER INDEX 

Withdrawal of Proceeding by Plaintiff: 

Effect of Judgment Entered for Withdrawal After Answer..................................................§§ 601.01; 601.02

 Effect on Counterclaim ............................................................................................................................§ 606

 Of Cancellation by Petitioner..............................................................................................................§ 601.02

 Of Opposition by Opposer ..................................................................................................................§ 601.01

When Motion for Judgment is Pending...............................................................................................§ 601.03

Withdrawal of Subject Registration During Inter Partes Proceeding .................................§ 602.02

Withdrawal or Amendment of Admission.............................................................................§§ 407.04; 525

Witness Refuses to Answer Deposition Question: 

 Discovery Deposition ............ .............................................. §§ 404.09; 404.03(a)(2); 404.08(c); 411.03; 523

 Testimony Deposition .......... ........................................................................ §§ 404.09; 703.01(h); 707.03(d) 

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Subject Matter Index - 823