TBMP 309.02(a) Format for Complaint

(June 2014)


Using ESTTA [found at http://estta.uspto.gov/], a person can complete and submit a notice of opposition or petition for cancellation over the Internet, making an official filing online. ESTTA gives step-by-step instructions for properly completing a filing. Alternatively, the notice of opposition or petition to cancel ESTTA form (docket) “cover sheet” may be created using ESTTA and the completed form may then be printed out for mailing to the Board with the notice of opposition or petition to cancel. The Board views the ESTTA filing form and the attached pleading as comprising a single document or paper being filed with the Board. [Note 1.] Parties are encouraged to use ESTTA to commence the proceeding and for general filing purposes. Upon filing, the filer will receive an e-mail acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information. After the proceeding is instituted, whenever a party submits a filing via ESTTA, the ESTTA cover sheet is automatically “pre-populated” with the party’s name as that party is listed in TTABVUE (the Board's database of electronic proceeding files). The electronic files of the Board are accessible on the Internet via TTABVUE, although confidential filings will not be made available for public viewing. See TBMP § 108, TBMP § 120.02 and TBMP § 121.


An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"). Such essential information includes: 1) the specific goods and/or services in the application which are being opposed; 2) the ground(s) for the opposition; and 3) the application or registration number(s) for any mark owned by opposer and cited as a basis for the opposition. [Note 2.] Only the information provided on the ESTTA form is sent to WIPO. [Note 3.]


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 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”) and the wording “Opposition No. ______” or “Cancellation No. ______.”


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 the name and correspondence address of the current owner of record of the registration. [Note 4.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. [Note 5.] The TSDR display of information includes a tab for “status,” a tab for “documents” and a link to “View Assignments.” The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2).


Substance of complaint: The complaint must also include a pleading of the substance (i.e., standing and grounds) of the complaint. See TBMP § 309.03.


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 individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).


NOTES: 1. See PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board”). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-62 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (“[T]he ESTTA generated filing form … is considered part of the plaintiff's initial pleading”).


2. See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011).


3. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).


4. See 37 CFR § 2.112(a) and 37 CFR § 2.112(b). 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).


5. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).



TBMP 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, or an extension of time to oppose, the application) to which it relates. [Note 1.]


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 should be filed with the Board, not with the Trademark Examining Operation, and should bear at the top of its first page both the registration number, and the inter partes proceeding number and title. [Note 2.]


NOTES:

1. 37 CFR § 2.194.

2. 37 CFR § 2.194. Motion for Summary Judgment,” or “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 the first page both the application serial number, and the inter partes proceeding number and title. Similarly, requests under Trademark Act § 7, 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.




Suggested Format for Notice of Opposition

[www.uspto.gov/web/offices/dcom/ttab/oppositionformat.pdf]


(This is a suggested format for preparing a Notice of Opposition.  This document is not meant to be used as a form to be filled in and returned to the Board.  Rather, it is a suggested format, which shows how the Notice of Opposition should be set up.

Opposers may follow this format in preparing their own Notice of Opposition but need not copy those portions of the suggested format which are not relevant.)


IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No.............................

For the mark...............................................................................

Published in the Official Gazette on....…..(Date)..............................

(Name of opposer)

              v.

(Name of applicant)


NOTICE OF OPPOSITION

       State opposer's name, address, and entity information as follows:

(1)

                            (Name of individual as opposer, and business trade name, if any;

                    ______________________Business address)_____________________


OR                            (Name of partnership as opposer; Names of partners;

                    ________________Business address of partnership)__________________


OR                       (Name of corporation as opposer; State or country of incorporation;

                    _______________Business address of corporation)___________________


The above-identified opposer believes that it/he/she will be damaged

by registration of the mark shown in the above-identified application, and

hereby opposes the same.(2)


The grounds for opposition are as follows:

[Please set forth, in separately numbered paragraphs,

the allegations of opposer’s standing and grounds for opposition.](3)




By ________(Signature)(4)________ Date____________________

(Identification of person signing)(5)


FOOTNOTES

(1) If opposer is an individual, state the opposer's name, business trade name, if any, and

business address.  If opposer is a partnership, state the name of the partnership, the names

of the partners, and the business address of the partnership.  If opposer is a corporation,

state the name of the corporation, the state (or country, if opposer is a foreign

corporation) of incorporation, and the business address of the corporation.  If opposer is

an association or other similar type of juristic entity, state the information required for a

corporation, changing the term "corporation" throughout to an appropriate designation.

(2) The required fee must be submitted for each party joined as opposer for each class

opposed, and if fewer than the total number of classes in the application are opposed, the

classes opposed should be specified.

(3) Set forth a short and plain statement here showing why the opposer believes it/he/she

would be damaged by the registration of the opposed mark, and state the grounds for

opposing.  Each numbered paragraph should be limited, as far as practicable, to a

statement of a single set of circumstances.  See Rules 8(a) and 10(b) of the Federal Rules

of Civil Procedure.

(4) The opposition need not be verified, and may be signed by the opposer or by the

opposer's attorney or other authorized representative.  If an opposer signing for itself is a

partnership, the signature must be made by a partner; if an opposer signing for itself is a

corporation or similar juristic entity, the signature must be made by an officer of the

corporation or other juristic entity who has authority to sign for the entity and whose title

is given.

(5) State the capacity in which the signing individual signs, e.g., attorney for opposer,

opposer (if opposer is an individual), partner of opposer (if opposer is a partnership),

officer of opposer identified by title (if opposer is a corporation), etc.


REPRESENTATION INFORMATION

  If the opposer is not domiciled in the United States, and is not represented by an

attorney or other authorized representative located in the United States, a domestic

representative must be designated.

  If the opposer wishes to furnish a power of attorney, it may do so, but an attorney

at law is not required to furnish a power.

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