trademark trial and appeal board manual of procedure (tbmp)

1157 Pages·2014·5.32 MB·English

TRADEMARK TRIAL
AND
APPEAL BOARD
MANUAL OF
PROCEDURE
(TBMP)

June 2014

United States Patent and Trademark Office
United States Patent and Trademark Office
PREFACE TO THE JUNE 2014 REVISION

This June 2014 revision incorporates amendments to the Trademark Act, the
Trademark Rules of Practice, and the Federal Rules, where applicable, and further
updates references to Board, Federal Circuit and other federal court cases. Content
additions and revisions reflect the evolution and refinement of Board practice as
experienced and articulated between March 1, 2013 and February 28, 2014.

The title of the manual is abbreviated as “TBMP.” A citation to a section of the
manual may be written as “TBMP § _____ (2014).”

As with previous editions, this edition is available online at the Board home page of
the USPTO web site in a searchable, printable format. A link to archived editions of
the TBMP is also available at the Board’s home page.

Cheryl Butler
Senior Attorney and TBMP Editor
Trademark Trial and Appeal Board
INTRODUCTION

The primary purpose of this manual is to provide stakeholders with basic
information generally useful for litigating trial 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 and incorporates amendments to the
Trademark Rules of Practice, Trademark Act and Federal Rules, and updates in
case law, where applicable, as of February 28, 2014. The guidelines set forth in the
manual do not have the force and effect of law. They have been developed as a
matter of internal office management and are not intended to create any right or
benefit, substantive or procedural, enforceable by any party against the office.

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.

The Board welcomes suggestions for improving the content of the manual.
Suggestions and comments should be addressed as follows:

[email protected], or

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
ATTENTION: TBMP editor
CHAPTER 100
GENERAL INFORMATION

101 APPLICABLE AUTHORITY

101.01 STATUTE AND RULES OF PRACTICE
101.02 FEDERAL RULES
101.03 DECISIONAL LAW
101.04 DIRECTOR’S ORDERS AND NOTICES
101.05 TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE

102 NATURE OF BOARD PROCEEDINGS

102.01 JURISDICTION OF BOARD
102.02 TYPES OF BOARD PROCEEDINGS
102.03 GENERAL DESCRIPTION OF BOARD PROCEEDINGS

103 LOCATION AND ADDRESS OF BOARD

104 BUSINESS TO BE CONDUCTED IN WRITING

105 CONTACT WITH BOARD PERSONNEL

106 IDENTIFICATION, SIGNATURE, AND FORM OF SUBMISSIONS

106.01 IDENTIFICATION OF SUBMISSIONS
106.02 SIGNATURE OF SUBMISSIONS
106.03 FORM OF SUBMISSIONS

107 HOW AND WHERE TO FILE PAPERS AND FEES

108 FILING RECEIPTS

109 FILING DATE

110 CERTIFICATE OF MAILING PROCEDURE AND ELECTRONIC FILING USING
ESTTA

110.01 CERTIFICATE OF MAILING – IN GENERAL
110.02 REQUIREMENTS FOR CERTIFICATE
110.03 SUGGESTED FORMAT
110.04 LOCATION OF CERTIFICATE
110.05 LOSS OF CERTIFICATE OF MAILING
110.06 NO RECEIPT OF CORRESPONDENCE BEARING CERTIFICATE
110.07 EXCLUDED FILINGS
110.08 A CERTIFICATE OF MAILING OR TRANSMISSION IS NOT ...
110.09 ELECTRONIC FILING USING ESTTA
110.09(a) Plan Ahead
110.09(b) ESTTA is Mandatory for Some Filings
110.09(c) Attachments to ESTTA Filings
110.09(c)(1) In General
110.09(c)(2) Form of ESTTA Attachments
110.09(c)(3) Size Limitations
110.09(d) Service of ESTTA Filings
110.09(e) Questions About ESTTA Filing

111 “EXPRESS MAIL” PROCEDURE

111.01 IN GENERAL
111.02 REQUIREMENTS FOR “EXPRESS MAIL”
111.03 QUESTIONABLE DATE OF MAILING

112 TIMES FOR TAKING ACTION

113 SERVICE OF PAPERS

113.01 REQUIREMENT FOR SERVICE OF PAPERS
113.02 REQUIREMENT FOR PROOF OF SERVICE
113.03 ELEMENTS OF CERTIFICATE OF SERVICE
113.04 MANNER OF SERVICE
113.05 ADDITIONAL TIME FOR TAKING ACTION AFTER SERVICE BY MAIL
113.06 A CERTIFICATE OF SERVICE IS NOT ...

114 REPRESENTATION OF A PARTY

114.01 PARTY MAY REPRESENT ITSELF
114.02 SELECTION OF ATTORNEY
114.03 REPRESENTATION BY ATTORNEY
114.04 REPRESENTATION BY NON-LAWYER (I.E., “OTHER AUTHORIZED
REPRESENTATIVE”)
114.05 REPRESENTATION BY FOREIGN ATTORNEY OR AGENT
114.06 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS
114.07 DESIGNATION OF DOMESTIC REPRESENTATIVE
114.08 ADVERSE PARTIES REPRESENTED BY SAME PRACTITIONER

115 CONDUCT OF PRACTITIONER

115.01 APPLICABLE RULES
115.02 DISCIPLINARY PROCEEDINGS
115.03 PETITIONS TO DISQUALIFY
116 TERMINATION OF REPRESENTATION

116.01 REVOCATION OF AUTHORITY
116.02 WITHDRAWAL AS REPRESENTATIVE--IN GENERAL
116.03 WHEN WITHDRAWAL IS MANDATORY
116.04 WHEN WITHDRAWAL IS PERMISSIVE
116.05 REQUEST TO WITHDRAW

117 CORRESPONDENCE - WITH WHOM HELD

117.01 IN GENERAL
117.02 WHEN THERE IS MORE THAN ONE ATTORNEY OR OTHER AUTHORIZED
REPRESENTATIVE
117.03 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE IN
APPLICATION OR REGISTRATION WHEN INTER PARTES PROCEEDING
COMMENCES
117.04 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE OF
POTENTIAL OPPOSER AFTER OPPOSITION IS FILED
117.05 CORRESPONDENCE AFTER REVOCATION OR WITHDRAWAL
117.06 CORRESPONDENCE WITH FOREIGN PARTY
117.07 CHANGE OF ADDRESS
117.08 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS

118 PAYMENT OF FEES

118.01 LISTS OF FEES AND CHARGES
118.02 FEES PAYABLE IN ADVANCE
118.03 METHOD OF PAYMENT--IN GENERAL
118.04 METHOD OF PAYMENT--DEPOSIT ACCOUNTS

119 PAPERS AND FEES GENERALLY NOT RETURNABLE

119.01 FEE REFUNDS--GENERAL RULE
119.02 PAPERS AND FEES--EX PARTE CASES
119.03 PAPERS AND FEES--INTER PARTES CASES

120 ACCESS TO FILES

120.01 NON-CONFIDENTIAL FILES
120.02 CONFIDENTIAL MATERIALS
120.03 FILES OF TERMINATED PROCEEDINGS

121 COPYING OF FILES

122 CERTIFICATION
122.01 COURT REQUIREMENTS
122.02 CERTIFIED COPIES

123 STATUS INFORMATION FOR APPLICATIONS, REGISTRATIONS AND BOARD
PROCEEDINGS

124 ACTION BY ASSIGNEE

CHAPTER 200
EXTENSIONS OF TIME TO OPPOSE

201 IN GENERAL

202 TIME FOR FILING REQUEST

202.01 IN GENERAL
202.02 DATE OF PUBLICATION OF MARK
202.03 PREMATURE REQUEST
202.04 LATE REQUEST

203 FORM OF REQUEST

203.01 GENERAL CONSIDERATIONS
203.01(a) Paper Or Electronic Filings
203.01(b) Note On Electronic Filing With ESTTA
203.02 IDENTIFYING INFORMATION
203.02(a) In General
203.02(b) Requirement For Identification Of Potential Opposer
203.03 SIGNATURE
203.04 SERVICE
203.05 DUPLICATE REQUESTS

204 FEE

205 MARK ON SUPPLEMENTAL REGISTER NOT SUBJECT TO OPPOSITION

206 WHO MAY FILE AN EXTENSION OF TIME TO OPPOSE

206.01 GENERAL RULE
206.02 REQUEST FOR FURTHER EXTENSION FILED BY PRIVY
206.03 MISIDENTIFICATION OF POTENTIAL OPPOSER
207 REQUIREMENTS FOR SHOWING OF CAUSE; EXTRAORDINARY
CIRCUMSTANCES

207.01 IN GENERAL
207.02 EXTENSIONS UP TO 120 DAYS FROM THE DATE OF PUBLICATION
207.03 EXTENSIONS BEYOND 120 DAYS FROM THE DATE OF PUBLICATION

208 ESSENTIAL ELEMENT OMITTED

209 ACTION BY BOARD ON REQUEST

209.01 SUSPENSION POLICY
209.02 DETERMINATION OF EXTENSION EXPIRATION DATE

210 OBJECTIONS TO REQUEST

211 RELIEF FROM ACTION OF BOARD

211.01 REQUEST FOR RECONSIDERATION
211.02 RELIEF AFTER INSTITUTION OF OPPOSITION
211.03 PETITION TO THE DIRECTOR

212 AMENDMENT OF APPLICATION DURING OR AFTER EXTENSION

212.01 JURISDICTION TO CONSIDER AMENDMENT
212.02 CONDITIONS FOR APPROVAL OF POST-PUBLICATION AMENDMENT
212.03 FORM OF AMENDMENT
212.04 ACTION BY BOARD -- UPON RECEIPT OF AMENDMENT
212.05 ACTION BY BOARD -- DURING CONSIDERATION OF AMENDMENT BY
TMEO
212.06 ACTION BY BOARD -- AFTER CONSIDERATION OF AMENDMENT BY TMEO
212.07 AMENDMENT DURING OPPOSITION

213 EFFECT OF RESTORATION OF JURISDICTION

214 EFFECT OF REPUBLICATION

215 EFFECT OF LETTER OF PROTEST

216 INADVERTENTLY ISSUED REGISTRATION

217 RELINQUISHMENT OF EXTENSION

218 ABANDONMENT OF APPLICATION

219 AMENDMENT TO ALLEGE USE; STATEMENT OF USE
220 INADVERTENT ISSUANCE OF A NOTICE OF ALLOWANCE

CHAPTER 300
PLEADINGS

301 TYPES OF BOARD PROCEEDINGS

301.01 IN GENERAL
301.02 MARK ON SUPPLEMENTAL REGISTER NOT SUBJECT TO OPPOSITION
301.03 MARK FILED UNDER THE MADRID PROTOCOL IS SUBJECT TO
OPPOSITION

302 COMMENCEMENT OF PROCEEDING

303 WHO MAY OPPOSE OR PETITION TO CANCEL

303.01 IN GENERAL
303.02 MEANING OF THE TERM “PERSON”
303.03 MEANING OF THE TERM “DAMAGE”
303.04 FEDERAL TRADE COMMISSION
303.05 OPPOSITION FILED DURING EXTENSION OF TIME TO OPPOSE
303.05(a) General Rule
303.05(b) Opposition Filed by Privy
303.05(c) Misidentification of Opposer
303.05(d) Misidentification of Applicant or Respondent
303.06 JOINT OPPOSERS OR PETITIONERS

304 PROCEEDING AGAINST MULTIPLE CLASS APPLICATION OR
REGISTRATION

305 CONSOLIDATED AND COMBINED COMPLAINTS

305.01 CONSOLIDATED COMPLAINT
305.02 COMBINED COMPLAINT

306 TIME FOR FILING OPPOSITION

306.01 IN GENERAL
306.02 DATE OF PUBLICATION OF MARK
306.03 PREMATURE OPPOSITION
306.04 LATE OPPOSITION
307 TIME FOR FILING PETITION TO CANCEL

307.01 PETITION THAT MAY BE FILED AT ANY TIME AFTER REGISTRATION
307.02 PETITION THAT MUST BE FILED WITHIN FIVE YEARS FROM THE DATE OF
REGISTRATION
307.02(a) In General
307.02(b) Trademark Act § 14, 15 U.S.C. § 1064, Limitation is Independent of
Trademark Act § 15, 15 U.S.C. § 1065, Affidavit
307.02(c) Factors Affecting the Five-Year Period
307.02(c)(1) Reliance on Registration by Plaintiff
307.02(c)(2) Amendment of Registration
307.03 PREMATURE PETITION TO CANCEL
307.04 LATE PETITION TO CANCEL

308 FILING FEES

308.01 FEE FOR FILING OPPOSITION
308.01(a) In General
308.01(b) Insufficient Fee
308.02 FEE FOR FILING PETITION TO CANCEL
308.02(a) In General
308.02(b) Insufficient Fee
308.02(c) Petition Filed by Federal Trade Commission
308.02(d) Fee for Counterclaim
308.03 FEES FOR JOINT OPPOSERS OR PETITIONERS
308.04 FEES FOR PROCEEDING AGAINST MULTIPLE CLASS APPLICATION OR
REGISTRATION
308.05 FEES FOR CONSOLIDATED AND COMBINED COMPLAINTS

309 FORM AND CONTENT OF OPPOSITIONS AND PETITIONS TO CANCEL

309.01 IN GENERAL
309.02 FORM OF COMPLAINT
309.02(a) Format for Complaint
309.02(b) Signature of Complaint
309.02(c) Service of Complaint
309.02(c)(1) Service of Opposition on Applicant
309.02(c)(2) Service of Petition on Respondent
309.03 SUBSTANCE OF COMPLAINT
309.03(a) In General
309.03(a)(1) Scope of Opposition and Petition to Cancel
309.03(a)(2) Elements of Complaint – In General
309.03(b) Standing
309.03(c) Grounds
30933(d) Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or
Partial Cancellation)