ANSWER

When does the Answer take place in an opposition or cancellation?

STEPS

1.  Notice of Opposition or Petition to Cancel is filed by Plaintiff  
2.  Defendant (applicant or registrant) Answers within 40 days
3.  Discovery Conference between parties (the parties are required to conference in person, by telephone, or by any other means on which they may agree)
4.  Discovery Opens
5.  Initial Disclosures Due
6.  Expert Disclosures Due
7.  Discovery Closes
8.  Plaintiff's Pretrial Disclosures
9.  Plaintiff's 30-day Trial Period-Brief on the Merits submitted
10.  Defendant's Pretrial Disclosures
11.  Defendant's 30-day Trial Period-Rebuttal on Brief on the Merits submitted
12.  Plaintiff's Rebuttal Disclosures
13.  Plaintiff's 15-day Rebuttal Period
14.  Board's Decision

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

June 2022

TBMP 311    Form and Content of Answer

TBMP 311.01    Form of Answer

37 C.F.R. § 2.116 Federal Rules of Civil Procedure.

(c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.

37 C.F.R. § 2.106 Answer.

(b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).

37 C.F.R. § 2.114 Answer.

(b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).

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

(a) Submissions shall be made to the Trademark Trial and Appeal Board via ESTTA.

(1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.

(2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.

(b) . . . . 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 and comply with the requirements for a paper submission.

(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper 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 for public viewing with the confidential portions redacted must be submitted concurrently.

An answer to a notice of opposition or petition to cancel corresponds to an answer to a complaint in a court proceeding. [ Note 1.]

The form of an answer must meet the general requirements for submissions to the Board set forth in 37 C.F.R. § 2.126. See TBMP § 106.03. If an answer 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 answer and be clear and legible. [ Note 2.] If the answer is submitted on paper, due to technical problems, or when extraordinary circumstances are present, (see 37 C.F.R. § 2.106(b)(1)  and 37 C.F.R. § 2.114(b)(1) ) 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 C.F.R. § 2.126(b)  in order to permit efficient scanning.

A party may no longer make submissions in CD-ROM format that could otherwise be filed electronically as a digital image through ESTTA. [ Note 3.] The Board will not return an inappropriately filed CD-ROM to the party which filed it.

NOTES:

 1.   See 37 C.F.R. § 2.116(c).

 2.   See 37 C.F.R. § 2.126(a)(1)  and 37 C.F.R. § 2.126(a)(2).

 3.   See 37 C.F.R. § 2.126(a)  and 37 C.F.R. § 2.126(b). Cf. Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement, exhibits submitted on flash drives and CD-ROM not considered; however, video and audio recordings may be submitted on CD-ROM or DVD), dismissed with prejudice, No. 0:14-cv-4463 (D. Minn. Jan. 20, 2016).

TBMP 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 (37 C.F.R. § 2.126(a)   for electronic filings through ESTTA and 37 C.F.R. § 2.106(b)(1), 37 C.F.R. § 2.147(b)(1), and 37 C.F.R. § 2.126(b)  for paper filings (when permitted on Petition)), and otherwise includes the necessary information. The format for an answer is similar to a complaint and should include the following information:

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.). Cf. TBMP § 309.02(a).

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. See TBMP § 311.02.

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. See TBMP § 311.01(b).

TBMP 311.01(b)    Signature of Answer

37 C.F.R. § 2.119(e) Every submission filed in an inter partes proceeding, … must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned submission will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the notification of this defect by the Office.

An answer need not be verified, but it must be signed. For answers submitted electronically via ESTTA, electronic signatures pursuant to 37 C.F.R. § 2.193(c)  are required. The signature may be made by the defendant or by the defendant’s attorney or other authorized representative. [ Note 1.] See TBMP § 106.02.

If a defendant signing for itself is an individual, the individual must make the signature. If defendants are joint applicants of the involved mark, each defendant must sign a combined, single answer. [ Note 2.] 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.).

In the case of an electronically filed answer, the Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [ Note 3.] Thus, a defendant’s (or its attorney’s or other authorized representative’s) electronic signature on the ESTTA filing form serves as its signature for the entire answer being filed, even when there is no electronic signature on the answer, submitted as an attachment to the filing form. [ Note 4.]

Although an answer must be signed, an unsigned answer filed in paper form, (when permitted, see 37 C.F.R. § 2.106(b)(1)  and 37 C.F.R. § 2.114(b)(1) ) 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. [ Note 5.] See TBMP § 106.02.

NOTES:

 1.   See 37 C.F.R. § 2.119(e).

 2.   Cf. TMEP § 712.01 (a response to an Office action by joint applicants who are not represented by an attorney must be signed by each of the applicants, since they are individual parties and not a single entity).

 3.   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 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"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69957 (October 7, 2016) (The ESTTA cover sheet is considered part of the complete opposition pleading).

 4.   PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005).

 5.   See 37 C.F.R. § 2.119(e).

TBMP 311.01(c)    Filing and Service of Answer

37 C.F.R. § 2.106(b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).

37 C.F.R. § 2.114(b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).

37 C.F.R. § 2.119(a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, … must be served upon the other party or parties. Proof of such service must be made before the submission will be considered by the Office.

37 C.F.R. § 2.119(b) Service of submissions filed with the Board and any other papers served on a party not required to be filed with the Board, 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 must be made by email, unless otherwise stipulated…

One copy of the answer, and any exhibits thereto, must be filed with the Board. An answer must be filed through ESTTA. [ Note 1.] In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form accompanied by a Petition to the Director and the requisite fee. [ Note 2.]

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. [ Note 3.] 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 submission will be considered by the Board. [ Note 4.] See TBMP § 113 regarding certificates of service. The service of an answer filed with the Board must be made by email, unless otherwise stipulated. [ Note 5.] A party who attempts service by email but is unsuccessful due to technical problems or extraordinary circumstances, may effect service by other means. [ Note 6.] Service by other means should be accompanied by a written explanation or amended certificate of service. [ Note 7.]

For information on the time for filing an answer, see TBMP § 310.03.

Please Note: The notice automatically generated by ESTTA upon filing the answer does not constitute service and does not relieve a party of its obligation to serve a copy of the answer under the Trademark Rules; the filing notice and actual service of the submission are independent of one another. [ Note 8.]

For answers filed on paper, the pendency of the Petition to the Director to file on paper will not act as a stay of proceedings, see 37 C.F.R. § 2.146(g), and parties should adhere to the trial schedule. [ Note 9.]

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(1)  and 37 C.F.R. § 2.114(b)(1).

 2.   See 37 C.F.R. § 2.106(b)(1)  and 37 C.F.R. § 2.114(b)(1).

 3.   See 37 C.F.R. § 2.119(a)  and 37 C.F.R. § 2.119(b). See also Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 n.5 (TTAB 2019) (Under Trademark Rule 2.119(a), every submission filed in an inter partes proceeding, except for the petition to cancel or notice of opposition, must be served upon the other party together with a certificate of service).

 4.   See 37 C.F.R. § 2.119(a)  and 37 C.F.R. § 2.119(b).

 5.   See 37 C.F.R. § 2.119(b).

 6.   See 37 C.F.R. § 2.119(b). Cf. Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 n.5 (TTAB 2019) (discussing service of a motion).

 7.   See 37 C.F.R. § 2.119(b).

8. Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 (TTAB 2019).

9. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (October 7, 2016).

TBMP 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. [ Note 1.] If the defendant does not have sufficient knowledge or 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. [ Note 2.] 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). [ Note 3.] An answer that fails to deny a portion of an allegation may be deemed admitted as to that portion. See Fed. R. Civ. P. 8(b)(6). 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, including the jurisdictional grounds, 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 all the allegations except those designated allegations or paragraphs which are expressly admitted. [ Note 4.]

In the absence of a general denial of the allegations in a complaint, admissions or denials should be made in numbered paragraphs corresponding to the numbered paragraphs in the complaint.

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(2)  and 37 C.F.R. § 2.114(b)(2); 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, 1943 (TTAB 1996) (applicant’s answers were argumentative and nonresponsive and Board was ultimately forced to interpret the answer); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1214 n.2 (TTAB 1990) (applicant’s answer was more in the nature of argument than answer); Thrifty Corp. v. Bomax Enterprises, 228 USPQ 62, 63 (TTAB 1985).

 2.   See Fed. R. Civ. P. 8(b)(5).

 3.   See 37 C.F.R. § 2.106(b)(2)  and 37 C.F.R. § 2.114(b)(2). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982) (regarding equivocal admissions or denials).

 4.   See Fed. R. Civ. P. 8(b)(3) and 8(b)(4).