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TRADEMARK TRIALAND
APPEAL BOARDMANUAL OFPROCEDURE
(TBMP)
First EditionSeptember 1995
U. S. Department of Commerce Patent and Trademark Office
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PREFACE TO THE FIRST EDITION
In the 37 years since the Trademark Trial and Appeal Board (TTAB) wasestablished by Congress, the body of trademark law has grown substantially. So,too, has the complexity of administrative practice before the TTAB.
The TTAB's practice and procedure are governed by the Lanham Act and otherstatutory provisions, the Trademark Rules of Practice, the Federal Rules of CivilProcedure, the Federal Rules of Evidence, and reported cases. But there areelements of TTAB practice and procedure that are not easily extracted from thoseseveral sources, particularly by practitioners who represent parties before theTTAB only occasionally. And there are certain elements of TTAB practice andprocedure that are not to be found in those statutes, rules, and cases.
With the Trademark Trial and Appeal Board Manual of Procedure (TBMP), weaim to provide, in one publication, a comprehensive statement of ouradministrative procedures. We intend this manual to be a dynamic document thatwill be changed and supplemented, on a regular basis, as TTAB practice changes.
Although many people were involved in the numerous discussions that attendedthe writing of this volume, the TBMP is essentially the work of one person:TTAB Administrative Trademark Judge Janet E. Rice. Without her encyclopedicknowledge of TTAB practice and her indefatigable effort as reporter, publicationof the manual, in its present form, would not have happened.
J. David SamsChief Administrative Trademark JudgeTrademark Trial and Appeal Board
September 1, 1995
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INTRODUCTION
The purpose of this manual is to provide practitioners with basic informationgenerally useful for litigating cases before the Trademark Trial and AppealBoard. It is not meant to modify, amend, or serve as a substitute for any existingstatutes, rules, or decisional law. Rather, it is intended to describe currentpractice and procedure thereunder, as of the date of preparation of the manual.
Practitioners should bear in mind that statutes, rules, decisional law, and practiceand procedure thereunder are subject to frequent change (albeit not by means ofstatements in this manual). Moreover, the manual is not binding upon the Board,its reviewing tribunals, the Commissioner, or the PTO. Cf., In re Wine Society ofAmerica Inc., 12 USPQ2d 1139 (TTAB 1989).
The bulk of the manual relates primarily to the two most common types of interpartes proceedings before the Board, namely, opposition and cancellationproceedings. However, the first chapter includes general information useful forall proceedings, and the latter part of the manual contains chapters devotedspecifically to interference and concurrent use proceedings, as well as a chapterpertaining to ex parte appeals to the Board.
The manual will be updated periodically. Suggestions for improving the contentof the manual are welcome. They should be addressed as follows:
Assistant Commissioner for TrademarksBox TTAB No FeeAttention: Chief Administrative Trademark Judge2900 Crystal DriveArlington, Virginia 22202-3513
The title of the manual is abbreviated as "TBMP". A citation to a section of themanual may be written as "TBMP _____" (e.g. "TBMP 110.01," "TBMP113.06," etc.).
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TRADEMARK TRIAL AND APPEAL BOARDMANUAL OF PROCEDURE (TBMP)
TABLE OF CONTENTS
Chapter 100 General Information
101 Applicable Authority
102 Nature 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 Papers
107 How and Where to File Papers and Fees
108 Filing Receipts
109 Filing Date
110 Certificate of Mailing or Transmission Procedure
111 Certificate of Mailing by "Express Mail" Procedure
112 Times for Taking Action
113 Service of Papers
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114 Representation of Party
115 Conduct of Practitioner
116 Termination of Representation
117 Correspondence - With Whom Held
118 Payment of Fees
119 Papers and Fees Generally Not Returnable
120 Proceeding Files and Exhibits
121 Access to Files
122 Copying of Files
123 Certification
124 Application and Registration Status Information
125 Action by Assignee
Chapter 200 Extensions of Time to Oppose
201 In General
202 Time for Filing Request
203 Form of Request
204 Fee
205 Mark on Supplemental Register Not Subject to Opposition
206 Identification of Potential Opposer
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207 Requirements for Showing of Cause
208 Essential Element Omitted
209 Action by Board on Request
210 Objections to Request
211 Relief From Action of Board
212 Amendment of Application During or After Extension
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
Chapter 300 Pleadings
301 Commencement of Proceeding
302 Mark on Supplemental Register Not Subject to Opposition
303 Who May Oppose or Petition to Cancel
304 Joint Opposers or Petitioners
305 Proceeding Against Multiple Class Application or Registration
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306 Consolidated and Combined Complaints
307 Time for Filing Opposition
308 Time for Filing Petition to Cancel
309 Fee for Filing Opposition
310 Fee for Filing Petition to Cancel
311 Scope of Opposition and Petition to Cancel
312 Form of Opposition and Petition to Cancel
313 Exhibits to Pleadings
314 FRCP 11 Applicable
315 Notification of Proceeding
316 Time for Filing Answer
317 Default
318 Form of Answer
319 Counterclaims
320 Reply to Answer Should Not be Filed
321 Unpleaded Matters
322 Amendment of Pleadings
323 Motions Relating to Pleadings
324 Amendment to Allege Use; Statement of Use
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Chapter 400 Discovery
401 In General
402 Scope of Discovery
403 Timing of Discovery
404 Discovery Depositions
405 Discovery Deposition Objections
406 Interrogatories
407 Responses to Interrogatories
408 Requests for Production of Documents and Things
409 Responses to Requests for Production
410 Requests for Admission
411 Responses to Requests for Admission
412 Duties to Cooperate, Search Records, Supplement
413 Filing Discovery Requests and Responses With Board
414 Motions Attacking Requests for Discovery
415 Remedy for Failure to Provide Discovery
416 Protective Orders
417 Telephone and Pre-trial Conferences
418 Discovery Sanctions
419 Discovery Guidelines
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Chapter 500 Stipulations and Motions
501 Stipulations
502 Motions--In General
503 Motion to Dismiss for Failure to State a Claim
504 Motion for Judgment on the Pleadings
505 Motion for a More Definite Statement
506 Motion to Strike Matter From Pleading
507 Motion to Amend Pleading
508 Motion for Default Judgment for Failure to Answer
509 Motion to Extend Time; Motion to Reopen Time
510 Motion to Suspend; Motion to Resume
511 Motion to Consolidate
512 Motion to Join or Substitute
513 Motion to Withdraw as Representative; Petition to Disqualify
514 Motion to Amend Application or Registration
515 Motion to Remand Application to Examining Attorney
516 Motion to Divide Application
517 Motion to Strike Brief on Motion
518 Motion for Reconsideration of Decision on Motion
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519 Motion for Leave to Serve Additional Interrogatories
520 Motion to Take Foreign Deposition Orally
521 Motion to Quash Notice of Deposition
522 Motion for Order re Manner or Place of Document Production
523 Motion to Compel Discovery
524 Motion to Test Sufficiency of Response to Admission Request
525 Motion to Withdraw or Amend Admissions
526 Motion for a Protective Order
527 Motion for Discovery Sanctions
528 Motion for Summary Judgment
529 Motion for FRCP 11, or Other Non-Discovery, Sanctions
530 Motion to Offer Discovery Deposition of Self or Nonparty
531 Motion to Use Testimony From Another Proceeding
532 Motion That Deposition Upon Written Questions Be Taken Orally
533 Motion to Strike Notice of Reliance
534 Motion to Strike Trial Testimony Deposition
535 Motion for Judgment for Plaintiff's Failure to Prove Case
536 Motion for Order to Show Cause Under Rule 2.134(b)
537 Motion for Order to Show Cause Under Rule 2.128(a)(3)
538 Motion for Leave to Exceed Page Limit for Brief on Case
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539 Motion for Leave to File Amicus Brief
540 Motion to Strike Brief on Case
541 Motion for Augmented Panel Hearing
542 Motion to Change Oral Hearing Date;
