Answer to Petition for Cancellation
(Genericness and Mere Descriptiveness) (TTAB)

Summary

This template is an answer responding to a petition for cancellation filed at the Trademark Trial and Appeal Board (TTAB) seeking full or partial cancellation of a federal trademark registration on the basis that the trademark is generic and/or merely descriptive. This template includes practical guidance and drafting notes. This template answer responds to the allegations in the corresponding template Petition for Cancellation (Genericness and Mere Descriptiveness) (TTAB). An answer generally includes responses to the petitioner's allegations, affirmative defenses, and if applicable any counterclaims against the petitioner. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 311.02. This template includes proposed affirmative defenses which should be modified to fit your circumstances. This template does not include any counterclaims but provides a brief discussion of counterclaims below. Service of Petition for Cancellation and Deadline for Filing Answer A petitioner does not serve the petition for cancellation. TBMP § 309.02(c)(2). Instead, upon filing of a petition for cancellation the TTAB prepares a notice of institution which contains the following information: • Identifies the proceeding as a cancellation and assigns a cancellation number • Identifies the registration(s) that are subject of the proceeding • Includes a web link or address to the ESTTA record for the proceeding • Specifies the deadline for the respondent to file an answer which is typically 40 days from the mailing date of the notice of institution (but must be at least 30 days from the mailing date) • Sets forth the remaining schedule for the proceeding including deadlines for: ○ The discovery conference ○ Initial and expert disclosures ○ Opening and closing of the discovery period ○ Pretrial disclosures ○ Testimony periods ○ Final briefs ○ Optional request for oral hearing 37 C.F.R. §§ 2.113(a), 2.120(a)(1); TBMP § 310.03(a). The TTAB serves the notice of institution on the registrant of record at the USPTO by email (or U.S. mail if no email address is of record) and it constitutes service of the petition for cancellation. TBMP § 309.02(c)(2). Even if there is an attorney of record for the registration in the TSDR records, the TTAB still serves a petition for cancellation directly on the registrant. 37 C.F.R. § 2.113(c). Unlike a pending application, representation information for a registration may be outdated given that powers of attorney typically end upon an application's registration, and also given the passage of time where no action is needed for a trademark that is already registered. See TBMP § 310.01. Accordingly, it is important for trademark registrants to follow the requirement to maintain a current and accurate email address in the USPTO TSDR record to avoid inadvertently defaulting in a cancellation proceeding. See 37 C.F.R. § 2.23(b). If the defendant's notice of institution is returned as undeliverable the TTAB takes the following steps: • Conducts a reasonable investigation to locate the defendant including asking the petitioner if it has the defendant's current address and/or email address • Publishes a notice of the filing of the petition to cancel in the USPTO Official Gazette if: ○ TTAB is unable to locate the defendant after a reasonable investigation ○ Petitioner is unable to provide the defendant's current address and/or email address –or– ○ Petitioner notifies the TTAB that the defendant is no longer in business 37 C.F.R. § 2.118; TBMP 310.02. A defendant will have 30 days from the date of publication to appear or risk default. Examples of service by publication may be reviewed in the Official Gazette on the USPTO website. You can request an extension of the deadline to file an answer as follows: • If the other party agrees to the extension, file using the "consent motions" options in ESTTA which will automatically generate a new schedule with all the required deadlines which the TTAB can then review and issue an order if approved. • Alternatively, if the other party agrees, but the automatically generated schedule does not reflect all of the parties' agreed to deadlines, or the parties wish to alter the automatic deadlines then file a stipulation or consent motion in ESTTA using the "general filings" option: ○ Make sure to include all the deadlines that appear in a regular schedule for cancellation proceedings ○ Submit the deadlines in the same format as it appears in a notice of institution ○ TTAB will review and then issue an order if approved • If the other party does not agree, then file a contested motion with the TTAB: ○ You must include detailed facts showing good cause supporting the extension; merely conclusory allegations are insufficient. ○ If the TTAB grants the motion it will usually reset all the deadlines in the proceeding, but to avoid any issues you should also include a request in your motion that all deadlines be reset. ○ The TTAB has the option where it believes it would be beneficial to hold a telephone conference with the parties regarding the motion; otherwise, a petitioner must file an opposition within 20 days of being served with the motion. ○ If the petitioner ▪ Does not file an opposition brief, the TTAB may grant the motion as conceded ▪ Contests the motion, then the TTAB will decide the motion on the merits Fed. R. Civ. P. 6; 37 C.F.R. §§ 2.121(d), 2.127(a); 2.120(j)(1); TBMP 310.03(c), 509.01(a), 509.01(b)(1). Default If the defendant does not file an answer by the deadline, then: • The TTAB may issue a notice of default; –or– • Petitioner may file a motion for default judgment (which serves as a substitute for the TTAB's issuance of a notice of default). 37 C.F.R. § 2.114(a). The TTAB tolls all other deadlines in the proceeding while it determines the issue of default. 37 C.F.R. § 2.114(a). A default notice advises that: • Defendant: ○ Did not file an answer or an extension of time of the answer deadline ○ Has 30 days from the mailing date of the default notice to show cause why the TTAB should not enter default judgment against it pursuant to Fed. R. Civ. P. 55(b)(2) • The TTAB: ○ Is entering notice of default under Fed. R. Civ. P. 55(a) ○ Will toll all other deadlines in the proceeding while it determines the issue of default ○ Will reset all deadlines in the schedule in the event it resumes the proceeding See TBMP § 312.01; 37 C.F.R. § 2.114(a). You can review an example of a notice of default in the TTABVUE record for Cancellation No. 92076934. A defendant may establish good cause to set aside the default notice by showing: • The delay in filing an answer was not the result of its willful conduct or gross neglect. • Petitioner will not be substantially prejudiced by the delay; –and– • Defendant has a meritorious defense to the action. See DrDisabilityQuotes.com, LLC v. Krugh, 2021 U.S.P.Q.2d 262, at *2 (TTAB 2021). You should also file the answer with your response to the default notice. TBMP § 312.01. The decision of whether to enter default judgment is solely within the TTAB's discretion, but the TTAB will resolve all doubt in favor of the defendant based on the policy favoring deciding cases on the merits. TBMP § 312.02. If the TTAB enters default judgment against the defendant then the TTAB will consider the same factors noted above in deciding whether to set aside the default judgment. However, the TTAB will likely be less lenient in evaluating the defendant's response. See TBMP § 312.03. Time Limits on Genericness and Descriptiveness Grounds At any time, you may file a petition to cancel a trademark registration on the grounds that the trademark is or has become generic for some or all of the goods and/or services covered by the registration. 15 U.S.C. § 1064(3). However, a petition to cancel a trademark registration on the grounds that the trademark is merely descriptive of the goods and/or services covered by the registration may only be filed within five years from the trademark's registration date. 15 U.S.C. § 1064(1). Usually, if filing electronically, ESTTA will automatically exclude merely descriptive from the list of available grounds for cancellation in the online filing form where the registration is more than five years old. But if the petitioner filed its petition on paper, or if it included the descriptiveness ground in the "other" field in ESTTA, then you should file either a motion to strike (as insufficient) or a motion to dismiss for failure to state a claim given that the descriptiveness ground is time-barred. See Western Worldwide Enters. Group, Inc. v. Qinqdao Brewery & China Nat'l Cereals, Oils, & Foodstuffs Import & Export Corp., 17 U.S.P.Q.2D (BNA) 1137, 1139–1140 (TTAB 1990) (granting motion to strike); Interim Inc. v. Interim Servs., 1999 TTAB Lexis 165, *5 (TTAB April 22, 1999) (granting motion to dismiss where "involved registration was over five years old at the time of filing the petition and, thus, not subject to cancellation on the ground of descriptiveness"). See also TBMP § 506.01 (TTAB has "authority to strike an impermissible or insufficient claim or portion of a claim from a pleading"). Genericness and Mere Descriptiveness Grounds As a respondent it is helpful to keep in mind what a petitioner must show to establish its grounds for cancellation to assist you with developing a strategy for your response including: • Identifying potential affirmative defenses and/or responses to a petitioner's allegations • Avoiding any inadvertently harmful admissions A petition for cancellation on the ground of genericness requires that the petitioner plead (and later prove) that: • Registrant's trademark is a generic term: ○ "A generic term is one that refers to the genus of which the particular product is a species." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985); –and/or– ○ A term can also be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect or central focus of that genus. In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304 (Fed. Cir. 2009) (approving Board's finding that "hotels" identified the "central focus" of online lodging information and reservation services and therefore mark HOTELS.COM was generic). ○ The genericness inquiry "focuses on the description of [goods and/or] services set forth in the certificate of registration." Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640 (Fed. Cir. 1991). • The application of a two-part test establishes that defendant's mark is a generic term: ○ What is the genus of goods or services at issue? ○ Does the relevant public understand the designation (i.e., defendant's mark) primarily to refer to that genus of goods or services? Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 U.S.P.Q.2D (BNA) 1458, 1462 (TTAB 2014). A petition for cancellation on the grounds of mere descriptiveness requires that the petitioner plead (and later prove) that registrant's trademark is merely descriptive: • "A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." Trademark Manual of Examining Procedure (TMEP) § 1209.01(b). • The TTAB determines descriptiveness in relation to: ○ The goods and/or services covered by the registration ○ Context in which the registered trademark is being used on or in connection with those goods or services ○ Possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use Robinson v. Hot Grabba Leaf, LLC, 2019 TTAB Lexis 96, *18 (TTAB 2019). • A petitioner can establish descriptiveness even if the trademark is descriptive of only one or a subset of the goods and/or services covered by the registration. In re Stereotaxis, Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005) However, if you can show that a descriptive mark has secondary meaning (also known as acquired distinctiveness) then your registration is valid and not subject to cancellation. 15 U.S.C. § 1052(f). For more information on secondary meaning see Drafting Note to Paragraph . Response to Cancellation Allegations You should respond to each allegation in numbered paragraphs corresponding to the numbered paragraphs in the petition for cancellation by stating that it is: • Admitted • Denied (which can use any of the forms in Fed. R. Civ. P. 8(b)) –and/or– • You are without knowledge or information sufficient to form a belief as to the truth of the allegation (which has the effect of a denial) 37 C.F.R. § 2.114(b)(2). You can also admit or deny an allegation in part but be specific and make sure that any denial fairly meets the substance of the allegation because if you fail to deny any portion of an allegation, it may be deemed admitted. TBMP § 311.02(a); Fed. R. Civ. P. 8(b)(6). You may also respond with one general denial but only if you intend in good faith to controvert all of the allegations contained in the petition for cancellation. Fed. R. Civ. P. 8(b)(3). Keep in mind, however, that in so responding you are representing to the TTAB that your denial is warranted on the evidence. Fed. R. Civ. P. 11(b)(4); TBMP § 318. Motion to Dismiss for Failure to State a Claim Instead of filing an answer you may file a motion to dismiss for failure to state a claim. You must show that a petitioner has not alleged sufficient facts to establish: • Petitioner has an entitlement to a statutory cause of action to bring the cancellation (previously standing); –and/or– • Petitioner has a valid ground for cancelling the registration. NSM Res. Corp. v. Microsoft Corp., 113 U.S.P.Q.2D (BNA) 1029, 1032 (TTAB 2014) (granting motion to dismiss with prejudice). The petitioner does not need to prove its case in opposing a motion to dismiss; it only has to show that if the facts it alleges are proven it would establish these elements. See TBMP § 503.02. In making a decision of whether to file a motion to dismiss, keep in mind that: • The TTAB will accept all well-plead allegations as true and will construe them in favor of the petitioner in deciding a motion to dismiss. See Ritchie v. Simpson, 170 F.3d 1092, 1097 (Fed. Cir. 1999). • Petitioner may amend its petition for cancellation once within 21 days after you serve a motion to dismiss. Fed. R. Civ. P. 15(a): ○ Accordingly, Petitioner is likely to respond to a motion to dismiss by filing an amended petition for cancellation. ○ The filing of an amended petition will moot your motion to dismiss. • If the TTAB grants your motion to dismiss, it may give the petitioner an opportunity to amend its petition unless: ○ It would serve no useful purpose ○ Any amendment would be futile because petitioner cannot prevail as a matter of law TBMP § 503.03. Any motion to dismiss for failure to state a claim should be filed before, or concurrently with your answer. Fed. R. Civ. P. 12(b). You still have the option of raising the defense after you file your answer by: • Filing a motion for judgment on the pleadings • Filing a motion for summary judgment • Including it as part of your trial submissions See TBMP § 503.01. If you file a motion to dismiss for failure to state a claim after you file your answer, but before the deadline for petitioner's pretrial disclosures, then the TTAB may treat it as a motion for judgment on the pleadings. See TBMP § 504.01. The filing of a motion to dismiss for failure to state a claim will toll the time for filing an answer and the TTAB will suspend the proceeding pending a decision on the motion. 37 C.F.R. § 2.127(d); TBMP § 503.01. If the TTAB denies the motion, it will reset all the deadlines in the proceeding. TBMP § 316. Counterclaim The only counterclaim you may file in a cancellation proceeding is a counterclaim to cancel a registration owned by the petitioner (or any other adverse party). TBMP § 313.01. See also 37 C.F.R. § 2.114(b)(3). A counterclaim may seek to: • Cancel the whole registration • Cancel the registration in part (e.g., to cancel only as to one class of a multi-class registration, or as to only certain goods and/or services) • Restrict the goods and/or services covered by the registration except for geographic restrictions which the TTAB may only determine in a concurrent use proceeding • Enter a description or disclaimer in the registration 15 U.S.C. § 1068; 37 C.F.R. §§ 2.111(b), 2.133(c)–(d). See also TBMP § 313.01. A counterclaim is: • Compulsory if it attacks the validity of a registration pleaded by the petitioner in the petition for cancellation and the grounds exist at the time your answer is filed • Permissive if it seeks to cancel a registration owned, but not pleaded by the petitioner in the petition for cancellation 37 C.F.R. § 2.114(b)(3)(i); Fed. R. Civ. P. 13(b); TBMP § 313.05. You may only attack the validity of a registration pleaded by a petitioner by filing a counterclaim or a separate petition for cancellation. 37 C.F.R. § 2.114(b)(3)(ii). A cancellation counterclaim is the legal equivalent of a petition for cancellation so the same fee, filing, and formatting requirements apply. 37 C.F.R. § 2.114(b)(3)(iii); TBMP 313.01–313.02. Note, however, that you do not need to plead an entitlement to a statutory cause of action (previously standing) because registrant's position as a defendant in the proceeding establishes such entitlement. Del. Quarries, Inc. v. Playcore IP Sub, Inc., 108 U.S.P.Q.2d 1331, 1332 (TTAB 2013) ("The general rule is that a counterclaimant, as a defendant in [a cancellation], has inherent standing to assert its counterclaims."). This template answer does not contain any counterclaims because the template Petition for Cancellation (Genericness and Mere Descriptiveness) (TTAB) to which this answer responds does not plead any registrations. U.S. Attorney Requirement All foreign-domiciled parties in a TTAB proceeding must be represented by an attorney who is licensed to practice law in the United States (i.e., an active member in good standing of the bar of the highest court of any state). 37 C.F.R. § 2.11(a), 11.1, 11.14(a). See also TBMP § 114.03. Accordingly, a U.S. attorney must file an answer for any foreign-domiciled trademark registrant whose registration is the subject of a TTAB petition for cancellation. See Cloudworks Consulting Servs. v. Ongoing Operations, LLC, 2020 TTAB Lexis 10, *2 (TTAB 2020) (U.S. attorney must "file all documents with the Board" for a foreign-domiciled party). The TTAB determines a party's domicile as follows: • For a natural person: permanent legal place of residence • For a juristic entity (i.e., a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law): principal place of business 37 C.F.R. § 2.2(o); 15 U.S.C. § 1127. Filing and Formatting Requirements An answer to a petition for cancellation: • Must be filed electronically using ESTTA, the TTAB's electronic filing system • Must be in at least 11-point font and double-spaced • Should contain admissions, denials, and any other response to petitioner's allegations in numbered paragraphs corresponding to the numbered paragraphs in the petition for cancellation • Any supporting exhibits: ○ Must be filed electronically as attachments to the petition ○ Must be clear and legible ○ That consist of multimedia files such as commercials may be submitted physically via a DVD or CD since ESTTA currently does not accept multimedia files 37 C.F.R. § 2.126(a); TBMP §§ 106.03, 311.01(a), 311.02(a). Keep in mind ESTTA's size limitations for filing: • Each file may not exceed 6 MB • Aggregate of all files attached to a single ESTTA submission may not exceed 53 MB TBMP § 110.02(c). The limited exceptions to the electronic filing requirement are: • ESTTA is unavailable due to technical problems • Extraordinary circumstances such as certain types of technical problems at the filer's location or with the filer's systems 37 C.F.R. § 2.114(b)(1); TBMP § 311.01. If you submit your answer in paper format, it must be accompanied by a petition to the Director explaining the technical problem or your extraordinary circumstances and include the required fee (currently $350.00). 37 C.F.R. §§ 2.114(b)(1), 2.6(a)(15)(i); TBMP § 311.01(c). For more information on cancellation proceedings, see TTAB Litigation: Cancellation Proceedings. For summaries of TTAB precedential decisions on genericness and mere descriptiveness claims, see TTAB Decision Tracker: Genericness and TTAB Decision Tracker: Mere Descriptiveness. For information on Trademark Trial and Appeal Board proceedings in general, see TTAB Proceedings Resource Kit.