528.05(a)(2) Accelerated Case Resolution (ACR)
Parties to Board inter partes proceedings may stipulate to pretrial final disposition on the merits (as well as abbreviated trial on the merits, see TBMP § 702) of inter partes cases via Accelerated Case Resolution (ACR). [ Note 1.] In that regard, ACR expands upon earlier Board practice allowing parties to stipulate that their summary judgment motions and accompanying evidence be treated as the final record and briefs in a case. [ Note 2.] ACR is available in all cases, including those filed prior to the amendments to the Trademark Rules of Practice effective as of November 1, 2007.
Parties requesting ACR may stipulate to a variety of matters to accelerate disposition of the proceeding, including permitting the Board to resolve issues of fact at summary judgment and to treat the parties’ summary judgment motion papers and evidence as the final record and briefs on the merits of the case. In addition, parties may stipulate to the following: abbreviating the length of the discovery, testimony, and briefing periods as well as the time between them; limiting the number or types of discovery requests or the subject matter thereof; limiting the subject matter for testimony, or limiting the number of witnesses, or streamlining the method of introduction of evidence, for example, by stipulating to facts and introduction of evidence by affidavit or declaration. [ Note 3.]
Unlike summary judgment decisions, which are interlocutory in nature, the Board’s decision in a proceeding utilizing ACR is final, and thus, is judicially reviewable as set forth in 37 CFR § 2.145. [ Note 4.] See TBMP § 528.01 and TBMP § 901.
Parties may stipulate to ACR at any time during the pretrial phase of the proceeding. Thus, parties that have been in contact prior to commencement of an opposition or cancellation may stipulate to ACR as early as the filing and service of their pleadings. Parties that have not been in prior contact may stipulate to ACR during their discovery conference, or at any time prior to the opening of testimony. Thereafter, parties still may agree to abbreviating trial and briefing schedules, limiting the types and methods of introduction of evidence, and stipulating to facts. [ Note 5.] Oral hearings are available in ACR cases in accordance with 37 CFR § 2.129(a). See TBMP § 802.
Parties may stipulate to ACR by informing the Board attorney assigned to their case during a telephone conference or by filing a stipulation. In any event, parties must either alert the assigned attorney by telephone that the parties are seeking ACR, in which case the attorney will issue an order outlining the parties’ agreement, or submit a stipulation in writing memorializing and outlining their agreement. [ Note 6.] Failure to do so may result in delays in implementing ACR and the disposition of the proceeding.
Although ACR generally will be available to any parties seeking to avail themselves of accelerated resolution of their proceedings, the ultimate decision as to whether the parties may proceed by means of ACR lies with the discretion of the Board. In most cases it is anticipated that decisions on ACR cases will be rendered within fifty days of the scheduled due date of a reply brief or hearing.
What follows, in TBMP § 528.05(b) through TBMP § 528.05(f), is a more detailed discussion of some of the types of evidence that may be submitted in connection with a summary judgment motion, or a case in which the parties seek expedited determination under ACR.
For a further discussion regarding other ACR models, see TBMP § 702.04.
NOTES:
1. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (Board’s first, non-precedential, ACR decision in Opposition No. 91158118 affirmed by Federal Circuit). See also Weatherford/Lamb, Inc. v. C& J Energy Services, Inc.,96 USPQ2d 1834, 1836(TTAB 2010) (parties stipulated to ACR after filing cross motions for summary judgment); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to ACR).
2. See, e.g.,Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28, 1830 (TTAB 2012) (parties may stipulate that their cross motions for summary judgment be the ACR record); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986).
3. See 37 CFR § 2.120(a)(2) ("The parties may stipulate to a shortening of the discovery period"); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts and a stipulation to seek a determination through ACR); Brooks v. Creative Arts by Calloway, 93 USPQ2d 1823, 1825-26 (TTAB 2009) (parties stipulated to 14 paragraphs of facts, submission of testimony of certain witnesses in declaration form, and that sole issue to be decided at final was priority), aff’d on other grounds, Creative Arts by Calloway v. Brooks, Civ. No. 7:09 10488 (S.D.N.Y. December 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013); Eveready Battery Co. v. Green Planet, Inc. 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to 13 paragraphs of facts). See also Ballet Tech Foundation Inc. v. Joyce Theater Foundation Inc., 89 USPQ2d 1262, 1265 n.8 (TTAB 2008) (although documents produced in response to document production requests cannot normally be made of record by notice of reliance, the parties stipulated that documents exchanged during discovery are authentic and may be made of record by either party), vacated as moot, Opposition No. 91180789 and Cancellation No. 92042019 (TTAB Nov. 14, 2013);Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).
4. Cf. Copelands’ Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989);Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572, 1579, n.6 (TTAB 2008).
5. See Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007).
6. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue ACR);Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 (TTAB 2008) (parties must inform Board by stipulation or motion any time they agree to modify their obligations under the rules regarding disclosure and discovery or deadlines involving disclosure, discovery, trial or briefing).