528.05(a)(1) In General
The types of evidence that may be submitted in support of, or in opposition to, a motion for summary judgment include "depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials," affidavits or declarations, and other materials in the record. [ Note 1.]
The evidentiary record upon summary judgment in an inter partes proceeding before the Board also includes, without action by any party, the pleadings the file of any application or registration which is the subject of the proceeding as provided in 37 CFR § 2.122(b) [ Note 2.] and a copy of any registration pleaded and made of record by the plaintiff with its complaint, in the manner prescribed in 37 CFR § 2.122(d)(1). In addition, a party may make of record, for purposes of summary judgment, copies of other registrations; disclosure materials; documents or things produced in response to a request for production; official records, if competent evidence and relevant to an issue; printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue, if the publication is competent evidence and relevant to an issue; and testimony from other proceedings, so far as relevant and material. [ Note 3.] A party need not submit these materials under a notice of reliance in order to make them of record for purposes of a summary judgment motion. Rather, the materials may be submitted as attachments or exhibits to a party’s brief or affidavit in support of the motion. Cf. TBMP § 700.
In addition, the Board may grant a party’s request or otherwise exercise its discretion to take judicial notice of appropriate dictionary definitions, translations, and other facts that are germane to a summary judgment motion. [ Note 4.] See TBMP § 704.12. The parties further may bring to the attention of the Board supplemental legal authority issuing after briefing of the summary judgment motion, e.g., a precedential decision from the Federal Circuit or Board that is relevant to the issues under consideration, along with a brief description of its significance. However, such a submission may not be used as a subterfuge to avoid the prohibition on filing surreplies or further briefing of such motions.
In a Board proceeding, the only evidentiary materials likely to be already of record when a motion for summary judgment is filed are the pleadings, the file of any application or registration that is the subject matter of the proceeding [ Note 5.], and any registration pleaded and made of record by the plaintiff with its complaint. Any other evidence, which a party wishes to have considered upon summary judgment must be submitted in connection with the summary judgment motion. [ Note 6.]
Because it is not the practice of the Board to make evidentiary rulings prior to briefing and determination of summary judgment motions, the Board will not entertain a motion in limine to preclude a party from presenting certain types or categories of evidence at summary judgment or, for that matter, at trial. [ Note 7.] See TBMP § 527.01(f). Objections to evidence may be made in a party’s responsive brief, if one is permitted. [ Note 8.]
Evidence submitted in connection with a motion for summary judgment is ordinarily of record only for purposes of that motion. If the case goes to trial, the summary judgment evidence may not form part of the evidentiary record to be considered at final hearing unless it is properly introduced in evidence during the appropriate testimony period. [ Note 9.] However, the parties may stipulate that any or all of the summary judgment evidence be treated as properly of record for purposes of final decision. [ Note 10.] Moreover, the parties may, if they so desire, stipulate that the summary judgment motion and evidence be treated as the final record and briefs in the case. [ Note 11.] See TBMP § 528.05(a)(2).
NOTES:
1. Fed. R. Civ. P. 56(c)(1)(A).
2. See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties).See also Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 (TTAB 2010) (record includes pleadings and file of the opposed application).
3. See 37 CFR § 2.122(b), 37 CFR § 2.122(d)(2), 37 CFR § 2.122(e), 37 CFR § 2.122(f), and 37 CFR § 2.127(e)(2). See also Raccioppi v. Apogee Inc., 47 USPQ 1368, 1369-70 (TTAB 1998) (party may rely on documents admissible under 37 CFR § 2.122(e)).
4. See generally University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 (TTAB 2009); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1515 (TTAB 2009).
5. See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties).
6. See Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
7. See Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995).
8. See Fed. R. Civ. P. 56(c)(2); Fed. R. Civ. P. 56(c)(2) Advisory committee notes (2010 amendment) ("Subdivision (c)(2) provides that a party may object that material cited to support or dispute a fact cannot be presented in a form that would be admissible in evidence. … There is no need to make a separate motion to strike.").
9. See Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1115 n.10 (TTAB 2011) (evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of such motion); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB 2008); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB 2008); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993) (declaration of witness submitted in connection with summary judgment motion was part of record for trial where witness identified and attested to accuracy of it during applicant’s testimony period); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983) (affidavit offered with response to motion for summary judgment became part of trial record when witness identified it during testimony deposition and adverse counsel cross-examined witness about statements in the affidavit); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981) (material in support of untimely summary judgment motion not trial evidence absent agreement of parties).
10. See, e.g., Frito-Lay N. America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951 (TTAB 2014) (parties stipulated that they could rely at trial on materials submitted in support of and against each party’s motion for summary judgment), on appeal, No. 14-1517 (Fed. Cir.); 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));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).
11. See, e.g., 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).