502.06 Telephone and Pretrial Conferences
502.06(a) Telephone Conferences
37 CFR § 2.120(i)(1) Whenever it appears to the Trademark Trial and Appeal Board that a stipulation or motion filed in an inter partes proceeding is of such nature that its approval or resolution by correspondence is not practical, the Board may, upon its own initiative or upon request made by one or both of the parties, address the stipulation or resolve the motion by telephone conference.
37 CFR § 2.127(a) . . . Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within fifteen days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board.
When it appears to the Board that a motion filed in an inter partes proceeding may be resolved by a telephone conference call involving the parties or their attorneys and a Board judge or attorney, the Board may, upon its own initiative or upon request made by a party, convene a conference to hear arguments on and to resolve the motion by telephone conference. [ Note 1.] Immediately after the resolution of a motion by telephone conference, the Board normally will issue a written order confirming its decision on the motion. Immediate issuance of an order may be deferred, however, if the conference raises issues that require research or additional briefing before they can be resolved.
Board judges and attorneys retain discretion to decide whether a particular matter can and should be heard or disposed of by telephone. The Board may therefore deny a party’s request to hear a matter by telephone conference. There is no formal limit as to the type of matters that can be handled through telephone conferences [ Note 2.], but the Board will not decide by telephone conference any motion which is potentially dispositive, that is, a motion which, if granted, would dispose of a Board proceeding. The telephone conference procedure is particularly useful for resolving motions where time is of the essence, such as a motion to quash a notice of deposition, as well as numerous discovery motions. [ Note 3.] See TBMP § 521 regarding motions to quash a notice of deposition, TBMP § 401.01 and TBMP § 408.01(a) regarding discovery conferences with Board participation, andTBMP § 413.01 regarding telephone conferences for motions relating to discovery. The telephone conference procedure may also be useful in instances where the parties are required to provide a progress report on the status of settlement negotiations as a prerequisite for filing a stipulation or consented motion to further suspend or extend proceedings.
Patent and Trademark Rule 1.2, 37 CFR § 1.2, which requires all business with the USPTO be transacted in writing, is waived to the extent that Board attorneys or judges may accept from parties, or direct parties to present, oral recitations of procedural facts and presentations of argument. In addition, Trademark Rule 2.119(b), 37 CFR § 2.119(b), which specifies the acceptable methods for forwarding service copies of papers filed with the Board, is waived to the extent necessary to facilitate telephone conferencing. [ Note 4.]
Telephone conferences are not a substitute for written consented motions or stipulations. Parties are encouraged to file consented motions or stipulations through ESTTA rather than call the Board for an order that can be agreed upon without the Board’s involvement. Moreover, telephone conferences may not be used as a means to supplement a motion or a related brief, and are not an opportunity to present oral arguments in support of fully briefed written motions unless requested by the Board.
Requesting a telephone conference: A party may request a telephone conference from the assigned Board attorney before it files the underlying motion. The initial contact will be limited to a simple statement of the nature of the issues proposed to be decided by telephone conference, with no discussion of the merits. A party served with a written motion may request a telephone conference by contacting the assigned Board attorney soon after it receives the service copy of the motion so that the responding party will have sufficient time to respond to the motion in the event the request for a telephone conference is denied. A party may not request a telephone conference at or near the end of its time to respond to the motion when its purpose in doing so is to avoid or delay its response to the motion.
During the initial contact, the Board attorney will decide whether any party must file a motion or brief or written agenda to frame the issues for the conference and will issue instructions.
When the Board grants a party’s request for a telephone conference, the requesting party is responsible for scheduling the conference at a time agreeable to all parties and the assigned Board attorney. The party must arrange the conference call. In order to facilitate the scheduling of a telephone conference, parties are required to provide a telephone number and email address where they can be reached during business hours when filing their respective pleadings with the Board. When the Board initiates a telephone conference, the Board attorney will schedule the conference.
The Board may in its discretion require additional written briefing of the motion or decide that additional written briefing is unnecessary. The Board has the discretion to decide the motion by telephone conference prior to the expiration of the written briefing period for filing a response or reply. [ Note 5.] If a response to a pending motion has not yet been filed, the nonmoving party should be prepared to make an oral response to the motion during the telephone conference. Similarly, if a reply in support of a pending motion has not yet been filed, the moving party should be prepared to make its reply during the telephone conference. Any other instructions regarding filing of briefs or serving copies will be provided at the time the Board schedules the conference. To expedite matters, the moving party should file its motion through ESTTA and call the Board attorney to request a telephone conference. This procedure is useful when time is of the essence. Filing a motion through ESTTA followed by a telephone call to the Board attorney is the most efficient way to get a motion to the attention of the Board attorney. ESTTA is more efficient than hand delivery. Filing by facsimile is prohibited. [ Note 6.]
Denial of a request for a telephone conference is without prejudice on the merits of the motion or other matter sought to be heard by telephone. If the request is denied, the Board attorney will provide instructions to the party or parties regarding requirements for filing the motion or briefs required to have the matter decided on the papers.
Conduct of conference. Unless otherwise specified, the telephone conference will be limited to the issues defined by the Board prior to, or at the commencement of, the conference. During the conference, the Board has the discretion to consider new oral motions regarding issues that arise during the conference. The Board will not record the conference nor may the parties record of the telephone conference. The Board attorney may make rulings at the conclusion of the conference or may take the parties’ arguments under advisement. If the Board attorney determines during the telephone conference that the motion or matter should be decided on the written record, the Board attorney may halt the telephone conference and direct the filing of a motion or response to a motion, or both.
Parties must conduct themselves with appropriate decorum. Interruptions are to be avoided. The Board attorney conducting the conference generally will signal that a party may make an argument or presentation by inviting the party to do so or by inviting a response to an argument or presentation made by another.
Participation. The conference will involve the parties or their attorneys and a Board attorney. The Board may permit attendance by others, including Board staff and corporate representatives of the parties. If the Board permits a party to have more than one person in attendance, that party must designate a lead person to represent the party in the conference. Failure to participate in a scheduled telephone conference may result in the motion being denied with prejudice, the motion being treated as conceded, issuance of an order to show cause why judgment should not be entered against the non-participating party for loss of interest in the case, or the imposition of sanctions pursuant to the Board’s inherent authority. See TBMP § 527.03 (Inherent Authority to Sanction).
Issuance of Rulings.The Board attorney may make rulings at the conclusion of a telephone conference or may take the parties’ arguments under advisement. In every instance, after the resolution of a motion or matter by telephone conference, the Board attorney will issue a written order containing all rulings. In most instances, the Board’s written order will consist of only a brief summary of the issues and the resulting decision; generally, the order will not include a recitation of the parties’ arguments. The decision will be forwarded to the parties by mail or email, and will be available for the parties to view on the Board’s section of the USPTO website, specifically within the electronic proceeding file for the case (i.e., TTABVUE).
The filing of a request for reconsideration under 37 CFR § 2.127(b) or the filing of a petition under 37 CFR § 2.146(e)(2) will not, in the usual case, result in a stay of proceedings. Any discovery, trial dates, or other deadlines set by the Board will ordinarily remain as set, notwithstanding the request for reconsideration or petition. The Board may, however, reset dates, as appropriate, if either a request for reconsideration or a petition is granted.
NOTES:
1. 37 CFR § 2.120(i)(1). See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1446 (TTAB 2000); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552 (TTAB 1991); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990); Teleconferencing on Cases Before the TTAB, O.G. Notice (June 20, 2000). The Official Gazette Notice describing the telephone conference procedures may be found at the Board home page of the USPTO website under TTAB Phone Conferencing in the Policy and Procedure section.
2. See, e.g., Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1446 (TTAB 2000) (consented request to stay opposer’s rebuttal testimony period pending ruling on opposer’s motion to quash); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999) (motion to quash and motion for discovery sanctions); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552 (TTAB 1991) (motion to attend testimony deposition by telephone); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (uncontested motion to extend testimony period and motion for a protective order).
3. See, e.g., Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999) (to the extent time was of the essence, party could have contacted the Board and requested that the motion to extend discovery be resolved on an expedited basis or by telephone conference); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999); and cases cited in previous note 2.
4. Teleconferencing on Cases Before the TTAB O.G. Notice (June 20, 2000).
5. 37 CFR § 2.127(a). See, e.g., Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1176 (TTAB 2010).
502.06(b) Pretrial Conferences
37 CFR § 2.120(i)(2) Whenever it appears to the Trademark Trial and Appeal Board that questions or issues arising during the interlocutory phase of an inter partes proceeding have become so complex that their resolution by correspondence or telephone conference is not practical and that resolution would be likely to be facilitated by a conference in person of the parties or their attorneys with an Administrative Trademark Judge or an Interlocutory Attorney of the Board, the Board may, upon its own initiative or upon motion made by one or both of the parties, request that the parties or their attorneys, under circumstances which will not result in undue hardship for any party, meet with the Board at its offices for a disclosure, discovery or pre-trial conference.
Because the pretrial conference procedure necessarily involves expense for the parties, it is rarely used by the Board. However, it may be advantageous in cases where numerous complex motions are pending, or where the Board has identified the case as being, or having the potential to be, overly contentious and/or involve creation of excessive records by the parties, or where attorneys or parties are unable to work out a resolution of any of their differences. [ Note 1.] The Board may order the parties and/or their attorneys to appear at its offices for such a conference. [ Note 2.]
For information concerning discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).
NOTES:
1. 37 CFR § 2.120(i)(2). See Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011), on appeal, No. 1:14-cv-01043 (E.D. Va.).
2. See General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1592 n.5 (TTAB 2011) (the Board may exercise its authority to order a pretrial conference in person at the Board’s offices in Alexandria, VA), judgment set aside on other grounds, slip op. 91118482 (TTAB Jan. 22, 2014); ; Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority to require parties to attend a pretrial conference at the Board’s offices in Alexandria, VA) on appeal, No. 1:14-cv-01043 (E.D. Va.); Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) ("under Trademark Rule 2.120(i)(2), where resolution of discovery or other interlocutory issues ‘would likely be facilitated by a conference in person of the parties or their attorneys,’ the Board may ‘request that the parties or their attorneys … meet with the Board at its offices’ for a conference. If the parties remain unwilling or unable to work together cooperatively and efficiently, the Board will not hesitate to invoke this Rule in the future.").