528.03 Suspension Pending Determination of Motion
37 CFR § 2.127(d) When any party files a motion to dismiss, or a motion for judgment on the pleadings, or a motion for summary judgment, or any other motion which is potentially dispositive of a proceeding, the case will be suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the Board’s suspension order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.
When a party files a timely motion for summary judgment, the Board generally will issue an order suspending proceedings in the case with respect to all matters not germane to the motion. [ Note 1.] The filing of an untimely motion generally will not be considered grounds for suspension. If the motion was untimely filed, the Board, in its discretion, may issue an immediate action denying the motion for that reason. The filing of a summary judgment motion does not, in and of itself, automatically suspend proceedings in a case; rather, proceedings are suspended only when the Board issues an order to that effect. [ Note 2.] However, on a case-by-case basis, the Board may find that the filing of a motion for summary judgment provides a party with good cause for not complying with an otherwise outstanding obligation, for example, responding to discovery requests. [ Note 3.] Notwithstanding, the Board has found that the filing of a motion for summary judgment does not provide a party good cause not to timely comply with a Board order granting discovery sanctions which required the service of complete discovery responses. [ Note 4.]For a discussion regarding suspension of proceedings following the filing of a potentially dispositive motion, see TBMP § 510.03.
Once the Board has suspended proceedings in a case pending the determination of a motion for summary judgment, no party should file any paper that is not germane to the motion. [ Note 5.] Examples of papers which are or may be germane to a motion for summary judgment include a brief in opposition to the summary judgment motion, a motion for an extension of time in which to respond to the summary judgment motion, a motion under Fed. R. Civ. P. 56(d) for discovery needed to enable the nonmoving party to respond to the summary judgment motion, a cross-motion for summary judgment, a motion for leave to amend a party’s pleading or a motion to amend or withdraw requests for admissions. [ Note 6.] See TBMP § 507 (Motion to Amend Pleading), TBMP § 509 (Motion to Extend Time), TBMP § 525 (Motion to Withdraw or Amend Admission), TBMP § 528.06 (Request for Discovery to Respondent to Summary Judgment), and TBMP § 528.07 (Unpleaded Issue).
In addition to tolling the time to respond to outstanding discovery requests, suspension of proceedings tolls the time for parties to make required disclosures.
Extensions of time will not be granted for a motion under Fed. R. Civ. P. 56(d) for discovery or for the moving party to file a reply brief. The Board will consider no further papers beyond a timely reply brief in support of or in opposition to a motion for summary judgment. [ Note 7.]
If the Board’s determination of the summary judgment motion does not dispose of the case, the Board ordinarily will issue an order resuming proceedings. [ Note 8.]
NOTES:
1. See 37 CFR § 2.127(d) and 37 CFR § 2.127(e)(1). See also Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986) (motion to compel deferred pending ruling on summary judgment motion).
2. See Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1135 (TTAB 2010) (mere filing of motion for summary judgment does not automatically suspend proceedings; only an order of the Board formally suspending proceedings has such effect), clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed. Cir. 2011) (however, entry of judgment as a sanction for a party’s failure to abide by the Board’s practice regarding suspension is not supported); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986). Cf. Consultants & Designers, Inc. v. Control Data Corp., 221 USPQ 635, 637 n.8 (TTAB 1984) (filing of motion for entry of default judgment for failure to answer does not automatically suspend proceedings).
3. Cf. Leeds Technologies Limited v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002) (regarding suspension in the case of a motion for judgment on the pleadings);Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999) (regarding suspension in the case of a motion for sanctions in the nature of judgment).
4. See Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1135 (TTAB 2010) (filing of motion for summary judgment one day before Board ordered discovery responses were due, and prior to issuance of Board suspension order, does not establish good cause for failure to comply with discovery obligations under Board order granting discovery sanctions); clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed. Cir. 2011) (because Rule does not expressly state that requirement that no papers be filed does not come into effect when potentially dispositive motion is filed, entry of judgment as a sanction for a party’s failure to abide by the Board’s practice regarding suspension is not supported; but entry of judgment as discovery sanction may be considered).
5. See 37 CFR § 2.127(d). See also Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (motion for discovery sanctions not considered).
6. See International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603-04 (TTAB 2002) (motion to amend opposition germane inasmuch as it related to the issue of whether applicant’s motion is one for complete or partial summary judgment); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ 1030, 1032 (TTAB 1996) (motion to amend pleading to add new claim); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993) (motion to amend to amplify pleading); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment is a proper filing even after proceeding is suspended).
7. See 37 CFR § 2.127(e)(1).