702.04(d) ACR using Stipulated Record and Trial Briefs
Under the stipulated record and trial briefs ACR model, the case proceeds to final decision on an evidentiary record that has been stipulated to, in whole or in substantial part. Thus, the parties must be prepared to stipulate to the admissibility of most of the record. They may, however, reserve the right to object in trial briefs on substantive grounds to particular evidence such as on the grounds of competency, relevancy or materiality. Testimony periods may not be needed for cases prosecuted on the stipulated record model (with or without stipulated facts), if the evidentiary record has been stipulated to by the parties. [ Note 1.] Essentially, the parties are agreeing to an abbreviated trial on the merits.
Just as with any non-ACR case, the Board will decide disputed facts as part of the final decision.
The Board has found that cases that proceed along the ACR stipulated record model, involving many stipulated facts and stipulated evidence, yield highly effective records because evidentiary submissions are focused on the disputed facts. Stipulations of fact are useful but are not required in an ACR case prosecuted on a stipulated record.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions. However, by limiting the number or duration of testimonial depositions, they may realize additional savings in cost and time. They may also agree to use discovery depositions at trial or to introduce testimony by affidavit or declaration, with the non-offering party reserving the right to cross-examine the witness in a later testimonial deposition.
Parties using this form of ACR and who agree to forgo the testimony period should file a stipulation indicating such an intention, along with their stipulations to the record with respect to facts, evidence and testimony (e.g., testimony by affidavit, using discovery depositions in lieu of testimonial depositions). [ Note 2.]
The stipulations regarding the submission of evidence remove any question about the admissibility of the evidence, and the parties may reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality. [ Note 3.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 4.]
The parties are limited to 55 pages for the ACR trial briefs under the stipulated record model, inclusive of table of contents, index of cases, description of the record, statement of issues, recitation of the facts, argument and summary. [ Note 5.] Unless counterclaims are involved, only plaintiff is entitled to file a reply which is limited to 25 pages. [ Note 6.] A reply brief is limited to a rebuttal of the adverse party’s case in chief.
For additional information regarding stipulated evidence and ACR, see TBMP § 705.
NOTES:
1. See, e.g., Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties selected ACR and agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and agreed to forgo trial).
2. See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re stipulation, from notice to briefing less than a year, resulting in clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), on appeal, No. 14-CV-4463 (D. Minn.); 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); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and stipulated to forgo trial); Zimmerman v. National Association of Realtors, 70 USPQ2d 1425, 1427 (TTAB 2004) (in addition to reliance on a discovery deposition of one of the parties, the parties stipulated that the evidentiary record from an earlier Board case would be considered); Devries v. NCC Corporation, 227 USPQ 705, 708 (TTAB 1985) (parties stipulated to waive trial periods and stipulated to the following: petitioner's pleaded registration; each party's responses to certain interrogatories and requests for production of documents served upon it by the other party; and stipulated facts and affidavit testimony, with attached exhibits).
But see Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (parties who stipulated to certain facts and issues, yet also submitted evidence to prove these points, have gone to needless effort and expense and the Board unnecessarily must review this evidence).
3. . See Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties agreed to reserve the right to object to facts and documents on the bases of relevance, materiality and weight).
4. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating affidavit and exhibits thereto into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv- 10488 (S.D.N.Y. Dec. 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013).
But see Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561 (TTAB 2014) (parties’ stipulation provided for the admission into evidence of specific dated expert reports and accompanying exhibits and an expert discovery deposition transcript, but did not provide for the admission into evidence of any supplemental expert reports or additional expert testimony by affidavit or declaration, in view thereof, supplemental expert report not admissible on this basis).