702.04(a) In General
Accelerated Case Resolution ("ACR") is an alternative to typical Board inter partes proceedings with full discovery, trial and briefing, in which parties to a Board proceeding can obtain a determination of the claims and defenses in their case in a shorter time period than contemplated in the typical Board proceeding. The form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for summary judgment and accompanying evidentiary submissions that the parties agree to submit in lieu of creating a traditional trial record [ Note 1.] and traditional briefs at final hearing. Other approaches to accelerating resolution of a case include simplifying proceedings through the use of fact stipulations and stipulations regarding the admissibility of certain evidence. [ Note 2.] Oral hearings generally are available in ACR cases in accordance with 37 CFR § 2.129(a). See TBMP § 802. If parties agree to conduct the case as an ACR case and to utilize the bench trial or cross-motions for summary judgment model, and the Board approves trial of the case by ACR, the Board generally will render a final decision within fifty (50) days following the completion of briefing.
By reducing the complexity of a case and total time expended in litigating a case, ACR is a more efficient and economical alternative to the typical Board inter partes proceeding. Not all Board cases involve complicated or disputed facts or require the full discovery and trial periods set out by the Trademark Rules, to arrive at a final determination. Parties may thereby save time and expense by focusing only on those issues genuinely in dispute, and opting for ACR early in the proceeding. For example, if the parties stipulate to facts, no time need be spent proving those facts (although there may be some typical costs involved in preparing and exchanging documents and other materials that illustrate for the involved parties that facts are not genuinely in dispute and therefore can be stipulated). When the issues in a proceeding are limited, savings can be even greater, because all aspects of the proceeding, including discovery, trial and briefing, are focused on such limited matters.
The Board is willing to consider almost any claim under ACR unless the complexity or novelty of the facts and/or legal theory of the case requires a full trial. However, the most appropriate cases for ACR are those in which, for example, little discovery is necessary, the parties are able to stipulate to many facts, each party expects to rely on the testimony of one or two witnesses, or the overall record will not be extensive. [ Note 3.] ACR may not be suited to cases that generate a large record, complicated factual or legal issues, or cases where the parties are unwilling to stipulate to any matters (i.e., limitations on discovery or trial schedules, the absence of any genuine dispute about particular facts, or entry of evidence into the record).
ACR presently can be implemented only by consent of the parties and agreement by a Board attorney or judge, and will not be approved by unilateral motion of one party. ACR can also be implemented by all parties accepting an invitation or suggestion from a Board attorney or judge to participate in the process. [ Note 4.] The parties are required to discuss the possibility of using ACR in their discovery conference and may seek the assistance of the Board in structuring their case so that it qualifies for ACR and the Board’s commitment to render a decision within fifty days (50) from the completion of briefing. [ Note 5.]
Parties seeking to optimize their chances for early determination of their case and savings in their resources are advised to opt for ACR early in the proceeding. To opt for ACR, the parties may jointly file a statement indicating their desire to proceed under ACR along with a proposed modified schedule which may include an abbreviated discovery period and/or briefing period under any form of ACR. The assigned attorney may, and likely will, then convene a conference by telephone to discuss the proceeding with the parties and explore how they wish to proceed under ACR. The parties may seek Board assistance when contemplating ACR to determine which form of ACR to follow and/or determine the discovery, trial and briefing schedule. Any modified discovery, trial and briefing schedule, including limits on discovery or discovery devices or trial, must be negotiated by the parties and approved by the Board. If, however, the parties choose to follow the traditional discovery and trial schedule, but merely wish to stipulate to particular facts or that particular items of evidence shall be considered by the Board, they may so agree and file their written agreement with the Board without need of a conference with a Board attorney. While this approach yields efficiency and savings, since prescribed discovery procedures and discovery and trial schedules are unchanged, a conference with a Board attorney typically would not be necessary.
The parties may limit discovery in a number of ways. For example, parties may limit the number of interrogatories, requests for production and requests for admissions as well as the number and duration of discovery depositions. They may exchange more extensive disclosures in lieu of formal discovery, or stipulate to facts and the exchange of certain documents, or propound interrogatory requests only on particular issues. If the parties are unable to agree on discovery limits, they will not have optimized any cost and time savings available through ACR. When discovery devices (e.g., number of depositions, document requests, or interrogatory requests) are limited, practice is necessarily more focused and cost efficient.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions. 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.
The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding. In either an opposition or cancellation, the burden of proof remains with the plaintiff, who must establish its case by a preponderance of the evidence. [ Note 6.]
A final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions by the Board. [ Note 7.]
Standard options for ACR are available on the Board's home page at http://www.uspto.gov/trademarks/process/appeal/index.jsp. Such options include several possible ACR schedules suggested by the Board and options proposed by stakeholders. Please Note: some options do not allow for an oral argument.
The Board maintains a list of cases in which ACR has been used or other efficiencies have been agreed to, such as stipulations of fact, at http://www.uspto.gov/trademarks/process/appeal/acrcase_list.doc. Parties may review these cases in developing an ACR strategy.
NOTES:
1. See, e.g., Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014), on appeal, No. 14-1517 (Fed. Cir.); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28 (TTAB 2012); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 47 USPQ2d 1953, 1954-55 (2d Cir. 1998).
2. See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); 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.); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated under ACR that they could rely on the materials submitted in support of and against opposer's previously filed motion for summary judgment, that testimony could be submitted by declaration, that pretrial disclosures were not required, and that all evidence may be submitted through declarations or notices of reliance); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) (parties stipulated to the entire record: 13 paragraphs of facts, including applicant’s dates of first use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of applicant’s use, as well as the dates, nature and extent of descriptive use by the opposer’s parent company; the admissibility of business records, government documents, marketing materials and Internet printouts and to forgo trial).
3. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (claim of likelihood of confusion, stipulated to standing, priority, pleaded registration, "lawn seed" and "grass seed" legally identical descriptions of goods).
4. Hewlett-Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1634 n.6 (TTAB 2009) (in granting partial summary judgment, the Board suggested the parties may seek to use ACR on the remaining disputed issues without the need for a formal trial).
5. See 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 n.3 (TTAB 2014) (ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections), on appeal, No. 14-CV-4463 (D. Minn.); 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); Promgirl, Inc. v. JPC Co., 94 UPSQ2d 1759, 1762 (TTAB 2009).
6. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) (party opposing registration bears the burden of proof); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
7. See 37 CFR § 2.145.