502.02(a) Form of Motions
Every motion must be submitted in written form and must meet the general requirements for submissions to the Board set forth in 37 CFR § 2.126. The requirements for paper submissions are specified in 37 CFR § 2.126(a), the requirements for electronic submissions over the Internet can be found in 37 CFR § 2.126(b), and the requirements for confidential submissions are in 37 CFR § 2.126(c). Additional information regarding electronic submissions made through ESTTA (Electronic System for Trademark Trials and Appeals)may be found at the USPTO website (http://www.uspto.gov) by accessing the "Trademark Trial and Appeal Board" portion of that site. See also TBMP § 106.03.
In addition, a motion should bear the name and number of the inter partes proceeding in connection with which it is being filed, and a title describing the nature of the motion. See TBMP § 106.01. A party who files a motion that does not bear the correct proceeding number, runs the risk that the paper will not be associated with the proceeding for which it is intended (and hence may never be considered by the Board). [ Note 1.]
A motion must be signed by the party filing it, or by the party’s attorney or other authorized representative. If a motion is unsigned, it will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 2.] See TBMP § 106.02 (Signature of Submissions).
The certificate of mailing by first-class mail procedure provided under 37 CFR § 2.197, and the Priority Mail Express® procedure provided under 37 CFR § 2.198, are both available for the filing of motions. [ Note 3.] See TBMP § 110 and TBMP § 111. Parties are not permitted to file motions via email except at the request of the Board attorney or judge. ESTTA is the only available procedure for electronic filing. In fact, the ESTTA system is the most efficient way to file motions.
When a party files a motion electronically through ESTTA, the filing is time-stamped with the official filing date when the ESTTA filing, including any required fee, is received by the Board server. Eastern Time controls the filing date, and the time the transmission began is not a factor in determining the filing date. The official filing date and time are found on the confirmation web screen and the party’s email confirmation. Once the electronic filing is submitted, the Board immediately transmits an email filing receipt. If the filing party does not receive the email filing receipt within 24 hours (or by the next business day), the filing party should contact the Board. For technical assistance with an ESTTA filing, a party may call the Board with questions at (571) 272-8500 or (800) 786-9199 (toll free); or may send an email to ESTTA@uspto.gov. The Board should respond to the inquiry within two (2) business days. When contacting the Board for ESTTA assistance please describe the nature of the problem and include the ESTTA tracking number which should appear on the computer screen after transmission. See TBMP § 106.03.
Except when filing extensions of time to oppose or oppositions to Madrid Protocol applications, ESTTA filing is optional. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper. See TBMP § 107, TBMP § 110 and TBMP § 111.
A party should file only one copy of a motion with the Board. It is not necessary to file a paper copy of a motion that has been filed electronically. Every motion filed with the Board must be served upon every other party to the proceeding, and proof of such service ordinarily must be made before the motion will be considered by the Board. [ Note 4.] See TBMP § 113 (Service of Papers). If service is made by first class mail, Priority Mail Express® or overnight courier, additional time (5 days) is provided to take action. 37 CFR § 2.119(c). The parties may stipulate to service by email or fax. [ Note 5.] If the parties stipulate to service by email or fax, 37 CFR § 2.119 (c) allowing an additional 5 days to take an action, does not apply because 37 CFR § 2.119(c) does not address service by email or fax. See TBMP § 113.05.
NOTES:
1. See Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007) (applicant did not separately caption her motion to amend the filing basis of the application at issue; rather she incorporated it into her response to opposer’s motion for summary judgment. The better practice is either to file such a motion as a separate filing or, at a minimum, to caption it separately).
3. 37 CFR § 2.197; 37 CFR § 2.198.