503.01    Time for Filing

When the defense of failure to state a claim upon which relief can be granted is raised by means of a motion to dismiss, the motion must be filed before, or concurrently with, the movant’s answer. [ Note 1.] When the motion is directed to an amended pleading, it must be filed before, or concurrently with, the movant’s answer to the amended pleading. [ Note 2.]

The filing of a motion to dismiss for failure to state a claim upon which relief can be granted tolls the time for filing an answer. [ Note 3.] If the motion is filed before the movant’s answer, and is denied, the Board will reset the time for filing an answer. As a result, the filing of a motion to dismiss for failure to state a claim upon which relief can be granted also effectively stays the time for the parties to conduct their required discovery conference because the pleadings must be complete and issues joined before the conference is held. See TBMP § 316. When a motion to dismiss is denied or is granted but the plaintiff is given leave to serve an amended pleading, the Board will not only reset the time for the defendant to answer but will also reset the discovery conference deadline and other appropriate dates or deadlines. [ Note 4.]

The defense of failure to state a claim upon which relief can be granted may be raised after an answer is filed, provided that it is raised by some means other than a motion to dismiss. For example, the defense may be raised, after an answer is filed, by a motion for judgment on the pleadings, by a motion for summary judgment, or at trial. [ Note 5.]

NOTES:

 1.   Fed. R. Civ. P. 12(b); Hollowform Inc. v. Delma Aeh, 180 USPQ 284, 285 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975). Cf. Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.1 (TTAB 1998) (although a Fed. R. Civ. P. 12(b)(6) motion should be filed prior to, or concurrently with the answer, untimeliness waived where Fed. R. Civ. P. 12(b)(6) motion filed three weeks after answer, but plaintiff responded to motion on the merits).

 2.   William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872 (TTAB 1994) ("Just as a motion to dismiss can be interposed in response to an original pleading, so too can it be interposed in response to an amended pleading").

 3.   Hollow form, Inc. v. Delma Aeh, 180 USPQ 284, 286 (TTAB 1973) (motion for default judgment for failure to answer denied), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).

 4.   Cf. 37 CFR § 2.120(a)(2)  and 37 CFR § 2.127(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007) ("Because disclosure is tied to claims and defenses, in general, a defendant’s default or the filing of various pleading motions under Federal Rule 12 will effectively stay the parties’ obligations to conference and, subsequently, make initial disclosures.").

 5.   Fed. R. Civ. P. 12(h)(2); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (construed as motion for judgment on the pleadings); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE Civil 3d §1357 (2014). Cf., Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995) (Fed. R. Civ. P. 12(b)(6) permits defendant to assert in answer "defense" of failure to state a claim thereby allowing plaintiff to test sufficiency of defense by moving under Fed. R. Civ. P. 12(f) to strike the defense). Cf. NSM Resources Corp. v. Microsoft Corp. 113 USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any insufficiently pleaded pleading).