528.05(a)   

528.05(a)(1)    In General

The types of evidence that may be submitted in support of, or in opposition to, a motion for summary judgment include "depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials," affidavits or declarations, and other materials in the record. [ Note 1.]

The evidentiary record upon summary judgment in an inter partes proceeding before the Board also includes, without action by any party, the pleadings, the file of any application or registration that is the subject of the proceeding as provided in 37 C.F.R. § 2.122(b)  [ Note 2.] and a copy of any registration pleaded and made of record by the plaintiff with its complaint, in the manner prescribed in 37 C.F.R. § 2.122(d)(1). In addition, a party may make of record, for purposes of summary judgment; copies of other registrations; disclosure materials; documents or things produced in response to a request for production; official records, if competent evidence and relevant to an issue; printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public that is relevant under an issue, if the publication is competent evidence and relevant to an issue; and testimony from other proceedings, so far as relevant and material. [ Note 3.] Additionally, a party may make of record documents obtained during settlement negotiations so long as those documents are otherwise discoverable. [ Note 4.] A party need not submit these materials under a notice of reliance in order to make them of record for purposes of a summary judgment motion. Rather, the materials may be submitted as attachments or exhibits to a party’s brief or affidavit in support of the motion. Cf. TBMP § 700.

In addition, the Board may grant a party’s request or otherwise exercise its discretion to take judicial notice of appropriate dictionary definitions, translations, and other facts that are germane to a summary judgment motion. [ Note 5.] See TBMP § 704.12. The parties further may bring to the attention of the Board supplemental legal authority issuing after briefing of the summary judgment motion, e.g., a precedential decision from the Federal Circuit or Board that is relevant to the issues under consideration, along with a brief description of its significance. [ Note 6.] However, such a submission may not be used as a subterfuge to avoid the prohibition on filing surreplies or further briefing of such motions.

In a Board proceeding, the only evidentiary materials likely to be already of record when a motion for summary judgment is filed are the pleadings, the file of any application or registration that is the subject matter of the proceeding [ Note 7.], and any registration pleaded and made of record by the plaintiff with its complaint. Any other evidence that a party wishes to have considered upon summary judgment must usually be submitted in connection with the summary judgment motion. [ Note 8.]

Because it is not the practice of the Board to make evidentiary rulings prior to briefing and determination of summary judgment motions, the Board will not entertain a motion in limine to preclude a party from presenting certain types or categories of evidence at summary judgment or, for that matter, at trial. [ Note 9.] See TBMP § 527.01(f). Objections to evidence may be made in a party’s responsive brief, if one is permitted. [ Note 10.]

Evidence submitted in connection with a motion for summary judgment is ordinarily of record only for purposes of that motion. If the case goes to trial, the summary judgment evidence may not form part of the evidentiary record to be considered at final hearing unless it is properly introduced in evidence during the appropriate testimony period. [ Note 11.] However, the parties may stipulate that any or all of the summary judgment evidence be treated as properly of record for purposes of final decision. [ Note 12.] Moreover, the parties may, if they so desire, stipulate that the summary judgment motion and evidence be treated as the final record and briefs in the case. [ Note 13.] See TBMP § 528.05(a)(2).

NOTES:

 1.   Fed. R. Civ. P. 56(c)(1)(A).

 2.   See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties). See also Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1507 n.221 (TTAB 2017) (entire opposed application file is automatically part of the record in an opposition proceeding), appeal dismissed, No. 1:17-CV-00345 (E.D. Va. Aug. 24, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 (TTAB 2010) (record includes pleadings and file of the opposed application).

 3.   See 37 C.F.R. § 2.122(b), 37 C.F.R. § 2.122(d)(2), 37 C.F.R. § 2.122(e), 37 C.F.R. § 2.122(f), and 37 C.F.R. § 2.127(e)(2). See also Raccioppi v. Apogee Inc., 47 USPQ 1368, 1369-70 (TTAB 1998) (party may rely on documents admissible under 37 C.F.R. § 2.122(e)).

 4.   See Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930-31 (TTAB 2015) (Fed. R. Evid. 408(a) does not preclude use of documents because they are provided during the course of compromise negotiations if the evidence is otherwise discoverable).

 5.   See generally University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 (TTAB 2009); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1515 (TTAB 2009).

 6.   See Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016) (party may bring supplemental legal authority to the attention of the Board after briefing of a summary judgment motion).

 7.   See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties).

 8.   See Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).

 9.   See Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995).

 10.   See Fed. R. Civ. P. 56(c)(2); Fed. R. Civ. P. 56(c)(2) Committee Notes on Rules - 2010 amendment ("Subdivision (c)(2) provides that a party may object that material cited to support or dispute a fact cannot be presented in a form that would be admissible in evidence. … There is no need to make a separate motion to strike.").

 11.   See Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1115 n.10 (TTAB 2011) (evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of such motion); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB 2008); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB 2008); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994) (declaration of witness submitted in connection with summary judgment motion was part of record for trial where witness identified and attested to accuracy of it during applicant’s testimony period); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983) (affidavit offered with response to motion for summary judgment became part of trial record when witness identified it during testimony deposition and adverse counsel cross-examined witness about statements in the affidavit); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981) (material in support of untimely summary judgment motion not trial evidence absent agreement of parties).

 12.   See, e.g., Frito-Lay N. America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951 (TTAB 2014) (parties stipulated that they could rely at trial on materials submitted in support of and against each party’s motion for summary judgment), vacated on other grounds, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).

 13.   See, e.g., Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986).

528.05(a)(2)    Accelerated Case Resolution (ACR)

Parties to Board inter partes proceedings may stipulate to pretrial final disposition on the merits (as well as abbreviated trial on the merits, see TBMP § 702) of inter partes cases via Accelerated Case Resolution (ACR). [ Note 1.] In that regard, ACR expands upon earlier Board practice allowing parties to stipulate that their summary judgment motions and accompanying evidence be treated as the final record and briefs in a case. [ Note 2.] ACR is available in all cases.

Parties requesting ACR may stipulate to a variety of matters to accelerate disposition of the proceeding, including permitting the Board to resolve issues of fact at summary judgment and to treat the parties’ summary judgment motion papers and evidence as the final record and briefs on the merits of the case. In addition, parties may stipulate to the following: abbreviating the length of the discovery, testimony, and briefing periods as well as the time between them; limiting the number or types of discovery requests or the subject matter thereof; limiting the subject matter for testimony, or limiting the number of witnesses, or streamlining the method of introduction of evidence, for example, by stipulating to facts and introduction of evidence by affidavit or declaration without cross-examination. [ Note 3.]

To optimize ACR efficiencies and streamline the case at final decision, parties should avoid excessive evidentiary objections and those contrary to the parties’ stipulations as well as avoid submission of excessive documentary evidence. [ Note 4.]

Unlike summary judgment decisions, which are interlocutory in nature, the Board’s decision in a proceeding utilizing ACR is final, and thus, is judicially reviewable as set forth in 37 C.F.R. § 2.145. [ Note 5.] See TBMP § 528.01 and TBMP § 901.

Parties may stipulate to ACR at any time during the pretrial phase of the proceeding. Thus, parties that have been in contact prior to commencement of an opposition or cancellation may stipulate to ACR as early as the filing and service of their pleadings. Parties that have not been in prior contact may stipulate to ACR during their discovery conference, or at any time prior to the opening of testimony. Thereafter, parties still may agree to abbreviating trial and briefing schedules, limiting the types and methods of introduction of evidence, and stipulating to facts. [ Note 6.] Oral hearings are available in ACR cases in accordance with 37 C.F.R. § 2.129(a). See TBMP § 802.

Parties may stipulate to ACR by informing the Board attorney assigned to their case during a telephone conference or by filing a stipulation. In any event, parties must either alert the assigned attorney by telephone that the parties are seeking ACR, in which case the attorney will issue an order outlining the parties’ agreement, or submit a stipulation in writing memorializing and outlining their agreement. [ Note 7.] Failure to do so may result in delays in implementing ACR and the disposition of the proceeding.

Although ACR generally will be available to any parties seeking to avail themselves of accelerated resolution of their proceedings, the ultimate decision as to whether the parties may proceed by means of ACR lies with the discretion of the Board. In most cases it is anticipated that decisions on ACR cases will be rendered within fifty days of the scheduled due date of a reply brief or hearing. [ Note 8.]

What follows in TBMP § 528.05(b) through TBMP § 528.05(f) is a more detailed discussion of some of the types of evidence that may be submitted in connection with a summary judgment motion, or a case in which the parties seek expedited determination under ACR.

For a further discussion regarding other ACR models, see TBMP § 702.04 and TBMP § 705.

NOTES:

 1.   See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (Board’s first, non-precedential, ACR decision in Opposition No. 91158118 affirmed by Federal Circuit). See also Weatherford/Lamb, Inc. v. C& J Energy Services, Inc., 96 USPQ2d 1834, 1836 (TTAB 2010) (parties stipulated to ACR after filing cross motions for summary judgment); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to ACR). See also Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) ("In order to take advantage of any form of ACR, the parties must stipulate that the Board may resolve any genuine disputes of material fact in the context of something less than a full trial.").

 2.   See, e.g., Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014) (parties agreed to try case using cross-motions for summary judgment ACR model); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) (after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing), vacated on other grounds, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28, 1830 (TTAB 2012) (parties may stipulate that their cross motions for summary judgment be the ACR record); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Bond v. Taylor, 119 USPQ2d 1049, 1501 (TTAB 2016).

 3.   See 37 C.F.R. § 2.120(a)(2)(iv)  ("The parties may stipulate to a shortening of the discovery period."); Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913 (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); 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); Brooks v. Creative Arts by Calloway LLC, 93 USPQ2d 1823, 1825-26 (TTAB 2009) (parties stipulated to 14 paragraphs of facts, submission of testimony of certain witnesses in declaration form, and that sole issue to be decided at final was priority), aff’d on other grounds, Creative Arts by Calloway LLC v. Brooks, 09-cv-10488 (S.D.N.Y. December 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013); Eveready Battery Co. v. Green Planet, Inc. 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to 13 paragraphs of facts). See also Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).

 4.   See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916, (TTAB 2015) (parties utilized ACR process and submitted 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 the number and nature of objections and precedential nature of decision), on appeal, No. 14-CV-4463 (D. Minn.); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873-75 (TTAB 2011) (efficiencies of parties’ stipulations as to evidentiary record defeated by submission of excessive records, more than necessary to establish party’s position; although parties stipulated to testimony by declaration to streamline proceeding, numerous objections to evidence subverted the parties’ stipulations).

 5.   Cf. Copelands’ Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564-65 (Fed. Cir. 1989); Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572, 1579 n.6 (TTAB 2008).

 6.   See Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007).

 7.   See 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); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 (TTAB 2008) (parties must inform Board by stipulation or motion any time they agree to modify their obligations under the rules regarding disclosure and discovery or deadlines involving disclosure, discovery, trial or briefing).

 8.   See 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.).