504    Motion for Judgment on the Pleadings

504.01    Time for Filing

After the pleadings are closed, but within such time as not to delay the trial, any party to an inter partes proceeding before the Board may file a motion for judgment on the pleadings. [ Note 1.] In Board inter partes proceedings, the submission of notices of reliance, declarations and affidavits, as well as the taking of testimony depositions during the assigned testimony periods corresponds to the trial in court proceedings, and the trial period commences with the opening of the first testimony period. [ Note 2.] Under the Board’s disclosure regime, a party is required to make pretrial disclosures fifteen days prior to the opening of its testimony period. [ Note 3.] Thus, in order to avoid a disruption or delay in the trial phase of a Board proceeding, a motion for judgment on the pleadings must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 4.]

When a motion to dismiss for failure to state a claim upon which relief can be granted is filed after the answer, but before the day of the deadline for plaintiff’s pretrial disclosures, the Board may construe the motion as a motion for judgment on the pleadings. [ Note 5.] Cf. TBMP § 503.01 (Time for Filing Motion to Dismiss).

NOTES:

 1.   Fed. R. Civ. P. 12(c).

 2.   37 C.F.R. § 2.116(e); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1377 (TTAB 1986) (the opening of the plaintiff’s testimony period marks the beginning of the trial period); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (the testimony periods assigned by the Board correspond to a trial in a court proceeding).

 3.   37 C.F.R. § 2.121(e); Fed. R. Civ. P. 26(a)(3).

 4.   Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset."). Cf. 37 C.F.R. § 2.127(e)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE 82 Fed. Reg. 33804 (July 21, 2017) ("The USPTO now amends the rules of practice to make clear that such motions, [i.e., motions to compel, motions to test the sufficiency of responses or objections to requests for admission, or motions for summary judgment], must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (Oct. 7, 2016) ("Under the amended rules motions for summary judgment also have to be filed prior to the deadline for plaintiff’s pretrial disclosures for the first testimony period. This avoids disruption of trial planning and preparation through the filing, as late as on the eve of trial, of motions for summary judgment."); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1377 (TTAB 1986) (summary judgment must be filed prior to the opening of plaintiff’s testimony period); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1300 n.2 (TTAB 1986), aff’d, 831 F.2d 306 (Fed. Cir. 1987); Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718 (TTAB 1985); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 428 n.2 (TTAB 1985); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (summary judgment must not delay trial); Peterson’s Ltd. v. Consolidated Cigar Corp., 183 USPQ 559, 560 (TTAB 1974); Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 182 USPQ 572, 572-73 (Comm’r 1974).

 5.   Fed. R. Civ. P. 12(h)(2)(B); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996); 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) (since motion based on defense that petition fails to state claim, standard for adjudicating motion for judgment on pleading is same as Fed. R. Civ. P. 12(b)(6)).

504.02    Nature of Motion

A motion for judgment on the pleadings is a test solely of the undisputed facts appearing in all the pleadings, supplemented by any facts of which the Board will take judicial notice. [ Note 1.]

For purposes of the motion, all well pleaded factual allegations of the nonmoving party must be accepted as true, while those allegations of the moving party that have been denied (or which are taken as denied, pursuant to Fed. R. Civ. P. 8(b)(6), because no responsive pleading thereto is required or permitted) are deemed false. Conclusions of law are not taken as admitted. [ Note 2.] All reasonable inferences from the pleadings are drawn in favor of the nonmoving party. [ Note 3.]

A judgment on the pleadings may be granted only where, on the facts as deemed admitted, there is no genuine issue of material fact to be resolved, and the moving party is entitled to judgment, on the substantive merits of the controversy, as a matter of law. [ Note 4.]

A party may not obtain a judgment on the pleadings if the nonmoving party’s pleading raises issues of fact, which, if proved, would establish the nonmoving party’s entitlement to judgment. [ Note 5.]

NOTES:

 1.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009), dismissed in favor of a cancellation proceeding, slip op. Opposition No. 91185033 (TTAB September 15, 2011); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1958 (TTAB 2008); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008); Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659, 1660 (TTAB 2008); The Scotch Whisky Association v. United States Distilled Products Co., 13 USPQ2d 1711, 1713 n.1 (TTAB 1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990), dismissed, 18 USPQ2d 1391 (TTAB 1991), rev’d on other grounds, 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991).

 2.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009), dismissed in favor of a cancellation proceeding, slip op. Opposition No. 91185033 (TTAB September 5, 2011); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008); Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659, 1660 (TTAB 2008); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1049 (TTAB 1992); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1368 (3d ed. 2018).

 3.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009), dismissed in favor of a cancellation proceeding, slip op. Opposition No. 91185033 (TTAB September 5, 2011); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008); Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659, 1660 (TTAB 2008); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1049 (TTAB 1992); CBS Inc. v. Mercandante, 23 USPQ2d 1784, 1787 (TTAB 1992); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1368 (3d ed. 2018).

 4.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009), dismissed in favor of a cancellation proceeding, slip op. Opposition No. 91185033 (TTAB September 5, 2011); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008); Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659, 1660 (TTAB 2008); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1049 (TTAB 1992); CBS Inc. v. Mercandante, 23 USPQ2d 1784, 1787 (TTAB 1992); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1367 et seq. (3d ed. 2018).

 5.   Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1049 (TTAB 1992); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983); 5C C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 1368 (3d ed. 2018).

504.03    Matters Outside the Pleadings Submitted on Motion for Judgment on Pleadings

The Board is unlikely to treat a motion for judgment on the pleadings, filed prior to the moving party’s service of initial disclosures and relying on matters outside the pleadings, as a motion for summary judgment. Treatment of a motion for judgment on the pleadings as a motion for summary judgment generally would result in a premature motion for summary judgment if the moving party had not served its initial disclosures prior to filing the motion. [ Note 1.]

If, on a motion for judgment on the pleadings, matters outside the pleading are submitted and not excluded by the Board, the motion will be treated as a motion for summary judgment under Fed. R. Civ. P. 56. [ Note 2.] Ordinarily, the parties to the proceeding will be notified that the motion for judgment on the pleadings is being treated as a motion for summary judgment, and they will be given a reasonable opportunity to present all material made pertinent to such a motion by Fed. R. Civ. P. 56. [ Note 3.]

Such notice may be unnecessary, however, in those cases where the parties themselves clearly have treated a motion for judgment on the pleadings as a motion for summary judgment, and the nonmoving party has responded to the motion on that basis. [ Note 4.]

NOTES:

 1.   37 C.F.R. § 2.127(e)(1). Cf. Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (motion to dismiss not converted to motion for summary judgment).

 2.   Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.2 (TTAB 1998) (matters outside the pleading excluded); DAK Industries Inc. v. Daiichi Kiosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995) (exhibits excluded); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 n.5 (TTAB 1990); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983) (because no matters outside the pleading were included with the motion, it was treated as a motion for judgment on the pleadings, not summary judgment).

 3.   Fed. R. Civ. P. 12(d). Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (Board erred in treating motion to dismiss as motion for summary judgment without notifying nonmoving party); Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 n.9 (TTAB 2016) (Board sua sponte entered summary judgment in favor of non-movant after parties were informed that Board would entertain question of res judicata and were given opportunity to present evidence and argument on that question); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 n.5 (TTAB 1990) (did not convert to a summary judgment because the clear thrust of the motion is that petitioner failed to state a claim upon which relief can be granted); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1042 n.2 (TTAB 1985); Exxon Corp. v. National Foodline Corp., 196 USPQ 444, 445 (TTAB 1977), aff’d, 579 F.2d 1244, 198 USPQ 407 (CCPA 1978).

 4.   Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (nonmoving party did not expect Fed. R. Civ. P. 12(b)(6) motion to be treated as one for summary judgment);Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 1998) (both parties submitted evidentiary materials outside the pleadings in support of and in opposition to a Fed. R. Civ. P. 12(b)(6) motion).