801.02 Time for Filing
37 C.F.R. § 2.128 Briefs at final hearing.
- (a)(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after the date set for the close of rebuttal testimony. The brief of the party in the position of defendant, if filed, shall be due not later than thirty days after the due date of the first brief. A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant’s brief.
- (a)(2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Trademark Trial and Appeal Board will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal brief by the parties.
- (a)(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to file a response to the order, or files a response indicating that plaintiff has lost interest in the case, judgment may be entered against plaintiff. If a plaintiff files a response to the order showing good cause, but does not have any evidence of record and does not move to reopen its testimony period and make a showing of excusable neglect sufficient to support such reopening, judgment may be entered against plaintiff for failure to take testimony or submit any other evidence.
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801.02(a) Plaintiff’s Main Brief
The main brief of the party in the position of plaintiff is due not later than 60 days after the date set for the close of the rebuttal testimony period. [ Note 1.]
If a party in the position of plaintiff fails to file a main brief, the Board may issue an order allowing plaintiff until a set time, not less than 15 days, in which to show cause why its failure to file a main brief should not be treated as a concession of the case. If the plaintiff fails to file a response to the order, or files a response indicating that it has lost interest in the case, judgment may be entered against the plaintiff. [ Note 2.] The purpose of this order to show cause procedure is to save the Board the burden of determining a case on the merits where the parties have settled, but have neglected to notify the Board, or where the plaintiff has lost interest in the case. It is the policy of the Board not to enter judgment against a plaintiff, for failure to file a main brief on the case, where the plaintiff, in its response to the show cause order, indicates that it has not lost interest in the case. However, even if the Board discharges the show cause order because the plaintiff files a response indicating that it has not lost interest in the case, if the plaintiff does not have any evidence of record, and does not file a motion to reopen its testimony period and make a sufficient showing of excusable neglect to support such reopening, the Board still may enter judgment against plaintiff for failure to take testimony or submit any other evidence. [ Note 3.]
For further information concerning the 37 C.F.R. § 2.128(a)(3) order to show cause procedure, see TBMP § 536. For information on reopening time, see TBMP § 509.
NOTES:
2. 37 C.F.R. § 2.128(a)(3). See CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302 (TTAB 1999) (opposer’s failure to respond to order to show cause under 37 C.F.R. § 2.128 resulted in entry of judgment).
3. 37 C.F.R. § 2.128(a)(3). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("This final rule codifies case law and Board practice under which the Board may sua sponte grant judgment for the defendant when the plaintiff has not submitted evidence, even where the plaintiff has responded to the Board’s show cause order for failure to file a brief but has either not moved to reopen its trial period or has not been successful in any such motion.") (citing Gaylord Entertainment Co. v. Calvin Gilmore Productions, Inc., 59 USPQ2d 1369, 1372 (TTAB 2000)).
801.02(b) Defendant’s Main Brief
The filing of a brief on the case is optional, not mandatory, for a party in the position of defendant. [ Note 1.]
However, if a party in the position of defendant wishes to file a brief on the case, the brief is due not later than 30 days after the due date of the plaintiff’s main brief. [ Note 2.] For information on extensions of time, see TBMP § 509.
NOTES:
2. 37 C.F.R. § 2.128(a)(1). See also Ariola-Eurodisc Gesellschaft v. Eurotone International Ltd., 175 USPQ 250, 250 (TTAB 1972) (uncontested motion to strike brief filed three weeks after due date granted).
801.02(c) Plaintiff’s Reply Brief
The filing of a reply brief is optional for a party in the position of plaintiff. [ Note 1.]
If a party in the position of plaintiff wishes to file a reply brief, the brief is due not later than 15 days after the due date of the defendant’s main brief. [ Note 2.] However, if the defendant has not filed a main brief, any reply brief filed by the plaintiff may not be considered because there is nothing to which it could reply.
NOTES:
801.02(d) Reply Brief for Defendant Not Permitted
There is no provision for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party in the position of defendant. If a party in the position of defendant files such a brief, it may be stricken, or given no consideration, by the Board. TBMP § 539. The party in the position of defendant may counter any arguments raised in plaintiff’s reply brief during oral argument. [ Note 1.]
However, if a defendant has counterclaimed to cancel a registration owned by the plaintiff, the defendant, as plaintiff in the counterclaim, may file a reply brief directed to the counterclaim. TBMP § 801.02(e).
NOTES:
1. United Foods Inc. v. United Airlines Inc., 33 USPQ2d 1542, 1542 (TTAB 1994) (respondent may counter any arguments raised in petitioner’s reply brief during oral argument).
801.02(e) Special Situations
In certain special situations, the Board will set, by written action, the due dates for the filing of briefs on the case. This occurs when (1) there is a counterclaim, (2) proceedings have been consolidated, and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or (3) there is an interference or a concurrent use registration proceeding involving more than two parties. [ Note 1.]
For example, if there is a counterclaim, the Board will issue an order setting the due dates for plaintiff’s main brief in the original proceeding (due the 60th day after the date set for the close of rebuttal testimony); defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim (due the 30th day after the due date of the plaintiff's main brief); plaintiff's combined reply brief in the original proceeding and its brief as defendant in the counterclaim (due the 30th day after the due date of defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim); and defendant’s reply brief as plaintiff in the counterclaim (due the 15th day after the due date of plaintiff’s combined reply brief in the original proceeding and brief as defendant in the counterclaim). Combined briefs may not exceed the page limit for a brief. [ Note 2.] See the TBMP Appendix of Forms for a sample briefing trial order with a counterclaim.
In an interference or concurrent use registration proceeding, the Board will schedule briefing periods so that each party in the position of plaintiff will have a period for filing a main brief on the case, each party in the position of defendant will have a period for filing a main brief in which it may respond to the brief of each plaintiff, and each party in the position of plaintiff will have a period for filing a reply brief. [ Note 3.] See TBMP § 1007 and TBMP § 1109.
If a reviewing court vacates and/or remands a final decision for further proceedings, the Board has the discretion to order rebriefing of the case. [ Note 4.]
NOTES:
2. Cf. Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (one cannot exceed the page limitation for a brief by combining an opposition brief and a cross-motion addressing the same issue).
4. See, e.g., Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1186 (TTAB 2017) (on remand from the Federal Circuit for further proceedings, Board ordered the parties to rebrief the case on the original record), on appeal sub nom Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., No 3:17-CV-00652 (W.D.N.C. November 6, 2017).