528.05(b) Affidavits and Accompanying Exhibits
Fed. R. Civ. P. 56(c)(4) Affidavits or Declarations. An affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated.
Affidavits may be submitted in support of, or in opposition to, a motion for summary judgment provided that they (l) are made on personal knowledge; (2) set forth such facts as would be admissible in evidence; and (3) show affirmatively that the affiant is competent to testify to the matters stated therein. This is so even though affidavits are self-serving in nature, and even though there is no opportunity for cross-examination of the affiant. However, an adverse party may have an opportunity for direct examination of the affiant, if a Fed. R. Civ. P. 56(d) motion to take the discovery deposition of the affiant is made and granted. [ Note 1.] See TBMP § 528.06.
The Board may permit affidavits submitted in connection with a summary judgment motion to be supplemented or opposed by depositions, answers to interrogatories, or further affidavits. [ Note 2.]
Documents submitted with a summary judgment affidavit, but not identified therein, cannot be considered as exhibits to the affidavit. [ Note 3.] An affidavit that is not supported by documentary evidence may nevertheless be given consideration if the statements contained in the affidavit are clear and convincing in character, and uncontradicted. [ Note 4.]
In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 C.F.R. § 2.20. [ Note 5.]
Although submissions to the Board by external storage media or devices (e.g., CD-ROM, flash drives, etc.) are not permitted, (see TBMP § 106.03), exhibits to affidavits consisting of recordings of commercials, demonstrations, etc., may be transferred to an appropriate electronic format such as a DVD or CD for submission to the Board. See, e.g., TBMP § 703.01(i). Flash drives are not accepted because of the security risks to USPTO systems, including the potential for introduction of viruses and worms.
NOTES:
1. See Fed. R. Civ. P. 56(c)(4). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (moving party’s affidavit and other evidence were not contradicted by nonmoving party); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1578 (TTAB 2015) (Fed. R. Civ. P. 56(c)(4) allows testimony from personal knowledge based on review of files and records or position with company, and Board may not consider portions of affidavit or declaration not based on personal knowledge); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1864 n.8 (TTAB 2007) (self-serving declaration permissible on summary judgment despite absence of opportunity for cross-examination of declarant); Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1217 (TTAB 2007) (declaration submitted with summary judgment motion clarifies discrepancies in discovery deposition); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (use of standard language in declaration did not raise genuine issue as to personal knowledge); C & G Corp. v. Baron Homes, Inc., 183 USPQ 60, 60 (TTAB 1974) (affidavit is competent evidence); John T. Clark Co. v. Colgate-Palmolive Co., 176 USPQ 93, 94 (TTAB 1972) (affidavit was not made on personal knowledge and there was no foundation for statements made therein); 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (issue of credibility raised as to one affiant but statements by another affiant were competent and uncontradicted and suspicion alone is insufficient to invalidate).
2. See Fed. R. Civ. P. 56(c). See also Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1517 (TTAB 1993) (additional affidavit submitted with reply brief considered).
3. See Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1030 n.9 (TTAB 1988) (documents were related to information given in affidavit, but were not specifically identified therein).
4. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1736 (TTAB 2001) (opposer’s declaration, while not accompanied by any documentary evidence, was internally consistent, not characterized by uncertainty and was unchallenged by applicant); 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (fact that allegations in affidavit not supported by invoice does not undermine the testimony when uncontradicted). Cf., e. g., with respect to testimony depositions, Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 307 n.1 (TTAB 1979); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976); Clubman’s Club Corp. v. Martin, 188 USPQ 455, 458 (TTAB 1975); Rite Aid Corp. v. Rite-Way Discount Corp., 182 USPQ 698, 702 n.5 (TTAB 1974), aff’d, 508 F.2d 828, 184 USPQ 351 (CCPA 1975).
5. Fed. R. Civ. P. 56(c)(4). See 37 C.F.R. § 2.20. See also Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).
6. See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM), on appeal, No. 14-CV-4463 (D. Minn.).