801.03 Form and Contents of Brief
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
37 C.F.R. §2.128(b) Briefs at final Hearing. Briefs must be submitted in written form and must meet the requirements prescribed in § 2.126. Each brief shall contain an alphabetical index of cases cited. Without prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed fifty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary; and a reply brief shall not exceed twenty-five pages in its entirety. Evidentiary objections that may properly be raised in a party’s brief on the case may instead be raised in an appendix or by way of a separate statement of objections. The appendix or separate statement is not included within the page limit. Any brief beyond the page limits and any brief with attachments outside the stated requirements may not be considered by the Board.
A brief on the case must be submitted in written form and must meet the general requirements for submissions to the Board specified in 37 C.F.R. § 2.126. A party must file a brief on the case electronically through ESTTA. See TBMP § 110 for further information regarding ESTTA. The requirements for electronic filing are set out in 37 C.F.R. § 2.126(a). [ Note 1.] See TBMP § 106.03 for further information regarding the form of submissions.
If ESTTA is unavailable due to technical problems, or if extraordinary circumstances exist, a party may file a brief on the case in paper form. The requirements for paper filing are set forth in 37 C.F.R. § 2.126(b). A brief filed in paper form must include a written explanation of such technical problems or extraordinary circumstances, or it will not be considered. [ Note 2.]
In addition to the general requirements for submissions to the Board, briefs at final hearing are also subject to the page limitations specified in 37 C.F.R. § 2.128(b). The Board may not consider briefs exceeding the page limit. [ Note 3.]
As provided in 37 C.F.R. § 2.128(b), without prior leave of the Board, a main brief on the case may not exceed 55 pages in length in its entirety, and a reply brief may not exceed 25 pages in its entirety. The parts of the brief that fall within the length limit include the table of contents, index of cases, description of the record, statement of the issues, recitation of facts, argument, and summary. Extensive single-spaced footnotes may not be used as a subterfuge to avoid the page limit. [ Note 4.] Exhibits or appendices to a brief, not being part of the brief itself, are not included within the page limit. [ Note 5.] In addition, evidentiary objections that may properly be raised in a party’s brief on the case may instead be raised in an appendix or by way of a separate statement of objections. The appendix or separate statement is not included within the page limit. [ Note 6.] Nevertheless, appendices to a brief may not be used to avoid the page limitation. [ Note 7.]
For information concerning motions for leave to file a brief exceeding the page limit, see 37 C.F.R. § 2.128(b) and TBMP § 537.
The brief must contain an alphabetic index of all cited cases. When cases are cited in a brief, the case citation should include a citation to The United States Patents Quarterly (USPQ), if the case has appeared in that publication. [ Note 8.] See TBMP § 101.03 for further information on decisional law. The Board permits, but does not encourage, the citation of non-precedential final decisions. A decision that is not designated as precedential is not binding on the Board, but may be cited for whatever persuasive value it might have. If a non-precedential decision does not appear in the USPQ or TTABVUE, the citing party should append a copy of the decision to the motion or brief in which the decision is cited. [ Note 9.] See TBMP § 101.03.
While parties may cite relevant cases from any jurisdiction, the Board relies primarily on precedent from the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit"), not only because the Federal Circuit is the Board’s primary reviewing court, but also because its cases address registration issues more specifically. [ Note 10.] See TBMP § 101.03.
The description of the record should comprise a list of the evidence properly introduced by the parties, such as, "The evidence of record consists of Opposer’s Registration No. 1,234,567; Applicant’s answers to opposer’s interrogatories; the discovery deposition of Mr. X; and the testimony depositions of opposer’s witnesses, Mr. Y and Ms. Z." For each significant fact recited, the recitation of facts should include a citation to the portion of the evidentiary record where supporting evidence may be found. When referring to the record in an inter partes proceeding before the Board, parties should include a citation to the TTABVUE entry and page number (e.g., 1 TTABVUE 2) to allow the reader to easily locate the cited materials. [ Note 11.] For information regarding citation in ex parte appeals, see TBMP § 1203.01.
If a mark that is the subject of, or is pleaded in, a proceeding includes stylization or a design feature, a reproduction of the mark should be included in the brief on the case.
If a plaintiff files a reply brief, the brief must be confined to rebutting the defendant’s main brief. In other words, the reply brief shall be limited to the key points in defendant’s brief which plaintiff believes require clarification or response.
Confidential information. Except for materials filed under seal pursuant to a protective order, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public viewing on the USPTO web site via TTABVUE at http://ttabvue.uspto.gov/. [ Note 12.] See TBMP § 412.05 for further information on handing of confidential materials by the Board. In accordance with 37 C.F.R. § 2.126(c), a party who submits a brief containing confidential information under seal or designated as confidential in ESTTA must submit the brief using the "Confidential" selection in ESTTA or, where appropriate, under a separate paper cover. The party must mark both the submission and its cover "confidential," and must identify the case number and parties. The party must also concurrently submit for the public record a redacted version of the brief. [ Note 13.] For material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the parties should include TTABVUE entry and page numbers for both the redacted and confidential versions of the brief. [ Note 14.]
In addition, in the confidential brief, parties are strongly encouraged to enclose confidential information in brackets to better mark the specific information to be kept confidential. This facilitates a better comparison between the public and confidential versions of the briefs when the Board is preparing a final decision, and will reduce the possibility of the Board inadvertently including confidential information in a final decision. See TBMP § 110 and TBMP § 412.04 for further information on filing confidential material using ESTTA, and TBMP § 120.02 for further information on confidential materials in general.
The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 15.] For further information on protective orders, see TBMP § 412.
When necessary to articulate the reasoning of the Board decision, the Board may treat as not confidential material which cannot reasonably be considered confidential, notwithstanding a party’s designation. [ Note 16.] For further information regarding confidential materials see TBMP § 120.02 and TBMP § 412.
NOTES:
1. 37 C.F.R. § 2.126(a) codifies the use of electronic filing. The Board does not accept briefs filed on CD or DVD, but continues its current practice of accepting a CD or DVD as an exhibit to a deposition where the proffering party authenticates and introduces audio and/or video evidence, such as commercials. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
2. See 37 C.F.R. § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
4. Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 1992) (warned that single-spaced footnotes containing substantial discussion may be viewed as a subterfuge to avoid page limit).
5. See 37 C.F.R. § 2.128(b); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (raising evidentiary objections in appendices was not viewed as subterfuge to avoid page limit), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same); United Foods Inc. v. United Air Lines Inc., 33 USPQ2d 1542, 1543 (TTAB 1994) (motion to file 30-page reply brief denied as unnecessary where main brief was 18 pages and responsive brief was 37 pages); and Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 1992).
6. See 37 C.F.R. § 2.128(b); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (appropriate evidentiary objections may be raised in appendix or separate submission rather than in text of brief), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992).
7. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (appendices may not be used as a subterfuge to avoid the page limitation), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same).
8. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (include citation to the USPQ if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009).
9. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice); Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (January 23, 2007).
10. Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 n.2 (TTAB 2008).
11. Cf. 37 C.F.R. § 2.142(b)(3). RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 (TTAB 2018) (Board prefers citation to the TTABVUE record); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) (same).
12. 37 C.F.R. § 2.27(d) ("The official records of applications and all proceedings relating thereto are available for public inspection". . . .) and 37 C.F.R. § 2.27(e) (filing and handling of confidential matter). See, e.g., Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).
13. 37 C.F.R. § 2.126(c); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000) (redacted copy deleting confidential matters must be filed). See also Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913 (TTAB 2015) (entry of confidential exhibits and briefs in ACR case).
14. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).
16. 37 C.F.R. § 2.116(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision. See, e.g., Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014).").