413 Telephone and Pretrial Conferences
413.01 Telephone Conferences for Motions Relating to Discovery
37 C.F.R. § 2.120(j)(1) Whenever it appears to the Trademark Trial and Appeal Board that a stipulation or motion filed in an inter partes proceeding is of such nature that a telephone conference would be beneficial, the Board may, upon its own initiative or upon request made by one or both of the parties, schedule a telephone conference.
37 C.F.R. § 2.127(a) . . . Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. * * * *
When beneficial, a motion or stipulation relating to discovery may be resolved by telephone conference involving the parties and/or their attorneys and a Board attorney or judge. [ Note 1.] Motions relating to discovery include, but are not limited to, motions to compel, motions to quash, and motions for protective orders. Telephone conferences with regard to discovery motions allow for expedient resolution of disputes and encourage greater cooperation amongst the parties by requiring the parties to discuss with a Board professional the issues in dispute. In appropriate cases, the Board may indicate that the filing of a responsive brief to a motion is not necessary since the non-moving party will have an opportunity to present its arguments during the telephone conference. [ Note 2.] The Board may in its discretion also require the parties to contact the attorney assigned to a case prior to filing any motion relating to discovery, and the Board attorney may hold a conference to determine whether filing of a motion is warranted. [ Note 3.]
The telephone conference procedure is not limited to motions or stipulations relating to discovery. A telephone conference may be sought by a party or initiated by a Board professional under any circumstances where a telephone conference would be beneficial, and a Board professional may sua sponte participate in the parties’ discovery conference if it would be useful. [ Note 4.] Phone conferences are not to be recorded. [ Note 5.] For more information concerning the conduct and arrangement of telephone conferences, see TBMP § 502.06.
NOTES:
1. 37 C.F.R. § 2.120(j). See, e.g.,Weatherford/Lamb Inc. v. C &J Energy Services, Inc., 96 USPQ2d 1834, 1836 n.3 (TTAB 2010) (motion for protective order decided by teleconference); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d1175, 1177(TTAB 2010) (motion to compel decided by teleconference).
2. See 37 C.F.R. § 2.127(a). See e.g., Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1177 n.7 (TTAB 2010).
3. See 37 C.F.R. § 2.120(j). See also International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603 n.24 (TTAB 2002) (party prohibited from filing further motions to compel without first obtaining Board permission).
4. See 37 C.F.R. § 2.120(a)(2)(i); 37 C.F.R. § 2.120(j); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).
413.02 Pretrial Conferences
37 C.F.R. § 2.120(j)(2) Whenever it appears to the Trademark Trial and Appeal Board that questions or issues arising during the interlocutory phase of an inter partes proceeding have become so complex that their resolution by correspondence or telephone conference is not practical and that resolution would likely be facilitated by a conference in person of the parties or their attorneys with an Administrative Trademark Judge or an Interlocutory Attorney of the Board, the Board may, upon its own initiative, direct that the parties and/or their attorneys meet with the Board for a disclosure, discovery or pretrial conference on such terms as the Board may order.
While rarely utilized, the Board has the discretion to order the parties to meet in person at the Board’s offices to resolve complex disputes surrounding disclosures and discovery for a pretrial conference. [ Note 1.] The rule is limited to exercise only by the Board, upon the Board’s initiative. [ Note 2.] Conferences are not to be recorded. [ Note 3.] For further information concerning pretrial conferences, see TBMP § 502.06(b).
NOTES:
1. Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority under 37 C.F.R. § 2.120(i)(2), effective January 14, 2017 redesignated by amendment to 37 C.F.R. § 2.120(j)(2), and ordered the parties to appear in person at the office of the Board); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.5 (TTAB 2011) ("where the Board identifies overly contentious advocacy or the potential for the creation of excessive records, it may in the future exercise its authority under Trademark Rule 2.120(j)(2) to order a pretrial conference in person at the office of the Board"), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Amazon v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) ("under Trademark Rule 2.120(j)(2), where resolution of discovery or other interlocutory issues ‘would likely be facilitated by a conference in person of the parties or their attorneys,’ the Board may ‘request that the parties or their attorneys … meet with the Board at its offices’ for a conference. If the parties remain unwilling or unable to work together cooperatively and efficiently, the Board will not hesitate to invoke this Rule in the future.").
2. 37 C.F.R. § 2.120(j)(2); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016).