528.04 Miscaptioned Motion
The circumstances in which the Board will treat as a motion for summary judgment either a motion to dismiss under Fed. R. Civ. P. 12(b)(6) relying on matters outside the pleadings, or a motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), filed prior to the moving party’s service of initial disclosures and relying on matters outside the pleadings, are very limited. A party may not file a motion for summary judgment until it has made its initial disclosures (unless the motion is based on claim or issue preclusion or lack of jurisdiction) and such disclosures are not made until after the pleadings have closed and issues have been joined. Thus, consideration of either a motion to dismiss under Fed. R. Civ. P. 12(b)(6) or a motion for judgment on the pleadings under Fed. R. Civ. P. 12(c) as a motion for summary judgment generally would result in a premature motion for summary judgment. [ Note 1.] As a result, the Board generally will not construe either a motion to dismiss or a motion for judgment on the pleadings, filed prior to initial disclosures, as a motion for summary judgment.
Conversely, a motion for summary judgment without supporting evidence is the functional equivalent of a motion to dismiss for failure to state a claim upon which relief can be granted, see TBMP § 503, or of a motion for judgment on the pleadings.[ Note 2.] See TBMP § 504.
NOTES:
1. See 37 C.F.R. § 2.127(e)(1); Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (motion to dismiss not converted to motion for summary judgment in opposition). But see NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ2d 1861, 1862 n.1 (TTAB 2016) (construing motion captioned as motion to dismiss filed in lieu of answer as motion for summary judgment on issue preclusion).
2. See S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987) (motion for summary judgment was unsupported and whether movant was entitled to judgment as a matter of law could not be determined on pleadings alone). See also 5B C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2722 (4th ed. 2018).