528.03 Suspension Pending Determination of Motion
37 C.F.R. § 2.127(d) When any party timely files a potentially dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a motion for summary judgment, the case is suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise may be specified in a Board order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.
When a party files a timely motion for summary judgment, the case is suspended by the Board with respect to all matters not germane to the motion. [ Note 1.] The filing of an untimely motion generally will not be considered grounds for suspension. If the motion was untimely filed, the Board may issue an immediate action denying the motion for that reason. For a discussion regarding suspension of proceedings following the filing of a potentially dispositive motion, see TBMP § 510.03.
Once the Board has suspended proceedings in a case pending the determination of a motion for summary judgment, no party should file any paper that is not germane to the motion. [ Note 2.] Examples of papers that are or may be germane to a motion for summary judgment include a brief in opposition to the summary judgment motion, a motion for an extension of time in which to respond to the summary judgment motion, a motion under Fed. R. Civ. P. 56(d) for discovery needed to enable the nonmoving party to respond to the summary judgment motion, a cross-motion for summary judgment, a motion for leave to amend a party’s pleading or a motion to amend or withdraw requests for admissions. [ Note 3.] See TBMP § 507 (Motion to Amend Pleading), TBMP § 509 (Motion to Extend Time), TBMP § 525 (Motion to Withdraw or Amend Admission), TBMP § 528.06 (Request for Discovery to Respondent to Summary Judgment), and TBMP § 528.07 (Unpleaded Issue).
In addition to tolling the time to respond to outstanding discovery requests, suspension of proceedings tolls the time for parties to make required disclosures.
Extensions of time will not be granted for a motion under Fed. R. Civ. P. 56(d) for discovery or for the moving party to file a reply brief. The Board will consider no further papers beyond a timely reply brief in support of or in opposition to a motion for summary judgment. [ Note 4.]
If the Board’s determination of the summary judgment motion does not dispose of the case, the Board ordinarily will issue an order resuming proceedings. [ Note 5.]
NOTES:
1. See 37 C.F.R. § 2.127(d) and 37 C.F.R. § 2.127(e)(1). See also Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986) (motion to compel deferred pending ruling on summary judgment motion).
2. See 37 C.F.R. § 2.127(d). See also Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (motion for discovery sanctions not considered).
3. See International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603-04 (TTAB 2002) (motion to amend opposition germane inasmuch as it related to the issue of whether applicant’s motion is one for complete or partial summary judgment); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1032 (TTAB 1996) (motion to amend pleading to add new claim); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB 1993) (motion to amend to amplify pleading); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment is a proper filing even after proceeding is suspended).