702 Pretrial Disclosures; Manner of Trial; and Introduction of Evidence
37 C.F.R. § 2.121 Assignment of times for taking testimony and presenting evidence.
- (a) ... The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.
- (e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike, as provided in §§ 2.123 and 2.124.
37 C.F.R. § 2.123(e)(3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.
- (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e).
- (ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
Fed. R. Civ. P. 26(a)(3) Pretrial Disclosures.
- (A) In General. In addition to the disclosures required by Rule 26(a)(1) and (2), a party must provide to the other parties and promptly file the following information about the evidence that it may present at trial other than solely for impeachment:
- (i) the name and, if not previously provided, the address and telephone number of each witness — separately identifying those the party expects to present and those it may call if the need arises;
- (ii) the designation of those witnesses whose testimony the party expects to present by deposition and, if not taken stenographically, a transcript of the pertinent parts of the deposition; and
- (iii) an identification of each document or other exhibit, including summaries of other evidence — separately identifying those items the party expects to offer and those it may offer if the need arises.
702.01 Pretrial Disclosures
Pretrial disclosures are governed by 37 C.F.R. § 2.121(e) and Fed. R. Civ. P. 26(a)(3) with one exception: the Board does not require pretrial disclosure of each document or other exhibit that a party plans to introduce at trial as provided by Fed. R. Civ. P. 26(a)(3)(A)(iii). [ Note 1.] Disclosures allow parties to know prior to trial the identity of trial witnesses, thus avoiding surprise witnesses. [ Note 2.]
Because the trial schedule in a Board proceeding employs alternating testimony periods with gaps between them, the due dates for pretrial disclosures will be different for each party and will be specified in the Board’s notice instituting the proceeding. [ Note 3.] Under 37 C.F.R. § 2.121(e), the party scheduled to present evidence must make pretrial disclosures no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board. Witnesses who are expected to or may testify must be disclosed under Fed. R. Civ. P. 26(a)(3)(A). [ Note 4.]
In making its pretrial disclosures, the party must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises. [ Note 5.] The party must disclose general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. [ Note 6.]
Pretrial disclosure of a witness under 37 C.F.R. § 2.121(e) does not substitute for issuance of a proper notice of examination under 37 C.F.R. § 2.123(c) or 37 C.F.R. § 2.124(b). [ Note 7.]
If a party does not plan to take testimony from any witnesses in any form, it must so state in its pretrial disclosure. [ Note 8.]
When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. [ Note 9.]
A party may object to improper or inadequate pretrial disclosures. [ Note 10.] See TBMP § 533.02(b).
The pretrial disclosure requirement cannot simply be ignored because some information about a testifying individual may be known by the adverse party or parties. [ Note 11.]
A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. [ Note 12.] Thus, each document or other exhibit that a party plans to introduce at trial does not need to be disclosed to the other party. [ Note 13.] A party planning to introduce an adverse party’s discovery deposition, or part thereof, need not disclose such plans. [ Note 14.] For further information regarding the submission of discovery depositions under notice of reliance, see TBMP § 704.09.
If pretrial disclosures or the notice of examination of witnesses served pursuant to 37 C.F.R. § 2.123(c) are improper or inadequate with respect to any witness, an adverse party may move to quash a noticed testimony deposition of that witness before the deposition occurs. [ Note 15.] The adverse party may also cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all relevant circumstances. [ Note 16.] When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike. [ Note 17.] A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with 37 C.F.R. § 2.121(e). [ Note 18.] On the other hand, a motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony. [ Note 19.]
If the deficiencies in the pretrial disclosure are technical in nature, the parties are encouraged to resolve the matter between themselves, or to bring the matter to the Board's attention promptly for resolution for judicial economy and before the parties incur the expense associated with taking a testimonial deposition. The Board allows parties to cure timely, but technically deficient matters. [ Note 20.]
A party making a pretrial disclosure is not required to file routinely a copy of such disclosure with the Board. In this regard, the Board's practice varies slightly from that set forth in Fed. R. Civ. P. 26(a)(3)(A). Alerting the Board to a party's witness list is not a purpose of the pretrial disclosure requirement, as the Board does not preside at the taking of testimony or at a pretrial conference. [ Note 21.]
Parties may stipulate to waive the requirement for pretrial disclosures in ACR cases. [ Note 22.]
The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 2.]
For information on pretrial disclosure of expert witnesses, see TBMP § 401.03 or for motions to strike the testimony of an expert witness, see TBMP § 533.02(b).
NOTES:
1. See 37 C.F.R. § 2.121(e).
2. See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372 (TTAB 2011); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42257-58 (August 1, 2007)). See also Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (witness first identified in pretrial disclosure and not previously identified in initial disclosures, discovery responses or supplements resulted in unfair surprise and was neither harmless nor substantially justified); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (failure to identify witnesses during discovery but named in pretrial disclosures resulted in unfair surprise to adversary).
3. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
4. 37 C.F.R. § 2.121(e). See Domond v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011) ("A party is expected to disclose all witnesses it expects to call as well as those that it may call if the need arises").
5. 37 C.F.R. § 2.121(e). See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (under Trademark Rules, petitioner is required to name any witnesses from whom it intended to take testimony, or even might take testimony, if needed; 37 C.F.R. § 2.121(e) contemplates that contact information of a witness may previously have been provided to the party receiving a disclosure and need not be repeated).
6. 37 C.F.R. § 2.121(e). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s pretrial disclosures defective to the extent that they fail to summarize the types of documents and things respondent intended to introduce as exhibits to his testimony; all forty-six exhibits attached thereto and all portions of respondent’s testimony referring to the attached exhibits not considered); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371 (TTAB 2011) (pretrial disclosure adequate and sufficient).
10. See 37 C.F.R § 2.121(e) and 37 C.F.R. § 2.123(e)(3). See also Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011).
11. See Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).
12. 37 C.F.R. § 2.121(e). Accord Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 n.4 (TTAB 2015).
14. See 37 C.F.R. § 2.120(k)(1) ("The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.").
15. 37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.").
17. 37 C.F.R. § 2.121(e). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike…"). See also Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236, 1240-41 (TTAB 2017) (granting opposer’s motion to strike discovery deposition transcripts of non-party witnesses submitted by applicant under notice of reliance to impeach the witnesses’ declaration trial testimony, where there was no stipulation to allow the non-party witnesses’ discovery depositions, applicant did not elect oral cross-examination of the witnesses on their testimonial declarations, and applicant did not file a motion seeking Board approval to use the discovery depositions, or a motion claiming exceptional circumstances).
18. 37 C.F.R. § 2.123(e)(3)(i). See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1300 (TTAB 2015) (respondent’s improper service of pretrial disclosures at counsel for petitioner’s former address held harmless to the extent the disclosure identified a single witness, respondent himself); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1655 (TTAB 2014) (identity of trial witnesses may not be designated as confidential), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (Opposer's failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition); Jules Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009) (failure to disclose testimony witness in initial disclosures considered as a relevant circumstance in determining whether to strike testimony deposition).
19. 37 C.F.R. § 2.123(e)(3)(ii).
20. See Carl Karcher Enterprise, Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011) (applicant could not cure surprise without moving to quash, or seeking to reopen discovery, or engaging in unplanned preparation to cross examine witnesses identified for the first time in pretrial disclosures).
21. See Carl Karcher Enterprises Inc. v. Carl's Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 (TTAB 2011).
22. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) (where neither party served pretrial disclosures and the parties ACR stipulation did not provide for the exchange of pretrial disclosures, motion to strike witness declaration denied).
23. 37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.").
702.02 Introduction of Evidence
37 C.F.R. § 2.122(a) Applicable rules. Unless the parties otherwise stipulate, the rules of evidence for proceedings before the Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part. When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
Unless the parties otherwise stipulate, the introduction of evidence in inter partes proceedings before the Board is governed by the Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations). [ Note 1.] Cf. TBMP § 101.01 and TBMP § 101.02. When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. [ Note 2.]
Within the parameters of these rules, there are a number of ways to introduce evidence into the record in a proceeding before the Board. Evidence may be introduced either in the form of testimony depositions taken by a party during its testimony period or in the form of affidavits or declarations subject to the right of the adverse party to conduct cross-examination. Documents and other exhibits may be made of record with appropriate identification and introduction by the witness during the course of the deposition or in an affidavit or declaration. See generally TBMP § 703.01 regarding affidavits, declarations and oral testimony depositions and TBMP § 703.02 regarding testimony depositions on written questions. See also TBMP § 704.13 regarding introducing testimony from another proceeding, and TBMP § 530 regarding motions to use testimony from another proceeding. Certain specified types of evidence, including official records and printed publications as described in 37 C.F.R. § 2.122(e) and discovery responses under 37 C.F.R. § 2.120(k), may, but need not, be introduced in connection with the testimony of a witness. Such evidence may instead be made of record by filing the materials with the Board under cover of a notice of reliance during the testimony period of the offering party. [ Note 3.] See generally TBMP § 704.02 regarding the types of evidence that may be submitted by notice of reliance and the requirements for the introduction of such evidence by notice of reliance. In addition, the parties may enter into a wide variety of stipulations concerning the timing and/or introduction of specified matter into evidence. See TBMP § 705 regarding stipulated evidence. For example, the parties may stipulate that matter otherwise improper for a notice of reliance (such as documents obtained by production under Fed. R. Civ. P. 34) may be introduced in that manner, that a party may rely on its own discovery responses or that notices of reliance can be filed after the testimony periods have closed. There may also be circumstances where improperly offered or otherwise noncomplying evidence may nevertheless be deemed stipulated into the record where, for example, no objection to the evidence is raised and/or the nonoffering party treats the evidence as being of record. [ Note 4.] See generally TBMP § 704 regarding the introduction of other evidence, and TBMP § 704.11 n.9 regarding materials deemed stipulated into the record.
A discussion of the time and manner of taking testimony depositions, presenting testimony in affidavit or declaration form, and introducing evidence is presented in the sections that follow.
NOTES:
1. 37 C.F.R. § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.122(a) to clarify the heading of the paragraph and to specify that parties may stipulate to rules of evidence for proceedings before the Board.").
2. 37 C.F.R. § 2.122(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) (amended effective January 14, 2017 to codify current Board practice). See, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016) ("Once evidence is properly of record, it may be relied on by any party for any purpose.").
3. See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2001) (notices of reliance must be filed before closing date of party's testimony period).
4. See, e.g., Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1176 n.9 (TTAB 2017) ("because both parties introduced responses to document requests by notice alone and neither party objected, we will treat the responses as being stipulated into the record"); Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603, n.3 (TTAB 2010), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).
702.03 Manner of Trial
Because the Board is an administrative tribunal, its rules and procedures differ in some respects from those prevailing in the federal district courts. [ Note 1.] See TBMP § 102.03 regarding Board proceedings in general and TBMP § 502.01 regarding motions that may be filed at the Board. For example, in lieu of live testimony, proceedings before the Board are conducted in writing, and the Board's actions in a particular case are based on the written record therein. [ Note 2.] The Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board, by affidavit or declaration, or on oral examination or written questions, and the affidavits, declarations and written deposition transcripts, together with any exhibits thereto, are then submitted to the Board. [ Note 3.]
Depositions may be noticed for any reasonable place in the United States. [ Note 4.] As a result, parties do not have to travel to the offices of the Board, or to the geographic area surrounding the Board's offices, to take their testimony. Plaintiffs also have the option of presenting witness testimony in affidavit or declaration form subject to the right of any adverse party to elect to take and bear the expense of oral cross examination of that witness. [ Note 5.] See TBMP § 703.01(h). Depositions and oral cross-examinations of deponents and affiants must be noticed for a reasonable place. [ Note 6.] Depositions and oral cross-examinations may be conducted by telephone or videoconference if the parties so agree. [ Note 7.] A party to a proceeding before the Board need never come to the offices of the Board at all, unless the party wishes to argue its case at oral hearing at the offices of the Board, or unless otherwise ordered by the Board.
An oral hearing is held only if requested by a party to the proceeding. [ Note 8.] See TBMP § 802.02.
Submissions made during the course of an inter partes proceeding are stored in electronic form and are available for viewing on the Board home page of the USPTO website via TTABVUE (http://ttabvue.uspto.gov ). Filings in Board proceedings are made electronically via ESTTA, and in the rare circumstances that filing in paper form is permitted under the rules, such paper submissions are scanned into the electronic record. The electronic record constitutes the official record of the proceeding. See TBMP § 120. No document, exhibit, etc., whether submitted electronically or as paper, will be considered as evidence in the case unless it has been introduced in evidence in accordance with the applicable rules, see TBMP § 706, [ Note 9.], or the parties stipulate or otherwise treat the evidence as being of record, see TBMP § 702.02.
For a further discussion regarding viewing and obtaining Board records, see TBMP § 121.
If the parties to a proceeding desire to obtain a final resolution of a proceeding prior to the scheduled trial period, they may consider Accelerated Case Resolution ("ACR"). For information on ACR, see TBMP § 528.05(a)(2), TBMP § 702.04 and TBMP § 705.
NOTES:
1. See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm'r 1976). For a general discussion of inter partes proceedings before the Board, see B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).
2. 37 C.F.R. § 2.191. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).
3. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm'r 1976).
4. See 37 C.F.R. § 2.123(a)(1) and 37 C.F.R. § 2.123(c).
5. 37 C.F.R. § 2.123(a)(1). See Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1166 (TTAB 2017) (party seeking oral cross-examination of affiant or declarant bears cost of its own travel and attorney expenses, the court reporter, and, if necessary, the venue).
6. Cf. USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1047-48 (TTAB 2017) (notice of election of oral cross-examination requiring declarants to travel from Washington DC, where they live and work, to Santa Monica CA quashed because not noticed for reasonable place).
7. See USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1048 (TTAB 2017) (notice of election of oral cross-examination of declarants quashed because not noticed for reasonable place, but applicant may accept opposer’s offer to make witnesses available for oral cross examination by videoconference or telephone, thus alleviating some concern about travel and attorney expenses),
8. See 37 C.F.R. § 2.129(a).
9. See 37 C.F.R. § 2.123(k).
702.04 Accelerated Case Resolution
702.04(a) In General
Accelerated Case Resolution ("ACR") is an alternative to typical Board inter partes proceedings with full discovery, trial and briefing, in which parties to a Board proceeding can obtain a determination of the claims and defenses in their case in a shorter time period than contemplated in the typical Board proceeding. The form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for summary judgment and accompanying evidentiary submissions that the parties agree to submit in lieu of creating a traditional trial record [ Note 1.] and traditional briefs at final hearing. Other approaches to accelerating resolution of a case include simplifying proceedings through the use of fact stipulations and stipulations regarding the admissibility of certain evidence. [ Note 2.] Oral hearings generally are available in ACR cases in accordance with 37 C.F.R. § 2.129(a). See TBMP § 802. If parties agree to conduct the case as an ACR case and to utilize the bench trial or cross-motions for summary judgment model, and the Board approves trial of the case by ACR, the Board generally will render a final decision within fifty (50) days following the completion of briefing.
By reducing the complexity of a case and total time expended in litigating a case, ACR is a more efficient and economical alternative to the typical Board inter partes proceeding. Not all Board cases involve complicated or disputed facts or require the full discovery and trial periods set out by the Trademark Rules, to arrive at a final determination. Parties may therefore save time and expense by focusing only on those issues genuinely in dispute, and opting for ACR early in the proceeding. For example, if the parties stipulate to facts, no time need be spent proving those facts (although there may be some typical costs involved in preparing and exchanging documents and other materials that illustrate for the involved parties that facts are not genuinely in dispute and therefore can be stipulated). When the issues in a proceeding are limited, savings can be even greater, because all aspects of the proceeding, including discovery, trial and briefing, are focused on such limited matters.
The Board is willing to consider almost any claim under ACR unless the complexity or novelty of the facts and/or legal theory of the case requires a full trial. However, the most appropriate cases for ACR are those in which, for example, little discovery is necessary, the parties are able to stipulate to many facts, each party expects to rely on the testimony of one or two witnesses, or the overall record will not be extensive. [ Note 3.] ACR may not be suited to cases that generate a large record, complicated factual or legal issues, or cases where the parties are unwilling to stipulate to any matters (i.e., limitations on discovery or trial schedules, the absence of any genuine dispute about particular facts, or entry of evidence into the record).
ACR presently can be implemented only by consent of the parties and agreement by a Board attorney or judge, and will not be approved by unilateral motion of one party. ACR can also be implemented by all parties accepting an invitation or suggestion from a Board attorney or judge to participate in the process. [ Note 4.] The parties are required to discuss the possibility of using ACR in their discovery conference and may seek the assistance of the Board in structuring their case so that it qualifies for ACR and the Board’s objective to render a decision within fifty days (50) from the completion of briefing. [ Note 5.]
Parties seeking to optimize their chances for early determination of their case and savings in their resources are advised to opt for ACR early in the proceeding. To opt for ACR, the parties may jointly file a statement indicating their desire to proceed under ACR along with a proposed modified schedule which may include an abbreviated discovery period and/or briefing period under any form of ACR. The assigned attorney may, and likely will, then convene a conference by telephone to discuss the proceeding with the parties and explore how they wish to proceed under ACR. The parties may seek Board assistance when contemplating ACR to determine which form of ACR to follow and/or determine the discovery, trial and briefing schedule. Any modified discovery, trial and briefing schedule, including limits on discovery or discovery devices or trial, must be negotiated by the parties and approved by the Board. If, however, the parties choose to follow the traditional discovery and trial schedule, but merely wish to stipulate to particular facts or that particular items of evidence shall be considered by the Board, they may so agree and file their written agreement with the Board without need of a conference with a Board attorney. While this approach yields efficiency and savings, since prescribed discovery procedures and discovery and trial schedules are unchanged, a conference with a Board attorney typically would not be necessary.
The parties may limit discovery in a number of ways. For example, parties may limit the number of interrogatories, requests for production and requests for admissions as well as the number and duration of discovery depositions. They may exchange more extensive disclosures in lieu of formal discovery, or stipulate to facts and the exchange of certain documents, or propound interrogatory requests only on particular issues. If the parties are unable to agree on discovery limits, they will not have optimized any cost and time savings available through ACR. When discovery devices (e.g., number of depositions, document requests, or interrogatory requests) are limited, practice is necessarily more focused and cost efficient.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. By limiting the number or duration of testimonial depositions, they may realize additional savings in cost and time. They may also agree that the offering party may use discovery depositions at trial.
Parties may also agree under ACR to forego pretrial disclosures. Furthermore, if an ACR stipulation is silent on the issue of pretrial disclosures and no pretrial disclosures were in fact filed by either party, the Board will interpret the stipulation as waiving this requirement. [ Note 6.]
The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding. In either an opposition or cancellation, the burden of proof remains with the plaintiff, who must establish its case by a preponderance of the evidence. [ Note 7.]
A final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions by the Board. [ Note 8.] For further information regarding appeals of inter partes decisions, see TBMP Chapter 900.
Please Note: Some of the cases cited in this section established efficiencies later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.
NOTES:
1. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014), vacated and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North. America., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017), on appeal sub nom Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., No. 3:17-CV-00652 (W.D.N.C. November 6, 2017); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28 (TTAB 2012); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 47 USPQ2d 1953, 1954-55 (2d Cir. 1998).
2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (parties stipulated to forgo reply briefing and that they could rely on the materials submitted in connection with previously filed motions for summary judgment); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015) (parties filed ACR stipulation to present all testimony by declaration and to submit discovery responses and documents produced in discovery as exhibits without the need for accompanying testimony); Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of produced documents and waiver of objections based on authenticity or hearsay); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated under ACR that they could rely on the materials submitted in support of and against opposer's previously filed motion for summary judgment, that testimony could be submitted by declaration, that pretrial disclosures were not required, and that all evidence may be submitted through declarations or notices of reliance); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) (parties stipulated to the entire record: 13 paragraphs of facts, including applicant’s dates of first use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of applicant’s use, as well as the dates, nature and extent of descriptive use by the opposer’s parent company; the admissibility of business records, government documents, marketing materials and Internet printouts and to forgo trial).
3. See Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (claim of likelihood of confusion, stipulated to standing, priority, pleaded registration, "lawn seed" and "grass seed" legally identical descriptions of goods).
4. Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Hewlett-Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1634 n.6 (TTAB 2009) (in granting partial summary judgment, the Board suggested the parties may seek to use ACR on the remaining disputed issues without the need for a formal trial).
5. See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re: stipulation, from notice to briefing less than a year, resulting in clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014) (ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue ACR); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).
6. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) ("While parties are obligated to identify trial witnesses in their pretrial disclosures, there is no indication in the record that either party served pretrial disclosures in this ACR case (and the parties’ ACR Stipulation does not provide for the exchange of pretrial disclosures)." No basis for motion to strike and declaration at issue considered).
7. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) (party opposing registration bears the burden of proof); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
8. See 37 C.F.R. § 2.145.
702.04(b) ACR using Summary Judgment Briefs
For a case prosecuted on the summary judgment model of ACR, the trial and briefing periods occur in one phase. That is, the summary judgment briefs and accompanying evidentiary submissions encompass both the trial and briefing periods. Because the parties have, in essence, agreed to create the record for the case by their summary judgment submissions, testimony will be presented by affidavit or declaration, and any exhibits referenced by the affiants or declarants.
In addition to filing summary judgment briefs, the parties should file a joint stipulation of undisputed facts, and, as attachments or exhibits to their briefs, any materials that, in a typical trial, could be submitted by notice of reliance (the notice of reliance itself need not be filed). [ Note 1.] The parties are free to enter into other stipulations regarding the submission of evidence. [ Note 2.] For example, they may agree that documents and things produced in response to requests for production may be submitted as exhibits without the need for accompanying testimony. The stipulations regarding the submission of evidence remove any question about the admissibility of the evidence, but the parties may reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality, or the weight to be accorded particular items of evidence. A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 3.]
ACR summary judgment briefs may be presented either as cross motions for summary judgment or as a single motion for summary judgment. If the parties stipulate to ACR and file cross motions for summary judgment, each party is entitled to file a response to the other’s motion and a reply in support of its own motion. [ Note 4.] If the parties stipulate to ACR and the summary judgment motion is in the form of a single motion by plaintiff, then defendant may file a brief in response and only plaintiff is entitled to file a reply. [ Note 5.] In the absence of a stipulation to the contrary, the parties are limited to 25 pages for the ACR summary judgment briefs, inclusive of table of contents and cases, index of cases, description of the record, statement of the issues, recitation of facts, argument and summary. [ Note 6.] Reply briefs are limited to 10 pages unless otherwise stipulated [ Note 7.] and arguments should be restricted to rebuttal of the adverse party’s case in chief.
In using the summary judgment form of ACR, the parties must provide a stipulation that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing. [ Note 8.]
If the parties decide early in the case to use the ACR motion for summary judgment model, they should file a stipulation with the Board selecting the ACR summary judgment model and setting forth the negotiated schedule for discovery and any limitation on discovery, submission of stipulations, and briefing. [ Note 9.]
For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).
NOTES:
1. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
3. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating to introduction of affidavit and its exhibits into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (SDNY December 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013).
4. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
5. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
6. 37 C.F.R. § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’ ACR agreement provided that "the page limit for the parties’ briefs shall be the page limit permitted for trial briefs pursuant to Trademark Rule 2.128(b).").
7. 37 C.F.R. § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’ ACR agreement provided that "the page limit for the parties’ briefs shall be the page limit permitted for trial briefs pursuant to Trademark Rule 2.128(b).").
8. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
9. See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (pursuant to their ACR stipulation, parties agreed to forgo discovery and reliance on expert testimony).
702.04(c) ACR Conversion - Summary Judgment Briefs
In circumstances where the parties have already filed summary judgment briefs, the Board may, in appropriate cases, invite the parties to agree to the Board’s treatment of the summary judgment briefs and evidence as the final records and briefs. [ Note 1.] Alternatively, the parties may stipulate to treating the summary judgment briefs and evidence as the record and final briefs on the case, even in the absence of an invitation to do so extended by the Board. [ Note 2.]
In either case, the parties must stipulate that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing.
For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).
NOTES:
1. See, e.g., Daniel J. Quirk Inc. v. Village Car Company, 120 USPQ2d 1146, 1147 and 1147 n.5 (TTAB 2016); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014) (after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing), vacated and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017), on appeal sub nom Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., No. 3:17-CV-00652 (W.D.N.C. November 6, 2017).
2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002) (parties stipulated that case would be decided on petitioner’s motion for summary judgment and respondent’s response); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986) (parties stipulated that cross motions for summary judgment would be treated as testimony, evidence and briefs at final hearing).
702.04(d) ACR using Stipulated Record and Trial Briefs
Under the stipulated record and trial briefs ACR model, the case proceeds to final decision on an evidentiary record that has been stipulated to, in whole or in substantial part. Thus, the parties must be prepared to stipulate to the admissibility of most of the record. They may, however, reserve the right to object in trial briefs on substantive grounds to particular evidence such as on the grounds of competency, relevancy or materiality. Testimony periods may not be needed for cases prosecuted on the stipulated record model (with or without stipulated facts), if the evidentiary record has been stipulated to by the parties. [ Note 1.] Essentially, the parties are agreeing to an abbreviated trial on the merits.
Just as with any non-ACR case, the Board will decide disputed facts as part of the final decision.
The Board has found that cases that proceed along the ACR stipulated record model, involving many stipulated facts and stipulated evidence, yield highly effective records because evidentiary submissions are focused on the disputed facts. Stipulations of fact are useful but are not required in an ACR case prosecuted on a stipulated record.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. However, by limiting the number or duration of testimonial depositions or testimony in affidavit or declaration form, they may realize additional savings in cost and time. They may also agree to use discovery depositions at trial.
Parties using this form of ACR and who agree to forgo the testimony period should file a stipulation indicating such an intention, along with their stipulations to the record with respect to facts, evidence and testimony (e.g., using discovery depositions in lieu of testimonial depositions). [ Note 2.]
Stipulations regarding the submission of evidence promote efficiency by removing any question about the admissibility of the evidence, while still allowing the parties to reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality. [ Note 3.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 4.]
As with regular trial briefs, the parties are limited to 55 pages for the ACR trial briefs under the stipulated record model, inclusive of table of contents, index of cases, description of the record, statement of issues, recitation of the facts, argument and summary. [ Note 5.] Unless counterclaims are involved, only the plaintiff may file a reply brief, and it is limited to 25 pages consisting solely of a rebuttal of the adverse party’s case in chief. [ Note 6.] See TBMP § 801.
For additional information regarding stipulated evidence and ACR, see TBMP § 705.
NOTES:
1. See, e.g., Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties selected ACR and agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and agreed to forgo trial).
2. See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re stipulation, from notice to briefing less than a year, resulting in clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. January 15, 2016); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts and a stipulation to seek a determination through ACR); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and stipulated to forgo trial); Zimmerman v. National Association of Realtors, 70 USPQ2d 1425, 1427 (TTAB 2004) (in addition to reliance on a discovery deposition of one of the parties, the parties stipulated that the evidentiary record from an earlier Board case would be considered); Devries v. NCC Corp., 227 USPQ 705, 708 (TTAB 1985) (parties stipulated to waive trial periods and stipulated to the following: petitioner's pleaded registration; each party's responses to certain interrogatories and requests for production of documents served upon it by the other party; and stipulated facts and affidavit testimony, with attached exhibits).
But see Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (parties who stipulated to certain facts and issues, yet also submitted evidence to prove these points, have gone to needless effort and expense and the Board unnecessarily must review this evidence).
3. See Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties agreed to reserve the right to object to facts and documents on the bases of relevance, materiality and weight).
4. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating affidavit and exhibits thereto into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv- 10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013).
But see Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561 (TTAB 2014) (parties’ stipulation provided for the admission into evidence of specific dated expert reports and accompanying exhibits and an expert discovery deposition transcript, but did not provide for the admission into evidence of any supplemental expert reports or additional expert testimony by affidavit or declaration, in view thereof, supplemental expert report not admissible on this basis).
702.04(e) Utilizing Stipulations in Non-ACR Board cases
37 C.F.R. § 2.123(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.
37 C.F.R. § 2.127(e)(2) If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial.
Parties may utilize stipulations of facts and evidence to realize cost efficiencies in non-ACR cases. For example, they may stipulate to the entire record, to portions of the record, or to particular facts. [ Note 1.] If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. [ Note 2.] Parties may stipulate to ACR-type efficiencies at any stage of a proceeding in order to expedite the remainder of the trial schedule.
See TBMP § 705 regarding stipulated evidence.
Please Note: Some of the cases cited in this section established principles later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to unilaterally present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.
NOTES:
1. See 37 C.F.R. § 2.123(b) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(b) … to clarify that parties may stipulate to any relevant facts."). See, e.g., Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 (TTAB 2016) (parties stipulated that testimony may be introduced by affidavit or declaration in lieu of testimonial depositions and that the documents exchanged during discovery are authentic and may be made of record by either party); Ayoub, Inc. v. ACS Ayoub Carpet Services, 118 USPQ2d 1392, 1394 (TTAB 2016) (parties stipulated to submission of testimony by declaration, to the use of any Fed. R. Civ. P. 30(b)(6) discovery deposition transcripts in their case-in-chief or rebuttal, and to the authenticity of all documents produced by either party during discovery); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1500 (TTAB 2015) (parties stipulated that witness testimony would be submitted solely by declaration and without cross-examination); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to submission of witness declarations and discovery depositions, the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of certain produced documents and waiver of objections based on authenticity or hearsay as to those documents); Miller v. Miller, 105 USPQ2d 1615, 1617 n.6 (TTAB 2013) (parties stipulated to testimony by affidavit and provided a stipulation of undisputed facts); Blackhorse v. Pro-Football Inc., 111 USPQ2d 1080, 1084-85 (TTAB 2014) (parties stipulated that the record of a prior proceeding may be submitted into evidence under notice of reliance reserving the right to object based on relevance) aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), on appeal, No. 15-1874 (4th Cir. Aug. 6, 2015); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 (TTAB 2011) (parties stipulated to authenticity of produced documents and to the introduction of testimony in affidavit or declaration form, with certain guidelines), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1915 (TTAB 2011) (parties stipulated to authenticity of produced documents); Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1824-25 (TTAB 2010) (parties stipulated to admission of various testimony declarations and to facts), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated to introduce testimony by declaration and to live cross-examination); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1585 (TTAB 2008) (parties stipulated to testimony by declaration, with exhibits); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (stipulation to use discovery depositions as trial testimony); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (stipulation to use evidence and exhibits submitted in connection with a motion for summary judgment at trial); Domino's Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1360 (TTAB 1988) (stipulations to facts by applicant, testimony by affidavit by opposer, and use of certain testimonial depositions taken in prior civil action); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1013 (TTAB 1984) (stipulated to the filing of facts and exhibits on behalf of each party during each party’s testimony period); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 (TTAB 1983) (parties stipulated to facts, legal conclusions and testimony, including cross-examination and redirect examination with respect to stipulated testimony).
2. 37 C.F.R. § 2.123(e)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016) ("The Office is amending § 2.127(e)(2) to add that if a motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. The revision codifies an approach used by parties in proceedings incorporating ACR-type efficiencies at trial.").
702.05 Overly Large Records
The Board notes that in recent years there has been a trend regarding the introduction of irrelevant and/or cumulative evidence at trial. [ Note 1.] The Board views parties who engage in this practice with disfavor. [ Note 2.] The introduction of such evidence impedes the orderly administration of the case, and obscures the impact of truly relevant evidence. In addition to diminishing the effectiveness of a party’s evidentiary record, "papering" the Board causes delays in rendering a final decision. Parties should submit only relevant, non-cumulative evidence. [ Note 3.] For all evidence submitted under notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. [ Note 4.] Failure to do so, however, is a curable procedural defect that does not necessitate reopening a party’s testimony period. [ Note 5.] For a discussion of the requirements for evidence submitted under notice of reliance, see TBMP § 704.02.
The Board may require the parties to take steps to assist with organizing the evidence such as preparing and filing tables summarizing testimony and other evidence and specifying 1) the probative value of particular facts or testimony and 2) the location in the record of such facts or testimony. [ Note 6.] Deposition transcripts must contain a word index, listing the pages where the words appear in the deposition. [ Note 7.]
Pursuant to 37 C.F.R. § 2.120(j)(2), the Board may require the parties to meet with the Board for a pretrial conference where the Board has determined that the case has the potential to become overly contentious and/or involve the creation by the parties of excessive records. [ Note 8.] See TBMP § 502.06(b) for more information about pretrial conferences.
NOTES:
1. See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) ("Simply put, the parties introduced into the record thousands of pages of testimony and other evidence without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative. This is not productive. ‘Judges are not like pigs, hunting for truffles buried in briefs.’"); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013) ("While we commend the parties for agreeing to efficiencies intended to facilitate the introduction of evidence at trial, ideally, [ACR] cases do not merely facilitate introduction of more evidence, but should also limit the amount of evidence placed before the Board."); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 102 USPQ2d 1085, 1091 (TTAB 2012) (another case which does not warrant a record of this size); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873 (TTAB 2011) (overly large records tax the resources of the Board and are entirely unnecessary); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591-92 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (Board expressed frustration with sizeable record and overzealous litigation); Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1218 (TTAB 2011) (with its supplemental notice of reliance, plaintiff resubmitted the first 25 items listed in its first notice of reliance, needlessly adding bulk to the record and wasting Board resources); Stuart Spector Designs Ltd. v. Fender Musical Instruments, Corp., 94 USPQ2d 1549, 1552 (TTAB 2009) ("voluminous" evidence of record); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) ("It is simply inconceivable to the Board that the issues herein warranted either a record of this size or the large number of motions relating thereto."). See also United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). The case was neither prosecuted nor defended based on any clear theory of the case. Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence.").
2. See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) ("Simply put, the parties introduced into the record thousands of pages of testimony and other evidence without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative. This is not productive."); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 n.5 (TTAB 2013) ("A larger record is not necessarily a better record."); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) ("Even counsel at the oral hearing acknowledged that the present record is of a magnitude generally reserved for district court litigation."); Carefirst of Maryland Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 (TTAB 2005) ("It is simply inconceivable to the Board that the issues herein warranted either a record of this size or the large number of motions relating thereto.").
3. See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1803 (TTAB 2018) ("Simply put, the parties introduced into the record thousands of pages of testimony and other evidence without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative. This is not productive. … Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence."); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1040 n.19 (TTAB 2010) ("It is not necessary for the parties to introduce every document obtained from an Internet search especially when it includes duplicative and irrelevant materials."); Blue Man Productions v. Tarmann, 75 USPQ2d 1811, 1814 (TTAB 2005) (foreign language materials submitted with no translation), rev’d on other grounds, slip op No. 05-2037 (D.D.C. Apr. 3, 2008).
4. 37 C.F.R § 2.122(g) See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69652, 69964 (October 7, 2016) ("The Office is adding new § 2.122(g) detailing the requirement for admission of evidence by notice of reliance. Section 2.122(g) provides that a notice must indicate generally the relevance of the evidence offered and associate it with one or more issues in the proceeding, but failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. The amendment codifies current case law and Office practice."). See, e.g., Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1164 (TTAB 2017) (failure to delineate the relevant element of a claim or defense for specific pages in the notice of reliance as required under Trademark Rule 2.122(g) is "particularly problematic because of the sheer volume of pages").
5. 37 C.F.R. § 2.122(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69652, 69964 (October 7, 2016) ("The Office is adding new § 2.122(g) detailing the requirement for admission of evidence by notice of reliance. Section 2.122(g) provides that a notice must indicate generally the relevance of the evidence offered and associate it with one or more issues in the proceeding, but failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. The amendment codifies current case law and Office practice."). See, e.g., Barclays Capital Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160, 1164 (TTAB 2017) (failure to comply with Trademark Rule 2.122(g) is a curable defect that can be remedied without reopening party’s testimony period).
6. See General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1592 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (after oral hearing, Board required parties to submit a joint index and amended briefs with citations to the joint index); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635-36 (TTAB 2011) (tables of evidence required).
7. 37 C.F.R. § 2.123(g)(3). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(g)(3) to add that deposition transcripts must contain a word index, listing the pages where the words appear in the deposition.").
8. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The existing rule for convening a pretrial conference because of the complexity of issues is amended so that it is limited to exercise only by the Board, upon the Board’s initiative.").