502.02(a) Form of Motions
Every motion must be submitted via ESTTA, in written form and must meet the general requirements for submissions to the Board set forth in 37 C.F.R. § 2.126. The requirements for electronic submissions are specified in 37 C.F.R. § 2.126(a), the requirements for paper submissions can be found in 37 C.F.R. § 2.126(b), and the requirements for confidential submissions are in 37 C.F.R. § 2.126(c). Additional information regarding electronic submissions made through ESTTA may be found at the USPTO website (http://www.uspto.gov) by accessing the "Trademark Trial and Appeal Board" portion of that site. See also TBMP § 106.03.
In addition, a motion should bear the name and number of the inter partes proceeding in connection with which it is being filed and a title describing the nature of the motion. See TBMP § 106.01. A party who files a motion that does not bear the correct proceeding number runs the risk that the paper will not be associated with the proceeding for which it is intended (and hence may never be considered by the Board). [ Note 1.]
A motion must be signed by the party filing it, or by the party’s attorney or other authorized representative. If a motion is unsigned, it will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 2.] See TBMP § 106.02 (Signature of Submissions). When a motion is filed via ESTTA, it must be signed in conformance with 37 C.F.R. § 2.193(c). As a practical matter, ESTTA will allow the filing party to complete the submission process only after the required electronic signature has been entered. [ Note 3.]
Motions may be filed in paper form only when ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. In such exceptional situations, a motion in paper form must include a written explanation of such technical problems or extraordinary circumstances. The explanation must include specific facts rather than mere conclusory statements as to the technical problem or extraordinary circumstance that prevented the use of ESTTA. Paper submissions that do not meet the showing of ESTTA unavailability or extraordinary circumstances will not be considered; however, the parties should consider any such paper filing accepted unless the Board indicates otherwise. [ Note 4.] When motions are filed in exceptional paper form, the certificate of mailing by first-class mail procedure provided under 37 C.F.R. § 2.197, and the Priority Mail Express® procedure provided under 37 C.F.R. § 2.198 are both available. [ Note 5.] See TBMP § 111. Parties are not permitted to file motions via email except at the request of the Board attorney or judge. ESTTA is the only available procedure for electronic filing with the Board.
When a party files a motion electronically through ESTTA, the filing is time-stamped with the official filing date when the ESTTA filing, including any required fee, is received by the Board server. Eastern Time controls the filing date, and the time the transmission began is not a factor in determining the filing date. The official filing date and time are found on the confirmation web screen and the party’s email confirmation. Once the electronic filing is submitted, the Board immediately transmits an email filing receipt. If the filing party does not receive the email filing receipt within 24 hours (or by the next business day), the filing party should contact the Board. For technical assistance with an ESTTA filing, a party may call the Board with questions at (571) 272-8500 or (800) 786-9199 (toll free); or may send an email to ESTTA@uspto.gov. The Board should respond to the inquiry within two (2) business days. When contacting the Board for ESTTA assistance please describe the nature of the problem and include the ESTTA tracking number, which should appear on the computer screen after transmission. See TBMP § 106.03.
ESTTA filing is required; it is no longer optional. If ESTTA filing is not possible prior to a deadline because ESTTA is unavailable due to technical problems, or other extraordinary circumstances are present, parties should timely make their submission on paper with the required written explanation. See TBMP § 107 and TBMP § 111. The parties should consider any such paper filing accepted unless the board indicates otherwise.
A party should file only one copy of a motion with the Board. Unless otherwise directed by the Board, it is not necessary to file a paper copy of a motion that has been filed electronically. Every motion filed with the Board must be served upon every other party to the proceeding, and proof of such service ordinarily must be made before the motion will be considered by the Board. [ Note 6.] See TBMP § 113 (Service of Papers). Service must be made by email unless the parties stipulate otherwise or the serving party shows that email service could not be made due to technical problems or extraordinary circumstances. [ Note 7.]
NOTES:
1. See Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007) (applicant did not separately caption her motion to amend the filing basis of the application at issue; rather she incorporated it into her response to opposer’s motion for summary judgment. The better practice is either to file such a motion as a separate filing or, at a minimum, to caption it separately).
3. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005).
4. 37 C.F.R. § 2.126(b). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (Oct. 7, 2016).
5. 37 C.F.R. § 2.197; 37 C.F.R. § 2.198.