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Title Page - TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) Foreword - United States Patent and Trademark Office Introduction - INTRODUCTION 0100 - GENERAL INFORMATION 101 - Applicable Authority 101.01 - Statute and Rules of Practice 101.02 - Federal Rules 101.03 - Decisional Law 101.04 - Director’s Orders and Notices 101.05 - Trademark Trial and Appeal Board Manual of Procedure 102 - Nature of Board Proceedings 102.01 - Jurisdiction of Board 102.02 - Types of Board Proceedings 102.03 - General Description of Board Proceedings 103 - Location and Address of Board 104 - Business to be Conducted in Writing 105 - Contact With Board Personnel 106 - Identification, Signature, and Form of Submissions 106.01 - Identification of Submissions 106.02 - Signature of Submissions 106.03 - Form of Submissions 107 - How and Where to File Permitted Paper Filings and Fees 108 - Filing Receipts 109 - Filing Date 110 - Electronic Filing Using ESTTA 110.01 - In General 110.01(a) - ESTTA is Mandatory for All Filings 110.01(b) - Plan Ahead 110.02 - Attachments to ESTTA Filings 110.02(a) - In General 110.02(b) - Form of ESTTA Attachments 110.02(c) - Size Limitations 110.03 - Service of ESTTA Filings 110.04 - Questions About ESTTA Filing 111 - Priority Mail Express® and Certificate of Mailing Procedures 111.01 - Priority Mail Express® - In General 111.01(a) - Requirements for Priority Mail Express® 111.01(b) - Questionable Date of Mailing 111.02 - Certificate of Mailing – In General 111.02(a) - Requirements for Certificate 111.02(b) - Suggested Format 111.02(c) - Location of Certificate 111.02(d) - Loss of Certificate of Mailing 111.02(e) - No Receipt of Correspondence Bearing Certificate 111.02(f) - Excluded Filings 111.02(g) - A Certificate of Mailing is Not ... 112 - Times for Taking Action 113 - Service of Papers 113.01 - Requirement for Service of Submissions 113.02 - Requirement for Proof of Service 113.03 - Elements of Certificate of Service 113.04 - Manner of Service 113.05 - No Additional Time for Taking Action After Service by Mail 113.06 - A Certificate of Service is Not... 114 - Representation of a Party 114.01 - Party May Represent Itself 114.02 - Selection of Attorney 114.03 - Representation by Attorney 114.04 - Representation by Non-lawyer (i.e., 114.05 - Representation by Foreign Attorney or Agent 114.06 - Individual Not Recognized to Represent Others 114.07 - Designation of Domestic Representative 114.08 - Adverse Parties Represented by Same Practitioner 115 - Conduct of Practitioner 115.01 - Applicable Rules 115.02 - Disciplinary Proceedings 115.03 - Petitions to Disqualify 116 - Termination of Representation 116.01 - Revocation of Authority 116.02 - Withdrawal as Representative--In General 116.03 - When Withdrawal is Mandatory 116.04 - When Withdrawal is Permissive 116.05 - Request to Withdraw 117 - Correspondence - With Whom Held 117.01 - In General 117.02 - When There is More Than One Attorney or Other Appointed Practitioner 117.03 - Continuation of Correspondence With Representative in Application or Registration When Inter Partes Proceeding Commences 117.04 - Continuation of Correspondence with Representative of Potential Opposer After Opposition is Filed 117.05 - Correspondence After Revocation or Withdrawal 117.06 - Correspondence With Foreign Party 117.07 - Change of Address 117.08 - Individual Not Entitled to Represent Others 118 - Payment of Fees 118.01 - Lists of Fees and Charges 118.02 - Fees Payable in Advance 118.02(a) - Fees for Extensions of Time for Filing an Opposition 118.02(b) - Fees for Opposition and Cancellation Proceedings 118.02(c) - Fee for Filing a Request for an Oral Hearing before the Board 118.03 - Method of Payment--In General 118.04 - Method of Payment--Deposit Accounts 119 - Papers and Fees Generally Not Returnable 119.01 - Fee Refunds--General Rule 119.02 - Submissions and Fees--Ex Parte Cases 119.03 - Submissions and Fees--Inter Partes Cases 120 - Access to Files 120.01 - Non - confidential Files 120.02 - Confidential Materials 120.03 - Files of Terminated Proceedings 121 - Copying of Files 122 - Certification 122.01 - Court Requirements 122.02 - Certified Copies 123 - Status Information for Applications, Registrations and Board Proceedings 124 - Action by Assignee 0200 - EXTENSIONS OF TIME TO OPPOSE 201 - In General 202 - Time for Filing Request 202.01 - In General 202.02 - Date of Publication of Mark 202.03 - Premature Request 202.04 - Late Request 203 - Form of Request 203.01 - General Considerations 203.01(a) - Required Electronic Filings; Paper Filings 203.01(b) - Note on Electronic Filing With ESTTA 203.02 - Identifying Information 203.02(a) - In General 203.02(b) - Requirement for Identification of Potential Opposer 203.03 - Signature 203.04 - Service 203.05 - Duplicate Requests 204 - Fees 205 - Mark on Supplemental Register Not Subject to Opposition 206 - Who May File an Extension of Time to Oppose 206.01 - General Rule 206.02 - Request for Further Extension Filed by Privy 206.03 - Misidentification of Potential Opposer 207 - Requirements for Showing of Cause; Extraordinary Circumstances 207.01 - In General 207.02 - Extensions Up to 120 Days From the Date of Publication 207.03 - Extensions Beyond 120 Days From the Date of Publication 208 - Essential Element Omitted 209 - Action by Board on Request 209.01 - Suspension Policy 209.02 - Determination of Extension Expiration Date 210 - Objection to Request 211 - Relief From Action of Board 211.01 - Request for Reconsideration 211.02 - Relief after Institution of Opposition 211.03 - Petition to the Director 212 - Amendment of Application During or After Extension 212.01 - Jurisdiction to Consider Amendment 212.02 - Conditions for Approval of Post-Publication Amendment 212.03 - Form of Amendment 212.04 - Action by Board - Upon Receipt of Amendment 212.05 - Action by Board - During Consideration of Amendment by TMEO 212.06 - Action by Board - After Consideration of Amendment by TMEO 212.07 - Amendment During Opposition 213 - Effect of Restoration of Jurisdiction 214 - Effect of Republication 215 - Effect of Letter of Protest 216 - Inadvertently Issued Registration 217 - Relinquishment of Extension 218 - Abandonment of Application 219 - Amendment to Allege Use; Statement of Use 220 - Inadvertent Issuance of a Notice of Allowance 0300 - PLEADINGS 301 - Types of Board Proceedings 301.01 - In General 301.02 - Mark on Supplemental Register Not Subject to Opposition 301.03 - Mark Filed Under the Madrid Protocol is Subject to Opposition 302 - Commencement of Proceeding 302.01 - Mandatory Electronic Filing 303 - Who May Oppose or Petition to Cancel 303.01 - In General 303.02 - Meaning of the Term “Person” 303.03 - Meaning of the Term “Damage” 303.04 - Federal Trade Commission 303.05 - Opposition Filed During Extension of Time to Oppose 303.05(a) - General Rule 303.05(b) - Opposition Filed by Privy 303.05(c) - Misidentification of Opposer 303.05(d) - Misidentification of Applicant or Respondent 303.06 - Joint Opposers or Petitioners 304 - Proceeding Against Multiple Class Application or Registration 305 - Consolidated and Combined Complaints 305.01 - Consolidated Complaint 305.02 - No Combined Complaint 306 - Time for Filing Opposition 306.01 - In General 306.02 - Date of Publication of Mark 306.03 - Premature Opposition 306.04 - Late Opposition 307 - Time for Filing Petition to Cancel 307.01 - Petition That May Be Filed At Any Time After Registration 307.02 - Petition That Must Be Filed Within Five Years from the Date of Registration 307.02(a) - In General 307.02(b) - Trademark Act § 14, 15 U.S.C. § 1064, Limitation is Independent of Trademark Act § 15, 15 U.S.C. § 1065, Affidavit 307.02(c) - Factors Affecting the Five-Year Period 307.02(c)(1) - Reliance on Registration By Plaintiff 307.02(c)(2) - Amendment of Registration 307.02(c)(3) - Amendment of Petition for Cancellation 307.03 - Premature Petition to Cancel 307.04 - Late Petition to Cancel 308 - Filing Fees 308.01 - Fee for Filing Opposition 308.01(a) - In General 308.01(b) - Insufficient Fee 308.02 - Fee for Filing Petition to Cancel 308.02(a) - In General 308.02(b) - Insufficient Fee 308.02(c) - Petition Filed by Federal Trade Commission 308.02(d) - Fee for Counterclaim 308.03 - Fees for Joint Opposers or Petitioners 308.04 - Fees for Proceeding Against Multiple Class Application or Registration 308.05 - Fees for Consolidated and Combined Complaints 309 - Form and Content of Oppositions and Petitions to Cancel 309.01 - In General 309.02 - Form of Complaint 309.02(a) - Format for Complaint 309.02(b) - Signature of Complaint 309.02(c) - Service of Complaint 309.02(c)(1) - Service of Opposition on Applicant 309.02(c)(2) - Service of Petition on Respondent 309.03 - Substance of Complaint 309.03(a) - In General 309.03(a)(1) - Scope of Opposition and Petition to Cancel 309.03(a)(2) - Elements of Complaint – In General 309.03(b) - Entitlement to a Statutory Cause of Action 309.03(c) - Grounds 309.03(c)(1) - In General 309.03(c)(2) - Priority and Likelihood of Confusion A. - Priority B. - Likelihood of Confusion 309.03(d) - Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation) 309.04 - Defects in Complaint That May Affect Institution of Proceeding 310 - Notification to Parties of Proceeding and Setting Time to Answer 310.01 - Notification to Parties of Proceeding 310.02 - Defendant’s Copy of Institution Order Returned as Undeliverable 310.03 - Setting Time for Filing Answer 310.03(a) - In General 310.03(b) - [Removed and Reserved] 310.03(c) - Extension of Time to File Answer 311 - Form and Content of Answer 311.01 - Form of Answer 311.01(a) - Format for Answer 311.01(b) - Signature of Answer 311.01(c) - Filing and Service of Answer 311.02 - Substance of Answer 311.02(a) - Admissions and Denials 311.02(b) - Affirmative Defenses 311.02(b)(1) - In General 311.02(b)(2) - Specific Affirmative Defenses 311.02(c) - Unpleaded Affirmative Defenses 311.02(d) - Other Affirmative Pleadings - Amplifying Denials 311.03 - Reply to Answer Should Not be Filed 312 - Default 312.01 - In General 312.02 - Setting Aside Notice of Default 312.03 - Setting Aside Default Judgment 313 - Counterclaims 313.01 - In General 313.02 - Fee For Counterclaim 313.03 - Form and Substance of Counterclaim; Service of Counterclaim 313.04 - Compulsory Counterclaims 313.05 - Permissive Counterclaims 313.06 - Answer to Counterclaim 314 - Unpleaded Matters 315 - Amendment of Pleadings 316 - Motions Relating to Pleadings 317 - Exhibits to Pleadings 318 - Fed. R. Civ. P. 11 Applicable 319 - Amendment to Allege Use; Statement of Use 0400 - DISCOVERY 401 - Introduction to Disclosures and Discovery 401.01 - Discovery Conferences 401.02 - Initial Disclosures 401.03 - Expert Disclosures 401.04 - Modification of Disclosure Obligations 401.05 - Form of Disclosures 401.06 - Other Requirements Under the Board’s Disclosure Regime 402 - Scope of Discovery 402.01 - In General 402.02 - Limitations on Right to Discovery and on Electronically Stored Information 403 - Timing of Discovery 403.01 - In General 403.02 - Time for Service of Discovery Requests and Taking of Depositions 403.03 - Time for Service of Discovery Responses 403.04 - Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures 403.05 - Need for Early Initiation of Discovery 403.05(a) - To Allow Time for “Follow-up” Discovery 403.05(b) - To Facilitate Introduction of Produced Documents 404 - Discovery Depositions 404.01 - When Permitted and By Whom 404.02 - Who May be Deposed 404.03 - Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent 404.03(a) - Person Residing in the United States – In General 404.03(a)(1) - Person Residing in the United States – Party 404.03(a)(2) - Person Residing in the United States – Non-party 404.03(b) - Person Residing in a Foreign Country – Party 404.03(c) - Person Residing in a Foreign Country – Non-party 404.03(c)(1) - Willing Non-party 404.03(c)(2) - Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure 404.03(d) - Foreign Person Present Within the United States – Party 404.03(e) - Foreign Person Present Within the United States – Non-party 404.04 - Persons before Whom Depositions May be Taken 404.05 - Notice of Deposition 404.06 - Taking a Discovery Deposition 404.06(a) - Fed. R. Civ. P. 30(b)(1) Depositions by Oral Examination of a Natural Person 404.06(b) - Fed. R. Civ. P. 30(b)(6) Deposition of a Corporation, Organization, Partnership, Association, or Other Juristic Person 404.06(c) - Time for Deposition 404.06(d) - Re-Deposing a Witness 404.07 - Discovery Depositions on Written Questions 404.07(a) - Depositions on Written Questions: Before Whom Taken 404.07(b) - Depositions on Written Questions: When Taken 404.07(c) - Depositions on Written Questions: Place of Deposition 404.07(d) - Depositions on Written Questions: Notice of Deposition 404.07(e) - Depositions on Written Questions: Examination of Witness 404.07(f) - Depositions on Written Questions: Objections 404.07(g) - Depositions on Written Questions: Form of Deposition; Signature 404.07(h) - Depositions on Written Questions: Certification of Deposition 404.07(i) - Depositions on Written Questions: Service, Correction, and Making the Deposition of Record 404.07(j) - Deposition on Written Questions: Utility 404.08 - Discovery Deposition Objections 404.08(a) - Objections to Notice 404.08(b) - Objections as to Disqualification of Officer 404.08(c) - Objections During Deposition 404.09 - Discovery Depositions Compared to Testimony Depositions 404.10 - Limit on Number of Discovery Depositions 405 - Interrogatories 405.01 - When Permitted and By Whom 405.02 - Scope 405.03 - Limit on Number 405.03(a) - Description of Limit 405.03(b) - Application of Limit: Sets of Interrogatories 405.03(c) - Application of Limit: Multiple Marks, Etc. 405.03(d) - Application of Limit: Counting Interrogatories 405.03(e) - Remedy for Excessive Interrogatories 405.04 - Responses to Interrogatories 405.04(a) - Time for Service of Responses 405.04(b) - Nature of Responses 405.04(c) - Signature of Responses and Authority of Signer 406 - Requests for Production of Documents and Things and Electronically Stored Information 406.01 - When Permitted and By Whom 406.02 - Scope 406.03 - Elements of Request for Production 406.04 - Responses to Requests for Production 406.04(a) - Time for Service of Responses 406.04(b) - Place and Form of Production 406.04(c) - Nature of Responses 406.05 - Limit on Number 406.05(a) - Description of Limit 406.05(b) - Application of Limit: Sets of Requests for Production 406.05(c) - Application of Limit: Multiple Marks, Etc. 406.05(d) - Application of Limit: Counting Requests for Production 406.05(e) - Remedy for Excessive Requests for Production 407 - Requests for Admissions 407.01 - When Permitted and By Whom 407.02 - Scope and Nature of Requests for Admission 407.03 - Responses to Requests for Admission 407.03(a) - Time for Service of Responses 407.03(b) - Nature of Responses 407.03(c) - Signature of Responses 407.04 - Effect of Admission 407.05 - Limit on Number 407.05(a) - Description of Limit 407.05(b) - Application of Limit: Sets of Requests for Admission 407.05(c) - Application of Limit: Multiple Marks, Etc. 407.05(d) - Application of Limit: Counting Requests for Admission 407.05(e) - Remedy for Excessive Requests for Admission 408 - Duties to Cooperate, Search Records, Supplement 408.01 - Duty to Cooperate 408.01(a) - Obligation to Conduct Discovery Conference 408.01(b) - Obligation to Make Initial and Expert Testimony Disclosures 408.01(c) - Duty to Cooperate With Regard to Written Discovery and Disclosures 408.02 - Duty to Search Records 408.03 - Duty to Supplement Disclosures and Discovery Responses 409 - Filing Discovery Requests, Discovery Responses, and Disclosures With Board 410 - Asserting Objections to Requests for Discovery, Motions Attacking Requests for Discovery, and Disclosures 411 - Remedy for Failure to Provide Disclosures or Discovery 411.01 - Initial and Expert Testimony Disclosures 411.02 - Interrogatories or Requests for Production 411.03 - Requests for Admission 411.04 - Discovery Depositions 411.05 - Sanctions Related to Disclosures and Discovery 412 - Protective Orders 412.01 - In General – Board Standard Protective Order 412.01(a) - Proper Designation of Confidential Matter 412.01(b) - Challenging the Designation of Confidential Matter 412.01(c) - Over-designation: Improper designation of confidential filings with the Board 412.02 - Modification of Board’s Standard Protective Order Governing the Exchange of Confidential and Trade Secret/Commercially Sensitive Information 412.02(a) - Modification of Board’s Standard Protective Order upon Stipulation 412.02(b) - Pro Se Litigants and In-House Legal Counsel 412.02(c) - In Camera Inspection 412.02(d) - Contents of Protective Order 412.03 - Duration of Protective Order 412.04 - Filing Confidential Materials with Board 412.05 - Handling of Confidential Materials by the Board 412.06 - Protective Orders Limiting Discovery 412.06(a) - Depositions 412.06(b) - Other Discovery 413 - Telephone and Pretrial Conferences 413.01 - Telephone Conferences for Motions Relating to Discovery 413.02 - Pretrial Conferences 414 - Selected Discovery Guidelines 0500 - STIPULATIONS AND MOTIONS 501 - Stipulations 501.01 - In General 501.02 - Filing Stipulations 501.03 - Form of Stipulations 502 - Motions - In General 502.01 - Available Motions 502.02 - Form of Motions and Briefs on Motions 502.02(a) - Form of Motions 502.02(b) - Briefs on Motions 502.02(c) - Confidential Information 502.03 - Oral Hearings on Motions 502.04 - Determination of Motions 502.05 - Attorneys’ Fees, etc., on Motions 502.06 - Telephone and Pretrial Conferences 502.06(a) - Telephone Conferences 502.06(b) - Pretrial Conferences 502.07 - Fed. R. Civ. P. 11 Applicable 503 - Motion to Dismiss for Failure to State a Claim 503.01 - Time for Filing 503.02 - Nature of Motion 503.03 - Leave to Amend Defective Pleading 503.04 - Matters Outside the Pleading Submitted on Motion to Dismiss 504 - Motion for Judgment on the Pleadings 504.01 - Time for Filing 504.02 - Nature of Motion 504.03 - Matters Outside the Pleadings Submitted on Motion for Judgment on Pleadings 505 - Motion for a More Definite Statement 505.01 - Nature of Motion 505.02 - Time for Filing 505.03 - Failure to Obey Order for More Definite Statement 506 - Motion to Strike Matter From Pleading 506.01 - Nature of Motion 506.02 - Time for Filing 506.03 - Exhibits Attached to Pleadings 507 - Motion to Amend Pleading 507.01 - In General 507.02 - Amendments – General Rule – Fed. R. Civ. P. 15(a) 507.02(a) - Timing of Motion to Amend Pleading – In General 507.02(b) - Timing of Motion to Amend to Add Counterclaim 507.03 - Amendments to Conform to the Evidence - Fed. R. Civ. P. 15(b) 507.03(a) - During Trial After Objection to Trial Evidence 507.03(b) - To Add Issues Tried by Express or Implied Consent 508 - Motion for Default Judgment for Failure to Answer 509 - Motion to Extend Time; Motion to Reopen Time 509.01 - Nature of Motions 509.01(a) - Motions to Extend Time 509.01(b) - Motions to Reopen Time 509.01(b)(1) - In General 509.01(b)(2) - To Introduce Newly Discovered Evidence 509.02 - Form and Determination of Motions to Extend or Reopen 510 - Motion to Suspend; Motion to Resume 510.01 - In General 510.02 - Suspension Pending Outcome of Another Proceeding; Resumption 510.02(a) - Suspension 510.02(b) - Resumption 510.03 - Suspension for Other Reasons; Resumption 510.03(a) - Suspension 510.03(b) - Resumption 511 - Motion to Consolidate 512 - Motion to Join or Substitute 512.01 - Assignment of Mark 512.02 - Change of Name 512.03 - Issuance of Registration to Assignee, or in New Name 512.04 - Misidentification 513 - Motion to Withdraw as Representative; Petition to Disqualify 513.01 - Motion to Withdraw as Representative 513.02 - Petition to Disqualify 514 - Motion to Amend Application or Registration 514.01 - In General 514.02 - Amendment With Consent 514.03 - Amendment Without Consent 514.04 - Amendment to Allege Use; Statement of Use 515 - Motion to Remand Application to Examining Attorney 516 - Motion to Divide Application or Registration 517 - Motion to Strike Brief on Motion 518 - Motion for Reconsideration of Decision on Motion 519 - Motion for Leave to Serve Additional Interrogatories, Requests for Production of Documents, or Requests for Admission, or to Exceed Discovery Deposition Limits 520 - Motion to Take Foreign Deposition Orally 521 - Motion to Quash Notice of Deposition 522 - Motion for Order re Manner or Place of Document Production 523 - Motion to Compel Disclosure or Discovery 523.01 - In General 523.02 - Special Requirements for Motion 523.03 - Time for Filing Motion 523.04 - Failure to File Motion to Compel 524 - Motion to Test Sufficiency of Response to Requests for Admission 524.01 - In General 524.02 - Special Requirements for Motion 524.03 - Time for Filing Motion 524.04 - Failure to File Motion 525 - Motion to Withdraw or Amend Admission 526 - Motion for a Protective Order 527 - Motion for Sanctions 527.01 - Motion for Discovery Sanctions 527.01(a) - For Failure to Comply With Board Discovery Order 527.01(b) - If Party Says It Will Not Respond to Discovery Request or Make Required Disclosures 527.01(c) - Untimely Response to Discovery Requests 527.01(d) - In the Case of Requests for Admission 527.01(e) - Estoppel Sanction 527.01(f) - Motions in Limine 527.02 - Motion for Fed. R. Civ. P. 11 Sanctions 527.03 - Inherent Authority to Sanction 528 - Motion For Summary Judgment and Accelerated Case Resolution (ACR) 528.01 - General Nature of Motion 528.02 - Time For Filing Motion 528.03 - Suspension Pending Determination of Motion 528.04 - Miscaptioned Motion 528.05 - Summary Judgment Evidence 528.05(a) 528.05(a)(1) - In General 528.05(a)(2) - Accelerated Case Resolution (ACR) 528.05(b) - Affidavits and Accompanying Exhibits 528.05(c) - Discovery Responses and Disclosures 528.05(d) - Registrations 528.05(e) - Printed Publications and Official Records 528.05(f) - Testimony from Another Proceeding 528.06 - Request For Discovery to Respond to Summary Judgment 528.07 - Unpleaded Issue 528.07(a) - Not Basis for Entering Summary Judgment 528.07(b) - Not Defense Against Summary Judgment 528.08 - Entry of Summary Judgment in Favor of Nonmoving Party 529 - Motion to Offer Discovery Deposition of Self or Nonparty 530 - Motion to Use Testimony From Another Proceeding 531 - Motion That Deposition in Foreign Country Upon Written Questions Be Taken Orally 532 - Motion to Strike Notice of Reliance 533 - Motion to Strike Trial Testimony Affidavits and Declarations, and Oral Testimony Depositions 533.01 - On Ground of Untimeliness 533.02 - On Other Grounds 533.02(a) - On Ground of Improper or Inadequate Notice of Witness Testimony Taken by Oral Testimony Deposition 533.02(b) - On Ground of Failure to Disclose Witness in Expert, Pretrial or Rebuttal Disclosures 533.03 - Guidance Regarding Motions to Strike Testimony and Raising Substantive Objections 534 - Motion For Judgment For Plaintiff’s Failure to Prove Case 534.01 - In General 534.02 - Motion For Judgment Under 37 C.F.R. § 2.132(a) 534.03 - Motion For Judgment Under 37 C.F.R. § 2.132(b) 534.04 - Motion Under Fed. R. Civ. P. 41(b) or Fed. R. Civ. P. 50(a) Not Available 535 - Motion For Order to Show Cause Under 37 C.F.R. § 2.134(b) 536 - Motion For Order to Show Cause Under 37 C.F.R. § 2.128(a)(3) 537 - Motion For Leave to Exceed Page Limit For Brief On Case 538 - Motion For Leave to File Amicus Brief 539 - Motion to Strike Brief On Case 540 - Motion For Augmented Panel Hearing 541 - Motion to Change Oral Hearing Date; For Additional Time 541.01 - Motion to Change Oral Hearing Date 541.02 - Motion For Additional Time For Oral Argument 542 - Motion For Leave to Record Oral Hearing 543 - Motion For Reconsideration of Final Decision 544 - Motion For Relief From Final Judgment 0600 - WITHDRAWAL; SETTLEMENT 601 - Withdrawal by Opposition or Cancellation Plaintiff 601.01 - Withdrawal by Opposer 601.02 - Withdrawal by Petitioner or Counterclaimant 601.03 - Effect of Motion for Judgment 602 - Withdrawal by Opposition or Cancellation Defendant 602.01 - Withdrawal by Applicant 602.02 - Withdrawal by Respondent 602.02(a) - Surrender or Voluntary Cancellation of Registration 602.02(b) - Cancellation Under Section 8 or 71; Expiration Under Section 9 or 70 603 - Withdrawal by Interference or Concurrent Use Applicant 604 - Consent to Judgment 605 - Settlement 605.01 - In General 605.02 - Suspension for Settlement Negotiations 605.03 - Settlement Agreements 605.03(a) - In General 605.03(b) - With Amendment of Subject Application or Registration 605.03(c) - With Amendment of Plaintiff’s Pending Application 605.03(d) - Breach of Settlement Agreement 605.03(e) - Effect of Judgment Based Upon Agreement 605.03(f) - Consent Orders 606 - Effect on Counterclaim 0700 - TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 701 - Time of Trial 702 - Pretrial Disclosures; Manner of Trial; and Introduction of Evidence 702.01 - Pretrial Disclosures 702.02 - Introduction of Evidence 702.03 - Manner of Trial 702.04 - Accelerated Case Resolution 702.04(a) - In General 702.04(b) - ACR using Summary Judgment Briefs 702.04(c) - ACR Conversion - Summary Judgment Briefs 702.04(d) - ACR using Stipulated Record and Trial Briefs 702.04(e) - Utilizing Stipulations in Non-ACR Board cases 702.05 - Overly Large Records 703 - Taking and Introducing Testimony 703.01 - Affidavits, Declarations and Oral Testimony Depositions 703.01(a) - In General 703.01(b) - Form of Testimony 703.01(c) - Time for Taking Trial Testimony 703.01(d) - Time and Place of Oral Testimony Deposition 703.01(e) - Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of Affiant or Declarant 703.01(f) - Securing Attendance of Unwilling Adverse Party or Non-party for Testimony Deposition 703.01(f)(1) - In General 703.01(f)(2) - Unwilling Witness Residing in United States 703.01(f)(3) - Unwilling Witness Residing in Foreign Country 703.01(g) - Persons Before Whom Depositions May be Taken 703.01(h) - Examination of Witnesses 703.01(i) - Form of Deposition and Exhibits 703.01(j) - Signature of Deposition by Witness 703.01(k) - Certification and Filing of Trial Testimony 703.01(l) - Trial Testimony Must be Filed 703.01(m) - Service of Trial Testimony 703.01(n) - Correction of Errors in Trial Testimony Deposition 703.01(o) - Objections to Testimony Affidavits, Declarations and Depositions 703.01(p) - Confidential or Trade Secret Material 703.02 - Testimony Depositions on Written Questions 703.02(a) - Depositions on Written Questions: When Available 703.02(b) - Depositions on Written Questions: Before Whom Taken 703.02(c) - Depositions on Written Questions: When Taken 703.02(d) - Depositions on Written Questions: Place of Deposition 703.02(e) - Depositions on Written Questions: Notice of Deposition 703.02(f) - Depositions on Written Questions: Securing Attendance of Unwilling Witness 703.02(g) - Depositions on Written Questions: Examination of Witness 703.02(h) - Depositions on Written Questions: Form, Signature and Certification of Deposition 703.02(i) - Depositions on Written Questions: Service, Correction and Filing of Deposition 703.02(j) - Testimony Depositions on Written Questions Must be Filed 703.02(k) - Depositions on Written Questions: Objections to Deposition 703.02(l) - Depositions on Written Questions: Confidential or Trade Secret Material 703.02(m) - Depositions on Written Questions: Utility 704 - Introducing Other Evidence 704.01 - In General 704.02 - Notice of Reliance – Generally 704.03 - Applications and Registrations 704.03(a) - Subject of Proceeding 704.03(b) - Not Subject of Proceeding – In General 704.03(b)(1) - Registration Not Subject of Proceeding 704.03(b)(1)(A) - Registration Owned by Party 704.03(b)(1)(B) - Third-Party Registration 704.03(b)(2) - Application Not Subject of Proceeding 704.04 - Statements and Things in Application or Registration 704.05 - Exhibits to Pleadings or Briefs 704.05(a) - Exhibits to Pleadings 704.05(b) - Exhibits to Briefs 704.06 - Statements in Pleadings or Briefs 704.06(a) - Statements in Pleadings 704.06(b) - Statements in Briefs 704.07 - Official Records 704.08 - Printed Publications 704.08(a) - Traditional Printed Publications 704.08(b) - Internet Materials 704.08(c) - Other Printed Materials 704.09 - Discovery Depositions 704.10 - Interrogatory Answers; Admissions 704.11 - Produced Documents and Privilege Logs 704.12 - Judicial Notice 704.12(a) - Kind of Fact That May be Judicially Noticed 704.12(b) - When Taken 704.12(c) - Opportunity to be Heard 704.12(d) - Time of Taking Notice 704.13 - Testimony From Another Proceeding 704.14 - Initial Disclosures and Disclosed Documents 705 - Stipulated Evidence and Accelerated Case Resolution (ACR) 706 - Noncomplying Evidence 707 - Objections to Evidence 707.01 - In General 707.02 - Objections to Notices of Reliance 707.02(a) - In General 707.02(b) - On Procedural Grounds 707.02(b)(1) - On Ground of Untimeliness 707.02(b)(2) - On Other Procedural Grounds 707.02(c) - On Substantive Grounds 707.03 - Objections to Trial Testimony 707.03(a) - In General 707.03(b) - On Procedural Grounds 707.03(b)(1) - On Ground of Untimeliness 707.03(b)(2) - On Ground of Improper or Inadequate Notice 707.03(b)(3) - On Ground of Failure to Disclose 707.03(c) - On Other Procedural Grounds and on Substantive Grounds 707.03(c)(1) - Oral Testimony Depositions 707.03(c)(2) - Testimony By Affidavit or Declaration 707.03(c)(3) - Testimony Depositions on Written Depositions 707.03(d) - Refusal to Answer Deposition Question 707.04 - Waiver of Objection 0800 - BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 801 - Briefs on the Case 801.01 - In General 801.02 - Time for Filing 801.02(a) - Plaintiff’s Main Brief 801.02(b) - Defendant’s Main Brief 801.02(c) - Plaintiff’s Reply Brief 801.02(d) - Reply Brief for Defendant Not Permitted 801.02(e) - Special Situations 801.03 - Form and Contents of Brief 801.04 - Amicus Briefs 801.05 - Motion to Strike Brief on Case 802 - Oral Hearing 802.01 - In General 802.02 - Request for Oral Hearing 802.03 - Time and Place of Hearing 802.03(a) - Rescheduling a Hearing 802.03(b) - Attendance by Video Conference 802.04 - Before Whom Held 802.05 - Length of Oral Argument 802.06 - Audio Recording and Video Recording 802.07 - Visual Aids, etc. 802.08 - Nature of Hearing 803 - Final Decision 804 - Request for Rehearing, Reconsideration, or Modification of Final Decision 805 - Final Decision Remand to Examining Attorney 806 - Termination of Proceeding 807 - Status of Application after Proceeding 807.01 - Abandoned Applications and Registrations Entirely Cancelled 807.02 - Applications Not Abandoned and Registrations Not Cancelled 0900 - REVIEW OF DECISION OF BOARD 901 - Appeals--In General 901.01 - Avenues Of Appeal 901.02 - What May Be Appealed 901.02(a) - Final Decision Versus Interlocutory Decision 901.02(b) - Judgment Subject To Establishment Of Constructive Use 901.03 - Motions For Relief From Final Judgment During Appeal 902 - Appeal To Court Of Appeals For The Federal Circuit 902.01 - Notice Of Appeal 902.02 - Time For Filing Notice Of Appeal, Cross-Appeal 902.03 - Appeal To Federal Circuit Waives Appeal By Civil Action 902.04 - Notice Of Election To Have Review By Civil Action 902.05 - Information Concerning Times Specified In 37 C.F.R. § 2.145 902.06 - Certified List 902.07 - Appeal Briefs, Appendix, Etc. 902.08 - Special Provisions for Ex Parte Cases 903 - Review By Civil Action 903.01 - Notice Of Civil Action 903.02 - Parties To And Service Of Civil Action 903.03 - Place Of Civil Action 903.04 - Time For Filing Civil Action, Cross-Action 903.05 - Information Concerning Times Specified In 37 C.F.R. § 2.145 903.06 - Civil Action Precluded By Appeal To Federal Circuit 903.07 - Special Provisions For Ex Parte Civil Actions 904 - Access To Record During Appeal 904.01 - Access During Appeal To Federal Circuit 904.02 - Access During Review By Civil Action 905 - Petition To The Director 906 - Standards Of Review Of Board Decisions 906.01 - Appeal To Federal Circuit Or Review By Civil Action 906.02 - Petition To Director 1000 - INTERFERENCES 1001 - In General 1002 - Declaration of Interference 1003 - Institution of Interference 1004 - Issues in Interference 1005 - Burden of Proof 1006 - Addition of Party 1007 - Conduct of Proceeding 1100 - CONCURRENT USE PROCEEDINGS 1101 - In General 1101.01 - Nature of Proceeding 1101.02 - Context for USPTO Determination of Concurrent Rights 1102 - Generation of Proceeding 1102.01 - Means of Generation 1102.02 - Bases for Concurrent Registration – Board Determination; Court Determination 1103 - Requirements for Concurrent Use Application 1103.01 - Application Based on Board Determination 1103.01(a) - Application Must Assert Use in Commerce 1103.01(b) - Jurisdictional Requirement 1103.01(c) - Application Must Meet Requirements Applicable to Non-Restricted Application 1103.01(d) - Application Must Identify Nature and Extent of Restriction Sought 1103.01(d)(1) - In General 1103.01(d)(2) - Geographic Restrictions 1103.01(d)(3) - Mode of Use Restrictions 1103.01(e) - Application Must Identify Excepted Users and Their Asserted Rights 1103.01(f) - Other Requirements 1103.02 - Application Based on Prior Board Decision 1103.03 - Application Based on Court Determination 1104 - Parties to Proceeding; Involved Applications, Registrations 1105 - Applications and Registrations Not Subject to Proceeding 1106 - Commencement of Proceeding 1106.01 - Marking of Concurrent Use Application 1106.02 - Publication of Concurrent Use Application; Opposition Period 1106.03 - Preparing the Record for the Involved Application and Registration Files 1106.04 - Preparing Concurrent Use Notices 1106.05 - Locating Excepted Users 1107 - Answer; Default 1108 - Issue in Concurrent Use Proceeding; Burden of Proof 1109 - Conduct of Proceeding 1109.01 - Sample Trial Schedules - Cases Commenced On or After November 1, 2007 1110 - Settlement Providing for Concurrent Registration 1111 - Effect of Abandonment of Involved Application 1112 - Effect of Adverse Decision in Opposition or Cancellation 1113 - “Conversion ” of Opposition or Cancellation Proceeding to Concurrent Use Proceeding 1113.01 - Conversion of Opposition Proceeding 1113.02 - Conversion of Cancellation Proceeding 1114 - Alteration of Restrictions on Concurrent Registration 1200 - EX PARTE APPEALS 1201 - Propriety of Appeal 1201.01 - Readiness of Case for Appeal 1201.02 - Premature Final 1201.03 - Premature Appeal 1201.04 - Compliance With Requirements Not Subject of Appeal 1201.05 - Appeal versus Petition 1202 - Filing an Appeal 1202.01 - In General 1202.02 - Time for Appeal 1202.03 - Notice of Appeal 1202.04 - Appeal Fee 1202.05 - Multiple Class Applications 1203 - Appeal Briefs 1203.01 - Form of Brief 1203.02 - Time for Filing Brief 1203.02(a) - Applicant’s Main Brief 1203.02(b) - Trademark Examining Attorney’s Brief 1203.02(c) - Applicant’s Reply Brief 1203.02(d) - Extension of Time for Filing Brief 1203.02(e) - Material Submitted with Briefs 1203.02(f) - Cases Which May Be Cited 1203.02(g) - Waiver of Claim or Requirement in Brief 1204 - Effect of Request for Reconsideration of Final Action 1205 - Amendment of Application During Appeal 1205.01 - In General 1205.01(a) - Amendments and Requests for Reconsideration 1205.01(b) - Amendments and Requests for Remand 1205.01(b)(1) - In General 1205.01(b)(2) - Preferred Practices for Amending an Application during Appeal 1205.02 - Request to Divide 1205.02(a) - Request to Divide When Notice of Appeal is Submitted Electronically 1205.02(b) - Request to Divide When Notice of Appeal is Submitted on Paper due to ESTTA Technical Problems or Extraordinary Circumstances 1206 - Amendment to Allege Use; Statement of Use 1206.01 - Amendment to Allege Use 1206.02 - Statement of Use 1207 - Submission of Evidence During Appeal 1207.01 - General Rule — Evidence Submitted After Appeal Untimely 1207.02 - Request to Remand for Additional Evidence 1207.03 - Evidence Considered Due to Actions of Nonoffering Party 1207.04 - Evidence Filed with Timely Request for Reconsideration 1207.05 - Submission of Evidence upon Remand for New Refusal 1207.06 - Letter of Protest Evidence 1208 - Treatment of Evidence 1208.01 - Evidence from NEXIS Database, Printed Publications, or Online Publications 1208.02 - Cited Registrations and Third-Party Registrations and Applications 1208.03 - Internet Material, Social Media and Multimedia Materials 1208.04 - Judicial Notice 1208.05 - Applicant’s Own Materials 1208.06 - Confidential Material 1209 - Remand 1209.01 - Upon Board’s Own Initiative 1209.02 - Upon Request by Trademark Examining Attorney 1209.03 - Upon Determination of Letter of Protest 1209.04 - Upon Request by Applicant 1210 - Approval for Publication During Appeal 1211 - Abandonment During Appeal 1212 - Cancellation or Assignment of Cited Registration 1213 - Suspension of Appeal 1214 - Consolidation 1215 - Alternative Positions 1216 - Oral Hearing 1217 - Final Decision 1218 - Reopening (Amendment, Etc. After Final Decision) 1219 - Review of Final Decision 1219.01 - By Request for Reconsideration 1219.02 - By Appeal 1220 - Termination of Appeal Attachment A - APPENDIX OF FORMS Attachment C - INDEX TO CHANGES Attachment D - List of Acronyms

703.02(b) Depositions on Written Questions: Before Whom Taken

37 C.F.R. § 2.142(a) A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] For further information, see TBMP § 703.01(g).

NOTES:

1. See 37 C.F.R. § 2.124(a). See, e.g., Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984, at *3 n.8 (TTAB 2019) (both the procedure for oral cross-examination or cross-examination on written questions require a court reporter or other officer to swear in the witness, record the answers and to create a written transcript of the examination).