502.02 Form of Motions and Briefs on Motions
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto ... must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
37 C.F.R. § 2.127(a) Every motion must be submitted in written form and must meet the requirements prescribed in § 2.126. It shall contain a full statement of the grounds, and shall embody or be accompanied by a brief. Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. If a motion for an extension is denied, the time for responding to the motion remains as specified under this section, unless otherwise ordered. Except as provided in paragraph (e)(1) of this section, a reply brief, if filed, shall be filed within twenty days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended or reopened. The Board will consider no further papers in support of or in opposition to a motion. Neither the brief in support of a motion nor the brief in response to the motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief shall not exceed ten pages in length in its entirety. Exhibits submitted in support of or in opposition to a motion are not considered part of the brief for purposes of determining the length of the brief. When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. An oral hearing will not be held on a motion except on order by the Board. ...
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37 C.F.R. § 2.127(e)(1) ... If no motion under Rule 56(d) is filed, a brief in response to the motion for summary judgment shall be filed within thirty days from the date of service of the motion unless the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board.
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/ttab ). 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 in paper 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 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.
502.02(b) Briefs on Motions
Every motion must embody or be accompanied by a brief. [ Note 1.]
Briefs on motions, and any exhibits thereto, must meet the general requirements for submissions to the Board set forth in 37 C.F.R. § 2.126. See TBMP § 106.03 (Form of Submissions).
Briefs on motions are also subject to page limitations and time requirements. [ Note 2.] Briefs in support of and in response to a motion may not exceed 25 pages in length and a reply brief may not exceed 10 pages. [ Note 3.] Exhibits submitted with the brief are not counted in determining the length of the brief. However, because 37 C.F.R. § 2.127(a) does not require an index of cases and authorities or a table of contents, should a party elect to include these items, they will count as part of the page limit for the brief. [ Note 4.]
A brief in response to a motion, except a motion for summary judgment, must be filed within 20 days from the date of service of the motion. [ Note 5.] When a motion for summary judgment is filed, a brief in response, or a motion for Fed. R. Civ. P. 56(d) discovery must be filed within 30 days from the date of service of the summary judgment motion. [ Note 6.] See also TBMP § 528.02 for further information regarding the time for filing a motion for summary judgment. The time for filing a responsive brief may be extended, but the time for filing, in lieu thereof, a motion for Fed. R. Civ. P. 56(d) discovery will not be extended, even upon the parties’ consent. [ Note 7.] See TBMP § 528.06 (Request for Discovery to Respond to Summary Judgment).
These time periods for responding to motions shall apply unless another time is specified by the Board; or the time is extended by stipulation of the parties approved by the Board or by order of the Board on motion for good cause; or the time is reopened by stipulation of the parties approved by the Board or by order of the Board on motion showing excusable neglect. [ Note 8.] See TBMP § 509. If a motion for an extension of time to respond to a motion is denied, the time for responding to the motion remains as specified under 37 C.F.R. § 2.127(a), unless otherwise ordered. [ Note 9.]
A reply brief, if filed, including a reply brief for a summary judgment motion, shall be filed within 20 days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended, even upon the parties’ consent. [ Note 10.] No further papers (including surreply briefs) will be considered by the Board. [ Note 11.] The filing of reply briefs is discouraged, as the Board generally finds that reply briefs have little persuasive value and are often a mere reargument of the points made in the main brief. [ Note 12.] If the nonmoving party does not file a responsive brief, a reply brief should not be filed.
In general, all motions should be filed separately, or at least be captioned separately, to ensure they receive attention. A party should not embed a motion in another filing that is not routinely reviewed by the Board upon submission. [ Note 13.]
NOTES:
1. 37 C.F.R. § 2.127(a). See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 n.15 (TTAB 2010) (citing 37 C.F.R. § 2.127(a)).
3. 37 C.F.R. § 2.127(a). See also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141 (TTAB 2011) (reply brief not considered because it exceeded the page limit); Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (the page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues; in other words, one cannot exceed the page limitation for a brief by combining an opposition brief and cross-motion addressing the same issue); Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2010 (TTAB 2002) (reply brief was untimely and exceeded page limit); Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB 2000) (respondent improperly attempted to circumvent the page limitations in 37 C.F.R. § 2.127(a) by "dissect[ing] what is a single motion to compel into two motions separately addressing the interrogatories and document requests in order to file briefs totaling 50 pages").
4. Saint-Gobain Corp. v. Minnesota Mining and Manufacturing Co., 66 USPQ2d 1220, 1222 (TTAB 2003). See also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141 (TTAB) (over-length reply brief included a table of contents and a table of authorities).
5. 37 C.F.R. § 2.127(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (Oct. 7, 2016) ("provision adding five days to the prescribed period for action after service by the postal service or overnight courier" removed, "[a]ll fifteen-day response dates initiated by a service date are amended to twenty days.").
6. 37 C.F.R. § 2.127(e)(1). See McDonald’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (extension of Fed. R. Civ. P. 56(d) motion prohibited by 37 C.F.R. § 2.127(e)(1)).
7. See McDonald’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (extending filing deadline of a Rule 56(d) motion, even by consent, is in contravention of the provisions of 37 C.F.R § 2.127 and, therefore, prohibited).
8. Fed. R. Civ. P. 6(b).
10. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1). See McDonald's Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (denying parties’ stipulation to provide for additional five days, noting that such a stipulation would violate the provisions of 37 C.F.R. § 2.127, which do not allow for extensions of time to file reply briefs); Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2010 (TTAB 2002) (approval of consented motion to extend time to file reply brief vacated).
11. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (because 37 C.F.R. § 2.127(a) prohibits the filing of surreply briefs, opposer’s surreply to applicant’s motion was not considered); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000).
12. No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989) ("The presentation of one’s arguments and authority should be presented thoroughly in the motion or the opposition brief thereto"); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1222 n.4 (TTAB 1987) (reply brief, constituting mere reargument given no consideration).
13. See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 (TTAB 2010); and Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007).
502.02(c) Confidential Information
The Board’s standard protective order is automatically in place for inter partes proceedings unless the Board approves a stipulation or motion to use an alternative order. [ Note 1.] Except for materials filed under seal pursuant to a protective order or designated as confidential in ESTTA, the files of applications and registrations that are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public inspection and copying on TTABVUE, http://ttabvue.uspto.gov (docket information and full images of Board files). [ Note 2.] Therefore, only the particular portion of a motion that discloses confidential information should be electronically designated as "CONFIDENTIAL" in ESTTA or when filed by paper under seal pursuant to a protective order. Parties should avoid over-designation of non-confidential information as confidential. To the extent a party has improperly designated information as confidential, the Board may disregard the confidential designation when appropriate. [ Note 3.]. If a party submits a motion containing confidential information either electronically via ESTTA or by paper under seal, the party must also submit for the public record a redacted version of the motion. [ Note 4.]
Confidential information filed without appropriate designation in accordance with the Board’s standard protective order or one adopted by the parties as a substitute for the standard order is not regarded as confidential, will not be kept confidential by the Board and will be placed in the Board’s public records available on the Internet. [ Note 5.] To be handled as confidential and kept out of the public record, submissions to the Board must be filed using the "Confidential" selection available in ESTTA, or filed in paper under a separate cover with a showing by written explanation accompanying the submission that ESTTA was unavailable due to technical problems or that extraordinary circumstances justify the paper submission. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted concurrently for public viewing. [ Note 6.]
When filing confidential documents electronically through ESTTA, the party must use the "File Documents in a Board Proceeding" option, select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use," enter the proceeding number and click "Start." The documents filed in this manner will not be viewable in the publicly available electronic proceeding file. The party filing the confidential document electronically must also file concurrently a separate redacted version of the confidential filing for public viewing.
Any confidential filing must include redacted versions for the public record. See 37 C.F.R. § 2.126(c). For any confidential unredacted version of a submission for which a redacted version must be filed, the parties are encouraged to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision.
Disclosure of an individual’s personally identifiable information (e.g., social security number, financial account numbers, or home address) is not necessary. Such information should always be redacted from any submission.
For further information regarding protective orders, see TBMP § 412 and TBMP § 412.01. For further information regarding confidential materials, see TBMP § 120.02 ("Access to Files – Confidential Material"), TBMP § 703.01(p) ("Affidavits, Declarations and Oral Testimony Depositions - Confidential or Trade Secret Material"), and TBMP § 801.03 ("Form and Content of Briefs").
NOTES:
2. 37 C.F.R. § 2.27(d); 37 C.F.R. § 2.27(e), and 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
3. 37 C.F.R § 2.116(g) ("[t]he Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party."); see also Kohler Co. v. Honda Giken K.K., 125 USPQ2d 1468, 1475 (TTAB 2017) (citing Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016)); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014). Cf. Uniloc 2017 LLC v. Apple, Inc., 964 F.3d 1351, 2020 USPQ2d 10757 (Fed. Cir. 2020) (discussing the treatment of over-designation of confidential material in a patent infringement case).
4. 37 C.F.R. § 2.27(e) and 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
5. Cf. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (Board was not bound by parties’ overdesignation of testimony and evidence as confidential); and Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003).
6. 37 C.F.R. § 2.126(c). See also Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).