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). The parties are free to enter into other stipulations regarding the submission of evidence. [ Note 1.] 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. [ Note 2.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 3.] To obtain the full benefit of ACR, parties should draft clearly-worded stipulations about procedures, evidence, and the factual record. [ Note 4.] Parties may stipulate to facts, supported by the record, that underlie necessary legal determinations such as whether the plaintiff has an entitlement to a statutory cause of action to bring the proceeding (formerly referred to as "standing"), see TBMP § 309.03(b), or whether confusion is likely. [ Note 5.] However, because the Board makes determinations of the law governing a registration dispute, the Board is not bound by the parties’ stipulations or agreements with respect to questions of law. [ Note 6.]
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 7.] 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 8.] 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. Reply briefs are limited to 10 pages unless otherwise stipulated [ Note 9.] 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 10.]
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 11.]
For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).
NOTES:
1. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
2. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018).
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 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. Mar. 7, 2013).
4. See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018) (parties had "somewhat different views" about language in their stipulation, Board emphasized importance of drafting "clearly-worded stipulations" so parties may "obtain the full benefit of ACR").
5. Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
6. Cf. Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989) ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939) ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
7. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
8. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
9. 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).").
10. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
11. 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).