510 Motion to Suspend; Motion to Resume
37 C.F.R. § 2.117 Suspension of proceedings.
- (a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a civil action, another Board proceeding, or an expungement or reexamination proceeding may have a bearing on a pending case, proceedings before the Board may be suspended until termination of the civil action, the other Board proceeding, or the expungement or reexamination proceeding. A civil action or proceeding is not considered to have been terminated until an order or ruling that ends litigation has been rendered and noticed and the time for any appeal or other further review has expired with no further review sought.
- (b) Whenever there is pending before the Board both a motion to suspend and a motion which is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered regardless of the order in which the motions were filed.
- (c) Proceedings may also be suspended sua sponte by the Board, or, for good cause, upon motion or a stipulation of the parties approved by the Board. Many consented or stipulated motions to suspend are suitable for automatic approval by ESTTA, but the Board retains discretion to condition approval on the party or parties providing necessary information about the status of settlement talks, discovery activities, or trial activities, as may be appropriate.
37 C.F.R. § 2.120(f)(2) When a party files a motion for an order to compel initial disclosures, expert testimony disclosure, or discovery, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion to compel is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in a Board order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.
37 C.F.R. § 2.127(d) When any party timely files a potentially dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a motion for summary judgment, the case is suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise may be specified in Board’s suspension order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.
37 C.F.R. § 2.146(g) The mere filing of a petition to the Director will not act as a stay in any ... inter partes proceeding that is pending before the Trademark Trial and Appeal Board ... except when a stay is specifically requested and is granted ...
37 C.F.R. § 2.124(d)(2) ... Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written questions.
510.01 In General
Flowing from the Board’s inherent power to schedule disposition of the cases on its docket is the power to stay proceedings, which may be exercised by the Board upon its own initiative, upon motion, or upon stipulation of the parties approved by the Board. [ Note 1.] Some of the most common reasons for suspension are discussed below.
NOTES:
1. See 37 C.F.R. § 2.117; Schering-Plough Animal Health Corp. v. Aqua Gen AS, 90 USPQ2d 1184, 1185 (TTAB 2009); Carrini, Inc. v. Carla Carini, S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000); Opticians Association of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021, 2029 (D.N.J. 1990) ("The power to stay a cancellation proceeding resides only in the Board itself.") (citing The Other Tel. Co. v. Conn. National Tel. Co., 181 USPQ 779, 782 (Comm’r 1974)), rev’d on other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990).
510.02 Suspension Pending Outcome of Another Proceeding; Resumption
510.02(a) Suspension
Whenever it comes to the attention of the Board that a party or parties to a case pending before it are involved in a civil action that may have a bearing on the Board case, proceedings before the Board may be suspended until final determination of the civil action. [ Note 1.]
Most commonly, a request to suspend pending the outcome of another proceeding seeks suspension because of a civil action pending between the parties in a federal district court. Although the Supreme Court held that issue preclusion can be based on a decision by the Board in a case in which the ordinary elements of issue preclusion are met, the Board’s policy to suspend in favor of a civil action has not changed. A civil action may involve other matters outside Board jurisdiction and may consider broader issues beyond right to registration and, therefore, judicial economy is usually served by suspension. [ Note 2.]
Further, pursuant to 37 C.F.R. § 2.117(a), the Board may also, in its discretion, suspend a proceeding pending the final determination of another Board proceeding in which the parties are involved [ Note 3.], or a civil action pending between the parties in a state court [ Note 4.], or a foreign action between the parties, wherein one party challenges the validity of a foreign registration upon which the other party’s subject application is based [ Note 5.], or an arbitration pending between the parties [ Note 6.], or another proceeding in which only one of the parties is involved [ Note 7.], or an expungement or reexamination proceeding pending before the USPTO.
Unless there are unusual circumstances, the Board will suspend proceedings in the case before it if the final determination of the other proceeding may have a bearing on the issues before the Board. [ Note 8.]
The Board seldom grants a motion to suspend a particular proceeding pending disposition of other opposition or cancellation proceedings brought by unrelated plaintiffs against the same application or registration, and asserting unrelated claims, absent the consent of the other parties. [ Note 9.] An exception may be made for purposes of consistency and economy where there are common claims in the separate proceedings. The Board may then order suspension of the other proceedings pending disposition of the proceeding that appears closest to issuance of a final decision. [ Note 10.] If the multiple proceedings are at the same stage of litigation and plead the same claims, the Board may order consolidation. [ Note 11.]
Suspension of a Board proceeding pending the final determination of another proceeding is solely within the discretion of the Board; the court in which a civil action is pending has no power to suspend proceedings in a case before the Board [ Note 12.], nor do parties or their attorneys. [ Note 13.] However, if, as sometimes happens, the court before which a civil action is pending elects to suspend the civil action to await determination of the Board proceeding and the Board is so advised, the Board will go forward with its proceeding. [ Note 14.]
When a motion to suspend pending the outcome of a civil action is filed, the Board normally will require that a copy of the operative pleadings from the civil action be submitted, so that the Board can ascertain whether the final determination of the civil action may have a bearing on the issues before the Board. [ Note 15.] This requirement ordinarily is waived if all parties consent to the suspension. See TBMP § 502. When the suspension is consented to by all parties, the filer should use the "consent motions" option in ESTTA, which requires that the filer certify that the adverse party has consented to the suspension. If an adverse party has not consented, the filing must still be made via ESTTA, but the filer should select the "general filings" option from the drop-down menu instead of the "consent motions" option. See 37 C.F.R. § 2.126(a), TBMP § 110 and http://estta.uspto.gov for information regarding filing via ESTTA.
The Board does not usually require that an issue be joined (i.e., that an answer be filed) in one or both proceedings before the Board will consider suspending a Board proceeding pending the outcome of another proceeding. [ Note 16.] Such a requirement is made only in those cases where there is no stipulation to suspend and it is not possible for the Board to ascertain, prior to the filing of an answer in one or both proceedings, whether the final determination of the other proceeding may have a bearing on the issues before the Board.
If there is pending, at the time when the question of suspension of proceedings before the Board is raised, a motion that is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered. [ Note 17.] The purpose of this rule is to prevent a party served with a potentially dispositive motion from escaping the motion by filing a civil action and then moving to suspend before the Board has decided the potentially dispositive motion. However, the Board, in its discretion, may elect to suspend without first deciding the potentially dispositive motion.
NOTES:
1. 37 C.F.R. § 2.117(a). See General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992); Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689, 692 (TTAB 1975), rev’d on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974), pet. denied, 181 USPQ 779 (Comm’r 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-07 (TTAB 1971).
2. See, e.g., B&B Hardware, Inc. v. Hargis Industries, Inc., 135 U.S. 1293, 135 S. Ct. 1293, 113 USPQ2d 2045, 2048, 2053, 2056 (2015) ("[A] court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met." (2048); "When a district court, as part of its judgment, decides an issue that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment." (2053); and "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." (2056)); Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2d Cir. 1988) (doctrine of primary jurisdiction might be applicable if a district court action involved only the issue of registrability, but would not be applicable where court action concerns infringement where the interest in prompt adjudication far outweighs the value of having the views of the USPTO); American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 USPQ2d 1208, 1211 (D. Minn. 1986) (primary jurisdiction should not be invoked where, inter alia, a stay of the district court action is more likely to prolong the dispute than lead to its economical disposition and where the district court action includes claims which cannot be raised before the Board); Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1253-54 (TTAB 2011) (no claim preclusion based on district court’s determination because civil action focused on respective uses and rights to use while Board proceeding focus on right to registration; issue preclusion based on district court determination found); New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (decision by district court may be binding on the Board, but determination by the Board of a defendant’s right to obtain or maintain a registration would not be ... res judicata in the court proceeding); Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689, 692 (TTAB 1975), rev'd on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977).
Cf. Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018) (district court’s direction to the Commissioner of Trademarks to "transfer the application" to plaintiff exceeds the court’s statutory authority to rectify the register under Section 37 of the Trademark Act, which is limited to registrations, not pending applications).
Cf. Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1253 n.6 (TTAB 2011) (district court may have lacked jurisdiction to entertain a counterclaim to refuse registration because the involved mark was the subject of an application, not a registration); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844-45 (TTAB 1995) (district court finding concerning priority of use not binding in view of differences in interpretation of Trademark Act § 7(c) by Board and court, and finding regarding priority of secondary meaning not binding because said issue was not involved in the Board proceeding).
3. Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (suspended pending outcome of ex parte prosecution of opposer’s application).
4. See Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 395 (Fed. Cir. 1983) (noting stay based in part on state court infringement action); Professional Economics Incorporated v. Professional Economic Services, Inc., 205 USPQ 368, 376 (TTAB 1979) (decision of state court, although not binding on the Board, was considered persuasive on the question of likelihood of confusion); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB 1975) (state court action to determine ownership of applicant’s mark and authority of applicant to file application).
5. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (Board suspended proceedings pending receipt of pleadings and other documentation to determine whether proceeding in the United Kingdom may have a bearing in Board proceeding); Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792, 1793-94 (TTAB 1993) (opposition suspended pending decision of German court on validity of foreign registration which is the basis of the U.S. application involved in the opposition).
6. See Hu v. TJ Food Services, LLC, 123 USPQ2d 1777, 1781 (TTAB 2017) (maintaining suspension to afford parties the opportunity to commence arbitration).
7. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (Board suspended proceedings pending receipt of pleadings and other documentation to determine whether proceeding in the United Kingdom may have a bearing in Board proceeding); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB 1975) (state court action between applicant and third party to determine ownership of applicant’s mark).
8. 37 C.F.R. § 2.117(a). See, e.g., New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need not be dispositive of Board proceeding, but only needs to have a bearing on issues before the Board); General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992) (relief sought in federal district court included an order directing Office to cancel registration involved in cancellation proceeding); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974) (decision in civil action for infringement and unfair competition would have bearing on outcome of Trademark Act § 2(d) claim before Board), pet. denied, 181 USPQ 779 (Comm’r 1974). See also Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-07 (TTAB 1971); Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
But see Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018-19 (TTAB 2003) (petitioner’s motion to suspend filed after trial denied as untimely, and in any event, petition was dismissed since petitioner’s only proffered evidence had been stricken); E.I. du Pont de Nemours & Co. v. G.C. Murphy Co., 199 USPQ 807, 808 n.3 (TTAB 1978); Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 (TTAB 1973) (in each case, a motion to suspend filed after the conclusion of testimony and briefing periods, when the Board proceeding was ready for decision, was denied).
9. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1551 (TTAB 2011).
10. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
11. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
12. See Opticians Association of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021, 2029 (D.N.J. 1990) (district court has no control over Board docket and no power to stay Board proceedings), rev’d on other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990).
13. See Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
14. See Tigercat International, Inc. v. Caterpillar, Inc., 127 USPQ2d 1132, 1139-40 (D. Del. 2018) (district court granted motion to stay its action in lieu of pending Board proceeding finding it to be a case of "tactical gamesmanship;" party filed district court action only ten days before the close of three years of contentious discovery and two months before the start of trial in Board proceeding).
15. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (party ordered to submit status of and pleadings from a foreign action between the parties so Board may ascertain whether final determination of that proceeding may have a bearing on the issues before the Board); New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (Board will scrutinize pleadings in civil action to determine if the issues before the court may have a bearing on the Board’s decision); Forest Laboratories Inc. v. G.D. Searle & Co., 52 USPQ2d 1058, 1060 (TTAB 1999) (parties required to submit a copy of the complaint in the civil action so that Board may determine whether suspension is warranted); SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 415 (TTAB 1975), appeal dismissed, 530 F.2d 953, 189 USPQ 15 (CCPA 1976).
16. See Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974).
17. See 37 C.F.R. § 2.117(b). See also Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018-19 (TTAB 2003) (motion to strike petitioner’s notice of reliance, its only evidence in the case, decided before motion to suspend, and granted).
510.02(b) Resumption
When a proceeding before the Board has been suspended pending the outcome of another proceeding, and that other proceeding has been finally determined, the interested party should promptly notify the Board in writing of the disposition of the other proceeding, and request that further appropriate action be taken in the Board proceeding. Usually, the interested party requests, as a result of the decision in the other proceeding, that judgment be entered in its behalf on one or more issues in the Board proceeding. [ Note 1.] A copy of the decision in the other proceeding should accompany the notification. The Board will then issue a show cause order as to why judgment on the identified issues should not be entered in favor of the moving party. Absent any such notification as to the final determination of the civil action, cases that have been suspended pending civil action will usually remain in a suspended status for one year before the Board will issue an order requiring the parties to provide the status of the civil action.
A proceeding is considered to have been finally determined when an order or ruling that ends litigation has been rendered, and no appeal has been filed, or all appeals filed have been decided and the time for any further review has expired. The expiration of any further review includes the time for petitioning for rehearing or U.S. Supreme Court review. The Board does not resume its proceedings until after the time for seeking such review has expired, a decision denying or granting such review has been rendered, and any further review has been completed.
NOTES:
1. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) ("Within twenty days after the final determination of the civil action, opposer must so notify the Board so that this case may be called up for appropriate action.").
510.03 Suspension for Other Reasons; Resumption
510.03(a) Suspension
The Board suspends proceedings in cases before it for a wide variety of reasons including those discussed below.
Upon motion or upon stipulation. Proceedings may be suspended for good cause upon motion or stipulation of the parties approved by the Board. [ Note 1.] For example, proceedings may be suspended, upon motion or stipulation under 37 C.F.R. § 2.117(c), for purposes of settlement negotiations, subject to the right of either party to request resumption at any time. [ Note 2.] However, the Board generally will not approve a motion or stipulation to suspend filed after answer and before the discovery conference without a sufficient showing of good cause. The mere desire to engage in settlement discussions is unlikely to constitute good cause for a suspension of the deadline for the discovery conference because the discovery conference itself provides the parties an opportunity to discuss settlement. [ Note 3.] In addition, if, during the course of the proceedings, a motion to extend time indicates that the parties are negotiating for settlement, the Board may, in lieu of granting the requested extension, suspend proceedings for a specified time, usually six months, subject to resumption by either party at any time. See TBMP § 509.02.
Note, however, that the Board will not suspend proceedings indefinitely upon allegations of settlement talks, discovery activities, or trial activities. After a period of time, the Board may require the parties to file a detailed report on the progress of their settlement, discovery, or trial activities. Further, the Board may, in its discretion, deny further suspension when the parties have already been granted a reasonable time to engage in settlement, discovery, or trial activities. While parties are encouraged to settle their cases and have a duty to cooperate in the discovery process, the Board has an interest in seeing its cases conclude in a timely manner. [ Note 4.]
The parties may also agree to suspend proceedings for consideration of a matter by an examining attorney, including the disposition of a party’s application before the examining attorney. [ Note 5.]
Bankruptcy. The Board will issue an order suspending proceedings if it comes to the attention of the Board that the defendant has filed a petition for bankruptcy. [ Note 6.] Under the automatic stay provisions of Section 362 of the United States Bankruptcy Code, 11 U.S.C. § 362, a petition for bankruptcy (filed under Section 301, 302, or 303 of the Code, 11 U.S.C. § 301, 302, or 303) operates as a stay, inter alia, of the commencement or continuation of a judicial, administrative, or other action or proceeding against the debtor that was or could have been commenced before the commencement of the bankruptcy case. However, if it is the plaintiff in the Board proceeding, rather than the defendant, who has filed a petition for bankruptcy, the automatic stay provisions do not mandate the suspension of the Board proceeding unless there is a counterclaim in the Board proceeding for cancellation of the plaintiff’s registration(s). Nonetheless, for good cause shown, the Board may suspend a proceeding based upon a plaintiff’s bankruptcy.
Withdrawal of counsel. If, in a Board proceeding, a party’s attorney or other authorized representative files a request to withdraw as counsel for the party, and the request is granted, the Board will suspend proceedings and allow the party a stated period of time (usually 30 days) in which to appoint a new attorney or, if a U.S.-domiciled party, to file a paper stating that it intends to represent itself (i.e., proceed pro se), failing which the Board may issue an order to show cause why default judgment should not be entered against the party. [ Note 7.] See, with respect to withdrawal of counsel, TBMP § 116.02-TBMP § 116.05 and TBMP § 513.01. For information concerning action by the Board after expiration of the time allowed in the suspension order, see TBMP § 510.03(b). A party may inform the Board of the appointment of new counsel either by filing written notification thereof (as, for example, by filing a copy of the new appointment), or by having new counsel make an appearance on the party’s behalf in the proceeding. See TBMP § 114.03 (Representation by Attorney). See also TBMP § 114.04 (Representation by Non-Lawyer) and TBMP § 114.05 (Representation by Foreign Attorney).
Potentially dispositive motion. When a party to a Board proceeding timely files a motion that is potentially dispositive of the proceeding, such as a motion to dismiss, [ Note 8.], a motion for judgment on the pleadings, or a motion for summary judgment, the case is considered automatically suspended by operation of 37 C.F.R. § 2.127(d) with respect to all matters not germane to the motion. [ Note 9.]
The timely filing of such a potentially dispositive motion itself operates to suspend a case. When issuing its suspension order or subsequent order on the motion, the Board will ordinarily treat the proceeding as if it had been suspended as of the filing date of the potentially dispositive motion. [ Note 10.] In addition to tolling the time to respond to outstanding discovery requests, suspension of proceedings tolls the time for parties to make required disclosures. On a case-by-case basis, however, the Board may find that the filing of a potentially dispositive motion does not provide a party with good cause for failing to comply with an otherwise outstanding obligation. [ Note 11.]
Once a timely filed potentially dispositive motion operates to suspend proceedings in a case, no party should file any paper that is not germane to the motion, except as otherwise may be specified in a Board order. [ Note 12.]
Motion to compel. Pursuant to 37 C.F.R. § 2.120(f) when a party files a motion to compel initial disclosures, expert disclosures or discovery, the Board will issue an order suspending the proceeding with respect to all matters not germane to the motion, [ Note 13.], and no party should file any paper that is not germane to the discovery dispute, except as otherwise specified in the Board’s suspension order. However, neither the filing of a motion to compel nor the Board’s resulting suspension order tolls the time for parties to respond to any outstanding discovery requests that had been served prior to the filing of the motion to compel, nor does it excuse a party’s appearance at any discovery deposition that had been duly noticed prior to the filing of the motion to compel, nor does it excuse a party from making any required discovery disclosures. When the motion to compel is filed after discovery has closed, the parties need not make pretrial disclosures until directed to do so by the Board. [ Note 14.] See TBMP § 523 regarding motions to compel.
Motion to divide. A registration or application that is the subject of a Board inter partes proceeding may be divided into two or more separate applications or registrations. Any request to divide out the unopposed goods or services will routinely be granted. A request to divide generally will not result in suspension of the proceeding. For more information on motions to divide, see TBMP § 516.
Petition to the Director. In general, the mere filing of a petition to the Director seeking review of an interlocutory decision or order of the Board will not act as a stay of the Board proceeding pending disposition of the petition. See generally TBMP § 905. Such a stay must be specifically requested of the Board and granted by the Board. [ Note 15.] The decision as to whether to grant such a stay is within the Board’s discretion. Unless and until the Board issues a suspension order, all times continue to run as previously set or reset by the Board.
Testimonial depositions on written questions. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions pursuant to 37 C.F.R. § 2.124, the Board will suspend or reschedule other deadlines or time periods in the case to allow for the orderly completion of the depositions upon written questions. [ Note 16.] See TBMP § 703.02(c).
Discovery depositions on written questions. Upon receipt of written notice that one or more discovery depositions are to be taken upon written questions pursuant to 37 C.F.R. § 2.124(b)(2), the Board may suspend or reschedule other deadlines or time periods in the case to allow for the orderly completion of the depositions upon written questions. See TBMP § 404.07(e).
To conduct discovery of expert witness: The Board may suspend proceedings to provide for the taking of any necessary discovery of a proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. [ Note 17.] See TBMP § 408.01(b). For further information regarding expert disclosures, see TBMP § 401.03
NOTES:
2. See Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (it may be the safest course of action for parties engaged in settlement to file a consented motion or stipulation to suspend proceedings); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (order suspending proceedings for settlement vacated once it came to Board’s attention that adverse party objected to suspension on such basis). See also Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1704 (TTAB 2002) (proceedings are not suspended automatically when parties are discussing settlement and a party that fails to timely move for extension or suspension of dates on the basis of settlement does so at its own risk).
3. Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 n.1 (TTAB 2008).
4. 37 C.F.R. § 2.117(c). Cf. Shen Manufacturing Co. v. Ritz Hotel Ltd, 393 F.3d 1238, 73 USPQ2d 1350, 1353 n.2 (Fed. Cir. 2004) ("RHL’s applications languished at the United States Patent and Trademark Office ("PTO") for nearly two decades as the result of the parties’ failure to move the applications and corresponding oppositions forward."), cert. denied, 126 S. Ct. 357 (2005); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) ("The Board has adopted the practice of discovery conferences to avoid needless disputes and motions and to facilitate a smooth and timely conclusion to Board proceedings.").
5. See, e.g., The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (suspended pending consideration of consent agreement by examining attorney).
6. See, e.g., In re Checkers of North America Inc., 23 USPQ2d 1451, 1452 (Comm’r 1992) (noting that case was previously suspended where debtor’s (petitioner’s) pleaded registration was the subject of a counterclaim) aff’d sub nom. Checkers Drive-In Restaurants, Inc. v. Comm'r, 51 F.3d 1078, 34 USPQ2d 1574 (D.C. Cir. 1995).
7. See, e.g., University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468-69 (TTAB 2008) (request to withdraw as counsel granted, proceedings suspended, and party allowed time to either appoint new counsel or file submission stating it will represent itself).
8. The filing of a motion to dismiss for failure to state a claim upon which relief can be granted tolls the time for filing an answer. See Fed. R. Civ. P. 12(b); Hollow form Inc. v. Delma Aeh, 180 USPQ 284, 285 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).
9. 37 C.F.R. § 2.127(d); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962, 69967 (Oct. 7, 2016) ("[A]n amendment to § 2.127(d) specifies that a case ‘is suspended’ when a party timely files a potentially dispositive motion."; "The Office is amending § 2.127(d) to clarify that a case is suspended when a party timely files any potentially dispositive motion."). Cf. Electronic Industries Association. v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999) (suspended pending disposition of motion for discovery sanctions that included request for entry of judgment); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1438 (TTAB 1995) (suspended pending disposition of motion for judgment on the pleadings); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 n.7 (TTAB 1985) (suspended pending motion for summary judgment, and subsequent motion to suspend for civil action deferred until after decision on summary judgment); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross motion for summary judgment is germane to a pending motion for summary judgment). Cf. SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 (TTAB 1994) (motion for leave to amend a notice of opposition is not a potentially dispositive motion that would warrant suspension under 37 C.F.R. § 2.127(d)).
10. See Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999).
11. See Leeds Technologies Ltd v. Topaz Communications Ltd., 65 USPQ2d 1303, 1306, 1307-08 (TTAB 2002) (time for opposer to serve discovery responses reset following decision on opposer’s motion for judgment on pleadings). But see Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1136 (TTAB 2010) (filing of motion for summary judgment one day before Board ordered discovery responses were due did not establish good cause for failure to comply with discovery obligations under Board order granting discovery sanctions), clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed. Cir. 2011) (however, entry of judgment as a sanction for a party’s failure to abide by the Board’s practice regarding suspension is not supported).
12. 37 C.F.R. § 2.127(d); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 n.7 (TTAB 1985) (motion to suspend for civil action not considered); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment germane to pending summary judgment motion).
13. See, e.g., Jain v. Ramparts Inc., 49 USPQ2d 1429, 1430 (TTAB 1998) (proceedings deemed suspended as of the filing of the motion).
17. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564-65 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
510.03(b) Resumption
Settlement negotiations. When proceedings are suspended for purposes of settlement negotiations, the Board normally sets a specific period of suspension (up to six months) and provides a new trial schedule that will take effect upon resumption. Each party has the right to request resumption at any time during the suspension period. [ Note 1.] If no word is heard from either party prior to the expiration of the suspension period, the new trial schedule automatically goes into effect when the suspension period expires, and if a fully briefed motion was pending before the Board suspended proceedings, the Board ordinarily will decide the motion after the suspension period expires. In addition to, or instead of, resetting trial dates, the Board may reset the time for the parties to take other appropriate action in the case.
Matter before the examining attorney. If proceedings have been suspended for consideration of a matter by the examining attorney, including the disposition of a party’s application before the examining attorney, and the matter does not resolve the case, the Board will issue an order resuming proceedings and taking further appropriate action. [ Note 2.]
Bankruptcy. When the Board has suspended proceedings because a defendant in a Board proceeding or plaintiff whose registration is the subject of a counterclaim has filed a petition for bankruptcy, the Board periodically (normally, once a year) inquires as to the status of the bankruptcy case. In order to expedite matters, however, when the bankruptcy case has been concluded, or the involved application or registration of the bankrupt party has been transferred to some other person, the interested party should immediately file a paper notifying the Board thereof. Once the Board has been notified of the outcome of the bankruptcy case, and/or of the disposition of the bankrupt’s involved application or registration, the Board will resume proceedings and take further appropriate action.
Withdrawal of counsel. If proceedings have been suspended in order to allow a party, whose attorney has withdrawn, a period of time in which to either appoint new counsel (and inform the Board thereof) or, if a U.S.-domiciled party, file a paper stating that it desires to represent itself (i.e., proceed "pro se"), and that party so informs the Board, the Board will resume proceedings, and go forward with the party proceeding pro se or with the newly-appointed counsel representing the party. See TBMP § 510.03(a). A party proceeding pro se may employ a new attorney any time thereafter. If the party fails, during the time allowed, to either appoint new counsel (and inform the Board thereof) or file a paper stating that it desires to represent itself, the Board may issue an order noting that the party appears to have lost interest in the case, and allowing the party time in which to show cause why default judgment should not be entered against it. [ Note 3.] If the party, in turn, files a response indicating that it has not lost interest in the case, default judgment will not be entered against it. If the party fails to file a response to the show cause order, default judgment may be entered against it.
Potentially dispositive motion. When proceedings have been suspended pending determination of a potentially dispositive motion, and the determination of the motion does not dispose of the case, the Board, in its decision on the motion, will issue an order resuming proceedings and taking further appropriate action including resetting appropriate dates. [ Note 4.]
NOTES:
1. See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (proceedings suspended subject to the right of either party to request resumption).
2. See, e.g., The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (proceedings to be resumed if consent agreement did not overcome examining attorney’s Trademark Act § 2(d) refusal).
3. See, e.g., Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1224-25 (TTAB 1993).
4. See 37 C.F.R. § 2.127(d). See also e.g., Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999) (dates reset beginning with the period that was running when the potentially dispositive motion was filed).