605.02 Suspension for Settlement Negotiations
37 C.F.R. § 2.117 Suspension of proceedings.
(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.
Parties that are negotiating for settlement, and wish to defer further litigation of the case pending conclusion of their negotiations, should remember to file stipulations to extend or suspend the running of the time periods set in the case. The parties must use ESTTA to file their consented motions (using the "consent motions" option), which in most cases provides an immediate grant of the consented scheduling motion. [ Note 1.] For further information regarding ESTTA, see TBMP § 110.
When the Board is notified that parties are negotiating for settlement, the Board may suspend proceedings for a period of up to six months, either upon request or sua sponte, subject to the right of either party to request resumption at any time prior to the expiration of the suspension period. See TBMP § 510.03. The suspension period may be further extended upon request, or upon notification to the Board that the parties are still engaged in their settlement negotiations. However, once proceedings have been suspended for over a year, a consented scheduling motion is generally not immediately granted. Rather, the Board may require that the parties submit a report as to the status of their negotiations in order to show good cause for continued suspension. [ Note 2.] This report should include a summary of the progress of the parties’ negotiations, without disclosure of any confidential information or matter, and an anticipated timetable for resolution. Absent such a report, any subsequent motion to extend or suspend for settlement negotiations may be denied, even though agreed to by the parties. [ Note 3.] Even if the parties state that they are engaged in settlement negotiations and wish to postpone discovery and trial, protracted suspension without substantial progress toward resolution of the matter may be taken to indicate that further suspension would not be useful. Consequently, further suspension requests may be denied even though the parties have provided a report on the status of their negotiations. For a discussion of motions to suspend, see TBMP § 510.
The Board generally will not find good cause to suspend proceedings or extend the schedule after an answer is filed but before the scheduled discovery conference has taken place, even upon stipulation or consent. [ Note 4.] See TBMP § 401.01 (Discovery Conferences); TBMP § 509.01(a) (Motions to Extend Time) and TBMP § 510.03(a) (Suspension). This is because the discovery conference provides the parties with the opportunity to discuss settlement. [ Note 5.]
NOTES:
1. See 37 C.F.R. § 2.126(a), 37 C.F.R. § 2.126(b), and 37 C.F.R. § 2.117(c).
3. Cf. Central Manufacturing Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1211 (TTAB 2001) (where opposer’s statements that the parties were engaged in settlement negotiations were found to be false and filed in bad faith, opposer was sanctioned with dismissal).
4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007).
5. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("Many trial cases … involve cooperative parties who engage in useful settlement and discovery planning conferences.").