702.04(e) Utilizing Stipulations in Non-ACR Board cases

37 C.F.R. § 2.123(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.

37 C.F.R. § 2.127(e)(2) If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial.

Parties may utilize stipulations of facts and evidence to realize cost efficiencies in non-ACR cases. For example, they may stipulate to the entire record, to portions of the record, or to particular facts. [ Note 1.] The parties are reminded that the Board is not bound by stipulations as to questions of law. [ Note 2.] If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. [ Note 3.] Parties may stipulate to ACR-type efficiencies at any stage of a proceeding in order to expedite the remainder of the trial schedule.

See TBMP § 705 regarding stipulated evidence.

Please Note: Some of the cases cited in this section established principles later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to unilaterally present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.

NOTES:

1. See 37 C.F.R. § 2.123(b) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(b) … to clarify that parties may stipulate to any relevant facts."). See, e.g., The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *2 (TTAB 2020) (parties stipulated to admission of evidence: documents produced through discovery may be submitted under notice of reliance without witness testimony and will be deemed authentic business records; documents submitted in conjunction with an earlier-filed summary judgment motion deemed admitted into record; and the admission of testimony and related exhibits by declaration, and of discovery depositions and related exhibits by notice of reliance), appeal dismissed-in-part, aff’d-in-part, vacated-in-part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *3 (TTAB 2020) (parties stipulated to the admissibility and authenticity of evidence); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1-2, nn.8, 10 and 11 (TTAB 2020) (parties stipulated to admissibility of interrogatory responses through notice of reliance, and to withdraw certain paragraphs from two testimony declarations), civil action filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *3-5, *4-5 nn. 13, 14, & 20 (TTAB 2020) (parties stipulated to bifurcate the proceeding into two phases, with the initial phase directed to standing, and if opposer was found to have standing, the second phase directed to remaining issues; stipulation as to expert testimony and stipulation as to authenticating evidence as business records); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 USPQ2d 10085,at *2 (TTAB 2020) (parties stipulated to treat discovery responses and documents produced in earlier Board proceeding as discovery responses and documents produced in response to discovery requests in present Board proceeding); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *2 (TTAB 2019) (parties stipulated to admissibility of certain declarations and exhibits submitted by each party on summary judgment), complaint filed, No. 20-cv-109 (M.D.N.C. Feb. 3, 2020); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.5 (TTAB 2019) (parties stipulated to treat discovery responses provided in prior federal civil action as responses to discovery propounded in Board proceeding, and to introduce the discovery depositions of certain witnesses taken in the Board proceeding as trial testimony in lieu of taking their testimonial depositions); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 (TTAB 2016) (parties stipulated that testimony may be introduced by affidavit or declaration in lieu of testimonial depositions and that the documents exchanged during discovery are authentic and may be made of record by either party); Ayoub, Inc. v. ACS Ayoub Carpet Services, 118 USPQ2d 1392, 1394 (TTAB 2016) (parties stipulated to submission of testimony by declaration, to the use of any Fed. R. Civ. P. 30(b)(6) discovery deposition transcripts in their case-in-chief or rebuttal, and to the authenticity of all documents produced by either party during discovery); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1500 (TTAB 2015) (parties stipulated that witness testimony would be submitted solely by declaration and without cross-examination); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to submission of witness declarations and discovery depositions, the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and all documents produced in response to a request for production of documents were deemed authentic business records and were admissible subject to any objections other than authenticity); Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (stipulation to the admission and use of certain produced documents and waiver of objections based on authenticity or hearsay as to those documents); Miller v. Miller, 105 USPQ2d 1615, 1617 n.6 (TTAB 2013) (parties stipulated to testimony by affidavit and provided a stipulation of undisputed facts); Blackhorse v. Pro-Football Inc., 111 USPQ2d 1080, 1084-85 (TTAB 2014) (parties stipulated that the record of a prior proceeding may be submitted into evidence under notice of reliance reserving the right to object based on relevance) aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, 709 F. App’x 183 (4th Cir. 2018) (mem.); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 (TTAB 2011) (parties stipulated to authenticity of produced documents and to the introduction of testimony in affidavit or declaration form, with certain guidelines), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1915 (TTAB 2011) (parties stipulated to authenticity of produced documents); Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1824-25 (TTAB 2010) (parties stipulated to admission of various testimony declarations and to facts), 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. March 7, 2013); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated to introduce testimony by declaration and to live cross-examination); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1585 (TTAB 2008) (parties stipulated to testimony by declaration, with exhibits); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (stipulation to use discovery depositions as trial testimony); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (stipulation to use evidence and exhibits submitted in connection with a motion for summary judgment at trial); Domino’s Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1360 (TTAB 1988) (stipulations to facts by applicant, testimony by affidavit by opposer, and use of certain testimonial depositions taken in prior civil action); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1013 (TTAB 1984) (stipulated to the filing of facts and exhibits on behalf of each party during each party’s testimony period); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 (TTAB 1983) (parties stipulated to facts, legal conclusions and testimony, including cross-examination and redirect examination with respect to stipulated testimony).

2. 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.").

3. 37 C.F.R. § 2.123(e)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016) ("The Office is amending § 2.127(e)(2) to add that if a motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. The revision codifies an approach used by parties in proceedings incorporating ACR-type efficiencies at trial.").