509.02 Form and Determination of Motions to Extend or Reopen
If a motion to extend or a motion to reopen is made with the consent of the nonmoving party, the motion may be filed either as a stipulation with the signature of both parties, or as a consented motion in which the moving party states that the nonmoving party has given its consent thereto. Parties may file a motion solely to extend or reopen, or caption and incorporate such a motion into another motion, e.g. to compel, strike, etc.
Ordinarily, a consented motion to extend or reopen will be granted by the Board. However, after an answer has been filed, the Board is unlikely to grant even a consented motion to extend the deadline for the parties to conduct the required discovery conference when the basis for the motion is the existence of settlement discussions. [ Note 1.] Similarly, because all written discovery must be completed during the discovery period, the Board will not grant a motion to extend time to respond to discovery requests beyond the close of discovery, even upon consent or stipulation. If a party wishes to extend time to respond to discovery requests, and such an extension contemplates a date after the close of discovery, a party should concurrently move to extend the close of discovery. [ Note 2.]
If the parties file a stipulation or consented motion to extend or reopen a defendant’s time to file an answer to the complaint, the stipulation should specify the new due date for the answer, and all subsequent dates that require rescheduling when the due date for the answer is reset, including the deadline for the required discovery conference, disclosures, discovery and trial. A consented motion to extend or reopen testimony periods and the deadlines for pretrial disclosures, or the discovery period, testimony periods and deadlines for disclosures must be filed with the Board through ESTTA and should be submitted in the form used in a trial order, specifying the closing date for each period to be reset. [ Note 3.] If a consented motion to extend or reopen testimony periods, or the discovery period and testimony periods, specifies only the closing date for the first period to be reset, and the motion is approved, the Board will automatically reschedule the subsequent periods as well, including the dates for remaining disclosures. [ Note 4.] Receipt by the parties of the Board’s action on the motion may be delayed if Board personnel have to prepare an order specifying the closing date for each period being rescheduled.
However, when the parties agree to a new schedule of dates and file for approval using the "consent motions" option in ESTTA, the system will prompt the filer to enter new deadlines in a manner that will automatically generate an appropriate schedule in the proper form. If the calculator provided by ESTTA does not reflect all or the correct deadlines required by the parties’ agreed-upon schedule, the filing party should select the "general filings" option in ESTTA and attach or embed in the motion the agreed-upon schedule.
When the Board notes that a consented or stipulated motion to extend time is based on the asserted existence of the parties’ settlement negotiations, the Board may suspend proceedings, sua sponte, for any suitable period of time, including up to six months, to enable the parties to concentrate on settlement and to obviate the filing of numerous extension requests. Such suspension shall be made subject to either party’s right to request resumption of proceedings at any time. See TBMP § 510.03(a). However, after a period of time of extensions or suspension, the parties may be required to report on the progress of their settlement discussions and continue to do so periodically thereafter. While settlement is encouraged, the Board also has an interest in seeing its cases conclude in a timely manner. [ Note 5.]
When a motion to extend, or a motion to reopen, is filed without the consent of the nonmoving party, the Board normally will defer action on the motion until after the expiration of the nonmoving party’s time to file a brief in opposition to the motion. If the nonmoving party fails to file a brief in opposition thereto, the Board will normally grant the motion as conceded. [ Note 6.] A motion not stated to be consented will not be granted as conceded until after passage of sufficient time for filing and receipt by the Board of a brief in response. In the case of a telephone conference, the responding party may be excused from filing a responsive brief. See TBMP § 502.06(a). If the nonmoving party contests a motion by filing a responsive brief or by presenting responsive arguments in a telephone conference, the Board will decide the motion on its merits. See TBMP § 502.02(b) (Briefs on Motions) and TBMP § 509.01 regarding the standards to be applied in deciding contested motions to extend or reopen time.
A party must not assume that its motion to extend (much less a motion to reopen) made without the consent of the adverse party will always be granted as a matter of course. [ Note 7.] Moreover, while the Board attempts, where possible, to notify the parties of its decision on an unconsented motion to extend, or a motion to reopen, prior to expiration of the enlargement sought, the Board is under no obligation to do so, and in many cases cannot. [ Note 8.] Cf. TBMP § 202.01. Therefore, it is preferable, at least where an unconsented motion seeks an extension or a reopening of a testimony period or periods and pretrial disclosures, or of the discovery period and testimony periods and disclosures, that the motion request that the new period or periods be set to run from the date of the Board’s decision on the motion. However, in the event that the motion to extend or reopen time is denied, the time for taking required action may remain as previously set. [ Note 9.]
When the Board resets the closing date for discovery, the expert disclosure deadline, which is 30 days prior to the close of the discovery period, and the testimony periods, including pretrial disclosure deadlines, will automatically be reset. However, the resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods and such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 10.]
A party should not presume that the Board will automatically reset discovery, disclosure and/or trial dates when it determines the pending motion. When the Board determines a pending motion, and there is no motion to extend discovery, disclosure and/or trial dates, the Board, in the exercise of its discretion, may or may not reset relevant dates. A party that wishes to have particular deadlines or periods reset upon the determination of a particular motion should file a motion requesting such action, or caption and include a request to reset the dates in its pending motion, further specifying the deadlines or periods that it wishes to have reset. [ Note 11.]
Extensions of time to seek judicial review of a final decision of the Board (whether by way of appeal to the Court of Appeals for the Federal Circuit or by way of a civil action) may be granted by the Director upon written request, which should be directed to the Office of the Solicitor, not the Board. [ Note 12.] See TBMP § 902.02 (Time for Filing Notice of Appeal) and TBMP § 903.04 (Time for Filing Civil Action).
NOTES:
1. Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 n.1 (TTAB 2008) ("It is unlikely the Board will find good cause for a motion to extend or suspend for settlement if the motion is filed after answer but prior to the discovery conference, precisely because the discovery conference itself provides an opportunity to discuss settlement.") (citing MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007)).
5. 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).
7. Chesebrough-Pond’s Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891-92 (CCPA 1980) (after granting numerous extensions of time to respond to motion for summary judgment, last request denied and motion for summary judgment granted as conceded).
8. Luemme, Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999) (waiting for Board approval of previous extension request insufficient to justify resetting of dates); see also Chesebrough-Pond’s Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891 (CCPA 1980). Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275-76 (Fed. Cir. 1984); and In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm’r 1992).
9. See 37 C.F.R. § 2.120(a), 37 C.F.R. § 2.120(a)(1), 37 C.F.R. § 2.121(c), 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1). See also Luemme, Inc. v. D. B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999).
10. 37 C.F.R. § 2.120(a)(2)(iv), 37 C.F.R. § 2.121(a) and 37 C.F.R. § 2.121(a)(3).
11. See, e.g., 37 C.F.R. § 2.120(a)(3); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2154 n.6 (TTAB 2013) (party should not presume that Board will automatically reset discovery when it determines a pending motion, where motion filed one day prior to the closing date of the discovery period).