511 Motion to Consolidate
Fed. R. Civ. P. 42(a) Consolidation. If actions before the court involve a common question of law or fact, the court may: (1) join for hearing or trial any or all matters at issue in the actions; (2) consolidate the actions; or (3) issue any other orders to avoid unnecessary cost or delay.
When cases involving common questions of law or fact are pending before the Board, the Board may order the consolidation of the cases. [ Note 1.] In determining whether to consolidate proceedings, the Board will weigh the savings in time, effort, and expense, which may be gained from consolidation, against any prejudice or inconvenience that may be caused thereby. [ Note 2.] Although identity of the parties is another factor considered by the Board in determining whether consolidation should be ordered [ Note 3.], it is not always necessary. [ Note 4.] Consolidation is discretionary with the Board, and may be ordered upon motion granted by the Board, or upon stipulation of the parties approved by the Board, or upon the Board’s own initiative. [ Note 5.]
Generally, the Board will not consider a motion to consolidate until an answer has been filed (i.e., until issue has been joined) in each case sought to be consolidated. However, the Board may, in its discretion, order cases consolidated prior to joinder of issue. [ Note 6.] See TBMP § 305 (Consolidated and Combined Complaints).
When cases have been ordered consolidated, they may be presented on the same record and briefs. [ Note 7.] Papers should only be filed in the "parent" case of the consolidated proceedings unless otherwise advised by the Board, but the caption of each paper filed with the Board should reference the individual proceeding numbers with the parent case listed first. [ Note 8.] Ordinarily, the lowest numbered opposition of the consolidated cases is treated as the "parent" case when an opposition is involved, and the lowest numbered cancellation is the parent if there are only cancellations.
When actions by different plaintiffs are consolidated, and the plaintiffs are represented by different counsel, the plaintiffs may be required to appoint one lead counsel to supervise and coordinate the conduct of the plaintiffs’ cases and to provide one point of contact with the Board.See TBMP § 117.02.
Consolidated cases do not lose their separate identity because of consolidation. Each proceeding retains its separate character and requires the filing of separate pleadings and entry of a separate judgment. [ Note 9.] Upon consolidation, the Board will reset dates for the consolidated proceeding, usually by adopting the dates as set in the most recently instituted of the cases being consolidated.
Where a final disposition has been entered as to some, but not all, of the cases in a consolidated proceeding, the remaining cases will no longer be considered consolidated with the cases for which a final disposition has been entered. [ Note 10.]
NOTES:
1. See Fed. R. Civ. P. 42(a); Wise F&I, LLC, et al. v. Allstate Insurance Co., 120 USPQ2d 1103, 1105 (TTAB 2016) (sua sponte consolidation due to common questions of law and fact); Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1149 (TTAB 2014) (Board ordered consolidation of opposition and cancellation proceedings because cancellation was "effectively a compulsory counterclaim"); M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1046 (TTAB 2008) (proceeding involved identical parties, identical registrations and related issues); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997) (both proceedings involved the same mark and virtually identical pleadings); Ritchie v. Simpson, 41 USPQ2d 1859, 1860 (TTAB 1996) (cases consolidated despite variations in marks and goods), rev’d on other grounds, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1424 n. 1 (TTAB 1993) (opposition and cancellation consolidated); Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154, 1156 (TTAB 1991) (opposition and cancellation consolidated); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1384 n.3 (TTAB 1991). (opposition and cancellation consolidated).
See also Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989) (stipulation to consolidate); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444, 1445 (TTAB 1987) (proceedings consolidated pursuant to joint motion); Federated Department Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262, 263 (TTAB 1985); (oppositions consolidated); Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1201 (TTAB 1981), set aside on other grounds and new decision entered, 217 USPQ 464 (TTAB 1983) (three oppositions consolidated).
2. See, e.g., Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010) (motion to consolidate granted); Lever Brothers Co. v. Shaklee Corp., 214 USPQ 654, 655 (TTAB 1982) (consolidation denied where one case was just in pleading stage, and testimony periods had expired in other); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 726 (TTAB 1981) (consolidation denied as possibly prejudicial to defendant where defendant’s involved marks were not all the same); World Hockey Association v. Tudor Metal Products Corp., 185 USPQ 246, 248 (TTAB 1975) (consolidation ordered where issues were substantially the same and consolidation would be advantageous to both parties); Izod, Ltd. v. La Chemise Lacoste, 178 USPQ 440, 441-42 (TTAB 1973) (consolidation denied where issues differed).
3. See Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242 (TTAB 1989) (consolidation ordered in view of identity of parties and similarity of issues); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444, 1445 (TTAB 1987) (consolidation ordered in view of identity of parties and similarity of issues).
4. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1551 (TTAB 2011) (if multiple oppositions brought by different opposers are at the same stage of litigation and plead the same claims, the Board may consolidate for consistency and economy); 9A C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL §§ 2382, 2384 (3d ed. April 2021 Update).
5. See, e.g., Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1264 (TTAB 2016) (motion to consolidate granted);Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010) (same);Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1889 (TTAB 2007) (consolidation ordered sua sponte); 8440 LLC v. Midnight Oil Co., 59 USPQ2d 1541, 1541 n.1 (TTAB 2001) (opposition and cancellation proceedings consolidated on Board’s own initiative); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997) (motion); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1424 n.1 (TTAB 1993) (stipulation); Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154, 1156 (TTAB 1991) (Board’s initiative); Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989) (stipulation).
6. Cf. 37 C.F.R. § 2.106(b); 37 C.F.R. § 2.114(b).
7. See Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436 n.2 (TTAB 1996); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1424 n.1 (TTAB 1993); Helene Curtis Industries, Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1619 n.1 (TTAB 1989).
8. See, e.g., S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 n.4 (TTAB 1997); Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 n.2 (TTAB 1993).
9. See Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010).
10. See Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1300 (TTAB 2016) (two cases no longer consolidated after final disposition entered in one); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1115 (TTAB 2011) (because two of three cancellations dismissed, remaining cancellation no longer considered to be consolidated and shall proceed as a single proceeding), appeal dismissed, 427 F. App’x. 892 (Fed. Cir. 2011).