801.01    In General

After the close of all testimony periods in an inter partes proceeding before the Board, the parties are allowed time in which to file briefs on the case. The brief is a party’s opportunity to present, in a systematic and coherent manner, and in a form which is permanent and can be referred to, a discussion of the facts in light of the law, its strongest affirmative arguments, and a rebuttal of its adversary’s arguments. Parties must file their briefs via ESTTA except under certain limited circumstances. [ Note 1.] See TBMP § 801.03.

Subject to Fed. R. Civ. P. 11, a party is entitled to offer in its brief on the case any argument it feels will be to its advantage. However, the facts and arguments presented in the brief must be based on the evidence offered at trial. A brief may not be used as a vehicle for the introduction of evidence. See TBMP § 704.05(b) and TBMP § 704.06(b). Exhibits to briefs are generally unnecessary and are discouraged. [ Note 2.] To allow readers to easily locate materials in the record, the parties should cite to the evidence in the trial record by referencing the TTABVUE entry and page number, and not attach previously-filed evidence to their briefs. [ Note 3.] For material or testimony that has been designated confidential, and which cannot be viewed on TTABVUE, the parties should include the TTABVUE docket entry and page numbers for both the redacted version and the TTAB docket entry number for the confidential versions. [ Note 4.] The Board will not consider evidence and other evidentiary materials attached to the briefs unless they were properly made of record during the time assigned for taking testimony. [ Note 5.]

If a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived. [ Note 6.] Furthermore, a mere statement in a party’s brief that it has not waived an affirmative defense, without evidence of proof, may effectively result in waiver of such defenses. [ Note 7.] A party may also expressly waive in its brief a pleaded claim or affirmative defense. [ Note 8.]

For information concerning briefs and oral hearings in ex parte appeals, see TBMP § 1203.01 and TBMP § 1216, respectively.

For information concerning briefs and ACR proceedings, see TBMP § 528.05(a)(2) and TBMP § 702.04. For information concerning citation to evidence in TTABVUE in ex parte appeals, see TBMP § 1203.01 and 37 C.F.R. § 2.142(b)(3).

NOTES:

 1.   37 C.F.R. § 2.126(a), 37 C.F.R. § 2.126(b), 37 C.F.R. § 2.128(a).

 2.   Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020) (exhibits attached to brief not considered); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) ("while exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence"); ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (filing duplicative submissions is a waste of time and resources, and is a burden on the Board).

 3.   Cf. 37 C.F.R. § 2.142(b)(3). See RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 (TTAB 2018) (Board prefers citation to the TTABVUE record), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) (citation to the Board’s TTABVUE docket electronic database by the entry and page number (e.g., 1 TTABVUE 2) recommended).

 4.   Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).

 5.   Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020).

 6.   Coca-Cola Co. v. Meenaxi Enterprise., Inc., 2021 USPQ2d 709, at *2-3 (TTAB 2021) (pleaded claims other than misrepresentation of source and affirmative defenses other than laches were waived because they were not pursued at trial), appeal docketed, No. 21-2209 (Fed. Cir. Aug. 9, 2021); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *1 n.3 (TTAB 2020) (various affirmative defenses deemed waived because no evidence or argument presented at trial); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.5 (TTAB 2020) (affirmative defenses deemed waived because applicant did not discuss them in its trial brief), civil action filed, No. 3:20-CV-00400 (E.D. Va. June 5, 2020); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptiveness and geographical descriptiveness claims not argued in brief deemed waived; respondent’s affirmative defense of failure to state a claim not argued in brief deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (opposer’s pleaded descriptiveness claim not argued in brief deemed waived); Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013) (pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015); Central Garden and Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1136 n.4 (TTAB 2013) (same); Syndicat Des Proprietaires Viticulteurs De Chateauneuf v. Pasquier DesVignes, 107 USPQ2d 1930, 1931 n.6 (TTAB 2013) (affirmative defenses neither pursued at trial nor argued in brief deemed waived); Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1189-90 (TTAB 2012) (affirmative defenses not pursued at trial deemed waived); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1734 n.4 (TTAB 2012) (affirmative defenses deemed waived where no mention of them in trial brief); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011) ("Due to the absence of evidence submitted during trial with regard to applicant’s goods in International Class 30, and the absence of argument in opposers’ brief as to anything other than yogurt, to the extent opposers’ pleading alleged a claim against the goods in Class 30, we deem that opposers have waived their likelihood of confusion and dilution claims as to the goods in this class. . . ."), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014);Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 (TTAB 2007) (where applicant did not argue the affirmative defense of equitable estoppel in her brief, the affirmative defense was given no consideration); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005) (where opposer presented no arguments in its brief regarding the claim of dilution, opposer is deemed to have waived the claim).

Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1189-90 (TTAB 2011) (where opposer did not argue its likelihood of confusion and dilution by tarnishment claims in its brief, applicant’s uncontested request that judgment be found in its favor on the claims was granted), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Converse, Inc. v. International Trade Commission, 909 F.3d 1110, 128 USPQ2d 1538, 1544 (Fed. Cir. 2018) (case remanded to ITC to permit plaintiff to raise argument about acquired distinctiveness that it had not raised below: "We do not think a finding of waiver is appropriate here, given that our opinion is clarifying and in some ways changing the legal landscape with respect to proving secondary meaning.").

 7.   Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1263 n.13 (TTAB 2013) (Respondent’s statement in its brief that it has asserted its various affirmative defenses, pursues these defenses and does not waive them is not sufficient to pursue them and to the extent that they have not been waived, respondent has failed to prove them), aff’d, 112 F. Supp. 2d 383 (E.D. Va. 2015).

 8.   Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1394 n.3 (TTAB 2016) (opposers expressly waived certain pleaded claims in reply brief).