801 Briefs on the Case
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).
801.02 Time for Filing
37 C.F.R. § 2.128 Briefs at final hearing.
- (a)(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after the date set for the close of rebuttal testimony. The brief of the party in the position of defendant, if filed, shall be due not later than thirty days after the due date of the first brief. A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant’s brief.
- (a)(2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Trademark Trial and Appeal Board will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal brief by the parties.
- (a)(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to file a response to the order, or files a response indicating that plaintiff has lost interest in the case, judgment may be entered against plaintiff. If a plaintiff files a response to the order showing good cause, but does not have any evidence of record and does not move to reopen its testimony period and make a showing of excusable neglect sufficient to support such reopening, judgment may be entered against plaintiff for failure to take testimony or submit any other evidence.
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801.02(a) Plaintiff’s Main Brief
The main brief of the party in the position of plaintiff is due not later than 60 days after the date set for the close of the rebuttal testimony period. [ Note 1.]
If a party in the position of plaintiff fails to file a main brief, the Board may issue an order allowing plaintiff until a set time, not less than 15 days, in which to show cause why its failure to file a main brief should not be treated as a concession of the case. If the plaintiff fails to file a response to the order, or files a response indicating that it has lost interest in the case, judgment may be entered against the plaintiff. [ Note 2.] The purpose of this order to show cause procedure is to save the Board the burden of determining a case on the merits where the parties have settled, but have neglected to notify the Board, or where the plaintiff has lost interest in the case. It is the policy of the Board not to enter judgment against a plaintiff, for failure to file a main brief on the case, where the plaintiff, in its response to the show cause order, indicates that it has not lost interest in the case. However, even if the Board discharges the show cause order because the plaintiff files a response indicating that it has not lost interest in the case, if the plaintiff does not have any evidence of record, and does not file a motion to reopen its testimony period and make a sufficient showing of excusable neglect to support such reopening, the Board still may enter judgment against plaintiff for failure to take testimony or submit any other evidence. [ Note 3.]
For further information concerning the 37 C.F.R. § 2.128(a)(3) order to show cause procedure, see TBMP § 536. For information on reopening time, see TBMP § 509.
NOTES:
2. 37 C.F.R. § 2.128(a)(3). See CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302 (TTAB 1999) (opposer’s failure to respond to order to show cause under 37 C.F.R. § 2.128 resulted in entry of judgment).
3. 37 C.F.R. § 2.128(a)(3). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) ("This final rule codifies case law and Board practice under which the Board may sua sponte grant judgment for the defendant when the plaintiff has not submitted evidence, even where the plaintiff has responded to the Board’s show cause order for failure to file a brief but has either not moved to reopen its trial period or has not been successful in any such motion.") (citing Gaylord Entertainment Co. v. Calvin Gilmore Productions, Inc., 59 USPQ2d 1369, 1372 (TTAB 2000)).
801.02(b) Defendant’s Main Brief
The filing of a brief on the case is optional, not mandatory, for a party in the position of defendant. [ Note 1.]
However, if a party in the position of defendant wishes to file a brief on the case, the brief is due not later than 30 days after the due date of the plaintiff’s main brief. [ Note 2.] For information on extensions of time, see TBMP § 509.
NOTES:
1. 37 C.F.R. § 2.128(a)(1). See also Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1531 n.13 (TTAB 2018) (as defendant in cancellation, respondent not required to submit evidence or a brief, so failure to do so not treated as concession of case).
2. 37 C.F.R. § 2.128(a)(1). See also Ariola-Eurodisc Gesellschaft v. Eurotone International Ltd., 175 USPQ 250, 250 (TTAB 1972) (uncontested motion to strike brief filed three weeks after due date granted).
801.02(c) Plaintiff’s Reply Brief
The filing of a reply brief is optional for a party in the position of plaintiff. [ Note 1.]
If a party in the position of plaintiff wishes to file a reply brief, the brief is due not later than 15 days after the due date of the defendant’s main brief. [ Note 2.] However, if the defendant has not filed a main brief, any reply brief filed by the plaintiff may not be considered because there is nothing to which it could reply.
Objections raised for the first time in a reply brief are untimely because they effectively foreclose the adverse party from responding to the objections. [ Note 3.] See TBMP § 707.01.
NOTES:
3. Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1199 (TTAB 2018) (evidentiary objections raised for first time in reply brief are untimely), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022). Cf. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1928 (TTAB 2011) (objection not maintained in opening brief but renewed in reply brief is untimely), aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016), aff’d, 743 F. App’x 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007) (same).
801.02(d) Reply Brief for Defendant Not Permitted
There is no provision for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party in the position of defendant. [ Note 1.] If a party in the position of defendant files such a brief, it may be stricken, or given no consideration, by the Board. [ Note 2.] The party in the position of defendant may counter any arguments raised in plaintiff’s reply brief during oral argument. [ Note 3.]
However, if a defendant has counterclaimed to cancel a registration owned by the plaintiff, the defendant, as plaintiff in the counterclaim, may file a reply brief directed to the counterclaim. TBMP § 801.02(e).
NOTES:
1. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) ("the plain language of the TBMP states that the TTAB is not required to permit ‘a party in the position of defendant’ to file a reply brief."), cert. denied, 139 S. Ct. 1550 (2019).
2. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (Federal Circuit found that the Board did not abuse its discretion in applying the plain language of the TBMP and excluding defendant’s reply brief), cert. denied, 139 S. Ct. 1550 (2019); Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709, *8 (TTAB 2021) (reply brief to evidentiary objections given no consideration), appeal docketed, No. 21-2209 (Fed. Cir. August 9, 2021).
3. United Foods Inc. v. United Airlines Inc., 33 USPQ2d 1542, 1542 (TTAB 1994) (respondent may counter any arguments raised in petitioner’s reply brief during oral argument).
801.02(e) Special Situations
The Board sets, by written action in all cases in which a scheduling order is issued, the due dates for the filing of briefs on the case. Enhancements to electronic systems permit this to be done easily.
There are specific circumstances in which other factors are considered in setting the briefing schedule. These are when (1) there is a counterclaim, (2) proceedings have been consolidated, and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or (3) there is an interference or a concurrent use registration proceeding involving more than two parties. [ Note 1.]
If there is a counterclaim, the time is set for combined briefs. That is, the Board will issue an order setting the due dates for plaintiff’s main brief in the original proceeding (due the 60th day after the date set for the close of rebuttal testimony); defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim (due the 30th day after the due date of the plaintiff's main brief); plaintiff's combined reply brief in the original proceeding and its brief as defendant in the counterclaim (due the 30th day after the due date of defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim); and defendant’s reply brief as plaintiff in the counterclaim (due the 15th day after the due date of plaintiff’s combined reply brief in the original proceeding and brief as defendant in the counterclaim). The time is set for combined briefs in consolidated proceedings when the parties are in opposition positions. Combined briefs may not exceed the page limit for a brief. [ Note 2.] See the TBMP Appendix of Forms for a sample briefing trial order with a counterclaim.
In an interference or concurrent use registration proceeding, the Board will schedule briefing periods so that each party in the position of plaintiff will have a period for filing a main brief on the case, each party in the position of defendant will have a period for filing a main brief in which it may respond to the brief of each plaintiff, and each party in the position of plaintiff will have a period for filing a reply brief. [ Note 3.] See TBMP § 1007 and TBMP § 1109.
If a reviewing court vacates and/or remands a final decision for further proceedings, the Board has the discretion to order rebriefing of the case. [ Note 4.]
NOTES:
2. Cf. Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (one cannot exceed the page limitation for a brief by combining an opposition brief and a cross-motion addressing the same issue).
4. See, e.g., Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1186 (TTAB 2017) (on remand from the Federal Circuit for further proceedings, Board ordered the parties to rebrief the case on the original record), aff’d sub nom. Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., 542 F. Supp. 3d 371 (W.D.N.C. 2021), appeal dismissed, No. 21-1758 (4th Cir. Aug. 31, 2021).
801.03 Form and Contents of Brief
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
37 C.F.R. § 2.128(b) Briefs at final Hearing. Briefs must be submitted in written form and must meet the requirements prescribed in § 2.126. Each brief shall contain an alphabetical index of cases cited. Without prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed fifty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary; and a reply brief shall not exceed twenty-five pages in its entirety. Evidentiary objections that may properly be raised in a party’s brief on the case may instead be raised in an appendix or by way of a separate statement of objections. The appendix or separate statement is not included within the page limit. Any brief beyond the page limits and any brief with attachments outside the stated requirements may not be considered by the Board.
A brief on the case must be submitted in written form and must meet the general requirements for submissions to the Board specified in 37 C.F.R. § 2.126. A party must file a brief on the case electronically through ESTTA. See TBMP § 110 for further information regarding ESTTA. The requirements for electronic filing are set out in 37 C.F.R. § 2.126(a). [ Note 1.] See TBMP § 106.03 for further information regarding the form of submissions.
If ESTTA is unavailable due to technical problems, or if extraordinary circumstances exist, a party may file a brief on the case in paper form. The requirements for paper filing are set forth in 37 C.F.R. § 2.126(b). A brief filed in paper form must include a written explanation of such technical problems or extraordinary circumstances, or it will not be considered. [ Note 2.]
In addition to the general requirements for submissions to the Board, briefs at final hearing are also subject to the page limitations specified in 37 C.F.R. § 2.128(b). The Board may not consider briefs exceeding the page limit. [ Note 3.]
As provided in 37 C.F.R. § 2.128(b), without prior leave of the Board, a main brief on the case may not exceed 55 pages in length in its entirety, and a reply brief may not exceed 25 pages in its entirety. The parts of the brief that fall within the length limit include the table of contents, index of cases, description of the record, statement of the issues, recitation of facts, argument, and summary. Extensive single-spaced footnotes may not be used as a subterfuge to avoid the page limit. [ Note 4.] Exhibits or appendices to a brief, not being part of the brief itself, are not included within the page limit. [ Note 5.] In addition, evidentiary objections that may properly be raised in a party’s brief on the case may instead be raised in an appendix or by way of a separate statement of objections. The appendix or separate statement is not included within the page limit. [ Note 6.] Nevertheless, appendices to a brief may not be used to avoid the page limitation. [ Note 7.]
For information concerning motions for leave to file a brief exceeding the page limit, see 37 C.F.R. § 2.128(b) and TBMP § 537.
The brief must contain an alphabetic index of all cited cases. When cases are cited in a brief, the case citation should include a citation to The United States Patents Quarterly (USPQ), if the case has appeared in that publication. [ Note 8.] See TBMP § 101.03 for further information on decisional law. The Board permits, but does not encourage, the citation of non-precedential final decisions. A decision that is not designated as precedential is not binding on the Board, but may be cited for whatever persuasive value it might have. Citation to a non-precedential decision may be to TTABVUE. If a non-precedential decision does not appear in the USPQ or TTABVUE, the citing party should append a copy of the decision to the motion or brief in which the decision is cited. [ Note 9.] See TBMP § 101.03.
While parties may cite relevant cases from any jurisdiction, the Board relies primarily on precedent from the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit"), not only because the Federal Circuit is the Board’s primary reviewing court, but also because its cases address registration issues more specifically. [ Note 10.] See TBMP § 101.03.
The description of the record should comprise a list of the evidence properly introduced by the parties, such as, "The evidence of record consists of Opposer’s Registration No. 1,234,567; Applicant’s answers to opposer’s interrogatories; the discovery deposition of Mr. X; and the testimony depositions of opposer’s witnesses, Mr. Y and Ms. Z." For each significant fact recited, the recitation of facts should include a citation to the portion of the evidentiary record where supporting evidence may be found. When referring to the record in an inter partes proceeding before the Board, parties should include a citation to the TTABVUE entry and page number (e.g., 1 TTABVUE 2) to allow the reader to easily locate the cited materials. [ Note 11.] For information regarding citation in ex parte appeals, see TBMP § 1203.01.
If a mark that is the subject of, or is pleaded in, a proceeding includes stylization or a design feature, a reproduction of the mark should be included in the brief on the case.
If a plaintiff files a reply brief, the brief must be confined to rebutting the defendant’s main brief. In other words, the reply brief shall be limited to the key points in defendant’s brief which plaintiff believes require clarification or response, and should not be used as an opportunity to argue plaintiff’s case in chief.
Confidential information. Except for materials filed under seal pursuant to a protective order, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public viewing on the USPTO web site via TTABVUE at http://ttabvue.uspto.gov/. [ Note 12.] See TBMP § 412.05 for further information on handing of confidential materials by the Board. In accordance with 37 C.F.R. § 2.126(c), a party who submits a brief containing confidential information under seal or designated as confidential in ESTTA must submit the brief using the "Confidential" selection in ESTTA or, where appropriate, under a separate paper cover. The party must mark both the submission and its cover "confidential," and must identify the case number and parties. The party must also concurrently submit for the public record a redacted version of the brief. [ Note 13.] 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 the redacted version and the TTABVUE docket entry number for the confidential version of the brief. [ Note 14.]
In addition, in the confidential brief, parties are strongly encouraged to enclose confidential information in brackets to better mark the specific information to be kept confidential. This facilitates a better comparison between the public and confidential versions of the briefs when the Board is preparing a final decision, and will reduce the possibility of the Board inadvertently including confidential information in a final decision. See TBMP § 110 and TBMP § 412.04 for further information on filing confidential material using ESTTA, and TBMP § 120.02 for further information on confidential materials in general.
The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 15.] For further information on protective orders, see TBMP § 412.
When necessary to articulate the reasoning of the Board decision, the Board may treat as not confidential material which cannot reasonably be considered confidential, notwithstanding a party’s designation. [ Note 16.] For further information regarding confidential materials see TBMP § 120.02 and TBMP § 412.
NOTES:
1. 37 C.F.R. § 2.126(a) codifies the use of electronic filing. The Board does not accept briefs filed on CD or DVD, but continues its current practice of accepting a CD or DVD as an exhibit to a deposition where the proffering party authenticates and introduces audio and/or video evidence, such as commercials. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
2. See 37 C.F.R. § 2.126(b); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016).
3. 37 C.F.R. § 2.128(b). Cf. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *2 (TTAB 2020) (single spaced, seven-page brief considered because it was not an attempt to circumvent the page limits).
4. Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 1992) (warned that single-spaced footnotes containing substantial discussion may be viewed as a subterfuge to avoid page limit).
5. See 37 C.F.R. § 2.128(b); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (raising evidentiary objections in appendices was not viewed as subterfuge to avoid page limit), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same); United Foods Inc. v. United Air Lines Inc., 33 USPQ2d 1542, 1543 (TTAB 1994) (motion to file 30-page reply brief denied as unnecessary where main brief was 18 pages and responsive brief was 37 pages); Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1896 n.3 (TTAB 1992).
6. See 37 C.F.R. § 2.128(b); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (appropriate evidentiary objections may be raised in appendix or separate submission rather than in text of brief), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB 1992) (finding "no requirement in the rules that objections of the type raised in respondent’s paper be made in a party’s brief on the case rather than by a separate paper").
7. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753-54 (TTAB 2013) (appendices may not be used as a subterfuge to avoid the page limitation), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998) (same).
8. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 n.11 (TTAB 2012) (include citation to the USPQ if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 n.2 (TTAB 2009) (same).
9. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice); Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (January 23, 2007).
10. Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 n.2 (TTAB 2008).
11. Cf. 37 C.F.R. § 2.142(b)(3). SeeRxD 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) (same).
12. 37 C.F.R. § 2.27(d) ("The official records of applications and all proceedings relating thereto are available for public inspection". . . .) and 37 C.F.R. § 2.27(e) (filing and handling of confidential matter). See, e.g., Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).
13. 37 C.F.R. § 2.126(c); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000) (redacted copy deleting confidential matters must be filed). See also Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (entry of confidential exhibits and briefs in ACR case).
14. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).
16. 37 C.F.R. § 2.116(g). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision. See, e.g., Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014).").
801.04 Amicus Briefs
The Board may, in its discretion, entertain an amicus brief. An entity that wishes to file an amicus brief should file a motion with the Board for leave to do so. For information concerning motions for leave to file an amicus brief, see TBMP § 538.
801.05 Motion to Strike Brief on Case
A party may move to strike a brief on the case on a variety of grounds, including that the brief was untimely filed, exceeds the page limit for a brief on the case, violates the format requirements for such a brief, or is a brief not provided for by the applicable rules (e.g., is a reply brief filed by the defendant). [Note 1.] In addition, a party may move to strike evidentiary matter attached to a brief where the evidentiary matter was not properly made of record during the time for taking testimony. For information concerning motions to strike a brief on the case, or matter attached to such a brief, see TBMP § 539.
1. Cf. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (Board did not abuse its discretion in applying the plain language of the TBMP and excluding defendant’s reply brief), cert. denied, 139 S. Ct. 1550 (2019).