528    Motion For Summary Judgment and Accelerated Case Resolution (ACR)

Fed. R. Civ. P. 56. Summary Judgment

• (a) Motion for Summary Judgment or Partial Summary Judgment. A party may move for summary judgment, identifying each claim or defense — or the part of each claim or defense — on which summary judgment is sought. The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. The court should state on the record the reasons for granting or denying the motion.
• …
• (c) Procedures.
  • (1) Supporting Factual Positions. A party asserting that a fact cannot be or is genuinely disputed must support the assertion by:
    • (A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials; or
    • (B) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.
  • (2) Objection That a Fact Is Not Supported by Admissible Evidence. A party may object that the material cited to support or dispute a fact cannot be presented in a form that would be admissible in evidence.
  • (3) Materials Not Cited. The court need consider only the cited materials, but it may consider other materials in the record.
  • (4) Affidavits or Declarations. An affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated.
  
• (d) When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:
  • (1) defer considering the motion or deny it;
  • (2) allow time to obtain affidavits or declarations or to take discovery; or
  • (3) issue any other appropriate order.
  
• (e) Failing to Properly Support or Address a Fact. If a party fails to properly support an assertion of fact or fails to properly address another party’s assertion of fact as required by Rule 56(c), the court may:
  • (1) give an opportunity to properly support or address the fact;
  • (2) consider the fact undisputed for purposes of the motion;
  • (3) grant summary judgment if the motion and supporting materials — including the facts considered undisputed — show that the movant is entitled to it; or
  • (4) issue any other appropriate order.
  
• (f) Judgment Independent of the Motion. After giving notice and a reasonable time to respond, the court may:
  • (1) grant summary judgment for a nonmovant;
  • (2) grant the motion on grounds not raised by a party; or
  • (3) consider summary judgment on its own after identifying for the parties material facts that may not be genuinely in dispute.
  
• (g) Failing to Grant All the Requested Relief. If the court does not grant all the relief requested by the motion, it may enter an order stating any material fact — including an item of damages or other relief — that is not genuinely in dispute and treating the fact as established in the case.
• (h) Affidavit or Declaration Submitted in Bad Faith. If satisfied that an affidavit or declaration under this rule is submitted in bad faith or solely for delay, the court — after notice and a reasonable time to respond — may order the submitting party to pay the other party the reasonable expenses, including attorney’s fees, it incurred as a result. An offending party or attorney may also be held in contempt or subjected to other appropriate sanctions.
• * * * *

528.01    General Nature of Motion

The motion for summary judgment is a pretrial device to dispose of cases in which "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." [ Note 1.] "A party asserting that a fact cannot be or is genuinely disputed must support the assertion by: A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials; or B) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." [ Note 2.] The purpose of the motion is judicial economy, that is, to avoid an unnecessary trial where there is no genuine dispute of material fact and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result in the case. [ Note 3.]

The summary judgment procedure is regarded as "a salutary method of disposition," and the Board does not hesitate to dispose of cases on summary judgment when appropriate. [ Note 4.]

A party moving for summary judgment has the burden of demonstrating the absence of any genuine dispute of material fact, and that it is entitled to judgment as a matter of law. [ Note 5.] This burden is greater than the evidentiary burden at trial. [ Note 6.] The burden of the moving party may be met by showing "that there is an absence of evidence to support the nonmoving party’s case." [ Note 7.]

If the moving party meets its burden, that is, if the moving party has supported its motion with affidavits or other evidence that, if unopposed, would establish its right to judgment, the nonmoving party may not rest on mere denials or conclusory assertions, but rather must proffer countering evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine factual dispute for trial. [ Note 8.] A factual dispute is genuine if sufficient evidence is presented such that a reasonable fact finder could decide the question in favor of the nonmoving party. [ Note 9.]

In deciding a motion for summary judgment, the function of the Board is not to try issues of fact, but to determine instead if there are any genuine disputes of material fact to be tried. [ Note 10.] The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine disputes of material fact exist; and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. [ Note 11.]

A fact is material if it "may affect the decision, whereby the finding of that fact is relevant and necessary to the proceedings." [ Note 12.] However, a dispute over a fact that would not alter the Board’s decision on the legal issue will not prevent entry of summary judgment. [ Note 13.] Further, even a genuine dispute over a fact relating only to an issue that is not the subject of the summary judgment motion will not preclude determination of the motion. [ Note 14.]

Where both parties have moved for summary judgment, the mere fact that they have done so does not necessarily mean that there are no genuine disputes of material fact, or authorize the resolution of such disputes, or dictate that judgment should be entered in favor of one of them. [ Note 15.]

A party moving for summary judgment should specify, in its brief in support of the motion, the material facts that are undisputed. The nonmoving party, in turn, should specify, in its brief in opposition to the motion, the material facts that are in dispute. [ Note 16.]

If the Board concludes that there is no genuine dispute of material fact, but that the nonmoving party is the one entitled to judgment as a matter of law, the Board may, after giving notice and a reasonable time to respond, grant summary judgment in favor of the nonmoving party, grant the motion on grounds not raised by a party, or consider summary judgment on its own after identifying for the parties material facts that may not be genuinely in dispute. [ Note 17.]

Briefs in support of a motion for summary judgment and briefs in response or cross-motions for summary judgment on the same issue are limited to 25 pages, and a reply brief shall not exceed 10 pages in length. The brief in support of a cross-motion on a separate issue will not count against the page limit applicable to the response to the original motion only in situations where the original summary judgment motion and cross-motion involve separate issues. Exhibits submitted in support of or in opposition to the motion are not deemed to be part of the brief for purposes of determining the length of the brief. [ Note 18.] A motion for summary judgment should be filed in single (not multiple) form.

The Board’s determination on summary judgment is interlocutory in nature except for a grant of a summary judgment motion entering judgment that is a final disposition of all issues in the proceeding. The time for seeking judicial review of such a decision shall expire sixty-three (63) days from the date on which a final order is entered in the case. Any appeal prior to that time is premature. [ Note 19.] See TBMP § 518 and TBMP § 901.

Where appropriate, partial summary judgment may be entered as to separate classes of goods or services. [ Note 20.] If, in a case involving multiple grounds, the Board enters partial summary judgment on one ground, it may dispose of the case on that basis without considering the other grounds. [ Note 21.]

NOTES:

 1.   Fed. R. Civ. P. 56(a). Please Note: The 2010 amendments to Fed. R. Civ. P. 56 changed the terminology in the summary judgment standard from genuine "issues" to genuine "disputes" to better reflect the focus of a summary judgment determination. See Fed. R. Civ. P. 56, Fed. R. Civ. P. 56(a) Advisory Committee’s notes (2010 amendment). Consequently, cases determined before the amendments went into effect use the earlier terminology, e.g., "genuine issues of material fact" rather than "genuine disputes of material fact."

 2.   Fed. R. Civ. P. 56(c)(1). See generally Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986); see also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996); Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1049 (Fed. Cir. 1991); and Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1297-98 (Fed. Cir. 1991). See also Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795-96 (Fed. Cir. 1987); Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 221 USPQ 151, 154 (TTAB 1983), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); Flatley v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1378 (TTAB 1986); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986).

 3.   See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984) (TTAB properly determined that evidence which might be adduced at trial would not change result given the differences in the goods of the parties), aff’g, 221 USPQ 151 (TTAB 1983); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1843 (TTAB 1995) (where issue involved collateral estoppel); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1390-91 (TTAB 1994) (parties submitted voluminous evidence in support of their cross-motions for summary judgment).

 4.   See, e.g., Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (conclusory statements and denials do not raise genuine issues of material fact); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 941 (Fed. Cir. 1984) (response contained only unsupported arguments and conclusions); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1102 (TTAB 1996) (question of legal effect of assigning ITU application is one of law). But see In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1940-42 (Fed. Cir. 2009) (reversing Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) and remanding in light of finding no willful intent to deceive by party against whom summary judgment granted on ground of fraud); Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298-99 (Fed. Cir. 1991) (factual question of intent regarding misuse of registration symbol is particularly unsuited to disposition on summary judgment); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507-08 (TTAB 1993) (question of intent regarding filing of ITU application generally unsuitable for disposal by summary judgment).

 5.   See, e.g., Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298-99 (Fed. Cir. 1991) (moving party’s conclusory statement as to intent insufficient); Kelly Services, Inc. v. Creative Harbor, LLC, 846 F.3d 857, 121 USPQ2d 1357, 1363 (6^th Cir. 2017) (moving party has initial burden); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (moving party established that no genuine issue of material fact remains for trial).

 6.   See, e.g., Gasser Chair Co. v. Infanti Chair Manufacturing Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995) (in addition to proving elements of laches by preponderance of the evidence, moving party must also establish no genuine issue of material fact as to those elements).

 7.   Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986) (no requirement that moving party support its motion with affidavits or other similar materials negating the opponent’s claim but may be based on nonmovant’s failure to make sufficient showing as to its own case on which it has burden of proof); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256-57 (1986) (movant has burden of showing the absence of a genuine issue of fact, but nonmovant is not relieved of its own burden to produce evidence pointing to genuine issue); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1540 (TTAB 2009) (nonmovant must proffer countering evidence to show existence of genuine factual dispute for trial); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1860 (TTAB 2007) (although listing of allegedly undisputed facts is often submitted and is preferred, no requirement that movant set forth such listing of allegedly undisputed facts in its summary judgment motion). See also Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991); Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1548-49 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991); Avia Group International Inc. v. L.A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548, 1550-51 (Fed. Cir. 1988); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795-96 (Fed. Cir. 1987).

 8.   Fed. R. Civ. P. 56(c)(1). See also Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (nonmoving party’s response was not supported by contradictory facts, but merely expressed disagreement with facts); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) ("Mere conclusory statements and denials do not take on dignity by placing them in affidavit form"); Embarcadero Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (non-moving party failed to rebut moving party’s evidence or raise genuine dispute of material fact); Venture Out Properties LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007) ("The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine issue of material fact for trial.").

 9.   See Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992) (nonmovant not required to present entire case but just sufficient evidence to show an evidentiary conflict as to the material fact in dispute); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987) (dispute is genuine "only if, on the entirety of the record, a reasonable jury could resolve a factual matter in favor of the nonmovant"); Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735 (TTAB 2001) (if moving party meets burden of demonstrating absence of genuine issue of material fact, nonmoving party must present evidence that one or more material facts is at issue); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1299 (TTAB 2016) (Where the moving party "has supported its motion by demonstrating the lack of any evidence that it intended to create an association with [nonmovant’s marks], the burden then shifts to [the nonmovant] to demonstrate the existence of a genuine dispute of material fact to be resolved at trial.").

 10.   See Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1254 (TTAB 1995); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).

 11.   See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993) (impermissible inferences against nonmovant); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992) (evidence submitted by nonmovant is to be believed and all justifiable inferences drawn in its favor); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992) (impermissible inferences in favor of movant); Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991) (reasonable inferences as to intent could have been drawn in nonmovant’s favor); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 (TTAB 1996) (Board accepted nonmovant’s version of the facts for purposes of deciding motion); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993) (on opposer’s motion for summary judgment, applicant’s evidence of statement of use filed in connection with another of its applications covering many of same goods as in opposed application created inference of bona fide intent to use present mark despite absence of any documents regarding its intent to use present mark). Cf. A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *4-5 (TTAB 2019) (lack of documentation bearing on the intent to use a mark in commerce from the time of filing of intent-to-use application is highly probative that an applicant lacked such bona fide intent); Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009) (factual question of intent generally unsuited to disposition on summary judgment, however, unexplained lack of documentary evidence regarding nonmovant’s bona fide intent to use mark in commerce sufficient to prove that nonmovant lacks such intention).

 12.   Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992) (dispute is genuine if evidence could lead reasonable finder of fact to decide question in favor of nonmovant); Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1879 (TTAB 1998) (fact is material when its resolution would affect the outcome of the case).

 13.   See, e.g., Kellogg Co. v. Pack’Em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (single du Pont factor of dissimilarity of marks outweighed all others such that other factors, even if decided in nonmovant’s favor, would not be material because they would not change the result), aff’g, 14 USPQ2d 1545 (TTAB 1990); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1292-1294 (TTAB 2016) (same). See also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1879 (TTAB 1998).

 14.   See United States Olympic Committee v. O-M Bread Inc., 29 USPQ2d 1555, 1557 n.5 (TTAB 1993) (genuine issues of fact as to grounds which were asserted in opposition but were not grounds for summary judgment were irrelevant), aff’d, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995).

 15.   See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007); Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 (TTAB 2007); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994).

 16.   Fed. R. Civ. P. 56(c)(1).

 17.   Fed. R. Civ. P. 56(f). Cf. Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205, 1209 n.10 (TTAB 2003) (in considering whether to enter summary judgment in favor of petitioner as nonmoving party, Board treated respondent’s statements as it would those of a nonmovant and accepted the statements as true); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1104 (TTAB 1996) (effect of assigning ITU application if statutory exception is not met is one of law and could be decided in nonmovant’s favor).

 18.   37 C.F.R. § 2.127(a). See Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (cross-motions for summary judgment denied without prejudice because briefs exceeded page limits; page limits include, if submitted, table of contents, index of cases, description of record, statement of issues, recitation of facts, argument and summary).

 19.   See Copelands’ Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564-65 (Fed. Cir. 1989). See also Hewlett-Packard Development Co., L.P. v. Vudu, Inc., 92 USPQ2d 1630, 1633 n.5 (TTAB 2009); Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572, 1579 n.6 (TTAB 2008).

 20.   Hewlett-Packard Development Co., L.P. v. Vudu, Inc., 92 USPQ2d 1630, 1634 (TTAB 2009) (opposer’s motion for summary judgment on its Trademark Act § 2(d) claim granted as to International Class 9 goods but denied as to services in International Classes 35, 38, 41 and 42).

 21.   Compare Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171-72 (TTAB 2013) (where summary judgment entered on fewer than all pleaded grounds, Board might dispose of case without considering alternate grounds) with SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1591 (TTAB 2014) (when party moved for summary judgment on both pleaded grounds, Board granted summary judgment on one ground and allowed party time to inform Board whether the party wished to proceed with the other ground).

528.02    Time For Filing Motion

37 C.F.R. § 2.127(e)(1)  A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board. A motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. …

A motion for summary judgment generally may not be filed until after the moving party has made its initial disclosures. [ Note 1.] However, as provided in 37 C.F.R. § 2.127(e)(1), the Board may entertain a summary judgment motion filed prior to initial disclosures that is based upon lack of jurisdiction, res judicata (claim preclusion), or collateral estoppel (issue preclusion). [ Note 2.]

Moreover, the motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 3.] The motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact, and that it is entitled to judgment as a matter of law. [ Note 4.] Therefore, any motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period. If the day of the deadline for pretrial disclosures for the first testimony period is reset before the day of the deadline for pretrial disclosures for the first testimony period as originally set, a motion for summary judgment will be timely. [ Note 5.] As of the day of the deadline for pretrial disclosures for the first testimony period, however, any summary judgment motion filed thereafter is untimely, even if filed prior to a day of a rescheduled deadline for pretrial disclosures for the first testimony period. [ Note 6.]

When a motion for summary judgment is filed, a brief in response, or a motion under Fed. R. Civ. P. 56(d), must be filed within 30 days from the date of service of the motion. A reply brief, if any, must be filed within 20 days from the service date of the brief in response. The time for filing a reply brief will not be extended or reopened. [ Note 7.] The time for filing a responsive brief may be extended, but the time for filing a motion under Fed. R. Civ. P. 56(d) in lieu thereof, will not be extended or reopened. See TBMP § 528.06.

Parties are encouraged to contact the assigned Board attorney immediately after a cross-motion for summary judgment is filed so that the Board attorney may issue an appropriate order clarifying brief due dates and page limits. [ Note 8.] See TBMP § 528.01.

NOTES:

 1.   37 C.F.R. § 2.127(e)(1). See Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had yet to serve initial disclosures).

 2.   37 C.F.R. § 2.127(e)(1); Haider Capital Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *3-5 (TTAB 2021) (construing motion to dismiss as motion for summary judgment where basis is claim preclusion and moving party relies on matter outside of pleadings); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.5 (TTAB 2015) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011) (same), appeal dismissed, 427 F. App’x. 892 (Fed. Cir. 2011; Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1255 n.7 (TTAB 2009) ("if a party moves for summary judgment prior to the deadline for making initial disclosures it should indicate in its motion that the disclosures have been made, or are not required because the motion seeks judgment on claim or issue preclusion or on a jurisdictional issue"); NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ2d 1861, 1862 n.1 (TTAB 2016) (construing motion to dismiss filed in lieu of answer as motion for summary judgment on issue preclusion). See also 37 C.F.R. § 2.120(a). For information concerning the application of issue or claim preclusion in Board proceedings at summary judgment, see Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1375-77 (Fed. Cir. 2008); Mayer/Berkshire Corp. v. Berkshire Fashions, 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005); Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1767 (TTAB 2015).

 3.   MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804 (July 21, 2017). See Lumber Liquidators Services, LLC v. Columbia Insurance Co., 2022 USPQ2d 31, at *4-5 (TTAB 2022) (motion for summary judgment must be filed the day before the deadline for pretrial disclosures); KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018) (same).

 4.   Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986); Hewlett-Packard Development Co., L.P. v. Vudu Inc., 92 USPQ2d 1630, 1631 (TTAB 2009).

 5.   37 C.F.R. § 2.127(e)(1); KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018).

 6.   See Lumber Liquidators Services, LLC v. Columbia Insurance Co., 2022 USPQ2d 31, at *7-8 (TTAB 2022) (where pretrial disclosure deadline was Saturday, July 3, 2021, summary judgment motion had to be filed by July 2, 2021 to be considered timely); KID-Systeme GmbH v. Turk Hava Yollari Teknik Anonim, 125 USPQ2d 1415, 1416-17 (TTAB 2018). Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235-36 (Comm’r 1976) (motion filed before reset testimony period opened but after previous testimony period opened was untimely; petition to Commissioner to reverse Board action denied).

 7.   37 C.F.R. § 2.127(e)(1).

 8.   37 C.F.R. § 2.127(e)(1). See, e.g., Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (the page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues; in other words, one cannot exceed the page limitation for a brief by combining an opposition brief and cross-motion addressing the same issue).

528.03    Suspension Pending Determination of Motion

37 C.F.R. § 2.127(d)  When any party timely files a potentially dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a motion for summary judgment, the case is suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise may be specified in a Board order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.

When a party files a timely motion for summary judgment, the case is suspended by the Board with respect to all matters not germane to the motion. [ Note 1.] The filing of an untimely motion generally will not be considered grounds for suspension. If the motion was untimely filed, the Board may issue an immediate action denying the motion for that reason. For a discussion regarding suspension of proceedings following the filing of a potentially dispositive motion, see TBMP § 510.03.

Once the Board has suspended proceedings in a case pending the determination of a motion for summary judgment, no party should file any paper that is not germane to the motion. [ Note 2.] Examples of papers that are or may be germane to a motion for summary judgment include a brief in opposition to the summary judgment motion, a motion for an extension of time in which to respond to the summary judgment motion, a motion under Fed. R. Civ. P. 56(d) for discovery needed to enable the nonmoving party to respond to the summary judgment motion, a cross-motion for summary judgment, a motion for leave to amend a party’s pleading or a motion to amend or withdraw requests for admissions. [ Note 3.] See TBMP § 507 (Motion to Amend Pleading), TBMP § 509 (Motion to Extend Time), TBMP § 525 (Motion to Withdraw or Amend Admission), TBMP § 528.06 (Request for Discovery to Respondent to Summary Judgment), and TBMP § 528.07 (Unpleaded Issue).

In addition to tolling the time to respond to outstanding discovery requests, suspension of proceedings tolls the time for parties to make required disclosures.

Extensions of time will not be granted for a motion under Fed. R. Civ. P. 56(d) for discovery or for the moving party to file a reply brief. The Board will consider no further papers beyond a timely reply brief in support of or in opposition to a motion for summary judgment. [ Note 4.]

If the Board’s determination of the summary judgment motion does not dispose of the case, the Board ordinarily will issue an order resuming proceedings. [ Note 5.]

NOTES:

 1.   See 37 C.F.R. § 2.127(d)  and 37 C.F.R. § 2.127(e)(1). See also Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 965 (TTAB 1986) (motion to compel deferred pending ruling on summary judgment motion).

 2.   See 37 C.F.R. § 2.127(d). See also Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (motion for discovery sanctions not considered).

 3.   See International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1603-04 (TTAB 2002) (motion to amend opposition germane inasmuch as it related to the issue of whether applicant’s motion is one for complete or partial summary judgment); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1032 (TTAB 1996) (motion to amend pleading to add new claim); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993) (motion to amend to amplify pleading); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment is a proper filing even after proceeding is suspended).

 4.   See 37 C.F.R. § 2.127(e)(1).

 5.   37 C.F.R. § 2.127(d).

528.04    Miscaptioned Motion

The circumstances in which the Board will treat as a motion for summary judgment either a motion to dismiss under Fed. R. Civ. P. 12(b)(6) relying on matters outside the pleadings, or a motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), filed prior to the moving party’s service of initial disclosures and relying on matters outside the pleadings, are very limited. A party may not file a motion for summary judgment until it has made its initial disclosures (unless the motion is based on claim or issue preclusion or lack of jurisdiction) and such disclosures are not made until after the pleadings have closed and issues have been joined. Thus, consideration of either a motion to dismiss under Fed. R. Civ. P. 12(b)(6) or a motion for judgment on the pleadings under Fed. R. Civ. P. 12(c) as a motion for summary judgment generally would result in a premature motion for summary judgment. [ Note 1.] As a result, the Board generally will not construe either a motion to dismiss or a motion for judgment on the pleadings, filed prior to initial disclosures, as a motion for summary judgment.

Conversely, a motion for summary judgment without supporting evidence is the functional equivalent of a motion to dismiss for failure to state a claim upon which relief can be granted, see TBMP § 503, or of a motion for judgment on the pleadings.[ Note 2.] See TBMP § 504.

NOTES:

 1.   See 37 C.F.R. § 2.127(e)(1); Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (motion to dismiss not converted to motion for summary judgment in opposition). But see Haider Capital Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *3-5 (TTAB 2021) (construing motion to dismiss as motion for summary judgment where basis is claim preclusion and moving party relies on matter outside of pleadings); NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ2d 1861, 1862 n.1 (TTAB 2016) (construing motion captioned as motion to dismiss filed in lieu of answer as motion for summary judgment on issue preclusion).

 2.   See S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225 n.9 (TTAB 1987) (motion for summary judgment was unsupported and whether movant was entitled to judgment as a matter of law could not be determined on pleadings alone). See also 5B C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2722 (4th ed. April 2021 Update).

528.05    Summary Judgment Evidence

528.05(a)   

528.05(a)(1)    In General

The types of evidence that may be submitted in support of, or in opposition to, a motion for summary judgment include "depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials," affidavits or declarations, and other materials in the record. [ Note 1.]

The evidentiary record upon summary judgment in an inter partes proceeding before the Board also includes, without action by any party, the pleadings, the file of any application or registration that is the subject of the proceeding as provided in 37 C.F.R. § 2.122(b)  [ Note 2.] and a copy of any registration pleaded and made of record by the plaintiff with its complaint, in the manner prescribed in 37 C.F.R. § 2.122(d)(1). In addition, a party may make of record, for purposes of summary judgment, copies of other registrations; disclosure materials; documents or things produced in response to a request for production; official records, if competent evidence and relevant to an issue; printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public that is relevant under an issue, if the publication is competent evidence and relevant to an issue; and testimony from other proceedings, so far as relevant and material. [ Note 3.] Additionally, a party may make of record documents obtained during settlement negotiations so long as those documents are otherwise discoverable. [ Note 4.] A party need not submit these materials under a notice of reliance in order to make them of record for purposes of a summary judgment motion. Rather, the materials may be submitted as attachments or exhibits to a party’s brief or affidavit in support of the motion. Cf. TBMP § 700.

In addition, the Board may grant a party’s request or otherwise exercise its discretion to take judicial notice of appropriate dictionary definitions, translations, and other facts that are germane to a summary judgment motion. [ Note 5.] See TBMP § 704.12. The parties further may bring to the attention of the Board supplemental legal authority issuing after briefing of the summary judgment motion, e.g., a precedential decision from the Federal Circuit or Board that is relevant to the issues under consideration, along with a brief description of its significance. [ Note 6.] However, such a submission may not be used as a subterfuge to avoid the prohibition on filing surreplies or further briefing of such motions.

In a Board proceeding, the only evidentiary materials likely to be already of record when a motion for summary judgment is filed are the pleadings, the file of any application or registration that is the subject matter of the proceeding [ Note 7.], and any registration pleaded and made of record by the plaintiff with its complaint. Any other evidence that a party wishes to have considered upon summary judgment must usually be submitted in connection with the summary judgment motion. [ Note 8.]

Because it is not the practice of the Board to make evidentiary rulings prior to briefing and determination of summary judgment motions, the Board will not entertain a motion in limine to preclude a party from presenting certain types or categories of evidence at summary judgment or, for that matter, at trial. [ Note 9.] See TBMP § 527.01(f). Objections to evidence may be made in a party’s responsive brief, if one is permitted. [ Note 10.]

Evidence submitted in connection with a motion for summary judgment is ordinarily of record only for purposes of that motion. If the case goes to trial, the summary judgment evidence may not form part of the evidentiary record to be considered at final hearing unless it is properly introduced in evidence during the appropriate testimony period. [ Note 11.] However, the parties may stipulate that any or all of the summary judgment evidence be treated as properly of record for purposes of final decision. [ Note 12.] Moreover, the parties may, if they so desire, stipulate that the summary judgment motion and evidence be treated as the final record and briefs in the case. [ Note 13.] See TBMP § 528.05(a)(2).

NOTES:

 1.   Fed. R. Civ. P. 56(c)(1)(A).

 2.   See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties). See also Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1507 n.221 (TTAB 2017) (entire opposed application file is automatically part of the record in an opposition proceeding), appeal dismissed, No. 1:17-CV-00345 (E.D. Va. Aug. 24, 2017); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 (TTAB 2010) (record includes pleadings and file of the opposed application).

 3.   See 37 C.F.R. § 2.122(b), 37 C.F.R. § 2.122(d)(2), 37 C.F.R. § 2.122(e), 37 C.F.R. § 2.122(f), and 37 C.F.R. § 2.127(e)(2). See also Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1369-70 (TTAB 1998) (party may rely on documents admissible under 37 C.F.R. § 2.122(e)).

 4.   See Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930-31 (TTAB 2015) (Fed. R. Evid. 408(a) does not preclude use of documents because they are provided during the course of compromise negotiations if the evidence is otherwise discoverable).

 5.   See generally University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Enbridge Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1542 n.9 (TTAB 2009); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1515 n.13 (TTAB 2009).

 6.   See Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016) (party may bring supplemental legal authority to the attention of the Board after briefing of a summary judgment motion).

 7.   See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009) (the entire file of a subject registration, including any evidence made of record during prosecution of the underlying application, is part of the record in a cancellation proceeding without any action of the parties).

 8.   See Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 n.9 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).

 9.   See Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 (TTAB 1995).

 10.   See Fed. R. Civ. P. 56(c)(2); Fed. R. Civ. P. 56(c)(2) Committee Notes on Rules - 2010 amendment ("Subdivision (c)(2) provides that a party may object that material cited to support or dispute a fact cannot be presented in a form that would be admissible in evidence. … There is no need to make a separate motion to strike.").

 11.   See Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1115 n.10 (TTAB 2011) (evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of such motion), appeal dismissed, 427 F. App’x 892 (Fed. Cir. 2011); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1960 n.7 (TTAB 2008); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 n.4 (TTAB 2008); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994) (declaration of witness submitted in connection with summary judgment motion was part of record for trial where witness identified and attested to accuracy of it during applicant’s testimony period); Pet Inc. v. Bassetti, 219 USPQ 911, 913 n.4 (TTAB 1983) (affidavit offered with response to motion for summary judgment became part of trial record when witness identified it during testimony deposition and adverse counsel cross-examined witness about statements in the affidavit); American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981) (material in support of untimely summary judgment motion not trial evidence absent agreement of parties).

 12.   See, e.g., Frito-Lay N. America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951 (TTAB 2014) (parties stipulated that they could rely at trial on materials submitted in support of and against each party’s motion for summary judgment), vacated on other grounds, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).

 13.   See, e.g., Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986).

528.05(a)(2)    Accelerated Case Resolution (ACR)

Parties to Board inter partes proceedings may stipulate to pretrial final disposition on the merits (as well as abbreviated trial on the merits, see TBMP § 702) of inter partes cases via Accelerated Case Resolution (ACR). [ Note 1.] In that regard, ACR expands upon earlier Board practice allowing parties to stipulate that their summary judgment motions and accompanying evidence be treated as the final record and briefs in a case. [ Note 2.] ACR is available in all cases.

Parties requesting ACR may stipulate to a variety of matters to accelerate disposition of the proceeding, including permitting the Board to resolve issues of fact at summary judgment and to treat the parties’ summary judgment motion papers and evidence as the final record and briefs on the merits of the case. In addition, parties may stipulate to the following: abbreviating the length of the discovery, testimony, and briefing periods as well as the time between them; limiting the number or types of discovery requests or the subject matter thereof; limiting the subject matter for testimony, or limiting the number of witnesses, or streamlining the method of introduction of evidence, for example, by stipulating to facts and introduction of evidence by affidavit or declaration without cross-examination. [ Note 3.]

To optimize ACR efficiencies and streamline the case at final decision, parties should avoid excessive evidentiary objections and those contrary to the parties’ stipulations as well as avoid submission of excessive documentary evidence. [ Note 4.]

Unlike summary judgment decisions, which are interlocutory in nature, the Board’s decision in a proceeding utilizing ACR is final, and thus, is judicially reviewable as set forth in 37 C.F.R. § 2.145. [ Note 5.] See TBMP § 528.01 and TBMP § 901.

Parties may stipulate to ACR at any time during the pretrial phase of the proceeding. Thus, parties that have been in contact prior to commencement of an opposition or cancellation may stipulate to ACR as early as the filing and service of their pleadings. Parties that have not been in prior contact may stipulate to ACR during their discovery conference, or at any time prior to the opening of testimony. Thereafter, parties still may agree to abbreviating trial and briefing schedules, limiting the types and methods of introduction of evidence, and stipulating to facts. [ Note 6.] Oral hearings are available in ACR cases in accordance with 37 C.F.R. § 2.129(a). See TBMP § 802.

Parties may stipulate to ACR by informing the Board attorney assigned to their case during a telephone conference or by filing a stipulation. In any event, parties must either alert the assigned attorney by telephone that the parties are seeking ACR, in which case the attorney will issue an order outlining the parties’ agreement, or submit a stipulation in writing memorializing and outlining their agreement. [ Note 7.] Failure to do so may result in delays in implementing ACR and the disposition of the proceeding.

Although ACR generally will be available to any parties seeking to avail themselves of accelerated resolution of their proceedings, the ultimate decision as to whether the parties may proceed by means of ACR lies with the discretion of the Board. In most cases it is anticipated that decisions on ACR cases will be rendered within fifty days of the scheduled due date of a reply brief or hearing. [ Note 8.]

What follows in TBMP § 528.05(b) through TBMP § 528.05(f) is a more detailed discussion of some of the types of evidence that may be submitted in connection with a summary judgment motion, or a case in which the parties seek expedited determination under ACR.

For a further discussion regarding other ACR models, see TBMP § 702.04 and TBMP § 705.

NOTES:

 1.   See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (Board’s first, non-precedential, ACR decision in Opposition No. 91158118 affirmed by Federal Circuit), cert. denied, 127 S. Ct. 836 (2006). See also University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *6 n.18 (TTAB 2021) (parties stipulated to ACR after filing cross motions for summary judgment); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 (TTAB 2020) (parties stipulated to ACR option pursuant to Board’s pilot expedited cancellation proceeding); Weatherford/Lamb, Inc. v. C& J Energy Services, Inc., 96 USPQ2d 1834, 1836 (TTAB 2010) (parties stipulated to ACR after filing cross motions for summary judgment); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to ACR). See also Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) ("In order to take advantage of any form of ACR, the parties must stipulate that the Board may resolve any genuine disputes of material fact in the context of something less than a full trial.").

 2.   See, e.g., Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014) (parties agreed to try case using cross-motions for summary judgment ACR model); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014) (after suggestion by Board in order denying motion for summary judgment, parties stipulated to forego trial and rely on evidence submitted in support of the motions for summary judgment, supplemented by expert declarations, trial briefs and an oral hearing), vacated on other grounds, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28, 1830 (TTAB 2012) (parties may stipulate that their cross motions for summary judgment be the ACR record); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Bond v. Taylor, 119 USPQ2d 1049, 1501 (TTAB 2016).

 3.   See 37 C.F.R. § 2.120(a)(2)(iv)  ("The parties may stipulate to a shortening of the discovery period."); University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *6-7 (TTAB 2021) (parties stipulated to 72 facts and various categories of evidence); Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence); 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); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion); 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 produced documents and waiver of objections based on authenticity or hearsay); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts and a stipulation to seek a determination through ACR); Brooks v. Creative Arts by Calloway LLC, 93 USPQ2d 1823, 1825-26 (TTAB 2009) (parties stipulated to 14 paragraphs of facts, submission of testimony of certain witnesses in declaration form, and that sole issue to be decided at final was priority), aff’d on other grounds, Creative Arts by Calloway LLC v. Brooks, 09-cv-10488 (S.D.N.Y. December 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013); Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to 13 paragraphs of facts). See also Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).

 4.   See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (parties utilized ACR process and submitted clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (ACR proceeding experienced delay in issuing decision due to the number and nature of objections and precedential nature of decision); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1873-75 (TTAB 2011) (efficiencies of parties’ stipulations as to evidentiary record defeated by submission of excessive records, more than necessary to establish party’s position; although parties stipulated to testimony by declaration to streamline proceeding, numerous objections to evidence subverted the parties’ stipulations).

 5.   Cf. Copelands’ Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1564-65 (Fed. Cir. 1989); Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572, 1578 n.6 (TTAB 2008).

 6.   See Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007).

 7.   See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue ACR); Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 (TTAB 2008) (parties must inform Board by stipulation or motion any time they agree to modify their obligations under the rules regarding disclosure and discovery or deadlines involving disclosure, discovery, trial or briefing).

 8.   See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections).

528.05(b)    Affidavits and Accompanying Exhibits

Fed. R. Civ. P. 56(c)(4) Affidavits or Declarations. An affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated.

Affidavits may be submitted in support of, or in opposition to, a motion for summary judgment provided that they (l) are made on personal knowledge; (2) set forth such facts as would be admissible in evidence; and (3) show affirmatively that the affiant is competent to testify to the matters stated therein. This is so even though affidavits are self-serving in nature, and even though there is no opportunity for cross-examination of the affiant. However, an adverse party may have an opportunity for direct examination of the affiant, if a Fed. R. Civ. P. 56(d) motion to take the discovery deposition of the affiant is made and granted. [ Note 1.] See TBMP § 528.06.

The Board may permit affidavits submitted in connection with a summary judgment motion to be supplemented or opposed by depositions, answers to interrogatories, or further affidavits. [ Note 2.]

Documents submitted with a summary judgment affidavit, but not identified therein, cannot be considered as exhibits to the affidavit. [ Note 3.] An affidavit that is not supported by documentary evidence may nevertheless be given consideration if the statements contained in the affidavit are clear and convincing in character, and uncontradicted. [ Note 4.]

In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 C.F.R. § 2.20. [ Note 5.]

Although submissions to the Board by external storage media or devices (e.g., CD-ROM, flash drives, etc.) are not permitted, (see TBMP § 106.03), exhibits to affidavits consisting of recordings of commercials, demonstrations, etc., may be transferred to an appropriate electronic format such as a DVD or CD for submission to the Board. See, e.g., TBMP § 703.01(i). Flash drives are not accepted because of the security risks to USPTO systems, including the potential for introduction of viruses and worms.

NOTES:

 1.   See Fed. R. Civ. P. 56(c)(4). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (moving party’s affidavit and other evidence were not contradicted by nonmoving party); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1578 (TTAB 2015) (Fed. R. Civ. P. 56(c)(4) allows testimony from personal knowledge based on review of files and records or position with company, and Board may not consider portions of affidavit or declaration not based on personal knowledge); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1864 n.8 (TTAB 2007) (self-serving declaration permissible on summary judgment despite absence of opportunity for cross-examination of declarant); Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1217 (TTAB 2007) (declaration submitted with summary judgment motion clarifies discrepancies in discovery deposition); Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (use of standard language in declaration did not raise genuine issue as to personal knowledge); C & G Corp. v. Baron Homes, Inc., 183 USPQ 60, 60 (TTAB 1974) (affidavit is competent evidence); John T. Clark Co. v. Colgate-Palmolive Co., 176 USPQ 93, 94 (TTAB 1972) (affidavit was not made on personal knowledge and there was no foundation for statements made therein); 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (issue of credibility raised as to one affiant but statements by another affiant were competent and uncontradicted and suspicion alone is insufficient to invalidate).

 2.   See Fed. R. Civ. P. 56(c). See also Shalom Children’s Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1517 (TTAB 1993) (additional affidavit submitted with reply brief considered).

 3.   See Missouri Silver Pages Directory Publishing Corp. Inc. v. Southwestern Bell Media, Inc., 6 USPQ2d 1028, 1030 n.9 (TTAB 1988) (documents were related to information given in affidavit, but were not specifically identified therein).

 4.   See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1736 (TTAB 2001) (opposer’s declaration, while not accompanied by any documentary evidence, was internally consistent, not characterized by uncertainty and was unchallenged by applicant); 4U Co. of America, Inc. v. Naas Foods, Inc., 175 USPQ 251, 253 (TTAB 1972) (fact that allegations in affidavit not supported by invoice does not undermine the testimony when uncontradicted). Cf., e. g., with respect to testimony depositions, Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 307 n.1 (TTAB 1979); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976); Clubman’s Club Corp. v. Martin, 188 USPQ 455, 458 (TTAB 1975); Rite Aid Corp. v. Rite-Way Discount Corp., 182 USPQ 698, 702 n.5 (TTAB 1974), aff’d, 508 F.2d 828, 184 USPQ 351 (CCPA 1975).

 5.   Fed. R. Civ. P. 56(c)(4). See 37 C.F.R. § 2.20. See also Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).

 6.   See Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1654-55 (TTAB 2014), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (parties may not override Trademark Rule 2.126 provisions for form of submissions by agreement; however, video and audio recordings of evidence such as commercials may be submitted on CD-ROM).

528.05(c)    Discovery Responses and Disclosures

37 C.F.R. § 2.127(e)(2)  For purposes of summary judgment only, the Board will consider any of the following, if a copy is provided with the party’s brief on the summary judgment motion: written disclosures or disclosed documents, a discovery deposition or any part thereof with any exhibit to the part that is filed, an interrogatory and answer thereto with any exhibit made part of the answer, a request for production and the documents or things produced in response thereto, or a request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto). 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.

37 C.F.R. § 2.120(k)(8)  Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period.

See also TBMP § 409. Cf. 37 C.F.R. § 2.120(k), governing the use of discovery responses as trial evidence, and TBMP § 704.09,TBMP § 704.11 regarding the introduction of depositions, interrogatory responses, responses to requests for admissions, and produced documents.

528.05(d)    Registrations

37 C.F.R. § 2.122(d)(1)  A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. For the cost of a copy of a registration showing status and title, see § 2.6(b)(4).

If a plaintiff’s registration is pleaded and made of record pursuant to 37 C.F.R. § 2.122(d)(1), the registration is of record for all purposes, including a summary judgment motion.

Alternatively, a plaintiff may make its pleaded registration of record, for purposes of summary judgment only, by filing a status and title copy thereof, or a current printout of information from the USPTO electronic database records showing the status and title thereof, with its brief on the summary judgment motion. [ Note 1.] A registration owned by a defendant may be made of record in the same manner for purposes of summary judgment or Accelerated Case Resolution (ACR), if consistent with the parties’ ACR stipulation. See TBMP § 528.05(a)(2). A copy printed from the USPTO’s TSDR or TESS database is sufficient for this purpose.

A party may make a third-party registration of record, for purposes of summary judgment only, by filing a copy thereof with its brief on the summary judgment motion; the copy need not be a certified copy, nor need it be a status and title copy. [ Note 2.] A copy printed from the USPTO’s TSDR or TESS database likewise is sufficient for this purpose.

For purposes of summary judgment only, a copy of a trademark search report, made of record as an exhibit to an affidavit, or as part of a discovery response, submitted in opposition to a summary judgment motion, may be sufficient to raise a genuine dispute of material fact as to the nature and extent of third-party use of a particular designation. [ Note 3.]

NOTES:

 1.   See Bongrain International (American) Corp. v. Moquet Ltd., 230 USPQ 626, 626 n.3 (TTAB 1986). Cf. 37 C.F.R. § 2.122(d)(2).

 2.   See Interbank Card Association v. United States National Bank of Oregon, 197 USPQ 123, 124 n.6 (TTAB 1977) (third-party registrations may be plain copies). See also 37 C.F.R. § 2.122(e); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998) (incomplete TRAM records of third-party registrations not sufficient).

 3.   See, e.g., Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993) (search reports and telephone directory listings sufficient to raise genuine issue regarding strength of mark). With respect to third-party applications, see also Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467-68 n.6 (TTAB 2003) (third-party applications which were published for opposition, submitted in response to motion for summary judgment, were considered by the Board, but failed to raise a genuine issue of material fact).

528.05(e)    Printed Publications and Official Records

37 C.F.R. § 2.122(e)  Printed publications and official records.

• (1) Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant in a particular proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered in accordance with paragraph (g) of this section. The notice of reliance shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Office need not be certified to be offered in evidence.
• (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.

Printed publications, as described in 37 C.F.R. § 2.122(e), include such materials as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant under an issue in a proceeding. [ Note 1.] See TBMP § 704.08. The term "official records," as used in 37 C.F.R. § 2.122(e), refers not to a party’s company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer. [ Note 2.] See TBMP § 704.07.

Materials that qualify as printed publications or official records under 37 C.F.R. § 2.122(e)  are considered essentially self-authenticating, that is, the nonoffering party is readily able to verify the authenticity of the proffered materials. [ Note 3.] As such, these materials may be relied on for purposes of summary judgment without further evidence of authenticity. [ Note 4.] A party may introduce evidence of this nature in connection with a summary judgment motion, if the evidence is competent and relevant, by: specifying the official record or printed publication (including, with respect to the printed publication, information sufficient to identify the source and date of the publication) and the pages to be read; indicating generally the relevance of the material being offered; and including a copy of the proffered material with the party’s brief. [ Note 5.]

The material need not be submitted under a notice of reliance or in connection with the affidavit or declaration of a witness, and may simply be submitted as an attachment or exhibit to a party’s supporting brief.

Internet evidence. Materials obtained from the Internet that identify: (1) dates they were accessed; and (2) their source (e.g., the URL), are considered to be self-authenticating and may be admitted into evidence in the same manner as a printed publication in general circulation in accordance with 37 C.F.R. § 2.122(e). [ Note 6.] TBMP § 704.08(b). In all cases, printed publications are only admissible for what they show on their face, and not as proof of any facts asserted therein. [ Note 7.] See TBMP § 704.08.

Materials that are not self-authenticating. Materials that do not fall within 37 C.F.R. § 2.122(e), that is, materials which are not self-authenticating in nature, may nonetheless be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided they are properly authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P. 56(c)(4). See TBMP § 528.05(b). Such materials may, on summary judgment, be introduced by the affidavit or declaration of a person who can clearly and properly authenticate and identify the materials, including identifying the nature, source and date of the materials. [ Note 8.]

For further information concerning official records and printed publications, including the probative value of such evidence, see TBMP § 704.07 and TBMP § 704.08. [ Note 9.]

NOTES:

 1.   See 37 C.F.R. § 2.122(e). See also Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007).

 2.   See Brooks v. Creative Arts by Calloway LLC, 93 USPQ2d 1823, 1825-26 (TTAB 2009) (applicant’s own file copies of briefs from district court case not proper under notice of reliance as official records), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, 09-cv-10488 (SDNY December 27, 2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013).

 3.   See Weyerhaeuser v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992).

 4.   See 37 C.F.R. § 2.122(e).

 5.   Cf. Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (noting that a proffered excerpt from a newspaper or periodical is lacking in foundation and, thus, is not admissible as evidence to the extent that it is an incomplete or illegible copy, is unintelligible because it is in a language other than English, or is not fully identified as to the name and date of the published source).

 6.   37 C.F.R. § 2.122(a). See Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). See also Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071 (TTAB 2011) (documents obtained from Internet admitted even though witness did not personally obtain or download documents); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007) (article from a trade magazine is admissible under 37 C.F.R. § 2.122(e) because, "[o]n its face, it identifies the publication and the date published").

Cf. International Association of Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6 (TTAB 1985), rev’d on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (excerpts of printed articles from electronic database were admissible through notice of reliance because the materials "clearly identify the excerpted articles by their dates of publication and sources, all of which are readily available in published materials"). See also In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984) (magazine articles obtained through search of electronic database admissible because they were clearly identified and therefore there was "no credibility problem"), aff’d, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 n.3 (TTAB 1983) (printed articles from electronic database are clearly identified by name and date; therefore applicant could have easily checked the articles).

 7.   See Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 n.8 (TTAB 2008); Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ 443, 445 (TTAB 1974).

 8.   See Fed. R. Civ. P. 56(c)(1)(A) and Fed r. Civ. P. P. 56(c)(4); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1864 n.8 (TTAB 2007); Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1217 (TTAB 2007). Please Note: The 2010 amendment to Fed. R. Civ. P. 56(c)(2) "eliminated the unequivocal requirement that documents submitted in support of a summary judgment motion must be authenticated." Akers v. Beal Bank, 845 F. Supp. 2d 238, 243 (D.D.C. 2012). The lack of authentication is now grounds for objection, but only on the basis that the evidence cannot be presented in a form that would be admissible in evidence. Fed. R. Civ. P. 56(c)(2), Committee Notes on Rules - 2010 amendment ("The objection functions much as an objection at trial, adjusted for the pretrial setting. The burden is on the proponent to show that the material is admissible as presented or to explain the admissible form that is anticipated.").

 9.   See Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) for a discussion of the probative weight given evidence obtained from the Internet.

528.05(f)    Testimony from Another Proceeding

37 C.F.R. § 2.122(f)  Testimony from other proceedings. By order of the Trademark Trial and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or those in privity may be used in a proceeding, so far as relevant and material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony.

Upon motion granted by the Board, testimony taken in another proceeding, or in a suit or action in a court, between the same parties or their privies, may be used in connection with a summary judgment motion in a pending Board proceeding, to the extent that the testimony is relevant and material. The use of such testimony, however, is subject "to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony." [ Note 1.] Any motion made to enter testimony from another proceeding should be accompanied by a copy of the testimony sought to be entered in the record together with clear arguments as to its relevance and materiality. Relevance and materiality frequently hinge upon the marks and goods or services involved in the two proceedings. See TBMP § 530.

When the Board allows testimony of this nature to be used in connection with a motion for summary judgment, the testimony, and any testimony taken upon recall of the same witness for examination or cross-examination, or in rebuttal thereof, is of record only for purposes of the motion for summary judgment; it will not be considered at final hearing if the case goes to trial, unless it is reintroduced, upon motion granted by the Board, during the appropriate trial period, or the parties stipulate to its use at trial. [ Note 2.] See TBMP § 528.05(a)(1).

NOTES:

 1.   37 C.F.R. § 2.122(f).

 2.   See, e.g., Eveready Battery Co. v. Green Planet, Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (regarding parties’ stipulation that evidence submitted in connection with summary judgment motion shall be deemed of record for trial pursuant to Accelerated Case Resolution (ACR)); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (parties stipulated that evidence submitted in connection with summary judgment motion shall be deemed of record for trial).

528.06    Request For Discovery to Respond to Summary Judgment

Fed. R. Civ. P. 56(d) When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:

• (1) defer considering the motion or deny it;
• (2) allow time to obtain affidavits or declarations or to take discovery; or
• (3) issue any other appropriate order.

37 C.F.R. § 2.127(e)(1)  … A motion under Rule 56(d) of the Federal Rules of Civil Procedure, if filed in response to a motion for summary judgment, shall be filed within thirty days from the date of service of the summary judgment motion. The time for filing a motion under Rule 56(d) will not be extended or reopened. …

Please Note: Former subdivision (f) of Fed. R. Civ. P. 56 has been carried forward by the 2010 amendments to the Federal Rules of Civil Procedure as subdivision (d). The textual differences between current Rule 56(d) and former Rule 56(f) are purely stylistic. Case law developed under the earlier version remains authoritative. [ Note 1.]

A party that believes that it cannot effectively oppose a motion for summary judgment without first taking discovery may file a request with the Board for time to take the needed discovery. The request must be supported by an affidavit showing that the nonmoving party cannot, for reasons stated therein, present facts essential to justify its opposition to the motion. [ Note 2.]

In the event the moving party fails to support its Fed. R. Civ. P. 56(d) motion by an affidavit, the motion generally will be denied. It is not sufficient that a nonmoving party simply state in an affidavit supporting its motion under Fed. R. Civ. P. 56(d) that it needs discovery in order to respond to the motion for summary judgment; rather, the party must state therein the reasons why it is unable, without discovery, to present facts sufficient to show the existence of a genuine dispute of material fact for trial. [ Note 3.] If a party has demonstrated a need for discovery that is reasonably directed to obtaining facts essential to its opposition to the motion, discovery will be permitted, especially if the information sought is largely within the control of the party moving for summary judgment. [ Note 4.] The motion should set forth with specificity the areas of inquiry needed to obtain the information necessary to enable the party to respond to the motion for summary judgment. [ Note 5.]

In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 C.F.R. § 2.20. [ Note 6.]

When a request for discovery under Fed. R. Civ. P. 56(d) is granted by the Board, the discovery allowed is limited to that which the nonmoving party must have in order to oppose the motion for summary judgment; this is so even if the nonmoving party had, at the time when the summary judgment motion was filed, broader requests for discovery outstanding, and those requests remain unanswered.

A request for Fed. R. Civ. P. 56(d) discovery, if filed, must be filed within 30 days of the date of service of the summary judgment motion. [ Note 7.] No extensions of time will be granted to file a motion under Fed. R. Civ. P. 56(d), nor may the time to file a motion under Fed. R. Civ. P. 56(d) be reopened. [ Note 8.] The affidavit in support of the request may be signed either by the requesting party or by its counsel, as appropriate.

A request for Fed. R. Civ. P. 56(d) discovery should be clearly made, and certainly not buried somewhere in a responsive brief or other paper, and should not be filed as a "throw away" alternative accompanying a response to the motion for summary judgment on the merits. When a party faced with a summary judgment motion files a combined request for Fed. R. Civ. P. 56(d) discovery and response on the merits of the motion, the Board ordinarily will deem the Fed. R. Civ. P. 56(d) discovery request moot, and decide the summary judgment motion on the merits thereof. [ Note 9.] Moreover, if a party’s request for discovery under Fed. R. Civ. P. 56(d) is granted by the Board, and the party thereafter files a response to the summary judgment without taking the requested discovery, the filing of the Fed. R. Civ. P. 56(d) motion may be viewed as sanctionable conduct under Fed. R. Civ. P. 11. [ Note 10.]

NOTES:

 1.   See Fed. R. Civ. P. 56(a) Advisory Committee’s notes (2010 amendment); Godin v. Schencks, 629 F.3d 79, 90-91 n.19 (1st Cir. 2010) ("The substance of the rule has not materially changed.").

 2.   See Fed. R. Civ. P. 56(d); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1475 (Fed. Cir. 1992) (finding sufficient need for additional discovery); Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (unfocused requests for discovery; Rule 56(f) makes no distinction between whether no discovery has been taken and whether additional discovery is needed); Avia Group International Inc. v. L.A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548, 1551 (Fed. Cir. 1988) (complaint that summary judgment was granted before it could take discovery unavailing where party failed to seek Rule 56(f) protection); Spectra Corp. v. Lutz, 839 F.2d 1579, 5 USPQ2d 1867, 1868-69 n.4 (Fed. Cir. 1988) (discovery properly denied where plaintiff had conducted 11 months of discovery and was allowed to continue taking discovery pending decision on defendant’s motion for summary judgment and failed to file Rule 56(f) affidavit); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir. 1987) (mere assertion in brief of need for discovery insufficient); Chavakula v. Praise Broadcasting AKA Praise FM, 2020 USPQ2d 10855, at *3-5 (TTAB 2020) (defendant’s Fed. R. Civ. P. 56(d) discovery motion granted where plaintiff filed a motion for summary judgment instead of responding to defendant’s discovery requests on issues relevant to plaintiff’s likelihood of confusion claim); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1860 (TTAB 2007) (nonmoving party may respond to summary judgment motion by filing motion for Rule 56(f) discovery).

See also Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1887 n.13 (TTAB 1998) (assertion in response to summary judgment motion that opposers intend to conduct further discovery was not proper request for Fed. R. Civ. P. 56(f) discovery); Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1253 (TTAB 1995) (motion for Rule 56(f) discovery denied where applicant also filed a response to the summary judgment motion on the merits); Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1476 (TTAB 1992) (failure to file Rule 56(f) motion creates presumption party did not consider such discovery essential); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1924-25 (TTAB 1989) (Rule 56(f) declaration sufficient); Nature’s Way Products Inc. v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989) (mere unsupported assertion of desire to take deposition inadequate).

 3.   See Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1253 (TTAB 1995) (Rule56(f) motion denied where applicant failed to show need for discovery as to specific issues, not merely a showing that it deferred taking discovery it otherwise would have taken had it known a motion for summary judgment would be filed). See also cases cited in previous note.

 4.   See Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1925-26 (TTAB 1989).

 5.   See Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (unfocused requests for discovery are insufficient); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir. 1987) (mere assertion that discovery is necessary is insufficient); Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309, 1311 n.6 (TTAB 1990) (affidavit stating that, during discovery, party will seek to elicit information on likelihood of confusion insufficient); Nature’s Way Products Inc. v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989) (Rule 56(f) motion, to the extent it could be construed as such, was not supported by required affidavit); J.I. Case Co. v. F.L. Industries, Inc., 229 USPQ 697, 701 (TTAB 1986) (statement by applicant of need to take discovery on validity of assignment was unsupported speculation).

 6.   Fed. R. Civ. P. 56(d). Cf. Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).

 7.   37 C.F.R. § 2.127(e)(1).

 8.   See McDonald’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (extending filing deadline of a Rule 56(d) motion, even by consent, is in contravention of the provisions of 37 C.F.R. § 2.127 and, therefore, prohibited).

 9.   See Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930 (TTAB 2015) (Fed. R. Civ. P. 56(d) motion denied as moot because party filed substantive response to summary judgment motion); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1578 (TTAB 2015) (same); Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB 2002) (same).

 10.   See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (order to show cause issued where, although Rule 56(f) motion was granted, party responded to summary judgment without taking the requested discovery).

528.07    Unpleaded Issue

528.07(a)    Not Basis for Entering Summary Judgment

A party may not obtain summary judgment on an issue that has not been pleaded. [ Note 1.] Moreover, at the summary judgment stage of a proceeding before the Board, there has not yet been a trial of any issue, whether pleaded or unpleaded, and therefore the requirements of Fed. R. Civ. P. 15(b) for an amendment to conform the pleadings to the evidence cannot have been met. [ Note 2.]

Generally, a party that seeks summary judgment on an unpleaded issue may simultaneously move to amend its pleading to assert the matter. [ Note 3.] Alternatively, if the parties, in briefing a summary judgment motion, have treated an unpleaded issue on its merits, and the nonmoving party has not objected to the motion on the ground that it is based on an unpleaded issue, the Board may deem the pleadings to have been amended, by agreement of the parties, to allege the matter. [ Note 4.] For purposes of determining the summary judgment motion, the Board will deem such new allegations to be denied if no amended answer is accepted and of record at the time. However, an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f (a)  application may not be amended (or deemed amended) to assert an entirely new claim or to rely on an additional registration in support of an existing Trademark Act § 2(d), 15 U.S.C. § 1052  claim. [ Note 5.] There are other limitations on amendments to a notice of opposition against a § 66(a) application. See TBMP § 314 and TBMP § 507.01.

NOTES:

 1.   See Fed. R. Civ. P. 56(a); Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *4 (TTAB 2020) (applicant cannot obtain summary judgment on unpleaded lack of capacity defense); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2, 1292 (TTAB 2016) (applicant may not obtain summary judgment on unpleaded defense);Asian and Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009) (petitioner cannot obtain summary judgment on an insufficiently pleaded fraud claim); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1527 n.3 (TTAB 2008), appeal dismissed, 345 F. App’x. 579 (Fed. Cir. 2009); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 n.12 (TTAB 2007); Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 n.3 (TTAB 2007); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297 (TTAB 1997); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 n.8 (TTAB 1991); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 628 (TTAB 1986); Consolidated Foods Corp. v. Berkshire Handkerchief Co., 229 USPQ 619, 621 (TTAB 1986).

 2.   See, e.g., Vaughn Russell Candy Co. and Toymax Inc. v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1636 (TTAB 1998) (attempt to amend pleadings under Fed. R. Civ. P. 15(b) denied since there had not yet been a trial, but allowed time to move to amend under Fed. R. Civ. P. 15(a)).

 3.   See Giersch v. Scripps Networks Inc., 85 USPQ2d 1306, 1309 n.3 (TTAB 2007); Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 n.3 (TTAB 2007) (Board sua sponte allowed movant time to amend pleading to assert matter raised at summary judgment); Vaughn Russell Candy Co. v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1636 (TTAB 1998) (allowed time to file motion to amend pleading to add new grounds and to renew summary judgment motion); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1505 (TTAB 1993) (motion to amend, filed after summary judgment on unpleaded issue had been denied, was granted); Societe des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1242 n.4 (TTAB 1989) (motion to amend to add new ground, filed simultaneously with motion for summary judgment, granted and allegations in new ground deemed denied).

 4.   See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB 1994) (pleading deemed amended where nonmoving party did not object to motion as seeking judgment on unpleaded claim), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (mem.); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 81 n.3 (TTAB 1984) (pleading deemed amended where nonmoving party did not object to motion on unpleaded claim and treated it on its merits). Cf. Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 n.5 (TTAB 1995) (amendment not permitted where nonmoving party objected to inclusion of unpleaded grounds even though party responded to motion on unpleaded grounds on merits).

 5.   See 37 C.F.R. § 2.107(b). See RULES OF PRACTICE FOR TRADEMARK-RELATED FILINGS UNDER THE MADRID PROTOCOL IMPLEMENTATION ACT, 68 Fed. Reg. 55748, 55757 (September 26, 2003); Prosper Business Development Corp. v. International Business Machines, Corp., 113 USPQ2d 1148, 1151 (TTAB 2014) (opposition against § 66(a) application, once filed, cannot be amended to add grounds for opposition or to add the goods or services subject to opposition beyond those to which the IB has been notified); CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011) (scope of grounds against a § 66(a) application governed by ESTTA cover sheet not by supporting pleading); O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329-30 (TTAB 2010) (cannot amend notice of opposition to add a claim against a § 66(a) application).

528.07(b)    Not Defense Against Summary Judgment

A party may not defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact as to an unpleaded claim or defense. [ Note 1.]

However, a party that seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, may move to amend its pleading to allege the matter. [ Note 2.] Alternatively, if a party seeks to defend against a motion for summary judgment by asserting the existence of genuine disputes of material fact regarding an unpleaded claim or defense, and the party moving for summary judgment treats the unpleaded matter on its merits, and does not object thereto on the ground that the matter is unpleaded, the Board may deem the pleadings to have been amended, by agreement of the parties, to allege the matter. Cf. TBMP § 528.07(a). However, an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application, may not be amended (or deemed amended) to assert a new ground for opposition. [ Note 3.] See TBMP § 314 and TBMP § 507.01.

NOTES:

 1.   See Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477 (TTAB 1992) (may not assert unpleaded Morehouse defense); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.2 (TTAB 1992) (no consideration given to three unpleaded grounds asserted by opposer in response to applicant’s motion for summary judgment).

 2.   See United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1223 (TTAB 1993).

 3.   See 37 C.F.R. § 2.107(b).

528.08    Entry of Summary Judgment in Favor of Nonmoving Party

Fed. R. Civ. P. 56 (f) Judgment Independent of the Motion. After giving notice and a reasonable time to respond, the court may:

• (1) grant summary judgment for a nonmovant;
• (2) grant the motion on grounds not raised by a party; or
• (3) consider summary judgment on its own after identifying for the parties material facts that may not be genuinely in dispute.

If the Board concludes, upon motion for summary judgment, that there is no genuine dispute of material fact, but that it is the nonmoving party, rather than the moving party, which is entitled to judgment as a matter of law, the Board may, after giving notice and a reasonable time to respond, in appropriate cases, grant summary judgment in favor of the nonmoving party (that is, enter summary judgment in favor of the nonmoving party even though there is no cross-motion for summary judgment). [ Note 1.]

NOTES:

 1.   See, e.g., Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443, 1446 (TTAB 1996) (nonmovant entitled to summary judgment where question was one of law); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1106 nn. 17 and 18 (TTAB 1996) (effect of assigning ITU application if statutory exception is not met is one of law and could be decided in nonmovant’s favor); Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 858-59 (TTAB 1986) (granted to nonmovant as to its standing); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984) (granted to nonmovant applicant because application elements allegedly missing from application were not required by Paris Convention); Visa International Service Assn v. Life-Code Systems, Inc., 220 USPQ 740, 744-45 (TTAB 1983) (nonmovant entitled to judgment as a matter of law on issues of abandonment, non-use and fraud).