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).
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).