510.03 Suspension for Other Reasons; Resumption
510.03(a) Suspension
The Board suspends proceedings in cases before it for a wide variety of reasons including those discussed below.
Upon motion or upon stipulation. Proceedings may be suspended for good cause upon motion or stipulation of the parties approved by the Board. [ Note 1.] For example, proceedings may be suspended, upon motion or stipulation under 37 C.F.R. § 2.117(c), for purposes of settlement negotiations, subject to the right of either party to request resumption at any time. [ Note 2.] However, the Board generally will not approve a motion or stipulation to suspend filed after answer and before the discovery conference without a sufficient showing of good cause. The mere desire to engage in settlement discussions is unlikely to constitute good cause for a suspension of the deadline for the discovery conference because the discovery conference itself provides the parties an opportunity to discuss settlement. [ Note 3.] In addition, if, during the course of the proceedings, a motion to extend time indicates that the parties are negotiating for settlement, the Board may, in lieu of granting the requested extension, suspend proceedings for a specified time, usually six months, subject to resumption by either party at any time. See TBMP § 509.02.
Note, however, that the Board will not suspend proceedings indefinitely upon allegations of settlement talks, discovery activities, or trial activities. After a period of time, the Board may require the parties to file a detailed report on the progress of their settlement, discovery, or trial activities. Further, the Board may, in its discretion, deny further suspension when the parties have already been granted a reasonable time to engage in settlement, discovery, or trial activities. While parties are encouraged to settle their cases and have a duty to cooperate in the discovery process, the Board has an interest in seeing its cases conclude in a timely manner. [ Note 4.]
The parties may also agree to suspend proceedings for consideration of a matter by an examining attorney, including the disposition of a party’s application before the examining attorney. [ Note 5.]
Bankruptcy. The Board will issue an order suspending proceedings if it comes to the attention of the Board that the defendant has filed a petition for bankruptcy. [ Note 6.] Under the automatic stay provisions of Section 362 of the United States Bankruptcy Code, 11 U.S.C. § 362, a petition for bankruptcy (filed under Section 301, 302, or 303 of the Code, 11 U.S.C. § 301, 302, or 303) operates as a stay, inter alia, of the commencement or continuation of a judicial, administrative, or other action or proceeding against the debtor that was or could have been commenced before the commencement of the bankruptcy case. However, if it is the plaintiff in the Board proceeding, rather than the defendant, who has filed a petition for bankruptcy, the automatic stay provisions do not mandate the suspension of the Board proceeding unless there is a counterclaim in the Board proceeding for cancellation of the plaintiff’s registration(s). Nonetheless, for good cause shown, the Board may suspend a proceeding based upon a plaintiff’s bankruptcy.
Withdrawal of counsel. If, in a Board proceeding, a party’s attorney or other authorized representative files a request to withdraw as counsel for the party, and the request is granted, the Board will suspend proceedings and allow the party a stated period of time (usually 30 days) in which to appoint a new attorney or, if a U.S.-domiciled party, to file a paper stating that it intends to represent itself (i.e., proceed pro se), failing which the Board may issue an order to show cause why default judgment should not be entered against the party. [ Note 7.] See, with respect to withdrawal of counsel, TBMP § 116.02-TBMP § 116.05 and TBMP § 513.01. For information concerning action by the Board after expiration of the time allowed in the suspension order, see TBMP § 510.03(b). A party may inform the Board of the appointment of new counsel either by filing written notification thereof (as, for example, by filing a copy of the new appointment), or by having new counsel make an appearance on the party’s behalf in the proceeding. See TBMP § 114.03 (Representation by Attorney). See also TBMP § 114.04 (Representation by Non-Lawyer) and TBMP § 114.05 (Representation by Foreign Attorney).
Potentially dispositive motion. When a party to a Board proceeding timely files a motion that is potentially dispositive of the proceeding, such as a motion to dismiss, [ Note 8.], a motion for judgment on the pleadings, or a motion for summary judgment, the case is considered automatically suspended by operation of 37 C.F.R. § 2.127(d) with respect to all matters not germane to the motion. [ Note 9.]
The timely filing of such a potentially dispositive motion itself operates to suspend a case. When issuing its suspension order or subsequent order on the motion, the Board will ordinarily treat the proceeding as if it had been suspended as of the filing date of the potentially dispositive motion. [ Note 10.] In addition to tolling the time to respond to outstanding discovery requests, suspension of proceedings tolls the time for parties to make required disclosures. On a case-by-case basis, however, the Board may find that the filing of a potentially dispositive motion does not provide a party with good cause for failing to comply with an otherwise outstanding obligation. [ Note 11.]
Once a timely filed potentially dispositive motion operates to suspend proceedings in a case, no party should file any paper that is not germane to the motion, except as otherwise may be specified in a Board order. [ Note 12.]
Motion to compel. Pursuant to 37 C.F.R. § 2.120(f) when a party files a motion to compel initial disclosures, expert disclosures or discovery, the Board will issue an order suspending the proceeding with respect to all matters not germane to the motion, [ Note 13.], and no party should file any paper that is not germane to the discovery dispute, except as otherwise specified in the Board’s suspension order. However, neither the filing of a motion to compel nor the Board’s resulting suspension order tolls the time for parties to respond to any outstanding discovery requests that had been served prior to the filing of the motion to compel, nor does it excuse a party’s appearance at any discovery deposition that had been duly noticed prior to the filing of the motion to compel, nor does it excuse a party from making any required discovery disclosures. When the motion to compel is filed after discovery has closed, the parties need not make pretrial disclosures until directed to do so by the Board. [ Note 14.] See TBMP § 523 regarding motions to compel.
Motion to divide. A registration or application that is the subject of a Board inter partes proceeding may be divided into two or more separate applications or registrations. Any request to divide out the unopposed goods or services will routinely be granted. A request to divide generally will not result in suspension of the proceeding. For more information on motions to divide, see TBMP § 516.
Petition to the Director. In general, the mere filing of a petition to the Director seeking review of an interlocutory decision or order of the Board will not act as a stay of the Board proceeding pending disposition of the petition. See generally TBMP § 905. Such a stay must be specifically requested of the Board and granted by the Board. [ Note 15.] The decision as to whether to grant such a stay is within the Board’s discretion. Unless and until the Board issues a suspension order, all times continue to run as previously set or reset by the Board.
Testimonial depositions on written questions. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions pursuant to 37 C.F.R. § 2.124, the Board will suspend or reschedule other deadlines or time periods in the case to allow for the orderly completion of the depositions upon written questions. [ Note 16.] See TBMP § 703.02(c).
Discovery depositions on written questions. Upon receipt of written notice that one or more discovery depositions are to be taken upon written questions pursuant to 37 C.F.R. § 2.124(b)(2), the Board may suspend or reschedule other deadlines or time periods in the case to allow for the orderly completion of the depositions upon written questions. See TBMP § 404.07(e).
To conduct discovery of expert witness: The Board may suspend proceedings to provide for the taking of any necessary discovery of a proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. [ Note 17.] See TBMP § 408.01(b). For further information regarding expert disclosures, see TBMP § 401.03
NOTES:
2. See Instruments SA Inc. v. ASI Instruments Inc., 53 USPQ2d 1925, 1927 (TTAB 1999) (it may be the safest course of action for parties engaged in settlement to file a consented motion or stipulation to suspend proceedings); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (order suspending proceedings for settlement vacated once it came to Board’s attention that adverse party objected to suspension on such basis). See also Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65 USPQ2d 1701, 1704 (TTAB 2002) (proceedings are not suspended automatically when parties are discussing settlement and a party that fails to timely move for extension or suspension of dates on the basis of settlement does so at its own risk).
3. Boston Red Sox Baseball Club LP v. Chaveriat, 87 USPQ2d 1767, 1767 n.1 (TTAB 2008).
4. 37 C.F.R. § 2.117(c). Cf. Shen Manufacturing Co. v. Ritz Hotel Ltd, 393 F.3d 1238, 73 USPQ2d 1350, 1353 n.2 (Fed. Cir. 2004) ("RHL’s applications languished at the United States Patent and Trademark Office ("PTO") for nearly two decades as the result of the parties’ failure to move the applications and corresponding oppositions forward."), cert. denied, 126 S. Ct. 357 (2005); Guthy-Renker Corp. v. Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) ("The Board has adopted the practice of discovery conferences to avoid needless disputes and motions and to facilitate a smooth and timely conclusion to Board proceedings.").
5. See, e.g., The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (suspended pending consideration of consent agreement by examining attorney).
6. See, e.g., In re Checkers of North America Inc., 23 USPQ2d 1451, 1452 (Comm’r 1992) (noting that case was previously suspended where debtor’s (petitioner’s) pleaded registration was the subject of a counterclaim) aff’d sub nom. Checkers Drive-In Restaurants, Inc. v. Comm'r, 51 F.3d 1078, 34 USPQ2d 1574 (D.C. Cir. 1995).
7. See, e.g., University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468-69 (TTAB 2008) (request to withdraw as counsel granted, proceedings suspended, and party allowed time to either appoint new counsel or file submission stating it will represent itself).
8. The filing of a motion to dismiss for failure to state a claim upon which relief can be granted tolls the time for filing an answer. See Fed. R. Civ. P. 12(b); Hollow form Inc. v. Delma Aeh, 180 USPQ 284, 285 (TTAB 1973), aff’d, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975).
9. 37 C.F.R. § 2.127(d); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69962, 69967 (Oct. 7, 2016) ("[A]n amendment to § 2.127(d) specifies that a case ‘is suspended’ when a party timely files a potentially dispositive motion."; "The Office is amending § 2.127(d) to clarify that a case is suspended when a party timely files any potentially dispositive motion."). Cf. Electronic Industries Association. v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999) (suspended pending disposition of motion for discovery sanctions that included request for entry of judgment); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1438 (TTAB 1995) (suspended pending disposition of motion for judgment on the pleadings); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 n.7 (TTAB 1985) (suspended pending motion for summary judgment, and subsequent motion to suspend for civil action deferred until after decision on summary judgment); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross motion for summary judgment is germane to a pending motion for summary judgment). Cf. SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708 (TTAB 1994) (motion for leave to amend a notice of opposition is not a potentially dispositive motion that would warrant suspension under 37 C.F.R. § 2.127(d)).
10. See Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303, 1305-06 (TTAB 2002); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999).
11. See Leeds Technologies Ltd v. Topaz Communications Ltd., 65 USPQ2d 1303, 1306, 1307-08 (TTAB 2002) (time for opposer to serve discovery responses reset following decision on opposer’s motion for judgment on pleadings). But see Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1136 (TTAB 2010) (filing of motion for summary judgment one day before Board ordered discovery responses were due did not establish good cause for failure to comply with discovery obligations under Board order granting discovery sanctions), clarified, 665 F.3d 1263, 101 USPQ2d 1089, 1092 (Fed. Cir. 2011) (however, entry of judgment as a sanction for a party’s failure to abide by the Board’s practice regarding suspension is not supported).
12. 37 C.F.R. § 2.127(d); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1044 n.7 (TTAB 1985) (motion to suspend for civil action not considered); Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985) (cross-motion for summary judgment germane to pending summary judgment motion).
13. See, e.g., Jain v. Ramparts Inc., 49 USPQ2d 1429, 1430 (TTAB 1998) (proceedings deemed suspended as of the filing of the motion).
17. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564-65 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
510.03(b) Resumption
Settlement negotiations. When proceedings are suspended for purposes of settlement negotiations, the Board normally sets a specific period of suspension (up to six months) and provides a new trial schedule that will take effect upon resumption. Each party has the right to request resumption at any time during the suspension period. [ Note 1.] If no word is heard from either party prior to the expiration of the suspension period, the new trial schedule automatically goes into effect when the suspension period expires, and if a fully briefed motion was pending before the Board suspended proceedings, the Board ordinarily will decide the motion after the suspension period expires. In addition to, or instead of, resetting trial dates, the Board may reset the time for the parties to take other appropriate action in the case.
Matter before the examining attorney. If proceedings have been suspended for consideration of a matter by the examining attorney, including the disposition of a party’s application before the examining attorney, and the matter does not resolve the case, the Board will issue an order resuming proceedings and taking further appropriate action. [ Note 2.]
Bankruptcy. When the Board has suspended proceedings because a defendant in a Board proceeding or plaintiff whose registration is the subject of a counterclaim has filed a petition for bankruptcy, the Board periodically (normally, once a year) inquires as to the status of the bankruptcy case. In order to expedite matters, however, when the bankruptcy case has been concluded, or the involved application or registration of the bankrupt party has been transferred to some other person, the interested party should immediately file a paper notifying the Board thereof. Once the Board has been notified of the outcome of the bankruptcy case, and/or of the disposition of the bankrupt’s involved application or registration, the Board will resume proceedings and take further appropriate action.
Withdrawal of counsel. If proceedings have been suspended in order to allow a party, whose attorney has withdrawn, a period of time in which to either appoint new counsel (and inform the Board thereof) or, if a U.S.-domiciled party, file a paper stating that it desires to represent itself (i.e., proceed "pro se"), and that party so informs the Board, the Board will resume proceedings, and go forward with the party proceeding pro se or with the newly-appointed counsel representing the party. See TBMP § 510.03(a). A party proceeding pro se may employ a new attorney any time thereafter. If the party fails, during the time allowed, to either appoint new counsel (and inform the Board thereof) or file a paper stating that it desires to represent itself, the Board may issue an order noting that the party appears to have lost interest in the case, and allowing the party time in which to show cause why default judgment should not be entered against it. [ Note 3.] If the party, in turn, files a response indicating that it has not lost interest in the case, default judgment will not be entered against it. If the party fails to file a response to the show cause order, default judgment may be entered against it.
Potentially dispositive motion. When proceedings have been suspended pending determination of a potentially dispositive motion, and the determination of the motion does not dispose of the case, the Board, in its decision on the motion, will issue an order resuming proceedings and taking further appropriate action including resetting appropriate dates. [ Note 4.]
NOTES:
1. See The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (proceedings suspended subject to the right of either party to request resumption).
2. See, e.g., The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (proceedings to be resumed if consent agreement did not overcome examining attorney’s Trademark Act § 2(d) refusal).
3. See, e.g., Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1224-25 (TTAB 1993).
4. See 37 C.F.R. § 2.127(d). See also e.g., Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 n.4 (TTAB 1999) (dates reset beginning with the period that was running when the potentially dispositive motion was filed).