504.01    Time for Filing

After the pleadings are closed, but within such time as not to delay the trial, any party to an inter partes proceeding before the Board may file a motion for judgment on the pleadings. [ Note 1.] In Board inter partes proceedings, the submission of notices of reliance, declarations and affidavits, as well as the taking of testimony depositions during the assigned testimony periods corresponds to the trial in court proceedings, and the trial period commences with the opening of the first testimony period. [ Note 2.] Under the Board’s disclosure regime, a party is required to make pretrial disclosures fifteen days prior to the opening of its testimony period. [ Note 3.] Thus, in order to avoid a disruption or delay in the trial phase of a Board proceeding, a motion for judgment on the pleadings must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 4.]

When a motion to dismiss for failure to state a claim upon which relief can be granted is filed after the answer, but before the day of the deadline for plaintiff’s pretrial disclosures, the Board may construe the motion as a motion for judgment on the pleadings. [ Note 5.] Cf. TBMP § 503.01 (Time for Filing Motion to Dismiss).

NOTES:

 1.   Fed. R. Civ. P. 12(c).

 2.   37 C.F.R. § 2.116(e); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1377 (TTAB 1986) (the opening of the plaintiff’s testimony period marks the beginning of the trial period); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (the testimony periods assigned by the Board correspond to a trial in a court proceeding).

 3.   37 C.F.R. § 2.121(e); Fed. R. Civ. P. 26(a)(3).

 4.   Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset."). Cf. 37 C.F.R. § 2.127(e)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804, 33804 (July 21, 2017) ("The USPTO now amends the rules of practice to make clear that such motions, [i.e., motions to compel, motions to test the sufficiency of responses or objections to requests for admission, or motions 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"); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (Oct. 7, 2016) ("Under the amended rules motions for summary judgment also have to be filed prior to the deadline for plaintiff’s pretrial disclosures for the first testimony period. This avoids disruption of trial planning and preparation through the filing, as late as on the eve of trial, of motions for summary judgment."); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1377 (TTAB 1986) (summary judgment must be filed prior to the opening of plaintiff’s testimony period); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1300 n.2 (TTAB 1986), aff’d, 831 F.2d 306 (Fed. Cir. 1987); Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718 (TTAB 1985); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 428 n.2 (TTAB 1985); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (summary judgment must not delay trial); Peterson’s Ltd. v. Consolidated Cigar Corp., 183 USPQ 559, 560 (TTAB 1974); Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 182 USPQ 572, 572-73 (Comm’r 1974).

 5.   Fed. R. Civ. P. 12(h)(2)(B); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1438 (TTAB 1996); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (since motion based on defense that petition fails to state claim, standard for adjudicating motion for judgment on pleading is same as Fed. R. Civ. P. 12(b)(6)).