501 Stipulations
501.01 In General
Subject to the approval of the Board, parties may stipulate to a wide variety of matters. For example, parties may stipulate: that times be extended or reopened; that the total number of interrogatories or requests for production that one party may serve upon another party in a proceeding may be reduced from the limitation specified in 37 C.F.R. § 2.120(d) or 37 C.F.R. § 2.120(e); that the production of documents and things under the provisions of Fed. R. Civ. P. 34 may be made in a specified place and/or manner [ Note 1.]; that a specific time zone applies to the service of discovery requests, or responses [ Note 2.]; that protective agreements or provisions different from or in substitution for the Board’s standard protective order be used [ Note 3.]; that the parties agree to the substance or the form of the facts or testimony in the case [ Note 4.]; that a deposition may be taken at a particular place, or in a certain manner [ Note 5.]; that the proceeding shall be ended in a specified way; or that the proceeding be determined by pretrial disposition on the merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR). [ Note 6.] See TBMP § 403.04 (Extensions of Discovery Period, Time to Respond to Discovery Requests, and Disclosures), TBMP § 412.02(a) (Modification of Board’s Standard Protective Order Upon Stipulation), TBMP § 528.05(a)(2) (Accelerated Case Resolution (ACR)), TBMP § 605.03 (Settlement Agreements), TBMP § 702.04 (Accelerated Case Resolution), TBMP § 702.04(e) (Utilizing Stipulations in Non-ACR cases), and TBMP § 705 (Stipulated Evidence and Accelerated Case Resolution).
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2. Island, LLC v. JBX Pty Ltd., 2021 USPQ2d 779, at *6-7 n.10 (TTAB 2021) (unless agreed to otherwise, Board considers the date of service to be based on when and where the document in question are submitted for transmission of service).
3. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *6-10 (TTAB 2021) (discussing standard for allowing release of protected information to in-house counsel; denying motion to amend standard protective order).
4. 37 C.F.R. § 2.123(b). See, e.g., 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); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to the authenticity of certain documents, retail prices of opposers’ goods, the fact that advertisements and news articles refer to opposers, and press clippings are representative of the media in which opposers advertise); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1737-38 (TTAB 2014) (parties filed joint stipulation that 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); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (the parties stipulated to the entire record, including business records, public records, marketing materials, Internet materials, and 13 paragraphs of facts, while reserving the right to object to such facts and documents on the bases of relevance, materiality and weight).
6. See, e.g., 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); 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 filing of motions for summary judgment and use of expert testimony, streamlined methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion); 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 and remanded, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775-76 (TTAB 2013) (approving parties’ stipulation to proceed via ACR).
501.02 Filing Stipulations
37 C.F.R. § 2.120(a)(2) [Discovery] …
- (iv) The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. ... Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. ...
- (v) The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.
37 C.F.R. § 2.120(a)(3) [Discovery] A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board, or by order of the Board. ...
37 C.F.R. § 2.121(d) [Assignment of times for taking testimony and presenting evidence.] When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.
Stipulations that require action or consideration by the Board must be filed with the Board. For example, the following must be filed with the Board: stipulations to extend a defendant’s time to file an answer to the complaint; stipulations to alter the length of the discovery period or disclosure obligations occurring during the discovery period; stipulations to waive required initial disclosures; stipulations to reschedule pretrial disclosures and subsequent trial dates; stipulations to extend trial dates; stipulations relating to the form of testimony; stipulations to end a proceeding in a specified way; stipulations to pretrial disposition on the merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR). [ Note 1.] Some other types of stipulations, such as stipulations to extend a party’s time for responding to a request for discovery, do not necessarily have to be filed with the Board. However, even in the case of a stipulation that does not have to be filed, the better practice is to reduce the stipulation to writing, in order to avoid any misunderstanding between the parties as to the existence and terms thereof.
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1. 37 C.F.R. § 2.120(a)(2)(iv); 37 C.F.R. § 2.120(a)(3); 37 C.F.R. § 2.121(d). See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775-76 (TTAB 2013) (approving parties’ stipulation to proceed via ACR).
501.03 Form of Stipulations
A stipulation may be signed either by the parties, or by their attorneys or other authorized representatives.
If parties stipulate to extend or reopen a time or times, the stipulation should specify the closing date for each rescheduled time. For example, if parties stipulate to extend or reopen a defendant’s time to file an answer to the complaint, the stipulation should specify the new due date for the answer and all subsequent dates that require rescheduling when the due date for the answer is reset, including the deadline for the required discovery conference, disclosures, discovery and trial. If parties stipulate to extend or reopen testimony periods, or the discovery period and testimony periods, the stipulation should be submitted in the form used in a trial order, specifying the closing date for each period to be reset, including relevant disclosure deadlines, such as the deadline for expert disclosures, which occurs 30 days prior to the close of discovery, and pretrial disclosure deadlines, which are tied to each testimony period. [ Note 1.] When the parties agree to a new schedule of dates and file for approval using ESTTA "consent motions option," the system will prompt the filer to enter new deadlines in a manner that will generate an appropriate schedule in the proper form. If the calculator provided by ESTTA does not reflect all the deadlines required by the parties’ agreed-upon schedule, the filing party should select the "general filings" option and attach or embed in the motion the agreed-upon schedule with an express statement that all parties agree to the new dates.
The resetting, whether by stipulation or otherwise, of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods—such dates will be rescheduled only upon stipulation of the parties being approved by the Board, or upon motion granted by the Board, or by order of the Board. [ Note 2.] See TBMP § 403.04 (Extensions of Discovery Period, Time to Respond to Discovery Requests, and Disclosures).
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