502 Motions - In General
502.01 Available Motions
There is a wide range of motions that may be filed in inter partes proceedings before the Board. 37 C.F.R. § 2.116(a), provides that "[e]xcept as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure." Thus, many of the motions available under the Federal Rules of Civil Procedure are also available in proceedings before the Board.
However, because the Board is an administrative tribunal, its rules and procedures, and hence the motions available in proceedings before it, necessarily differ in some respects from those prevailing in the federal district courts. See TBMP § 102.03 (General Description of Board Proceedings) and TBMP § 702 (Pretrial Disclosures; Manner of Trial and Introduction of Evidence).
For example, the Board does not preside at the taking of oral testimony. Instead, oral testimony is taken out of the presence of the Board, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. [ Note 1.] See TBMP § 702. Further, for reasons of administrative economy, it is the policy of the Board not to read trial testimony or examine other trial evidence prior to final decision. [ Note 2.] For this reason, the Board will defer consideration of substantive objections to trial evidence (e.g., on the grounds of hearsay, relevance, or that the evidence constitutes improper rebuttal) until final decision. [ Note 3.] See also TBMP § 707 (Objections to Evidence).Therefore, except for the motions for involuntary dismissal under 37 C.F.R. § 2.132(a) and 37 C.F.R. § 2.132(b) for failure of the plaintiff to take testimony or offer evidence (other than plaintiff’s pleaded registration under 37 C.F.R. § 2.132(b) ), the Board will not entertain any motion challenging or otherwise relating to the probative value or sufficiency of a party’s trial evidence. For information concerning these motions, see TBMP § 534 (Motion for Judgment for Plaintiff’s Failure to Prove Case). Motions that require examination of trial evidence prior to final decision, such as motions in limine, and those under Fed. R. Civ. P. 41(b) for involuntary dismissal and under Fed. R. Civ. P. 50(a) for judgment as a matter of law (formerly known as a motion for directed verdict), are not available in Board proceedings. [ Note 4.]
Given the broad range of possible motions that may be filed in an inter partes proceeding before the Board, this chapter discusses only the motions that most commonly arise in Board proceedings.
NOTES:
1. See 37 C.F.R. § 2.123(a); 37 C.F.R. § 2.125(d).
2. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB 2003) (substantive evidentiary issues are deferred until final decision); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) ("The Board does not read testimony and consider substantive objections to evidence, or determine the probative value of evidence, prior to final hearing"); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (Board will not rule on objections pertaining to admissibility prior to final decision).
3. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB 2003) (substantive evidentiary issues are deferred until final decision); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993) (contested motions to introduce discovery depositions filed with a notice of reliance deferred); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (objection to notice of reliance that the evidence is improper rebuttal evidence will be deferred); M-Tek Inc. v. CVP Systems, Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (motion to strike documents submitted under a notice of reliance as hearsay and not properly authenticated deferred).
4. Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010) (applicant’s motion to exclude testimony not construed as motion in limine); Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750-51 (TTAB 1995) (motions in limine not available); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501, 1504 n.2 (TTAB 1993) (directed verdicts not available); Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718 (TTAB 1985) (to extent motion for summary judgment was intended as one for directed verdict, it is inappropriate); Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (motion for involuntary dismissal under Fed. R. Civ. P. 41(b) unavailable), aff’d, 737 F.2d 1576, 222 USPQ 665, 668-69 (Fed. Cir. 1984). Cf. Hunter Industries Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.11 (TTAB 2014) , appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (noting that because the Board does not entertain motions in limine, opposer was unable to raise the issue of over-designation of confidential identifying information of declarants until applicant submitted the declarations during its testimony period).
502.02 Form of Motions and Briefs on Motions
37 C.F.R. § 2.126 Form of submissions to the Trademark Trial and Appeal Board.
- (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.
- (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
- (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto ... must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
- (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
- (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
- (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
- (4) A paper submission must not be stapled or bound;
- (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
- (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
- (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the "Confidential" selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
37 C.F.R. § 2.127(a) Every motion must be submitted in written form and must meet the requirements prescribed in § 2.126. It shall contain a full statement of the grounds, and shall embody or be accompanied by a brief. Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. If a motion for an extension is denied, the time for responding to the motion remains as specified under this section, unless otherwise ordered. Except as provided in paragraph (e)(1) of this section, a reply brief, if filed, shall be filed within twenty days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended or reopened. The Board will consider no further papers in support of or in opposition to a motion. Neither the brief in support of a motion nor the brief in response to the motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief shall not exceed ten pages in length in its entirety. Exhibits submitted in support of or in opposition to a motion are not considered part of the brief for purposes of determining the length of the brief. When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. An oral hearing will not be held on a motion except on order by the Board. ...
* * * *
37 C.F.R. § 2.127(e)(1) ... If no motion under Rule 56(d) is filed, a brief in response to the motion for summary judgment shall be filed within thirty days from the date of service of the motion unless the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board.
502.02(a) Form of Motions
Every motion must be submitted via ESTTA, in written form and must meet the general requirements for submissions to the Board set forth in 37 C.F.R. § 2.126. The requirements for electronic submissions are specified in 37 C.F.R. § 2.126(a), the requirements for paper submissions can be found in 37 C.F.R. § 2.126(b), and the requirements for confidential submissions are in 37 C.F.R. § 2.126(c). Additional information regarding electronic submissions made through ESTTA may be found at the USPTO website (http://www.uspto.gov/ttab ). See also TBMP § 106.03.
In addition, a motion should bear the name and number of the inter partes proceeding in connection with which it is being filed and a title describing the nature of the motion. See TBMP § 106.01. A party who files a motion in paper that does not bear the correct proceeding number runs the risk that the paper will not be associated with the proceeding for which it is intended (and hence may never be considered by the Board). [ Note 1.]
A motion must be signed by the party filing it, or by the party’s attorney or other authorized representative. If a motion is unsigned, it will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [ Note 2.] See TBMP § 106.02 (Signature of Submissions). When a motion is filed via ESTTA, it must be signed in conformance with 37 C.F.R. § 2.193(c). As a practical matter, ESTTA will allow the filing party to complete the submission process only after the required electronic signature has been entered. [ Note 3.]
Motions may be filed in paper form only when ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. In such exceptional situations, a motion in paper form must include a written explanation of such technical problems or extraordinary circumstances. The explanation must include specific facts rather than mere conclusory statements as to the technical problem or extraordinary circumstance that prevented the use of ESTTA. Paper submissions that do not meet the showing of ESTTA unavailability or extraordinary circumstances will not be considered; however, the parties should consider any such paper filing accepted unless the Board indicates otherwise. [ Note 4.] When motions are filed in paper form, the certificate of mailing by first-class mail procedure provided under 37 C.F.R. § 2.197, and the Priority Mail Express® procedure provided under 37 C.F.R. § 2.198 are both available. [ Note 5.] See TBMP § 111. Parties are not permitted to file motions via email except at the request of the Board attorney or judge. ESTTA is the only available procedure for electronic filing with the Board.
When a party files a motion electronically through ESTTA, the filing is time-stamped with the official filing date when the ESTTA filing, including any required fee, is received by the Board server. Eastern Time controls the filing date, and the time the transmission began is not a factor in determining the filing date. The official filing date and time are found on the confirmation web screen and the party’s email confirmation. Once the electronic filing is submitted, the Board immediately transmits an email filing receipt. If the filing party does not receive the email filing receipt within 24 hours (or by the next business day), the filing party should contact the Board. For technical assistance with an ESTTA filing, a party may call the Board with questions at (571) 272-8500 or (800) 786-9199 (toll free); or may send an email to ESTTA@uspto.gov. The Board should respond to the inquiry within two (2) business days. When contacting the Board for ESTTA assistance please describe the nature of the problem and include the ESTTA tracking number, which should appear on the computer screen after transmission. See TBMP § 106.03.
ESTTA filing is required; it is no longer optional. If ESTTA filing is not possible prior to a deadline because ESTTA is unavailable due to technical problems, or other extraordinary circumstances are present, parties should timely make their submission on paper with the required written explanation. See TBMP § 107 and TBMP § 111. The parties should consider any such paper filing accepted unless the Board indicates otherwise.
A party should file only one copy of a motion with the Board. Unless otherwise directed by the Board, it is not necessary to file a paper copy of a motion that has been filed electronically. Every motion filed with the Board must be served upon every other party to the proceeding, and proof of such service ordinarily must be made before the motion will be considered by the Board. [ Note 6.] See TBMP § 113 (Service of Papers). Service must be made by email unless the parties stipulate otherwise or the serving party shows that email service could not be made due to technical problems or extraordinary circumstances. [ Note 7.]
NOTES:
1. See Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007) (applicant did not separately caption her motion to amend the filing basis of the application at issue; rather she incorporated it into her response to opposer’s motion for summary judgment. The better practice is either to file such a motion as a separate filing or, at a minimum, to caption it separately).
3. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005).
4. 37 C.F.R. § 2.126(b). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69966 (Oct. 7, 2016).
5. 37 C.F.R. § 2.197; 37 C.F.R. § 2.198.
502.02(b) Briefs on Motions
Every motion must embody or be accompanied by a brief. [ Note 1.]
Briefs on motions, and any exhibits thereto, must meet the general requirements for submissions to the Board set forth in 37 C.F.R. § 2.126. See TBMP § 106.03 (Form of Submissions).
Briefs on motions are also subject to page limitations and time requirements. [ Note 2.] Briefs in support of and in response to a motion may not exceed 25 pages in length and a reply brief may not exceed 10 pages. [ Note 3.] Exhibits submitted with the brief are not counted in determining the length of the brief. However, because 37 C.F.R. § 2.127(a) does not require an index of cases and authorities or a table of contents, should a party elect to include these items, they will count as part of the page limit for the brief. [ Note 4.]
A brief in response to a motion, except a motion for summary judgment, must be filed within 20 days from the date of service of the motion. [ Note 5.] When a motion for summary judgment is filed, a brief in response, or a motion for Fed. R. Civ. P. 56(d) discovery must be filed within 30 days from the date of service of the summary judgment motion. [ Note 6.] See also TBMP § 528.02 for further information regarding the time for filing a motion for summary judgment. The time for filing a responsive brief may be extended, but the time for filing, in lieu thereof, a motion for Fed. R. Civ. P. 56(d) discovery will not be extended, even upon the parties’ consent. [ Note 7.] See TBMP § 528.06 (Request for Discovery to Respond to Summary Judgment).
These time periods for responding to motions shall apply unless another time is specified by the Board; or the time is extended by stipulation of the parties approved by the Board or by order of the Board on motion for good cause; or the time is reopened by stipulation of the parties approved by the Board or by order of the Board on motion showing excusable neglect. [ Note 8.] See TBMP § 509. If a motion for an extension of time to respond to a motion is denied, the time for responding to the motion remains as specified under 37 C.F.R. § 2.127(a), unless otherwise ordered. [ Note 9.]
A reply brief, if filed, including a reply brief for a summary judgment motion, shall be filed within 20 days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended, even upon the parties’ consent. [ Note 10.] No further papers (including surreply briefs) will be considered by the Board. [ Note 11.] The filing of reply briefs is discouraged, as the Board generally finds that reply briefs have little persuasive value and are often a mere reargument of the points made in the main brief. [ Note 12.] If the nonmoving party does not file a responsive brief, a reply brief should not be filed.
In general, all motions should be filed separately, or at least be captioned separately, to ensure they receive attention. A party should not embed a motion in another filing that is not routinely reviewed by the Board upon submission. [ Note 13.]
NOTES:
1. 37 C.F.R. § 2.127(a). See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 n.15 (TTAB 2010) (citing 37 C.F.R. § 2.127(a)).
3. 37 C.F.R. § 2.127(a). See also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141 (TTAB 2011) (reply brief not considered because it exceeded the page limit); 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); Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2010 (TTAB 2002) (reply brief was untimely and exceeded page limit); Estate of Shakur v. Thug Life Clothing Co., 57 USPQ2d 1095, 1096 (TTAB 2000) (respondent improperly attempted to circumvent the page limitations in 37 C.F.R. § 2.127(a) by "dissect[ing] what is a single motion to compel into two motions separately addressing the interrogatories and document requests in order to file briefs totaling 50 pages").
4. Saint-Gobain Corp. v. Minnesota Mining and Manufacturing Co., 66 USPQ2d 1220, 1222 (TTAB 2003). See also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1141 (TTAB) (over-length reply brief included a table of contents and a table of authorities).
5. 37 C.F.R. § 2.127(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (Oct. 7, 2016) ("provision adding five days to the prescribed period for action after service by the postal service or overnight courier" removed, "[a]ll fifteen-day response dates initiated by a service date are amended to twenty days.").
6. 37 C.F.R. § 2.127(e)(1). See McDonald’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (extension of Fed. R. Civ. P. 56(d) motion prohibited by 37 C.F.R. § 2.127(e)(1)).
7. 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).
8. Fed. R. Civ. P. 6(b).
10. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1). See McDonald's Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (denying parties’ stipulation to provide for additional five days, noting that such a stipulation would violate the provisions of 37 C.F.R. § 2.127, which do not allow for extensions of time to file reply briefs); Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2010 (TTAB 2002) (approval of consented motion to extend time to file reply brief vacated).
11. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (because 37 C.F.R. § 2.127(a) prohibits the filing of surreply briefs, opposer’s surreply to applicant’s motion was not considered); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000).
12. No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1720 n.3 (TTAB 1989) ("The presentation of one’s arguments and authority should be presented thoroughly in the motion or the opposition brief thereto"); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1222 n.4 (TTAB 1987) (reply brief, constituting mere reargument given no consideration).
13. See Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 (TTAB 2010); and Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.3 (TTAB 2007).
502.02(c) Confidential Information
The Board’s standard protective order is automatically in place for inter partes proceedings unless the Board approves a stipulation or motion to use an alternative order. [ Note 1.] Except for materials filed under seal pursuant to a protective order or designated as confidential in ESTTA, the files of applications and registrations that are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto are available for public inspection and copying on TTABVUE, http://ttabvue.uspto.gov (docket information and full images of Board files). [ Note 2.] Therefore, only the particular portion of a motion that discloses confidential information should be electronically designated as "CONFIDENTIAL" in ESTTA or when filed by paper under seal pursuant to a protective order. Parties should avoid over-designation of non-confidential information as confidential. To the extent a party has improperly designated information as confidential, the Board may disregard the confidential designation when appropriate. [ Note 3.]. If a party submits a motion containing confidential information either electronically via ESTTA or by paper under seal, the party must also submit for the public record a redacted version of the motion. [ Note 4.]
Confidential information filed without appropriate designation in accordance with the Board’s standard protective order or one adopted by the parties as a substitute for the standard order is not regarded as confidential, will not be kept confidential by the Board and will be placed in the Board’s public records available on the Internet. [ Note 5.] To be handled as confidential and kept out of the public record, submissions to the Board must be filed using the "Confidential" selection available in ESTTA, or filed in paper under a separate cover with a showing by written explanation accompanying the submission that ESTTA was unavailable due to technical problems or that extraordinary circumstances justify the paper submission. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted concurrently for public viewing. [ Note 6.]
When filing confidential documents electronically through ESTTA, the party must use the "File Documents in a Board Proceeding" option, select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use," enter the proceeding number and click "Start." The documents filed in this manner will not be viewable in the publicly available electronic proceeding file. The party filing the confidential document electronically must also file concurrently a separate redacted version of the confidential filing for public viewing.
Any confidential filing must include redacted versions for the public record. See 37 C.F.R. § 2.126(c). For any confidential unredacted version of a submission for which a redacted version must be filed, the parties are encouraged to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision.
Disclosure of an individual’s personally identifiable information (e.g., social security number, financial account numbers, or home address) is not necessary. Such information should always be redacted from any submission.
For further information regarding protective orders, see TBMP § 412 and TBMP § 412.01. For further information regarding confidential materials, see TBMP § 120.02 ("Access to Files – Confidential Material"), TBMP § 703.01(p) ("Affidavits, Declarations and Oral Testimony Depositions - Confidential or Trade Secret Material"), and TBMP § 801.03 ("Form and Content of Briefs").
NOTES:
2. 37 C.F.R. § 2.27(d); 37 C.F.R. § 2.27(e), and 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
3. 37 C.F.R § 2.116(g) ("[t]he Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party."); see also Kohler Co. v. Honda Giken K.K., 125 USPQ2d 1468, 1475 (TTAB 2017) (citing Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016)); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014). Cf. Uniloc 2017 LLC v. Apple, Inc., 964 F.3d 1351, 2020 USPQ2d 10757 (Fed. Cir. 2020) (discussing the treatment of over-designation of confidential material in a patent infringement case).
4. 37 C.F.R. § 2.27(e) and 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
5. Cf. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010) (Board was not bound by parties’ overdesignation of testimony and evidence as confidential); and Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1714 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003).
6. 37 C.F.R. § 2.126(c). See also Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
502.03 Oral Hearings on Motions
A formal oral hearing at the Board is not held on a motion except by order of the Board. [ Note 1.] It is the practice of the Board to deny a request for an oral hearing on a motion unless, in the opinion of the Board, an oral hearing is necessary to clarify the issues to be decided. Ordinarily, arguments on a motion are, and should be, adequately presented in the briefs thereon, and therefore the Board rarely grants a request for an oral hearing on a motion. [ Note 2.] In contrast, a telephone conference with a Board attorney or judge may be used in lieu of a brief to present arguments in support of or against a motion. [ Note 3.] See TBMP § 413.01 and TBMP § 502.06 for further information regarding telephone conferences on motions.
NOTES:
2. The Scotch Whiskey Association v. United States Distilled Products Co., 13 USPQ2d 1711 (TTAB 1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990), dismissed, 18 USPQ2d 1391, 1392 n.3 (TTAB 1991) (issues on motion to dismiss not so extraordinary to warrant an oral hearing), rev’d on other grounds, 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1312 n.3 (TTAB 1989) (exception to usual practice is not warranted). Cf. Federal Trade Commission v. Formica Corp., 200 USPQ 182, 186 (TTAB 1978) (oral hearing on motion allowed in view of importance and novelty of issue).
3. 37 C.F.R. § 2.127(a). See, e.g., Byer California v. Clothing for Modern Times, 95 USPQ2d 1175, 1176 (TTAB 2010).
502.04 Determination of Motions
37 C.F.R. § 2.127(a) ... When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. ...
37 C.F.R. § 2.127(c) Interlocutory motions, requests, conceded matters, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Administrative Trademark Judge of the Trademark Trial and Appeal Board or by an Interlocutory Attorney or Paralegal of the Board to whom authority to act has been delegated, or by ESTTA. Motions disposed of by orders entitled "By the Trademark Trial and Appeal Board" have the same legal effect as orders by a panel of three Administrative Trademark Judges of the Board.
Motions fall into three categories: consented, uncontested, and contested. If the nonmoving party has consented to a motion, the motion may be filed either as a stipulation with the signature of both parties, or as a consented motion in which the moving party states that the nonmoving party has given its oral consent thereto (unless written consent is required under the provisions of 37 C.F.R. § 2.106(c), 37 C.F.R. § 2.114(c), 37 C.F.R. § 2.134(a), or 37 C.F.R. § 2.135 ). Ordinarily, the Board will grant a consented motion.
If the nonmoving party has not given its consent to a motion, but does not file a brief in opposition thereto during the time allowed therefor, the Board, in its discretion, may grant the motion as conceded. [ Note 1.] However, the Board, in its discretion, may also decline to treat an uncontested motion as conceded, and may grant or deny the motion on its merits. [ Note 2.]
A motion that does not expressly state that the nonmoving party has consented to the motion will not be granted as conceded until after passage of sufficient time for filing and receipt by the Board of a brief in response. If a motion is contested by the nonmoving party by filing an acceptable opposition brief or presenting a responsive argument in a telephone conference, the Board will decide the motion on its merits. When determining a motion, the Board need not address every argument raised by the parties, it need only specify the basis supporting its determination. [ Note 3.]
Interlocutory motions that are not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge, attorney, or paralegal to whom such authority has been delegated, or by ESTTA. [ Note 4.] A panel of at least three Board judges determines contested motions that are actually or potentially dispositive of a proceeding. See TBMP § 102.03 (General Description of Board Proceedings). Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be determined under the authority of the Board.
For information concerning the remedies available to a party that is dissatisfied with a decision on a motion, see TBMP § 518 (Motion for Reconsideration of Decision on Motion). See also TBMP § 905 (Petition to the Director).
A party should not presume that the Board will automatically reset discovery, disclosure deadlines and/or trial dates when it determines a pending motion. When the Board determines a pending motion, and there is no motion to extend discovery, disclosure deadlines and/or trial dates, the Board, in the exercise of its discretion, may or may not reset relevant dates. A party that wishes to have particular deadlines or periods reset upon the determination of a particular motion should file a motion requesting such action and specifying the deadlines or periods it wishes to have reset. [ Note 5.] Alternatively, a moving or responding party may request the resetting of deadlines or periods in its pending motion or response thereto, where such pending motion is not otherwise one seeking an enlargement of time. In other words, a party may incorporate a motion to extend as part of another motion, and should caption the motion accordingly.
The filing of a request for reconsideration under 37 C.F.R. § 2.127(b) or the filing of a petition under 37 C.F.R. § 2.146(e)(2) will not, in the usual case, result in a stay of proceedings. Any discovery, trial dates, or other deadlines set by the Board will ordinarily remain as set, notwithstanding the request for reconsideration or petition. The Board may, however, reset dates, as appropriate, if either a request for reconsideration or a petition is granted.
NOTES:
1. 37 C.F.R. § 2.127(a); Chesebrough-Pond’s Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888, 891 (CCPA 1980) (treating motion for summary judgment as conceded was proper); Melwani v. Allegiance Corp., 97 USPQ2d 1537, 1541 n.16 (TTAB 2010) (Board will generally treat unopposed motion as conceded); Central Manufacturing Inc. v. Third Millennium Technology, Inc., 61 USPQ2d 1210, 1211 (TTAB 2001) (motion to dismiss treated as conceded); Boston Chicken Inc. v. Boston Pizza International Inc., 53 USPQ2d 1053, 1054 (TTAB 1999) (motion for summary judgment on counterclaims treated as conceded).
2. See, e.g., Promgirl Inc. v. JPC Co., 94 USPQ2d 1759, 1760 n.1 (TTAB 2009) (Board exercised discretion to consider motion on merits even though late brief in opposition to motion was not considered); Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018 (TTAB 2003) (motion to suspend for civil action not treated as conceded where potentially dispositive motion was pending when motion to suspend was filed); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1599 (TTAB 2002) (motion to retroactively suspend proceeding and deny applicant’s motion for summary judgment decided on merits); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55 USPQ2d 1848, 1854 (TTAB 2000) (cross-motion for judgment not treated as conceded in view of its potentially dispositive nature); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1571 (TTAB 1990) (uncontested motion to dismiss decided on merits). Cf. Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 n.6 (TTAB 1990) (even if the Board had not considered plaintiff’s late responsive brief, defendant’s motion would not have been treated as conceded under the circumstances).
3. See Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019-20 (TTAB 2015) (reconsideration denied because no requirement that Board repeat or address irrelevant arguments when determining a motion).
5. 37 C.F.R. § 2.120(a)(3). But see 37 C.F.R. § 2.121(a) ("The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party. The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.").
502.05 Attorneys’ Fees, etc., on Motions
The Board will not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party. [ Note 1.]
NOTES:
1. 37 C.F.R. § 2.127(f); NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing Industries SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine damages), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1544 n.6 (2008); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) ("although the Board does not impose monetary sanctions or award attorneys’ fees or other expenses, the Board has the authority to enter other appropriate sanctions"); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000). See also 37 C.F.R. § 2.120(g) and 37 C.F.R. § 2.120(h)(1). Note, however, that conduct in violation of the Disciplinary Rules set forth in 37 C.F.R. Part 11 may be referred to the Office of Enrollment and Discipline (OED) for appropriate action. See 37 C.F.R. § 11.19 et seq.
502.06 Telephone and Pretrial Conferences
502.06(a) Telephone Conferences
37 C.F.R. § 2.120(j)(1) Whenever it appears to the Trademark Trial and Appeal Board that a stipulation or motion filed in an inter partes proceeding is of such nature that a telephone conference would be beneficial, the Board may, upon its own initiative or upon request made by one or both of the parties, schedule a telephone conference.
37 C.F.R. § 2.127(a) . . . Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. ...
When it appears to the Board that a motion filed in an inter partes proceeding may be resolved by a telephone conference call involving the parties or their attorneys and a Board judge or attorney, the Board may, upon its own initiative or upon request made by a party, convene a conference to hear arguments on and to resolve the motion by telephone conference. [ Note 1.] Immediately after the resolution of a motion by telephone conference, the Board normally will issue a written order confirming its decision on the motion. Immediate issuance of an order may be deferred, however, if the conference raises issues that require research or additional briefing before they can be resolved.
Board judges and attorneys retain discretion to decide whether a particular matter can and should be heard or disposed of by telephone. The Board may therefore deny a party’s request to hear a matter by telephone conference. There is no formal limit as to the type of matters that can be handled through telephone conferences [ Note 2.], but the Board will not decide by telephone conference any motion that is potentially dispositive, that is, a motion which, if granted, would dispose of a Board proceeding. The telephone conference procedure is particularly useful for resolving motions where time is of the essence, such as a motion to quash a notice of deposition, as well as numerous discovery motions. [ Note 3.] See TBMP § 521 regarding motions to quash a notice of deposition, TBMP § 401.01 and TBMP § 408.01(a) regarding discovery conferences with Board participation, andTBMP § 413.01 regarding telephone conferences for motions relating to discovery. The telephone conference procedure may also be beneficial in instances where the parties are required to provide a progress report on the status of settlement negotiations as a prerequisite for filing a stipulation or consented motion to further suspend or extend proceedings.
Trademark Rule 2.191, 37 C.F.R. § 2.191, which requires all business with the USPTO be transacted in writing, is waived to the extent that Board attorneys or judges may accept from parties, or direct parties to present, oral recitations of procedural facts and presentations of argument. In addition, Trademark Rule 2.119(b), 37 C.F.R. § 2.119(b), which specifies the acceptable methods for forwarding service copies of papers filed with the Board, is waived to the extent necessary to facilitate telephone conferencing. [ Note 4.]
Telephone conferences are not a substitute for written consented motions or stipulations. Parties should file consented motions or stipulations via ESTTA rather than call the Board for an order that can otherwise be agreed upon without Board involvement. Moreover, telephone conferences may not be used as a means to supplement a motion or a related brief, and are not an opportunity to present oral arguments in support of fully briefed written motions unless requested by the Board.
Requesting a telephone conference: A party may request a telephone conference from the assigned Board attorney before it files the underlying motion. The initial contact will be limited to a simple statement of the nature of the issues proposed to be decided by telephone conference, with no discussion of the merits. A party served with a written motion may request a telephone conference by contacting the assigned Board attorney soon after it receives the service copy of the motion so that the responding party will have sufficient time to respond to the motion in the event the request for a telephone conference is denied. A party may not request a telephone conference at or near the end of its time to respond to the motion when its purpose in doing so is to avoid or delay its response to the motion.
During the initial contact, the Board attorney will decide whether any party must file a motion or brief or written agenda to frame the issues for the conference and will issue instructions.
When the Board grants a party’s request for a telephone conference, the requesting party is responsible for scheduling the conference at a time agreeable to all parties and the assigned Board attorney. The requesting party must arrange the conference call. In order to facilitate the scheduling of a telephone conference, parties are required to provide a telephone number and email address where they can be reached during business hours when filing their respective pleadings with the Board. When the Board initiates a telephone conference, the Board attorney will schedule the conference.
The Board may in its discretion require additional written briefing of the motion or decide that additional written briefing is unnecessary. The Board has the discretion to decide the motion by telephone conference prior to the expiration of the written briefing period for filing a response or reply. [ Note 5.] If a response to a pending motion has not yet been filed, the nonmoving party should be prepared to make an oral response to the motion during the telephone conference. Similarly, if a reply in support of a pending motion has not yet been filed, the moving party should be prepared to make its reply during the telephone conference. Any other instructions regarding filing of briefs or serving copies will be provided at the time the Board schedules the conference. To expedite matters, the moving party should call the Board attorney to request a telephone conference shortly after it files its motion via ESTTA. This procedure is useful when time is of the essence. Calling the Board attorney after filing a motion via ESTTA is the most efficient way to get a motion to the attention of the Board attorney. Filing by facsimile is prohibited. [ Note 6.]
Denial of a request for a telephone conference is without prejudice on the merits of the motion or other matter sought to be heard by telephone. If the request is denied, the Board attorney will provide instructions to the party or parties regarding requirements for filing the motion or briefs required to have the matter decided on the written record.
For information on requesting Board participation in the settlement and discovery conference required under 37 C.F.R. § 2.120(a)(2)(i), see TBMP § 401.01.
Conduct of conference. Unless otherwise specified, the telephone conference will be limited to the issues defined by the Board prior to, or at the commencement of, the conference. During the conference, the Board has discretion to consider new oral motions regarding issues that arise during the conference. The Board will not record the conference nor may the parties record the telephone conference. [ Note 7.] The Board attorney may make rulings at the conclusion of the conference or may take the parties’ arguments under advisement. If the Board attorney determines during the telephone conference that the motion or matter should be decided on the written record, the Board attorney may halt the telephone conference and direct the filing of a written motion or response to a motion, or both.
Parties must conduct themselves with appropriate decorum. Interruptions are to be avoided. The Board attorney conducting the conference generally will signal that a party may make an argument or presentation by inviting the party to do so or by inviting a response to an argument or presentation made by another.
Participation. The conference will involve the parties or their attorneys, and a Board judge or attorney. The Board may permit attendance by others, including Board staff and corporate representatives of the parties. If the Board permits a party to have more than one person in attendance, that party must designate a lead person to represent the party in the conference. Failure to participate in a scheduled telephone conference may result in the motion being denied with prejudice, the motion being treated as conceded, issuance of an order to show cause why judgment should not be entered against the non-participating party for loss of interest in the case, or the imposition of sanctions pursuant to the Board’s inherent authority. See TBMP § 527.03 (Inherent Authority to Sanction).
Issuance of Rulings. The Board attorney may make rulings at the conclusion of a telephone conference or may take the parties’ arguments under advisement. In every instance, after the resolution of a motion or matter by telephone conference, the Board attorney will issue a written order containing all rulings. In most instances, the Board’s written order will consist of only a brief summary of the issues and the resulting decision; generally, the order will not include a recitation of the parties’ arguments. The decision will be forwarded to the parties by mail or email, and will be available for the parties to view on the Board’s section of the USPTO website, specifically within the electronic proceeding file for the case (i.e., TTABVUE).
NOTES:
1. 37 C.F.R. § 2.120(j)(1). See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1446 (TTAB 2000); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552 (TTAB 1991); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410-11 (TTAB 1990); Teleconferencing on Cases Before the TTAB, O.G. Notice (June 20, 2000). The Official Gazette Notice describing the telephone conference procedures may be found at the Board home page of the USPTO website. Under "Filing Assistance," select "New to TTAB?," then select the collapsible menu for "Practice and procedure," then select "TTAB phone conferencing" under "Additional policies and guidance.
2. See, e.g., Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1240 (TTAB 2012) (motions to strike pretrial disclosures, quash, and reopen testimony); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1176 (TTAB 2010) (motions to compel and quash); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1446 (TTAB 2000) (consented request to stay opposer’s rebuttal testimony period pending ruling on opposer’s motion to quash); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999) (motions to quash and for discovery sanctions); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1552 (TTAB 1991) (motion to attend testimony deposition by telephone); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410-11 (TTAB 1990) (uncontested motion to extend testimony period and motion for a protective order).
3. See, e.g., Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1655 (TTAB 2007) (party could have requested phone conference to quickly determine whether notice of deposition was reasonable); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1761 (TTAB 1999) (to the extent time was of the essence, party could have contacted the Board and requested that the motion to extend discovery be resolved on an expedited basis or by telephone conference); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1775 (TTAB 1999); and cases cited in previous note 2.
4. Teleconferencing on Cases Before the TTAB, O.G. Notice (June 20, 2000).
5. 37 C.F.R. § 2.127(a). See, e.g., Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1176 (TTAB 2010).
502.06(b) Pretrial Conferences
37 C.F.R. § 2.120(j)(2) Whenever it appears to the Trademark Trial and Appeal Board that questions or issues arising during the interlocutory phase of an inter partes proceeding have become so complex that their resolution by correspondence or telephone conference is not practical and that resolution would likely be facilitated by a conference in person of the parties or their attorneys with an Administrative Trademark Judge or an Interlocutory Attorney of the Board, the Board may, upon its own initiative, direct that the parties and/or their attorneys meet with the Board for a disclosure, discovery or pretrial conference on such terms as the Board may order.
Because the pretrial conference procedure necessarily involves expense for the parties, it is rarely used by the Board. However, it may be advantageous in cases where numerous complex motions are pending, or where the Board has identified the case as being, or having the potential to be, overly contentious and/or involve creation of excessive records by the parties, or where attorneys or parties are unable to work out a resolution of any of their differences. [ Note 1.] The Board may direct the parties and/or their attorneys to appear on such terms as the Board may order for such a conference. [ Note 2.]
For information concerning discovery conferences, see TBMP § 401.01 and TBMP § 408.01(a).
NOTES:
1. 37 C.F.R. § 2.120(j)(2). See Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority to require parties to attend a pretrial conference at the Board’s offices in Alexandria, VA).
2. See General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.5 (TTAB 2011) (the Board may exercise its authority to order a pretrial conference in person at the Board’s offices in Alexandria, VA), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority to require parties to attend a pretrial conference at the Board’s offices in Alexandria, VA); Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1869 (TTAB 2010) ("under Trademark Rule 2.120(i)(2), where resolution of discovery or other interlocutory issues ‘would likely be facilitated by a conference in person of the parties or their attorneys,’ the Board may ‘request that the parties or their attorneys … meet with the Board at its offices’ for a conference. If the parties remain unwilling or unable to work together cooperatively and efficiently, the Board will not hesitate to invoke this Rule in the future."). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69952 (Oct. 7, 2016) ("Correlative to electronic ... communication, the Board also has made it possible for parties ... and members of the Board to attend hearings remotely through video conference.").
502.07 Fed. R. Civ. P. 11 Applicable
For information concerning the applicability of the provisions of Fed. R. Civ. P. 11 to motions filed in proceedings before the Board, see TBMP § 527.02.