702.04 Accelerated Case Resolution
702.04(a) In General
Accelerated Case Resolution ("ACR") is an alternative to typical Board inter partes proceedings with full discovery, trial and briefing, in which parties to a Board proceeding can obtain a determination of the claims and defenses in their case in a shorter time period than contemplated in the typical Board proceeding. The form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for summary judgment and accompanying evidentiary submissions that the parties agree to submit in lieu of creating a traditional trial record [ Note 1.] and traditional briefs at final hearing. Other approaches to accelerating resolution of a case include simplifying proceedings through the use of fact stipulations and stipulations regarding the admissibility of certain evidence. [ Note 2.] Clearly worded stipulations are vital, regardless of the ACR form. [ Note 3.] Oral hearings generally are available in ACR cases in accordance with 37 C.F.R. § 2.129(a). See TBMP § 802. If parties agree to conduct the case as an ACR case and to utilize the bench trial or cross-motions for summary judgment model, and the Board approves trial of the case by ACR, the Board generally will render a final decision within fifty (50) days following the completion of briefing.
By reducing the complexity of a case and total time expended in litigating a case, ACR is a more efficient and economical alternative to the typical Board inter partes proceeding. Not all Board cases involve complicated or disputed facts or require the full discovery and trial periods set out by the Trademark Rules, to arrive at a final determination. Parties may therefore save time and expense by focusing only on those issues genuinely in dispute, and opting for ACR early in the proceeding. For example, if the parties stipulate to facts, no time need be spent proving those facts (although there may be some typical costs involved in preparing and exchanging documents and other materials that illustrate for the involved parties that facts are not genuinely in dispute and therefore can be stipulated). When the issues in a proceeding are limited, savings can be even greater, because all aspects of the proceeding, including discovery, trial and briefing, are focused on such limited matters. While many of the changes to the Board’s rules in 2017 were adopted with an eye towards smoother and more efficient inter partes proceedings, parties are encouraged to continue to explore whether ACR is useful to them, and to craft stipulations that work for them and accelerate the timing of the Board’s final decision. [ Note 4.]
The Board is willing to consider almost any claim under ACR unless the complexity or novelty of the facts and/or legal theory of the case requires a full trial. However, the most appropriate cases for ACR are those in which, for example, little discovery is necessary, the parties are able to stipulate to many facts, each party expects to rely on the testimony of one or two witnesses, or the overall record will not be extensive. [ Note 5.] ACR may not be suited to cases that generate a large record, complicated factual or legal issues, or cases where the parties are unwilling to stipulate to any matters (i.e., limitations on discovery or trial schedules, the absence of any genuine dispute about particular facts, or entry of evidence into the record).
ACR presently can be implemented only by consent of the parties and agreement by a Board attorney or judge, and will not be approved by unilateral motion of one party. ACR can also be implemented by all parties accepting an invitation or suggestion from a Board attorney or judge to participate in the process. [ Note 6.] The parties are required to discuss the possibility of using ACR in their discovery conference and may seek the assistance of the Board in structuring their case so that it qualifies for ACR and the Board’s objective to render a decision within fifty days (50) from the completion of briefing. [ Note 7.]
Parties seeking to optimize their chances for early determination of their case and savings in their resources are advised to opt for ACR early in the proceeding. To opt for ACR, the parties may jointly file a statement indicating their desire to proceed under ACR along with a proposed modified schedule which may include an abbreviated discovery period and/or briefing period under any form of ACR. The assigned attorney may, and likely will, then convene a conference by telephone to discuss the proceeding with the parties and explore how they wish to proceed under ACR. The parties may seek Board assistance when contemplating ACR to determine which form of ACR to follow and/or determine the discovery, trial and briefing schedule. Any modified discovery, trial and briefing schedule, including limits on discovery or discovery devices or trial, must be negotiated by the parties and approved by the Board. If, however, the parties choose to follow the traditional discovery and trial schedule, but merely wish to stipulate to particular facts or that particular items of evidence shall be considered by the Board, they may so agree and file their written agreement with the Board without need of a conference with a Board attorney. While this approach yields efficiency and savings, since prescribed discovery procedures and discovery and trial schedules are unchanged, a conference with a Board attorney typically would not be necessary.
The parties may limit discovery in a number of ways. For example, parties may limit the number of interrogatories, requests for production and requests for admissions as well as the number and duration of discovery depositions. They may exchange more extensive disclosures in lieu of formal discovery, or stipulate to facts and the exchange of certain documents, or propound interrogatory requests only on particular issues. If the parties are unable to agree on discovery limits, they will not have optimized any cost and time savings available through ACR. When discovery devices (e.g., number of depositions, document requests, or interrogatory requests) are limited, practice is necessarily more focused and cost efficient.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. By limiting the number or duration of testimonial depositions, or by introducing testimony by affidavit or declaration, they may realize additional savings in cost and time. They may also agree that the offering party may use discovery depositions at trial.
Parties may also agree under ACR to forego pretrial disclosures. Furthermore, if an ACR stipulation is silent on the issue of pretrial disclosures and no pretrial disclosures were in fact filed by either party, the Board will interpret the stipulation as waiving this requirement. [ Note 8.]
The standards of proof in an ACR proceeding are the same as the standards of proof in a traditional Board proceeding. In either an opposition or cancellation, the burden of proof remains with the plaintiff, who must establish its case by a preponderance of the evidence. [ Note 9.] In a concurrent use proceeding, the burden of proof remains with the applicant, who is in the position of the plaintiff. [ Note 10.]
A final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions by the Board. [ Note 11.] For further information regarding appeals of inter partes decisions, see TBMP Chapter 900.
Parties to cancellation proceedings involving only claims of abandonment or nonuse (or both) are encouraged to agree to ACR. [ Note 12.]
Please Note: Some of the cases cited in this section established efficiencies later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.
NOTES:
1. See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2-3 (TTAB 2020); Stawski v. Lawson, 129 USPQ2d 1036, 1039 (TTAB 2018), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 (TTAB 2018); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2016 (TTAB 2014); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1950 (TTAB 2014), vacated and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North. America., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) appeal dismissed without prejudice sub nom. Snyder’s- Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1827-28 (TTAB 2012); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986). See also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 47 USPQ2d 1953, 1954-55 (2d Cir. 1998).
2. See, e.g., Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020) (per ACR stipulation, opposer withdrew some claims with prejudice; applicant stipulated as to opposer’s standing; parties agreed to rely on materials submitted with summary judgment briefs as trial evidence with the right to supplementation during trial; parties reserved the right to object to evidence on substantive grounds); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2-3 (TTAB 2020) (parties waived disclosures and discovery, stipulated to facts, and filed their testimony and evidence with their main briefs in lieu of trial); Stawski v. Lawson, 129 USPQ2d 1036, 1039-40 (TTAB 2018) (per ACR stipulation in concurrent use proceeding, "all office records, matters of public record, affidavits, declaratitons and the like incorporated in or annexed as exhibits to the prior or final motions, affidavits or declarations shall be deemed to have been properly filed pursuant to notice of reliance under Trademark Rule 2.122(e)." Parties also agree to forego traditional trial and oral hearing, and to submit evidence with their briefs), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (parties stipulated to forgo reply briefing and that they could rely on the materials submitted in connection with previously filed motions for summary judgment); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 (TTAB 2015) (parties filed ACR stipulation to present all testimony by declaration and to submit discovery responses and documents produced in discovery as exhibits without the need for accompanying testimony); 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); Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and 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); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); 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); Sheetz of Delaware Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1344 (TTAB 2013) (parties stipulated under ACR that they could rely on the materials submitted in support of and against opposer’s previously filed motion for summary judgment, that testimony could be submitted by declaration, that pretrial disclosures were not required, and that all evidence may be submitted through declarations or notices of reliance); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) (parties stipulated to the entire record: 13 paragraphs of facts, including applicant’s dates of first use, channels of trade for applicant, extent and manner of applicant’s use, recognition by others of applicant’s use, as well as the dates, nature and extent of descriptive use by the opposer’s parent company; the admissibility of business records, government documents, marketing materials and Internet printouts and to forgo trial).
3. See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018) ("To obtain the full benefit of ACR, it is important that parties draft clearly-worded stipulations regarding procedures, claims and defenses, and the factual record.").
4. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1412 (TTAB 2018) (highlighting continued utility of ACR following 2017 rules changes).
5. See Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (for claim of likelihood of confusion, parties’ stipulations included priority, pleaded registration, and "lawn seed" and "grass seed" as legally identical descriptions of goods).
6. See Societe Des Produits Nestle S.A. v. Taboada, 2020 USPQ2d 10893, at *2 (TTAB 2020) (parties agreed to ACR at Board’s suggestion made in prior Board order denying motion for partial summary judgment); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at * 1-2 (TTAB 2020) (Board identified case as eligible for expedited cancellation pilot; after Board case conference, parties agreed to litigate the proceeding as an expedited cancellation using ACR procedures); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018) (Board identified case as candidate for pilot expedited cancellation proceeding, suggested same to parties during their discovery conference, and parties agreed to participate); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Hewlett-Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1634 n.6 (TTAB 2009) (in granting partial summary judgment, the Board suggested the parties may seek to use ACR on the remaining disputed issues without the need for a formal trial).
7. See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re: stipulation, from notice to briefing less than a year, resulting in clean and concise record); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 n.3 (TTAB 2014) (ACR proceeding experienced delay in issuing decision due to precedential nature of decision and the number and nature of objections), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1829-30 n.9 (TTAB 2012) (although the parties crafted and proceeded with their own ACR approach, better practice is to contact the assigned Board attorney when the parties elect to pursue ACR); Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).
8. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2002 n.5 (TTAB 2015) ("While parties are obligated to identify trial witnesses in their pretrial disclosures, there is no indication in the record that either party served pretrial disclosures in this ACR case (and the parties’ ACR Stipulation does not provide for the exchange of pretrial disclosures)." No basis for motion to strike and declaration at issue considered).
9. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) (party opposing registration bears the burden of proof); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
10. See Stawski v. Lawson, 129 USPQ2d 1036, 1038 (TTAB 2018), appeal dismissed, No. 19-1617 (Fed. Cir. December 19, 2019).
11. See 37 C.F.R. § 2.145.
12. See Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at pp. *1-2 (TTAB 2020) (Board identified case as eligible for expedited cancellation pilot; after Board case conference, parties agreed to litigate the proceeding as an expedited cancellation using ACR procedures); TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1787 (TTAB 2018) (case decided under expedited cancellation pilot using ACR procedures).
702.04(b) ACR using Summary Judgment Briefs
For a case prosecuted on the summary judgment model of ACR, the trial and briefing periods occur in one phase. That is, the summary judgment briefs and accompanying evidentiary submissions encompass both the trial and briefing periods. Because the parties have, in essence, agreed to create the record for the case by their summary judgment submissions, testimony will be presented by affidavit or declaration, and any exhibits referenced by the affiants or declarants.
In addition to filing summary judgment briefs, the parties should file a joint stipulation of undisputed facts, and, as attachments or exhibits to their briefs, any materials that, in a typical trial, could be submitted by notice of reliance (the notice of reliance itself need not be filed). The parties are free to enter into other stipulations regarding the submission of evidence. [ Note 1.] For example, they may agree that documents and things produced in response to requests for production may be submitted as exhibits without the need for accompanying testimony. The stipulations regarding the submission of evidence remove any question about the admissibility of the evidence, but the parties may reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality, or the weight to be accorded particular items of evidence. [ Note 2.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 3.] To obtain the full benefit of ACR, parties should draft clearly-worded stipulations about procedures, evidence, and the factual record. [ Note 4.] Parties may stipulate to facts, supported by the record, that underlie necessary legal determinations such as whether the plaintiff has an entitlement to a statutory cause of action to bring the proceeding (formerly referred to as "standing"), see TBMP § 309.03(b), or whether confusion is likely. [ Note 5.] However, because the Board makes determinations of the law governing a registration dispute, the Board is not bound by the parties’ stipulations or agreements with respect to questions of law. [ Note 6.]
ACR summary judgment briefs may be presented either as cross motions for summary judgment or as a single motion for summary judgment. If the parties stipulate to ACR and file cross motions for summary judgment, each party is entitled to file a response to the other’s motion and a reply in support of its own motion. [ Note 7.] If the parties stipulate to ACR and the summary judgment motion is in the form of a single motion by plaintiff, then defendant may file a brief in response and only plaintiff is entitled to file a reply. [ Note 8.] In the absence of a stipulation to the contrary, the parties are limited to 25 pages for the ACR summary judgment briefs, inclusive of table of contents and cases, index of cases, description of the record, statement of the issues, recitation of facts, argument and summary. Reply briefs are limited to 10 pages unless otherwise stipulated [ Note 9.] and arguments should be restricted to rebuttal of the adverse party’s case in chief.
In using the summary judgment form of ACR, the parties must provide a stipulation that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing. [ Note 10.]
If the parties decide early in the case to use the ACR motion for summary judgment model, they should file a stipulation with the Board selecting the ACR summary judgment model and setting forth the negotiated schedule for discovery and any limitation on discovery, submission of stipulations, and briefing. [ Note 11.]
For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).
NOTES:
1. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
2. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018).
3. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating to introduction of affidavit and its exhibits into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. Mar. 7, 2013).
4. See Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018) (parties had "somewhat different views" about language in their stipulation, Board emphasized importance of drafting "clearly-worded stipulations" so parties may "obtain the full benefit of ACR").
5. Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
6. Cf. Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989) ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939) ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
7. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
8. 37 C.F.R. § 2.127(a) and 37 C.F.R. § 2.127(e)(1).
9. 37 C.F.R. § 2.127(a). But see Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (parties’ ACR agreement provided that "the page limit for the parties’ briefs shall be the page limit permitted for trial briefs pursuant to Trademark Rule 2.128(b).").
10. See, e.g., TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411 (TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
11. See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (pursuant to their ACR stipulation, parties agreed to forgo discovery and reliance on expert testimony).
702.04(c) ACR Conversion - Summary Judgment Briefs
In circumstances where the parties have already filed summary judgment briefs, the Board may, in appropriate cases, invite the parties to agree to the Board’s treatment of the summary judgment briefs and evidence as the final records and briefs. [ Note 1.] Alternatively, the parties may stipulate to treating the summary judgment briefs and evidence as the record and final briefs on the case, even in the absence of an invitation to do so extended by the Board. [ Note 2.]
In either case, the parties must stipulate that the Board may resolve any genuine disputes of material fact that may be presented by the record or which may be discovered by the panel considering the case at final hearing.
For more information regarding ACR motions for summary judgment, see TBMP § 528.05(a)(2).
NOTES:
1. See, e.g., Daniel J. Quirk Inc. v. Village Car Co., 120 USPQ2d 1146, 1147 and 1147 n.5 (TTAB 2016); 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 and remanded on other grounds, Princeton Vanguard , LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017), dismissed without prejudice sub nom. Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc., 414 F. Supp. 3d 822, 2019 USPQ2d 401574 (W.D.N.C. 2019), reversed and remanded on other grounds, 991 F.3d 512 (4th Cir. 2021).
2. See, e.g., Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Freeman v. National Association of Realtors, 64 USPQ2d 1700, 1701 (TTAB 2002) (parties stipulated that case would be decided on petitioner’s motion for summary judgment and respondent’s response); Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 676 (TTAB 1986) (parties stipulated that cross motions for summary judgment would be treated as testimony, evidence and briefs at final hearing).
702.04(d) ACR using Stipulated Record and Trial Briefs
Under the stipulated record and trial briefs ACR model, the case proceeds to final decision on an evidentiary record that has been stipulated to, in whole or in substantial part. Thus, the parties must be prepared to stipulate to the admissibility of most of the record. They may, however, reserve the right to object in trial briefs on substantive grounds to particular evidence such as on the grounds of competency, relevancy or materiality. Testimony periods may not be needed for cases prosecuted on the stipulated record model (with or without stipulated facts), if the evidentiary record has been stipulated to by the parties. [ Note 1.] Essentially, the parties are agreeing to an abbreviated trial on the merits.
Just as with any non-ACR case, the Board will decide disputed facts as part of the final decision.
The Board has found that cases that proceed along the ACR stipulated record model, involving many stipulated facts and stipulated evidence, yield highly effective records because evidentiary submissions are focused on the disputed facts. Stipulations of fact are useful but are not required in an ACR case prosecuted on a stipulated record.
Parties which agree to conduct the proceeding under ACR and which have stipulated to limited discovery may still take testimonial depositions or introduce testimony by affidavit or declaration, subject to the right of the nonoffering party to cross-examine the witness. However, by limiting the number or duration of testimonial depositions or testimony in affidavit or declaration form, they may realize additional savings in cost and time. They may also agree to use discovery depositions at trial.
Parties using this form of ACR and who agree to forgo the testimony period should file a stipulation indicating such an intention, along with their stipulations to the record with respect to facts, evidence and testimony (e.g., using discovery depositions in lieu of testimonial depositions). [ Note 2.] To obtain the full benefit of ACR, parties should draft clearly-worded stipulations. Parties may stipulate to facts, supported by the record, that underlie necessary legal determinations such as whether the plaintiff has an entitlement to a statutory cause of action to bring the proceeding (formerly referred to as "standing"), see TBMP § 309.03(b), or whether confusion is likely. However, because the Board makes determinations of the law governing a registration dispute, the Board is not bound by the parties’ stipulations or agreements with respect to questions of law. [ Note 3.]
Stipulations regarding the submission of evidence promote efficiency by removing any question about the admissibility of the evidence, while still allowing the parties to reserve the right to object to the evidence on substantive grounds such as competency, relevancy or materiality. [ Note 4.] A party may not raise objections to the admissibility of evidence that it has stipulated into the record. [ Note 5.]
As with regular trial briefs, the parties are limited to 55 pages for the ACR trial briefs under the stipulated record model, inclusive of table of contents, index of cases, description of the record, statement of issues, recitation of the facts, argument and summary. [ Note 6.] Unless counterclaims are involved, only the plaintiff may file a reply brief, and it is limited to 25 pages consisting solely of a rebuttal of the adverse party’s case in chief. [ Note 7.] See TBMP § 801.
For additional information regarding stipulated evidence and ACR, see TBMP § 705.
NOTES:
1. See, e.g., Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 (TTAB 2020) (parties stipulated to file testimony and documentary evidence submitted together with their main briefs in lieu of trial); Lebanon Seaboard Corp. v. R & R Turf Supply, Inc., 101 USPQ2d 1826, 1828 (TTAB 2012) (parties stipulated to a schedule that did not include testimony periods, but resulted in the concurrent submission of briefs and supporting evidence); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties selected ACR and agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and agreed to forgo trial).
2. See, e.g., Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913, 1916 (TTAB 2015) (early election of ACR, no motion practice, utilized conference with Board attorney for dispute re stipulation, resulted in clean and concise record, and the time frame from notice to briefing took less than a year); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded the filing of motions for summary judgment and the use of expert testimony, streamlined the methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1547 (TTAB 2012) (parties filed a joint stipulation of undisputed facts and a stipulation to seek a determination through ACR); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1513 (TTAB 2009) (parties agreed to forgo trial by stipulating to use evidence submitted in support of opposer’s motion for summary judgment as trial evidence and allowing for any additional evidence to be submitted with their trial briefs on the case); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties stipulated to the entirety of the record and stipulated to forgo trial); Zimmerman v. National Association of Realtors, 70 USPQ2d 1425, 1427 (TTAB 2004) (in addition to reliance on a discovery deposition of one of the parties, the parties stipulated that the evidentiary record from an earlier Board case would be considered); Devries v. NCC Corp., 227 USPQ 705, 708 (TTAB 1985) (parties stipulated to waive trial periods and stipulated to the following: petitioner’s pleaded registration; each party’s responses to certain interrogatories and requests for production of documents served upon it by the other party; and stipulated facts and affidavit testimony, with attached exhibits).
But see Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (parties who stipulated to certain facts and issues, yet also submitted evidence to prove these points, have gone to needless effort and expense and the Board unnecessarily must review this evidence).
3. Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989); ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939) ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
4. See Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (parties agreed to reserve the right to object to facts and documents on the bases of relevance, materiality and weight). See also Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 USPQ2d 1370, 1376 (Fed. Cir. 2018) (the parties waived objections to the admissibility of the evidence, without prejudice to their rights to argue the probative value of such evidence, in order to take advantage of the Board’s Accelerated Case Resolution procedure).
5. See Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827 (TTAB 2009) (by stipulating affidavit and exhibits thereto into evidence, applicant waived its right to object to the admissibility of exhibits attached to affidavit), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv- 10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013).
But see Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1561 (TTAB 2014) (parties’ stipulation provided for the admission into evidence of specific dated expert reports and accompanying exhibits and an expert discovery deposition transcript, but did not provide for the admission into evidence of any supplemental expert reports or additional expert testimony by affidavit or declaration, in view thereof, supplemental expert report not admissible on this basis).
702.04(e) Utilizing Stipulations in Non-ACR Board cases
37 C.F.R. § 2.123(b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.
37 C.F.R. § 2.127(e)(2) If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial.
Parties may utilize stipulations of facts and evidence to realize cost efficiencies in non-ACR cases. For example, they may stipulate to the entire record, to portions of the record, or to particular facts. [ Note 1.] The parties are reminded that the Board is not bound by stipulations as to questions of law. [ Note 2.] If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. [ Note 3.] Parties may stipulate to ACR-type efficiencies at any stage of a proceeding in order to expedite the remainder of the trial schedule.
See TBMP § 705 regarding stipulated evidence.
Please Note: Some of the cases cited in this section established principles later codified in amended 37 C.F.R. § 2.123(a)(1), effective January 14, 2017, which allows parties to unilaterally present direct testimony by affidavit or declaration subject to cross-examination by the adverse party.
NOTES:
1. See 37 C.F.R. § 2.123(b) and MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69965 (October 7, 2016) ("The Office is amending § 2.123(b) … to clarify that parties may stipulate to any relevant facts."). See, e.g., The Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *2 (TTAB 2020) (parties stipulated to admission of evidence: documents produced through discovery may be submitted under notice of reliance without witness testimony and will be deemed authentic business records; documents submitted in conjunction with an earlier-filed summary judgment motion deemed admitted into record; and the admission of testimony and related exhibits by declaration, and of discovery depositions and related exhibits by notice of reliance), appeal dismissed-in-part, aff’d-in-part, vacated-in-part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *3 (TTAB 2020) (parties stipulated to the admissibility and authenticity of evidence); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400, at *1-2, nn.8, 10 and 11 (TTAB 2020) (parties stipulated to admissibility of interrogatory responses through notice of reliance, and to withdraw certain paragraphs from two testimony declarations), civil action filed, No. 3:20-cv-00400-MHL (E.D. Va. June 5, 2020); AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *3-5, *4-5 nn. 13, 14, & 20 (TTAB 2020) (parties stipulated to bifurcate the proceeding into two phases, with the initial phase directed to standing, and if opposer was found to have standing, the second phase directed to remaining issues; stipulation as to expert testimony and stipulation as to authenticating evidence as business records); Hanscomb Consulting, Inc. v. Hanscomb Ltd., 2020 USPQ2d 10085,at *2 (TTAB 2020) (parties stipulated to treat discovery responses and documents produced in earlier Board proceeding as discovery responses and documents produced in response to discovery requests in present Board proceeding); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *2 (TTAB 2019) (parties stipulated to admissibility of certain declarations and exhibits submitted by each party on summary judgment), complaint filed, No. 20-cv-109 (M.D.N.C. Feb. 3, 2020); Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *1 n.5 (TTAB 2019) (parties stipulated to treat discovery responses provided in prior federal civil action as responses to discovery propounded in Board proceeding, and to introduce the discovery depositions of certain witnesses taken in the Board proceeding as trial testimony in lieu of taking their testimonial depositions); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 (TTAB 2016) (parties stipulated that testimony may be introduced by affidavit or declaration in lieu of testimonial depositions and that the documents exchanged during discovery are authentic and may be made of record by either party); Ayoub, Inc. v. ACS Ayoub Carpet Services, 118 USPQ2d 1392, 1394 (TTAB 2016) (parties stipulated to submission of testimony by declaration, to the use of any Fed. R. Civ. P. 30(b)(6) discovery deposition transcripts in their case-in-chief or rebuttal, and to the authenticity of all documents produced by either party during discovery); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1500 (TTAB 2015) (parties stipulated that witness testimony would be submitted solely by declaration and without cross-examination); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to submission of witness declarations and discovery depositions, 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, 1738 (2014) (parties filed joint stipulation that testimony could be submitted by declaration or affidavit subject to cross-examination upon request, and 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); 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 certain produced documents and waiver of objections based on authenticity or hearsay as to those documents); Miller v. Miller, 105 USPQ2d 1615, 1617 n.6 (TTAB 2013) (parties stipulated to testimony by affidavit and provided a stipulation of undisputed facts); Blackhorse v. Pro-Football Inc., 111 USPQ2d 1080, 1084-85 (TTAB 2014) (parties stipulated that the record of a prior proceeding may be submitted into evidence under notice of reliance reserving the right to object based on relevance) aff’d, 112 F. Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, 709 F. App’x 183 (4th Cir. 2018) (mem.); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1563 (TTAB 2011) (parties stipulated to authenticity of produced documents and to the introduction of testimony in affidavit or declaration form, with certain guidelines), rev’d on other grounds, slip op. No. 11-3684 (D.N.J. August 29, 2017); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1915 (TTAB 2011) (parties stipulated to authenticity of produced documents); Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1824-25 (TTAB 2010) (parties stipulated to admission of various testimony declarations and to facts), aff’d on other grounds, Creative Arts by Calloway, LLC v. Brooks, No. 09-cv-10488 (S.D.N.Y. Dec. 27, 2012), dismissed, slip op. No. 13-147 (2d Cir. March 7, 2013); UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1044 (TTAB 2009) (parties stipulated to introduce testimony by declaration and to live cross-examination); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1585 (TTAB 2008) (parties stipulated to testimony by declaration, with exhibits); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (stipulation to use discovery depositions as trial testimony); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998) (stipulation to use evidence and exhibits submitted in connection with a motion for summary judgment at trial); Domino’s Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1360 (TTAB 1988) (stipulations to facts by applicant, testimony by affidavit by opposer, and use of certain testimonial depositions taken in prior civil action); Wilderness Group, Inc. v. Western Recreational Vehicles, Inc., 222 USPQ 1012, 1013 (TTAB 1984) (stipulated to the filing of facts and exhibits on behalf of each party during each party’s testimony period); Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 635 (TTAB 1983) (parties stipulated to facts, legal conclusions and testimony, including cross-examination and redirect examination with respect to stipulated testimony).
2. Sanford’s Estate v. Commissioner of Internal Revenue, 308 U.S. 39, 51 (1939) ("We are not bound to accept, as controlling, stipulations as to questions of law") (citing Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917)); Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 9 USPQ2d 1540, 1543 (Fed. Cir. 1989); ("If the stipulation is to be treated as an agreement concerning the legal effect of admitted facts, it is obviously inoperative, since the court cannot be controlled by agreement of counsel on a subsidiary question of law.") (quoting Swift & Co. v. Hocking Valley Railway Co., 243 U.S. 281, 289 (1917); Julius Forstmann & Co. v. United States, 26 CCPA 336, 338 (CCPA 1939), ("in attempting to stipulate facts, it is clear that litigants improperly circumscribe the freedom of the judicial function, it is elementary that such stipulations [of law] are not binding upon the court"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *3 n.6 (TTAB 2020) ("while the parties may not stipulate to a plaintiff’s standing in the absence of supporting facts, thereby creating standing where none otherwise exists, the parties may stipulate as to the facts which would support standing, eliminating the need for separate proof of those facts.").
3. 37 C.F.R. § 2.123(e)(2). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (October 7, 2016) ("The Office is amending § 2.127(e)(2) to add that if a motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial. The revision codifies an approach used by parties in proceedings incorporating ACR-type efficiencies at trial.").