801.02(e) Special Situations
The Board sets, by written action in all cases in which a scheduling order is issued, the due dates for the filing of briefs on the case. Enhancements to electronic systems permit this to be done easily.
There are specific circumstances in which other factors are considered in setting the briefing schedule. These are when (1) there is a counterclaim, (2) proceedings have been consolidated, and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or (3) there is an interference or a concurrent use registration proceeding involving more than two parties. [ Note 1.]
If there is a counterclaim, the time is set for combined briefs. That is, the Board will issue an order setting the due dates for plaintiff’s main brief in the original proceeding (due the 60th day after the date set for the close of rebuttal testimony); defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim (due the 30th day after the due date of the plaintiff's main brief); plaintiff's combined reply brief in the original proceeding and its brief as defendant in the counterclaim (due the 30th day after the due date of defendant's combined brief as defendant in the original proceeding and as plaintiff in the counterclaim); and defendant’s reply brief as plaintiff in the counterclaim (due the 15th day after the due date of plaintiff’s combined reply brief in the original proceeding and brief as defendant in the counterclaim). The time is set for combined briefs in consolidated proceedings when the parties are in opposition positions. Combined briefs may not exceed the page limit for a brief. [ Note 2.] See the TBMP Appendix of Forms for a sample briefing trial order with a counterclaim.
In an interference or concurrent use registration proceeding, the Board will schedule briefing periods so that each party in the position of plaintiff will have a period for filing a main brief on the case, each party in the position of defendant will have a period for filing a main brief in which it may respond to the brief of each plaintiff, and each party in the position of plaintiff will have a period for filing a reply brief. [ Note 3.] See TBMP § 1007 and TBMP § 1109.
If a reviewing court vacates and/or remands a final decision for further proceedings, the Board has the discretion to order rebriefing of the case. [ Note 4.]
NOTES:
2. Cf. Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (one cannot exceed the page limitation for a brief by combining an opposition brief and a cross-motion addressing the same issue).
4. See, e.g., Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1186 (TTAB 2017) (on remand from the Federal Circuit for further proceedings, Board ordered the parties to rebrief the case on the original record), aff’d sub nom. Snyder’s Lance, Inc. v. Frito-Lay North America, Inc., 542 F. Supp. 3d 371 (W.D.N.C. 2021), appeal dismissed, No. 21-1758 (4th Cir. Aug. 31, 2021).