524.03 Time for Filing Motion
37 C.F.R. § 2.120(i) Request for admissions.
- (1) Any motion by a party to determine the sufficiency of an answer or objection, including testing the sufficiency of a general objection on the ground of excessive number, to a request made by that party for an admission must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. ...
- (2) When a party files a motion to determine the sufficiency of an answer or objection to a request for an admission, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board’s suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to determine the sufficiency of an answer or objection to a request for admission shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.
A motion to test the sufficiency of a response to a request for admission does not necessarily have to be filed during the discovery period, but it should be filed within a reasonable time after service of the response believed to be inadequate and, in any event, must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. [ Note 1.] As with a motion to compel, a motion to test the sufficiency not filed before the day of the deadline for pretrial disclosures for the first testimony period is untimely, even if the day of the deadline for pretrial disclosures for the first testimony period is subsequently reset. If the day of the deadline for pretrial disclosures for the first testimony period is reset before the day of the deadline for pretrial disclosures for the first testimony period as originally set, a motion to test sufficiency will be timely if it is filed before the day of the rescheduled deadline for the pretrial disclosures for the first testimony period. However, as of the day of the deadline for pretrial disclosures for the first testimony period, a motion to test sufficiency filed thereafter is untimely, even if it is filed prior to the day of the rescheduled or reset deadline for pretrial disclosures for the first testimony period. [ Note 2.] There is no provision in the rule for Board discretion to consider an untimely motion to test the sufficiency of a response to a request for admission. Trial schedules include a forty-five-day period between the close of discovery and day of the deadline for pretrial disclosures for the first testimony period to allow time for the filing of any necessary discovery motions. Cf. TBMP § 523.03.
NOTES:
1. 37 C.F.R. § 2.120(i)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 82 Fed. Reg. 33804 (July 21, 2017). Cf. Asustek Computer Inc. v. Chengdu Westhouse Interactive Entertainment Co., 128 USPQ2d 1470, 1470-71 (TTAB 2018) (reconsideration of Board order denying untimely motion to compel filed on deadline for pretrial disclosures denied); Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143, 1144 (TTAB 2017) ("[A] motion for judgment on the pleadings must also be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.").
2. To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to test the sufficiency of request for admission responses would be untimely.37 C.F.R. § 2.120(i)(1); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696, 697-98 n.7 (TTAB 1971) (opposer’s motion at final hearing seeking ruling on propriety of applicant’s responses to requests for admission was manifestly untimely; discovery is a pre-trial procedure and all matters pertinent thereto should be resolved prior to trial); Cf. La Maur, Inc. v. Bagwells Enterprises Inc., 193 USPQ 234, 235 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely). Please Note: The deadlines for filing motions to test the sufficiency were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120. Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings.