510.02(a) Suspension
Whenever it comes to the attention of the Board that a party or parties to a case pending before it are involved in a civil action that may have a bearing on the Board case, proceedings before the Board may be suspended until final determination of the civil action. [ Note 1.]
Most commonly, a request to suspend pending the outcome of another proceeding seeks suspension because of a civil action pending between the parties in a federal district court. Although the Supreme Court held that issue preclusion can be based on a decision by the Board in a case in which the ordinary elements of issue preclusion are met, the Board’s policy to suspend in favor of a civil action has not changed. A civil action may involve other matters outside Board jurisdiction and may consider broader issues beyond right to registration and, therefore, judicial economy is usually served by suspension. [ Note 2.]
Further, pursuant to 37 C.F.R. § 2.117(a), the Board may also, in its discretion, suspend a proceeding pending the final determination of another Board proceeding in which the parties are involved [ Note 3.], or a civil action pending between the parties in a state court [ Note 4.], or a foreign action between the parties, wherein one party challenges the validity of a foreign registration upon which the other party’s subject application is based [ Note 5.], or an arbitration pending between the parties [ Note 6.], or another proceeding in which only one of the parties is involved [ Note 7.], or an expungement or reexamination proceeding pending before the USPTO.
Unless there are unusual circumstances, the Board will suspend proceedings in the case before it if the final determination of the other proceeding may have a bearing on the issues before the Board. [ Note 8.]
The Board seldom grants a motion to suspend a particular proceeding pending disposition of other opposition or cancellation proceedings brought by unrelated plaintiffs against the same application or registration, and asserting unrelated claims, absent the consent of the other parties. [ Note 9.] An exception may be made for purposes of consistency and economy where there are common claims in the separate proceedings. The Board may then order suspension of the other proceedings pending disposition of the proceeding that appears closest to issuance of a final decision. [ Note 10.] If the multiple proceedings are at the same stage of litigation and plead the same claims, the Board may order consolidation. [ Note 11.]
Suspension of a Board proceeding pending the final determination of another proceeding is solely within the discretion of the Board; the court in which a civil action is pending has no power to suspend proceedings in a case before the Board [ Note 12.], nor do parties or their attorneys. [ Note 13.] However, if, as sometimes happens, the court before which a civil action is pending elects to suspend the civil action to await determination of the Board proceeding and the Board is so advised, the Board will go forward with its proceeding. [ Note 14.]
When a motion to suspend pending the outcome of a civil action is filed, the Board normally will require that a copy of the operative pleadings from the civil action be submitted, so that the Board can ascertain whether the final determination of the civil action may have a bearing on the issues before the Board. [ Note 15.] This requirement ordinarily is waived if all parties consent to the suspension. See TBMP § 502. When the suspension is consented to by all parties, the filer should use the "consent motions" option in ESTTA, which requires that the filer certify that the adverse party has consented to the suspension. If an adverse party has not consented, the filing must still be made via ESTTA, but the filer should select the "general filings" option from the drop-down menu instead of the "consent motions" option. See 37 C.F.R. § 2.126(a), TBMP § 110 and http://estta.uspto.gov for information regarding filing via ESTTA.
The Board does not usually require that an issue be joined (i.e., that an answer be filed) in one or both proceedings before the Board will consider suspending a Board proceeding pending the outcome of another proceeding. [ Note 16.] Such a requirement is made only in those cases where there is no stipulation to suspend and it is not possible for the Board to ascertain, prior to the filing of an answer in one or both proceedings, whether the final determination of the other proceeding may have a bearing on the issues before the Board.
If there is pending, at the time when the question of suspension of proceedings before the Board is raised, a motion that is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered. [ Note 17.] The purpose of this rule is to prevent a party served with a potentially dispositive motion from escaping the motion by filing a civil action and then moving to suspend before the Board has decided the potentially dispositive motion. However, the Board, in its discretion, may elect to suspend without first deciding the potentially dispositive motion.
NOTES:
1. 37 C.F.R. § 2.117(a). See General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992); Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689, 692 (TTAB 1975), rev’d on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974), pet. denied, 181 USPQ 779 (Comm’r 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-07 (TTAB 1971).
2. See, e.g., B&B Hardware, Inc. v. Hargis Industries, Inc., 135 U.S. 1293, 135 S. Ct. 1293, 113 USPQ2d 2045, 2048, 2053, 2056 (2015) ("[A] court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met." (2048); "When a district court, as part of its judgment, decides an issue that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment." (2053); and "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." (2056)); Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2d Cir. 1988) (doctrine of primary jurisdiction might be applicable if a district court action involved only the issue of registrability, but would not be applicable where court action concerns infringement where the interest in prompt adjudication far outweighs the value of having the views of the USPTO); American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 USPQ2d 1208, 1211 (D. Minn. 1986) (primary jurisdiction should not be invoked where, inter alia, a stay of the district court action is more likely to prolong the dispute than lead to its economical disposition and where the district court action includes claims which cannot be raised before the Board); Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1253-54 (TTAB 2011) (no claim preclusion based on district court’s determination because civil action focused on respective uses and rights to use while Board proceeding focus on right to registration; issue preclusion based on district court determination found); New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (decision by district court may be binding on the Board, but determination by the Board of a defendant’s right to obtain or maintain a registration would not be ... res judicata in the court proceeding); Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689, 692 (TTAB 1975), rev'd on other grounds, 549 F.2d 785, 193 USPQ 149 (CCPA 1977).
Cf. Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018) (district court’s direction to the Commissioner of Trademarks to "transfer the application" to plaintiff exceeds the court’s statutory authority to rectify the register under Section 37 of the Trademark Act, which is limited to registrations, not pending applications).
Cf. Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1253 n.6 (TTAB 2011) (district court may have lacked jurisdiction to entertain a counterclaim to refuse registration because the involved mark was the subject of an application, not a registration); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1844-45 (TTAB 1995) (district court finding concerning priority of use not binding in view of differences in interpretation of Trademark Act § 7(c) by Board and court, and finding regarding priority of secondary meaning not binding because said issue was not involved in the Board proceeding).
3. Cf. The Tamarkin Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995) (suspended pending outcome of ex parte prosecution of opposer’s application).
4. See Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 395 (Fed. Cir. 1983) (noting stay based in part on state court infringement action); Professional Economics Incorporated v. Professional Economic Services, Inc., 205 USPQ 368, 376 (TTAB 1979) (decision of state court, although not binding on the Board, was considered persuasive on the question of likelihood of confusion); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB 1975) (state court action to determine ownership of applicant’s mark and authority of applicant to file application).
5. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (Board suspended proceedings pending receipt of pleadings and other documentation to determine whether proceeding in the United Kingdom may have a bearing in Board proceeding); Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792, 1793-94 (TTAB 1993) (opposition suspended pending decision of German court on validity of foreign registration which is the basis of the U.S. application involved in the opposition).
6. See Hu v. TJ Food Services, LLC, 123 USPQ2d 1777, 1781 (TTAB 2017) (maintaining suspension to afford parties the opportunity to commence arbitration).
7. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (Board suspended proceedings pending receipt of pleadings and other documentation to determine whether proceeding in the United Kingdom may have a bearing in Board proceeding); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB 1975) (state court action between applicant and third party to determine ownership of applicant’s mark).
8. 37 C.F.R. § 2.117(a). See, e.g., New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need not be dispositive of Board proceeding, but only needs to have a bearing on issues before the Board); General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992) (relief sought in federal district court included an order directing Office to cancel registration involved in cancellation proceeding); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974) (decision in civil action for infringement and unfair competition would have bearing on outcome of Trademark Act § 2(d) claim before Board), pet. denied, 181 USPQ 779 (Comm’r 1974). See also Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-07 (TTAB 1971); Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
But see Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018-19 (TTAB 2003) (petitioner’s motion to suspend filed after trial denied as untimely, and in any event, petition was dismissed since petitioner’s only proffered evidence had been stricken); E.I. du Pont de Nemours & Co. v. G.C. Murphy Co., 199 USPQ 807, 808 n.3 (TTAB 1978); Ortho Pharmaceutical Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429, 430 (TTAB 1973) (in each case, a motion to suspend filed after the conclusion of testimony and briefing periods, when the Board proceeding was ready for decision, was denied).
9. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1551 (TTAB 2011).
10. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
11. New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
12. See Opticians Association of America v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021, 2029 (D.N.J. 1990) (district court has no control over Board docket and no power to stay Board proceedings), rev’d on other grounds, 920 F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990).
13. See Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
14. See Tigercat International, Inc. v. Caterpillar, Inc., 127 USPQ2d 1132, 1139-40 (D. Del. 2018) (district court granted motion to stay its action in lieu of pending Board proceeding finding it to be a case of "tactical gamesmanship;" party filed district court action only ten days before the close of three years of contentious discovery and two months before the start of trial in Board proceeding).
15. See Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (party ordered to submit status of and pleadings from a foreign action between the parties so Board may ascertain whether final determination of that proceeding may have a bearing on the issues before the Board); New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (Board will scrutinize pleadings in civil action to determine if the issues before the court may have a bearing on the Board’s decision); Forest Laboratories Inc. v. G.D. Searle & Co., 52 USPQ2d 1058, 1060 (TTAB 1999) (parties required to submit a copy of the complaint in the civil action so that Board may determine whether suspension is warranted); SCOA Industries Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411, 415 (TTAB 1975), appeal dismissed, 530 F.2d 953, 189 USPQ 15 (CCPA 1976).
16. See Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974).
17. See 37 C.F.R. § 2.117(b). See also Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2018-19 (TTAB 2003) (motion to strike petitioner’s notice of reliance, its only evidence in the case, decided before motion to suspend, and granted).