STIPULATIONS AND MOTIONS IN TTAB PROCEEDINGS


The USPTO provides this introduction to the TBMP or Trademark Trial and Appeal Board Manual of Procedure on their web site:

The purpose of this manual [TBMP] is to provide practitioners with basic information generally useful for litigating cases before the Trademark Trial and Appeal Board. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the Board, its reviewing tribunals, the Director, or the USPTO. Cf., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989). Rather, the manual describes current practice and procedure under the applicable authority and incorporates amendments to the Trademark Rules of Practice, Trademark Act and Federal Rules, where applicable, as of November 15, 2010. The guidelines set forth in the manual do not have the force and effect of law. They have been developed as a matter of internal office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the office.


Latest Revision of TTAB Manual (TBMP) January 2017

View full pdf or download pdf version from the uspto.gov site or view a searchable version online at the USPTO web site at http://tbmp.uspto.gov/RDMS/detail/manual/TBMP/current/tbmpd1e2.xml.



TRADEMARK TRIAL AND APPEAL BOARD (TTAB)  MANUAL OF PROCEDURE (TBMP)  

January 2017


Portions of TBMP CHAPTER 500 STIPULATIONS AND MOTIONS


TBMP 501 Stipulations

501.01 In General

Subject to the approval of the Board, parties may stipulate to a wide variety of matters. For example, parties may stipulate to extend or reopen times; that the total number of interrogatories or requests for production which one party may serve upon another party in a proceeding may be reduced from or may exceed the limitation specified in 37 CFR § 2.120(d)  or 37 CFR § 2.120(e); that the production of documents and things under the provisions of Fed. R. Civ. P. 34 may be made in a specified place and/or manner [ Note 1.]; to protective agreements or provisions different from or in substitution for the Board’s standard protective order; to the substance or the form of the facts or testimony in the case [ Note 2.]; that a deposition may be taken at a particular place, or in a certain manner [ Note 3.]; that the proceeding shall be ended in a specified way; and to pretrial disposition on the merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR). [ Note 4.] See TBMP § 403.04 (Extensions of Discovery Period, Time to Respond to Discovery Requests, and Disclosures), TBMP § 412.02 (Modification of Board’s Standard Protective Order Upon Stipulation), TBMP § 528.05(a)(2) (Accelerated Case Resolution (ACR)), and TBMP § 605.03 (Settlement Agreements), TBMP § 702.04 (Accelerated Case Resolution), TBMP § 702.04(e) (Utilizing Stipulations in Non-ACR cases), and TBMP § 705 (Stipulated Evidence and Accelerated Case Resolution).

NOTES:


 1.   37 CFR § 2.120(e).


 2.   37 CFR § 2.123(b). See, e.g., 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); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1426 (TTAB 2014) (stipulation to 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 (TTAB 2014) (parties filed joint stipulation that 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); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007) (the parties stipulated to the entire record, including business records, public records, marketing materials, Internet materials, and 13 paragraphs of facts, while reserving the right to object to such facts and documents on the bases of relevance, materiality and weight).


 3.   37 CFR § 2.123(b).


4. See, e.g., Fiserv, Inc. v. Electronic Transmission Systems Corp., 113 USPQ2d 1913, 116 (TTAB 2015) (parties filed ACR stipulation, agreed to forego discovery, waived disclosures, stipulated to facts and attached documents, filed briefs with additional evidence); Hunter Industries, Inc. v. Toro Co., 110 USPQ2d 1651, 1653 (TTAB 2014) (parties’ stipulation under ACR provided limitations on discovery, excluded filing of motions for summary judgment and use of expert testimony, streamlined methods for introduction of evidence during trial, stipulated to fact regarding no actual confusion), on appeal, No. 14-CV-4463 (D. Minn.); 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, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775-76 (TTAB 2013) (approving parties’ stipulation to proceed via ACR).


TBMP 501.02 Filing Stipulations

37 CFR § 2.120(a)(2)  [Discovery] … .

(iv) The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board... Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. ..

(v) The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.

37 CFR § 2.120(a)(3)   [Discovery] … A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board, or by order of the Board.

37 CFR § 2.121(d)   [Assignment of times for taking testimony and presenting evidence.] When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.

Stipulations which require action or consideration by the Board, such as stipulations to extend a defendant’s time to file an answer to the complaint, stipulations to alter the length of the discovery period or disclosure obligations occurring during the discovery period, stipulations to waive required initial disclosures, stipulations to reschedule pretrial disclosures and subsequent trial dates, stipulations to extend trial dates, stipulations relating to the form of testimony, stipulations to end a proceeding in a specified way, and stipulations to pretrial disposition on the merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR), must be filed with the Board. [ Note 1.] Some other types of stipulations, such as stipulations to extend a party’s time for responding to a request for discovery, do not necessarily have to be filed with the Board. However, even in the case of a stipulation that does not have to be filed, the better practice is to reduce the stipulation to writing, in order to avoid any misunderstanding between the parties as to the existence and terms thereof.

NOTES:


 1.   37 CFR § 2.120(a)(2)(iv); 37 CFR § 2.120(a)(3); 37 CFR § 2.121(d). See, e.g., Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775-76 (TTAB 2013) (approving parties’ stipulation to proceed via ACR).

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Examples of Stipulations Available In A TTAB Proceeding

(not an exhaustive list)

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TBMP 502 Motions--In General

TBMP 502.01 Available Motions

There is a wide range of motions which may be filed in inter partes proceedings before the Board. 37 CFR § 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 CFR § 2.132(a)  and 37 CFR § 2.132(b)  for failure of the plaintiff to take testimony or offer evidence (other than plaintiff’s pleaded registration under 37 CFR § 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 which might be filed in an inter partes proceeding before the Board, this chapter discusses only the motions which most commonly arise in Board proceedings.

NOTES:


 1.   See 37 CFR § 2.123(a); 37 CFR § 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, 56 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) (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), on appeal, No. 14-CV-4463 (D. Minn.).

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General Motions

Many of the motions available under the Federal Rules of Civil Procedure are also available in proceedings before the TTAB. These motions include:

1. Motion to dismiss for failure to state a claim upon which relief can be granted,

2. Motion for judgment on the pleadings,

3. Motion to strike,

4. Motion to amend the pleadings,

5. Motion for summary judgment,

6. Motion for reconsideration, and

7.Motion for relief from final judgment.


Discovery-Related Motions

Discovery-related motions include the following:

1. Motion to extend time for responding to discovery.

2. Motion to the extend discovery period.

3. Motion to reopen discovery.

4. Motion to compel.

5. Motion to determine sufficiency of answer or objection to requests for admission.

6. Motion to withdraw or amend admission.

7. Motion for leave to serve interrogatories that exceed the numerical limit.

8. Motion to take oral deposition abroad.

9. Motion for sanctions relating to discovery.

10. Motion for protective order.


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