CHAPTER 500  STIPULATIONS AND MOTIONS

501  Stipulations

502  Motions--In General

503  Motion to Dismiss for Failure to State a Claim

504  Motion for Judgment on the Pleadings

505  Motion for a More Definite Statement

506  Motion to Strike Matter From Pleading

507  Motion to Amend Pleading

508  Motion for Default Judgment for Failure to Answer

509  Motion to Extend Time; Motion to Reopen Time

510  Motion to Suspend; Motion to Resume

511  Motion to Consolidate

512  Motion to Join or Substitute

513  Motion to Withdraw as Representative; Petition to
     Disqualify

514  Motion to Amend Application or Registration

515  Motion to Remand Application to Examining Attorney

516  Motion to Divide Application

517  Motion to Strike Brief on Motion

518  Motion for Reconsideration of Decision on Motion

519  Motion for Leave to Serve Additional Interrogatories

520  Motion to Take Foreign Deposition Orally

521  Motion to Quash Notice of Deposition

522  Motion for Order re Manner or Place of Document
     Production

523  Motion to Compel Discovery

524  Motion to Test Sufficiency of Response to Admission
     Request

525  Motion to Withdraw or Amend Admissions

526  Motion for a Protective Order

527  Motion for Discovery Sanctions

528  Motion for Summary Judgment

529  Motion for FRCP 11, or Other Non-Discovery, Sanctions

530  Motion to Offer Discovery Deposition of Self or
     Nonparty

531  Motion to Use Testimony From Another Proceeding

532  Motion That Deposition Upon Written Questions Be Taken
     Orally

533  Motion to Strike Notice of Reliance

534  Motion to Strike Trial Testimony Deposition

535  Motion for Judgment for Plaintiff's Failure to Prove
     Case

536  Motion for Order to Show Cause Under Rule 2.134(b)

537  Motion for Order to Show Cause Under Rule 2.128(a)(3)

538  Motion for Leave to Exceed Page Limit for Brief on Case

539  Motion for Leave to File Amicus Brief

540  Motion to Strike Brief on Case

541  Motion for Augmented Panel Hearing

542  Motion to Change Oral Hearing Date; For Additional Time

543  Motion for Leave to Audiotape Oral Hearing

544  Motion for Reconsideration of Final Decision

545  Motion for Relief From Final Judgment

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 which one party may serve upon another
party in a proceeding may exceed the limitation specified in
37 CFR 2.120(d)(1); that the production of documents and
things under the provisions of FRCP 34 may be made in a
specified place and/or manner (see 37 CFR 2.120(d)(2)); to
protective orders (see TBMP 416.02); to the facts in the
case of any party (see 37 CFR 2.123(b)); that the testimony
of witnesses may be submitted in affidavit form (see 37 CFR
2.123(b)); that a deposition may be taken at a particular
place, or in a certain manner (see 37 CFR 2.123(b)); that
the proceeding shall be ended in a specified way (see TBMP
605.03]; etc.

501.02  Filing Stipulations

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 extend
trial dates, stipulations relating to the form of testimony,
stipulations to end a proceeding in a specified way, etc.,
must be filed with the Board.  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 which does not have to be
filed, the better practice is to at least reduce the
stipulation to writing, in order to avoid any
misunderstanding between the parties as to the existence and
terms thereof.

501.03  Form of Stipulation

A stipulation may be signed either by the parties or by
their attorneys or other authorized representatives.

If parties stipulate to extend or reopen a time or times,
the stipulation should specify the closing date for each
rescheduled time.  For example, if parties stipulate to
extend or reopen a defendant's time to file an answer to the
complaint, the stipulation should specify the new due date
for the answer.  If parties stipulate to extend or reopen
testimony periods, or the discovery period and testimony
periods, the stipulation should be submitted in the form
used in a trial order, specifying the closing date for each
period to be reset.  See 37 CFR 2.121(d), and Jan Bell
Marketing Inc. v. Centennial Jewelers Inc., 19 USPQ2d 1636
(TTAB 1990).  Further, any stipulation to extend or reopen a
time or times should be filed in multiple form, i.e., one
copy of the stipulation for the Board proceeding file, plus
as many additional copies as there are parties, so that if
the stipulation is approved, it may be so stamped by the
Board, and an approved copy may be returned promptly to each
party.  See 37 CFR 2.102(d) and 2.121(d), and Jan Bell
Marketing Inc. v. Centennial Jewelers Inc., supra.

The resetting, whether by stipulation or otherwise, of a
party's time to respond to an outstanding request for
discovery will not result in the automatic rescheduling of
the discovery and/or testimony periods--such dates will be
rescheduled only upon stipulation of the parties approved by
the Board, or upon motion granted by the Board, or by order
of the Board.  See 37 CFR 2.121(a), and TBMP 403.04.

502  Motions--In General

502.01  Available Motions

There is a wide range of motions which may be filed in inter
partes proceedings before the Board.  Rule 2.116(a), 37 CFR
2.116(a), provides that "except 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, most 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 and 702.

For example, the Board does not preside at the taking of
testimony.  Instead, all 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.  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.  See Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993);
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992);
Devries v. NCC Corp., 227 USPQ 705 (TTAB 1985); Rainbow
Carpet, Inc. v. Rainbow International Carpet Dyeing &
Cleaning Co., 226 USPQ 718 (TTAB 1985); No Nonsense
Fashions, Inc. v. Consolidated Foods Corp., 226 USPQ 502
(TTAB 1985); Marcal Paper Mills, Inc. v. American Can Co.,
212 USPQ 852 (TTAB 1981); New York State Office of Parks and
Recreation v. Atlas Souvenir & Gift Co., 207 USPQ 954 (TTAB
1980); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ
234 (Comm'r 1976); Curtice-Burns, Inc. v. Northwest
Sanitation Products, Inc., 182 USPQ 572 (Comm'r 1974);
Clairol Inc. v. Holland Hall Products, Inc., 161 USPQ 616
(TTAB 1969); and Cities Service Oil Co. v. Perfection
American, Inc., 157 USPQ 209 (TTAB 1968).  Therefore, the
Board entertains only two motions for judgment relating to
the sufficiency of trial period evidence, namely, the 37 CFR
2.132(a) and (b) motions for involuntary dismissal for
failure of the plaintiff to take testimony (for information
concerning these motions, see TBMP 535).  The motion under
FRCP 41(b) for involuntary dismissal, and the motion under
FRCP 50(a) for a directed verdict, are not available in
Board proceedings.  See Kasco Corp. v. Southern Saw Service
Inc., 27 USPQ2d 1501 (TTAB 1993); Rainbow Carpet, Inc. v.
Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ
718 (TTAB 1985); No Nonsense Fashions, Inc. v. Consolidated
Foods Corp., 226 USPQ 502 (TTAB 1985); Stockpot, Inc. v.
Stock Pot Restaurant, Inc., 220 USPQ 52 (TTAB 1983), aff'd,
Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576,
222 USPQ 665 (Fed. Cir. 1984); Cities Service Oil Co. v.
Perfection American, Inc., 157 USPQ 209 (TTAB 1968); and
Gary D. Krugman, TIPS FROM THE TTAB:  Motions for Judgment
After Commencement of Testimony Periods, 73 Trademark Rep.
76 (1983).

Although it would be impractical to try to discuss every
motion which might be filed in an inter partes proceeding
before the Board, this chapter includes discussions of those
motions which most commonly arise in Board proceedings.

502.02  Form of Motions

37 CFR 2.127(a) Every motion shall be made in writing,
shall contain a full statement of the grounds, and shall
embody or be accompanied by a brief. ...

Every motion must conform to the requirements of 37 CFR
2.127(a).  In addition, a motion should bear the name and
number of the inter partes proceeding in connection with
which it is being filed, and a title describing the nature
of the motion.  See TBMP 106.01.  A motion which does not
bear the correct proceeding number may never be associated
with the file of the proceeding for which it is intended
(and hence may never be considered by the Board).

A motion must be signed by the party filing it, or by the
party's attorney or other authorized representative.  If a
motion is unsigned, it will not be refused consideration if
a signed copy is submitted to the Board within the time
limit set in the notification of this defect by the Board.
See 37 CFR 2.119(e), and TBMP 106.02.

The certificate of mailing by first-class mail procedure
provided under 37 CFR 1.8, and the certificate of "Express
Mail" procedure provided under 37 CFR 1.10, are both
available for the filing of motions.  See 37 CFR 1.8 and
1.10, and TBMP 110 and 111.

Except as noted below, only one copy of a motion need be
filed with the Board.
Every motion filed with the Board must be served upon every
other party to the proceeding, and proof of such service
ordinarily must be made before the motion will be considered
by the Board.  See 37 CFR 2.119(a) and 2.119(b), and TBMP
113.

In the case of a consented motion to extend, or reopen, a
time or times, the motion should specify the closing date
for each rescheduled time.  A consented motion to extend, or
reopen, testimony periods, or the discovery period and
testimony periods, should be submitted in the form used in a
trial order, specifying the closing date for each period to
be reset.  Further, any consented motion to extend, or
reopen, a time or times should be filed in multiple form,
i.e., one copy of the motion for the Board proceeding file,
plus as many additional copies as there are parties, so that
if the motion is approved, it may be so stamped by the
Board, and an approved copy may be returned promptly to each
party.  See 37 CFR 2.102(d) and 2.121(d), and TBMP
501.03 and 509.02.  Cf. TBMP 403.03.

An unconsented motion to extend, or reopen, should be filed
in single (not multiple) form.  If the motion seeks an
extension, or a reopening, of a testimony period or periods,
or of the discovery period and testimony periods, it is
preferable that the motion request that the new period or
periods be set to run from the date of the Board's decision
on the motion.

When a motion other than a motion to extend has been filed,
a party should not presume that the Board will automatically
reset trial dates when it determines the pending motion.
When the Board determines a pending motion, and there is no
motion to extend trial dates, the Board, in the exercise of
its discretion, may or may not reset trial dates.  A party
which wishes to have trial dates reset upon the
determination of a particular motion should file a motion
requesting such action, and specifying the dates which it
wishes to have reset.

502.03  Briefs on Motions

Every motion must embody or be accompanied by a brief.  See
37 CFR 2.127(a).

Briefs on motions should not be filed in bound form.  See
TBMP 106.03.

A brief in response to a motion must be filed within 15 days
from the date of service of the motion (20 days if service
of the motion was made by first-class mail, "Express Mail,"
or overnight courier--see 37 CFR 2.119(c)), unless another
time is specified by the Board; or the time is extended by
stipulation of the parties approved by the Board or by order
of the Board on motion for good cause; or the time is
reopened by stipulation of the parties approved by the Board
or by order of the Board on motion showing excusable
neglect.  See 37 CFR 2.127(a); FRCP 6(b); and TBMP 509.

If a party fails to file a brief in opposition to a motion,
the Board, in its discretion, may treat the motion as
conceded.  See, for example, 37 CFR 2.127(a); Chesebrough-
Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205 USPQ 888
(CCPA 1980); Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB
1990); Western Worldwide Enterprises Group Inc. v. Qinqdao
Brewery, 17 USPQ2d 1137 (TTAB 1990); Coach House Restaurant,
Inc. v. Coach & Six Restaurants, Inc., 223 USPQ 176 (TTAB
1984); Newhoff Blumberg Inc. v. Romper Room Enterprises,
Inc., 193 USPQ 313 (TTAB 1976); General Tire & Rubber Co. v.
Gendelman Rigging & Trucking Inc., 189 USPQ 425 (TTAB 1975);
Johnson & Johnson v. American Hospital Supply Corp., 187
USPQ 478 (TTAB 1975); Gibson Greeting Cards, Inc. v.
Associated Crafts, Inc., 182 USPQ 625 (TTAB 1974); and Joy
Manufacturing Co. v. Robbins Co., 181 USPQ 408 (TTAB 1974).

There is no provision in the Trademark Rules of Practice for
the filing of reply briefs on motions.  On the other hand,
they are not expressly prohibited.  Thus, while the Board
generally discourages the filing of reply briefs on motions
(see SDT Inc. v. Petterson Dental Co., 30 USPQ2d 1707 (TTAB
1994); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d
1156 (TTAB 1991); Strang Corp. v. Stouffer Corp., 16 USPQ2d
1309 (TTAB 1990); Johnston Pump/General Valve Inc. v.
Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989);
Johnston Pump/General Valve Inc. v. Chromalloy American
Corp., 10 USPQ2d 1671 (TTAB 1988); and S & L Acquisition Co.
v. Helene Arpels Inc., 9 USPQ2d 1221 (TTAB 1987)), the Board
may, in its discretion, entertain a reply brief if the Board
finds that such a brief is warranted under the circumstances
of a particular case.  For example, the Board may entertain
a reply brief if, in the Board's opinion, such a brief is
necessary to permit the moving party to respond to new
issues raised in, or new materials submitted with, an
adversary's brief in opposition to the motion; or the issue
to be determined is complex or needs to be further
clarified; or certain arguments against the motion should be
answered so as to assist the Board in arriving at a just
conclusion on the motion.  See Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991);
DataNational Corp. v. BellSouth Corp., 18 USPQ2d 1862 (TTAB
1991); Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989); Avon
Products, Inc. v. MarCon, Ltd., 225 USPQ 977 (TTAB 1985);
Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852
(TTAB 1981); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618
(TTAB 1974); Johnson & Johnson v. Diamond Medical, Inc., 183
USPQ 615 (TTAB 1974); and Goodyear Tire & Rubber Co. V.
Uniroyal, Inc., 183 USPQ 372 (TTAB 1974).

Because the Trademark Rules of Practice do not provide for
the filing of reply briefs on motions, no time limit
therefor is specified.  However, when a reply brief is
filed, it should be filed as promptly as possible;
otherwise, the motion may be determined by the Board before
the reply brief is received.  At the very least, a reply
brief should be filed within the time allowed for filing
other responsive briefs on motions, i.e., within 15 days
from the date of service of the paper to which the brief
responds (20 days if service of the paper to which the brief
responds was made by first-class mail, "Express Mail," or
overnight courier--see 37 CFR 2.119(c)), unless another
time is specified by the Board, or the time is extended by
stipulation of the parties approved by the Board or by order
of the Board on motion for good cause.  See 37 CFR
2.127(a), and Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 229 USPQ 860 (TTAB 1986), rev'd on other
grounds, 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on
remand, 5 USPQ2d 1622 (TTAB 1987), rev'd, 853 F.2d 888, 7
USPQ2d 1628 (Fed. Cir. 1988).  See also Zirco Corp. v.
American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB
1991), and M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070
(TTAB 1990).

502.04  Oral Hearings on Motions

An oral hearing is not held on a motion except by order of
the Board.  See 37 CFR 2.127(a).  It is the practice of the
Board to deny a request for an oral hearing on a motion
unless, in the opinion of the Board, an oral hearing is
necessary to clarify the issue or issues to be decided.
Ordinarily, arguments on a motion may be adequately
presented in the briefs thereon.  Thus, the Board rarely
grants a request for an oral hearing on a motion.  See
Scotch Whiskey Ass'n v. United States Distilled Products
Co., 18 USPQ2d 1391 (TTAB 1991), rev'd on other grounds, 952
F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991); TBC Corp. v.
Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989); Giant Food,
Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB
1986); Canovas v. Venezia 80 S.R.L., 220 USPQ 660 (TTAB
1983); Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ
539 (TTAB 1973); Bacardi & Co. v. Ron Castillo, S.A., 178
USPQ 242 (TTAB 1973); Electric Storage Battery Co. v. Mine
Safety Appliances Co., 140 USPQ 671 (TTAB 1963); and Alfred
Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc.,
124 USPQ 343 (TTAB 1960), rev'd on other grounds, 293 F.2d
685, 130 USPQ 412 (CCPA 1961), cert. denied, 369 U.S. 864,
133 USPQ 702 (1962).  Cf. Federal Trade Commission v.
Formica Corp., 200 USPQ 182 (TTAB 1978) (request for oral
hearing on motion granted).

502.05  Determination of Motions

37 CFR 2.127(c) Interlocutory motions, requests, and other
matters not actually or potentially dispositive of a
proceeding may be acted upon by a single Member of the
Trademark Trial and Appeal Board or by an Attorney-Examiner
of the Board to whom authority so to act has been delegated.

Interlocutory motions which are not actually or potentially
dispositive of a proceeding may be acted upon by a single
Board administrative trademark judge (formerly referred to
as a Board member), or by a single interlocutory attorney to
whom such authority has been delegated.  See 37 CFR
2.127(c), and TBMP 102.03.  Motions which are actually or
potentially dispositive of a proceeding are determined by a
panel of at least three Board members.  See Section 17 of
the Act, 15 U.S.C. 1067.  For information concerning the
remedies available to a party which is dissatisfied with a
decision on a motion, see TBMP 518.  See also TBMP 905.

Motions fall into three categories:  consented, uncontested,
and contested.  If the nonmoving party has consented to a
motion, the motion may be filed either as a stipulation with
the signature of both parties, or as a consented motion in
which the moving party states that the nonmoving party has
given its oral consent thereto (unless written consent is
required under the provisions of 37 CFR 2.106(c),
2.114(c), 2.134(a), or 2.135).  Ordinarily, a consented
motion will be granted by the Board.

If the nonmoving party has not given its consent to a
motion, but does not file a brief in opposition thereto
during the time allowed therefor, the motion may be granted
by the Board as conceded.  See 37 CFR 2.127(a), and TBMP
502.03.

If a motion is contested by the nonmoving party, the Board
will decide the motion on its merits.

When a motion other than a motion to extend has been filed,
a party should not presume that the Board will automatically
reset trial dates when it determines the pending motion.
When the Board determines a pending motion, and there is no
motion to extend trial dates, the Board, in the exercise of
its discretion, may or may not reset trial dates.  A party
which wishes to have trial dates reset upon the
determination of a particular motion should file a motion
requesting such action, and specifying the dates which it
wishes to have reset.

502.06  Attorneys' Fees, etc., on Motions

The Board does not have authority to hold any person in
contempt, or to award attorneys' fees, other expenses, or
damages to any party.  See generally 37 CFR 2.120(f);
2.120(g)(1); 2.120(h); and 2.127(f).  See also Nabisco
Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993);
Scotch Whiskey Ass'n v. United States Distilled Products
Co., 18 USPQ2d 1391 (TTAB 1991), rev'd on other grounds, 952
F.2d 1317, 21 USPQ2d 1145 (Fed. Cir. 1991); Paolo's
Associates Limited Partnership v. Paolo Bodo, 21 USPQ2d 1899
(Comm'r 1990); Fort Howard Paper Co. v. C.V. Gambina Inc., 4
USPQ2d 1552 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2
USPQ2d 1303 (TTAB 1987); Anheuser-Busch, Inc. v. Major Mud &
Chemical Co., 221 USPQ 1191 (TTAB 1984); Fisons Ltd. v.
Capability Brown Ltd., 209 USPQ 167 (TTAB 1980); and
MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB
1979).

502.07  Telephone and Pre-Trial Conferences

502.07(a)  Telephone Conferences

37 CFR 2.120(i)(1) Whenever it appears to the Trademark
Trial and Appeal Board that a motion filed in an inter
partes proceeding is of such nature that its resolution by
correspondence is not practical, the Board may, upon its own
initiative or upon request made by one or both of the
parties, resolve the motion by telephone conference.

Under the circumstances described in 37 CFR 2.120(i)(1), a
motion filed with the Board may be resolved by telephone
conference call involving the parties or their attorneys and
an interlocutory attorney, or an administrative trademark
judge, of the Board.  See 37 CFR 2.120(i)(1).  See also
Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d
1552 (TTAB 1991) Health-Tex Inc. v. Okabashi (U.S.) Corp.,
18 USPQ2d 1409 (TTAB 1990); Fort Howard Paper Co. V. C.V.
Gambina Inc., 4 USPQ2d 1552, 1553 (TTAB 1987); and Abraham
Bogorad, The Impact of the Amended Rules Upon Discovery
Practice Before the Trademark Trial and Appeal Board, 66
Trademark Rep. 28, 37 (1976).  Immediately after the
resolution of a motion by telephone conference, the Board
will issue a written order confirming its decision on the
motion.

The telephone conference procedure is particularly useful
for resolving motions where time is of the essence, such as
a motion to quash a notice of deposition.  However, the
Board will not resolve a motion by telephone conference
until a copy of the motion has been received by the Board.
A copy of the motion should also have been received by every
other party to the proceeding.

To expedite matters, the moving party may hand deliver its
motion, at the offices of the Board, to the Board
interlocutory attorney to whom the case is assigned.
Alternatively, if the motion has been filed with the Board
by some (acceptable) method other than hand delivery to the
interlocutory attorney, but has not yet actually been
received by the Board and/or entered in the proceeding file
for which it is intended, the moving party may call the
interlocutory attorney and request permission to fax a copy
of the motion to the Board.  See TBMP 107.

502.07(b)  Pre-trial Conferences

37 CFR 2.120(i)(2) Whenever it appears to the Trademark
Trial and Appeal Board that questions or issues arising
during the interlocutory phase of an inter partes proceeding
have become so complex that their resolution by
correspondence or telephone conference is not practical and
that resolution would be likely to be facilitated by a
conference in person of the parties or their attorneys with
a Member or Attorney-Examiner of the Board, the Board may,
upon its own initiative or upon motion made by one or both
of the parties, request that the parties or their attorneys,
under circumstances which will not result in undue hardship
for any party, meet with the Board at its offices for a pre-
trial conference.

Because the pre-trial conference procedure necessarily
involves expense for the parties, it is rarely used by the
Board.  However, it may be advantageous in cases where
numerous complex motions are pending (particularly if there
is such hostility between the parties and/or their attorneys
that they are unable to work out a resolution of any of
their differences).  See Abraham Bogorad, The Impact of the
Amended Rules Upon Discovery Practice Before the Trademark
Trial and Appeal Board, 66 Trademark Rep. 28, 37 (1976).

502.08  FRCP 11 Applicable

For information concerning the applicability of the
provisions of FRCP 11 to motions filed in proceedings before
the Board, see TBMP 529.01.

503  Motion to Dismiss for Failure to State a Claim

503.01  Time for Filing

When the defense of failure to state a claim upon which
relief can be granted is raised by means of a motion to
dismiss, the motion must be filed before, or concurrently
with, the movant's answer.  See FRCP 12(b); William & Scott
Co. v. Earl's Restaurants Ltd., 30 USPQ2d 1871 (TTAB 1994);
Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery,
17 USPQ2d 1137 (TTAB 1990); and Hollowform, Inc. v. Delma
Aeh, 180 USPQ 284 (TTAB 1973), aff'd, 515 F.2d 1174, 185
USPQ 790 (CCPA 1975).  When the motion is directed to an
amended pleading, it must be filed before, or concurrently
with, the movant's answer to the amended pleading.  See
William & Scott Co. v. Earl's Restaurants Ltd., supra.

The filing of a motion to dismiss for failure to state a
claim upon which relief can be granted tolls the time for
filing an answer.  See Hollowform, Inc. v. Delma Aeh, supra.
If the motion is filed before the movant's answer, and is
denied, the Board will reset the time for filing an answer.

The defense of failure to state a claim upon which relief
can be granted may be raised after an answer is filed,
provided that it is raised by some means other than a motion
to dismiss.  For example, the defense may be raised, after
an answer is filed, by a motion for judgment on the
pleadings, or by a motion for summary judgment.  See FRCP
12(h)(2), and Wright & Miller, Federal Practice and
Procedure:  Civil 2d 1357 (1990).  See also Western
Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137 (TTAB 1990).

503.02  Nature of Motion

A motion to dismiss for failure to state a claim upon which
relief can be granted is a test solely of the legal
sufficiency of a complaint.  See, for example, Advanced
Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988
F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993); Libertyville
Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594
(TTAB 1992); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216
(TTAB 1990); and Consolidated Natural Gas Co. v. CNG Fuel
Systems, Ltd., 228 USPQ 752 (TTAB 1985).  In order to
withstand such a motion, a pleading need only allege such
facts as would, if proved, establish that the plaintiff is
entitled to the relief sought, that is, that (1) the
plaintiff has standing to maintain the proceeding, and (2) a
valid ground exists for denying the registration sought (in
the case of an opposition), or for cancelling the subject
registration (in the case of a cancellation proceeding).
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); Kelly Services Inc. v.
Greene's Temporaries Inc., 25 USPQ2d 1460 (TTAB 1992);
Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990);
Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228
USPQ 752 (TTAB 1985); Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154
(TTAB 1985); and Springs Industries, Inc. v. Bumblebee Di
Stefano Ottina & C.S.A.S., 222 USPQ 512 (TTAB 1984).

Therefore, a plaintiff served with a motion to dismiss for
failure to state a claim upon which relief can be granted
need not respond by submitting proofs in support of its
pleading.  Whether a plaintiff can actually prove its
allegations is a matter to be determined not upon motion to
dismiss, but rather at final hearing or upon summary
judgment, after the parties have had an opportunity to
submit evidence in support of their respective positions.
See Caron Corp. v. Helena Rubinstein, Inc., 193 USPQ 113
(TTAB 1976); Anheuser-Busch, Inc. v. Martinez, 185 USPQ 434
(TTAB 1975); and Syndicat de la Parfumerie Francaise v.
Scaglia, 173 USPQ 383 (TTAB 1972).  Cf. Flatley v. Trump, 11
USPQ2d 1284 (TTAB 1989).

For purposes of determining a motion to dismiss for failure
to state a claim upon which relief can be granted, all of
the plaintiff's well pleaded allegations must be accepted as
true, and the complaint must be construed in the light most
favorable to the plaintiff.  See Advanced Cardiovascular
Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26
USPQ2d 1038 (Fed. Cir. 1993); Stanspec Co. v. American Chain
& Cable Co., 531 F.2d 563, 189 USPQ 420 (CCPA 1976); Kelly
Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460
(TTAB 1992); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216
(TTAB 1990); and No Nonsense Fashions, Inc. v. Consolidated
Foods Corp., 226 USPQ 502 (TTAB 1985).  Dismissal for
insufficiency is appropriate only if it appears certain that
the plaintiff is entitled to no relief under any set of
facts which could be proved in support of its claim.  See
Advanced Cardiovascular Systems Inc. v. SciMed Life Systems
Inc., supra; Scotch Whiskey Ass'n v. United States Distilled
Products Co., 952 F.2d 1317, 21 USPQ2d 1145 (Fed. Cir.
1991); Stanspec Co. v. American Chain & Cable Co., supra;
Kelly Services Inc. v. Greene's Temporaries Inc., supra;
Space Base Inc. v. Stadis Corp., supra;
Stabilisierrungsfonds fur Wein v. Zimmermann-Graeff KG, 199
USPQ 488 (TTAB 1978); and National Ass'n of Blue Shield
Plans v. Standard Mattress Co., 176 USPQ 29 (TTAB 1972).

Whenever the sufficiency of any complaint has been
challenged by a motion to dismiss, it is the duty of the
Board to examine the complaint in its entirety, construing
the allegations therein liberally, as required by FRCP 8(f),
to determine whether it contains any allegations which, if
proved, would entitle the plaintiff to the relief sought.
See Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d
1711 (TTAB 1993); Delta Tire Corp. v. Sports Car Club of
America, Inc., 186 USPQ 431 (TTAB 1975); and National
Semiconductor Corp. v. Varian Associates, 184 USPQ 62 (TTAB
1974).

503.03  Leave to Amend Defective Pleading

A plaintiff may amend its complaint once as a matter of
course at any time before an answer thereto is served, and
may amend its complaint thereafter with the written consent
of every adverse party or by leave of the Board, which is
freely given when justice so requires.  See TBMP 507.02.
Thus, plaintiffs to proceedings before the Board ordinarily
can, and often do, respond to a motion to dismiss by filing,
inter alia, an amended complaint.  If the amended complaint
corrects the defects noted by the defendant in its motion to
dismiss, and states a claim upon which relief can be
granted, the motion to dismiss normally will be moot.

If no amended complaint is submitted in response to a motion
to dismiss for failure to state a claim upon which relief
can be granted, and the Board finds, upon determination of
the motion, that the complaint fails to state a claim upon
which relief can be granted, the Board generally will allow
the plaintiff an opportunity to file an amended pleading.
See, for example, Miller Brewing Co. v. Anheuser-Busch Inc.,
27 USPQ2d 1711 (TTAB 1993); Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154
(TTAB 1985); and Pure Gold, Inc. v. Syntex (U.S.A.) Inc.,
221 USPQ 151 (TTAB 1983), aff'd, 739 F.2d 624, 222 USPQ 741
(Fed. Cir. 1984).

However, in appropriate cases, that is, where justice does
not require that leave to amend be given, the Board, in its
discretion, may refuse to allow an opportunity, or a further
opportunity, for amendment.  See, for example, FRCP 15(a);
Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151 (TTAB
1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984)
(amendment would serve no useful purpose); and McDonnell
Douglas Corp. v. National Data Corp., 228 USPQ 45 (TTAB
1985) (plaintiff had been allowed two opportunities to
perfect its pleading, and it would not be in the interests
of justice to allow further leave to amend).  Cf. Midwest
Plastic Fabricators Inc. v. Underwriters Laboratories Inc.,
5 USPQ2d 1067 (TTAB 1987); American Hygienic Labs, Inc. v.
Tiffany & Co., 228 USPQ 855 (TTAB 1986); and TBMP 507.02.

503.04  Matters Outside the Pleading

If, on a motion to dismiss for failure to state a claim upon
which relief can be granted, matters outside the pleading
are submitted and not excluded by the Board, the motion will
be treated as a motion for summary judgment under FRCP 56.
Ordinarily, the parties to the proceeding will be notified
that the motion to dismiss is being treated as a motion for
summary judgment, and they will be given reasonable
opportunity to present all material made pertinent to such a
motion by FRCP 56.  See, for example, FRCP 12(b); Advanced
Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988
F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993);  Selva & Sons,
Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641
(Fed. Cir. 1983); Libertyville Saddle Shop Inc. v. E.
Jeffries & Sons Ltd., 22 USPQ2d 1594 (TTAB 1992); Wells
Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156 (TTAB
1991); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ
1040 (TTAB 1985); and Exxon Corp. v. National Foodline
Corp., 196 USPQ 444 (TTAB 1977), aff'd, 579 F.2d 1244, 198
USPQ 407 (CCPA 1978).  Cf. Dunkin' Donuts of America Inc. v.
Metallurgical Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026
(Fed. Cir. 1988).

Such notice may be unnecessary, however, in those cases
where the parties themselves clearly have treated a motion
to dismiss as a motion for summary judgment, and the
nonmoving party has responded to the motion on that basis.
See Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d
1316, 217 USPQ 641 (Fed. Cir. 1983).

504  Motion for Judgment on the Pleadings

504.01  Time for Filing

After the pleadings are closed, but within such time as not
to delay the trial, any party to an inter partes proceeding
before the Board may file a motion for judgment on the
pleadings.  See FRCP 12(c).  In Board inter partes
proceedings, the taking of testimony depositions during the
assigned testimony periods corresponds to the trial in court
proceedings, and the trial period commences with the opening
of the first testimony period.  See 37 CFR 2.116(e); Von
Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5
USPQ2d 1376 (TTAB 1986); and La Maur, Inc. v. Bagwells
Enterprises, Inc., 193 USPQ 234 (Comm'r 1976).  Thus to be
timely, a motion for judgment on the pleadings must be filed
after the pleadings are closed, but prior to the opening of
the first testimony period, as originally set or as reset.
Cf. 37 CFR 2.127(e)(1); Von Schorlemer v. Baron Herm.
Schorlemer Weinkellerei GmbH, supra; Lukens Inc. v. Vesper
Corp., 1 USPQ2d 1299 (TTAB 1986), aff'd, Vesper Corp. v.
Lukens Inc., 831 F.2d 306 (Fed. Cir. 1987); Rainbow Carpet,
Inc. v. Rainbow International Carpet Dyeing & Cleaning Co.,
226 USPQ 718 (TTAB 1985); Buffett v. Chi-Chi's, Inc., 226
USPQ 428 (TTAB 1985); La Maur, Inc. v. Bagwells Enterprises,
Inc., supra; Peterson's Ltd. v. Consolidated Cigar Corp.,
183 USPQ 559 (TTAB 1974); and Curtice-Burns, Inc. v.
Northwest Sanitation Products, Inc., 182 USPQ 572 (Comm'r
1974).

When a motion to dismiss for failure to state a claim upon
which relief can be granted is filed after the answer, but
prior to trial, the motion may be construed by the Board as
a motion for judgment on the pleadings.  See Western
Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137 (TTAB 1990).  Cf. TBMP 503.01.

504.02  Nature of Motion

A motion for judgment on the pleadings is a test solely of
the undisputed facts appearing in all the pleadings,
supplemented by any facts of which the Board will take
judicial notice.  See 2A Moore's Federal Practice 12.15 (2d
ed. 1985).

For purposes of the motion, all well pleaded factual
allegations of the nonmoving party must be accepted as true,
while those allegations of the moving party which have been
denied (or which are taken as denied, pursuant to FRCP 8(d),
because no responsive pleading thereto is required or
permitted) are deemed false.  Conclusions of law are not
taken as admitted.  See Baroid Drilling Fluids Inc. v. Sun
Drilling Products, 24 USPQ2d 1048 (TTAB 1992); International
Telephone and Telegraph Corp. v. International Mobile
Machines Corp., 218 USPQ 1024 (TTAB 1983); 2A Moore's
Federal Practice 12.15 (2d ed. 1985); and Wright & Miller,
Federal Practice and Procedure:  Civil 2d 1367 et seq.
(1990).  All reasonable inferences from the pleadings are
drawn in favor of the nonmoving party.  See Baroid Drilling
Fluids Inc. v. Sun Drilling Products, supra; CBS Inc. v.
Mercandante, 23 USPQ2d 1784 (TTAB 1992); and Wright &
Miller, supra.

A judgment on the pleadings may be granted only where, on
the facts as deemed admitted, there is no genuine issue of
material fact to be resolved, and the moving party is
entitled to judgment, on the substantive merits of the
controversy, as a matter of law.  See Baroid Drilling Fluids
Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992);
CBS Inc. v. Mercandante, 23 USPQ2d 1784 (TTAB 1992);
International Telephone and Telegraph Corp. v. International
Mobile Machines Corp., 218 USPQ 1024 (TTAB 1983); 2A Moore's
Federal Practice 12.15 (2d ed. 1985); and Wright & Miller,
Federal Practice and Procedure:  Civil 2d 1367 et seq.
(1990).

A party may not obtain a judgment on the pleadings if the
nonmoving party's pleading raises issues of fact which, if
proved, would establish the nonmoving party's entitlement to
judgment.  See Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPQ2d 1048 (TTAB 1992), and Wright & Miller,
Federal Practice and Procedure:  Civil 2d 1368 (1990).

504.03  Matters Outside the Pleadings

If, on a motion for judgment on the pleadings, matters
outside the pleading are submitted and not excluded by the
Board, the motion will be treated as a motion for summary
judgment under FRCP 56.  Ordinarily, the parties to the
proceeding will be notified that the motion for judgment on
the pleadings is being treated as a motion for summary
judgment, and they will be given reasonable opportunity to
present all material made pertinent to such a motion by FRCP
56.  See FRCP 12(c), and Dunkin' Donuts of America Inc. v.
Metallurgical Exoproducts Corp., 840 F.2d 917, 6 USPQ2d 1026
(Fed. Cir. 1988).  Cf. Selva & Sons, Inc. v. Nina Footwear,
Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983); Western
Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137 (TTAB 1990); Pegasus Petroleum Corp. v. Mobil
Oil Corp., 227 USPQ 1040 (TTAB 1985); International
Telephone and Telegraph Corp. v. International Mobile
Machines Corp., 218 USPQ 1024 (TTAB 1983); and Exxon Corp.
v. National Foodline Corp., 196 USPQ 444 (TTAB 1977), aff'd,
579 F.2d 1244, 198 USPQ 407 (CCPA 1978).

Such notice may be unnecessary, however, in those cases
where the parties themselves clearly have treated a motion
for judgment on the pleadings as a motion for summary
judgment, and the nonmoving party has responded to the
motion on that basis.  See Selva & Sons, Inc. v. Nina
Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir.
1983).

505  Motion for a More Definite Statement

505.01  Nature of Motion

If, in an inter partes proceeding before the Board, a
pleading to which a responsive pleading must be made is so
vague or ambiguous that a party cannot reasonably be
required to frame a responsive pleading, the responding
party may move for a more definite statement.  See FRCP
12(e), and Wright & Miller, Federal Practice and Procedure:
Civil 2d 1376 (1990).  Cf. CBS Inc. v. Mercandante, 23
USPQ2d 1784, at fn.8 (TTAB 1992).  The motion must point out
the defects complained of, specify the details which the
movant desires to have pleaded, and indicate that the movant
is unable to frame a responsive pleading without the desired
information.  See FRCP 12(e), and Wright & Miller, supra, at
1378.

A motion for a more definite statement is appropriate only
in those cases where the pleading states a claim upon which
relief can be granted, but is so vague or ambiguous that the
movant cannot make a responsive pleading in good faith or
without prejudice to itself.  See Wright & Miller, Federal
Practice and Procedure:  Civil 2d 1376-1377 (1990).  If the
movant believes that the pleading does not state a claim
upon which relief can be granted, its proper remedy is a
motion under FRCP 12(b)(6) to dismiss for failure to state a
claim upon which relief can be granted, not a motion for a
more definite statement.  See Wright & Miller, supra, at
1376.

A motion for a more definite statement may not be used to
obtain discovery.  The only information which a movant may
obtain by this motion is that which it needs to make its
responsive pleading.  See 2A Moore's Federal Practice
12.18[1] (2d ed. 1985), and Wright & Miller, Federal
Practice and Procedure:  Civil 2d 1376-1377 (1990).

505.02  Time for Filing

A motion for a more definite statement, if filed, must be
filed within the time for, and before, the moving party's
responsive pleading.  See FRCP 12(e), and 2A Moore's Federal
Practice 12.19 (2d ed. 1985).  An extension of time to file
a responsive pleading automatically extends the time to file
a motion for a more definite statement, unless the Board
orders otherwise.  See Moore's Federal Practice, supra.

505.03  Failure to Obey Order for More Definite Statement

If the Board, upon motion, issues an order for a more
definite statement, and the order is not obeyed within the
time specified by the Board, the Board may strike the
pleading to which the motion was directed, or make such
order as it deems just.  See FRCP 12(e).

506  Motion to Strike Matter From Pleading

506.01  Nature of Motion

Upon motion, or upon its own initiative, the Board may order
stricken from a pleading any insufficient defense or any
redundant, immaterial, impertinent, or scandalous matter.
See FRCP 12(f).

Motions to strike are not favored, and matter will not be
stricken unless it clearly has no bearing upon the issues in
the case.  See Harsco Corp. v. Electrical Sciences Inc., 9
USPQ2d 1570 (TTAB 1988); Leon Shaffer Golnick Advertising,
Inc. v. William G. Pendill Marketing Co., 177 USPQ 401 (TTAB
1973); 2A Moore's Federal Practice 12.21[2] (2d ed. 1985);
and Wright & Miller, Federal Practice and Procedure:  Civil
2d 1380 (1990).  The primary purpose of pleadings, under
the Federal Rules of Civil Procedure, is to give fair notice
of the claims or defenses asserted.  See TBMP 312.03 and
318.02(b); Harsco Corp. v. Electrical Sciences Inc., supra;
and McDonnell Douglas Corp. v. National Data Corp., 228 USPQ
45 (TTAB 1985).  See also Beth A. Chapman, TIPS FROM THE
TTAB:  Amending Pleadings:  The Right Stuff, 81 Trademark
Rep. 302 (1991).  Thus, the Board, in its discretion, may
decline to strike even objectionable pleadings where their
inclusion will not prejudice the adverse party, but rather
will provide fuller notice of the basis for a claim or
defense.  See Harsco Corp. v. Electrical Sciences Inc.,
supra, and Moore's Federal Practice, supra.  A defense will
not be stricken as insufficient if the insufficiency is not
clearly apparent, or if it raises factual issues that should
be determined on the merits.  See Harjo v. Pro Football
Inc., 30 USPQ2d 1828 (TTAB 1994).

Nevertheless, the Board grants motions to strike in
appropriate cases.  See, for example, American Vitamin
Products, Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992)
(insufficient affirmative defenses stricken); Western
Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137 (TTAB 1990) (pleaded ground for cancellation
stricken because not available, respondent's registration
being more than five years old); Harsco Corp. v. Electrical
Sciences Inc., 9 USPQ2d 1570 (TTAB 1988) (immaterial
allegation stricken; however, other allegations which bore
directly on issues in case, were not prejudicial to
defendant, and gave defendant more complete notice of
plaintiff's claim, not stricken); Continental Gummi-Werke AG
v. Continental Seal Corp., 222 USPQ 822 (TTAB 1984)
(affirmative defense stricken because identical to
counterclaim asserted in same case); W. R. Grace & Co. v.
Arizona Feeds, 195 USPQ 670 (Comm'r 1977) (affirmative
defenses stricken as redundant because same allegations
formed basis for counterclaim asserted in same case); Isle
of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794
(TTAB 1974) (complaint stricken for failure to comply with
requirement of FRCP 10(b) that each numbered paragraph be
limited to a single set of circumstances, but plaintiff
allowed opportunity to submit substitute complaint);
Textron, Inc. v. Gillette Co., 180 USPQ 152 (TTAB 1973)
(allegations in answer which merely reiterated denial of
likelihood of confusion without adding anything of substance
thereto stricken as redundant; however, other allegations
which amplified the denial of likelihood of confusion, and
thus served to apprise plaintiff with greater particularity
of defendant's position, not stricken); Gould Inc. v. Sanyo
Electric Co., 179 USPQ 313 (TTAB 1973) (affirmative defense
attacking validity of plaintiff's pleaded registration
stricken since such an allegation may be entertained only if
presented as counterclaim); S. C. Johnson & Son, Inc. v. GAF
Corp., 177 USPQ 720 (TTAB 1973) (affirmative defense of
failure to state a claim upon which relief can be granted
stricken since complaint did state such a claim); and
McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16
(TTAB 1959) (recital of evidentiary material, namely, list
in defendant's pleading of more than 50 asserted third-party
registrants and users, stricken).  Cf. Leon Shaffer Golnick
Advertising, Inc. v. William G. Pendill Marketing Co., 177
USPQ 401 (TTAB 1973) (allegations pertinent to the issues in
the case not stricken).

506.02  Time for Filing

A motion to strike matter from a pleading should be filed
within the time for, and before, the moving party's
responsive pleading.  See FRCP 12(f), and Western Worldwide
Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137
(TTAB 1990).  If a motion to strike matter from a complaint
is filed with an answer to the complaint, the motion to
strike is construed by the Board as having been filed first.

If no responsive pleading is required, the motion should be
filed within 20 days after service upon the moving party of
the pleading which is the subject of the motion (25 days, if
service of the pleading was made by first-class mail,
"Express Mail," or overnight courier--see 37 CFR 2.119(c)).
See FRCP 12(f).  See also American Vitamin Products, Inc. v.
DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992).

However, the Board, upon its own initiative, and at any
time, may order stricken from a pleading any insufficient
defense or any redundant, immaterial, impertinent, or
scandalous matter.  See FRCP 12(f).  Thus, the Board, in its
discretion, may entertain an untimely motion to strike
matter from a pleading.  See 2A Moore's Federal Practice
12.21[1] (2d ed. 1985); Wright & Miller, Federal Practice
and Procedure:  Civil 2d 1380 (1990); American Vitamin
Products, Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB
1992); and Western Worldwide Enterprises Group Inc. v.
Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990).

506.03  Exhibits Attached to Pleadings

Exhibits submitted with pleadings will not be stricken by
the Board since they are clearly contemplated by 37 CFR
2.104(a), 2.105, 2.112(a), 2.113, and 2.122(c).  However,
except for status and title copies of a plaintiff's pleaded
registrations filed by the plaintiff with its complaint
pursuant to 37 CFR 2.122(d)(1), exhibits attached to
pleadings are not evidence in behalf of the party to whose
pleading they are attached unless they are identified and
introduced in evidence as exhibits during the testimony
period.  See 37 CFR 2.122(c), and TBMP 313.

507  Motion to Amend Pleading

507.01  In General

The primary purpose of pleadings, under the Federal Rules of
Civil Procedure, is to give fair notice of the claims or
defenses asserted.  See TBMP 312.03, 318.02(b), 506.01,
and cases cited in the foregoing sections.  See also Beth A.
Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The Right
Stuff, 81 Trademark Rep. 302 (1991).  Claims or defenses
which are not asserted in the pleadings as originally filed,
or as amended or deemed amended, will not be entertained by
the Board.  See TBMP 321, and cases cited therein.

Amendments to pleadings in inter partes proceedings before
the Board are governed by FRCP 15.  See 37 CFR 2.107,
2.115, and 2.116(a).  Amendments in general are governed by
FRCP 15(a).  Amendments to conform the pleadings to trial
evidence are governed by FRCP 15(b).

A motion for leave to amend a pleading should be accompanied
by a signed copy of the proposed amended pleading.  See Beth
A. Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The
Right Stuff, 81 Trademark Rep. 302 (1991).

507.02  Amendments--General Rule--FRCP 15(a)

A party to an inter partes proceeding before the Board may
amend its pleading once as a matter of course at any time
before a responsive pleading is served.  If the pleading is
one to which no responsive pleading is permitted, it may be
amended once as a matter of course at any time within 20
days after it is served.  See FRCP 15(a).  An amendment
filed as a matter of course need not be accompanied by a
motion for leave to amend.  See Beth A. Chapman, TIPS FROM
THE TTAB:  Amending Pleadings:  The Right Stuff, 81
Trademark Rep. 302 (1991).

Thereafter, a party may amend its pleading only by written
consent of every adverse party or by leave of the Board;
leave must be freely given when justice so requires.  See
FRCP 15(a).  In view thereof, the Board liberally grants
leave to amend pleadings at any stage of a proceeding when
justice so requires, unless entry of the proposed amendment
would violate settled law or be prejudicial to the rights of
the adverse party or parties.  See, for example, Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503
(TTAB 1993); United States Olympic Committee v. O-M Bread
Inc., 26 USPQ2d 1221 (TTAB 1993); Focus 21 International
Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316
(TTAB 1992); Estate of Biro v. Bic Corp., 18 USPQ2d 1382
(TTAB 1991); Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240
(Comm'r 1990); Space Base Inc. v. Stadis Corp., 17 USPQ2d
1216 (TTAB 1990); Microsoft Corp. v. Qantel Business Systems
Inc., 16 USPQ2d 1732 (TTAB 1990); Marmark Ltd. v. Nutrexpa
S.A., 12 USPQ2d 1843 (TTAB 1989); See's Candy Shops Inc. v.
Campbell Soup Co., 12 USPQ2d 1395 (TTAB 1989); Flatley v.
Trump, 11 USPQ2d 1284 (TTAB 1989); Fioravanti v. Fioravanti
Corrado S.R.L., 230 USPQ 36 (TTAB 1986), recon. denied, 1
USPQ2d 1304 (TTAB 1986); American Hygienic Labs, Inc. v.
Tiffany & Co., 228 USPQ 855 (TTAB 1986); Buffett v. Chi-
Chi's, Inc., 226 USPQ 428 (TTAB 1985); Caron Corp. v. Helena
Rubenstein, Inc., 193 USPQ 113 (TTAB 1976); Anheuser-Busch,
Inc. v. Martinez, 185 USPQ 434 (TTAB 1975); Cool-Ray, Inc.
v. Eye Care, Inc., 183 USPQ 618 (TTAB 1974); Mack Trucks,
Inc. v. Monroe Auto Equipment Co., 182 USPQ 511 (TTAB 1974);
Johnson & Johnson v. Cenco Medical Health Supply Corp., 177
USPQ 586 (Comm'r 1973); American Optical Corp. v. American
Olean Tile Co., 168 USPQ 471 (TTAB 1971); and Beth A.
Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The Right
Stuff, 81 Trademark Rep. 302 (1991).  This is so even when a
plaintiff seeks to amend its complaint to plead a claim
other than those stated in the original complaint (see, for
example Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB
1989); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36
(TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986);
American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855
(TTAB 1986); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227
USPQ 1040 (TTAB 1985); Buffett v. Chi-Chi's, Inc., 226 USPQ
428 (TTAB 1985); Gemini Engine Co. v. Solar Turbines Inc.,
225 USPQ 620 (TTAB 1985); Mack Trucks, Inc. v. Monroe Auto
Equipment Co., 182 USPQ 511 (TTAB 1974); and Johnson &
Johnson v. Cenco Medical Health Supply Corp., 177 USPQ 586
(Comm'r 1973)), including a claim based on a registration
issued to or acquired by plaintiff after the filing date of
the original complaint (see Van Dyne-Crotty Inc. v. Wear-
Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991);
Huffy Corp. v. Geoffrey, Inc., 18 USPQ2d 1240 (Comm'r 1990);
Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990);
and Cudahy Co. v. August Packing Co., 206 USPQ 759 (TTAB
1979)).

The timing of a motion for leave to amend under FRCP 15(a)
plays a large role in the Board's determination of whether
the adverse party would be prejudiced by allowance of the
proposed amendment.  See Metromedia Steakhouses Inc. v.
Pondco II Inc., 28 USPQ2d 1205 (TTAB 1993) (amendment by
opposer, just after close of discovery, to assert res
judicata, based on a judgment entered in another case after
the filing of the subject opposition, would not be unfair,
since applicant has been afforded adequate notice, and no
further discovery will be necessary); Commodore Electronics
Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) (no
prejudice to applicant--discovery still open when motion
filed, and opposer agreed to allow applicant further time
for follow-up discovery on new claim); United States Olympic
Committee v. O-M Bread Inc., 26 USPQ2d 1221 (TTAB 1993)
(applicant would not be prejudiced because proceeding still
in pre-trial stage and discovery had been extended); Focus
21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha,
22 USPQ2d 1316 (TTAB 1992) (motion to amend filed prior to
opening of petitioner's testimony period); Space Base Inc.
v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990) (where opposer
filed motion to amend its pleading during its testimony
period, motion nevertheless granted since the interests of
justice and judicial economy would best be served thereby,
and since any prejudice suffered by applicant could be
mitigated by reopening discovery solely for applicant);
Microsoft Corp. v. Qantel Business Systems Inc., 16 USPQ2d
1732 (TTAB 1990) (ordinarily, leave to amend should be
granted whenever, inter alia, doing so will not unduly delay
trial--here, proceeding was still in the discovery stage,
and respondent had not shown that any undue prejudice would
result from the amendment of the petition to cancel);
Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989) (since cases
were still in the discovery stage, respondent would not be
prejudiced by allowance of amendment); Buffett v. Chi-Chi's,
Inc., 226 USPQ 428 (TTAB 1985) (no substantial prejudice to
applicant by allowance of amendment--proceeding remained in
a fairly early stage); Caron Corp. v. Helena Rubenstein,
Inc., 193 USPQ 113 (TTAB 1976) (neither party had as yet
taken testimony); Anheuser-Busch, Inc. v. Martinez, 185 USPQ
434 (TTAB 1975) (since proceeding was still in the pre-trial
stage, amendment of the pleadings could not prejudice
opposer); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618
(TTAB 1974) (since, inter alia, the trial period had not yet
commenced, no prejudice to applicant); Mack Trucks, Inc. v.
Monroe Auto Equipment Co., 182 USPQ 511 (TTAB 1974)
(applicant would not be unduly prejudiced by entry of the
proposed amendment since no testimony had as yet been
taken); American Optical Corp. v. American Olean Tile Co.,
168 USPQ 471 (TTAB 1971) (where applicant filed motion to
amend its pleading after the close of opposer's testimony
period, but before the opening of applicant's testimony
period, Board found that opposer would not be prejudiced by
entry of the amendment if, inter alia, opposer was allowed
to take discovery thereon); and Beth A. Chapman, TIPS FROM
THE TTAB:  Amending Pleadings:  The Right Stuff, 81
Trademark Rep. 302 (1991).  Cf. Midwest Plastic Fabricators
Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB
1989), aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990)
(where plaintiff filed motion to amend after close of its
testimony period, motion denied as untimely to extent it
sought amendment under FRCP 15(a)); and Long John Silver's,
Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982) (opposer's
motion to amend to rely on 8 additional marks, shortly after
the close of the discovery period, denied where opposer
knew, or should have known, of the existence of the marks at
the time the opposition was filed, and the discovery period
had already been extended several times at opposer's request-
-allowance of the amendment at that late date would be
prejudicial to applicant).

The timing of a motion for leave to amend is particularly
important in the case of a motion for leave to amend to
assert a counterclaim for cancellation of one or more of the
plaintiff's pleaded registrations.  If grounds for the
counterclaim are known to the defendant when its answer to
the complaint is filed, the counterclaim should be pleaded
with or as part of the answer.  If, during the proceeding,
but after answer, the defendant learns of grounds for a
counterclaim to cancel a registration pleaded by the
plaintiff, the counterclaim should be pleaded promptly after
the grounds therefor are learned.  See 37 CFR
2.106(b)(2)(i) and 2.114(b)(2)(i); TBMP 319.04, and cases
cited therein; and Beth A. Chapman, TIPS FROM THE TTAB:
Amending Pleadings:  The Right Stuff, 81 Trademark Rep. 302
(1991).

In granting a motion for leave to amend under FRCP 15(a),
the Board may, in its discretion, reopen the discovery
period so as to avoid any prejudice to the adverse party by
reason of the amendment.  See Space Base Inc. v. Stadis
Corp., 17 USPQ2d 1216 (TTAB 1990); Buffett v. Chi-Chi's,
Inc., 226 USPQ 428 (TTAB 1985); Anheuser-Busch, Inc. v.
Martinez, 185 USPQ 434 (TTAB 1975); American Optical Corp.
v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971); and
Beth A. Chapman, TIPS FROM THE TTAB:  Amending Pleadings:
The Right Stuff, 81 Trademark Rep. 302 (1991).

A proposed amendment need not of itself set forth a claim or
defense; a proposed amendment may serve simply to amplify
allegations already included in the moving party's pleading.
See Avedis Zildjian Co. v. D. H. Baldwin Co., 180 USPQ 539
(TTAB 1973).  However, where the moving party seeks to add a
new claim or defense, and the proposed pleading thereof is
legally insufficient, or would serve no useful purpose, the
Board normally will deny the motion for leave to amend.  See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503
(TTAB 1993); CBS Inc. v. Mercandante, 23 USPQ2d 1784 (TTAB
1992); Microsoft Corp. v. Qantel Business Systems Inc., 16
USPQ2d 1732 (TTAB 1990); Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 5 USPQ2d 1067 (TTAB 1987);
American Hygienic Labs, Inc. v. Tiffany & Co., 228 USPQ 855
(TTAB 1986); and W. R. Grace & Co. v. Arizona Feeds, 195
USPQ 670 (Comm'r 1977).  Cf. TBMP 503.03.

507.03  Amendments to Conform to the Evidence--FRCP 15(b)

507.03(a)  During Trial After Objection to Trial Evidence

If evidence is objected to at trial on the ground that it is
not within the issues raised by the pleadings, the Board,
upon motion, may allow the pleadings to be amended, and will
do so freely when the presentation of the merits of the case
will be subserved thereby and the objecting party fails to
satisfy the Board that the admission of such evidence would
prejudice it in maintaining its action or defense upon the
merits.  See FRCP 15(b), and Ercona Corp. v. JENAer Glaswerk
Schott & Gen., 182 USPQ 573 (TTAB 1974).

The motion for leave to amend should be filed promptly after
the objection is made.  See Beth A. Chapman, TIPS FROM THE
TTAB:  Amending Pleadings:  The Right Stuff, 81 Trademark
Rep. 302 (1991).  If the motion is granted, the Board may
extend the objecting party's testimony period, or reopen
discovery for that party, if necessary to enable the
objecting party to meet the evidence which was the subject
of the objection.  See FRCP 15(b).  Cf. Buffett v. Chi-
Chi's, Inc., 226 USPQ 428 (TTAB 1985); Anheuser-Busch, Inc.
v. Martinez, 185 USPQ 434 (TTAB 1975); and American Optical
Corp. v. American Olean Tile Co., 168 USPQ 471 (TTAB 1971).

507.03(b)  To Add Issues Tried by Express or Implied Consent

When issues not raised by the pleadings are tried by the
express or implied consent of the parties, the Board will
treat them in all respects as if they had been raised in the
pleadings.  Any amendment of the pleadings necessary to
cause them to conform to the evidence and to raise the
unpleaded issues may be made upon motion of any party at any
time, even after judgment, but failure to so amend will not
affect the result of the trial of these issues.  See, for
example, FRCP 15(b); Colony Foods, Inc. v. Sagemark, Ltd.,
735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984); P.A.B.
Produits et Appareils de Beaute v. Satinine Societa In Nome
Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801
(CCPA 1978); Kasco Corp. v. Southern Saw Service Inc., 27
USPQ2d 1501 (TTAB 1993); Riceland Foods Inc. v. Pacific
Eastern Trading Corp., 26 USPQ2d 1883 (TTAB 1993); Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233
(TTAB 1992); Reflange Inc. v. R-Con International, 17 USPQ2d
1125 (TTAB 1990); Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989),
aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990);
Laboratoires du Dr. N.G. Payot Etablissement v. Southwestern
Classics Collection Ltd., 3 USPQ2d 1600 (TTAB 1987); Devries
v. NCC Corp., 227 USPQ 705 (TTAB 1985); Medtronic, Inc. v.
Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984); Color Key
Corp. v. Color 1 Associates, Inc., 219 USPQ 936 (TTAB 1983);
ABC Moving Co. v. Brown, 218 USPQ 336 (TTAB 1983); Key West
Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168 (TTAB 1982); Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852 (TTAB 1981); Trans Union Corp. v. Trans
Leasing International, Inc., 200 USPQ 748 (TTAB 1978);
Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB
1977); Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ
585 (TTAB 1977); Bekaert Steel Wire Corp. v. S.p.A. Officine
Maccaferri Gia' Raffaele Maccaferri & Figli, 196 USPQ 558
(TTAB 1977); Bellanca Aircraft Corp. v. Bellanca Aircraft
Engineering, Inc., 190 USPQ 158 (TTAB 1976); Taffy's of
Cleveland, Inc. v. Taffy's, Inc., 189 USPQ 154 (TTAB 1975);
Dap, Inc. v. Litton Industries, Inc., 185 USPQ 177 (TTAB
1975); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105
(TTAB 1973), aff'd without opinion, Uptowner Inns, Inc. v.
Downtowner Corp., 508 F.2d 847, 183 USPQ 427 (CCPA 1974);
Smith Kline & French Laboratories v. USV Pharmaceutical
Corp., 175 USPQ 666 (TTAB 1972); Conwood Corp. v. Loew's
Theatres, Inc., 173 USPQ 829 (TTAB 1972); and Beth A.
Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The Right
Stuff, 81 Trademark Rep. 302 (1991).

Implied consent to the trial of an unpleaded issue can be
found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered
in support of the issue.  See, for example, Colony Foods,
Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed.
Cir. 1984); P.A.B. Produits et Appareils de Beaute v.
Satinine Societa In Nome Collettivo di S.A. e.M. Usellini,
570 F.2d 328, 196 USPQ 801 (CCPA 1978); Laboratoires du Dr.
N.G. Payot Etablissement v. Southwestern Classics Collection
Ltd., 3 USPQ2d 1600 (TTAB 1987); Devries v. NCC Corp., 227
USPQ 705 (TTAB 1985); Color Key Corp. v. Color 1 Associates,
Inc., 219 USPQ 936 (TTAB 1983); ABC Moving Co. v. Brown, 218
USPQ 336 (TTAB 1983); Key West Fragrance & Cosmetic Factory,
Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982); Marcal Paper
Mills, Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981);
Bellanca Aircraft Corp. v. Bellanca Aircraft Engineering,
Inc., 190 USPQ 158 (TTAB 1976); Taffy's of Cleveland, Inc.
v. Taffy's, Inc., 189 USPQ 154 (TTAB 1975); Downtowner Corp.
v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973), aff'd
without opinion, Uptowner Inns, Inc. v. Downtowner Corp.,
508 F.2d 847, 183 USPQ 427 (CCPA 1974); and Beth A. Chapman,
TIPS FROM THE TTAB:  Amending Pleadings:  The Right Stuff,
81 Trademark Rep. 302 (1991).

Inasmuch as the Board does not read trial testimony or
examine other trial evidence prior to final hearing, it is
the practice of the Board, when confronted with a FRCP 15(b)
motion to amend the pleadings to include an issue assertedly
tried by express or implied consent, to defer determination
of the motion until final hearing.  See Devries v. NCC
Corp., 227 USPQ 705 (TTAB 1985); Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852 (TTAB 1981); New York State
Office of Parks and Recreation v. Atlas Souvenir & Gift Co.,
207 USPQ 954 (TTAB 1980); Plus Products v. Redken
Laboratories, Inc., 199 USPQ 111 (TTAB 1978); and Beth A.
Chapman, TIPS FROM THE TTAB:  Amending Pleadings:  The Right
Stuff, 81 Trademark Rep. 302 (1991).  Cf. TBMP 502.01.

508  Motion for Default Judgment for Failure to Answer

If a defendant fails to file an answer to a complaint during
the time allowed therefor, the Board, on its own initiative,
may issue a notice of default allowing the defendant 20 days
from the mailing date of the notice in which to show cause
why default judgment should not be entered against it.  If
the defendant fails to file a response to the notice, or
files a response which does not show good cause, default
judgment may be entered against it.  See 37 CFR 2.106(a)
and 2.114(a); FRCP 55(a) and 55(b); and TBMP 317.

The issue of whether default judgment should be entered
against a defendant, for failure to file a timely answer to
the complaint, may also be raised by means other than the
Board's issuance of a notice of default.  For example, the
plaintiff, realizing that the defendant is in default, may
file a motion for default judgment (in which case the motion
may serve as a substitute for the Board's issuance of a
notice of default); or the defendant itself, realizing that
it is in default, may file a motion asking that its late-
filed answer be accepted.  However the issue is raised, the
standard for determining whether default judgment should be
entered against the defendant, for its failure to file a
timely answer to the complaint, is the FRCP 55(c) standard,
which requires that the defendant show good cause why
default judgment should not be entered against it.  See TBMP
317, and authorities cited therein.

If a plaintiff files a motion for default judgment for
failure of the defendant to file a timely answer to the
complaint, and the defendant fails to file a brief in
opposition to the plaintiff's motion, default judgment may
be entered against defendant.  See FRCP 55(b) and 55(c), and
37 CFR 2.127(a).

If a defendant files an answer after the due date therefor,
but before the issuance by the Board of a notice of default,
and also files a motion asking that the late-filed answer be
accepted, and the plaintiff fails to file a brief in
opposition to the defendant's motion, the motion may be
granted as conceded.  See 37 CFR 2.127(a), and TBMP
502.03.

For further information concerning default judgment for
failure of the defendant to file a timely answer to the
complaint, see TBMP 317.

509  Motion to Extend Time; Motion to Reopen Time

FRCP 6(b) Enlargement.  When by these rules or by a notice
given thereunder or by order of court an act is required or
allowed to be done at or within a specified time, the court
for cause shown may at any time in its discretion (1) with
or without motion or notice order the period enlarged if
request therefor is made before the expiration of the period
originally prescribed or as extended by a previous order, or
(2) upon motion made after the expiration of the specified
period permit the act to be done where the failure to act
was the result of excusable neglect; but it may not extend
the time for taking any action under Rules ... 60(b) ...
except to the extent and under the conditions stated in
them.

509.01  Nature of Motions

A party may file a motion for an enlargement of the time in
which an act is required or allowed to be done.  If the
motion is filed prior to the expiration of the period as
originally set or previously extended, the motion is a
motion to extend, and the moving party need only show good
cause for the requested extension.  If, however, the motion
is not filed until after the expiration of the period as
originally set or previously extended, the motion is a
motion to reopen, and the moving party must show that its
failure to act during the time allowed therefor was the
result of excusable neglect.  See, for example, FRCP 6(b);
Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18
USPQ2d 1710 (Fed. Cir. 1991); American Vitamin Products,
Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB 1992); Sunkist
Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB
1985); Coach House Restaurant, Inc. v. Coach & Six
Restaurants, Inc., 223 USPQ 176 (TTAB 1984); Fort Howard
Paper Co. v. Kimberly-Clark Corp., 216 USPQ 617 (TTAB 1982);
Terra Products Corp. v. Comez, 206 USPQ 1033 (TTAB 1979);
and Litton Business Systems, Inc. v. JG Furniture Co., 188
USPQ 509 (TTAB 1976).

For further information concerning good cause for a motion
to extend, see Chesebrough-Pond's Inc. v. Faberge, Inc., 618
F.2d 776, 205 USPQ 888 (CCPA 1980); American Vitamin
Products, Inc. v. DowBrands Inc., 22 USPQ2d 1313 (TTAB
1992); Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 10 USPQ2d 1671 (TTAB 1988); Luehrmann v.
Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB 1987); Sunkist Growers,
Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985);
Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582 (TTAB
1976); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689
(TTAB 1975); and Ortho Pharmaceutical Corp. v. Schattner,
184 USPQ 556 (TTAB 1975).

For further information concerning excusable neglect for a
motion to reopen, see Hewlett-Packard Co. v. Olympus Corp.,
931 F.2d 1551, 18 USPQ2d 1710 (Fed. Cir. 1991); American
Vitamin Products, Inc. v. DowBrands Inc., 22 USPQ2d 1313
(TTAB 1992); Hobie Designs Inc. v. Fred Hayman Beverly Hills
Inc., 14 USPQ2d 2064 (TTAB 1990); Consolidated Foods Corp.
v. Berkshire Handkerchief Co., 229 USPQ 619 (TTAB 1986);
Coach House Restaurant, Inc. v. Coach & Six Restaurants,
Inc., 223 USPQ 176 (TTAB 1984); Fort Howard Paper Co. v.
Kimberly-Clark Corp., 216 USPQ 617 (TTAB 1982); Terra
Products Corp. v. Comez, 206 USPQ 1033 (TTAB 1979); Riko
Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm'r 1977);
Marriott Corp. v. Pappy's Enterprises, Inc., 192 USPQ 735
(TTAB 1976); Litton Business Systems, Inc. v. J. G.
Furniture Co., 190 USPQ 428 (TTAB 1976), recon. denied, 190
USPQ 431 (TTAB 1976); Litton Business Systems, Inc. v. JG
Furniture Co., 188 USPQ 509 (TTAB 1976); Volkswagenwerk
Aktiengesellschaft v. Advance Welding & Mfg. Corp., 184 USPQ
367 (TTAB 1974); Ortho Pharmaceutical Corp. v. Hudson
Pharmaceutical Corp., 178 USPQ 429 (TTAB 1973); Perfect Film
& Chemical Corp. v. Society Ordinastral, 172 USPQ 696 (TTAB
1972); American Home Products Corp. v. David Kamenstein,
Inc., 172 USPQ 376 (TTAB 1971); Wilson Sporting Goods Co. v.
Northwestern Golf Co., 169 USPQ 510 (TTAB 1971); and Clairol
Inc. v. Holland Hall Products, Inc., 161 USPQ 616 (TTAB
1969).  Cf. Williams v. Five Platters, Inc., 510 F.2d 963,
184 USPQ 744 (CCPA 1975), and In re Sotheby's Inc., 18
USPQ2d 1969 (Comm'r 1989).

If a party files a motion to reopen its testimony period to
introduce newly discovered evidence, the moving party must
show not only that the proposed evidence has been newly
discovered, but also that the evidence could not have been
discovered earlier through the exercise of reasonable
diligence.  See, for example Rowell Laboratories, Inc. v.
Canada Packers Inc., 215 USPQ 523 (TTAB 1982); Oxford
Pendaflex Corp. v. Roladex Corp., 204 USPQ 249 (TTAB 1979);
Wilson Sporting Goods Co. v. Northwestern Golf Co., 169 USPQ
510 (TTAB 1971); and United States Plywood Corp. v.
Modiglass Fibers, Inc., 125 USPQ 144 (TTAB 1960).  See also
Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ
354 (TTAB 1984); Tektronix, Inc. v. Daktronix, Inc., 187
USPQ 588 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693
(CCPA 1976); and Chemetron Corp. v. Self-Organizing Systems,
Inc., 166 USPQ 495 (TTAB 1970).

509.02  Form and Determination of Motions

If a motion to extend or a motion to reopen is made with the
consent of the nonmoving party, the motion may be filed
either as a stipulation with the signature of both parties,
or as a consented motion in which the moving party states
that the nonmoving party has given its oral consent thereto.
Ordinarily, a consented motion to extend or reopen will be
granted by the Board.

Any consented motion to extend or reopen a time or times
should be filed in multiple form, i.e., one copy of the
stipulation for the Board proceeding file, plus as many
additional copies as there are parties, so that if the
stipulation is approved, it may be so stamped by the Board,
and an approved copy may be returned promptly to each party.
See 37 CFR 2.102(d) and 2.121(d), and TBMP 501.03 and
502.02.  Cf. TBMP 403.03.

Further, a consented motion to extend or reopen a time or
times should specify the closing date for each rescheduled
time.  A consented motion to extend or reopen testimony
periods, or the discovery period and testimony periods,
should be submitted in the form used in a trial order,
specifying the closing date for each period to be reset.
See 37 CFR 2.121(d).  If a consented motion to extend or
reopen testimony periods, or the discovery period and
testimony periods, specifies only the closing date for the
first period to be reset, and the motion is approved, the
Board will automatically reschedule the subsequent periods
as well.  See  37 CFR 2.121(a).  However, receipt by the
parties of the Board's action on the motion will be delayed,
because the Board will not be able to simply stamp the
motion "Approved" and return the copies to the parties, but
rather will have to prepare a letter indicating that the
motion has been approved and specifying the closing date for
each period being rescheduled.

When a motion to extend, or a motion to reopen, is filed
without the consent of the nonmoving party, it should be
filed in single (not multiple) form.  The Board normally
will defer action on the motion until after the expiration
of the nonmoving party's time to file a brief in opposition
to the motion.  Cf.  37 CFR 2.127(a).  If the nonmoving
party fails to file a brief in opposition thereto, the
motion normally will be granted by the Board as conceded.
See  37 CFR 2.127(a), and TBMP 502.03.  If the motion is
contested by the nonmoving party, the Board will decide the
motion on its merits.

A party has no right to assume that its motion to extend
(much less a motion to reopen) made without the consent of
the adverse party will always be granted automatically.  See
Chesebrough-Pond's Inc. v. Faberge, Inc., 618 F.2d 776, 205
USPQ 888 (CCPA 1980).  Moreover, while the Board attempts,
where possible, to notify the parties of its decision on an
unconsented motion to extend, or a motion to reopen, prior
to expiration of the enlargement sought, the Board is under
no obligation to do so, and in many cases cannot.  See
Chesebrough-Pond's Inc. v. Faberge, Inc., supra.  Cf. TBMP
202.01; In re Holland American Wafer Co., 737 F.2d 1015,
222 USPQ 273 (Fed. Cir. 1984); In re L.R. Sport Inc., 25
USPQ2d 1533 (Comm'r 1992); and In re Application Papers
Filed November 12, 1965, 152 USPQ 194 (Comm'r 1966).
Therefore, it is preferable, at least where an unconsented
motion seeks an extension or a reopening of a testimony
period or periods, or of the discovery period and testimony
periods, that the motion request that the new period or
periods be set to run from the date of the Board's decision
on the motion.

The resetting of the closing date for discovery will result
in the automatic rescheduling of the testimony periods by
the Board.  However, the resetting of a party's time to
respond to an outstanding request for discovery will not
result in the automatic rescheduling of the discovery and/or
testimony periods--such dates will be rescheduled only upon
stipulation of the parties approved by the Board, or upon
motion granted by the Board, or by order of the Board.  See
37 CFR 2.121(a).

When a motion other than a motion to extend has been filed,
a party should not presume that the Board will automatically
reset trial dates when it determines the pending motion.
When the Board determines a pending motion, and there is no
motion to extend trial dates, the Board, in the exercise of
its discretion, may or may not reset trial dates.  A party
which wishes to have trial dates reset upon the
determination of a particular motion should file a motion
requesting such action, and specifying the dates which it
wishes to have reset.

Extensions of time to seek judicial review of a final
decision of the Board (whether by way of appeal to the Court
of Appeals for the Federal Circuit or by way of a civil
action) may be granted by the Commissioner upon written
request, which should be directed to the Office of the
Solicitor (not the Board).  See  37 CFR 2.145(e); Appeals
to the Federal Circuit from PTO, 1120 TMOG 22 (November 13,
1990); and TBMP 902.02 and 903.04.

510  Motion to Suspend; Motion to Resume

37 CFR 2.117 Suspension of proceedings.
(a) Whenever it shall come to the attention of the Trademark
Trial and Appeal Board that parties to a pending case are
engaged in a civil action which may be dispositive of the
case, proceedings before the Board may be suspended until
termination of the civil action.

(b) Whenever there is pending, at the time when the question
of the suspension of proceedings is raised, a motion which
is potentially dispositive of the case, the motion may be
decided before the question of suspension is considered.

(c) Proceedings may also be suspended, for good cause, upon
motion or a stipulation of the parties approved by the
Board.

510.01  In General

Flowing from the Board's inherent power to schedule
disposition of the cases on its docket is the power to stay
proceedings, which may be exercised by the Board upon its
own initiative, upon motion, or upon stipulation of the
parties approved by the Board.  See 37 CFR 2.117, and
Opticians Ass'n of America v. Independent Opticians of
America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021 (D.N.J.
1990), rev'd on other grounds, 920 F.2d 187, 17 USPQ2d 1117
(3d Cir. 1990).  Some of the most common reasons for
suspension are discussed below.

510.02  Suspension Pending Outcome of Another Proceeding

510.02(a)  Suspension

Whenever it comes to the attention of the Board that the
parties to a case pending before it are involved in a civil
action which may be dispositive of the Board case,
proceedings before the Board may be suspended until final
determination of the civil action.  See, for example, 37 CFR
2.117(a); General Motors Corp. v. Cadillac Club Fashions
Inc., 22 USPQ2d 1933 (TTAB 1992); Toro Co. v. Hardigg
Industries, Inc., 187 USPQ 689 (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 (TTAB 1974), petition denied, 181 USPQ 779 (Comm'r
1974); Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB
1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ
805 (TTAB 1971); Squirrel Brand Co. v. Barnard Nut Co., 101
USPQ 340 (Comm'r 1954); Townley Clothes, Inc. v. Goldring,
Inc., 100 USPQ 57 (Comm'r 1953); and David B. Allen, TIPS
FROM THE TTAB:  Impact of TTAB Decisions in Civil
Litigation:  The Alphonse-Gaston Act, 74 Trademark Rep. 180
(1984).

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.  To the extent that a civil action in a Federal
district court involves issues in common with those in a
proceeding before the Board, the decision of the Federal
district court is binding upon the Board, while the decision
of the Board is not binding upon the court.  See, for
example, Goya Foods Inc. v. Tropicana Products Inc., 846
F.2d 848, 6 USPQ2d 1950 (2d Cir.1988); American Bakeries Co.
v. Pan-O-Gold Baking Co., 650 F Supp 563, 2 USPQ2d 1208
(D.Minn. 1986); Toro Co. v. Hardigg Industries, Inc., 187
USPQ 689 (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 (TTAB 1974), petition
denied, 181 USPQ 779 (Comm'r 1974); Tokaido v. Honda
Associates Inc., 179 USPQ 861 (TTAB 1973); Whopper-Burger,
Inc. v. Burger King Corp., 171 USPQ 805 (TTAB 1971);
Tuvache, Inc. v. Emilio Pucci Perfumes International, Inc.,
263 F. Supp. 104, 152 USPQ 574 (S.D.N.Y. 1967); Marc A.
Bergsman, TIPS FROM THE TTAB: The Effect of Board Decisions
in Civil Actions; Claim Preclusion and Issue Preclusion in
Board Proceedings, 80 Trademark Rep. 540 (1990); and David
B. Allen, TIPS FROM THE TTAB:  Impact of TTAB Decisions in
Civil Litigation:  The Alphonse-Gaston Act, 74 Trademark
Rep. 180 (1984).

However, the Board may also, in its discretion, suspend
pending the final determination of another Board proceeding
in which the parties are involved, or a civil action pending
between the parties in a state court (see Mother's
Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221
USPQ 394 (Fed. Cir. 1983), and Argo & Co. v. Carpetsheen
Manufacturing, Inc., 187 USPQ 366 (TTAB 1975)), 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 (see Marie Claire Album
S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993),
and Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36
(TTAB 1986), recon. denied, 1 USPQ2d 1304 (TTAB 1986)) or
even another proceeding in which only one of the parties is
involved (see Argo & Co. v. Carpetsheen Manufacturing, Inc.,
supra).

Ordinarily, the Board will suspend proceedings in the case
before it if the final determination of the other proceeding
will have a bearing on the issues before the Board.  See,
for example Other Telephone Co. v. Connecticut National
Telephone Co., 181 USPQ 125 (TTAB 1974), petition denied,
181 USPQ 779 (Comm'r 1974); Tokaido v. Honda Associates
Inc., 179 USPQ 861 (TTAB 1973); Whopper-Burger, Inc. v.
Burger King Corp., 171 USPQ 805 (TTAB 1971); and Martin
Beverage Co. v. Colita Beverage Corp., 169 USPQ 568 (TTAB
1971).  But see E.I. du Pont de Nemours & Co. v. G.C. Murphy
Co., 199 USPQ 807 (TTAB 1978), and Ortho Pharmaceutical
Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429 (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).

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, nor do parties or their attorneys.  See
Opticians Ass'n of America v. Independent Opticians of
America Inc., 734 F. Supp. 1171, 14 USPQ2d 2021 (D.N.J.
1990), rev'd on other grounds, 920 F.2d 187, 17 USPQ2d 1117
(3d Cir. 1990), and Martin Beverage Co. v. Colita Beverage
Corp., 169 USPQ 568 (TTAB 1971).  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, the Board will go forward with its
proceeding.  See David B. Allen, TIPS FROM THE TTAB:  Impact
of TTAB Decisions in Civil Litigation:  The Alphonse-Gaston
Act, 74 Trademark Rep. 180 (1984).

When a motion to suspend pending the outcome of a civil
action is filed, the Board normally will require that a copy
of the pleadings from the civil action be submitted, so that
the Board can ascertain whether the final determination of
the civil action will have a bearing on the issues before
the Board.  See SCOA Industries Inc. v. Kennedy & Cohen,
Inc., 188 USPQ 411 (TTAB 1975).  This requirement ordinarily
is waived if the parties stipulate to the suspension.

The Board does not usually require that 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.  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 will have a bearing on the issues before
the Board.  See Notice of Final Rulemaking published in the
Federal Register on May 23, 1983 at 48 FR 23122, 23129, and
in the Official Gazette of June 21, 1983 at 1031 TMOG 13,
19.

If there is pending, at the time when the question of
suspension of proceedings before the Board is raised, a
motion which is potentially dispositive of the case, the
potentially dispositive motion may be decided before the
question of suspension is considered.  See 37 CFR 2.117(b),
and Notice of Final Rulemaking published in the Federal
Register on May 23, 1983 at 48 FR 23122, 23129, and in the
Official Gazette of June 21, 1983 at 1031 TMOG 13, 20.  Cf.
Allegro High Fidelity, Inc. v. Zenith Radio Corp., 197 USPQ
550 (TTAB 1977); Continental Specialties Corp. v.
Continental Connector Corp., 192 USPQ 449 (TTAB 1976); and
Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB
1975), rev'd on other grounds, 549 F.2d 785, 193 USPQ 149
(CCPA 1977) (NOTE:  each of these cases was decided prior to
the adoption, in 1983, of 37 CFR 2.117(b)).  The purpose of
this practice 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.  See
David B. Allen, TIPS FROM THE TTAB:  Impact of TTAB
Decisions in Civil Litigation:  The Alphonse-Gaston Act, 74
Trademark Rep. 180 (1984).  However, the Board, in its
discretion, may elect to suspend without first deciding the
potentially dispositive motion.  See Notice of Final
Rulemaking published in the Federal Register on May 23, 1983
at 48 FR 23122, 23129, and in the Official Gazette of June
21, 1983 at 1031 TMOG 13, 20.

510.02(b)  Resumption

When a proceeding before the Board has been suspended
pending the outcome of another proceeding, and that other
proceeding has been finally determined, the interested party
should file a paper notifying the Board of the disposition
of the other proceeding, and requesting that further
appropriate action be taken in the Board proceeding (i.e.,
usually, the interested party requests, as a result of the
decision in the other proceeding, that judgment be entered
in its behalf on one or more issues in the Board
proceeding).  The paper should be accompanied by a copy of
the decision in the other proceeding.

A proceeding is considered to have been finally determined
when a decision on the merits of the case (i.e., a
dispositive ruling that ends litigation on the merits) has
been rendered, and no appeal has been filed therefrom, or
all appeals filed have been decided.

510.03  Suspension for Other Reasons

510.03(a)  Suspension

The Board suspends proceedings in cases before it for a wide
variety of reasons.

Proceedings may be suspended for good cause upon motion or
upon stipulation of the parties approved by the Board.  See
37 CFR 2.117(c).  For example, proceedings may be
suspended, upon motion or stipulation under 37 CFR
2.117(c), for purposes of settlement negotiations, subject
to the right of either party to request resumption at any
time.  See MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ
952 (TTAB 1979).

The Board will automatically suspend proceedings in a case
before it if it comes to the attention of the Board that the
defendant has filed a petition for bankruptcy.  See In re
Checkers of North America Inc., 23 USPQ2d 1451 (Comm'r
1992).  Under the automatic stay provisions of Section 362
of the United States Bankruptcy Code, 11 U.S.C. 362, a
petition for bankruptcy (filed under Section 301, 302, or
303 of the Code, 11 U.S.C. 301, 302, or 303) operates as a
stay, inter alia, of the commencement or continuation of a
judicial, administrative, or other process against the
debtor that was or could have been commenced before the
commencement of the bankruptcy case.  However, if it is the
Board proceeding plaintiff, rather than defendant, which has
filed a petition for bankruptcy, the automatic stay
provisions do not mandate the suspension of the Board
proceeding unless there is a counterclaim in the Board
proceeding for cancellation of the plaintiff's
registration(s).

If, in a Board proceeding, a party's attorney or other
authorized representative files a request to withdraw as
counsel for the party, and the request is granted, the Board
will suspend proceedings and allow the party a stated period
of time (usually 30 days) in which to appoint a new attorney
or other authorized representative (and inform the Board
thereof), or to file a paper stating that it desires to
represent itself, failing which the Board may issue an order
to show cause why default judgment should not be entered
against the party.  See, with respect to withdrawal of
counsel, TBMP 116.02-116.05 and 513.01.  For information
concerning action by the Board after expiration of the time
allowed in the suspension order, see TBMP 510.03(b).  A
party may inform the Board of the appointment of new counsel
either by filing written notification thereof (as, for
example, by filing a copy of the new appointment), or by
having new counsel make an appearance in the party's behalf
in the proceeding.  See TBMP 114.03.  See also TBMP
114.04 and 114.05.

When a party to a Board proceeding files a motion which is
potentially dispositive of the proceeding, such as a motion
to dismiss, a motion for judgment on the pleadings, or a
motion for summary judgment, the case will be suspended by
the Board with respect to all matters not germane to the
motion.  See 37 CFR 2.127(d); Pegasus Petroleum Corp. v.
Mobil Oil Corp., 227 USPQ 1040 (TTAB 1985); Nestle Co. v.
Joyva Corp., 227 USPQ 477 (TTAB 1985); and  MacMillan
Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952 (TTAB 1979).
The filing of a potentially dispositive motion does not, in
and of itself, operate to suspend a case; until the Board
issues its suspension order, all times continue to run.  See
SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB
1994), and Giant Food, Inc. v. Standard Terry Mills, Inc.,
229 USPQ 955 (TTAB 1986).  Once the Board has suspended
proceedings in a case pending determination of a potentially
dispositive motion, no party should file any paper which is
not relevant to the motion.  See 37 CFR 2.127(d); Pegasus
Petroleum Corp. v. Mobil Oil Corp., supra; and Nestle Co. v.
Joyva Corp., supra.

Upon receipt of written notice that one or more testimonial
depositions are to be taken upon written questions pursuant
to 37 CFR 2.124, the Board will suspend or reschedule other
proceedings in the case to allow for the orderly completion
of the depositions upon written questions.  See 37 CFR
2.124(d)(2), and TBMP 714.04.

510.03(b)  Resumption

When proceedings are suspended for purposes of settlement
negotiations, the Board normally sets a specific period of
suspension (up to six months).  Each party has the right to
request resumption at any time during the suspension period.
See MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952
(TTAB 1979).  If no word is heard from either party prior to
the expiration of the suspension period, the Board resumes
proceedings.  Until the Board issues an order resuming
proceedings and setting new response and/or trial dates,
proceedings remain suspended, despite the fact that the
suspension period set by the Board has run.

When proceedings have been suspended by the Board because a
Board proceeding defendant (or plaintiff whose registration
is the subject of a counterclaim) has filed a petition for
bankruptcy, the Board periodically inquires as to the status
of the bankruptcy case.  In order to expedite matters,
however, when the bankruptcy case has been concluded, or the
involved application or registration of the bankrupt party
has been transferred to some other person, the interested
party should immediately file a paper notifying the Board
thereof.  Once the Board has been notified of the outcome of
the bankruptcy case, and/or of the disposition of the
bankrupt's involved application or registration, the Board
will resume proceedings and take further appropriate action.

If proceedings have been suspended in order to allow a
party, whose attorney or other authorized representative has
withdrawn, a period of time in which to either appoint new
counsel (and inform the Board thereof) or file a paper
stating that it desires to represent itself (see TBMP
510.03(a)), and new counsel is appointed (and the Board is
informed thereof) during the time allowed, the Board will
resume proceedings, and go forward with that person
representing the party.  If, instead, the party files a
paper stating that it desires to represent itself, the Board
will resume proceedings and go forward with the party
representing itself, but the party may employ a new attorney
or other authorized representative at any time thereafter.
If the party fails, during the time allowed, to either
appoint new counsel (and inform the Board thereof) or file a
paper stating that it desires to represent itself, the Board
may issue an order noting that the party appears to have
lost interest in the case, and allowing the party time in
which to show cause why default judgment should not be
entered against it.  If the party, in turn, files a response
indicating that it has not lost interest in the case,
default judgment will not be entered against it.  If the
party fails to file a response to the show cause order,
default judgment may be entered against it.

When proceedings have been suspended pending determination
of a potentially dispositive motion, and the determination
of the motion does not dispose of the case, the Board, in
its decision on the motion, will issue an order resuming
proceedings, and taking further appropriate action.  See 37
CFR 2.127(d).

511  Motion to Consolidate

When cases involving common questions of law or fact are
pending before the Board, the Board may order the
consolidation of the cases.  See FRCP 42(a); Regatta Sport
Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991);
Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991);
Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444 (TTAB
1987); Federated Department Stores, Inc. v. Gold Circle
Insurance Co., 226 USPQ 262 (TTAB 1985); Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB
1981), set aside on other grounds and new decision entered,
217 USPQ 464 (TTAB 1983); World Hockey Ass'n v. Tudor Metal
Products Corp., 185 USPQ 246 (TTAB 1975); and Izod, Ltd. v.
La Chemise Lacoste, 178 USPQ 440 (TTAB 1973).  In
determining whether to consolidate proceedings, the Board
will weigh the savings in time, effort, and expense which
may be gained from consolidation, against any prejudice or
inconvenience which may be caused thereby.  See, for
example, Wright & Miller, Federal Practice and Procedure:
Civil 2383 (1971); Lever Brothers Co. v. Shaklee Corp., 214
USPQ 654 (TTAB 1982) (consolidation denied where one case
was just in pleading stage, and testimony periods had
expired in other); Envirotech Corp. v. Solaron Corp., 211
USPQ 724 (TTAB 1981) (consolidation denied as possibly
prejudicial to defendant where defendant's involved marks
were not all the same and issue was likelihood of
confusion); World Hockey Ass'n v. Tudor Metal Products
Corp., supra (consolidation ordered where issues were
substantially the same and consolidation would be
advantageous to both parties); and Izod, Ltd. v. La Chemise
Lacoste, supra (consolidation denied where issues differed).
Although identity of the parties is another factor
considered by the Board in determining whether consolidation
should be ordered (see Bigfoot 4x4 Inc. v. Bear Foot Inc.,
supra), it is not always necessary (see Wright & Miller,
supra, at 2384, and Izod, Ltd. v. La Chemise Lacoste,
supra).

Consolidation is discretionary with the Board, and may be
ordered upon motion granted by the Board, or upon
stipulation of the parties approved by the Board, or upon
the Board's own initiative.  See, for example, Wright &
Miller, Federal Practice and Procedure:  Civil 2383 (1971);
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993) (stipulation);
Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154
(TTAB 1991) (Board's initiative); Helene Curtis Industries
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989)
(stipulation); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d
1444 (TTAB 1987) (joint motion); Federated Department
Stores, Inc. v. Gold Circle Insurance Co., 226 USPQ 262
(TTAB 1985) (motion); Plus Products v. Medical Modalities
Associates, Inc., 211 USPQ 1199 (TTAB 1981), set aside on
other grounds and new decision entered, 217 USPQ 464 (TTAB
1983) (motion); World Hockey Ass'n v. Tudor Metal Products
Corp., 185 USPQ 246 (TTAB 1975) (Board's initiative).

Generally, the Board will not consider a motion to
consolidate until an answer has been filed (i.e., until
issue has been joined) in each case sought to be
consolidated.  However, the Board may, in its discretion,
order cases consolidated prior to joinder of issue.  Cf. 37
CFR 2.104(b) and 2.114(b), and TBMP 306.

When cases have been ordered consolidated, they may (but do
not have to) be presented on the same records and briefs.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5 USPQ2d 1444
(TTAB 1987); Plus Products v. Medical Modalities Associates,
Inc., 211 USPQ 1199 (TTAB 1981), set aside on other grounds
and new decision entered, 217 USPQ 464 (TTAB 1983); World
Hockey Ass'n v. Tudor Metal Products Corp., 185 USPQ 246
(TTAB 1975).  Papers filed therein should bear the number of
each of the consolidated cases.  The oldest (i.e., first-
filed) of the consolidated cases is treated as the "parent"
case.  With certain exceptions (such as the pleadings and
all other papers up to the point of consolidation, the
consolidation order, and the Board's final decision), most
of the papers filed by the parties, or issued by the Board,
in a consolidated proceeding are placed only in the file of
the parent case.  Thus, parties filing papers in a
consolidated proceeding usually need not file a copy for
each consolidated case; a single copy, bearing the number of
each consolidated case, normally is sufficient.

When actions by different plaintiffs are consolidated, and
the plaintiffs are represented by different counsel, the
plaintiffs may be required to appoint one lead counsel to
supervise and coordinate the conduct of the plaintiffs'
cases.  See TBMP 117.02.

Consolidated cases do not lose their separate identity
because of consolidation.  Each proceeding retains its
separate character and requires entry of a separate
judgment.  See Wright & Miller, Federal Practice and
Procedure:  Civil 2382 (1971).

512  Motion to Join or Substitute

512.01  Assignment of Mark

When there has been an assignment of a mark which is the
subject of, or relied upon in, an inter partes proceeding
before the Board, the assignee may be joined or substituted,
as may be appropriate, upon motion granted by the Board, or
upon the Board's own initiative.

When a mark which is the subject of a Federal application or
registration has been assigned, together with the
application or registration, in accordance with Section 10
of the Act, 15 U.S.C. 1060, any action with respect to the
application or registration which may or must be taken by
the applicant or registrant may be taken by the assignee
(acting itself, or through its attorney or other authorized
representative), provided that the assignment has been
recorded or that proof of the assignment has been submitted.
See 37 CFR 3.71 and 3.73(b).  If the mark in an
application or registration which is the subject matter of
an inter partes proceeding before the Board is assigned,
together with the application or registration, the assignee
may be joined as a party (as a party defendant, in the case
of an opposition or cancellation proceeding; or as a junior
or senior party, as the case may be, in an interference or
concurrent use proceeding) upon the filing with the Board of
a copy of the assignment.  When the assignment is recorded
in the Assignment Branch of the PTO, the assignee may be
substituted as a party if the assignment occurred prior to
the commencement of the proceeding, or the assignor is no
longer in existence, or the plaintiff raises no objection to
substitution, or the discovery and testimony periods have
closed; otherwise, the assignee will be joined, rather than
substituted, to facilitate discovery.  See, for example, 37
CFR 2.113, 3.71 and 3.73(b); FRCP 17 and 25; Pro-Cuts v.
Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993);
Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery,
17 USPQ2d 1137 (TTAB 1990); Tonka Corp. v. Tonka Tools,
Inc., 229 USPQ 857 (TTAB 1986); Binney & Smith Inc. v. Magic
Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984);
Electronic Realty Associates, Inc. v. Extra Risk Associates,
Inc., 217 USPQ 810 (TTAB 1982); Liberty & Co. v. Liberty
Trouser Co., 216 USPQ 65 (TTAB 1982); Gold Eagle Products
Co. v. National Dynamics Corp., 193 USPQ 109 (TTAB 1976);
and Aloe Creme Laboratories, Inc. v. Aloe 99, Inc., 188 USPQ
316 (TTAB 1975).

If a mark pleaded by a plaintiff is assigned, and a copy of
the assignment is filed with the Board, the assignee
ordinarily will be substituted if the assignment occurred
prior to the commencement of the proceeding, or the
discovery and testimony periods have closed, or the assignor
is no longer in existence, or the defendant raises no
objection to substitution; otherwise, the assignee will be
joined, rather than substituted, to facilitate the taking of
discovery and the introduction of evidence.  The assignment
does not have to be recorded with respect to a plaintiff's
pleaded application or registration before substitution or
joinder (whichever is appropriate) is made.  However,
recordation is advisable because it will aid the assignee in
its effort to prove ownership of the application or
registration at trial.  See, for example, FRCP 17 and 25; 37
CFR 2.102(b); TBMP 303.05(b); William & Scott Co. v.
Earl's Restaurants Ltd., 30 USPQ2d 1871 (TTAB 1994); SDT
Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994);
Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224
(TTAB 1993); Societe des Produits Nestle S.A. v. Basso
Fedele & Figli, 24 USPQ2d 1079 (TTAB 1992); Huffy Corp. v.
Geoffrey Inc., 18 USPQ2d 1240 (Comm'r 1990); S & L
Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221 (TTAB
1987); Information Resources Inc. v. X*Press Information
Services, 6 USPQ2d 1034 (TTAB 1988); Mason Engineering &
Design Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB
1985); E.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ
713 (TTAB 1984); and Hamilton Burr Publishing Co. v. E. W.
Communications, Inc., 216 USPQ 802 (TTAB 1982).  Cf. Cass
Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB
1993).

If the mark of an excepted common law user (which is not the
owner of an involved application or registration) in a
concurrent use proceeding is assigned, the assignee will be
joined or substituted as party defendant upon notification
to the Board of the assignment.  See Pro-Cuts v. Schilz-
Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993), and
Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc.,
215 USPQ 1133 (TTAB 1982).

Alternatively, if there has been an assignment of a mark
which is the subject of, or is relied upon in, a proceeding
before the Board, and the Board does not order that the
assignee be joined or substituted in the proceeding, the
proceeding may be continued in the name of the assignor.
See FRCP 25(c), and Hamilton Burr Publishing Co. v. E. W.
Communications, Inc., 216 USPQ 802 (TTAB 1982).

Further, the fact that a third party related to the
plaintiff, such as a parent or licensor of the plaintiff,
may also have an interest in a mark relied on by the
plaintiff does not mean that the third party must be joined
as a party plaintiff.  See Avia Group International Inc. v.
Faraut, 25 USPQ2d 1625 (TTAB 1992).

512.02  Change of Name

If the name of a party to an inter partes proceeding before
the Board is changed, the title of the Board proceeding may
be changed, upon motion or upon the Board's own initiative,
to reflect the change of name, provided that appropriate
evidence thereof (such as, a copy of the name change
document, or the numbers of the reel and frame where such
document is recorded in the Assignment Branch of the PTO) is
made of record in the proceeding.  See, for example, WMA
Group Inc. v. Western International Media Corp., 29 USPQ2d
1478 (TTAB 1993); Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134 (TTAB 1992); NutraSweet Co.
v. K & S Foods Inc., 4 USPQ2d 1964 (TTAB 1987), and Binney &
Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003
(TTAB 1984).  Cf. In re Brittains Tullis Russell Inc., 23
USPQ2d 1457 (Comm'r 1991).  If no such evidence is made of
record in the proceeding, the proceeding may be continued in
the party's old name.  See, for example, Maine Savings Bank
v. First Banc Group of Ohio, Inc., 220 USPQ 736 (TTAB 1983),
and National Blank Book Co. v. Leather Crafted Products,
Inc., 218 USPQ 827 (TTAB 1983).  Cf. FRCP 25(c).

A name change document does not have to be recorded with
respect to a defendant's involved application or
registration, or a plaintiff's pleaded application or
registration, in order for the Board proceeding title to be
changed to reflect the new name.  However, recordation is
advisable because it facilitates proof of ownership of the
application or registration, and because filing for
recordation is one of the 37 CFR 3.85 requirements for an
applicant which desires, if it prevails in the proceeding,
to have its registration issue in its new name (see TBMP
512.03).

512.03  Issuance of Registration to Assignee, or in New Name

37 CFR 3.85 Issue of registration to assignee.
The certificate of registration may be issued to the
assignee of the applicant, or in a new name of the
applicant, provided that the party files a written request
in the trademark application by the time the application is
being prepared for issuance of the certificate of
registration, and the appropriate document is recorded in
the Office.  If the assignment or name change document has
not been recorded in the Office, then the written request
must state that the document has been filed for recordation.
The address of the assignee must be made of record in the
application file.

Even where the assignee of an application which is the
subject matter of a Board inter partes proceeding has been
joined or substituted as a party to the proceeding (see TBMP
512.01), any registration issued from the application may
issue in the name of the assignor unless the assignee
complies with the requirements of 37 CFR 3.85.
Specifically, to ensure that the registration will issue in
its name, the assignee must file a written request in the
application (or in the Board proceeding, if that proceeding
has not yet ended), by the time the application is being
prepared for issuance of the certificate of registration,
that the registration be issued in its name.  In addition,
an appropriate document must be of record in the Assignment
Search Room of the PTO, or the written request must state
that the document has been filed for recordation.  Finally,
the address of the assignee must be made of record in the
application file.

Similarly, even though the title of an inter partes
proceeding before the Board may have been changed to reflect
a name change of an applicant whose application is the
subject of the proceeding, any registration issued from the
application may issue in the applicant's original name
unless the applicant complies with the requirements of 37
CFR 3.85.  See Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134 (TTAB 1992).

If an assignment or change of name document is recorded in
the Assignment Search Room well prior to the time the
subject application is prepared for issuance of a
registration, the registration may issue in the name of the
assignee, or in the new name, even if no 37 CFR 3.85
request is filed.  However, the registration may issue in
the name of the assignor, or in the old name.  The purpose
of the written request is to call the attention of the PTO
to the assignment, or change of name, and thus to ensure
that the registration issues in the name of the assignee, or
in the new name.  Accordingly, it is sufficient for the
purpose if applicant files a paper referring to the
assignment or change of name, and the assignment or change
of name document has either been recorded, or applicant
states that the document has been submitted for recording.

512.04  Misidentification

When it is shown to the satisfaction of the Board that a
party in whose name a Board proceeding complaint was filed
was misidentified therein by mistake, the Board may allow
amendment of the complaint, pursuant to FRCP 15(a), to
correct the misidentification and/or to substitute the
proper party in interest.  See Mason Engineering & Design
Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985);
Arbrook, Inc. v. La Citrique Belge, Naamloze Vennootschap,
184 USPQ 505 (TTAB 1974); Textron, Inc. v. Gillette Co., 177
USPQ 530 (Comm'r 1973); Lone Star Manufacturing Co. v. Bill
Beasley, Inc., 176 USPQ 426 (TTAB 1972), rev'd on other
grounds, 498 F.2d 906, 182 USPQ 368 (CCPA 1974); Davidson v.
Instantype, Inc., 165 USPQ 269 (TTAB 1970); Pyco, Inc. v.
Pico Corp., 165 USPQ 221 (TTAB 1969); and Raker Paint
Factory v. United Lacquer Mfg. Corp., 141 USPQ 407 (TTAB
1964).  Cf. 37 CFR 2.102(b); TBMP 303.05(c); and Cass
Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075 (TTAB 1993)
(misidentification of potential opposer in request for
extension of time to oppose)..
When an application or registration is the subject of an
inter partes proceeding before the Board, and it is shown to
the satisfaction of the Board that the applicant was
misidentified in the application by mistake, the Board may
allow amendment of the application or registration (and of
the Board proceeding title) to correct the
misidentification.  See Argo & Co. v. Springer, 198 USPQ 626
(TTAB 1978); Argo & Co. v. Springer, 189 USPQ 581 (TTAB
1976); and U.S. Pioneer Electronics Corp. v. Evans
Marketing, Inc., 183 USPQ 613 (Comm'r 1974).  Cf.  TMEP
802.06 and 802.07; In re Tong Yang Cement Corp., 19 USPQ2d
1689 (TTAB 1991); In re Atlanta Blue Print Co., 19 USPQ2d
1078 (Comm'r 1990); In re Techsonic Industries, Inc., 216
USPQ 619 (TTAB 1982); and In re Eucryl Ltd., 193 USPQ 377
(TTAB 1976).

513  Motion to Withdraw as Representative; Petition to
Disqualify

513.01  Motion to Withdraw as Representative

37 CFR 2.19(b) An individual authorized to represent an
applicant or party in a trademark case may withdraw upon
application to and approval by the Commissioner.

37 CFR 10.40 Withdrawal from employment.
(a) A practitioner shall not withdraw from employment in a
proceeding before the Office without permission from the
Office (see 1.36 and 2.19 of this subchapter).  In any
event, a practitioner shall not withdraw from employment
until the practitioner has taken reasonable steps to avoid
foreseeable prejudice to the rights of the client, including
giving due notice to his or her client, allowing time for
employment of another practitioner, delivering to the client
all papers and property to which the client is entitled, and
complying with applicable laws and rules.  A practitioner
who withdraws from employment shall refund promptly any part
of a fee paid in advance that has not been earned.

(b) Mandatory withdrawal.  A practitioner representing a
client before the Office shall withdraw from employment if:
     (1) The practitioner knows or it is obvious that the
client is bringing a legal action, commencing a proceeding
before the Office, conducting a defense, or asserting a
position in litigation or any proceeding pending before the
Office, or is otherwise having steps taken for the client,
merely for the purpose of harassing or maliciously injuring
any person;
     (2) The practitioner knows or it is obvious that the
practitioner's continued employment will result in violation
of a Disciplinary Rule;
     (3) The practitioner's mental or physical condition
renders it unreasonably difficult for the practitioner to
carry out the employment effectively; or
     (4) The practitioner is discharged by the client.

(c) Permissive withdrawal.  If paragraph (b) of this section
is not applicable, a practitioner may not request permission
to withdraw in matters pending before the Office unless such
request or such withdrawal is because:
     (1) The petitioner's client:
          (i) Insists upon presenting a claim or defense
that is not warranted under existing law and cannot be
supported by good faith argument for an extension,
modification, or reversal of existing law;
          (ii) Personally seeks to pursue an illegal course
of conduct;
          (iii) Insists that the practitioner pursue a
course of conduct that is illegal or that is prohibited
under a Disciplinary Rule;
          (iv) By other conduct renders it unreasonably
difficult for the practitioner to carry out the employment
effectively;
          (v) Insists, in a matter not pending before a
tribunal, that the practitioner engage in conduct that is
contrary to the judgment and advice of the practitioner but
not prohibited under the Disciplinary Rule; or
          (vi) Has failed to pay one or more bills rendered
by the practitioner for an unreasonable period of time or
has failed to honor an agreement to pay a retainer in
advance of the performance of legal services.
     (2) The practitioner's continued employment is likely
to result in a violation of a Disciplinary Rule;
     (3) The practitioner's inability to work with co-
counsel indicates that the best interests of the client
likely will be served by withdrawal;
     (4) The practitioner's mental or physical condition
renders it difficult for the practitioner to carry out the
employment effectively;
     (5) The practitioner's client knowingly and freely
assents to termination of the employment; or
     (6) The practitioner believes in good faith, in a
proceeding pending before the Office, that the Office will
find the existence of other good cause for withdrawal.

A practitioner who wishes to withdraw from employment as the
attorney or other authorized representative of a party to a
proceeding before the Board must file a request with the
Board for permission to do so.  The request to withdraw must
be based upon one of the grounds for mandatory or permissive
withdrawal listed in 37 CFR 10.40(b) and 10.40(c).
Moreover, the practitioner must comply with the requirements
of 37 CFR 10.40(a).  See 37 CFR 2.19(b) and 10.40.  Cf.
In re Legendary Inc., 26 USPQ2d 1478 (Comm'r 1992).

A request for permission to withdraw should include (1) a
specification of the basis for the request; (2) a statement
that the practitioner has notified the client of his or her
desire to withdraw from employment, and has allowed time for
employment of another practitioner; (3) a statement that all
papers and property that relate to the proceeding and to
which the client is entitled have been delivered to the
client; (4) if any part of a fee paid in advance has not
been earned, a statement that the unearned part has been
refunded; and (5) proof of service of the request upon the
client and upon every other party to the proceeding.  See 37
CFR 10.40.  Cf. In re Legendary Inc., 26 USPQ2d 1478
(Comm'r 1992).

If the request is granted, the Board will suspend
proceedings and allow the party a stated period of time
(usually 30 days) in which to appoint a new attorney or
other authorized representative (and inform the Board
thereof), or to file a paper stating that it desires to
represent itself, failing which the Board may issue an order
to show cause why default judgment should not be entered
against the party based on the party's apparent loss of
interest in the case.  See Pro-Cuts v. Schilz-Price
Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993).

A party may inform the Board of the appointment of new
counsel either by filing written notification thereof (as,
for example, by filing a copy of the new appointment), or by
having new counsel make an appearance in the party's behalf
in the proceeding.  See TBMP 114.03.  See also TBMP
114.04 and 114.05.

For information concerning action by the Board after
expiration of the time allowed in the suspension order, see
TBMP 510.03(b).  For further information concerning
withdrawal of counsel, see TBMP 116.02-116.05.  Cf. TMEP
602.03(a).

513.02  Petition to Disqualify

37 CFR 10.130(b) Petitions to disqualify a practitioner in
ex parte or inter partes cases in the Office are not
governed by 10.130 through 10.170 and will be handled on a
case-by-case basis under such conditions as the Commissioner
deems appropriate.

If a party to an inter partes proceeding before the Board
believes that a practitioner representing another party to
the proceeding should be disqualified (due, for example, to
a conflict of interest, or because the practitioner may
testify in the proceeding as a witness on behalf of his
client), the party may file a petition to disqualify the
practitioner.

Petitions to disqualify are not disciplinary proceedings and
hence are not governed by 37 CFR 10.130-10.170.  Rather,
petitions to disqualify are governed by 37 CFR 10.130(b),
and are determined in the manner specified in that rule.
For examples of cases involving petitions to disqualify, see
the decisions cited in TBMP 114.08.

When a petition to disqualify is filed in connection with a
proceeding pending before the Board, the Board immediately
issues an action suspending proceedings in the case and
advising the parties that no additional papers should be
filed by the parties until further notice, pending
consideration of the petition.  After the petition has been
determined or dismissed, the Board issues an action resuming
proceedings in the case, and taking further appropriate
action therein.

With respect to disqualification due to an asserted conflict
of interest, see TBMP 114.08, and authorities cited
therein.  With respect to disqualification due to testimony
on behalf of client, see 37 CFR 10.63; Focus 21
International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22
USPQ2d 1316 (TTAB 1992); and Little Caesar Enterprises Inc.
v. Domino's Pizza Inc., 11 USPQ2d 1233 (Comm'r 1989).  Cf.
Computer Associates International Inc. v. Computer
Automation Inc., 678 F. Supp. 424, 6 USPQ2d 1459 (S.D.N.Y.
1987).

514  Motion to Amend Application or Registration

37 CFR 2.133(a) An application involved in a proceeding may
not be amended in substance nor may a registration be
amended or disclaimed in part, except with the consent of
the other party or parties and the approval of the Trademark
Trial and Appeal Board, or except upon motion.

(b) If, in an inter partes proceeding, the Trademark Trial
and Appeal Board finds that a party whose application or
registration is the subject of the proceeding is not
entitled to registration in the absence of a specified
restriction to the involved application or registration, the
Trademark Trial and Appeal Board will allow the party time
in which to file a request that the application or
registration be amended to conform to the findings of the
Trademark Trial and Appeal Board, failing which judgment
will be entered against the party.

(c) Geographic limitations will be considered and determined
by the Trademark Trial and Appeal Board only in the context
of a concurrent use registration proceeding.

514.01  In General

The amendment of any application or registration which is
the subject of an inter partes proceeding before the Board
is governed by 37 CFR 2.133.  Thus, an application which is
the subject of a Board inter partes proceeding may not be
amended in substance, except with the consent of the other
party or parties and the approval of the Board, or except
upon motion.  Similarly, a registration which is the subject
of a Board inter partes proceeding may not be amended or
disclaimed in part, except with the consent of the other
party or parties and the approval of the Board, or except
upon motion.  See 37 CFR 2.133(a).  Cf. TBMP 212.

A proposed amendment must also comply with all other
applicable rules and statutory provisions.  These include 37
CFR 2.71-2.75, in the case of a proposed amendment to an
application; and 37 CFR 2.173 and Section 7(e) of the Act,
15 U.S.C. 1057(e), in the case of a proposed amendment to a
registration.  Thus, for example, a proposed amendment which
involves an addition to the identification of goods or
services, or which materially alters the character of the
subject mark, will not be approved by the Board.  See
Section 7(e) of the Act; 37 CFR 2.71(b), 2.72, and
2.173(a) and 2.173(b); and Aries Systems Corp. v. World Book
Inc., 26 USPQ2d 1926 (TTAB 1993).  See also Louise E.
Rooney, TIPS FROM THE TTAB:  Rule 2.133 Today, 81 Trademark
Rep. 408 (1991).

A request to amend an application or registration which is
the subject of a Board inter partes proceeding should bear
at its top both the number of the subject application or
registration, and the Board proceeding number and title.  In
addition, the request should include proof of service of a
copy thereof upon every other party to the proceeding.  See
37 CFR 2.119(a), and TBMP 113.

When the Board grants a request to amend a registration
which is the subject of a Board inter partes proceeding, and
forwards the registration to the Post Registration branch of
the Office of Trademark Services for amendment of the
registration, action by the Post Registration branch is
limited to the ministerial duty of ensuring that the
authorized change to the registration is made.  See In re
Pamex Foods, Inc., 209 USPQ 275 (Comm'r 1980).

514.02  Amendment With Consent

When a request to amend an application or registration which
is the subject of a Board inter partes proceeding is made
with the consent of the other party or parties, and the
proposed amendment is in accordance with the applicable
rules and statutory provisions, the request ordinarily will
be approved by the Board.

514.03  Amendment Without Consent

The Board, in its discretion, may grant a motion to amend an
application or registration which is the subject of an inter
partes proceeding, even if the other party or parties do not
consent thereto.  See 37 CFR 2.133(a).

When a motion to amend an application or registration in
substance is made without the consent of the other party or
parties, it ordinarily should be made prior to trial, in
order to give the other party or parties fair notice
thereof; an unconsented motion to amend which is not made
prior to trial, and which, if granted, would affect the
issues involved in the proceeding, normally will be denied
by the Board unless the matter is tried by express or
implied consent of the parties pursuant to FRCP 15(b).  See,
for example,  Signal Companies v. Southwestern Petroleum
Corp., 181 USPQ 599 (TTAB 1973), and Mack Trucks, Inc. v.
Hydra-Mac, Inc., 180 USPQ 147 (TTAB 1973), aff'd, Hydra-Mac,
Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA
1975).  See also Louise E. Rooney, TIPS FROM THE TTAB:  Rule
2.133 Today, 81 Trademark Rep. 408 (1991).  Cf. Reflange
Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990), and
TBMP 311, 321, and 507.

The Board generally will defer determination of an
unconsented motion to amend in substance until final
decision, or until the case is decided upon summary
judgment.  See Space Base Inc. v. Stadis Corp., 17 USPQ2d
1216 (TTAB 1990) (defendant's motion to amend its
identification of goods to include restriction); Fort Howard
Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552 (TTAB 1987)
(defendant's motion to amend dates of use in its subject
application); and Mason Engineering & Design Corp. v.
Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985)
(defendant's motion to amend dates of use in its subject
application).  See also Louise E. Rooney, TIPS FROM THE
TTAB:  Rule 2.133 Today, 81 Trademark Rep. 408 (1991).

If a defendant, whose application or registration is the
subject of a Board inter partes proceeding, wishes to defend
by asserting that it is at least entitled to a registration
with a particular restriction, the defense should be raised
either in the defendant's answer to the complaint, or by way
of a timely motion to amend the application or registration
to include the restriction.  See 37 CFR 2.133(a) and
2.133(b); Personnel Data Systems Inc. v. Parameter Driven
Software Inc., 20 USPQ2d 1863 (TTAB 1991); Flow Technology
Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991); Space Base
Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990); TBMP
318.02(b); and Louise E. Rooney, TIPS FROM THE TTAB:  Rule
2.133 Today, 81 Trademark Rep. 408 (1991).  The proposed
restriction should be described in defendant's pleading, or
in its motion to amend, in sufficient detail to give the
plaintiff fair notice thereof.  See Space Base Inc. v.
Stadis Corp., supra, and TBMP 318.02(b).  See also Flow
Technology Inc. v. Picciano, supra.

If the Board ultimately finds that a defendant is not
entitled to registration in the absence of a restriction
which was timely proposed by the defendant, the proposed
restriction will be approved and entered.  If a further
refinement thereof is found necessary by the Board, and is
within the scope of the notice given to plaintiff by
defendant, or was tried with the express or implied consent
of plaintiff, defendant will be allowed time in which to
file a request that its application or registration be
amended to conform to the findings of the Board, failing
which judgment will be entered against the party.  See 37
CFR 2.133(b), and Louise E. Rooney, TIPS FROM THE TTAB:
Rule 2.133 Today, 81 Trademark Rep. 408 (1991).  See also
Section 18 of the Act, 15 U.S.C. 1068.  If, on the other
hand, the Board ultimately finds that defendant is entitled
to registration even without the proposed restriction,
defendant will be allowed time to indicate whether it still
wishes to have the restriction entered.  See Louise E.
Rooney, TIPS FROM THE TTAB:  Rule 2.133 Today, supra.

Geographic limitations will be considered and determined by
the Board only in the context of a concurrent use
proceeding.  See 37 CFR 2.133(c), and TBMP 1101.02.
Moreover, Section 7(e) of the Act, 15 U.S.C. 1057(e), and
37 CFR 2.173 cannot be used to impose concurrent use
restrictions on registrations.  See In re Forbo, 4 USPQ2d
1415 (Comm'r 1984), and In re Alfred Dunhill Ltd., 4 USPQ2d
1383 (Comm'r 1987).  However, an applicant whose
geographically unrestricted application is the subject of an
opposition proceeding may file a motion to amend its
application to one for a concurrent use registration, with
the opposer being recited as the exception to the
applicant's right to exclusive use.  If the proposed
amendment is otherwise appropriate, and is made with the
consent of the opposer, the opposition will be dismissed
without prejudice in favor of a concurrent use proceeding.
If the opposer does not consent to the amendment, the
amendment may nevertheless be approved and entered, and a
concurrent use proceeding instituted, provided that
applicant agrees to accept entry of judgment against itself
in the opposition with respect to its request for a
geographically unrestricted registration.  See TBMP 1112;
Faces, Inc. v. Face's, Inc., 222 USPQ 918 (TTAB 1983);
Louise E. Rooney, TIPS FROM THE TTAB:  Rule 2.133 Today, 81
Trademark Rep. 408 (1991); and Janet E. Rice, TIPS FROM THE
TTAB:  Newest TTAB Rule Changes; More Tips on Concurrent Use
Proceedings, 76 Trademark Rep. 252 (1986).

514.04  Amendment to Allege Use; Statement of Use

For information concerning the handling of an amendment to
allege use, or a statement of use, filed during an
opposition proceeding in an intent-to-use application which
is the subject of the opposition, see TBMP 219.

515  Motion to Remand Application to Examining Attorney

37 CFR 2.130 New matter suggested by Examiner of
Trademarks.
If, during the pendency of an inter partes case, facts
appear which, in the opinion of the Examiner of Trademarks,
render the mark of any applicant involved unregistrable, the
attention of the Trademark Trial and Appeal Board shall be
called thereto.  The Board may suspend the proceeding and
refer the application to the Examiner of Trademarks for his
determination of the question of registrability, following
the final determination of which the application shall be
returned to the Board for such further inter partes action
as may be appropriate.  The consideration of such facts by
the Examiner of Trademarks shall be ex parte, but a copy of
the action of the examiner will be furnished to the parties
to the inter partes proceeding.

37 CFR 2.131 Remand after decision in inter partes
proceeding.
If, during an inter partes proceeding, facts are disclosed
which appear to render the mark of an applicant
unregistrable, but such matter has not been tried under the
pleadings as filed by the parties or as they might be deemed
to be amended under Rule 15(b) of the Federal Rules of Civil
Procedure to conform to the evidence, the Trademark Trial
and Appeal Board, in lieu of determining the matter in the
decision on the proceeding, may refer the application to the
examiner for reexamination in the event the applicant
ultimately prevails in the inter partes proceeding.  Upon
receiving the application, the examiner shall withhold
registration pending reexamination of the application in the
light of the reference by the Board.  If, upon
reexamination, the examiner finally refuses registration to
the applicant, an appeal may be taken as provided by 2.141
and 2.142.

If, during the pendency of an opposition, concurrent use, or
interference proceeding, the Examining Attorney learns of
facts which, in his or her opinion, render the subject mark
of an involved applicant unregistrable, the Examining
Attorney may file a request that the Board suspend the inter
partes proceeding, and remand the application to the
Examining Attorney for further ex parte examination.   See
37 CFR 2.130.

There is no provision under which such a remand may be made
upon motion by a party to the proceeding.  Moreover, a
request to amend an application which is the subject of an
inter partes proceeding before the Board is not remanded to
the Examining Attorney for consideration, but rather is
considered and determined by the Board.  See generally 37
CFR 2.133(a), and TBMP 514.

However, if, during the course of an opposition, concurrent
use, or interference proceeding, facts are disclosed which
appear to render the subject mark of an involved applicant
unregistrable, and the matter has not been tried under the
pleadings as filed by the parties or as they might be deemed
to be amended pursuant to FRCP 15(b), the Board, in its
decision in the proceeding, may, in addition to determining
the pleaded matters, include a recommendation that in the
event applicant ultimately prevails in the inter partes
proceeding, the Examining Attorney reexamine the application
in light of the disclosed facts.  See, for example, 37 CFR
2.131; First International Services Corp. v. Chuckles Inc.,
5 USPQ2d 1628 (TTAB 1988); West End Brewing Co. of Utica,
N.Y. v. South Australian Brewing Co., 2 USPQ2d 1306 (TTAB
1987); Floralife, Inc. v. Floraline International Inc., 225
USPQ 683 (TTAB 1984); Wilderness Group, Inc. v. Western
Recreational Vehicles, Inc., 222 USPQ 1012 (TTAB 1984);
Color Key Corp. v. Color 1 Associates, Inc., 219 USPQ 936
(TTAB 1983); and Antillian Cigar Corp. v. Benedit Cigar
Corp., 218 USPQ 187 (TTAB 1983).  A 37 CFR 2.131 remand may
be made by the Board upon its own initiative, or upon
request granted by the Board.  Thus, if a party to the
proceeding believes that the facts disclosed therein appear
to render the subject mark of an involved applicant
unregistrable, but the matter was not pleaded or tried by
the express or implied consent of the parties pursuant to
FRCP 15(b), the party may request that the Board include, in
its decision in the proceeding, a 37 CFR 2.131 remand to
the Examining Attorney.  The request may be made in the
party's brief on the case, at oral hearing, or by separate
motion.

516  Motion to Divide Application

An application which is the subject of an inter partes
proceeding before the Board may be physically divided into
two or more separate applications upon motion granted by the
Board, and payment of the required fee.  See 37n CFR 2.87.

For example, if an application which is the subject of an
opposition includes multiple classes (see 37 CFR 2.86(b)),
not all of which have been opposed, the applicant may file a
motion to divide out the unopposed classes.  If applicant
seeks to divide out an entire class or classes, a fee for
dividing the application must be submitted for each new
application to be created by the division.  See 37 CFR
2.87(a) and 2.87(b).  If the motion is granted, each new
application created by the division will be forwarded to
issue or, in the case of an intent to use application filed
under Section 1(b) of the Act, 15 U.S.C. 1051(b), for
issuance of a notice of allowance.

Similarly, if an application which is the subject of an
opposition includes more than one item of goods, or more
than one service, in a single class (see 37 CFR 2.86(a)),
and the opposition is not directed to all of the goods or
services, the applicant may file a motion to divide out the
unopposed goods or services.  Applicant must also submit
both a fee for dividing the application, and an application
filing fee, for each new application to be created by the
division.  See 37 CFR 2.87(a) and 2.87(b).   If the motion
is granted, each new application created by the division
will be forwarded to issue or, in the case of an intent to
use application filed under Section 1(b) of the Act, 15
U.S.C. 1051(b), for issuance of a notice of allowance.

Any request to divide an application which is the subject of
a Board inter partes proceeding will be construed by the
Board as a motion to divide, and every other party to the
proceeding will be allowed an opportunity to file a brief in
opposition thereto.

A registration may not be divided.  See TMEP 1105.06(b).

For further information concerning division of an
application, see TMEP 1105.06 and 1105.06(a).

517  Motion to Strike Brief on Motion

517.01  Brief in Support of, or in Opposition to, Motion

Specific provision is made in the Trademark Rules of
Practice for the filing of a brief in support of a motion
and a brief in opposition to a motion.  See 37 CFR
52.127(a).  See also TBMP 502.03.

Subject to the provisions of FRCP 11, a party is entitled to
offer in its brief any argument it feels will be to its
advantage.  Accordingly, when a brief in support of, or in
opposition to, a motion has been regularly filed, the Board
generally will not strike the brief, or any portion thereof,
upon motion by an adverse party which simply objects to the
contents thereof.  Rather, any objections which an adverse
party may have to the contents of such a brief will be
considered by the Board in its determination of the original
motion, and any portions of the brief which are found by the
Board to be improper will be disregarded.

However, if a brief in opposition to a motion is not timely
filed, it may be stricken, or given no consideration, by the
Board.

517.02  Reply Brief on Motion

The Trademark Rules of Practice neither specifically provide
for, nor prohibit, a reply brief on a motion.  Thus, when a
party moves to strike a reply brief on a motion, the Board,
in its discretion, may elect either to entertain the brief,
or to strike it as being unwarranted under the
circumstances.  See TBMP 502.03, and cases cited therein.

The Board may also strike a reply brief as untimely if it is
not filed within the time allowed for filing other
responsive briefs on motions, i.e., within 15 days from the
date of service of the paper to which the brief responds (20
days if service of the paper to which the brief responds was
made by first-class mail, "Express Mail," or overnight
courier--see 37 CFR 2.119(c)), unless another time is
specified by the Board, or the time is extended by
stipulation of the parties approved by the Board or by order
of the Board on motion for good cause.  See TBMP 502.03,
and authorities cited therein.

518  Motion for Reconsideration of Decision on Motion

A request for reconsideration or modification of an order or
decision issued on a motion must be filed within 30 days
from the date of the order or decision.  See 37 CFR
2.127(b).  Unless the Commissioner, upon petition, waives
the time requirement of 37 CFR 2.127(b), the Board need not
consider a request for reconsideration or modification filed
more than 30 days from the date of the order or decision
complained of.  See Avedis Zildjian Co. v. D. H. Baldwin
Co., 181 USPQ 736 (Comm'r 1974).  Nor does the rule
contemplate a second request for reconsideration of the same
basic issue.  See Giant Food, Inc. v. Standard Terry Mills,
Inc., 231 USPQ 626 (TTAB 1986), and Avedis Zildjian Co. v.
D. H. Baldwin Co., supra.  However, the Board may, on its
own initiative, reconsider and modify one of its orders or
decisions if it finds error therein, and the Board may also,
in its discretion, consider an untimely request for
reconsideration or modification.  See Avedis Zildjian Co. v.
D. H. Baldwin Co., supra.

Any brief in response to a request for reconsideration or
modification of an order or decision issued on a motion must
be filed within 15 days from the date of service of the
request (20 days if service of the request was made by first-
class mail, "Express Mail," or overnight courier--see 37 CFR
2.120(c)).  See 37 CFR 2.127(b).

When a party upon which a motion has been served fails to
file a brief in response, and the Board grants the motion as
conceded pursuant to 37 CFR 2.127(a), the nonresponding
party cannot use a request for reconsideration as a second
opportunity to file a brief in opposition to the motion.
See Joy Manufacturing Co. v. Robbins Co., 181 USPQ 408 (TTAB
1974).  Cf. General Tire & Rubber Co. v. Gendelman Rigging &
Trucking Inc., 189 USPQ 425 (TTAB 1975).

Generally, the premise underlying a motion for
reconsideration, modification or clarification under 37 CFR
2.127(b) is that, based on the facts before it and the
prevailing authorities, the Board erred in reaching the
order or decision it issued.  Such a motion may not properly
be used to introduce additional evidence, nor should it be
devoted simply to a reargument of the points presented in a
brief on the original motion.  Rather, the motion normally
should be limited to a demonstration that, based on the
facts before it and the applicable law, the Board's ruling
is in error and requires appropriate change.  Cf. TBMP 544.

An interlocutory motion, request, or other matter which is
not actually or potentially dispositive of a proceeding may
be acted upon by a single Board administrative trademark
judge, or by a Board interlocutory attorney to whom
authority so to act has been delegated.  See 37 CFR
2.127(c).  See also TBMP 502.05.  When a single Board
administrative trademark judge, or a single duly authorized
interlocutory attorney, has acted upon an interlocutory
motion, request, or other matter not actually or potentially
dispositive of the proceeding, and one or more of the
parties is dissatisfied with the action, the dissatisfied
party or parties may seek review thereof by requesting,
under 37 CFR 2.127(b), the same single Board judge, or the
same single interlocutory attorney, to reconsider the
action, and/or by filing a petition to the Commissioner for
review of the decision under 37 CFR 2.146(e)(2) (see TBMP
905).  A request that the action of the single Board judge,
or single interlocutory attorney, be reviewed by one or more
(other) administrative trademark judges of the Board is
improper and will be denied.  However, at final hearing, the
Board panel to which the case is assigned for decision may
review an interlocutory ruling and reverse it, if
appropriate.  See, for example, Harley-Davidson Motor Co. v.
Pierce Foods Corp., 231 USPQ 857, 859 (TTAB 1986).

519  Motion for Leave to Serve Additional Interrogatories

37 CFR 2.120(d)(1) The total number of written
interrogatories which a party may serve upon another party
pursuant to Rule 33 of the Federal Rules of Civil Procedure,
in a proceeding, shall not exceed seventy-five, counting
subparts, except that the Trademark Trial and Appeal Board,
in its discretion, may allow additional interrogatories upon
motion therefor showing good cause, or upon stipulation of
the parties.  A motion for leave to serve additional
interrogatories must be filed and granted prior to the
service of the proposed additional interrogatories; and must
be accompanied by a copy of the interrogatories, if any,
which have already been served by the moving party, and by a
copy of the interrogatories proposed to be served. ...

A motion under 37 CFR 2.120(d)(1) for leave to serve
additional interrogatories must be filed and granted prior
to service of the proposed additional interrogatories; and
must be accompanied both by a copy of any interrogatories
which have already been served by the moving party, and by a
copy of the interrogatories proposed to be served.  See 37
CFR 2.120(d)(1); Chicago Corp. v. North American Chicago
Corp., 16 USPQ2d 1479 (TTAB 1990); Baron Phillippe De
Rothschild S.A. v. S. Rothschild & Co., 16 USPQ2d 1466 (TTAB
1990); Towers, Perrin, Forster & Crosby Inc. v. Circle
Consulting Group Inc., 16 USPQ2d 1398 (TTAB 1990); Brawn of
California Inc. v. Bonnie Sportswear Ltd., 15 USPQ2d 1572
(TTAB 1990); Notice of Final Rulemaking, published in the
Federal Register on September 12, 1991 at 56 FR 46376 and in
the Official Gazette of October 22, 1991 at 1131 TMOG 54, as
corrected in the Federal Register of October 23, 1991 at 56
FR 54917; and Helen R. Wendel, TIPS FROM THE UNITED STATES
PATENT AND TRADEMARK OFFICE TTAB:  The Burden Shifts:
Revised Discovery Practice Under Trademark Rule 2.120(d)(1),
82 Trademark Rep. 89 (1992).

Good cause for the service of additional interrogatories
will generally be found only where it is shown that there is
a legitimate need for further discovery by interrogatories.
See Baron Phillippe De Rothschild S.A. v. S. Rothschild &
Co., 16 USPQ2d 1466 (TTAB 1990).  The mere fact that the
additional interrogatories may be relevant and narrowly
drawn to a single issue, or that they may be easy to answer,
is insufficient, in and of itself, to show good cause for
the service of additional interrogatories.  See Baron
Phillippe De Rothschild S.A. v. S. Rothschild & Co., 16
USPQ2d 1466 (TTAB 1990); Towers, Perrin, Forster & Crosby
Inc. v. Circle Consulting Group Inc., 16 USPQ2d 1398 (TTAB
1990); Brawn of California Inc. v. Bonnie Sportswear Ltd.,
15 USPQ2d 1572 (TTAB 1990).

For further information concerning good cause for a motion
to serve additional interrogatories, see TBMP 406.03(C).

For information concerning the interrogatory limit specified
in 37 CFR 2.120(d)(1), see TBMP 406.03.

520  Motion to Take Foreign Deposition Orally

37 CFR 2.120(c)(1) The discovery deposition of a natural
person residing in a foreign country who is a party or who,
at the time set for the taking of the deposition, is an
officer, director, or managing agent of a party, or a person
designated under Rule 30(b)(6) or Rule 31(a) of the Federal
Rules of Civil Procedure, shall, if taken in a foreign
country, be taken in the manner prescribed by 2.124 unless
the Trademark Trial and Appeal Board, upon motion for good
cause, orders or the parties stipulate, that the deposition
be taken by oral examination.

37 CFR 2.120(a)(2) A testimonial deposition taken in a
foreign country shall be taken by deposition upon written
questions as provided by 2.124, unless the Board, upon
motion for good cause, orders that the deposition be taken
by oral examination, or the parties so stipulate.

Ordinarily, the discovery deposition of a natural person who
resides in a foreign country, and who is a party or who, at
the time set for the taking of the deposition, is an
officer, director, or managing agent of a party, or a person
designated under FRCP 30(b)(6) or 31(a)(3) to testify on
behalf of a party, must, if taken in a foreign country, be
taken upon written questions in the manner described in 37
CFR 2.124.  See 37 CFR 2.120(c)(1).  See also TBMP
404.03(c)(1), and authorities cited therein.  Moreover, the
Board will not order a natural person residing in a foreign
country to come to the United States for the taking of his
or her discovery deposition.  See TBMP 404.03(c)(1), and
authorities cited therein.

However, the parties may stipulate, or the Board, upon
motion for good cause, may order, that the deposition, when
taken in a foreign country, be taken by oral examination.
See 37 CFR 2.120(c)(1); Orion Group Inc. v. Orion Insurance
Co. P.L.C., 12 USPQ2d 1923 (TTAB 1989); Jonergin Co. v.
Jonergin Vermont Inc., 222 USPQ 337 (Comm'r 1983); and TBMP
404.03(c)(1).

Similarly, a testimony deposition taken in a foreign country
must be taken by deposition upon written questions in the
manner described in 37 CFR 2.124, unless the Board, upon
motion for good cause, orders, or the parties stipulate,
that the deposition be taken by oral examination.  See 37
CFR 2.123(a)(2).

In determining whether good cause exists for a motion to
take a foreign deposition orally, the Board weighs the
equities, including the advantages of an oral deposition and
any financial hardship that the nonmoving party might suffer
if the deposition were taken orally in the foreign country.
See Orion Group Inc. v. Orion Insurance Co. P.L.C., 12
USPQ2d 1923 (TTAB 1989).  Cf. Century 21 Real Estate Corp.
v. Century Life of America, 15 USPQ2d 1079 (TTAB 1990),
corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v.
Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980); and TBMP
532.

521  Motion to Quash Notice of Deposition

A party to an inter partes proceeding before the Board may
file a motion, prior to the taking of a noticed discovery or
testimony deposition, to quash the notice of deposition.  In
the case of a notice of discovery deposition, the motion may
alternatively be titled a motion for a protective order.
See TBMP 414.

A motion to quash may be filed on a variety of grounds.  For
example, a party may move to quash a notice of deposition on
the ground that (1) the proposed deposition is untimely (see
Marshall Field & Co. v. Mrs. Field's Cookies, 17 USPQ2d 1652
(TTAB 1990), and Rhone-Poulenc Industries v. Gulf Oil Corp.,
198 USPQ 372 (TTAB 1978)); or (2) constitutes harassment
(see Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045
(TTAB 1988); cf. Gold Eagle Products Co. v. National
Dynamics Corp., 193 USPQ 109 (TTAB 1976)); or (3) in the
case of a discovery deposition to be taken in the United
States, is not scheduled to be taken in the Federal judicial
district where the proposed deponent resides or is regularly
employed (see 37 CFR 2.120(b)); or (4) in the case of a
deposition to be taken in a foreign country, is scheduled to
be taken orally in violation of 37 CFR 2.120(c) or
2.123(a)(2) (see Rhone-Poulenc Industries v. Gulf Oil
Corp.,supra); or (5) that the deposing party has noticed
depositions for more than one place at the same time, or so
nearly at the same time that reasonable opportunity for
travel from one place of examination to another is not
available (see 37 CFR 2.123(c)); or (6) that there was not
due (i.e., reasonable) notice of the proposed deposition
(see 37 CFR 2.123(c) and 2.124(b)(2); FRCP 30(b) and
31(a); and TBMP 404.04 and 713.05); or (7) that the taking
of the deposition should be deferred until after
determination of a certain motion pending before the Board
(see Crown Wallcovering Corp. v. Wall Paper Manufacturers
Ltd., 188 USPQ 141 (TTAB 1975)); or (8) that the deposing
party improperly seeks to force a foreign natural person to
come to the United States for the taking of his or her
deposition (see TBMP 404.03(c)(1), and authorities cited
therein); or (9) that a testimony deposition scheduled to be
taken upon written questions should be taken orally
(usually, this motion is titled as a motion that a
deposition be taken orally) (see 37 CFR 2.123(a)(1);
Century 21 Real Estate Corp. v. Century Life of America, 15
USPQ2d 1079 (TTAB 1990), corrected, 19 USPQ2d 1479 (TTAB
1990); and Feed Flavors Inc. v. Kemin Industries, Inc., 209
USPQ 589 (TTAB 1980)).

However, the Board has no jurisdiction over nonparty
depositions, or adverse witness depositions, taken by
subpoena, and thus has no authority to quash such
depositions.  See Luehrmann v. Kwik Kopy Corp., 2 USPQ2d
1303 (TTAB 1987), and TBMP 404.03(b)(2) and 713.06(b).

A motion to quash a notice of deposition should be filed
promptly after the grounds therefor become known to the
moving party.  When time is of the essence, the moving party
may telephone the Board interlocutory attorney to whom the
case is assigned and ask that the motion be resolved by
telephone conference call.  See 37 CFR 2.120(i)(1), and
TBMP 502.07(a).  However, the Board will not resolve a
motion by telephone conference until a copy of the motion
has been received by the Board.  A copy of the motion should
also have been received by every other party to the
proceeding.

To expedite matters, the moving party may hand deliver its
motion, at the offices of the Board, to the Board
interlocutory attorney to whom the case is assigned.
Alternatively, if the motion has been filed with the Board
by some (acceptable) method other than hand delivery to the
interlocutory attorney, but has not yet actually been
received by the Board and/or entered in the proceeding file
for which it is intended, the moving party may call the
interlocutory attorney and request permission to fax a copy
of the motion to the Board.  See TBMP 107.

522  Motion for Order re Manner or Place of Document
Production

37 CFR 2.120(d)(2) The production of documents and things
under the provisions of Rule 34 of the Federal Rules of
Civil Procedure will be made at the place where the
documents and things are usually kept, or where the parties
agree, or where and in the manner which the Trademark Trial
and Appeal Board, upon motion, orders.

In an inter partes proceeding before the Board, the place of
production of documents and things is governed by 37 CFR
2.120(d)(2).  See also Unicut Corp. v. Unicut, Inc., 220
USPQ 1013 (TTAB 1983); Georgia-Pacific Corp. v. Great Plains
Bag Co., 190 USPQ 193 (TTAB 1976); and TBMP 408.03.

Accordingly, upon motion, the Board, in its discretion, may
make any appropriate order concerning the place and/or
manner of production of documents and things.  For example,
the Board may order that the responding party photocopy the
documents designated in a request and mail the photocopies
to the requesting party, all at the requesting party's
expense.  See Unicut Corp. v. Unicut, Inc., 220 USPQ 1013
(TTAB 1983); Saul Lefkowitz and Janet E. Rice, Adversary
Proceedings Before the Trademark Trial and Appeal Board, 75
Trademark Rep. 323, 385 (1985); and Janet E. Rice, TIPS FROM
THE TTAB:  Recent Changes in the TTAB Discovery Rules, 74
Trademark Rep. 449, 451 (1984).

523  Motion to Compel Discovery

523.01  In General

37 CFR 2.120(e) Motion for an order to compel discovery.
If a party fails to designate a person pursuant to Rule
30(b)(6) or Rule 31(a) of the Federal Rules of Civil
Procedure, or if a party or such designated person, or an
officer, director or managing agent of a party fails to
attend a deposition or fails to answer any question
propounded in a discovery deposition, or any interrogatory,
or fails to produce and permit the inspection and copying of
any document or thing, the party seeking discovery may file
a motion before the Trademark Trial and Appeal Board for an
order to compel a designation, or attendance at a
deposition, or an answer, or production and an opportunity
to inspect and copy. ...

In inter partes proceedings before the Board, the motion to
compel discovery procedure is available, for a failure to
provide requested discovery, with respect to discovery
depositions, interrogatories, and requests for production of
documents and things.  See 37 CFR 2.120(e).  See also, for
example, MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ
952 (TTAB 1979); General Sealer Corp. v. H. H. Robertson
Co., 193 USPQ 384 (TTAB 1976); Fidelity Prescriptions, Inc.
v. Medicine Chest Discount Centers, Inc., 191 USPQ 127 (TTAB
1976); Spa International, Inc. v. European Health Spa, Inc.,
184 USPQ 747 (TTAB 1975); Johnson & Johnson v. Diamond
Medical, Inc., 183 USPQ 615 (TTAB 1974); Neville Chemical
Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974); and Dow
Corning Corp. v. Doric Corp., 183 USPQ 126 (TTAB 1974).  Cf.
FRCP 37(a)(2)(B).

Alternatively, if a witness objects to, and refuses to
answer (or answer adequately), a question propounded during
a discovery deposition, the propounding party may obtain an
immediate ruling on the propriety of the objection by
applying, under 35 U.S.C. 24, to the Federal district court
in the jurisdiction where the deposition is being taken, for
an order compelling answer.  See TBMP 404.02 and 415.03,
and authorities cited therein.

The motion to compel procedure is not applicable to requests
for admission.  The procedure to be followed in the case of
requests for admission is as set forth in 37 CFR 2.120(h)
and FRCP 36(a).  See TBMP 415.02 and 524.

523.02  Special Requirements for Motion

37 CFR 2.120(e) Motion for an order to compel discovery.
... The motion shall include a copy of the request for
designation or of the relevant portion of the discovery
deposition; or a copy of the interrogatory with any answer
or objection that was made; or a copy of the request for
production, any proffer of production or objection to
production in response to the request, and a list and brief
description of the documents or things that were not
produced for inspection and copying.  The motion must be
supported by a written statement from the moving party that
such party or the attorney therefor has made a good faith
effort, by conference or correspondence, to resolve with the
other party or the attorney therefor the issues presented in
the motion and has been unable to reach agreement.  If
issues raised in the motion are subsequently resolved by
agreement of the parties, the moving party should inform the
Board in writing of the issues in the motion which no longer
require adjudication.

A motion to compel must include a copy of the request for
discovery and the response thereto, as specified in 37 CFR
2.120(e).  See also, with respect to this requirement,
Fidelity Prescriptions, Inc. v. Medicine Chest Discount
Centers, Inc., 191 USPQ 127 (TTAB 1976); Amerace Corp. v.
USM Corp., 183 USPQ 506 (TTAB 1974); and Helene Curtis
Industries, Inc. v. John H. Breck, Inc., 183 USPQ 126 (TTAB
1974).

In addition, the motion must be supported by a written
statement from the moving party that such party or its
attorney has made a good faith effort, by conference or
correspondence, to resolve with the other party or its
attorney the issues presented in the motion, and has been
unable to reach agreement.  See, for example, 37 CFR
2.120(e); Giant Food, Inc. v. Standard Terry Mills, Inc.,
231 USPQ 626 (TTAB 1986); Envirotech Corp. v. Compagnie Des
Lampes, 219 USPQ 448 (TTAB 1979); MacMillan Bloedel Ltd. v.
Arrow-M Corp., 203 USPQ 952 (TTAB 1979); Ford Motor Co. v.
Shelby International, Inc., 193 USPQ 236 (TTAB 1976);
Daimler-Benz Aktiengesellschaft v. Hibner Products Mfg.,
Inc., 189 USPQ 479 (TTAB 1976); Varian Associates v.
Fairfield-Noble Corp., 188 USPQ 581 (TTAB 1975); J. B.
Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB
1975); Penthouse International Ltd. v. Dyn Electronics,
Inc., 184 USPQ 117 (TTAB 1974); and Angelica Corp. v.
Collins & Aikman Corp., 183 USPQ 378 (TTAB 1974).

In the event that issues raised in the motion are
subsequently resolved by the parties, the moving party
should inform the Board in writing of the issues in the
motion which no longer require determination.  See 37 CFR
2.120(e).

For information concerning the special requirements for a
motion to compel answer to interrogatories which are the
subject of a general objection on the ground of excessive
number, see TBMP 406.03(e).

523.03  Time for Filing Motion

A motion to compel does not necessarily have to be filed
during the discovery period.  See Johnson & Johnson v.
Diamond Medical, Inc., 183 USPQ 615 (TTAB 1974).  However,
the motion should be filed within a reasonable time after
the failure to respond to a request for discovery or after
service of the response believed to be inadequate.

523.04  Failure to File Motion

If a party which served a request for discovery receives a
response thereto which it believes to be inadequate, but
fails to file a motion to test the sufficiency of the
response, it may not thereafter be heard to complain about
the sufficiency thereof.  See British Seagull Ltd. v.
Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd,
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32
USPQ2d 1120 (Fed. Cir. 1994); Bigfoot 4x4 Inc. v. Bear Foot
Inc., 5 USPQ2d 1444 (TTAB 1987); Seligman & Latz, Inc. v.
Merit Mercantile Corp., 222 USPQ 720 (TTAB 1984);
Volkswagenwerk Aktiengesellschaft v. Clement Wheel Co., 204
USPQ 76 (TTAB 1979); Procter & Gamble Co. v. Keystone
Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976); and
Comserv Corp. v. Comserv, 179 USPQ 124 (TTAB 1973).  Cf.
TBMP 524.04.  Cf. also TBMP 527.05.

524  Motion to Test Sufficiency of Response to Admission
Request

524.01  In General

37 CFR 2.120(h) Request for admissions.  Requests for
admissions shall be governed by Rule 36 of the Federal Rules
of Civil Procedure except that the Trademark Trial and
Appeal Board does not have authority to award any expenses
to any party. ...

FRCP 36(a) Request for Admission. ... The party who has
requested the admissions may move to determine the
sufficiency of the answers or objections.  Unless the court
determines that an objection is justified, it shall order
that an answer be served.  If the court determines that an
answer does not comply with the requirements of this rule,
it may order either that the matter is admitted or that an
amended answer be served. ...

If a propounding party is dissatisfied with a responding
party's answer or objection to a request for admission, and
wishes to obtain a ruling on the sufficiency thereof, the
propounding party may file a motion with the Board to
determine the sufficiency of the response.  See 37 CFR
2.120(h); FRCP 36(a); Volkswagenwerk Aktiengesellschaft v.
Ridewell Corp., 188 USPQ 690 (TTAB 1975); and Watercare
Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB
1971).  Cf. 37 CFR 2.120(e), and TBMP 523.01.

If the Board, upon motion to test the sufficiency of a
response to a request for admission, determines that an
answer does not comply with the requirements of FRCP 36(a),
it may order either that the matter is deemed admitted or
that an amended answer be served.  If the Board determines
that an objection is not justified, it will order that an
answer be served.  See FRCP 36(a).

524.02  Special Requirements for Motion

37 CFR 2.120(h) Request for admissions. ... A motion by a
party to determine the sufficiency of an answer or objection
to a request made by that party for an admission shall
include a copy of the request for admission and any exhibits
thereto and of the answer or objection.  The motion must be
supported by a written statement from the moving party that
such party or the attorney therefor has made a good faith
effort, by conference or correspondence, to resolve with the
other party or the attorney therefor the issues presented in
the motion and has been unable to reach agreement.  If
issues raised in the motion are subsequently resolved by
agreement of the parties, the moving party should inform the
Board in writing of the issues in the motion which no longer
require adjudication.

A motion to determine the sufficiency of a response to a
request for admission must include a copy of the request for
admission (and any exhibits thereto) and of the answer or
objection.  See 37 CFR 2.120(h).  Cf. 37 CFR 2.120(e).

In addition, the motion must be supported by a written
statement from the moving party that such party or its
attorney has made a good faith effort, by conference or
correspondence, to resolve with the other party or its
attorney the issues presented in the motion, and has been
unable to reach agreement.  See 37 CFR 2.120(h).  Cf. 37
CFR 2.120(e), and TBMP 523.02 and cases cited therein.

In the event that issues raised in the motion are
subsequently resolved by the parties, the moving party
should inform the Board in writing of the issues in the
motion which no longer require determination.  See 37 CFR
2.120(h).  Cf. 37 CFR 2.120(e).

524.03  Time for Filing Motion

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.  Cf. Johnson & Johnson v. Diamond
Medical, Inc., 183 USPQ 615 (TTAB 1974), and TBMP 523.03.
However, the motion should be filed within a reasonable time
after service of the response believed to be inadequate.

524.04  Failure to File Motion

If a party which served a request for admission receives a
response thereto which it believes to be inadequate, but
fails to file a motion to test the sufficiency of the
response, it may not thereafter be heard to complain about
the sufficiency thereof.  See Watercare Corp. v. Midwesco-
Enterprise, Inc., 171 USPQ 696 (TTAB 1971).  Cf. TBMP
523.04, and cases cited therein.

525  Motion to Withdraw or Amend Admission

FRCP 36(b) Effect of Admission.  Any matter admitted under
this rule is conclusively established unless the court on
motion permits withdrawal or amendment of the admission.
...the court may permit withdrawal or amendment when the
presentation of the merits of the action will be subserved
thereby and the party who obtained the admission fails to
satisfy the court that withdrawal or amendment will
prejudice that party in maintaining the action or defense on
the merits.  Any admission made by a party under this rule
is for the purpose of the pending action only and is not an
admission for any other purpose nor may it be used against
the party in any other proceeding.

Any matter admitted under FRCP 36 is conclusively
established unless the Board, upon motion, permits
withdrawal or amendment of the admission.  See FRCP 36(b),
and TBMP 411.04.  This applies both to matters expressly
admitted; and to those deemed admitted for failure to timely
respond to a request for admission, where there is no
persuasive showing that the failure to timely respond was
the result of excusable neglect.  See FRCP 6(b) and 36, and
TBMP 411.01 and 411.04.

The Board, upon motion, may permit withdrawal or amendment
of an admission when the presentation of the merits of the
proceeding will be subserved thereby, and the propounding
party fails to satisfy the Board that withdrawal or
amendment will prejudice said party in maintaining its
action or defense on the merits.  See FRCP 36(b); Hobie
Designs Inc. v. Fred Hayman Beverly Hills Inc., 14 USPQ2d
2064 (TTAB 1990); Johnston Pump/General Valve Inc. v.
Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989); and
BankAmerica Corp. v. International Travelers Cheque Co., 205
USPQ 1233 (TTAB 1979).  See also American Automobile Ass'n
(Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930
F.2d 1117, 19 USPQ2d 1142 (5th Cir. 1991).

The timing of a motion to withdraw or amend an admission
plays a significant role in the Board's determination of
whether the propounding party will be prejudiced by
withdrawal or amendment.  See Hobie Designs Inc. v. Fred
Hayman Beverly Hills Inc., 14 USPQ2d 2064 (TTAB 1990)
(opposer's testimony period had not yet opened and any
possible prejudice to opposer, the propounding party, could
be overcome by extending the discovery period), and Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 13
USPQ2d 1719 (TTAB 1989) (case was still in pre-trial stage
and prejudice to the propounding party could be avoided or
mitigated by reopening discovery for that party).  See also
American Automobile Ass'n (Inc.) v. AAA Legal Clinic of
Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142 (5th
Cir. 1991).  Cf. TBMP 507.02.

526  Motion for a Protective Order

37 CFR 2.120(f) Motion for a protective order.  Upon motion
by a party from whom discovery is sought, and for good
cause, the Trademark Trial and Appeal Board may make any
order which justice requires to protect a party from
annoyance, embarrassment, oppression, or undue burden or
expense, including one or more of the types of orders
provided by clauses (1) through (8), inclusive, of Rule
26(c) of the Federal Rules of Civil Procedure.  If the
motion for a protective order is denied in whole or in part,
the Board may, on such conditions (other than an award of
expenses to the party prevailing on the motion) as are just,
order that any party provide or permit discovery.

In inter partes proceedings before the Board, motions for a
protective order are governed by 37 CFR 2.120(f).

It is generally inappropriate for a party to respond to a
request for discovery by filing a motion attacking it, such
as a motion to strike, or a motion for a protective order.
Rather, the party ordinarily should respond by providing the
information sought in those portions of the request which it
believes to be proper, and stating its objections to those
which it believes to be improper.  See TBMP 414, and cases
cited therein.

Moreover, if a party upon which interrogatories have been
served believes that the number of interrogatories served
exceeds the limitation specified in 37 CFR 2.120(d)(1), and
is not willing to waive this basis for objection, the party
must, within the time for (and instead of) serving answers
and specific objections to the interrogatories, or a motion
for a protective order, serve a general objection on the
ground of their excessive number, leaving the inquiring
party with the burden of filing a motion to compel if it
believes that the objection is not well taken.  See 37 CFR
2.120(d)(1), and TBMP 406.03(e).

Nevertheless, there are certain situations (such as, for
example, when a request for discovery otherwise constitutes
clear harassment, or when a defendant upon which a request
for discovery has been served is not and was not, at the
time of the commencement of the proceeding, the real party
in interest) in which a party may properly respond to a
request for discovery by filing a motion for a protective
order that the discovery not be had, or be had only on
specified terms and conditions.  See, for example, Gold
Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109
(TTAB 1976).

Except in those situations, a motion for a protective order
ordinarily should be filed in a Board proceeding only in
response to a motion to compel where, for example, matter
sought to be discovered assertedly constitutes trade secret
or confidential information, or cannot be provided without
undue burden or expense.  See Johnston Pump/General Valve
Inc. v. Chromalloy American Corp., 10 USPQ2d 1671 (TTAB
1988); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689
(TTAB 1975); and Saul Lefkowitz and Janet E. Rice, Adversary
Proceedings Before the Trademark Trial and Appeal Board, 75
Trademark Rep. 323, 387-388 (1985).

When the Board grants a request for a protective order with
respect to confidential or trade secret information, it
normally will direct either the disclosing party, or the
parties together, to prepare an order with terms which are
mutually agreeable to them.  See, for example, Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 10
USPQ2d 1671 (TTAB 1988); and Neville Chemical Co. v.
Lubrizol Corp., 184 USPQ 689 (TTAB 1975).

For examples of cases involving a motion for a protective
order relating to discovery, see Double J of Broward Inc. v.
Skalony Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991) (request
for protective order that discovery be governed by the Hague
Evidence Convention); Johnston Pump/General Valve Inc. v.
Chromalloy American Corp., 10 USPQ2d 1671 (TTAB 1988)
(motion for protective order relating to discovery of
confidential information); Gold Eagle Products Co. v.
National Dynamics Corp., 193 USPQ 109 (TTAB 1976) (motion
for protective order that assignor need not respond to
discovery requests); Crown Wallcovering Corp. v. Wall Paper
Manufacturers Ltd., 188 USPQ 141 (TTAB 1975) (motion for
protective order forbidding that discovery not be taken
until Board's determination of pending motion to dismiss);
and Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689
(TTAB 1975) (request for protective order relating to
discovery of confidential information).

For further information concerning protective orders, see
TBMP 416.

527  Motion for Discovery Sanctions

527.01  For Failure to Comply With Board Discovery Order

37 CFR 2.120(g) Sanctions.
(1) If a party fails to comply with an order of the
Trademark Trial and Appeal Board relating to dicovery,
including a protective order, the Board may make any
appropriate order, including any of the orders provided in
Rule 37(b)(2) of the Federal Rules of Civil Procedure,
except that the Board does not have authority to hold any
person in contempt or to award any expenses to any party.
The Board may impose against a party any of the sanctions
provided by this subsection in the event that said party or
any attorney, agent, or designated witness of that party
fails to comply with a protective order made pursuant to
Rule 26(c) of the Federal Rules of Civil Procedure.

If a party fails to comply with an order of the Board
relating to discovery, including a protective order or an
order compelling discovery, the Board may enter appropriate
sanctions, as defined in 37 CFR 2.120(g)(1).  See 37 CFR
2.120(g)(1).  See also, for example, TBMP 502.06; Seligman
& Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720 (TTAB
1984); Unicut Corp. v. Unicut, Inc., 222 USPQ 341 (TTAB
1984); Unicut Corp. v. Unicut, Inc., 220 USPQ 1013 (TTAB
1983); and Caterpillar Tractor Co. v. Catfish Anglers
Together, Inc., 194 USPQ 99 (TTAB 1976).  Cf. Ingalls
Shipbuilding, Inc. v. United States, 857 F.2d 1448, 11 Fed.
R. Serv.3d 1342 (Fed. Cir. 1988).  In the case of a
protective order, these sanctions may be entered by the
Board against a party if the party or any attorney, agent,
or designated witness of the party fails to comply with the
protective order.  See 37 CFR 2.120(g)(1).

The sanctions which may be entered by the Board include,
inter alia, striking all or part of the pleadings of the
disobedient party; refusing to allow the disobedient party
to support or oppose designated claims or defenses;
prohibiting the disobedient party from introducing
designated matters in evidence; and entering judgment
against the disobedient party.  However, the Board does not
have authority to hold any person in contempt, or to award
any expenses, including attorneys' fees, to any party.  See
37 CFR 2.120(g)(1) and 2.127(f), and TBMP 502.06.

The motion for sanctions for failure to comply with an order
of the Board lies only when the Board has entered an order
relating to discovery (i.e., an order compelling discovery
or a protective order) and the order has assertedly been
violated.  See, for example, MacMillan Bloedel Ltd. v. Arrow-
M Corp., 203 USPQ 952 (TTAB 1979); General Sealer Corp. v.
H. H. Robertson Co., 193 USPQ 384 (TTAB 1976); Spa
International, Inc. v. European Health Spa, Inc., 184 USPQ
747 (TTAB 1975); and Johnson & Johnson v. Diamond Medical,
Inc., 183 USPQ 615 (TTAB 1974).

The motion for sanctions for failure to comply with an order
of the Board relating to discovery does not apply in
situations involving requests for admissions.  Sanctions in
those situations are governed by FRCP 36, except that the
Board does not have authority to award any expenses to any
party.  See 37 CFR 2.120(h), and TBMP 502.06.  For
information concerning sanctions for failure to respond, or
respond properly, to requests for admissions, see TBMP
527.04.

527.02  If Party Says It Will Not Respond to Discovery
Request

37 CFR 2.120(g)(2) If a party, or an officer, director, or
managing agent of a party, or a person designated under Rule
30(b)(6) or 31(a) of the Federal Rules of Civil Procedure to
testify on behalf of a party, fails to attend the party's or
person's discovery deposition, after being served with
proper notice, or fails to provide any response to a set of
interrogatories or to a set of requests for production of
documents and things, and such party or the party's attorney
or other authorized representative informs the party seeking
discovery that no response will be made thereto, the Board
may make any appropriate order, as specified in paragraph
(g)(1) of this section.

The motion for sanctions under 37 CFR 2.120(g)(2) is
available only for discovery depositions, interrogatories,
and requests for production of documents and things, and
lies only where the responding party (1) has failed to
respond, and (2) has informed the party seeking discovery
that no response will be made.

The sanctions which may be entered by the Board include,
inter alia, striking all or part of the pleadings of the
disobedient party; refusing to allow the disobedient party
to support or oppose designated claims or defenses;
prohibiting the disobedient party from introducing
designated matters in evidence; and entering judgment
against the disobedient party.  However, the Board does not
have authority to hold any person in contempt, or to award
any expenses, including attorneys' fees, to any party.  See
37 CFR 2.120(g)(1) and (2), and 2.127(f), and TBMP
502.06.

The motion for sanctions under 37 CFR 2.120(g)(2) does not
apply in situations involving requests for admissions.  For
information concerning sanctions for failure to respond, or
respond properly, to requests for admissions, see TBMP
527.04.

527.03  Untimely Response to Discovery Requests

A party which fails to respond to a request for discovery
(except for a request for admission) during the time allowed
therefor, and which is unable to show that its failure was
the result of excusable neglect, may be found, upon motion
to compel filed by the propounding party, to have forfeited
its right to object to the discovery request on its merits.
See Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB
1987); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303 (TTAB
1987); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ
448 (TTAB 1979); MacMillan Bloedel Ltd. v. Arrow-M Corp.,
203 USPQ 952 (TTAB 1979); and Crane Co. v. Shimano
Industrial Co., 184 USPQ 691 (TTAB 1975).

527.04  In the Case of Requests for Admission

The entry of sanctions for failure to respond, or respond
properly, to requests for admission is governed by 37 CFR
2.120(h) and FRCP 36, except that the Board does not have
authority to award expenses to any party.  See 37 CFR
2.120(h), and TBMP 502.06.

If a party upon which requests for admission have been
served fails to file a timely response thereto, the requests
will stand admitted (automatically), and may be relied upon
by the propounding party pursuant to 37 CFR 2.120(j)(3)(i),
unless the party upon which the requests were served is able
to show that its failure to timely respond was the result of
excusable neglect; or unless a motion to withdraw or amend
the admissions is filed pursuant to FRCP 36(b), and granted
by the Board.  See FRCP 6(a) and 36(a), and TBMP 411.01.
For information concerning motions to withdraw or amend
admissions, see TBMP 525.

If a party upon which requests for admission have been
served responds by serving answers and/or objections
thereto, and the propounding party believes that one or more
of the answers and/or objections is insufficient, the
propounding party may file a motion with the Board to
determine the sufficiency of the answers and/or objections
believed to be insufficient.  See 37 CFR 2.120(h); FRCP
36(a); Volkswagenwerk Aktiengesellschaft v. Ridewell Corp.,
188 USPQ 690 (TTAB 1975); and Watercare Corp. v. Midwesco-
Enterprise, Inc., 171 USPQ 696 (TTAB 1971).  If the Board
determines that an answer does not comply with the
requirements of FRCP 36(a), it may order either that the
matter is deemed admitted or that an amended answer be
served.  If the Board determines that an objection is not
justified, it will order that an answer be served.  See FRCP
36(a).  For information concerning motions to determine the
sufficiency of answers or objections to requests for
admission, see TBMP 524.

527.05  Estoppel Sanction

A party which responds to a request for discovery by
indicating that it does not have the information sought, or
by stating objections thereto, may be barred by its own
action from later introducing the information sought in the
request as part of its evidence on the case, providing that
the propounding party raises the matter by objecting to the
evidence in question on that ground, and preserves the
objection in its brief on the case (it is not necessary that
the objecting party file a motion asking for application of
this sanction).  See, for example Weiner King, Inc. v.
Wiener King Corp., 615 F.2d 512, 204 USPQ 820 (CCPA 1980);
Super Valu Stores Inc. v. Exxon Corp., 11 USPQ2d 1539 (TTAB
1989); Johnston Pump/General Valve Inc. v. Chromalloy
American Corp., 10 USPQ2d 1671 (TTAB 1988); Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988);
ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987);
National Aeronautics and Space Administration v. Bully Hill
Vineyards Inc., 3 USPQ2d 1671 (TTAB 1987); Sunkist Growers,
Inc. v. Benjamin Ansehl Co., 229 USPQ 147 (TTAB 1985); Era
Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734
(TTAB 1981); Visual Information Institute, Inc. v. Vicon
Industries Inc., 209 USPQ 179 (TTAB 1980); Shoe Factory
Supplies Co. v. Thermal Engineering Co., 207 USPQ 517 (TTAB
1980); Refreshment Machinery Inc. v. Reed Industries, Inc.,
196 USPQ 840 (TTAB 1977); Autac Inc. v. Walco Systems, Inc.,
195 USPQ 11 (TTAB 1977); and Georgia-Pacific Corp. v. Great
Plains Bag Co., 190 USPQ 193 (TTAB 1976).  Cf. Charrette
Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040
(TTAB 1989); Nestle Foods Corp. v. Kellogg Co., 6 USPQ2d
1145 (TTAB 1988); Bigfoot 4x4 Inc. v. Bear Foot Inc., 5
USPQ2d 1444 (TTAB 1987); Volkswagenwerk Aktiengesellschaft
v. Clement Wheel Co., 204 USPQ 76 (TTAB 1979); Procter &
Gamble Co. v. Keystone Automotive Warehouse, Inc., 191 USPQ
468 (TTAB 1976); and TBMP 523.04.

528  Motion for Summary Judgment

FRCP 56.  Summary Judgment
(a) For Claimant.  A party seeking to recover upon a claim
[or] counterclaim ... may ... move with or without
supporting affidavits for a summary judgment in the party's
favor upon all or any part thereof.

(b) For Defending Party.  A party against whom a claim [or]
counterclaim ... is asserted ... may ... move with or
without supporting affidavits for a summary judgment in the
party's favor as to all or any part thereof.

(c) Motion and Proceedings Thereon.  ... The adverse party
... may serve opposing affidavits.  The judgment sought
shall be rendered forthwith if the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law. ...

(d) Case Not Fully Adjudicated on Motion.  If on motion
under this rule judgment is not rendered upon the whole case
or for all the relief asked and a trial is necessary, the
court ..., by examining the pleadings and the evidence
before it ..., shall if practicable ascertain what material
facts exist without substantial controversy and what
material facts are actually and in good faith controverted.
It shall thereupon make an order specifying the facts that
appear without substantial controversy, ... and directing
such further proceedings in the action as are just.  Upon
the trial of the action the facts so specified shall be
deemed established, and the trial shall be conducted
accordingly.
                              
(e) Form of Affidavits; Further Testimony; Defense Required.
Supporting and opposing affidavits shall be made on personal
knowledge, shall set forth such facts as would be admissible
in evidence, and shall show affirmatively that the affiant
is competent to testify to the matters stated therein.
Sworn or certified copies of all papers or parts thereof
referred to in an affidavit shall be attached thereto or
served therewith.  The court may permit affidavits to be
supplemented or opposed by depositions, answers to
interrogatories, or further affidavits.  When a motion for
summary judgment is made and supported as provided in this
rule, an adverse party may not rest upon the mere
allegations or denials of the adverse party's pleading, but
the adverse party's response, by affidavits or as otherwise
provided in this rule, must set forth specific facts showing
that there is a genuine issue for trial.  If the adverse
party does not so respond, summary judgment, if appropriate,
shall be entered against the adverse party.

(f) When Affidavits are Unavailable.  Should it appear from
the affidavits of a party opposing the motion that the party
cannot for reasons stated present by affidavit facts
essential to justify the party's opposition, the court may
refuse the application for judgment or may order a
continuance to permit affidavits to be obtained or
depositions to be taken or discovery to be had or may make
such other order as is just.
                        *     *     *

528.01  General Nature of Motion

The motion for summary judgment is a pretrial device to
dispose of cases in which "the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to judgment as a matter of law."  See, for example,
FRCP 56(c); Celotex Corp. v. Catrett, 477 U.S. 317 (1986);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); Dana
Corp. v. Belvedere International Inc., 950 F.2d 1555, 21
USPQ2d 1047 (Fed. Cir. 1991); Copelands' Enterprises Inc. v.
CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987); Pure Gold, Inc. v. Syntex (U.S.A.), Inc.,
739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); Flatley v.
Trump, 11 USPQ2d 1284 (TTAB 1989); Von Schorlemer v. Baron
Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376 (TTAB
1986); Bongrain International (American) Corp. v. Moquet
Ltd., 230 USPQ 626 (TTAB 1986); and Giant Food, Inc. v.
Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986).

The purpose of the motion is judicial economy, that is, to
avoid an unnecessary trial where there is no genuine issue
of material fact and more evidence than is already available
in connection with the summary judgment motion could not
reasonably be expected to change the result in the case.
See, for example, Pure Gold, Inc. v. Syntex (U.S.A.), Inc.,
739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); Exxon Corp. v.
National Foodline Corp., 579 F.2d 1244, 198 USPQ 407 (CCPA
1978); University Book Store v. University of Wisconsin
Board of Regents, 33 USPQ2d 1385 (TTAB 1994); Shalom
Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB
1993); National Football League v. Jasper Alliance Corp., 16
USPQ2d 1212 (TTAB 1990); Kellogg Co. v. Pack'Em Enterprises
Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991); and Societe Des Produits
Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d
1241 (TTAB 1989).

The summary judgment procedure is regarded as "a salutary
method of disposition," and the Board does not hesitate to
dispose of cases on summary judgment when appropriate.  See,
for example, Sweats Fashions Inc. v. Pannill Knitting Co.,
833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987); Levi Strauss
& Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939 (Fed.
Cir. 1984); Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739
F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); Blansett
Pharmaceutical Co. v. Carmrick Laboratories Inc., 25 USPQ2d
1473 (TTAB 1992); INB National Bank v. Metrohost Inc., 22
USPQ2d 1585 (TTAB 1992); Bongrain International (American)
Corp. v. Moquet Ltd., 230 USPQ 626 (TTAB 1986); T. Jeffrey
Quinn, TIPS FROM THE TTAB:  Discovery Safeguards in Motions
for Summary Judgment:  No Fishing Allowed, 80 Trademark Rep.
413, at 413-414 (1990); and T. Jeffrey Quinn, TIPS FROM THE
TTAB:  Inter Partes Summary Judgment Revisited, 76 Trademark
Rep. 73, 77-78 (1986).  But see Copelands' Enterprises Inc.
v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991)
("As a general rule, the factual question of intent is
particularly unsuited to disposition on summary judgment."),
and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503 (TTAB 1993).

A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to judgment as a matter of
law.  See, for example, Copelands' Enterprises Inc. v. CNV
Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991);
Scripps Clinic & Research Foundation v. Genentech Inc., 927
F.2d 1565, 18 USPQ2d 1001, clarified, on recon., 18 USPQ2d
1896 (Fed. Cir. 1991); Meyers v. Brooks Shoe Inc., 912 F.2d
1459, 16 USPQ2d 1055 (Fed. Cir. 1990); C.R. Bard Inc. v.
Advanced Cardiovascular Systems Inc., 911 F.2d 670, 15
USPQ2d 1540 (Fed. Cir. 1990); Kellogg Co. v. Pack'Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); and Flatley v.
Trump, 11 USPQ2d 1284 (TTAB 1989).  The burden of the moving
party may be met by showing (that is, pointing out) "that
there is an absence of evidence to support the nonmoving
party's case."  See Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242
(1986).  See also Kellogg Co. v. Pack'Em Enterprises Inc.,
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Copelands'
Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295
(Fed. Cir. 1991); Avia Group International Inc. v. L.A. Gear
California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir.
1988); and Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).

When the moving party's motion is supported by evidence
sufficient, if unopposed, to indicate that there is no
genuine issue of material fact, and that the moving party is
entitled to judgment, the nonmoving party may not rest on
mere denials or conclusory assertions, but rather must
proffer countering evidence, by affidavit or as otherwise
provided in FRCP 56, showing that there is a genuine factual
dispute for trial.  See FRCP 56(e); Copelands' Enterprises
Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir.
1991); Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); C.R.
Bard Inc. v. Advanced Cardiovascular Systems Inc., 911 F.2d
670, 15 USPQ2d 1540 (Fed. Cir. 1990); Keebler Co. v. Murray
Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir.
1989); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987); Levi Strauss &
Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939 (Fed. Cir.
1984); Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d
624, 222 USPQ 741 (Fed. Cir. 1984); Blansett Pharmaceutical
Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473 (TTAB
1992); Flow Technology Inc. v. Picciano, 18 USPQ2d 1970
(TTAB 1991); National Football League v. Jasper Alliance
Corp., 16 USPQ2d 1212 (TTAB 1990); Kellogg Co. v. Pack'Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); and Coup v.
Vornado Inc., 9 USPQ2d 1824 (TTAB 1988).  A factual dispute
is genuine only if, on the evidence of record, a reasonable
fact finder could resolve the matter in favor of the
nonmoving party.  See Lloyd's Food Products Inc. v. Eli's
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods
Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992); Copelands' Enterprises Inc. v. CNV Inc., 945
F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); C.R. Bard Inc. v. Advanced
Cardiovascular Systems Inc., 911 F.2d 670, 15 USPQ2d 1540
(Fed. Cir. 1990); and Sweats Fashions Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).

In deciding a motion for summary judgment, the Board may not
resolve an issue of fact; it may only determine whether a
genuine issue of material fact exists.  See Meyers v. Brooks
Shoe Inc., 912 F.2d 1459, 16 USPQ2d 1055 (Fed. Cir. 1990);
Litton Industries, Inc. v. Litronix Inc., 577 F.2d 709, 198
USPQ 280 (CCPA 1978); University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994);
Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516
(TTAB 1993); Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989);
and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ
955 (TTAB 1986).  The nonmoving party must be given the
benefit of all reasonable doubt as to whether genuine issues
of material fact exist; and the evidentiary record on
summary judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most favorable
to the nonmoving party.  See Lloyd's Food Products Inc. v.
Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods
Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992); Copelands' Enterprises Inc. v. CNV Inc., 945
F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Larry Harmon
Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662,
18 USPQ2d 1292 (Fed. Cir. 1991); Scripps Clinic & Research
Foundation v. Genentech Inc., 927 F.2d 1565, 18 USPQ2d 1001,
clarified, on recon., 18 USPQ2d 1896 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); C.R. Bard Inc. v.
Advanced Cardiovascular Systems Inc., 911 F.2d 670, 15
USPQ2d 1540 (Fed. Cir. 1990); Litton Industries, Inc. v.
Litronix Inc., 577 F.2d 709, 198 USPQ 280 (CCPA 1978);
University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385 (TTAB 1994); Shalom Children's Wear
Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993); Flatley v.
Trump, 11 USPQ2d 1284 (TTAB 1989); and Giant Food, Inc. v.
Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986).

A fact is material if it "may affect the decision, whereby
the finding of that fact is relevant and necessary to the
proceedings."  See Opryland USA Inc. v. Great American Music
Show Inc., supra, at 1472, and University Book Store v.
University of Wisconsin Board of Regents, 33 USPQ2d 1385
(TTAB 1994).  However, a dispute over a fact which would not
alter the Board's decision on the legal issue will not
prevent entry of summary judgment.  See, for example,
Kellogg Co. v. Pack'Em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991); Pure Gold, Inc. v. Syntex
(U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984);
and Bongrain International (American) Corp. v. Moquet Ltd.,
230 USPQ 626 (TTAB 1986).  See also Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992)
(whether a genuine factual issue is material so as to
preclude summary judgment depends upon applicable
substantive law).  Further, a dispute over a fact relating
only to an issue which is not the subject of the summary
judgment motion is not a genuine issue of fact material to
the determination of the motion.  See United States Olympic
Committee v. O-M Bread Inc., 29 USPQ2d 1555 (TTAB 1993).

Where both parties have moved for summary judgment, the mere
fact that they have done so does not establish that there is
no genuine issue of material fact, and that judgment should
be entered in favor of one of them.  See Scripps Clinic &
Research Foundation v. Genentech Inc., 927 F.2d 1565, 18
USPQ2d 1001, clarified, on recon., 18 USPQ2d 1896 (Fed. Cir.
1991), and University Book Store v. University of Wisconsin
Board of Regents, 33 USPQ2d 1385 (TTAB 1994).

A party moving for summary judgment should specify, in its
brief in support of the motion, the material facts which are
undisputed.  The nonmoving party, in turn, should specify,
in its brief in opposition to the motion, the material facts
which are in dispute.  See T. Jeffrey Quinn, TIPS FROM THE
TTAB:  Discovery Safeguards in Motions for Summary Judgment:
No Fishing Allowed, 80 Trademark Rep. 413 (1990).

A motion for summary judgment should be filed in single (not
multiple) form.

528.02  Time for Filing Motion

37 CFR 2.127(e)(1) A motion for summary judgment should be
filed prior to the commencement of the first testimony
period, as originally set or as reset, and the Trademark
Trial and Appeal Board, in its discretion, may deny as
untimely any motion for summary judgment filed thereafter.

A motion for summary judgment filed in an inter partes
proceeding before the Board ordinarily should be filed after
the time when the Board notifies the parties of the
institution of the proceeding, but before the opening of the
first testimony period, as originally set or as reset.

When the Board determines that an opposition or a petition
to cancel has been timely filed in proper form, and that the
required fee has been submitted, the Board sets up the
opposition or cancellation proceeding file, and prepares a
letter wherein it, inter alia, notifies defendant of the
filing of the complaint, and notifies both parties of the
formal institution of the proceeding.  A copy of the
notification letter is mailed to each of the parties.  The
Board sends a copy of the complaint to the defendant along
with its copy of the notification letter.  See TBMP 315.01.
The defendant does not know, until it receives these papers
from the Board, that an opposition or cancellation has been
timely filed in proper form, with the required fee, and that
the proceeding has been instituted by the Board.
Accordingly, a motion for summary judgment filed prior to
the mailing of the Board's notification letter is premature,
and the defendant need not respond thereto.  See Nabisco
Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993).

Further, the motion for summary judgment is a pretrial
device, intended to save the time and expense of a full
trial when a party is able to demonstrate, prior to trial,
that there is no genuine issue of material fact, and that it
is entitled to judgment as a matter of law.  See TBMP
528.01, and authorities cited therein.  In inter partes
proceedings before the Board, the trial period commences
with the opening of the first testimony period (see TBMP
504.01 and 701), testimony is taken out of the presence of
the Board, and it is the policy of the Board not to read
trial testimony or examine other trial evidence prior to
final decision (see TBMP 502.01, and cases cited therein).
For these reasons, a motion for summary judgment ordinarily
should be filed prior to the opening of the first testimony
period, as originally set or as reset, and the Board, in its
discretion, may deny as untimely any summary judgment motion
filed thereafter.  See, for example, 37 CFR 2.127(e)(1);
Blansett Pharmaceutical Co. v. Carmrick Laboratories Inc.,
25 USPQ2d 1473 (TTAB 1992); Von Schorlemer v. Baron Herm.
Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376 (TTAB 1986);
Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing
& Cleaning Co., 226 USPQ 718 (TTAB 1985); American Meat
Institute v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB
1981); Allegro High Fidelity, Inc. v. Zenith Radio Corp.,
197 USPQ 550 (TTAB 1977); La Maur, Inc. v. Bagwells
Enterprises, Inc., 193 USPQ 234 (Comm'r 1976); Peterson's
Ltd. v. Consolidated Cigar Corp., 183 USPQ 559 (TTAB 1974);
and Curtice-Burns, Inc. v. Northwest Sanitation Products,
Inc., 182 USPQ 572 (Comm'r 1974).  Cf. TBMP 504.01.  If
testimony periods are reset prior to the opening of the
plaintiff's testimony period-in-chief, a motion for summary
judgment filed before a first trial period commences is
timely.  Once the first trial period commences, however, any
summary judgment motion filed thereafter is untimely, even
if it is filed prior to the opening of a rescheduled
testimony period-in-chief for plaintiff, and/or even if no
trial evidence has actually been adduced by the plaintiff.
See La Maur, Inc. v. Bagwells Enterprises, Inc., supra;
David J. Kera, TIPS FROM THE TTAB:  Summary Judgment, 71
Trademark Rep. 59, 62 (1981); and T. Jeffrey Quinn, TIPS
FROM THE TTAB:  Inter Partes Summary Judgment Revisited, 76
Trademark Rep. 73, at 73-74 (1986).

The Board generally will not consider a motion for summary
judgment filed after the first trial period commences unless
it involves a matter of res judicata (claim preclusion) or
collateral estoppel (issue preclusion); was submitted by
agreement of the parties (prior to the taking of any
testimony); or was not opposed by the nonmoving party (at
least on the basis of its untimeliness).  See Bausch & Lomb
Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986);
Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299 (TTAB 1986),
aff'd, Vesper Corp. v. Lukens Inc., 831 F.2d 306 (Fed. Cir.
1987); Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985);
and Foodland, Inc. v. Foodtown Super Markets, Inc., 138 USPQ
591 (TTAB 1963).

528.03  Suspension Pending Determination of Motion

37 CFR 2.127(d) When any party files a motion to dismiss,
or a motion for judgment on the pleadings, or a motion for
summary judgment, or any other motion which is potentially
dispositive of a proceeding, the case will be suspended by
the Trademark Trial and Appeal Board with respect to all
matters not germane to the motion and no party should file
any paper which is not germane to the motion.  If the case
is not disposed of as a result of the motion, proceedings
will be resumed pursuant to an order of the Board when the
motion is decided.

When a party files a timely motion for summary judgment, the
Board will suspend proceedings in the case with respect to
all matters not germane to the motion (if the motion was
untimely filed, the Board, in its discretion, may issue an
immediate action denying the motion for that reason).  See
37 CFR 2.127(d) and (e)(1).  The filing of a summary
judgment motion does not, in and of itself, automatically
suspend proceedings in a case; rather, proceedings are
suspended when the Board issues an order to that effect.
See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ
955 (TTAB 1986), and T. Jeffrey Quinn, TIPS FROM THE TTAB:
Inter Partes Summary Judgment Revisited, 76 Trademark Rep.
73, at 74 (1986).  Cf. Consultants & Designers, Inc. v.
Control Data Corp., 221 USPQ 635 (TTAB 1984).  If the
Board's determination of the summary judgment motion does
not dispose of the case, the Board ordinarily will issue an
order resuming proceedings.  See 37 CFR 2.127(d).

Once the Board has suspended proceedings in a case pending
the determination of a motion for summary judgment, no party
should file any paper which is not germane to the motion.
See 37 CFR 2.127(d).  Examples of papers which are or may
be germane to a motion for summary judgment include a brief
in opposition to the summary judgment motion, a motion for
an extension of time in which to respond to the summary
judgment motion, a motion under FRCP 56(f) for discovery to
enable the nonmoving party to respond to the summary
judgment motion, a cross-motion for summary judgment, and a
motion for leave to amend a party's pleading.  See TBMP
528.07, and cases cited therein (motion for leave to amend
pleading); and Nestle Co. v. Joyva Corp., 227 USPQ 477 (TTAB
1985) (cross-motion for summary judgment).

528.04  Miscaptioned Motion

If, on a motion captioned as a motion to dismiss (for
failure to state a claim upon which relief can be granted),
or a motion for judgment on the pleadings, matters outside
the pleadings are submitted and not excluded by the Board,
the motion will be treated as a motion for summary judgment
under FRCP 56.  Ordinarily, the parties to the proceeding
will be notified that the motion to dismiss, or for judgment
on the pleadings, is being treated as a motion for summary
judgment, and they will be given reasonable opportunity to
present all material made pertinent to such a motion by FRCP
56.  See TBMP 503.04 and 504.03, and authorities cited
therein.  Such notice may be unnecessary, however, in those
cases where the parties themselves clearly have treated a
motion to dismiss, or a motion for judgment on the
pleadings, as a motion for summary judgment, and the
nonmoving party has responded to the motion on that basis.
See TBMP 503.04 and 504.03, and Selva & Sons, Inc. v. Nina
Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir.
1983).  Cf. Parker Brothers v. Tuxedo Monopoly, Inc., 225
USPQ 1222 (TTAB 1984).

Conversely, a motion for summary judgment without supporting
evidence is the functional equivalent of a motion to dismiss
for failure to state a claim upon which relief can be
granted, or of a motion for judgment on the pleadings.  See
S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221
(TTAB 1987); and Wright, Miller & Kane, Federal Practice and
Procedure:  Civil 2d 2722 (1983).  For information
concerning the motion to dismiss for failure to state a
claim, see TBMP 503.  For information concerning the motion
for judgment on the pleadings, see TBMP 504.

528.05  Summary Judgment Evidence

528.05(a)  In General

The types of evidence which may be submitted in support of,
or in opposition to, a motion for summary judgment include
"the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any."
See FRCP 56(c).  See also FRCP 56(e).

The evidentiary record upon summary judgment in an inter
partes proceeding before the Board also includes, without
action by any party, the file of any application or
registration which is the subject of the proceeding.  See 37
CFR 2.122(b).  It also includes a copy of any registration
pleaded and made of record by the plaintiff with its
complaint, in the manner prescribed in 37 CFR 2.122(d)(1).
In addition, a party may make of record, for purposes of
summary judgment, copies of other registrations; documents
or things produced in response to a request for production;
official records, if competent evidence and relevant to an
issue; printed publications, such as books and periodicals,
available to the general public in libraries or of general
circulation among members of the public or that segment of
the public which is relevant under an issue, if the
publication is competent evidence and relevant to an issue;
and testimony from other proceedings, so far as relevant and
material.  See 37 CFR 2.122(b), 2.122(d)(2), 2.122(e),
2.122(f), and 2.127(e)(2).

In a Board proceeding, the only evidentiary materials likely
to be already of record when a motion for summary judgment
is filed are the pleadings; the file of any application or
registration which is the subject matter of the proceeding;
and any registration pleaded and made of record by the
plaintiff with its complaint.  See Kellogg Co. v. Pack'Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).  Any other
evidence which a party wishes to have considered upon
summary judgment must be submitted in connection with the
summary judgment motion.

Evidence submitted in connection with a motion for summary
judgment is of record only for purposes of that motion.  If
the case goes to trial, the summary judgment evidence does
not form part of the evidentiary record to be considered at
final hearing unless it is properly introduced in evidence
during the appropriate trial period.  See Levi Strauss & Co.
v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993);
Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); American
Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712
(TTAB 1981); Oxy Metal Industries Corp. v. Technic, Inc.,
189 USPQ 57 (TTAB 1975), summ. judgment granted, 191 USPQ 50
(TTAB 1976); and Clairol Inc. v. Holland Hall Products,
Inc., 165 USPQ 214 (TTAB 1970).

What follows, in TBMP 528.05(b) through 528.05(e), is a
more detailed discussion of some of the types of evidence
which may be submitted in connection with a summary judgment
motion.

528.05(b)  Affidavits and Accompanying Exhibits

Affidavits may be submitted in support of, or in opposition
to, a motion for summary judgment provided that they (l) are
made on personal knowledge; (2) set forth such facts as
would be admissible in evidence; and (3) show affirmatively
that the affiant is competent to testify to the matters
stated therein.  See FRCP 56(e).  See also FRCP 56(c);
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793 (Fed. Cir. 1987); C & G Corp. v. Baron Homes,
Inc., 183 USPQ 60 (TTAB 1974); John T. Clark Co. v. Colgate-
Palmolive Co., 176 USPQ 93 (TTAB 1972); 4U Company of
America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB 1972);
and Jos. Schlitz Brewing Co. v. United Vintners, Inc., 166
USPQ 493 (TTAB 1970).  This is so even though affidavits are
self-serving in nature, and even though there is no
opportunity for cross-examination of the affiant (of course,
an adverse party may have an opportunity for direct
examination of the affiant, if a FRCP 56(f) motion to take
the discovery deposition of the affiant is made and granted-
-see TBMP 528.06).  See FRCP 56(e); C & G Corp. v. Baron
Homes, Inc., supra; and Jos. Schlitz Brewing Co. v. United
Vintners, Inc., supra.

The Board may permit affidavits submitted in connection with
a summary judgment motion to be supplemented or opposed by
depositions, answers to interrogatories, or further
affidavits.  See FRCP 56(e), and Shalom Children's Wear Inc.
v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).

Documents submitted with a summary judgment affidavit, but
not identified therein, cannot be considered as exhibits to
the affidavit.  See Missouri Silver Pages Directory
Publishing Corp. v. Southwestern Bell Media, Inc., 6 USPQ2d
1028 (TTAB 1988).  An affidavit which is not supported by
documentary evidence may nevertheless be given consideration
if the statements contained in the affidavit are clear and
convincing in character, and uncontradicted.  See 4U Company
of America, Inc. v. Naas Foods, Inc., 175 USPQ 251 (TTAB
1972).  Cf., for example,  Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305 (TTAB 1979); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576 (TTAB 1976);
Clubman's Club Corp. v. Martin, 188 USPQ 455 (TTAB 1975);
and Rite Aid Corp. v. Rite-Way Discount Corp., 182 USPQ 698
(TTAB 1974), aff'd, 508 F.2d 828, 184 USPQ 351 (CCPA 1975).

In lieu of an affidavit, a party may submit a declaration
meeting the requirements of 37 CFR 2.20.  See 37 CFR 2.20,
and Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ
412 (TTAB 1986).

528.05(c)  Discovery Responses

37 CFR 2.127(e)(2) For purposes of summary judgment only, a
discovery deposition, or an answer to an interrogatory, or a
document or thing produced in response to a request for
production, or an admission to a request for admission, will
be considered by the Trademark Trial and Appeal Board if any
party files, with the party's brief on the summary judgment
motion, the deposition or any part thereof with any exhibit
to the part that is filed, or a copy of the interrogatory
and answer thereto with any exhibit made part of the answer,
or a copy of the request for production and the documents or
things produced in response thereto, or a copy of the
request for admission and any exhibit thereto and the
admission (or a statement that the party from which an
admission was requested failed to respond thereto).

Cf. 37 CFR 2.120(j), governing the use of discovery
responses as trial evidence, and TBMP 709-711.

528.05(d)  Registrations

37 CFR 2.122(d)(1) A registration of the opposer or
petitioner pleaded in an opposition or petition to cancel
will be received in evidence and made part of the record if
the opposition or petition is accompanied by two copies of
the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration. ...

If a plaintiff's registration is pleaded and made of record
pursuant to 37 CFR 2.122(d)(1), the registration is of
record for all purposes, including a summary judgment
motion.

Alternatively, a plaintiff may make its pleaded registration
of record, for purposes of summary judgment only, by filing
such a status and title copy with its brief on the summary
judgment motion.  See Bongrain International (American)
Corp. v. Moquet Ltd., 230 USPQ 626 (TTAB 1986).  Cf. 37 CFR
2.122(d)(2).  A registration owned by a defendant may be
made of record, for purposes of summary judgment only, in
the same manner.

A party may make a third-party registration of record, for
purposes of summary judgment only, by filing a copy thereof
with its brief on the summary judgment motion; the copy need
not be a certified copy, nor need it be a status and title
copy.  See Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ
151 (TTAB 1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed.
Cir. 1984), and Interbank Card Ass'n v. United States
National Bank of Oregon, 197 USPQ 123 (TTAB 1977).  See also
37 CFR 2.122(e).

For purposes of summary judgment only, a copy of a trademark
search report, made of record as an exhibit to an affidavit,
or as part of a discovery response,  submitted in opposition
to a summary judgment motion, may be sufficient to raise a
genuine issue of material fact as to the nature and extent
of third-party use of a particular designation.  See Lloyd's
Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993).

528.05(e)  Testimony From Another Proceeding

37 CFR 2.122(f) Testimony from other proceedings.  By order
of the Trademark Trial and Appeal Board, on motion,
testimony taken in another proceeding, or testimony taken in
a suit or action in a court, between the same parties or
those in privity may be used in a proceeding, so far as
relevant and material, subject, however, to the right of any
adverse party to recall or demand the recall for examination
or cross-examination of any witness whose prior testimony
has been offered and to rebut the testimony.

Upon motion granted by the Board, testimony taken in another
proceeding, or in a suit or action in a court, between the
same parties or their privies, may be used in connection
with a summary judgment motion in a pending Board
proceeding, to the extent that the testimony is relevant and
material.  The use of such testimony, however, is subject
"to the right of any adverse party to recall or demand the
recall for examination or cross-examination of any witness
whose prior testimony has been offered and to rebut the
testimony."  See 37 CFR 2.122(f), and Oxy Metal Industries
Corp. v. Technic, Inc., 189 USPQ 57 (TTAB 1975), summ.
judgment granted, 191 USPQ 50 (TTAB 1976).  See also TBMP
531.

When the Board allows testimony of this nature to be used in
connection with a motion for summary judgment, the testimony
(and any testimony taken upon recall of the same witness for
examination or cross-examination, or in rebuttal thereof) is
of record only for purposes of the motion; it will not be
considered at final hearing if the case goes to trial,
unless it is reintroduced, upon motion granted by the Board,
during the appropriate trial period.  See Oxy Metal
Industries Corp. v. Technic, Inc., supra, and TBMP
528.05(a).

528.06  Request for Discovery to Respond to Summary Judgment

A party which believes that it cannot effectively oppose a
motion for summary judgment without first taking discovery,
may file a request with the Board for time to take the
needed discovery.  The request must be supported by an
affidavit showing that the nonmoving party cannot, for
reasons stated, present by affidavit facts essential to
justify its opposition to the motion.  See FRCP 56(f);
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Keebler Co. v.
Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed.
Cir. 1989); Avia Group International Inc. v. L.A. Gear
California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir.
1988); Spectra Corp. v. Lutz, 839 F.2d 1579, 5 USPQ2d 1867
(Fed. Cir. 1988); Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987); Orion
Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923
(TTAB 1989); Nature's Way Products Inc. v. Nature's Herbs
Inc., 9 USPQ2d 2077 (TTAB 1989); and T. Jeffrey Quinn, TIPS
FROM THE TTAB:  Discovery Safeguards in Motions for Summary
Judgment:  No Fishing Allowed, 80 Trademark Rep. 413 (1990).
See also Blansett Pharmaceutical Co. v. Carmrick
Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992).

A request for FRCP 56(f) discovery, if filed, should be
filed on or before the due date for the nonmoving party's
response to the summary judgment motion.  The affidavit in
support of the request may be signed either by the
requesting party or by its counsel, as appropriate.  See T.
Jeffrey Quinn, TIPS FROM THE TTAB:  Discovery Safeguards in
Motions for Summary Judgment:  No Fishing Allowed, 80
Trademark Rep. 413 (1990).

It is not sufficient that a nonmoving party simply state in
its FRCP 56(f) affidavit that it needs discovery in order to
respond to the motion for summary judgment; rather, the
party must state therein the reasons why it is unable,
without discovery, to present by affidavit facts sufficient
to show the existence of a genuine issue of material fact
for trial.  See Keebler Co. v. Murray Bakery Products, 866
F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989).  Moreover,
summary judgment need not be denied based on a nonmoving
party's unsupported speculative hope that it will find,
through discovery, some evidence to help its case.  See
Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9
USPQ2d 1736 (Fed. Cir. 1989); Spectra Corp. v. Lutz, 839
F.2d 1579, 5 USPQ2d 1867 (Fed. Cir. 1988); Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987); Pure Gold, Inc. v. Syntex (U.S.A.), Inc.,
739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984); Strang Corp. v.
Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990); Nature's Way
Products Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077 (TTAB
1989); and J.I. Case Co. v. F.L. Industries, Inc., 229 USPQ
697 (TTAB 1986).

In lieu of an affidavit, a party may submit a declaration
meeting the requirements of 37 CFR 2.20.  See 37 CFR 2.20.
Cf. Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ
412 (TTAB 1986).

When a request for discovery under FRCP 56(f) is granted by
the Board, the discovery allowed is limited to that which
the nonmoving party must have in order to oppose the motion
for summary judgment; this is so even if the nonmoving party
had, at the time when the summary judgment motion was filed,
requests for discovery outstanding, and those requests
remain unanswered.  See T. Jeffrey Quinn, TIPS FROM THE
TTAB:  Discovery Safeguards in Motions for Summary Judgment:
No Fishing Allowed, 80 Trademark Rep. 413 (1990).  Cf.
Fleming Companies v. Thriftway Inc., 21 USPQ2d 1451 (TTAB
1991), aff'd, 26 USPQ2d 1551 (S.D. Ohio 1992).

For further information concerning requests for discovery
under FRCP 56(f), see T. Jeffrey Quinn, TIPS FROM THE TTAB:
Discovery Safeguards in Motions for Summary Judgment:  No
Fishing Allowed, 80 Trademark Rep. 413 (1990).

528.07  Unpleaded Issue

528.07(a)  Not Basis for Summary Judgment

A party may not obtain summary judgment on an issue which
has not been pleaded.  See FRCP 56(a) and 56(b); Paramount
Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994);
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26
USPQ2d 1503 (TTAB 1993); Estate of Biro v. Bic Corp., 18
USPQ2d 1382 (TTAB 1991); Giant Food, Inc. v. Standard Terry
Mills, Inc., 231 USPQ 626 (TTAB 1986); Consolidated Foods
Corp. v. Berkshire Handkerchief Co., 229 USPQ 619 (TTAB
1986); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ
80 (TTAB 1984); Genesco, Inc. v. Levi Strauss & Co., 219
USPQ 1205 (TTAB 1983), aff'd, Levi Strauss & Co. v. Genesco,
Inc., 742 F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984); and
Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB
1977).  Moreover, at the summary judgment stage of a
proceeding before the Board, there has not yet been a trial
of any issue, whether pleaded or unpleaded, and therefore
the requirements of FRCP 15(b) for an amendment to conform
the pleadings to the evidence cannot have been met.  See
Genesco, Inc. v. Levi Strauss & Co., supra, and Intermed
Communications, Inc. v. Chaney, supra.

However, a party which seeks summary judgment on an
unpleaded issue may move to amend its pleading to assert the
matter.  See Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993); Societe Des Produits
Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d
1241 (TTAB 1989); Giant Food, Inc. v. Standard Terry Mills,
Inc., 231 USPQ 626 (TTAB 1986); and Medtronic, Inc. v.
Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984).
Alternatively, if the parties, upon summary judgment motion,
have treated an unpleaded issue on its merits, and the
nonmoving party has not objected to the motion on the ground
that it is based on an unpleaded issue, the Board may deem
the pleadings to have been amended, by agreement of the
parties, to allege the matter.  See:  Paramount Pictures
Corp. v. White, 31 USPQ2d 1768 (TTAB 1994); Giant Food, Inc.
v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986);
Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80
(TTAB 1984); and Intermed Communications, Inc. v. Chaney,
197 USPQ 501 (TTAB 1977).

528.07(b)  Not Defense Against Summary Judgment

A party may not defend against a motion for summary judgment
by asserting the existence of genuine issues of material
fact as to an unpleaded claim or defense.  See Blansett
Pharmaceutical Co. v. Carmrick Laboratories Inc., 25 USPQ2d
1473 (TTAB 1992), and Perma Ceram Enterprises, Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134 (TTAB 1992).  Cf. TBMP
528.07(a), and authorities cited therein.

However, a party which seeks to defend against a motion for
summary judgment by asserting the existence of genuine
issues of material fact regarding an unpleaded claim or
defense, may move to amend its pleading to allege the
matter.  See United States Olympic Committee v. O-M Bread
Inc., 26 USPQ2d 1221 (TTAB 1993).  Alternatively, if a party
seeks to defend against a motion for summary judgment by
asserting the existence of genuine issues of material fact
regarding an unpleaded claim or defense, and the party
moving for summary judgment treats the unpleaded matter on
its merits, and does not object thereto on the ground that
the matter is unpleaded, the Board may deem the pleadings to
have been amended, by agreement of the parties, to allege
the matter.  Cf. TBMP 528.07(a), and authorities cited
therein.

528.08  Entry of Summary Judgment in Favor of Nonmoving
Party

If the Board concludes, upon motion for summary judgment,
that there is no genuine issue of material fact, but that it
is the nonmoving party, rather than the moving party, which
is entitled to judgment as a matter of law, the Board may,
in appropriate cases, enter summary judgment sua sponte in
favor of the nonmoving party (that is, enter summary
judgment in favor of the nonmoving party even though there
is no cross-motion for summary judgment).  See, for example,
Sprinklets Water Center Inc. v. McKesson Corp., 25 USPQ2d
1441 (E.D. Mich. 1992);  Tonka Corp. v. Tonka Tools, Inc.,
229 USPQ 857 (TTAB 1986); Crocker National Bank v. Canadian
Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984); and
Visa International Service Ass'n v. Life-Code Systems, Inc.,
220 USPQ 740 (TTAB 1983).  See also, for example
(particularly with respect to when it may be appropriate for
a court to enter summary judgment sua sponte in favor of the
nonmoving party), Celotex Corp. v. Catrett, 477 U.S. 317
(1986); Coach Leatherware Co. v. AnnTaylor Inc., 933 F.2d
162, 18 USPQ2d 1907 (2d Cir. 1991); Arkwright-Boston
Manufacturers Mutual Insurance Co. v. Aries Marine Corp.,
932 F.2d 442, 19 Fed. R Serv.3d 1290 (5th Cir. 1991); and
Wright, Miller & Kane, Federal Practice and Procedure:
Civil 2d 2720 (1986).

529  Motion for FRCP 11, or Other Non-Discovery, Sanctions

529.01  FRCP 11 Sanctions

FRCP 11(b) Representations to Court.  By presenting to the
court (whether by signing, filing, submitting, or later
advocating) a pleading, written motion, or other paper, an
attorney or unrepresented party is certifying that to the
best of the person's knowledge, information, and belief,
formed after an inquiry reasonable under the circumstances,
--
     (1) it is not being presented for any improper purpose,
such as to harass or to cause unnecessary delay or needless
increase in the cost of litigation;
     (2) the claims, defenses, and other legal contentions
therein are warranted by existing law or by a nonfrivolous
argument for the extension, modification, or reversal of
existing law or the establishment of new law;
     (3) the allegations and other factual contentions have
evidentiary support or, if specifically so identified, are
likely to have evidentiary support after a reasonable
opportunity for further investigation or discovery; and
     (4) the denials of factual contentions are warranted on
the evidence or, if specifically so identified, are
reasonably based on a lack of information or belief.

(c) Sanctions.  If, after notice and a reasonable
opportunity to respond, the court determines that
subdivision (b) has been violated, the court may, subject to
the conditions stated below, impose an appropriate sanction
upon the ... parties that have violated subdivision (b) or
are responsible for the violation.
     (1) How Initiated.
          (A) By Motion.  A motion for sanctions under this
rule shall be made separately from other motions or requests
and shall describe the specific conduct alleged to violate
subdivision (b).  It shall be served ..., but shall not be
filed with or presented to the court unless, within 21 days
after service of the motion (or such other period as the
court may prescribe), the challenged paper, claim, defense,
contention, allegation, or denial is not withdrawn or
appropriately corrected. ...
          (B) On Court's Initiative.  On its own initiative,
the court may enter an order describing the specific conduct
that appears to violate subdivision (b) and directing [a]
... party to show cause why it has not violated subdivision
(b) with respect thereto.
     (2) Nature of Sanction; Limitations.  A sanction
imposed for violation of this rule shall be limited to what
is sufficient to deter repetition of such conduct or
comparable conduct by others similarly situated.  Subject to
the limitations in subparagraphs (A) and (B), the sanction
may consist of, or include, directives of a nonmonetary
nature, ...
     (3) Order.  When imposing sanctions, the court shall
describe the conduct determined to constitute a violation of
this rule and explain the basis for the sanction imposed.

(d) Inapplicability to Discovery.  Subdivisions (a) through
(c) of this rule do not apply to ... discovery requests,
responses, objections, and motions that are subject to the
provisions of Rules 26 through 37.

37 CFR 10.18 Signature and certificate of practitioner.
(a) Except where a copy, including a photocopy or facsimile
transmission, of a personally signed piece of correspondence
is permitted to be filed pursuant to 1.4 of this chapter,
every piece of correspondence filed by a practitioner on
behalf of himself or herself or representing an applicant or
a party to a proceeding in the Patent and Trademark Office
must bear an original signature personally signed in
permanent ink by such practitioner except for correspondence
which is required to be signed by the applicant or party.
The signature of a practitioner on correspondence filed by
the practitioner, regardless of whether the correspondence
has an original signature or is a copy, including a
photocopy or facsimile transmission, of correspondence
bearing an original signature, constitutes a certificate
that:
     (1) The correspondence has been read by the
practitioner;
     (2) The filing of the correspondence is authorized;
     (3) To the best of practitioner's knowledge,
information, and belief, there is good ground to support the
correspondence, including any allegations of improper
conduct contained or alleged therein; and
     (4) The correspondence is not interposed for delay.

(b) Any practitioner knowingly violating the provisions of
this section is subject to disciplinary action.  See
10.23(c)(15).

The quoted provisions of FRCP 11 are applicable to
pleadings, motions, and other papers filed in inter partes
proceedings before the Board.  See 37 CFR 2.116(a); Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); Avia Group International Inc. v.
Faraut, 25 USPQ2d 1625 (TTAB 1992); Space Base Inc. v.
Stadis Corp., 17 USPQ2d 1216 (TTAB 1990); Johnston
Pump/General Valve Inc. v. Chromalloy American Corp., 13
USPQ2d 1719 (TTAB 1989); Fort Howard Paper Co. v. C.V.
Gambina Inc., 4 USPQ2d 1552 (TTAB 1987); Giant Food, Inc. v.
Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986); and
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955
(TTAB 1986).  See also, Alan S. Cooper, The Application of
Rule 11 Sanctions in Trademark Cases, 78 Trademark Rep. 427
(1988).  Thus, if a paper filed in an inter partes
proceeding before the Board violates the provisions of FRCP
11, any party to the proceeding may file a motion for the
imposition of an appropriate sanction.

While FRCP 11 provides, inter alia, for the imposition of
monetary sanctions, the Board does not have authority to
impose monetary sanctions, or to award attorneys' fees or
other expenses to any party.  See 37 CFR 2.120(f),
2.120(g)(1), 2.120(h), and 2.127(f), and TBMP 502.06.

However, the Board does have authority to enter other
appropriate sanctions, up to and including the entry of
judgment, against a party which violates FRCP 11.  See 37
CFR 2.116(a); Avia Group International Inc. v. Faraut, 25
USPQ2d 1625 (TTAB 1992); Space Base Inc. v. Stadis Corp., 17
USPQ2d 1216 (TTAB 1990); Johnston Pump/General Valve Inc. v.
Chromalloy American Corp., 13 USPQ2d 1719 (TTAB 1989); Fort
Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552 (TTAB
1987); Giant Food, Inc. v. Standard Terry Mills, Inc., 231
USPQ 626 (TTAB 1986); and Giant Food, Inc. v. Standard Terry
Mills, Inc., 229 USPQ 955 (TTAB 1986).  See also, Alan S.
Cooper, The Application of Rule 11 Sanctions in Trademark
Cases, 78 Trademark Rep. 427 (1988).  The Board may find a
FRCP 11 violation, and impose an appropriate sanction, not
only upon motion, but also upon its own initiative.  See
FRCP 11, and Giant Food, Inc. v. Standard Terry Mills, Inc.,
231 USPQ 626 (TTAB 1986).

A motion for sanctions under FRCP 11(c) is governed by, and
should not be filed in violation of, FRCP 11(b).  If the
Board finds that a motion for FRCP 11(c) sanctions itself
violates the provisions of FRCP 11(b), an appropriate FRCP
11(c) sanction may be entered against the party which filed
the motion.

The provisions of 37 CFR 10.18 are also applicable to
pleadings, motions, and other papers filed in inter partes
proceedings before the Board.  Any practitioner who
knowingly violates the provisions of that rule is subject to
disciplinary action.  See 37 CFR 10.18.  For information
concerning disciplinary proceedings, see 37 CFR 10.130-
10.170, and TBMP 115.02.

529.02  Other Non-Discovery Sanctions

There are certain situations, in addition to those involving
a failure to provide discovery (see TBMP 527) or a
violation of FRCP 11 (see TBMP 529.01), in which the Board,
in its discretion, may enter sanctions against a party.

For example, when a party to an inter partes proceeding
before the Board advises an adverse party that it will not
take any further action in the case, the adverse party may
file a motion asserting this fact and requesting entry of
judgment in its favor.  If, as is usually the case, the
motion is uncontested, it normally will be granted by the
Board.  See 37 CFR 2.127(a), and TBMP 502.03.

Similarly, if a registrant (having been served by the Board
with a copy of a petition to cancel its registration) or any
other party to an inter partes proceeding before the Board,
relocates, and fails to inform its attorney (if it is
represented by an attorney) or the Board or any adverse
party of its new address, with the result that the party
cannot be found, and papers relating to the proceeding
cannot be served upon it, any adverse party may file a
motion asserting such fact and requesting entry of judgment
in its own favor.  Again, if the motion is uncontested, it
normally will be granted by the Board.

530  Motion to Offer Discovery Deposition of Self or
Nonparty

37 CFR 2.120(j) Use of discovery deposition, ...
(1) The discovery deposition of a party or of anyone who at
the time of taking the deposition was an officer, director
or managing agent of a party, or a person designated by a
party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal
Rules of Civil Procedure, may be offered in evidence by an
adverse party.

(2) Except as provided in paragraph (j)(1) of this section,
the discovery deposition of a witness, whether or not a
party, shall not be offered in evidence unless the person
whose deposition was taken is, during the testimony period
of the party offering the deposition, dead; or out of the
United States (unless it appears that the absence of the
witness was procured by the party offering the deposition);
or unable to testify because of age, illness, infirmity, or
imprisonment; or cannot be served with a subpoena to compel
attendance at a testimonial deposition; or there is a
stipulation by the parties; or upon a showing that such
exceptional circumstances exist as to make it desirable, in
the interest of justice, to allow the deposition to be used.
The use of a discovery deposition by any party under this
paragraph will be allowed only by stipulation of the parties
approved by the Trademark Trial and Appeal Board, or by
order of the Board on motion, which shall be filed at the
time of the purported offer of the deposition in evidence,
unless the motion is based upon a claim that such
exceptional circumstances exist as to make it desirable, in
the interest of justice, to allow the deposition to be used,
in which case the motion shall be filed promptly after the
circumstances claimed to justify use of the deposition
became known.

Ordinarily, the discovery deposition of a party (or of
anyone who, at the time of taking the deposition, was an
officer, director, or managing agent of a party, or a person
designated by a party pursuant to FRCP 30(b)(6) or FRCP
31(a)(3)) may be offered in evidence only by an adverse
party; a party may not, in the first instance, offer in
evidence a discovery deposition taken of itself (or of its
officer, director, managing agent, etc.) by an adverse
party, except by stipulation of the parties approved by the
Board, or by order of the Board on motion.  Similarly, no
party may offer into evidence the discovery deposition of a
nonparty witness, except by stipulation of the parties
approved by the Board, or by order of the Board on motion.
See 37 CFR 2.120(j)(2), and TBMP 709 and authorities cited
therein.  Cf. 37 CFR 2.120(j)(4) (fairness exception, which
provides that if only part of a discovery deposition is made
of record by a party, an adverse party may introduce under
notice of reliance any other part of the deposition which
should in fairness be considered so as to make not
misleading what was offered by the submitting party).

A motion for leave to offer in evidence a discovery
deposition taken by an adverse party of the moving party
itself (or of an officer, director, managing agent, etc., of
the moving party), or the discovery deposition of a nonparty
witness, must show that:

     (1)  The person whose deposition was taken is, during
the testimony period of the party offering the deposition,
dead; or out of the United States (unless it appears that
the absence of the witness was procured by the party
offering the deposition); or unable to testify because of
age, illness, infirmity, or imprisonment; or cannot be
served with a subpoena to compel attendance at a testimonial
deposition; or

     (2)  Such exceptional circumstances exist as to make it
desirable, in the interest of justice, to allow the
deposition to be used.  See Maytag Co. v. Luskin's, Inc.,
228 USPQ 747 (TTAB 1986); Lutz Superdyne, Inc. v. Arthur
Brown & Bro., Inc., 221 USPQ 354 (TTAB 1984); National
Fidelity Life Insurance v. National Insurance Trust, 199
USPQ 691 (TTAB 1978); and Insta-Foam Products, Inc. v.
Instapak Corp., 189 USPQ 793 (TTAB 1976) (the latter two
cases were decided prior to the adoption of Rule
2.120(j)(2)).

A motion based on one of the first grounds listed above must
be filed at the time of the purported offer of the
deposition in evidence.  A motion based on the second ground
must be filed promptly after the circumstances claimed to
justify use of the deposition become known.  See 37 CFR
2.120(j)(2).

531  Motion to Use Testimony From Another Proceeding

37 CFR 2.122(f) Testimony from other proceedings.  By order
of the Trademark Trial and Appeal Board, on motion,
testimony taken in another proceeding, or testimony taken in
a suit or action in a court, between the same parties or
those in privity may be used in a proceeding, so far as
relevant and material, subject, however, to the right of any
adverse party to recall or demand the recall for examination
or cross-examination of any witness whose prior testimony
has been offered and to rebut the testimony.

The use, in an inter partes proceeding before the Board, of
testimony taken in another Board proceeding, or testimony
taken in a suit or action in a court, is governed by 37 CFR
2.122(f).  Cf. TBMP 715 and authorities cited therein.

A party may seek, by motion, to use testimony from another
proceeding either as evidence in its behalf upon summary
judgment, or as part of its evidence on the case.  See TBMP
528.05(e) and 715, and authorities cited therein.

The Board prefers that a motion for leave to use testimony
from another proceeding as evidence on the case be filed
during the testimony period of the moving party.  See Focus
21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha,
22 USPQ2d 1316 (TTAB 1992).  Cf. 37 CFR 2.120(j)(2).  The
better practice is to file the motion early in the testimony
period, in order to minimize the resulting delay in the
proceeding.  If the motion is made without the consent of
every adverse party, and the moving party believes that it
will need additional time to present evidence if the motion
is denied, the moving party should file with its motion
under 37 CFR 2.122(f) a motion to extend its testimony
period.

However, 37 CFR 2.122(f) does not require that a motion for
leave to use testimony from another proceeding be filed
during the testimony period of the moving party, and it is
not unreasonable for a party to want to ascertain, prior to
the opening of its testimony period, whether it will be
allowed to rely on such testimony.  Thus, a motion under 37
CFR 2.122(f) filed prior to the opening of the moving
party's testimony period will not be denied as untimely.
See Focus 21 International Inc. v. Pola Kasei Kogyo
Kabushiki Kaisha, 22 USPQ2d 1316 (TTAB 1992).

A motion for leave to use testimony from another proceeding
should be accompanied by a copy of the testimony, and
accompanying exhibits, sought to be introduced.  A copy of
the motion, testimony, and accompanying exhibits should be
served on every other party to the proceeding.  See 37 CFR
2.119(a), and Focus 21 International Inc. v. Pola Kasei
Kogyo Kabushiki Kaisha, 22 USPQ2d 1316 (TTAB 1992).

The Board has construed the term "testimony," as used in 37
CFR 2.122(f), as meaning only trial testimony (see Philip
Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ
172, 182 (TTAB 1986)), or a discovery deposition which was
used, by agreement of the parties, as trial testimony in the
other proceeding.

532  Motion That Deposition Upon Written Questions Be Taken
Orally

37 CFR 2.123(a)(1) The testimony of witnesses in inter
partes cases may be taken by depositions upon oral
examination as provided by this section or by depositions
upon written questions as provided by 2.124.  If a party
serves notice of the taking of a testimonial deposition upon
written questions of a witness who is, or will be at the
time of the deposition, present within the United States or
any territory which is under the control and jurisdiction of
the United States, any adverse party may, within fifteen
days from the date of service of the notice, file a motion
with the Trademark Trial and Appeal Board, for good cause,
for an order that the deposition be taken by oral
examination.

A party served with notice of the taking, by an adverse
party, of a testimonial deposition upon written questions of
a witness who is, or will be at the time of the deposition,
present within the United States or any territory which is
under the control and jurisdiction of the United States,
may, within 15 days from the date of service of the notice
(20 days if service of the notice was made by first-class
mail, "Express Mail," or overnight courier--see 37 CFR
2.119(c)), file a motion with the Board, showing good
cause, for an order that the deposition be taken by oral
examination.  See 37 CFR 2.123(a)(1).

The determination of whether good cause exists for a motion
that a testimonial deposition upon written questions instead
be taken by oral examination, is made by the Board on a case-
by-case basis, depending upon the particular facts and
circumstances in each one.  See Century 21 Real Estate Corp.
v. Century Life of America, 15 USPQ2d 1079 (TTAB 1990),
corrected, 19 USPQ2d 1479 (TTAB 1990), and Feed Flavors Inc.
v. Kemin Industries, Inc., 209 USPQ 589 (TTAB 1980).  See
also Louise E. Fruge, TIPS FROM THE TTAB:  Depositions Upon
Written Questions, 70 Trademark Rep. 253, at 254 (1980), and
Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861
(TTAB 1979).  Cf. Orion Group Inc. v. Orion Insurance Co.
P.L.C., 12 USPQ2d 1923 (TTAB 1989), and TBMP 520.

533  Motion to Strike Notice of Reliance

During its testimony period, a party may make certain
specified types of evidence of record by filing a notice of
reliance thereon, accompanied by the evidence being offered.
Rule 2.120(j), 37 CFR 2.120(j), provides for the
introduction, by notice of reliance, of a discovery
deposition, answer to interrogatory, or admission; but
specifically states that documents obtained by production
under FRCP 34 may not be made of record by notice of
reliance alone, except to the extent that they are
admissible by notice of reliance under the provisions of 37
CFR 2.122(e).  Rule 2.122(d)(2), 37 CFR 2.122(d)(2),
provides for the introduction, by notice of reliance, of a
registration owned by a party to a proceeding.  Rule
2.122(e), 37 CFR 2.122(e), provides for the introduction,
by notice of reliance, of certain specified types of printed
publications and official records.  See also TBMP
703.02(a), 703.02(b), 703.03, and 707-711.

When a notice of reliance under any of the aforementioned
rules is filed after the close of the offering party's
testimony period, an adverse party may file a motion to
strike the notice of reliance (and, thus, the evidence
submitted thereunder), in its entirety, as untimely.  See
TBMP 718.02(a), and cases cited therein.

An adverse party may also move to strike a notice of
reliance, in whole or in part, on the ground that the notice
does not comply with the procedural requirements of the
particular rule under which it was submitted.  For example,
a party may move to strike a 37 CFR 2.122(e) notice of
reliance on a printed publication, on the ground that it
does not include a copy of the printed publication, or does
not indicate the general relevance thereof.  See TBMP
718.02(b), and cases cited therein.  When, upon motion to
strike a notice of reliance on the ground that it does not
meet the procedural requirements of the rule under which it
was filed, the Board finds that the notice is defective, but
that the defect is curable, the Board may allow the party
which filed the notice of reliance time in which to cure the
defect, failing which the notice will stand stricken.  See
Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842
(TTAB 1988).

Objections to a notice of reliance on substantive grounds,
such as objections on the grounds that evidence offered
under a notice of reliance constitutes hearsay or improper
rebuttal, or is incompetent, irrelevant, or immaterial,
normally need not and should not by raised by motion to
strike.  Rather, such objections should be raised in the
objecting party's brief on the case, unless the ground for
objection is one which could have been cured if raised
promptly by motion to strike.  See TBMP 718.02(c), and
authorities cited therein.

If a motion to strike a notice of reliance raises objections
which cannot be resolved simply by reviewing the face of the
notice of reliance (and attached documents), determination
of the motion will be deferred by the Board until final
hearing.  See M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070
(TTAB 1990).

Evidence timely and properly introduced by notice of
reliance under the applicable trademark rules generally will
not be stricken, but the Board will consider any outstanding
objections thereto in its evaluation of the probative value
of the evidence at final hearing.  See TBMP 718.02(c), and
cases cited therein.

534  Motion to Strike Trial Testimony Deposition

534.01  On Ground of Untimeliness

37 CFR 2.121(a)(1) The Trademark Trial and Appeal Board
will issue a trial order assigning to each party the time
for taking testimony.  No testimony shall be taken except
during the times assigned, unless by stipulation of the
parties approved by the Board, or, upon motion, by order of
the Board. ...

A party may not take testimony outside of its assigned
testimony period, except by stipulation of the parties
approved by the Board, or upon motion granted by the Board,
or by order of the Board.  See 37 CFR 2.121(a), and TBMP
701.

When there is no such approved stipulation, or granted
motion, or Board order, and a testimony deposition is taken
after the close of the deposing party's testimony period, an
adverse party may file a motion to strike the deposition, in
its entirety, as untimely.  See 37 CFR 2.121(a) and
2.123(l), and M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070
(TTAB 1990).  Alternatively, the adverse party may raise
this ground for objection in its brief on the case.  See
TBMP 718.03(a), and authorities cited therein.  Cf. Of
Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d
1555 (TTAB 1991) (where opposer's testimony deposition was
taken two days prior to opening of opposer's testimony
period, and applicant first raised an untimeliness objection
in its brief on the case, objection held waived, since the
premature taking of the deposition could have been corrected
upon seasonable objection).

534.02  On Ground of Improper or Inadequate Notice

37 CFR 2.123(c) Notice of examination of witnesses.  Before
the depositions of witnesses shall be taken by a party, due
notice in writing shall be given to the opposing party or
parties, as provided in 2.119(b), of the time when and
place where the depositions will be taken, of the cause or
matter in which they are to be used, and the name and
address of each witness to be examined; if the name of a
witness is not known, a general description sufficient to
identify the witness or the particular class or group to
which the witness belongs, together with a satisfactory
explanation, may be given instead. ...

37 CFR 2.123(e)(3) Every adverse party shall have full
opportunity to cross-examine each witness.  If the notice of
examination of witnesses which is served pursuant to
paragraph (c) of this section is improper or inadequate with
respect to any witness, an adverse party may cross-examine
that witness under protest while reserving the right to
object to the receipt of the testimony in evidence.
Promptly after the testimony is completed, the adverse
party, if he wishes to preserve the objection, shall move to
strike the testimony from the record, which motion will be
decided on the basis of all the relevant circumstances.  A
motion to strike the testimony of a witness for lack of
proper or adequate notice of examination must request the
exclusion of the entire testimony of that witness and not
only a part of that testimony.

If the notice of examination of witnesses served by a party
is improper or inadequate with respect to any witness, such
as, does not give due (i.e., reasonable) notice, or does not
identify a witness whose deposition is to be taken, an
adverse party may cross-examine the witness under protest
while reserving the right to object to the receipt of the
testimony in evidence.  However, promptly after the
deposition is completed, the adverse party, if it wishes to
preserve the objection, must move to strike the testimony
from the record.  See 37 CFR 2.123(e)(3); Jean Patou Inc.
v. Theon Inc., 18 USPQ2d 1072 (TTAB 1990) (short notice);
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d
1290 (TTAB 1986) (witness not identified); Home Juice Co. v.
Runglin Cos., 231 USPQ 897 (TTAB 1986) (motion to strike
untimely); and Alpha Industries, Inc. v. Alpha Microsystems,
220 USPQ 67 (TTAB 1983) (no objection based on inadequate
notice raised).  Cf. Steiger Tractor, Inc. v. Steiner Corp.,
221 USPQ 165 (TTAB 1984), different results reached on
reh'g, 3 USPQ2d 1708 (TTAB 1984) (witness not identified);
Hamilton Burr Publishing Co. v. E. W. Communications, Inc.,
216 USPQ 802, at fn. 6 (TTAB 1982) (short notice); O. M.
Scott & Sons Co. v. Ferry-Morse Seed Co., 190 USPQ 352 (TTAB
1976) (witness not identified); and Allstate Life Insurance
Co. v. Cuna International, Inc., 169 USPQ 313 (TTAB 1971),
aff'd without opinion, 487 F.2d 1407, 180 USPQ 48 (CCPA
1973) (witnesses not identified) [NOTE:  this group of cases
was decided under 37 CFR 2.123(e)(3) as it existed prior to
a rule change effective June 22, 1983, which added thereto,
inter alia, the requirement that an adverse party which
wishes to preserve an objection based on improper or
inadequate notice must move to strike the testimony promptly
after its completion].

A motion to strike a testimony deposition for improper or
inadequate notice must request the exclusion of the entire
deposition, not just a part thereof.  The motion will be
decided on the basis of all the relevant circumstances.  See
37 CFR 2.123(e)(3).

534.03  When Motion to Strike Should Not Be Filed

Objections to testimony depositions on grounds other than
the ground of untimeliness, or the ground of improper or
inadequate notice, generally should not be raised by motion
to strike.  Rather, the objections should simply be made in
writing at the time specified in the applicable rules, or
orally "on the record" at the taking of the deposition, as
appropriate.  See TBMP 718.03(c).

535  Motion for Judgment for Plaintiff's Failure to Prove
Case

535.01  In General

37 CFR 2.132 Involuntary dismissal for failure to take
testimony.
(a) If the time for taking testimony by any party in the
position of plaintiff has expired and that party has not
taken testimony or offered any other evidence, any party in
the position of defendant may, without waiving the right to
offer evidence in the event the motion is denied, move for
dismissal on the ground of the failure of the plaintiff to
prosecute.  The party in the position of plaintiff shall
have fifteen days from the date of service of the motion to
show cause why judgment should not be rendered against him.
In the absence of a showing of good and sufficient cause,
judgment may be rendered against the party in the position
of plaintiff.  If the motion is denied, testimony periods
will be reset for the party in the position of defendant and
for rebuttal.

(b) If no evidence other than a copy or copies of Patent and
Trademark Office records is offered by any party in the
position of plaintiff, any party in the position of
defendant may, without waiving the right to offer evidence
in the event the motion is denied, move for dismissal on the
ground that upon the law and the facts the party in the
position of plaintiff has shown no right to relief.  The
party in the position of plaintiff shall have fifteen days
from the date of service of the motion to file a brief in
response to the motion.  The Trademark Trial and Appeal
Board may render judgment against the party in the position
of plaintiff, or the Board may decline to render judgment
until all of the evidence is in the record.  If judgment is
not rendered, testimony periods will be reset for the party
in the position of defendant and for rebuttal.

(c) A motion filed under paragraph (a) or (b) of this
section must be filed before the opening of the testimony
period of the moving party, except that the Trademark Trial
and Appeal Board may in its discretion grant a motion under
paragraph (a) even if the motion was filed after the opening
of the testimony period of the moving party.

The Trademark Rules of Practice permit the filing of a
motion for judgment directed to the sufficiency of a
plaintiff's trial evidence in two particular situations,
described in 37 CFR 2.132(a) and 2.132(b).  Only in these
two situations will such a motion be entertained by the
Board.  See TBMP 535.04.

535.02  Motion for Judgment Under Rule 2.132(a)

The first situation in which a defendant may appropriately
file a motion for judgment directed to the sufficiency of a
plaintiff's trial evidence, is when the plaintiff's
testimony period has passed, and the plaintiff has not taken
testimony or offered any other evidence.  In such a
situation, the defendant may, without waiving its right to
offer evidence in the event the motion is denied, move for
dismissal for failure of the plaintiff to prosecute.  See 37
CFR 2.132(a).  See also, for example, Hewlett-Packard Co.
v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710 (Fed. Cir.
1991); Hartwell Co. v. Shane, 17 USPQ2d 1569, at fn.4 (TTAB
1990); Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d
1646 (TTAB 1987); Loren Cook Co. v. Acme Engineering and
Manufacturing Corp., 216 USPQ 517 (TTAB 1982); and T.
Jeffrey Quinn, TIPS FROM THE TTAB:  The Rules Are Changing,
74 Trademark Rep. 269, 275-276 (1984).  A motion for
judgment under 37 CFR 2.132(a) should be filed before the
opening of the moving party's testimony period, but the
Board may, in its discretion, grant the motion even if it
was filed thereafter.  See 37 CFR 2.132(c), and Hewlett-
Packard Co. v. Olympus Corp., supra.

When a motion for judgment under 37 CFR 2.132(a) has been
filed by a defendant, the plaintiff has 15 days from the
date of service of the motion (20 days, if service of the
motion was made by first-class mail, "Express Mail," or
overnight courier--see 37 CFR 2.119(c)) in which to show
cause why judgment should not be rendered against it.  In
the absence of a showing of good and sufficient cause,
judgment may be rendered against the plaintiff.  See 37 CFR
2.132(a).

The "good and sufficient cause" standard, in the context of
this rule, is equivalent to the "excusable neglect" standard
which would have to be met by any motion under FRCP 6(b) to
reopen the plaintiff's testimony period.  See Grobet File
Co. of America Inc. v. Associated Distributors Inc., 12
USPQ2d 1649 (TTAB 1989), and Fort Howard Paper Co. v.
Kimberly-Clark Corp., 216 USPQ 617 (TTAB 1982).  For
examples of cases involving the question of whether good and
sufficient cause has been shown for a plaintiff's failure to
offer any evidence, see Hewlett-Packard Co. v. Olympus
Corp., 931 F.2d 1551, 18 USPQ2d 1710 (Fed. Cir. 1991)
(plaintiff, without first obtaining defendant's consent
thereto, sent defendant a proposed "stipulated" extension of
plaintiff's testimony period and asked that defendant sign
it and forward it to the PTO; defendant did not do so);
Grobet File Co. of America Inc. v. Associated Distributors
Inc., 12 USPQ2d 1649 (TTAB 1989) (defendant had filed
several motions to extend its time to respond to discovery
requests); Midwest Plastic Fabricators Inc. v. Underwriters
Laboratories Inc., 5 USPQ2d 1067 (TTAB 1987) (plaintiff
entitled to know disposition of defendant's pending motion
to amend its answer before proceeding to trial); Fort Howard
Paper Co. v. Kimberly-Clark Corp., 216 USPQ 617 (TTAB 1982)
(misunderstanding between counsel for plaintiff and
defendant); Proctor & Gamble Co. v. Johnson & Johnson Inc.,
485 F.Supp. 1185, 205 USPQ 697 (S.D.N.Y. 1979), aff'd
without opinion, 636 F.2d 1203 (2d Cir. 1980) (civil action
filed by defendant prior to commencement of plaintiff's
testimony period); Allegro High Fidelity, Inc. v. Zenith
Radio Corp., 197 USPQ 550 (TTAB 1977) (civil action filed by
plaintiff after close of its testimony period); Tel-E-Gift
Corp. v. Teleflora Inc., 193 USPQ 254 (TTAB 1976)
(communication problem between plaintiff and its counsel);
Litton Business Systems, Inc. v. J. G. Furniture Co., 190
USPQ 428 (TTAB 1976), recon. denied, 190 USPQ 431 (TTAB
1976) (inadequate docket system and heavy work load of
plaintiff's counsel; request filed by plaintiff, after close
of its testimony period, that Board take judicial notice of
certain matters); Litton Business Systems, Inc. v. JG
Furniture Co., 188 USPQ 509 (TTAB 1976) (answer to complaint
contains certain admissions); A.R.A. Manufacturing Co. v.
Equipment Co., 183 USPQ 558 (TTAB 1974) (unfamiliarity with
current rule governing introduction of plaintiff's
registration); Pierce Foods Corp. v. Mountain Mamma, Inc.,
183 USPQ 380 (TTAB 1974) (applicant assertedly guilty of
unclean hands); Other Telephone Co. v. Connecticut National
Telephone Co., 181 USPQ 125 (TTAB 1974), petition denied,
181 USPQ 779 (Comm'r 1974) (during its testimony period,
plaintiff had moved to suspend pending outcome of recently
filed civil action); W. R. Grace & Co. v. Red Owl Stores,
Inc., 181 USPQ 118 (TTAB 1973) (unfamiliarity with current
rule governing introduction of plaintiff's registration);
and Perfect Film & Chemical Corp. v. Society Ordinastral,
172 USPQ 696 (TTAB 1972) (allegations in pleading, and
exhibits attached thereto, not evidence in plaintiff's
behalf).

If a timely motion under 37 CFR 2.132(a) is denied,
testimony periods will be reset for the defendant and for
rebuttal.  See 37 CFR 2.132(a).

The purpose of the motion under 37 CFR 2.132(a) is to save
the defendant the expense and delay of continuing with the
trial in those cases where plaintiff has failed to offer any
evidence during its testimony period.  See Litton Business
Systems, Inc. v. J. G. Furniture Co., 190 USPQ 431 (TTAB
1976).  However, the defendant is under no obligation to
file such a motion; the motion is optional, not mandatory.
See Pfaltzgraf v. William Davies Co., 175 USPQ 620 (TTAB
1972), and Gary D. Krugman, TIPS FROM THE TTAB:  Motions for
Judgment After Commencement of Testimony Periods, 73
Trademark Rep. 76 (1983).  If no motion under 37 CFR
2.132(a) is filed, trial dates will continue to run, and
the case will be determined at final hearing; in those cases
where plaintiff did, in fact, fail to offer any evidence
during its testimony period, defendant need not offer
evidence either.  See, for example, Hester Industries Inc.
v. Tyson Foods Inc., 2 USPQ2d 1646 (TTAB 1987), and
Pfaltzgraf v. William Davies Co., 175 USPQ 620 (TTAB 1972).

The fact that a defendant may have previously sought
judgment under 37 CFR 2.132(b) does not preclude it from
thereafter seeking judgment under 37 CFR 2.132(a).  See W.
R. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118 (TTAB
1973).

535.03  Motion for Judgment Under Rule 2.132(b)

The second situation in which a defendant may appropriately
file a motion for judgment directed to the sufficiency of a
plaintiff's trial evidence, is when the plaintiff's
testimony period has passed, and the plaintiff has offered
no evidence other than a copy or copies of PTO records.  In
such a situation, the defendant may, without waiving its
right to offer evidence in the event the motion is denied,
move for dismissal on the ground that upon the law and the
facts the plaintiff has shown no right to relief.  See 37
CFR 2.132(b).  A motion for judgment under 37 CFR 2.132(b)
must be filed before the opening of the moving party's
testimony period.  See 37 CFR 2.132(c).

When a motion for judgment under 37 CFR 2.132(b) has been
filed by a defendant, the plaintiff has 15 days from the
date of service of the motion (20 days, if service of the
motion was made by first-class mail, "Express Mail," or
overnight courier--see 37 CFR 2.119(c)) to file a brief in
response thereto.  See 37 CFR 2.132(b).

In determining a motion under 37 CFR 2.132(b), the Board
may either render judgment against the plaintiff, or decline
to render judgment until all of the evidence is in the
record.  See 37 CFR 2.132(b).  See also Merker Counter Co.
v. Central Counter Co., 310 F.2d 746, 135 USPQ 433 (CCPA
1962); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14
USPQ2d 1879 (TTAB 1990); and Newhoff Blumberg Inc. v. Romper
Room Enterprises, Inc., 193 USPQ 313 (TTAB 1976).

If a timely motion under 37 CFR 2.132(b) is denied,
testimony periods will be reset for the defendant and for
rebuttal.  See 37 CFR 2.132(b).

The purpose of the motion under 37 CFR 2.132(b) is to save
the defendant the expense and delay of continuing with the
trial in those cases where plaintiff, during its testimony
period, has offered no evidence other than copies of PTO
records, and those records do not make out a prima facie
case.  See Litton Business Systems, Inc. v. J. G. Furniture
Co., 190 USPQ 431 (TTAB 1976).  However, the defendant is
under no obligation to file such a motion; the motion is
optional, not mandatory.  See Gary D. Krugman, TIPS FROM THE
TTAB:  Motions for Judgment After Commencement of Testimony
Periods, 73 Trademark Rep. 76 (1983).  Cf. Pfaltzgraf v.
William Davies Co., 175 USPQ 620 (TTAB 1972).

The fact that a defendant may have previously sought
judgment under 37 CFR 2.132(a) does not preclude it from
thereafter seeking judgment under 37 CFR 2.132(b).  Cf. W.
R. Grace & Co. v. Red Owl Stores, Inc., 181 USPQ 118 (TTAB
1973).

535.04  Motion Under FRCP 41(b) or FRCP 50(a) Not Available

Trial testimony, in Board inter partes proceedings, is taken
out of the presence of the Board, and it is the policy of
the Board not to read trial testimony, or examine other
trial evidence, prior to final decision.  See TBMP 502.01,
and authorities cited therein.

Accordingly, the only means available for testing the
sufficiency of trial evidence in an inter partes proceeding
before the Board are the motions described in 37 CFR
2.132(a) and 2.132(b).  See TBMP 535.02 and 535.03.  The
motion under FRCP 41(b) for involuntary dismissal, and the
motion under FRCP 50(a) for a directed verdict, are not
available in Board proceedings.  See TBMP 502.01, and
authorities cited therein.

536  Motion for Order to Show Cause Under Rule 2.134(b)

37 CFR 2.134(b) After the commencement of a cancellation
proceeding, if it comes to the attention of the Trademark
Trial and Appeal Board that the respondent has permitted his
involved registration to be cancelled under section 8 of the
Act of 1946 or has failed to renew his involved registration
under section 9 of the Act of 1946, an order may be issued
allowing respondent until a set time, not less than fifteen
days, in which to show cause why such cancellation or
failure to renew should not be deemed to be the equivalent
of a cancellation by request of respondent without the
consent of the adverse party and should not result in entry
of judgment against respondent as provided by paragraph (a)
of this section.  In the absence of a showing of good and
sufficient cause, judgment may be entered against respondent
as provided by paragraph (a) of this section.

See, in this regard, TBMP 602.02(b) and authorities cited
therein.

It is generally the responsibility of a petitioner for
cancellation to keep track of the status of the respondent's
subject registration, and to file a motion for an order to
show cause under 37 CFR 2.134(b) if such registration is
cancelled under Section 8 or 9 of the Act after the
commencement of the proceeding.  However, if the
cancellation of the registration under Section 8 or 9 of the
Act comes to the attention of the Board in another manner,
the Board may issue an order to show cause upon its own
initiative.

In those cases where the Board finds that respondent has
shown good and sufficient cause why judgment should not be
entered against it under 37 CFR 2.134(b), petitioner will
be given time in which to elect whether it wishes to go
forward with the cancellation proceeding, or to have the
cancellation proceeding dismissed without prejudice as moot.
In those cases where the Board enters judgment against the
respondent only and specifically on the ground of
abandonment, petitioner will be given time in which to elect
whether it wishes to go forward to obtain a determination of
the remaining issues, or to have the cancellation proceeding
dismissed without prejudice as to those issues.  See TBMP
602.02(b), and cases cited therein.

For further information concerning orders to show cause
under 37 CFR 2.134(b), see TBMP 602.02(b).

537  Motion for Order to Show Cause Under Rule 2.128(a)(3)

37 CFR 2.128(a)(3) When a party in the position of
plaintiff fails to file a main brief, an order may be issued
allowing plaintiff until a set time, not less than fifteen
days, in which to show cause why the Board should not treat
such failure as a concession of the case.  If plaintiff
fails to file a response to the order, or files a response
indicating that he has lost interest in the case, judgment
may be entered against plaintiff.

The principal purpose of 37 CFR 2.128(a)(3) is to save the
Board the burden of determining a case on the merits where
the parties have settled, but have neglected to notify the
Board thereof, or where the plaintiff has lost interest in
the case.  It is not the policy of the Board to enter
judgment against a plaintiff for failure to file a main
brief on the case if the plaintiff still wishes to obtain an
adjudication of the case on the merits.  See Notice of Final
Rulemaking published in the Federal Register on May 23, 1983
at 48 FR 23122, 23132, and in the Official Gazette of June
21, 1983 at 1031 TMOG 13, 22; and T. Jeffrey Quinn, TIPS
FROM THE TTAB:  The Rules Are Changing, 74 Trademark Rep.
269, 275 (1984).  If a show cause order is issued under 37
CFR 2.128(a)(3), and the plaintiff files a response
indicating that it has not lost interest in the case, the
show cause order will be considered discharged, and judgment
will not be entered against plaintiff for failure to file a
main brief.

When a plaintiff fails to file a main brief on the case, it
is the normal practice of the Board to issue, sua sponte, an
order to show cause why the failure to file a brief should
not be treated as a concession of the case.  If such an
order is not issued by the Board sua sponte, or if an
adverse party fears that the Board may inadvertently
overlook a plaintiff's failure to file a main brief, the
adverse party may file a motion for an order to show cause.

When it finds that a 37 CFR 2.128(a)(3) order to show cause
has been discharged, the Board will reset the times for
filing remaining briefs on the case.  If the plaintiff
includes with its response to the show cause order a motion
under FRCP 6(b) to reopen its time to file a main brief (see
TBMP 509), and the motion is granted, all times for filing
briefs on the case will be reset.

If a 37 CFR 2.128(a)(3) order to show cause has been
discharged, but the record shows that plaintiff failed,
during its testimony period, to take any testimony or offer
any other evidence in its behalf, the Board, in lieu of
resetting the times for filing remaining briefs on the case,
may enter judgment against plaintiff for failure to prove
its case.

538  Motion for Leave to Exceed Page Limit for Brief on Case

37 CFR 2.128(b) ... Each brief shall contain an alphabetical
index of cases cited therein.  Without prior leave of the
Trademark Trail and Appeal Board, a main brief on the case
shall not exceed fifty-five pages in length in its entirety,
including the table of contents, index of cases, description
of the record, statement of the issues, recitation of facts,
argument, and summary; and a reply brief shall not exceed
twenty-five pages in its entirety. ...

For further information concerning the parts of a brief
which fall within the page limit, see TBMP 801.03, and
authorities cited therein.

A party seeking leave to file a brief on the case with more
than the allowed number of pages must obtain "prior leave"
from the Board to do so.  See 37 CFR 2.128(b).  Thus, the
motion must be submitted on or before the date that the
brief is due.  See United Foods Inc. v. United Air Lines
Inc., 33 USPQ2d 1542 (TTAB 1994).  This is so even in those
cases where the motion is filed with the consent of the
adverse party or parties.  Rule 2.128(b) is for the benefit
of the Board, and only with the Board's permission, timely
sought, will a brief exceeding the page limit be
entertained.

The better, and preferred, practice, when a timely motion
for leave to exceed the page limit is filed, is that the
proposed overlength brief not be filed with the motion.  If
the moving party refrains from filing its brief with the
motion, and the motion is granted, the Board, in its
decision on the motion, will allow time for the filing of
the brief, and specify the number of additional pages
granted.  Alternatively, if the motion is denied, the Board,
in its decision, will allow time for the filing of a brief
which does not exceed the page limit specified in 37 CFR
2.128(b).  On the other hand, if the proposed overlength
brief is filed with the motion, and the motion is granted,
the Board will accept the brief.  If the motion is denied,
the overlength brief will be given no consideration, and the
Board will allow time for the filing of a brief which meets
the limit.  See United Foods Inc. v. United Air Lines Inc.,
33 USPQ2d 1542 (TTAB 1994).

A timely motion to exceed the specified page limit need not
be accompanied by a motion to extend the time for filing the
subject brief.  As noted in the preceding paragraph, when
the Board rules upon the motion to exceed the page limit, it
will reset the due date for the brief which is the subject
of the motion, along with the due dates for any remaining
briefs on the case, whether or not the motion is granted.

If a party files a brief which exceeds the page limit, but
does not file a timely motion for leave to file such a
brief, the brief will be stricken, without leave to file a
substitute brief which meets the limit.  See United Foods
Inc. v. United Air Lines Inc., 33 USPQ2d 1542 (TTAB 1994).

Motions for leave to file a brief on the case which exceeds
the page limit are relatively rare and are disfavored by the
Board.  Because the Board is an administrative tribunal of
limited jurisdiction, empowered to determine only the right
to register (see TBMP 102.01), very few of the cases before
it are of such nature as to require a brief on the case
which exceeds the 37 CFR 2.128(b) page limit.  Moreover,
page limitations serve several important functions.  They
assist the Board in the management of its workload, and
encourage litigants to focus their arguments and eliminate
needless verbiage.  Cf. Fleming v. County of Kane, 855 F.2d
496 (7th Cir. 1988).

A motion for leave to file a brief exceeding the page limit
is evaluated on the basis of the reasonableness of the
request in light of such factors as the number of additional
pages sought, the novelty and/or complexity of the issues in
the case, the extent of the trial record, and any other
relevant facts or circumstances which may serve to
demonstrate why additional pages are necessary.  See United
Foods Inc. v. United Air Lines Inc., 33 USPQ2d 1542 (TTAB
1994), and U.S. Navy v. United States Manufacturing Co., 2
USPQ2d 1254 (TTAB 1987).  Cf. 37 CFR 2.129(a), and TBMP
542.02.

539  Motion for Leave to File Amicus Brief

Amicus briefs are neither provided for nor prohibited in the
rules governing practice in Board proceedings.  Thus, the
Board may, in its discretion, entertain an amicus brief if
the Board finds that such a brief is warranted under the
circumstances of a particular case.  See, for example,
Midwest Plastic Fabricators Inc. v. Underwriters
Laboratories Inc., 5 USPQ2d 1067 (TTAB 1987).  Cf. TBMP
502.03 (reply briefs on motions neither provided for nor
prohibited by rules and may be entertained by Board in its
discretion), and Federal Circuit Rule 29 (governing the
filing of amicus briefs in appeals to the Court of Appeals
for the Federal Circuit).

An entity which wishes to file an amicus brief should file a
motion with the Board for leave to do so.  The motion may be
accompanied by the proposed brief.  An amicus brief should
be filed within the time allowed the party whose position
the brief serves to support, unless all parties consent
otherwise, or the Board, upon motion for good cause shown,
permits a later filing.  Cf. Federal Circuit Rule 29.

A motion for leave to file an amicus brief may not be used
as a substitute for a timely notice of opposition or
petition for cancellation.

Motions for leave to file an amicus brief are rarely filed
in Board proceedings, and the granting thereof by the Board
is even rarer.

540  Motion to Strike Brief on Case

Specific provision is made in the Trademark Rules of
Practice for the filing of briefs on the case, namely, the
main brief of the party in the position of plaintiff,
followed by the answering brief of the party in the position
of defendant, followed by the reply brief of the party in
the position of plaintiff.  See 37 CFR 2.128(a).  See also
TBMP 801.02.

Subject to the provisions of FRCP 11, a party is entitled to
offer in its brief on the case any argument it feels will be
to its advantage.  Accordingly, when a brief on the case has
been regularly filed, the Board generally will not strike
the brief, or any portion thereof, upon motion by an adverse
party which simply objects to the contents thereof.  Rather,
any objections which an adverse party may have to the
contents of such a brief will be considered by the Board in
its determination of the case, and any portions of the brief
which are found by the Board to be improper will be
disregarded.

However, if a brief on the case is not timely filed, or
violates the length limit or other format requirements
specified in 37 CFR 2.128(b) (see TBMP 538 and 801.03),
it may be stricken, or given no consideration, by the Board.
See American Optical Corp. v. Atwood Oceanics, Inc., 177
USPQ 585 (Comm'r 1973) (brief too long and not in proper
form), and Ariola-Eurodisc Gesellschaft v. Eurotone
International Ltd., 175 USPQ 250 (TTAB 1972) (brief
untimely).  If a brief is stricken because of a format
violation, the Board may, in its discretion, allow the
offending party time to submit a substitute brief complying
with the requirements of 37 CFR 2.128(b).  But see TBMP
538 (if a party files a brief which exceeds the page limit,
but does not file a timely motion for leave to file such a
brief, the brief will be stricken, without leave to file a
substitute which meets the limit).

Because the rules do not provide for the filing of a reply
or rejoinder brief by a party in the position of defendant,
any such brief may be stricken, or given no consideration,
by the Board.  See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Fortunoff
Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863 (TTAB
1985); Hydrotechnic Corp. v. Hydrotech International, Inc.,
196 USPQ 387 (TTAB 1977); L. Leichner (London) Ltd. v.
Robbins, 189 USPQ 254 (TTAB 1975); and Globe-Union Inc. v.
Raven Laboratories Inc., 180 USPQ 469 (TTAB 1973).

Evidentiary material attached to a brief on the case can be
given no consideration unless it was properly made of record
during the testimony period of the offering party.  If
evidentiary material not of record is attached to a brief on
the case, an adverse party may object thereto by motion to
strike or otherwise.  See, for example, Binney & Smith Inc.
v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984);
Plus Products v. Physicians Formula Cosmetics, Inc., 198
USPQ 111 (TTAB 1978); Angelica Corp. v. Collins & Aikman
Corp., 192 USPQ 387 (TTAB 1976); L. Leichner (London) Ltd.
v. Robbins, 189 USPQ 254 (TTAB 1975); Tektronix, Inc. v.
Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 534 F.2d
915, 189 USPQ 693 (CCPA 1976); and Ortho Pharmaceutical
Corp. v. Hudson Pharmaceutical Corp., 178 USPQ 429 (TTAB
1973).

541  Motion for Augmented Panel Hearing

Each case before the Board must be judicially "heard" (i.e.,
determined) by at least three members (administrative
trademark judges) of the Board.  See Section 17 of the Act,
15 U.S.C. 1067.  See also 37 CFR 2.129(a) and
2.142(e)(1); In re Bose Corp., 772 F.2d 866, 227 USPQ 1
(Fed. Cir. 1985); Plus Products v. Medical Modalities
Associates, Inc., 217 USPQ 464 (TTAB 1983); Jockey
International, Inc. v. Bette Appel Unltd., 216 USPQ 359
(TTAB 1982); Ronson Corp. v. Ronco Teleproducts, Inc., 197
USPQ 492 (Comm'r 1978); and Ethicon, Inc. v. American
Cyanamid Co., 193 USPQ 374 (Comm'r 1977).  However, the
Board may use an augmented panel to hear a case.  See, for
example, In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992),
recon. denied, 24 USPQ2d 1061 (TTAB 1992); In re Johanna
Farms Inc., 8 USPQ2d 1408 (TTAB 1988); In re McDonald's
Corp., 230 USPQ 210 (TTAB 1986); In re WSM, Inc., 225 USPQ
883 (TTAB 1985); and Crocker National Bank v. Canadian
Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984).  An
augmented panel may include any number of Board members
exceeding three, that is, from four to the entire body of
members.  For information concerning the constitution of
Patent and Trademark Office Board panels, see In re Alappat,
33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994).

A decision by the Board to use an augmented panel may be
made either upon the Board's own initiative, or upon motion
filed by a party to the proceeding.  A motion requesting
that a case be heard by an augmented panel should be filed
no later than the time for requesting an oral hearing on the
case (i.e., no later than 10 days after the due date for the
filing of the last reply brief in the proceeding--see 37 CFR
2.129(a)).

An augmented panel is used by the Board only in
extraordinary cases, involving precedent-setting issues of
exceptional importance, or when consideration by an
augmented panel is necessary to secure or maintain
uniformity of Board decisions.  See, for example, In re
Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988); In re
McDonald's Corp., 230 USPQ 210 (TTAB 1986); In re WSM, Inc.,
225 USPQ 883 (TTAB 1985); and Crocker National Bank v.
Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB
1984).  Cf. Federal Circuit Rule 35.

542  Motion to Change Oral Hearing Date; For Additional Time

542.01  Motion to Change Oral Hearing Date

If a party to a proceeding before the Board desires to have
an oral argument (i.e., oral hearing) at final hearing, the
party must file a request therefor, by separate paper, not
later than 10 days after the due date for the filing of the
last reply brief in the proceeding.  When a request for an
oral hearing is filed, the Board sets the date and time for
the hearing, and sends each party written notice thereof.
See 37 CFR 2.129(a).  It is the normal practice of the
Board, in setting an oral hearing, to phone the parties, or
their attorneys or other authorized representatives, to
determine a convenient date and time for the hearing,
following which the written notice formally scheduling the
hearing is mailed.

The date or time of an oral hearing may be reset, so far as
is convenient and proper, to meet the wishes of the parties
and their attorneys or other authorized representatives.
See 37 CFR 2.129(b).  When parties agree to the resetting
of an oral hearing, they should determine a new date and
time convenient to every party and then contact the Board
Administrator, by phone, well prior to the scheduled hearing
date, to request that the hearing be reset for the new date
and time.  The parties should also file a written
stipulation or consented motion confirming their agreement.
If parties agree to the resetting of an oral hearing due to
settlement negotiations, they should request that
proceedings, including the time for oral hearing, be
suspended pending completion of the negotiations.

When one or more of the parties does not consent to the
resetting of an oral hearing, the party which wishes to have
the hearing reset must file a motion therefor, showing good
cause.  See FRCP 6(b), and TBMP 509.  The motion should be
filed well in advance of the scheduled hearing date.
Further, to ensure that the motion is determined (by
telephone conference call, if necessary) prior to the
scheduled hearing date, the moving party should either hand
deliver its motion, at the offices of the Board, to the
Board interlocutory attorney to whom the case is assigned,
or, if the motion has been filed with the Board by some
other method, telephone the interlocutory attorney handling
the case and notify the attorney of the filing of the
motion.  See TBMP 502.07(a).  An unconsented motion to
reset an oral hearing should not be filed merely because
another date would be more convenient.  The process of
scheduling an oral hearing is a time-consuming task for the
Board.  Because of the inherent difficulties in arranging a
date for an oral hearing, an unconsented motion to reset the
hearing should be filed only for the most compelling
reasons.  Examples thereof include the onset of serious
illness, nonelective surgery, death of a family member and
similar unanticipated or unavoidable events.

Repeated stipulations or requests to reset an oral hearing
should not be filed.

For further information concerning oral hearings, see TBMP
802.

542.02  Motion for Additional Time for Oral Argument

Ordinarily, each party in a Board inter partes proceeding is
allowed 30 minutes for its oral arguments.  See 37 CFR
2.129(a), and TBMP 802.05.  If, because of the novelty or
complexity of the issues, the extent of the record, the
presence of a counterclaim involving different issues than
those involved in the original proceeding, etc., a party
feels that it needs more than 30 minutes for oral argument,
it may file a request with the Board for additional time.
See 37 CFR 2.129(a), and U.S. Navy v. United States
Manufacturing Co., 2 USPQ2d 1254 (TTAB 1987).  Cf. 37 CFR
52.128(b), and TBMP 538.  If the request is granted, each
party will be allowed the same amount of time for oral
argument.

When a party decides to request additional time for oral
argument, the party should immediately call the Board and
notify the Board that it intends to file a request for
additional time.  Alternatively (and ideally), the request
for additional time may be included in the request for oral
hearing.  This early notification is necessary to ensure
that there will be time in the Board's hearing schedule for
an extended oral hearing, and also to ensure that the
request will be considered and determined prior to the date
of the oral hearing.  Cf. TBMP 542.01.

543  Motion for Leave to Audiotape Oral Hearing

Upon prior arrangement, the Board will usually permit a
party to make an audiotape recording of an oral hearing.
However, such a recording is strictly for the party's
private use, and is not to be used for purposes of
publicity, or as "evidence" in any proceeding (the oral
hearing is not part of the evidentiary record in a
proceeding before the Board).

Leave to audiotape an oral hearing is secured by filing a
motion therefor showing good cause (such as, that the
audiotape is desired by the requesting attorney, or the
requesting attorney's firm, for personal use in evaluating
the performance of the attorney as an advocate).  The motion
should be filed well in advance of the date set for the oral
hearing, so that if an adverse party raises any objections,
the Board will have time to rule upon the motion prior to
the oral hearing.

Where permission to record an oral hearing is granted, the
moving party is responsible for furnishing, operating, and
removing its own audiotaping equipment in an unobtrusive
manner.

A court reporter is distracting and disruptive in the
context of an oral hearing before the Board, and therefore
may not be used.  For the same reason, an oral hearing
before the Board may not be videotaped.  Any motion for
leave to videotape an oral hearing will be denied.

544  Motion for Reconsideration of Final Decision

37 CFR 2.129(c) Any request for rehearing or
reconsideration or modification of a decision issued after
final hearing must be filed within one month from the date
of the decision.  A brief in response must be filed within
fifteen days from the date of service of the request.  The
times specified may be extended by order of the Trademark
Trial and Appeal Board on motion for good cause.

The filing of a request for rehearing, reconsideration, or
modification of a decision issued after final hearing is
governed by 37 CFR 2.129(c).  Cf. 37 CFR 2.127(b), and
TBMP 518.

There is no requirement that an adverse party file a brief
in response to a request for rehearing, reconsideration, or
modification of a decision issued after final hearing.
However, it is the better practice to do so.  See
Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201
USPQ 410 (TTAB 1979).  If a responsive brief is filed, it
must be filed within 15 days from the date of service of the
request (20 days if service of the request was made by first-
class mail, "Express Mail," or overnight courier--see 37 CFR
2.119(c)).

Although 37 CFR 2.129(c) makes no provision for the filing
of a reply brief on a request for rehearing,
reconsideration, or modification of a decision issued after
final hearing, the Board may, in its discretion, consider
such a brief.  See Curtice-Burns, Inc. v. Northwest
Sanitation Products, Inc., 185 USPQ 176 (TTAB 1975).  Cf.
TBMP 502.03, and cases cited therein.

Generally, the premise underlying a request for rehearing,
reconsideration, or modification under 37 CFR 2.129(c) is
that, based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it
issued.  The request may not be used to introduce additional
evidence (see Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126
(TTAB 1978), and In re Cosmetically Yours, Inc., 171 USPQ
563 (TTAB 1971)), nor should it be devoted simply to a
reargument of the points presented in the requesting party's
brief on the case.  Rather, the request normally should be
limited to a demonstration that, based on the evidence
properly of record and the applicable law, the Board's
ruling is in error and requires appropriate change.  For
examples of cases in which a request for reconsideration of
a decision after final hearing has been granted, see Steiger
Tractor Inc. v. Steiner Corp., 3 USPQ2d 1708 (TTAB 1984),
and In re Kroger Co., 177 USPQ 715 (TTAB 1973).

If a request for rehearing, reconsideration, or modification
of a decision after final hearing is timely filed, the time
for filing an appeal, or for commencing a civil action for
review of the Board's decision, will expire two months after
action on the request.  See 37 CFR 2.145(d)(1), and TBMP
902.02 and 903.04.

545  Motion for Relief From Final Judgment

FRCP 60(b) Mistakes; Inadvertence; Excusable Neglect; Newly
Discovered Evidence; Fraud, etc.  On motion and upon such
terms as are just, the court may relieve a party or a
party's legal representative from a final judgment, order,
or proceeding for the following reasons:  (1) mistake,
inadvertence, surprise, or excusable neglect; (2) newly
discovered evidence which by due diligence could not have
been discovered in time to move for a new trial under Rule
59(b); (3) fraud (whether heretofore denominated intrinsic
or extrinsic), misrepresentation, or other misconduct of an
adverse party; (4) the judgment is void; (5) ... a prior
judgment upon which [the judgment] is based has been
reversed or otherwise vacated ...; or (6) any other reason
justifying relief from the operation of the judgment.  The
motion shall be made within a reasonable time, and for
reasons (1), (2), and (3) not more than one year after the
judgment, order, or proceeding was entered or taken.  A
motion under this subdivision (b) does not affect the
finality of a judgment or suspend its operation.  This rule
does not limit the power of a court to entertain an
independent action to relieve a party from a judgment,
order, or proceeding ... or to set aside a judgment for
fraud upon the court. ...

Motions to set aside or vacate a final judgment rendered by
the Board are governed by FRCP 60(b).  See 37 CFR 2.116(a).
Thus, upon such terms as are just, the Board, on motion, may
relieve a party from a final judgment for one of the reasons
specified in FRCP 60(b).

FRCP 60(b), as made applicable by 37 CFR 2.116(a), applies
to all final judgments issued by the Board, including
default and consent judgments, summary judgments, and
judgments entered after trial on the merits.  As a practical
matter, motions to vacate or set aside a final Board
judgment are usually based upon the reasons set forth in
subsections (1), (2) and/or (6) of FRCP 60(b).

For examples of cases involving a motion for relief from a
final judgment of the Board, see Consorzio del Prosciutto di
Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894 (TTAB
1992) (reason 6); General Motors Corp. v. Cadillac Club
Fashions Inc., 22 USPQ2d 1933 (TTAB 1992) (reasons 1 and 6);
Djeredjian v. Kashi Co., 21 USPQ2d 1613 (TTAB 1991) (reason
(1)); Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d
1154 (TTAB 1991) (reason (1)); Syosset Laboratories, Inc. v.
TI Pharmaceuticals, 216 USPQ 330 (TTAB 1982) (reasons (1),
(3), and (6)); Lee Byron Corp. v. H.D. Lee Co. 203 USPQ 1097
(TTAB 1979) (reason (2)); Amoco Oil Co. v. Amerco, Inc., 201
USPQ 126 (TTAB 1978) (reason (2)); Bass Anglers Sportsman
Society of America, Inc. v. Bass Pro Lures, Inc., 200 USPQ
819 (TTAB 1978) (reason (1)); Marriott Corp. v. Pappy's
Enterprises, Inc., 192 USPQ 735 (TTAB 1976) (reasons (1) and
(6)); Williams v. Five Platters, Inc., 181 USPQ 409 (TTAB
1974), aff'd, 510 F.2d 963, 184 USPQ 744 (CCPA 1975) (reason
(1)); and Columbia Broadcasting System, Inc. v. De Costa,
165 USPQ 95 (TTAB 1970) (reason (6)).  Cf. In re Sotheby's
Inc., 18 USPQ2d 1969 (Comm'r 1989).

A motion for relief from judgment must be made within a
reasonable time; if the motion is based on reasons (1), (2),
and/or (3), it must be filed not more than one year after
the judgment was entered.  See FRCP 60(b); Djeredjian v.
Kashi Co., 21 USPQ2d 1613 (TTAB 1991); Bass Anglers
Sportsman Society of America, Inc. v. Bass Pro Lures, Inc.,
200 USPQ 819 (TTAB 1978); and Columbia Broadcasting System,
Inc. v. De Costa, 165 USPQ 95 (TTAB 1970).  The filing of
the motion will not affect the finality of the judgment or
suspend its operation.  See FRCP 60(b).

Relief from a final judgment is an extraordinary remedy to
be granted only in exceptional circumstances.  The
determination of whether a motion under FRCP 60(b) should be
granted is a matter which lies within the sound discretion
of the Board.  See:  General Motors Corp. v. Cadillac Club
Fashions Inc., 22 USPQ2d 1933 (TTAB 1992), and Djeredjian v.
Kashi Co., 21 USPQ2d 1613 (TTAB 1991).  Cf. Case v. BASF
Wyandotte, 737 F.2d 1034, 222 USPQ 737 (Fed. Cir. 1984).

Where a motion for relief from judgment is made without the
consent of the adverse party or parties, it must
persuasively show (preferably by affidavits, declarations,
documentary evidence, etc., as may be appropriate) that the
relief requested is warranted for one or more of the reasons
specified in FRCP 60(b).

Because default judgments for failure to timely answer the
complaint are not favored by the law, a motion under FRCP
55(c) and 60(b) seeking relief from such a judgment is
generally treated with more liberality by the Board than are
motions under FRCP 60(b) for relief from other types of
judgments.  See TBMP 317.03, and authorities cited therein.
Among the factors to be considered in determining a motion
to vacate a default judgment for failure to answer the
complaint are (1) whether the plaintiff will be prejudiced,
(2) whether the default was willful, and (3) whether the
defendant has a meritorious defense to the action.  See TBMP
317.03; Djeredjian v. Kashi Co., 21 USPQ2d 1613 (TTAB
1991), and Regatta Sport Ltd. v. Telux-Pioneer Inc., 20
USPQ2d 1154 (TTAB 1991).  See also Waifersong Ltd. Inc. v.
Classic Music Vending, 976 F.2d 290, 24 USPQ2d 1632 (6th
Cir. 1992).  Cf. General Motors Corp. v. Cadillac Club
Fashions Inc., 22 USPQ2d 1933 (TTAB 1992).

If, in a cancellation proceeding, a petition to the
Commissioner is filed concurrently with a FRCP 60(b) motion
to the Board for relief from judgment, and the petition and
motion seek the same relief and require review of the same
set of facts, the Board will rule first upon the motion for
relief from judgment.  If the Board grants the motion, the
Commissioner, as a ministerial act, will reinstate the
subject registration.  See National Telefilm Associates,
Inc. v. Craig Denney Productions, 228 USPQ 61 (Comm'r 1985).

Where the parties are agreed that the circumstances warrant
the vacating or setting aside of a final judgment, a
stipulation or consented motion for relief from the judgment
should be filed.  A consented request for relief from
judgment ordinarily will be granted by the Board.