701    Time of Trial

37 C.F.R. § 2.116 

  • (b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
  • (c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
  • (d) The assignment of testimony periods corresponds to setting a case for trial in court proceedings.
  • (e) The submission of notices of reliance, declarations and affidavits, as well as the taking of depositions during the assigned testimony periods corresponds to the trial in court proceedings.

37 C.F.R. § 2.121  Assignment of times for taking testimony and presenting evidence.

  • (a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party’s required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion to reschedule any pretrial disclosure deadline and/or testimony period is denied, the pretrial disclosure deadline or testimony period and any subsequent remaining periods may remain as set. The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party. The resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.
  • * * * *
  • (b)
    • (1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff to present its case in chief, a testimony period for the defendant to present its case and to meet the case of the plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal.
    • (2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Board will schedule testimony periods so that each party in the position of plaintiff will have a period for presenting its case in chief against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal.
  • (c) A testimony period which is solely for rebuttal will be set for fifteen days. All other testimony periods will be set for thirty days. The periods may be shortened or extended by stipulation of the parties approved by the Trademark Trial and Appeal Board, or may be extended upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the testimony periods and their associated pretrial disclosure deadlines may remain as set.
  • (d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.
  • (e) … [N]o later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure.

On receipt of a properly filed notice of opposition or petition to cancel, or for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04, the Board serves the complaint on the defendant in the form of a link to, or web address for, TTABVUE in the notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial and rebuttal disclosures, and assigning each party’s trial period (referred to as the "testimony period" or "rebuttal period"), during which the party may take testimony and introduce other evidence in the case. [ Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01.

In the trial order, the Board schedules a 30-day testimony period for the plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to present rebuttal testimony and evidence. [ Note 2.] The plaintiff’s period for presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant’s testimony period is scheduled to open 30 days after the close of the plaintiff’s testimony period in chief; and the plaintiff’s rebuttal testimony period is scheduled to open 30 days after the close of the defendant’s testimony period. [ Note 3.] The trial order also schedules the time for pretrial and rebuttal disclosures of witnesses: each party must make pretrial or rebuttal disclosures no later than fifteen days prior to the opening of its testimony or rebuttal period, respectively. [ Note 4.]

If there is a counterclaim, or if proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or if there is an interference or a concurrent use registration proceeding involving more than two parties, the Board schedules testimony periods as specified in 37 C.F.R. § 2.121(b)(2), i.e., giving each plaintiff a period for presenting its case in chief as against each defendant, giving each defendant a period for presenting its case and meeting the case of each plaintiff, and giving each plaintiff a period for rebuttal. The testimony periods are separated from the discovery period by a 60-day interval, and from each other by 30-day intervals. [ Note 5.] In an interference or concurrent use proceeding, a junior party is in the position of plaintiff and a senior party is in the position of defendant. [ Note 6.] See TBMP § 1005, TBMP § 1007 and TBMP § 1108.

A party may not take testimony or present evidence outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 7.]

Testimony periods may be rescheduled, extended, shortened, reopened, or bifurcated by stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 8.] See TBMP § 501 and TBMP § 509 regarding stipulations and motions to extend or reopen. A stipulation or consented motion to reschedule a deadline for pretrial disclosures and subsequent testimony periods or to reschedule the closing date for discovery and to reschedule subsequent deadlines for pretrial disclosures and testimony periods must be submitted to the Board through ESTTA and must be presented in the form used in a trial order with the relevant dates set forth, specifying the deadline for each subsequent period, including, as applicable, the deadline for initial, expert and pretrial disclosures, the closing date for discovery and testimony periods, and an express statement that the parties agree to the new dates. [ Note 9.] It is preferable, where such a motion is unconsented, that the motion request that the new deadlines be determined, and any period or periods be set to run, from the date of the Board’s decision on the motion. See TBMP § 509.02.

The resetting of the closing date for discovery results in the automatic rescheduling of pretrial disclosure deadlines and testimony periods, without action by any party. Likewise, the resetting of a party’s testimony period results in the automatic rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 10.] For information regarding extensions of the discovery period and time to respond to discovery requests, see TBMP § 403.04.

In Board inter partes proceedings, the submission of evidence and testimony during the parties’ assigned testimony periods corresponds to the trial in court proceedings. [ Note 11.] The trial period commences with the opening of the first testimony period. [ Note 12.] An oral hearing, if requested, corresponds to oral summation in court proceedings. [ Note 13.] See TBMP § 802.

The Board may sua sponte enter judgment for the defendant in cases where the plaintiff has not submitted evidence or taken testimony during its assigned testimony period where it is clear that the plaintiff has not offered any other evidence. [ Note 14.]

NOTES:

 1.   See 37 C.F.R. § 2.120(a)  and 37 C.F.R. § 2.121.

 2.   See 37 C.F.R. § 2.121(b)(1)  and 37 C.F.R. § 2.121(c).

 3.   See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day interval between each testimony period), aff’d, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).

 4.   See 37 C.F.R. § 2.121(e).

 5.   See 37 C.F.R. § 2.121(b)(2)  and 37 C.F.R. § 2.121(c). Sample trial schedules can be found in the Appendix of Forms.

 6.   See 37 C.F.R. § 2.99(e).

 7.   37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period, codifying current Office practice."). See also Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *5 (TTAB 2022) (objection sustained to testimony declaration executed more than one year prior to trial); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 (TTAB 2020) ("a party may introduce testimony and evidence only during its assigned testimony period"); Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *2 n.3 (TTAB 2020) (parties stipulated that any declaration or affidavit shall be admissible even though executed before and not during the testimony period of a party); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at *3 n.28 (TTAB 2019) (submission of exhibits to the notice of reliance one month after the rebuttal period was untimely; however, since respondent did not object to their timeliness, the procedural objection was waived); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *4 n.23 (TTAB 2019) (three year old declaration from application file was not of record as trial testimony as it was not executed (taken) during petitioner’s testimony period; declaration submitted with summary judgment reply brief that was executed several months before trial was not trial testimony and was not considered because it was not affirmed by other trial testimony that attested to its accuracy), cancellation order vacated on default judgment, No. 0:19-cv-61614-DPG (S.D. Fla. Dec. 17, 2019); Baseball America Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n.4 (TTAB 2002) (parties stipulated that exhibits to their notices of reliance could be submitted after the close of each party’s testimony period); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely deposition stricken); Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (opposer’s discovery deposition of non-party witness treated as testimony deposition taken by stipulation prior to trial); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (discovery deposition of non-party inadmissible as evidence under a notice of reliance filed by one party without express or implied consent of adverse party; should have taken deposition during trial period or at least moved to take trial testimony prior to assigned testimony period).

Cf. International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892, at *3 n.12 (TTAB 2020) (declarations signed prior to testimony period and submitted by opposers as trial testimony considered to have been properly submitted because applicants did not object to them as untimely and treated them as part of the record by raising substantive objections against them), aff’d, 575 F. Supp. 3d 627 (E.D. Va. 2021), aff’d,61 F.4th 407, 2023 USPQ2d 266 (4th Cir. 2023); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer’s testimony deposition was taken two days prior to the opening of opposer’s testimony period, but 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 on seasonable objection).

 8.   Fed. R. Civ. P. 6(b); 37 C.F.R. § 2.121(a), 37 C.F.R. § 2.121(c)  and 37 C.F.R. § 2.121(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(c) to add that testimony periods may be shortened by stipulation of the parties approved by the Board or may be extended on motion granted by the Board or order of the Board."). See, e.g., AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at p.*3 (TTAB 2020) (parties stipulated to an initial trial phase directed to standing, and if standing was resolved in opposer’s favor, a subsequent trial phase directed to the remaining issues in the proceeding); Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion to extend testimony filed on last day with vague references to settlement and no detailed information concerning apparent difficulty in identifying and scheduling its witnesses for testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999) (motion to extend denied where sparse motion contained insufficient facts on which to find good cause); Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (motion to reopen to submit new evidence denied); Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582, 1588 (TTAB 1997) (motion to reopen filed over three months after close of testimony period, due to a docketing error, denied).

 9.   See 37 C.F.R. § 2.121(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(d) to add that stipulations to reschedule the deadlines for the closing date of discovery, pretrial disclosures, and testimony periods must be submitted through ESTTA with the relevant dates set forth and an express statement that all parties agree to the new dates. These amendments codify current Office practice.").

 10.   See 37 C.F.R. § 2.121(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period. The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.").

 11.   See 37 C.F.R. § 2.116(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The Office is amending § 2.116(e) to add that the submission of notices of reliance, declarations, and affidavits, as well as the taking of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codifies current Office practice and is consistent with amendments relating to declarations and affidavits."); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board proceedings approximate the proceedings in a courtroom trial); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (trial in a Board proceeding takes place during the testimony periods).

 12.   37 C.F.R. § 2.121(a).

 13.   37 C.F.R. § 2.116(f).

 14.   37 C.F.R. § 2.132(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) ("The Office is amending § 2.132(a) to clarify that, if a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board may grant judgment for the defendant sua sponte.").