The opinion
UNITED STATES PATENT AND TRADEMARK OFFICE
THIS ORDER IS A Trademark Trial and Appeal Board
PRECEDENT OF THE P.O. Box 1451
TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Mailed: January 12, 2018
Opposition No. 91229946
KID-Systeme GmbH
v.
Türk Hava Yollari Teknik Anonim Sirketi
Katie W. McKnight,
Interlocutory Attorney:
Opposer filed a motion to reopen its time to file its attached motion for summary
judgment on June 29, 2017, the same day as the deadline for Opposer to serve pretrial
disclosures. The motion is uncontested.1
Before January 14, 2017, the deadline for filing a motion for summary judgment
under Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1), was “prior to the
commencement of the first testimony period, as originally set or as reset.” Under the
rule before amendment, “prior to” meant the day before the opening day of trial, i.e.,
the day before the first day of plaintiff’s testimony period. See Blansett Pharmacal
Co., Inc. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1476 (TTAB 1992). Trademark
Rule 2.127(e)(1) was amended, effective January 14, 2017, to provide that “a motion
1 The Board, in its discretion, declines to treat the uncontested motion as conceded. See, e.g.,
Baron Philippe de Rothschild, S.A. v. Styl-Rite Optical Mfg. Co., 55 USPQ2d 1848, 1854
(TTAB 2000).
Opposition No. 91229946
for summary judgment must be filed prior to the deadline for pretrial disclosures for
the first testimony period, as originally set or as reset.” See Miscellaneous Changes
to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950, 69967 (October 7,
2016) (Notice of Final Rulemaking); Trademark Rule 2.127(e)(1); TBMP § 528.02
(June 2017). Similar to the pre-amendment rule, “prior to” means the day before the
deadline, in this case, the deadline for pretrial disclosures.
On July 21, 2017, after Opposer’s motion was filed, the USPTO issued an
amendment to the rules of practice to make explicit the existing requirement that
motions for summary judgment under Trademark Rule 2.127(e)(1) “must be filed
before the day of the deadline for pretrial disclosures for the first testimony period,
as originally set or as reset.” See Miscellaneous Changes to Trademark Trial and
Appeal Board Rules of Practice; Clarification, 82 Fed. Reg. 33804, 33804 (July 21,
2017). Because Opposer filed its motion on the day pretrial disclosures were due
rather than prior to the deadline, the motion for summary judgment is untimely.
If the pretrial disclosure deadline is reset by order or stipulation effective before
the deadline, a motion for summary judgment filed before the reset pretrial disclosure
deadline would be timely. Once the pretrial disclosure deadline arrives, whether as
originally set forth in the Board’s institution order, as in this case, or as reset by order
or stipulation,2 any motion for summary judgment filed thereafter will be considered
2 Even if the pretrial disclosure deadline passes and is later reset for a future date by order
or stipulation, a motion for summary judgment filed before the reset deadline will be
considered untimely. See TBMP § 528.02.
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Opposition No. 91229946
untimely.3 La Maur, Inc. v. Bagwells Enters., Inc., 193 USPQ 234, 235-36 (Comm’r
1976) (motion filed before reset testimony period opened but after previous testimony
period opened was untimely); see also TBMP § 528.02 (“As of the deadline for pretrial
disclosures for the first testimony period . . . any summary judgment motion filed
thereafter is untimely, even if filed prior to a rescheduled deadline for pretrial
disclosures for the first testimony period”).
Nevertheless, as explained in the Notice of Proposed Rulemaking, “any issues that
may arise concerning the transition to the revised rules for cases pending as of the
effective date of the rules would be addressed by the Board and the parties on a case-
by-case basis, allowing for flexibility to respond to the unique needs in each case,
particularly with respect to scheduling matters.” Miscellaneous Changes to
Trademark Trial and Appeal Board Rules of Practice, 81 Fed. Reg. 19296, 19296
(April 4, 2016) (Notice of Proposed Rulemaking) (emphasis added); see also Estudi
Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 (TTAB 2017) (quoting
Notice of Proposed Rulemaking). Because Opposer filed its motion for summary
judgment during a time of transition to the amended Trademark Rules, and before
the Board’s July 21, 2017 clarification amending, inter alia, Trademark Rule
3 The deadline for the first pretrial disclosure signals the commencement of the trial portion
of the proceeding; once the deadline arrives, the parties are or should be focused on trial, or
settlement, but not summary judgment. See Notice of Final Rulemaking, 81 Fed. Reg. at
69967 (stating that the amendment “encourages efficiency in the schedule by providing that,
once the due date for the first pretrial disclosure has arrived, the parties are focused on trial,
or settlement, and neither party will be surprised” by the filing of a summary judgment
motion).
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Opposition No. 91229946
2.127(e)(1), the Board will consider Opposer’s motion for summary judgment in this
particular case.
In view thereof, Opposer’s motion to reopen is moot. However, in order to remove
any misapprehension about the rule, we address one of Applicant’s arguments in
support of its motion. Applicant asks that the Board “exercise its discretion not to
deny as untimely Opposer’s Motion for Summary Judgment” and supports that
request by citing an outdated version of the Trademark Trial and Appeal Board
Manual of Procedure. Before January 14, 2017, Trademark Rule 2.127(e)(1) provided
that summary judgment motions “should be filed prior to the commencement of the
first testimony period” and “the Board, in its discretion, may deny as untimely any
motion for summary judgment filed thereafter.” Trademark Rule 2.127(e)(1) as
amended provides that a motion for summary judgment “must be filed before the day
of the deadline for pretrial disclosures” and therefore the timeliness of such a motion
is no longer discretionary.
Proceedings remain suspended pending disposition of Opposer’s motion for
summary judgment. Applicant is allowed until thirty days from the mailing date of
this order in which to file and serve its response to Opposer’s motion for summary
judgment. A reply brief, if any, should be filed in accordance with Trademark Rule
2.127(a) and (e)(1), 37 C.F.R. § 2.127(a) and (e)(1).
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