Paul Reed Smith Guitars and The Estate of Theodore M. McCarty v. Gibson Brands, Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

December 29, 2023

Cancellation No. 92080470

Paul Reed Smith Guitars and

The Estate of Theodore M. McCarty

v.

Gibson Brands, Inc.

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

This order discusses when it is appropriate to sever claims in a Board proceeding.

Petitioners’ motion (filed July 14, 2023) to sever Respondent’s permissive

counterclaim from this cancellation proceeding is fully briefed.1

Petitioners, Paul Reed Smith Guitars (“Petitioner PRS”) and the Estate of

Theodore M. McCarty (“Petitioner Estate”), seek to cancel trademark registration No.

6783631 for the mark THEODORE in standard characters for “stringed musical

1 17 TTABVUE. Citations to the record or briefs in this order are to the publicly available

documents on the Trademark Trial and Appeal Board Inquiry System (TTABVUE), the

Board’s electronic docketing system. To allow the Board and readers to easily locate materials

in the record, the parties should cite to facts or evidence in the proceeding record by

referencing the TTABVUE entry and page number, e.g., “1 TTABVUE 2,” and not attach

previously-filed evidence to their briefs. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF

PROCEDURE (TBMP) §§ 106.03, 801.01 and 801.03 (2023). All material filed under seal must

be accompanied by a redacted version for public viewing. Trademark Rule 2.126(c). For

material or testimony that has been designated confidential, cite the TTABVUE docket entry

number and page for the redacted version.

Cancellation No. 92080470

instruments,” owned by Respondent, Gibson Brands, Inc. 2 As grounds for

cancellation, Petitioner PRS alleges a claim of likelihood of confusion under

Trademark Act Section 2(d), 15 U.S.C. § 1052(d), and Petitioner Estate alleges a claim

of false suggestion of a connection under Trademark Act Section 2(a), 15 U.S.C.

§ 1052(a).3 In support of those claims, Petitioners rely, in part, on Petitioner PRS’s

trademark registration of the mark MCCARTY in typeset letters for “musical

instruments, namely guitars,” 4 and allege, inter alia, that Theodore McCarty

assigned to Petitioner PRS an exclusive license for use and registration of the name

McCarty as a trademark and the right of publicity of his persona.

Although Respondent admits “its THEODORE guitar is based upon or inspired by

Ted McCarty’s original blueprints for a never-before-made guitar, which were found

in Gibson’s archives and dated 18 March 1957,” and “its THEODORE guitar is named

after Ted McCarty,”5 Respondent otherwise denies the salient allegations set forth in

the First Amended Petition for Cancellation. Additionally, Respondent includes in its

Answer a permissive counterclaim6 to cancel Petitioner PRS’s unpleaded trademark

2 U.S. Reg. No. 6783631, issued on July 5, 2022, claiming March 18, 2022, as the dates of first

use and first use in commerce.

3 Petitioners’ First Amended Petition for Cancellation. 9 TTABVUE 2.

4 U.S. Reg. No. 2490890, issued September 18, 2001, claiming January 21, 1994, as the dates

of first use and first use in commerce. A mark depicted as a “typeset” drawing is the legal

equivalent of a standard character mark. See Trademark Rule 2.52, 37 C.F.R. § 2.52; In re

Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) ; In re Brack, 114

USPQ2d 1338, 1339 n.2 (TTAB 2015).

5 Answer ¶¶ 25-26, 15 TTABVUE 7.

6 A counterclaim to cancel a registration owned, but not pleaded, by an adverse party is a

permissive counterclaim. TBMP § 313.05. See Fed. R. Civ. P. 13(b), applicable to this

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Cancellation No. 92080470

registration for the mark SILVER SKY NEBULA for “guitars,” 7 on the ground of

likelihood of confusion. The permissive counterclaim alleges Respondent’s prior use

of its common law trademark SILVERBURST in connection with the “manufacture,

distribution, promotion, advertising, and sale of musical instruments.”8 Respondent’s

affirmative defenses primarily constitute amplifications of its denial of Petitioners’

claim of likelihood of confusion.9

I. Petitioners’ Motion to Sever Respondent’s Permissive Counterclaim

Petitioners argue that severing Respondent’s permissive counterclaim is

appropriate because the marks and claims involved in the cancellation do not share

common issues of fact or law with Respondent’s counterclaim. Petitioners also assert

that permitting the counterclaim to proceed in this case will not promote judicial

proceeding under Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a) . Cf. Trademark Rules

2.106(b)(3)(i) and 2.114(b)(3)(i), 37 C.F.R. §§ 2.106(b)(3)(i) and 2.114(b)(3)(i).

7 U.S. Reg. No. 6423693, issued July 20, 2021, for the mark SILVER SKY NEBULA in

standard characters for “guitars,” claiming January 2020, as its date of first use and first use

in commerce.

8 Counterclaim ¶¶ 2-12, 15 TTABVUE 13-14.

9 Respondent “reserves the right to rely on all affirmative defenses that become available or

appear during discovery proceedings in this action ….” “Affirmative Defenses” ¶ 6, 15

TTABVUE 12. This reservation is improper under the Federal Rules of Civil Procedure,

because it does not give Petitioners fair notice of any specific defenses. Philanthropist.com,

Inc. v. Gen. Conf. Corp. of Seventh-Day Adventists, 2021 USPQ2d 643, at *4 n.6 (TTAB 2021),

aff’d per curiam, 2022 WL 3147202, No. 21-2208 (Fed. Cir. Aug. 8, 2022); see also FDIC v.

Mahajan, 923 F. Supp. 2d 1133, 1141 (N.D. Ill. 2013) (“[A]ffirmative defenses that purport to

reserve the right to add affirmative defenses at a later date … are stricken because they are

improper reservations under the Federal Rules.”). Accordingly, Respondent’s putative

defense in paragraph 6 is STRICKEN. See Fed. R. Civ. P. 12(f); Trademark Rule 2.116(a), 37

C.F.R. § 2.116(a). See NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1039 n.19 (TTAB

2014) (Board may sua sponte dismiss any insufficiently pleaded claim); Musical Directions v.

McHugh, 104 USPQ2d 1157, 1160 (TTAB 2012) (the Board sua sponte reviewed opposer’s

pleading, determining that certain claims were insufficiently pleaded). Whether Respondent

may, at some future point, amend its answer to include affirmative defenses must be resolved

by way of a motion for leave to amend under Fed. R. Civ. P. 15(a).

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Cancellation No. 92080470

efficiency and will inconvenience Petitioner Estate because it has no relationship

whatsoever to the issues involved in the counterclaim. Moreover, Petitioners assert

discovery concerning Respondent’s alleged rights accrued at common law in the

SILVERBURST mark will delay resolution of the case.10

A. Legal Standard

Federal Rule of Civil Procedure 13(b) provides that a pleading may include as a

permissive counterclaim “any claim that is not compulsory.” 11 Fed. R. Civ. P. 13(b).

On the other hand, Federal Rule of Civil Procedure 21 permits a court to “sever any

claim against a party,” including a counterclaim. Fed R. Civ. P. 21. Decisions whether

to sever a claim under Rule 21 are committed to the Board’s wide discretion. See, e.g.,

Coleman v. Quaker Oats Co., 232 F.3d 1271, 1297 (9th Cir. 2000) (a court is vested

with “broad discretion ... to make a decision granting severance”); Rice v. Sunrise

Express, Inc., 209 F.3d 1008, 1016 (7th Cir. 2000) (“It is within the district court’s

broad discretion whether to sever a claim under Rule 21.”); In re EMC Corp., 677 F.3d

1351, 102 USPQ2d 1539, 1545 (“The … court enjoys considerable discretion in

weighing the relevant factors.”) (Fed. Cir. 2012); Carrini Inc. v. Carla Carini S.R.L.,

57 USPQ2d 1067, 1071 (TTAB 2000) (“[T]he Board possesses the inherent authority

to control the disposition of cases on its docket.”); see also 7 WRIGHT & MILLER, FED .

10 17 TTABVUE 3-5.

11 A compulsory counterclaim is one that “arises out of the transaction or occurrence that is

the subject matter of the opposing party’s claim” and cannot be brought in a separate action.

Fed. R. Civ. P. 13(a).

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Cancellation No. 92080470

PRAC. & PROC. CIV. § 1689 (3d ed. April 2023 update) (questions of severance are

addressed to the broad discretion of the district court).

As a preliminary matter, the Board notes the distinction between the severance

of claims under Fed. R. Civ. P. 21 and the bifurcation of claims to be tried separately

under Fed. R. Civ. P. 42 (b) (“For convenience, to avoid prejudice, or to expedite and

economize, the court may order a separate trial of one or more separate issues, claims,

crossclaims, counterclaims, or third-party claims.”). Understanding the salient

difference between the two rules is critical insofar as judgment in a severed action

under Fed. R. Civ. P. 21 is final and appealable; whereas, the order entered at the

conclusion of a separate trial under Fed. R. Civ. P. 42(b), which would not address

the other separated issues or claims, “is often interlocutory because a final and

appealable judgment cannot be rendered until all of the controlling issues have been

tried and decided.”12 Acevedo-Garcia, 351 F.3d at 559 (internal citations omitted); see

also Gaffney, 451 F.3d at 441. For example, the Board has bifurcated the issue of

entitlement to a statutory cause of action into a separate phase under Fed. R. Civ. P.

42(b). See AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, *3 (TTAB 2020);

12 Notably,“[c]ourts often confuse [Rule 21 and Rule 42(b) and their] distinction … often is

obscured in practice since at times the courts talk of ‘separate trial’ and ‘severance’

interchangeably.” See Acevedo–Garcia v. Monroig, 351 F.3d 547, 559 (1st Cir. 2003) (internal

citation omitted); see also Gaffney v. Riverboat Servs. of Ind., 451 F.3d 424, 442 (7th Cir. 2006)

(“By contrast [to Rule 21], bifurcation under [Fed. R. Civ. P.] 42(b) is appropriate where

claims are factually interlinked, such that a separate trial may be appropriate, but final

resolution of one claim affects the resolution of the other.”); 9A WRIGHT & MILLER, FED . PRAC.

& PROC. CIV. § 2387 (3d ed., April 2023 update) (explaining that granting separate trials

under Rule 42(b) and severing a claim under Rule 21 are not synonymous procedures, as

“[s]eparate trials of claims originally sued upon together usually will result in the entry of

one judgment, but severed claims become entirely independent actions to be tried, and

judgment entered thereon, independently.”).

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Cancellation No. 92080470

see also Rebecca Curtin v. United Trademark Holdings, Inc., 2023 USPQ2d 535, at *1

(TTAB 2023).

Although Petitioners did not cite to Fed. R. Civ. P. 21, the Board construes

Petitioners’ motion as a motion to sever under this rule. See Acevedo-Garcia, 351 F.3d

at 558 (“Severance refers to the process of dividing a case containing multiple claims

into ‘separate actions’ and it is governed by Rule 21.”). Pursuant to Fed. R. Civ. P. 21,

applicable to this proceeding under Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a),

“[t]he [Board] may … sever any claim against a party.”13 Specifically, the Board “may

sever claims under Rule 21, creating two separate proceedings, so long as … one claim

[is] capable of resolution despite the outcome of the other claim.” Gaffney, 451 F.3d

at 442 (internal citations omitted); see also Westinghouse Air Brake Techs. Corp. v.

Siemens Mobility, Inc., 330 F.R.D. 143, 147 (D.Del. 2019) (granted motion to sever

counterclaims under the Lanham Act, Sherman Antitrust Act, Clayton Act and

Delaware Deceptive Trade Practices Act under Rule 21).

Various circumstances may be considered in determining whether a claim should

be severed. Rule 21 does not provide any standards for determining if claims should

be severed; however, federal courts, including the Federal Circuit, consider the

requirements of Fed. R. Civ. P. 2014 for joinder when determining if claims should be

13 The first two sentences of Fed. R. Civ. P. 21 relate to misjoinder and nonjoinder of parties:

“Misjoinder of parties is not a ground for dismissing an action. On motion or on its own, the

court may at any time, on just terms, add or drop a party.” To that extent, they do not apply

here.

14 Fed. R. Civ. P. 20 provides, in relevant part:

(a) Persons Who May Join or Be Joined.

(1) Plaintiffs. Persons may join in one action as plaintiffs if:

6

Cancellation No. 92080470

severed, i.e., whether the claims share questions of law or fact common to all

defendants and arise out of the same transaction or occurrence. See EMC Corp., 102

USPQ2d at 1542-44 (in considering severance under Rule 21, identified requirements

under Rule 20 as they “help ensure that the scope of the action remains consistent

with fairness to the parties”) (citing United Mine Workers of Am. v. Gibbs, 383 U.S.

715, 724 (1966)); Westinghouse, 330 F.R.D. at 147.15

In addition to considering Rule 20’s requirements, courts may also assess other

circumstances such as whether the settlement of the claims or judicial economy would

be facilitated, whether prejudice would be avoided if severance were granted , and

whether different witnesses and documentary proof are required for the separate

claims. See, e.g., Otis Clap & Son, 754 F.2d at 743 (Fed. R. Civ. P. 21 “gives the court

discretion to sever any claim and proceed with it separately if doing so will increase

judicial economy and avoid prejudice to the litigants”) (citations omitted); Ellis v.

(A) they assert any right to relief jointly, severally, or in the alternative with respect

to or arising out of the same transaction, occurrence, or series of transactions or

occurrences; and

(B) any question of law or fact common to all plaintiffs will arise in the action. …

(b) Protective Measures. The court may issue orders—including an order for separate

trials—to protect a party against embarrassment, delay, expense, or other prejudice that

arises from including a person against whom the party asserts no claim and who asserts

no claim against the party.

15 “The transaction-or-occurrence test of Rule 20(a) is similar to the transaction-or-occurrence

test of Rule 13(a) for compulsory counterclaims, which has been construed as requiring a

‘logical relationship’ between the claims.” EMC Corp., 102 USPQ2d at 1544. As the Federal

Circuit explained in EMC, “several of [its] sister circuits” have adopted the “transaction or

occurrence requirement under the provisions of Rule 20” to determine “when there is a logical

relationship between the separate causes of action.” 677 F.3d at 1358 (citing, N.Y. Life Ins.

Co. v. Deshotel, 142 F.3d 873, 882 (5th Cir.1998) and Coughlin v. Rogers, 130 F.3d 1348, 1350

(9th Cir. 1997)).

7

Cancellation No. 92080470

Evonk Corp., 604 F.Supp.3d 356, 377 (E.D.La. 2022); Gonzalez v. Batmasian, 320

F.R.D. 580, 581 (S.D.Fla. 2017); Disparte v. Corp. Exec. Bd., 223 F.R.D. 7, 12 (D.D.C.

2004); cf. EMC Corp., 102 USPQ2d at 1546 (noting that “courts can refuse joinder in

the interest of avoiding prejudice and delay, ensuring judicial economy, or

safeguarding principles of fundamental fairness” (quoting Acevedo, 600 F.3d at 521)).

In view of the foregoing, the following circumstances may be relevant in Board

proceedings to determine whether a permissive counterclaim should be severed under

Fed. R. Civ. P. 21:

• whether the claims and/or permissive counterclaims at issue arise out

of the same transaction, occurrence, or series of transactions or

occurrences;

• whether the claims present some common questions of law or fact;

• whether judicial economy and efficiency would be facilitated or harmed

by severance; or

• whether prejudice would occur if severance were granted or denied.

See Westinghouse Air Brake Tech., 330 F.R.D. at 149 (noting that “[b]ecause both

Rule 20 factors are not satisfied, the Court could end its analysis, with the result that

the Motion [to Sever] would be granted. But for sake of completeness, the Court will

also analyze the other factors … that sometimes come into play when a district court

analyzes a Rule 21 motion.”). Accordingly, the Board discusses these considerations

below.

8

Cancellation No. 92080470

B. Analysis

1. Whether the claims and permissive counterclaim arise out of the same

transaction, occurrence or series of transactions or occurrences; and

whether the claims and permissive counterclaim share common

questions of law and fact

In this case, the marks involved in the permissive counterclaim, SILVERBURST

and SILVER SKY NEBULA, are completely dissimilar from the marks involved in

Petitioners’ claims, i.e., THEODORE and MCCARTY. On the other hand, as

Respondent points out, Petitioner PRS and Respondent are both involved in

Petitioners’ claims and the permissive counterclaim, and all parties’ claims involve

“stringed musical instruments,” “guitars,” or the alleged “manufacture, distribution,

promotion, advertising, and sale of musical instruments.” Respondent also asserts

that Petitioners’ claims and its permissive counterclaim are not significantly different

because discovery, evidence and witnesses in both proceedings will overlap. 16

The Board agrees with Petitioners that their claims and the permissive

counterclaim do not arise out of the same transaction, occurrence, or series of

transactions or occurrences or share questions of law or fact. Simply put, the fact that

the claims in the cancellation and the permissive counterclaim share superficial

similarity (i.e., both Petitioner PRS and Respondent, and musical instruments are

involved) does not obviate other realities: the claim of false suggestion of a connection

16 19 TTABVUE 5. To the extent Respondent contends Petitioners’ claims are “not about false

association but only [whether there is] likelihood of confusion between Registrant’s

THEODORE mark and Petitioner PRS’s MCCARTY mark,” 19 TTABVUE 4, said argument

is not well-taken insofar as the Board previously denied Respondent’s motion to dismiss

Petitioner Estate’s Section 2(a) claim, 8 TTABVUE 10, and denied Respondent’s motion to

dismiss Petitioner PRS’ Section 2(d) claim. 14 TTABVUE 13.

9

Cancellation No. 92080470

under Trademark Act Section 2(a) in the cancellation involves another party, i.e.,

Petitioner Estate; different factual issues are raised by Petitioner Estate’s Section

2(a) claim, such as whether Respondent’s registered mark creates a false suggestion

of a connection with Theodore McCarty, see 8 TTABVUE 10; factual issues exist

pertaining to Petitioner PRS’ Section 2(d) claim regarding the alleged licensing

agreement between Petitioners; and the marks involved are entirely different.

Contrary to Respondent’s contention, “Rule 20 makes clear that the existence of a

single common question of law or fact alone is insufficient to satisfy the transaction-

or-occurrence requirement.” EMC Corp., 102 USPQ2d at 1543. Therefore,

Respondent’s stated intention to take discovery regarding Petitioner PRS’s sales and

royalties paid to Petitioner Estate for both Petitioners’ claims and the permissive

counterclaim is insufficient to demonstrate that Petitioners’ claims and the

permissive counterclaim arise out of the same transaction, occurrence, or series of

transactions or occurrences, or have questions of law or fact in common. At a

minimum, because Respondent, as counterclaim-plaintiff, relies solely on rights

assertedly accrued at common law in the mark SILVERBURST, resolution of the

issue of priority in connection with its likelihood of confusion claim will require

different discovery and evidence than is required for Petitioners’ claims, which

involve Petitioner Estate’s rights and the alleged exclusive licensing agreement with

Petitioner PRS.

Moreover, to the extent Respondent posits that discovery regarding Petitioners’

claims will include the years when Theodore McCarty was Respondent’s president,

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Cancellation No. 92080470

i.e., from 1950-1966, “and the years going forward and should encompass the

counterclaim,”17 such assertions are not only indefinite and speculative, but suggest

discovery for a lengthy time period that is unlikely to be proportional to this

proceeding.18

2. Whether judicial economy and efficiency would be facilitated or

harmed

To determine whether severing the counterclaim from the cancellation would

improve or reduce judicial economy and efficiency, that is, for example, effectuate an

inefficient use of the Board’s limited resources, increase the cost of litigation, or delay

the resolution of this case, the Board must consider whether the involved claims and

counterclaim will encompass like issues, discovery, evidence and witnesses. See, e.g.,

Westinghouse Air Brake Tech., 330 F.R.D. at 149-50 (motion to sever granted, finding

that “disentangling” patent infringement allegations from amended antitrust

counterclaim which “holds the potential for enormously costly and time -consuming

discovery,” will aid overall judicial economy); Lindora, LLC v. Isagenix Int’l, LLC, 198

F.Supp.3d 1127, 1150 (S.D.Cal. 2016) (denying severance, noting “overlap in issues,

and the likely overlap in witnesses and evidence …, [therefore,] conducting two

separate trials would involve significant duplication of effort, producing inefficiencies

17 19 TTABVUE 5.

18 Notably, the parties’ respective alleged priority dates are well after “1950-1966.”

Specifically, Respondent alleges use of the mark SILVERBURST since at least as early as

1978, Counterclaim ¶ 2, 15 TTABVUE 13; Petitioner PRS alleges use of the mark MCCARTY

in connection with guitars since January 21, 1994 (see note 3 supra); and Petitioner PRS’s

alleged date of first use of the mark SILVER SKY NEBULA for guitars is January 2020 (see

note 7 supra).

11

Cancellation No. 92080470

rather than economization.”); cf. Topco Holdings, Inc. v. Hand 2 Hand Indus.,

LLC, 2022 USPQ2d 54, at *7-8 (Board allowed proposed amendment to pleading that

alleged ownership of recently-filed trademark applications and common law rights

accrued in previously-pleaded marks for goods encompassed by previously-pleaded

goods, concluding that the interests of justice and judicial economy would be served

by permitting all claims between the parties to be adjudicated) (citing Space Base Inc.

v. Stadis Corp., 17 USPQ2d 1216, 1217 n.1 (TTAB 1990)).

Granting Petitioners’ motion to sever would enhance judicial economy and

efficiency. Because the cancellation claims and the permissive counterclaim do not

arise out of the same series of transactions or occurrences and involve few, if any,

common questions of law and fact, severing adjudication of the counterclaim from the

cancellation will not result in duplication of the parties’ efforts. Further, given the

differences in the factual and legal issues involved due to the different marks and

claims, severing the counterclaim from the cancellation will enable the parties to

focus their discovery requests, minimize discovery disputes, and avoid an

unnecessarily complex single proceeding. Moreover, if the cancellation claims and the

permissive counterclaim are not severed, issuance of a final decision may be delayed

because the Board will be required to expend additional time distinguishing between

unrelated claims, facts, and evidence. Cf. UMG Recordings Inc. v. Mattel Inc., 100

USPQ2d 1868, 1873 (TTAB 2011) (overly large records tax the resources of the

Board).

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Cancellation No. 92080470

3. Whether severance would cause prejudice

Respondent’s alleged convenience in addressing the cancellation claims and the

permissive counterclaim in a single proceeding is an insufficient basis to deny

Petitioners’ motion to sever. Cf. World Hockey Assoc. v. Tudor Metal Prods. Corp., 185

USPQ 246, 248 (TTAB 1975) (consolidation should be equally advantageous to both

parties to the proceedings with respect to the duplication of effort and the savings of

time and expense). Contrary to Respondent’s contention, Petitioner Estate will be

prejudiced by the inclusion of the permissive counterclaim in the main cancellation

because Petitioner Estate is not involved in the permissive counterclaim and

resolution of its claim under Trademark Section 2(a) will be delayed by discovery

related to Respondent’s alleged use of the mark SILVERBURST.

Accordingly, Petitioners’ motion to sever Respondent’s permissive counterclaim

from the cancellation is GRANTED. In view thereof, Respondent’s counterclaim is

hereby SEVERED from the cancellation pursuant to Fed. R. Civ. P. 21; Cancellation

No. 92080470 shall resume and continue apace; and in a separate order, a new

cancellation proceeding shall be instituted (with a new proceeding number) for

Respondent’s counterclaim seeking to cancel U.S. Reg. No. 6423693.19

II. Proceeding Resumed; Trial Dates Reset

This proceeding is resumed. Trial dates are reset as shown in the following

schedule:

19 Because Respondent has paid the fee for the counterclaim, no additional filing fees will be

required.

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Cancellation No. 92080470

Deadline for Discovery Conference 1/31/2024

Discovery Opens 1/31/2024

Initial Disclosures Due 3/1/2024

Expert Disclosures Due 6/29/2024

Discovery Closes 7/29/2024

Plaintiff's Pretrial Disclosures Due 9/12/2024

Plaintiff's 30-day Trial Period Ends 10/27/2024

Defendant's Pretrial Disclosures Due 11/11/2024

Defendant's 30-day Trial Period Ends 12/26/2024

Plaintiff's Rebuttal Disclosures Due 1/10/2025

Plaintiff's 15-day Rebuttal Period Ends 2/9/2025

Plaintiff's Opening Brief Due 4/10/2025

Defendant's Brief Due 5/10/2025

Plaintiff's Reply Brief Due 5/25/2025

Request for Oral Hearing (optional) Due 6/4/2025

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the

manner and timing of taking testimony, matters in evidence, and the procedures for

submitting and serving testimony and other evidence, including affidavits,

declarations, deposition transcripts and stipulated evidence. Trial briefs shall be

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Cancellation No. 92080470

submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should

utilize citations to the TTABVUE record created during trial, to facilitate the Board’s

review of the evidence at final hearing. See TBMP § 801.03. Oral argument at final

hearing will be scheduled only upon the timely submission of a separate notice as

allowed by Trademark Rule 2.129(a).

15