C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 2—RULES OF PRACTICE IN TRADEMARK CASES

37 C.F.R. § 2.116

Federal Rules of Civil Procedure

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(a) 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.

(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 correspond to the trial in court proceedings.

(f) Oral hearing, if requested, of arguments on the record and merits corresponds to oral summation in court proceedings.

(g) The Trademark Trial and Appeal Board's standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office's Web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board's standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.

[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, Apr. 18, 1972; 48 FR 23136, May 23, 1983; 72 FR 42259, Aug. 1, 2007; 81 FR 69975, Oct. 7, 2016]
Notes of Decisions
Cited in 49 cases (6 in the last 5 years), 1976–2024 · leading case: B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015).
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B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). · cites it 6× “See 37 CFR §§2.116 (a), 2.122(a) (2014). The TTAB also allows discovery and depositions.”
Yamaha Int'l Corp. v. Hoshino Gakki Co., Ltd., Assignee of Hoshino Gakki Ten Inc., 840 F.2d 1572 (Fed. Cir. 1988). · cites it 4× “Thus, the Federal Rules of Civil Procedure are authorized to be followed “wherever applicable and ap *1576 propriate,” 37 C.F.R. § 2.116 (a), are used to govern discovery matters “except as otherwise provided,” 37 C.”
Rosenruist-Gestao E Servicos LDA v. Virgin Enter. Ltd., 511 F.3d 437 (4th Cir. 2007). · cites it 2× “Under the PTO's rules, the Federal Rules of Civil Procedure generally apply to all phases of inter partes proceedings, see 37 C.F.R. § 2.116 (a), including discovery and the taking of depositions, see 37 C.”
San Diego Cnty. Credit Union v. Cefcu, 65 F.4th 1012 (9th Cir. 2023). “30(b)(6) (allowing for depositions of corporate entities through a designee); 37 C.F.R § 2.116(a) (making the federal rules of civil procedure generally applicable in TTAB proceedings).”
Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560 (Fed. Cir. 1987). “The judgment sought [on a motion for summary judgment] 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…”
P. A. B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328 (C.C.P.A. 1978). · cites it 4× “We are mindful that, wherever applicable and appropriate, procedure and practice in inter partes proceedings before the board are governed by the Federal Rules of Civil Procedure in accordance with 37 CFR 2.116(a). 9 We further note Fed.R.”
Pure Gold, Inc. v. Syntex (u.s.a.), Inc., 739 F.2d 624 (Fed. Cir. 1984). “*626 Analysis Federal Rule of Civil Procedure 56 relating to summary judgment, made applicable to proceedings before the board by the Trademark Rules of Practice, 37 C.F.R. § 2.116 (a), provides in pertinent part: (b) A party against whom a claim, counterclaim, or cross-claim is…”
Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002). “56(c); 37 C.F.R. § 2.116 (a) (2002) (Federal Rules of Civil Procedure apply to inter-party proceedings before the Board).”
Nat'l Cable Television Ass'n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572 (Fed. Cir. 1991). “1987); 37 C.F.R. § 2.116 (a) (1990) (proceedings before board are governed by Federal Rules of Civil Procedure); Fed.”
Sharp Kabushiki Kaisha (Also Trading as Sharp Corp.) v. Thinksharp, Inc., 448 F.3d 1368 (Fed. Cir. 2006). “See 37 C.F.R. § 2.116 (c) (“The opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding”).”
Imperial Tobacco Ltd., Assignee of Imperial Grp. Plc v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990). “56, made applicable to proceedings before the board by 37 C.F.R. § 2.116 (a) (1988), one must, however, proffer more than conclusory testimony or affidavits.”
Material Supply Int'l, Inc. v. Sunmatch Indus. Co., 146 F.3d 983 (D.C. Cir. 1998). “Moreover, courts apply the thorough conviction standard to the TTAB’s findings of fact largely in deference to the TTAB’s expertise in handling trademark cases! There is ho reason, however, for the district court to defer to the TTAB when that body grants summary judgment; the…”
Show all 49 citing cases →
— 37 C.F.R. § 2.116(a) — 9 cases
San Diego Cnty. Credit Union v. Cefcu, 65 F.4th 1012 (9th Cir. 2023). “30(b)(6) (allowing for depositions of corporate entities through a designee); 37 C.F.R § 2.116(a) (making the federal rules of civil procedure generally applicable in TTAB proceedings).”
P. A. B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328 (C.C.P.A. 1978). “We are mindful that, wherever applicable and appropriate, procedure and practice in inter partes proceedings before the board are governed by the Federal Rules of Civil Procedure in accordance with 37 CFR 2.116(a). 9 We further note Fed.R.”
King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008 (C.C.P.A. 1981).
Roux Labs., Inc. v. La Cade Prods. Co., 558 F.2d 33 (C.C.P.A. 1977).
The Scotch Whisky Ass'n v. United States Distilled Prods. Co., 952 F.2d 1317 (Fed. Cir. 1991).
— 37 C.F.R. § 2.116(b) — 1 case
P. A. B. Produits et Appareils de Beaute v. Satinine Societa in Nome Collettivo di S.A. e. M. Usellini, 570 F.2d 328 (C.C.P.A. 1978). “We are mindful that, wherever applicable and appropriate, procedure and practice in inter partes proceedings before the board are governed by the Federal Rules of Civil Procedure in accordance with 37 CFR 2.116(a). 9 We further note Fed.R.”
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