After Benedict v. Super Bakery, How Are We to Interpret Rule 2.127(d)?

In the CAFC's recent decision in Ward E. Benedict v. Super Bakery, Incorporated, Appeal No. 2011-1131 (Fed. Cir. December 28, 2011) [precedential] [TTABlogged here], the appellate court found Trademark Rule 2.127(d) to be ambiguous in that does not "clearly present" the Board's interpretation of the Rule. The Board took and takes the position that a proceeding is not automatically suspended when a party file a summary judgment motion, or other dispositive motion. Only when the Board issues a suspension order is the case suspended.


The CAFC observed, in agreeing with Mr. Benedict's argument, that "the Rule does not state that no suspension shall occur until the Board separately acts to impose it, and that any filing deadlines will remain in force despite the Rule's prohibition on filing. The Rule does not state that the requirement that no papers should be filed does not come into effect when the summary judgment motion is filed, despite the Rule's prohibition."

Rule 2.127(d), as Mr. Benedict pointed out, is unqualified in its requirement that when a summary judgment motion is filed, the case "will be suspended by the Trademark Trial and Appeal Board ... and no party should file any paper which is not germane to the motion except as otherwise specified in the Board's suspension order."

However, Section 528.03 of the TBMP states that the suspension is not automatic. Proceedings are suspended only when and if the Board issues an Order:

The filing of a summary judgment motion does not, in and of itself, automatically suspend proceedings in a case; rather, proceedings are
suspended only when the Board issues an order to that effect. *** However, on a case-by case basis, the Board may find that the filing of a motion for summary judgment provides a party with good cause for not complying with an otherwise outstanding obligation, for example, responding to discovery requests. *** Notwithstanding, the Board has found that the filing of a motion for summary judgment does not provide a party good cause not to timely comply with a Board order granting discovery sanctions which required the services of complete discovery responses. [citing its own Super Bakery decision [TTABlogged here], with which the CAFC just disagreed].

The TBMP is not the law, but it does set forth PTO policy. See TBMP Section 101.05. So where are we now? Should Rule 2.127(d) be clarified?

Text Copyright John L. Welch 2012.