IAC Search & Media, Inc.v.Spa Askbot

Trademark Trial and Appeal Board

Dec 16, 2015

No. 92060041 (T.T.A.B. Dec. 16, 2015)

JK Mailed: December 16, 2015

Cancellation No. 92060041
IAC Search & Media, Inc.
v.
Spa Askbot

Before Quinn, Taylor and Shaw.
Administrative Trademark Judges.

By the Board:

Spa Askbot (“Respondent”) owns Registration No. 4323777, which issued from
an underlying application filed August 24, 2012, for the mark ASKBOT (standard
characters) for:
downloadable software program for collaboration and information
management, namely, for collection of questions, answers and comments,
receiving feedback and votes for ranking content and users; software for
embedding widgets with aforementioned functionalities on the websites, in
International Class 9, and

application service provider (ASP) providing to others temporary use of
online non-downloadable software for collaboration and information
management, namely, for collection of questions, answers and comments,
receiving feedback and votes for ranking content and users and embedding
widgets providing aforementioned functionalities on the websites of others;
software installation and support services, namely, technical support
services in the nature of troubleshooting of computer software with
aforementioned functionalities, in International Class 42.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This Order Is Not A
Precedent Of The TTAB
Cancellation No. 92060041

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IAC Search & Media, Inc. (“Petitioner”) filed a petition to cancel the
registration on the ground of priority and likelihood of confusion pursuant to
Trademark Act Section 2(d). Petitioner pleads ownership of, and included with
its pleading printouts from the Trademark Electronic Search System (TESS) for,
the following Principal Register registrations:
1) Registration No. 3525714 for the mark ASK (standard characters) for
“downloadable computer software for use in providing search engine
services which is provided through a browser tool bar” in International
Class 9, “providing consumer product information; providing comparison
shopping information, providing online directory information services also
featuring hyperlinks to other websites, dissemination of advertising for
others via the internet; online advertising services for others, namely,
providing advertising space on internet web sites” in International Class
35 and “computer services, namely, providing search engines for obtaining
data on a global computer network” in International Class 42;

2) Registration No. 3904781 for the mark ASK (standard characters) for
“computer social networking services, namely, creating an on-line
community for registered users to participate in discussions and get
feedback from their peers regarding areas of mutual interests” in
International Class 45;
3) Registration No. 2412106 for the mark for “computer services, namely,
providing a search engine based on natural language queries on a global
computer network” in International Class 42;
4) Registration No. 3652770 for the mark for “downloadable internet
browser plug-ins and client server applications in the nature of multi-
function tool bar plug-ins; downloadable computer software for use in
providing search engine services which are provided through a browser
tool bar” in International Class 9; “business services, namely, providing
links to the web sites of others, namely, retail service providers in the field
of consumer electronics, computers, clothing, automobiles, toys and games
and a wide variety of other general consumer products; providing links to
the websites of others in the field of consumer products and services;
promoting the goods and services of others by placing advertisements and
promotional displays on electronic sites accessed through computer
networks; providing consumer product information; providing comparison
shopping information, providing online directory information services also
featuring hyperlinks to other websites, dissemination of advertising for
Cancellation No. 92060041

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others via the internet; online advertising services for others, namely,
providing advertising space on websites” in International Class 35;
“providing links to websites of others in the field of entertainment” in
International Class 41 and “providing customized on-line web pages
featuring user-defined information, which includes search engines and
online web links to other websites; providing on-line directories, indices
and searchable databases of websites and computer networks; providing
links to web sites of others in the field of computers and technology;
computer services, namely, providing search engines for obtaining data on
global computer network” in International Class 42;
5) Registration No. 3904782 for the mark for “computer social
networking services, namely, creating an on-line community for registered
users to participate in discussions and get feedback from their peers
regarding areas of mutual interests” in International Class 45;
6) Registration No. 3593278 for the mark with the statement “The
color(s) red and white is/are claimed as a feature of the mark,” for
“downloadable Internet browser plug-ins and client server applications in
the nature of multi-function tool bar plug-ins; downloadable computer
software for use in providing search engine services which are provided
through a browser tool bar” in International Class 9, “business services,
namely, providing links to the websites of others, namely, retail service
providers in the field of consumer electronics, computers, clothing,
automobiles, toys and games and a wide variety of other general consumer
products; providing links to the websites of others in the field of consumer
products and services; promoting the goods and services of others by
placing advertisements and promotional displays on electronic sites
accessed through computer networks; providing consumer product
information; providing comparison shopping information, providing online
directory information services also featuring hyperlinks to other websites,
dissemination of advertising for others via the Internet; online advertising
services for others, namely, providing advertising space on websites;
providing on-line directories, indices and searchable databases of websites
and computer networks” in International Class 35 and “providing
customized on-line web pages featuring user-defined information, which
includes search engines and online web links to other websites; providing
links to websites of others in the field of computers and technology;
computer services, namely, providing search engines for obtaining data on
global computer network” in International Class 42;

7) Registration No. 2463252 for the mark ASK.COM (typed) for “computer
services, namely, providing a search engine based on natural language
queries on a global computer network” in International Class 42; and

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8) Registration No. 3765425 for the mark ASK KIDS (standard characters;
KIDS disclaimed) for “business services, namely, providing links to the
websites of others, namely, retail service providers in the field of consumer
electronics, computers, clothing, automobiles, toys and games and a wide
variety of other general consumer products; providing links to the websites
of others in the field of consumer products and services; promoting the
goods and services of others by placing advertisements and promotional
displays on electronic sites accessed through computer networks;
dissemination of advertising for others via the Internet; online advertising
services for others, namely, providing advertising space on websites” in
International Class 35 and “providing customized on-line web pages
featuring user-defined information, which includes search engines and
online web links to other websites; providing search engines for searching
indices and databases of websites and computer networks; computer
services, namely, providing search engines for obtaining data on global
computer network” in International Class 42.

In its answer Respondent admitted Petitioner’s ownership and status of the
pleaded registrations.1
Petitioner filed a motion for summary judgment with respect to priority and
likelihood of confusion.
ANALYSIS
Summary judgment is appropriate where the movant demonstrates that
there is no genuine dispute as to any material fact, and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact
cannot be true or is genuinely disputed must support its assertion by either 1)
citing to particular parts of materials in the record, or 2) showing that the
materials cited do not establish the absence or presence of a genuine dispute, or
that an adverse party cannot produce admissible evidence to support the fact.
Fed. R. Civ. P. 56(c). A factual dispute is genuine if, on the evidence of record, a

1 1 TTABVUE 10-14, petition to cancel, para. 4-12; 5 TTABVUE 3-4, answer, para. 4-
12.
Cancellation No. 92060041

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reasonable fact finder could resolve the matter in favor of the non-moving party.
Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The party seeking judgment in its
favor carries the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24
(1986).
Evidence on summary judgment must be viewed in a light most favorable to
the non-movant, and all justifiable inferences are to be drawn in the non-
movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board
may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. Lloyd’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. TBMP § 528.01 (2015),
and cases cited therein.
To prevail on summary judgment, Petitioner must demonstrate that there is
no genuine dispute of material fact that 1) it has standing to bring this
proceeding, 2) it has registered or previously used a mark; and 3)
contemporaneous use of the parties’ respective marks on or in connection with
their respective goods or services would be likely to cause confusion, mistake or
to deceive consumers. Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc.,
60 USPQ2d 1733, 1735 (TTAB 2001).
Respondent’s admissions
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Regarding both priority and likelihood of confusion, Petitioner relies in part
on the fact that its ninety requests for admissions (RFAs) are deemed admitted
by operation of Fed. R. Civ. P. 36(a) because Respondent did not respond to the
requests. It is undisputed that Respondent neither served responses thereto nor
requested an extension of time to do so.2 Under the declaration of counsel,
Petitioner introduces the RFAs.3
In its brief, Respondent asserts, in part, the following:
The respondent is asking the Board to not consider lack of the response [sic]
to the “Requests for Admissions” as standing admissions and allow the
Respondent to convey the response to the Petitioner via electronic
communication.4

With its brief, Respondent included a signed copy of its responses to Petitioner’s
requests for admissions. The responses include proof of service thereof on
Petitioner’s counsel.5
The Board construes this assertion in Respondent’s brief as a motion in
the alternative to withdraw or amend its admissions pursuant to Fed. R. Civ. P.
36(b).6 That rule states:
(b) Effect of an Admission; Withdrawing or Amending It.
A matter admitted under this rule is conclusively established unless the
court, on motion, permits the admission to be withdrawn or amended. …
[T]he court may permit withdrawal or amendment if it would promote the
presentation of the merits of the action and if the court is not persuaded
that it would prejudice the requesting party in maintaining or defending

2 6 TTABVUE 10.
3 6 TTABVUE 20; Sabrina A. Larson declaration, para. 2, exh. A.
4 8 TTABVUE 10.
5 8 TTABVUE 13-26.
6 Fed. R. Civ. P. 36(b) is applicable to Board proceedings pursuant to Trademark
Rule 2.116(a).
Cancellation No. 92060041

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the action on the merits. An admission under this rule is not an
admission for any other purpose and cannot be used against the party in
any other proceeding.

Emphasized throughout the Federal Rules of Civil Procedure is the
importance of resolving actions on the merits whenever possible. Johnston
Pump/General Valve Inc. v. Chromalloy Am. Corp., 13 USPQ2d 1719, 1720
(TTAB 1989). “[T]he decision to allow a party to withdraw its admission is
quintessentially an equitable one, balancing the rights to a full trial on the
merits, including the presentation of all relevant evidence, with the necessity of
justified reliance by parties on pre-trial procedures and finality as to issues
deemed no longer in dispute.” Giersch v. Scripps Networks Inc., 85 USPQ2d
1306, 1308 (TTAB 2007) (citation omitted).
Respondent explains that it is “a Chilean company based in a remote region
of Southern Chile” and that “the ‘Requests for Admissions’ were not delivered at
the address due to a mistake on the part of the mail service. No notification of
the shipment was made by telephone or electronic communication.”7
Applying Fed. R. Civ. P. 36(b) to these circumstances, the Board finds that
allowing Respondent to enter its proposed responses to the requests for
admissions would promote the presentation of the merits of this proceeding.
Respondent is located in Chile, and its failure to serve timely responses appears
to have been due to its asserted failure to receive its service copy of the discovery
requests, and a lack of communication regarding said requests.

7 8 TTABVUE 10.
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In view of these findings, Respondent’s motion to withdraw its admissions is
granted. Its proposed responses to Petitioner’s first set of requests for admissions
are accepted and are part of the record on summary judgment. Consequently,
Petitioner cannot rely on Respondent’s deemed admissions in seeking summary
judgment.
Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). To establish standing, a plaintiff must show that it has a “real
interest” in the outcome of the proceeding; that is, that it has a direct and
personal stake in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d
at 1025; Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021 (Fed. Cir. 1987).
Petitioner has established its standing by making its pleaded registrations of
record. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 213 USPQ at 189.
Accordingly, on this record there is no genuine dispute with respect to
Petitioner’s standing.
Priority
Inasmuch as both parties own registrations, either may establish its prior
rights in its mark as against the other party. The constructive use accorded the
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filing date of an application that matured into a registration is simply a benefit
which flows from ownership of a registration. Trademark Act § 7(c); Cent.
Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1141 (TTAB 2013).
Either party may rely on its registration(s), without further proof, for the limited
purpose of proving that its mark was in use as of the filing date of the
application underlying its registration, but may prove an actual date of first use
that pre-dates the filing date of the application underlying its adversary’s
registration. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284
(TTAB 1998). If neither party submits proof of its use prior to filing, priority
belongs to the party with the earliest filing date. Dan Foam ApS v. Sleep
Innovations Inc., 106 USPQ2d 1939, 1945 (TTAB 2013), Hilson Research Inc. v.
Society for Human Resource Mgt., 27 USPQ2d 1423, 1428-29 n.13 (TTAB 1993).
Accordingly, the underlying application filing dates can be but are not
necessarily dispositive.
Here, neither party submitted evidence of use of its mark to show priority.
Citing its pleaded Registration No. 2412106, Petitioner argues that this
registration has an underlying filing date of July 29, 1999, and first use date of
October 1998.8 It further argues that the filing dates and first use in commerce
dates for its registrations predate Respondent’s underlying filing date of August
24, 2012.9

8 6 TTABVUE 11.
9 6 TTABVUE 11.
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Petitioner also relies on RFAs 81-88, each of which seeks Respondent’s
admission that Petitioner’s date of first use in commerce in a pleaded
registration “predates any use by Respondent of the ASKBOT Mark in the
United States.”10 Respondent admitted RFAs 81, 83-84 and 86-88,11 thereby
admitting that the following dates of first use in commerce predate its own use of
its mark:
June 6, 2007 (first use in commerce in Registration No. 3525714)
October 31, 1998 (first use in commerce in Registration No. 2412106)
June 6, 2007 (first use in commerce in Registration No. 3652770)
June 6, 2007 (first use in commerce in Registration No. 3593278)
October 15, 1998 (first use in commerce in Registration No. 2463252)
August 27, 2008 (first use in commerce in Registration No. 3765425).
By way of admitting that its date of first use of its mark is after each of these
dates of first use in commerce, Respondent also effectively admitted that its date
of first use is after the underlying filing dates of these registrations.
Petitioner’s RFAs 82 and 85 pertain to Petitioner’s Registration Nos.
3904781 and 3904782. Respondent denied these RFAs, stating that the date of
first use anywhere in its involved registration - April 4, 2010 - is prior to July 27,
2010, the date of first use in Registration Nos. 3904781 and 3904782.12
However, Petitioner’s underlying filing date for both of these registrations is
September 10, 2008, which predates Respondent’s underlying filing date of

10 6 TTABVUE 11.
11 8 TTABVUE 25-26.
12 8 TTABVUE 25.
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August 24, 2012. Thus, Respondent’s denials of RFAs 82 and 85 do not raise a
genuine dispute as to priority.
On this record, there is no genuine dispute as to Petitioner’s priority with
respect to the goods and services identified in its pleaded registrations.
Likelihood of confusion
Consideration of this issue in the context of a motion for summary judgment
involves an analysis of all of the probative facts in evidence that are relevant to
the thirteen factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (du Pont factors). In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 UPSQ2d 1201, 1203 (Fed. Cir. 2003). We
look to whether there are genuine disputes with respect to any of these factors
which would be material to a decision on the merits.
Petitioner argues that its ASK marks and Respondent’s ASKBOT mark are
similar in appearance, connotation and commercial impression, asserting that
BOT in Respondent’s mark describes Respondent’s goods and services and is
defined in an online dictionary as a “device or piece of software that can execute
commends, reply to messages, or perform routine tasks, as online searches,
either automatically or with minimal human intervention.”13 Respondent
argues that the marks ASK and ASKBOT are dissimilar because BOT means “a
‘robot working with questions.’”14

13 6 TTABVUE 13; Larson declaration, para. 11, exh. I.
14 8 TTABVUE 7.
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Also regarding similarity of the marks, Petitioner relies on Respondent’s
failure to respond to RFAs 1-24. However, Respondent denied each of these
RFAs.15
With respect to the parties’ goods and services, Petitioner relies, inter alia,
on RFAs 28-64, which seek Respondent’s admission that both parties render
social networking services, platforms for online discussions, online forums for
asking and answering questions, and online platforms for seeking and giving
advice.16 Respondent denied, in whole or in part, several of these RFAs.17
We note additional materials submitted by Petitioner, including pages from
its own and from Respondent’s websites, to show that both parties offer a type of
service with the ability to ask questions and find answers online. For its part,
Respondent distinguishes that its service is for the “creation of Q&A online
forum services that operate under the Marks and Brand names of customers.”18
On this summary judgment record, Petitioner has not carried its burden of
demonstrating that there is no genuine dispute regarding likelihood of confusion,
and thus has not demonstrated that it is entitled to judgment as a matter of law
on that issue. This record reflects that there are genuine disputes with respect
to certain du Pont factors that carry weight in the likelihood of confusion
analysis in this case. At a minimum, Respondent’s denials of Petitioner’s RFAs
that go to the similarity of the marks indicate that there is a genuine dispute

15 8 TTABVUE 13-16.
16 6 TTABVUE 15-16.
17 8 TTABVUE 17-23.
18 8 TTABVUE 6.
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with respect to this question of fact, and that it is an issue for adjudication at
trial. Furthermore, the goods and services identified in the parties’ registrations
are not, on their face, identical, and Respondent’s arguments demonstrate that
there is a genuine dispute as to whether the parties offer the same goods and
services. At a minimum, whereas Petitioner appears to offer online question-
and-answer forums, Respondent appears to offer software and related services
for use by others in creating online forums.
Summary
In view of the findings herein, Petitioner’s motion for summary judgment is
granted with respect to Petitioner’s standing and priority, and is denied with
respect to likelihood of confusion.19
SERVICE BY ELECTRONIC MAIL REQUIRED
Respondent’s representative is located in Chile. This contributed to
Respondent’s representative’s asserted nonreceipt of service copies of discovery.

19 We have given no consideration to the materials that Respondent did not make of
record. Specifically, it submitted what appears to be a list of third-party registrations
and a list of third-party website addresses (8 TTABVUE 9). Trademark Rule
2.122(d)(1); TBMP § 528.05(d) (2015). It also submitted partial images marked as
exhibits 1 and 2 (8 TTABVUE 11-13), which are not self-authenticating, are not
identified by an affidavit or declaration, and are not admissible as Internet evidence.
Trademark Rule 2.122(e). Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB
2010); Missouri Silver Pages Directory Publ’g. Corp. Inc. v. Southwestern Bell Media,
Inc., 6 USPQ2d 1028, 1030 n.9 (TTAB 1988). TBMP §§ 528.05(e) and 704.08(b) (2015).
The evidence submitted in connection with the motion for summary judgment is of
record only for consideration of those motions. To be considered at final hearing, any
such evidence must be properly introduced in evidence during the appropriate trial
period. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1438 n.14 (TTAB
2007); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
Also, the fact that we have identified certain issues in dispute should not be construed
as a finding that these are necessarily the only issues which remain for trial.

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To maintain order in this proceeding, and to avoid any future delay due to
nonreceipt of either discovery or service copies of filings, effective as of the
mailing date of this order the parties are directed to exchange service copies of
all discovery requests and responses, and of all motions and papers filed herein,
by electronic transmission pursuant to Trademark Rule 2.119(b)(6).
The Board record currently includes at least one email address for each of
the parties; if these addresses require correction, or if either party wishes to
provide an additional email address,20 the parties are directed to provide this
information within seven (7) days of the mailing date of this order.
In view of service by electronic mail, the five-day period allowed under
Trademark Rule 2.119(c) no longer applies in this proceeding. McDonald’s Corp.
v. Cambrige Overseas Dev. Inc., 106 USPQ2d 1339, 1340 (TTAB 2013). TBMP §
113.05 (2015).
SCHEDULE
Proceedings are resumed. Remaining trial dates are reset as follows:
Plaintiff’s 30-day Trial Period Ends 2/29/2016
Defendant’s Pretrial Disclosures Due 3/15/2016
Defendant’s 30-day Trial Period Ends 4/29/2016
Plaintiff’s Rebuttal Disclosures Due 5/14/2016
Plaintiff’s 15-day Rebuttal Period Ends 6/13/2016

In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days

20 In the Board proceeding data, each party may designate more than one email address,
separated by commas, up to a limit of 150 characters, for receipt of notice of Board
actions. TBMP § 117.02 (2015).
Cancellation No. 92060041

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after completion of the taking of testimony. Trademark Rule 2.125. Briefs shall
be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing
will be set only upon request filed as provided by Trademark Rule 2.129.
INFORMATION FOR PRO SE PARTY
The record does not reflect that the individual who has signed filings on
behalf of Respondent - Evgeny Fadeev, CEO and Legal Representative of
ASKBOT SpA - is an attorney. Accordingly, the Board advises that although
Patent and Trademark Rule 11.14 permits any entity to represent itself, it is
strongly advisable for persons who are not acquainted with the technicalities of
the procedural and substantive law involved in inter partes proceedings before
the Board to secure the services of an attorney who is familiar with such
matters. The Patent and Trademark Office cannot aid in the selection of an
attorney, and as the impartial decision maker, the Board may not provide legal
advice, though it may provide information as to purely procedure matters.
Any party who does not retain counsel should become familiar with the rules
governing this proceeding, and may access useful legal resources, such as the
Trademark Trial and Appeal Board Manual of Procedure (TBMP) and the
Trademark Rules of Practice, from the Board’s web page at
http://www.uspto.gov/trademarks/process/appeal/index.jsp. Also available are
links to TTABVUE, where one can view filings, proceeding history and status at
http://ttabvue.uspto.gov/ttabvue, and to ESTTA, the Board’s electronic filing
system at http://estta.uspto.gov. All parties are encouraged to use ESTTA to
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submit filings. Furthermore, many Federal Rules of Civil Procedure govern the
conduct of this proceeding.
Strict compliance with the Trademark Rules of Practice, and where
applicable the Federal Rules of Civil Procedure, is required of all parties,
whether or not they are represented by counsel. See McDermott v. San
Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, n.2 (TTAB 2006).
Trademark Rules 2.119(a) and (b) require that every paper filed in the
Patent and Trademark Office in a proceeding before the Board must be served
on the attorney for the other party, or on the party if there is no attorney, and
proof of such service must be made before the paper will be considered by the
Board. Therefore, copies of all papers filed in this proceeding must be
accompanied by a signed statement indicating the date and manner in which
such service was made. The statement, whether attached to or appearing on the
paper when filed, will be accepted as prima facie proof of service. The statement
should take the form of a certificate of service which must be signed and dated,
and should read as follows (see TBMP § 113.03):
I hereby certify that a true and complete copy of the foregoing (insert title of
submission) has been served on (insert name of opposing counsel or party)
by mailing said copy on (insert date of mailing), via First Class Mail,
postage prepaid (or insert other appropriate method of delivery) to: (set out
name and address of opposing counsel or party).

Various manners of service are provided for in 37 CFR § 2.119. The parties may
enter into a written agreement to use electronic transmission (e.g., facsimile or
e-mail) to communicate with each other, and to meet their service obligations.
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When such an agreement is made, the best practice is to reduce the agreement
to writing. An inter partes proceeding before the Board is similar to a civil action
in a Federal district court. The parties file pleadings and may file a wide range
of possible motions, as appropriate. The process of discovery (serving of
interrogatories, requests for production of documents and things and requests
for admission, as well as depositions) is followed by a testimony (trial) period,
after which final briefs on the case are filed. The Board does not preside at the
taking of testimony; all testimony is taken out of the presence of the Board
during the parties’ assigned testimony (trial) periods, and the written
transcripts thereof, together with any exhibits thereto, are then filed with the
Board. No paper, document, or exhibit will be considered as evidence unless it
has been introduced in evidence in accordance with the applicable rules.
The Board’s order instituting this proceeding also contains a vast amount of
information regarding the parties’ obligations and the manner in which this
proceeding shall be conducted.