Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 UNITED FOODS, INC.
UNITED AIR LINES, INC.
Cancellation No. 17,245
December 5, 1994
Released: December 7, 1994
Before Rice, Seeherman and Hairston
Administrative Trademark Judges
By the Board:
J.E. Rice, E.J. Seeherman and P.T. Hairston
Administrative Trademark Judges
This case now comes up for consideration of petitioner's motion to file a reply brief longer than the rules permit. Respondent has filed a brief in opposition to the motion and a request that the Board rule on the motion prior to the December 6, 1994 oral hearing in this case.
Respondent's request for an early ruling is granted. This decision on petitioner's motion has been faxed and mailed to each of the parties on the date set forth above.
As both parties are aware, Trademark Rule 2.128(b) limits a plaintiff's reply brief to 25 pages. [FN1] Petitioner filed a 30-page brief along with the motion now up for consideration. Petitioner asserts that it "is required to file a reply [brief] thirty pages in length" because of the voluminous record in this six-year-old case and so that it will be able to "fully respond to all issues raised in Registrant's Response Brief."
Respondent counters petitioner's motion by noting that Rule 2.128(b) "requires prior leave of the Board [for a plaintiff] to file a reply brief longer than twenty-five pages" (emphasis by respondent). Respondent also notes that petitioner failed to explain why it did not seek leave to file the overlength brief in advance, rather than concurrently with the filing of the brief. Finally, respondent argues that it will be prejudiced if petitioner's motion is granted because petitioner "is engaged in a scheme to add new arguments in its reply brief [respondent's footnote omitted] in order to deprive registrant of its right to reply."
While we are not persuaded by respondent's claim of prejudice, because respondent can counter any arguments raised in the reply brief during the oral argument, we deny petitioner's motion for failure to show a compelling need to file an overlength brief. For the reasons that follow, we grant respondent's request that the reply brief be stricken, but we grant leave to petitioner to file a substitute brief conforming to the page limitation set out in Rule 2.128(b).
With respect to respondent's argument that Rule 2.128(b) requires "prior" leave of the Board to file an overlength brief, it is Board policy that a motion for leave to file a brief exceeding the page limit specified in the rule must be filed on or before the due date for the brief. Thus, petitioner's motion is timely. However, we would point out that the better practice is not to file the brief with the motion.
If the moving party follows the preferred practice and refrains from filing its brief, pending consideration of its motion, then any decision granting the motion will allow time for the filing of an overlength brief, with the additional number of pages allowed specified in the decision; if the motion is denied, then the moving party will be allowed time to file a brief conforming to the relevant page limit of Rule 2.128(b). If the moving party files its overlength brief along with a timely motion for leave to file it, then the Board will accept the brief if the motion is granted; if the motion is denied, then the moving party will be allowed time to file a conforming brief, just as in the case where a motion for leave not accompanied by a brief is denied. Finally, if a party files a brief in excess of the relevant limit, without having filed a timely motion for leave to exceed the limit of the rule, then the brief shall be stricken without leave to file a substitute.
*2 Turning to the circumstances of the case at hand, we note that petitioner has provided two reasons for its perceived need to file an overlength brief.
First, petitioner points to the "voluminous record" compiled during the six years that this case has been pending. While parties may be allowed to file briefs in excess of established limits when the record is lengthy, see, for example, U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254 (TTAB1987) [FN2], we are not persuaded by petitioner's claim of need for extra reply brief pages based on the size of the record in this case. If the size of the record really required extra briefing pages, then petitioner could have, and perhaps should have, utilized more of the 55 pages worth of briefing it was allowed for its main brief. Petitioner's use of only 18 pages for its main brief undercuts its argument that extra reply brief pages are necessary due to the size of the record.
Second, petitioner argues that it needs the extra pages to be able to reply to all arguments raised by respondent in its main brief on the case. Again, we are unpersuaded. Respondent's brief was only 37 pages long, well under the limit for such a brief. If petitioner focused its efforts on rebutting respondent's brief, 25 pages of briefing should suffice.
As noted above, petitioner's motion for leave to file an overlength brief is denied and respondent's request to strike the brief is granted. Petitioner is allowed until 15 days from the date of this decision to file a substitute reply brief conforming to the 25-page limit of Rule 2.128(b). However, in view of the nearness of the oral argument and the fact that it will have already have been held by the time petitioner begins drafting its substitute brief, the new brief may not include any arguments not already raised by the stricken brief. To the extent that respondent's claim of prejudice from the now-stricken reply brief relates to alleged improper rebuttal, respondent will be able to address this issue during the oral argument.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. The pertinent portion of Rule 2.128(b) reads as follows: Without prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed fifty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of facts, argument and summary; and a reply brief shall not exceed twenty-five pages in its entirety.
FN2. Other factors the Board will consider, when evaluating a motion for leave to file a brief longer than that permitted by Rule 2.128(b), include the novelty or complexity of the issues in the case and the reasonableness of the number of extra pages sought.