On Monday, April 4, 2016, the United States Patent and Trademark
Office ("USPTO") issued proposed amendments to the
Trademark Rules of Practice aimed at streamlining proceedings
before the Trademark Trial and Appeal Board ("TTAB")
that include significant changes to discovery protocol,
electronic filing requirements, and the presentation of trial
evidence.
The proposed amendments are intended to reduce the burden on
parties litigating before the TTAB, increase efficiency, conform
the rules to current practice and changes to the Federal Rules of
Civil Procedure, and adapt to technological changes that have
influenced litigation practice. Key changes include mandated
electronic filing, the ability to submit trial testimony by
declaration or affidavit (subject to cross examination), and new
limitations and timeframes for discovery intended to promote
efficient and fair resolution of disputes before the Board.
The proposed amendments are summarized below.
E-Filing
Mandatory Electronic Filing. All filings must be
made through the ESTTA, the Board's electronic case filing
system. Paper filings will be permitted in rare circumstances where
filing through ESTTA is not possible, and parties will be required
to submit proof that electronic filing was not possible due to
technical problems or extraordinary circumstances.
Email Notice. The Board will send all notices,
orders, and decisions via email, making it all the more important
that applicants and their attorneys maintain updated correspondence
information.
Service
Board Service of Notices of Opposition and Petitions for
Cancellation. Rather than require each plaintiff to serve
the complaint on the defendant, the Board will have responsibility
for serving a Notice of Opposition or Petition for Cancellation on
defendants. In keeping with the shift toward complete use of
electronic communication, the Board will serve the complaint by
linking to the notice of institution in TTABVUE, the online docket
for TTAB proceedings.
Required Email Service. The proposed rules require
that all submissions filed with the Board and any other papers be
served by email, unless service cannot be made due to technical
problems or extraordinary circumstances.
Expanded Electronic Service Options. In addition
to electronic service, which became permitted under the 2007 rules,
the Board will permit parties to stipulate to accommodate other
methods of communication that may promote convenience and
expediency, such as by use of a "file hosting service that
provides cloud storage" or delivery of a USB drive, etc.
End of the Mailbox Rule. In light of the
transition to electronic service, the additional five days
previously added to the prescribed period for a
response—intended to account for mail delay—will no
longer be in effect. Thus, the response period for a motion would
be 20 days, with the exception of summary judgment motions, which
would have a response period of 30 days from service. No additional
time will be permitted for service of discovery responses.
Discovery
Adoption of FRCP Proportionality Requirements. The
proposed rules adopt amendments to the Federal Rules of Civil
Procedure by codifying the concept of "proportionality"
in discovery.
Ability to Stipulate to Discovery Limitations.
Parties may stipulate to limit discovery by shortening the
discovery period, limiting requests, and reciprocal disclosures in
lieu of discovery, or "eliminating discovery
altogether."
Recognition of ESI. Electronically discoverable
information ("ESI") will be explicitly referenced in the
rules, in recognition of the fact that many relevant documents are
now kept in electronic form and to clarify that the discovery rules
apply equally to ESI.
Limitations on Discovery Requests. The number of
requests for production of documents and requests for admission
will be limited to 75 each, the same as the current limitation on
interrogatories. There will no longer be an option to request leave
to serve additional interrogatories.
Streamlined Authentication Requests. In an effort
to curtail discovery abuse, the proposed rules allow for each party
that has received produced documents to serve one
comprehensive request for admission on the producing
party, whereby the producing party would authenticate all produced
documents or specify which documents cannot be authenticated.
Fair Play for Foreign Parties. A party must inform
every adverse party whenever a foreign party has or will have an
officer, director, managing agent, or other person who consents to
testify on its behalf present in the United States during the
relevant discovery period.
Time to Serve Discovery Requests. Discovery must
be served early enough in the discovery period that responses will
be provided. All discovery, including production of documents, must
be completed by the close of discovery.
Timing of Motions to Compel. Previously, the
deadline for motions to compel was simply before the first trial
period commenced. The amendments will require motions to compel
discovery or to determine the sufficiency of responses to requests
for admission to be filed prior to the deadline for the
plaintiff's pretrial disclosures for the first testimony
period.
Confidentiality
Automatic Imposition of Standard Protective Order.
The proposed amendments clarify that the Board's Standard
Protective Order is automatically imposed in all inter
partes proceedings. A copy of the standard protective order is
available on the USPTO website.
Board Discretion Concerning Treatment of Confidential
Information. The Board may treat as not confidential
material that "cannot reasonably be considered
confidential," notwithstanding a party's
designation.
Suspension
Discretion to Suspend Proceedings. The Board may
suspend proceedings sua sponte and has discretion to
condition approval of consented or stipulated motions to suspend on
the provision by parties of necessary information about the status
of settlement talks or discovery or trial activities.
Dispositive Motions
Timing for Summary Judgment Motions. Motions for
summary judgment must be filed prior to the deadline for
plaintiff's pretrial disclosures for the first testimony
period.
Trial Procedures
Notices of Reliance. The proposed rules codify
existing law that pleaded registrations and registrations owned by
any party may be made of record via a notice of reliance. Internet
materials may also be submitted under a notice of reliance under
the proposed rules. Notices of reliance must indicate generally the
relevance of the evidence and associate it with one or more issues
in the proceeding. Failure of a notice of reliance to meet this
requirement would be considered a curable procedural defect.
Use of Depositions. Any motion to use a discovery
deposition at trial must be filed with the party's pretrial
disclosures. All depositions must also include a word index and
must be submitted in full-size, not condensed, format.
Evidence Not Disclosed in Pretrial Disclosures. An
adverse party would be permitted to move to quash a notice of
deposition testimony if it was not included in the pretrial
disclosure or move to strike testimony presented by affidavit or
declaration that was not included in the pretrial disclosure.
Evidentiary Objections and Page Limits. The rules
clarify that evidentiary objections may be set out in a separate
appendix that does not count against the page limit for a brief and
that briefs exceeding the page limit may not be considered by the
Board.
Use of Testimony by Declaration or Affidavit.
Parties may submit witness testimony by affidavit or declaration,
subject to the right of any adverse party to take and bear the
expense of oral cross-examination of that witness. The offering
party must make witnesses testifying by declaration or affidavit
available to their adversary.
Motion for Oral Examination of Deponent. A party
may file a motion for oral examination of a witness who has been
noticed for deposition by written questions.
Involuntary Dismissal for Failure to Take
Testimony. If a plaintiff has not submitted evidence and
its time for taking testimony has expired, the Board may grant
judgment for the defendant sua sponte, even where the
plaintiff has responded to the Board's show cause order for
failure to file a brief but has either not moved to reopen its
trial period or not been successful in any such motion.
Other Changes
Teleconferencing. Parties, examining attorneys,
and members of the Board may attend hearings remotely through video
conference.
New Matter Suggested by the Trademark Examining
Attorney. If, during an inter partes proceeding
involving an application, the examining attorney believes certain
facts render the mark unregistrable, the examining attorney should
formally request remand of the application rather than simply
notifying the Board.
The rules, if approved, would apply to every currently pending and
new case commenced after the effective date of the final
rulemaking.
Comments to the proposed amendments will be accepted until June 3,
2016, and may be submitted via electronic mail to
TTABFRNotices@uspto.gov. The full Notice is available here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
