On October 7, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a Federal Register Notice of Final Rulemaking amending the Trademark Rules of Practice that govern practice before the Trademark Trial and Appeal Board (“TTAB”). The amendments are directed to reducing the burden on the parties, increasing the speed and efficiency of TTAB proceedings, and conforming the rules to current practice. They include administrative changes, as well as new limitations to discovery requests and a new unilateral option to submit trial testimony by affidavit or declaration. The rules do not alter any substantive criteria used to decide cases.
The amended rules will be effective on January 14, 2017. They will apply to all opposition and cancellation proceedings pending on January 14, 2017 as well as any subsequently filed proceedings.
Electronic Filing Requirement
The amended rules require that all filings be made through the TTAB’s online filing system, the Electronic System for Trademark Trials and Appeals (“ESTTA”).
Service Changes and Electronic Communication Requirement
To simplify proceedings, the amended rules eliminate service requirements for parties commencing an opposition, cancellation, or concurrent use proceeding. The USPTO will take over this responsibility and serve notices of opposition and petitions for cancellation by emailing the defendant party a link to the TTABVUE database, where a copy would be available.
All other submissions to the TTAB and all other papers served on a party but not required to be filed with the TTAB (e.g., initial disclosures, discovery, etc.) must be served via email. This eliminates the need for parties to stipulate to electronic service. However, the rules allow parties to stipulate to alternative methods of communication that may promote convenience and expedience, such as a file sharing service or delivery of a USB drive.
New Discovery Limitations and Timing
The amendments aim to streamline proceedings by imposing new discovery limitations and timing. For example, the new rules limit the number of requests for production of documents and requests for admission to 75, which is the same as the current limitation on interrogatories. Parties may move for additional requests for good cause.
The amendments also significantly impact the timing of discovery by requiring that all discovery—including production and inspection of documents—be complete by the close of the six-month discovery period. Under the current rules, parties may serve discovery requests up to the last day of discovery, such that response deadlines may be extend past the close of discovery. This will no longer be permitted under the new rules. Instead, parties must serve all discovery requests at least thirty days prior to the close of discovery to ensure that all discovery will be complete in time.
In addition, the amended rules incorporate the proportionality requirement implemented in the 2015 amendments to the Federal Rules of Civil Procedure.
Amendments to Trial Procedures
Most of the changes regarding trial procedures codify recent case law and common practice. However, the most significant change allows parties to unilaterally choose to submit trial testimony by affidavit or declaration, subject to the adverse party’s right to take and bear the expense of oral cross-examination of that witness. This less costly option for producing testimony is already used as a form of Accelerated Case Resolution (“ACR”), but under the present rules, it is only available when the parties stipulate to the approach.
The amendments codify other forms of ACR, including stipulating that summary judgment cross-motions will substitute for a trial record and traditional briefs at final hearing, agreeing to shorten trial periods, and stipulating to facts or to the admissibility of evidence.
Other amendments that codify recent case law and TTAB practice include the ability to submit internet materials under a notice of reliance, the Board’s discretion to treat as not confidential material that cannot reasonably be considered confidential, notwithstanding party designations, and the ability for parties and members of the TTAB to attend oral hearings remotely at the discretion of the TTAB.
The USPTO’s chart summarizing the rule changes by rule number is available here.
Kristen McCallion is a Principal in the New York office of Fish & Richardson and Chair of the firm’s Copyright Group. Ms. McCallion represents businesses in the consumer products, Internet, media, and interactive entertainment industries in copyright, trademark, trade...
Vivian Cheng focuses her practice on trademark, trade dress, unfair competition, and copyright litigation. Her experience also includes representing trademark owners in opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board, patent litigation in the...