TTAB revises its Rules of Practice

Originally published by Saul Perloff (US).

The U.S. Trademark Trial and Appeal Board (TTAB) is amending its Rules of Practice, effective January 14, 2017.

On October 7, 2016, TTAB published a notice of final rulemaking in the Federal Register describing the revisions.  The new changes are intended to clarify and improve the efficiency of inter partes and ex parte appeal proceedings and to reflect the evolution of technology since TTAB’s last rules update in 2007. The revised rules will apply to proceedings pending on the effective date and all those thereafter. See 81 Fed. Reg. 69950.

The new Rules of Practice feature some global changes, such as cross-references to the Trademark Rules of Practice and to the Federal Rules of Civil Procedure, and minor changes that more accurately reflect current TTAB practice and new technology.  Rule amendments span from section 2.92 to section 2.195 and cover electronic filing, service, and communication; discovery, pretrial, trial, remand, and appeal procedures; clarifications of TTAB practice; and codification of case law.

The following is a summary of some of the most notable changes.

Electronic Filing and Service

The revised TTAB rules acknowledge current industry practice by requiring that submissions be filed through the Electronic System for Trademark Trials and Appeals (ESTTA), TTAB’s online filing system. Exceptions to this electronic filing rule will be limited, but include, for example, cases where an examining attorney filings in ex parte appeals are filed through the Office’s internal electronic system.  Because fillings will be electronic, the rules longer provide for a 5-day mail delay extension to responses. The response period allowed for a motion is now twenty (20) days, although the 30-day response period for summary judgment will remain unchanged.

TTAB will also have responsibility for serving notices of opposition, petitions for cancellation, and concurrent proceedings, as it did before 2007, except in cases concerning a registered extension of protection under the Madrid Protocol. Importantly, TTAB will only serve complaints via email. The email notice will contain a link to the Trademark Trial and Appeal Board Inquiry System (TTABVUE).

Comments to the proposed rule expressed concerns about the reliability of TTAB’s email service in light of spam filtering and outdated contact information. Others were concerned that email service would not sufficiently convey to pro se parties the seriousness of the proceeding and the necessity of a response. TTAB responded by clarifying that it intends to serve cancellations by U.S. mail—pending system enhancements to facilitate email service. TTAB will also take steps to ensure United States Patent and Trademark Office (USPTO) emails are not blocked by servers or junk mail or spam filters and will notify registration owners that the Current Owner Address information on file, including the email address, may be used for service.

Discovery and Pretrial Changes

The TTAB rules were also modified for efficiency as well as consistency with the Federal Rules of Civil Procedure.  For example, the new rules codify “proportionality” in discovery, which is the standard for the scope of permissible discovery under FRCP 26. Under the proportionality standard, litigants must consider the significance and cost of the information they request.

The rules also feature revised discovery procedures. Discovery must now be served early enough that responses will be provided and all discovery will be completed by the close of discovery. Discovery disputes must be quickly resolved following the close of discovery, and motions to compel will no longer be permitted to be filed the day before trial. Motions to compel discovery or to determine the sufficiency of responses to requests for admissions will need to be made prior to the plaintiff’s pretrial disclosure deadline. This new approach is in line with the Federal Rules of Civil Procedure and is intended to minimize last-minute surprises. For these same reasons, motions for summary judgment will also need to be filed prior to the plaintiff’s pretrial disclosure deadline.

The rules will restrict the number of requests for production of documents and requests for admission to 75 each, with an option to move for additional requests for good cause. This limit matches the current TTAB interrogatory limit. (In contrast, FRCP 33, limits interrogatories in civil proceedings to 25.)

The amended final rules codify the parties’ right to stipulate to discovery limitations as well as the right of a Board Interlocutory Attorney to sua sponte participate in contentious discovery conferences. The rules also broaden the circumstances under which parties can seek telephone conferences with Interlocutory Attorneys to encompass all those where conferences “would be beneficial.”

Testimony by Affidavit

Under the amended rules, parties no longer have to take witness testimony by live deposition.  They can submit witness testimony by affidavit alone. A deposition will only be necessary if the opposing party demands one in order to cross-examine the witness providing testimony by affidavit. This change makes submitting evidence easier, but could lead to an overall increase in discovery costs.

For more information on all of the new amendments, see a summary table created by the USPTO here.

This article was prepared by Niki Ikahihifo-Bender under the supervision of Saul Perloff.

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