On January 14, 2017, the Trademark Trial and Appeal Board (TTAB or Board) Rules of Practice will change. According to the United States Patent and Trademark Office (USPTO), the goal of this change is to provide the public with more efficiency and clarity to inter partes (oppositions, cancellations, concurrent use) and ex parte proceedings. This change will also incorporate those cases pending as of January 14, 2017.
The changes to TTAB were initially proposed in April of 2016, after asking the public for input on the proposed amendments to the TTAB Rules of Practice. One of the reasons for this rule change was due, in part, to the fact that no changes have been made since 2007. Since 2007, terminology, references, and technology have changed and the proposed amendments will allow for more efficient practices before the Board.
Some of the most noticeable changes, among others, will be:
Allowing for Testimony by Affidavit or Declaration
Currently, a testimony submission in TTAB proceedings is to be taken by live deposition, unless otherwise agreed to by the parties. Under the new rule, however, there is an option to introduce testimony by declaration, a more cost effective and efficient way to introduce evidence. This change comes from the Supreme Court’s 2015 ruling in B&B Hardware Inc. v. Hargis Industries, Inc., which held “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the Trademark Trial and Appeal Board are materially the same as those before a district court, issue preclusion should apply.”
Streamlining Discovery and Pretrial Procedure
The new rule reflects the amendments to the Federal Rules of Civil Procedure (FRCP) by addressing the rules of “proportionality” in discovery procedures. Under the new rule, the number of requests for production of documents and the number of requests for admission will be reduced to 75, the same as the current limitation interrogatories, with the option to move for additional requests for good cause. The new practice rules also require discovery to be served early enough that responses will be provided and all discovery will be complete by the close of discovery, including production of documents to be produced or inspected.
Discovery disputes will also be resolved quickly following the close of discovery. Currently, motions to compel can be filed up to the day before trial, but, under the new rule, the deadline for filing motions to compel discovery is prior to the deadline for the plaintiff’s pretrial disclosures. This change is intended to circumvent any uncertainty that can arise on the eve of a discovery trial. Motion for summary judgement will also need to be filed prior to the deadline for plaintiff’s pretrial disclosures.
Service and Electronic Communication
Currently, the USPTO requires each plaintiff to serve the complaint on the defendant. The new rule will shift that responsibility back to the Board. In keeping with the technological progress toward complete electronic communication, the Board will not forward a paper copy of the complaint; rather, it will be served in a link to the Board’s electronic case filing system, Trademark Trial and Appeal Board Inquiry System (TTABVUE).
This new rule will also require service between parties by email for all filings with the Board and any other papers served on a party. Although many attorneys already practice this, those who do not will save an extra step of stipulating to service by email. If for some reason email is not possible, a statement explaining why must be included with the non-emailed submission.
Due to the email requirements, the delay for responses served by mail is no longer necessary so the Board will remove the five additional days for responses served by mail. The period of response will run for 20 days, except summary judgement; that response period will remain 30 days.
These are just a few of the changes being made. If you would like to read more, click on the link below. https://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf