Changes to TTAB rules; Correction - OG date: 20 October 1998

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Correcting amendment.

SUMMARY: This document contains corrections to the rules relating to discovery, motions, and the fee for recording documents, and to the title of Part 3 of Volume 37 of the Code of Federal Regulations.

EFFECTIVE DATE: September 30, 1998.

FOR FURTHER INFORMATION CONTACT: Ellen J. Seeherman, Administrative Trademark Judge, Trademark Trial and Appeal Board, by telephone at (703) 308-9300, extension 206; or by mail marked to her attention and addressed to Assistant Commissioner for Trademarks, Box TTAB-No Fee, 2900 Crystal Drive, Arlington, Virginia 22202-3513; or by facsimile transmission marked to her attention and sent to (703) 308-9333. SUPPLEMENTARY INFORMATION: On September 9, 1998, the Patent and Trademark Office published a final rule entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules" in the Federal Register (63 FR 48081).

There is an error on page 48093, column 2, in the discussion of the amendment of Section 2.127(a), which states that "if a motion for an extension of time to file a brief in response to a motion is denied, the time for responding to the motion for summary judgment may remain as specified under this section." The words "for summary judgment" should be deleted.

Section 2.120(a) was amended to clarify certain Board practices and to change certain provisions relating to discovery. When the final rule was printed, this section was incorrectly published as two paragraphs instead of one. Section 2.120(a) should appear as a single paragraph.

Section 2.127(a) was amended to, inter alia, provide that the Board may, in its discretion, consider a reply brief. As published, however, a comma was erroneously placed after the word "Board" rather than after the word "may."

Section 3.41 was amended in order to correct a cross-reference to the section relating to the fee for recording a trademark document. However, an earlier version of 3.41 was inadvertently inserted. The version of 3.41 as published in the Federal Register on October 10, 1997, 62 FR 53132, 1203 TMOG 63 (October 21, 1997), which became effective December 1, 1997, should be reinserted with the corrected cross-reference.

Finally, the title of Part 3 of Volume 37 of the Code of Federal Regulations was erroneously listed as "Rules of Practice in Trademark Cases." It should remain as "Assignment, Recording and Rights of Assignee."

List of Subjects

37 CFR Part 2

• Administrative practice and procedure, Patents, Trademarks.

37 CFR Part 3

• Administrative practice and procedure, Patents, Trademarks.
• Accordingly, 37 CFR Parts 2 and 3 are corrected as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

• 1. The authority citation for part 2 continues to read as follows:
• Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
• 2. Section 2.120(a) is correctly revised to read as follows:
• 2.120 Discovery.
• (a) In general. Wherever appropriate, the provisions of the Federal Rules of Civil Procedure relating to discovery shall apply in opposition, cancellation, interference and concurrent use registration proceedings except as otherwise provided in this section. The provisions of the Federal Rules of Civil Procedure relating to automatic disclosure, scheduling conferences, conferences to discuss settlement and to develop a discovery plan, and transmission to the court of a written report outlining the discovery plan, are not applicable to Board proceedings. The Trademark Trial and Appeal Board will specify the opening and closing dates for the taking of discovery. The trial order setting these dates will be mailed with the notice of institution of the proceeding. The discovery period will be set for a period of 180 days. The parties may stipulate to a shortening of the discovery period. The discovery period may be extended upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. Discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset. Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within 30 days from the date of service of such discovery requests. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board. The resetting of a party's time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.

3. Section 2.127(a) is correctly revised to read as follows:

2.127 Motions.

(a) Every motion shall be made in writing, shall contain full statement of the grounds, and shall embody or be accompanied by a brief. Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within fifteen days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. If a motion for an extension is denied, the time for responding to the motion may remain as specified under this section. The Board may, in its discretion, consider a reply brief. Except as provided in paragraph (e)(1) of this section, a reply brief, if filed, shall be filed within 15 days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended. No further papers in support of or in opposition to a motion will be considered by the Board. Briefs shall be submitted in typewritten or printed form, double spaced, in at least pica or eleven-point type, on letter-size paper. The brief in support of the motion and the brief in response to the motion shall not exceed 25 pages in length; and a reply brief shall not exceed 10 pages in length. Exhibits submitted in support of or in opposition to the motion shall not be deemed to be part of the brief for purposes of determining the length of the brief. When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. An oral hearing will not be held on a motion except on order by the Board.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

4. The authority citation for Part 3 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

5. The title of Part 3 is correctly revised to read as follows:

Part 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

6. Section 3.41 is correctly revised to read as follows:

3.41 Recording fees.

(a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in 1.21(h) of this chapter for patents and in 2.6(b)(6) of this chapter for trademarks.

(b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:

(1) The document does not affect title and is so identified in the cover sheet (see 3.31(c)(2)); and

(2) The document and cover sheet are mailed to the Office in compliance with 3.27(b).

September 24, 1998
ALBIN F. DROST
Deputy Solicitor